Case Summary: Mohammad Talha Vs Karim Hotels Pvt. Ltd.
Facts
This case started when Karim Hotels Pvt. Ltd., a well-known restaurant chain from Old Delhi, learned in December 2020 about a restaurant named Gulshan-e-Karim running in Moradabad by Mohammad Talha. The word ‘Karim’ has long been associated with the Delhi-based restaurant established in 1913 by Haji Karimuddin, whose family had been royal cooks in the Mughal Empire. With a long history and many awards, the name ‘Karim’ became famous for Mughlai cuisine. Karim Hotels Pvt. Ltd. owns several registered trademarks for ‘KAREEM’ and ‘KARIM’ under various classes.
Upon finding out about the Moradabad restaurant, the company filed a lawsuit before the District Judge Commercial Court, Tis Hazari, for a permanent injunction to stop Mohammad Talha from using ‘GULSHAN-E-KARIM’ or anything similar to their marks. Appellant Talha maintained that his father had chosen this name in 1997 and started the restaurant in 2016, claiming continuous use and a Food Safety license from the Government of Uttar Pradesh. He argued that ‘GULSHAN-E-KARIM’ means ‘Garden of God’ in Urdu and further submitted that the word ‘Karim’ means ‘generous’ and is a common word, so consumers wouldn’t be confused by both restaurants.
Procedural Details
The lawsuit for injunction got filed in 2022, with Karim Hotels requesting an interim restraint order against Talha under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908. The Commercial Court granted this request on 15 January 2025, restraining Talha and associates from using ‘KARIM’ in any form. Aggrieved by this order, Talha appealed to the High Court of Delhi.
Dispute
The main dispute is whether the use of ‘GULSHAN-E-KARIM’ by the appellant amounts to infringement of the registered ‘KAREEM/KARIM’ trademarks of the respondent and whether such use could confuse consumers.
- Appellant’s Argument: No deceptive similarity; honest use since 1997; ‘Karim’ is a common word; no likelihood of confusion.
- Respondent’s Argument: Prior and exclusive use of ‘KARIM’; ownership of multiple trademarks; consumer confusion likely due to similar cuisine and brand reputation.
Detailed Reasoning
The Court analyzed key provisions under the Trade Marks Act, 1999, particularly Sections 28, 29, 31, and 135:
| Section | Provision Summary |
|---|---|
| Section 28 | Grants exclusive rights to registered proprietors of valid trademarks. |
| Section 29 | Defines infringement as using a similar mark for similar goods/services causing confusion or false association. |
| Section 31 | Registration is prima facie evidence of validity. |
| Section 135 | Deals with remedies for infringement, including injunctions. |
The respondent’s trademarks predated Talha’s restaurant, proving bona fide and priority use since 1913. Both establishments catered to Mughlai cuisine and targeted similar consumers.
The Court relied on precedents:
- Parle Products Pvt. Ltd. v. J.P. Co (1972) 1 SCC 618 — similarity should be judged by overall impression on an average consumer.
- Kaviraj Pandit Dura Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980) — essential features of the mark determine infringement, not minor packaging differences.
- Pianotist Co’s Application (1906 23 RPC 774) — phonetic similarity matters in determining confusion.
The Court held that ‘KARIM’ forms the dominant part of both marks. A consumer seeing ‘GULSHAN-E-KARIM’ might associate it with the iconic Delhi-based ‘KARIM’ restaurant, causing potential confusion.
Generic Word Defense
The appellant argued that ‘Karim’ is a generic term meaning ‘generous’. The Court clarified that distinctiveness depends on context: while generic in a religious sense, ‘Karim’ is distinctive in the restaurant industry due to its long-standing association with the respondent.
Anti-Dissection Rule and Acquiescence
The anti-dissection argument was rejected. Citing South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. (2015 61 PTC 231), the Court stated that the rule applies mainly to the plaintiff’s mark, not the defendant’s. Even so, ‘Karim’ was dominant in both marks.
The defense of acquiescence was also dismissed. No substantial proof of use by Talha before 2016 was shown. As per Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia (2004 3 SCC 90), mere delay doesn’t defeat relief in trademark infringement cases.
Court Findings
While the Commercial Court had completely restrained Talha from using the mark, the High Court considered equitable factors and the balance of convenience. It recognized that Talha’s use appeared innocent and localized, and that forcing a rebrand could unfairly harm his business.
Decision
The High Court modified the lower court’s order:
- Talha may continue using ‘GULSHAN-E-KARIM’ only if a bold and clear disclaimer in English and Hindi is displayed below the name in all signages, advertisements, and online platforms.
- The disclaimer must state that the Moradabad outlet has no connection with Karim Hotels Pvt. Ltd. and must also mention the respondent’s logo and location.
- Failure to comply within six weeks would reactivate the injunction.
Thus, while trademark rights of Karim Hotels are upheld, equitable relief was granted to the appellant for fair business continuity.
Case Details
| Case Title | Mohammad Talha Vs Karim Hotels Pvt. Ltd. |
| Order Date | 6 November 2025 |
| Case Number | FAO COMM 82/2025 |
| Neutral Citation | 2025:DHC:9713 |
| Court | High Court of Delhi |
| Hon’ble Judges | Mr. Justice C. Hari Shankar, Mr. Justice Ajay Digpaul |
Disclaimer
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
