Karim Hotels Pvt. Ltd. Vs. AL Kareem

Balancing Prior Use and Honest Concurrent Adoption in Trade Mark Rectification

Facts

The petitioner, M/s. Karim Hotels Pvt. Ltd., is a private limited company incorporated on 14.08.1987 under the corporate name 'Karim Hotels Private Limited', with its registered office at 16, Gali Kababiyan, Bazar Matia Mahal, Near Jama Masjid, Delhi 110006. The petitioner claims to be the registered proprietor of the trade marks "KARIM/KARIM'S/KAREEM" and asserts that these marks have been used continuously and openly since 1913 in relation to the restaurant business, particularly for non-vegetarian food. This use is traced back to the predecessors of the petitioner, allegedly starting with Haji Zahiruddin's family near the Jama Masjid mosque in Old Delhi. The petitioner operates restaurants primarily in Delhi and the National Capital Region (NCR), including branches in areas like Nizamuddin, Kailash Colony, Noida, Gurgaon, and Kamla Nagar, with plans to expand outside Delhi. To support its claim of prior and continuous use, the petitioner relies on several pieces of evidence:

• Publications in electronic and print media, such as an article on Rediff.com (updated 02.09.2005) describing KARIM'S as the best non-vegetarian restaurant in Delhi since 1913, and a New York Times travel guide (25.07.2012) referring to it as an Old Delhi institution passed down through four generations of Haji Zahiruddin's family since 1913.
• Multiple trade mark registrations, including Trade Mark No. 833801 (application filed on 24.12.1998) and Trade Mark No. 1143864 (asserting use since 01.04.1913).
• Certificates from Chandna Associates, Chartered Accountants, certifying turnover and gross profit from financial year 2003-2004 to 2020-2021, indicating significant revenue from the restaurant business under the KARIM mark.
• Judgments from the Delhi High Court recognizing the goodwill and reputation of the KARIM mark in prior infringement cases involving the petitioner.

The first respondent, AL Kareem (proprietor: Abdul Majeed Khan), operates a hotel under the impugned device mark "AL Kareem" (registered under Trade Mark No. 3385555 in Class 43 for hotel and restaurant services) at 12-2-290 Old Milan Talkies, Zeba Bagh Asif Nagar, Hyderabad 500028, Telangana. The respondent claims honest adoption and use of the mark since 1965, derived from the name of the founder's uncle, Shri. Abdul Kareem Khan, who allegedly established the hotel in Hyderabad that year, prefixing "AL" (a pious Islamic expression) to "Kareem". The business was reportedly passed to Abdul Hameed Khan (the founder's father) in 1992. The trade mark application was filed on 12.10.2016 on a "proposed-to-be-used" basis, but the respondent later asserted use since 01.01.2001 in response to an examination report dated 12.08.2017. Evidence submitted by the respondent includes:

• A third-party affidavit from Abdul Hameed Khan (affirmed on 26.09.2023), detailing the establishment in 1965 and transfer in 1992.
• A Mutton Supply Contract Agreement dated 20.11.1996 (though not fully executed, as it lacks one signature) and a related receipt for Rs.10,000/- as security for beef supply, indicating business operations under "HOTEL AL KAREEM" in 1996.
• Provisional trade licence from Greater Hyderabad Municipal Corporation (29.10.2018), FSSAI licences, and a Zomato restaurant administration toolkit (24.08.2016), showing recent use. The registration of the impugned mark includes a geographical limitation, confining use to the State of Telangana, as noted in the Trade Marks Journal advertisement.

The second respondent is the Registrar of Trade Marks, Chennai, who appeared through counsel but did not actively contest the petition.

The petition was filed under Sections 47, 57, and 125 of the Trade Marks Act, 1999 (TM Act), seeking rectification of the Register of Trade Marks by expunging the impugned mark on grounds of deceptive similarity to the petitioner's mark, prior use by the petitioner, and entry without sufficient cause.

Dispute

The core dispute revolves around whether the impugned mark "AL Kareem" (device) should be removed from the Register of Trade Marks due to its alleged deceptive similarity to the petitioner's "KARIM" marks, potentially causing confusion or deception among the public in the restaurant services sector (Class 43). The petitioner argues:

• Prior adoption and continuous use since 1913, establishing superior rights as per the Supreme Court's ruling in S. Syed Mohideen v. P. Sulochana Bai (2016) 2 SCC 683, which prioritizes prior users and registrants.
• The impugned mark is deceptively similar, as "Kareem" is phonetically and visually akin to "Karim", and its continuance dilutes the petitioner's goodwill.
• Inconsistent claims by the respondent regarding the date of first use (1965 vs. 2001), and lack of credible evidence for use since 1965.

The first respondent counters:

• The petitioner does not qualify as a "person aggrieved" under Sections 47 and 57, as its business is limited to Delhi NCR with no presence in Telangana, and thus no actual injury (relying on Supreme Court judgments like Kabushiki Kaisha Toshiba v. Tosiba Appliances Co. (AIR 2009 SC 892) and National Bell Company v. Metal Goods Manufacturing Company (P) Ltd. (AIR 1971 SC 898)).
• Honest and concurrent use since 1965 (or at least 1996), qualifying for protection under Section 12 of the TM Act, as per London-Rubber Co. Ltd. v. Durex Products Incorporated (AIR 1963 SC 1882), even for small traders with long-term use.
• The marks are distinguishable, with no likelihood of confusion due to the geographical limitation to Telangana.
• Bona fide use of a personal name (derived from "Abdul Kareem Khan") protected under Section 35 of the TM Act.

Reasoning

The court, presided over by Justice Senthilkumar Ramamoorthy, analyzed the petition under Sections 47 and 57 of the TM Act.

1. Person Aggrieved (Preliminary Objection): Relying on Hardie Trading Ltd. v. Addisons Paint & Chemicals Ltd. ((2003) 11 SCC 92), the court interpreted "person aggrieved" liberally under Section 57, noting it should not be unduly limited to prevent public mischief from wrongful entries. Given that both parties are in the same trade (restaurant services), the petitioner holds multiple registrations, and intends to expand beyond NCR, the court held the petitioner qualifies as aggrieved, rejecting the respondent's objection.
2. Non-Use under Section 47: The court examined evidence of the respondent's use, including the 1996 contract/receipt, Zomato toolkit (2016), trade licence (2018), and FSSAI licences. Despite noting the evidence could be better, it found sufficient proof of use, including in the five-year period before the petition (ending three months prior), rendering the Section 47 challenge unsustainable.
3. Rectification under Section 57 (Prior Use and Similarity):
   • Petitioner's Evidence of Prior Use: The court found the petitioner's evidence of use since 1913 weak, as media publications (e.g., Rediff.com 2005, New York Times 2012) refer to Haji Zahiruddin's family without link documents tracing title to the petitioner. Assertions in trade mark applications (e.g., since 1913) were not definitive. Stronger evidence existed for use since incorporation in 1987 and turnover from 2003-2004.
   • Respondent's Evidence: The third-party affidavit (uncontested via cross-examination) and 1996 documents provided reasonable evidence of use since 1996 (if not 1965). The court disregarded the 1996 contract as unenforceable but accepted it as evidence of business conduct under "AL KAREEM".
   • Honest Concurrent Use (Section 12): While concurrency requires some contemporaneity, the respondent's use since 1996 overlaps with the petitioner's post-1987 use. The adoption was honest (no citation of petitioner's marks in examination), derived from a personal name, and confined to Telangana. The court invoked "other special circumstances" under Section 12, considering the geographical limitation, lack of petitioner's presence in Telangana, and no evidence of confusion.
   • Bona Fide Use of Name (Section 35): The mark's derivation from "Abdul Kareem Khan" (a common Muslim name) was accepted as bona fide, protecting it from interference.
   • Deceptive Similarity and Confusion: Marks are similar but distinguishable; geographical confinement minimizes confusion. Registration confers pan-India rights, but the court balanced this with the respondent's localized use.

The court emphasized adjudicating on available evidence, noting neither party adduced oral evidence.

Decision

The petition was disposed of without costs. The impugned mark remains on the Register but with an express geographical limitation: it shall only apply to restaurant services in Hyderabad, Telangana. The Registrar of Trade Marks was directed to incorporate this condition within 30 days of receiving the order. This protects the respondent under Sections 12 and 35 while addressing the petitioner's concerns about dilution.

Case Title: M/s. Karim Hotels Pvt. Ltd. v. AL Kareem and The Registrar of Trade Marks; Order Date: 29-07-2025; Case Number: (T)OP(TM) No. 406 of 2023; Neutral Citation: 2025:MHC:1859; Name of Court: High Court of Judicature at Madras; Judge: The Hon'ble Mr. Justice Senthilkumar Ramamoorthy

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

Suggested Title for This Article

"Karim Hotels v. AL Kareem: – A Case of Geographical Limitations under the Trade Marks Act"