Case Title: Mohammad Talha Vs Karim Hotels Pvt. Ltd.
Order Date: 6 November 2025
Case Number: FAO COMM 82/2025; CM APPL. 17511/2025
Neutral Citation: 2025:DHC:6811
Court: High Court of Delhi
Hon’ble Judges: Mr. Justice C. Hari Shankar, Mr. Justice Ajay Digpaul
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. Talha argued that there’s no deceptive similarity, claimed long-continued honest use in Moradabad, and further challenged the respondent’s claim of exclusivity by saying ‘Karim’ was a common word. On the other side, Karim Hotels asserted priority and exclusivity over ‘KARIM’ based on trademark ownership and decades of use, arguing that any use by Talha was likely to confuse customers, given both restaurants served Mughlai cuisine.
DETAILED REASONING INCLUDING JUDGMENT WITH COMPLETE CITATIONS
The Court looked at principles from trademark law under the Trade Marks Act, 1999, notably Sections 28, 29, 31, and 135. Section 28 gives exclusive rights to the registered proprietor of a valid trademark. Section 29 defines infringement, which occurs when someone uses a similar mark in connection with similar goods or services and causes confusion or suggests an association. Section 31 makes registration prima facie evidence of validity.
The respondent Karim Hotels had multiple registrations, much prior in time compared to appellant Talha's restaurant, showing bonafide and priority of use since 1913. The Court found that both names related to restaurants serving Mughlai food, thus targeting the same consumer base. Based on precedents like Parle Products Pvt. Ltd. v J.P. Co (1972) 1 SCC 618, the Court noted that similarity is not viewed by comparing marks side-by-side but by the overall impression they leave in the mind of an ordinary consumer with average intelligence and imperfect recollection.
Further, referencing the principle from Kaviraj Pandit Dura Dutt Sharma v Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980), the Court clarified that passing off differs from infringement; while packing and appearance matter in passing off, in infringement, it's the essential features of the mark which count. Even differences in get-up and additional matter wouldn’t avoid liability if the underlying mark could cause confusion.
Phonetic similarity, per Pianotist Co’s Application (1906 23 RPC 774), is relevant. The Court found that 'KARIM' forms the dominant part of the disputed marks, and a consumer seeing 'GULSHAN-E-KARIM' may instantly relate it to 'KARIM' restaurants in Delhi. This was deemed sufficient for potential confusion.
Regarding appellant’s defense that ‘Karim’ is generic (publici juris), the Court explained that while generic marks generally cannot be exclusively owned, distinctiveness must be assessed relative to its use. 'Karim' may be generic in religious contexts but is distinctive for a restaurant, especially given the reputation established by Karim Hotels.
The appellant’s challenge based on the anti-dissection rule (that the dominant part of the mark shouldn’t be separated for assessment) was rejected. The Court explained, citing South India Beverages Pvt. Ltd. v General Mills Marketing Inc. (2015 61 PTC 231), that the rule mainly applies to a plaintiff’s composite mark, not the defendant’s. Even so, ‘Karim’ was dominant in both marks.
The issue of acquiescence—whether the respondent allowed the use by not acting for years—was dismissed. The court found no actual evidence of commercial use by Talha from 1997 till 2016. Further, as established in Midas Hygiene Industries Pvt. Ltd. v Sudhir Bhatia (2004 3 SCC 90), mere delay does not bar relief in trademark infringement, and where infringement is found, an injunction must follow.
The Commercial Court had taken a strict approach, entirely restraining Talha from any use of ‘GULSHAN-E-KARIM’. On appeal, the High Court considered the principles of balance of convenience and equity, acknowledging that Talha’s use may not have been to capitalize on the respondent’s goodwill but was innocent and limited in scope to Moradabad. The effects of changing the name after years could disproportionately hurt Talha's business.
Thus, the High Court modified the Commercial Court’s order, allowing the appellant to continue using 'GULSHAN-E-KARIM', provided that a conspicuous disclaimer, in both English and Hindi, is displayed immediately below the mark (on signages, adverts, and online platforms). This disclaimer must state that the Moradabad outlet has no connection with the respondent’s group of restaurants and should also display the location and logo of respondent’s outlets.
DECISION
The High Court allowed the appeal to a limited extent. The appellant Mohammad Talha is permitted to use the name 'GULSHAN-E-KARIM' for his restaurant only if he consistently displays a bold, clear disclaimer stating no association with Karim Hotels Pvt. Ltd., in all physical and online places. Failure to comply with this requirement within six weeks would result in dismissal of the appeal, and the original injunction would become effective again. Thus, while the rights of the trademark holder are protected, the balance of convenience and fairness also favours the appellant under equitable principles.
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 Titles for Research Paper:
1. Trademark Disputes in Hospitality: Karim’s Legacy vs Gulshan-e-Karim
2. Balancing Trademark Rights and Equity: A Case Analysis
3. Evaluating Deceptive Similarity in Restaurant Branding: Delhi High Court’s Approach
4. Trademarks and Local Businesses: The Gulshan-e-Karim Controversy
5. Trademark Protection vs Local Use: Legal Insights from Mohammad Talha v. Karim Hotels Pvt Ltd
