2025 Supreme(Online)(Del) 7874

IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, Ajay Digpaul, JJ
MOHAMMAD TALHA – Appellant
Versus
M/S KARIM HOTELS PVT. LTD – Respondent
FAO (COMM)-82/2025

Headnote:(A) Trade Marks Act, 1999 - Sections 28(1), 29(2), 31(1), 17(2) - Code of Civil Procedure, 1908 - Order XXXIX Rules 1 and 2 - Infringement of registered trade mark - Interim injunction - Principles for assessment of likelihood of confusion - Dominant part test - Anti-dissection rule applies to plaintiff's mark, not defendant's - Initial interest confusion - Phonetic similarity - Consumer of average intelligence and imperfect recollection - Acquiescence - Mere inaction not enough; positive act required - Innocent infringement - Balance of convenience - Discretionary remedy - Appellate court's scope under Wander Ltd. v Antox India (1990 Supp SCC 727) - Disclaimer as alternative to absolute injunction. (Paras 11, 12, 14, 15, 16)

(B) Trade Marks Act, 1999 - Section 31(1) - Registration is prima facie evidence of validity and distinctiveness - Defendant cannot challenge distinctiveness of registered mark at interim stage. (Para 13.4)

(C) Trade Marks Act, 1999 - Section 29(2)(b) - Infringement established if marks similar, goods/services similar, and likelihood of confusion or association - Comparison of marks as a whole, not side by side - Dominant part of composite mark can be compared - KARIM held dominant part of both marks. (Paras 11.5, 12, 14)

Facts of the case:
The respondent, proprietor of registered trade marks KARIM, KAREEM (word and device) since 1913, sued the appellant for using the mark GULSHAN-E-KARIM for a restaurant in Moradabad. The learned Commercial Court granted an interim injunction restraining the appellant from using KARIM as part of his mark. The appellant appealed, contending that his mark was coined innocently, that KARIM was generic, and that there was no deceptive similarity. He also pleaded acquiescence and offered to add a disclaimer.

Findings of Court:
The Division Bench upheld the finding of prima facie infringement but modified the injunction. It held that the respondent's registered marks were valid and distinctive for restaurant services. The appellant's mark contained the dominant part KARIM, which was identical to the respondent's mark, creating likelihood of confusion even if the whole marks differed. The plea of acquiescence failed as the respondent acted promptly after learning of the mark. However, the appellant's use was innocent and had been ongoing since 2016. Complete injunction would be disproportionate. The court directed the appellant to add a prominent disclaimer in English and Hindi stating no connection with the respondent, failing which the original injunction would revive.

Issues: (i) Whether the appellant's mark GULSHAN-E-KARIM infringes the respondent's registered marks KARIM/KAREEM? (ii) Whether the plea of anti-dissection applies? (iii) Whether the respondent acquiesced? (iv) Whether the interim injunction should be absolute or modified?

Ratio Decidendi: (i) Infringement under Section 29(2)(b) requires comparison of marks as a whole from perspective of consumer of average intelligence and imperfect recollection; initial interest confusion suffices. (ii) The anti-dissection rule under Section 17(2) applies to the plaintiff's mark, not the defendant's; even if applied, the dominant part (KARIM) of the defendant's mark can be compared. (iii) Acquiescence requires positive act; mere delay not a defence to infringement. (iv) Where infringement is innocent and the mark has been in use, the court may tailor relief by imposing a disclaimer rather than absolute injunction, balancing convenience and irreparable loss. Result : Appeal allowed in part; impugned order modified to require appellant to display a disclaimer in English and Hindi on all physical and virtual sites within six weeks, failing which the original injunction revives. No order as to costs. (Paras 17, 18)”,“main_legal_point”: