Karim Hotels Pvt. Ltd. Vs. Al Kareem Trademark Dispute Case Summary
Facts
Karim Hotels Pvt. Ltd., a Delhi-based restaurant company, claimed to have used the trademark “Karim/Karim’s/Kareem” since 1913 for their non-vegetarian restaurant business, mainly in Delhi and the NCR, with plans to expand. Incorporated in 1987, they held multiple trademark registrations and provided media articles (Rediff.com 2005, New York Times 2012) and financial records (2003–2021) to prove their reputation.
The first respondent, Al Kareem, a Hyderabad-based hotel, used the trademark “Al Kareem” (registered under No. 3385555 in Class 43 for restaurant services). They claimed use since 1965, supported by an affidavit from Abdul Hameed Khan, a 1996 Mutton Supply Contract, a 1996 receipt, a 2016 Zomato toolkit, and 2018 FSSAI licenses. Their 2016 trademark application was initially “proposed-to-be-used,” but a 2017 reply claimed use since 2001.
Karim Hotels sought to remove “Al Kareem” from the Trade Marks Register under Sections 47, 57, and 125 of the Trade Marks Act, 1999, arguing it was too similar to their mark and wrongly registered. Al Kareem countered that their mark was distinct, used honestly in Telangana, and caused no harm to Karim Hotels.
Dispute
The main issue was whether “Al Kareem” should be removed from the register due to deceptive similarity with “Karim” or improper registration. Karim Hotels claimed prior use and national rights, while Al Kareem argued honest concurrent use and geographic separation.
Person Aggrieved (Sections 47 and 57)
Legal Provision: Sections 47 and 57 allow a “person aggrieved” to seek trademark removal or rectification if harmed by the mark’s presence.
Arguments: Al Kareem argued Karim Hotels wasn’t aggrieved, as their businesses were in different regions (Delhi vs. Telangana), citing Toshiba (2009). Karim Hotels claimed pan-India trademark rights.
Court’s Reasoning: Citing Hardie Trading (2003), the court broadly interpreted “person aggrieved.” Since both were in the restaurant business and Karim Hotels held registered marks, they qualified as aggrieved due to potential rights restrictions.
Section 47: Non-Use
Legal Provision: Section 47 allows removal for non-use in the five years and three months before the petition.
Arguments: Karim Hotels questioned Al Kareem’s use since 1965, noting inconsistencies in their claims. Al Kareem provided documents showing use.
Court’s Reasoning: Al Kareem’s 1996 contract, receipt, 2016 Zomato toolkit, and 2018 licenses proved use, defeating the Section 47 claim.
Section 57: Wrongful Registration
Legal Provision: Section 57 allows rectification for wrongful or confusing registrations.
Arguments: Karim Hotels claimed use since 1913 and argued “Al Kareem” was deceptively similar, citing S. Syed Mohideen (2016). Al Kareem claimed honest use since 1965, supported by evidence, and geographic limitation, citing London-Rubber (1963) and Section 12.
Court’s Reasoning: Karim Hotels’ 1913 claim lacked evidence linking them to earlier users. Al Kareem’s evidence of use since 1996 was sufficient, and their geographic limitation reduced confusion. The petitioner failed to prove deceptive similarity or wrongful registration.
Section 12: Honest Concurrent Use
Legal Provision: Section 12 allows registration of similar marks if used honestly and concurrently.
Court’s View: Al Kareem’s honest use in Telangana supported retaining their mark.
Decision: The mark remains on the Register but with an express geographical limitation. This protects the respondent under Sections 12 and 35 while addressing the petitioner’s concerns about dilution.
Case Details
- Case Title: Karim Hotels Pvt. Ltd. Vs. 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
