The Hon’ble Delhi High Court has, by order dated 7 November 2025, granted an ex parte ad-interim injunction in favour of ITC Limited and its associate entity, restraining the defendant from using the marks “HOTEL BUKHARA INN”, “BUKHARA INN”, and “HOTEL BUKHARA”, or any other mark identical or deceptively similar to “BUKHARA”, in connection with hospitality services.
The plaintiffs, ITC Limited and its associate, instituted the present suit seeking a permanent injunction against the defendant for infringement and passing off of their registered and well-known trademark “BUKHARA”. The mark, adopted in the late 1970s for ITC’s iconic fine-dining restaurant at ITC Maurya, New Delhi, has since acquired immense goodwill and reputation, both nationally and internationally. ITC holds multiple registrations for ‘BUKHARA’ dating back to 1985, and the mark was formally declared a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999, by a coordinate bench of the High Court in ITC Limited v. Central Park Estates Pvt. Ltd. (CS(COMM) 781/2022), subsequently published in the Trade Marks Journal on 7 October 2024.
Upon discovering the defendant’s use of the impugned marks in late 2024 for a hotel in Delhi, the plaintiffs issued a cease-and-desist notice dated 31 December 2024, demanding immediate discontinuation of the unauthorized use.
In response, by a letter dated 9 January 2025, the defendant admitted that its adoption of the mark “BUKHARA” was subsequent to the plaintiffs’ but sought to justify the same on the ground that the establishment was operated by one Mr. Syed Usama Shaban Bukhari, and was a small guest house.
The plaintiffs, through a detailed communication dated 3 April 2025, refuted these claims, pointing out that the defendant’s justification under Section 35 of the Trade Marks Act was legally untenable. The defendant, however, by its further reply dated 16 April 2025, reiterated its refusal to comply, alleging a descriptive connection of the term “Bukhara” with the city in Uzbekistan.
The Court observed that the plaintiffs’ trademark “BUKHARA” had attained well-known status, enjoying unparalleled goodwill and association with premium Indian hospitality. Referring to ITC’s extensive registrations and long-standing use, the Court held that the mark enjoyed protection even against use in unrelated fields under Section 29(4) of the Act.
The Court noted that the defendant’s invocation of Section 35 was prima facie unsustainable, since the defendant’s family name was “Bukhari,” not “Bukhara.” The Court found no bona fide justification for the adoption and observed that the defendant’s continued use, despite repeated notices, reflected mala fide intent to trade upon ITC’s established reputation.
It was further held that the defendant’s use of an identical mark for identical services was likely to cause confusion, dilute distinctiveness, and tarnish the goodwill of the plaintiffs’ brand. The balance of convenience was found to lie in favour of the plaintiffs, and irreparable injury would be caused if injunctive relief was denied.
Accordingly, the Court restrained the defendant, its officers, agents, licensees, and all persons acting on its behalf from in any manner using, infringing, or passing off the plaintiffs’ trademark “BUKHARA”, or any other mark identical or deceptively similar thereto, until the next date of hearing.
The Plaintiffs, ITC Limited was represented by a team led by Mr. Arvind Nigam (Sr. Advocate) briefed by a team of S. Majumdar & Co. (Delhi).
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