CRE Problem 1

UG VI Semester
Law of IPR
Date of CRE: 19th February, 2024
Date of Release of CRE Problem: 12th February, 2024

ITC Ltd. commenced its hospitality business in the year 1975 and has since then started
managing and operating several hotels across the world. ITC Ltd. is stated to be one of India's
foremost private sector companies with business spanning across diverse sectors such as Fast-
Moving Consumer Goods (FMCG), Hotels, Paperboards and Packaging, Agri-Business and
Information Technology. It is also stated to be ranked among Asia's 50 best performing
companies compiled by Business Week apart from being recognized by Forbes as one of the
World's Top 250 best regarded companies in 2019.

The mark 'BUKHARA' was adopted by ITC Ltd. for its restaurant at ITC Maurya Hotel in
Chanakyapuri, New Delhi in late 1970s. The said restaurant provides various cuisines which
are inspired from the North-West frontier region of India. Over the years, the restaurant has
acquired an enormous reputation owing to various preparations which it had started serving
to its customers. The 'BUKHARA' restaurant is also known for its interiors, decor, layout,
arrangement of the restaurant, the cutlery in which the food is served, the wooden menu cards
and the rustic look which it has maintained over the years. The restaurant uses traditional
methods of cooking such as a clay oven or tandoor. Some of the dishes served in the
'BUKHARA' restaurant are globally acclaimed by food critics and the trade.

The 'BUKHARA' restaurant is stated to have been visited by various world-renowned

celebrities, Presidents, and heads of States. Various chefs of global repute have also worked
at the Plaintiff's restaurant. Over the years, the restaurant has also been listed on various food
delivery platforms, third-party service/information provider websites such as Eazy Diner, etc.
ITC Ltd. also maintains many websites such as www.itcportal.com, and www.itchotels.in,
that provide information about the its hotel business in India and across the world, and reflect
the use of the trade mark 'BUKHARA' by them. The sales of the 'BUKHARA' restaurant are
over 20 crores in the last financial year. The mark 'BUKHARA' has been registered in India
since 1985 both in word form, as also in logo form. They also have a unique decor and
stylized font which is also reflected in various items used in the restaurant. The said
restaurant has also acquired a large number of awards.

ITC Ltd. found Central Park Estates Pvt. Ltd. having adopted the mark 'BALKH BUKHARA'
for its restaurant in Central Park Resorts, Sec-48, Gurgaon. They learnt of the use of the said
mark sometime in October, 2022 and upon enquires being made, it learnt that Central Park
Estates Pvt. Ltd. obtained registrations of the marks 'BALKH BUKHARA RESTAURANT'
and 'BALKH BUKHARA' logo, both on 'proposed to be used' basis. ITC Ltd. then conducted
an inquiry and also had certain representatives visit the said restaurant which revealed that
Central Park Resorts had imitated the following aspects of the Plaintiff's 'BUKHARA'
restaurant including - name, logo and font, interiors of the restaurant, décor, seating style,
staff uniform, bib/apron, utensils, wooden menu and the whole look and feel of the restaurant.
Even the logo form and the font were identical.
Accordingly, ITC Ltd. proceeded to file a suit seeking decree of permanent injunction against
Central Park Estates Pvt. Ltd. apart from damages and other reliefs. They also sought an
order declaring the Plaintiff's iconic trade mark 'BUKHARA' as a well-known trade mark.

On the other hand, Central Park Estates Pvt. Ltd. claim that they had a valid registration for
the marks 'BALKH BUKHARA RESTAURANT' and 'BALKH BUKHARA' logo in the year
2020. Also, they claim that even though the mark BUKHARA may have been adopted by
ITC Ltd., the same has not acquired the recognition of well-known trademark and is merely a
registered trademark. Central Park Estates Pvt. Ltd. also claims that there is no likelihood of
confusion due to the distinct locations of operations of the two restaurants and the use of
word “BALKH BUKHARA” instead of merely “BUKHARA”, where Balkh and Bukhara
are cities which were located on the famous Silk Route. These cities were half-way between
China and Greece. Therefore these cities were the centres of international trade, and very
prosperous.

Argue on behalf of plaintiff and defendant, respectively.