Even a Momentary Belief in Association Is Enough for Trademark Infringement: Delhi High Court Modifies Injunction Against 'GULSHAN-E-KARIM'

"A fleeting assumption in the consumer’s mind that GULSHAN-E-KARIM may be associated with the renowned KARIM’S is sufficient to establish prima facie infringement" - In a significant ruling on November 6, 2025, the Delhi High Court upheld the prima facie case of trademark infringement against a small Moradabad-based restaurant using the mark ‘GULSHAN-E-KARIM’, but refused to impose an absolute restraint, recognising the innocent and localised use of the mark. A Division Bench comprising Justice C. Hari Shankar and Justice Ajay Digpaul ruled that while there was a likelihood of confusion, a complete prohibition would be inequitable, and instead allowed continued use subject to a mandatory disclaimer.

The Court held, “If on initially viewing the respondent’s mark, the consumer of imperfect recollection even fleetingly wonders as to whether there is some association between the respondent’s outlet and the appellant’s outlet, that by itself would suffice to constitute infringement.”

Delhi High Court modifying an interim injunction granted by the Commercial Court against a restaurant using the mark ‘GULSHAN-E-KARIM’. The Court ruled that although the use of ‘KARIM’ infringed the respondent’s trademark under Section 29(2)(b) of the Trade Marks Act, 1999, the infringement was not deliberate and the appellant could continue using the mark with a conspicuous disclaimer.

The ruling reaffirms the principle that initial interest confusion, even if momentary, is actionable, but also carves out space for equity and proportionality in trademark injunctions.

“KARIM is the Dominant and Distinctive Element – No Matter How You Style It”

The Court decisively rejected the appellant’s argument that the mark GULSHAN-E-KARIM had no deceptive similarity with the respondent’s KARIM brand. The respondent, tracing its culinary legacy to 1913, with multiple registered trademarks for ‘KARIM’ and ‘KAREEM’, had initiated the suit upon discovering the appellant’s restaurant in 2020.

The Court observed, “The dominant part of the appellant’s mark being the same as the respondent’s mark... is likely to result in confusion in the mind of a consumer of average intelligence and imperfect recollection.”

Referring to the doctrine of dominant mark and initial confusion, it added, “It is for this reason that the Supreme Court in Kaviraj Pandit Durga Dutt Sharma held that when the essential features of the trade mark of the plaintiff have been adopted by the defendant... added matter is immaterial.”

The appellant’s contention that “KARIM” was publici juris, meaning generic or common, was dismissed. The Court said, “‘KARIM’ may not be distinctive for a place of worship; it is certainly distinctive, in our view, for a restaurant.”

“You Cannot Deny Distinctiveness While Applying for the Same Mark”

The Court noted that the appellant had applied for registration of ‘GULSHAN-E-KARIM’ in 2020. Having done so, the appellant could not claim the term ‘KARIM’ lacked distinctiveness.

The Court stated, “Having himself applied for registration of the mark GULSHAN-E-KARIM, the appellant is estopped from contending that the mark is not distinctive.”

Quoting Section 31(1) of the Trade Marks Act, the Bench reiterated that registration itself is prima facie evidence of validity, and hence distinctiveness.

“Infringement Is Not Cured by Good Intentions – But Remedies Must Be Equitable”

While the Court firmly held that there was infringement, it acknowledged that the appellant’s use was not mala fide.

It noted, “The respondent has not placed, on record, any material on the basis of which we could arrive even at a prima facie opinion that the use of the mark GULSHAN-E-KARIM by the appellant was with intent to copy the respondent’s KARIM mark, or to capitalize on its goodwill.”

The Bench emphasized that equitable considerations must inform interlocutory relief under Order XXXIX CPC, stating, “The nature and extent of injunction must be modulated keeping in mind the balance of convenience and the loss which the parties would suffer.”

It observed that the appellant had been operating locally in Moradabad since 2016, and that a complete name change could seriously impact his business and confuse loyal patrons.

“A Disclaimer Is the Equitable Middle Path” – Court Crafts a Unique Solution

Balancing the rights of the trademark owner with the equitable interest of the local restaurant, the Court ordered that the appellant may continue using the mark ‘GULSHAN-E-KARIM’ but only with a clear disclaimer on all physical and digital platforms.

The Court mandated: “The disclaimer must be entered in bold letters and using the same lettering as is used for the mark GULSHAN-E-KARIM… to the effect that it has no association or relation with the respondent’s KARIM outlet.”

It directed that the disclaimer be displayed in both English and Hindi, on restaurant signage, social media pages, food delivery apps, packaging, and all advertisements.

Failure to comply within six weeks would lead to revival of the full injunction, effectively restraining the appellant from using the mark altogether.

“Acquiescence Cannot Shield Infringement When the Consumer Is Misled”

The Court also rejected the defence of acquiescence. The appellant had argued that the respondent delayed in filing the suit, despite the restaurant allegedly being in operation since 1997. But the Court found no evidence of commercial use before 2016.

It held, “Mere inaction does not constitute acquiescence… Even on facts, no case of acquiescence can be said to have been made out.”

Relying on the Supreme Court’s ruling in Midas Hygiene, the Bench reiterated that delay or inaction cannot be a defence to a case of proven infringement.

A Case That Balances Trademark Rights With Ground Realities

This judgment serves as a powerful precedent on how trademark law, while rooted in statutory rights, must also be guided by fairness, intent, and practicality. While affirming that initial confusion, even momentary, amounts to infringement, the Court warned against harsh injunctions when bad faith is absent, especially for localised and longstanding businesses.

As the Bench aptly concluded, “The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie case… A completely prohibitive order in this context would be disproportionate.”

Date of Decision: 06 November 2025