Initial-Interest Confusion Reaffirmed and Disclaimer-Based Interim Relief for Innocent Infringers: Delhi High Court’s Balanced Approach in Mohammad Talha v. Karim Hotels Pvt. Ltd.

Initial-Interest Confusion Reaffirmed and Disclaimer-Based Interim Relief for Innocent Infringers: Delhi High Court’s Balanced Approach in Mohammad Talha v. Karim Hotels Pvt. Ltd.

Introduction

This Division Bench decision of the Delhi High Court in FAO (COMM) 82/2025, Mohammad Talha v. M/s Karim Hotels Pvt. Ltd. (2025 DHC 9713-DB), pronounced on 6 November 2025, is a significant intervention at the interim stage of a trademark infringement action in the restaurant sector. The case pits a local Moradabad restaurant operating under the mark “GULSHAN-E-KARIM” against the well-known proprietors of “KARIM/KAREEM/KARIM’S” marks, associated with the iconic Old Delhi Mughlai restaurants. The Court upholds a prima facie finding of infringement based on likelihood of confusion—explicitly embracing “initial-interest confusion”—yet fashions a nuanced, equitable remedy: instead of a blanket injunction, it orders a prominent bilingual disclaimer regime across all physical and online touchpoints. The judgment also clarifies the scope of the anti-dissection principle under Section 17 of the Trade Marks Act, 1999, reaffirms the dominant part doctrine, and reiterates that mere delay or inaction does not defeat an infringement claim.

At stake were: (i) whether the defendant’s mark “GULSHAN-E-KARIM,” used for identical services, infringed the registered “KARIM/KAREEM” marks under Section 29(2)(b); (ii) whether “KARIM” is publici juris/generic for restaurants; (iii) the applicability of the anti-dissection rule; (iv) the viability of an acquiescence defense; and (v) the appropriate interim relief in circumstances the Court regarded as “innocent infringement” with localized, longish use.

Summary of the Judgment

  • The respondent (Karim Hotels) holds multiple registrations for word and device marks including “KAREEM/KARIM/KARIM’S” across relevant classes, with claimed user dating to 1913.
  • The appellant operated “GULSHAN-E-KARIM” in Moradabad; his narrative was that the mark was coined by his father and meant “Garden of God.” He asserted honest adoption and concurrent use.
  • The Commercial Court granted an interim injunction restraining use of “KARIM” by the appellant. On appeal, the Division Bench:
    • Affirmed a prima facie case of infringement under Section 29(2)(b) based on likelihood of confusion, using the “initial-interest confusion” lens and the dominant part test.
    • Rejected defenses that “KARIM” is generic/publici juris for restaurants and that anti-dissection prevented focus on “KARIM” within “GULSHAN-E-KARIM.”
    • Rejected acquiescence: there was no proven commercial use since 1997; the defendant’s use is shown only from 2016; mere delay is no defense to infringement.
    • However, considering equitable factors (localized use since 2016; absence of bad faith; potential hardship of rebranding), the Court modified relief: it permitted continued use of “GULSHAN-E-KARIM” subject to a prominent bilingual disclaimer on all physical and online signages, expressly disassociating from the respondent’s “KARIM” group and listing the respondent’s outlet locations, with the respondent’s distinctive logo used when naming the respondent.
    • Compliance period: six weeks. Non-compliance revives the Commercial Court’s complete injunction.

Analysis

Precedents Cited and Their Influence

  • Parle Products (P) Ltd v. J.P. & Co. (1972) 1 SCC 618: Emphasized that consumers remember marks by overall impression rather than exact particulars; side-by-side comparison is inappropriate. The Court relied on this to assess confusion from the standpoint of an “average intelligence and imperfect recollection” consumer.
  • Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 448) and Satyam Infoway Ltd v. Siffynet Solutions (2004) 6 SCC 145: The classical “average intelligence and imperfect recollection” consumer test; applied here to evaluate initial impressions and likely confusion.
  • Pianotist Co.’s Application (1906) 23 RPC 774: The look-and-sound test coupled with the nature of goods/services, consumers, circumstances, and normal use; used to underscore phonetic as well as visual similarity when KARIM appears within GULSHAN-E-KARIM for identical services.
  • Kaviraj Pandit Dura Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980): Key distinctions between passing off and infringement; in infringement, once essential features are adopted, get-up and packaging differences are immaterial. The Court applied this to prioritize mark-to-mark comparison over stylization or get-up.
  • South India Beverages (P) Ltd v. General Mills Marketing Inc (2015) 61 PTC 231 (Del) (DB), and Pernod Ricard India Pvt Ltd v. Karanveer Singh Chhabra, 2025 SCC OnLine SC 1701: Endorsed the dominant part doctrine within composite marks; cited to justify examining whether the defendant replicated the dominant portion “KARIM.”
  • Shree Nath Heritage Liquor Pvt Ltd v. Allied Blenders & Distillers, 221 (2015) DLT 359 (DB), Under Armour Inc v. Anish Agrawal, 2025 SCC OnLine Del 3784, and Dr. Reddy’s Laboratories v. Smart Laboratories, 2023 SCC OnLine Del 7276: Collected for the “initial-interest confusion” approach and the subjective judicial assessment at the interim stage.
  • Wander Ltd v. Antox (India) Pvt Ltd, 1990 Supp SCC 727: Appellate restraint in appeals from discretionary interim orders—appeals are “on principle.” The Bench invoked Wander to demarcate its review but still tailored the remedy on equitable considerations.
  • Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia (2004) 3 SCC 90 and Power Control Appliances Pvt Ltd v. Sumeet Machines Pvt Ltd (1994) 2 SCC 448: Delay/acquiescence does not defeat an injunction where infringement exists, and acquiescence requires a positive act. These were crucial to negate the appellant’s acquiescence defense.
  • Rajasthan Aushdhalaya Pvt Ltd v. Himalaya Global Holdings Ltd, 2025 SCC OnLine Del 4721: Cited for mark-to-mark comparison and overall approach.

Legal Reasoning

1) Statutory Framework and Presumptions

  • Section 28(1): A valid registrant has the exclusive right to use and to seek relief for infringement.
  • Section 29(2)(b): Infringement occurs if the defendant uses a similar mark for identical/similar services leading to likelihood of confusion or association.
  • Section 31(1): Registration is prima facie evidence of validity (and by implication, distinctiveness) at the interim stage—obviating the need to prove validity now.
  • Section 135(1): Courts may grant injunctions “subject to such terms”; the Bench uses this latitude to craft a disclaimer-based injunction mindful of equities.

2) Likelihood of Confusion and the “Initial-Interest Confusion” Test

The Court methodically applies foundational principles:

  • Perspective: The “average intelligence, imperfect recollection” consumer who does not undertake side-by-side comparisons. Even fleeting or momentary wonderment about association suffices.
  • Initial impression: What matters is the first impression generated when encountering the defendant’s mark; later correction does not cure infringement at the point of initial confusion.
  • Illustrations: The Court’s hypotheticals (Mr. X and Mr. Y scenarios) concretize how encountering “GULSHAN-E-KARIM” may trigger an association with “KARIM/KARIM’s” restaurants.
  • Mark-to-mark comparison: The device/logo differences are irrelevant at this stage; the essential feature “KARIM” appears in both signs used for identical services (restaurants/catering), closing the confusion inquiry in the plaintiff’s favor.
  • Pianotist factors: The look and sound overlap; the services are identical; the customer base is the same; no mitigating circumstances exist—supporting a finding of likely confusion.

3) Distinctiveness and Publici Juris

  • Context-sensitive distinctiveness: Whether “KARIM” is generic depends on context. Even if “Karim” is a common Arabic/Urdu word or name, it is distinctive as a source identifier for restaurant services here.
  • Registration creates a presumption: Section 31(1) makes the registration prima facie valid; thus, the mark’s distinctiveness is presumed at the interim stage.
  • Estoppel by conduct: The appellant itself sought registration for “GULSHAN-E-KARIM.” Having invoked distinctiveness for its own mark, it cannot simultaneously argue that “KARIM” is non-distinctive for restaurants.

4) Anti-Dissection and the Dominant Part Doctrine—A Clarifying Move

  • Anti-dissection is plaintiff-facing: The Bench clarifies that Section 17(2)(a) limits a proprietor’s claim to exclusivity over a part of its own composite registered mark unless that part is separately registered. It does not shield a defendant’s composite mark from analysis focused on a replicated dominant element.
  • Dominant part analysis survives: Even if one considers the defendant’s mark holistically, “KARIM” remains the memorable, dominant element within “GULSHAN-E-KARIM.” As the Court memorably observes, translating the mark as “Garden of God,” “God cannot be treated as less dominant than the garden.”
  • Result: Replication of the dominant element that is also the plaintiff’s registered mark drives the confusion finding.

5) Acquiescence and Delay

  • No factual foundation: Commercial use of “GULSHAN-E-KARIM” is demonstrable only from 2016. The registration application was filed in 2020. Discovery is alleged in December 2020. Suit followed in August 2022, factoring COVID-19 disruptions.
  • In law: Acquiescence requires a positive act (Power Control Appliances); mere delay does not defeat an infringement claim (Midas Hygiene). The respondent opposed the appellant’s application and issued a cease-and-desist—negating acquiescence.

6) Appellate Deference and Equitable Tailoring of Interim Relief

  • Appeal on principle: Under Wander, appellate interference is limited where the trial court’s discretion is judicially exercised. The Bench agrees on infringement but revisits the remedy to balance hardship and equities.
  • “Innocent infringement” and local use: There was no evidence of bad faith or intent to ride on the plaintiff’s goodwill; the defendant’s use was localized (Moradabad) since 2016; a full rebranding could cause disproportionate harm.
  • Section 135 discretion: The Court recognizes its power to condition an injunction and crafts a robust disclaimer regime to curb confusion without immediately destroying the defendant’s trade.

The Remedy: A Disclaimer-Based Injunction

The Court modifies the Commercial Court’s absolute injunction and mandates, within six weeks, that the appellant:

  • Display a prominent disclaimer immediately below “GULSHAN-E-KARIM,” in bold, using the same lettering/font, in both English and Hindi (one below the other), stating that the outlet has no connection with the respondent’s “KARIM” restaurants.
  • Use the respondent’s distinctive logo when naming the respondent in the disclaimer.
  • Include a reference to the locations of the respondent’s outlets.
  • Replicate the disclaimer on all physical signages and advertisements and across all online listings, websites, and social media pages.
  • Comply within six weeks, failing which the appeal stands dismissed and the Commercial Court’s complete injunction revives.

The operative text, as reproduced by the Court, reads:

“This outlet is independent and has no connection with the group of restaurants. Our outlets are located at ______________________. We have no other outlet or franchise.”

Note: The judgment requires the disclaimer to clearly identify the respondent’s brand (with its distinctive logo) and to list the respondent’s outlet locations. The Court’s formulation should be implemented in a way that plainly communicates non-association and avoids any ambiguity as to which entity “our outlets” refers; careful drafting and layout will therefore be vital.

Impact and Significance

1) Substantive Law

  • Initial-interest confusion is re-affirmed: Even a fleeting initial association suffices for infringement under Section 29(2)(b) where marks and services are similar/identical, marking continued consolidation of this doctrine in Indian trademark jurisprudence.
  • Dominant part doctrine clarified alongside anti-dissection: The Court crisply explains that anti-dissection limits a proprietor’s exclusivity claims over parts of its composite mark; it does not prevent a court from examining whether the defendant’s mark reproduces the plaintiff’s dominant element.
  • Context-sensitive distinctiveness: The opinion reinforces that distinctiveness must be assessed with reference to the goods/services context, not in vacuo; registration triggers a presumption of validity and distinctiveness at the interim stage.
  • Acquiescence/delay defenses narrowed: Infringement is a statutory wrong; mere delay is not a defense; affirmative conduct evidencing consent is required—consistent with Supreme Court precedent.

2) Remedial Law and Practice

  • Disclaimer-based injunctions as a middle path: The Court showcases how Section 135 allows calibrated, equitable relief where infringement is prima facie established but the equities do not favor an immediate trade-killing order. This can meaningfully inform interim relief in other “innocent use” cases, particularly where:
    • Use is localized and longstanding;
    • No intent to usurp goodwill is shown;
    • Immediate full rebranding would cause disproportionate harm;
    • The plaintiff’s primary concern is consumer confusion, not monetary recoupment.
  • Operational specificity: The judgment gives detailed directions—font parity, prominence, bilingual text, adjacency to the mark, use of the plaintiff’s logo when naming it, listing of the plaintiff’s outlet locations, and universal deployment across physical and online media. This level of specificity sets a valuable template for future orders.
  • Compliance trigger: The “comply within six weeks or the absolute injunction revives” structure creates an enforceable compliance incentive while respecting the plaintiff’s rights.

3) Practical Effects for Stakeholders

  • Brand owners: Registration matters. Police your marks but expect courts, at interim stages, to balance equities in cases of localized innocent use; nevertheless, robust disclaimer regimes can be ordered to preserve distinctiveness and avoid dilution.
  • Local businesses: Use of common/religious names within composite marks can still trigger infringement where initial confusion is likely. Applications for your own registration can undercut arguments that common terms are non-distinctive.
  • Litigators: Be prepared to argue for or against disclaimer-based interim solutions; ensure any proposed disclaimer is clear, conspicuous, linguistically appropriate for the consumer base, and omnipresent across touchpoints.

Complex Concepts Simplified

  • Initial-interest confusion: Even short-lived confusion at the first encounter with a mark is actionable; later clarification does not cure the infringement that occurs at the moment of confusion.
  • Dominant part doctrine: In a composite mark, the element that consumers are most likely to remember can be treated as the dominant part; copying it can be enough for confusion.
  • Anti-dissection rule (Section 17): A proprietor of a composite registered mark cannot claim exclusivity over unregistered parts of its own mark; this does not prevent a court from examining whether a defendant’s composite mark has replicated the plaintiff’s dominant element.
  • Publici juris/genericness: Words commonly used in language may still be distinctive in a specific goods/services context. Registration creates a presumption of distinctiveness at the interim stage.
  • Infringement vs. passing off: In infringement, mark-to-mark similarity is central; differences in packaging/get-up often do not save the defendant. In passing off, get-up and other differentiating features can be more significant.
  • Acquiescence vs. delay: Acquiescence requires a positive act signifying consent; mere inaction or delay, absent such conduct, does not bar an injunction when infringement exists.
  • Appeal on principle (Wander): Appellate courts usually defer to trial-level discretion on interim orders unless legal principles are ignored or the exercise is perverse; however, remedies can be tailored to balance equities.

Conclusion

The Delhi High Court’s decision sets out a careful, rights-sensitive, and commercially realistic pathway for interim relief in trademark cases. It reaffirms core infringement principles—mark-to-mark comparison, the average consumer standard, the Pianotist framework, and the potency of initial-interest confusion—while clarifying the placement of the anti-dissection rule and the force of registration-based presumptions. On defenses, it tightens the scope for publici juris and acquiescence arguments at the Order XXXIX stage.

Most importantly, the judgment demonstrates how courts can, consistent with Section 135, craft bespoke interim orders. By preferring a prominent, bilingual, omni-channel disclaimer over an immediate trade-stopping injunction—coupled with a strict compliance trigger—the Court balances the registered proprietor’s exclusive rights against the hardship that a small, locally entrenched business may face from abrupt rebranding. The ruling will likely influence interim relief jurisprudence where innocent, localized use coexists with a prima facie infringement finding, especially in sectors where shared cultural or religious terms appear within composite signs.

Key takeaway: initial-interest confusion and dominant-element copying will sustain an infringement finding; yet, where bad faith is absent and equities demand, courts can impose rigorous disclaimer regimes as an interim solution—protecting consumers and the senior mark’s goodwill without inflicting disproportionate harm pending trial.

Case Details

Year: 2025
Court: Delhi High Court

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