Foreign Famous Marks can be Protected Under New York Common Law

ITC Limited and ITC Hotels Limited (collectively, ITC) were owners of the Bukhara restaurant in New Delhi, India. ITC had opened or franchised other Bukhara restaurants internationally, including in several locations in Asia and North America. A US trade-mark registration for the Bukhara mark was issued in 1987, but since 1997 no Bukhara restaurant has operated in the US. As of May 2004, only four Asian locations remained in operation. In 2003, ITC brought federal and state claims of trade-mark infringement, unfair competition and false advertising in the US against former employees who had opened and operated restaurants under the Bukhara Grill name in New York since 1999. The defendants' restaurants were similar to ITC's Bukhara restaurants in décor, logo, uniforms and menus. In 2005, the defendants were granted summary judgment. In March 2007, the US Court of Appeals for the Second Circuit (USCA) affirmed summary judgment as to infringement because of ITC's abandonment of its Bukhara trade-mark due to non-use. The USCA also affirmed summary judgment for federal unfair competition because the famous marks doctrine had not been adopted into federal trade-mark law. However, the Court reserved judgment on unfair competition under New York common law and certified two questions to the relevant State court, the New York Court of Appeals (NYCA), on the applicability of famous marks doctrine on a New York common law claim for unfair competition and the requirements to satisfy such a claim. The NYCA held that although the famous marks doctrine is not recognized under New York common law of unfair competition, New York common law can protect a famous mark based on use in a foreign country, provided the mark is shown to establish a reputation and goodwill in New York. Further, a plaintiff would need to show that the defendant intentionally appropriated the disputed mark/trade dress or created an association with the plaintiff in the minds of the public, and establish that the relevant consumer market in New York associates the defendant's mark with the plaintiff (see ITC Limited et al v Punchgini Inc, 2007 NY Int 164). Based on this opinion of the NYCA, the USCA has now held that ITC must show both deliberate copying and secondary meaning of the Bukhara mark to support a common law claim for unfair competition. The USCA ruled that ITC had established deliberate copying of ITC's mark and trade dress by the defendants; however, it had failed to provide evidence of an association with the Bukhara mark and ITC and to establish ITC's goodwill and reputation in the Bukhara mark, within the relevant consumer market in New York State. Accordingly, the USCA held that deliberate copying alone was insufficient to support a common law claim for unfair competition and affirmed summary judgment. For the full-text reasons in ITC Limited et al v Punchgini Inc et al (Docket No 05-0933-cv), visit: http://tinyurl.com/2arsg4 For further information, see: http://www.managingip.com/Article.aspx?ArticleID=1886309&LS=EMS166471 Summary by: Lauren Lodenquai