ITC Limited v. Punchgini, Inc.

ITC Limited (ITC) (plaintiff), an India corporation, owned and operated hotels in New Delhi, India through a subsidiary. Since 1977, one of those hotels included a restaurant called Bukhara, named after a city in Uzbekistan. The restaurant gained worldwide recognition, evidenced by a London magazine naming it one of the 50 best restaurants in the world in 2002 and 2003. ITC opened Bukhara restaurants at various worldwide locations, including a Manhattan Bukhara restaurant in 1986 and a Chicago Bukhara restaurant in 1987. ITC obtained a United States federal trademark registration for the Bukhara mark in October 1987. However, ITC closed the Manhattan and Chicago locations in December 1991 and August 1997, respectively, and after the Chicago closing did not use the Bukhara mark in the United States any longer, although ITC continued to operate the original New Delhi location and a handful of other remaining foreign locations. Two years later, various individuals incorporated Punchgini, Inc. (defendant) and opened a Manhattan restaurant called Bukhara Grill, which featured many of the same signature dishes offered at ITC’s New Delhi Bukhara restaurant. In February 2003, ITC filed a complaint against Punchgini in the United States District Court for the Southern District of New York, asserting infringement claims under the Lanham Act and a claim for unfair competition under New York law. Punchgini counterclaimed for cancellation of ITC’s federal trademark registration. Punchgini then moved for summary judgment on all claims, which the district court granted in its entirety, resulting in dismissal of ITC’s complaint and cancellation of ITC’s federal trademark registration. ITC appealed. The United States Court of Appeals for the Second affirmed the dismissal of ITC’s Lanham Act claims. However, it certified a question to the New York Court of Appeals regarding whether New York common law allowed an unfair-competition claim based on a famous trademark’s prior use in a foreign country.