ITC Ltd. v. Punchgini

ITC Limited (plaintiff) owned and operated luxury Indian restaurants in Asia under the trademark name Bukhara. Punchgini, Inc., and others, including former employees of Bukhara (collectively, the Manhattan restaurant owners) (defendants), opened an Indian restaurant in Manhattan named Bukhara Grill. Bukhara Grill’s uniforms, logo, and decorations were similar to those used at ITC’s Bukhara restaurants. ITC filed a lawsuit in United States district court against Punchgini for trademark infringement and unfair competition. The federal district court granted summary judgment in favor of the Manhattan restaurant owners. ITC appealed. The federal court of appeals held that famous foreign marks were not protected under federal law, but it certified to the New York Court of Appeals the question of whether New York state law provided a cause of action for unfair competition to owners of famous foreign marks. ITC submitted evidence of goodwill as part of the case, but none of the evidence related to goodwill that was established in New York. ITC did not offer any evidence that it advertised Bukhara restaurants within the United States, any consumer studies on potential consumer confusion or reports on Bukhara’s brand recognition in the United States, or any proof of overlap between customers. The New York Court of Appeals submitted answers to the certified questions to the federal court of appeals.