## Facts

- ITC Limited and ITC Hotels Limited owned and operated the “Bukhara” restaurant in New Delhi, opened in 1977, which developed international recognition.
- ITC previously operated or franchised “Bukhara” restaurants in several countries and briefly in the United States, including a Manhattan location (opened 1986, closed 1991) and a Chicago franchise (opened 1987, terminated 1997).
- ITC obtained a federal U.S. registration for “Bukhara” for restaurant services in 1987, but ceased operating or licensing any Bukhara-marked restaurant in the United States after 1997.
- Former employees and associates formed Punchgini, Inc. and opened “Bukhara Grill” restaurants in Manhattan beginning in 1999.
- The New York restaurants used a similar name and allegedly similar menu items, décor, and marketing themes, intending to create an association with ITC’s New Delhi restaurant.
- ITC sued alleging federal trademark infringement and unfair competition, and New York common-law unfair competition; the federal district court entered summary judgment for defendants, including cancellation of ITC’s federal registration based on abandonment.
- On appeal, the federal appellate court certified questions to New York’s highest court concerning whether New York common law protects foreign famous marks absent current local use and what showing is required.

## Issues

1. Whether New York common law recognizes an unfair-competition claim based solely on a foreign mark’s fame, without current use or goodwill in New York (a “famous” or “well-known” marks doctrine).
2. Whether, absent such a doctrine, a plaintiff can prevail on New York common-law unfair competition without showing actual goodwill in New York at the time the defendant began use.

## Decision

- The court held that New York common law does not recognize a standalone “famous” or “well-known” marks doctrine.
- The court held that New York unfair competition generally requires a protectable property interest in New York, typically actual goodwill among New York consumers at the relevant time.
- The court concluded that ITC failed to show sufficient New York-based goodwill in the “Bukhara” mark when defendants opened “Bukhara Grill,” so ITC could not prevail on a New York common-law unfair-competition theory.

## Legal Principles

- New York common-law unfair competition targets bad-faith misappropriation likely to confuse consumers, but it is grounded in protection of a plaintiff’s New York-based property right in the mark or trade identity.
- New York does not confer trademark-like rights based on foreign fame alone where the mark lacks current use or goodwill in New York.
- “Spillover” recognition or sporadic consumer awareness, without substantial and continuing market exploitation in New York, is insufficient to establish protectable goodwill for a misappropriation claim.
- New York common-law rules in this area are applied to avoid conflict with federal trademark policy emphasizing territorial use and abandonment principles.

## Conclusion

New York’s highest court rejected a free-standing famous-marks doctrine and limited common-law unfair-competition protection to situations where the plaintiff shows actual, protectable goodwill in New York at the relevant time; because ITC did not show such goodwill for “Bukhara” when defendants began operating, it could not obtain state-law relief.


ITC Ltd. v. Punchgini, Inc., 9 N.Y.3d 467, 880 N.E.2d 852 (N.Y. 2007)