Haldiram India Pvt. Ltd. vs. Berachah Sales Corporation & Ors.

Case Title: Haldiram India Pvt. Ltd. vs. Berachah Sales Corporation & Ors.

Case No.CS(COMM) 495/2019

Date of Order:2nd April 2024

Court:Delhi High Court

Judge:Hon'ble Justice Prathiba M. Singh

Introduction:

This case is a landmark trademark dispute involving Haldiram India Pvt. Ltd., a renowned food brand, against Berachah Sales Corporation and others. The plaintiff sought protection for its trademark "HALDIRAM" and related marks, claiming unauthorized use and dilution of its goodwill by the defendants. The case delves into the principles of trademark protection, well-known mark recognition, and the doctrine of spill-over reputation.

Background

Haldiram India Pvt. Ltd., established in 1941, is a leading food brand with a significant domestic and international presence. The company holds trademarks for "HALDIRAM" in various classes, including food products and eateries. The defendants, Berachah Sales Corporation and others, allegedly used identical and deceptively similar marks for their products and services, leading to this suit for injunction, damages, and declaration of "HALDIRAM" as a well-known mark.

Brief Facts of the Case

1. Plaintiff's Claim:

Ownership of the trademark "HALDIRAM" and its variants since 1941.

Allegations of unauthorized use of the mark by the defendants for products like mustard oil, salt, and ghee.

The defendants operated under names such as "Haldiram Restro Pvt. Ltd." and registered domain names like www.haldiramrestro.com.

2. Defendants' Stand:

Claimed use of the mark in Class 43 (restaurants and eateries), which was not covered by the plaintiff's registrations.

Argued the existence of other companies using "Haldiram" without objections from the plaintiff.

Issues Involved

1. Whether the defendants' use of "HALDIRAM" constituted trademark infringement and passing off.

2. Whether the plaintiff's mark qualifies as a well-known trademark under Section 2(zg) of the Trade Marks Act, 1999.

3. Entitlement of the plaintiff to damages and injunction.

Submissions of the Parties

Plaintiff:

Asserted exclusive rights over the "HALDIRAM" mark, supported by registrations and long-standing goodwill.

Highlighted the defendants' malafide intent to exploit the plaintiff's reputation.

Sought permanent injunction, damages, and recognition of "HALDIRAM" as a well-known mark.

Defendants:

Denied infringement, citing use in a different class (restaurants and eateries).

Claimed that the plaintiff lacked exclusive rights in Class 43.

Argued that the plaintiff failed to act against other entities using the "HALDIRAM" name.

Reasoning and Analysis by the Judge

1. Trademark Infringement and Passing Off:

The court observed that the defendants used identical marks for identical services, fulfilling the triple identity test.

The defendants' actions were deemed to exploit the plaintiff's goodwill and reputation.

2. Well-Known Mark Declaration:

The court analyzed factors under Section 11(6) of the Trade Marks Act, including the plaintiff's extensive sales, advertising, and global presence.

The mark "HALDIRAM" was declared well-known, even in West Bengal, despite territorial limitations under a dissolution deed.

3. Damages:

Based on the Local Commissioner's report, the court found substantial misuse of the plaintiff's mark.

Awarded exemplary damages of ₹50 lakhs, emphasizing the need to deter such malpractices.

Decision

The Delhi High Court ruled in favor of Haldiram India Pvt. Ltd., granting:

1. A permanent injunction restraining the defendants from using "HALDIRAM" or deceptively similar marks.

2. Recognition of "HALDIRAM" as a well-known trademark.

3. Damages of ₹50 lakhs and costs of ₹2 lakhs.

Conclusion

This judgment reinforces the robust protection afforded to well-known trademarks under Indian law. It highlights the judiciary's proactive stance in safeguarding intellectual property rights and deterring infringement. The recognition of "HALDIRAM" as a well-known mark is a significant milestone, reflecting its widespread reputation and goodwill.

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney] 

High Court of Delhi

Email: ajayamitabhsuman@gmail.com

 Phone: 9990389539

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