Criteria for declaring Trademark to be well known Known Trademark
Introduction: The case of Aditya Birla Fashion And Retail Limited vs Friends Inc & Anr. revolves around trademark infringement concerning the reputed brand "PETER ENGLAND." The plaintiff, Aditya Birla Fashion And Retail Limited (ABFRL), sought a permanent injunction against the defendants, restraining them from unauthorized use of the "PETER ENGLAND" trademark. The High Court of Delhi adjudicated on whether the defendants’ actions constituted trademark infringement, passing off, and unfair competition. Additionally, the plaintiff sought a declaration recognizing "PETER ENGLAND" as a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999.
Plaintiff’s Claim: Aditya Birla Fashion And Retail Limited (ABFRL) is the registered proprietor of the “PETER ENGLAND” trademark, originally conceived in 1889 and introduced in India in 1997. The brand was acquired by the plaintiff group in 2000 and has since expanded to 382 stores across 180 cities in India. The plaintiff alleged that the defendants, Friends Inc & Anr., were unauthorizedly using the mark “PETER ENGLAND” on their signboard, invoices, and business papers, causing confusion among consumers.
Interim Orders & Compliance: On July 12, 2024, the court granted an ex parte interim injunction, restraining the defendants from using the infringing mark. On September 5, 2024, the defendants removed the signboard and ceased using the mark on invoices. On September 13, 2024, the defendants submitted a compliance affidavit, confirming their cessation of infringing activities.
Final Hearing: The plaintiff sought an official declaration of “PETER ENGLAND” as a well-known trademark, supported by evidence of extensive sales, advertisements, and brand recognition. The defendants did not object to the plaintiff’s claims.
The plaintiff contended that: The “PETER ENGLAND” trademark is extensively used, advertised, and recognized globally. The defendants’ unauthorized use of the trademark was diluting the brand’s goodwill and causing confusion among consumers. The Trade Marks Act, 1999 protects registered trademarks from such unauthorized usage. The plaintiff satisfied all criteria for “well-known” trademark status under Section 2(1)(zg) of the Trade Marks Act, 1999. The defendants had no right or legitimate interest in using the mark, and their conduct amounted to passing off and unfair competition.
The defendants initially denied infringement but later complied with the interim injunction by:Removing the signboard with the “PETER ENGLAND” mark.Ceasing the use of the mark on invoices and business materials..The defendants did not contest the plaintiff’s claim for well-known trademark status.
The court considered precedents on well-known trademarks and brand protection, including:
Tata Sons Ltd. vs Manoj Dodia & Ors. (2011 SCC OnLine Del 1520):Defined “well-known” trademarks as those widely recognized by consumers due to extensive use, advertisement, and reputation.Factors determining well-known status include: Consumer recognition,Duration and extent of use,Geographical reach,Advertising and promotion expenses,Sales figures
The court applied these principles to conclude that "PETER ENGLAND" meets all the criteria for a well-known trademark.
ITC Ltd. vs Britannia Industries Ltd. (2016 SCC OnLine Del 3834):Highlighted that unauthorized use of a trademark constitutes infringement even if the defendant does not contest the claim.Affirmed that mere compliance with an injunction does not absolve the infringer of liability.
Daimler Benz Aktiegesellschaft vs Hybo Hindustan (1994 PTC 287):Stressed that well-known marks enjoy broader protection against unauthorized use, even in unrelated goods or services.
Application of Precedents in the Present Case:Applying these principles, the court found that the plaintiff had provided substantial evidence of consumer recognition, extensive sales, and promotional activities. The defendants’ use of “PETER ENGLAND” was deemed misleading, even though they eventually ceased usage. The plaintiff’s trademark was recognized as well-known, thereby securing enhanced legal protection against future misuse.
Court’s Reasoning & Analysis:
Trademark Infringement Established:The Trade Marks Act, 1999 (Section 29) prohibits unauthorized use of a registered trademark. The defendants used “PETER ENGLAND” without authorization, fulfilling the criteria for infringement.
Well-Known Trademark Recognition:The court reviewed sales turnover (₹1289 Crores in 2023-24), advertisement expenses (₹31 Crores in 2023-24), and extensive brand promotions.
Considering these factors, the court declared “PETER ENGLAND” a well-known mark under Section 2(1)(zg) of the Trade Marks Act, 1999.
Passing Off & Consumer Confusion:The defendants’ usage misled consumers into believing a connection with the plaintiff. The plaintiff’s reputation and goodwill were at risk, justifying injunctive relief.
Equitable Considerations:Since the defendants complied with the injunction and ceased infringement, the court refrained from imposing additional penalties. However, the court affirmed the plaintiff’s exclusive rights over the mark.
Decision: The defendants were permanently restrained from using “PETER ENGLAND” in any manner.The court declared “PETER ENGLAND” a well-known mark under Section 2(1)(zg) of the Trade Marks Act, 1999.The suit was decreed in terms of the plaintiff’s prayers (a) to (e).
Concluding Note:This judgment strengthens brand protection laws in India by reaffirming the importance of well-known trademarks. It underscores that unauthorized use of reputed marks, even if later withdrawn, constitutes infringement. The case also highlights the significance of extensive brand recognition in obtaining legal protection. By recognizing “PETER ENGLAND” as a well-known trademark, the court ensured enhanced protection against future infringement.
Case Title: Aditya Birla Fashion & Retail Ltd. Vs Friends Inc
Date of Order: 7 February 2025
Case No.: CS(COMM) 566/2024
Neutral Citation: 2025:DHC:776
Court: High Court of Delhi
Judge: Hon’ble Ms. Justice Mini Pushkarna
Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written by: Advocate Ajay Amitabh Suman,[Patent and Trademark Attorney] ,High Court of Delhi
