ADITYA BIRLA FASHION AND RETAIL LIMITED vs FRIENDS INC & ANR.
$~15
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 566/2024, I.A. 33082/2024 & I.A. 33087/2024
ADITYA BIRLA FASHION AND RETAIL LIMITED …..Plaintiff
Through: Mr. Ankur Sangal, Mr. Ankit Arvind and Mr. Shashwat Rakshit, Advs.
M: 8874643389
versus
FRIENDS INC & ANR. …..Defendants
Through: Ms. Sonia Bemera, Adv.
M: 8920524605
CORAM:
HON’BLE MS. JUSTICE MINI PUSHKARNA
O R D E R
% 09.01.2025
MINI PUSHKARNA, J (ORAL)
1. The present suit has been filed on behalf of the plaintiff seeking permanent injunction restraining the use of the impugned mark PETER ENGLAND by the defendants causing infringement of the plaintiffs trademark, copyright and artistic work on the mark PETER ENGLAND .
2. When the matter was listed for hearing on 12th July, 2024, this Court had restrained the defendants from putting the sign board with the mark PETER ENGLAND, and were restrained from using the mark on their invoice/ business paper.
3. This Court notes that on 05th September, 2024, learned counsel appearing for the defendants had submitted that defendants had already removed the sign board from outside their shop and that the defendants were not using the mark PETER ENGLAND on their invoices, or any other material. The order dated 05th September, 2024, is reproduced as under:
1. Learned counsel for the defendants has appeared, along with the defendant in person. She submits that the defendants have already removed the Sign Board from outside their shop, reflecting the trademark PETER ENGLAND. She further submits that the defendants are not using the mark PETER ENGLAND on their invoices or on any other material.
2. Let an affidavit to the said effect be filed by the defendants before the next date of hearing.
3. It is clarified that the defendants can continue with their business of dealing in genuine PETER ENGLAND shirts and other apparels. This Court has not injuncted the defendants, from carrying out their business of the genuine products.
4. Re-notify on 13th September, 2024.
4. Subsequently, vide order dated 13th September, 2024, it was recorded that the defendants had filed an affidavit of compliance wherein, the defendants had stated that they were not using the PETER ENGLAND mark either on their invoices, or on any other material. Further, the sign board outside their shop had also been removed. The affidavit of compliance dated 11th September, 2024, filed on behalf of the defendants, is reproduced as under:
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2. I say that the present Affidavit is being filed in compliance with the order dated 5 September 2024 of this Honble Court, and accordingly I confirm the following:
i. That I have taken down the sign board of the Plaintiffs artistic work/ trade mark from my shop, and will not use the same in future in any manner until and unless permitted in future by the plaintiff;
ii. That I have also removed the trade mark from all the invoices, printed material, stationery material or any other material and will not use the same in future in any manner for conducting the business through Defendant No. 1 or any other entity until and unless permitted in future by the plaintiff;
3. That I undertake that Defendant No. 1 will not use the trade mark PETER ENGLAND or any other trade mark of the Plaintiff (either on its billboard / signboard / invoices) until and unless permitted in future by the plaintiff.
4. I say that Mr. Amandeep Singh i.e. Defendant No. 2 is the Manager at Defendant No. 1 (entity) and shall be covered by the aforesaid undertaking.
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5. Learned counsel appearing for the plaintiff submits that he is satisfied with the aforesaid undertaking and submits that the suit can be decreed in favour of the plaintiff.
6. When the matter was listed for hearing on 13th September, 2024, learned counsel appearing for the plaintiff had prayed that the mark of the plaintiff, i.e., PETER ENGLAND be declared as well-known. Accordingly, liberty was granted to the plaintiff to file evidence by way of affidavit in this regard.
7. Pursuant thereto, an evidence affidavit has been filed on behalf of the plaintiff. The matter was listed before the Joint Registrar (Judicial) on 06th November, 2024. The statement of counsel for defendants was noted, wherein, she stated that she has no objection to the affirmations made in the evidence affidavit. The order dated 06th November, 2024, is reproduced as under:
The plaintiff has already filed the affidavit of evidence in view of the directions dated 13.09.2024. The counsel for the defendants states that she has no objection to the affirmations made in this affidavit. Both these counsels thus states that the matter be now placed before the Flon’ble Court for final disposal. Accordingly list the matter before the Hon’ble Court on 18.12.2024.
8. Accordingly, considering the fact that the defendants have already removed the infringing board from outside their shop and in view of the compliance affidavit filed by the defendants, the suit is decreed in favour of the plaintiff and against the defendants in terms of prayer (a) to (d) of the plaint.
9. As regards the declaration of the mark as well-known, this Court notes that in the evidence affidavit, the plaintiff has clearly stated that the trademark PETER ENGLAND was originally conceived and adopted more than a century ago, i.e., in the year 1889, by the plaintiffs predecessor, Carrington Viyella Garments Limited (CVGL), England. Subsequently, the brand PETER ENGLAND was introduced in India in the year 1997 by the plaintiffs predecessor in title. The brand was subsequently acquired by the plaintiff group in the year 2000. The mark PETER ENGLAND was assigned in favour of the plaintiff by an Assignment Deed dated 21st January, 2000.
10. It is deposed that the plaintiff has over 382 stores, with the mark PETER ENGLAND, spread across more than 180 towns and cities in the country.
11. It is deposed that the brand PETER ENGLAND is a sustainable fashion brand and also is the only brand in India to have a design patent for its product, i.e., Cordeans, by PE Jeans.
12. It is deposed that the plaintiff is the registered proprietor of the trademark PETER ENGLAND in different classes. The chart showing the list of registered trademarks of the plaintiff, is exhibited as Ex. P-4, which is reproduced as under:
13. It is deposed that the registrations in favour of the plaintiff are legal, valid and subsisting in India. The printouts of the Online Status Registration Certificate of the various registrations, in favour of the plaintiff, have been filed as Ex. P-5 Colly.
14. It is further deposed that besides registrations in India, the plaintiff has got the said trademark registered in all major countries of the world, and across all continents and regions.
15. This Court notes that the plaintiff has deposed that the plaintiff is also using the PETER ENGLAND trademark in an artistic manner, i.e., in relation to its goods and businesses and the art work involved in the said trademark/ label is an original artistic work. The plaintiff has secured copyright registrations in the artistic works for and its variants. The plaintiff is the owner of the registered works bearing registration nos. A-69196/2005, A-112666/2014 and A-68774/2005 for and its variants. The copyright certificates in favour of the plaintiff, have been exhibited as Ex. P-6 Colly.
16. It is deposed that apart from the plaintiffs trademark and artistic work, the stores of the plaintiff is also designed in a specific way, wherein the artistic work or its variants are prominently placed as the sign of the plaintiffs store. The screenshots of the stores of the plaintiff, as given in the evidence affidavit, are reproduced as under:
17. Learned counsel appearing for the plaintiff also submits that the plaintiff has the registration of the domain name www.peterengland.com. The extracts from the plaintiffs website for its brand PETER ENGLAND has been exhibited as Ex. P-8.
18. It is submitted that the domain name of the plaintiff was registered on 06th January, 1997. Further, printouts of the WHOIS record for plaintiffs domain name, has also been exhibited, as Ex. P-7.
19. This Court takes note of the submission on behalf of the plaintiff that the plaintiffs website under its domain name is accessible to customers worldwide and it provides information about the plaintiffs business and the products provided by it.
20. It is deposed by the plaintiff that plaintiffs products under the trademark PETER ENGLAND have become trend setting products, due to their unmatched and remarkable quality. The plaintiffs products have been continuously, extensively and exclusively used throughout India and abroad on a very large scale. The various NEWS articles pertaining to the plaintiffs expansion of its retail presence in India, have been exhibited as Ex. P-9.
21. This Court also takes note of the deposition, where the plaintiff has launched numerous different products with PETER ENGLAND as a trademark, which are available throughout the world. The plaintiff has extensive sales of its products under the trademark PETER ENGLAND. The sales turnover of the plaintiff, has been exhibited as Ex. P-11, which is reproduced as under:
22. The invoices showing the sale of goods under the PETER ENGLAND mark have been exhibited as Ex. P-11.
23. This Court also notes that the plaintiff has spent huge amount on the endorsement of the products and company by various superstars like Ayushman Khurrana, players of Chennai Super Kings Cricket Team, etc. The said public figures have regularly acted as the brand ambassador of the plaintiffs product and represented the plaintiffs product on various leading newspapers, journals, including, Times of India.
24. The photographs of some of the brand ambassadors of the plaintiff, as given in the evidence affidavit, is reproduced as under:
25. This Court also takes note of the fact that the plaintiff has expended a lot on advertisement and its promotion. The CA certificate evidencing the sale and advertisements of the plaintiff is exhibited as Ex. P-13, which is reproduced as under:
26. Considering the aforesaid, it is manifest that the plaintiffs trademark PETER ENGLAND has become distinctive and has acquired secondary significance with respect to the plaintiff and plaintiffs goods and business. The purchasing public, the trade and industry at large identify and distinguish the plaintiffs goods under the trademark PETER ENGLAND with the plaintiff and from the plaintiffs source and origin alone.
27. This Court also takes note of the various articles showing the business activities and growth of the plaintiff, as given in Ex. P-10, which is reproduced hereinabove:
28. On account of the extensive promotion of its brand undertaken by the plaintiff, and on account of the fact that the plaintiff has numerous stores across the country, it is evident that the customers across India recognize the mark of the plaintiff, i.e., PETER ENGLAND.
29. This Court also takes note of the fact that the plaintiff has also been conferred with various awards/ recognition for its trademark PETER ENGLAND, details of which have been exhibited as Ex. P-14, which is reproduced as under:
30. Considering the aforesaid facts and considering the widespread promotional and advertisement activities undertaken by the plaintiff, it is apparent that the trademark PETER ENGLAND has become the single source identifier of the plaintiff and its goods and services. This Court also notes the fact that the plaintiff has the sole and exclusive rights in and over the trademark PETER ENGLAND.
31. Taking note of the fact that the public in general is aware of the mark of the plaintiff, the immense knowledge and recognition of the trademark PETER ENGLAND, in the relevant section of consumers on account of extensive advertisement and promotion of the said trademark, is evident.
32. This Court also takes note of the fact that the plaintiff has spent huge amount on advertisement and promotion of its mark PETER ENGLAND in the last several years. The plaintiff has around 380 outlets in more than 180 cities across the country. It is also to be noted that the plaintiffs sale figures since the year 2010 for its goods under the trademark PETER ENGLAND have been in crores. Evidently the duration, extent and geographical area of the use of the trademark PETER ENGLAND are immense.
33. Perusal of the documents on record also makes it manifest that the plaintiff has been using its mark PETER ENGLAND regularly and has also asserted its right in the trademark PETER ENGLAND.
34. The plaintiff satisfies all the principles adduced in Section 2(1)(zg) of the Trade Marks Act, 1999, as well as what has been elucidated by this Court in various judgments.
35. This Court takes note of the fact that the trademark PETER ENGLAND has been registered for the last two decades vide several trademark registrations. The plaintiff has received various awards for its trademarks/ brand PETER ENGLAND.
36. This Court also notes the fact that plaintiff has sales turnover of approximately INR 1289 Crores for the year 2023-2024 under the trademark PETER ENGLAND. This Court also notes that the plaintiff has spent approximately INR 31 Crores on advertisement promotional expenses for the year 2023-2024.
37. While elucidating upon the scope of a well-known trademark carrying immense reputation amongst the general public and the factors which have to be taken into consideration in dealing a mark as a well-known mark, this Court in the case of Tata Sons Ltd. versus Manoj Dodia and Others, 2011 SCC OnLine Del 1520, has held as follows:
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5. A well known trademark is a mark which is widely known to the relevant general public and enjoys a comparatively high reputation amongst them. On account of advancement of technology, fast access to information, manifold increase in international business, international travel and advertising/publicity on internet, television, magazines and periodicals, which now are widely available throughout the world, of goods and services during fairs/exhibitions, more and more persons are coming to know of the trademarks, which are well known in other countries and which on account of the quality of the products being sold under those names and extensive promotional and marketing efforts have come to enjoy trans-border reputation. It is, therefore, being increasingly felt that such trademark needs to be protected not only in the countries in which they are registered but also in the countries where they are otherwise widely known in the relevant circles so that the owners of well known trademarks are encouraged to expand their business activities under those marks to other jurisdictions as well.
The relevant general public in the case of a well known trademark would mean consumers, manufacturing and business circles and persons involved in the sale of the goods or service carrying such a trademark.
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13. Trademarks Act, 1999 does not specify the factors which the Court needs to consider while determining whether a mark is a well known mark or not, though it does contain factors which the Registrar has to consider whether a trademark is a well known mark or not. In determining whether a trademark is a well known mark or not, the Court needs to consider a number of factors including (i) the extent of knowledge of the mark to, and its recognition by the relevant public; (ii) the duration of the use of the mark; (iii) the extent of the products and services in relation to which the mark is being used; (iv) the method, frequency, extent and duration of advertising and promotion of the mark; (v) the geographical extent of the trading area in which the mark is used; (vi) the state of registration of the mark; (vii) the volume of business of the goods or services sold under that mark; (viii) the nature and extent of the use of same or similar mark by other parties; (ix) the extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of law and trademark registry and (x) actual or potential number of persons consuming goods or availing services being sold under that brand. A trademark being well known in one country is not necessarily determinative of its being well known and famous in other countries, the controlling requirement being the reputation in the local jurisdiction.
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(Emphasis Supplied)
38. Considering the aforesaid detailed discussion, this Court is of the view that the mark of the plaintiff, PETER ENGLAND is entitled to be declared as a Well-Known mark. Accordingly, it is so declared.
39. Consequently, decree is passed in favour of the plaintiff in terms of prayer (e) of the plaint, declaring the plaintiffs trademark PETER ENGLAND as a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999.
40. Let decree sheet be drawn up.
41. The present suit, along with the pending applications, stands disposed of.
MINI PUSHKARNA, J
JANUARY 9, 2025
Corrected & Released on: 07th February, 2025
kr
CS(COMM) 566/2024 Page 1 of 28