Bombay High Court: Plaintiff filed the present suit seeking permanent injunction restraining defendant from infringing plaintiff’s registered trade mark GIRNAR/
and plaintiff’s copyright subsisting in its original artistic work comprised in the trade mark/logo , for passing off and for other ancillary reliefs. Plaintiff has also sought a decree of declaration that plaintiff’s trade mark GIRNAR/ was a well-known trade mark in India. A Single Judge Bench of R.I. Chagla, J., opined that plaintiff’s trade mark satisfied the criteria and tests of a well-known trade mark as stipulated under Sections 11(6) and 11(7) of the Trade Marks Act, 1999 (‘the 1999 Act‘) and qualified as a ‘well-known’ trade mark in India within the meaning of Section 2(1)(zg) of the 1999 Act.
Background
Plaintiff submitted that the Girnar Group’s founders commenced the business of selling tea and spices in 1928 and the goods were sold under the trade mark GIRNAR since 1975 by plaintiff’s predecessors and since 1993 by plaintiff. Plaintiff had diversified from trading in bulk tea to offering all kinds of tea, coffee, spices and other products like biscuits, breads, cookies, instant foods, beverages, etc. and in providing related services under the trade mark GIRNAR. It was submitted that the trade mark GIRNAR was an arbitrary mark having no significance or connection, whether direct or indirect, to the goods/services of plaintiff, therefore, the same was inherently distinctive and deserved the highest degree of protection.
It was stated that plaintiff’s artistic label containing plaintiff’s trade mark GIRNAR was prominently used on all the goods of plaintiff as also on the Plaintiff’s advertisement and promotional material such as letterheads, signboards, banners, hoardings, labels, brochures, pamphlets, flyers, advertising material, papers, stationery, etc.
Analysis, Law, and Decision
The Court opined that plaintiff’s trade mark/label mark garnered significant reputation and goodwill throughout India. Further, plaintiff diligently safeguarded its rights in the trade mark by initiating appropriate actions including obtaining restraint orders from this Court. The Court stated that it was settled principle that a trade mark was capable of being protected if either it was inherently distinctive or had acquired distinctiveness.
The Court stated that by reason of the continuous and extensive use of the trade mark by plaintiff and the efforts taken by it in popularizing and protecting the same, plaintiff’s trade mark had indeed become a household name in India, and the same enjoyed wide and enviable reputation and goodwill amongst the public in India and thus, there could be doubt that the trade mark was associated with plaintiff and no one else.
The Court stated that plaintiff’s reliance on Haldiram India Pvt. Ltd. v. Berachah Sales Corpn., 2024 SCC OnLine Del 2265 was correct and thus opined that plaintiff’s trade mark/label mark surpassed the scope of merely encompassing products/services sold or rendered under the said trade mark and the recognition, reputation, and goodwill of plaintiff in its trade mark extended beyond any specific class of goods or services, thereby encompassing all classes.
The Court noted that defendant had no objection to this Court considering and declaring plaintiff’s trade mark as a well-known trade mark in India. Thus, the Court opined that plaintiff’s trade mark satisfied the criteria and tests of a well-known trade mark as stipulated under Sections 11(6) and 11(7), and other relevant provisions of the 1999 Act. The Court also opined that qualified as a ‘well-known’ trade mark in India within the meaning of Section 2(1)(zg) of the 1999 Act.
[Girnar Food & Beverages Pvt. Ltd. v. TNI Plastics, 2024 SCC OnLine Bom 3429, decided on 22-10-2024]
Advocates who appeared in this case :
For the Plaintiff: Hiren Kamod a/w Anees Patel, Blossom Noronha i/by M/s Jehangir Gulabbhai & Billimoria & Daruwalla for the Plaintiff;
For the Defendant: Mitesh Parmar a/w Shweta Kansara for the Defendant.
Buy Trade Marks Act, 1999 HERE
