Delhi High Court Declares ‘PETER ENGLAND’ a Well-Known Trademark: Recognizes Extensive Usage, Promotion, and Grants Permanent Injunction to Protect Brand Integrity

Court’s Decision:

The Delhi High Court decreed in favor of Aditya Birla Fashion and Retail Limited (the plaintiff) by:

1. Granting a permanent injunction restraining the defendants from using the plaintiff’s trademark, ‘PETER ENGLAND.’
2. Declaring ‘PETER ENGLAND’ as a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999.
3. Recognizing the plaintiff’s extensive use, promotion, and public recognition of the ‘PETER ENGLAND’ mark, the court ordered a decree to protect the trademark rights of the plaintiff.

Facts:

1. The plaintiff filed the suit against the defendants alleging infringement of the trademark ‘PETER ENGLAND,’ which is registered and owned by the plaintiff.
2. The defendants were found using the trademark on their signboard, invoices, and business materials, thus misleading the public.
3. Following earlier court directions, the defendants removed the signboard and other materials infringing on the plaintiff’s trademark.
4. The plaintiff argued that ‘PETER ENGLAND’ is a globally recognized brand, initially adopted in 1889, introduced in India in 1997, and acquired by the plaintiff in 2000.
5. The plaintiff supported its claim by presenting trademark registrations, promotional activities, and financial evidence showcasing its widespread use and distinctiveness in the market.

Issues:

1. Did the defendants’ use of ‘PETER ENGLAND’ infringe the plaintiff’s registered trademark?
2. Did ‘PETER ENGLAND’ qualify as a well-known trademark under the Trade Marks Act, 1999?

Petitioner’s Arguments:

1. The plaintiff claimed that ‘PETER ENGLAND’ had gained significant goodwill and recognition in India and globally.
   • The mark is associated with high-quality goods and has become synonymous with the plaintiff’s brand identity.
2. Evidence of over 382 retail outlets in 180 cities and towns in India, supported by financial records, demonstrated the brand’s substantial market presence.
3. The plaintiff spent over ₹31 crores in advertising and promotion in 2023-24, contributing to the brand’s recognition.
4. Trademark and copyright registrations were submitted to prove legal ownership of the mark and its artistic variants.
5. The plaintiff emphasized the extensive use of the mark for over two decades in India, supported by endorsements from public figures and collaborations with sports teams.

Respondent’s Arguments:

1. The defendants argued that they had already stopped using the infringing mark.
   • They submitted an affidavit confirming compliance with the court’s earlier orders, including the removal of the signboard and discontinuation of the trademark’s use in invoices or promotional materials.
2. The affidavit also contained an undertaking not to use the plaintiff’s trademark, ‘PETER ENGLAND,’ in the future.

Analysis of the Law:

1. Section 2(1)(zg) of the Trade Marks Act, 1999, defines a well-known trademark as a mark widely recognized among the public, identifying the goods or services of a specific source.
2. The court examined the statutory principles for determining a well-known mark, including:
   • The duration, extent, and geographical area of the mark’s use.
   • The level of recognition among the public.
   • The extent of advertising and promotion undertaken for the mark.
   • The volume and turnover of goods sold under the mark.
3. The plaintiff’s evidence demonstrated long-standing and widespread use, significant advertising expenditures, and exclusive association of the trademark with the plaintiff’s business.

Precedent Analysis:

The court referred to Tata Sons Ltd. vs. Manoj Dodia (2011 SCC OnLine Del 1520), which set out detailed criteria for determining well-known trademarks. The judgment underscored that trademarks with trans-border reputations must be protected in all jurisdictions to prevent dilution and misuse.

Factors considered for determining well-known marks include:

• Recognition by the relevant public.
• Duration and geographical extent of the trademark’s use.
• Advertising activities, sales turnover, and the exclusivity of the mark’s use.
• Evidence of successful enforcement of trademark rights in courts or trademark registries.

The court applied these principles and concluded that ‘PETER ENGLAND’ satisfied all the criteria for a well-known trademark.

Court’s Reasoning:

1. Extensive Evidence Presented:
   • The plaintiff provided evidence of the long-standing use of ‘PETER ENGLAND’ since 1997 in India and globally.
   • The trademark’s recognition was supported by the brand’s annual sales turnover exceeding ₹1,289 crores and consistent advertising investments.
2. Distinctiveness and Public Association:
   • The mark was widely associated with the plaintiff’s business and identified as a single-source identifier for high-quality apparel.
3. Global Recognition:
   • The plaintiff demonstrated registrations of the mark in multiple countries and the presence of its retail outlets across India and abroad.
4. Compliance by Defendants:
   • The defendants’ affidavit of compliance and their undertaking not to use the mark in the future were noted by the court.
5. Promotion and Marketing:
   • The plaintiff’s marketing strategies, including celebrity endorsements and collaborations with the Chennai Super Kings cricket team, played a significant role in establishing the brand’s reputation.

Conclusion:

The court ruled in favor of the plaintiff, declaring ‘PETER ENGLAND’ a well-known trademark and granting the plaintiff exclusive rights over its use. A decree was issued, granting all reliefs sought by the plaintiff. The court ordered the defendants to refrain from any future use of the mark and upheld the plaintiff’s trademark and copyright claims.

Implications:

1. Reinforcement of Well-Known Trademark Protection:
   • The judgment underscores the importance of protecting trademarks with a strong reputation to prevent dilution and misuse.
2. Encouragement for Global Brands:
   • This decision sets a precedent for protecting internationally recognized trademarks in India, even in cases of trans-border reputation.
3. Strict Enforcement Against Infringement:
   • The court’s order ensures that infringers cannot misuse a well-known mark, safeguarding brand identity and consumer trust.

This judgment is a strong affirmation of the importance of brand distinctiveness, long-standing use, and robust promotional strategies in gaining trademark protection.

Also Read – Bombay High Court Refers Interpretation of Section 50 Cr.P.C. to Larger Bench: “Does Failure to Provide Written Arrest Grounds Mandate Automatic Release?” Amid Conflicting Judicial Views on Compliance and Its Impact on Arrested Accused