Mumbai: The Bombay High Court recently held the trademark “Girnar”, a popular tea brand, as a “well-known trade mark” in India under the Trademarks Act.
Justice Riyaz Chagla said: “I have no difficulty in affirming that the Plaintiff’s trademark indeed qualifies as a ‘well-known’ trade mark in India within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.”
The HC was hearing a suit by Girnar Food & Beverages Pvt. Ltd. against TNI Plastics, where the former sought legal protection against trademark infringement.
“In my view, it can be safely held that the Plaintiff’s trade mark, 'Girnar,' has surpassed the scope of merely encompassing products/services sold or rendered under the said trademark. The recognition, reputation, and goodwill of the Plaintiff in its trademark now extends beyond any specific class of goods or services, thereby encompassing all classes …,” Justice Chagla said on October 22.
The suit filed by Girnar sought a permanent injunction to prevent TNI Plastics from using its trademark, claiming that such use would likely lead to consumer confusion and harm its brand reputation. Earlier on August 27 this year, the HC had granted an ex-parte (without hearing the other side) interim reliefs against TNI Plastics.
Girnar’s advocate Hiren Kamod highlighted that the group’s founders / Plaintiff’s predecessors commenced the business of selling tea and spices in 1928. Since 1975, the goods have been sold under the trademark GIRNAR by the Plaintiff’s predecessors and since 1993 by the Plaintiff. Since then the Plaintiff has diversified to offering all kinds of tea, coffee, spices and a host of other products such as biscuits, breads, cookies, instant foods, beverages etc. and in providing related services under the trademark GIRNAR.
The court acknowledged that Girnar has successfully met the criteria for a trademark to be considered a "well-known" mark under the Trade Marks Act of 1999. These criteria include public recognition, geographical use and promotion, registration history, and successful enforcement.
“It is evident that the Plaintiff’s trademark / label mark (Girnar) has garnered significant and enduring reputation and goodwill throughout India. Further, the Plaintiff has diligently safeguarded its rights in the trademark by initiating appropriate actions including obtaining restraint orders from this Court,” the court noted in a detailed order. It further added that Girnar “has indeed become a household name.”
The Court concluded that the trademark has transcended its original goods and is now associated with a wide array of products, satisfying the legal definition of a “well-known trademark”.
Defendant’s advocate Mitesh Parmar said they had no objection to the Court declaring Girnar as a well-known trademark. Hence, the court decreed the suit in favour of Girnar Food & Beverages, and recognised its trademark as “well known”.
Once a trademark is declared as well known, it gets significant benefits, including enhanced protection against identical or similar trademarks. The Registrar of trademarks is obligated to protect the trademark, making it easier for Girnar to oppose potential infringements.
It further boosts global recognition, facilitating international expansion and safeguarding the trademark in various jurisdictions.
