Aarohi Girish Dhumale
The Bombay High Court on 22nd October, 2024 declared ‘Girnar’ to be a ‘well-known trademark’.
The plaintiff had filed a lawsuit seeking a permanent injunction to prevent the defendant from infringing on the plaintiff’s registered trademark “GIRNAR” and the copyright associated with its original artistic work that is part of the trademark/logo. The plaintiff also claimed passing off and other related reliefs. Additionally, the plaintiff seeks a declaration confirming that the “GIRNAR” trademark is recognized as a well-known trademark in India.
A Single Judge Bench led by R.I. Chagla, J. concluded that the plaintiff’s trademark meets the criteria for a well-known trademark as outlined in Sections 11(6) and 11(7) of the Trade Marks Act, 1999 (“the 1999 Act”) and qualifies as a ‘well-known’ trademark in India under Section 2(1)(zg) of the 1999 Act.
The plaintiff stated that the founders of the Girnar Group began their business of selling tea and spices in 1928, with the trademark “GIRNAR” being used for these products since 1975 by the plaintiff’s predecessors and since 1993 by the plaintiff itself. The plaintiff has expanded from trading in bulk tea to offering a wide range of products, including various types of tea, coffee, spices, biscuits, breads, cookies, instant foods, beverages, and related services, all under the “GIRNAR” trademark. It was argued that “GIRNAR” is an arbitrary mark, lacking any direct or indirect significance related to the plaintiff’s goods or services, making it inherently distinctive and deserving of strong protection. The plaintiff emphasized that its artistic label featuring the “GIRNAR” trademark is prominently displayed on all its products and in its advertising and promotional materials, including letterheads, signboards, banners, hoardings, labels, brochures, pamphlets, flyers, and stationery. The plaintiff relied on various case laws as well.
The defendant said that they have no objection to granting the trademark to the plaintiff.
The Court observed that the plaintiff’s trademark and label had gained significant reputation and goodwill across India. It noted that the plaintiff had diligently protected its rights to the trademark by taking appropriate actions, including securing restraint orders from the Court. The Court affirmed the established principle that a trademark can be protected if it is either inherently distinctive or has acquired distinctiveness. It concluded that due to the plaintiff’s continuous and extensive use of the trademark, along with its efforts to promote and safeguard it, the trademark had indeed become a household name in India, enjoying a wide and admirable reputation among the public. Consequently, there was no doubt that the trademark was associated exclusively with the plaintiff.
The Court supported the plaintiff’s reliance on the case of Haldiram India Pvt. Ltd. v. Berachah Sales Corpn., 2024 SCC OnLine Del 2265, stating that the plaintiff’s trademark extended beyond the specific products or services offered under it, with its recognition, reputation, and goodwill encompassing all classes of goods and services. It also noted that the defendant had no objection to the Court recognizing and declaring the plaintiff’s trademark as a well-known trademark in India. Therefore, the Court concluded that the plaintiff’s trademark met the criteria and tests for a well-known trademark as outlined in Sections 11(6) and 11(7), along with other relevant provisions of the 1999 Act, and qualified as a ‘well-known’ trademark in India according to Section 2(1)(zg) of the 1999 Act.
Case Name: Girnar Food & Beverages Pvt. Ltd. TNI Plastics
Case Number: Commercial IPR Suit (L) No. 26309 of 2024
Bench: Justice R.I. Chagla