The Bombay High Court has declared 'Girnar', a popular tea brand as a well known trademark in India. Court said that the plaintiff's trademark satisfies 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 Trade Marks Act, 1999.
Justice RI Chagla was hearing an IPR infringement suit filed by Girnar Foods and Beverages Pvt Ltd against TNI Plastics. While disposing off the suit, he observed- "I have no difficulty in affirming that the Plaintiff's trade mark indeed qualifies as a 'well-known' trade mark in India within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999."
Appearing for the defendant, Advocates Mitesh Parmar tendered an Affidavit-cum-Undertaking dated October 21, 2024 of Mr. Tauhid Ahmed Abdul Kadar Khan, sole proprietor of the Defendant. He informed the Court that the Defendant wishes to submit to a decree in terms of prayer clauses (a), (b) and (c) of the Plaint.
On the other hand, the Plaintiff's lawyer, Advocate Hiren Kamod, Plaintiff, argued that apart from decreeing the Suit in terms of prayers clauses (a), (b) and (c) of the Plaint, the Plaintiff is also entitled to a declaration that the Plaintiff's trademark 'Girnar' is a well known trademark in India.
He highlighted before the Court, the extent of the Plaintiff's business in India to underscore the reputation and goodwill acquired by the Plaintiff in the trademark GIRNAR in India. Mr. Kamod submitted that in addition to over 40,727 retailers and over 255 distributors in India, the Plaintiff has over 50 standalone retail outlets in the Western and Southern regions of India.
Finally, Mr.Kamod urged the court to consider that the parameters that are required to be taken into consideration for a well-known trade mark as per Sections 11(6) and 11(7) of the Trade Marks Act, 1999 have been sufficiently fulfilled by the Plaintiff in the present case.
Thus, after hearing detailed submissions on behalf of the plaintiff, Justice Chagla observed –
"I have heard the submissions advanced by Mr. Kamod and perused the record. From the documents filed along with the Plaint, it is evident that the Plaintiff's trade mark has garnered significant and enduring reputation and goodwill throughout India."
Moreover, the Court noted that it is a settled principle that a trade mark is capable of being protected if either it is inherently distinctive or has acquired distinctiveness. In this spectrum of distinctiveness, the first category of marks is of arbitrary, fanciful, coined or invented marks, which are of absolute distinctiveness. The marks falling under this category deserve the highest degree of protection. Since the trade mark is an arbitrary mark having no significance or connection, whether direct or indirect, to the goods / services of the Plaintiff, the same is inherently distinctive and therefore deserves the highest degree of protection, Court said.
Consequently, the Court declared 'Girnar' a well known trademark in India, observing –
"The material produced shows that the Plaintiff's trade mark has acquired immense and long-standing reputation and goodwill throughout India. By reason of the continuous and extensive use of the trade mark by the Plaintiff and the efforts taken by it in popularizing and protecting the same, the Plaintiff's trade mark has indeed become a household name in India, and the same enjoys wide and enviable reputation and goodwill amongst the general public in India. There can be doubt that the trade mark is associated with the Plaintiff and no one else."
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