Delhi High Court Recognises TAJ As A Well-known Trademark

• IHCL sought a declaration that TAJ is a well-known mark for hospitality services and presented comprehensive evidence to substantiate its claim
• The court concluded that TAJ qualifies as a well-known mark under Section 2(1)(zg)
• The mark's expansive international footprint and substantial revenue generation reinforced its status

The Indian Hotels Company Limited (IHCL) has recently secured a significant legal victory in its trademark infringement suit before the Delhi High Court (The Indian Hotels Company Limited v Bhatt (CS(COMM) 717/2023)). The company filed the action against Gaurav Roy Bhatt and another, alleging infringement of the TAJ trademark for hospitality services and seeking its recognition as a well-known trademark.

The court, at the stage of admission of the suit, granted an ex parte injunction in favour of IHCL and restrained the defendants from using the mark TAJ. The defendants, in response, filed a written statement and subsequently consented to a decree of permanent injunction.

This article examines the evidence submitted by IHCL and the court's findings on IHCL seeking a declaration that TAJ is a well-known trademark.

IHCL's claim for well-known status

IHCL, a Tata Group company incorporated on 1 April 1902, operates a portfolio of hospitality brands, including TAJ, SeleQtions, VIVANTA and GINGER. It opened its first hotel, The Taj Mahal Palace, in 1903 in Mumbai, and has since grown into a global hospitality leader with around 350 hotels worldwide. IHCL is publicly traded on both the Bombay Stock Exchange and the National Stock Exchange and is recognised as South Asia's largest hospitality company by market capitalisation.

To substantiate its claim that the TAJ mark qualifies for recognition as a well-known trademark, IHCL presented comprehensive evidence, including oral and documentary evidence:

1. Brand recognition: TAJ was recognised as India's strongest brand by Brand Finance in 2020, 2022 and 2023.
2. Historical significance: archival photographs of Mahatma Gandhi, Jawaharlal Nehru and Rabindranath Tagore at The Taj Mahal Palace, Mumbai.
3. Awards and accolades: flyers and records detailing various awards won by TAJ hotels since 2008.
4. Media coverage: extensive online news articles highlighting TAJ's reputation and industry leadership.
5. Consumer recognition: customer reviews attesting to the brand's popularity and prestige.
6. Geographical reach: TAJ's widespread and long-standing use across multiple regions.
7. Magazine publications: continuous brand promotion in magazines from 2009 to 2015.
8. Trademark registrations: legal proceeding certificates evidencing the registration of TAJ and TAJ-formative marks.
9. International protection: a list of TAJ trademark registrations in various countries.
10. Successful enforcement: legal precedents showcasing IHCL's successful enforcement of its trademark rights in the TAJ mark

Court ruling

After reviewing the oral and documentary evidence, the court concluded that TAJ qualifies as a well-known trademark under Section 2(1)(zg) of the Trademarks Act 1999. The ruling was based on the following key factors:

1. Established recognition: the TAJ marks have been in long and continuous use, are widely recognised by the public, and are associated with significant goodwill and reputation.
2. Global presence and revenue: TAJ's expansive international footprint and substantial revenue generation reinforced its status.
3. Prior legal recognition: the court had previously declared IHCL's VIVANTA mark as a well-known trademark.
4. Legal compliance: the TAJ mark meets the criteria outlined in Sections 11(6) and 11(7) of the act for determining well-known status in the hospitality sector.

In light of these findings, the court declared that TAJ was a well-known trademark under Section 2(1)(zg) of the act.

Comment

This ruling underscores that seeking the coveted status of well-known mark requires extensive evidence of use and recognition among the trade and public. It also serves as a precedent emphasising the significance of brand heritage, global presence and consumer recognition in determining well-known status.

This article first appeared in WTR Daily.

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