A recent judgment of the Delhi High Court in the trademark suit filed by the renowned food and confectionary giant Haldiram was not at all surprising considering the popularity of the plaintiff. The plaintiff sought for a permanent injunction and recognition for the mark HALDIRAM and its variation HALDIRAM BHUJIAWALA against the defendant Berachah Sales Corporation restraining them from using the similar mark in any of the business endeavours. This decision is likely to end Haldiram's worry over infringement for the foreseeable future.
Background Of The Case
The plaintiff company Haldiram has a long and distinguished history, tracing its roots back to 1941 in a village in Bikaner, Rajasthan. Over the decades, they have meticulously cultivated a brand image with high-quality, trusted food products. “The HALDIRAM'S” this mark is mainly used in two different forms:
- One with the V shaped logo- registered under class 30 claimed usage since 30th November 1965.
- The second one with the oval shaped logo-registered under Class 30 since 23rd January 2003.
The defendant registered the infringing company under the name ‘Haldiram Restro Pvt. Ltd' in 2019. The defendant has claimed exclusive operations in the restaurant, resort, hotel, and banquet hall sector, for which they had a pending trademark application in Class 43. The Plaintiff filed a petition under Section 16(1)(b) of the Companies Act, 2013 for which an order for ex-parte ad interim decree was passed by the Court in January 2019. The local commissioner appointed for the investigation found during the raid of the premises, that the defendant was selling products under the mark Haldiram Bhujiawala. Additionally, expired products from a sister company of the plaintiff were found at the same location with packaging dating back to 2018.
The defendant had challenged Haldiram's claims on multiple fronts. Submitting that they might have withheld crucial information about ongoing disputes over the trademarks themselves within their family. The plaintiff denied any wrongdoing regarding the disputed family member and the claims and supplied it with documented evidence. While acknowledging past family disputes over the mark's use in West Bengal, Haldiram asserted that these have been resolved through settlements and legal actions. They claimed significant brand reputation outside of West Bengal and highlighted the damage caused by the defendant's alleged use of their mark on substandard products.
The defendant's counsel had argued that the plaintiff's company may not solely own the proprietorship, as they have not provided enough evidence to prove brand association, as well as the pending registration under class 43 for which the plaintiff had neither possessed nor filed for it. The plaintiff had stated that the defendant's use of an identical mark is malicious, even in the registered class of trademark. It is to exploit Haldiram's established reputation built through significant advertising, sales exceeding INR. 5,000 crores, and a vast network of outlets that they emphasized their well-known status in India and internationally and how the defendant's wrongful use of the mark had resulted in a considerable monetary loss.
Judgement
The Court gave the final decision granting permanent injunction against the defendant on using any variation of the plaintiff's mark along with INR 50,00,000/- in damages and INR 2,00,000/- as actual costs. On the plea of recognition, Haldiram was declared as a ‘well known' trademark under the Section 2(1) (zg) of the Trademarks Act, 1999 in all over India including West Bengal.
The judgement deliberated on the provisions of the Trademark Act under Section 11(6) where it lays the criteria for declaration of a well-known mark. It includes the factors such as knowledge and recognition, the geographical extent and duration of usage of the mark as well as the successful enforcement of the rights for protection of that mark. The Court also placed the reliance on Tata Sons Ltd. v. Manoj Dodia, stated that to prevent exploitation and unfair competition, trademark owners should consider registering their well-known marks not just domestically, but also in countries where their brands are recognized. The “dilution doctrine” further protects these marks by preventing usage of marks that may result in a loss of goodwill of a well-known trademark by invalidating the mark. A reference was made to the case Disruptive Health Solutions v. Registrar of Trade Marks , wherein the test of distinctiveness is necessary for the mark to be absolutely distinctive falling under the first category of ‘arbitrary, fanciful and invented marks.' Deciding in the favour of Haldiram, the Court recognized the reputation of the of well-known mark to be ‘dynamic'.
Conclusion
The concept of a ‘well known' trademark is not only to protect the reputation of a brand but also to prevent its loyal customers from dubious purchases. The Court in this case recognized that the goodwill and trust attached to the legacy of well-known trademark such as Haldiram's guarantees and protects consumers from sub-standard quality of products. Using the criteria of triple identity test at hand, Berachah sales corporation was found using the mark and the name of the plaintiff maliciously with the intent to deceive the customers by portraying similarity in the two brands. By the principle of ‘spilled over reputation' as mentioned in the judgement itself, Haldiram as a brand has cross-border reputation and hence, the court accepted the plea of recognition for the trademark. The reiteration of the principles of ‘well-known' trademark as showcased in this case will serve as landmark in the future trademark suits.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.