Haldiram India Pvt. Ltd. vs. Berachah Sales Corpn. 2024 SCC OnLine Del 2265
Hon’ble Delhi High Court in a ruling has granted a decree of declaration stating the mark ‘HALDIRAM’ a well-known mark. The ruling came after considering the reputation and usage of the mark worldwide.
Justice Prathiba M. Singh observed “There is no doubt that the ‘HALDIRAM’S’ brand, with its origins deeply rooted in India’s rich culinary tradition, has not only established a presence within the national market but has also extended its influence globally, transcending geographical, cultural, and national boundaries. As evidenced by the documents placed on record, Plaintiff’s global footprint is indicative of the brand’s robust spill-over reputation, where the authenticity of ‘HALDIRAM’S’ products resonate with a diverse audience, including in those regions where the brand does not have a legal presence”.
Background
The plaintiff has beenusing the mark ‘HALDIRAM BHUJIAWALA / HALDIRAM’S’ since 1941 as a trade name and trademark for Bhujia, Papad Fried, Namkeen, etc. The plaintiff hadseveral group companies globally under the same mark and has earned a reputation worldwide. The ‘HALDIRAM’S’ mark was used in two forms, (a) one with the V-shaped logo, and (b) another one with an oval-shaped logo. The plaintiff’s case is that the defendant initially incorporated a company by the name ‘Haldiram Restro Pvt. Ltd.’ Plaintiff conducted research and discovered that defendant no. 5 claiming to be the owner of defendant no. 1 firm, Beracha Sales Corporation applied for ‘HALDIRAM BHUJIAWALA’ mark in class 43 for services for providing food, drink, and temporary accommodation. The defendant had also launched a Facebook Page and started announcing its launch of Desi Ghee, Mustard oil, Aata, etc. The Hon’ble Court vide order dated 11 September 2019 granted an ex parte ad-interim injunction restricting the defendant and its partners from manufacturing, selling, and dealing with the goods under the impugned mark.
Court’s decision
The Hon’ble High Court after hearing the arguments of both sides and after evaluating the evidence opined that the defendant’s use of the impugned name ‘HALDIRAM RESTRO PVT. Ltd. and the websites would severally lead to infringement of the plaintiff’s right. ‘Thus, considering the statutory and common law rights and the long usage of the mark ‘HALDIRAM’, as also its formative marks such as ‘HALDIRAM’S’ and ‘HALDIRAM BHUJIAWALA’, and both the V-shaped mark and the Oval-shaped mark, the Plaintiff’s rights would severally impinge if the Defendants are permitted to use the impugned name ‘HALDIRAM RESTRO PVT. LTD’ and the websites’. The court further held that the defendant’s marks are indeed identical to the plaintiff’s mark ‘HALDIRAM’. ‘Further, after perusing all the pleadings on record, an examination of the competing marks and logos reveals that the marks adopted by the Defendants are identical to the Plaintiff’s mark ‘HALDIRAM’. Further, the services for which the Defendants are using the said mark are identical, namely eateries and restaurants. An identical mark, ‘HALDIRAM,’ is being used for identical services and within identical trade channels or segments, thus, satisfying the triple identity test’. The Court also opined that various registrations and long usage of the mark entitle the plaintiff to a permanent injunction, thus restricting the defendant from using impugned marks ‘HALDIRAM BHUJIAWALA’ and/or ‘HALDIRAM’s’ or any other marks deceptively similar to plaintiff’s marks.
The Hon’ble High Court citing Tata Sons vs. Manoj Dodia [1]Held that ‘A well-known trademark is a mark which is widely known to the relevant general public and enjoys a comparatively high reputation amongst them’. The Court having concerned the arguments presented by the plaintiff held that this is a peculiar situation as the plaintiff claimed the well-known mark status across the entirety of India including the territory where the plaintiff does not exercise exclusive rights (West Bengal). The Court opined that ‘based on the averments in the plaint, the documents on record, and the reputation of the ‘HALDIRAM’S’ mark and logo as gleaned from the record, it is clear that the Plaintiffs’ mark and logo ‘HALDIRAM’, as well as the Oval-shaped mark, have acquired ‘well-known’ status. Considering the use of the mark since the 1960s in the food industry, and the factors outlined above, the mark and logo ‘HALDIRAM’ have achieved the status of a ‘well-known mark’. Accordingly, a decree of declaration declaring the mark ‘HALDIRAM’, as well as the Oval-shaped mark, as a ‘well-known’ mark in respect of food items as well as in respect of restaurants and eateries, is granted’.
New Balance Athletics Inc. vs New Balance Immigration Private Limited 2023 SCC OnLine Del 3529
New Balance Athletics Limited, a renowned U.S.-based shoemaker has been granted the status of a well-known mark considering its mark ‘NEW BALANCE’ and ‘NB’.
Justice Pratibha M. Singh observed that “NEW BALANCE is a unique combination of two distinctive words i.e. ‘New’ and ‘Balance’ which have no connection, allusion, or description of the products of the services offered by Plaintiff. The logo is also quite distinctive and has been repeatedly enforced by the Court orders against misuse. The global reputation of the Plaintiff’s marks has been proved on record. In addition, Plaintiff has placed on record sufficient documentary evidence in support of the prayer for declaration as a well-known mark”.
Background
Plaintiff. New Balance Athletics Limitedhas registered immense growth for over a century and sells its products in over 120 countries including India through retail stores, departmental stores, and online shops. The Plaintiff states that it works with more than 25 producers worldwide and employs more than 8000 employees. The Plaintiff has also granted the right to use its marks in India to an Indian licensee and has opened several shops in Delhi, Chandigarh, and Lucknow since 2016. The New Balance Immigration Private Limited is a company that deals with the provision of immigration and visa procurement services. Defendantuses the mark ‘NEW BALANCE’ and the ‘NB’ device mark are part of the company’s trade nameand also runs its business through the website www.New balance immigrationInc. Plaintiff first became aware of Defendant’s mark in May 2022 and proceeded to send cease legal notices to Defendant. The notices were ignored and the plaintiff filed a suit. The Court first issued an ad-interim injunction barring the Defendant from using the ‘NEW BALANCE’ and ‘NB’ name and mark concerning its immigration services. However, the prayerclause for the well-known declaration was exempted.
Court’s decision
The Court opined that Plaintiff owns a good reputation and goodwill in respect of the ‘NEW BALANCE’ mark that extends beyond the plaintiff’s goods. The court held that the defendant’s mark was deceptively similar to the plaintiff’s mark.
| Defendant’s mark | Plaintiff’s mark |
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‘From the comparison above, it is clear that the defendant’s mark is deceptively similar to the plaintiff’s marks. The defendant is also using an ‘NB’ device mark that incorporates the plaintiff’s ‘NB’ mark in its entirety, which evokes an association with the plaintiff’.
The Court placing reliance on Hermes International vs. Crimzon Fashion Accessories Pvt. Ltd[2] held that the factors outlined by the Single Judge under Section 11(6) of the Trade Marks Act, 1999 in the Hermes International Case [3]Were the factors on which the witness of the plaintiff has given evidence?The court observed that Mr. Gupta claimed that all the factors of Section 11(6) of the Trade Marks Act, 1999, for the trademark to be called well-known, are satisfied by the Plaintiff’s marks. The court noted that the mark ‘NEW BALANCE’ comprises two plural words, ‘New’ and ‘Balance’ which have no meaning or significance towards the products or services of the Plaintiff. ‘This Court further notes that the mark ‘NEW BALANCE’ is a unique combination of two distinctive words i.e. ‘New’ and ‘Balance’ which have no connection, allusion or description of the products of the services offered by the Plaintiff’.
The court opined that the device mark has also stood the test of distinctiveness as laid down inDisruptive Health Solutions vs. Registrar of Trade Marks.[4] The Court relying on its decision in Levi Strauss and Co. vs. Interior Online Services Pvt. Ltd[5], granted a ‘well-known’ status to the ‘NEW BALANCE’ and ‘NB’ marks. However, the Court clarified that there shall be no monopoly on the words ‘New’ and ‘Balance’if separately in respect of any goods or services.
Hermes International vs. Crimzon Fashion Accessories Private Limited 2023 SCC OnLine Del 883
‘Hermes of Paris’ or ‘Hermes’has been ranked as one of the world’s most valuable brands, renowned for its exquisite leather goods, lifestyle accessories, home furnishing, perfumery, and jewelry. The Hon’ble Delhi High Court has officially granted Hermes the status of the well-knownmark for its stylized and popular ‘H’ mark. The court has observed that the mark fulfills all necessary requisites and factors enumerated in section 11(6)and section 11(7)for declaring a mark as well-known under section 2 (1)(zg) of the Trademark Act.
Background
Hermes International has filed a case of trademark infringementagainst Crimzon Fashion Accessories Private Limited for adopting a mark similar to their registered 
trademark. In the suit for permanent injunction, Hermès asserted that Crimzon had infringed their rights by listing on its website using Hermès’ mark. It was further submitted that Hermès is a ‘well-known’ brand with stores located in Mumbai and Delhi where the products of the plaintiff are displayed with their famous ‘H’ /mark. By the order dated December 23, 2022, the Hon’ble Delhi High Court had issued a permanent injunction against Crimzon Fashion from using the mark and has directed to take down infringing listings from the website. But, the question of whether ‘H’ is a well-known mark was left unanswered
Court’s decision
The Hon’ble Court listed various factors enumerated under section 11(6) of the Trade Marks Act, 1999 that needed tobe established before concluding that Plaintiff’s mark was a well-known trademark. The five criteria mentioned are the degree of such knowledge or familiarity with the mark, the duration, scope, and territory of use, promotion and advertisement, registration information, and record of enforcement of the rights of the mark. The counsel for the plaintiff produced details regarding each of the five factors stated in section 11(6) including the distinctive and exclusive nature of the Plaintiff’s mark, its use and manner of advertisement, registration in various countries, and actions taken against the infringement. Considering the numerous documents filed by Plaintiff in the course of the proceedings, the Court was satisfied that the requirements of Section 11(6) read with Section 11(7) have been fulfilled.“In the present case, for example, he submits that, as the product is specific to the fashion industry, and the material that he has placed on record indicates that the criteria enumerated in Clauses (i) to (v) of Section 11(6) stand satisfied concerning the renown of the mark in the fashion industry, the mark is entitled to be certified as a well-known trade mark”.
Glaxo Group Limited and Another vs. Manoj Kumar Jain and Others 2023 SCC OnLine Del 5525
BETNESOL, a popular and iconic mark in the pharmaceutical and medicine industry was granted the status of well-known. The mark BETNESOL was first conceived in the early 1960s and since then the goods-bearing mark has been available in India. The decision is based on Mark’s extensive use, publicity, and exclusivity considering tablets and other ophthalmic and pharmaceutical preparations.
Pratibha M. Singh J. opined “Considering the use of the mark since the 1960s in the pharmaceutical sector, the mark ‘BETNESOL’ has achieved the status of a ‘well-known mark’. Accordingly, a decree of declaration declaring the mark ‘BETNESOL’ as a ‘well-known’ mark in respect of pharmaceutical and medicinal items as also cognate and allied products is granted”.
Background
The suit was filed by Plaintiff No. 1-Glaxo Group Limited and Plaintiff No. 2-GlaxoSmithKline Pharmaceuticals Limited (hereinafter, ‘the Plaintiffs’) against Defendant No. 3-Macro Pharmaceuticals and its two partners Defendant No. 1-Mr. Manoj Kumar Jain and Defendant No. 2-Mr. Vipin Kumar Jain seeking protection of the following trademarks of the Plaintiffs (hereinafter, ‘the Plaintiffs’ marks’). The plaintiffs found that the defendants were using the marks ZINEMAC, BETLONE, COBAMAC, PHEXIMAC, FERIFOL, and EL THROXY along with packaging which according to the plaintiff was an infringement of their registered trademark and also passing off. The Hon’ble Court vide order dated 31st May 2023 has granted an ex-parte injunction restraining the defendant from manufacturing, offering for sale, selling, displaying, advertising, marketing, directly or indirectly, any pharmaceutical products bearing the Impugned Marks which is deceptively/identically similar to plaintiffs’ marks. Subsequently, the plaintiff further seeksa permanent injunction and also a declaration of the plaintiff’s mark as a well-known mark.
Plaintiff mark
Defendant mark
Court’s decision
The court held that the defendants’ marks ZINEMAC, COBAMAC, ELTHROXY, FERIFOL-Z, and PHEXIMAC were deceptively similar to the plaintiffs’ marks due to their phonetic and structural resemblance. The matter was later resolved amicably between the parties through a settlement application filed under Order XXIII Rule 3 CPC, as mentioned in para 6: “After the filing of the present suit, the matter has been resolved amicably between the parties. An application under Order XXIII Rule 3 CPC has been filed setting out the terms and conditions of the settlement, which has been arrived at.” Regarding the plaintiffs’ prayer to declare BETNESOL as a well-known mark, the court examined the evidence of extensive use, sales figures, publicity, and enforcement actions. Based on the averments in the plaint, the documents on record, and the reputation of the mark BETNESOL,the court declared BETNESOL as a ‘well-known mark’ for pharmaceutical and medicinal items as well as cognate and allied products, considering its long-standing use since the 1960s and the factors under Section 11(6) of the Trade Marks Act, 1999 as outlined in Levi Strauss and Co. v. Interior Online Services Pvt. Ltd[6]. And Hermes International v. Crimzon Fashion Accessories Pvt. Ltd[7].The suit was decreed in the above terms, and a decree sheet was directed to be drawn up accordingly.
Atomberg Technologies Private Limited vs. Jogaram Sirvi and Others 2023 SC OnLine Bom 2665
Hon’ble Bombay High Court had declared ATOMBERG a well-known mark under section 2(1) (zg) of the Trade Marks Act, 1999. ATOMBERG is a distinct and famous mark of Atomberg Technologies Private Limited, an enterprise dealing in home appliances, primarily fans.
R.I. Chagla J. observed “I think that the Plaintiff’s ATOMBERG trademark satisfies the criteria and tests of a well-known trademark as stipulated in Sections 11(6), 11(7), and other provisions of the Trade Marks Act, 1999. Therefore, I have no difficulty in affirming that the Plaintiff’s ATOMBERG trademark qualifies as a ‘well-known’ trademark in India, as defined in Section 2(1) (zg) of the Trade Marks Act, 1999”.
Background
The plaintiff’s company has been carrying business under the trademark ATOMBERG since the year 2012 and is engaged in manufacturing/ marketing/ selling a variety of home appliances. By an order dated 31st October 2023, this Court granted ex-parte ad-interim reliefs in terms of prayer clause (a), (b), and (d) of the Interim Application (L) No. 30248 of 2023 against the Defendants. The counsel for Plaintiff submitted that the said trademark/name ATOMBERG has two components, i.e., ATOM and BERG. “Atom” is the smallest unit of matter, and “Berg” comes from iceberg, which is at times bigger than mountains. He further contended that the journey of an organization from the smallest building block (Atom) to that of a really big global aspiration (Berg) is how Plaintiff coined the said trademark/name. He submitted that the said trademark ATOMBERG is coined and inherently distinctive and uses the website bearing the domain name www.atomberg.com. which provides details of the plaintiff’s goods and business. Plaintiff’s business was spreading over 60 cities across India and Plaintiff had earned substantial revenues running into crores in respect of the said goods soldbusiness done under the said trademarkATOMBERG, including the said packaging/trade dress. The Defendants have no objection to this Court declaring that the Plaintiff’s trademark ATOMBERG is a well-known trademark in India as sought in terms of prayer clause (g) to the plant.
Court’s decision
The Hon’ble Court opined that the plaintiff’s mark had garnered a significant and enduring reputation and goodwill throughout India. “The recognition, reputation, and goodwill of the Plaintiff’s well-known trademark ATOMBERG, now extends beyond any specific class of goods or services, encompassing all classes. It is pertinent to note that the Defendants have no objection to this Court declaring that the Plaintiff’s trademark ATOMBERG is a well-known trademark in India. Further, the court noted that the plaintiff has diligently safeguarded its rights in the ATOMBERG trademark by initiating appropriate actions including obtaining restraining orders from the Bombay High Court and Delhi High Court”.
The Hon’ble Court further observed that the plaintiff’s mark is a coined mark and the same is inherently distinctive and deserves the highest degree of protection. The Courtheld “It is a settled principle of law that a trademark 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 is of absolute distinctiveness”. The court held that the plaintiff’s mark satisfies the conditions and factors of the well-known mark under sections 11(6) and 11(7) of the Trademarks Act, 1999.
Burger King Company LLC vs. Virendra Kumar Gupta and Another 2023 SCC OnLine Del 7735
Burger King Corporation, an American multinational chain of hamburger fast food restaurants has been granted well-known status for its stylized“BURGER KING” mark. TheDelhi High Court came to the decision considering the long use, extensive operation, and global reputation of the mark.
Pratibha M. Singh, J. observed “considering the long period, during which the ‘BURGER KING’ mark and its variations have been used for fast foods,especially for Burgers the said mark has achieved the status of a ‘well-known mark”
Background
The Plaintiff-Burger King Company LLC is the proprietor of the mark ‘BURGER KING’, which it had adopted in the year 1954, and has expanded over the years to more than 100 countries. The Plaintiff avers that it owns over 4000 trademark and service mark applications across the world. The Plaintiff first became the registered proprietor of the mark ‘BURGER KING’ in India in the year 1989. The plaintiff operates more than 400 ‘BURGER KING outlets in India and has a chain of 13,000 fast foodrestaurants in around 92 countries. It operates its business through the domain name www.bk.com and www.burgerking.com, holding registrations since the year 1994. In the year 2011, Plaintiff came to know about the Defendants using the mark ‘BURGER KING’ both as a part of the trading style and as a mark A cease-and-desist notice was sent to the defendants by the plaintiff in 2011, and in 2013, plaintiff’s again sent a letter as per which an additional six month was given to phase out any residual usage of the products bearing the trade mark/name ‘BURGER KING’, but defendants did not send any reply. Thereafter, a suit was filed by the plaintiff against the defendants, and initially, an ex parte order of injunction was granted against the defendants in 2014 later the matter was referred to mediation, however, the mediation was
Plaintiff trademark
Defendant trademark
Court’s decision
The parties consented to resolve their disputes over the ‘BURGER KING’ and ‘BURGER EMPEROR’ marks on some conditions.The defendants were restrained from using the ‘BURGER KING’ mark, its formative marks, and specific logos and shall not contest the registrations of the plaintiff in respect of the marks. The defendants were permitted to utilize the ‘BURGER EMPEROR’ mark, its elements, and particular logos connected to food products, beverages, snacks, and other related products without the plaintiff’s protest.The oppositions and rectifications filed by the plaintiff against the defendants’ trademarks and artistic work registrations were withdrawn. The defendants further agreed to stay their appeal on the initial injunction order.These cancellation petitions were filed by the defendants against the plaintiff’s ‘BURGER KING’ trademarks and were dismissed for withdrawal.The court held the ‘BURGER KING’ mark as a ‘well-known’ mark due to the usage of the mark for a long time and its association with fast foods, particularly burgers. The suit was entered in terms of the settlement agreement between the parties.
As regards the status of a well-known mark, the Court opined that on the strength of averments in the plaint, the documents placed on record, and the reputation of the “BURGER KING” mark it is obvious that it should acquire a “well-known” status,“For the declaration of the mark ‘BURGER KING’ as a well-known mark, considering the long period, during which the ‘BURGER KING’ mark and its variations have been used for fast foods,especially for Burgers, and the factors outlined above, the said mark has achieved the status of a ‘well-known mark’. Accordingly, a decree of declaration is liable to be passed declaring the ‘BURGER KING’ mark as a ‘well-known’ mark in terms of paragraph 38 (e) of the prayer in the Plaint”.
Apollo Hospitals Enterprises Ltd vs. Dr. Dheeraj Saurabh 2023 SCC OnLine Mad 7521
Hon’ble Madras High Court has declared the mark “Apollo” as a well-known trademark in the healthcare and pharmaceutical industry under section 2(1) (zg) read with section 11 of the Trade Marks Act, 1999.
ABDUL QUDDHOSE, J. observed “the name Appolo’ is perceived to be synonymous with the plaintiff and the plaintiff is therefore entitled to the highest level of protection as the public at large associates the name ‘Apollo’ only with the plaintiff insofar as health and pharmaceutical segments are concerned. Therefore, the plaintiff trademark falls within the definition of well- a known mark within the meaning of Section 2(1)(zg) of the Act and deserves protection, that is conferred to well-known marks under the Trade Marks Act”.
Background
Apollo Hospitals Group is a leading health care provider in India formed by Dr. Prathap C. Reddy in 1979 who envisaged providing quality health care to the masses. Apollo also had numerous distinct trade names like Apollo, Apollo Hospital, Apollo Diagnostic, and Apollo Clinic in the area of health services 
. It is a company that majors in integrated healthcare in Asia with over 10, 000 beds in 71 hospitals, 5, 000 pharmacies, 2, 000 clinics & diagnostic centers, telemedicine services, academic institutions, medical research, nursing institutes, and others in India and other countries in the region. It also invests in medical hi-tech equipment and maintains hospitals by extending the name and business of Apollo Hospitals Group to other hospitals across the globe and achieving a high value from the exclusive ‘Apollo’ brand that demonstrates excellence in healthcare. The plaintiff learned in July 2022, that the defendant blatantly used a deceptively similar mark of New Appolo Hospital for its hospital business. Therefore, the plaintiff had put up a cease and desist notice dated 21. 07. 2022 requesting the defendant not to use the mark New Apollo Hospital.As the offending party did not cooperate by either pleading guilty or stopping utilizing the said trademark in violation of the plaintiff’s rights for the year 2022, the plaintiff was left with no option but to institute this suit seeking relief.
Court’s decision
The Hon’ble Court observed that both the Trademark Registry and the Court had concurrent jurisdiction as far as the provisions of Sections 11(6) and 2 (1)(zg) of the Trademarks Act, 1999 and the Amended Trade Marks Rules 2017, are concerned. “As seen from the aforesaid sections and in particular, Section 11 (6) of the Trademarks Act, 1999, it is clear that both the Registrar of Trademarks as well as the Court having competent jurisdiction can recognize a trademark as a well-known mark. The Trademarks Act does not prohibit this Court, which is a competent Court, from recognizing the plaintiff’s trademark as a well-known mark”.
The Hon’ble Court observed that Section 2(1)(zg) of the Act definesa well-known trademark and Section 11(6) of the Act commands additional protection to the trademark which is well-known. The factors and requirements to be considered when a company trademark is established to qualify for a well-known mark have been provided in section 11 (6) and section 11 (9). In the present case the trademark ‘Apollo’ has successfully met the criteria as specified by Section 11(6) of the Trade Marks Act to confirm its superior and well-recognized status in the field of healthcare and pharmaceutical industries. Therefore, it can be established from the foregoing that ‘Apollo’ is a well-known trademark recognized in India as well as internationally due to the years of business operations coupled with significant turnovers being recorded including advertisement as well as enforcement actions by the plaintiff.
The Hon’ble Court further observed that the name ‘Apollo’ was associated with the plaintiff insofar as health and pharma domains. The general consumer thus equates the name Apollo only to the plaintiff’s services. Therefore, the plaintiff’s trademark comes under the purview of Section 2 (1) (zg) of the Act and qualifies for the highest level of protection attached to such a mark. Based on the foregoing, the Court determined that the trademark ‘Apollo’is a well-known mark under Sections 11(6) and 2(1)(zg) of the Trademarks Act, 1999 concerning the aforesaid healthcare and pharmaceutical fields. “The plaint averments, oral and documentary evidence placed on record make it clear that the plaintiff’s trademark Apollo’ and its variants are well-known marks in the health and pharmaceutical industry. Hence, the plaintiff is entitled to get recognition by this Court for its trademark Apollo’ as a well-known mark in respect of the healthcare and pharmaceutical segment”.
Eicher Motors Ltd. Vs. Nitin Service Point and Automobiles 2023 SCC OnLine Mad 7565
The Hon’ble Madras High Court in the landmark decision has bestowed the status of a well-known trademark upon “Royal Enfield” in respect of the motorcycle industry. The ruling came during a trademark infringement case filed by Eicher Motors Ltd (hereunder plaintiff) against Nitin Service Point and Automobiles (hereunder defendant).
ABDUL QUDDHOSE, J. observed, “that the trademark “ROYAL ENFIELD” has satisfied all the tests required for granting recognition as a well-known mark. The exhibits marked on the side of the plaintiff make it clear that in respect of the motorcycle industry, their trademark “ROYAL ENFIELD” is well-known, not only in India but also abroad”.
Background
Royal Enfield was a classic motorcycle brand company that was established in the year 1901 as ENFIELD Manufacturing Co in Redditch, England. In 1951 Pakistan fought its first Indo-Pak war and India was on the lookout for the best motorcycles that would be used for patrolling the Indian army in the areas of the ceasefire line which were inaccessible and hilly. This led to the the first order of the Royal Enfield Bullet 350 which was in the year 1952. It was at this time that the Royal Enfield Company entered into its important partnership with the Indian military. The defendant Royal Enfield was involved in the manufacture and sale of its motorcycle in India under Royal Enfield’s name for large market coverage and long duration. It sold motorcycles such as Bullet, Continental GT, Thunderbird Classic, Himalayan, Interceptor, Hunter, and Meteor in India as well as seventy other countries. The plaintiff purportedly got to know on the 6th of January 2023 from its official authorized dealer that the defendant is using the same name ‘ROYAL ENFIELD’ 
for its service center. The defendant has also set up a service center, within the 7km proximity of the authorized showroom of the plaintiff which led to the filing of the present case.
Court’s decision
The Hon’ble Court observed that both the Trademark Registry and the Court have concurrent jurisdiction as far as the provisions of Sections 11(6) and 2 (1)(zg) of the Trademarks Act, 1999 and the Amended Trade Marks Rules 2017, are concerned. “As seen from the aforesaid sections and in particular, Section 11 (6) of the Trademarks Act, 1999, it is clear that both the Registrar of Trademarks as well as the Court having competent jurisdiction can recognize a trademark as a well-known mark. The Trademarks Act does not prohibit this Court, which is a competent Court, from recognizing the plaintiff’s trademark as well-known marks”.
The Hon’ble Court observed that Section 2(1)(zg) of the Act definesa well-known trademark and Section 11(6) of the Act commands additional protection to the trademark which is well-known. The factors and requirements to be considered when a company trademark is established to qualify for a well-known mark have been provided in section 11 (6) and section 11 (9). In the present case the trademark ‘ROYAL ENFIELD’ has successfully met the criteria as specified by Section 11(6) of the Trade Marks Act to confirm its superior and well-recognized status in the field of healthcare and pharmaceutical industries. Therefore, it can be established from the foregoing that ‘ROYAL ENFIELD’ is a well-known trademark recognized in India as well as internationally due to the years of business operations coupled with significant turnovers being recorded including advertisement as well as enforcement actions by the plaintiff.
The Hon’ble Court further observed that the name ‘ROYAL ENFIELD’ is associated with the plaintiff insofar as the public at large associates the said name. The general consumer thus equated the name ‘ROYAL ENFIELD’ only to the plaintiff’s services. Therefore, the plaintiff’s trademark came under the purview of Section 2 (1) (zg) of the Act and qualified for the highest level of protection attached to such a mark. Based on the foregoing, the Court determined that the trademark ‘ROYAL ENFIELD’ was a well-known mark under Sections 11(6) and 2(1)(zg) of the Trademarks Act, 1999 to the aforesaid motorcycle industry. “The plaint averments, oral and documentary evidence placed on record make it clear that the plaintiff’s trademark “ROYAL ENFIELD” and its variants are well-known marks in the motorcycle industry. Hence, the plaintiff is entitled to get recognition by this Court for its trademark “ROYAL ENFIELD” as a well-known mark in respect of the motorcycle industry”.
Chapter 4 Corp. vs Dhanpreet Singh Trading as Punjabi ADDA 2023 SCC OnLine Del 4454
The Hon’ble Delhi High Court in a landmark ruling had passed a decree of declaration affirming the mark “SUPREME” a well-known mark under section 2(1) (zg) read with section 11 of the Trade Marks Act, 1999.
PRATHIBA M. SINGH, J. observed, “On the strength of averments in the plaint, and the documents placed on record, and the reputation in the red-box device mark ‘SUPREME’ as gleaned from the record, it is clear that the Plaintiff has acquired a ‘well-known’ status”.
Background
Plaintiff Supreme registered the trademark ‘SUPREME’ in 1994 in the U. S. and began using it in India in 2006. Supreme owns over 700 trademarks for the 
term across classes and also filed applications for the ‘SUPREME’ red box device marks in India. The plaintiff found that the defendant Dhanpreet Singh is using the ‘SUPREME’ mark on T-shirts sold through www.punjabiadda.com and www.punjabiadda.com.The Plaintiff filed a suit for a preliminary and permanent injunction as to the use of the mark ‘SUPREME’ by the defendant. The Hon’ble Court granted an ex-partead-interim injunction on November 11, 2022, and ordered the defendant to stop using the SUPREME mark in the same red box. To date the defendant not having filed a written statement; but the parties continue to engage in settlement negotiation on 13th January 2023. On 1st May 2024, both parties notified the court that they had settled their disputes and filed an application under Order XXIII Rule 3 of the CPC and seek a decree declaring the plaintiff’s mark a well-known mark under section 2(zg) Trade Marks Act, 1999.
Court’s decision
The Court observed that the plaintiff’s ‘SUPREME’ mark was endorsed by various international celebrities and had acquired a significant reputation in India. The Court observed that while the word ‘SUPREME’ is a dictionary word, the declaration of “well-known” status is limited to the ‘SUPREME’ 
red-box logo and not the word itself.The Court referred to previous cases, including Levi Strauss and Co. v. Imperial Online Services Pvt. Ltd.[8]And Hermes International v. Crimzon Fashion Accessories Pvt. Ltd[9]., which outlined the factors to be considered for declaring a mark as ‘well-known’ under Section 11(6) of the Trade Marks Act, 1999.The Court, after analyzing the submissions made by the Plaintiff and considering the documents placed on record, declared the Plaintiff’s “SUPREME” red-box logo as a “well-known” trademark concerning apparel and clothing. This declaration was based on the following factors:
a. The widespread recognition and reputation of the “SUPREME” red-box logo among the relevant public, including in India.
b. The extensive duration, geographical area, and extent of use and promotion of the “SUPREME” red-box logo, spanning over 29 years.
c. The successful enforcement of rights in the “SUPREME” red-box logo by courts and registration authorities.
d. The acquired distinctiveness and secondary meaning of the “SUPREME” red-box logo due to its extensive usage.
[1](2011) 46 PTC 244 (Del)
[2]2023 SCC OnLine Del 883
[3]Ibid
[4]2022 SCC OnLine Del 2002
[5]2022/DHC/001222
[6]2022/DHC/001222
[7]2023 SCC OnLine Del 883
[8]2022/DHC/001222
[9]2023 SCC OnLine Del 883
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