Delhi High Court Declares HALDIRAM a Well-Known Trademark | Landmark IP Judgment

Introduction

The Haldiram India Pvt. Ltd. v. Berachah Sales Corporation case is a landmark example of the protection of a reputed trademark and recognition as a well-known mark under the Indian laws. The brand identity and its protection are important in the competitive market for prevention from deception and dilution of the mark. Thus, recognising such trademarks as well-known is important to consider the goodwill, reputation and consumer trust in the brand.

Legal Provisions

The case involves provisions under the Trade Marks Act, 1999 and the Copyright Act, 1957. Section 2(1)(zg) of the Trade Marks Act, 1999 defines ‘a well-known mark’ as a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

Section 11(6) of the Act defines the factors considered for recognition of a well-known mark. The plaintiff also relied on Section 2(c) of the Copyright Act, 1957, to claim protection over the artistic packaging and trade dress as original work.

Summary of the Case

The Plaintiff has a renowned Indian food brand, Haldiram India Pvt. Ltd., owning multiple trademarks for food products such as ‘HALDIRAM’ and ‘HALDIRAM BHUJIAWALA’. They enjoy a trans-border and pan-India reputation in the field of food products and restaurants. They also have their variants in V-shaped and Oval-shaped logos featuring the letters ‘HRB’ since the 1960s. They own several distinctive and visually appealing marks for HALDIRAM for their packaging materials as original works under Section 2(c) of the Copyright Act, 1957. They also own several different domains under the name of Haldiram, used to sell their products online.

The defendants incorporated a company under ‘Haldiram Restro Pvt. Ltd.’ in 2019. Due to this, the plaintiff filed a suit under Section 16(1)(b) of the Companies Act, 2013. During this, the defendants also registered a domain as ‘www.haldiramrestro.com’ and also sold food products through their Facebook page.

The Plaintiff has filed a trademark infringement suit against Berachah Sales Corporation for using marks such as ‘HALDIRAM RESTRO’ and ‘HALDIRAM BHUJIAWALA’.

Thus, the plaintiff has filed this suit seeking protection of their mark and a declaration for the mark as a ‘well-known mark’ under the Trade Marks Act, 1999. Moreover, the plaintiff seeks a decree of permanent injunction restraining the defendants from selling such products under the impugned mark.

The plaintiff alleged that the defendants infringed on their trademark using deceptively similar marks.

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Defendant’s Arguments

The defendants argued that the plaintiff had not registered any mark under class 43 where the defendants were operating. Thus, the plaintiff’s mark lacked distinctiveness in the domain of class 43. Moreover, they contended that there are multiple entities using Haldiram, so the plaintiff cannot claim any exclusive rights over the mark. Further, the defendants stopped appearing in the matter.

Plaintiff’s submissions

The Plaintiff submitted that their sales and advertising expenses exceed Rs. 3,500 crores, while sales surpass Rs. 5000 crores. They possess trade mark registrations domestically as well as internationally. They have also secured foreign registrations and are also expanding in the educational sector, hence, emphasizes on the recognition as a well know mark. They also submitted that they enjoy immense goodwill, reputation and visibility in India. Further, The Plaintiff also claimed for damages of Rs 2.05 crores along with reimbursement as they were compelled to contest over 20 additional trade mark application before the Registry

Court’s Analysis and Judgment

Based on the defendants' facts and actions, initially, the court granted an ex parte ad interim injunction restricting them from selling and manufacturing their products under the impugned mark.

Additionally, the court opined that the defendants conducted malafide and dishonest actions. The Court was satisfied with the Triple Identity Test for similar marks, products, and an overlapping customer base. The evidence of usage of the mark since 1960, global recognition, sales, and promotional spend justified the declaration of the ‘HALDIRAM’ mark as a well-known mark.

Conclusion

The Court granted the ‘HALDIRAM’ mark, the oval-shaped mark, and the logo as a well-known mark in respect of food as well as restaurants and eateries. Moreover, the Court ordered the rejection of all the applications filed by the defendants before the Registry.