Bombay High Court Recognizes Girnar Tea as a Well-Known Trademark

In a recent landmark decision, the Bombay High Court recognized “Girnar,” a popular tea brand, as a “well-known trademark” in India under the Trademarks Act. This ruling marks a significant milestone in the realm of intellectual property rights and brand protection in India.

The case, presided over by Justice Riyaz Chagla, involved a suit filed by Girnar Food & Beverages Pvt. Ltd. against TNI Plastics, seeking legal protection against trademark infringement. The plaintiff’s advocate, Hiren Kamod, presented a compelling case highlighting the brand’s extensive history and widespread recognition.

Girnar’s journey began in 1928 when the founders commenced the business of selling tea and spices. Since 1975, the goods have been sold under the trademark GIRNAR by the plaintiff’s predecessors and since 1993 by the plaintiff. Over the years, Girnar has diversified its offerings to include various kinds of tea, coffee, spices, biscuits, breads, cookies, instant foods, beverages, and related services under the trademark GIRNAR.

The Court’s Observations

Justice Chagla, while delivering the judgment, stated, “I have no difficulty in affirming that the Plaintiff’s trademark indeed qualifies as a ‘well-known’ trade mark in India within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.” The court acknowledged that Girnar has successfully met the criteria for a trademark to be considered “well-known” under the Trade Marks Act of 1999, which includes public recognition, geographical use and promotion, registration history, and successful enforcement.

The court noted, “It is evident that the Plaintiff’s trademark/label mark (Girnar) has garnered significant and enduring reputation and goodwill throughout India. Further, the Plaintiff has diligently safeguarded its rights in the trademark by initiating appropriate actions including obtaining restraint orders from this Court.” The court further added that Girnar “has indeed become a household name.”

Defendant’s Stance

The defendant, represented by advocate Mitesh Parmar, did not object to the court declaring Girnar as a well-known trademark. Consequently, the court decreed the suit in favor of Girnar Food & Beverages, recognizing its trademark as “well-known.”

Advocate Hiren Kamod’s Argument

Advocate Hiren Kamod, representing the plaintiff, argued that apart from decreeing the suit in terms of prayers clauses (a), (b), and (c) of the plaint, the plaintiff was also entitled to a declaration that the plaintiff’s trademark ‘Girnar’ is a well-known trademark in India. He underscored the extent of the plaintiff’s business in India to highlight the reputation and goodwill acquired by the plaintiff in the trademark GIRNAR. 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.

Kamod further urged the court to consider that the parameters required to be taken into consideration for a well-known trademark, as per Sections 11(6) and 11(7) of the Trade Marks Act, 1999, had been sufficiently fulfilled by the plaintiff in the present case.

The Court’s Final Observations

Justice Chagla concluded that the trademark has transcended its original goods and is now associated with a wide array of products, satisfying the legal definition of a “well-known trademark.” The court observed, “The material produced shows that the Plaintiff’s trademark has acquired immense and long-standing reputation and goodwill throughout India. By reason of the continuous and extensive use of the trademark by the Plaintiff and the efforts taken by it in popularizing and protecting the same, the Plaintiff’s trademark has indeed become a household name in India, and the same enjoys wide and enviable reputation and goodwill amongst the general public in India.”

Implications of the Ruling

Once a trademark is declared as well-known, it receives significant benefits, including enhanced protection against identical or similar trademarks. The Registrar of trademarks is obligated to protect the trademark, making it easier for Girnar to oppose potential infringements. Additionally, it boosts global recognition, facilitating international expansion and safeguarding the trademark in various jurisdictions.

Conclusion

The Bombay High Court’s recognition of Girnar as a well-known trademark sets a significant precedent in the protection of intellectual property rights in India. It underscores the importance of diligent brand protection and the recognition of long-standing reputation and goodwill in determining trademark status. This decision not only fortifies Girnar’s market position but also serves as a guiding light for other brands seeking similar recognition and protection.

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