Bombay High Court declares "Girnar" a well-known mark under Trademarks Act

The Bombay High Court on Tuesday declared the trademark "Girnar," a popular tea brand, as a 'well-known mark' in India under the Trademarks Act [Girnar Food & Beverages Pvt. Ltd v. TNI Plastics].

The decision by Justice RI Chagla came in a dispute between Girnar Food & Beverages Pvt. Ltd. and TNI Plastics, where the former sought legal protection against trademark infringement.

"In my view, it can be safely held that the Plaintiff’s trade mark, 'Girnar,' has surpassed the scope of merely encompassing products/services sold or rendered under the said trademark. The recognition, reputation, and goodwill of the Plaintiff in its trademark now extends beyond any specific class of goods or services, thereby encompassing all classes ... I have no difficulty in affirming that the Plaintiff’s trade mark 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 said in its October 22 ruling.

Girnar Food and Beverages had filed a suit seeking a permanent injunction to prevent TNI Plastics from using its trademark, claiming that such use would likely lead to consumer confusion and harm its brand reputation.

The Court had previously granted ex-parte ad-interim reliefs against TNI Plastics on August 27, 2024, while the matter was under consideration.

During the hearings, advocate Hiren Kamod appeared for Girnar and detailed the brand's extensive history, stating, that the Girnar Group has been in business since 1928, and that their products were being sold under the Girnar trademark since 1975.

He emphasized the diverse range of goods the brand offers, including tea, coffee, spices, and snacks, and noted that Girnar's products are marketed under a distinctive mark.

The Court acknowledged that Girnar has successfully met the criteria for a trademark to be considered a "well-known" mark under the Trade Marks Act of 1999. These criteria include public recognition, geographical use and promotion, registration history, and successful enforcement.

Kamod also provided evidence of Girnar's extensive advertising and promotional activities, including a significant sales volume of approximately ₹48,777 lakhs for the fiscal year 2022-23 alone. He further highlighted the brand's online presence and its participation in trade fairs, which further solidified its recognition.

“It is evident that the Plaintiff’s trade mark/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 found.

It affirmed that Girnar “has indeed become a household name.”

The Court 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.

In a gesture of cooperation, the defendant's counsel also indicated that they had no objection to the Court declaring Girnar as a well-known trademark.

The Court, therefore, decreed the suit in favor of Girnar Food & Beverages, and recognized the Girnar trademark's well-known status.

The declaration of Girnar as a well-known trademark brings significant benefits, including enhanced protection against identical or similar trademarks. This means that the Registrar of trademarks is obligated to protect the trademark, making it easier for Girnar to oppose potential infringements.

Additionally, the defense of honest use is not available to trademark infringers, which further protects Girnar from misleading claims. The brand can also seek the removal of infringing marks and is exempt from renewal fees, preserving its trademark indefinitely.

Moreover, the well-known status of a trademark boosts global recognition, facilitating international expansion and safeguarding the trademark in various jurisdictions.

Advocate Hiren Kamod along with Advocates Anees Patel, Blossom Noronha on behalf of Jehangir Gulabbhai and Billimoria and Daruwalla appeared for Girnar.

Advocate Mitesh Parmar along with Advocate Shweta Kansara appeared for TNI Plastics.

[Read Order]