Source: Delhi High Court 

Why in News? 

A bench of Justice Mini Pushkarna held that PETER ENGLAND met all the criteria under Section 2(1)(zg) of the Trademarks Act, 1999 (TMA), warranting its declaration as a well-known trademark. 

• The Delhi High Court held this in the case of Aditya Birla Fashion and Retail Limited v. Friends Inc & Anr. (2025). 

What was the Background of Aditya Birla Fashion and Retail Limited v. Friends Inc & Anr. Case?   

• Aditya Birla Fashion and Retail Limited filed a lawsuit against Friends Inc and another defendant regarding the trademark "PETER ENGLAND."  
• The PETER ENGLAND brand has a long history, originally created in 1889 by Carrington Viyella Garments Limited in England.  
• The brand entered the Indian market in 1997 and was acquired by the Aditya Birla group in 2000 through a formal assignment deed. 
• The plaintiff, Aditya Birla Fashion, has built a substantial presence in India with 382 stores across more than 180 towns and cities.  
• They hold multiple trademark registrations for PETER ENGLAND across different classes and have secured copyright registrations for the artistic presentation of their brand name. 
• The brand has gained significant market recognition through extensive marketing, including endorsements by celebrities like Ayushman Khurrana and the Chennai Super Kings Cricket Team.  
• Their stores follow a specific design pattern with a prominent display of their trademarked artistic work.  
• The company has achieved considerable sales success, with a turnover of approximately INR 1289 Crores for 2023-2024, supported by significant advertising expenditure of around INR 31 Crores in the same period. 
• The defendants, Friends Inc and their manager Amandeep Singh, were using the PETER ENGLAND mark on their signboard and business materials.  
• This led Aditya Birla Fashion to seek a permanent injunction against the defendants to stop them from using the trademark and artistic work associated with PETER ENGLAND. 
• The plaintiff has demonstrated extensive market presence through various channels, including a registered domain name (peterengland.com) since 1997, widespread retail operations, and significant brand recognition.  
• The company has also received various awards and recognition for the PETER ENGLAND brand, establishing it as a significant player in the Indian fashion retail sector. 

What were the Court’s Observations?   

• The Court first noted the compliance history, observing that the defendants had already removed the PETER ENGLAND signboard from their shop and stopped using the mark on their invoices and other business materials.  
• The defendants filed a formal affidavit confirming these actions and undertaking not to use the trademark in the future without the plaintiff's permission. 
• Regarding the well-known status of the trademark, the Court made several significant observations: 
  • The Court acknowledged the historical significance of the PETER ENGLAND mark, noting its century-old origins from 1889 and its established presence in India since 1997.  
  • The Court recognized that Aditya Birla Fashion had properly acquired the rights through a formal assignment in 2000. 
  • On market presence, the Court observed that the brand's extensive network of 380 outlets across 180 cities demonstrated significant geographical reach.  
  • The Court particularly noted that this widespread presence had made the mark recognizable to customers throughout India. 
  • The Court paid special attention to the brand's financial performance, noting sales figures in the crores since 2010 and specifically highlighting the INR 1289 Crores turnover for 2023-2024.  
  • The substantial advertising expenditure of INR 31 Crores for the same period was seen as evidence of significant brand investment.  
  • Regarding brand protection, the Court observed that the plaintiff had secured multiple trademark registrations across different classes and maintained these registrations for over two decades.  
  • The Court also noted the company's proactive approach in protecting its intellectual property rights. 
  • The Court made specific observations about the brand's distinctiveness, noting that PETER ENGLAND had acquired secondary significance in relation to the plaintiff's business.  
  • The Court found that the purchasing public, trade, and industry clearly identified the mark exclusively with the plaintiff. 
  • In determining the well-known status, the Court referenced the principles from the Tata Sons Ltd. v. Manoj Dodia case (2011), considering factors such as public knowledge, duration of use, extent of products and services, advertising efforts, geographical reach, and successful enforcement of rights. 
• Based on these comprehensive observations, the Court concluded that PETER ENGLAND met all the criteria under Section 2(1)(zg) of the TMA warranting its declaration as a well-known trademark. 
• This observation was particularly significant as it elevated the legal protection available to the mark. 

What is a Well-Known Trademark? 

• Section 2 (1) (zg) of TMA states the definition of a well known trademark. 
• It states that “well known trade mark”, in relation to any goods or services, means 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.