PETER ENGLAND joins India’s list of Well-Known Trademarks

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Delhi High Court declares "PETER ENGLAND" a well-known trademark, citing strong brand presence and trademark infringement by the defendants.

Summary

The Delhi High Court has recognized "PETER ENGLAND" as a well-known trademark under Indian law. Aditya Birla Fashion successfully argued that the brand holds significant goodwill and market presence. The court also found the defendants guilty of infringing the trademark and issued a permanent injunction.

Court: Delhi High Court

Date of Order: 09 January 2025 (Corrected & Released on 07 February 2025)

Plaintiff: Aditya Birla Fashion and Retail Limited

Defendants: Friends Inc & Anr.

Facts of the Case

The Plaintiff, Aditya Birla Fashion and Retail Limited, owns a trademark “PETER ENGLAND” (hereinafter referred to as the ‘Mark’) and sought an injunction against the Defendants, Friends Inc & Anr., for infringement of the Mark. The Plaintiff contended that the Defendants’ use of ‘PETER ENGLAND’ on their signboards, invoices, and business materials misled consumers and caused confusion.

Previously, on 12 July 2024, the Court restrained the Defendants from using the Mark. Later, on 11 September 2024, the Defendants filed an affidavit stating that they had removed the infringing signage and had ceased using the mark. On 13 September 2024, during the hearing, the Plaintiff prayed for recognition of “PETER ENGLAND” as a well-known trademark.

Issues Before the Court 

    1. Whether the Defendants’ use of the Mark, “PETER ENGLAND” constituted trademark infringement?
    2. Whether “PETER ENGLAND” should be declared a well-known trademark?

Contentions of the Parties

 Plaintiff’s Contentions
    • “PETER ENGLAND” has been in use since 1889 and was introduced in India in 1997.
    • The mark has substantial goodwill, with over 382 stores in 180+ cities.
    • The brand has a strong online presence and significant sales turnover (₹1289 Crores in 2023-24).
    • The Plaintiff has spent approximately ₹31 Crores on advertising and promotions in 2023-24.
    • Unauthorized use by the Defendants was misleading consumers and diluting brand equity.
Defendants’ Contentions
    • They had already removed the infringing signage and ceased usage.
    • They were only selling genuine “PETER ENGLAND” products and had no intention of misrepresenting their business.
    • They have no objection to ‘Peter England’ being declared as well-known.

Court’s Analysis and Findings

Trademark Infringement:

The Court found that the Defendants’ use of “PETER ENGLAND” on their signboards and business materials amounted to infringement. Further, the Court admitted the affidavit undertaking the removal of the Mark from signboards, invoices and marketing material, and included that as a part of the order.

Well-Known Trademark Status:

The Court reviewed the extensive use, recognition, and commercial success of the Mark, “PETER ENGLAND”. The Court noted that the Plaintiff’s trademark has been registered for over two decades and has received various awards and recognitions.

Further, the Court relied upon Tata Sons Ltd. v. Manoj Dodia & Ors. to determine whether the Plaintiff’s Mark could be considered a well-known mark. The Court reaffirmed that a well-known trademark must be widely recognized among consumers and have a strong market presence. The factors considered to determine the strong market presence include sales turnover, advertising expenditure, widespread consumer recognition, and legal enforcement.

The Court further referred to the definition under Section 2(1)(zg) of the Trade Marks Act, 1999, which reads as follows:

“(zg) 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.”

The Court went on to outline the following factors for determining a well-known trademark:

    • Public Recognition: Whether the mark is well-known among consumers and businesses.
    • Duration and Extent of Use: How long and widely the mark has been used.
    • Sales and Advertisement: The volume of business and advertising expenditure associated with the mark.
    • Geographical Reach: The extent to which the mark is known nationally and internationally.
    • Legal Protection and Enforcement: Whether the proprietor has successfully enforced rights over the mark.

Decision of the Court

The court decreed the suit in favor of the Plaintiff, permanently restraining the Defendants from using “PETER ENGLAND” in any form. The Court also declared the Plaintiff’s Mark, “PETER ENGLAND” as a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999.

Citation: Aditya Birla Fashion and Retail Limited v. Friends Inc & Anr. (CS(COMM) 566/2024, I.A. 33082/2024 & I.A. 33087/2024), Delhi High Court, on 9 January 2025 and corrected and released on 7 February 2025. Available at: https://indiankanoon.org/doc/126053203/

Article Review: Dr. Kalyan C. Kankanala

Accessibility Review: Kavya Sadashivan

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Author: Naika Salaria

Naika Salaria is a practising intellectual property (IP) attorney with BananaIP Counsels, a reputed IP firm. She is part of the firm's Trademark and Copyright team. She publishes insightful and analytical articles, case commentaries, and legal analysis on Intellepedia. The views expressed in her articles and posts on Intellepedia are personal and do not represent those of BananaIP Counsels or its members.