Delhi High Court: Plaintiff, Haldiram India (P) Ltd. filed the present suit seeking protection of its mark ‘HALDIRAM’, and a declaration that the said mark, along with its variations such as ‘HALDIRAM BHUJIAWALA’ was ‘well-known’ in terms of Section 2(1)(zg) of the Trade Marks Act, 1999 (‘the Act’). Further, plaintiff seeks a decree of permanent injunction, restraining defendants from selling products under the impugned mark ‘HALDIRAM’/‘HALDIRAM BHUJIWALA’ or any other marks that were deceptively similar to plaintiff’s mark ‘HALDIRAM’.
Prathiba M. Singh, J.*, granted a decree of permanent injunction in plaintiff’s favour against defendants and held that defendants, and all others acting for and on their behalf were restrained from, in any manner, using the impugned marks ‘HALDIRAM BHUJIAWALA’ and/or ‘HALDIRAM’s’ or any other marks that were deceptively similar to plaintiff’s marks. Further, the Court granted a decree of declaration declaring the mark ‘HALDIRAM’, and the Oval-shaped mark, as a ‘well-known’ mark in respect of food items and in respect of restaurants and eateries.
Background
Plaintiff coined the mark ‘HALDIRAM BHUJIAWALA/HALDIRAM’S’ in 1941 and the said mark was used both as a trade name and a trade mark for Bhujia, Papad Fried, Namkeen, Saltish Daal, Sweets, and various other edible food products. The ‘HALDIRAM’S’ mark was used in two forms, (a) one with the V-shaped logo, 
This Court, vide order dated 11-9-2019, granted an ex parte injunction, which was continuing till 2-4-2024. This Court had earlier appointed a Local Commissioner to seize defendants’ goods and as per the report, defendants’ office displayed banners and flex boards using the mark ‘HALDIRAM BHUJIAWALA’ to promote products like ghee, salt, wheat flour, packaged water, mustard oil, and basmati rice.
Analysis, Law, and Decision
The Court after considering the long usage of the mark ‘HALDIRAM’, and also its formative marks such as ‘HALDIRAM’S’ and ‘HALDIRAM BHUJIAWALA’, and both V-shaped mark and Oval-shaped mark, opined that plaintiff’s rights would be severally impinged if defendants were permitted to use the impugned name ‘HALDIRAM RESTRO PVT. LTD’ and the websites, namely, ‘www.haldiramrestro.com’ and ‘www.bscindia.net’.
The Court also opined that an examination of the competing marks and logos revealed that the marks adopted by defendants were identical to plaintiff’s mark ‘HALDIRAM’. Further, the services for which defendants were using the said mark were identical, namely eateries and restaurants. The Court stated that an identical mark, ‘HALDIRAM,’ was being used for identical services and within identical trade channels or segments, thus, the triple identity test was satisfied.
The Court further opined that the various registrations and a long usage of the mark ‘HALDIRAM’, and the goodwill vesting in the said mark, entitled plaintiff to a permanent injunction. Thus, the Court held that defendants, and all others acting for and on their behalf were restrained from, in any manner, using the impugned marks ‘HALDIRAM BHUJIAWALA’ and/or ‘HALDIRAM’s’ or any other marks that were deceptively similar to plaintiff’s marks. The Court thus granted a decree of permanent injunction in plaintiff’s favour against defendants.
The Court opined that defendants had deliberately chosen to stay away from the proceedings merely to ensure that it was not required to produce its accounts. Thus, defendants could not be allowed to enjoy a premium for their dishonesty. The Court further observed that the Local Commissioner’s report showed that there was extensive use of the marks ‘HALDIRAM’ and ‘HALDIRAM BHUJIAWALA’ by defendants. Additionally, several products from HALDIRAM INC. bearing the mark ‘HALDIRAM BHUJIAWALA’ mark were found, such as All-in-One Namkeen, Boondi, Soan Papdi, Mini Samosa, Mustard Oil, and Signature Salted Peanuts.
The Court, after considering the inventory of the infringing products and the conduct of defendants, held that damages of Rs 50 lakh were awarded in favour of plaintiff, in addition to costs. Thus, the Court held that the present suit was decreed in favour of plaintiff for Rs 50 lakh on account of damages and Rs 2 lakh were awarded as costs.
Well-known mark declaration
The Court stated that the term “well-known mark” was defined under Section 2(1)(zg) of the Act and further Section 11(6) of the Act laid down the factors that were to be considered for declaration of a mark as a “well-known”. The Court noted that plaintiff placed reliance on the doctrine of spill-over reputation, where a mark’s recognition and prestige transcend national borders, influencing consumer behavior in regions where the brand might not have a direct commercial presence. The Court further noted that plaintiff claimed a well-known declaration even in respect of an area, where the right of plaintiff did not extend i.e., West Bengal.
The Court observed that situation in the present case was peculiar as even though plaintiff did not hold rights in respect of the mark ‘HALDIRAM’/‘HALDIRAM BHUJIWALA’ in West Bengal, it claimed that the said mark was ‘well-known’, throughout the territory of India, including West Bengal. The Court opined that “the concept of a ‘well-known’ mark was ‘dynamic’. A well-known mark could imbue products with distinctiveness and assurance of quality that extended beyond mere geographical confines. Plaintiff exports its products not just within Asia, but to a large span of other countries. The claim for ‘HALDIRAM’ to be recognized as a ‘well-known’ mark throughout India, inclusive of West Bengal, is a testament to plaintiff’s cultural and commercial imprint. Such dynamism aims to safeguard goodwill and trust a mark commands among consumers, irrespective of territorial divisions. By granting such a declaration, the Court is also aware of the present realities of consumer perception in relation to the average consumers in the food and snacks industry”.
The Court thus granted a decree of declaration declaring the mark ‘HALDIRAM’, and the Oval-shaped mark, as a ‘well-known’ mark in respect of food items and in respect of restaurants and eateries.
[Haldiram India (P) Ltd. v. Berachah Sales Corpn., 2024 SCC OnLine Del 2265, decided on 2-4-2024]
*Judgment authored by: Justice Prathiba M. Singh
Advocates who appeared in this case :
For the Plaintiff: Neeraj Grover, Arpita Mishra, Kashish Sethi, Sunidhi Gupta, Ayushi Chandra, Ritu Khandelwal, Advocates; SK Mishra (AR)
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