Delhi High Court: In a suit filed on behalf of plaintiff seeking permanent injunction restraining the use of the impugned mark ‘PETER ENGLAND’ by the defendants causing infringement of the plaintiffs’ trade mark, copyright and artistic work on the mark ‘PETER ENGLAND’, 
, Mini Pushkarna, J., stated that on account of the extensive promotion of its brand undertaken by the plaintiff, and on account of the fact that the plaintiff had numerous stores across the country, it was evident that the customers across India recognize the mark of the plaintiff, i.e., ‘PETER ENGLAND’. Consequently, the decree was passed in the plaintiff’s favour, declaring the plaintiff’s trade mark ‘PETER ENGLAND’, as a well-known trade mark under Section 2(1) (zg) of the Trade Marks Act, 1999.
Background
In the present case, while the matter was listed for hearing on 13-09-2024, the plaintiff had prayed that the plaintiff’s mark, ‘PETER ENGLAND’ to be declared as well-know. Accordingly, liberty was granted to the plaintiff to file evidence by way of affidavit in this regard. In the evidence affidavit, the plaintiff had clearly stated that the trade mark ‘PETER ENGLAND’ was originally conceived and adopted more than a century ago, i.e., in the year 1889, by the plaintiff’s predecessor, Carrington Viyella Garments Limited (“CVGL”), England.
Subsequently, the brand ‘PETER ENGLAND’ was introduced in India in 1997 by the plaintiff’s predecessor in title. The brand was subsequently acquired by the plaintiff group in the year 2000. The mark ‘PETER ENGLAND’ was assigned in favour of the plaintiff by an Assignment Deed dated 21-01-2000. The plaintiff has over 382 stores, with the mark ‘PETER ENGLAND’, spread across more than 180 towns and cities in the country. It was deposed that the brand ‘PETER ENGLAND’ was a sustainable fashion brand and also was the only brand in India to have a design patent for its product, i.e., Cordeans, by PE Jeans.
The plaintiff also deposed that it was also using the ‘PETER ENGLAND’ trade mark in an artistic manner, in relation to its goods and businesses and the art work involved in the said trade mark/ label was an original artistic work.
Analysis, Law, and Decision
The Court noted that the plaintiff had spent huge amount on the endorsement of the products and company by various superstars like Ayushman Khurrana, players of Chennai Super Kings Cricket Team, etc. The said public figures had regularly acted as the brand ambassador of the plaintiff’s product and represented the plaintiff’s product on various leading newspapers, journals, including, Times of India.
The Court stated that it was manifested that the plaintiff’s trade mark ‘PETER ENGLAND’ had become distinctive and had acquired secondary significance with respect to the plaintiff and plaintiff’s goods and business. The purchasing public, the trade and industry at large identify and distinguish the plaintiff’s goods under the trade mark ‘PETER ENGLAND’ with the plaintiff and from the plaintiff’s source and origin alone.
The Court stated that on account of the extensive promotion of its brand undertaken by the plaintiff, and on account of the fact that the plaintiff had numerous stores across the country, it was evident that the customers across India recognize the mark of the plaintiff, i.e., ‘PETER ENGLAND’. Considering the aforesaid facts and considering the widespread promotional and advertisement activities undertaken by the plaintiff, it was apparent that the trade mark ‘PETER ENGLAND’ had become the single source identifier of the plaintiff and its goods and services. This Court also noted the fact that the plaintiff had the sole and exclusive rights in and over the trade mark ‘PETER ENGLAND’.
The plaintiff satisfied all the principles adduced in Section 2(1) (zg) of the Trade Marks Act, 1999. Thus, the Court stated that it was of the view that the plaintiff’s mark, ‘PETER ENGLAND’ was entitled to be declared as a ‘well-known’ mark. Consequently, the decree was passed in the plaintiff’s favour, declaring the plaintiff’s trade mark ‘PETER ENGLAND’, as a well-known trade mark under Section 2(1) (zg) of the Trade Marks Act, 1999.
[Aditya Birla Fashion and Retail Ltd. v. Friends Inc, 2025 SCC OnLine Del 634, decided on 09-01-2025]
Advocates who appeared in this case:
For the Plaintiff: Ankur Sangal, Ankit Arvind and Shashwat Rakshit, Advocates.
For the Defendants: Sonia Bemera, Advocate.
