CS(COMM) 566/2024 Page 1 of 28

$~15

* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ CS(COMM) 566/2024, I.A. 33082/2024 & I.A. 33087/2024

ADITYA BIRLA FASHION AND RETAIL LIMITED .....Plaintiff

Through: Mr. Ankur Sangal, Mr. Ankit Arvind

and Mr. Shashwat Rakshit, Advs.

M: 8874643389

versus

FRIENDS INC & ANR. .....Defendants

Through: Ms. Sonia Bemera, Adv.

M: 8920524605

CORAM:

HON'BLE MS. JUSTICE MINI PUSHKARNA

O R D E R

% 09.01.2025

MINI PUSHKARNA, J (ORAL)

1. The present suit has been filed on behalf of the plaintiff seeking

permanent injunction restraining the use of the impugned mark „PETER

ENGLAND‟ by the defendants causing infringement of the plaintiffs‟

trademark, copyright and artistic work on the mark „PETER ENGLAND‟

.

2. When the matter was listed for hearing on 12

th

July, 2024, this Court

had restrained the defendants from putting the sign board with the mark

„PETER ENGLAND‟, and were restrained from using the mark on their

invoice/ business paper.

3. This Court notes that on 05

th

September, 2024, learned counsel

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appearing for the defendants had submitted that defendants had already

removed the sign board from outside their shop and that the defendants were

not using the mark „PETER ENGLAND‟ on their invoices, or any other

material. The order dated 05

th

September, 2024, is reproduced as under:

“1. Learned counsel for the defendants has appeared, along with the

defendant in person. She submits that the defendants have already

removed the Sign Board from outside their shop, reflecting the trademark

„PETER ENGLAND‟. She further submits that the defendants are not

using the mark „PETER ENGLAND‟ on their invoices or on any other

material.

2. Let an affidavit to the said effect be filed by the defendants before the

next date of hearing.

3. It is clarified that the defendants can continue with their business of

dealing in genuine „PETER ENGLAND‟ shirts and other apparels. This

Court has not injuncted the defendants, from carrying out their business

of the genuine products.

4. Re-notify on 13th September, 2024.”

4. Subsequently, vide order dated 13

th

September, 2024, it was recorded

that the defendants had filed an affidavit of compliance wherein, the

defendants had stated that they were not using the „PETER ENGLAND‟

mark either on their invoices, or on any other material. Further, the sign

board outside their shop had also been removed. The affidavit of compliance

dated 11

th

September, 2024, filed on behalf of the defendants, is reproduced

as under:

“xxx xxx xxx

2. I say that the present Affidavit is being filed in compliance with the

order dated 5 September 2024 of this Hon‟ble Court, and accordingly I

confirm the following:

i. That I have taken down the sign board of the Plaintiffs artistic work/

trade mark from my shop, and will not use the same in future in any

manner until and unless permitted in future by the plaintiff;

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ii. That I have also removed the trade mark from all the invoices, printed

material, stationery material or any other material and will not use the

same in future in any manner for conducting the business through

Defendant No. 1 or any other entity until and unless permitted in future

by the plaintiff;

3. That I undertake that Defendant No. 1 will not use the trade mark

„PETER ENGLAND‟ or any other trade mark of the Plaintiff (either on

its billboard / signboard / invoices) until and unless permitted in future

by the plaintiff.

4. I say that Mr. Amandeep Singh i.e. Defendant No. 2 is the Manager at

Defendant No. 1 (entity) and shall be covered by the aforesaid

undertaking.

xxx xxx xxx”

5. Learned counsel appearing for the plaintiff submits that he is satisfied

with the aforesaid undertaking and submits that the suit can be decreed in

favour of the plaintiff.

6. When the matter was listed for hearing on 13

th

September, 2024,

learned counsel appearing for the plaintiff had prayed that the mark of the

plaintiff, i.e., „PETER ENGLAND‟ be declared as well-known.

Accordingly, liberty was granted to the plaintiff to file evidence by way of

affidavit in this regard.

7. Pursuant thereto, an evidence affidavit has been filed on behalf of the

plaintiff. The matter was listed before the Joint Registrar (Judicial) on 06

th

November, 2024. The statement of counsel for defendants was noted,

wherein, she stated that she has no objection to the affirmations made in the

evidence affidavit. The order dated 06

th

November, 2024, is reproduced as

under:

“The plaintiff has already filed the affidavit of evidence in view of the

directions dated 13.09.2024. The counsel for the defendants states that

she has no objection to the affirmations made in this affidavit. Both these

counsels thus states that the matter be now placed before the Flon'ble

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Court for final disposal. Accordingly list the matter before the Hon'ble

Court on 18.12.2024.”

8. Accordingly, considering the fact that the defendants have already

removed the infringing board from outside their shop and in view of the

compliance affidavit filed by the defendants, the suit is decreed in favour of

the plaintiff and against the defendants in terms of prayer (a) to (d) of the

plaint.

9. As regards the declaration of the mark as well-known, this Court

notes that in the evidence affidavit, the plaintiff has clearly stated that the

trademark „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 the year 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

st

January, 2000.

10. It is deposed that the plaintiff has over 382 stores, with the mark

„PETER ENGLAND‟, spread across more than 180 towns and cities in the

country.

11. It is deposed that the brand „PETER ENGLAND‟ is a sustainable

fashion brand and also is the only brand in India to have a design patent for

its product, i.e., Cordeans, by PE Jeans.

12. It is deposed that the plaintiff is the registered proprietor of the

trademark „PETER ENGLAND‟ in different classes. The chart showing the

list of registered trademarks of the plaintiff, is exhibited as Ex. P-4, which is

reproduced as under:

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13. It is deposed that the registrations in favour of the plaintiff are legal,

valid and subsisting in India. The printouts of the Online Status Registration

Certificate of the various registrations, in favour of the plaintiff, have been

filed as Ex. P-5 Colly.

14. It is further deposed that besides registrations in India, the plaintiff

has got the said trademark registered in all major countries of the world, and

across all continents and regions.

15. This Court notes that the plaintiff has deposed that the plaintiff is also

using the „PETER ENGLAND‟ trademark in an artistic manner, i.e.,

in relation to its goods and

businesses and the art work involved in the said trademark/ label is an

original artistic work. The plaintiff has secured copyright registrations in the

artistic works for and its variants.

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The plaintiff is the owner of the registered works bearing registration nos.

A-69196/2005, A-112666/2014 and A-68774/2005 for

and its variants. The copyright certificates in favour of the plaintiff, have

been exhibited as Ex. P-6 Colly.

16. It is deposed that apart from the plaintiff‟s trademark and artistic

work, the stores of the plaintiff is also designed in a specific way, wherein

the artistic work or its variants are

prominently placed as the sign of the plaintiff‟s store. The screenshots of the

stores of the plaintiff, as given in the evidence affidavit, are reproduced as

under:

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17. Learned counsel appearing for the plaintiff also submits that the

plaintiff has the registration of the domain name www.peterengland.com.

The extracts from the plaintiff‟s website for its brand „PETER ENGLAND‟

has been exhibited as Ex. P-8.

18. It is submitted that the domain name of the plaintiff was registered on

06

th

January, 1997. Further, printouts of the WHOIS record for plaintiff‟s

domain name, has also been exhibited, as Ex. P-7.

19. This Court takes note of the submission on behalf of the plaintiff that

the plaintiff‟s website under its domain name is accessible to customers

worldwide and it provides information about the plaintiff‟s business and the

products provided by it.

20. It is deposed by the plaintiff that plaintiff‟s products under the

trademark „PETER ENGLAND‟ have become trend setting products, due to

their unmatched and remarkable quality. The plaintiff‟s products have been

continuously, extensively and exclusively used throughout India and abroad

on a very large scale. The various NEWS articles pertaining to the plaintiff‟s

expansion of its retail presence in India, have been exhibited as Ex. P-9.

21. This Court also takes note of the deposition, where the plaintiff has

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launched numerous different products with „PETER ENGLAND‟ as a

trademark, which are available throughout the world. The plaintiff has

extensive sales of its products under the trademark „PETER ENGLAND‟.

The sales turnover of the plaintiff, has been exhibited as Ex. P-11, which is

reproduced as under:

22. The invoices showing the sale of goods under the „PETER

ENGLAND‟ mark have been exhibited as Ex. P-11.

23. This Court also notes that the plaintiff has 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 have 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.

24. The photographs of some of the brand ambassadors of the plaintiff, as

given in the evidence affidavit, is reproduced as under:

CS(COMM) 566/2024 Page 11 of 28

25. This Court also takes note of the fact that the plaintiff has expended a

CS(COMM) 566/2024 Page 12 of 28

lot on advertisement and its promotion. The CA certificate evidencing the

sale and advertisements of the plaintiff is exhibited as Ex. P-13, which is

reproduced as under:

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26. Considering the aforesaid, it is manifest that the plaintiff‟s trademark

„PETER ENGLAND‟ has become distinctive and has 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 trademark „PETER ENGLAND‟

with the plaintiff and from the plaintiff‟s source and origin alone.

CS(COMM) 566/2024 Page 14 of 28

27. This Court also takes note of the various articles showing the business

activities and growth of the plaintiff, as given in Ex. P-10, which is

reproduced hereinabove:

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28. On account of the extensive promotion of its brand undertaken by the

plaintiff, and on account of the fact that the plaintiff has numerous stores

across the country, it is evident that the customers across India recognize the

mark of the plaintiff, i.e., „PETER ENGLAND‟.

CS(COMM) 566/2024 Page 21 of 28

29. This Court also takes note of the fact that the plaintiff has also been

conferred with various awards/ recognition for its trademark „PETER

ENGLAND‟, details of which have been exhibited as Ex. P-14, which is

reproduced as under:

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30. Considering the aforesaid facts and considering the widespread

promotional and advertisement activities undertaken by the plaintiff, it is

apparent that the trademark „PETER ENGLAND‟ has become the single

source identifier of the plaintiff and its goods and services. This Court also

notes the fact that the plaintiff has the sole and exclusive rights in and over

the trademark „PETER ENGLAND‟.

31. Taking note of the fact that the public in general is aware of the mark

of the plaintiff, the immense knowledge and recognition of the trademark

„PETER ENGLAND‟, in the relevant section of consumers on account of

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extensive advertisement and promotion of the said trademark, is evident.

32. This Court also takes note of the fact that the plaintiff has spent huge

amount on advertisement and promotion of its mark „PETER ENGLAND‟

in the last several years. The plaintiff has around 380 outlets in more than

180 cities across the country. It is also to be noted that the plaintiff‟s sale

figures since the year 2010 for its goods under the trademark „PETER

ENGLAND‟ have been in crores. Evidently the duration, extent and

geographical area of the use of the trademark „PETER ENGLAND‟ are

immense.

33. Perusal of the documents on record also makes it manifest that the

plaintiff has been using its mark „PETER ENGLAND‟ regularly and has

also asserted its right in the trademark „PETER ENGLAND‟.

34. The plaintiff satisfies all the principles adduced in Section 2(1)(zg) of

the Trade Marks Act, 1999, as well as what has been elucidated by this

Court in various judgments.

35. This Court takes note of the fact that the trademark „PETER

ENGLAND‟ has been registered for the last two decades vide several

trademark registrations. The plaintiff has received various awards for its

trademarks/ brand „PETER ENGLAND‟.

36. This Court also notes the fact that plaintiff has sales turnover of

approximately INR 1289 Crores for the year 2023-2024 under the trademark

„PETER ENGLAND‟. This Court also notes that the plaintiff has spent

approximately INR 31 Crores on advertisement promotional expenses for

the year 2023-2024.

37. While elucidating upon the scope of a well-known trademark carrying

immense reputation amongst the general public and the factors which have

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to be taken into consideration in dealing a mark as a well-known mark, this

Court in the case of Tata Sons Ltd. versus Manoj Dodia and Others, 2011

SCC OnLine Del 1520, has held as follows:

“xxx xxx xxx

5. A well known trademark is a mark which is widely known to the

relevant general public and enjoys a comparatively high reputation

amongst them. On account of advancement of technology, fast

access to information, manifold increase in international business,

international travel and advertising/publicity on internet, television,

magazines and periodicals, which now are widely available

throughout the world, of goods and services during fairs/exhibitions,

more and more persons are coming to know of the trademarks,

which are well known in other countries and which on account of

the quality of the products being sold under those names and

extensive promotional and marketing efforts have come to enjoy

trans-border reputation. It is, therefore, being increasingly felt that

such trademark needs to be protected not only in the countries in

which they are registered but also in the countries where they are

otherwise widely known in the relevant circles so that the owners of

well known trademarks are encouraged to expand their business

activities under those marks to other jurisdictions as well.

The relevant general public in the case of a well known trademark

would mean consumers, manufacturing and business circles and

persons involved in the sale of the goods or service carrying such a

trademark.

xxx xxx xxx

13. Trademarks Act, 1999 does not specify the factors which the Court

needs to consider while determining whether a mark is a well known

mark or not, though it does contain factors which the Registrar has to

consider whether a trademark is a well known mark or not. In

determining whether a trademark is a well known mark or not, the

Court needs to consider a number of factors including (i) the extent

of knowledge of the mark to, and its recognition by the relevant

public; (ii) the duration of the use of the mark; (iii) the extent of the

products and services in relation to which the mark is being used;

(iv) the method, frequency, extent and duration of advertising and

promotion of the mark; (v) the geographical extent of the trading

area in which the mark is used; (vi) the state of registration of the

mark; (vii) the volume of business of the goods or services sold

under that mark; (viii) the nature and extent of the use of same or

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similar mark by other parties; (ix) the extent to which the rights

claimed in the mark have been successfully enforced, particularly

before the Courts of law and trademark registry and (x) actual or

potential number of persons consuming goods or availing services

being sold under that brand. A trademark being well known in one

country is not necessarily determinative of its being well known and

famous in other countries, the controlling requirement being the

reputation in the local jurisdiction.

xxx xxx xxx”

(Emphasis Supplied)

38. Considering the aforesaid detailed discussion, this Court is of the

view that the mark of the plaintiff, „PETER ENGLAND‟ is entitled to be

declared as a „Well-Known‟ mark. Accordingly, it is so declared.

39. Consequently, decree is passed in favour of the plaintiff in terms of

prayer (e) of the plaint, declaring the plaintiff‟s trademark PETER

ENGLAND as a well-known trademark under Section 2(1)(zg) of the Trade

Marks Act, 1999.

40. Let decree sheet be drawn up.

41. The present suit, along with the pending applications, stands disposed

of.

MINI PUSHKARNA, J

JANUARY 9, 2025

Corrected & Released on: 07

th

February, 2025

kr