Bombay High Court Holds Tea Brand ‘GIRNAR’ As Well-Known Trademark In India, Says It Has Become A ‘Household Name’

The Bombay High Court has held the popular food and beverage mark–’GIRNAR’ as a well-known trademark in India within the meaning of the Trade Marks Act, noting that its recognition and goodwill extends beyond any specific class of goods or services.

In doing so the court also observed that the trade mark ‘GIRNAR’ has indeed become a household name in India.

The High Court was considering a suit moved by Girnar Food & Beverages Pvt. Ltd. (plaintiff) seeking a permanent injunction against TNI Plastics (defendant) from infringing the former’s registered trademark ‘GIRNAR’. The plaintiff had also sought a declaration that its mark is a ‘well-known’ trademark in India. The plaintiff’s business involves trade in tea, coffee, spices and products like biscuits, breads and beverages, and in providing related services.

A single judge bench of Justice R.I. Chagla in its order said, “In my view, it can be safely held that the Plaintiff’s trade mark/label mark ‘GIRNAR’ has surpassed the scope of merely encompassing products / services sold or rendered under the said trade mark. The recognition, reputation and goodwill of the Plaintiff in its trade mark ‘GIRNAR’ now extends beyond any specific class of goods or services, thereby encompassing all classes.”

Girnar stated that it has 40,727 retailers and over 255 distributors in India and that its sales revenue for goods bearing the trademark was Rs. 48777 lakhs in one financial year alone.

It contended that the ‘GIRNAR’ trademark has come to be associated across all classes of goods and services and that has acquired a secondary meaning and connotation. It stated that its mark satisfies the criteria and tests of a well-known trade mark under Sections 11(6) and 11(7) of the Act.

For context, under Section 11(6), the relevant factors for determining a well-known trademark include the public’s knowledge about the mark as a result of promotion of the trade mark, and the duration, extent and geographical area of mark. Under Section 11(7), the number of actual or potential consumers of the goods or services, number of persons involved in the channels of distribution and the business circles dealing with the goods or services are relevant factors.

The defendant- TNI Plastics did not have any objection for declaring Girnar’s mark as a well-known trademark. The high court thereafter observed that the ‘GIRNAR’ trademark has acquired significant and enduring reputation and goodwill throughout India and that the mark is associated with Girnar alone.

“The material produced shows that the Plaintiff’s trade mark ‘GIRNAR’ has acquired immense and long-standing reputation and goodwill throughout India. By reason of the continuous and extensive use of the trade mark ‘GIRNAR’by the Plaintiff and the efforts taken by it in popularizing and protecting the same, the Plaintiff’s trade mark ‘GIRNAR’ has indeed become a household name in India, and the same enjoys wide and enviable reputation and goodwill amongst the general public in India. There can be doubt that the trade mark ‘GIRNAR’ is associated with the Plaintiff and no one else,” it underscored.

It noted that since the trademark falls within the category of ‘arbitrary’ (which are of absolute distinctiveness) mark i.e., mark having no significance or connection to the goods or services, it deserves the highest degree of protection.

Considering its reputation and goodwill throughout India, the Court stated that the ‘GIRNAR’ trademark satisfies the conditions stipulated under Sections 11(6) and 11(7) of the Trade Marks Act.

It thus held that the Plaintiff’s trade mark qualifies as a ‘well-known’ trade mark in India within the meaning of Section 2(1)(zg).

Case title: Girnar Food & Beverages Pvt. Ltd. vs.TNI Plastics

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