Safiya Malik

The Delhi High Court has granted a decree in favor of Aditya Birla Fashion and Retail Limited in a trademark infringement suit concerning the brand ‘Peter England.’ The court issued a permanent injunction restraining Friends Inc. & Anr. from using the ‘Peter England’ mark on their signboard, invoices, or any other business material. Further, the court declared ‘Peter England’ a well-known trademark under the Trade Marks Act, 1999.

The plaintiff, Aditya Birla Fashion and Retail Limited, initiated CS(COMM) 566/2024 against Friends Inc. & Anr., alleging unauthorized use of its registered trademark ‘Peter England.’ The plaintiff sought a permanent injunction, claiming infringement of its trademark, copyright, and artistic work.

On July 12, 2024, the Delhi High Court had issued an interim order restraining the defendants from displaying the ‘Peter England’ signboard or using the mark on invoices or other business materials. On September 5, 2024, counsel for the defendants submitted that they had removed the signboard and ceased using the mark on invoices or any other material. The court recorded their submission, stating: “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.”

The defendants subsequently filed an affidavit of compliance dated September 11, 2024, affirming that they would not use the ‘Peter England’ mark in the future. The affidavit stated: “I have taken down the sign board of the Plaintiff’s artistic work/trademark from my shop, and will not use the same in future in any manner until and unless permitted in future by the plaintiff.”

It further stated: “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.”

The plaintiff’s counsel informed the court that they were satisfied with the undertaking, following which the court proceeded to consider the plaintiff’s claim for declaring ‘Peter England’ as a well-known trademark.

The Delhi High Court examined the plaintiff’s claim regarding the long-standing use, distinctiveness, and recognition of the ‘Peter England’ trademark. The plaintiff submitted an evidence affidavit detailing the history of the mark and its reputation, stating that:

• ‘Peter England’ was originally conceived and adopted in 1889 by Carrington Viyella Garments Limited, England.

• The brand was introduced in India in 1997 and was acquired by the plaintiff in 2000 through an Assignment Deed.

• The plaintiff operates over 382 stores across more than 180 towns and cities in India.

• The mark is registered in multiple classes in India and internationally.

• The plaintiff has secured copyright registrations for the artistic work associated with the mark.

• The company has invested substantial sums in advertising and endorsements, with sales turnover exceeding ₹1,289 crore in 2023-24.

The court took note of the plaintiff’s submission that: “The 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 plaintiff further submitted that it had engaged in extensive advertising campaigns, featuring celebrity endorsements, and had won multiple awards recognizing the brand’s presence and reputation.

In considering the plaintiff’s request to declare ‘Peter England’ a well-known trademark, the court referred to Section 2(1)(zg) of the Trade Marks Act, 1999, which defines a well-known trademark. The court also examined the principles established in previous rulings, including Tata Sons Ltd. v. Manoj Dodia & Ors., 2011 SCC OnLine Del 1520, which outlined the factors relevant to determining well-known trademark status.

The court noted: “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.”

The court observed that the plaintiff had met the criteria for well-known trademark status under Indian law.

Considering the evidence submitted, the court issued a final decree in favor of the plaintiff, granting relief as sought. The court ruled:

1. Permanent Injunction – The defendants are restrained from using the ‘Peter England’ trademark on their signboards, invoices, or any business material.

2. Well-Known Trademark Status – The plaintiff’s trademark ‘Peter England’ is declared a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999.

3. Decree Sheet – The court directed that a decree sheet be drawn up in favor of the plaintiff.

The judgment concluded: “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.”

With this, the suit and all pending applications were disposed of.

Case Title: Aditya Birla Fashion and Retail Limited v. Friends Inc. & Anr.
Case Number: CS(COMM) 566/2024
Bench: Justice Mini Pushkarna

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