HALDIRAM'S: TRANSITION FROM LOCAL FAVORITE TO NATIONAL TREASURE - ACKNOWLEDGED AS A WELL-KNOWN TRADEMARK

Haldiram's has been an integral part of India's culinary landscape for decades, offering a diverse range of savory snacks and sweets that have delighted generations of taste buds. From the ever-popular Sev Puri to the delectable Kaju Katli, Haldiram's has earned a special place in the hearts (and stomachs) of millions of Indians.

Established in 1937 in the state of Rajasthan, Haldiram's quickly gained fame for its signature "bhujia," a crispy snack made from flour and spices. Over the years, the brand expanded its offerings to include a wide variety of sweets, savory dishes, and instant foods that evoke the flavors of home-cooked Indian meals and snacks.

With a presence in over 80 countries, including key markets like the US, UK, and Singapore, Haldiram's has established itself as a global brand. In 2023, the company reported revenues of $1.5 billion (£1.1 billion), further solidifying its position as a leader in the culinary industry.

On April 3, 2024, the Delhi High Court delivered a landmark decision, officially recognizing the "Haldiram" mark as a well-known trademark in India and around the world for culinary products, eateries, and cafes. This decision came after a thorough examination of the arguments and evidence presented in court.

 

SIGNIFICANCE OF WELL-KNOWN TRADEMARKS

Well known trademarks are a vital tool for companies to safeguard their image and brand identity. In addition to offering legal defense against infringement, registering a well-known trademark opens up possibilities for brand growth and licensing. In India, passing off and trademark infringement are significant crimes that carry potential legal repercussions for the offending party. Through the registration of a popular trademark, companies may guarantee the reputation and durability of their brand in the marketplace.

Compared to regular trademarks, popular trademarks have more protection. They can't be used for similar or identical marks on goods or services that aren't related to the ones for which they are registered. India's trademark law places a strong emphasis on protecting well-known brands because it helps to promote fair competition and protect the rights of trademark owner.

 

TRADEMARK LAWS IN INDIA

Before the introduction of Trademark Rules 2017, determinations of well-known marks in India were made by the courts and tribunals. With the enactment of the Trademark Rules 2017, trademark owners gained the ability to apply for well-known mark status. The criteria for determining a well-known trademark are outlined in Sections 11(6) to 11(9) of the Trademark Rules, which include factors such as public awareness, duration of use, and geographical extent of use.

 

PROVISIONS PERTAINING TO WELL-KNOWN TRADEMARKS

 

1. Rule 124 of Trade Mark Rules 2017

Rule 124 of the Trade Mark Rules 2017 facilitates trademark owners to petition for the designation of their mark as "well-known" to the Registrar. Previously, the declaration of a mark as well-known necessitated proceedings, rectification, and opposition before the courts. However, with the introduction of this rule, trademark owners can now request well-known status directly from the Registry without undergoing lengthy legal processes. Rule 124 streamlines the procedure for granting the "well-known" tag to a trademark, allowing owners to apply through Form TM-M.

 

2. Trademarks Act, 1999

 

i. Section 11(2) - Protection of Well-Known Marks Across All Classes

Section 11(2) of the Trademarks Act, 1999, extends comprehensive protection to well-known trademarks across all classes of goods and services. This section prohibits the registration of trademarks that are identical or similar to an earlier well-known trademark, even if the goods or services for which the later mark is intended are unrelated to those covered by the earlier mark. The provision aims to prevent the unauthorized use of well-known trademarks, ensuring that their distinctive character and reputation are not exploited or diluted.

 

ii. Section 11(6) - Factors Considered in Determining Well-Known Status

Section 11(6) of the Trademarks Act enumerates the factors taken into consideration when determining the well-known status of a trademark. These factors, derived from a Joint Resolution of the World Intellectual Property Organization (WIPO), are incorporated into Indian law to protect well-known marks from misuse and infringement. They include:

- Knowledge about the mark among relevant sections of the public.

- Duration, extent, and geographical area of the trademark's use.

- Duration, extent, and geographical area of the trademark's promotion in relation to the relevant goods and services.

- Record of successful enforcement of the rights in the trademark, including recognition of its well-known status by courts or the Registrar.

 

iii. Section 11(9) - Conditions Not Required for Well-Known Trademark Registration

Section 11(9) outlines certain conditions that are not necessary for the registration of a well-known trademark. These conditions include:

- The trademark's use in India.

- The trademark's registration in India.

- The filing of the trademark application in India.

- The trademark's recognition or registration in any other jurisdiction outside India.

- The trademark's recognition by the public at large in India.

This provision recognizes the concept of trans-border reputation, wherein a trademark can be granted protection in India even if it is not extensively known or registered within the country.

 

iv. Section 11(10) - Obligation on the Registrar

Under Section 11(10) of the Trademarks Act, the Registrar is obligated to protect the interests of well-known trademarks in cases of dispute or infringement. The Registrar must take into consideration any ill intention or malafide motive of the complainant or opponent when adjudicating such disputes.

 

Remedies Available for Trademark Owners on Misuse or Infringement of Well-Known Trademarks

Trademark owners have several remedies available to them in cases of misuse or infringement of their well-known trademarks, including:

- Preventing the registration of trademarks that are confusingly similar to their own for any class of products or services.

- Requesting the removal of infringing marks.

- Avoiding the incorporation of their trademark into any company name or organization's name or logo.

These remedies aim to safeguard the distinctiveness and reputation of well-known trademarks, ensuring that they are not unlawfully exploited or diluted by unauthorized parties.

Leading Case: Haldiram India (P) Ltd. v. Berachah Sales Corpn., CS(COMM) 495 of 2019, Decided on April 2, 2024

In the case of Haldiram India (P) Ltd. v. Berachah Sales Corpn., Haldiram India filed a lawsuit seeking protection for its trademark and a declaration affirming its well-known status under the Trade Marks Act, 1999. The plaintiff also requested a permanent injunction against an imitator from Haryana's Ambala who was selling products under the mark "Haldiram Bhujiawala". Haldiram India alleged that the defendants originally incorporated a business under the name "Haldiram Restro Pvt. Ltd."

Upon investigation, Haldiram India discovered that Defendant 5, claiming ownership of Defendant 1 firm, Berachah Sales Corpn., had applied for the trademark "HALDIRAM BHUJIAWALA" in class 43 for "services for providing food and drink, temporary accommodation," as well as for the trademarks "HALDIRAM'S" and "HALDIRAM HOTELS," both in class 43 for services similar to those described. This prompted Haldiram India to file the lawsuit.

In the verdict, Prathiba M. Singh, J.*, issued a decree of permanent injunction in favor of the plaintiff, prohibiting the defendants and anyone acting on their behalf from using the contested marks "HALDIRAM BHUJIAWALA" and/or "HALDIRAM's" or any other marks confusingly similar to the plaintiff's marks. Additionally, the Court declared the oval-shaped mark and the mark "HALDIRAM" as "well-known" marks for restaurants and other eating establishments.

The Court awarded Haldiram India Rs 50 lakh in damages, along with expenses, taking into account the defendants' actions and the inventory of infringing products. The plaintiff was entitled to a decree in favor of Rs 50 lakh in damages and an additional Rs 2 lakh in costs.

The Court's observation noted the peculiarity of the case, as Haldiram India did not hold rights to the mark 'HALDIRAM'/ 'HALDIRAM BHUJIWALA' in West Bengal. However, the plaintiff claimed that the said mark was well-known throughout India, including West Bengal. The Court emphasized the dynamic nature of a well-known mark, stating that it could imbue products with distinctiveness and assurance of quality that transcends geographical boundaries. Haldiram India's products were not only exported within Asia but also to numerous other countries. Therefore, the claim for 'HALDIRAM' to be recognized as a well-known mark throughout India, including West Bengal, showcased the plaintiff's cultural and commercial imprint. Such dynamism aimed to safeguard the goodwill and trust the mark commanded among consumers, regardless of territorial divisions. By granting such a declaration, the Court acknowledged the current consumer perceptions within the food and snacks industry.

In summary, the Court's decision underscored the importance of protecting well-known trademarks and recognized Haldiram's significant cultural and commercial influence, affirming its status as a well-known mark throughout India.

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Article Compiled by:-

Prerna Yadav

(LegalMantra.net Team)

Disclaimer: Every effort has been made to avoid errors or omissions in this material in spite of this, errors may creep in. Any mistake, error or discrepancy noted may be brought to our notice which shall be taken care of in the next edition In no event the author shall be liable for any direct indirect, special or incidental damage resulting from or arising out of or in connection with the use of this information Many sources have been considered including Newspapers, Journals, Bare Acts, Case Materials , Charted Secretary, Research Papers etc.

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