What does it take to be a Well-known Trademark?

 In a recent decision delivered by the Hon’ble Delhi High Court in Aditya Birla Fashion and Retail Limited v. Friends Inc. (dated 09.01.2025), a suit was filed seeking permanent injunction restraining the use of the impugned mark, “PETER ENGLAND” by the defendants’ causing infringement of the Plaintiff’s trademark, copyright, and artistic work on the mark of “PETER ENGLAND”. 

As the defendants, had already removed the infringing board from outside their shop and in view of the compliance affidavit filed by the defendants, the suit was decreed in favour of the Plaintiff. The Plaintiff had additionally also prayed that the mark “PETER ENGLAND” be declared as a well-known mark. The Hon’ble Court had granted liberty to the Plaintiff to file evidence by way of affidavit in this regard. 

The depositions given by the Plaintiff to declare the mark as a well-known-mark included the below-mentioned averments and documents:


  1. Adoption of the trademark by the Plaintiff’s predecessor in interest from 1889​
  2. No. of stores: Plaintiff has over 382 stores, with the mark “PETER ENGLAND”, spread across more than 180 towns and cities in the country.
  3. Brand: 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.
  4. Registration: Plaintiff is the registered proprietor of the trademark “PETER ENGLAND” in different classes.
  5.  Registration in other areas: Plaintiff has got the said trademark registered in all major countries of the world, and across all continents and regions.
  6. Artistic use: Plaintiff using the mark in an artistic manner and the art involved is original artistic work. The Plaintiff has also secured copyright registrations in the artistic works for the trademark. Copyright certificates were also exhibited. The board depicting the trademark in the store of the plaintiff is also designed in a specific way. 
  7. Website/domain name: Plaintiff has the registration of the domain name www.peterengland.com.
  8. Plaintiff’s products under the trademark “PETER ENGLAND” have become trend setting products, due to their unmatched and remarkable quality. News articles pertaining to expansion of Plaintiff’s business were reproduced.
  9. Sales/Revenue consideration: Sales turnover value of the Plaintiff under the said trademark were also reproduced. Invoices showing the sale of goods have been produced.
  10. Advertisement Expenses: Huges amounts spent in endorsements of the Plaintiff’s products. Photographs of some of the brand ambassadors of the Plaintiff produced in the evidence along with the CA certificate evidencing the sale and advertisements.
  11. Business growth and awards: Articles showing the business activities and growth of the Plaintiff were also produced. Awards and recognition conferred to the Plaintiff for its trademark “PETER ENGLAND” were also produced. 


The Hon’ble Court held that considering the above, it is clear 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.It was held that 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”.


It was held by the Hon’ble Court that the Plaintiff satisfies all the principles adduced in the Section 2(1)(zg) of the Trade Marks Act, 1999. The Hon’ble Court relied upon its earlier decision of Tata Sons Ltd. versus Manoj Dodia and Others, 2011 SCC OnLine Del 1520, wherein it had elucidated the factors to be taken into consideration in dealing with a mark as a well-known mark. In Tata Sons Ltd. (Supra), it was held that a well-known trademark is a mark which is widely known to the relevant general public and enjoys a comparatively high reputation amongst them.


In Tata Sons Ltd. (supra), it was also clarified that 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. The factors relevant for determining whether a trademark is a well-known mark or not as culled out in Tata Sons Ltd. (supra) are as below: 


(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 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.


The Hon’ble could finally held that the mark of the plaintiff, “PETER ENGLAND” is entitled to be declared as a “Well-Known” mark under Section 2(1)(zg) of the Trade Marks Act, 1999.


Read the entire case at- https://dhccaseinfo.nic.in/jsearch/judgement.php?path=dhc/592/judgement/07-02-2025/&name=59207022025SC5662024_203818.pdf

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