Facts of the Case
The Plaintiff, Haldiram India Pvt. Ltd., initiated legal action against six Defendants: Berachah Sales Corporation, Berachah Foods India Pvt. Ltd., Haldiram Restro Private Limited, and Haldiram Builders Private Limited, along with their proprietors, identified as Defendant Nos. 1 to 6. The dispute centred around the unauthorized use of the marks ‘HALDIRAM’ and ‘HALDIRAM BHUJIWALA’. Haldiram sought both protection for its trademark and recognition of its ‘well-known’ status.
Defendant No. 3 established Haldiram Restro Pvt. Ltd. on 27/02/2019, prompting the Plaintiff, Haldiram to file a petition with the Registrar of Companies, Delhi, citing violation of the Companies Act, 2013, Section 16(1)(b). This section addresses rectification of a company name infringing on a registered trademark. Haldiram Restro Pvt. Ltd. countered by asserting its trademark application and pointing out other similarly named companies.
In response, Haldiram conducted trademark searches, revealing trademark applications by the Defendants for variations like ‘HALDIRAM BHUJIAWALA’ and ‘HALDIRAM RESTRO’. Further, the Defendants registered the domain www.haldiramrestro.com. Haldiram also received a complaint from M/s. D. K. Enterprises, alleging financial misconduct by Defendant No. 1. Subsequent investigations unearthed the Defendants’ Facebook page announcing product launches, leading to the initiation of the legal proceedings.
Ex parte Injunction
An ex parte injunction was granted on 11/09/2019, prohibiting the Defendants from using ‘HALDIRAM BHUJIAWALA’ and/or ‘HALDIRAM’S’, and operating www.haldiramrestro.com and associated social media platforms under ‘HALDIRAM RESTRO’. A Local Commissioner was appointed to seize infringing goods, revealing the Defendants’ sale of various products under the mark ‘HALDIRAM BHUJIAWALA’. Additionally, expired products under ‘HALDIRAM INC’ were seized.
The Defendants filed written statements and an affidavit of admission/denial of documents in December 2019. However, in 2022, they expressed willingness to settle, which failed, ultimately leading to their disinterest in contesting. As Haldiram submitted evidence affidavits, the case proceeded ex parte, culminating in a permanent injunction against the Defendants, mandating the delivery of infringing materials for destruction.
Damages
Relying on the Local Commissioner’s report, the court awarded exemplary damages of Rs. 50 lakhs to Haldiram, noting the Defendants’ absence and their failure to produce accounts. An additional Rs. 2 lakhs was decreed as costs.
Status of Well-Known Mark
Haldiram contended that its ‘HALDIRAM’ and ‘HALDIRAM BHUJIAWALA’ marks were valid nationwide, except in West Bengal, as per a dissolution deed. It asserted the mark’s well-known status across India and internationally, supported by its long-standing presence and reputation. Considering the use of the mark since the 1960s in the food industry, ‘HALDIRAM’S’ mark, and the oval-shaped mark, ‘
’
were declared as ‘well-known’ marks for food items and eateries. Consequently, the Defendants’ trademark applications for ‘HALDIRAM’ and ‘HALDIRAM BHUJIAWALA’ were directed for rejection by the Registrar of Trademarks. In view of the declaration, the Defendants’ trademark applications for the marks ‘HALDIRAM’ and ‘HALDIRAM BHUJIAWALA’ were mandated for rejection by the Registrar of Trademarks.
Citation: Haldiram India Pvt. Ltd vs Berachah Sales Corporation & Ors., In the High Court of Delhi at New Delhi, (2024) SCC OnLine Del (2265),
Authored by Ms. Benita Alphonsa Basil, Trademark Team, BananaIP Counsels.
Reviewed and Confirmed by Ms. Ilana Baruah, Consulting & Strategy Team, BananaIP Counsels.
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
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