Well known trademark – Haldiram

Sweet Victory

As known to most Indians, in the country and abroad, the mere reference to “HALDIRAM” conjures up images of delectable snacks, savoury sweets, and mouth-watering aromas of India’s cherished culinary heritage. From bustling city streets to quaint rural towns, this homegrown brand has become a fixture in households across the subcontinent and beyond. Finally, the Delhi High Court in its ruling in Haldiram India Private Limited vs Berachah Sales Corporation & Ors. (1) , has recognized “HALDIRAM” as a “well-known” trademark.

The Court while delivering the judgment quoted;

“As evidenced by the documents placed on record, plaintiff’s global footprint is indicative of the brand’s robust spill-over where the authenticity of ‘HALDIRAM’S’ products resonate with a diverse with a diverse audience including in those regions where the brand does not have legal presence (2) ’’.

Background of the Case

The roots of this legal dispute stretch back to 1941 when the mark “HALDIRAM” was first coined, drawing inspiration from the founder’s grandfather’s nickname. Since its inception, “HALDIRAM” has burgeoned from a modest establishment in Bikaner, Rajasthan, into a global culinary phenomenon, renowned for its unwavering commitment to quality and innovation.

According to the Plaintiff, “HALDIRAM” uses two distinct marks for its brand – the V-shaped and the oval-shaped logo. The V-shaped mark features the letters “HRB” arranged in a dynamic, angular configuration. These two logo designs have become synonymous with Haldiram’s enduring legacy. The company strategically uses these registered trademarks across its expansive product range, creating a cohesive and instantly recognizable brand identity. In 2019, the defendants’ initially incorporated a company with the name “Haldiram Restro Pvt. Ltd’’ and commences business thereunder. Consequently, the plaintiff brought a suit against the defendants under section 16(1)(b) of the Companies Act, 2013 (3). The Defendants also went ahead with the registration of the domain name www.haldiramrestro.com.

The Defendants did not stop here, but they started selling products like salt, oil, water, soda, ghee etc. to other companies via online and offline interactions. The defendants’ unauthorized use of the “HALDIRAM” mark started causing consumer confusion.

Remedies Sought by the Plaintiff

Haldiram India Pvt. Ltd. initiated legal proceedings to protect its trade mark “HALDIRAM” and its variations, particularly ‘HALDIRAM BHUJIAWALA’, under the Trade Marks Act, 1999. The plaintiff seeks to establish the ‘well-known’ status of its mark in accordance with Section 2(1)(zg) of the Act4. Additionally, the plaintiff demanded a permanent injunction against the Defendants, prohibiting them from selling products under the contested marks “HALDIRAM” or “HALDIRAM BHUJIWALA”, or any other marks that bear deceptive similarity to the plaintiff’s mark “HALDIRAM”.

Outcome

The Delhi High Court ruled in favour of the plaintiff, permanently restraining the defendant from using the impugned marks and awarding damages of Rs. 50 lakhs and costs of Rs. 2 lakhs.

The court’s decision was underpinned by a comprehensive analysis of Haldiram’s brand presence and reputation. The court observed that Haldiram has not only established a strong presence in the national market but has also expanded its influence globally, transcending geographical, cultural, and national boundaries. The court recognized Haldiram’s’ “robust spill-over reputation,” where the brand’s authenticity and appeal resonate with a diverse audience, even in regions where the company does not have a legal presence. This is a testament to the brand’s deep connection with India’s rich culinary tradition and its ability to captivate.

The Extensive Scope and Influence of Well-Known Trademarks

The court emphasized on the significance of reputation and goodwill in declaring a mark as ‘wellknown. As per section 2 (1) (zg) of the Trade Marks Act, 1999 (5);

“well- known trade mark’’, in relation to any goods or service, means a mark which has becomes so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first mentioned goods or services”.

Essential Factors to Qualify as a Well-Known Trademark:-

The standards for determining a mark as ‘well-known’ are laid down under section 11 (6) (6) and section 11(7) (7) of the Trade Marks Act, 1999, which can be summarized as;

(i) Widespread Recognition: It ensures that the concerned mark enjoys a sheer degree of familiarity among its target consumers.

(ii) Enduring Prominence: The duration, geographical expansion and ubiquitous presence across the market speaks a lot about the brand’s resilience and its deep rooted connection with the targeted consumers.

(iii) Intrinsic Value: This refers to the commercial worth and the goodwill associated with the trademark which can be reflected from analyzing the factors such as market share, consumer loyalty, number of distribution channels, number of facilitators/ intermediaries involved in the distribution channels, number of actual or potential consumers.

Scope of Infringement Action

Under Section 29(1) of the Trade Marks Act, 1999 (8), you can take legal action to prevent damages or recover losses if someone infringes on your registered trademark. Under Section 28 the Act (9), owner alone have exclusive rights over it and can seek relief for any infringement. In suits of infringement, the matter commonly involves likelihood of confusion, deceptive practices, identical marks, or dilution of the brand value. On likelihood of confusion, courts have ruled that actual confusion doesn’t need to be proven but the likelihood itself is enough for infringement (10). Deceptive marks mislead buyers, whether about the product, its source, or its business connections (11). The “likely to deceive” test is judged based on evidence and the judge’s assessment of deceptiveness, not necessarily intent. Finally, dilution happens when another company uses a similar mark that weakens the brand value and distinctive identity your trademark holds. It tarnishes and blurs the positive brand associations you’ve built over time.

Passing-Off Action

The law of passing off applies when a person makes a misrepresentation in the course of trade to prospective or ultimate consumers of their goods or services. This misrepresentation must be calculated to injure another trader’s business or goodwill in a reasonably foreseeable way. Furthermore, it causes damage to the business or goodwill of the trader bringing the action (12). Registration is a prerequisite for infringement, but not for passing off. In essence, an infringement suit enforces statutory rights of registered mark, while passing off protects from misrepresentation of an unregistered mark and safeguards the goodwill/reputation built over time.

Conclusion

In Haldiram India Private Limited vs Berachah Sales Corporation & Ors (13), the decisive victory of Haldiram sends a clear message to businesses attempting to capitalize on the goodwill and reputation of well-established brands. The court’s unambiguous ruling underscores the importance of a well-known trademark in safeguarding the hard-earned success of iconic brands like Haldiram. This case serves as a testament to the power of a well-crafted brand strategy and the resilience of a brand that has stood the test of time. This case puts light on various aspects of well-known trademarks, the factors essential for a mark to be known as “well-known” trademark. Haldiram’s triumph in this case is a shining example of how a beloved Indian brand can successfully defend its identity and legacy on the national and global stage, ensuring that its rich heritage and unwavering quality continue to delight consumers for generations to come.

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1 Haldiram India Private Limited vs Berachah Sales Corporation & Ors 2024/DHC/2517
2 Ibid (n1)
3 Companies Act, 2013 Section 16 (1) (b)
4 Trade Marks Act, 1999 Section 2 (1) (zg)
5 Ibid (n5)
6 Trade Marks Act, 1999 Section 11 (6)
7 Trade Marks Act, 1999 Section 11 (7)
8 Trade Marks Act, 1999 Section 29 (1)
9 Trade Marks Act, 1999 Section 28
10 Montblanc Simplo-GmbH v. New Delhi Stationery Mart and Anr, 2008 (38) PTC 59 (Del)
11 Vikram Stores v. S.N. Perfumery Works, 2008 AIHC 494 (Guj)
12 Lakshmikant V. Patel v. Chetanbhat Shah, AIR 2002 SC 275
13 Ibid (n1)

Dipro Dawn

Having graduated from the Law School, Dipro joined the firm as a trainee with the Trade Marks team. He was soon made a part of the team who now advises clients in various sectors, irrespective of the size of the business. He is one of the active members in the trademarks opposition team who also handles cancellation actions from time to time. Besides, he often assists the litigation team in matters concerning all kinds of IP. He takes great interest in other research-related activities.

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