Peter England’s Trademark Takedown: A Stylish Win

Introduction

In the legal context of intellectual property, trademarks serve as an essential instrument and symbol for distinguishing one product/service from another and protecting the identity of a brand. The case of Aditya Birla Fashion and Retail Limited v. Friends Inc. & Anr.[1] before the Delhi High Court emphasizes the importance of protecting well-established trademarks. The present suit revolves around the e Defendants’ unauthorized use of the mark "PETER ENGLAND" by the Defendants, leading to an infringement claim and an eventual judicial declaration of "PETER ENGLAND" as a well-known trademark.

Background

Peter England, founded in 1889 in England, expanded into India in 1997 and was acquired by Aditya Birla Fashion and Retail Limited in 2000. Since then, the brand has been immensely popular in India. So far, it has established itself as a key participant, with over 382 retail stores spread over more than 180 towns and cities in the country. Given its widespread recognition, ABFRL sought legal protection against entities misusing its brand identity.

Facts

ABFRL (Plaintiff), sued Friends Inc. and Anr., (Defendants), for using the "PETER ENGLAND" trademark on their signboards and invoices. The Plaintiff claimed that such usage resulted in trademark infringement, causing consumer confusion and diluting the brand's image. Initially, on July 12, 2024, the Delhi High Court issued an interim injunction prohibiting the Defendants from using the mark on signs and invoices. On September 5, 2024, the Defendants apprised the Court that all references to "PETER ENGLAND" had been erased from their shop, invoices, and other documentation. The Court then directed them to file an affidavit of compliance, which they duly submitted on September 11, 2024. Furthermore, the Plaintiff sought to have "PETER ENGLAND" recognized as a well-known trademark under the Trade Marks Act of 1999.

Judgement

On January 9, 2025, the Delhi High Court decided the suit in favor of ABFRL, citing the Defendants' compliance and the Plaintiff's satisfaction with the undertaking. The Court granted a permanent injunction against the Defendants from using the "PETER ENGLAND" mark and upheld the Plaintiff's trademark rights. Furthermore, the Court recognized "PETER ENGLAND" as a well-known trademark under Section 2(1)(zg) of the Trademarks Act of 1999.

Court’s Reasoning and Findings

The Court recognized that "PETER ENGLAND" had been widely used in India and abroad for decades, gaining enormous consumer recognition. ABFRL's exclusive rights to the trademark were established by registered trademarks, copyrights, and widespread commercial use. The Defendants' improper use of the mark may mislead consumers and undermine the brand's reputation and goodwill. Since, the Defendants removed the infringing materials and undertook not to use the mark in the future, the Court deemed it appropriate to decree the suit without further litigation.

The Court considered several significant considerations when determining whether "PETER ENGLAND" as a well-known trademark. The brand had been in use for over a century, indicating longevity and market stability. The trademark had a huge geographical distribution, with over 382 outlets in 180 locations across India. Extensive advertising and promotional operations, including endorsements from celebrities such as Ayushmann Khurrana and the Chennai Super Kings cricket team, helped to increase public awareness. The brand's financial strength was reflected in its INR 1289 crore sales revenue and INR 31 crore advertising expenditure for 2023-2024.

While deciding the present case, the Court relied on the judgement of Tata Sons Ltd. v. Manoj Dodia & Ors[1] which underlined the necessity of safeguarding brands that have developed uniqueness and goodwill through extensive commercial usage. It also stated that in determining whether a trademark is a well-known mark or not, the Court needs to consider a number of factors including such as public recognition, geographic reach, advertising efforts, and the level of enforcement against infringers. Thus, relying on the aforesaid judgement, the Court held that “PETER ENGLAND" was entitled to be declared as a well-known mark. 

Conclusion

This decision reinforces the importance of safeguarding established brand identities against unlawful use. The designation of "PETER ENGLAND" as a well-known trademark not only increases its legal standing, but it also establishes a precedent for other brands seeking similar protection. This case emphasizes the judiciary's role in protecting intellectual property rights and guaranteeing fair competition in the market. The result discourages illegal use and emphasizes the idea that a trademark's reputation is created over time and must be protected against misuse. It also focuses on the emerging judicial approach to recognizing brands with a global presence and consumer reliance. As globalization increases, firms must be more diligent in enforcing their trademark rights, as ABFRL demonstrated in this instance. Finally, this case reinforces the concept that trademark protection requires more than just registration—consistent enforcement and attention in guaranteeing brand uniqueness.

References:

1.  ( CS(COMM) 566/2024, I.A. 33082/2024 & I.A. 33087/2024)

2.  2011 SCC OnLine Del 1520