IHCL’s ‘Taj’ Brand Achieves Well-Known Trademark Status: Delhi High Court’s Verdict

Introduction

In the case of The Indian Hotels Company Limited v. Gaurav Roy Bhatt & Anr.^[1], the Delhi High Court has declared “Taj” as a well-known trademark for services in the hotel and hospitality industry. This decision was made in response to a suit filed by The Indian Hotels Company Limited (IHCL), part of the Tata Group, against various individuals for alleged trademark infringement, copyright violations, and passing off.

Historical Context and Brand Value

A well know trademark is defined under Section 2(1)(zg) of the Trade Marks Act, 1999^[2] (“Act”) as a mark which has become 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. Section 11(6) of the Act provides for the following factors taken into consideration in determining whether a trademark is a well known trademark:

1. The knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
2. the duration, extent and geographical area of any use of that trade mark;
3. the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
4. the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent that they reflect the use or recognition of the trade mark;
5. the record of successful enforcement of the rights in that trade mark, in particular the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record^[3].

The registrar shall also comply with Section 11(6) to 11(9) which provides for criterion to determine whether or not a trademark is recognized in the relevant section of the public, in order to determine whether a trademark is a well known trademark.

The “Taj” brand has been in use since 1903, and Indian Hotels Company Limited (IHCL) has built a strong reputation and significant goodwill around it and enjoys a legacy of over 120 years. The brand is not only associated with luxury and high-quality service but also holds a special place in the hearts of Indians and international travellers alike. IHCL filed a suit against the respondent for misrepresenting their services as being associated with the plaintiff and misusing the brand ‘TAJ’.

The court’s recognition of “Taj” as a well-known trademark further solidifies IHCL’s position in the hospitality industry.

The Court’s Rationale

Justice Amit Bansal, delivering the judgment, highlighted that the extensive use of the TAJ marks over a long period, their widespread presence, public recognition, and goodwill strengthened by significant promotion, publicity, and revenue generation in India and abroad have collectively contributed to their status as well-known trademarks. The court observed that IHCL had fulfilled all the criteria under Section 11(6) read with Section 11(7) of the Trademarks Act.

Previous Cases and Precedents

This decision builds on previous cases where IHCL has successfully defended its trademarks namely ‘VIVANTA’. For instance, in a case against an individual using “Taj Iconic Membership,” for their business, the Delhi High Court had ruled in favor of IHCL, restraining the defendant from using the “Taj” mark and awarding damages. These cases highlight the importance of protecting intellectual property and the legal consequences of infringing upon established trademarks.

In the case of N. R. Dongre vs Whirlpool Corporation^[4], the Court held that the mark ‘Whirlpool’ has identified good will and brand value in Indian marketplace even though the business was not carried out in Indian marketplace and has gained transborder reputation. Similarly, on various occasions, Indian Courts have recognized the importance of safeguarding well known trademarks in the competitive market sphere. 

Implications for the Industry

The declaration of “Taj” as a well-known trademark sends a strong message to the industry about the importance of respecting intellectual property rights. It also provides IHCL with additional legal protection against potential infringers, ensuring that the brand’s reputation and goodwill are safeguarded, as such well known trademark is likely to be infringed by people for gaining business and attracting consumers using the logo and mark of ‘Taj’. This ruling is likely to encourage other companies to take proactive measures to protect their trademarks and intellectual property.

Conclusion

In conclusion, the Delhi High Court’s decision to declare “Taj” as a well-known trademark for services in the hotel and hospitality industry reinforces the legal framework for protecting well know trademarks in India. Since well-known trademarks are protected more broadly than regular trademarks, their significance cannot be emphasized. This includes prohibiting the registration of comparable marks, providing more redress against infringement, and providing protection even in the absence of registration.

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^[1] CS(COMM) 717/2023

^[2] The Trade Marks Act, 1999 (Act 47 of 1999) s 2(1)(zg)

^[3] The Trade Marks Act, 1999 (Act 47 of 1999) s 11(6)

^[4] 1996 (5) SCC 714