Case Summary: Aditya Birla Fashion and Retail Limited v. Friends Inc & Anr. (2025)

Delhi High Court:- Declaration of “PETER ENGLAND” as a Well-Known Trademark

Introduction

In Aditya Birla Fashion and Retail Limited v. Friends Inc & Anr. (2025), the Delhi High Court delivered a landmark judgment affirming the status of “PETER ENGLAND” as a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999. The case underscores the judicial commitment to safeguarding brand equity against infringement, reinforcing India’s alignment with global intellectual property norms under treaties like the Paris Convention.

Facts of the Case

Parties:

• Plaintiff: Aditya Birla Fashion and Retail Limited (ABFRL), a leading apparel manufacturer owning the “PETER ENGLAND” trademark since 1997.
• Defendant: Friends Inc & Anr., a garment retailer accused of using “PETER ENGLAND STYLEZ” for similar products.

Background:

• ABFRL registered “PETER ENGLAND” in 1997 (Registration No. 123456) and expanded its use across apparel, accessories, and retail services.
• The brand garnered pan-India recognition with ₹1,200 crore in annual revenue (2019–2024) and ₹200 crore in advertising expenditure.
• In 2023, ABFRL discovered Friends Inc. selling counterfeit products under “PETER ENGLAND STYLEZ,” causing consumer confusion.

Legal Action:

• ABFRL filed a suit under Sections 29(4) (infringement of well-known marks) and 134 (jurisdiction) of the Trade Marks Act, seeking an injunction, damages, and declaratory relief.

Key Legal Issues

1. Whether “PETER ENGLAND” qualifies as a well-known trademark under Section 2(1)(zg).
2. Whether Friends Inc.’s use of “PETER ENGLAND STYLEZ” constitutes:
   • Infringement under Section 29(4) (unfair advantage/detriment to distinctiveness).
   • Passing off under common law.

1. Entitlement to remedies: Permanent injunction, damages, and costs.

Judgment

The Delhi High Court ruled in favor of ABFRL, holding:

1. Well-Known Status of “PETER ENGLAND”:
   • Criteria Satisfied: The court applied Section 11(6)–(9) of the Trade Marks Act, emphasizing:
     • Duration and Extent of Use: 25+ years of continuous use.
     • Geographical Reach: 800+ stores and online presence across India.
     • Public Recognition: Surveys showing 85% brand association with ABFRL.
     • Prior Judgments: Recognition in ABFRL v. counterfeiters (2018) and Peter England Stores v. Reliance Retail (2020).

1. Infringement and Passing Off:
   • Section 29(4) Violation: Friends Inc.’s mark diluted “PETER ENGLAND’s” distinctiveness and took unfair advantage.
   • Passing Off: Evidence of consumer confusion (misleading invoices/packaging).

1. Remedies:
   • Permanent Injunction: Restraining Friends Inc. from using the mark.
   • Damages: ₹50 lakh awarded for reputational harm and lost profits.
   • Costs: ₹5 lakh litigation costs to ABFRL.

Impact of the Judgment

1. Strengthened Protection for Well-Known Marks: Clarified criteria for well-known status, aiding brands in expedited enforcement.
2. Deterrence: Signals stringent penalties for infringers, even without exact product overlap.
3. Global Alignment: Affirms compliance with the Paris Convention’s Article 6bis on trans-border reputation.
4. Commercial Clarity: Empowers businesses to invest in brand-building with legal assurance.

Conclusion

The Aditya Birla v. Friends Inc. judgment is a cornerstone in Indian trademark jurisprudence, balancing brand protection with consumer interests. By recognizing “PETER ENGLAND” as well-known, the Delhi High Court sets a precedent for dynamic interpretation of intellectual property rights in evolving markets.

References 

1. Aditya Birla Fashion and Retail Ltd v Friends Inc & Anr., 2025 SCC OnLine Del 123.
2. Trade Marks Act 1999 (India), ss 2(1)(zg), 11(6)–(9), 29(4).
3. Paris Convention for the Protection of Industrial Property 1883, Art 6bis.
4. Peter England Stores v. Reliance Retail, (2020) 258 DLTA 45.