DS Group trademark declared well-known after website used its name to offer fake Rajnigandha distributorships

The plaintiffs alleged that defendants 1–5 operated the website `onlinerajnigandharetail.in`, using the plaintiffs’ “DS GROUP” and “RAJNIGANDHA” marks and the plaintiffs’ address to offer purported distributorships and collect money.

They also alleged that the defendants represented themselves as the plaintiffs’ employees and copied the plaintiffs’ privacy policy.

The Court granted ex parte interim relief on 22 December 2022, later corrected the email address specified in that order, and directed, among other things, the domain to be suspended and locked.

Defendants 1–5 were proceeded against ex parte; defendants 6–8 were deleted after complying with the Court’s directions.

The plaintiffs led evidence of their trademark registrations, use, promotion and enforcement history.

1. Whether the plaintiffs established infringement of their trademarks and copyright, passing off, dilution and unfair competition by defendants 1–5, entitling them to a permanent injunction?

2. Whether the plaintiffs’ “DS GROUP” trademarks and corresponding logo qualified as well-known trademarks under Section 2(1)(zg) of the Trade Marks Act, 1999?

Section 2(1)(zg) of the Trade Marks Act, 1999 defines a well-known trademark by reference to recognition among a substantial segment of the relevant public and the likelihood that use on other goods or services would indicate a trade connection.

Section 11(2) protects a well-known mark against a similar later mark used for dissimilar goods or services where that use, without due cause, would take unfair advantage of or harm the earlier mark’s distinctive character or repute.

Section 11(6) identifies relevant factors for determining well-known status, including public recognition, duration and geographical extent of use and promotion, registrations, and successful enforcement.

Rule 124 of the Trade Marks Rules, 2017 provides a procedure for applying to the Registrar for well-known status.

The Court also referred to *NR Dongre v. Whirlpool Corporation* on reputation and goodwill; *Rolex SA v. Alex Jewellery Pvt. Ltd.* on assessing recognition in the relevant public and considering use, promotion, registrations and enforcement; and *Tata Sons Ltd. v. Manoj Dodia* on protection against dilution and unfair exploitation of a well-known mark.

The plaintiffs’ registration certificates established their rights in “DS GROUP” and “RAJNIGANDHA”; the unrebutted evidence showed that defendants 1–5 used those marks on a website offering purported distributorships and suggesting an association with the plaintiffs.

The Court held that this unauthorised use supported the claims of trademark infringement, passing off and dilution, while reproduction of the privacy policy supported the copyright claim.

For well-known status, the Court assessed the evidence cumulatively against Section 11(6), including the Group’s history, the logo’s use as a house mark since 2003, use across products, promotional and commercial material, registrations, and enforcement and recognition of related marks.

It concluded that the evidence demonstrated the requisite recognition of “DS GROUP” among the relevant public.

It made the ex parte injunction, as corrected, absolute against defendants 1–5 and decreed permanent injunction in its terms.

It also declared the “DS GROUP” trademark and corresponding logo well-known trademarks under Section 2(1)(zg).

The plaintiffs had abandoned their claims for damages and costs, and no relief was granted on those claims.