Delhi High Court finds KHADI and charkha logo marks to be well known

In Khadi & Village Industries Commission v Raman Gupta and others (CS (COMM) 133/2022)), the Delhi High Court has declared the KHADI trademark and charkha logo mark to be well known. This follows an infringement suit brought by the Khadi & Village Industries Commission (KVIC) earlier this year against actors who were using the trade name Khadi By Heritage.

The evidence presented by the KVIC proved decisive in this case. Particularly convincing was its long-standing use of the marks in India, its domestic and international registrations and the extensive business turnover in the domestic and export markets.

‘Khadi’ is a term for a type of Indian natural cloth fibre, which is hand-spun on a charkha (spinning wheel). It became a cultural symbol in the early 20th century at the time of Indian Independence, especially after Mahatma Gandhi’s exhortation to every Indian to spin Khadi cloth. Post-independence − to facilitate the establishment of Khadi as an Indian brand − the KVIC Act was legislated in 1956. This gave the KVIC authority to control, regulate and authorise the use of the word ‘khadi’ on goods by granting it trademark registrations under most classes. Further, as per the Khadi Mark Regulations (2013), no textile shall be sold as a khadi product, without bearing a tag from the KVIC. To be eligible for such a tag (the purpose of which is to authenticate genuine Khadi) the product must be purchased from a government-cleared institution. The KVIC owns several registrations for word and device marks relating to khadi in English and Hindi, both in artistic and logo form, including ones that feature charkha logos. The Khadi brand has enjoyed a modern resurgence. It is marketed extensively in India and internationally, and several of its products are hugely popular.

During the pandemic, the KVIC also started manufacturing various medical products, including masks and hand sanitisers. It swiftly filed a suit when it learnt that the defendants had used the term Khadi By Heritage as a trading style, corporate name and trademark, as well as online, along with a charkha logo for the sale of medical and cosmetic products, including personal protective equipment and hand sanitisers.

In March 2022, the Delhi High Court issued an ex parte ad interim injunction restraining the defendants from using the tradename Khadi By Heritage. On 26 July, the court confirmed that KVIC’s statutory rights had been violated and granted a permanent injunction restraining the defendants from using the infringing marks. This included Khadi By Heritage and the KBH logo as well as any other marks/logos identical or deceptively similar to the KHADI mark or the charkha logo in respect of any goods or services without a license or consent from the KVIC.

The court also:

• directed the domain name registrars to transfer the impugned domain names to the KVIC;
• instructed the Indian Trademark Registry to suo moto reject all applications filed by the defendants in respect of the impugned trademarks; and
• awarded damages of Rs1 million (approximately $12,500) and costs of RS200,000 to the KVIC.

On the same day, in another suit filed by the KVIC against the Khadi Design Council of India, the Delhi High Court passed an order restraining the latter from organising unauthorised pageants titled Miss and Mrs India Khadi.

Curiously, in 2014, the IP Rights Attorneys Association applied for a geographical indication (GI) tag for Khadi. However, this application was withdrawn in 2019. Although a GI tag can offer myriad benefits − from increased economic opportunities to authenticity of manufacture − the protection that a well-known trademark enjoys is superior. This was highlighted in a lawsuit involving the first GI registered in India: Darjeeling Tea (Tea Board of India v ITC Limited). In this case, the court limited the rights of the GI holder specifically to the goods that the GI was registered for and refused to extend protection across unrelated goods and services. Thus, the so-called Darjeeling Lounge at a five-star hotel in Kolkata was not found to be in violation of the Tea Board’s GI registration for Darjeeling. Significantly, the court did not uphold a passing-off plea either, opining that the word ‘Darjeeling’ was ubiquitous in India and could not be claimed exclusively by the Tea Board and that there was an absence of a clear nexus between the impugned activities and the specific goods covered under the GI. Interestingly, the Tea Board seems to have had greater success in protecting its GI (even across unrelated goods) in jurisdictions outside of India.

Be that as it may, the KVIC’s emphatic success in protecting the KHADI and charkha logo marks before the Delhi High Court should bolster the success of the brand.