The Hon'ble High Court of Delhi in CS(COMM) 53/2019 dated August 7, 2024 held that the trademark "BOROLINE" is a well-known trademark and granted a permanent injunction against the defendant from using a deceptively similar mark or trade dress.
Facts of the Case:
The Plaintiff, G.D. Pharmaceuticals Private Limited, was founded in 1929 and has since been engaged in manufacturing, marketing, selling, and exporting medicinal and cosmetic preparations, specializing in Over the Counter (OTC) pharmaceutical products and health care cosmetics. The Plaintiff coined the word 'BOROLINE', which has been in use since 1929 for antiseptic medicinal ointments and creams. The mark is registered both as a word mark (No. 371269) and a label mark (No. 14610) in Class-5.
The Plaintiff's products are sold in a distinctive dark green and white packaging, which has been in use for the last 90 years and has acquired distinctiveness. The packaging features the trademark 'BOROLINE' presented in a stylized, white-colored font in block capital letters across the middle, with the registered mark on the right-hand corner. The products are available in tubes and plastic pots.
In December 2018, the Plaintiff discovered through its market sources and distributor network that a similar product was being sold under the mark/name 'BOROBEAUTY'. The Defendant, M/s Cento Products (India), had adopted this mark and was using it in a manner deceptively similar to the Plaintiff's registered trademark 'BOROLINE'. Moreover, the Defendant had imitated the Plaintiff's iconic trade dress of a distinct dark green tube ending in an octagonal black cap.
Aggrieved by these actions, the Plaintiff filed the present suit for permanent injunction restraining infringement of trademark and copyright, passing off, rendition of accounts or profits, damages, delivery up, and acts of unfair competition. During the pendency of the suit, the Defendant made various offers to change its trade dress and name. On the date of judgment, the Defendant's counsel submitted a new proposed blue trade dress and agreed to discontinue use of the prefix "BORO".
The Plaintiff pressed for declaration of "BOROLINE" as a well-known mark, citing its extensive use since 1929, multiple trademark registrations in India and abroad, recognition as a Consumer Super Brand for six consecutive years (2003-2017), selection as a "Master Brand" in 2014, and listing among "Most Desirable 30 Power Brands" in 2018. The Plaintiff also presented evidence of high sales figures and substantial expenditure on advertising and promotion.
Issue:
Whether the Plaintiff's trademark "BOROLINE" qualifies as a well-known trademark and whether a permanent injunction should be granted against the Defendant.
Held by the Court:
The Hon'ble High Court of Delhi in CS(COMM) 53/2019 held that:
The court observed that the trademark "BOROLINE" qualifies as a well-known trademark under Section 2(1)(zg) and Section 11(2) of the Trade Marks Act, 1999. In reaching this conclusion, the court considered several factors as outlined in Section 11(6) of the Act. These factors included the extensive and continuous use of the mark for over 90 years, multiple trademark registrations in India and abroad (including Oman, Turkey, UAE, and Bangladesh), recognition as a Consumer Super Brand for six consecutive years, selection as a "Master Brand" in 2014, and listing among "Most Desirable 30 Power Brands" in 2018. The court also took note of the high sales figures and substantial expenditure on advertising and promotion presented by the Plaintiff.
The court held that "BOROLINE" has attained the status of a household name and is one of the oldest trademarks in continuous use, predating India's independence. To support this, the court referenced an advertisement featuring the "BOROLINE" mark from August 15, 1947, the day India gained independence. Based on these considerations, the court directed the Registrar of Trademarks to add "BOROLINE" to the list of well-known trademarks upon completion of requisite formalities by the Plaintiff.
In light of the well-known status of the "BOROLINE" mark and the Defendant's submission regarding changes to its trademark and trade dress, the court granted a permanent injunction in favor of the Plaintiff. The court restrained the Defendant, its partners, proprietors, servants, agents, and all others in active concert or participation with them from manufacturing, selling, offering for sale, advertising, or directly or indirectly dealing in products bearing the mark/name 'BOROBEAUTY' or any other mark/name consisting of the word/expression 'BOROBEAUTY'. The injunction also covered any other names, marks, or expressions that are identical or deceptively similar to the Plaintiff's registered trademarks 'BOROLINE' and/or 'BOROLINE' (Label).
The court further directed the Defendant to change its trade dress and trademark to be totally distinct and different from the Plaintiff's well-known trademark and trade dress. Specifically, the Defendant was prohibited from using the dark green color trade dress employed by the Plaintiff. The court also ordered the Defendant to adopt a new trade name that would not include the prefix 'BORO' and would not be similar to the Plaintiff's trademark 'BOROLINE'.
Considering the long pendency of the suit, the court imposed costs of ₹2,00,000 on the Defendant, payable to the Plaintiff. Acknowledging the Defendant's counsel's submission that the Defendant is a small-time businessman, the court granted an eight-week period for the payment of these costs.
Relevant Sections:
Section 2(1)(zg) of the Trade Marks Act, 1999: Definition of "well-known trade mark"
Section 11(2) of the Trade Marks Act, 1999: Relative grounds for refusal of registration
Section 11(6) of the Trade Marks Act, 1999: Factors for determining a well-known trade mark
Case Law Referred:
TATA Sons Ltd. Versus Manoj Dodia and Others, 2011 SCC OnLine Del 1520 - The court cited this case while discussing the concept of a well-known trademark and factors to be considered in declaring a mark as well-known.
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