In a recent decision, the Delhi High Court recognised “Boroline” as a well-known trade mark. It stated that, "There is no denying the fact that “BOROLINE” has attained the status of a household name, and is one of the oldest trademarks, which has been in continuous use, preceding the independence of India”.
Brief Facts
The plaintiff, G.D. Pharmaceuticals Private Limited filed a suit against M/s Cento Products (India) (Defendant herein) praying for permanent injunction for trademark and copyright infringement, passing off, rendition of accounts or profits, damages and acts of unfair competition. The plaintiff enumerated that plaintiff coined the word “BOROLINE”, which is in use since 1929, in respect of antiseptic medicinal ointments and creams. Plaintiff alleged that defendant used a similar mark “Borobeauty” which being deceptively similar infringed their trademark and trade dress.
Issue
- Whether the trademark ‘Boroline’ is infringed by the defendant’s usage of mark ‘Borobeauty’ and whether the defendant is liable for passing off his goods as that of the plaintiff.
- Whether, as per the requirements of Section 2(1)(zg) and Section 11(2) of the Trade Marks Act, 1999, Plaintiff’s trademark fulfils the conditions for a well-known trade mark.
- Whether the remedy of permanent injunction can be granted against the defendant for infringement of plaintiff’s trade mark and passing off the goods.
Contentions of Plaintiff
The plaintiff contended that he has been using his trademark continuously, extensively and uninterruptedly since 1929 and therefore has attained immense distinctiveness and popularity. The plaintiff asserted that the usage of the mark ‘borobeauty’ and his trade dress was deceptively similar to that with the plaintiff’s registered mark and the trade dress of his goods. Furthermore, the plaintiff prayed for a declaration of “Boroline” as a well-known trade mark and also sought permanent injunction to prevent further violation.
Contentions of Defendant
Defendant admitted of having used ‘Borobeauty’ and agreed to change it’s trade dress and mark in order to resolve the impending conflict.
Observations of the Court
The court concurred that the mark ‘Boroline’ has been continuously, extensively and uninterruptedly been used by the plaintiff for over 90 years in a bonafide manner. The court also observed that their mark has acquired immense distinctiveness and popularity. In addition, the court highlighted that the said mark has been recognised as an Indian “Consumer Super Brand” six times and has thus, acquired a well-known status as a result of it’s long and extensive use, advertisement and market presence. The court affirmed that defendant’s proposal for a new trade dress and mark are adequate to deal with the concern’s of plaintiff, however, the court acknowledged to need to regard plaintiff’s mark ‘Boroline’ as a well-known trade mark.
High Court observed, “….“BOROLINE” has been selected as an Indian “Consumer Super Brand” six times consecutively between the years 2003 and 2017” … “Therefore, it is the case of the plaintiff that the plaintiff‟s products are not only known for their superior quality, but are well recognized and immensely popular amongst doctors, chemists, patients and over three generations of loyal consumers, since 1929” … “The plaintiff‟s trademark “BOROLINE” has attained prominence and immense goodwill in the market and is highly popular. By virtue of extensive sales, marketing, advertising and publicity, the plaintiff‟s “BOROLINE” trademark has acquired a tremendous reputation across India.” … “Due to its extensive and continuous use, the trademark of the plaintiff, is recognized not only throughout the geographical extent of India, but is also recognized in other countries, as is manifest from the various documents placed on record showing the registration of the said trademark in various countries.” … “
HC Bench stated "Thus, this Court is of the view that the plaintiff‟s trademark qualifies as a well-known trademark. There is no denying the fact that “BOROLINE” has attained the status of a household name, and is one of the oldest trademarks, which has been in continuous use, preceding the independence of India”.
Decision
The High Court of Delhi considering the submission of defendant in regard to agreeing to change his trademark and trade dress and also recognising the plaintiff’s mark as well-known, allowed the prayer of the plaintiff for permanent injunction against the defendant prohibiting them from firstly, using the mark ‘Borobeauty’ and secondly, restraining the defendant from dealing in products with the trade dress / packaging which were identical / deceptively similar to plaintiff’s products. Moreover, considering the pendency of the suit for a long time, the court directed that the defendant to pay a cost of ₹ 2,00,000/- to the plaintiff.
Case Title: G.D. Pharmaceuticals Private Limited v. M/S Cento Products (India)
Citation: CS(Comm) 53/2019 & I.A. 2215/2021
Court: Delhi High Court
Coram: Justice Mini Pushkarna
Date: August 7, 2024
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