G.D. PHARMACEUTICALS PRIVATE LIMITED Vs M/S CENTO PRODUCTS (INDIA)

The present suit has been filed for permanent injunction restraining

infringement of trademark and copyright, passing off, rendition of accounts or profits, damages, delivery up, acts of unfair competition, etc. 2.

The plaintiff company was founded in the year 1929, and ever since,

has been engaged in the business of manufacturing, marketing, selling and exporting a variety of medicinal and cosmetic preparations, specialising in Over the Counter (“OTC”) pharmaceutical products, and health care cosmetics. 3.

It is the case of the plaintiff that the plaintiff coined the word

„BOROLINE‟, which is in use since 1929, in respect of antiseptic medicinal ointments, creams, etc. The word „BOROLINE‟ is registered both as a word mark as well as a label mark bearing no. 371269 and 14610, respectively in Class-5. Thus, it is submitted that the product of the plaintiff is sold under a distinctive dark green and white packaging for the last 90 years and has acquired distinctiveness. It is submitted that plaintiff‟s products are available Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:17.08.2024 21:12:51

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in the form of tubes and plastic pots, as follows:

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4.

The plaintiff‟s flagship brand “BOROLINE”, which is the subject

matter of the present suit, has been used by the plaintiff in relation to antiseptic creams, alongside a distinctive get up, packaging and colour scheme, continuously, uninterruptedly, bonafidely and exclusively, for nearly ninety years. 5.

Thus, it is submitted that the entire packaging of the products of the

plaintiff is of a distinctive dark green colour, and the trade mark „BOROLINE‟ is presented in a stylized, white coloured font, in block capital letters across the middle of the packaging, which also features the registered mark on the right hand corner. 6.

It is submitted that the use of the trademark „BOROLINE‟ and

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distinctive product packaging/trade dress in relation to its creams, has established the plaintiff in the market and the plaintiff occupies an eminent position in the market for antiseptic creams. 7.

The present suit has been filed by the plaintiff on the premise that in

or around the month of December, 2018, the plaintiff through its market sources and network of distributors and agents, was alerted about the presence of product/brand similar to the plaintiff‟s „BOROLINE‟ products, being sold in certain markets under the mark/name of BOROBEAUTY. The comparison between the products of the plaintiff and the defendant, as given in the plaint, is as follows:

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8.

It is the case of the plaintiff that the defendant has adopted the

mark/name „BOROBEAUTY‟, which is used and represented in a manner, which is deceptively similar to plaintiff‟s use of its registered trade mark „BOROLINE‟. Being aggrieved by the fact that the defendant had imitated the plaintiff‟s iconic trade dress of a distinct dark green tube ending in an octagonal black cap that has come to be recognized with the plaintiff‟s product, the present suit has been filed. 9.

The matter has been pending for long and during the pendency of the

suit, the defendant has made various offers to change its trade dress, as well as, its name. 10.

Today, learned counsel appearing for the defendant has handed over a

copy of the photograph of a new trade dress proposed to be used by the Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:17.08.2024 21:12:51

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defendant to submit that the defendant is now giving up the green colour trade dress altogether, and is adopting a new trade dress in blue colour, as follows:

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11.

He further submits that the defendant does not intend to even use the

prefix „BORO‟ and shall change the name of its product to some other name, which is distinct and different from the name of the plaintiff‟s product. 12.

Accordingly, the suit can be decreed in favour of the plaintiff, in view

of the aforesaid stand taken by the defendant. 13.

At this stage, learned counsel appearing for the plaintiff presses the

prayer for declaration of the plaintiff‟s trademark “BOROLINE”, as a wellknown mark. 14.

Perusal of the record shows that the trademark “BORLINE” and

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variations thereof, have been registered, in the following manner:

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15.

This Court notes the submission of the plaintiff that the trademark in

question was adopted by the plaintiff in or around the year 1929, and has Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:17.08.2024 21:12:51

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been used continuously, extensively, uninterruptedly, and in a bonafide manner since the year 1930. On account of its long and extensive use, the trademark “BOROLINE” has acquired immense distinctiveness and popularity. 16.

This Court notes the submission made by learned counsel appearing

for the plaintiff that the trademark “BOROLINE” has been selected as an Indian “Consumer Super Brand” six times consecutively between the years 2003 and 2017. It was selected as a “Master Brand” in the year 2014 and was listed among the “Most Desirable 30 Power Brands” in the year 2018. 17.

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. 18.

While expounding upon the concept of a well-known trademark

having high reputation amongst the general public and the various factors which have to be considered in declaring a mark as a well-known mark, this court in the case of TATA Sons Ltd. Versus Manoj Dodia and Others, 2011 SCC OnLine Del 1520, has held as follows: “xxx xxx xxx 5. A well known trademark is a mark which is widely known to the relevant general public and enjoys a comparatively high reputation amongst them. On account of advancement of technology, fast access to information, manifold increase in international business, international travel and advertising/publicity on internet, television, magazines and periodicals, which now are widely available throughout the world, of goods and services during fairs/exhibitions, more and more persons are coming to know of the trademarks, which are well known in other countries and which on account of the quality of the products being sold under those names and extensive promotional and marketing efforts have come to enjoy trans-border reputation. It is, therefore, being increasingly felt that such trademark needs to be protected not only in the countries in which they are registered but also Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:17.08.2024 21:12:51

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in the countries where they are otherwise widely known in the relevant circles so that the owners of well known trademarks are encouraged to expand their business activities under those marks to other jurisdictions as well. The relevant general public in the case of a well known trademark would mean consumers, manufacturing and business circles and persons involved in the sale of the goods or service carrying such a trademark. xxx xxx xxx 13. Trademarks Act, 1999 does not specify the factors which the Court needs to consider while determining whether a mark is a well known mark or not, though it does contain factors which the Registrar has to consider whether a trademark is a well known mark or not. In determining whether a trademark is a well known mark or not, the Court needs to consider a number of factors including (i) the extent of knowledge of the mark to, and its recognition by the relevant public; (ii) the duration of the use of the mark; (iii) the extent of the products and services in relation to which the mark is being used; (iv) the method, frequency, extent and duration of advertising and promotion of the mark; (v) the geographical extent of the trading area in which the mark is used; (vi) the state of registration of the mark; (vii) the volume of business of the goods or services sold under that mark; (viii) the nature and extent of the use of same or similar mark by other parties; (ix) the extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of law and trademark registry and (x) actual or potential number of persons consuming goods or availing services being sold under that brand. A trademark being well known in one country is not necessarily determinative of its being well known and famous in other countries, the controlling requirement being the reputation in the local jurisdiction. xxx xxx xxx” (Emphasis Supplied)

19.

Perusal of the plaint shows that the sale of the plaintiff‟s antiseptic

cream with the trademark “BOROLINE” has grown phenomenally over the years. 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. 20.

The Trade Marks Act, 1999 defines “well known” trademark in the

following manner: Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:17.08.2024 21:12:51

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“xxx xxx xxx 2. Definitions and interpretation. (1)….. (zg) “well-known trade mark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services. xxx xxx xxx”

21.

It is to be noted that various factors have been detailed in The Trade

Marks Act, 1999 which are to be taken into account while determining whether a trade mark is a well known trademark. Thus, Section 11(6) of The Trade Mark Act, 1999 encapsulates the factors for determining a trademark as well known trademark, in the following manner: “xxx xxx xxx 11. Relative grounds for refusal of registration …… (6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including— (i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark; (ii) the duration, extent and geographical area of any use of that trade mark; (iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies; (iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark; (v) the record of successful enforcement of the rights in that trade mark, in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record. xxx xxx xxx” Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:17.08.2024 21:12:51

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22.

Considering the aforesaid factors, with respect to the trademark

“BOROLINE”, it is to be noted that the same has been in extensive use for more than ninety years. The list of registrations in favour of the plaintiff, showing the first date of registration in the year 1949, are reproduced as under:

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23.

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. The document regarding registration of the plaintiff‟s mark in Oman, is reproduced as under:

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24.

The

document

showing

the

registration

of

the

trademark,

“BOROLINE” in Turkey, is reproduced as under:

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25.

The

document

showing

the

registration

of

the

trademark,

“BOROLINE” in United Arab Emirates (“UAE”), is reproduced as under:

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26.

The

document

showing

the

registration

of

the

trademark,

“BOROLINE” in Bangladesh, is reproduced as under:

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27.

Further, this Court also notes that the products under the trademark

“BOROLINE”, have been conferred with various awards. The document Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:17.08.2024 21:12:51

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showing that the plaintiff‟s trademark “BOROLINE”, has been selected as super brand India for many years, is reproduced as under:

28.

The document showing the plaintiff‟s trademark “BOROLINE”, as

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being recognized as most admired/desirable brand of India, is reproduced as under:

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29.

The document regarding plaintiff‟s brand “BOROLINE”, being

conferred with the Superbrands India Award for the year 2003-04, is reproduced as under:

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30.

There are other documents on record, to show that the plaintiff‟s

trademark “BOROLINE”, has been conferred with the award of Superbrands, for a number of years. 31.

The table showing the sales of the plaintiff‟s products under the

trademark “BOROLINE”, as given in the plaint, is as follows:

32.

The plaintiff has also spent considerable amounts for advertising and

promoting its products under its trademark, “BOROLINE”. The table showing the expenditure by the plaintiff on promotion, advertisement and publicity of its products, under the trademark “BOROLINE”, is as under:

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33.

The duration of the use of the trademark “BOROLINE”, can be

gauged from the document showing the advertisement of the product under the mark “BOROLINE”, as occurring in newspaper on 15th August, 1947, the day, our Country attained Independence. The said document is reproduced hereunder:

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34.

Thus, this Court is of the view that the plaintiff‟s trademark qualifies

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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. 35.

Considering the aforesaid detailed discussion, the trademark

“BOROLINE” of the plaintiff, is declared as a well-known trademark under Section 2(1)(zg) and Section 11(2) of the Trade Marks Act, 1999. Accordingly, it is directed that the Registrar of Trademarks shall add the same to the list of well-known trademarks, upon the plaintiff completing the requisite formalities. 36.

Considering the submissions made by learned counsel appearing for

the defendant with regard to change in its trademark and trade dress, and in view of the fact that the plaintiff‟s mark “BOROLINE” has been declared as a well-known mark, prayer of the plaintiff for permanent injunction against the defendant, is liable to be allowed. 37.

Accordingly, a decree of permanent injunction is issued in favour of

the plaintiff and against the defendant, thereby restraining the defendant, its partners, proprietors, servants, agents, and all others in active concert or participation with them, from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in products bearing the mark/ name „BOROBEAUTY‟,

or

any

other

mark/name

consisting

of

the

word/expression „BOROBEAUTY‟, or any other names/ marks/ expressions that are identical or deceptively similar to the plaintiff‟s registered trademarks „BOROLINE‟ and/or „BOROLINE‟ (Label) or dealing in products with the trade dress/packaging that are identical or deceptively similar to the plaintiff‟s registered trade dress/ packaging under the trade mark „BOROLINE‟, which may amount to infringement, passing off, or in Signature Not Verified Digitally Signed By:AMAN UNIYAL Signing Date:17.08.2024 21:12:51

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any manner suggest a connection or association with the plaintiff. 38.

The defendant is directed to change its trade dress and trademark,

which shall be totally distinct and different from the plaintiff‟s well-known trademark and trade dress. The defendant shall not use the trade dress of dark green colour, which is used by the plaintiff. Further, the defendant shall adopt a new trade name, which would not include the prefix „BORO‟ and would not be similar to the trademark of the plaintiff, „BOROLINE‟. 39.

Considering the pendency of the suit since a long time, it is directed

that the defendant shall pay cost of ₹ 2,00,000/-, to the plaintiff. 40.

At this stage, learned counsel appearing for the defendant submits that

the defendant is a small time businessman, and that he may be granted eight weeks‟ time to pay the same. 41.

Accordingly, the defendant is directed to pay the cost of ₹ 2,00,000/-

to the plaintiff, within a period of eight weeks, from today. 42.

Decree sheet be drawn up.

43.

The present suit, along with the pending applications, stand disposed

of.

MINI PUSHKARNA, J AUGUST 7, 2024 Ak/Kr

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