Trademark disputes that involve identical marks rely on the priority, goodwill, territorial reputation and the effect of registration to identify the rights of the parties involved. The dispute can become more complicated when both parties are registered proprietors and claim rights in the same mark. In such cases, the Court needs to balance the proprietors’ rights with rights in passing off, while also evaluating whether either party has delayed or complied with the other’s use.
The Bombay High Court considered these issues in the cross-suits between Bristol Bakery (Party A) and Grupo Bimbo (Party B) concerning the mark “BIMBO” for bakery products. In this case, both parties requested that the other be restrained from using the registrations beginning from 1993 and subsequent entry into the Indian market.
Background of the Case
Party A, a Mumbai-based partnership firm, claimed to be engaged in the business of running a bakery and manufacturing bread and other bakery products. It asserted that it had used the mark “BIMBO” since at least 1979. According to Party A, the mark was derived from the expression “Best in Maharashtra Before Others”, by taking the first letters of the words in that expression.
Party A claimed rights in a label mark containing “BIMBO” as its essential feature, registered in Class 30. It also claimed that it adopted another label in 1999 while retaining “BIMBO” as the leading feature. In 2007, an application was filed for registration of the second label mark, which was opposed by Party B.
Party B, a Mexican company, claimed that its founder adopted the coined mark “BIMBO” in 1943 for bakery products and that the mark was registered in Mexico in 1944. It contended extensive global presence, numerous trademark registrations across jurisdictions and operations in multiple countries, including India. In India, Party B secured registration of its device mark in 1993 and later obtained other registrations for “BIMBO” marks. Party B’s presence in India was linked to its joint venture in 2017, acquisition of two other Indian companies in 2020 and 2021. It was also pleaded that the “BIMBO” mark was used on the packaging of products sold under the “Harvest Gold” brand in 2019.
Party A filed its suit in May 2023 after allegedly learning of Party B’s proposed launch and actual sale of products bearing the impugned mark in India. Party B filed its cross-suit in September 2023, alleging infringement and passing off by Party A.
Issues Before the Court
The Court was required to consider whether either party had made out a case for an interim injunction against the other. The central questions included:
- Whether Party B could maintain an infringement action against Party A despite Party A’s registration for the mark.
- Whether Party A could restrain Party B in passing off on the basis of prior adoption and use in India.
- Whether Party B could rely on its global reputation and trans-border goodwill to restrain Party A.
- Whether delay, acquiescence and the conduct of both parties affected the grant of interim relief.
Court’s Analysis
The Court first addressed the position where both parties are registered proprietors of identical or similar marks. The Court observed that the trademark law recognises the possibility of more than one registered proprietor for identical or deceptively similar marks. In such a situation, exclusivity against each other is restricted. However, Section 27(2) preserves rights in passing off. Therefore, while infringement claims between two registered proprietors may face statutory limitations, an action for passing off remains available.
Party B’s Infringement Claim
Party B argued that Party A’s registration was fraudulent, illegal and invalid. According to Party B, Party A had adopted a mark identical to its internationally known “BIMBO” mark, despite Party B’s prior global adoption and reputation.
The Court considered whether Party A’s registration could be ignored at the interim stage. It relied on the Full Bench decision in Lupin Ltd. vs Johnson & Johnson, which permits a civil court to consider the validity of a registration at the interlocutory stage only in exceptional cases where the registration is ex facie illegal, fraudulent or shocks the conscience of the Court.
The Court held that Party B did not meet this threshold, as its case of fraud was based on alleged international registrations and worldwide reputation before Party A’s adoption. However, the Trade Marks Act is territorial, and Party B’s case was not sufficient to show that Party A’s 1979 registration was ex facie fraudulent or illegal. Party B had claimed that by 1970 “BIMBO” was a leading mark in America and Latin America, but this was not enough to invalidate Party A’s Indian registration at the interim stage. Since both parties held registrations and Party A’s registration was not shown to be ex facie illegal or fraudulent, Party B’s claim for interim relief on infringement did not succeed.
Territoriality and Trans-Border Reputation
Party B relied on its adoption in Mexico in 1943, global registrations and reputation. However, the Court found that Party B had prima facie failed to prove spill-over of its worldwide goodwill and reputation in India as of the date when Party A adopted and used the mark.
Party A’s Passing Off Claim
Party A argued that it was the prior adopter and user of “BIMBO” in India. It relied on its 1979 registration, sales figures, promotional material and documents covering several decades. It contended that Party B did not use the mark in India until much later and that its Indian registrations were not supported by use.
The Court prima facie accepted that Party A had established prior adoption and use of its mark in 1979. However, this was not enough to grant interim relief in passing off. The Court held that, for passing off, Party A had to establish goodwill and reputation as on the relevant date, namely, when Party B commenced use of the mark in India, which was stated to be around 2019.
On this aspect, the Court found the material insufficient. It was noted that there were no certified sales figures, adequate promotional material, or advertisements to show that consumers identified “BIMBO” with Party A, thereby supporting a passing-off injunction at the interim stage. Accordingly, while Party A could show prior adoption and use, it could not establish the level of goodwill and reputation required for interim relief in passing off.
Conduct of the Parties
A significant reason for refusing interim relief to both parties was their conduct over time. The Court noted that Party A was aware of Party B’s registration and claims at least from 2010, when Party B filed a notice of opposition against Party A’s second label mark. In the opposition, Party B had referred to its Indian registrations and claimed reputation and goodwill. In response, Party A asserted its own use since 1979 and stated that it had not come across Party B’s products in India.
The Court also noted that Party B was aware of Party A’s registration and use through the opposition proceedings. Despite this, neither side took effective action for several years. The Court further referred to negotiations between the parties during 2020-2022, which indicated that the parties were aware of each other’s positions before filing the suits.
In the Court’s view, both parties allowed each other to build their businesses with the assistance of the “BIMBO” mark. Therefore, the Court held that both parties were impacted by acceptance.
Balance of Convenience
The Court found that the balance of convenience required preservation of the existing position. Since both parties had used or asserted rights in the mark for a significant period and both had allowed the other’s position to develop, an interim injunction in favour of either party would disturb the long-standing coexistence.
The Court observed that neither party should be restrained from using its mark at the interlocutory stage. The issues of validity, goodwill, reputation, honest adoption, trans-border reputation and market confusion would require examination at trial.
Court’s Decision
The Bombay High Court dismissed both interim applications and held that Party A had prima facie established prior adoption and use in 1970 but failed to establish the goodwill and reputation necessary for interim passing off relief. Additionally, despite its global history and earlier foreign adoption, Party B failed to establish a spillover reputation in India as of Party A’s adoption and make out an interim infringement case.
Conclusion
The Bombay High Court’s refusal to grant a monopoly to either side merely on the strength of registration, prior foreign adoption or prior Indian use shows that trademark disputes involving identical marks require a detailed inquiry. By dismissing both interim applications, the Court allowed the parties to proceed to trial without disturbing the existing commercial position.
Authors: Manisha Singh and Shivi Gupta