From Tradition to Trademark: BOROLINE Declared Well-Known

IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 7^th August, 2024
CS(COMM) 53/2019 & I.A. 2215/2021
G.D. PHARMACEUTICALS PRIVATE LIMITED vs. M/S CENTO PRODUCTS (INDIA)
CORAM: HON’BLE MS. JUSTICE MINI PUSHKARNA

Abstract: This article examines the landmark judgment of the Delhi High Court in the case of G.D. Pharmaceuticals Private Limited vs. M/S Cento Products (India). The case centred on the infringement of trademark and copyright, passing off, and other related claims concerning the well-known trademark “BOROLINE,” owned by G.D. Pharmaceuticals Private Limited. The court’s decision to declare “BOROLINE” as a well-known trademark under Section 2(1)(zg) and Section 11(2) of the Trade Marks Act was pivotal. This judgment is significant since it reflects the measured approach adopted by the Courts in granting such recognition. The  importance of a well known declaration is well recognized and the judgment is builds upon the cases like Tata Sons Ltd. Versus Manoj Dodia and Others, 2011 SCC OnLine Del 152 which espouse the law on the subject.. The judgment is significantly highlights the court’s role in balancing the interests of trademark owners with the need to prevent consumer confusion and protect the integrity of established brands.

This case involves a suit filed by G.D. Pharmaceuticals Private Limited against M/S Cento Products (India) for permanent injunction restraining infringement of trademark and copyright, passing off, rendition of accounts or profits, damages, delivery up, acts of unfair competition, etc. The plaintiff, G.D. Pharmaceuticals, claimed exclusive rights over the trademark “BOROLINE,” used since 1929 for antiseptic medicinal ointments and creams, alleging that the defendant’s use of “BOROBEAUTY” was deceptively similar and infringed upon their trademark rights.

The plaintiff’s flagship brand “BOROLINE” has been used in relation to antiseptic creams with a distinctive get-up, packaging, and color scheme for nearly ninety years. The plaintiff alleges that in December 2018, it became aware of a product/brand similar to its “BOROLINE” products being sold under the mark/name “BOROBEAUTY,” which the plaintiff contends is deceptively similar to its registered trademark “BOROLINE” and its iconic trade dress. During the pendency of the suit, the defendant made various offers to change its trade dress and name. The defendant proposed to abandon the green colour trade dress and adopt a new trade dress in blue colour, and also to change the name of its product to something distinct and different from the plaintiff’s product. The plaintiff pressed for the declaration of its trademark “BOROLINE” as a well-known mark, citing its extensive use, recognition, and registration in various countries, along with numerous awards and recognitions that the brand has received over the years

Issues:

1. Whether the defendant’s use of “BOROBEAUTY” infringes upon the plaintiff’s “BOROLINE” trademark.
2. Whether the “BOROLINE” trademark qualifies as a well-known trademark under the Trade Marks Act, 1999.

Held:

The court, after considering the submissions and evidence presented, declared “BOROLINE” as a well-known trademark under Section 2(1)(zg) and Section 11(2) of the Trade Marks Act, 1999, recognizing its extensive use, popularity, and distinctiveness acquired over ninety years. The court issued a decree of permanent injunction against the defendant, restraining them from using “BOROBEAUTY” or any similar mark or trade dress that could infringe upon or be deceptively similar to “BOROLINE.” The defendant was also directed to adopt a new trade dress and trademark distinct from that of the plaintiff’s and to pay costs of ₹2,00,000/- to the plaintiff.

Court’s reasoning:

1. Infringement and Passing Off: The court found that the defendant’s use of “BOROBEAUTY” and its trade dress was deceptively similar to the plaintiff’s “BOROLINE” trademark and trade dress, leading to infringement and passing off. The defendant agreed to change its trade dress and name, abandoning the green colour trade dress and the prefix “BORO” to avoid any association with the plaintiff’s products.

2. Well-Known Trademark: The court declared “BOROLINE” as a well-known trademark, considering its extensive use since 1929, registration in various countries, recognition as a super brand, and immense popularity and goodwill among consumers. The court relied on factors such as the duration, extent, and geographical area of use; promotion and advertising; and recognition by the public to determine its well-known status.

Conclusion:

The court issued a decree of permanent injunction against the defendant, restraining them from using “BOROBEAUTY” or any similar mark or trade dress that infringes upon the plaintiff’s “BOROLINE” trademark. The “BOROLINE” trademark was declared a well-known trademark, and the defendant was directed to adopt a new trade name and dress distinct from the plaintiff’s. The defendant was also ordered to pay costs of ₹2,00,000 to the plaintiff.

Key Takeaways:

“BOROLINE” is recognized as a well-known trademark due to its long history, widespread recognition, and significant goodwill. The case underscores the protection afforded to well-known trademarks against infringement and passing off, emphasizing the importance of maintaining distinctiveness in trade dress and trademarks to avoid consumer confusion.