"BIRLA" trademark based on association with Birla group of companies - Grasim Industries failed to prove association

Bombay High Court Denies Grasim Industries' Interim Relief in Trademark Dispute with Saboo Tor Pvt Ltd, Plaintiffs failed to establish exclusive rights to "BIRLA" trademark; defendants' registration deemed valid at interlocutory stage.

In a significant ruling, the Bombay High Court, presided over by Justice Sharmila U. Deshmukh, dismissed the interim application filed by Grasim Industries Limited against Saboo Tor Private Limited, seeking injunctions for alleged trademark infringement and passing off under the Trade Marks Act, 1999. The case revolved around the use of the "BIRLA" trademark, with Grasim Industries claiming exclusive rights due to their association with the Aditya Birla Group.

The court found that Grasim Industries failed to provide prima facie evidence of their exclusive association with the Birla Group of companies, which is crucial for claiming exclusive rights to the "BIRLA" trademark. The judgment noted that the plaintiffs did not produce any documents to substantiate the alleged internal arrangement or historical usage of the "BIRLA" trademark by the Birla Group. Furthermore, the court highlighted the lack of evidence demonstrating the plaintiffs' prior use and registration of the "BIRLA" trademark, which undermined their claims of exclusivity.

The court also examined the defendants' registration of the "BIRLA TMT" trademark, which has been in use since 2008. It was determined that the defendants' registration was not fraudulent or illegal at the interlocutory stage, as no substantial evidence of fraud was presented by the plaintiffs. The judgment emphasized that the plaintiffs had not established the "BIRLA" trademark as a well-known trademark, nor had they demonstrated the likelihood of confusion or association between the defendants' and plaintiffs' trademarks.

In addressing the plaintiffs' claims of passing off, the court found that Grasim Industries could not demonstrate the requisite goodwill and distinctiveness of their marks before the defendants' use of the "BIRLA TMT" trademark. The evidence provided, such as promotional materials and sales figures, was deemed insufficient to prove the likelihood of confusion or misrepresentation in the market.

Ultimately, the court directed Saboo Tor Private Limited to maintain accounts of their sales under the impugned trademarks until the final disposal of the suit, aiming to balance the equities between the parties. The ruling underscores the importance of providing substantial evidence when seeking interim relief in trademark disputes, particularly regarding claims of exclusive rights and prior use.

Bottom Line:

Trade Marks Act, 1999 - Interim relief sought for infringement and passing off - Plaintiff failed to establish prima facie case of exclusive right to use "BIRLA" trademark based on association with Birla group of companies - Defendant No.1's registration since 2008 not deemed fraudulent or illegal at interlocutory stage.

Statutory provision(s): Trade Marks Act, 1999, Sections 29, 11, and related provisions on infringement, passing off, and relative grounds for refusal of registration.

Grasim Industries Limited v. Saboo Tor Private Limited, (Bombay) : Law Finder Doc Id # 2795513