By Rima Majumdar and Swayamsiddha Das
Rome was not built in a day, but they were laying bricks every hour. Likewise with patience and consistency, brands like BOROLINE are built.
Adding another mark into the list of Well-Known Marks for the Indian Trade Mark Office, the Delhi High Court in the case of G.D Pharmaceuticals v. M/S Cento declared BOROLINE as a well-known trademark and held that the Defendant’s product BOROBEAUTY is identical and deceptively similar to Plaintiff’s trade dress, packaging and mark BOROLINE and further directed the Defendant to adopt a new trade name, trade dress and not include the prefix “BORO” or any name which is similar to the trademark of the Plaintiff.
Brief Facts
The Plaintiff (G.D Pharmaceuticals) is engaged in manufacturing, marketing, selling and exporting variety of medical and cosmetic preparations since 1929 and has coined the word BOROLINE with respect to antiseptic medicinal ointments, creams etc. the word BOROLINE is registered both as a word mark* (Application No. 371269 on 1 January, 1934) and label mark* (Application No. 14610 on 19 April, 1943) under class 5.
The Plaintiff’s products are not only known for their superior quality but are also well recognized and immensely popular amongst doctors, chemist, patients and loyal consumers since 1929.
The Plaintiff’s brand BOROLINE alongside a distinctive get up, packaging and colour scheme has been in use uninterruptedly, bonafidely, exclusively and continuously for 90 years now. The Plaintiff through its market sources, network and distributors around December, 2018 was alerted about the presence of product/brand BOROBEAUTY which was similar to that of Plaintiff’s product BOROLINE. Aggrieved by the acts of the Defendant (M/S Cento Products) the Plaintiff filed the present suit in the Hon’ble Delhi High Court seeking permanent injunction against the Defendant, restraining infringement of trademark and copyright.
Submission by Plaintiff
The Plaintiff also contends that due to continuous use, the Plaintiff’s trademark is well recognized in India and across the globe. The Plaintiff’s mark BOROLINE has been selected as the Indian Consumer Super Brand six times consecutively between years 2003 to 2017.
The Furthermore the Plaintiff contended that it had spent considerable amount for advertising and promoting its product under its trademark BOROLINE.
The Plaintiff in the present case claimed that the Defendant’s adoption of the mark/name BOROBEAUTY is represented in a manner which is deceptively similar to that of the Plaintiff’s registered trademark BOROLINE.
| Sl.No | Similarities | Plaintiff | Defendant |
|---|---|---|---|
| 1 | Tube Product |  |
 |
| 2 | Packaging |  |
 |
| 3 | Box/Container |  |
 |
The Plaintiff claimed that the Defendant had imitated the Plaintiff’s iconic trade dress i.e., distinct dark green tube and octagonal black cap.
Submissions by Defendant
During the pendency of the suit the Defendant made various offers to change its trade dress as well as its name. The Defendant also gave up on the green trade dress and adopted a new trade dress in colour blue.
The Defendant further submitted that, it did not intend to use the prefix BORO and would change the name of its product to some other name which is distinct and different from that of the Plaintiff.
Declaring BOROLINE as well known
While deciding the matter, the counsel appearing on behalf of the Plaintiff pressed the prayer to declare the Plaintiff’s mark BOROLINE as a well-known trademark. The Hon’ble High Court while considering the prayer noted that the Plaintiff’s trademark BOROLINE was adopted in or around year 1929 and has been registered in the following manner
| Sl.No | Application Number | Class | Trademark | Status |
|---|---|---|---|---|
| 1 | 14610 | 5 | BOROLINE (Label) | Registered |
| 2 | 14611 | 5 | BOROLINE (Label) | Registered |
| 3 | 198670 | 5 | BOROLINE (Word) | Registered |
| 4 | 371269 | 5 | BOROLINE (Word) | Registered |
| 5 | 1491772 | 5 |  |
Registered |
| 6 | 1491773 | 5 |  |
Registered |
| 7 | 1912811 | 3 & 5 |  |
Registered |
The Court also noted that the marks had been used continuously, extensively, uninterruptedly, and in a bonafide manner since year 1930. Hence, due to its long and extensive use, the Plaintiff’s trademark “BOROLINE” had acquired immense distinctiveness and popularity. The Hon’ble Court also noted that the Plaintiff’s products were not only known for their superior quality, but were well recognized and immensely popular amongst doctors, chemists, patients and over three generations of loyal consumers, since 1929.
The Hon’ble Court also place reliance on the case of TATA Sons Ltd. Versus Manoj Dodia and Others , wherein the Court has elaborated on the concept of well-known trademark as under:
i. A well- known trademark is widely known to the relevant general public and enjoys a high reputation amongst them.
ii. On account of advancement of technology, it is imperative that such trademark are to be protected not only in the countries in which they are registered but also in the countries where they are otherwise widely known;
iii. That the owners of well-known trademarks are encouraged to expand their business activities under those marks to other jurisdictions as well. In view of the aforesaid facts and circumstances, the Hon’ble Court also opined that the Plaintiff’s trademark BOROLINE had been used extensively for more than 90 years and that the mark is not only well recognized in India but is also recognized and registered in other countries. The Hon’ble Court also took note of the considerable amount of money spent by the Plaintiff for advertisement and promotion of its product under the trademark “BOROLINE”.
Considering the above submissions the Hon’ble Court was of the view that the Plaintiff’s trademark qualified as a well-known trademark and stated that BOROLINE has attached the status of a household name and is one of the oldest trademarks whose presence can be gauged from the advertisement of the Plaintiff’s product under the mark “BOROLINE” on August 15, 1947.
Thus, the Plaintiff’s trademark “BOROLINE” was declared as well-known trademark under Section 2(1)(zg) and Section 11(2) of the Trade Marks Act, 1999.
The Hon’ble Court further issued a decree of permanent injunction in favour of the Plaintiff and against the Defendant, thereby restraining the Defendant 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, trade dress/ packaging.
The Hon’ble Court also directed the Defendant to change its trade dress and trademark and restrained the Defendant from using dark green colour trade dress as used by the Plaintiff. Furthermore, the Defendant was asked to adopt a new trade name, which should not include the prefix “BORO” and should also not be similar to the Plaintiff’s trademark “BOROLINE”
Conclusion
The above case at hand not only highlights the 90 year old history and goodwill attached to country’s one of the oldest trademark but also sheds light on the extent of protection that comes attached to a mark once declared well-known. It can be deciphered that the Courts have considered the following parameters for determining a mark as a well-known trademark:
- The extent of knowledge of the mark and its recognition by the relevant public
- The duration of the use of the mark
- The extent of the products and services in relation to which the mark is being used
- The method, frequency, extent and duration of advertising and promotion of the mark
- The geographical extent of the trading area in which the mark is used
- The state of registration of the mark
- The volume of business of the goods or services sold under that mark
- The nature and extent of the use of same or similar mark by other parties
- The extent to which the rights claimed in the mark have been successfully enforced, particularly before the Courts of law and trademark registry
- Actual or potential number of persons consuming goods or availing services being sold under that brand