G.D. Pharmaceuticals Private Limited Vs. M/s Cento Products (India)
Coram: Hon’ble Ms. Justice Mini Pushkarna (Delhi High Court)
Written by: Adv. Megha Harshwal & Adv. Manoj Soni
That the Delhi High Court has declared BOROLINE as a well- known trademark under the Trade Marks Act, 1999 read with Trade Mark Rules, 2017. The court directed M/s Cento Products (India) to change its name and trade dress as being similar to
G.D. Pharmaceuticals Private Limited. The court stated that the ‘Boroline’ trademark has immense goodwill and popularity in the market and it is recognized not only in India but also in other countries like Oman and Turkey.
The present suit has been filed by the plaintiff for permanent injunction, infringement of trademark and copyright, passing off, rendition of accounts or profits, damages, delivery up, acts of unfair competition, etc.
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. It was 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 was submitted that plaintiff’s products are available in the form of tubes and plastic pots. That the packaging of the plaintiff’s products is as under:
It is submitted that the use of the trademark “BOROLINE” and 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.
Thus, it is submitted that the entire packaging of the products of the plaintiff is of a distinctive dark green color, and the trade mark “BOROLINE” is presented in a stylized, white colored font, in block capital letters across the middle of the packaging, which also features the registered mark on the right hand corner.
It is the case of the plaintiff 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:
It is also 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 plaintiff instituted the present suit.
That the defendant’s being represented by Ms. Shreya Malik and Mr. Rahul Kumar had agreed to change its trade dress as well as its name. That the defendant’s had agreed not to use the prefix BORO and agreed to change the name of its product to some
other name, which is distinct and different from the name of the plaintiff’s product.
Accordingly, a decree of permanent injunction was issued in favor 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).
The defendant have been directed to change its trade dress and trademark, which shall be totally distinct and different from the plaintiff’s trademark and trade dress. The defendant shall not use the trade dress of dark green color, 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”.
The defendant is directed to pay the cost of ₹ 2,00,000/- to the plaintiff, within a period of eight weeks.
That thereafter the plaintiff’s pressed the prayer for declaration of the plaintiff’s trademark “BOROLINE”, as a well-known mark. Before going into the submissions made by the plaintiff for declaring its trade mark as well-known let us understand what a well-known trademark is.
What is a well-known trademark?
Section 2(1)(zg) of the Trademarks Act, 1999, defines a well- known trademark as a mark that has gained enough recognition among a significant portion of the public who utilize such goods or obtain such services that the use of the mark in relation to other goods or services is likely to be interpreted as denoting a connection between those goods or services and the person using the mark in connection with the first mentioned goods or services.
Below are the submissions made by the Plaintiff before the court for declaring its trade mark as well-known:
The plaintiff’s submitted that they had been adopted the trademark “BOROLINE” in or around the year 1929 and has been continuously using it since 1930. On account of its long and extensive use, the trademark “BOROLINE” has acquired immense distinctiveness and popularity.
The plaintiff’s further submitted that trademark “BOROLINE” has been selected as an Indian “Consumer Super Brand” six times consecutively between the years 2003 and 2017. Plaintiff’s have also been selected as a “Master Brand” in the year 2014 and was listed among the “Most Desirable 30 Power Brands” in the year 2018.
Considering the submissions made by learned counsel appearing for the plaintiff the court declared the mark “BOROLINE” as a well-known mark.