"It Has Attained Status Of Household Name": Delhi HC Declares ‘BOROLINE’ As Well-Known Trademark
The Delhi High Court has declared ‘BOROLINE’ as a well-known trademark while allowing its petition for permanent injunction against ‘BOROBEAUTY’.
The Court was deciding a suit filed for permanent injunction restraining the infringement of trademark and copyright, passing off, rendition of accounts or profits, damages, delivery up, acts of unfair competition, etc.
A Single Bench of Justice Mini Pushkarna observed, “… this Court is of the view that the plaintiff’s trademark qualifies as a well known trademark. There is no denying the fact that “BOROLINE” has attained the status of a household name, and is one of the oldest trademarks, which has been in continuous use, preceding the independence of India.”
The Bench declared the trademark ‘BOROLINE’ as a well-known trademark under Sections 2(1)(zg) and 11(2) of the Trade Marks Act, 1999 and directed the Registrar of Trademarks to add the same to the list of well-known trademarks, upon the plaintiff completing the requisite formalities.
Advocate Afzal B. Khan represented the plaintiff while Advocate Shreya Malik represented the defendant.
As per the plaintiff’s case, G.D. Pharmaceuticals Private Limited (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, and the product is sold under a distinctive dark green and white packaging for the last 90 years and has acquired distinctiveness. The plaintiff’s products are available in the form of tubes and plastic pots. Thus, it was submitted that the entire packaging of the products of the plaintiff is of a distinctive dark green colour, and the trade mark ‘Boroline’ is presented in a stylized, white coloured font, in block capital letters across the middle of the packaging, which also features the registered mark on the right-hand corner.
The suit was filed by the plaintiff on the premise 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’. It was the case of the plaintiff that the defendant 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 was recognized with the plaintiff’s product, the suit was filed before the High Court.
The High Court in the above regard said, “There are other documents on record, to show that the plaintiff’s trademark “BOROLINE”, has been conferred with the award of Superbrands, for a number of years. … The plaintiff has also spent considerable amounts for advertising and promoting its products under its trademark, “BOROLINE”. … The duration of the use of the trademark “BOROLINE”, can be gauged from the document showing the advertisement of the product under the mark “BOROLINE”, as occurring in newspaper on 15th August, 1947, the day, our Country attained Independence.”
The Court, therefore, issued a decree of permanent injunction in favour 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) or dealing in products with the trade dress/packaging that are identical or deceptively similar to the plaintiff’s registered trade dress/packaging under the trade mark ‘BOROLINE’, which may amount to infringement, passing off, or in any manner suggest a connection or association with the plaintiff.
“The defendant is directed to change its trade dress and trademark, which shall be totally distinct and different from the plaintiff’s well-known trademark and trade dress. The defendant shall not use the trade dress of dark green colour, 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’”, it further ordered.
The Court also imposed a cost of Rs. 2 lakhs on the defendant considering the pendency of the suit since a long time. It granted eight weeks’ time to pay the same as the defendant’s counsel submitted that he is a small-time businessman.
Accordingly, the High Court disposed of the suit and restrained the defendant.
Cause Title- G.D. Pharmaceuticals Private Limited v. M/s Cento Products (India) (Neutral Citation: 2024:DHC:6224)
Appearance:
Plaintiff: Advocates Afzal B. Khan and Sharad Besoya.
Defendant: Advocates Shreya Malik and Rahul Kumar.
