In a landmark judgment delivered on August 7, 2024, the Delhi High Court granted significant relief to G.D. Pharmaceuticals Private Limited, the maker of the iconic antiseptic cream, BOROLINE. The case, filed by G.D. Pharmaceuticals against M/s Cento Products (India), revolved around issues of trademark infringement, passing off, and unfair competition. The judgment not only reinforces the importance of trademark protection in India but also highlights the criteria for a trademark to be declared as “well-known” under the Trade Marks Act, of 1999.
Background of the Case
G.D. Pharmaceuticals Private Limited, a company established in 1929, has been a prominent player in the pharmaceutical and cosmetic industry for over nine decades. The company is well-known for its flagship product, BOROLINE, an antiseptic cream that has become a household name in India. The BOROLINE trademark is registered both as a word mark and a label mark under Class-5, signifying its use for medicinal and cosmetic preparations.
The distinctive green packaging with a stylized white font and an octagonal black cap has been associated with BOROLINE for decades. The company claimed that this trade dress had acquired distinctiveness and was widely recognized by consumers.
The Dispute
The dispute began when G.D. Pharmaceuticals discovered in December 2018 that a similar product named BOROBEAUTY was being sold in the market by M/s Cento Products (India). The packaging and trade dress of BOROBEAUTY closely resembled that of BOROLINE, leading to concerns of trademark infringement and passing off.
G.D. Pharmaceuticals argued that the use of the BOROBEAUTY name and its similar packaging was deceptively similar to BOROLINE, which could mislead consumers into believing that BOROBEAUTY was associated with or endorsed by BOROLINE. As a result, the company filed a suit seeking a permanent injunction to restrain M/s Cento Products from using the BOROBEAUTY mark, along with other reliefs such as damages, delivery up, and a declaration that BOROLINE is a well-known trademark.
The Defendant’s Response
During the pendency of the suit, M/s Cento Products made several offers to change its trade dress and product name. Eventually, the defendant proposed a new trade dress in blue colour and expressed its intention to discontinue the use of the prefix “BORO.” The defendant also agreed to adopt a new product name distinct from BOROLINE.
Court’s Observations and Findings
The court, presided over by Justice Mini Pushkarna, thoroughly examined the facts and evidence presented by both parties. The court acknowledged the long-standing use of the BOROLINE trademark, which has been in continuous use since 1930. The court also noted the extensive recognition and popularity of BOROLINE, which has been selected as an Indian Consumer Super Brand six times between 2003 and 2017 and has received various other accolades over the years.
Declaring BOROLINE as a Well-Known Trademark
One of the key aspects of the judgment was the declaration of BOROLINE as a well-known trademark under Section 2(1)(zg) and Section 11(2) of the Trade Marks Act, 1999. The court referred to several factors, as laid down in the Trade Marks Act, to determine whether a trademark qualifies as well-known. These factors include:
1. Knowledge and Recognition: The court emphasized that BOROLINE is widely known and recognized by a substantial segment of the public in India. The trademark’s recognition extended beyond India, with registrations in various countries such as Oman, Turkey, UAE, and Bangladesh.
2. Duration and Extent of Use: The court acknowledged that BOROLINE has been in use for over ninety years, which is a significant factor in establishing its well-known status.
3. Promotion and Advertising: The court considered the extensive promotion, advertising, and publicity efforts undertaken by G.D. Pharmaceuticals over the years. This included advertisements dating back to August 15, 1947, the day India attained independence.
4. Registration Status: The court took note of the multiple registrations of the BOROLINE trademark in India and abroad, which further reinforced its recognition and use.
5. Sales and Popularity: The court examined the sales figures and the widespread popularity of BOROLINE among doctors, chemists, patients, and consumers across generations.
Based on these factors, the court concluded that BOROLINE qualifies as a well-known trademark, enjoying a high reputation and goodwill among the general public. The court directed the Registrar of Trademarks to add BOROLINE to the list of well-known trademarks, upon the completion of requisite formalities by G.D. Pharmaceuticals.
Permanent Injunction Granted
Given the defendant’s agreement to change its trade dress and trademark, the court granted a decree of permanent injunction in favour of G.D. Pharmaceuticals. The injunction restrains M/s Cento Products, its partners, proprietors, servants, agents, and all others associated with it from manufacturing, selling, or advertising products under the name BOROBEAUTY or any other mark that is identical or deceptively similar to BOROLINE.
The defendant was also directed to adopt a new trade dress that does not use the dark green colour associated with BOROLINE and to choose a new product name that does not include the prefix “BORO.” The court further ordered the defendant to pay ₹2,00,000/- as costs to G.D. Pharmaceuticals, with an eight-week period granted for payment.
Implications of the Judgment
The Delhi High Court’s judgment in this case underscores the importance of protecting well-known trademarks in India. The recognition of BOROLINE as a well-known trademark provides G.D. Pharmaceuticals with broader protection against infringement, even in cases where the infringing mark is not identical but deceptively similar.
This judgment also serves as a reminder to businesses to exercise caution when selecting and using trademarks. The similarity in names, packaging, or trade dress can lead to legal disputes, especially when dealing with well-established brands. Companies must ensure that their trademarks and trade dresses are distinct and do not infringe on the rights of other trademark owners.
Conclusion
The judgment in CS(COMM) 53/2019 is a significant development in Indian trademark law. It reinforces the legal protections available to well-known trademarks and highlights the rigorous criteria that must be met for a trademark to be declared well-known. For G.D. Pharmaceuticals, the judgment not only secures the exclusive rights to the BOROLINE trademark but also affirms its status as a household name in India. As businesses navigate the complexities of trademark law, this case serves as an important precedent in safeguarding brand identity and consumer trust.
For expert advice on handling trademark infringement, reach out to LexIndia IP Solutions. We’re here to help you safeguard your brand.
