Trademark Battles over a Legacy Name
Facts: This case concerned a dispute over the use of the trademark “BIRLA”. The plaintiffs, Grasim Industries Limited and UltraTech Cement Limited—well-known entities within the Aditya Birla Group—filed a suit alleging trademark infringement and passing off against Saboo Tor Private Limited and others. The plaintiffs asserted that the “BIRLA” mark, and its derivatives such as “BIRLA WHITE”, had acquired immense fame and goodwill due to decades of use across different business sectors including cement, fiber, and construction materials. They claimed to be the rightful proprietors of over 112 trademark registrations incorporating the name “BIRLA”.
The plaintiffs discovered that the defendants had been using marks such as “BIRLA TMT” and “BIRLA E-BIKE”, registered domains like www.birlatmtsteel.com and www.birlaebike.com, and incorporated companies such as “Birla Medicare Private Limited” and “Birla Biotech Private Limited.” They contended that such activities amounted to infringement of their registered and well-known marks and also misrepresented the defendants’ goods as those affiliated with the reputed Aditya Birla Group.
The defendants denied all allegations, arguing that they had valid registrations for “BIRLA” in specific classes since 2008 and had been using the trade name independently since 2004. They claimed their products, particularly TMT bars and steel products, were distinct from the plaintiffs’ goods and that the plaintiffs had delayed filing action despite public promotional activities carried out widely through national media.
Procedural Details: The plaintiffs filed an interim application seeking an injunction to restrain the defendants from using the “BIRLA” mark. The matter was reserved on 14 August 2025 and judgment was pronounced on 16 October 2025 via video conference. Dr. Veerendra Tulzapurkar represented the plaintiffs, while Senior Advocate Mr. Ravi Kadam appeared for the defendants. The Court heard detailed arguments, referred to extensive documentation, and examined various authorities on the Trade Marks Act, 1999, to determine whether interim injunction was warranted.
Dispute: The central issue revolved around whether the defendants, as registered proprietors of the mark “BIRLA” under Class 6 (iron and steel), could be restrained from using the mark at the interim stage when the plaintiffs also claimed ownership of several “BIRLA”-based marks. Another crucial question was whether the plaintiffs had adequately demonstrated prior use, subsisting goodwill, or association with the “Birla” family to claim exclusivity over the word.
The plaintiffs alleged the defendants' registration was fraudulent, secured on the basis of false invoices, and violated Sections 11 and 29 of the Trade Marks Act. The defendants emphasized their independent business identity, claimed honesty in concurrent use, and invoked statutory protection under Sections 28(3) and 30(2)(e) of the Act, which shield registered proprietors of similar marks from infringement claims by other registered proprietors.
Reasoning and Legal Analysis: The court observed that the plaintiffs’ case largely rested on their asserted exclusive association with the “Birla” family and the Aditya Birla Group. The Court observed that mere references to the family legacy or group reputation, without documentary proof demonstrating how trade mark rights devolved upon the plaintiffs, could not establish an exclusive legal claim. No internal agreements, corporate resolutions, or assignment records linking Grasim and UltraTech to the “Birla” family trademarks were produced.
The Court noted that while Grasim Industries claimed to be the successor to Indian Rayon’s “Birla White” mark via a demerger, no documentary evidence or scheme of arrangement was filed to substantiate this succession. The earliest verifiable commercial use of “Birla White” by the plaintiffs dated 2007–2008, not 1988 as claimed, whereas the defendants showed use of “Birla TMT” since 2008 supported by inspection certificates issued by government agencies—documents the Court found credible.
Under Sections 28(3) and 30(2)(e) of the Trade Marks Act, two or more proprietors may concurrently hold registrations for identical or similar marks. Since both parties held valid registrations, the Court found that one registered proprietor cannot allege infringement against another until registration validity is disproved. Here, the plaintiffs failed to show ex facie illegality or fraud justifying intervention under Lupin Ltd. v. Johnson & Johnson (2014 SCC OnLine Bom 4596), which allows courts to pierce registration validity only where it “shocks the conscience”. The plaintiffs’ allegations of fabricated invoices were unsubstantiated, and the supposed fraudulent registration could not be presumed at the interlocutory stage.
The Court emphasized that classification of goods is only an administrative guideline under the Act, but similarity across classes must still yield likelihood of confusion to attract Section 11(1). The plaintiffs produced no evidence of confusion or public misassociation between “Birla TMT” and their products. It further clarified that “Birla” was a common surname, not uniquely identifying the plaintiffs’ goods like coined words such as “Kodak”.
Regarding passing off, the Court referred to Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. and Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra (2025 SCC OnLine SC 1701), observing that to succeed, plaintiffs must prove goodwill, misrepresentation, and likelihood of damage. Given both parties used the mark for two decades independently and targeted distinct consumer segments—cement manufacturers vs. TMT iron suppliers—the Court found no risk of confusion among reasonably well-informed builders or bulk purchasers. It further observed that the plaintiffs delayed action for over 14 years, weakening their equitable claim for urgent relief.
On dishonest adoption, the Court observed no material suggesting the defendants intended to deceive or ride on the plaintiffs’ goodwill; their open advertisement campaigns since 2016 on national media, under registration protection, indicated commercial transparency.
The Court held that while exclusivity on “Birla” could morally belong to the Birla family entities, legally, absent proof of inherited trade mark rights, the plaintiffs’ claim was weak. Rights under the statute accrued to whoever held valid registration; hence, no injunction could be justified when both sides were registered holders.
Judgment and Decision: The court dismissed the interim application for injunction. However, to maintain balance and accountability pending final adjudication, the Court directed the defendants to maintain true and accurate accounts of all sales under “Birla” marks until final disposal of the suit. Thus, it was held: The plaintiffs failed to demonstrate prima facie case, irreparable injury, or balance of convenience necessary for interim injunction. Both sides were registered proprietors; hence, statutory protection under the Trade Marks Act shielded the defendants from infringement claims at this stage. Allegations of fraud or bad faith adoption lacked evidentiary support. The defendants had lawfully used their registered marks since 2008, and an injunction would inflict disproportionate hardship. The interim application was dismissed.
Case Title: Grasim Industries Limited and Anr. Versus Saboo Tor Private Limited and Ors.
Date of Judgment: 16 October 2025
Case Number: Commercial IP Suit No. 422 of 2022
Neutral Citation:2025:BHC-OS:19474
Court: High Court of Judicature at Bombay
Hon’ble Judge: Justice Sharmila U. Deshmukh
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor (Patent and Trademark Attorney), High Court of Delhi
