Case Title: Grasim Industries Limited and Anr. Vs Saboo Tor Private Limited & Ors.
Case No.: Interim Application No. 3888 of 2022 in Commercial IP Suit No. 422 of 2022
Neutral Citation: 2025:BHC-OS:19474
Court: High Court of Judicature at Bombay (Ordinary Original Civil Jurisdiction, Commercial Division)
Coram: Hon’ble Justice Sharmila U. Deshmukh
Order Reserved On: August 14, 2025
Order Pronounced On: October 16, 2025
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FACTS
This case arises from a dispute concerning the alleged unauthorized use of the famous and well-known trademark “BIRLA” by the defendants, particularly Saboo Tor Private Limited and associated entities. The plaintiffs, Grasim Industries Limited and Ultratech Cement Limited, are part of the well-known Aditya Birla Group, which traces its origin to the 19th century and is one of India’s largest industrial conglomerates. The plaintiffs claimed that through years of consistent use, reputation, and recognition, the mark “BIRLA” has come to be uniquely identified with the Birla family companies.
Grasim Industries Limited is the flagship company of the Aditya Birla Group, incorporated in 1947 and initially engaged in the textile business before diversifying into various industries. It holds numerous registrations of the “BIRLA” family of marks, including “BIRLA WHITE” (for cement and related goods) and several other composite marks containing the word “BIRLA” registered in multiple classes under the Trade Marks Act, 1999.
The dispute began when the plaintiffs received a legal notice in November 2021 from some of the defendants alleging fraud and misrepresentation. On investigating, the plaintiffs discovered that Defendant No.1, Saboo Tor Pvt. Ltd., had incorporated companies such as “Birla Medicare Pvt. Ltd.” and “Birla Biotech Pvt. Ltd.” and was using websites like www.birlatmtsteel.com and www.birlaebike.com, which were deceptively similar to the plaintiff’s established brand identity.
The plaintiffs alleged that the defendants’ conduct amounted to trademark infringement and passing off, claiming that the defendants’ registration of “BIRLA TMT” and “BIRLA E-BIKE” was fraudulent and designed to ride upon the goodwill of the plaintiffs’ well-known mark “BIRLA”.
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PROCEDURAL DETAILS
The plaintiffs filed this commercial IP suit seeking an injunction against the defendants for infringement and passing off under Sections 29, 30, and 135 of the Trade Marks Act, 1999, and prayed for cancellation of the defendants’ registered trademarks under Sections 47 and 57.
The defendants filed detailed replies contesting the plaintiffs’ claims. They argued that they were the registered proprietors of the marks “BIRLA” and “BIRLA TMT” under Classes 6, 10, 11, and 18 and that their registration precluded any infringement action under Sections 28(3) and 30(2)(e) of the Act. They claimed to have used the marks since 2004 and produced business records, advertisements, and government inspection certificates to demonstrate genuine commercial use.
The defendants further argued that the plaintiffs had delayed bringing the action, despite being aware of the defendants’ extensive advertising and presence across multiple states. They also cited that numerous unrelated businesses and companies used the word “BIRLA”, demonstrating that it was a common name and not exclusively associated with the plaintiffs.
The matter was argued extensively before Hon’ble Justice Sharmila U. Deshmukh, who reserved judgment in August 2025 and pronounced the decision on October 16, 2025.
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DISPUTE
The key dispute revolved around whether the plaintiffs, as part of the Aditya Birla Group, could claim exclusive proprietary rights over the mark “BIRLA” and whether the defendants’ use of “BIRLA TMT” and “BIRLA E-BIKE” constituted infringement or passing off.
The Court was also called upon to decide:
1. Whether the plaintiffs had sufficiently proved their exclusive association with the “Birla” name.
2. Whether the defendants’ registration of “BIRLA TMT” was obtained fraudulently or through dishonest adoption.
3. Whether, under Sections 28(3) and 30(2)(e), a registered proprietor could be restrained from using its own registered trademark.
4. Whether the plaintiffs had made out a prima facie case for interim injunction based on infringement and passing off.
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DETAILED REASONING AND ANALYSIS
Justice Deshmukh began by examining the plaintiffs’ central claim of exclusive rights over the “BIRLA” name. The Court observed that although the plaintiffs relied heavily on their association with the Aditya Birla Group, they failed to provide documentary evidence of an internal arrangement that conferred upon them the exclusive right to use the “BIRLA” mark. No agreement, deed, or family resolution was placed on record to establish that only Aditya Birla Group companies could use “BIRLA”.
The Court noted that the plaintiffs’ narrative linking the mark’s origin to Shiv Narayan Birla in the 19th century and tracing it to Grasim Industries was not supported by concrete evidence. There was also no document demonstrating that Grasim Industries or Ultratech Cement had directly inherited trademark rights from earlier Birla entities.
The Court further held that while the plaintiffs presented over 112 registrations containing the word “BIRLA”, none were for the word “BIRLA” standing alone. The earliest proven use of their marks like “BIRLA WHITE” and “BIRLA COASTAL” dated only to the early 2000s, despite claims of use since 1947. Moreover, the plaintiffs failed to produce invoices or sales documents proving commercial use of “BIRLA” marks before 2007–08.
In contrast, the defendants’ evidence—such as purchase orders, inspection certificates from government departments (2008–09), and ISO certifications—demonstrated commercial use of “BIRLA TMT” in relation to steel bars. Though the plaintiffs questioned the authenticity of certain invoices, the Court found sufficient independent material supporting the defendants’ claims of use since at least 2008.
Justice Deshmukh also considered whether both parties could concurrently hold registrations. Referring to Sections 12, 28(3), and 30(2)(e) of the Trade Marks Act, she noted that the Act allows for honest concurrent registration and recognizes that more than one party may hold rights in similar or identical marks for different goods. Section 28(3) specifically denies any registered proprietor the right to sue another registered proprietor for infringement.
The Court relied on the Full Bench judgment in Lupin Ltd. v. Johnson & Johnson (2014 SCC OnLine Bom 4596), which held that while courts could assess the validity of registration at the interim stage, this could only be done in cases of manifest fraud or illegality. In the present case, no such egregious fraud was shown in the defendants’ registration to justify bypassing this protection.
The Court rejected the plaintiffs’ contention that the defendants’ registration violated Section 11 of the Act (relative grounds for refusal) or that the registration was fraudulent under Sections 47 and 57, noting that allegations of forged invoices were linked to a pending trademark application, not to existing registrations.
On the question of passing off, the Court observed that the plaintiffs failed to demonstrate sufficient goodwill or reputation as of 2004, when the defendants claimed adoption of the mark. Passing off required proof of misrepresentation, reputation, and damage—all of which were inadequately established.
Justice Deshmukh also addressed the defendants’ plea of delay and acquiescence, finding that although the plaintiffs claimed to have learned of the defendants’ activities only in 2021, the defendants had been publicly advertising across major media channels for years. Therefore, the plaintiffs’ claim of ignorance was implausible.
Finally, the Court remarked that trademark rights cannot be claimed in perpetuity merely due to association with a famous family name unless supported by statutory and factual proof of use and ownership. The word “BIRLA” was held to have become publici juris, used widely by several unrelated companies and entities, thus diluting any claim to exclusivity.
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DECISION
The Bombay High Court dismissed the plaintiffs’ interim application for injunction. Justice Deshmukh held that both parties were registered proprietors of their respective marks containing the word “BIRLA,” and hence, under Sections 28(3) and 30(2)(e), an action for infringement could not be sustained against a co-registered proprietor.
The Court also found that the plaintiffs had not established a prima facie case for passing off or shown sufficient irreparable harm to justify restraining the defendants from using their registered marks. Moreover, the plaintiffs’ inability to substantiate their exclusive link with the “Birla” name weakened their case for special protection as a “well-known” mark.
The judgment thus reaffirmed that statutory rights under the Trade Marks Act, 1999 protect all registered proprietors equally and that claims of fame or family association cannot override the statutory scheme without concrete evidence.
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SUGGESTED TITLES FOR PUBLICATION
1. “The Battle of the Birlas: Bombay High Court Clarifies Coexistence of Registered Marks”
2. “Trademark Monopoly and Family Legacy: Lessons from Grasim v. Saboo Tor”
3. “When Fame Isn’t Enough: The Legal Boundaries of Well-Known Marks”
4. “BIRLA Trademark Dispute: Bombay High Court on Honest Concurrent Use”
5. “Coexistence over Exclusivity: A Case Study on Trademark Rights under Sections 28 and 30”
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Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
