BOROLINE’s 90-Year Legacy Seals Its Status as a Well Know Trademark
Facts
The plaintiff company, established in 1929, has been a prominent manufacturer and distributor of medicinal and cosmetic preparations, specializing in Over the Counter (OTC) pharmaceutical products and healthcare cosmetics. The company coined the term ‘BOROLINE’ in 1929 for its antiseptic medicinal ointments and creams, registering it as both a word mark and a label mark in Class 5. For nine decades, BOROLINE products have been sold in a distinctive dark green and white packaging. The trademark is presented in a stylized, white-coloured font in block capital letters across the middle of the packaging, with the registered mark on the right-hand corner.
In December 2018, the plaintiff discovered a similar product being sold under the name ‘BOROBEAUTY’. The defendant had allegedly imitated BOROLINE’s iconic trade dress, including the distinct dark green tube with an octagonal black cap. This led to the filing of the present suit. During the suit’s pendency, the defendant made offers to change its trade dress and name, even agreeing to avoid using the prefix ‘BORO’.
Issues:
- Whether the defendant’s use of ‘BOROBEAUTY’ infringes on the plaintiff’s registered
trademark ‘BOROLINE’ and can permanent injunction be granted against the defendant. - Whether BOROLINE qualifies as a well-known trademark under the Trade Marks Act,
1999
Submissions:
The plaintiff argued that ‘BOROLINE’ has been in continuous, extensive, and bona fide use since 1930. They emphasized its acquired distinctiveness and popularity, citing several accolades:
- Selected as an Indian “Consumer Super Brand” six times between 2003 and 2017
- Designated as a “Master Brand” in 2014
- Listed among the “Most Desirable 30 Power Brands” in 2018
The plaintiff contended that their products are recognized for superior quality and are popular among doctors, chemists, patients, and three generations of loyal consumers since 1929.
Held:
The court considered the case of TATA Sons Ltd. v. Manoj Dodia (2011), which outlines factors for determining a well-known trademark. These include public recognition, usage duration, product range, advertising extent, geographical reach, registration status, business volume, third-party usage, successful enforcement, and consumer base. These factors collectively assess a mark’s widespread recognition and distinctiveness. The court also noted Section 11(6) of The Trade Mark Act, 1999, which provides factors for determining a well-known trademark.
- The court declared ‘BOROLINE’ as a well-known trademark under Section 2(1)(zg) and Section 11(2) of the Trade Marks Act, 1999.
- The Registrar of Trademarks was directed to add ‘BOROLINE’ to the list of well-known trademarks upon completion of requisite formalities.
- A permanent injunction was issued in favor of the plaintiff, restraining the defendant from using ‘BOROBEAUTY’ or any similar mark/name.
- The defendant was directed to change its trade dress and trademark to be entirely distinct from the plaintiff’s well-known trademark and trade dress.
- The defendant was prohibited from using the dark green color trade dress and the prefix ‘BORO’ in its new trade name.
- The defendant was ordered to pay costs of ₹2,00,000 to the plaintiff.
Analysis:
This case highlights the importance of long-standing brand recognition and consistent use in trademark law. The court’s decision to declare ‘BOROLINE’ as a well-known trademark is significant for several reasons:
- Historical Significance: The brand’s 90-year history, predating India’s independence, played a crucial role in establishing its well-known status. This underscores the value of longevity in brand protection.
- Consumer Recognition: The court acknowledged BOROLINE’s status as a household name, emphasizing the importance of public perception in trademark cases.
- Comprehensive Evaluation: The court’s consideration of multiple factors, including awards, geographical reach, and consumer loyalty across generations, demonstrates a thorough approach to determining well-known status.
- Protection Beyond Registration: By declaring BOROLINE a well-known trademark, the court extended protection beyond mere registration, safeguarding it against use in unrelated product categories.
- Trade Dress Protection: The injunction against using similar packaging highlights the importance of distinctive trade dress in brand identity.
- Prefix Protection: The prohibition on using ‘BORO’ in the defendant’s new name shows how well-known trademarks can protect even parts of their marks.
- Balancing Interests: While protecting the plaintiff’s rights, the court allowed the defendant to rebrand, demonstrating a balance between trademark protection and fair competition.
- Deterrent Effect: The cost imposed on the defendant serves as a deterrent against future infringement attempts.
- This ruling reinforces the legal protection afforded to long-standing, widely recognized brands in India. It sets a precedent for how historical usage, consumer recognition, and brand reputation can elevate a trademark to well-known status, offering broader protection against infringement across various product categories.
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BOROLINE’s 90-Year Legacy Seals Its Status as a Well Know Trademark
Facts
The plaintiff company, established in 1929, has been a prominent manufacturer and distributor of medicinal and cosmetic preparations, specializing in Over the Counter (OTC) pharmaceutical products and healthcare cosmetics. The company coined the term ‘BOROLINE’ in 1929 for its antiseptic medicinal ointments and creams, registering it as both a word mark and a label mark in Class 5. For nine decades, BOROLINE products have been sold in a distinctive dark green and white packaging. The trademark is presented in a stylized, white-coloured font in block capital letters across the middle of the packaging, with the registered mark on the right-hand corner.
In December 2018, the plaintiff discovered a similar product being sold under the name ‘BOROBEAUTY’. The defendant had allegedly imitated BOROLINE’s iconic trade dress, including the distinct dark green tube with an octagonal black cap. This led to the filing of the present suit. During the suit’s pendency, the defendant made offers to change its trade dress and name, even agreeing to avoid using the prefix ‘BORO’.
Issues:
- Whether the defendant’s use of ‘BOROBEAUTY’ infringes on the plaintiff’s registered
trademark ‘BOROLINE’ and can permanent injunction be granted against the defendant. - Whether BOROLINE qualifies as a well-known trademark under the Trade Marks Act,
1999
Submissions:
The plaintiff argued that ‘BOROLINE’ has been in continuous, extensive, and bona fide use since 1930. They emphasized its acquired distinctiveness and popularity, citing several accolades:
- Selected as an Indian “Consumer Super Brand” six times between 2003 and 2017
- Designated as a “Master Brand” in 2014
- Listed among the “Most Desirable 30 Power Brands” in 2018
The plaintiff contended that their products are recognized for superior quality and are popular among doctors, chemists, patients, and three generations of loyal consumers since 1929.
Held:
The court considered the case of TATA Sons Ltd. v. Manoj Dodia (2011), which outlines factors for determining a well-known trademark. These include public recognition, usage duration, product range, advertising extent, geographical reach, registration status, business volume, third-party usage, successful enforcement, and consumer base. These factors collectively assess a mark’s widespread recognition and distinctiveness. The court also noted Section 11(6) of The Trade Mark Act, 1999, which provides factors for determining a well-known trademark.
- The court declared ‘BOROLINE’ as a well-known trademark under Section 2(1)(zg) and Section 11(2) of the Trade Marks Act, 1999.
- The Registrar of Trademarks was directed to add ‘BOROLINE’ to the list of well-known trademarks upon completion of requisite formalities.
- A permanent injunction was issued in favor of the plaintiff, restraining the defendant from using ‘BOROBEAUTY’ or any similar mark/name.
- The defendant was directed to change its trade dress and trademark to be entirely distinct from the plaintiff’s well-known trademark and trade dress.
- The defendant was prohibited from using the dark green color trade dress and the prefix ‘BORO’ in its new trade name.
- The defendant was ordered to pay costs of ₹2,00,000 to the plaintiff.
Analysis:
This case highlights the importance of long-standing brand recognition and consistent use in trademark law. The court’s decision to declare ‘BOROLINE’ as a well-known trademark is significant for several reasons:
- Historical Significance: The brand’s 90-year history, predating India’s independence, played a crucial role in establishing its well-known status. This underscores the value of longevity in brand protection.
- Consumer Recognition: The court acknowledged BOROLINE’s status as a household name, emphasizing the importance of public perception in trademark cases.
- Comprehensive Evaluation: The court’s consideration of multiple factors, including awards, geographical reach, and consumer loyalty across generations, demonstrates a thorough approach to determining well-known status.
- Protection Beyond Registration: By declaring BOROLINE a well-known trademark, the court extended protection beyond mere registration, safeguarding it against use in unrelated product categories.
- Trade Dress Protection: The injunction against using similar packaging highlights the importance of distinctive trade dress in brand identity.
- Prefix Protection: The prohibition on using ‘BORO’ in the defendant’s new name shows how well-known trademarks can protect even parts of their marks.
- Balancing Interests: While protecting the plaintiff’s rights, the court allowed the defendant to rebrand, demonstrating a balance between trademark protection and fair competition.
- Deterrent Effect: The cost imposed on the defendant serves as a deterrent against future infringement attempts.
- This ruling reinforces the legal protection afforded to long-standing, widely recognized brands in India. It sets a precedent for how historical usage, consumer recognition, and brand reputation can elevate a trademark to well-known status, offering broader protection against infringement across various product categories.
Amul Strikes Back: Court Defends Iconic Trademark Against ‘Amuleti’ Infringement
Changing Trends in Trademark Enforcement Rights
Copyright Infringement – Section 63, A Cognizable and Non-Bailable Offence
Draft geographical Indications of Goods(Registration and Protection) (Amendment) Rules, 2023
BOROLINE’s 90-Year Legacy Seals Its Status as a Well Know Trademark
Facts
The plaintiff company, established in 1929, has been a prominent manufacturer and distributor of medicinal and cosmetic preparations, specializing in Over the Counter (OTC) pharmaceutical products and healthcare cosmetics. The company coined the term ‘BOROLINE’ in 1929 for its antiseptic medicinal ointments and creams, registering it as both a word mark and a label mark in Class 5. For nine decades, BOROLINE products have been sold in a distinctive dark green and white packaging. The trademark is presented in a stylized, white-coloured font in block capital letters across the middle of the packaging, with the registered mark on the right-hand corner.
In December 2018, the plaintiff discovered a similar product being sold under the name ‘BOROBEAUTY’. The defendant had allegedly imitated BOROLINE’s iconic trade dress, including the distinct dark green tube with an octagonal black cap. This led to the filing of the present suit. During the suit’s pendency, the defendant made offers to change its trade dress and name, even agreeing to avoid using the prefix ‘BORO’.
Issues:
- Whether the defendant’s use of ‘BOROBEAUTY’ infringes on the plaintiff’s registered
trademark ‘BOROLINE’ and can permanent injunction be granted against the defendant. - Whether BOROLINE qualifies as a well-known trademark under the Trade Marks Act,
1999
Submissions:
The plaintiff argued that ‘BOROLINE’ has been in continuous, extensive, and bona fide use since 1930. They emphasized its acquired distinctiveness and popularity, citing several accolades:
- Selected as an Indian “Consumer Super Brand” six times between 2003 and 2017
- Designated as a “Master Brand” in 2014
- Listed among the “Most Desirable 30 Power Brands” in 2018
The plaintiff contended that their products are recognized for superior quality and are popular among doctors, chemists, patients, and three generations of loyal consumers since 1929.
Held:
The court considered the case of TATA Sons Ltd. v. Manoj Dodia (2011), which outlines factors for determining a well-known trademark. These include public recognition, usage duration, product range, advertising extent, geographical reach, registration status, business volume, third-party usage, successful enforcement, and consumer base. These factors collectively assess a mark’s widespread recognition and distinctiveness. The court also noted Section 11(6) of The Trade Mark Act, 1999, which provides factors for determining a well-known trademark.
- The court declared ‘BOROLINE’ as a well-known trademark under Section 2(1)(zg) and Section 11(2) of the Trade Marks Act, 1999.
- The Registrar of Trademarks was directed to add ‘BOROLINE’ to the list of well-known trademarks upon completion of requisite formalities.
- A permanent injunction was issued in favor of the plaintiff, restraining the defendant from using ‘BOROBEAUTY’ or any similar mark/name.
- The defendant was directed to change its trade dress and trademark to be entirely distinct from the plaintiff’s well-known trademark and trade dress.
- The defendant was prohibited from using the dark green color trade dress and the prefix ‘BORO’ in its new trade name.
- The defendant was ordered to pay costs of ₹2,00,000 to the plaintiff.
Analysis:
This case highlights the importance of long-standing brand recognition and consistent use in trademark law. The court’s decision to declare ‘BOROLINE’ as a well-known trademark is significant for several reasons:
- Historical Significance: The brand’s 90-year history, predating India’s independence, played a crucial role in establishing its well-known status. This underscores the value of longevity in brand protection.
- Consumer Recognition: The court acknowledged BOROLINE’s status as a household name, emphasizing the importance of public perception in trademark cases.
- Comprehensive Evaluation: The court’s consideration of multiple factors, including awards, geographical reach, and consumer loyalty across generations, demonstrates a thorough approach to determining well-known status.
- Protection Beyond Registration: By declaring BOROLINE a well-known trademark, the court extended protection beyond mere registration, safeguarding it against use in unrelated product categories.
- Trade Dress Protection: The injunction against using similar packaging highlights the importance of distinctive trade dress in brand identity.
- Prefix Protection: The prohibition on using ‘BORO’ in the defendant’s new name shows how well-known trademarks can protect even parts of their marks.
- Balancing Interests: While protecting the plaintiff’s rights, the court allowed the defendant to rebrand, demonstrating a balance between trademark protection and fair competition.
- Deterrent Effect: The cost imposed on the defendant serves as a deterrent against future infringement attempts.
- This ruling reinforces the legal protection afforded to long-standing, widely recognized brands in India. It sets a precedent for how historical usage, consumer recognition, and brand reputation can elevate a trademark to well-known status, offering broader protection against infringement across various product categories.
Amul Strikes Back: Court Defends Iconic Trademark Against ‘Amuleti’ Infringement
Changing Trends in Trademark Enforcement Rights
Copyright Infringement – Section 63, A Cognizable and Non-Bailable Offence
Draft geographical Indications of Goods(Registration and Protection) (Amendment) Rules, 2023
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