Bombay High Court
Bristol Bakery vs Grupo Bimbo S A B De C V on 6 July, 2026
Digitally signed
by SHAGUFTA
SHAGUFTA QUTBUDDIN
PATHAN
QUTBUDDIN 2-IA-L-13958-2023 & IA-5609-2025.doc
Date:
PATHAN 2026.07.06
16:03:51
+0530
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO. 13958 OF 2023
IN
COMMERCIAL IP SUIT NO. 117 OF 2025
Bristol Bakery ]
A Partnership Firm registered under the Partnership ]
Act, 1932 ]
Having its registered office/principal place of ]
business at Pitamber Lane, Tulsi Pipe Road, Mahim ]
West - 400016 ] ...Applicant
Represented through its Partner Aspi Jamshed Irani
In the matter between :
Bristol Bakery ]
A Partnership Firm registered under the Partnership ]
Act, 1932 ]
]
Having its registered office/principal place of
]
business at Pitamber Lane, Tulsi Pipe Road, Mahim ]
West - 400016 ] ...Plaintiff
Represented through its Partner Aspi Jamshed Irani
Versus
1. Grupo Bimbo S.A.B. DE C.V. ]
A company duly organized and existing under the ]
laws of Mexico having its registered office at ]
]
Prolongacion Pasco De La Reforma No.1000 Col.
]
Pena Blanca Santa Fe, Mexico D. F., 01201, Mexico ]
Also at AIPL Business Club, Sector 62, ]
Gurugram, Haryana 122102 ]
2. Modern Food Enterprises Private Limited ]
Having its address at AIPL Business Club, 8 Floor, ]
th
Wing No. -3, Sector 62, Gurugram - 122102, ]
]
Haryana
]
Email ID : [email protected]
3. Ready Roti India Pvt. Ltd. ]
]
SQ PATHAN 1/74
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Having its address at RZ-167/1, A-Block, Road No. ]
4, Mahipalpur Extension Delhi - 110037 ]
Also at F-28, RIICO Industrial Area, Sare Khurd, ]
]
Tehsil Tijara, District Alwar, Rajasthan - 301707
] ...Defendants
Email id : [email protected]
WITH
INTERIM APPLICATION NO. 5609 OF 2025
IN
COMMERCIAL IP SUIT NO. 189 OF 2025
Grupo Bimbo S.A.B. DE C.V. ]
A company duly organized and existing under the ]
laws of Mexico having its registered office at ]
]
Prolongacion Pasco De La Reforma No.1000 Col.
]
Pena Blanca Santa Fe, Mexico D. F., 01201, Mexico ]
Also at AIPL Business Club, Sector 62, ]
Gurugram, Haryana 122102 ] ...Applicant
In the matter between :
Grupo Bimbo S.A.B. DE C.V. ]
A company duly organized and existing under the ]
laws of Mexico having its registered office at ]
]
Prolongacion Pasco De La Reforma No.1000 Col.
]
Pena Blanca Santa Fe, Mexico D. F., 01201, Mexico ]
Also at AIPL Business Club, Sector 62, ]
Gurugram, Haryana 122102 ] ...Plaintiff
Versus
1. Bristol Bakery ]
A partnership firm registered under the Indian ]
Partnership Act, 1932, having its registered ]
office/principal place of business at Pitamber ]
Lane, Tulsi Pipe Road, Mahim West, Mumbai - ]
400016, through its Partner Aspi Jamshed Irani ]
and Cyrus Jamshed Irani ]
2. Arani Foods (India) Pvt. Ltd. ]
A company under the Companies Act, 2013, ]
having its registered office at Shop No. 3/b, Hiren ]
]
Light Industrial Premises Co-op. Society Limited,
SQ Pathan 2/74
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Mogul Lane, Mahim West and having its corporate ]
affairs at Pitamber Lane, Mahim, Mumbai 400 ]
016. ] ...Defendants
----------
Mr. Ravi Kadam, Senior Advocate, a/w Mr. Hiren Kamod, Mr. Vaibhav
Keni, Ms. Neha Iyer, Mr. Mohd Affan and Mr. Vishwajeet Jadhav i/by
Legasis Partners for the Applicants/Plaintiffs in IA(L)/13958/2025 and
for the Defendant in IA/5609/2025
Mr. Chander Lall, Senior Advocate a/w. Mr. Ashish Kamat, Senior
Advocate, Ms. Shikha Sachdeva, Mr. Rahul Punjabi, Mr. Kranav Kapur, Ms.
Annie Jacob, Mr. Jaskaran Bindra and Mr. Ishan Shroff i/by Mr. Rahul
Punjabi for the Respondent/Defendant in IA(L)/13958/2025 and for the
Applicants/Plaintiffs in IA/5609/2025
----------
CORAM : SHARMILA U. DESHMUKH, J.
RESERVED ON : 24th APRIL, 2026
PRONOUNCED ON : 6th JULY, 2026
ORDER:
1. These cross-suits are filed claiming infringement of identical
trade mark “Bimbo” adopted by the Plaintiff and the Defendant, and
for passing off. Common submissions were canvassed, and both
Interim Applications are being disposed of by this common order. For
the sake of clarity, the parties are referred to as `Bristol Bakery’ and
`Grupo Bimbo.’
PLEADINGS IN COMMERCIAL IP SUIT NO 117 OF 2025:
2. Commercial IP Suit No. 117 of 2025 was filed on 17th May, 2023
by Bristol Bakery – a partnership firm of Aspi Jamshed Irani and Cyrus
Jamshed Irani, claiming to be engaged inter alia in the business of
SQ Pathan 3/74
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running a bakery, manufacturing bread and other bakery products,
marketed by the Plaintiff including its group entities, i.e. Jimmy Boy,
Sunshine Fine Foods, and Arani Foods, since at least the year 1979
under the trade mark “Bimbo”, which has been adopted and derived
from the expression “BEST IN MAHARASHTRA BEFORE OTHERS” by
appropriating the first letters of the quoted words.
3. The plaint pleads that Jamshed Ardeshir Irani, along with the
present partners of Bristol Bakery i.e. Aspi and Cyrus, had entered into
a partnership deed on 30th March 1964, which was supplemented by
Deed of Partnership dated 1st April 1971, followed by Deeds dated
10th April 1974 and 5th April 1979. Jamshed Irani expired on 26th
December 1994, and upon his demise, the present partners decided to
continue the same business under the terms and conditions set out in
the partnership deed dated 23rd March 1995 with effect from 26th
December 1994.
4. Bristol Bakery claims proprietary rights in the “Bimbo” label
mark containing “Bimbo” as its leading essential feature by virtue of
registration secured on 6th March 1979 in Class 30. The registration is
subject to a disclaimer that no right shall be claimed to the exclusive
use of the word “Super”. In 1999, Bristol Bakery adopted and started
using another unique label while retaining the leading feature
“Bimbo”. On 31st July 2007, with the permission of Bristol Bakery,
SQ Pathan 4/74
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Aspi Irani filed an application for registration of the second label in
Class 30, which was opposed by Grupo Bimbo, and the proceedings
are pending. Pursuant to Deed of Assignment dated 13th April 2023
entered into between Aspi Irani and Bristol Bakery, an application has
been filed on 17th April, 2023 with the Trade Marks Registry to bring
the name of the Bristol Bakery on record, which is pending.
5. Paragraph 8 of the plaint sets out Bristol Bakery’s clientele of
the products bearing the trade mark “Bimbo”. The copies of the sales
invoices/letters in respect of the products are appended to the plaint.
In paragraph 9, the statement of the annual sales figures in respect of
the goods bearing the trade mark “Bimbo” from the year 1994-1995
till 2021-2022 is set out. The copies of the pamphlets issued in the
year 1992 as promotional material are placed on record along with
copies of the invoices raised by the printers/advertisers.
6. It is submitted that Grupo Bimbo filed notice of opposition on
11th February 2010 against the registration of Bristol Bakery’s second
label mark, based on registrations secured by Grupo Bimbo in Class 30
on 23rd August 1993, in Classes 29 to 33 on 31st January 2007 for the
word mark “Bimbo”, and for the label mark “Bimbo” on 25th May
2007. A counter-statement dated 6th January 2011 was filed by Aspi
Jamshed Irani, and affidavits of evidence have been filed by both
parties. It is stated that the affidavit of evidence of Grupo Bimbo
SQ Pathan 5/74
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makes it clear that its trade mark registrations were not in use as on
the date of filing of notice of opposition and even at the time of filing
of affidavit of evidence. No proceedings were initiated by Bristol
Bakery against Grupo Bimbo’s registrations as there was no use of the
trade mark Bimbo in India by Grupo Bimbo.
7. It is only in March, 2023 that Bristol Bakery learnt about the
proposed launch by Grupo Bimbo in India, and a trade mark registry
search revealed further registrations secured by Grupo Bimbo in India
on a proposed-to-be-used basis and as against the registrations,
rectification applications have been filed. In April 2023, Bristol Bakery
found actual sale of impugned goods in Mumbai and internet search
also revealed advertisements and promotion of the impugned goods,
and hence the Suit came to be filed.
8. The written statement by Grupo Bimbo takes the defence of
delay, acquiescence and estoppel. It traces the incorporation of the
entity in Mexico in the year 1945, the adoption of the unique coined
mark “Bimbo” by its founder in the year 1943 for his bakery/bakery
business and trade and the earliest registration in Mexico in the year
1943. It is stated that Grupo Bimbo has approximately 1,085 trade
mark registrations of Bimbo in over 70 countries and, along with its
group entities, has operations in 34 countries including India. The
historical conception, evolution and use of the trade mark “Bimbo”
SQ Pathan 6/74
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has been consistently represented on Grupo Bimbo’s websites, which
are accessible globally.
9. It is stated that by the year 1970, Grupo Bimbo’s “Bimbo” was a
leading mark and name in America and Latin America. The worldwide
turnover for the year 2022 was to the tune of 22,953 million USD, and
the turnover of its Indian arm for the year 2022 was INR 12,429.1
million. The specimen advertisements, press releases, promotional
expenses, annual reports are annexed to the written statement to
demonstrate goodwill and reputation.
10. Grupo Bimbo’s prominent presence in 12 states in India is
claimed by virtue of joint ventures with Ready Roti, Modern, and Kitty
Bread. The written statement further sets out the sales revenue and
promotional expenses incurred by Modern Food Enterprises Limited
and Ready Roti in India, pre and post-acquisition by Defendant No. 1,
duly certified by a Chartered Accountant. The written statement
further sets out the recognition on the global platform of the trade
mark Bimbo.
11. Grupo Bimbo’s Indian registration was on 23 rd August 1993, and
the list of Indian registrations is annexed to the written statement .
Bristol Bakery’s application in the year 2007 for registration of the
second label mark of “Bimbo” was opposed by Grupo Bimbo.
SQ Pathan 7/74
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12. It is pleaded that Grupo Bimbo’s joint venture with Ready Roti in
2017, its acquisition of Modern Food Enterprises Pvt Ltd. in 2020 and
of Kitty Breads in the year 2021 were widely publicised. In the year
2019, Grupo Bimbo’s trade mark “Bimbo” was affixed on the
packaging of products sold under the trade mark “Harvest Gold”. It is
stated that there were discussions between the parties during
October, 2020 to September, 2022 with respect to the acquisition of
Bristol Bakery’s impugned mark, which negotiations failed, and
thereafter the rectification petitions came to be filed.
13. Bristol Bakery’s registration is assailed as fraudulent as the label
mark registered in the year 1979 is identical to that of Grupo Bimbo’s
label mark, 14 years after incorporation of the Grupo Bimbo and 35
years after adoption of its trade mark. The explanation given by
Bristol Bakery for adoption of the trade mark is assailed as unrealistic
as Bristol Bakery operates in a limited area in Mumbai. The recent use
of the word mark “Bimbo” along with “Bristol Bakery” on its website is
stated to be with the sole intention of riding upon the goodwill, trans-
border reputation and brand value of Grupo Bimbo’s mark and brand
“Bimbo”.
PLEADINGS IN COMMERCIAL IP SUIT NO 189 OF 2025:
14. Commercial IP Suit No. 189 of 2025, filed by Grupo Bimbo in
September, 2023, is essentially a reproduction of the stand adopted in
SQ Pathan 8/74
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the written statement filed in Commercial IP Suit No. 117 of 2025.
There is no written statement filed by Bristol Bakery as of date.
15. In the affidavit in reply to the Interim Application, the case of
Bristol Bakery in Commercial IP Suit No. 117 of 2025 has been
reiterated. In addition, insofar as the passing off action is concerned, it
is contended that the relevant date for passing off is 2023, when
Bristol Bakery learnt from its market sources that Grupo Bimbo’s
products bearing the impugned trade mark/name Grupo
Bimbo/Bimbo were available for purchase. It is stated that even
assuming Grupo Bimbo’s presence in India since the year 2017, Bristol
Bakery has acquired enormous goodwill and reputation in the said
trade mark in India and the annual sales for the years 2016-2017 and
2017-2018 were to the tune of INR 14,53,88,472/- and INR
16,79,47,768/- respectively. The impugned trade mark/name was not
used in respect of any goods or services in India, as the trade mark
applications dated 23rd September 2022, 4th April 2023, 26th
October 2023, and 24th May 2024 were all filed on a proposed-to-be-
used basis.
16. It is stated that there is no challenge to Bristol Bakery’s
registration of the mark “Bimbo” secured on 6th March 1979 and prior
to the year 1979, Grupo Bimbo had not acquired any reputation or
trans-border reputation in India. Grupo Bimbo’s business
SQ Pathan 9/74
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expansion/joint venture with Ready Roti India Private Limited around
mid-2017 or the acquisition of Modern Food Enterprises Pvt. Ltd. in
2020, and acquisition of Kitty Breads by Grupo Bimbo in 2021 were
not within the knowledge of Bristol Bakery.
17. The negotiations between the parties were without prejudice
negotiations and cannot be relied upon by Grupo Bimbo. It is
submitted that the defence of acquiescence or estoppel cannot be
raised, as Bristol Bakery was unaware of Grupo Bimbo’s alleged
international presence since 1943 or the alleged domestic presence
only by reason of registration since 2010 or acquisition since 2017. It
is contended that Grupo Bimbo was well aware that Bristol Bakery
was prior adopter and registered proprietor of the trade mark in India
since 1979, and permitted Bristol Bakery’s business to grow and
thereby acquiesced/consented to the use of the trade mark by Bristol
Bakery.
SUBMISSIONS:
18. Mr. Kadam, learned Senior Advocate for Bristol Bakery, has
reiterated the positive case of Bristol Bakery’s adoption of the mark
Bimbo in India since the year 1979 as set out in the plaint. He has
painstakingly taken this Court through the pleadings in Bristol
Bakery’s plaint, the documents appended to the plaint, the
registration secured by Bristol Bakery, the promotional material and
SQ Pathan 10/74
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invoices, the sales figures etc. He submits that there is sufficient
material on record to show prior open continuous and extensive use
of the trade mark Bimbo by Bristol Bakery since the year 1979.
19. He would submit that as both parties are registered
proprietors, the inquiry is confined only in respect of passing off
action. He submits that Bristol Bakery’s adoption and use of the trade
mark Bimbo in India is 14 years before Grupo Bimbo’s first Indian
registration in 1993 and 40 years before Grupo Bimbo placed any
Bimbo branded product in the Indian market. To substantiate the said
submission, he has taken this Court through the averments in
paragraphs 13 and 14 of the plaint and the affidavit of evidence filed
by Grupo Bimbo in opposition proceedings before the trade mark
registry. He submits that, in the absence of any use of the trade mark
in India, Grupo Bimbo’s registration even of the year 1993 is of no
consequence and is the reason for non-filing of rectification against
the registration secured by Grupo Bimbo and for not instituting the
Suit for infringement of the trade mark.
20. He submits that the registration applications by Grupo Bimbo
were on a proposed-to-be-used basis and in view of Bristol Bakery’s
prior registration, Grupo Bimbo’s trade mark could not have been
registered. He submits that Grupo Bimbo secured registration in the
year 1993 without conducting any search prior to registration of the
SQ Pathan 11/74
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mark. He submits that there is no question of assailing the
registration of Bristol Bakery’s trade mark Bimbo, as it does not fit
within the narrow window left open by the decision in the case of
Lupin Ltd. vs. Johnson & Johnson1. He would submit that the defence
of Section 12 of the Trade Marks Act, 1999 is also not available to
Grupo Bimbo, as there is no concurrent user in India. He submits that,
even after securing registration in 1993, Grupo Bimbo did not enter
the market for over 25 years and only entered the market with Bimbo-
branded products in 2019, i.e., 40 years after Bristol Bakery’s adoption
of the trade mark in India.
21. He submits that there is no trans-border reputation of Grupo
Bimbo’s “Bimbo” mark in India as it is only in 2019 that the mark
“Bimbo’ was affixed by Grupo Bimbo to its product. He submits that
Grupo Bimbo’s 1993 registration is not supported by any sales or
advertisements and there is no material to demonstrate Indian
customers’ awareness of Grupo Bimbo’s mark in 1993 and 2019. He
would further point out Grupo Bimbo’s statement showing the sales
figures for Ready Roti in India for the years 2017 to 2022 and there is
no specific pleading that the sales figures are in respect of the Bimbo
trade mark or for Harvest Gold or Ready Roti sales figures. He would
submit that the Chartered Accountant’s certificate filed by Grupo
1 [2015(1) Mh.L.J. 501)
SQ Pathan 12/74
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Bimbo in the cross suit relates to sales turnover and advertisement
expenses of Modern Food and Kitty Industries as a whole and there is
no standalone sales figure or advertisement expenses in respect of
Bimbo branded products. He submits that the chartered accountant’s
certificate cannot substantiate Grupo Bimbo’s case of goodwill,
reputation, or priority of use.
22. He would take this Court through the published articles about
the joint venture of Grupo Bimbo to contend that publication was in
Mexico City and places outside India reporting acquisition of stake in
Ready Roti and not about launch of Bimbo bread in India. He would
further point out that the annual reports of Grupo Bimbo for the year
1979, do not show any presence in India. He would further point out
the list of magazines at page 3242 and the list of articles from
internet featuring Grupo Bimbo at page 3244 and would submit that it
does not show that these magazines and articles describe the 2017
joint venture, which were published in Mexico City and places outside
India about the acquisitions in Ready Roti. He submits that the
Facebook page annexed at page 3782 is of the year 2020 and the
website extracts produced by Grupo Bimbo do not disclose any date.
He submits that the articles about entry in India are all of Mexico City.
23. He submits that the news articles published in India refer to the
deal between Harvest Gold and Grupo Bimbo and do not constitute
SQ Pathan 13/74
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evidence of use of the mark in India. He would further point out that
the photographs of the product packets produced by Grupo Bimbo
show the use of the mark Bimbo in the year 2019. He would further
point out that, in the reply affidavit, Grupo Bimbo has claimed
recognition by the year 1970 in America and Latin America and in
1980, claims to have been listed on the Mexico National Stock
Exchange, whereas Bristol Bakery had secured its registration in the
year 1979. He submits that there was no percolation of Grupo Bimbo’s
reputation and goodwill in India.
24. He submits that, with full knowledge of Bristol Bakery’s prior
registration and use in India in view of opposition by Grupo Bimbo in
the year 2010, Grupo Bimbo entered India in the year 2017 through
joint venture and sold Bimbo branded products in the year 2019 and is
now estopped from claiming prejudice.
25. He submits that there is no delay or acquiescence as Bristol
Bakery instituted the proceedings immediately upon discovering
Grupo Bimbo’s products in the Indian market in April, 2023. He
submits that as Grupo Bimbo had no business and no products in India
bearing the trade mark till 2019, there is no occasion for Bristol
Bakery to stand by from 1993 to 2019.
26. He submits that, insofar as passing off action is concerned, the
relevant date for actionable goodwill in India is the date of Grupo
SQ Pathan 14/74
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Bimbo’s user in India, i.e. 2017 or 2019. User in India has to be seen
and the actionable goodwill as on the date of his entry in India is
relevant, i.e. in 2017 or 2019 as injunction is only against use in India.
27. He submits that Bristol Bakery is the prior adopter of the mark,
and has produced enough evidence to establish goodwill and
reputation since 1979 and points out that the total sales figures from
the year 1994 to 2021 is approximately INR 213 crores. He submits
that a passing off action lies on the basis of the sales turnover,
irrespective of whether the chartered accountant’s certificate has
been produced on record. In support, he relies upon the following
decisions :
(i) Toyota Jidosha Kabushiki Kaisha vs Prius Auto
Industries Ltd. And Ors.2
(ii) M/s. Kores (India) Limited vs. M/s. Whale
Stationery Products Ltd.3
(iii) Reed Elsevier Properties Inc. and Ors vs. Best
Media Associates (India) Pvt. Ltd.4
(iv) Sumit Vijay and Another vs Major League Baseball
Properties Inc & Anr.5
(vi) Sun Pharmaceutical Industries Limited vs. Emcure
Pharmaceuticals Ltd.72 (2018) 2 SCC 1
3 2008 (3) Mh.L.J. 523
4 2009 SCC OnLine Bom 1742 : (2010) 1 Bom CR 839 : (2010) 1 AIR Bom R 543
5 2026 SCC Online Del 2
6 (2016) 2 SCC 672
7 2012 (49) PTC 243(Bom)SQ Pathan 15/74
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(viii) Laxmikant V. Patel vs. Chetanbhai Shah & Anr.9
(ix) Ramnish Verma & Anr. vs. The Haddad Apparel
Group Ltd. & Ors.10
(x) Consolidated Foods Corporation vs. Brandon &
Company Pvt. Ltd.11
(xi) Lupin Ltd. vs. Johnson & Johnson (supra)
(xiii) Rush & Tompkins Ltd. vs. Greater London Council
& Anr.13
Ltd. & Anr.14
(xv) Pidilite Industries Ltd. vs. Riya Chemy15
(xvi) Dr. Ashok M. Bhat vs. Sandeep Udai Naraian
Gupta & Anr.16
(xvii) Shaw Wallace & Co. Ltd. vs. Castle Douglas
Industries & Mohan Rocky Spring Water Brewery Ltd. 17
28. Mr. Chander Lall, learned Senior Advocate appearing for Grupo
Bimbo would submit that Bristol Bakery has not filed written
statement in Commercial IP Suit No. 189 of 2025 and the suit is liable
to be decreed. He submits that as Bristol Bakery’s registration is
illegal and fraudulent, the relief of infringement of trade mark is also
pressed along with passing off.
8 AIR 2011 (NOC) 399 (Bom)
9 (2002) 3 SCC 65
10 2025 SCC OnLine Bom 3785
11 AIR 1965 Bom 35
12 (2016) 2 SCC 683 : (2016) 2 SCC (Civ) 201 : 2015 SCC OnLine SC 1084
13 (1988) 3 WLR 939
14 2001 SCC OnLine Bom 1176
15 2022 SCC OnLine Bom 5077
16 2025 SCC OnLine 2177
17 IPLR 2007
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29. He has taken this Court through the rival device marks of Bimbo
and would submit that Bristol Bakery has not only adopted Bimbo but
also Super Bread, a brand similar to Super Pan of Grupo Bimbo used
by them since the year 1943, but also a cartoon character.
30. He would submit that Bristol Bakery commenced its business in
the year 1964 and claims to have adopted and used the mark “Bimbo”
from the year 1979, which adoption is dishonest. He submits that the
word “Bimbo” in the English language is a derogatory word and the
explanation given by Bristol Bakery for adoption of the mark is
unacceptable as it is an admitted position that Bristol Bakery sells its
products in a limited area of Mumbai and not in the whole of
Maharashtra. He submits that the explanation does not find place in
the opposition proceedings of the year 2010 and is clearly an
afterthought. He would further point out that in various documents,
Bristol Bakery has described its brand as Bimboo.
31. He submits that Bimbo is a coined word as the word has no
meaning in the Spanish language and has been invented by Grupo
Bimbo from Bingo and Bambi to evoke an innocent child-like
association in the year 1943. Drawing the attention of this Court to
the pleadings and the documents produced on record, he points out
that Bimbo is registered by Grupo Bimbo in several countries with the
SQ Pathan 17/74
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earliest registration in Mexico in the year 1943 and Bristol Bakery’s
registration in India in the year 1979.
32. He submits that Bristol Bakery is not registered proprietor of
the trade mark in the year 1979, as the registration certificate reflects
the name of Jamshed Irani as proprietor, who was trading as Bristol
Bakery along with Aspi Irani and Cyrus Irani and the year 1979 is not
the bar for establishing trans-border reputation. He would further
point out that Bristol Bakery has claimed that Jamshed Irani expired in
the year 1994 and from 26th December 1994 till 23rd March 1995, when
the present partners of the Plaintiff decided to continue the business,
there is a gap. He submits that there is no pleading as mandated by
Section 42 of the Partnership Act, and no assignment of the trade
mark from one partnership firm to the other. He would point out the
definition of proprietor under Section 2(v) of the Trade Marks Act to
contend that it was Jamshed Irani, who was the proprietor.
33. He would submit that, even for the purpose of passing off, there
is no evidence of use by Bristol Bakery in the year 1979. He would
further point out that the sales turnover set out in paragraph 9 of the
plaint is from the years 1994-1995, which is subsequent to Grupo
Bimbo’s registration in the year 1993 and is unsupported by Chartered
Accountant’s certificate or invoice. He would submit that the
communications annexed to the plaint are merely requests and self-
SQ Pathan 18/74
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serving letters and not sales. He would submit that, despite being
called upon, there is no inspection of the original documents provided
to the Plaintiff. He would submit that it is only in the year 1987 that
there is a communication by a third party to Bristol Bakery. He would
further point out that Bristol Bakery claimed to have undertaken
extensive advertisements of its trade mark “Bimbo” in the counter-
statement, and there is not a single document produced on record
before this Court.
34. He would point out that the contents of the communication
dated 4th January 2010 annexed at page 201 of Bristol Bakery’s plaint
show that Aspi Irani is a well-travelled person and that, during his stay
in Australia, he was bestowed with a Small Baker Award, which
indicates awareness of Grupo Bimbo’s global reputation. He would
further point out that the same communication also admits the sale of
the products in and around Mumbai and not in various parts of
Maharashtra. He would further submit that, there is no rectification
filed against Grupo Bimbo’s registrations and there was no objection
on the ground of non-user, which amounts to acquiescence. He would
submit that the application for registration of the second label mark
by Bristol Bakery was filed by Aspi Irani, who is not permissive user,
and Aspi Irani is not the Plaintiff in Bristol Bakery’s Suit. He submits
that it is only in the year 2023, that a Deed of Assignment has been
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executed between Aspi Irani and the Plaintiff to bring the name of the
Plaintiff on record, which application is also pending.
35. He submits that despite Grupo Bimbo claiming goodwill and
reputation in India in the opposition proceedings of the year 2010,
Bristol Bakery being aware of Grupo Bimbo’s registration has chosen
not to take any action. He would submit that there were negotiations
between the parties in the year 2022 and, therefore, there is
suppression by stating Bristol Bakery became aware of Grupo Bimbo
only in the fourth week of March 2023. He would submit that
misrepresentation is evident from the fact that Bristol Bakery, on its
packaging, the photograph of which is annexed at page 88 of the
plaint, mentions “under licence from Bimbo”, whereas there is no
entity such as “Bimbo”, and the same creates an impression that there
is a licence from Grupo Bimbo.
36. He would point out the notice of opposition filed by Grupo
Bimbo, which repeats and reiterates the registration of Grupo Bimbo’s
trade mark and its reputation and goodwill in India. He submits that,
from the year 1993 to 2007, Grupo Bimbo secured about 15
registrations, which were not opposed by Bristol Bakery. He would
further submit that, in its evidence, Grupo Bimbo has furnished an
explanation for the adoption of its mark “Bimbo”. He submits that
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Grupo Bimbo is the registered proprietor of the mark “Bimbo” and is
the prior user of the mark in India.
37. He would further submit that Grupo Bimbo had publicised its
expansion in India in the year 2017 by extensive advertisements and
news articles. He would point out to the various news articles and
extracts from magazines produced on record. He would further
submit that the products of Modern Foods were branded by Grupo
Bimbo’s trade mark and points out to the photographs produced by
Grupo Bimbo.
38. He would further submit that there is no explanation which has
been tendered by Bristol Bakery for adoption of the word “Super
Bread” or the cartoon device, which is identical/deceptively similar to
Grupo Bimbo’s trade mark. He submits, based upon the discovery of
Grupo Bimbo in the year 2023, Bristol Bakery had pressed for ad-
interim reliefs thereby causing irreparable injury to Grupo Bimbo. He
submits that even if Grupo Bimbo succeeds after trial, it cannot be
adequately compensated and, therefore, the balance of convenience
lies in favour of Grupo Bimbo. He submits that the negotiations
between the parties failed, as an exorbitant amount of about Rs. 200
crores was demanded by Bristol Bakery and that the present Suit is a
consequence of Grupo Bimbo’s refusal to accede to the said demand.
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39. He would further submit that it is only upon a party filing an
application under Section 124 of the Trade Marks Act raising a plea of
invalidity of the Plaintiff’s and/or Defendant’s registration that the
Civil Court can apply its mind to the issue. He submits that Grupo
Bimbo has filed an application under Section 124 of the Trade Marks
Act, whereas no such application has been filed by Bristol Bakery and
therefore, the plea of invalidity of the registration can only be
considered qua Bristol Bakery and not against Grupo Bimbo. In
support, he relies upon the following decisions:
i. Caribjet Inc. vs. AIR India Limited18 ii. Reed Elsevier Properties Inc. & Ors. vs. Best Media Associates (India) Pvt. Ltd. (supra) iii. Toyota Jidosha Kabushiki Kaisha vs Prius Auto Industries Ltd. & Ors. (supra) iv. Carlton Shoes Ltd. & Ors. vs. VIP Industries Ltd. 19 v. VIP Industries Ltd. vs. Carlton Shoes Ltd. & Anr.20 vi. S. C. Cambatta & Co. Pvt. Ltd. vs. Commissioner of Excess Profits Tax, Bombay21 vii. Daiwa Pharmaceuticals Co. Ltd. vs. Daiwa Pharmaceuticals Pvt. Ltd. & Ors.22 viii. Corona Remedies Pvt. Ltd. vs. Franco-Indian Pharmaceuticals Pvt. Ltd.23 ix. Torrent Pharmaceuticals Ltd. vs. Wockhardt Ltd. & Ors.24 18 2005(2) Mh.L.J. 461 19 MANU/DE/4605/2023 20 FAO (OS) (COMM) 151/2023 dated 25/07/2023 21 (1961) 41 ITR 500 : 1960 SCC OnLine SC 231 22 2024 SCC OnLine Bom 1078 23 2023 SCC OnLine Bom 833 24 2017 SCC OnLine Bom 9666 SQ Pathan 22/74 2-IA-L-13958-2023 & IA-5609-2025.doc x. Brihan Karan Sugar Syndicate Pvt. Ltd. vs. Yashwantrao Mohite25 xi. Aktiebolaget Volvo of Sweden vs. Volvo Steels Ltd.26 xii. N. R. Dongre & Ors. vs. Whirlpool Corp.27 xiii. Milmet Oftho Industries & Ors. vs. Allergan Inc.28 xiv. Austin Nichols & Co. vs. Arvind Behl29 xv. Brewster Transport Co. Ltd. vs. Rocky Mountain Tours & Transport Co. Ltd.30 xvi. Jolen Inc. vs. Doctor and Company31 xvii. M/s. SCG Contracts India Pvt. Ltd. vs. K.S. Chamankar Infrastructure Pvt. Ltd.32 xviii. Commissioner of Income Tax vs. E. Kathawala & Co.33 xix. Patel Field Marshal Agencies & Ors. vs. P. M. Diesels Ltd.34 xx. The Trustees of Princeton University vs. The Vagdevi Educational Society & Ors.35 xxi. Oswaal Books and Learning Pvt. Ltd. vs. Registrar of Trade Marks36 xxii. Grasim Industries Ltd. & Anr. vs. Saboo Tor Pvt. Ltd. & Ors.37 xxiii. The Supreme Industries Ltd. vs. Moorthi Rabeha38 xxiv. Lacoste & Anr. vs. Crocodile International Pte. Ltd.39 25 2023 SCC OnLine SC 1163 : (2024) 2 SCC 577 26 1997 SCC OnLine Bom 578 27 1995 SCC OnLine Del 310 28 (2004) 12 SCC 624 29 2005 SCC OnLine Del 1276 30 1930 CanL II 36 (SCC) SC 31 2002 SCC OnLine Del 518 32 2019 SCC OnLine sC 226 33 1983 SCC OnLine Bom 441 34 (2018) 2 SCC 112 35 2025 SCC OnLine Del 6296 36 2025 SCC OnLine Del 4113 37 COMIPL/422/2022 38 COMIPL/336/2025 39 2024 SCC OnLine Del 5591 SQ Pathan 23/74 2-IA-L-13958-2023 & IA-5609-2025.doc xxv. Minco India Pvt. Ltd. vs. Minco India Flow Elements Pvt. Ltd.40 xxvi. Sun Pharmaceutical Industries Ltd. vs. Meghmani Lifesciences Ltd.41
xxvii. M/s. Power Control Appliances vs. Sumeet
Machines Pvt. Ltd.42
xxviii. Rynox Gears vs. Steelite India43
xxix. Century 21 Real Estates LLC vs. Century 21 Town
Planners Pvt. Ltd.44
xxx. Ramnish Verma & Anr. vs. Haddad Apparel Group
Ltd. (supra)
xxxi. Grupo Bimbo vs. Ishan Saluja & Ors.45
xxxii. Grupo Bimbo vs. Cheferd Foods Pvt. Ltd.46
xxxiii. Ramdev Food Products (P) Ltd. vs. Arvindbhai
Rambhai Patel & Ors.47
xxxiv. Staples INC & Anr. vs. Staples Paper Converters
Pvt. Ltd.48
xxxv. Wockhardt Limited vs. Eden Healthcare Pvt.
Ltd.49
xxxvi. Diamond Modular Pvt. Ltd. vs. Vikash Kumar &
Anr.50
40. In rejoinder, Mr. Kadam would object to certain documents
relied upon by Mr. Lall which are not part of the pleadings of Grupo
Bimbo, as well as certain decisions which are overruled and/or are
pending before the Appellate Court. He submits that the express
40 COMIPL/12477/2024
41 COMIPL/353/2025
42 (1994) 2 SCC 448
43 COMIPL/35513/2024
44 Com. Misc. Petition/857/2022 Bombay HC Dated 6/3/2026
45 C.S. (COMM) 306/2024 Delhi HC
46 C.S. (COMM) 1016/2024 Delhi HC
47 (2006) 8 SCC 726
48 2014 SCC OnLine Del 2092
49 2014 SCC OnLine Bom 163
50 (2025) 2 High Court Cases (Del) 677
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averment in Bristol Bakery’s plaint about the surviving partners
deciding to continue the same business has not been traversed by
Grupo Bimbo, which constitutes an admission. He would further
submit that, for the first time, in the written statement it has been
alleged by Grupo Bimbo that Bristol Bakery is not the proprietor of
the trade mark and it is not a pleaded case in the suit filed by Grupo
Bimbo.
41. He submits that the registration details confirming Bristol
Bakery’s proprietorship of the trade mark are annexed at page 70 of
Bristol Bakery’s plaint. He submits that, in Bristol Bakery’s Suit, there
is no application filed under Section 124 by Grupo Bimbo and,
therefore, the registration must be treated as valid and subsisting for
the purpose of the present proceedings. He would submit that Bristol
Bakery has produced 134 documents spanning over four decades
showing continuous and extensive use of the trade mark “Bimbo”
from 1979 onward, including third-party documents, and the total
sales are about INR 213 crores. He submits that the production of a
Chartered Accountant’s certificate is not a mandatory prerequisite. He
would submit that the registrations of Grupo Bimbo’s trade mark
registrations have been assailed by Bristol Bakery by filing about 15
rectification applications prior to the filing of the present Suit.
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42. He would submit that the size of an entity is irrelevant for
determining prior user and being a prior registered proprietor in India,
Bristol Bakery prevails over the alleged global stature of subsequent
entrant Grupo Bimbo.
43. He would further submit that the contention that Aspi Irani was
a well-travelled person and, therefore, must have been aware of the
mark, is not a pleaded case of Grupo Bimbo. He would deny that the
sales of Bristol Bakery are restricted only to Dadar and Mumbai. He
submits that, for the purpose of goodwill, what can be considered is a
long period of business and a reasonable sales and Bristol Bakery is a
senior user of the mark having sufficient goodwill.
44. He submits that being the prior adopter of the mark in India,
Bristol Bakery is not required to give any explanation for adoption. He
submits that it is preposterous to suggest that, in the year 1979, when
Bristol Bakery adopted the mark, it had anticipated Grupo Bimbo’s
future entry in India. He submits that, at the time of adoption of the
mark, Grupo Bimbo had no presence, no sales and no advertisements
in India.
45. He would further submit that the negotiations between the
parties were without prejudice and cannot be relied upon by Grupo
Bimbo to support its case of delay and acquiescence and is an
argument more of prejudice and suppression.
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46. He would submit that there are no invoices produced by Grupo
Bimbo to show use of the mark since the year 2019 and the Chartered
Accountant’s certificate is about the entirety of the sales and there is
no stand-alone figure is shown of “Bimbo”. He submits that the
mentioning on Bristol Bakery’s packet of the words “under licence
from Bimbo” is for the reason that “Bimbo” is the source identifier. He
submits that there is no question of acquiescence, as in the year 2010,
when opposition proceedings were filed, as there was no use of the
mark by Grupo Bimbo in India. He would submit that balance of
convenience is in favour of Bristol Bakery, as it is in the business since
the year 1979 and has produced evidence of user. He submits that
Grupo Bimbo’s reputation abroad is not a defence to the action for
passing off and Grupo Bimbo had knowingly taken a chance of
entering the market in India in the year 2019.
47. He would further submit that there is no suppression of
material facts, as the knowledge of Grupo Bimbo’s 2017 joint venture
is not the same as knowledge of the products bearing the trade mark
being sold in the Indian market and, in any event, is a disputed
question of fact which cannot be conclusively determined at the
interlocutory stage. He would further submit that the period of 120
days for filing the written statement commences from the date of
service of the writ of summons and Bristol Bakery disputes that valid
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service has been effected and therefore, the time to file the written
statement has not yet commenced.
48. Mr. Lall, in sur-rejoinder, would submit that Mr. Kadam has not
answered the question as to which firm is the registered proprietor of
the trade mark “Bimbo”, insofar as Bristol Bakery is concerned.
49. Rival contentions now fall for determination.
50. The cross suits seek to restrain the other party from the use of
the identical mark “Bimbo” which is the essential leading feature of
their respective trade marks in respect of identical products i.e. bread.
The device marks of Grupo Bimbo and Bristol Bakery are reproduced
hereinbelow for comparison:
Trade Mark of Grupo Bimbo Trade Mark of Bristol Bakery
BIMBO BIMBOSQ Pathan 28/74
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51. Bristol Bakery had applied and secured registration of its device
mark “Bimbo” on 6th March, 1979. The application for registration of
the word mark “Bimbo” was filed by Bristol Bakery on 22 nd February,
2008 and its status is shown as abandoned. On the other hand, Grupo
Bimbo secured registration of its trade mark “Bimbo” in Mexico on
15th January, 1944 and subsequently secured approximately 1,085
trade mark registrations of Bimbo in over 70 countries. In India, Grupo
Bimbo secured registration of device mark “Bimbo” on 23 rd August,
1993 and thereafter secured various registrations of the trade mark
Bimbo.
52. The issue of the similarity between the rival marks is not
debated for the simple reason that the essential, leading and
prominent feature of both the marks is “Bimbo”. Prima facie upon
comparison of the device marks, it is “Bimbo” which is prominent.
Though Mr. Lall would contend that the cartoon characters of both
the marks have the possibility of creating confusion, in my view, the
distinction between the cartoon characters is evident. The similarity
arises by use of the mark “Bimbo”.
53. Mr. Kadam, in view of the registrations secured by both the
parties, would confine his relief at this stage only in respect of passing
off. Mr. Lall in his arguments would press for infringement as well as
passing off, though his written submissions tendered on 27 th March,
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2026 in paragraph 41 submits that as both parties are registered
proprietors, though actions initiated are infringement actions, at
present the action would have to be passing off action. To avoid any
conflict, this Court has considered Grupo Bimbo’s claim for
infringement as well.
54. I would first prefer to deal with the relief of infringement of
trade mark sought by Grupo Bimbo. The statutory provisions of
Section 29 of the Trade Marks Act, 1999 governing the infringement
of trade mark explicitly sets out the various acts which constitute
infringement by a person who is not a registered proprietor or
permitted user.
55. Section 12 of the Trade Marks Act, 1999 permits registration by
more than one proprietor of trade marks which are identical/similar in
respect of the same or similar goods or services in case of honest
concurrent user.
56. Section 28(1) provides that, subject to the other provisions of
the Act, the registration of the trade mark shall, if valid, give to the
registered proprietor of the trade mark the exclusive right to the use
of the trade mark in relation to the goods or services in respect of
which the trade mark is registered and to obtain relief in respect of
infringement of the trade mark in the manner provided by the Act.
Sub-section (3) of Section 28 provides that where two or more
SQ Pathan 30/74
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persons are registered proprietors of identical/similar trade marks,
the exclusive right to use of the trade mark shall not be deemed to
have been acquired against the other person merely by registration
but against third-party unregistered users, in the same way as if he
was the sole registered proprietor.
57. Section 30 of the Trade Marks Act, 1999 limits the effect of a
registered trade mark and sub-section (2) of Section 30 carves out an
exception to the exclusive rights conferred by registration of trade
marks in eventualities set out in the clauses therein. Clause (e) of sub-
section (2) of Section 30 negates infringement where the use of a
registered trade mark, being one of two or more trade marks
registered under this Act which are identical/similar to each other, in
exercise of right to the use of that trade mark given by registration
under the Act.
58. The statutory framework would indicate that the enactment
recognises existence of more than one registered proprietor of an
identical/deceptively similar trade mark in certain eventualities. Upon
such registration being secured by more than one person, the
statutory exclusivity conferred on the registered proprietor is
curtailed. Section 27 of the Trade Marks Act, 1999, however, saves the
common law rights of trade mark owners against any person for
passing off, be it the registered proprietor of a trade mark. The
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Hon’ble Apex Court in the case of S. Syed Moideen vs. Sulochana Bai
(supra) held that as per Section 28(3), the owner of a registered trade
mark cannot sue for infringement of it against another trade mark
which is registered and that the provisions of Section 27(2) as regards
the passing off would still be available.
59. To sustain the claim of infringement against Bristol Bakery,
though Bristol Bakery is the registered proprietor, the pleading of
Grupo Bimbo in paragraph 22 of its plaint, assails the validity of
registration of Bristol Bakery’s trade mark as being ex facie fraudulent
and illegal and violation of Grupo Bimbo’s prior existing trade mark.
The pleading of illegality and invalidity is premised on the ground that
the adoption and consequent registration of Bristol Bakery’s trade
mark is vitiated by fraudulent misrepresentation to the Trade Marks
Registry, and that fraud invalidates and vitiates all acts. The
fraudulent misrepresentation stems from Grupo Bimbo’s claim of
international registrations and worldwide reputation prior to the
adoption and use of the mark by Bristol Bakery.
60. The Trade Marks Act, 1999 is a territorial Act and recognises
registrations secured under the enactment. Section 9 of the Trade
Marks Act, 1999 deals with the absolute grounds for refusal and
Section 11 deals with relative grounds of refusal of registration. The
statutory provisions provide that a mark which by reason of
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identity/similarity to earlier registered trade mark and similarity/
identity of goods is likely to cause confusion on the part of the public
which includes likely association with the earlier registered trade mark
should not be registered. It is thus the identity/similarity to the earlier
registered trade mark which may be refused registration.
61. Section 11 of the Trade Marks Act deals with the relative
grounds for refusal of registration and sub-section (3) provides that
the trade mark shall not be registered, if or to the extent, that its use
in India is liable to be prevented by virtue of law of passing off. The
embargo on registration in cases falling under sub-section (3) of
Section 11 is subject to a caveat under sub section (5) of Section 11
that objection should be raised by proprietor of earlier trade mark.
Admittedly, Bristol Bakery’s trade mark registration of the year 1979
was not opposed by Grupo Bimbo. As such Bristol Bakery’s
registration could not have been refused by the trade mark registry
under the law of passing off.
62. Section 31 of the Trade Marks Act, 1999 provides that the
registration of a trade mark is prima facie evidence of its validity. The
registration protects the registered proprietor against an action for
infringement and at the interlocutory stage, the inquiry which can be
conducted by a Court into the validity of registration is set out in the
Full Bench decision of this Court in Lupin Ltd. vs. Johnson & Johnson
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(supra). The issue was as to the powers of the Court to venture into
the question of validity of registration of the trade mark at an
interlocutory stage upon defence of invalidity of registration being
taken. The relevant conclusion in paragraph 59(3), (5), (6) and (8) reads
as under:
“59. (3) A challenge to the validity of the registration of
the trade mark can finally succeed only in rectification
proceedings before the Intellectual Property Appellate
Board. However, there is no express or implied bar taking
away the jurisdiction and power of the Civil Court to
consider the challenge to the validity of the trade mark at
the interlocutory stage by way of prima facie finding.
(Paras 34 and 53)(5) However, a very heavy burden lies on the defendants
to rebut the strong presumption in favour of the plaintiff
on the basis of the registration at the interlocutory stage.
The plaintiff is not required to prove that the registration
of a trade mark is not invalid, but only in the cases where
the factum of registration is ex facie totally illegal or
fraudulent or shocks the conscience of the Court that the
Court may decline to grant relief in favour of the plaintiff.
(Paras 25, 27 and 55)
(6) It is not sufficient for the defendant to show that the
defendant has an arguable case for showing invalidity.
The prima facie satisfaction of the Court to stay the trial
under section 124 of the Act is not enough to refuse
grant of interim injunction. It is only in exceptional
circumstances, such as, the registration being ex facie
illegal or fraudulent or which shocks the conscience of
the Court that Court will refuse the interim injunction in
favour of the registered proprietor of the trade mark.
(Para 57)
(8) Though it is considered as a practice of this Court in
granting injunction in favour of the plaintiff having a
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registered trade mark, the same cannot be treated as a
total embargo on the power of the Court to refuse grant
of interim injunction. In exceptional cases, that is in cases
of registration of trade mark being ex facie illegal,
fraudulent or such as to shock the conscience of the
Court, the Court would be justified in refusing to grant
interim injunction. (Para 33)”
63. The Hon’ble Full Bench upheld the power of the Court to travel
beyond the registration but with the caveat that the same can be
done only in exceptional cases where the registration is ex facie illegal
or fraudulent or which shocks the conscience of the Court. The
threshold to be met is not that of prima facie arguable case of
invalidity but a higher threshold of ex facie illegality or fraud or which
shocks the conscience of the Court. The fraud/illegality claimed by
Grupo Bimbo is adoption of identical mark despite Grupo Bimbo’s
alleged international registrations and worldwide reputation, which is
referable to the relative ground for refusal of registration under
Section 11(3) and requires satisfaction of Section 11(5), which is
missing. As to the worldwide reputation, Grupo Bimbo claims that in
the year 1970, “Bimbo” was leading mark in America and Latin
America, not even a case of worldwide reputation. The criteria of
fraud by reason of Grupo Bimbo’s alleged reputation confined to
America and Latin America in the year 1970 is not sufficient to stamp
the registration of Bristol Bakery as invalid. The registration of Bristol
Bakery’s trade mark in the year 1979 does not shock the conscience of
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the Court as being vitiated by fraud on the ground of Grupo Bimbo’s
alleged reputation in America and Latin America. Grupo Bimbo’s case
of invalidity does not fit in the small window left open by Lupin
decision for the Court at this stage to answer the issue of invalidity of
Bristol Bakery’s mark in favour of Grupo Bimbo.
64. Even if the plea of invalidity of Bristol Bakery’s trade mark is
raised by Grupo Bimbo under Section 124 of Trade Marks Act, the
Hon’ble Full Bench has held that the prima facie satisfaction of the
Court to stay the trial under Section 124 of the Trade Marks Act, 1999
is not enough to refuse grant of interim injunction. For a plea of
invalidity to fit in the small window left open in Lupin‘s case, the
burden to be discharged is heavy and rightly so as the registration of
the trade mark confers statutory rights on the proprietor which
should not be interfered with lightly.
65. As both the parties have secured registrations of their trade
marks, which is not shown to be ex facie illegal, fraudulent or such,
which shocks the conscience of the Court, Grupo Bimbo’s claim for
infringement of trade mark at this stage fails.
66. Whilst on the subject of registrations secured by Bristol Bakery,
I deem it fit to deal with the challenge raised by Mr. Lall to the right of
Bristol Bakery to maintain the action for infringement or passing off
on the ground that it is not the registered proprietor of the trade
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mark Bimbo. The argument canvassed is that the (a) registration
stands in the name of apparently dissolved partnership firm of
Jamshed Irani, Aspi Irani and Cyrus Irani, which dissolution took place
upon death of Jamshed Irani on 16 th December, 1994 (b) in the
partnership deed of 23rd March, 1995 between Aspi Jamshed Irani and
Cyrus Jamshed Irani, there is no mention of “Bimbo” and (c) that the
firm name is Bristol Bakery and not Bimbo Bristol Bakery, a name now
adopted.
67. In Commercial IP Suit No. 189 of 2025, Grupo Bimbo has
impleaded Bristol Bakery through its partners Aspi Jamshed Irani and
Cyrus Jamshed Irani and the plaint proceeds on the basis of the Bristol
Bakery presently comprising of Aspi and Cyrus as partners is the
registered proprietor of the trade mark “Bimbo” and seeks relief
against Bristol Bakery. Neither in the suit filed by Grupo Bimbo nor in
the reply affidavits filed by Grupo Bimbo to the suit of Bristol Bakery
have the proprietary rights of Bristol Bakery in respect of the
registered device mark “Bimbo” have not been questioned and only
validity of the registration has been assailed. The stand that Bristol
Bakery is not the registered proprietor of trade mark is not the
pleaded case of Grupo Bimbo in its suit and finds place in the written
statement filed by Grupo Bimbo. In Grasim Industries Ltd. & Anr. vs.
Saboo Tor Pvt. Ltd. (supra), I have taken a view that principles of
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fairness and equity demand that documents should have been part of
reply affidavits so that the Plaintiffs could have had an opportunity to
deal with the same. The doctrine of fairness and equity demands that
all contentions to oppose the grant of interim relief should be
pleaded in the affidavits filed by the parties.
68. A pleading tucked in a paragraph in the written statement
denying that Bristol Bakery is the actual proprietor of Bimbo without
enumerating the specific particulars of the claim, cannot thereafter be
mounted as a substantial challenge to the interim injunction sought
by Bristol Bakery or to support Grupo Bimbo’s case of infringement.
The nuanced argument canvassed by Mr. Lall in support of its
challenge to Bristol Bakery’s proprietary right does not find place in
the affidavits filed in response to the interim application giving no
opportunity to Bristol Bakery to deal with the same. It is no answer to
say that replication could have been filed to deal with the contention.
There is no specific traverse of the specific pleading about Aspi Irani
and Cyrus Irani continuing with the same old business under the terms
and conditions of earlier partnership.
69. Apart from the above, what is placed on record by Bristol
Bakery is online status of Bristol Bakery’s registration, copy of trade
mark application and copy of registration certificate indicating that
the device mark of “Bimbo” was applied for registration on 6 th March,
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1979 with a user claim of 1 st January, 1979. The online status shows
proprietor’s name is shown as Jamshed Ardeshir Irani trading as
Bristol Bakery with the partners Aspi Jamshed Irani and Cyrus
Jamshed Irani, the registration certificate shows registration in the
name of Jamshed Irani, Cyrus Irani, and Aspi Irani. The online status
shows that the registration is subsisting, which is prima facie evidence
of its validity under Section 31 of the Trade Marks Act.
70. As no challenge was raised to Bristol Bakery’s proprietary right
on the ground of Section 42 of the Partnership Act, no documents
were produced by Bristol Bakery to demonstrate whether the earlier
partnership provided for the firm to survive upon death of a partner
or there was dissolution or whether the assets were transferred to
the firm of existing partners. Prima facie at this stage, considering the
subsisting registration in favour of Bristol Bakery, when read with
Section 2(v) of the Trade Marks Act, 1999, the proprietor’s name, as
per the online status, is Bristol Bakery, which has filed the present
suit.
71. Coming to the core issue of passing off, the essence of the tort
of passing off is that no trader shall be permitted to trade its goods as
that of another and be unjustly enriched from the other party’s
goodwill and reputation. Passing off requires priority of use,
actionable goodwill and reputation on the date when the Defendants
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commenced use of the impugned mark, misrepresentation and
damage. In present facts, the first question to be answered is “who is
the first”. Bristol Bakery claims to be the prior user by reason of
adoption, use and registration of its trade mark in the year 1979,
whereas Grupo Bimbo claims to be prior user having adopted and
used the trade mark in Mexico since 1940 with spill over of its
worldwide reputation in India even prior to its registration in India in
1993 and affixing of its mark on the product for the first time in 2019.
72. Grupo Bimbo is a Mexican entity incorporated in the year 1945
claiming to have adopted the trade mark in 1943 with the first
registration secured in Mexico on 15th January, 1944. Both claim to
have invented the mark independently.
73. In Brihan Karan Sugar Syndicate Pvt. Ltd. vs. Yashwantrao
Mohite (supra), the Hon’ble Apex Court noted the decision of Satyam
Infoway Ltd. v. Sifynet Solutions (P) Ltd. 51, which held that, if two
trade rivals claim to have individually invented the same mark, then
the trader who is able to establish prior user will succeed. The
question is, as has been aptly put, who gets there first?
74. The pleading in the Bristol Bakery’s plaint is that Bristol Bakery
is manufacturing and marketing its product under the trade mark
“Bimbo” since the year 1979. The online status of registration
51 AIR 1966 Bombay 149
SQ Pathan 40/74
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produced by Bristol Bakery shows that the registration application
was filed on 6th March, 1979 with user claim of 1 st January, 1979.
Bristol Bakery has annexed at Exhibit “C” various communications to
substantiate its claim of use since the year 1979. The documents from
pages 93 to 104 are request communications by Bristol Bakery to third
party for supply of bread. At pages 104 and 105 are communications
dated 24th April, 1981 and 29th September, 1980 exchanged with
Premier Automobile about prices of bread and mentions the mark
Bimbo. The communication at page 106 is dated 10 th March, 1982 with
Godrej Soaps Ltd., mentioning the mark Bimbo. From page 107
onwards there are further communications to third-parties by Bristol
Bakery mentioning their product with the mark Bimbo. At page 120 is
the communication by Godrej to Bristol Bakery, dated 11 th December,
1987 regarding revision of price of bread mentioning the mark Bimbo.
There are similar subsequent communications by Bristol Bakery to
clients for supply of bread with few communications from third
parties to Bristol Bakery. There is a price list of Bristol Bakery dated
24th January, 1992 mentioning the trade mark Bimbo. These
communications have been assailed as self-serving documents. In the
case of Lacoste and Another vs. Crocodile International Pte. Ltd.
(supra), the Delhi High Court had termed the expression “self-serving”
in respect of documents prepared unilaterally by a party to the
SQ Pathan 41/74
2-IA-L-13958-2023 & IA-5609-2025.doclitigation and without cross-verification or external validation. The
Delhi High Court was considering the probative value of the
documentary evidence produced after the trial. At the interlocutory
stage, the documents can be looked into as supporting Bristol
Bakery’s claim of use of the mark since the year 1979. There is also no
reason as to why after obtaining registration of the trade mark in
Class 30 in the year 1979 and continuing in the business of bakery,
Bristol Bakery would not market its product using the trade mark
Bimbo.
75. The majority of documents being communications addressed by
Bristol Bakery to third parties cannot be a reason to discard the claim
of Bristol Bakery of use of its mark after securing registration. Mr. Lall
would contend that there is no independent advertisements or
invoices prior to the year 1994 or even thereafter to show use of the
mark. The product in respect of which the trade mark is used is
average-priced bread. It cannot be expected that in the era of
1980/1990, in respect of daily-use commodity in India, there would be
extensive advertisements and promotional material. In the absence of
fierce brand competition in the earlier decades, the absence of
widespread advertisement and promotional material is justified and
cannot take away the fact of use of the mark by Bristol Bakery on that
ground. Bristol Bakery has also placed on record the purchase order
SQ Pathan 42/74
2-IA-L-13958-2023 & IA-5609-2025.docdated 30th September, 1996 by Bharat Petroleum Corporation Ltd for
supply of “Bimbo” bread. For establishing the use of the mark in the
year 1979/1980, the material placed on record by Bristol Bakery is
sufficient.
76. Grupo Bimbo asserts its claim of prior user by reason of prior
international registrations and worldwide reputation pre-dating
Bristol Bakery’s registration, which reputation is claimed to have
percolated in India. Before scrutinising the documents placed on
record by Grupo Bimbo in support of its claim of trans-border
reputation, it would be apposite to refer to the judicial
pronouncements on the issue.
77. In case of Ahmed Perfumes LLC & Ors. vs. Mohammed Faisal
Rehman Sulant Ahmed Shamsi52, this Court had the occasion to
consider the issue of passing off and trans-border reputation. This
Court summarised the law enunciated in various decisions as under:
“The judicial pronouncements have settled the tests for passing
off and trans-border reputation, which can be summarised as
under:
(a) In N.R.Dongre And Ors. vs Whirlpool Corporation And Anr.
(supra), the Plaintiff did not make out a case of actual sales in
India, however, had advertised its products in international
52IA/1405/2026 in COMIP/711/2025 decided on 07/05/2026
SQ Pathan 43/74
2-IA-L-13958-2023 & IA-5609-2025.docmagazines having circulation in India. The Hon’ble Apex Court
approved the findings of the Hon’ble Division Bench that even
advertisement of the trade mark without existence of goods in
the market is also to be considered as use of the trade mark.
(b) In Milmet Oftho Industries And Ors. vs Allergan Inc (supra),
the Hon’ble Apex Court, in context of medicinal preparations,
noted its agreement with the view in N.R.Dongre And Ors. vs
Whirlpool Corporation And Anr. (supra), observing that medical
literature is freely available in India, goods are widely advertised
in newspapers, periodicals, magazines and other media available
in India which results in products acquiring worldwide
reputation.
(c) The decision of Toyota Jidosha Kabushiki Kaisha vs Prius
Auto Industries Ltd. And Ors. (supra) is an authoritative
pronouncement on the subject and the Hon’ble Apex Court
favoured the territoriality principle over the universality
principle. It held that the Courts have to determine if there has
been a spill over of the reputation and goodwill of the mark
used by the Claimant who has brought the passing off actions
and to ascertain the existence of not necessarily a real market
but the presence of the claimant through its mark within a
SQ Pathan 44/74
2-IA-L-13958-2023 & IA-5609-2025.docparticular territorial jurisdiction. The Hon’ble Apex Court further
held in paragraph 32 as under:
“32. Prof Christopher Wadlow’s view on the subject
appears to be that the test of whether a foreign claimant
may succeed in passing off action is whether his business
has a goodwill in a particular jurisdiction, which criterion is
broader than the “obsolete” test of whether a claimant has
a business/place of business in that jurisdiction. If there
are customers for a claimant’s products in that jurisdiction,
then the claimant stands in the same position as a
domestic trader.”
The Hon’ble Apex Court noted the decision in Starbucks
(HK) Ltd. And Anr. vs British Sky Broadcasting Group And
Ors.53, where the UK Supreme Court observed as under:
“52. As to what amounts to a sufficient business to
amount to goodwill, it seems clear that mere reputation is
not enough…. The claimant must show that it has a
significant goodwill, in the form of customers, in the
jurisdiction, but it is not necessary that the claimant
actually has an establishment or office in this country. In
order to establish goodwill, the claimant must have
customers within the jurisdiction, as opposed to people in
the jurisdiction who happen to be customers elsewhere.
Thus, where the claimant’s business is carried on abroad, it
is not enough for a claimant to show that there are people
in this jurisdiction who happens to be its customers when
they are abroad. However, it could be enough if the
claimant could show that there were people in this
jurisdiction who, by booking with, or purchasing from, an
entity in this country, obtained the right to receive the
claimant’s services abroad. And, in such a case, the entity
need not be part or branch of the claimant; it can be
someone acting for or on behalf of the claimant.”
(Emphasis supplied)
53 (2015) 1 WLR 2628
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The Hon’ble Apex Court noted the decision in Athlete’s
Foot Marketing Associates Inc v Cobra Sports Ltd.54 as under:
“…no trader can complain of passing off as against him in
any territory ..in which he has no customers, nobody who is
in trade relations with him. This will normally shortly be
expressed by stating that he does not carry on any trade in
that particular country….but the inwardness of it will be
that he has no customers in that country…”
In Starbucks (HK) Ltd. And Anr. vs British Sky
Broadcasting Group And Ors. (supra), the UK Supreme Court
considered the issue as to whether a claimant who is seeking to
maintain an action for passing off need only establish a
reputation among a significant section of the public within the
jurisdiction, or whether such a claimant must also establish a
business with customers within the jurisdiction. It noted that
Goodwill as subject of proprietary rights is incapable of
subsisting by itself having no independent existence apart from
the business to which it is attached. It held in paragraph 47 as
under:
“47. ….In other words, I consider that we should
reaffirm that the law is that a claimant in passing off
claim must establish that it has actual goodwill in this
jurisdiction, and that such goodwill involves the
presence of clients or customers in the jurisdiction for
the products or services in question. And, where the
claimant’s business is abroad, people who are in the
jurisdiction, but who are not customers of the
claimant in the jurisdiction, will not do, even if they are
customers of the claimant when they go abroad.”
54 [1980] RPC 343
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In Bolt Technology OU vs Ujoy Technology Pvt. Ltd. And
Anr. (supra), the Delhi High Court summarised the principles of
Toyota Jidosha Kabushiki Kaisha vs Prius Auto Industries Ltd.
And Ors. (supra) in passing off and trans-border reputation as
under:
“72. Several important principles emerge from these
passages, which may be enumerated as under:
(I) The territoriality principle applies: not the
universality doctrine. Existence of goodwill and
reputation has, therefore, to be shown to exist in
India. Universal or worldwide goodwill and
reputation sans any evidence of territorial goodwill
and reputation, is not sufficient.
(ii) Mere reputation is not enough. The
claimant/plaintiff must show that it has significant
goodwill.
(iii) The actual existence of an office of the plaintiff
in the country of the defendant is not necessary.
(iv) However, the claimant must have customers
within the country of the defendant, as opposed to
persons in the defendant’s country who are
customers elsewhere. Thus where the claimant’s
business is carried on abroad, it is not enough for
the claimant to show that there are people in the
defendant’s country who happen to be his
customers when they are abroad.
(v) However, it would be enough if the claimant
could show that there were people in the
defendant’s country who, by booking with, or
purchasing from an entity in the defendant’s
country obtained the right to receive the claimant’s
service abroad. The person from whom such
booking or purchase took place could be the
claimant or its branch office or someone acting for
or on behalf of the claimant.
(vi) The claimant must be “present through its mark
in the territorial jurisdiction” of the country of the
defendant’ though the existence of “real market”
was not necessary.
(vii) Such presence could, for instance, be shown by
extensive advertisement which had been circulated
SQ Pathan 47/74
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and seen, or read, in the country of the defendant.
(viii) Once the existence of trans-border reputation
and goodwill was thus established, the claimant was
not required, further, to prove the existence of
actual confusion. The likelihood of the customer of
average intelligence and imperfect recollection
being confused, by the use of the impugned mark of
the defendant, that the goods or services by the
defendant were those of the claimant-plaintiff was
sufficient.”
In Daiwa Pharmaceuticals Co. Ltd. vs Daiwa
Pharmaceuticals Pvt. Ltd. And Ors. (supra), this Court held in
paragraph 86 as under:
“86. A relevant factor to be borne in mind is that the
Plaintiff’s mark is in respect of pharmaceutical products. It
has been held by the Supreme Court in Milmet (Supra)
which has been followed by the Delhi High Court in Mayo
Foundation (Supra), decisions relied upon by the Plaintiff,
that in the event the material relied upon by the Plaintiff
prima facie shows that the Plaintiff’s product was
advertised before the Defendant entered the field, the
Plaintiff being the first to adopt the mark, is then able to
maintain an action for passing off.The mere fact that the
Plaintiff has not been using the mark in India would be
irrelevant if they were first in the world market. Thus,
there does appear to be special segment carved out for
pharmaceutical products and the test of trans-border
reputation would in my view have to be liberal and such
reputation may be derived from advertisement and
publicity of the Plaintiff’s mark and cited in Indian
newspapers, magazines and online publications…”
78. Applying the above enunciation of law to the facts of present
case, to sustain its case of prior user, Grupo Bimbo is required to
establish its presence through its mark in India even prior to Bristol
Bakery’s registration of the year 1979. The claim of physical presence
is of the year 2017 by entering into joint venture with Ready Roti and
SQ Pathan 48/74
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use of its trade mark is in the year 2019. Whether, 38 years prior to
Grupo Bimbo entering into the Indian market, its worldwide
reputation had percolated in India is the question.
79. Grupo Bimbo substantiates its claim of trans-border reputation
by placing reliance on the extracts from the Plaintiff’s website, social
media pages featuring Grupo Bimbo, advertisements and press
releases issued worldwide. It relies upon its numerous websites across
the world in different countries, which are dedicated to the trade
mark “Bimbo”, and are also accessible to its users globally. The claim
of trans-border reputation is based on the social media handles,
website extracts, advertisements and promotion. In Toyota Jidosha
Kabushiki Kaisha vs. Prius Auto Industries Ltd. (supra), the Hon’ble
Apex Court considered whether Toyota’s mark had disseminated
through media and advertisements, and it noted that there must be
adequate evidence to show that the Plaintiff therein had acquired a
substantial goodwill, as the car itself was introduced in the Indian
market in the year 2009-2010 and that information on the internet,
even if accepted, will not be a safe basis to hold the existence of the
necessary reputation and goodwill of the product in the Indian market
at the relevant point of time, particularly having regard to the limited
online exposure at that point of time, i.e. the year 2001.
SQ Pathan 49/74
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80. Grupo Bimbo seeks to rely on its online presence in the year
1979 and considering that the Hon’ble Apex Court has termed
internet exposure limited in the year 2001, it is safe to accept that
online exposure must be definitely negligible in the year 1979. The
mere existence of Grupo Bimbo’s websites in developed countries is
not sufficient to hold that its reputation had spilled over in India as its
websites were accessible to its users globally.
81. The relevant extracts from Grupo Bimbo’s websites feature the
historical conception, adoption and evolution of the mark “Bimbo” and
“OSITO Bimbo”. A perusal of Annexure-1 does not indicate any India-
dedicated website and the references to the evolution of “Bimbo” in
the year 1970-1980 is in respect of Latin America. The reference to
India in Annexure-1 is for the period from 2010-2020, where it is
mentioned that India is now part of the team. Annexure-2 are the
select screenshots of the website of Defendant No. 1, which shows
evolution of Grupo Bimbo and makes a reference to acquisition of
65% shares of Ready Roti India Private Limited, which was founded in
the year 1993. The acquisition is admittedly of the year 2017 and does
not show any presence in India prior to 2017. Annexure-3 is the select
printouts of Grupo Bimbo’s websites stated to be accessible globally.
Considering the limited internet exposure and availability in India in
the year 1979, the material produced by Group Bimbo is insufficient to
SQ Pathan 50/74
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come to a prima facie finding that in the year 1979, when Bristol
Bakery adopted and registered its trade mark “Bimbo”, Grupo Bimbo’s
global reputation and goodwill had permeated into India. Insofar as
the Facebook pages are concerned, the same appear to have been
created on 20th February 2014, as disclosed from page 208 forming
part of Annexure-3. The presence on social media platforms appears
to be post 2010. The association of Grupo Bimbo with well-known
brands, the list of international registrations or the list of various
group entities do not demonstrate spill over of its reputation in India.
The website extracts of Grupo Bimbo sets out the evolution of Grupo
Bimbo since the year 1955 and unless it is shown that the trans-border
reputation has permeated into India, the documents are irrelevant for
consideration.
82. Insofar as the specimen advertisements and press releases
issued by Grupo Bimbo are concerned, at Annexure-11, Grupo Bimbo
has listed the press releases and advertisements. However, there is no
advertisement which is shown to have been targeted for Indian
customers or released in India. Mr. Lall has not demonstrated that any
of these advertisements were available in India or had circulation
within India. The awareness of a foreign brand amongst Indian
customers is an essential aspect to demonstrate goodwill and
reputation. It also needs to be noted that Grupo Bimbo’s product is
SQ Pathan 51/74
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bread, which is a daily perishable product and cannot be said to be a
product with which Indian consumers would keep themselves updated
by accessing websites or social media handles, even if the same are
accessible globally. The advertisements and promotional material are
prima facie not demonstrated to have any circulation in India and,
without the awareness of the Indian customers about Grupo Bimbo’s
brand, the existence/presence of Grupo Bimbo in the local market
cannot be accepted. The acquisition of goodwill in other jurisdictions,
much prior to the use and registration of the “Bimbo” trade mark by
Bristol Bakery does not assist the case of Grupo Bimbo, as there is
virtually an absence of any sales of Grupo Bimbo’s products in the
Indian market at the time when Bristol Bakery secured registration of
its mark and a virtual absence of any advertisement of the products in
India at the relevant time.
83. In Daiwa Pharmaceuticals Co. Ltd. vs Daiwa Pharmaceuticals
Pvt. Ltd. And Ors. (supra), the learned Single Judge of this Court had,
in the facts of that case, held that the Plaintiff’s reputation had spilled
over into India and had taken note of the explanation which has been
tendered by Defendant No. 1 therein to hold that the same indicated
a dishonest intention behind the adoption of the trade mark Daiwa. In
present facts, Bristol Bakery has secured registration of the mark in
the year 1979, when Grupo Bimbo had not even entered into the
SQ Pathan 52/74
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Indian market. Being the first in India to adopt the said trade mark, it
is not necessary for Bristol Bakery to justify the adoption of the trade
mark. It also needs to be noted that the case of Daiwa Pharmaceutical
Company Limited was in the context of pharmaceutical products, and
the relevant market segment lays emphasis on medical journals and
the conferences which update doctors about pharmaceutical products
that may be launched abroad. It is in that view that the learned Single
Judge held that there was a spill-over of reputation into India. The
learned Single Judge has specifically noted that there thus appears to
be a special segment carved out for pharmaceutical products and that
the test of trans-border reputation would have to be liberal.
84. In The Trustees of Princeton University vs The Vagdevi
Educational Society & Ors (supra), the Plaintiff therein had predicated
its case on actual use of the mark in India and not on the principle of
trans-border reputation. The newspaper articles on which reliance was
placed were Indian newspapers. The Delhi High Court held that use of
mark is defined as a use thereof to make a statement about the
availability, provision or performance of such services in relation to
which the mark is used. It accepted the news articles as proof of
actual use of mark . It noted that the Indian students were being
targeted by the Plaintiff and were going to the University of the
Plaintiff in large numbers, shows availability, provision and
SQ Pathan 53/74
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performance of services being rendered by the Plaintiff under its
mark, thereby establishing its goodwill and reputation in India. The
factual scenario in the present case is completely different as there is
no actual use of the mark in India till the year 2019 and no spill-over of
reputation and goodwill.
85. In Kores (India) Ltd vs Whale Stationery Products Ltd (supra),
this Court enunciated the territoriality principle and the saving
provisions of Section 34 of Trade Marks Act, 1999 in paragraph 10 and
11 as under:
“10. The savings provision embodied in Section 34 inter alia to a
situation where a person has continuously used a trade mark
from a date prior to the use of the registered trade mark in
relation to those goods or services by the proprietor of the mark
prior to the date of registration of the mark. Prima facie, at the
present stage, it emerges from the record before the Court that
the Plaintiff is the registered proprietor in India of the trade
mark KORES. The initial registration of the mark dates back to
1943. At this stage, the record before the Court would indicate
that after the lapsing of the initial registration the Plaintiff
applied for and obtained registration of the word mark KORES
and of the associated device of a lady typist which continues to
subsist on the register of trade marks. The Defendant claims to
be in the process of moving an application for rectification but it
is an admitted position that as of the date of these proceedings,
the mark and the device continue to be registered in the name
of the Plaintiff. That being the position, the Defendant would
within the territory of India be entitled to the benefit of the
saving contained in Section 34 the Act provided, that it
establishes before the Court a continuous user of the trade
mark from a date prior to the use of the registered trade mark
by the Plaintiff. There is prima facie a complete absence in the
record of material that would show a prior, continuous orSQ Pathan 54/74
2-IA-L-13958-2023 & IA-5609-2025.docconcurrent user of the trade mark by the Defendants in the
territory of India.
11. The Trade Marks Act, 1999, has territorial operation within
the territory of India. While considering the provisions of the
Trade and Merchandise Marks Act, 1958, Mr. Justice P.B.
Mukharji observed in Aktiebolaget Jonkoping Vulcan v. V.S.V.
Palancichamy Nadar (AIR 1969 Calcutta 43) the provisions of the
Act must be understood to refer to use within the territory of
India and not use abroad. The Learned Judge held that the
registration of a mark and its continuance on the register were
exclusively within the scope and ambit of domestic law. That was
a case involving rectification. The learned Single Judge held
thus:
“The Trade Mark law is not extraterritorial; that use
abroad in foreign countries under foreign registration can
be use within the meaning of the Indian Trade and
Merchandise Marks Act of 1958. This statute is an Act
which provides for registration and better protection of
trade marks and for the prevention of the use of
fraudulent marks on merchandise. That is its preamble.
That preamble I read as confined to the territorial limits of
India. Section 1(2) of the statute extends it to the whole
of India. The statute establishes trade marks register for
India. The definition of a trade mark in Section 2(v)
speaking of use in relation to goods must in my opinion be
understood as use within the territory of India and not use
abroad. On the authorities quoted above and on the
principles that I have just mentioned I am of the opinion
that under Section 46 the Trade and Merchandise Marks
Act, 1958 the word “use” employed therein is use within
India. Naturally if it is not used in India that would be a
ground for removal from the Indian register. I cannot
imagine that a foreign use or use abroad or outside India
could be pleaded as a sufficient ground for retaining a
registered Trade Mark on the Indian Trade Mark register. I
cannot import any extraterritorial notion to construe
the Indian Trade and Merchandise Marks Act, 1958 to cover
foreign use. I am of the opinion that registration of a Trade
Mark and its continuance on the register are exclusively
within the scope and ambit of domestic and national law.”
SQ Pathan 55/74
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86. In the case of Sumit Vijay and Another vs Major League
Baseball Properties Inc. (supra), the learned Single Judge of the Delhi
High Court had struck off the registered `Blue-J’ trade mark of the
Appellants under Section 57(2) of the Trade Marks Act, which came to
be reversed by the Division Bench. The Hon’ble Division Bench has
held that the existence of goodwill in the mark which has been
imitated is therefore the sine qua non of any passing off action. Apart
from goodwill, the other two requisites for any passing off action to
succeed are misrepresentation by the tortfeasor and resulting
damage to the other. It further held that the mere fact that the `Blue-
J’ mark figured on websites which are accessible in India or figured on
merchandise which could be purchased in India cannot amount to use
of the mark in India. The Hon’ble Division Bench considered the
decisions on trans-border goodwill and reputation, which decisions
have also been relied upon in the present case, and held that the
availability of a mark on a website can again be no indicator of trans-
border goodwill or reputation percolating into a particular country
such as India, as such an indicator would amount to every mark of
every entity having trans-border reputation in every country in the
world. It further held that positive assertions regarding the number of
times the website has been accessed in India would also have to be
pleaded. Mere availability of products on an e-commerce website or
SQ Pathan 56/74
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on the website of the owner of the mark would not suffice as proof of
trans-border goodwill or reputation, as it has to be shown that orders
were actually placed or purchases effected, to a considerable extent,
of the goods bearing the mark from within India. It held that if the
other has no goodwill or reputation, the very raison d’être of alleging
passing off fails. The existence of sufficient goodwill and reputation
has to be established prior to the adoption of the mark by the
Defendant.
87. In Reed Elsevier Properties Inc. & Ors. vs. Best Media
Associates (India) Pvt. Ltd. (supra), this Court considered Section 34
of Trade Marks Act, 1999 in the context of prior user claimed by
foreign entity. It held that Section 34(a) pertains to the use of the
mark in India and not anywhere in the world.
88. In Austin Nichols & Co. vs. Arvind Behl (supra), the Delhi High
Court followed the decision of the Hon’ble Apex Court in Milmet
Oftho Industries & Ors. vs Allergan Inc. (supra). The Delhi High Court
did not accept that the Plaintiffs were prior users of the trade mark in
India. The Court held that the Plaintiff’s product was known in India,
that the Plaintiff’s predecessor in interest had intention of directly
exploiting the Indian market and had applied for permission to
manufacture in India since 1993. The Defendant therein was
manufacturing the Blender’s Pride whisky only for a few months
SQ Pathan 57/74
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during 1993-1994 and thereafter stopped its manufacture for as long
as 11 years, till sometime in 2005. In such facts the Delhi High Court
held that the merely being first past the post in India is not enough
and the Plaintiffs were first past the post worldwide, which is
important. The decision turned on the facts of that case.
89. The judicial pronouncements underscore that the “use” as
contemplated under Section 2(v) of Trade Marks Act, 1999 is to be
understood as “use” within the territory of India and not use abroad.
The documents of Grupo Bimbo may well establish its prior use
abroad but in so far as India is concerned, there is no prior user or
spill-over of its reputation and goodwill in the year 1979. The issue of
prior user is answered in favour of Bristol Bakery.
90. The discussion above and the finding that there was no prior
user and spill over of Grupo Bimbo’s reputation and goodwill in India
will answer the case of passing off claimed by Grupo Bimbo. Grupo
Bimbo claims that for purpose of passing off, apart from trans-border
reputation, it has reputation and goodwill by virtue of direct use and
sales in India since the year 2017. The relevant date for assessing
goodwill in an action for passing off is the date on which the
Defendant commences use of the mark. Grupo Bimbo must
demonstrate actionable goodwill and reputation in India when Bristol
Bakery commenced the use of its mark in the year 1979/1980, at
SQ Pathan 58/74
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which time, Grupo Bimbo had no actionable goodwill and reputation
in India. [(See Sun Pharmaceutical Industries Ltd. vs Emcure
Pharmaceuticals Ltd. (supra), Ramnish Verma & Anr vs The Haddad
Apparel Group Ltd & Ors (supra)]. The global sales turnover of Grupo
Bimbo for the years from 1978 onwards does not result in actionable
goodwill and reputation in India in the absence of its percolation in
India in the year 1979. Goodwill, as held, is the subject of a proprietary
right, incapable of subsisting by itself, having no independent
existence apart from the business to which it is attached. Admittedly
the actual sales in India by affixing the trade mark “Bimbo” by Grupo
Bimbo commenced in the year 2019.
91. The essence of passing off is that no trader should be allowed
to unjustly enrich itself at the cost of another’s goodwill and
reputation and, if there is no trans-border goodwill and reputation,
which is shown to have permeated into India, the foundation of
passing off is eroded. In the absence of such spill-over of the Grupo
Bimbo’s goodwill and reputation in India, there is no prima facie case
of passing off made out by Grupo Bimbo. An action for passing off
requires actionable goodwill and reputation at the relevant date,
misrepresentation and damage to be established conjunctively. In the
absence of actionable goodwill and reputation on the date on which
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Bristol Bakery commenced using the mark, there is no occasion to
consider misrepresentation and damage.
92. Grupo Bimbo alleges dishonesty in adoption by the trade mark
“Bimbo” claiming that the explanation for adoption is an afterthought
and did not find place in the opposition proceedings. In the case of
Jolen Inc. v. Doctor Company (supra), the Delhi High Court considered
the justification given by the Defendants therein for the adoption of
the trade mark Jolen as unbelievable. It further held that to expect a
foreign trading company of repute to copy a trade mark from a small-
time trader is mind-boggling and hard to ram down the throat. Bristol
Bakery has adopted the mark in the year 1979 and, being a prior
adopter at a time when Grupo Bimbo had no presence in the Indian
market, Bristol Bakery is not required to explain the adoption.
93. I am also not inclined to accept that in view of the contents of
the communication dated 4th January, 2010, that Aspi Irani in his stint
in Australia has been bestowed an award indicates that he was well-
travelled and aware of Grupo Bimbo’s reputation and goodwill. The
contention is too far-stretched to be accepted. The communication of
4th January, 2010 solicits purchase orders and exemplifies the skill of
Aspi Irani without any mention as to the period of his travel to
Australia. The trade mark has been adopted and registered in the year
1979. It is difficult to digest that in the year 1979, with an intent to
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ride upon Grupo Bimbo’s international reputation and goodwill,
Bristol Bakery adopted the mark or that it anticipated that in future,
Grupo Bimbo would enter the Indian market.
94. Grupo Bimbo also alleges misuse of the Grupo Bimbo’s cartoon
device, as some of the documents describe Bristol Bakery’s mark as
“Bimboo Bunny”, and “bunny” according to Mr. Lall is closer to Grupo
Bimbo’s cartoon device. The documents carrying the description of
Bimboo Bunny are tax invoices raised by printers of plastic bags for
Bristol Bakery. The manner of description by third parties of Bristol
Bakery’s trade mark cannot support a claim of dishonest adoption by
Bristol Bakery. The adoption of Super Bread as copying of Grupo
Bimbo’s Super Pan cannot be held against Bristol Bakery as the words
are descriptive and the reason for the disclaimer issued by trade mark
registry while granting registration of Bristol Bakery’s trade mark. The
use of the word “BIMBO” by Bristol Bakery, when compared with
Grupo Bimbo’s word mark of “BIMBO” does not show copying of the
stylisation as alleged. Both marks being identical when depicted in
capital letters would be depicted in the same manner. Similarly, the
misrepresentation alleged on the ground of use of the words “under
licence from Bimbo” is unacceptable as Grupo Bimbo and Bristol
Bakery’s trade mark is “Bimbo”. The words are not “under licence from
Grupo Bimbo”, which could have been viewed as misrepresentation to
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the consumer by Bristol Bakery, that its product is marketed as that of
Grupo Bimbo. This discussion is despite the fact that, in the absence
of any goodwill or reputation being shown by Grupo Bimbo at the
relevant time when Bristol Bakery adopted the mark in the year 1979,
there is no further need to examine the aspect of misrepresentation.
95. Dealing now with Bristol Bakery’s claim of passing off against
Grupo Bimbo, Bristol Bakery claims that Grupo Bimbo commenced the
use of the trade mark in the year 2019. In its plaint, Grupo Bimbo has
pleaded that in or around mid-2017, Grupo Bimbo entered into a joint
venture with Ready Roti India Ltd and in the year 2019, Grupo Bimbo’s
trade mark was affixed on the packaging of products sold under the
trade mark “Harvest Gold”. By its own admission, Grupo Bimbo
entered the Indian market using the trade mark Bimbo in the year
2019, which would be the relevant date for purpose of passing off.
96. In paragraph 9 of its plaint, Bristol Bakery has set out its sales
turnover from the year 1994-1995 till 2021-2022 and, insofar as the
period 2019-2020 is concerned, the sales are claimed to be of Rs.
16,40,68,046/-. Apart from the bare pleading in the plaint, there is no
document on record to substantiate the sales turnover.
97. In Brihman Karan Sugar Syndicate Pvt. Ltd. vs. Yashwantrao
Mohite (supra), the Hon’ble Apex Court has held that, for establishing
goodwill of a product, it was necessary for the Appellant to prove not
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only the figures of sales of the product but also the expenditure
incurred on promotional and advertisement of the product. While
deciding an application for temporary injunction in a suit for a passing
off action, in a given case, the statement of accounts signed by the
Chartered Accountant of the Plaintiff indicating the expenses incurred
on advertisement and promotion and the figures of sales may
constitute material which can be considered for examining whether a
prima facie case was made out by the Appellant/Plaintiff.
98. The Hon’ble Apex Court has held that it is not essential for the
Plaintiff to prove long user to establish reputation in a passing off
action. It would depend upon the volume of sales and extent of
advertisement. The decision lays emphasis on the volume of sale and
the extent of advertisement as a relevant consideration and Bristol
Bakery was, therefore, required to prima facie prove the sales
turnover and also the expenditure incurred on promotion and
advertisement of the product for establishing goodwill.
99. This decision is sought to be distinguished by Mr. Kadam by
pointing out that the issue before the Hon’ble Apex Court as regards
the proof of volume of sales and extent of advertisement was after
trial and, in that case, at the time of final hearing of the Suit, the
figures were not proved. The observations of the Hon’ble Apex Court
assume significance, as it is specifically held that a statement of
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accounts signed by a Chartered Accountant may constitute material
for establishing a prima facie case of goodwill of the product.
100. It cannot be disputed that goodwill is associated with a business
and the sales turnover is an indicator of the goodwill achieved by the
party. It may not be necessary to have a comparative assessment of
the sales turnover of the rival products, however, the sales turnover
cannot be accepted merely on bald assertion in the plaint
unsupported by a Chartered Accountant’s certificate. Bristol Bakery
claims a sales turnover of about Rs. 16 crores for the relevant period
and its accounts would have been audited. There are no audit reports,
promotional material, or advertisement expenses produced on record
to demonstrate goodwill and reputation.
101. The market situation which prevailed in 1980/1990 changed
considerably with the advent of foreign brands in Indian markets
leading to greater emphasis on advertisement and promotions to
sustain a foothold in the relevant segment. The goodwill and
reputation came to be intrinsically linked with the volume of sales and
advertisement and promotional material. The goodwill and reputation
must be shown to exist as such that the relevant consumer base
associates the mark Bimbo with Bristol Bakery and no other. It is only
when such association is formed in the minds of end users that a case
for passing off would be made out by use of identical trade mark by
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other party. The material produced by Bristol Bakery is insufficient to
come to such a prima facie finding of association of trade mark BIMBO
with Bristol Bakery. Pertinently, in Toyota Jidosha Kabushiki Kaisha
vs. Prius Auto Industries Ltd. (supra), the Hon’ble Apex Court has
considered that a limited sale of the product and the absence of
advertisement would show lack of goodwill.
102. The unsubstantiated sales figure, the negligible advertisement
and promotional material damages Bristol Bakery’s claim of goodwill
and reputation at the relevant date to sustain an action for passing
off. As there is no goodwill and reputation demonstrated, the other
consideration of misrepresentation and damage does not arise for
consideration.
103. There is yet another reason for declining the interim relief to
both the parties. Bristol Bakery, in its Suit, has referred to the notice
of opposition dated 11th February 2010 filed by Grupo Bimbo against
the registration of Bristol Bakery’s second label mark. Bristol Bakery’s
claim is that in the fourth week of March 2023, Bristol Bakery learnt
that Grupo Bimbo was likely to launch the impugned goods bearing
the impugned trade mark in India. The notice of opposition, which was
filed in the year 2010, repeats and reiterates about the registration of
the trade mark “Bimbo” by Grupo Bimbo in India and its reputation
and goodwill which had percolated in India. The notice of opposition
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also claims that Bristol Bakery’s trade mark is confusingly and
deceptively similar to Grupo Bimbo’s registered trade mark “Bimbo”.
In the counter by Bristol Bakery, it is claimed that Bristol Bakery has
been using the trade mark “Bimbo” since the year 1979 and that it was
not aware of the existence of Grupo Bimbo’s products, as Bristol
Bakery has not come across any of Grupo Bimbo’s products in India
and they have not come across any advertisement in print/electronic
media relating to Grupo Bimbo’s products. In the evidence in support
of the opposition, Grupo Bimbo as well as Bristol Bakery have
reiterated the stands taken in the notice of opposition and counter-
opposition.
104. It is prima facie evident that both parties were aware of each
other’s registrations. No steps were, however, taken by either of the
parties to initiate any proceedings till the present Suit came to be
instituted by Bristol Bakery on 17 th May 2023 and thereafter by Grupo
Bimbo on 1st September 2023. There is also a reference to
negotiations between the parties during the period 2020-2022, which
subsequently failed in the year 2022. Even accepting that the 2017
acquisition of Ready Roti by Grupo Bimbo was not to the knowledge
of Bristol Bakery, considering that the notice of opposition reiterates
Grupo Bimbo’s registration and presence in India, it cannot be
accepted that Bristol Bakery was unaware of the Grupo Bimbo’s
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existence per se. The negotiations in the year 2020 indicate awareness
about launch of the product in the year 2019 as there can be no other
reason to commence negotiations.
105. No steps were taken by Bristol Bakery for filing a rectification
application after learning about Grupo Bimbo’s registration in the year
2010 by way of opposition proceedings. It was not awareness of the
registrations but the fact that Grupo Bimbo opposed Bristol Bakery’s
registration of the second label mark, which should have set the alarm
bells ringing for Bristol Bakery as the opposition indicated an obvious
intent to enter the Indian market. Bristol Bakery waited not only for
Grupo Bimbo to enter the Indian market but also waited for four years
thereafter, which is nothing but acquiescence.
106. Grupo Bimbo, on the other hand, in view of the opposition
proceedings was well aware of Bristol Bakery’s registration and with
little efforts could have learnt about the use of the mark in the
market. Grupo Bimbo does not say that till the filing of its suit, they
were not aware of Bristol Bakery’s use of the mark and their case is
that before 1993, there was no use of the mark by Bristol Bakery.
107. In the case of Power Control Appliances and Others vs. Sumeet
Machines Private Limited (supra), the Hon’ble Apex Court has held as
under:
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“26. Acquiescence is sitting by, when another is invading the
rights and spending money on it. It is a course of conduct
inconsistent with a claim for exclusive rights in a trade mark,
trade name, etc. It implies positive acts: not merely silence or
inaction such as is involved in laches. In Harcourt v. White, Sir
John Romilly said: ‘It is important to distinguish mere
negligence and acquiescence.’ Therefore, acquiescence is one
facet of delay. If the Plaintiff stood by knowingly and let the
Defendants build up an important trade until it had become
necessary to crush it, then the Plaintiffs would be stopped by
their acquiescence. If the acquiescence in infringement
amounts to consent, it will be a complete defence, as was laid
down in Mouson (J.G.) & Co. v. Boehmann. The acquiescence
must be such as to lead to the inference of a licence sufficient
to create a new right in the Defendant, as was laid down in
Rodgers v. Novwill.”
“28. ………. Delay simpliciter may be no defence to a suit for
infringement of a trade mark, but the decisions to which I have
referred to clearly indicate that where a trader allows a rival
trader to expend money over a considerable period in the
building up a business with the aid of a mark similar to his own,
he will not be allowed to stop his rival’s business. …….”.
108. Delay simpliciter may not be a defence in a suit for infringement
of trade mark. However, in the present case, it is very clear from the
material placed on record that both parties were aware of the
registration of each other’s marks. Grupo Bimbo and Bristol Bakery
have allowed each other to build up their businesses with the
assistance of a trade mark, which both parties agree are
identical/deceptively similar to each other’s trade marks.
109. Even if accepting that, in the year 2010, when the notice of
opposition was filed, Bristol Bakery was under the impression that the
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mark had merely been registered without any intention of Grupo
Bimbo to enter into the market, it cannot be denied that, in the year
2017, there was an acquisition of MODERN BREAD by Grupo Bimbo.
The acquisition is a strong indicator of Grupo Bimbo entering into
Indian market and, despite thereof, Bristol Bakery chose to sit back for
almost six years before filing of the present suit. Being in the same
market segment, Bristol Bakery cannot claim that it was unaware of
the acquisitions of Grupo Bimbo since the year 2017. The case of both
the parties would, therefore, be impacted by acquiescence on each
other’s part, denying them the relief of an interim injunction.
110. Mr. Lall would seek decree of its suit, as no written statement
has been filed by Bristol Bakery till date. In M/s. SCG Contracts India
Pvt. Ltd. vs. K.S. Chamankar Infrastructure Pvt. Ltd. & Ors. (supra),
the consequence of non-filing of a written statement or forfeiture of
right to file written statement has been reiterated. In the present
case, Bristol Bakery has disputed the valid service of writ of summons
to contend that the timeline of 120 days has not yet commenced.
Apart from the fact that Grupo Bimbo will still have to prove its case,
at this stage, it is not possible to conduct a mini-trial in order to
ascertain whether the writ of summons has been duly served in order
to decree the suit filed by Grupo Bimbo.
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111. In the case of Wockhardt Limited vs. Eden Healthcare Private
Limited (supra), the learned Single Judge of this Court was
considering an issue of infringement, where the rival marks were
identical, i.e., SPASGAN. In that case, the Plaintiffs had applied for
registration of the mark on 22nd April 1996, claiming user since 1st
January 1991, and the Defendant claimed user since 1998. This Court
considered the provisions of Section 23 of the Trade Marks Act, to
hold that the statutory rights of the registered proprietor relate back
to the date of application for registration, then the adverse common
law claim to the statutory right of the registered proprietor, by
alleging use of a mark prior to the registered proprietor but
subsequent to the date of application for registration by the
registered proprietor, would render the provisions of Section 23
meaningless. This decision would assist the case of Bristol Bakery,
which has secured registration of its trade mark Bimbo in the year
1979 and, therefore, would be entitled to statutory protection of its
trade mark against infringement. Mr. Kadam has, in view of the
subsequent registration, confined his relief only in respect of passing
off. Grupo Bimbo’s registration in India is of the year 1993, which is
subsequent to the registration secured by Bristol Bakery.
112. The decision in the case of Commissioner of Income Tax v. E.
Kathawala and Company (supra) was pressed into service in support
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of the submission that the death of a partner dissolves the
partnership firm, in order to substantiate the arguments about the
proprietary right of Bristol Bakery to the trade mark Bimbo. In light of
the discussion above, as regards the prima facie validity of the
registration, the decision does not assist the case of Grupo Bimbo.
113. In the case of The Trustees of Princeton University v. The
Vagdevi Educational Society and Others (supra), the Delhi High Court
held that the provisions of Section 2(2)(c)(ii) of the Trade Marks Act do
not stipulate that the use of the mark is to be by the proprietor alone,
and that the use of the mark is defined as use thereof to make a
statement about the availability, provision, or performance of such
services in relation to which the mark is used. As Grupo Bimbo has
failed to prima facie prove the spill-over of its reputation in India, the
decision has no application.
114. In the case of Grasim Industries Limited and Another v. Saboo
Tor Private Limited and Others (supra), this Court held that the
relevant date for deciding the reputation and goodwill that existed, is
the date of use by Defendant No. 1 therein of its trade mark. This
Court followed the well-settled principles and, in the facts of that
case, held that no prima facie case for infringement or passing off was
made out, as Defendant No. 1 therein was the registered proprietor
of the trade mark since the year 2008 and there was sufficient
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promotional material placed on record to demonstrate the active
advertising carried out since the year 2016. In those facts, this Court
held that it was difficult to accept that the Plaintiffs were unaware of
the use of the registered trade mark by the Defendant No. 1. The
decision turned on the facts of the said case. In the present case,
based on the material placed on record, this Court has held that Grupo
Bimbo’s reputation had not percolated into India at the relevant time
of adoption of the trade mark by Bristol Bakery.
115. In The Supreme Industries Limited v. Moorthi Rabeha (supra),
there was material produced on record to demonstrate the goodwill
and reputation and there was no justification by the Defendant as to
how it adopted a mark which was deceptively similar to the Plaintiff’s
registered trade mark, which had been filed on 24th November 2021
on a proposed-to-be-used basis. The findings in that case were based
on the material that had been produced on record. In the present
case, the relevant date is the year 1979, and Grupo Bimbo had no
presence in India whatsoever.
116. In the case of Laxmikant V. Patel v. Chetanbhai Shah and Anr.
(supra), the Hon’ble Apex Court held that fraud is not a necessary
element in an action for passing off and the absence of intention to
deceive is no defence. It was further held that as to how the injunction
granted by the Court would be shaped depends on the facts and
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circumstances of each case. There is no quarrel with the said
proposition.
117. The decisions which have been cited, reiterate the well-settled
principles which are required to be applied and the decision would
differ depending on the facts of each case. In the present case, Bristol
Bakery has prima facie established prior adoption and use of its mark
in the year 1979/1980. For purpose of sustaining an action for passing
off, Bristol Bakery has failed to make out a prima facie case of
goodwill and reputation, as on the relevant date when Grupo Bimbo
commenced the use of the mark in the year 2019. There are no
certified sales figures, no promotional material or advertisements to
sustain the claim of goodwill and reputation of such nature that
consumers identified BIMBO with Bristol Bakery.
118. Grupo Bimbo, though adopted and commenced use of its mark
in the year 1943 in Mexico, its registration in India in 1993 was
subsequent to Bristol Bakery’s registration. Grupo Bimbo has prima
facie failed to prove spill-over of its worldwide reputation and
goodwill in India on the date of use of the mark by Bristol Bakery and
is not entitled to interim injunction for passing off.
119. Insofar as the infringement action is concerned, Bristol Bakery,
at this stage, had confined its relief in respect of passing off, however,
Grupo Bimbo insisted on infringement action, which prima facie case,
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it has failed to make out, in view of the prior registration secured by
Bristol Bakery and failing the test of Lupin principles. Section 34 of
Trade Marks Act, 1999 would protect the use of the trade mark by
Bristol Bakery.
120. Grupo Bimbo and Bristol Bakery have acquiesced in the use of
the mark “BIMBO” by each other by letting each other’s business grow
and after failure of negotiations have preferred the suit, which is hit
by the principle of acquiescence. The ingredient of balance of
convenience demands that neither should be restricted in use of its
trade mark and the co-existence, which has continued since such long
standing should not be disturbed at the interlocutory stage.
121. In light of the discussion above, Interim Application (L) No.
13958 of 2023 in Commercial IP Suit No. 117 of 2025 and Interim
Application No. 5609 of 2025 in Commercial IP Suit No. 189 of 2025
stand dismissed.
[SHARMILA DESHMUKH, J.]
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