The Hon’ble Bombay High Court vide order dated 28 th November, 2023 in Aditya Borkar Trading as Borkar Polymers v. Sachin Ganesh Dilliwala Trading as Shri Laxmi Trading Company [I.A. (L) No. 31827 of 2023 in COMIP (L) No. 31504 of 2023] has restrained the Defendant from using the impugned trade mark Logo only basis its trade mark application for the same.

Table of comparison of rival marks

Plaintiff’s MarkDefendant’s Mark
LogoLogo

Plaintiff’s contentions

• The Plaintiff is engaged in and has been carrying on a well-established business of manufacturing, marketing and selling of inter-alia non metallic rigid pipes for building, security cabins, parking booths, portable building material, pipes and fittings (“said goods”) since a long time;

• The Plaintiff has been using the trade mark ‘BOROPLAST’ since the year 2000 and in view of such continuous use, it has garnered huge reputation and goodwill amongst the public and trade members;

• The Plaintiff is the registered proprietor of the trade mark Logo bearing no. 1674960 in class 19 dated 11 th April, 2008, in respect of fiber reinforced moulded products and building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal;

• The Plaintiff, in the last week of October, 2023, came to know that the Defendant has applied for the trade mark Logo bearing no. 5591851 in class 17 in respect of ‘colamn pipe, agri and garden P.V.C (poly vinlychloride) pipes and fittings, CPVC (chlorinated polyvinly chloride) pipes and fittings, UPVC(unplasticized poly vinly chloride) piprs andfittings, upvc casing pipes.’ on 1 st September, 2022 on a proposed to be used basis;

• The Plaintiff conducted a google search, however, could not find the Defendant’s impugned goods being sold online. The Plaintiff could also not find the impugned goods of the Defendant in the market;

• The Plaintiff filed a notice of opposition dated 10 th November, 2023, to the Defendant’s application for the trade mark Logo bearing no. 5591851 in class 17, however, no reply to this, has been received by the Plaintiff till date.

• A suit for infringement of trade mark is maintainable if an application for registration of trademark has been made by the Defendant. [Reliance is placed on order dated 23 rd January, 2014 in Analco (India) Pvt Ltd vs Navodya Exim Pvt Ltd (CS (OS) No.1764/2009)]; and

• In view thereof, the Plaintiff has sought ex-parte ad-interim reliefs against the Defendant in terms of prayer clause (a) to the Interim Application (L) No. 31827 of 2023, which is for infringement of trade mark.

Observations

Prima facie, the Defendant has blatantly imitated the trade mark ‘BOROPLAST’ of the Plaintiff by using/applying for identical mark ‘BOROPLAST’ and has infringed the registered trade mark ‘BOROPLAST’ of the Plaintiff;