The Bombay High Court granted perpetual injunctions in favour of the Plaintiff, Bunge India Pvt. Ltd. restraining the Defendants from infringing the Plaintiff’s registered LOTUS trademarks, passing off their products, using the trade name “Lotus Refineries,” and operating the domain name www.lotusrefineries.com.
The Plaintiff acquired the LOTUS trademarks from Hindustan Lever Ltd. through a deed of assignment dated 28th August 2003. These marks, registered since 14 November 1947, cover hydrogenated vegetable oils, vanaspati, and liquid edible oils (excluding gingelly oil) in Class 29, and remain valid until 2034. The Plaintiff demonstrated continuous use since 1947.
In April 2012, the Plaintiff discovered the Defendants’ hoardings promoting soyabean, olive, sunflower, and mustard oils under identical LOTUS marks and devices. The Defendants filed registration applications (Nos. 2260870, 2267513, 2335608) claiming user from 30th April 2010, which the Plaintiff contested as false. The Plaintiff issued caution notices in major newspapers and confirmed no market presence of the Defendants’ products in key cities.
The Plaintiff filed a suit seeking perpetual injunctions under Sections 28, 29(2)(c), and 34 of the Trade Marks Act, 1999. Specifically, the suit prayed for restraints against the Defendants’ use of identical LOTUS marks, the trade name “Lotus Refineries,” and the domain in relation to edible vegetable oils, hydrogenated oils, and fats.
The Defendants advanced no substantive defence or evidence.
The Bench comprising Justice Arif S. Doctor accepted the Plaintiff’s case as unrebutted, holding that the Defendants’ failure to contest confirmed dishonest adoption and inability to substantiate prior use. The Court held that the Defendants’ marks were visually and phonetically similar to the LOTUS marks for the same goods in Class 29. This squarely attracted Section 29(2)(c), entitling the Plaintiff to exclusive rights under Section 28.
The Defendants failed to prove prior use, and their claimed 2010 user post-dated the Plaintiff’s 1947 priority, rendering it indefensible under Section 34. Passing off was established through the Plaintiff’s longstanding goodwill, evidenced by invoices and sales figures, coupled with the Defendants’ deliberate imitation likely to deceive consumers.
The Court issued perpetual injunctions restraining the Defendants, their servants, agents, and distributors from manufacturing, exporting, selling, distributing, or advertising Class 29 goods under LOTUS or deceptively similar marks; using “Lotus Refineries” or similar trade/corporate names; or operating www.lotusrefineries.com or similar domains. The Defendants received a mandatory injunction to procure cancellation of the domain forthwith. The Plaintiff was permitted to apply for return of original documents. The Court also awarded compensatory costs of Rs. 5 lakhs payable by each of the Defendants to the Plaintiff within a period of eight weeks.
Appearances:
For the Plaintiff: Ms. Rashmi Thakur-Iyer i/b. M/s. J.G.B. & Daruwalla
