The Bombay High Court has refused to grant interim injunctions to either Bristol Bakery or Mexican bakery giant Grupo Bimbo in their cross suits over the use of the trademark “BIMBO”, holding that both parties had, over the years, knowingly allowed the other to build its business under the identical mark and were therefore disentitled to interim relief on the ground of acquiescence.
Justice Sharmila U. Deshmukh was dealing with cross commercial IP suits filed by Bristol Bakery and Grupo Bimbo, each alleging infringement and passing off in respect of the trademark ‘BIMBO’ used for bakery products. While Bristol Bakery claimed continuous use of the mark in India since 1979, Grupo Bimbo asserted that it had adopted the mark in Mexico in 1943, possessed registrations in over 70 countries, and enjoyed trans-border reputation before entering the Indian market through acquisitions and joint ventures.
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The Court first held that Grupo Bimbo was not entitled to an interim injunction for infringement. Since both parties held valid trademark registrations in India, and Bristol Bakery’s 1979 registration was not shown to be ex facie illegal, fraudulent, or shocking to the conscience of the Court, Grupo Bimbo could not restrain another registered proprietor at the interlocutory stage. The challenge to Bristol Bakery’s registration did not satisfy the narrow exception carved out in Lupin Ltd. v. Johnson & Johnson, [2015(1) Mh.L.J. 501).
On the issue of passing off, the Court observed that actionable goodwill must exist in India at the time the defendant adopts the mark. Although Grupo Bimbo had demonstrated extensive international use of ‘BIMBO’, it failed to establish that its goodwill or reputation had spilled over into India when Bristol Bakery adopted and registered the mark in 1979. The Court emphasised that trademark ‘use’ under Indian law means use within India, and mere foreign reputation or worldwide registrations are insufficient absent evidence of goodwill among Indian consumers.
The Court further rejected Grupo Bimbo’s allegation that Bristol Bakery had dishonestly copied its mark. It found it implausible that in 1979 Bristol Bakery could have anticipated Grupo Bimbo’s future entry into India or adopted the mark to ride upon its reputation. Allegations regarding similarities in the “Super Bread” branding, cartoon device and the words “under licence from Bimbo” were also not accepted at the prima facie stage.
However, Bristol Bakery also failed to secure interim relief in its passing-off action. The Court held that although Bristol Bakery claimed substantial sales, it had not produced sufficient contemporaneous material, such as audited accounts, Chartered Accountant-certified sales figures, or evidence of advertisement and promotional expenditure, to prima facie establish actionable goodwill at the relevant time. Bald assertions of turnover without supporting documentary evidence were held insufficient to justify an injunction.
The decisive factor, according to the Court, was acquiescence by both parties. It noted that both Bristol Bakery and Grupo Bimbo had been aware of each other’s registrations since at least the 2010 opposition proceedings. Bristol Bakery took no action despite learning of Grupo Bimbo’s registrations and later acquisitions in India, while Grupo Bimbo also allowed Bristol Bakery to continue using the mark for years before instituting proceedings. The Court observed that each had permitted the other to build substantial businesses under the identical mark and therefore neither deserved the discretionary relief of an interim injunction.
Consequently, the High Court declined interim relief to both parties, leaving their rival claims of infringement, passing off, prior user, and validity of registrations to be determined at trial.
