Facts: Grasim Industries Limited vs Saboo Tor Private Limited – Trademark Dispute Over ‘Birla’
This case concerned a dispute over the use of the trademark “BIRLA”. The plaintiffs, Grasim Industries Limited and UltraTech Cement Limited—well-known entities within the Aditya Birla Group—filed a suit alleging trademark infringement and passing off against Saboo Tor Private Limited and others.
The plaintiffs asserted that the “BIRLA” mark, and its derivatives such as “BIRLA WHITE”, had acquired immense fame and goodwill due to decades of use across different business sectors including cement, fiber, and construction materials. They claimed to be the rightful proprietors of over 112 trademark registrations incorporating the name “BIRLA”.
They discovered that the defendants had been using marks such as “BIRLA TMT” and “BIRLA E-BIKE”, registered domains like www.birlatmtsteel.com and www.birlaebike.com, and incorporated companies such as “Birla Medicare Private Limited” and “Birla Biotech Private Limited.” The plaintiffs contended that such activities amounted to infringement of their registered and well-known marks.
The defendants denied all allegations, arguing that they had valid registrations for “BIRLA” in specific classes since 2008 and had been using the trade name independently since 2004. They maintained that their products were distinct from the plaintiffs’ goods and that the plaintiffs had delayed filing despite public promotional activities.
Procedural Details
The plaintiffs filed an interim application seeking an injunction to restrain the defendants from using the “BIRLA” mark. The matter was reserved on 14 August 2025 and judgment was pronounced on 16 October 2025 via video conference.
Dr. Veerendra Tulzapurkar represented the plaintiffs, while Senior Advocate Mr. Ravi Kadam appeared for the defendants. The Court examined documentation and authorities under the Trade Marks Act, 1999, to determine whether interim injunction was warranted.
Dispute
The central issue was whether the defendants, as registered proprietors of the mark “BIRLA” under Class 6 (iron and steel), could be restrained from using the mark when the plaintiffs also claimed ownership of several “BIRLA”-based marks.
- Whether plaintiffs had adequately demonstrated prior use or association with the “Birla” family.
- Whether the defendants’ registration was fraudulent or obtained by misrepresentation.
- Whether concurrent registration under the Trade Marks Act allowed coexistence.
Reasoning and Legal Analysis
The Court observed that the plaintiffs’ case rested on their asserted exclusive association with the “Birla” family and Aditya Birla Group. It held that references to legacy without documentary proof could not establish legal exclusivity. No internal agreements, corporate resolutions, or assignment records linking Grasim and UltraTech to “Birla” trademarks were produced.
Although Grasim claimed succession to Indian Rayon’s “Birla White” mark, no documentary evidence or demerger scheme was filed. The earliest verifiable use by plaintiffs dated 2007–2008, while defendants proved “Birla TMT” use since 2008 with credible inspection certificates.
Under Sections 28(3) and 30(2)(e) of the Trade Marks Act, two or more proprietors may concurrently hold registrations for identical marks. Since both held valid registrations, one could not claim infringement against the other unless registration was invalid. The Court relied on Lupin Ltd. v. Johnson & Johnson (2014 SCC OnLine Bom 4596), which permits intervention only if registration “shocks the conscience”.
The Court noted:
- No proof of confusion or misassociation between “Birla TMT” and the plaintiffs’ products.
- “Birla” is a common surname, unlike coined marks such as “Kodak”.
- No evidence of fraudulent intent or fabricated invoices.
Passing Off
The Court referred to Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. and Pernod Ricard India Pvt. Ltd. v. Karanveer Singh Chhabra (2025 SCC OnLine SC 1701). To succeed, plaintiffs must prove:
- Goodwill
- Misrepresentation
- Likelihood of damage
Given both parties had operated independently for nearly two decades in different sectors—cement versus TMT steel—there was no likelihood of confusion. Plaintiffs’ delay of 14 years further weakened their case for urgent relief.
Dishonest Adoption
No material suggested the defendants intended to deceive or exploit goodwill. Their advertisement campaigns since 2016 under registered marks indicated bona fide commercial use.
Judgment and Decision
| Case Title | Grasim Industries Limited and Anr. v. Saboo Tor Private Limited and Ors. |
|---|---|
| Date of Judgment | 16 October 2025 |
| Case Number | Commercial IP Suit No. 422 of 2022 |
| Neutral Citation | 2025:BHC-OS:19474 |
| Court | High Court of Judicature at Bombay |
| Judge | Justice Sharmila U. Deshmukh |
The Court dismissed the interim injunction application but directed the defendants to maintain true and accurate accounts of sales under “Birla” marks until final disposal. It held that:
- Plaintiffs failed to show a prima facie case or irreparable injury.
- Both parties were registered proprietors with statutory protection.
- Fraud and bad faith allegations lacked evidence.
- An injunction would cause disproportionate hardship to defendants.
Disclaimer
The information shared here is intended to serve the public interest by offering insights and perspectives. Readers are advised to exercise discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, or presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor (Patent and Trademark Attorney), High Court of Delhi.
