The issue of the maintainability of an infringement suit based solely on the
filing of a trademark application by the defendant is a nuanced legal question.
This article delves into the matter, drawing insights from a case before the
Bombay High Court involving the trademark 'BOROPLAST.'
Facts of the Case:
The plaintiff, having used the trademark 'BOROPLAST' since 2000 in various
categories, filed a suit against the defendant upon discovering the latter's
trademark application for 'BOROPLAST.' Notably, the defendant had not yet
introduced any vendible articles into the market under this mark.
Legal Basis for the Suit:
The crux of the plaintiff's argument rested on the maintainability of an
infringement suit when a defendant has merely applied for trademark
registration, without any tangible products in the market. Citing the precedent
of Analco (India) Pvt Ltd vs Navodya Exim Pvt Ltd, the plaintiff contended that
such a suit is indeed maintainable.
Precedent and Legal Position:
The mentioned case, decided on January 23, 2014, established a precedent
supporting the plaintiff's claim. The court in Analco held that the filing of a
trademark application itself could be sufficient grounds for maintaining an
infringement suit. This decision reflects a broad interpretation of trademark
rights, extending protection even before the actual use of the mark in commerce.
Court's Observations and Decision:
In the BOROPLAST case, the Bombay High Court granted an ex parte injunction in
favor of the plaintiff. The court found that the defendant had blatantly
imitated the 'BOROPLAST' trademark by applying for an identical mark, thereby
infringing on the plaintiff's registered trademark. This decision underscores
the court's willingness to afford protection based on the mere filing of a
The concluding Note:
The maintainability of an infringement suit based on a defendant's trademark
application, even in the absence of actual market presence, is a legal terrain
where precedent plays a pivotal role. The BOROPLAST case, aligning with Analco,
highlights a proactiveness by the judiciary in safeguarding trademark rights.
This legal stance serves to deter potential infringers and underscores the
importance of early intervention to protect intellectual property.
The Case Law Discussed:
Case Title: Aditya Borkar Vs Sachin Ganesh
Date of Judgement/Order:28/11/2023
Case No. COM IPR SUIT (L) NO.31504 OF 2023
Neutral Citation No:2023:Mad:5222
Name of Hon'ble Court: Bombay High Court
Name of Hon'ble Judge: R.I.Chagla, HJ
Ideas, thoughts, views, informations, discussions and interpretation expressed
herein are being shared in the public Interest. Readers' discretion is advised
as these are subject to my subjectivity and may contain human errors in
perception, interpretation and presentation of the fact and issue involved
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539