INTRODUCTION

In today's brand-driven economy, protecting legacy trademarks can lead to complicated legal disputes. A notable case was recently brought before the Bombay High Court: Grasim Industries Ltd. & UltraTech Cement Ltd. v. Saboo Tor Pvt. Ltd. (COM IP Suit No. 422/2022, judgment dated 16 October 2025) (Neutral Citation 2025: BHC-OS:19474).

The case focused on the word "BIRLA," which is strongly associated with the Aditya Birla Group, a major Indian conglomerate. The plaintiffs, Grasim Industries and UltraTech Cement, argued that "BIRLA" is a well-known trademark symbolizing excellence across various sectors. They claimed that any unauthorized use of the name constituted infringement and passing off.

Conversely, the defendants, led by Saboo Tor Pvt. Ltd., maintained that they had been using "BIRLA TMT" honestly since 2004. They argued that "Birla" is a common surname and even a word in Hindi meaning "rare" or "unique." They felt their registrations in various classes were legitimate and obtained without any deception.

The core of the dispute lay in the rights of competing registered proprietors under the Trade Marks Act, 1999. The plaintiffs were operating under Class 19, while the defendants were registered under Classes 6, 10, 11, and 18, covering different types of products.

Justice Sharmila U. Deshmukh’s judgment is a significant contribution to Indian trademark law. It tackled important issues such as prior use, coexistence of marks, and the limited power of courts to question registration validity at the interim stage. The ruling underlines a key principle: heritage alone doesn’t guarantee exclusive rights in a trademark. Without solid evidence of ownership and ongoing use, even famous names like "BIRLA" must prove their case under modern trademark law.

FACTS

• Plaintiffs are companies in the Aditya Birla Group, claiming exclusive rights to use "BIRLA" trademarks.
• Defendant No.1, Saboo Tor Private Limited, holds registrations for "BIRLA" marks (e.g., "BIRLA TMT") in certain classes, notably for steel and e-bikes, since 2008.
• Plaintiffs allege "BIRLA" is a well-known mark, with substantial goodwill and reputation, adopted long before Defendants.
• Defendants contend independent adoption and honest commercial use of registered "BIRLA" marks since at least 2008; Plaintiffs do not hold registrations in all relevant classes.
• Plaintiffs seek interim injunction against Defendants' use of "BIRLA" marks, alleging infringement and passing off.
• The Plaintiffs emphasize that despite Defendants' registrations, the use of the "BIRLA" name across different classes is seen as indirect competition and brand dilution, prompting this legal action.

ISSUES

• Whether Plaintiffs have established a prima facie case of trademark infringement and passing off against Defendants for use of "BIRLA" and related marks.
• Whether Plaintiffs are entitled to interim injunction in view of rival registered marks and alleged concurrent use.
• Can the presence of the "BIRLA" class registrations by both parties coexist without causing confusion among the consumer base?

ARGUMENTS

Plaintiffs

• "BIRLA" is a well-known mark, exclusively connected to Birla/Aditya Birla Group companies by arrangement.
• Defendants’ adoption and use is dishonest and likely to confuse relevant public.
• Plaintiffs are prior adopters, and no valid registration or honest use by Defendants exists from claimed dates.
• Delay/acquiescence not a defense to deliberate infringement/passing off.
• The exclusivity sought by the Plaintiffs is driven by their established use and recognition among the consumer market, distinguishing their services broadly.

Defendants

• Defendant No.1 has valid, subsisting trademark registrations; statutory right to use the marks precludes infringement action by another registered proprietor under Section 29, Trade Marks Act.
• “Birla” is a common word; Plaintiffs' trade mark rights are limited by class of goods and specific registrations.
• Plaintiffs cannot claim exclusivity to "BIRLA" per se, especially in absence of registration for the word alone across all classes.
• Sufficient evidence of honest and extensive use since 2008; Plaintiffs have been aware of, and acquiesced in, such use.
• Defendants argue the broad use within the defined classes does not infringe on the Plaintiffs' established market segment.

KEY LEGAL PROVISIONS

• Trade Marks Act, 1999: Sections 11, 12, 28, 29, 30, 31
• Section 29 (Infringement), Section 11 (Relative grounds for refusal), Section 12 (Honest concurrent use), Section 28(3) (Co-existence of registered marks)
• Common law passing off action

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DECISION / HOLDING

• Plaintiffs failed to establish prima facie case for grant of interim injunction (infringement or passing off) against Defendants’ use of registered "BIRLA" marks.
• Both Plaintiffs and Defendant No.1 are registered proprietors of respective marks containing "BIRLA"; co-existence is recognized by statute.
• Plaintiffs did not demonstrate strong or exclusive association with the "BIRLA" mark with sufficient documentary evidence or prior consistent use.
• No ex-facie illegality, fraud, or special circumstances found to justify grant of injunction or going behind Defendant No.1’s registration at interlocutory stage.
• Passing off claim also not established: no evidence of likelihood of confusion, actual deception, or damage to goodwill at relevant period of alleged concurrent use. 

REASONING

• The law recognizes multiple registered proprietors for similar/identical marks in certain circumstances (Section 12, 28(3)).
• Plaintiffs failed to substantiate exclusive right to "BIRLA" by internal arrangement or proof of well-known status covering claimed classes.
• Evidence did not support use of the "BIRLA" mark by Plaintiffs or predecessor prior to the Defendant’s registration/use (earliest documentary use by Plaintiffs in 2007-08, by Defendant in 2008).
• The threshold for going behind Defendant’s registration ("ex facie illegal", "fraud") not met as per Lupin Ltd. decision.
• Relevant consumer base (business purchasers of construction materials) unlikely to be confused; goods are bought with deliberation.
• Granting injunction at this stage would cause irreparable harm to Defendant No.1 who used the marks for 14+ years, whereas Plaintiffs delayed legal action.
• The well-defined classification system (class 6, class 12, etc.) remains a critical element supporting the Defendants’ case of coexistence.

THE NARROW WINDOW TO CHALLENGE REGISTRATIONS AT THE INTERLOCUTORY STAGE — LUPIN PRINCIPLE

·        The judgment applied the Full Bench principle in Lupin v. Johnson & Johnson: a civil court may consider invalidity of a registration at interlocutory stage only in exceptional circumstances (e.g., where the registration is so fraudulent or shocking that the court must refuse interim relief). The plaintiffs’ allegations of fraud (e.g., forged invoices supporting a pending application) concerned a pending application and late documents; the Court held this was insufficient to show the kind of egregious fraud required to go behind registration at interlocutory stage.

ORDER

• Interim Application (for injunction) dismissed.
• Defendant No.1 directed to maintain accounts of sales under the impugned trademarks until final disposal of the suit.

SIGNIFICANCE

• Reaffirms principle that registered proprietors may coexist and infringement action under Section 29 cannot be maintained against another registered proprietor absent ex facie illegality or fraud.
• Highlights the burden on plaintiff to prove exclusive prior right and distinctiveness, especially in cases involving common words and established concurrent use.
• Clarifies the high threshold for interlocutory orders that affect longstanding business activity based on registered intellectual property rights.
• This case underscores the critical importance of specific class registration in trademark law, especially where the same or similar marks are historically used in different industrial sectors.

CONCLUSION

The Bombay High Court recently made an important ruling regarding the use of the “BIRLA” mark, addressing a dispute between Grasim Industries Ltd., UltraTech Cement Ltd., and Saboo Tor Pvt. Ltd. The court denied an interim injunction to the plaintiffs, Grasim and UltraTech, highlighting that both Grasim and Saboo are registered owners of different “BIRLA”-related trademarks across various classes. Specifically, the plaintiffs' trademarks fall under Class 19, which includes cement and building materials, while the defendants' trademarks cover Classes 6, 10, 11, and 18, relating to iron, steel, and similar goods. According to Sections 28(3) and 30(2)(e) of the Trade Marks Act, one registered trademark owner cannot sue another for infringement. The plaintiffs were unable to demonstrate exclusive ownership or prior use of the mark, and their claims regarding the Birla family name lacked the necessary supporting documents. Additionally, their allegations of improper registration didn’t hold up, and the delay in their legal action further complicated their case. As a result, the court dismissed the interim application but directed the defendants to keep accounts of their sales under their marks. This decision emphasizes that in India, the registration of a trademark and proof of its use are more significant than legacy claims, allowing for the coexistence of similar registered trademarks.