Delhi HC declares Boroline 'well-known trademark', restrains imitation of its 'trade dress'

The Delhi High Court has declared 'Boroline' a "well-known trademark" under the Trade Marks Act, and directed a company to change its "trade dress" so that it does not appear similar to the antiseptic cream which has become a "household name" in the country.

The court stated that the 'Boroline' trademark has immense goodwill and popularity in the market and it is recognised not only in India but also in other countries like Oman and Turkey.

The court passed the ruling on a lawsuit by G D Pharmaceuticals Pvt Ltd, which owns and sells over-the-counter antiseptic cream Boroline, against the manufacture and sale of a "deceptively similar" product called 'Borobeauty'.

The plaintiff company argued that Cento Products (India) adopted Boroline's "trade dress" i.E "distinct dark green tube ending in an octagonal black cap" for its soothing cream, which was in violation of the intellectual property law.

Restraining the manufacture and sale of 'Borobeauty' in its infringing form, the court directed the defendant to change its "trade dress" and trademark to something which is "totally distinct and different from the plaintiff's well-known trademark and "trade dress".

"The defendant is directed to change its trade dress and trademark, which shall be totally distinct and different from the plaintiff's well-known trademark and trade dress. The defendant shall not use the trade dress of dark green colour, which is used by the plaintiff. Further, the defendant shall adopt a new trade name, which would not include the prefix 'BORO' and would not be similar to the trademark of the plaintiff, 'BOROLINE'," said Justice Mini Pushkarna in the judgement passed earlier this month.

It also directed the defendant to pay a cost of Rs 2 lakh to the plaintiff.

"This court is of the view that the plaintiff's trademark qualifies as a well known trademark. There is no denying the fact that 'BOROLINE' has attained the status of a household name, and is one of the oldest trademarks, which has been in continuous use, preceding the independence of India," the judge said.

"The trademark 'BOROLINE' of the plaintiff, is declared as a well-known trademark under Section 2(1)(zg) and Section 11(2) of the Trade Marks Act, 1999. Accordingly, it is directed that the Registrar of Trademarks shall add the same to the list of well-known trademarks, upon the plaintiff completing the requisite formalities," the court ordered.

The court noted that the 'Boroline' trademark has been in extensive use for more than 90 years and the plaintiff has many trademark registrations in its favour, the first date of registration being in 1949.

"The duration of the use of the trademark 'BOROLINE', can be gauged from the document showing the advertisement of the product under the mark 'BOROLINE', as occurring in newspaper on 15th August, 1947, the day, our country attained independence," observed the court.

It also took into account the various awards given to the plaintiff over several years as well as the "considerable amounts" that was spent for advertising and promoting the products under 'Boroline' trademark'.