Bristol Bakery claimed that it had adopted and used the mark BIMBO in India for bread and bakery products since 1979. It also had a registered device mark containing BIMBO from 1979. Grupo Bimbo, a Mexican company, claimed that it had adopted BIMBO abroad in 1943, obtained its first registration in Mexico in 1944, and later secured registrations in several countries, including India from 1993.<\/p>\n
The dispute reached court through cross suits. Bristol Bakery filed a suit in 2023 after learning of Grupo Bimbo's proposed and actual use of BIMBO in India. Grupo Bimbo later filed its own suit and claimed infringement and passing off based on its global reputation, Indian registrations, and use through business expansion in India.<\/p>\n
Both parties sought interim injunctions against each other. Bristol Bakery relied on prior Indian adoption, registration and use. Grupo Bimbo relied on prior global adoption, international reputation, Indian registrations and alleged dishonest adoption by Bristol Bakery.<\/p>\n
Bristol Bakery argued as follows:<\/p>\n
Grupo Bimbo argued as follows:<\/p>\n
The Court first considered the statutory position. Since both parties had registrations, and both marks contained BIMBO as the prominent feature, the Court treated the real contest at the interim stage as a passing off dispute, though it also addressed Grupo Bimbo's infringement claim. The Court said that where two persons are registered proprietors of identical or similar marks, one registered proprietor cannot ordinarily claim infringement against the other merely on the strength of registration.<\/p>\n
The Court then considered Grupo Bimbo's challenge to Bristol Bakery's registration. According to the Court, a registered trademark carries a presumption of validity, and at the interlocutory stage a court can disregard registration only in exceptional cases, where the registration is ex facie illegal, fraudulent, or shocks the conscience of the Court. Grupo Bimbo's case did not meet that high threshold. Its allegation of worldwide reputation, especially reputation in America and Latin America in 1970, did not show that Bristol Bakery's 1979 Indian registration was fraudulent.<\/p>\n
On prior use, the Court accepted that Bristol Bakery had placed sufficient material to show use from 1979 and 1980. The Court noted that the product was bread, an average priced daily use commodity, and that in the 1980s and 1990s extensive advertisements could not be expected in the same way as in later competitive markets. On that basis, the Court answered the issue of prior Indian use in favour of Bristol Bakery.<\/p>\n
Grupo Bimbo's case based on trans border reputation failed. The Court applied the territoriality principle and stated that reputation abroad, without proof of spill over into India at the relevant time, was not enough. Grupo Bimbo had to show presence through its mark in India before Bristol Bakery's adoption in 1979. The Court found that its websites, social media pages, foreign advertisements and international registrations did not show such spill over. The Court also noted that internet exposure in India in 1979 would have been negligible.<\/p>\n
However, Bristol Bakery also failed on its own passing off claim at the interim stage. The relevant date for Bristol Bakery's passing off case was 2019, when Grupo Bimbo used BIMBO on products in India. The Court found that Bristol Bakery had pleaded sales figures, but had not supported them with a Chartered Accountant's certificate, audit reports, promotional material or advertisement expenses. The Court therefore held that Bristol Bakery had not shown goodwill and reputation of such nature that consumers associated BIMBO with Bristol Bakery alone.<\/p>\n
After dealing with prior use, reputation and goodwill, the Court turned to conduct. This became decisive against both parties. The Court noted that both parties knew about each other's registrations at least from the 2010 opposition proceedings. Grupo Bimbo opposed Bristol Bakery's second label mark, and Bristol Bakery responded by asserting use since 1979 and denying knowledge of Grupo Bimbo's products in India. Both parties repeated their rival positions in evidence before the Trade Marks Registry.<\/p>\n
The Court found that neither party acted promptly after becoming aware of the other's position. Bristol Bakery did not file rectification proceedings after learning of Grupo Bimbo's registrations in 2010. It also waited despite Grupo Bimbo's 2017 acquisition of Modern Bread and its 2019 use of BIMBO on products in India. Grupo Bimbo, on the other hand, knew of Bristol Bakery's registration and use from the opposition proceedings and still entered the Indian market.<\/p>\n
The Court relied on the principle that acquiescence is not mere silence or delay. It involves conduct inconsistent with an exclusive claim, especially where one party knowingly allows another to build business around a mark. The Court held that both parties allowed each other to build business with the assistance of a mark that both claimed to be identical or deceptively similar. This mutual acquiescence weighed against interim injunctions.<\/p>\n
The Court finally held that the balance of convenience required that neither party should be restrained at the interlocutory stage. The parties had coexisted for a long period, and that coexistence should not be disturbed before trial.<\/p>\n
The findings of the Court are as follows:<\/p>\n
Bristol Bakery, in its Suit, has referred to the notice of opposition dated 11th February 2010 filed by Grupo Bimbo against the registration of Bristol Bakery's second label mark. Bristol Bakery's claim is that in the fourth week of March 2023, Bristol Bakery learnt that Grupo Bimbo was likely to launch the impugned goods bearing the impugned trade mark in India. The notice of opposition, which was filed in the year 2010, repeats and reiterates about the registration of the trade mark "Bimbo" by Grupo Bimbo in India and its reputation and goodwill which had percolated in India.<\/p>\n
No steps were taken by Bristol Bakery for filing a rectification application after learning about Grupo Bimbo's registration in the year 2010 by way of opposition proceedings. It was not awareness of the registrations but the fact that Grupo Bimbo opposed Bristol Bakery's registration of the second label mark, which should have set the alarm bells ringing for Bristol Bakery as the opposition indicated an obvious intent to enter the Indian market. Bristol Bakery waited not only for Grupo Bimbo to enter the Indian market but also waited for four years thereafter, which is nothing but acquiescence.<\/p>\n
Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with a claim for exclusive rights in a trade mark, trade name, etc. It implies positive acts: not merely silence or inaction such as is involved in laches.<\/p>\n
Delay simpliciter may not be a defence in a suit for infringement of trade mark. However, in the present case, it is very clear from the material placed on record that both parties were aware of the registration of each other's marks. Grupo Bimbo and Bristol Bakery have allowed each other to build up their businesses with the assistance of a trade mark, which both parties agree are identical\/deceptively similar to each other's trade marks.<\/p>\n
The case of both the parties would, therefore, be impacted by acquiescence on each other's part, denying them the relief of an interim injunction.<\/p>\n
Grupo Bimbo and Bristol Bakery have acquiesced in the use of the mark "BIMBO" by each other by letting each other's business grow and after failure of negotiations have preferred the suit, which is hit by the principle of acquiescence. The ingredient of balance of convenience demands that neither should be restricted in use of its trade mark and the co-existence, which has continued since such long standing should not be disturbed at the interlocutory stage.<\/p>\n