Prior Indian Registration and Use Prevail Over Global Reputation Absent Proof of Territorial Goodwill Spillover

Bristol Bakery, an Indian partnership firm, filed a suit claiming use of the trademark "Bimbo" for bakery products in India since 1979, backed by a registration secured on March 6, 1979

Grupo Bimbo, a Mexican multinational, claimed adoption of the "Bimbo" mark in 1943 with registrations in over 70 countries

Grupo Bimbo secured an Indian registration in 1993 but only commenced actual sales of Bimbo-branded products in India in 2019 following acquisitions of local brands like Harvest Gold and Modern Food

Both parties filed cross-suits for trademark infringement and passing off, seeking interim injunctions against each other

Bristol Bakery alleged they only discovered Grupo Bimbo’s market presence in 2023, while Grupo Bimbo alleged Bristol Bakery’s adoption was fraudulent and a "ride" on their global reputation

1. Whether Grupo Bimbo is entitled to an interim injunction for trademark infringement against Bristol Bakery, a prior registered proprietor

2. Whether the "trans-border reputation" of Grupo Bimbo had permeated India in 1979 to defeat Bristol Bakery’s claim of prior user in a passing off action

3. Whether Bristol Bakery established sufficient actionable goodwill and reputation in 2019 to maintain a passing off action against Grupo Bimbo

4. Whether the parties are barred from seeking interim relief due to the principle of acquiescence

The court applied Section 28(3) and 30(2)(e) of the Trade Marks Act, 1999, which stipulate that one registered proprietor cannot sue another for trademark infringement

It followed the "Lupin" principle (Lupin Ltd. v. Johnson & Johnson), holding that a court can only question the validity of a registration at the interlocutory stage if it is ex facie illegal, fraudulent, or shocks the conscience

Regarding passing off, the court applied the "territoriality principle" from Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., mandating that reputation must be established within the specific jurisdiction (India) at the time the defendant commenced use

It further relied on Power Control Appliances v. Sumeet Machines regarding the doctrine of acquiescence where a party stays silent while a rival builds a business

The court found that because both parties held valid registrations, the action for infringement was statutorily barred under Section 28(3); specifically, Grupo Bimbo failed to meet the high "Lupin" threshold to prove Bristol Bakery's 1979 registration was ex facie fraudulent

On passing off, the court rejected Grupo Bimbo’s claim of trans-border reputation, noting that in 1979, internet exposure was negligible and there was no evidence of advertisements or sales targeted at Indian consumers

Conversely, the court found Bristol Bakery failed to prove "actionable goodwill" in 2019 because they provided no audited sales figures or promotional expenses to show that the Indian public associated the mark "Bimbo" exclusively with them at the time Grupo Bimbo entered the market

Finally, the court observed that both parties had been aware of each other’s registrations since at least 2010 (through opposition proceedings) and had engaged in failed negotiations from 2020 to 2022 without seeking local judicial intervention, thus constituting acquiescence

It held Grupo Bimbo failed to prove trans-border reputation in India at the relevant date (1979) and could not sue for infringement against a prior registered proprietor

Both Interim Applications were dismissed; the balance of convenience favored maintaining the status quo until trial