Delhi High Court: A suit was filed by Bridgestone Corporation (plaintiff) seeking relief of permanent injunction restraining Merlin Rubber (defendant) from infringing the trademark of the plaintiff, along with passing off and other ancillary reliefs. Amit Bansal, J., granted permanent injunction and decree of damages of Rs. 34,41,240 in favour of the plaintiff.
The plaintiff is a company incorporated under the laws of Japan, engaged in inter-alia manufacture and sale of tyres and tubes for automobiles, materials of natural rubber, synthetic rubber, synthetic resins, machines for prevention of environment pollution, materials for public works and marine structures etc., under the trade mark and name ‘BRIDGESTONE’. The plaintiff operates websites www.bridgestone.com and www.bridgestone.co.in, providing global and India-specific information respectively, about its business and products. The plaintiff’s trademark and name ‘BRIDGESTONE’ comes from a literal translation and transposition of the founder’s surname “Ishibashi” meaning “stone bridge” in Japanese and thus has all the trappings of an invented mark.
The plaintiff has obtained registration for its ‘BRIDGESTONE’ mark in relation to ‘rubber tyres and tubes for wheels for automobiles and other vehicles’ in India and over 130 countries worldwide. The ‘BRIDGESTONE’ trademark has been recognized as a well-known/famous mark in India by the Registrar of Trade Marks. Further, the plaintiff’s mark has been recognised as a well-known mark in other jurisdictions such as Thailand, Taiwan, Hong Kong, Japan and the Philippines. In February 1996, the plaintiff incorporated Bridgestone India Private Limited, which presently operates an extensive dealership network, exceeding 3,500 dealers across India. The plaintiff has created multiple advertisements which are regularly aired on Indian television, displaying the trademark of the plaintiff along with its slogan “Your journey, our passion”. The plaintiff is also the associate sponsor of the Indian Premier League’s cricket team ‘Mumbai Indians’ through which the plaintiff has extensively advertised and promoted its ‘BRIDGESTONE’ mark.
The defendant is an entity engaged in the business of manufacturing and supplying Rubber Ring, Rubber Coupling, Pump Rubber Cap and Fire Safety Valve etc. In April 2022, while conducting a market survey, the plaintiff came across the defendant’s listing on the online trade directory of www.tradeindia.com selling butyl tubes of two-wheeler and four-wheeler vehicles under the infringing marks. Pursuant to this, the plaintiff engaged an independent Investigator to examine the infringing activities carried out by the defendant and sent a legal notice to Trade India to take down the infringing products from their website. pursuant to which, the infringing BRIMESTONE butyl tube products, were taken down. In January 2023, during a physical investigation through an independent Investigator, the plaintiff discovered that the defendant was continuing to deal in the infringing BRIMESTONE products despite its product being de-listed from ‘TradeIndia’.
The Court observed that the comparison would show that the defendant’s mark ‘BRIMESTONE’ is nearly identical to the plaintiff’s mark ‘BRIDGESTONE’. The defendant has not only imitated the plaintiff’s device but has also merely replaced ‘DG’ with ‘M’ and adopted the ‘STONE’ as is in the end. Therefore, the ‘BRIMESTONE’ mark of the defendant is structurally, visually and phonetically like the ‘BRIDGESTONE’ of the plaintiff. Further, the use of the mark ‘BRIMESTONE’ for identical goods i.e. tyres as that of the plaintiff constitutes an infringement of the plaintiff’s registered trademark ‘BRIDGESTONE’. The defendant has taken unfair advantage of the reputation and goodwill amassed by the plaintiff’s ‘BRIDGESTONE’ tyres. Therefore, the plaintiff has established a case of passing off as well.
The Court analyzed the extensive evidence presented by the plaintiff, including trademark registrations, international recognition, and previous judicial findings supporting the mark’s well-known status. It emphasized that under Sections 29 and 30 of the Trade Marks Act, the unauthorized use of an identical or deceptively similar mark constitutes infringement. The Court found that the defendant’s continued use of the “BRIDGESTONE” mark, despite legal notices, indicated malafide intent to exploit the established goodwill of the plaintiff. Since the defendant did not participate in the proceedings, the court accepted the plaintiff’s submissions and supporting evidence. The court also acknowledged the irreparable harm likely to be caused to the plaintiff’s brand reputation and consumer trust if the defendant’s infringing activities continued.
As per the report filed by the Local Commissioner, huge quantities of infringing goods were found bearing the ‘BRIMESTONE’ marks. Thus, the Court granted a permanent injunction restraining Merlin Rubber from using the “BRIDGESTONE” trademark in any form. It further awarded damages to the plaintiff and directed the defendant to deliver for destruction any infringing materials bearing the plaintiff’s trademark.
On the aspect of awarding damages, the Court noted that the defendant has wrongfully gained substantial financial benefits from the unauthorized sale of counterfeit products. Since the profit has been earned by exploiting a deceptively similar trade mark without authorization from the plaintiff, the defendant shall not be allowed to retain such unlawful gains. Given the scale and duration of the defendant’s activities, the plaintiff is entitled to a grant of compensatory damages.
The Court concluded “even though the Investigator in its report has stated that the defendant has been doing business for three years, it cannot be assumed that the volume of business of the defendant for all three years was constant. Taking a conservative view of the matter, the quantum of seizures made by the Local Commissioner, read in conjunction with the sales price given in the Investigator’s affidavit, can be extrapolated for a period of 1.5 years. Therefore, the profit figure considered by the plaintiff in their written submissions, which was for a period of three years, can be halved (1.5 years) for awarding damages. Accordingly, the plaintiff is entitled to damages amounting to Rs. 34,41,240.”
[Bridgestone Corporation v. Merlin Rubber, 2025 SCC OnLine Del 1825, decided on 25-03-2025]
Advocates who appeared in this case :
Mr. Dhruv Anand, Ms. Udita Patro, Ms. Sampurna Sanyal, Advocates for plaintiff