Co-existence of Identical 'Bimbo' Trademarks To Continue: Bombay HC

The Bombay High Court has refused to halt the use of the identical "Bimbo" trademark by either a domestic bakery or a global Mexican giant, ruling that a decade of mutual silence and the failure to prove spillover of trans-border reputation precludes interim injunctive relief.

Justice Sharmila U. Deshmukh, sitting in the Commercial Division of the High Court of Judicature at Bombay, delivered the verdict while hearing cross-suits for trademark infringement and passing off involving the trademark "Bimbo" used for bread and bakery products.

The Court was hearing two competing interim applications. The first was filed by Bristol Bakery, a domestic firm claiming use since 1979, and the second by Grupo Bimbo, a Mexico-based multinational with global operations since the 1940s, which entered the Indian market through acquisitions and joint ventures between 2017 and 2019.

Court Observations and Directions

In dismissing both applications, the Court emphasized that both parties are registered proprietors under the Trade Marks Act, 1999. Applying the principles established in Lupin Ltd. vs. Johnson & Johnson, the Court noted that a registered trademark carries a presumption of validity under Section 31 of the Trade Marks Act, 1999 and a heavy burden lies on a party to prove that such registration was ex-facie illegal or fraudulent. The Court found that Grupo Bimbo failed to meet this high threshold to invalidate Bristol Bakery’s 1979 registration at the interlocutory stage.

The Court further analyzed the law on trans-border reputation and the territoriality principle as discussed in Toyota Jidosha Kabushiki Kaisha vs Prius Auto Industries Ltd. And Ors.. It observed that "use" under Section 2(v) of the Trade Marks Act, 1999 is understood as use within the territory of India. The Court held that Grupo Bimbo failed to prove that its global reputation had permeated the Indian market by 1979 when Bristol Bakery adopted the mark.

The Court has following directions:

"Interim Application (L) No. 13958 of 2023 in Commercial IP Suit No. 117 of 2025 and Interim Application No. 5609 of 2025 in Commercial IP Suit No. 189 of 2025 stand dismissed."

The Court, in its reasoning, observed: "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."

Background:

Bristol Bakery filed the initial suit in May 2023, claiming ownership of the "Bimbo" mark for its bakery business since 1979, derived from the phrase "Best In Maharashtra Before Others." It secured registration in Class 30 in 1979. Grupo Bimbo, established in Mexico in 1945, countered with a suit in September 2023, alleging that Bristol Bakery's adoption was dishonest given Grupo Bimbo’s global fame and its own Indian registration obtained in 1993.

Grupo Bimbo argued that its mark is a "coined word" and that it has thousands of registrations worldwide. However, Bristol Bakery contended that Grupo Bimbo did not actually place "Bimbo" branded products in the Indian market until 2019, 40 years after Bristol Bakery's adoption.

The Court noted that in 2010, Grupo Bimbo had opposed Bristol Bakery's second label application, which meant both parties were aware of each other’s registrations for over a decade. Despite this, neither party took active steps to restrain the other until 2023, following failed settlement negotiations.

The Court referred to multiple precedents including S. Syed Moideen vs. Sulochana Bai on the availability of passing off actions between registered proprietors and Brihan Karan Sugar Syndicate Pvt. Ltd. vs. Yashwantrao Mohite regarding the proof required for goodwill in such actions. The Court concluded that Bristol Bakery failed to produce audited sales and promotional figures to establish current actionable goodwill, while Grupo Bimbo failed to show territorial spillover of its reputation in the 1970s.

Key Takeaways:

Territoriality Trumps Universality

Mere global presence is insufficient to claim prior user rights in India if there is no evidence of the brand's reputation having permeated the Indian territory at the time of the domestic user's adoption.

Acquiescence Bars Interim Injunctions

When two entities knowingly allow each other’s businesses to grow for several years in this case, since the 2010 opposition proceedings they are deemed to have acquiesced, and the status quo of co-existence will not be disturbed at an interim stage.

High Threshold for 'Lupin' Standard

A Civil Court will not ignore a registration at the interim stage unless it is ex-facie fraudulent or shocks the conscience. Competing claims of international versus domestic priority do not easily satisfy this exception.

Requirement of Actionable Goodwill

To sustain a passing off action, parties must provide more than bald assertions of sales figures; substantiated material such as audited reports or promotional expenditures is vital to prove consumers associate the mark exclusively with the claimant.

Ratio Decidendi:

For a foreign trademark owner to succeed in a passing off action against a prior domestic user in India, it must establish that its trans-border reputation had actually spilled over and acquired significant territorial goodwill among Indian customers at the time of the domestic party’s adoption. Furthermore, Section 34 of the Trade Marks Act, 1999 protects the use of a mark by a prior user against a registered proprietor, and mutual long-standing awareness of competing registrations without legal action constitutes acquiescence that precludes interim injunctive relief.

Case Details:
Case No.: IA (L) NO. 13958 OF 2023 IN COM IP SUIT NO. 117 OF 2025
Case Title: Bristol Bakery vs. Grupo Bimbo S.A.B. DE C.V.
Appearances:
For the Petitioner(s): Mr. Ravi Kadam, Senior Advocate, a/w Mr. Hiren Kamod, Mr. Vaibhav Keni, Ms. Neha Iyer, Mr. Mohd Affan and Mr. Vishwajeet Jadhav i/by Legasis Partners
For the Respondent(s): Mr. Chander Lall, Senior Advocate a/w. Mr. Ashish Kamat, Senior Advocate, Ms. Shikha Sachdeva, Mr. Rahul Punjabi, Mr. Kranav Kapur, Ms. Annie Jacob, Mr. Jaskaran Bindra and Mr. Ishan Shroff i/by Mr. Rahul Punjabi

Source: 2026 CaseBase(BOM) 269