Bombay HC Permits Grasim, UltraTech To Submit Additional Evidence In 'BIRLA' Trademark Dispute With Saboo Tor

The Bombay High Court has allowed Grasim Industries and UltraTech Cement to place additional evidence on record in their trademark dispute with Saboo Tor Pvt Ltd over the use of the word “BIRLA”. The court said the documents are relevant for deciding the appeal and could not be produced earlier despite due diligence.

A division bench of Justices Bharati Dangre and Manjusha Deshpande passed the order while hearing an appeal against the refusal to grant an interim injunction. The earlier decision had declined to restrain Saboo Tor from using marks such as “BIRLA TMT” during the pendency of the suit.

While refusing interim relief, the Single Judge had found that Grasim Industries and UltraTech Cement had not supported their claims with documents. The court had observed that “there is not a single document on record” to show prior use of the “BIRLA” mark by the Birla group, its distinctiveness, or how the two companies derived rights to use it.

Before the appellate court, Grasim Industries and UltraTech Cement sought permission to place additional documents on record. These include a scheme of arrangement between Indian Rayon and Industries Ltd and Grasim Industries Ltd, a Madhya Pradesh High Court order approving amalgamation, and trademark records relating to “BIRLA WHITE”.

They said these documents are material and address the deficiencies noted earlier. They also said the documents could not be produced at the time of filing the suit despite efforts, as they were not traceable.

Saboo Tor opposed the request and argued that the companies were seeking to fill gaps in their case after failing to secure interim relief. It also pointed to their earlier statement that all relevant documents in their possession had already been disclosed.

The High Court examined the legal position on introducing additional evidence at the appellate stage. It said such material can be allowed if it is relevant and could not be produced earlier despite due diligence or if it is necessary for deciding the case.

The court found that the documents sought to be placed on record have a bearing on whether Grasim Industries and UltraTech Cement can establish a link to the “BIRLA” trademark. It therefore allowed the application and permitted the documents to be taken on record.

The dispute centers on competing claims over the word “BIRLA”. Grasim Industries and UltraTech Cement say the mark is associated with the Birla group and supported by several trademark registrations, including “BIRLA WHITE” with use dating back to 1988.

Saboo Tor says it has used “BIRLA TMT” for steel products since 2004 and argues that “BIRLA” is a dictionary word meaning “rare” and cannot be exclusively claimed.

The appeal on the injunction issue will now be considered after taking the additional documents into account.