Bombay High Court Refuses Interim Relief To Bristol Bakery, Grupo Bimbo In 'Bimbo' Trademark Dispute

The Bombay High Court has recently refused interim injunctions sought by both Bristol Bakery and Mexican food company Grupo Bimbo in their cross-suits over the use of the trademark "Bimbo".

It held that both companies had allowed the other to use the mark for years without taking timely legal action and that their long coexistence should not be disturbed at the interim stage.

Justice Sharmila U. Deshmukh passed the order on July 6.

"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.", the court ruled.

Bristol Bakery, a Mumbai-based partnership firm operating since 1964, claimed it adopted the "Bimbo" mark in 1979. According to the bakery, the mark was derived from the phrase "Best In Maharashtra Before Others."

Grupo Bimbo, incorporated in Mexico in 1945, claimed it coined the mark in 1943 and first registered it in Mexico in January 1944. It obtained its first Indian trademark registration in 1993. The company entered the Indian market through a joint venture with Ready Roti in 2017. It later acquired Modern Food Enterprises and Kitty Bread.

The court examined whether Grupo Bimbo had established a trans-border reputation in India before Bristol Bakery adopted the mark. It prima facie found that Grupo Bimbo had not shown such a reputation in India when Bristol Bakery adopted the mark in 1979.

The court, however, declined to grant Bristol Bakery an injunction in its passing off action. It observed that the bakery had not produced Chartered Accountant certificates or audit reports to substantiate its sales figures. The material placed on record, the court held, was insufficient to prima facie establish the goodwill required for a passing off claim.

Grupo Bimbo also sought an injunction for trademark infringement, arguing that Bristol Bakery's 1979 registration was fraudulent and invalid. The court rejected the contention. It held that the registration could not be treated as ex facie illegal, fraudulent or one that "shocks the conscience of the Court" merely because Grupo Bimbo claimed a reputation in America and Latin America before Bristol Bakery adopted the mark.

The court also rejected Grupo Bimbo's challenge to Bristol Bakery's ownership of the trademark at the interim stage. It observed that the issue had not been specifically pleaded in Grupo Bimbo's suit or reply affidavits, leaving Bristol Bakery with no opportunity to respond.

The court found that both companies had known about each other's registrations for years. Grupo Bimbo opposed Bristol Bakery's second label mark in 2010, while Bristol Bakery did not challenge Grupo Bimbo's registrations for more than a decade. The court also noted that negotiations between the parties between 2020 and 2022 showed Bristol Bakery was aware of Grupo Bimbo's presence in India.

Referring to Bristol Bakery's delay in approaching the court, Justice Deshmukh noted,

"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"

Holding that both businesses had allowed the other to build its business under the "Bimbo" mark without taking timely legal action, the court dismissed both interim applications. The trademark suits will now proceed to trial.