Delhi HC Awards ₹34.41 Lakh Damages To Japanese Automobile Tyres Manufacturer 'Bridgestone' Over Trademark Infringement By Indian Firm

Justice Amit Bansal awarded Rs. 34.41 lakh compensation to Bridgestone Corporation, noting that the defendant M/S Merlin Rubber wrongfully gained substantial financial benefits from the unauthorized sale of the infringing products.

Bridgestone Corporation (plaintiff) stated that it was established in 1931 and manufactures and sells tyres and tubes for vehicles, natural and synthetic rubber, materials for public works and marine structures etc, under the trade mark and name 'BRIDGESTONE'.

It stated it sells its products in over 150 countries worldwide. It submitted that it has achieved undisputed market leadership and is one of the largest manufacturers of tyres and rubber products in the world.

It stated that it 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. It stated that its trademark has been recognised as a well-known mark in India by the Registrar of Trade Marks and also in other jurisdictions such as Japan, Thailand, Taiwan, Hong Kong and the Philippines.

Bridgestone submitted that in April 2022, it came across the defendant's listing selling butyl tubes of two-wheeler and four-wheeler vehicles on an online trade directory under the 'BRIMESTONE' mark. It argued that the impugned mark is nearly identical to its trademark and thus sought for permanent injunction.

On 28 April 2023, the Court had granted an ex parte ad interim injunction in favour of Bridgestone, restraining the defendant from manufacturing, selling or offering for sale, advertising or dealing in any products bearing the impugned mark 'Brimestone' or any other similar mark

Comparing the two marks, the Court noted that 'Brimestone' is nearly identical to 'Bridgestone'. It noted that the impugned mark is structurally, visually and phonetically similar to the Bridgestone mark. It thus held that a case of trademark infringement was made out.

The Court further observed that a case of passing off was made out as the defendants took unfair advantage of Bridgestone's reputation and goodwill.

The Court thus permanently restrained the defendant from dealing in any products bearing the impugned mark.

On the aspect of costs and damages, the Court perused the Local Commissioner's report and noted that huge quantities of infringing goods were found at the defendant's premises.

It stated that the defendant wrongfully gained substantial financial benefits from the unauthorized sale of the infringing products.

“The defendant herein has been engaged in the business of selling infringing products of the plaintiff's products i.e., rubber tubes of four-wheeler and two-wheeler vehicles for three years under the mark 'BRIMESTONE' which is deceptively similar to the plaintiff's registered mark. Thus, in my view, the defendant has wrongfully gained substantial financial benefits from the unauthorized sale of counterfeit products.”

The Court thus stated that Bridgestone was entitled to actual costs of the suit and compensatory damages.

The Court awarded damages of Rs. 34.41 lakh to Bridgestone. To determine the actual costs of the suit, the Court asked Bridgestone to appear before the Taxation Officer.

Case title: Bridgestone Corporation vs. M/S Merlin Rubber (CS(COMM) 254/2023)