Bridgestone Corporation v. M/s. Merlin Rubber

A deceptively similar mark used on identical goods can attract permanent injunction and substantial monetary relief.

SHORT DESCRIPTION ABOUT THE CASE

This was a trademark infringement and passing off action concerning the well-known trademark BRIDGESTONE and the deceptively similar mark BRIMESTONE. The case is useful for understanding deceptive similarity, dishonest adoption, counterfeit products and the grant of damages.

FACTS OF THE CASE

Bridgestone Corporation was the proprietor of the well-known BRIDGESTONE trademark in relation to tyres, tubes and allied automotive products.

The defendant, Merlin Rubber, was found to be manufacturing and selling rubber products including tubes under the mark BRIMESTONE.

The plaintiff contended that BRIMESTONE was deceptively and confusingly similar to BRIDGESTONE and that the defendant was attempting to take unfair advantage of the reputation and goodwill associated with the plaintiff’s mark.

FINDINGS

The Court found the defendant’s adoption and use of BRIMESTONE to be impermissible in view of the similarity between the rival marks and the nature of the goods.

The Court granted a permanent injunction restraining the defendant from using the infringing mark.

The Court also awarded damages of approximately ₹34.41 lakh against the defendant.

The case demonstrates that where infringement is deliberate and the defendant has commercially exploited another proprietor’s goodwill, the Court may grant not merely an injunction but also significant monetary relief.

SUGGESTION

Where a client’s registered mark is being used on identical or closely related goods, the legal notice should clearly identify the similarity in the marks, similarity of goods, trade channels, likelihood of confusion and loss of goodwill. Evidence of the defendant’s commercial activity should also be preserved for claiming damages.

JUDGMENT / PRINCIPLE

Use of a deceptively similar mark on identical goods, particularly where the adoption appears calculated to exploit the goodwill of an established trademark, can justify permanent injunction and damages.