Kiran Raj

The Delhi High Court, Single Bench of Justice Amit Bansal, issued a permanent injunction and awarded compensatory damages  in favour of the plaintiff in a commercial suit concerning trademark infringement. The case involved Bridgestone Corporation's lawsuit against M/s. Merlin Rubber for unauthorized use of a deceptively similar trademark.

The plaintiff, Bridgestone Corporation, is a Japan-based entity established in 1931, engaged in the manufacture and sale of tyres and tubes for automobiles, along with other rubber-based and synthetic materials. It operates in more than 150 countries and owns over 228 manufacturing plants across 26 countries.

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The plaintiff asserted extensive trademark rights over the mark "BRIDGESTONE," registered in India and internationally. The mark is a transliteration of the founder Shojiro Ishibashi’s surname, translating to "stone bridge" in Japanese. It is registered across several classes in India, with initial registration dating back to 1961.

According to the plaint, the trademark "BRIDGESTONE" is recognised as a well-known mark in India and in other countries including Japan, Taiwan, and Thailand. Bridgestone has previously taken legal action in various jurisdictions to protect its intellectual property rights.

The plaintiff cited its significant presence and investment in India, having entered the Indian market in 1995. It operates through Bridgestone India Private Limited, supported by a network of over 3,500 dealers, manufacturing facilities in multiple locations, and major advertising campaigns, including sponsorships in the Indian Premier League (IPL).

The defendant, M/s Merlin Rubber, is a manufacturer of rubber components including Butyl Tubes, Rubber Rings, and Fire Safety Valves. The plaintiff discovered the defendant's listing on www.tradeindia.com in April 2022, advertising products under the allegedly infringing mark ‘BRIMESTONE’. Legal notices were issued, leading to the takedown of the listings, but further investigations in January 2023 revealed continued infringement.

An independent investigator, engaged by the plaintiff, visited the defendant’s premises in January 2023. During the visit, Mr. Mukesh Patel, the owner of the defendant entity, acknowledged the use of the mark "BRIMESTONE" for approximately three years. The investigator also observed a significant stock of infringing products and noted that transactions were being carried out in cash without invoices.

The plaintiff filed suit in April 2023. On the first date of hearing, the court granted an ex parte ad interim injunction and appointed a Local Commissioner to conduct a search and seizure operation. The commissioner’s report dated 15 May 2023 documented the seizure of 5,850 Butyl Tubes, 77,600 packaging materials and stickers, 800 rubber patches, and one stamping dye, all bearing the infringing mark.

Despite initial appearances on 6 July and 13 September 2023, the defendant failed to file a written statement and did not contest the suit. The court proceeded ex parte against the defendant from 23 February 2024.

The plaintiff submitted its affidavit of evidence in July 2024, and witness testimony was recorded on 15 October and 20 November 2024. No cross-examination was undertaken by the defendant. The court concluded recording of evidence in December 2024.

Justice Amit Bansal recorded that "all the averments made in the plaint have to be taken to be admitted" due to the absence of a written statement and denial of documents. He noted that the plaintiff is the registered proprietor of the trademark "BRIDGESTONE," as evidenced in Exhibit PW 1/5.

The court referred to the affidavit of the investigator dated 26 April 2023, noting that Mr. Mukesh Patel had acknowledged the use of the infringing mark for three years and that cash sales were conducted without invoices.

Photographic evidence exhibited in PW-1/20 showed that the defendant's mark "BRIMESTONE" was nearly identical to the plaintiff's mark "BRIDGESTONE." Justice Bansal observed: "The defendant has not only imitated the plaintiff’s device but has also merely replaced 'DG' with 'M' and adopted the 'STONE' as is in the end." He concluded that the mark "BRIMESTONE" was structurally, visually, and phonetically similar to "BRIDGESTONE."

Further, the judge stated: "The use of the mark 'BRIMESTONE' for identical goods i.e., tyres, as that of the plaintiff constitutes an infringement of the plaintiff’s registered trademark."

Regarding passing off, the court found: "The defendant has taken unfair advantage of the reputation and goodwill amassed by the plaintiff’s 'BRIDGESTONE' tyres."

Given that the defendant failed to appear post-September 2023, the court recorded: "It is evident that it has no defence to put forth on merits."

In respect of damages, the court relied on the Local Commissioner’s report and the Investigator’s affidavit to determine illegal profits. Justice Bansal cited the case Koninlijke Philips N.V. & Anr. v. Amazestore & Ors, stating: "The court has to adopt a stringent approach where the infringement is deliberate and mala-fide."

The court further quoted from Cartier International A.G. v. Gaurav Bhatia, stating: "A defendant who chooses to stay away from the proceedings of the Court should not be permitted to enjoy the benefits of evasion of court proceedings."

Considering a conservative timeframe of 1.5 years (half of the investigator’s stated three-year period), the court accepted the plaintiff’s calculation for compensatory damages. Based on a 20% profit margin assumption and quantities seized, damages were quantified at Rs. 34,41,240/-.

On the issue of costs, the court cited the Supreme Court's decision in Uflex Limited v. Government of Tamil Nadu and Ors, observing: "Costs should ordinarily follow the event; realistic costs ought to be awarded keeping in view the ever-increasing litigation expenses."

The plaintiff submitted a bill of costs amounting to Rs. 14,38,660.53/- (Exhibit PW-1/24), and the court directed the plaintiff to appear before the Taxation Officer for actual cost determination.

A decree of permanent injunction was passed in favour of the plaintiff and against the defendant. The order stated:

"A decree of permanent injunction is passed in favour of the plaintiff and against the defendant in terms of prayer clauses 62 (a), (b) and (c) of the plaint."

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Additionally, the court decreed:

"A decree of damages of Rs. 34,41,240/- (Rupees Thirty-four lakhs forty-one thousand two hundred forty only) is passed in favour of the plaintiff and against the defendant in terms of prayer clause 62 (e) of the plaint."

The court further ordered:

" As for the relief of costs prayed for in prayer clause 62 (i) of the plaint, the plaintiff shall appear before the Taxation Officer on 14th April, 2025, who shall determine the actual costs incurred by the plaintiff in the present litigation."

All pending applications were disposed of, and the decree sheet was directed to be drawn up.

Advocates Representing the Parties

For the Plaintiff: Mr. Dhruv Anand, Ms. Udita Patro, and Ms. Sampurna Sanyal

For the Respondent: None 

Case Title: Bridgestone Corporation v. M/s. Merlin Rubber

Case Number: CS(COMM) 254/2023

Bench: Justice Amit Bansal

[Read/Download order]