The Bombay High Court's recent judgment in Bristol Bakery v. Grupo Bimbo addresses a complex trade mark dispute involving claims of infringement and passing off. The Court dismissed cross-interim applications, holding that prior adoption and registration of a trade mark in India prevails over trans-border reputation, even for globally recognised brands. This decision underscores the territorial nature of trade mark rights and the burden of proof required to establish spill-over reputation in India.
Background & Facts
The Dispute
The dispute involves two entities: Bristol Bakery, a partnership firm registered under the Partnership Act, 1932, operating in Mumbai since 1979, and Grupo Bimbo S.A.B. DE C.V., a Mexican multinational corporation established in 1945, which entered the Indian market in 2017. Both parties claim proprietary rights over the trade mark "Bimbo", used for bakery products.
Bristol Bakery adopted the mark "Bimbo" in 1979, derived from the phrase "Best In Maharashtra Before Others", and secured registration on 6th March 1979 in Class 30. The registration was subject to a disclaimer excluding exclusive rights to the word "Super". Bristol Bakery claims continuous use of the mark since 1979, supported by sales invoices, promotional material, and third-party communications.
Grupo Bimbo, on the other hand, adopted the mark "Bimbo" in 1943 in Mexico and secured its first registration there on 15th January 1944. It claims trans-border reputation and global goodwill, supported by registrations in over 70 countries, including India (23rd August 1993). Grupo Bimbo entered the Indian market in 2017 through joint ventures and acquisitions, including Ready Roti India Pvt. Ltd. and Modern Food Enterprises Pvt. Ltd., and commenced sales of Bimbo-branded products in 2019.
Key Facts
Bristol Bakery:
Adopted the mark "Bimbo" in 1979.
Registered the mark on 6th March 1979 in Class 30.
Claims sales turnover of approximately INR 213 crores from 1994 - 2021.
Filed Commercial IP Suit No. 117 of 2025 on 17th May 2023, seeking injunction against Grupo Bimbo’s use of the mark.
Grupo Bimbo:
Adopted the mark "Bimbo" in 1943 in Mexico.
Secured registration in India on 23rd August 1993.
Entered the Indian market in 2017 through acquisitions and commenced sales of Bimbo-branded products in 2019.
Filed Commercial IP Suit No. 189 of 2025 in September 2023, seeking injunction against Bristol Bakery.
Procedural History
11th February 2010: Grupo Bimbo filed a notice of opposition against Bristol Bakery’s application for registration of its second label mark.
6th January 2011: Bristol Bakery filed a counter-statement in the opposition proceedings.
17th May 2023: Bristol Bakery filed Commercial IP Suit No. 117 of 2025 before the Bombay High Court, seeking interim injunction against Grupo Bimbo.
1st September 2023: Grupo Bimbo filed Commercial IP Suit No. 189 of 2025, seeking injunction against Bristol Bakery.
24th April 2026: Arguments concluded, and the matter was reserved for judgment.
6th July 2026: The Court pronounced its order, dismissing both interim applications.
The Parties' Positions
Bristol Bakery
Claims prior adoption and registration of the mark "Bimbo" in India (1979).
Argues that Grupo Bimbo’s trans-border reputation did not spill over into India before 1979.
Contends that Grupo Bimbo’s registration in 1993 was on a proposed-to-be-used basis and lacked actual use in India.
Submits that Grupo Bimbo’s entry into the Indian market in 2019 was with full knowledge of Bristol Bakery’s prior rights.
Relies on Section 34 of the Trade Marks Act, 1999, which protects prior users against subsequent registrants.
Grupo Bimbo
Claims global reputation and goodwill since 1943, with registrations in over 70 countries.
Argues that Bristol Bakery’s adoption of the mark in 1979 was dishonest and intended to ride on Grupo Bimbo’s reputation.
Contends that Bristol Bakery’s registration is fraudulent as it was secured despite Grupo Bimbo’s prior international registrations.
Submits that Bristol Bakery acquiesced to Grupo Bimbo’s use of the mark by not taking timely action.
Relies on Section 29 of the Trade Marks Act, 1999, to claim infringement.
Relief Sought
Bristol Bakery: Sought an interim injunction restraining Grupo Bimbo from using the mark "Bimbo" in India.
Grupo Bimbo: Sought an interim injunction restraining Bristol Bakery from using the mark "Bimbo" and a decree of its suit due to Bristol Bakery’s failure to file a written statement.
The Legal Issue
The central legal questions before the Court were:
Whether prior adoption and registration of a trade mark in India prevails over trans-border reputation of a foreign entity.
Whether Grupo Bimbo’s registration in 1993 (subsequent to Bristol Bakery’s registration) entitles it to claim infringement under Section 29 of the Trade Marks Act, 1999.
Whether Bristol Bakery’s failure to challenge Grupo Bimbo’s registration amounts to acquiescence, disentitling it to interim relief.
Whether Grupo Bimbo’s trans-border reputation had spilled over into India before Bristol Bakery’s adoption of the mark in 1979.
Arguments Presented
For Bristol Bakery
Prior Adoption and Registration: Bristol Bakery adopted and registered the mark "Bimbo" in 1979, 14 years before Grupo Bimbo’s Indian registration and 40 years before Grupo Bimbo’s actual use in India.
No Trans-Border Reputation: Grupo Bimbo’s global reputation did not spill over into India before 1979, as there was no evidence of use, advertisements, or customer awareness in India.
No Concurrent Use: Grupo Bimbo’s registration in 1993 was on a proposed-to-be-used basis, and it did not enter the Indian market until 2019.
Section 34 Protection: Bristol Bakery relied on Section 34 of the Trade Marks Act, 1999, which protects prior users against subsequent registrants.
No Acquiescence: Bristol Bakery instituted proceedings immediately upon discovering Grupo Bimbo’s products in the Indian market in April 2023.
For Grupo Bimbo
Global Reputation: Grupo Bimbo claimed trans-border reputation since 1943, with registrations in over 70 countries, including India (1993).
Dishonest Adoption: Bristol Bakery’s adoption of the mark "Bimbo" in 1979 was dishonest and intended to ride on Grupo Bimbo’s reputation.
Infringement: Grupo Bimbo relied on Section 29 of the Trade Marks Act, 1999 to claim infringement, arguing that Bristol Bakery’s registration was fraudulent.
Acquiescence: Bristol Bakery acquiesced to Grupo Bimbo’s use of the mark by not challenging its registration or taking timely action.
Misrepresentation: Bristol Bakery’s use of the words "under licence from Bimbo" on its packaging amounted to misrepresentation.
The Court's Analysis
The Court conducted a detailed analysis of the legal principles governing trade mark infringement, passing off, and trans-border reputation, relying on statutory provisions and judicial precedents.
Infringement Claim by Grupo Bimbo
The Court examined Section 29 of the Trade Marks Act, 1999, which governs infringement. It noted that infringement actions are typically available against unregistered users, but Section 28(3) limits the exclusive rights of co-registered proprietors.
"Section 28(3) of the Trade Marks Act, 1999 provides that where two or more persons are registered proprietors of identical/similar trade marks, the exclusive right to use of the trade mark shall not be deemed to have been acquired against the other person merely by registration but against third-party unregistered users."
The Court relied on the Full Bench decision in Lupin Ltd. v. Johnson & Johnson to determine whether it could invalidate Bristol Bakery’s registration at the interlocutory stage. The Lupin decision held that a Court can invalidate a registration only in exceptional cases, where the registration is ex facie illegal, fraudulent, or shocks the conscience of the Court.
"The threshold to be met is not that of prima facie arguable case of invalidity but a higher threshold of ex facie illegality or fraud or which shocks the conscience of the Court."
The Court held that Grupo Bimbo’s claim of fraud (based on Bristol Bakery’s adoption of the mark despite Grupo Bimbo’s alleged worldwide reputation) did not meet this threshold. The Court noted that Grupo Bimbo’s reputation in 1970 was confined to America and Latin America, and there was no evidence of spill-over into India before Bristol Bakery’s adoption of the mark in 1979.
Passing Off Action
The Court analysed the essentials of passing off, which require:
Priority of use.
Actionable goodwill and reputation on the date of the defendant’s use.
Misrepresentation.
Damage.
Priority of Use
The Court held that Bristol Bakery was the prior user in India, having adopted and registered the mark in 1979. Grupo Bimbo’s global reputation did not spill over into India before this date.
"The judicial pronouncements underscore that the 'use' as contemplated under Section 2(v) of the Trade Marks Act, 1999 is to be understood as 'use' within the territory of India and not use abroad."
The Court relied on Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. to hold that mere reputation abroad is insufficient to establish actionable goodwill in India. The territoriality principle requires evidence of customer awareness, advertisements, or sales in India.
Trans-Border Reputation
Grupo Bimbo relied on website extracts, social media handles, press releases, and advertisements to claim trans-border reputation. However, the Court held that:
Website extracts did not demonstrate India-specific presence before 1979.
Social media presence (e.g., Facebook) was post-2010.
Advertisements and press releases were not targeted at Indian customers.
No evidence of sales or customer awareness in India before 1979.
"The mere existence of Grupo Bimbo’s websites in developed countries is not sufficient to hold that its reputation had spilled over in India as its websites were accessible to its users globally."
The Court distinguished Daiwa Pharmaceuticals Co. Ltd. v. Daiwa Pharmaceuticals Pvt. Ltd., which involved pharmaceutical products, where medical journals and conferences could establish spill-over reputation. In contrast, bread is a daily-use commodity, and Indian consumers would not actively seek information about foreign brands.
Goodwill and Reputation
The Court held that Bristol Bakery failed to establish actionable goodwill and reputation as of 2019, when Grupo Bimbo commenced use of the mark in India. While Bristol Bakery claimed sales turnover of INR 16.4 crores for 2019 - 2020, it did not produce:
Audited accounts.
Promotional material or advertisement expenses.
Chartered Accountant’s certificate to substantiate sales figures.
"The unsubstantiated sales figure, the negligible advertisement and promotional material damages Bristol Bakery’s claim of goodwill and reputation at the relevant date to sustain an action for passing off."
The Court relied on Brihan Karan Sugar Syndicate Pvt. Ltd. v. Yashwantrao Mohite, which held that sales figures and advertisement expenses are critical to establishing goodwill in a passing off action.
Acquiescence
The Court held that both parties acquiesced to each other’s use of the mark, disentitling them to interim relief.
Bristol Bakery was aware of Grupo Bimbo’s registration since 2010 (through opposition proceedings) but did not challenge it until 2023.
Grupo Bimbo was aware of Bristol Bakery’s use of the mark but did not challenge it until 2023.
"Delay simpliciter may not be a defence in a suit for infringement of trade mark. However, in the present case, it is very clear from the material placed on record that both parties were aware of the registration of each other’s marks. Grupo Bimbo and Bristol Bakery have allowed each other to build up their businesses with the assistance of a trade mark, which both parties agree are identical/deceptively similar to each other’s trade marks."
The Court relied on Power Control Appliances v. Sumeet Machines Pvt. Ltd., which held that acquiescence involves sitting by while another builds a business using a similar mark, and delay can disentitle a party to relief.
The Verdict
The Court dismissed both Interim Application (L) No. 13958 of 2023 (filed by Bristol Bakery) and Interim Application No. 5609 of 2025 (filed by Grupo Bimbo). The key holdings were:
Bristol Bakery’s registration of the mark "Bimbo" in 1979 is valid and subsisting, and Grupo Bimbo’s claim of fraud does not meet the exceptional threshold under Lupin Ltd. v. Johnson & Johnson.
Grupo Bimbo failed to establish trans-border reputation in India before 1979, and its global reputation did not spill over into India.
Bristol Bakery failed to establish actionable goodwill and reputation as of 2019, when Grupo Bimbo commenced use of the mark in India.
Both parties acquiesced to each other’s use of the mark, disentitling them to interim relief.
Co-existence of the marks should continue, as disturbing the long-standing use at the interlocutory stage would be unjust.
What This Means For Similar Cases
Prior Adoption and Registration Prevails Over Trans-Border Reputation
Territorial Nature of Trade Mark Rights: The judgment reaffirms that trade mark rights are territorial. Mere global reputation is insufficient to establish actionable goodwill in India unless there is evidence of customer awareness, advertisements, or sales in India.
Burden of Proof for Trans-Border Reputation: Foreign entities claiming trans-border reputation must produce concrete evidence of spill-over into India, such as:
India-specific advertisements.
Sales figures or customer orders from India.
Evidence of customer awareness in India.
"The territoriality principle applies: not the universality doctrine. Existence of goodwill and reputation has, therefore, to be shown to exist in India."
Acquiescence and Delay Disentitle Parties to Interim Relief
Acquiescence as a Defence: Parties who sit by while another builds a business using a similar mark may be disentitled to interim relief, even if they are prior adopters.
Timely Action is Critical: If a party is aware of infringing use but delays taking action, it risks acquiescence, which can bar relief at the interlocutory stage.
Goodwill and Reputation Must Be Substantiated
Sales Figures and Advertisement Expenses: To establish goodwill and reputation, parties must produce:
Audited accounts.
Chartered Accountant’s certificate.
Promotional material and advertisement expenses.
Bald Assertions Are Insufficient: Mere pleadings of sales turnover without supporting documents will not suffice to establish actionable goodwill.
Co-Existence of Identical Marks
Balance of Convenience: Where both parties have acquiesced to each other’s use of an identical mark, the Court may decline to grant interim injunctions to avoid disrupting long-standing co-existence.
Interlocutory Stage Considerations: Courts are reluctant to disturb co-existence at the interlocutory stage, especially where both parties have built businesses using the mark.
Implications for Foreign Entities Entering the Indian Market
Early Market Entry: Foreign entities should enter the Indian market early and establish local presence to prevent prior adoption by domestic players.
Challenging Prior Registrations: If a domestic entity has prior registration, foreign entities must challenge it promptly (e.g., through rectification proceedings) to avoid acquiescence.
Evidence of Use in India: Foreign entities must maintain records of advertisements, sales, and customer awareness in India to establish goodwill.
