Grasim Industries bolsters its case against Saboo Tor Pvt. Ltd. in trademark infringement row with new evidence
In a significant development, the Bombay High Court has permitted Grasim Industries Limited to introduce additional evidence in its ongoing trademark infringement case against Saboo Tor Private Limited. The legal dispute revolves around the use of the "Birla" trademark, with Grasim claiming exclusive rights under the Aditya Birla Group's umbrella, while Saboo Tor argues prior use of "Birla TMT" since 2004.
The case, presided over by Justices Bharati Dangre and Manjusha Deshpande, saw Grasim Industries seeking to introduce documents that were not initially presented at trial. These include the scheme of arrangement between Grasim and Indian Rayon & Industries Ltd., which highlights the transfer of business involving the trademark "Birla White." This move comes after the trial court, led by Justice Sharmila U. Deshmukh, dismissed Grasim's application for an interim injunction, citing lack of documentary evidence to substantiate Grasim's association with the Aditya Birla Group and exclusive rights to the "Birla" trademark.
Grasim's senior counsel, Mr. Darius Khambata, argued that the additional evidence is crucial for effectively adjudicating the appeal. The evidence is intended to affirm Grasim's prior registration and continuous use of the trademark "Birla White," dating back to 1988, thereby strengthening its infringement claim against Saboo Tor's use of "Birla TMT."
Saboo Tor, represented by senior counsel Mr. Ravi Kadam, opposed the application, contending that Grasim's attempt to introduce new evidence at this stage is an attempt to fill gaps in its original case. Saboo Tor maintains that the term "Birla" is a dictionary word signifying rarity and has been used honestly and continuously since 2004, with registered trademarks in Class 6 since 2008.
The High Court's decision to allow the additional evidence stems from the provisions under Order XLI Rule 27 of the Civil Procedure Code, which permits appellate courts to consider new evidence if it is deemed necessary to pronounce judgment or for substantial cause. The court acknowledged Grasim's efforts to trace relevant documents post the trial court's decision and recognized the potential impact of these documents on the case.
The introduction of new evidence is expected to provide clarity on Grasim's historical use of the "Birla" trademark and its association with the Aditya Birla Group, a point of contention in the trial court's judgment. The appellate court emphasized that while the additional evidence would be admitted, it would not automatically determine the case outcome, and Saboo Tor would have the opportunity to counter the new evidence.
The commercial appeal is scheduled for further consideration on April 23, 2026, where both parties will present arguments based on the augmented record. This case remains pivotal in defining the scope of trademark rights concerning family-owned conglomerates and the use of common surnames in branding.
Bottom line:-
Trade Marks Act, 1999 - Application under Order XLI Rule 27 of CPC for production of additional evidence in a trademark infringement case - Appellate court may allow additional evidence if it deems necessary to pronounce judgment or for substantial cause, but not for filling lacunae in the plaintiff's case.
Statutory provision(s): Trade Marks Act, 1999, Commercial Courts Act, 2015, Civil Procedure Code, 1908 (Order XLI Rule 27)
Grasim Industries Limited v. Saboo Tor Private Limited, (Bombay)(DB) : Law Finder Doc id # 2892367
