Bombay High Court in Pidilite Industries vs. Chiripal Industries Grants Interim Relief to Pidilite

Bombay High Court in Pidilite Industries vs. Chiripal Industries Grants Interim Relief to Pidilite

The Bombay High Court held that there was no prima facie deceptive similarity between Fevicol manufacturer Pidilite Industries’ logo having two elephants against backdrop of a sunset and Chiripal Industries’ logo having containing word Tikawoo with the device of a rhino against the backdrop of sun.

In the present case, the applicant/plaintiff- Pidilite Industries Limited had filed a suit and application for interim reliefs in the context of its registered trademarks and copyrights concerning its various products in the business of construction material, chemical products and additives. The plaintiff claimed that the defendant- Chiripal Industries Limited had infringed upon and committed torts of passing off pertaining to the marks in which plaintiff claims proprietary rights.

It was claimed by the plaintiff that the infringement and passing off with respect to its registered trademarks HEATX, LW+, LW, and DR. FIXIT with an image of a man wearing yellow construction helmet and copyright over a logo having two elephants in the backdrop of sunset pulling in the opposite direction.

According to the plaintiff, the defendant had infringed its trademark and copyrights with its trademarks HEAT-TIK, LWP+, and MR. ENGINEER with image of a man wearing a construction helmet and the logo having a rhino in the backdrop of a sun. It claimed that the defendant was using mark HEAT-TIK for identical product of heat resistant adhesive.

The single Judge Justice Manish Pitale remarked that while comparing rival marks the overall impression needs to be appreciated, rather than going into each feature of the rival marks to ascertain the similarity or difference.

The judge averred, “it is a time-honored principle that the Court would apply the test of a person of average intelligence with imperfect recollection to ascertain as to whether it can be said that the impugned marks would create confusion in the mind of such a person. The test is to be applied from the point of view of the consumer of such product. In the case of the products in question, pertaining to the construction industry, the persons buying such products are likely to go by the impression gathered from the images depicted and the words used in respect of the said products.”

However, the Court can also not be oblivious of the rights available to an entity, which has registrations for its trademarks, as guaranteed under Section 28 of the Trade Marks Act, 1999. The exclusive rights obtained upon registration are, of course, subject to the limitations and riders provided under the said Act itself, but there can be no dispute about the fact that registration does raise a presumption of distinctiveness and the right in the entity holding such registration to protection at the interlocutory stage, stated the judge.

The Court referred the decision passed by the full bench of Bombay High Court in Lupin Limited vs. Johnson and Johnson (2014), which elucidated the circumstances in which the Court can grant or refuse interim reliefs if it is shown at the interlocutory stage that the registration of a mark is prima facie fraudulent, unsustainable or shocks the conscience of a Court. At the same time, when the defendant is resisting the grant of interim reliefs to the plaintiff, it ought to show some justification for adopting the impugned marks.

Applying the said principles to the facts of the present case, the Court dealt with each of the registered trademarks and copyrights, as also subsisting copyrights claimed by the plaintiff, as against the impugned marks of the defendants.

The Court with respect to the registered trademark DR. FIXIT and the device mark DR. FIXIT, with the image of a man wearing a yellow construction helmet, the plaintiff had impugned the mark of the defendant MR. ENGINEER, with image of a man wearing a construction helmet.

The Court deemed it was necessary to appreciate here that the defendant held registration in respect of its impugned mark MR. ENGINEER, with image of a man wearing a construction helmet. Thus, the registered trademark of the plaintiff was up against the registered trademark of the defendant.

“There is no doubt about the fact that the registration of the plaintiff in respect of the said trademark and the device are prior in point of time, as compared to the registration of the said impugned mark of the defendant. The documents on record show that the registration obtained by the defendant dates back to the year 2017, while that of the plaintiff was obtained much earlier,” added the Court.

Next while applying the position of law clarified by the aforesaid Full Bench judgement of the Court, the Court considered whether the plaintiff was justified in contending that the depiction of the impugned mark of the defendant MR. ENGINEER with image of a man wearing a construction helmet, which was a registered trademark, was dishonest and could be said to be prima facie fraudulent and unsustainable.

The Court compared the rival marks and observed that it cannot be said that the plaintiff had established prima facie case in showing deceptive similarity between the words “DR. FIXIT” and the words “MR. ENGINEER.”

The Judge explained, “the comparison of the image of the man wearing a yellow construction helmet in the registered trademark of the plaintiff, with the image of the man wearing a construction helmet in the impugned mark of the defendant, would show that the plaintiff has failed to make out a strong prima facie case of deceptive similarity or slavish copying on the part of the defendant. On an overall comparison between the two marks, it cannot be said that merely because the defendant has also used the image of a man with a construction helmet, it would lead to a conclusion in the mind of the consumer that the registration obtained by the defendant in respect of its mark can be said to be prima facie fraudulent or unsustainable.”

According to the Court plaintiff had therefore, failed to make out a case for grant of interim reliefs in the context of the said trademark or for infringement or passing off of the copyright.

As regards the registered trademark LW and LW+ of the plaintiff, as against the impugned mark LWP+ of the defendant, the Court believed the comparison of the marks indeed showed that there was deceptive similarity.

The Court was of the opinion that the registrations of the plaintiff as regards the trademarks LW and LW+ date back to the year 2012 onwards and considering the material placed on record, the Court found that the plaintiff had indeed made out a prima facie case, indicating that considerable goodwill was created in its favor as regards use of the said registered trademark in the context of the product in question.

The Court asserted that a strong prima facie case was made out since LW and LW+ have been used as unique and abstract expressions in the context of the product of the plaintiff, over a considerable period of time.

The Court concluded by stating that the defendant had failed to satisfy the test laid down in the Full Bench judgment of the Court in the case of Lupin Limited Vs. Johnson and Johnson (supra) to show prima facie unsustainability of the registration of the trademarks of the plaintiff LW and LW+.

In view of the findings rendered, the Court found it appropriate to allow the petition partly and grant interim reliefs in favor of the plaintiff.