Trademark infringement: Bombay High Court provides interim relief to M-Seal; restrains use of mark R-Seal
Trademark infringement: Bombay High Court provides interim relief to M-Seal; restrains use of mark R-Seal
The bench noted that the plaintiff adopted the mark in 1968, whereas the defendant registered it in 2005
The Bombay High Court has granted interim relief to adhesive and sealant company Pidilite relating to its trademark M-Seal and restrained another firm from using the mark R-Seal.
In the Pidilite Industries Limited vs Riya Chemy case, the bench was deliberating on the plea filed by the plaintiff Pidilite taking exception to the use of the mark R-Seal Jhatpat by the defendant, which it claimed was deceptively similar to its product M-Seal Phataphat.
The single-judge bench of Justice Riyaz Chagla said that the defendant fraudulently secured the registration of R-Seal by hoodwinking the Registrar of Trade Mark and concealing the existence of the plaintiff's prior-registered mark.
The court stated, "The defendant's registration for the impugned mark R-Seal is ex-facie illegal, fraudulent and of a nature that shocks the conscience of this court. The plaintiff's rectification proceeding on the registration is pending adjudication before the Trade Marks Registry.
The court added that being the custodian of all marks, the Registrar of Trade Marks should have conducted a search before proceeding to accept the defendant's application. It was up to it to ensure that the defendant's mark was not violating the rights of any prior user or proprietor.
Thus, the court granted an interim injunction in favor of Pidilite.
The bench noted that the plaintiff produced documents proving that it adopted the mark in 1968 and has been using it ever since. However, the defendant had only a document showing it adopted the mark R-Seal in 2005.
"The judge, therefore, ruled, "The defendant is not the prior adopter or user of the mark in question and not entitled to any rights. thereon. Upon comparison of the rival products and features, the defendant's adoption of the impugned mark and its representation are violative of the rights of the plaintiff, and this is not a matter of coincidence."
The judge further ruled, "I find no substance in the defendant's contention that the colors used by the defendant in respect of its packaging label are natural and would not cause any confusion amongst the public at large."
In its 61-page judgment, the bench also rejected the defendant's contention that if it was restrained from using the disputed mark R-Seal, it would have to shut its business.
The court observed, "Considering that a prima facie case has been made out by the plaintiff for grant of interim relief as well as the balance of convenience and irreparable loss, harm, and injury, the balance of convenience weighs in favor of the plaintiff. The defendant has other products apart from the impugned product and the contention that its business will shut if an injunction is granted, cannot be accepted."
Stating that the word M-Seal would have to be considered as a whole, it rejected the defendant's contention that some of the products of the plaintiff had disclaimers for the word 'Seal.'
The court explained, "Disclaimers do not go to the market and a common man of average intelligence or the average consumer would have no knowledge of any disclaimers present in trademark registration. This is how a common man would view the marks while purchasing the product. The court thereby accords judicial notice and protection to the plaintiff's mark M-Seal (word per se) despite the presence of, and after consideration of the very same disclaimer/condition on the plaintiff's mark."
The judge said that the court had the power to go beyond the defendant's registration and grant an injunction against its wrongful activities with a view to securing the rights of the plaintiff.
