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Latest Trademark Cases in 2021 – Part 12
Intellepedia IP Radio
Pidilite Industries Limited v. Platinum Waltech Limited
The Plaintiff filed this suit against the Defendant seeking relief in trade mark, copyright and designs combined with causes of action in passing off in each. The Plaintiff was a well-known manufacturer of products relating to the construction and paint industry and had a worldwide presence since 1969. The Plaintiff had several trademarks related to its products which included the DR FIXIT mark with a distinctive device of a man wearing a yellow construction helmet and product identification marks including LW+, LW, URP, PIDIPROOF. Plaintiff claimed Copyright protection in the labels as well, being original artistic works. The Plaintiff claimed goodwill and reputation acquired by usage of its IP over an extended period of time continuously and uninterruptedly. The Plaintiff also claimed distinctiveness in the configuration of the can or container used by them for its products.
The Plaintiff came across a construction chemical product manufactured by the Defendant, which had some striking similarities with the Plaintiff’s product. The container was almost indistinguishable from that of the Plaintiff, which also used the mark LWC. The colour scheme was also broadly the same as that of the Plaintiff’s products and there was a feature of a man in tie and jacket wearing a yellow construction helmet. The defence presented by the Defendant was that the mark LWC used by the Defendants was purely descriptive and stood for ‘liquid waterproof / waterproofing compound’.
The Court stated that entire set of actions of the Defendant must be seen as one. The Court applied the test of average intelligence and imperfect recollection. The court stated that the container used by the Defendant was a dead giveaway. If the Defendant was bona fide in its adoption, there was no reason for it to adopt a container of this design that was so strikingly similar to the Plaintiff’s. With respect to the Defendant’s claim that its use of the LWS mark was descriptive, the court stated that the Defendant was not the expression ‘’liquid waterproof compound’’, but was using the abbreviation LWC, which was similar to marks LW and LW+ that were registered by the Plaintiff. Further, the man portrayed by the defendant was also similar to the DR FIXIT device of the Plaintiff.
The court issued an injunction against the Defendant, and also ordered the Defendant to pay costs in the amount of Rs. 2.5 lakhs to the Plaintiff within two weeks from the date of the order.
Citation: Pidilite Industries Limited vs Platinum Waltech Limited, Decided by High Court of Bombay on 24 August, 2021, available at: Pidilite Industries Limited vs Platinum Waltech Limited, visited on 11th October, 2021.
N. Ranga Rao & Sons Private Ltd. v. Sree Annapoorna Agro Foods
The Plaintiff, engaged in the business since 1948, was a leading manufacturer and supplier of incense sticks and other allied products. It held several trademarks, of which the mark ‘CYCLE’ was in dispute in this case. The Defendant herein adopted the mark ‘CYCLE’ concerning edible oil. Plaintiff claimed that the mark was immensely popular and owing to its wide turnover and extensive sales and promotional activities, the trademark CYCLE was a well-known mark. The Plaintiff filed the suit under Sections 27, 28, 29, 134 and 135 of Trade Marks Act, 1999 and claimed that Defendant intended to take undue advantage of its reputation and goodwill. It was further claimed that such use caused unwarranted confusion among the public and amounted to clear infringement of Plaintiff’s registered trademark.
The Court stated that the burden was on the Plaintiff to prove (i) its reputation in India; (ii) that the Defendant was using the mark without due cause; (iii) that by using the mark without cause the Defendant took unfair advantage, or it was detrimental to the distinctive character or reputation of the Plaintiff’s registered trademark.
The Court found that the Plaintiff proved only reputation regarding goods related to incense sticks and failed to prove that the Defendant was using the mark without due cause or taking unfair advantage. Further, no evidence was led by Plaintiff to show that the use of the mark by the Defendant was detrimental to or caused dilution to the Plaintiff’s reputation. The Court noted that though the mark CYCLE was a common household item and a generic word the distinctiveness acquired by the Plaintiff was restricted to the goods for which it had registration, and it could not obtain a monopoly over the word or claim exclusive right across other classes of goods. In view of the findings the Court dismissed the suit.
Citation: N. Ranga Rao & Sons Private Ltd vs Sree Annapoorna Agro Foods, Decided by Madras High Court on 18 November, 2016, available at: N. Ranga Rao & Sons Private Ltd vs Sree Annapoorna Agro Foods, visited on 13th October, 2021.
Aqua Pump Industries & Anr. v. Tapesh Kumar
Plaintiffs No. 1 and 2, Aqua Pump Industries and Aqua Sub Engineering respectively, manufactured different types of electric motors and pumps under their registered trademark “TEXMO”. They also jointly owned the trademark in respect of goods such as centrifugal pumps, domestic pumps and sugar cane machines categorised under Class 7 of the Schedule of the Trademark Rules. They registered “TEXMO” as a mark and device mark, with the expression “TEXMO” impressed on an inverted triangle. Plaintiff No. 1 commenced its business in April 1974 under the trademark “TEXMO”, while Plaintiff No. 2 started its business in November 1982 under the same mark. They entered into an agreement together to officially register as proprietors of the trademark “TEXMO” in April 1998. In Trade Mark Journal No. 1915 published in August 2019, the Plaintiffs discovered that the Defendant applied for registration of a mark with the same name for industrial and domestic sewing machines, under Class 7. The Plaintiffs claimed that the Defendant knowingly exploited the commercial goodwill gained all over the Indian market attached to the Plaintiffs’ trade mark “TEXMO”. They contended that the Defendant not only adopted an identical mark, but did so for goods in the same class, thus making it cognate to the Plaintiffs’ goods. Even though the nature of goods was different, the public may confuse the Defendants’ goods with theirs, diluting their mark’s reputation. The Defendants would unfairly gain from Plaintiff’s business with annual turnover of 1,200 crore rupees. The Madras High Court observed that the Defendant could have easily found that the mark was existing, if it had conducted a bona fide search for the invented word “TEXMO”, being used by the Plaintiffs since 1976. Thus, the Court granted permanent injunction in the Plaintiffs’ favour restraining the Defendant from using their mark.
Citation: Aqua Pump Industries & Anr. v. Tapesh Kumar, Decided by The Madras High Court on 31st August, 2021, available at Aqua Pump Industries & Anr. vs Tapesh Kumar, last visited on 13th October, 2021.
Latest Trademark Cases in 2021
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