This post discusses a recent case update with regard to prior use of a descriptive trademark. The case presents an interesting aspect of trademark law, i.e., when claiming for passing off action of a descriptive trademark, the Plaintiff must provide convincing evidence to establish the prior use and the secondary meaning which has been acquired for the trademark. The case described herein was filed on 26th July 2010 before the High Court of Bombay, by two companies namely, Pidilite Industries Limited and Hardcastle & Waud Manufacturing Co. Ltd against the defendant, Vilas Nemichand Jain. The plaintiffs instituted an action against the defendant for passing off the plaintiffs Trademark “LEAKGUARD”.
The first plaintiff is a well-known manufacturer of various types of adhesive products and other products. The first plaintiff made an application on 16th December 2008 for registration of a label that included the term “LEAKGUARD”. The second plaintiff is a manufacturer of heat treatment chemicals, salts, metal working chemicals, resins, rustolene etc. used in industries. The second plaintiff had filed a trademark for a label “LEAKGUARD” which consisted of the word “HOLDTITE”. The trademark bearing application number 853747 under Class 1 has been used in relation to industrial chemicals since 29th April 1999. The second Plaintiff assigned the trademark “LEAKGUARD” to the first Plaintiff on 21st February, 2008.
The defendants applied for registration of the trademark “LEAKGUARD” on 16th October 2008 with application No. 1744023 under Class 1. This application was filed with the user date as 1stApril 2000. The defendants claimed that this was an inadvertent error, and on 30th January 2009 the defendants applied for an amendment to correct the user claim from 2000 to 1st April 2005. Consequently, the defendants withdrew their application.
The plaintiffs claimed that in September 2009 they found one of the defendants’ products with the mark “LEAKGUARD”.
On hearing the contentions of the parties, the Court held that mere evidence of long standing, continuous use through invoices and financial figures of sales; one may show use or even increased use. However the Court stated that there is a requirement for something more to be provided, in order to prove that the mark has acquired a distinctive identity. According to the Court, the mere use of the mark does not equate to distinctiveness of the trademark. With respect to a descriptive mark even extensive use is insufficient. In order to succeed in such circumstances, the plaintiff must show that the goods bearing the mark have come to be identified with their goods exclusively, and in the case of a descriptive mark, evidence is necessary from members of the public as well.
The Court was not convinced by the evidence submitted by the plaintiff and thus dismissed the plaintiff’s suit for passing off action against the defendant. The Judge after analyzing many cited cases, found it necessary that the plaintiff must convincingly demonstrate the extensive use of the trademark, as well as prove the wide publicity which has helped the trademark in gaining some sort of secondary meaning.