Delhi High Court
Akzo Nobel Coatings International B V vs Jk Cement Ltd on 28 May, 2024
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Reserved on :22nd April, 2024
Pronounced on :28th May, 2024
+ CS(COMM) 212/2023 & I.A. 25030/2023
AKZO NOBEL COATINGS INTERNATIONAL B V ..... Plaintiff
Through: Mr. Prashant Gupta, Mr. Jithin M.
George and Mr. Udit Tewari,
Advocates.
versus
JK CEMENT LTD ..... Defendant
Through: Ms. Rajeshwari H. and Ms. Swapnil
Gaur, Advocates.
CORAM:
HON'BLE MR. JUSTICE ANISH DAYAL
JUDGMENT
% I.A. 6738/2023 (under Order XXXIX Rules 1 & 2, CPC)
1. This application has been filed by the plaintiff as part of the accompanying suit seeking a decree of permanent injunction against the defendant restraining them, and all those acting for, or on their behalf, from using the mark 'WEATHER SHIELD' ("defendant's mark") or any other mark deceptively or confusingly similar to the mark 'WEATHERSHIELD' ("plaintiff's mark").
Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page1/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35Factual Background
2. Plaintiff claims to be one of the world's leading paint and coating companies, and hosts some of the best-known brands in the business such as 'DULUX', 'ICI' and 'WEATHERSHIELD'. Plaintiff adopted the mark 'WEATHERSHIELD' internationally, in relation to paints and coatings in the 1970s, and claims to be using the same continuously and extensively since then. In support of its use, plaintiff has filed extracts of international brochures and magazines showing promotion of its mark 'DULUX WEATHERSHIELD' in the 1970s. A screenshot of the same is extracted below:
Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page2/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:353. Plaintiff's mark is registered in over 91 countries across the globe. In India, plaintiff has two registrations of the mark - under registration no. 656341 in Class 02 and registration no. 2655231 in multi-Class 99 (Classes 2, 9 and 16), with the earliest registration dating back to the year 1995. To substantiate its use in India, plaintiff has filed copies of brochures, magazines, news-papers from 1997-98, showing use of its product with its mark in landmark buildings in Kolkata, which are extracted as under:
4. Plaintiff has also filed invoices from 2010 till 2021, showing continuous sales of products under the said brand. Sales figures from 2010 till 2020 in plaintiff's mark, as claimed, are as under:Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page3/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35
5. Promotional expenses, as claimed by the plaintiff, are tabulated as under:Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page4/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35
6. Reliance is also placed on the Chartered Accountant's certificate bearing out that plaintiff's products under the brand have garnered sales of Rs.609 crores in the financial year 2019-20. Same is extracted as under:
7. Advertisements on YouTube have also been placed as part of record, along with other advertisements in various forms of media such as newspapers, magazines, digital news, daily newspapers etc. Counsel for plaintiff also pointed out that, in 2012, plaintiff's mark was featured on a documentary on Disney Channel, screenshot of the same is extracted hereunder:Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page5/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35
8. Grievance is against defendant's product, a screenshot of which is extracted below:
9. In January 2020, plaintiff came across two trademark applications filed by the defendant on 12th September, 2019 seeking registration of marks 'JK Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page6/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 SUPER STRONG BUILD SAFE WEATHER SHIELD' and the device mark. under nos. 4291741 and 4291742 respectively, in Class 19, in relation to building and construction materials including cement.
These applications were filed on a 'proposed to be used' basis.
10. Plaintiff sent a legal notice dated 3rd February, 2020 to the defendant and also filed a notice of opposition against these applications. Defendant replied on 18th February, 2020, refusing to comply with plaintiff's demand. In April 2020, defendant filed a separate cancellation petition seeking removal of plaintiff's two registered marks for 'WEATHERSHIELD'. The said matters are still pending adjudication.
11. According to the plaintiff, defendant has not claimed use of the mark 'WEATHER SHIELD' in the rectification petitions proceedings, nor filed any documents in support of the same. However, later in September 2022, plaintiff learnt that defendant's products bearing the mark 'WEATHER SHIELD' were available in the markets, therefore, the instant suit was filed.
12. Counsel for plaintiff pointed out that it is not as if the mark 'WEATHER SHIELD' is always being used in combination with defendant's house mark 'JK SUPER STRONG', but has also been used in isolation, as evident from a few promotional videos, screenshots of which are reproduced as under:
Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page7/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page8/44Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 Submissions on behalf of parties
13. Origin of the term 'WEATHERSHIELD' 13.1 Plaintiff claims to have coined the word 'WEATHERSHIELD', in that, its predecessor (Imperial Chemical Industries Limited) had adopted and used it in relation to decorative and protective surface coating compositions since 1970s. The said mark was not a dictionary word and was conceived by plaintiff's predecessor by joining two separate words in English in relation to paints. Defendants, while refuting the same, adverted to prior patents and trademarks which had used the descriptive term 'WEATHERSHIELD' for different goods and claimed that plaintiff was not the originator of the word. The patents, however, as the plaintiff pointed out, were not in relation to paints, and the international trademark applications filed in 1960s and 1970s Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page9/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 were irrelevant because they were in relation to dissimilar goods and the marks had expired.
14. 'WEATHERSHIELD' ⎯ distinctive / non-distinctive 14.1 The defendant asserted that the word 'WEATHERSHIELD' is non- distinctive since it describes goods which have the characteristic or quality to provide protection from weather and related changes. The said term, therefore, had been adopted and used by numerous enterprises in furtherance of their business operations. Plaintiff's rebuttal was that, on account of its extensive promotion and use, the mark 'WEATHERSHIELD' has a tremendous brand recall value and generates an undisputed association of the mark 'WEATHERSHIELD' with the plaintiff. Due to extensive promotion, defendant was bound to be aware of the reputation enjoyed by plaintiff's marks and cannot seek shelter under the plea of non-distinctiveness. Moreover, defendant having applied for registration of their own marks 'WEATHER SHIELD,' is estopped from claiming that the same is non- distinctive.
15. Nature of Goods 15.1 Defendant's counsel submitted that plaintiff's and defendant's products are different and distinct, in that, defendant's product is 'cement' and related products, while plaintiff's product is related to 'decorative paints and coating'. Defendant had only recently ventured into paints, while plaintiff was always dominant in the paint industry. Defendant's products are not available in hardware stores where products for construction of a building are available.
Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page10/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35Moreover, the trade dress was distinctly different and the word 'WEATHER SHIELD' had been used by the defendant in order to describe their product, which offered protection against all weather conditions.
16. Identity/ Similarity of the marks 16.1 Plaintiff's counsel submits that defendant's product packaging would make it clear that the defendant was using the mark in a standalone manner and not in a descriptive sense. It forms an essential component of the defendant's packaging and is used as a sub-brand. Defendant had also promoted its products on social media, using the name in a standalone manner. Even in the annual reports filed by the defendant, the CEO the of the defendant is referring to 'WEATHER SHIELD' as an independent product.
16.2 Defendant's counsel, on the other hand, submits that use by the defendant was merely in a descriptive form, as cement that provided protection against all weather conditions, and as the trade channel of goods for the rival marks is different, the question of confusion would not arise. Defendant's goods are sold under the mark 'JK' along with the sub brand "SUPER STRONG BUILD SAFE WEATHER SHIELD".
16.3 Plaintiff, however, claimed that use of its house mark 'JK' by defendant, does not take away from the fact that "WEATHER SHIELD" was being used as a sub-brand for identification and was not being used in a descriptive manner.
17. Confusion / Deception Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page11/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 17.1 Plaintiff's mark was registered with claim of use since at least 2000 and has been in use at least for the last two decades. Defendant, quite to the contrary, while claiming its use since 2019, has not supported the same with any cogent documentary evidence. Defendant's counsel contended that 'WEATHER SHIELD' was being used as a descriptive term along with a well-known trademark 'JK' and this would identify the products, and even plaintiffs were making use of the term 'WEATHERSHIELD' along with their mark 'DULUX'. For this, defendant's counsel adverted to the reply to the examination report dated 19th February, 2016 filed in respect of plaintiff's trademark application in Class 99, where it was stated that plaintiff has been using the mark in conjunction with its well-known 'DULUX' products for many years. Moreover, defendant had never filed any separate application seeking registration of the term 'WEATHER SHIELD' as a standalone mark.
18. Delayed Action 18.1 As per defendant's counsel, plaintiff claims that the alleged cause of action arose in the year 2020, which suggests knowledge about defendant's mark. Therefore, the suit was belated and has only been filed for harassment. Plaintiff's counsel refuted the said submission and contended that the delay in filing the suit is not a ground for denying temporary or permanent injunction. The plaintiff filed the suit soon after learning about the actual use of the mark 'WEATHER SHIELD' by defendant. In any case, proceedings were ongoing before the Registrar of Trade Marks and defendant never pleaded that it is actually using the mark 'WEATHER SHIELD'. Plaintiff, therefore, did not Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page12/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 initiate any legal action against defendant earlier. In September 2022, plaintiff came across defendant's products and that was a trigger to file the suit.
19. Suit for infringement not maintainable 19.1 Defendant's counsel submits that the instant suit for infringement is not maintainable as plaintiff was not registered in Class 19 for the goods i.e. cement, for 'WEATHER SHIELD'. Plaintiff's counsel rebutted the same submitting that competing products of plaintiff and defendant are similar in nature or, at the very least, cognate and allied to each other, therefore, the suit was maintainable. Even otherwise, the suit is maintainable under Section 29(4) of the Trade Marks Act, 1999 ("the Trade Marks Act") as the plaintiff's mark acquired tremendous reputation in India and defendant's use of an identical mark was without cause and dishonest.
20. Use of the Mark 20.1 Defendant challenged plaintiff's actual use of the mark 'WEATHER SHIELD' in India by relying on the user claim in plaintiff's registration being from 2000 in one, and on a 'proposed to be used' basis in the other application filed in 2014. Defendant claimed that whether one takes 2000, 2005, or 2014 as any of the relevant dates, the use can only be thereafter. The distinctiveness claimed by plaintiff since 1970s was, therefore, not relevant.
20.2 Reliance was placed on para 34 of Marico Ltd. v. Agro Tech Foods Ltd., 2010 SCC OnLine Del 3806, wherein it was held that post filing, evidence of use cannot be taken into account. Defendant also relied upon Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page13/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 Kerly's Law of Trade Marks and Trade Names (12th edition), extract from para 8-41, stating that courts should scrutinise with care applications for non- distinctive marks upon a claim that they are distinctive in fact. Reliance was also placed on paras 16 to 18 of Pidilite Industries Ltd. v. Vilas Nemichand Jain, 2015 SCC OnLine Bom 480, which held that nature of evidence is to be strong to prove distinctiveness, and something more than financial figures of sales is required; the mark should have acquired secondary meaning and goods bearing the mark should exclusively be identifiable to the product only. This degree of proof has to be ultimately substantiated in trial and cannot be granted at a prima facie stage. Reliance in this regard was placed on PhonePe Pvt. Ltd. v. EZY Services, 2021 SCC OnLine Del 2635, as well as on Marico (supra).
20.3 According to counsel for defendant, distinctiveness can be granted and considered when a consumer can only think of paint when they hear 'WEATHER SHIELD'. Moreover, defendant has been in the market since 2019 and is not just using the brand 'WEATHER SHIELD but "JK SUPER STRONG" and "WEATHER SHIELD" as a descriptive sub brand /mark. There can be no dissection of the marks in order to compare the same. Reliance was placed on Section 30(2)(a) of the Trade Marks Act for honest bona fide use of trademark, where descriptive use is protected. Defendant's counsel further contended that since the trademark was devoid of distinctive character, it was inherently non-registrable and pleaded Section 9(1)(a), (b) and (c) of the Trade Marks Act in this regard. She submitted a mark should acquire a distinctive character before the application for registration is filed Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page14/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 and not after registration, or after filing the application. Focus was on Section 9(1)(b), according to which marks serve three purposes: to distinguish kind, quality, and intended purpose of the goods. Plaintiff's counsel claims that the multi-class application was on a 'proposed to be used' basis, since they were proposing to use the mark 'WEATHERSHIELD' for goods other than paints, in different classes; however, that did not take away the distinctiveness of the mark which was being used for paint.
20.4 Counsel for plaintiff heavily relied upon the manner in which defendant used 'WEATHER SHIELD', in particular in the packaging, where not only it was placed in the centre, just below their brand 'JK SUPER STRONG' above the picture, and also on two distinct red bands on the top and bottom of the packaging, as evident from the picture below:
20.5 Moreover, the independent use of the mark was also evident from promotional advertisements, which are extracted as under Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page15/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page16/44
Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page17/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 20.6 Plaintiff's counsel also asserted that there was no single document produced by the defendant which showed that all throughout the world 'WEATHER SHIELD' had been used for paints by any other party. The first user documents shown are of 1997 in India, and registration was of 2005.
Moreover, even aside from infringement, the use of 'WEATHER SHIELD', in the manner as shown above by the defendant, also amounted to passing off. For similar trade channels, it was stated that masons and contractors are largely purchasers of products which are both cement and paints and, therefore, there could be an issue of association as well.
20.7 Reliance was placed on para 54 of FDC Limited v. Docsuggest Healthcare Services Pvt. Ltd. & Anr., 2017 SCC OnLine Del 6381, where it was held that plaintiff's goods were similar to and associated with the Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page18/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 defendant's services and were allied and cognate in nature. The Court placed reliance on respective uses of goods /services, intended purpose, respective users of goods /services, physical nature of goods/services, sectors, trade channels, reputation etc. 20.8 Plaintiff's counsel relied upon the order dated 25th January, 2023 in FAO (OS) (COMM) 16/2023 titled "Capital Foods Pvt. Ltd. v Radiant Indus Chem Pvt. Ltd.", of the Division Bench of this Court, where in Para 10, it was held that prima facie, keeping in view the advertisement and sales figures of the appellant-plaintiff, the concerned mark has acquired secondary significance; and Mattel v. Present Enterprises, 2023 SCC OnLine Del 5474, where a Single Judge of this Court held, in para 17-18, that if a descriptive mark is used for a long time and has garnered sufficient goodwill, it can be said to have acquired secondary significance.
20.9 Plaintiff's counsel further relied on V Guard Industries v. Crompton Greaves Consumer Electricals, 2022 SCC OnLine Del 1593, para 34, where the house mark 'CROMPTON' used by defendant was stated to be a source indicator and the mark 'PEBBLE' was the sub brand used by defendant; the Court held that it was settled law that Trade Marks Act does not have a concept of sub-brands, and reliance was placed upon the decision of the Bombay High Court in Hem Corporation Pvt. Ltd. v. ITC Limited, 2012 SCC OnLine Bom 551, in this regard. Reliance was further placed on paras 66-69, and 75-77 of Himalaya Wellness Company and Ors. vs. Wipro Enterprises Private Limited, 2023 SCC OnLine Del 4035, where the Court, inter alia, observed Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page19/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 that there is no reason for a reputed company to launch a product many years later using identical trademark as that of plaintiff, which could have been avoided by a simple due diligent exercise. Also, it was held that goods of the defendant therein were similar, allied and cognate with goods of the plaintiff therein and certain factors as listed in para 71, had formed the Court's opinion.
Analysis
21. The relevant issues for assessment germane to the dispute are:
i. Whether the plaintiff's mark 'WEATHERSHIELD' has acquired distinctiveness / distinctive meaning and cannot be considered descriptive;
ii. If the plaintiff's mark has acquired distinctiveness, can their protection extend to cognate / allied goods i.e. from paints / coatings to cement;
iii. Whether there would be likelihood of confusion in the mind of consumer, or of association to the source of goods;
iv. Intention of defendant in using a mark which is identical to that of plaintiff.
I. Whether the plaintiff's mark 'WEATHERSHIELD' has acquired distinctiveness / distinctive meaning and cannot be considered descriptive.Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page20/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35
22. On this, counsel for plaintiff relies upon the decision of a Coordinate Bench of this Court in Anil Verma v. R K Jewellers S K Group & Anr. (2019) SCC OnLine Del 8252 and Mattel Inc. (supra). In Anil Verma (supra), while dealing with distinctiveness of plaintiff's marks "Cash for Gold", "We buy Gold" and "Gold Buyers" in respect of gold and precious metals business, defendants in the case had argued that the marks were descriptive / generic and incapable of being monopolised by any party. The Court held that there were two dimensions to the defence of descriptiveness. First, the assessment whether the marks are so descriptive; and second, whether defendants were allowed to raise the defence after they themselves applied for registration.
23. On the first dimension of distinctiveness, reliance was placed in para 22 on the two tests articulated in McCarthy on Trademarks and Unfair Competition viz. the "degree of imagination test" and "competitors' need test". The degree of imagination test required the court to adjudicate whether a particular mark describes quality or characteristics of the product or is merely suggestive of products or services; in case of difficulty in that assessment, registration tilts in favour of plaintiff. The second element of "need of competitors" is the degree to which a competitor i.e. the defendant requires the same word to describe their goods, or whether there were alternate ways of describing them. The relevant paragraphs from Anil Verma (supra) are extracted below:
"22. The descriptive nature of a mark can be determined by applying two tests as per McCarthy on Trademarks and Unfair Competition1, namely, Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page21/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 • the Degree of Imagination Test and • the Competitors' Need Test.
23. Both of these are interlinked and a combined view has to be taken by the Court, after applying both these tests.
24. The Degree of Imagination test and the Competitors' Need test have to be applied in the facts of each case in order to adjudicate as to whether a particular mark describes the quality or characteristics of the product or service or is merely suggestive of the products or services offered. In a case whether the conclusion cannot be arrived at without evidence or whether there is a grey area, registration of marks would tilt the case in favour of the Plaintiff.
25. The Need of the Competitors and the Degree of Imagination tests are inversely proportional to each other. If the degree of imagination required is higher, then need of the competitors decreases. If the need of the competitors is not so high and there are alternate ways of describing some services, then the degree of imagination required would be higher."
(emphasis added)
24. Applying these two tests to the facts of this case, potentially it can be stated that adoption of the mark 'WEATHERSHIELD' by plaintiff is merely to describe the quality or characteristic of the product i.e. coatings/ paints, in that, it protects against weather. However, that may not be immediately evident if one simply stumbles on the said mark. 'WEATHERSHIELD' is a coined word having only elements to suggest that the product would shield against weather, but on an overall assessment it cannot be said to be Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page22/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 descriptive.
25. There is no dictionary meaning ascribed to the word 'WEATHERSHIELD' in itself. Documents in this regard have been filed by the plaintiff showing that dictionary search for 'WEATHERSHIELD' did not produce any relevant results. Clearly 'weather' and 'shield' are two words commonly used, but their combination in 'WEATHERSHIELD', is unique and distinctive. In fact, the plaintiff has adverted to one definition from lawinsider.com which suggested that 'WEATHER SHIELD' meant a device attached to a floating roof to protect the fabric of a liquid mounted or vapour mounted primary seal from weather or debris. This, in fact, would show that there was no standardised word 'WEATHERSHIELD' which could ex facie be termed as descriptive.
26. These two tests "degree of imagination test" and "competitors' need test", are naturally interlinked. If more imagination is required to associate a word with a product in relation to its descriptiveness, the defendant can always adopt an alternative terminology. The degree of imagination required was, therefore, higher and being inversely proportional, the need of competitor, would be lower. The message of weather protection can easily be communicated in many other forms such as 'all weather protection', 'weather protector', 'protection from weather', 'weather guard' etc. Any of these or other creative descriptions could be utilised if the descriptive message is to be communicated to a consumer. The insistence of defendant on using plaintiff's trademark in exactly the same form as almost a brand, cannot be permitted, at Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page23/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 least at this prima facie stage.
27. The second dimension of defendants being permitted to raise the defence is premised on defendant having itself applied for the registration of the mark and, therefore, being estopped from contending that the mark was descriptive. Reliance in this regard is placed on Automatic electric Ltd. v. R.K. Dhawan, 1999 SCC OnLine Del 27 (the Dimmer Dot case). In this case as well, defendant having applied for registration of the mark 'WEATHER SHIELD' as part of the device was itself claiming distinctiveness in the said mark and could not, therefore, allege that it was generic. Of course, the defendant could argue and has in fact argued that, 'WEATHER SHIELD' was used as part of their mark only as a descriptor and they were not claiming distinctiveness. However, the attempt was to register and would result in their asserting a right in the said mark, post registration.
28. Another aspect of assessing distinctiveness is discussed, inter alia, in Marico Ltd. (supra), Pidilite Industries (supra) and Phone Pe (supra). Though these decisions have been cited by defendant, they advert to the concept of distinctiveness. In Marico Ltd. (supra), para 15 is instructive, and is extracted below for reference:
"15. The word 'distinctive' is not directly defined in the Act. However meaning of distinctive is indicated in the definitions of 'trade mark' [Section 2(zb)] and 'well known trade mark' [Section 2(zg)]. The word has been explained in a plethora of judgments. Distinctive has been explained to mean such use of the trade mark with respect to the goods of a person that the public will Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page24/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 immediately and unmistakably co-relate the mark with the source or a particular manufacturer/owner thereof. The real issue which however arises is what should be the meaning of the expression 'distinctiveness' in the situation when the trade mark is a word mark of descriptive nature. When a trade mark, which is a word mark, is arbitrarily adapted and is such having no co- relation to the goods in question, then in such a case distinctiveness is achieved by normal and ordinary use of the trade mark with respect to the goods and it has been repeatedly held that such trade mark is entitled to the highest degree of protection. However this is not and cannot/should not be so for a trade mark which is a descriptive word mark. Some colour has to be taken for the word 'distinctive' as found in the proviso to Section 9 from the expression 'well known trade mark' which follows the distinctiveness aspect as found in the said proviso. Courts should ordinarily lean against holding distinctiveness of a descriptive trade mark unless the user of such trade mark is over such a long period of time of many many years that even a descriptive word mark is unmistakably and only and only relatable to one and only source i.e. the same has acquired a secondary meaning. [...]"
(emphasis added)
29. This passage was cited with approval in Phone Pe (supra). Essentially the courts have held that distinctiveness is achieved when public would immediately and unmistakably corelate the mark with the source i.e. a particular manufacturer.
30. An arbitrarily adopted mark acquires distinctiveness with normal and ordinary use of the trademarks with respect to goods, and repeated use, entitles Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page25/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 it to a higher degree of protection, as has been held by courts. As stated above, the extent of use of said mark by plaintiff in its current form, dates back to 1970s i.e. more than half a century back, evidence of which is already provided by plaintiff and there is no reason to disbelieve the evidence, at least at this prima facie stage. The use since 1970s was followed up by a plethora of registrations across the world, as tabulated below, which precipitates the strength of the mark in favour of plaintiff. The use in India, as well, is traced back to late 1990s.
31. A perusal of documents on record would show that plaintiff has acquired an extensive reputation in the mark 'WEATHERSHIELD' both in India and abroad. Volume of advertisements which have been filed by the plaintiff would bear out the same. The international use since 1970 is also borne out from the advertisements, as also the use in India at various points of time. The mark has been used ever since the plaintiff's predecessor in interest Imperial Chemicals Industries Ltd. had registered the trademark in many countries.
32. Trademark registrations in favour of plaintiff in other countries are extracted as under:
Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page26/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page27/44Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page28/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page29/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35
33. Plaintiff's registration in India, in decorative and protective surface coatings, in Class 2, was effective since 1995, and the user claimed was of 2000. Reputation in paints is also evidenced by architectural journals as well as relevant extracts from brochures, magazines, newspapers, for promotion of the mark. The advertisement, as extracted under, bears out, at the very least, that the product was being used since the 1990s in India:
34. The defendant has used the mark 'WEATHER SHIELD' with the space in between and contends that it is used in a descriptive manner. However, that is belied in itself by the packaging employed by the defendant, in that, not only is the mark placed in the centre of the packaging, Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page30/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 but also in a distinctive red strip on top and on the bottom. The manner of use itself would show that the defendant intends to use it as a distinctive trademark and not just a descriptive mark.
35. Other evidence presented by the plaintiff i.e. screenshots of various advertisements by defendant, extracted above, also show that the propensity is to use the mark 'WEATHER SHIELD' in an isolated, independent and separate fashion, for identifying the product of the defendant.
36. Plaintiff' counsel pointed out to the integrated annual report of the defendant, in particular the speech of the Deputy Managing Director and CEO, Mr. Madhav Singhania. It was stated in the introductory paragraph that "We are witnessing encouraging market share group in premium products especially Super Strong and WEATHER SHIELD". This also buttresses the plaintiff's assertion that defendant was using the mark 'WEATHER SHIELD' in a distinctive, separate, and standalone manner for their product.
37. Even though the defendant's counsel stressed on proof at trial regarding distinctiveness, at this prima facie stage, plaintiff's reputation and goodwill in that mark can be accepted. The continuous use of 'WEATHERSHIELD' as a mark for their paint both domestically and internationally, since 1970s, in a distinctive, prominent fashion, along with extensive advertisement and promotion, would give it a colour of distinctiveness.
II. Whether defendant's goods are allied and cognate goods.
38. The second issue of allied and cognate goods relates to use by plaintiff Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page31/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 of their mark on paints / coatings, in contrast by defendant, on cement. In this regard, reference was made by plaintiff's counsel to the decision of a Coordinate Bench of this court in Himalaya Wellness (supra) in particular paras 66, 71, 77 and 81, where, inter alia, it is noted that there was no reason for the defendant to launch a product using an identical trademark when a simple due diligence exercise would have informed the defendant about the existence of plaintiff's product, as also the test for determining whether rival goods of parties are allied and cognate was discussed. These paras are extracted as under:
"66. It is intriguing for me as to why a reputed company such as the defendant company would launch its product, also pertaining to female reproductive hygiene, almost 22 years later, using the identical trade mark as that of the plaintiffs. A simple due diligence exercise conducted on behalf of the defendant would have informed the defendant about the existence of the product of the plaintiffs with an identical trade mark. A google search or a Trade Marks Registry search across various classes would have brought to light the registered mark of the plaintiffs.
....
71. In British Sugar PLC case [British Sugar PLC v. James Robertson & Sons Ltd., 1996 RPC 281] , a judgment relied upon by the defendant, the court has laid down the following tests to be considered for determining whether there is similarity between the goods:
"(a) The respective uses of the respective goods or services;Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page32/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35
(b) The respective users of the respective goods or services;
(c) The physical nature of the goods or acts of service;
(d) The respective trade channels through which the goods or services reach the market;
(e) In the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves;
(f) The extent to which the respective goods or services are competitive. This inquiry may take into account how those in trade classify goods, for instance whether market research companies, who of course act for industry, put the goods or services in the same or different sectors."
77. Applying the aforesaid principles to the facts of the present case, I am of the considered view that the goods of the defendant are similar and allied/cognate to the goods of the plaintiffs. In arriving at the aforesaid finding, the following factors weigh with this Court:
(i) Both the goods of the plaintiffs and the defendant are targeted at the same set of consumers i.e. women.
(ii) The function of both the products is similar i.e. to maintain a healthy female reproductive system with uterine and vaginal care being the focus. The main purpose of the uterine tonic of the plaintiffs is to increase the level of oestrogen causing growth of commensal bacteria, which in turn results in lowering or maintaining of pH levels between 3.5 to 4.5. This is the optimum pH level required for a healthy vagina. The function of the defendant's vaginal wash is also to Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page33/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 maintain balanced pH, besides maintaining sanitation and hygiene. In fact, the defendant's products state on its packaging, "in order to maintain microflora balance in the feminine area, washing with the product like 'EVECARE' that has pH 3.5 is recommended".
(iii) Both the products can be taken at the same time so as to achieve better results and are hence, complimentary to each other.
(iv) The trade channels of both the products are same -
both the products are sold by chemists as well as online pharmacies. The products of the plaintiffs, even though in the nature of a medicine, do not require a doctor's prescription and can be freely bought and sold as over- the-counter products.
(v) The products of both the plaintiffs and defendant are sold by online pharmacies under a common category on their websites i.e. "women care". Reference in this regard may be made to pp. 165-169 and 194-203 of the documents filed with the plaint on behalf of the plaintiffs, which are extracts from the website of "TATA 1mg" where the products of the plaintiffs and the defendant are sold under the common category of "women care".
(vi) When a prospective consumer would search for "EVECARE" on various third-party e-commerce platforms, such as "Amazon", "Netmeds" and "TATA 1mg", both the products of the plaintiffs and the defendant would show up, which is likely to cause confusion. Reference in this regard may be made to pp. 144-146 of the documents filed with the plaint and pp. 11-16 of the documents filed with the rejoinder by the plaintiffs, which are extracts from the aforesaid websites.
Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page34/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35(vii) A perusal of the screenshots of third-party websites filed by the plaintiffs clearly shows that the prices at which the two products are sold are similar. Reference in this regard may be made to the extracts from the website "Netmeds" and "TATA 1mg" on pp. 11-16 of the documents filed with the rejoinder by the plaintiffs and the extracts from "Amazon" on pp. 144-146 of the documents filed with the plaint.
(viii) There are common manufacturers for both the products, such as "Piramal", "Rapross" and the plaintiffs, who manufacture both, the medicine as well as the intimate wash. Reference in this regard may be made to pp. 90-136 of the documents filed with the rejoinder by the plaintiffs.
....
81. The words "Eve" and "Care" by themselves are dictionary words and may be considered to be descriptive. However, the plaintiffs have cited various dictionaries to highlight that "EVECARE" is not a dictionary word and hence, cannot be considered to be a descriptive word. At the highest, "EVECARE" is a suggestive term and hence, would be entitled to a high level of protection. This view is fortified by the fact that the defendant itself has obtained registration of the mark "EVECARE"."
(emphasis added)
39. The factors considered in British Sugar PLC v. James Robertson & Sons Ltd., 1996 RPC 281, quoted in para 71 of Himalaya Wellness (supra) have been applied by Indian Courts in other judgments including FDC Limited vs. Docsuggest Healthcare Services Pvt. Ltd. & Anr., 2017 SCC OnLine Del 6381, and the relevant paragraphs thereof are reproduced hereunder:
Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page35/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35"53. Now, to determine whether the defendants' services are allied and cognate to plaintiff's goods, it is essential to first discuss the law on similarity in goods/services in trademarks and its development so far. While the Act is silent on the factors to be considered for similarity in goods/services, the Courts in India - relying upon international cases and literature, have consolidated the guiding principles and factors found relevant in ascertaining the similarity between goods/services......
54. On the application of aforesaid principles, I am of the view that the plaintiff's goods are similar to and associated with the defendants' services. The reasons for the same are:
(i) Respective uses of goods/services : Plaintiff's products are a wide range of medicines used to treat several diseases including typhoid, bronchitis, fever & infection, etc. Defendants' services, inter alia, includes the fixing of appointment of doctors/diagnostics for medical check-ups to be treated for several diseases, including the ones treated by plaintiff's medicinal range, with the mark in question;
(ii) Intended Purpose : Plaintiff's products intend to achieve the cure/prevention of several diseases.
Defendants' services are meant for booking of appointment of, inter alia, doctors/diagnostic for curing and possibly further prevention of several diseases, including the ones treated by the plaintiff's medicines under the mark in question;
(iii) Respective Users of goods/services : Users of plaintiff's products are patients. Users of defendants' services are also, inter alia, patients. They are health care seekers. The target customer base and clientele of the two marks is likely to have an overlap, especially Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page36/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 amongst doctors, and consumers/patients availing services of doctors, diagnostic clinics and healthcare services. A consumer of the plaintiffs products (though they are prescription drugs) may visit the defendants' website and is likely to get confused and mislead into thinking that the services offered by the defendants are coming from the same source as the goods/medicines of the plaintiff.;
(iv) Physical Nature of goods/services : Plaintiff's products are medicines which are prescribed by doctors. Defendants' services are online booking services for obtaining appointments, inter alia, with doctors/diagnostic centres, which requires the user of the services to visit the clinic/hospital to get him/her treated and get prescribed medicines by the doctor, if required;
(v) Sector : Both the goods viz. medicines with the mark in question, and services of the defendants under the impugned mark pertain to the healthcare and medicinal sector;
(vi) Trade Channels : The plaintiff's products are medicines which are available at dispensaries; at the chemists, or; at the doctor's clinic. Defendants' services are to provide online appointment of doctors, who may prescribe the user of such service with any of the plaintiff's product. Moreover, since both fall under the same sector of healthcare, it is difficult to negate that there cannot be any overlap in the two. It is also a fact - of which the Court can take notice that organizations who have established themselves in a particular field have the tendency to diversify into related fields. Thus, an unwary customer of the plaintiff is likely to draw an association with the service offered by the defendant - also in the healthcare sector, which included fixing of Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page37/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 Doctors appointments;
(vii) Reputation : The sales figures; promotional expenses; the advancement of the Zifi products for adult and pediatric range of medicines; trademark registrations; the spread of the Zifi products and Zifi family of trademarks in India, and to countries outside India, as well as the international and national accreditations and awards received by the plaintiff, prima facie, establish that the plaintiff has built a strong reputation with its distinctive mark "Zifi" within the medicinal and pharmaceutical sector in the past 17 years in India. The mark, by virtue of its prolonged use and arbitrary adoption, has maintained an inherently distinctive character, such that a user is likely to get confused if he were to see the identical/similar mark being used for related services in the healthcare space, like that of the defendants.
It is, thus, apparent that there is similarity and association between the plaintiff's products and the defendants' services."
(emphasis added)
40. Applying those factors to the facts of this case, this Court is of the opinion that both the goods of plaintiff and defendant are used by the same group of consumers i.e. those utilizing them for construction of buildings. Both cement and paints are in some ways interconnected since construction typically requires cement for concrete and for plaster, and then a coating of paint. The typical customer would be a home builder, contractor, mason, painter etc. Both the products are, therefore, complementary to each other and the trade channels of both the products are same since these will be found in hardware shops, paint shops, and shops selling construction material.
Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page38/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:3541. A useful assessment of application of marks to allied and cognate goods is provided in the classic McCarthy on Trademarks and Unfair Competition. The reputed tome deals with this aspect in Chapter XXIV as part of 'Infringement by use of Mark on Noncompetitive Goods or Services'. It prefaces the discussion by pointing out that the classical test was of protecting a trademark owner against competitors where infringement would occur amongst directly competing products. This was diluted to discover infringement even when the infringers use was on goods with 'same descriptive properties'.
42. Per McCarthy, subsequently, aided by the 1946 Lanham Act, trademark infringement could be found when a mark was used on 'related goods as well'. In respect of the 'related goods' rule, McCarthy points out to the early basis being articulated and known now as the 'Aunt Jemima Doctrine'. This dates to the 1917 decision of a U.S. Court (Aunt Jemima Mills Co. vs. Rigney & Co., 247 F. 407, 2nd Circuit) protecting the mark Aunt Jemima on plaintiff's pancake batter from use on defendants' pancake syrup. The competitive goods rule was rejected and it was said that the mark would be protected on goods that buyers would be likely to think came from the same source as plaintiff's goods. The Aunt Jemima Doctrine was followed in Yale Electric Corp. vs. Robertson, 26 F. 2d 972 (2nd Cir. 1928).
43. The logic was that an ordinary buyer would be likely to think that there was some 'connection or sponsorship or association' between the defendant's goods and that of the plaintiff, even though the goods were non-
Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page39/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35competitive. Confusion, therefore was of sponsorship, affiliation or connection. It was not necessary that the buyer knew the name of the corporate manufacturers of the respected goods, and made the unconscious judgment that related products with the same mark must come from a common source. McCarthy gives an example of the Black and White case (Fleischmann Distilling Corp. vs. Maier Brewing Co., 314 F.2d, 149, 9th Cir. 1963), where trademark infringement was caused to Black and White scotch whisky by defendant's use of the mark Black and White on beer. More importantly, for the facts of this case, the aspect of 'complementary goods' has also been discussed in McCarthy. For 'complementary goods' in the sense that the goods might be used together, the examples given include pancake batter and pancake syrup, motor vehicles and tyres, computer hardware and software.
44. This aspect of 'complementary goods' resonates with the Court in assessing infringement in this case. Cement and exterior paint (effectively a coating on cement) are truly complementary to each other. The cement needs the paint and the paint needs the cement, and the two are, therefore, in a classical bind, inextricably intertwined.
45. Accounting for these tests and principles, in the assessment of this Court, the plaintiff's mark has acquired such a robust reputation since about half a century, it would be difficult to allow the defendant to use the same mark on their product and claim it to be a mere 'descriptor'.
Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page40/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35III. Whether there would be likelihood of confusion in the mind of consumer, or of association to the source of goods
46. Cement and paints are both used in the construction industry, therefore, they will be available in similar trade channels, even though they are technically used for two different purposes. Construction activity is largely funnelled through contractors in the medium and large-scale sector and it is these contractors who would be responsible for purchase of paints and cement. In this domain, therefore, the use of identical marks 'WEATHERSHIELD' and 'WEATHER SHIELD', one for paint and the other for cement, would prima facie cause confusion.
47. It also triggers an association of defendant's product with that of the plaintiff, and possibly vice versa. This is not desirable, particularly, when defendant is, admittedly, using the mark as a descriptive mark. If the description is meant to indicate to a consumer that their cement is protective for all weather conditions, there is no reason why that message is communicated in this particular formulation of 'WEATHER SHIELD'. As mentioned earlier in this judgment, the message of weather protection can easily be communicated in many other forms such as 'all weather protection' 'weather protector', 'protection from weather', 'weather guard' etc. Any of these, or other creative descriptions, could be utilised if the descriptive message is to be communicated to a consumer. The insistence of defendant on using plaintiff's trademark in exactly the same form as almost a brand, cannot be permitted, at least at this prima facie stage.
Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page41/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35IV. Intention of defendant in using a mark which is identical to plaintiff's
48. Reference by defendant's Deputy Managing Director and CEO, Mr. Madhav Singhania, to 'WEATHER SHIELD' in his speech, as produced in their annual report, also suggests that even internally the said word was being used, not as a descriptor but as being suggestive of a brand. It would, therefore, not pass muster, even at this prima facie stage, that the defendants' intention was to use the mark as a "descriptor".
49. As stated above, defendant's intent is prima facie suspect since, not only does it utilize the 'descriptor' in a distinctive fashion on its trade dress, but also the reference in advertisements, promotional campaigns on YouTube using the descriptor 'WEATHER SHIELD' is in an isolated fashion, akin to a brand.
Passing off
50. The argument by defendant that they would be protected under Section 30(2)(a) of the Trade Marks Act may not be tenable considering that the intended purpose or kind, quality of their good can be indicated in a different manner, as indicated above. It is not a case where a registered mark is the only option to describe kind, quality, intended purpose of goods.
51. Even if defendant's submission that, infringement is not made out because class of goods are different and there is a protection under Section 30(2) (a) of the Trade Marks Act is accepted, plaintiff has placed enough prima facie evidence on record to make out a case for passing off. The law is Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page42/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 well settled on passing off and the triple test applies in that - first, plaintiff has to establish reputation, second, defendant must have misrepresented and third, there is damage to the plaintiff.
52. Plaintiff's reputation has already been adverted to in the prior paragraphs and defendant's attempt to use plaintiff's mark as a brand itself, points out to intention and misrepresentation, and whether damage is caused to plaintiff can, at this prima facie stage, be ascertained on the basis of confusion and association caused by the defendant's mark in the market as also the inability of plaintiff to expand its portfolio into identical/allied goods.
Conclusion
53. Accordingly, plaintiff's application Order XXXIX Rules 1 & 2 of the Code of Civil Procedure, 1908 being I.A. No.6738/2023 is allowed and directions are passed in the following terms:
i) Defendant, and all those acting for and, on their behalf, are restrained from using in relation to its business, goods and promotional material/campaign, the mark "WEATHER SHIELD", or any other mark identical to or deceptively similar to plaintiff's mark "WEATHERSHIELD", amounting to infringement or passing off.
ii) The said restraint will come into force 8 weeks from the date this judgement is pronounced, in order to balance equities. In the meantime, defendant is permitted to exhaust their pending stock Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page43/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35 of goods using mark "WEATHER SHIELD".
iii) Defendant shall file an affidavit, within 12 weeks from the date this judgement is pronounced, disclosing the amount and relevant details (batch numbers, packaging date, value etc.) of such stock sold pursuant to above directions.
54. This application stands disposed of in above terms.
CS(COMM) 212/2023 & I.A. 25030/2023
1. List on 25th July 2024, before the Joint Registrar (Judicial).
2. Judgment be uploaded forthwith on the website of this Court.
(ANISH DAYAL) JUDGE MAY 28, 2024/sm/rj Signature Not Verified I.A. 6738/2023 in CS(COMM) 212/2023 Page44/44 Digitally Signed By:MANISH KUMAR Signing Date:04.06.2024 16:43:35