Bombay High Court
Pidilite Industries Limited vs Platinum Waltech Limited on 24 August, 2021
Author: G.S. Patel
Bench: G.S. Patel
20-IAL10582-2021 IN COMIPL10568-2021.DOCX
Atul
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO. 10582 OF 2021
IN
COMMERCIAL IP SUIT (L) NO. 10568 OF 2021
WITH
LEAVE PETITION NO. 170 OF 2021
Pidilite Industries Ltd ...Plaintiff
Versus
Platinum Waltech Ltd ...Defendant
Mr Hiren Kamod, with Nishad Nadkarni, Aasif Navodia, Khushboo
Jhunjhunwala, & Charu Shukla, I/B m/S. Khaitan & Co., i/b
Khaitan & Co., for the Plaintiff.
Ms S Kazi, i/b B Poojari, for the Defendant.
CORAM: G.S. PATEL, J.
DATED: 24th August 2021
PC:-
Digitally 1. Heard. Ms Kazi appears for the Defendant. The CIS record signed by ATUL shows the vakalatnama of Ms Anjali Vora. I am informed that both ATUL GANESH GANESH KULKARNI KULKARNI Date:
Ms Vora and Mr Sagar Pujari have filed a joint vakalatnama. It is not 2021.08.26 13:14:07 in the papers in my hands. The Defendant will check whether the +0530 vakalatnama is under objection. If the objection is that there is no Page 1 of 11 24th August 2021 20-IAL10582-2021 IN COMIPL10568-2021.DOCX no-objection from Ms Rutuja Pawar who had earlier filed a vakalatnama, the Registry will not insist on such a no-objection. By my order of 16th June 2021, I discharged Ms Pawar at her request. The vakalatnama of Ms Vora/Mr Pujari is to be taken on record and registered by 30th August 2021.
2. There is an Affidavit in Reply and an Affidavit in Rejoinder. The matter has been adjourned several times.
3. The Suit seeks reliefs in trade mark, copyright and designs combined with causes of action in passing off in each. The Plaintiff is a well-known manufacturer and vendor of waterproofing chemicals, construction bonding chemicals, materials, additives and other products relating to the construction and paint industry. It also manufactures industrial and textile resins and organic pigments since at least 1969. The Plaintiff has presence worldwide for its products.
4. The Plaintiff had adopted and uses several house marks upon its range of products. These include the DR FIXIT mark with a distinctive device of a man wearing a yellow construction helmet. There also are also other marks: PIDILITE, FEVICOL, FEVISTIK, FEVIKWIK, M-SEAL, FEVICRYL etc. There is also a device of two elephants pulling apart a globe-like device. In addition to these house marks, are the Plaintiff's product identification marks including LW+, LW, URP, PIDIPROOF and so on. The DR FIXIT range or products are amongst the most popular. The Plaintiff adopted this mark in 2001. The other marks Page 2 of 11 24th August 2021 20-IAL10582-2021 IN COMIPL10568-2021.DOCX (PIDIPROOF, PIDIPROOF LW and LW) have been used since at least 1993. The label for the DR FIXIT range of products is distinctive and features a unique yellow-gold and blue colour combination in horizontal bands.
5. The Plaintiff has trade mark registration of the mark DR FIXIT and the device of the man with the yellow construction helmet. This device is a leading, essential and distinctive feature of its mark in various classes. The mark and the label have been used continuously and without interruption since adoption. The mark and the label have promoted the products. This is why Mr Kamod for the Plaintiff says that the Plaintiff has acquired significant reputation and goodwill in the mark and the distinctive device of the man in a yellow construction helmet.
6. One of the oldest products of the Plaintiff within the DR FIXIT range is sold under the marks LW and LW+. The Plaintiff began use of the mark in 1993. The house mark DR FIXIT came to be introduced in 2001 as an umbrella brand for all its waterproofing and bonding products. The mark LW continues to be used as a product identification mark within the range of products. An improved variant was launched in 2009 under the mark LW+. The LW and LW+ products within the DR FIXIT range are specially formulated compounds composed of a surface active plasticizing agent, polymer and additive. This used as additives for cement, concrete, mortar and plasters and assists in waterproofing.
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7. The Plaintiff created and uses unique and original labels for its LW/LW+ products. In 1993, when the LW range was launched, the Plaintiff had designed a unique, distinctive and original label for these products. The design was done in-house. In 2009, with the introduction of the enhanced or upgraded product, the Plaintiff created another label and commenced use of the revised unique, distinctive and original label on LW+ products. In 2011 there was another modification. This is shown at Exhibit 'A' to the plaint at page 64. The + sign is depicted in yellow and LW is shown in all capitals.
8. The DR FIXIT and LW/LW+ labels are artistic works and the copyright in these vests with the Plaintiff. I do not think there can be any dispute about this. The LW+ label has been used as a trade mark or in a trade mark sense in relation to the LW/LW+ product range.
9. The Plaintiff also has trade mark registrations of both LW and LW+. The LW+ label is one of the leading, essential, memorable and distinctive features of the marks. There are eight registrations listed in paragraph 14 in classes 01, 02 and 19. Copies of the relevant registration certificates are annexed.
10. As to the sales figures, there is little dispute. For the year 2018-2019, the sales for LW+ mark were in excess of Rs. 265 crores annually. There are also considerable expenses on promotion and advertising. This promotional material is both on television and elsewhere.
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11. Again, the Plaintiff claims goodwill and reputation acquired by dint of such usage over an extended period of time. This use has been continuous and uninterrupted.
12. Then there is the unique and distinctive share and configuration of the can or container used by the Plaintiff for its DR FIXIT range of products, including those sold with the LW/LW+ marks and labels. The container has a distinctive appeal. A representation is shown at Exhibit 'F'. It has elevated ridges and grooves on both sides and a particular canary yellow cap and the unique shaped handle. The entire colour scheme is grey and yellow for the container complementing the DR FIXIT / LW / LW+ label, which has a predominantly blue and gold colour scheme
13. The Plaintiff owns the rights in the distinctive containers. These are now associated with the Plaintiff. The Plaintiff has registrations of the designs of these containers. These registrations are valid and subsisting. That the Plaintiff has been vigilant in protecting its mark is not in dispute. This Court itself has often passed orders in favour of the Plaintiff.
14. The case against the Defendants is that in October 2020 the Plaintiff found a construction chemical product manufactured by the Defendant. Two or three things are striking about the Defendants' product. The container is almost indistinguishable from that of the Plaintiff. It has very similar elevated ridges or grooves. The container is also in grey with a bright yellow cap. Then there is the use of the mark LWC. I will turn to the defence presently but there Page 5 of 11 24th August 2021 20-IAL10582-2021 IN COMIPL10568-2021.DOCX is no doubt even at this prima facie stage that this usage is not purely descriptive but is used in a trade mark sense. The colour scheme is broadly the same as that of the Plaintiff and yet again there is a feature of a man in tie and jacket wearing a yellow construction helmet.
15. The defence on Affidavit has at least one interesting aspect. The Defendant says that its use of LWC, the label, the device and the containers are trivial and the law does not aid trivialities: de minimis non curat lex. This submission has only to be stated to be rejected, especially in the context of trade mark and copyright law.
16. The next defence presented in oral arguments is that LWC used by the Defendants is purely descriptive and stands for 'liquid waterproof / waterproofing compound'. But that is surely no answer because the Plaintiff has, as I have noted, registration of both LW and LW+. Notably, the use by the Defendant is not of the expression 'liquid waterproof compound' but of the unique abbreviation LW followed by the letter 'C'. It is impossible to hold that the Defendant is not using 'LWC' in a trade mark (or 'trade marky') sense, but as a descriptor. 'LWC' on its own describes nothing. It is not per se descriptive. The Defendant claims it is a well-known and commonly used abbreviation for 'liquid waterproof compound'. The ipse dixit of the Defendant does not make it so.
17. What has to be seen, and this is settled in trade mark infringement law, are the two rival marks set side-by-side. The Plaintiffs mark is LW/LW+. The Defendant's mark is LWC. Once Page 6 of 11 24th August 2021 20-IAL10582-2021 IN COMIPL10568-2021.DOCX the Plaintiff is a registered proprietor and the introduction of another alphabet by the Defendant is seen, as it must be, as being both trivial (which even the Defendant says it is) and immaterial, then surely an injunction must follow. A registered proprietor's statutory and common law rights are not defeated by defences like this.
18. As to the device of DR FIXIT, it is no answer to say that the man portrayed by the Defendant is more than youthful than that portrayed by the Plaintiff. Perhaps these only speak to the fact that the Defendant began its use much after the Plaintiff. Indeed, that is a curious omission because nowhere in the Affidavit do I find any mention of two singularly important aspects: (a) when the Defendant adopted the mark; and (b) how it came to adopt this mark. Given the Plaintiff's sales, it is inconceivable that the Defendant would have been unaware of the Plaintiff's market presence. The Plaintiff is not some localized operator in a taluka. It has a global presence and its products are known throughout the length and breadth of this country.
19. But the various indicators in an action like this are not to be seen in isolation or in discrete silos. The entire action of the Defendant must be seen as one. To paraphrase the classic words from English law there is no reason why a Court should be so astute to deny what the Defendant is evidently straining every nerve to do. 1 Nothing explains, or can rationally explain, why the Defendant has 1 Slazenger & Sons v Feltham & Co, [1889] 6 RPC 531.
Page 7 of 1124th August 2021 20-IAL10582-2021 IN COMIPL10568-2021.DOCX chosen to adopt a statutorily-protected design of the Plaintiff's container.
20. Now if we consider all four elements together -- the use of LWC (too similar to LW/LW+), a similar label, a similar device, and a similar container -- then the prima facie cases both on infringement and passing off more or less makes themselves. The fine distinctions that Ms Kazi seeks to draw when she says one element is positioned below and the other is above or that one character is black-bearded and the other is white-bearded can make no difference. She attempts to suggest that the Defendant's products are not only distinguishable but are in fact distinguished and that the consumers can tell one from the other. That, unfortunately for Ms Kazi, is not the test. The test is what a person of average intelligence and imperfect recollection might perceive; and very often that person is a Judge of a High Court. I should have had the greatest difficulty without an extremely close examination in being able to discern the Defendant's products as emanating from a distinct source and would quite readily have imagined that the Defendant's product is in fact one more variant from the Plaintiff's portfolio of products and labels. The dead giveaway, as I have noted, is the container. If indeed the Defendant was bona fide about its adoption, there was no reason for it to adopt a container of this design. The design aspects are not functional. They are clearly aesthetic and, to use the word of the law under the Designs Act, capricious and whimsical. Nowhere in the Affidavit in Reply is there any explanation for the adoption of this container.
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21. The Leave Petition having been served, it is made absolute.
22. The Interim Application will have to be made absolute in terms of prayer clauses (a), (b), (c) and (d) of the Interim Application, which read thus:
"(a) pending the hearing and final disposal of the suit, the Defendant, its directors, proprietors, partners, owners, servants, subordinates, representatives, stockists, dealers, agents and all other persons claiming through or under them or acting on their behalf or under their instructions be restrained by an order and injunction of this Hon'ble Court from infringing in any manner the LW/LW+Registered Marks of the Plaintiff bearing nos. 248213, 2447182, 230867, 2472730, 2472713, 2448212, 2447181 and 2308686 in any manner and from using in relation to Impugned Products or any other goods for which the LW/LW-
Registered Marks are registered or any goods similar thereto, the impugned mark LWC or the impugned labels or any other mark which is identical with or similar to the LW/ LW- Registered Marks of the Plaintiff (including the mark LW, LW+ or the LW+ Label) and from manufacturing, selling, offering for sale, advertising or dealing in such goods or any other goods bearing the impugned mark LWC or the Impugned Label or any marks similar to the LW/LW+ Registered Marks;
b. Pending the hearing and final disposal of the suit, the Defendant, its directors, proprietors, partners, owners, servants, subordinates, representatives, stockists, dealers, agents and all other persons claiming through or under them or acting on their behalf or under their instructions be restrained by an order and injunction of this Hon'ble Court from pirating or infringing the Plaintiff's copyrights in the registered design bearing nos. 212886 and 212887 in any Page 9 of 11 24th August 2021 20-IAL10582-2021 IN COMIPL10568-2021.DOCX manner and from manufacturing, selling, dealing, offering to sell any products in the Impugned Containers or any other containers or packaging materials or jars which are or contain or have applied upon it the said registered designs owned by the Plaintiff in respect of the Distinctive DR. FIXIT Containers or any fraudulent or obvious imitation thereof.
c. Pending the hearing and final disposal of the suit, the Defendant, its directors, proprietors, partners, owners, servants, subordinates, representatives, stockists, dealers, agents and all other persons claiming through or under them or acting on their behalf or under their instructions be restrained by an order and injunction of this Hon'ble Court from committing the tort of passing off in any manner and from manufacturing, marketing, selling, advertising, offering to sell or dealing in the impugned Products or any similar goods or any other goods bearing the impugned marks LWC or the Impugned Labels or the image of a man wearing a yellow construction helmet or the impugned Containers any other mark/label identical with or similar to or comprising of the LW/LW+ Registered Marks and/or the LW/LW+ Label, or the distinctive device of a man wearing a yellow construction helmet of the plaintiff arising containers/jars similar to the Plaintiff's Distinctive DR. FIXIT Containers (including its unique shape, configuration, contours, surface pattern and colour scheme);
d. pending the hearing and final disposal of the suit, the Defendant, its directors, proprietors, partners, owners, servants, subordinates, representatives, stockists, dealers, agents and all other persons claiming through or under them or acting on their behalf or under their instructions be restrained by an order and injunction of this Hon'ble Court from infringing in any manner the Plaintiff's copyrights in the artistic work comprised in / reproduced on its Page 10 of 11 24th August 2021 20-IAL10582-2021 IN COMIPL10568-2021.DOCX LW/LW+ Label and from reproducing / copying the said artistic works or any substantial part of the said artistic works on the Defendant's impugned Products (including those depicted at Exhibits to the Plaint) or any bottles, cartons, packaging material or advertising material, literature or any other substance and from manufacturing and selling or offering for sale products upon or in relation to which the said artistic works have been reproduced or substantially reproduced or by issuing copies of such works to the public;"
23. Mr Kamod has instructions not to press for the appointment of a Court Receiver at this stage but reserves the Plaintiff's right to apply should the need arise.
24. The Interim Application is disposed of in these terms.
25. There is the question of costs. This Interim Application is in Commercial Division. The rule is that costs must follow the event. If not, there must be reasons recorded. I can think of no reasons not to award costs. There will be an order of costs in the amount of Rs. 2.5 lakhs to be paid by the Defendant to the Plaintiff within two weeks from today.
26. This order will be digitally signed by the Personal Assistant of this Court. All concerned will act on production of a digitally signed copy of this order.
(G. S. PATEL, J) Page 11 of 11 24th August 2021