Bombay High Court
Pidillite Industries Ltd vs Zar Metamorphose Combine Pvt Ltd on 27 January, 2020
Author: S.C. Gupte
Bench: S.C. Gupte
Chittewan 1/8 9. COMIPL 1296-19.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION NO.1 OF 2019
IN
COMMERCIAL IP SUIT (L) NO.1296 OF 2019
Pidilite Industries Limited ... Plaintiff
Versus
Zar Metamorphose Combine
Pvt. Ltd. ... Defendant
.....
Mr. Hiren Kamod a/w Mr. Nishad Nadkarni and Ms. Khushboo
Jhunjhunwala i/b M/s Khaitan And Co. for the Plaintiff.
Ms. Megha Chandra a/w Sheelang Shah i/b Mahesh Mahale for the
Defendant.
.....
CORAM : S.C. GUPTE, J.
DATE : 27 JANUARY 2020 P.C. : . Heard learned Counsel for the parties. 2 This interim application is made in a commercial IP suit, which
is an infringement action and also a breach of copyright as well as passing off action.
3 The Plaintiff is a well known manufacturer and marketer of waterproofing chemicals, construction bonding chemicals, additive products, adhesives, sealants, automotive chemicals, art materials, Chittewan 2/8 9. COMIPL 1296-19.doc industrial adhesives, industrial and textile resins, etc. It markets its goods under various trademarks such as 'Dr. Fixit', 'Pidiproof', 'LW+', 'LW', 'Fevicol', 'Pidilite', 'Fevistik', etc. We are concerned in the present case with the trademarks "LW" and "LW+". The Plaintiff is the registered proprietor of both these trademarks, in label as well as word form. The Plaintiff also claims to have acquired a substantial reputation and goodwill in the trademarks 'LW' and 'LW+' by reason of extensive sales and promotion of its products sold under the trademarks. The Plaintiff submits that by means of copying of these trademarks and a colourable imitation of the whole trade dress of the goods, the Defendant is not only infringing the registered trademarks of the Plaintiff, but also passing off its goods as the Plaintiff's goods. Considering the fact, however, that the Defendant carries on business outside the local limits of jurisdiction of this court, the Plaintiff restricts its application at the ad-interim stage to the case of infringement, pending leave under clause XIV of the Letters Patent, for which a separate leave petition has been filed by the Plaintiff.
4 It is the grievance of the Plaintiff that in or around September 2019, the Plaintiff came across waterproofing compound products of the Defendant marketed under the mark 'LW+', which is identical to the Plaintiff's registered trademark 'LW+' and also deceptively similar to the other registered trademark of the Plaintiff, namely, 'LW'. It is the Plaintiff's case that the Defendant not only is using the registered trademark of the Plaintiff, but has also designed its labels for marketing its goods with elements, which indicate its intent to use a Chittewan 3/8 9. COMIPL 1296-19.doc colourable imitation, or substantial reproduction, of the essential features of the Plaintiff's labels or trade dress used for marketing of the Plaintiff's goods of the same description. Learned Counsel for the Plaintiff submits photographs of rival goods, i.e. the goods of the Plaintiff and those of the Defendant, in support of his case.
5 On the other hand, it is the case of the Defendant that the words 'LW' and 'LW+' are nothing but a description of the characteristics or quality of the goods. Learned Counsel for the Defendant submits that 'LW' is merely an abbreviation of the words 'liquid water-proofing' (liquid water-proofing plus' being merely suggestive of a higher grade). Learned Counsel submits that use of the words 'LW' or 'LW+' by the Defendant is a bona fide use; and it is for describing the character or quality of the Defendant's goods, which are liquid water-proofing materials. Learned Counsel relies on the provisions of Section 35 of the Trademarks Act, 1999 ("Act") and submits that nothing in the Act would entitle the proprietor of a registered trademark to interfere with any such bona fide use. The Defendant relies on some instances of the use of the words 'LW' and 'LW+' by some other manufacturers or marketers in support of her case that the words are merely a description of used goods by the particular trade or industry.
6 The Plaintiff, being a proprietor of registered trademarks 'LW' and 'LW+', is prima facie entitled to protection against the world at large from using these trademarks or any colourable imitation of them Chittewan 4/8 9. COMIPL 1296-19.doc for marketing of similar goods. No doubt, despite such registration, if the Defendant bona fide uses any description of the character or quality of its goods or services having the same word or words as the registered trademarks, the proprietor of the trademarks cannot interfere with such use on the basis of his registration. This naturally involves two aspects, one, whether the word or words used are a bona fide description of the character or quality of goods or services, and, two, whether any use of this description on the part of the Defendant is itself bona fide. It is also important to bear in mind that bona fide use of description of character or quality of goods is a matter of defence. It is for the Defendant to make out a prima facie case that it is indeed a legitimate description of the character or quality of goods; it is so used by the industry as a honest practice; and its use by the Defendant is also bona fide. And it is not enough for the Defendant to indicate that he has a mere arguable case that it is so; it must be shown to be a fairly good prima facie case.
7 By their very nature, it cannot be said that words 'LW' or 'LW+' are description of the character or quality of goods. It is no good to say that they are an abbreviation of the words 'liquid waterproofing', which are clearly descriptive; it must be shown that there is an honest practice in the industry to use this abbreviation for the words "liquid waterproofing". And for establishing such honest practice, it is not sufficient to point out that a few rival manufacturers or marketers use the very same abbreviation. The defendant has to indicate the extent of such user by these rival Chittewan 5/8 9. COMIPL 1296-19.doc traders particularly, or by the trade generally, so as to amount to a practice. And, even as a matter of practice, it must be shown to be bona fide. It is no good, if the practice itself can be said to constitute an infringement or a tort and actionable as such. It is by no means apparent in the present case that the use of these words by rival traders is so extensive that it may be identified as an industry practice. Secondly, these traders may themselves be infringers of the Plaintiff's registered trademarks and indeed, that is precisely what the Plaintiff's case here is. The Plaintiff has not only moved against these rival traders, but even managed to obtain suitable orders against them. The so-called practice of the industry, urged on the basis of such user, can hardly be termed as honest.
8 When it comes to assessing the Defendant's bona fides, the Defendant has a more onerous task on hand. The use by the Defendant prima facie indicates that the Defendant has not only used the letters 'LW+', but even a more or less same trade dress or label on the containers of the goods. The Defendant uses a more or less similar colour scheme and composition; it even uses the number "110" as against the Plaintiff's "101"; it even uses a similar photograph on the label showing a cement drum churning materials. (The Plaintiff, in fact, claims to have registered the whole of the label as a label mark.) On these facts, far from prima facie establishing bona fides of its use of the words LW+, it is prima facie possible to say that the use of these words by the Defendant is dishonest; it is prima facie possible to say that the Defendant is using the letters Chittewan 6/8 9. COMIPL 1296-19.doc 'LW+' with a view to trade upon the reputation and goodwill of the Plaintiff.
9 Even on the question of balance of convenience, since it is the Defendant's case that it has been using the letters 'LW+' as description of its goods and not as a mark to identify the goods, there is no reason why it should not make do with the expression in its full form, namely, 'liquid waterproofing', rather than its abbreviation for describing the character or quality of its goods. The Plaintiff, on the other hand, has been using the letters 'LW' and 'LW+' for identifying its goods, which are both its registered trademarks. Whereas the Defendant may not suffer much if it was called upon to describe its goods by reference to the full phrase "liquid waterproofing", the Plaintiff will clearly suffer in terms of dilution of its registered trademarks "LW" and "LW+", if the Defendant were to be permitted their user for describing its goods.
10 The Plaintiff, accordingly, has made out a prima facie case for grant of ad-interim relief. Accordingly, there will be ad-interim injunction in terms of prayer clause-(a) of the Interim Application, which is quoted below :
a. Pending the hearing and final disposal of the suit, the Defendants , its directors, proprietors, partners, owners, servants, subordinates, representatives, stockists, dealers, agents and all other persons claiming through or under them or acting on their Chittewan 7/8 9. COMIPL 1296-19.doc 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. 2448213, 2447182, 2308687, 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 LW+ or LW 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 LW+ or LW or the Impugned Label or any marks similar to the LW/LW+ Registered Marks;
11 Reply, if any, to the Interim Application to be filed by the Defendant within four weeks from today. Rejoinder, if any, within two weeks thereafter. The Interim Application to come up for hearing in due course.
12 Learned Counsel for the Defendant prays for stay of this order for a limited period. In the first place, the averments in the Defendant's reply do not indicate either that the Defendant has been using the infringing words 'LW+' for such a length of time, or that it has made such extensive sales or sale promotion, that it needs to be protected even for a limited period. Secondly, as we have noted Chittewan 8/8 9. COMIPL 1296-19.doc above, if it is the Defendant's own case that this word is used by it by way of description and not as a trade mark, the Defendant is very well free to use the appropriate description, namely, "Liquid Water- proofing" instead of its abbreviated form 'LW' or 'LW+', for describing its goods and may not suffer any prejudice. No protection in that case is really necessary even for a limited period. The application is rejected.
(S.C. GUPTE, J.) Digitally signed by Rajesh V. Rajesh V. Chittewan Chittewan Date: 2020.02.04 18:28:11 +0530