Our Associate, Anand Kumar discusses “Exercise Diligence And Show Bonafide Before Fixing Third Party Marks: Bombay High Court “
On June 16, 2021, the Bombay High Court, in Pidilite Industries Ltd. vs. Q-Chem Sealers Pvt Ltd., ordered Q-Chem Sealers Pvt Ltd. (Defendant) to stop using the marks LWC, URP, labels bearing these marks and unique design of DR FIXIT containers.
Pidilite Industries Ltd. (“Plaintiff”) is a well-known manufacturer of water proofing chemicals, construction, bending chemicals, paint chemicals, adhesives, sealants, etc. since 1969 and sells a range of such goods under various marks, including, LW+, LW, URP, DR. FIXIT. The Plaintiff alleged that the Defendant is using, without authorization, the LW, URP marks and LW/LW+ labels. The Plaintiff also alleged that the Defendant has attempted to pirate the design of the DR. FIXIT container shown below.
The Court noted that the DR. FIXIT container has a visual appeal, and its distinctive shape is not functional. Further, the Court observed that container has elevated ridges or grooves on both sides. There is a unique yellow handle for the DR FIXIT products with a yellow cap. For the URP products the handle and cap are in orange. As per the Court, these colour combinations are distinctive. The Court also took note of the Plaintiff’s registrations for the marks LW+, LW and URP and the substantial sales of products sold under the marks.
The Court referred to the table of comparison for the rival parties’ marks, labels and designs of the containers set out below:
As per the Court, even prima facie there is no meaningful distinction between the design of the Defendant’s container and the Plaintiff’s DR. FIXIT container. Accordingly, the question of the Defendant’s bonafides in adopting the above marks and the labels looms large and speaks volume about the trade mark and copyright violations.
The Court was of the view that the Defendant’s container bore the mark LWC which was deceptively similar to the Plaintiff’s LW/LW+ marks. The container also bore a label that was a substantial reproduction and an impermissible, colourable imitation of the Plaintiff’s LW/LW+ labels and the artistic works in those labels. Moreover, a substantially similar blue, white and yellow colour scheme, layout and distinctive lettering was used. Then there was another product that bore mark URP/URP-SBR, which was undoubtedly deceptively similar to the Plaintiff’s URP mark. Most strikingly, the Court noted that the Defendant was using storage cans that were clearly a colourable imitation of, and deceptively similar to, the Plaintiff’s DR. FIXIT containers: an identical shape, shoulders, ridges on the side, cap and surface patterns.
Based on the aforesaid analysis and comparison, the Court concluded that it is not inconceivable that the Defendant lacked bonafides. Hence, the Court held that there is a very strong prima facie case on infringement and passing-off grounds for all three forms of intellectual property that the Plaintiff seeks to protect viz., trademark, copyright and design. Accordingly, the Court granted an ad-interim order restraining the Defendant from dealing in the similar/identical goods bearing the marks and labels identical/similar to the Plaintiff’s marks and labels and the shape/design of the containers similar to the Plaintiff’s distinctive DR. FIXIT containers.
Citation: Pidilite Industries Ltd vs. Q-Chem Sealers Pvt Ltd (COMMERCIAL IP SUIT (L) NO. 11236 OF 2021), decision dt. June 16, 2021 by Bombay High Court.