In a passing off action based on a descriptive mark, it is essential for a plaintiff to establish prior user, distinctiveness, and reputation of the mark. The mark must also demonstrate evidence of extensive and continuous use to support a claim of distinctiveness, and the impact of delay and acquiescence on the grant of an injunction must be considered.

1. This is the Plaintiffs’ application for a restraint order in an action for passing off. The rival marks are identical: LEAKGUARD.

There is no question, therefore, of assessing any similarity or deceptive similarity. Both sides claim to be using the mark in relation to solvent cements and similar chemicals and compounds. Although the Defendants are based in Jalgaon, their sales do not appear to be territorially or geographically restricted. Plaintiff No.1 (“Pidilite”) is a well-known manufacturer of, among other things, various types of adhesive products. Plaintiff No. 2 (“Hardcastle & Waud”) claims to have adopted the mark in question and later assigned its rights to the 1st Plaintiff.

2. The Plaintiffs claim prior user since 1999. This is when, according to them, Plaintiff No. 2, Hardcastle & Waud, began using this name in respect of solvent cement as a liquid chemical. On 29th April 1999, Hardcastle & Waud made Application No. 85374 for registration of a label mark containing the word “LEAKGUARD” along with the expression HOLDTITE for use in relation to industrial chemicals. This application has since proceeded to registration. A few years later, from 2001, Hardcastle & Waud began using the expression LEAKGUARD in respect of solvent cement specifically for joining various kinds of pipes such as PVC, CPVC and so on.

3. The Plaintiffs claim that between 2001 and 2008 their sales have steadily increased. By 2007-2008 their sales of products using the expression LEAKGUARD were in excess of Rs. 200 lakhs. In addition, the Plaintiffs have annexed a Chartered Accountant’s certificate to the effect that for the period from 1st April 2008 to 31st March 2009 the Plaintiffs (or, at any rate, the 1st Plaintiff) had sales of Rs. 23.03 million and for the period from 1st April 2009 to 31st March 2010, they had sales of Rs. 34.96 million in respect of their LEAKGUARD-branded products. For these periods, their advertisement and sales expenses were, respectively, 0.04 million and 0.17 million. Photographic samples of the Plaintiffs’ products are at Exhibit “C” to the plaint at page 35. These show cans and bottles with the word LEAKGUARD set below the other expression HOLDTITE. Other material is at page 36 of the plaint. Exhibit “E” at page 38 is a product brochure of the 1st Plaintiff. It specifically shows LEAKGUARD being used independently to describe the PVC solvent cement sold by the Plaintiffs. According to Dr. Tulzapurkar for the Plaintiffs, this literature in the trade was widely circulated.

4. The year 2001 is of crucial importance. The Defendants claim to have started using the same expression LEAKGUARD in April 2005, and Dr. Saraf for the Defendants says that such evidence of use by the Plaintiffs as there is between 2001 and 2008 is scanty indeed. On 21st February 2008, Hardcastle & Waud, the 2nd Plaintiff, assigned all its rights, title and interest in respect of the by then registered trade mark LEAKGUARD to the 1st Plaintiff. This was under a Deed of Assignment dated 21st February 2008. A copy of this Deed of Assignment is annexed to the plaint.

5. On 16th February 2008, the Defendants themselves applied for registration of the trade mark LEAKGUARD under Application No. 1744023 in Class, Anglo-French Drugs & Industries Ltd v. Eisen Pharmaceutical Company Pvt. Ltd., 1998 (18) PTC 692 (Bom). At the time of the application, they claimed user from the year 2000. This was, Dr. Saraf says, 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. In the meantime, the 1st Plaintiff, Pidilite Industries Limited, also made an application on 16th December 2008 for registration of a label mark that inter alia included the expression LEAKGUARD. To complete this part of the narrative, I must note that Dr. Saraf says that the Defendants have since withdrawn their application. However, this may not make a material difference for the present purposes. Wha