The judgment established the principle that a descriptive and generic mark may not be entitled to exclusive protection, and a defendant's bona fide adoption of a descriptive corporate name may not constitute trademark infringement or passing off.

ORDER :

A.M. Khanwilkar, J.

This order will dispose of the prayer for ad-interim relief pressed on behalf of the plaintiff to operate during pendency of the Notice of Motion.

2. In substance, the plaintiff's case is that the plaintiff company is one of the oldest companies in India and is the pioneer and the market leader in the paint industry engaged, inter alia, in the business of manufacturing and marketing paints, lacquers, varnishes, wall and wood fillers (putties), undercoats for paint in the form of primers, preservatives used to prevent rust and deterioration of wood, thinners, distempers, dry colours, colouring matter, dyestuffs, mordants, natural resins, metal in foil and powder form for painters and decorators, brushes and the like goods since last more than five decades. It is the case of the plaintiff that with a view to provide quality services to its customers under one roof, in the year 2000 commenced offering services in the field of painting through its service providers which included providing consultancy in the field of painting of the house. Such services were introduced since September 2000. It is alleged that the defendant company is infringing the plaintiff's mark and passing off it's goods and/or business as that of the plaintiff and/or is in some way connected with the plaintiff by using the mark "HOME SOLUTIONS" and the corporate name containing the words "HOME SOLUTIONS". Principally, on this allegation the plaintiff has approached this Court seeking to restrain the defendants from infringing the plaintiff's trademark and for action of passing off its goods and services as that of the plaintiff.

3. It is the case of the plaintiff that it created a novel and unique mark namely "HOME SOLUTIONS" which was launched in September 2000. The motto of the plaintiff was "it is not just about painting the walls; it is about styling them". According to the plaintiff, "HOME SOLUTIONS" holds the promise of redefining the painting industry by offering the customers plaintiff's quality goods and services. The plaintiff is relying on the sales turn over in respect of its said services offered under the trademark "HOME SOLUTIONS" or "ASIAN PAINTS HOME SOLUTIONS" for the last financial year which aggregates to more than Rs.40.00 crores. The plaintiff is also relying on the expenses incurred by the plaintiff for promoting the said business of services "HOME SOLUTIONS", which is in excess of Rs.1.8 crores on advertisement, publicity and promotions undertaken to popularize its trademarks "HOME SOLUTIONS" and/or "ASIAN PAINTS HOME SOLUTIONS" during the last financial year. The plaintiff's case is that the plaintiff has acquired a unique enviable reputation and exclusive goodwill in respect of said product and its services. It is alleged that the defendants knowingly and deliberately adopted the corporate name "HOME SOLUTIONS" so as to create confusion and deception amongst the purchasing public and trade. The sole purpose of doing so was to co-relate with the goods and/or services rendered by the plaintiff. According to the plaintiff, in the third week of January 2006, the plaintiff was informed about a news article published in DNA (Mumbai Edition) dated 26th January 2006 stating that the defendant had got incorporated a company under the name and style as "HOME SOLUTIONS RETAIL (INDIA) LIMITED" which in future would set up a chain of Home Town retail stores offering services in paints and other like services/goods under the name and/or mark "HOME SOLUTIONS". Thereafter the plaintiff immediately gave legal notice to the defendant. It is the case of the plaintiff that thereafter the plaintiff kept constant vigil and an eye on the defendants' activities and no suit was filed then for defendant offering its services under the impugned mark as complained of. According to the plaintiff, recently in the first week of June 2007 the plaintiff has come to learn that the defendant has commenced its activities of providing painting se