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2025 Supreme(Bom) 905
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
MANISH PITALE, J.
Pidilite Industries Limited - Plaintiff
Versus
Innovation Coatings Pvt. Ltd. - Defendant
Interim Application (L) No. 20626 of 2021, Leave Petition No. 295 of 2021, Commercial IP Suit No. 18 of 2022
Decided On : 25-04-2025
Mr. Hiren Kamod a/w Mr. Nishad Nadkarni, Mr. Aasif Navodia,
Ms. Khushboo Jhunjhunwala, Ms. Rakshita Singh and Ms. Jaanvi
Chopra i/by Khaitan & Co. for Applicant/Plaintiff.
Mr. Alankar Kirpekar a/w Mr. Shekhar Bhagat, Mr. Ayush Tiwari,
Mr. Rajas Panandikar, Chinmay Pagedar i/by Shekhar Bhagat and
Neelaja Kirpekar for Defendant.
The court affirmed that a registered trade mark cannot be claimed as common to trade without substantial evidence, and mere addition of a word does not prevent infringement.
Headnote:
(A) Trade Marks Act, 1999 - Sections 2(1)(zb), 30(2)(a), and 36 - Intellectual property rights - The applicant/plaintiff asserts rights over the registered trade mark "1K PUR" used for adhesive products, claiming infringement by the defendant's use of "INOVA 1K PUR" - The court finds that "1K PUR" is not a commonly used trade description and that the defendant's actions are dishonest, justifying interim relief. (Paras 1, 19, 22, 41)
(B) Infringement and Passing Off - The court emphasizes that a mark must be capable of distinguishing goods and that mere addition of a word does not negate infringement. (Paras 29, 33)
(C) Common to Trade - The defendant failed to demonstrate substantial use of "1K PUR" as a common trade description, thus cannot claim exclusivity. (Paras 26, 30)
JUDGMENT :
MANISH PITALE, J.
1. In these proceedings, the applicant/plaintiff is asserting its intellectual property rights in its registered trade mark “1K PUR”, which is used in connection with adhesive products of the applicant along with its well known registered trade mark/house mark “FEVICOL”. The applicant claims that the said adhesive product bearing the registered mark “1K PUR” is one component ready to use moisture curing fast setting adhesive with gap filling properties. The details of registration of the said trade mark “1K PUR” independently and in association with the said house mark “FEVICOL”, are given in paragraph 16 of the plaint. Registration certificates are also annexed to the plaint, which show that for the registered trade mark “1K PUR”, the registration dates back to 20th July 2013 with user claim since 13th October 2006, while the registration for the mark “FEVICOL 1K PUR” also the dates back to 20th July 2013 with user claim since 13th October 2006. The applicant also has registration for the label mark/device mark , showing that the registration dates back to 3rd January2008. The applicant has also given details in paragraph 17 of its registration in respect of the said trade mark “1K PUR” in international jurisdictions.
2. As regards sales figures pertaining to products bearing the mark “1K PUR” of the applicant, it is stated that there is steady increase in the sales turnover between 2006 to 2021. While the sales figure for the year 2021 is stated to be approximately Rs.86 lakhs, the total sales turnover between 2006 to 2021 adds upto Rs.484 lakhs. The applicant has also given sales turnover figures of such products outside India. It is stated that substantial amounts were also spent towards promotional expenses in respect of the said products bearing the mark “1K PUR”. On the basis of such pleadings and documents filed in support thereof, the applicant claims statutory rights in its registered trade mark “1K PUR”, as also common law rights on the basis of continuous use since 2006.
3. It is further pleaded that the applicant came across adhesive products of the defendant in March 2021, which show that the product was bearing the mark “INOVA 1K PUR”. It was also found that the defendant was selling and advertising the impugned product through third party e-commerce websites and in this backdrop, on 16th March 2021, the applicant sent a cease and desist notice to the defendant, specifically alleging that by using the impugned trade mark “INOVA 1K PUR” on its adhesive product, the defendant was indulging in infringement of the registered trade mark of the applicant and that it was passing off its product as that of the applicant. The said letter was delivered by email to the defendant, but the notice sent through registered post returned with the remark “office closed”. It is stated that the applicant did not receive any response from the defendant to the said cease and desist notice. It is further pleaded that since covid- 19 pandemic had hit the Nation, the applicant could not immediately pursue further action, although it was under a belief that the defendant would have stopped indulging in such conduct upon receiving the notice from the applicant. But, towards the end of July 2021, the applicant is stated to have come across trade mark application filed by the defendant on 5th April 2021, seeking registration of the impugned trade mark “INOVA 1K PUR” in classon proposed to be used basis. The examiner of the trade marks raised objection to the said application and the same was found to be pending. It is the case of the applicant that the defendant by filing the said application on 5th April 2021 for registration of the impugned trade mark “INOVA 1K PUR”, after having received the cease and desist notice from the applicant, shows the malafide and dishonest conduct of the defendant. The applicant reiterated the said pleadings made in the plaint and pressed for interim reliefs in the application.
4. The d
