JUDGMENT

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I.A. 6738/2023 (under Order XXXIX Rules 1 & 2, CPC)

1. This application has been filed by the plaintiff as part of the accompanying suit seeking a decree of permanent injunction against the defendant restraining them, and all those acting for, or on their behalf, from using the mark ‘WEATHER SHIELD’ (“defendant’s mark”) or any other mark deceptively or confusingly similar to the mark ‘WEATHERSHIELD’

(“plaintiff’s mark”).

Factual Background

2. Plaintiff claims to be one of the world’s leading paint and coating companies, and hosts some of the best-known brands in the business such as ‘DULUX’, ‘ICI’ and ‘WEATHERSHIELD’. Plaintiff adopted the mark ‘WEATHERSHIELD’ internationally, in relation to paints and coatings in the 1970s, and claims to be using the same continuously and extensively since then. In support of its use, plaintiff has filed extracts of international brochures and magazines showing promotion of its mark ‘DULUX WEATHERSHIELD’ in the 1970s. A screenshot of the same is extracted below:

3. Plaintiff’s mark is registered in over 91 countries across the globe. In India, plaintiff has two registrations of the mark - under registration no. 656341 in Class 02 and registration no. 2655231 in multi-Class 99 (Classes 2, 9 and 16), with the earliest registration dating back to the year 1995. To substantiate its use in India, plaintiff has filed copies of brochures, magazines, news-papers from 1997-98, showing use of its product with its mark in landmark buildings in Kolkata, which are extracted as under:

4. Plaintiff has also filed invoices from 2010 till 2021, showing continuous sales of products under the said brand. Sales figures from 2010 till 2020 in plaintiff’s mark, as claimed, are as under:

5. Promotional expenses, as claimed by the plaintiff, are tabulated as under:

6. Reliance is also placed on the Chartered Accountant’s certificate bearing out that plaintiff’s products under the brand have garnered sales of Rs.609 crores in the financial year 2019-20. Same is extracted as under:

7. Advertisements on YouTube have also been placed as part of record, along with other advertisements in various forms of media such as newspapers, magazines, digital news, daily newspapers etc. Counsel for plaintiff also pointed out that, in 2012, plaintiff’s mark was featured on a documentary on Disney Channel, screenshot of the same is extracted hereunder:

8. Grievance is against defendant’s product, a screenshot of which is extracted below:

9. In January 2020, plaintiff came across two trademark applications filed by the defendant on 12th September, 2019 seeking registration of marks ‘JK SUPER STRONG BUILD SAFE WEATHER SHIELD’ and the device mark. under nos. 4291741 and 4291742 respectively, in Class 19, in relation to building and construction materials including cement.

These applications were filed on a ‘proposed to be used’ basis.

10. Plaintiff sent a legal notice dated 3rd February, 2020 to the defendant and also filed a notice of opposition against these applications. Defendant replied on 18th February, 2020, refusing to comply with plaintiff’s demand. In April 2020, defendant filed a separate cancellation petition seeking removal of plaintiff’s two registered marks for ‘WEATHERSHIELD’. The said matters are still pending adjudication.

11. According to the plaintiff, defendant has not claimed use of the mark ‘WEATHER SHIELD’ in the rectification petitions proceedings, nor filed any documents in support of the same. However, later in September 2022, plaintiff learnt that defendant’s products bearing the mark ‘WEATHER SHIELD’ were available in the markets, therefore, the instant suit was filed.

12. Counsel for plaintiff pointed out that it is not as if the mark ‘WEATHER SHIELD’ is always being used in combination with defendant’s house mark ‘JK SUPER STRONG’, but has also been used in isolation, as evident from a few promotional videos, screenshots of which are reproduced as under:

Submissions on behalf of parties

13. Origin of the term ‘W