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High Court of Judicature at Bombay
S.J. KATHAWALLA, J.
Pidilite Industries Limited
Versus
Jubilant Agri & Consumer Products Limited
Notice of Motion (L) No. 1717 of 2013 In Suit (L) No. 752 of 2013
Decided On: 13-01-2014
TRADEMARK - INFRINGEMENT - PASSING OFF - AD-INTERIM INJUNCTION - COMPOSITE MARK - DESCRIPTIVE MARK - DISTINGUISHABLE MARK - ESSENTIAL FEATURE - HONEST ADOPTION - LIKELIHOOD OF CONFUSION - SECONDARY MEANING - SIMILAR MARK - TRADE DRESS - TRADEMARK APPLICATION - TRADEMARK REGISTRATION - USER CLAIM.
Fact of the Case:
Plaintiff, a registered proprietor of three trademarks, two word marks, and one label mark, all containing the word 'MARINE,' filed a suit against the Defendant for infringement of registered trademarks, infringement of copyrights, and passing off its goods as that of the Plaintiff. The Defendant contended that the word 'MARINE' is inherently descriptive, devoid of any distinctive character, and incapable of being registered as a trademark. The Plaintiff argued that the word 'MARINE' forms an essential part of the registered trademarks and has acquired a secondary meaning and further distinctiveness.
Finding of the Court:
The Court held that the word 'MARINE' forms a prominent and essential part of all three registered trademarks and has acquired a secondary meaning and further distinctiveness. The Court also held that the Defendant's adoption of the mark 'MARINE PLUS' is neither honest nor bona fide and that the Defendant is using 'MARINE'/ 'MARINE PLUS' as a trademark and not in the descriptive sense. The Court further held that the Defendant's use of the word 'MARINE' is not protected under Sections 35 and 30 (2) of the Trade Marks Act, 1999.
Issues: 1. Whether the word 'MARINE' forms an essential part of the Plaintiff's registered trademarks? 2. Whether the word 'MARINE' has acquired a secondary meaning and further distinctiveness? 3. Whether the Defendant's adoption of the mark 'MARINE PLUS' is honest and bona fide? 4. Whether the Defendant is using 'MARINE'/ 'MARINE PLUS' as a trademark or in a descriptive sense? 5. Whether the Defendant's use of the word 'MARINE' is protected under Sections 35 and 30 (2) of the Trade Marks Act, 1999?
Ratio Decidendi: 1. The Court held that the word 'MARINE' forms a prominent and essential part of all three registered trademarks based on the following factors: - The word 'MARINE' is set out prominently and is of equal prominence to the other components of the marks. - The word 'MARINE' is not insignificant, inconsequential, or non-essential. - The word 'MARINE' is capable of distinguishing the Plaintiff's products from those of other traders. 2. The Court held that the word 'MARINE' has acquired a secondary meaning and further distinctiveness based on the following factors: - The Plaintiff has been using the word 'MARINE' in relation to its products for over nine years. - The Plaintiff has extensive and continuous sales of its 'MARINE' products. - The Plaintiff's 'MARINE' products have achieved a high level of goodwill and reputation. - The word 'MARINE' has become exclusively associated with the Plaintiff and its products. 3. The Court held that the Defendant's adoption of the mark 'MARINE PLUS' is neither honest nor bona fide based on the following factors: - The Defendant itself applied for registration of a label mark containing the word 'MARINE PLUS' as its leading and essential feature. - The Defendant copied the Plaintiff's trade dress, including the pictorial depiction of a plank of wood dipping into water. - The Defendant's mark is deceptively similar to the Plaintiff's registered trademarks. 4. The Court held that the Defendant is using 'MARINE'/ 'MARINE PLUS' as a trademark and not in the descriptive sense based on the following factors: - The Defendant is using the word 'MARINE' in a prominent and noticeable manner. - The Defendant is using the word 'MARINE' to identify and distinguish its products from those of other traders. - The Defendant is using the word 'MARINE' to promote and sell its products. 5. The Court held that the Defendant's use of the word 'MARINE' is not protected under Sections 35 and 30 (2) of the Trade Marks Act, 1999, because the word 'MARINE' is not descriptive of the Defendant's products and the Defendant is not using the word 'MARINE' in a bona fide manner.
Final Decision: The Court granted an ad-interim injunction restraining the Defendant from infringing the Plaintiff's trademarks and copyrights and/or committing the act of passing off its goods as that of the Plaintiff.
1. The above Suit is filed by the Plaintiff against the Defendant on the ground that the Defendant is infringing the registered trademarks of the Plaintiff, infringing the copyrights of the Plaintiff and committing the tort of passing off its goods as the goods of the Plaintiff in the circumstances set out in the Plaint.
2. By the above Notice of Motion, the Plaintiff has sought ad-interim/ interim reliefs restraining the Defendant from infringing the trademarks and copyrights of the Plaintiff and/or committing the act of passing off its goods as that of the Plaintiff.
3. By an ex parte order dated 29th August, 2013, ad-interim injunction in terms of prayer clauses (a) and (b) of the Notice of Motion have been granted in favour of the Plaintiff and against the Defendant which prayers are reproduced hereunder:
“(a) That pending the hearing and final disposal of the suit, the Defendants, its Directors, proprietors, partners, owners, servants, subordinates, representatives, stockists, dealers, agents and all other persons claiming under them be restrained by an order and injunction of this Hon'ble Court from infringing the Plaintiff's MARINE Registered Marks bearing registration Nos. 1319822, 1319821 and 1319823 in any manner and from using in relation to Impugned Goods or any other goods for which the MARINE Marks are registered or any goods similar to the goods for which MARINE Registered Marks are registered, the Impugned Mark or any other mark which is identical or similar to MARINE Registered Marks or any essential feature thereof including the mark MARINE or any other marks similar thereto and from manufacturing, selling, offering for sale, advertising or dealing in Impugned goods under Impugned Mark and from manufacturing, selling offering for sale, advertising or dealing in any goods (for which MARINE Registered Marks are registered or which are similar to the goods for which MARINE Registered Marks are registered) bearing the Impugned Mark or any other mark which is identical or similar to MARINE Registered Marks or any essential feature thereof including the mark MARINE or any other marks similar thereto;
(b) That pending the hearing and final disposal of the suit, the Defendants, its Directors, proprietors, partners, owners, servants, subordinates, representatives, stockists, dealers, agents and all other persons claiming under them be restrained by an order and injunction of this Hon'ble Court from infringing in any manner the Plaintiff's copyright in the artistic work comprised in/reproduced on either of the MARINE Artistic Works including in particular the MARINE Artistic Work 2 and MARINE Artistic Work 3 and from reproducing/copying the said artistic works or a substantial part of the said artistic works (including in particular the depiction of the plywood in a slanting manner floating in water which is splashing along with droplets of water) on the Impugned Goods or the Impugned Labels (including those depicted at Exhibit K to the Plaint) or any bottles, cartons, packaging material or advertising material, literature or any other substance and from manufacturing and selling or offering for sale products upon or in relation to which the said artistic works have been reproduced or substantially reproduced or by issuing copies of such works to the public”.
The Notice of Motion is now taken up for final hearing.
4. The infringement alleged by the Plaintiff relates to three registered trademarks (two word marks and one label mark), which marks along with their registration numbers are reproduced hereunder as A, B and C respectively.
A FEVICOLMARINE Reg. No. 1319822 (Word mark)
B FEVICOLMARINE Reg. No. 1319821 (Word mark)
C FEVICOLMARINE Reg. No. 1319823 (Label mark)
5. The Registration Certificates in respect of the above three registered marks are at pages 58, 61 and 63 of the Plaint. All three registrations are effective since 9th November, 2004. Two registrations (Pages 58 @ 59 and 61 @ 62 of the Plaint) have a u
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