Registered Trademark '1K PUR' Upheld Against Generic Use Claim: Bombay High Court Grants Interim Injunction to Pidilite

Mumbai: In a significant ruling reinforcing the protection afforded to registered trademarks, the Bombay High Court (Commercial Division) has granted an interim injunction restraining Innovation Coatings Pvt. Ltd. from using the mark "INOVA 1K PUR" for adhesive products. Justice ManishPitale held that Pidilite Industries Limited's registered trademark "1K PUR" is entitled to protection, dismissing the defendant's argument that the mark is merely a generic trade description or common to trade.

The judgment, reserved on April 1, 2025, and pronounced on April 25, 2025, arose from an interim application filed by Pidilite in its commercial IP suit against Innovation Coatings. Pidilite , known for its "FEVICOL" brand, claimed infringement of its registered mark "1K PUR", used for a specific type of adhesive since 2006 and registered since 2013. Pidilite also holds registrations for "FEVICOL 1K PUR" and a label mark incorporating "1K PUR".

Pidilite contended that "1K PUR" functions as a product identification mark or sub-brand, distinguishing this particular adhesive from others in its portfolio. They presented evidence of increasing sales since 2006 and substantial promotional expenses. Upon discovering Innovation Coatings' use of "INOVA 1K PUR" in March 2021, Pidilite issued a cease and desist notice. Crucially, Pidilite highlighted that Innovation Coatings applied to register "INOVA 1K PUR" as a trademark in April 2021, after receiving the notice, arguing this demonstrated mala fide intent.

Innovation Coatings defended its use, asserting that "1K PUR" is a widely recognized trade description meaning "one component polyurethane resin" and that Pidilite had fraudulently obtained registration for a generic term. They argued that their use was descriptive and that the addition of "INOVA" sufficiently distinguished their product from Pidilite 's "FEVICOL" brand. They also alleged misrepresentation by Pidilite regarding product photographs in the plaint. Innovation Coatings cited the use of "1K PUR" in patents dating back to 1996 and its supposed origin in the German word "Komponente" as evidence of its generic nature and common use.

The Court meticulously examined the arguments and evidence. Justice Pitale found that Innovation Coatings was using "1K PUR" as a trademark and not merely descriptively, noting that "1K PUR" formed a leading and essential feature of the "INOVA 1K PUR" mark. The Court pointed out that Innovation Coatings had applied for trademark registration of "INOVA 1K PUR" without any disclaimer regarding "1K PUR", contradicting its claim of descriptive use.

Rejecting the "common to trade" defence, the Court reiterated that a party claiming a mark is publici juris must provide substantial evidence of extensive, actual, and continuous use by third parties in the market, including sales figures. The defendant's reliance on references in patents and general use in adhesive/paint industries without such evidence was deemed insufficient. The argument based on the German word "Komponente" was also dismissed, as the term is not commonly understood in India by the average consumer, including target buyers like carpenters who identify Pidilite 's product by the "1K PUR" mark itself.

Citing the Supreme Court judgment in Ruston & Hornsby Ltd. v/s. Zamindara Engineering Co. , the Court affirmed that mere addition of a word like "INOVA" to an infringing mark does not absolve the defendant of infringement.

The Court found prima facie evidence of dishonesty on the part of Innovation Coatings, noting that the application for registration of "INOVA 1K PUR" was filed shortly after receiving Pidilite 's cease and desist notice and was on a "proposed to be used" basis despite products allegedly being sold earlier. The Court also observed that applying for registration of a mark incorporating a registered mark ( Pidilite 's "1K PUR") indicated either a lack of due diligence (search of trademark registry) or dishonest intent to trade upon Pidilite 's goodwill. The principle of estoppel was applied, preventing the defendant from claiming "1K PUR" is generic when they themselves sought to register a mark containing it.

The Court also referenced the Full Bench judgment in Lupin Ltd. v/s. Johnson and Johnson , finding that the defendant failed to demonstrate that Pidilite 's registration of "1K PUR" was ex-facie illegal, fraudulent, or shocking to the conscience.

Finding a strong prima facie case of both infringement and passing off, the Court concluded that the balance of convenience lay with Pidilite and that refusal of interim relief would cause grave and irreparable loss. The Court also allowed Pidilite 's leave petition to combine the causes of action for infringement and passing off.

Accordingly, the Court granted the interim injunction, restraining Innovation Coatings and all related parties from manufacturing, selling, advertising, or dealing in adhesives or similar goods bearing the mark "1K PUR" (with or without any other mark), deeming it identical or similar to Pidilite 's registered "1K PUR" and "FEVICOL 1K PUR" marks.

The ruling underscores the judiciary's commitment to protecting established trademark rights, particularly where the defense of genericness or common use lacks substantial proof and the defendant's conduct suggests an attempt to capitalize on a competitor's goodwill.