Trademark Registration with 'KWIK' Disclaimer Doesn't Confer Exclusive Right on Part; Rectification Denied for Dissimilar New Device Mark: Delhi HC

Delhi High Court Dismisses Pidilite 's Plea to Cancel 'POMA-EX KIWKHEAL' Trademark

New Delhi: In a significant ruling on trademark law, the Delhi High Court has dismissed a rectification application filed by Pidilite Industries Ltd., the maker of 'FEVIKWIK', seeking the removal of the 'POMA-EX KIWKHEAL' device mark from the Trade Marks Register. The Court held that a disclaimer on the word 'KWIK' in some of Pidilite 's own registrations limited its claim to exclusivity over that part, and the respondent's new device mark, when viewed as a whole, was sufficiently dissimilar to prevent rectification.

The judgment was delivered by HON'BLE MR. JUSTICE ANISH DAYAL in the case titled PIDILITE INDUSTRIES LTD . Vs SANJAY JAIN & ANR (C.O. (COMM.IPD-TM)-371/2022). The application, initially filed before the Intellectual Property Appellant Tribunal (IPAB), was transferred to the High Court following the abolition of the tribunal.

Background of the Dispute

Pidilite Industries, a major player in adhesives and chemicals, is the proprietor of several well-known trademarks including 'FEVIKWIK', used extensively since 1987, with distinctive packaging adopted in 2007. The respondent, Sanjay Jain & Anr., had obtained registration for the device mark 'POMA-EX KIWKHEAL' (device) in 2014, claiming user since 2011.

This case has a history rooted in an earlier infringement suit filed by Pidilite against the respondent in the Bombay High Court concerning the respondent's previous packaging, which used the mark 'KWIKHEAL'. The Bombay High Court had granted an ad-interim injunction in 2014 (later made absolute in 2017), finding the earlier packaging deceptively similar and holding 'KWIK' as an essential feature of Pidilite 's mark.

Pidilite then initiated proceedings for the rectification/cancellation of the respondent's mark under Sections 47 and 57 of the Trade Marks Act, 1999, arguing that the registered mark was similar, applied for in bad faith (a migration from the injuncted mark), and infringed their rights.

Arguments Presented

Pidilite 's counsel contended that the impugned mark 'POMA-EX KIWKHEAL' device, particularly the term 'KWIKHEAL' and its red lettering, was deceptively similar to 'FEVIKWIK' and likely to cause confusion. They stressed that the Bombay High Court had already deemed 'KWIK' an essential feature and the mark similar. They also argued the registration was in bad faith and there was no bona fide use of the registered device mark.

The respondent's counsel argued that the Bombay High Court's findings were merely prima facie and not binding on the rectification proceedings. Crucially, they highlighted that Pidilite itself had obtained some 'FEVIKWIK' registrations with a specific limitation/disclaimer stating, "registration of the trademark shall give no right to the exclusive use of the word KWIK". They also presented a list showing other marks on the register containing 'KWIK', asserting it was common to the trade, and that 'FEVI' was the dominant and distinctive part of Pidilite 's family of marks.

Court's Analysis and Findings

Justice Dayal carefully considered the arguments, particularly focusing on the respondent's new device mark that was registered after the Bombay High Court injunction, which was the subject of the rectification plea. The Court noted that the new device mark had significant visual differences from Pidilite 's packaging and even the respondent's previously injuncted packaging:

• Prominent display of the trade name 'POMA-EX'.
• Different colour scheme (red, green, black, yellow vs. Pidilite 's yellow and blue).
• Different layout and artwork, including an animated man device.
• Different depiction of the product container shape.

Applying the 'anti-dissection rule' , the Court held that the device marks must be compared as a whole. On a comparative assessment, the Court found "apparent dissimilarity" between the two device marks.

The Court further analysed the significance of the disclaimer on the word 'KWIK' in some of Pidilite 's registrations. Citing the Supreme Court judgment in Registrar of Trade Marks v. Ashok Chandra Rakhit and a Division Bench decision of the Delhi High Court in Vardhman Buildtech Pvt. Ltd. v. Vardhman Properties Ltd. , the Court explained that the purpose of a disclaimer is to define the proprietor's rights and prevent extravagant claims over parts that are not distinctive or are common to the trade.

Justice Dayal held that the disclaimer on 'KWIK' meant Pidilite could not claim exclusive rights over this word. Furthermore, applying the 'dominant mark principle' , the Court found that 'FEVI' was the common and dominant part of Pidilite 's family of marks ('FEVIKWIK', 'FEVICOL', etc.), and consumer recall was primarily associated with 'FEVI', not 'KWIK'.

The Court also acknowledged that 'KWIK', being a colloquial variation of 'QUICK', was likely to be used in other marks, as supported by the respondent's list.

Regarding the Bombay High Court's findings, Justice Dayal reiterated that those observations were prima facie and related to the respondent's earlier packaging. They were not conclusive findings that could bind the rectification proceedings concerning the new , registered device mark. The Court also noted that Pidilite had not opposed the registration of the respondent's new device mark despite the pendency of the infringement suit.

Decision

In conclusion, the Delhi High Court found it difficult to order the removal of the respondent's registered mark. The Court stated that Pidilite 's claim was "expansive beyond legitimate bounds" given the disclaimer on 'KWIK' and the apparent dissimilarity of the respondent's registered device mark when viewed as a whole.

Accordingly, the rectification petition was dismissed.

The judgment clarifies that the presence of a disclaimer significantly impacts a proprietor's ability to claim exclusive rights over a specific part of a registered mark and that comparison of device marks, especially in rectification actions concerning later registrations, must consider the overall appearance and distinctiveness.

The judgment was uploaded on the Court's website on March 22, 2024.