Introduction:
Plaintiff[1] has been producing and selling adhesives since 1969. The plaintiff asserts that it conducts business not only in India but also in North America, South America, the Middle East, Africa, and Asia. The trademarks and service marks of the plaintiff, includes HEATX, FEVICOL, LW+, LW, DR. FIXIT, and an artistic representation of two elephants pulling in opposite directions against a backdrop of Sunset.
Dr. Fixit in particular was adopted in the year 2001. The said mark is accompanied by a distinctive device of a man wearing a yellow construction helmet and is used by the plaintiff for a range of its products. The said trademark DR. FIXIT of the plaintiff is registered in Classes 1 and 19, which include word mark and device / label mark registrations. The amount spent for advertisement and promotion of the said mark for the year 2018- 2019 was about Rs.96.3 Lakhs.
The registration of the trademarks LW and LW+ dates back to the year 2012. It is significant that such registration certificates show that the trademarks LW and LW+ are registered as trademarks along with trademark DR. FIXIT and depiction of a man wearing a yellow construction helmet. It is the case of the plaintiff that customers have associated these marks with the products of the plaintiff over a considerable period of time. Approximate sales figures in respect of products sold under the registered trademarks LW and LW+ For the year 2018-19 is Rs.265.5 Crores.
Issue:
The plaintiff asserts that the defendant obtained registrations for its trademark TIKAWOO, showing the image of a Rhino in the backdrop of Sunset and its trademark MR. ENGINEER, showing the image of a man wearing a construction helmet. It is submitted that although registrations have been obtained by the defendant in respect of the said marks, the plaintiff is entitled to interim reliefs, pertaining to infringement as also passing off as per the case of Lupin Limited v. Johnson and Johnson.
The learned counsel for the plaintiff further submitted that unless interim reliefs, as claimed are granted, the plaintiff is likely to suffer grave and irreparable loss, thereby showing that the balance of convenience is in favour of the plaintiff.
Decision of the Court:
The Bombay High Court held that “On an overall comparison between the two device marks, it cannot be said that merely because the defendant has also used the image of a man with a construction helmet, it would lead to a conclusion in the mind of the consumer that the registration obtained by the defendant in respect of its mark can be said to be prima facie fraudulent or unsustainable. The plaintiff has therefore, failed to make out a case for grant of interim reliefs in the context of the said trademark or for infringement or passing off of the copyright .It neither shows deceptive similarity nor copying of essential and fundamental features of the registered trademark and copyright of the plaintiff
As regards the registered trademark LW and LW+ of the plaintiff, as against the impugned mark LWP+ of the defendant, this Court is of the opinion that the comparison of the marks indeed shows that there is deceptive similarity
It was found that the registered trademark of the plaintiff HEATX and the impugned mark HEAT-TIK of the defendant can prima facie give rise to confusion. The learned counsel for the plaintiff was justified in relying upon judgment of this Court in the case of Boots Company PLC England and Anr. Vs. Registrar of Trade Marks Mumbai and Anr. to contend that if two words are spoken in a hurried manner, there is possibility of confusion, particularly when persons from different backgrounds, coming from various parts of the country, with diversity in language do tend to pronounce English words hurriedly in such a manner that confusion can indeed arise.
The Court therefore granted injunction against the mark LWP+, HEAT TIK and restrained the defendant from using afore said injuncted marks.
[1] PIDILITE INDUSTRIES LIMITED V. CHIRIPAL INDUSTRIES LIMITED.,(COMM) 452 OF 2021
DUCTUS EDGE 