Trademark Infringement Case: Bombay High Court Grants Relief to Pidilite Industries by Issuing Temporary Injunction Against R-SEAL

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The Bombay High Court Granted relief to Pidilite Industries by issuing a temporary injunction against R-SEAL.

Background 

The mark M-SEAL was conceived and adopted by the Plaintiff’s predecessors in title i.e., Mahindra Van Wijk and Visser Ltd. (later known as Mahindra Electrochemical Products Ltd. – “MEPL”.) in or about the year 1968, and has been continuously, extensively and in an uninterrupted manner since then.

The mark R-SEAL is also written and used by the Defendant in an identical stylized manner of disjuncting the first letter of the mark from the rest and extending the first letter into an underlining for the rest of the mark as to that of the Plaintiff’s mark.

Arguments 

Advocate Kamod, appearing for the Plaintiff, submitted that infringement of a registered trade mark takes place by use of either an identical or a deceptively similar trade mark in relation to identical or similar goods.  

He submitted that the Defendant’s usage of the impugned marks R-SEAL which are deceptively similar to the Plaintiff’s mark M-SEAL and its unique stylized representation is infringing the rights of the Plaintiff in its registered M-SEAL trade marks including the M-SEAL labels.

Advocate Ramakrishnan, appearing for the Defendant, submitted that the Plaintiff has failed to produce the Deed of Assignment and therefore, the details of the Assignment of Trademark and Copyright is unknown. 

He contended that the decision of the Court in the M-Seal Vs. S M-Seal cannot be binding and a different interpretation is possible based on the reading on the entire Deed of Assignment. 

Decision 

The single judge bench of Justice R.I. Chagla observed that the Plaintiff is the prior adopter and user of the mark M-Seal. 

The court observed that  an acquisition of the mark does not change the date of first usage of the mark and this will apply to the Plaintiff’s trademark registration in respect of M-SEAL Phataphat and M-SEAL Superfast marks which assignment had taken place in the year 2000, but the user of this marks would go back to the usage of the marks by the predecessors in title.

“It is settled law that when the Defendant’s adoption itself is dishonest, no amount of user can create any rights in favour of the Defendant” the court said.

It was viewed by the court that there is no honesty in the Defendant’s adoption of the impugned mark, apart from it being well settled that honesty in adoption is also not a defence to an action for infringement. 

The court said that in any event, honest concurrent user is not a defence under the Trade Marks Act, 1999 and is merely an aspect or a pre-request for claiming the defence of acquiescence which in the present case such defence has neither been pleaded nor alleged by the Defendant.

It was observed by the court that merely because the defendant has registered its mark does not take away the power of the Court, even at interlocutory stage, to go behind the Defendant’s registration and grant injuction if registration of the Defendant’s marks is prima facie found ex facie illegal, fraudulent and shocks the conscience of the Court.

The court held that the defendant’s registrations for the marks R-SEAL and are ex-facie illegal, fraudulent and of a nature that would shock the conscience of the Court.

The court ordered that pending the hearing and final disposal of the suit, the Defendants and all other persons claiming through or under them or acting on their behalf or under their instructions be restrained by a perpetual order and injunction of the Court from manufacturing, marketing, selling, advertising, offering to sell or dealing in the Products or sealants or any similar goods or any other goods bearing the mark R-SEAL, or the labels or the tagline or the sub-mark or any other mark/label identical with or similar to or comprising of the mark M-SEAL, M-SEAL Registered Marks or the M-SEAL Label, M-SEAL Tagline, sub-mark PHATAPHAT or bearing the trade dress of the Plaintiff’s products or using packaging similar to the Plaintiff’s M-SEAL Product (including its features or colour schemes).

Case title: Pidilite Industries Limited v/s Riya Chemy 

Citation: Interim application (l) no. 15502 of 2021 in commercial ip. suit no.147 of 2022  

Click here to read the Order/Judgment 

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