Bombay High Court: In a trademark infringement suit filed by Pidilite Industries Ltd. (the plaintiff) with regard to its mark M-seal against the infringing mark R-seal, R.I. Chagla, J. held that the Defendant has obtained the aforesaid trademark by playing a fraud upon the Registrar of Trade Marks and concealing from him, the existence of the Plaintiff’s prior registered marks.
The Court held that prima facie, the Defendant’s marks R-SEAL are deceptively similar to the Plaintiff’s registered marks MSEAL and are violative of the rights of the Plaintiff. Accordingly, they are violative of the provisions of the Trade Marks Act, 1999 including Section 11 of the Act and ought not to have proceeded to registration.
Background
The Plaintiff is a world-renowned company, carrying on business in the field of sealants and adhesives, construction and paint chemicals, art materials, industrial adhesives, industrial and textile resins and organic pigments and preparations since at least 1969. The mark M-SEAL was conceived and adopted by the Plaintiff’s predecessors in title i.e., Mahindra Van Wijk and Visser Ltd. in or about the year 1968, and has been continuously, extensively and in an uninterrupted manner used since then.
The said mark and the artistic representation thereof have been acquired by the Plaintiff pursuant to an agreement dated 27-03-2000, together with the goodwill thereof and the Plaintiff is the registered proprietor of the mark M-SEAL and/or marks consisting of M-SEAL as one of its leading, essential and distinctive features. The unique and distinctive artistic representation of MSEAL i.e., (including in particular the unique line below the mark which is an extension from the first letter of the mark), as well as the M-SEAL Labels, are original artistic works in respect of which copyrights subsist and such copyrights are owned by the Plaintiff.
Alleged Trademark Infringement
In December 2020, the Plaintiff came across sealant products of the Defendant being sold under the mark 
The plaintiff contended that the impugned label used by the Defendant also bears the impugned taglines “SEALS JOINS FIXES BUILDS”/ “BUILDS FIXES JOINS SEALS” which are identical to the M-SEAL Tagline. The impugned products of the Defendant also bear the impugned identification mark JHAT-PAT which is deceptively similar to the Plaintiff’s identification mark PHATAPHAT.
Further, the plaintiff alleged that the defendant has also made applications and wrongfully obtained trademark registrations in class 1, bearing application nos. 860804 and 860805, for registration of the mark R-SEAL and a label mark containing R-SEAL, in the same deceptively similar stylized manner as the Plaintiff’s M-SEAL registered mark; which is ex-facie illegal, fraudulent and ought to shock the conscience of this Court.
Observation and Analysis
Whether the Trademark owner can make “user claim” prior to acquisition of the trademark from its predecessors?
The Plaintiff’s Trademark Registration in respect of the mark M-SEAL is dated 16-08-1972 and with a user claim from 01-12-1968. While from the Defendant’s own case, the date of adoption and use of the impugned mark R-SEAL is 1999 i.e., subsequent to 1968 and the user claim of the Plaintiff of 1972.
Rejecting the defendant’s contention that the Plaintiff cannot claim use of the mark M-SEAL since 1972 and/or registration of the mark from 01-12-1968 because the mark was acquired by the Plaintiff from its predecessors in title only in 2000, the Court opined that the Plaintiff’s acquisition of the M-SEAL marks in 2000 was together with the goodwill thereof. Noting that Section 38 and 42 of the Trade Marks Act, 1999 specifically provides for assignment with goodwill, the Court held that the Plaintiff is entitled to claim all rights and privileges in the said marks, including statutory and common law rights, from the date of the first usage of the said marks by its predecessors in title i.e., from 1968. The Court stated,
“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.”
Additionally, the Court noted that the Defendant had failed to produce documents in support of its alleged user claim in respect of the impugned marks from 1999, since the earliest invoice available in respect of its R-SEAL product is of the year 2005, which is subsequent to the Plaintiff’s adoption and use of the mark M-SEAL. Further, the sales figures provided by the Defendant was in respect of the Defendant’s firm and not in respect of the R-SEAL products alone.
Thus, the Court held that prima facie the Defendant is not the prior adopter or user of the marks in question and was not entitled to any rights thereon. Further, when the Defendant’s adoption itself is dishonest, no amount of user can create any rights in favour of the Defendant and that honesty in adoption is also not a defence to an action for infringement.
Whether the disclaimer on some of the Plaintiff’s marks negate its rights to claim exclusivity and protection?
Noticeably, the plaintiff’s registration bearing no. 282168 contains a disclaimer with regard to the word SEAL and the registrations bearing nos. 961689 and 1347392 have a condition imposed on it viz “Registration of this trade mark shall give no right to the exclusive use of the all other descriptive matters appearing on the label”.
Rejecting the defendant’s contention that disclaimer on some of the Plaintiff’s marks negates its rights to claim exclusivity and protection thereof, the Court relied on Pidilite Industries Limited v. S.M. Associates, 2003 SCC OnLine Bom 143, to hold that the Plaintiff’s mark would have to be regarded as a whole including the claimed matter while deciding the question of infringement. Since disclaimers do not go to the market and a common man of average intelligence or the average consumer would have no knowledge of any disclaimers present in a trade mark registration. Pertinently, in Pidilite Industries Ltd. (supra) the Court had accorded judicial notice and protection to the Plaintiff’s mark MSEAL (word per se) despite the presence of, and after consideration of the very same disclaimer/condition on the Plaintiff’s mark.
Hence, the Court concluded that the Defendant having adopted, used and also fraudulently secured registration of the impugned R-Seal marks containing the term SEAL as their leading and essential features in a trade mark sense is estopped from contending that the term “SEAL” is common to trade or generic or incapable of protection or being registered in the name of various other manufactures or third parties.
Some Relevant Findings of the Court
• The Defendant had not been able to establish that it had conducted any independent search of the public record of the Registrar as to whether the Plaintiff’s mark M-SEAL was in existence during the registration of the Defendant’s impugned mark.
• 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.
• Merely producing search reports or online case status in respect of certain marks lying on the register is not evidence of those marks being used or being available in the market. The burden of proving such alleged use by third parties lies on the party who is relying upon it.
• The Defendant, on whom the burden lies, must show that the use by the trade is extensive and that the term “SEAL” or colour scheme of M-SEAL packaging/label is common to the trade or generic.
• Merely because the Defendant has registered its mark does not take away the power of the Court, even at the interlocutory stage, to go behind the Defendant’s registration and grant injunction if registration of the Defendant’s marks is prima facie found illegal, fraudulent and shocks the conscience of the Court.
• Every intelligent copying would seek to introduce some differences or changes1, however, the same would not have any effect on the Plaintiff’s case, as the Defendant’s work has incorporated essential and substantial features of the Plaintiff’s work. Thus, the rival marks/labels cannot co-exist without causing confusion and deception to the public at large and without violating the rights of the Plaintiff.
Verdict
In the light of the above, the Court held that the Defendant’s adoption of the impugned mark and its representation, independently as well as in conjunction with the impugned label, impugned tagline and impugned identification mark and the overall trade dress in respect of its R-SEAL products, are violative of the rights of the Plaintiff and this is not a matter of co-incidence.
Hence, the Court restrained the defendant by a perpetual order and injunction from manufacturing, marketing, selling, advertising, offering to sell or dealing in the Impugned Products or sealants or any similar goods or any other goods bearing the impugned mark R-SEAL, or the impugned labels or the impugned tagline or the impugned 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. Similarly, the defendant was also restrained from infringing in any manner the Plaintiff’s copyrights in the artistic work comprised in/reproduced on its M-SEAL Label(s) and from reproducing/ copying the said artistic works or any substantial part of the said artistic works on the Defendants’ Impugned Products.
[Pidilite Industries Ltd. v. Riya Chemy, 2022 SCC OnLine Bom 5077, decided on 11-11-2022]
Advocates who appeared in this case :
Advocates for the Plaintiff: Mr. Hiren Kamod a/w Nishad Nadkarni, Mr. Aasif Navodia & Ms. Khushboo Jhunjhunwala i/b Khaitan and Co.;
Advocates for the Defendant: Mr. S. Ramakrishnan a/w Ms. Girish Thakur.
*Kamini Sharma, Editorial Assistant has put this report together.
1 Pidilite Industries Limited v. S.M. Associates, 2003 SCC OnLine Bom 143