Bombay High Court
KPPNair 1 NMSL 1717 of 2013
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION (L) NO. 1717 OF 2013
IN
SUIT (L) NO. 752 OF 2013
Pidilite Industries Limited ...Applicant
In the matter between:
Pidilite Industries Limited ...Plaintiff
vs.
Jubilant Agri & Consumer Products Limited ...Defendant
Mr. V.R. Dhond, Senior Advocate, along with Mr. Nishad Nadkarni, Mr. Vaibhav Keni
and Mr. Sumeet Rane, instructed by M/s. LEGASIS PARTNERS, for the
Applicant/Plaintiff.
Mr. Ravi Kadam, Senior Advocate, along with Mr. A.A. Kirpekar, instructed by M/s.
MAG LEGAL, for the Defendant.
CORAM: S.J. KATHAWALLA, J.
Order reserved on: 10th
October, 2013
Order pronounced on: 13th
January, 2014
ORDER:
1. The above Suit is filed by the Plaintiff against the Defendant on the ground
that the Defendant is infringing the registered trademarks of the Plaintiff, infringing
the copyrights of the Plaintiff and committing the tort of passing off its goods as the
goods of the Plaintiff in the circumstances set out in the Plaint.
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2. By the above Notice of Motion, the Plaintiff has sought adinterim/interim
reliefs restraining the Defendant from infringing the trademarks and copyrights of
the Plaintiff and/or committing the act of passing off its goods as that of the Plaintiff.
3. By an ex parte order dated 29th August,2013, adinterim injunction in terms
of prayer clauses (a) and (b) of the Notice of Motion have been granted in favour of
the Plaintiff and against the Defendant which prayers are reproduced hereunder:
“(a) That pending the hearing and final disposal of the suit, the
Defendants, its Directors, proprietors, partners, owners, servants,
subordinates, representatives, stockists, dealers, agents and all other
persons claiming under them be restrained by an order and
injunction of this Hon'ble Court from infringing the Plaintiff's
MARINE Registered Marks bearing registration Nos. 1319822,
1319821 and 1319823 in any manner and from using in relation to
Impugned Goods or any other goods for which the MARINE Marks
are registered or any goods similar to the goods for which MARINE
Registered Marks are registered, the Impugned Mark or any other
mark which is identical or similar to MARINE Registered Marks or
any essential feature thereof including the mark MARINE or any
other marks similar thereto and from manufacturing, selling,
offering for sale, advertising or dealing in Impugned goods under
Impugned Mark and from manufacturing, selling offering for sale,
advertising or dealing in any goods (for which MARINE Registered
Marks are registered or which are similar to the goods for which
MARINE Registered Marks are registered) bearing the Impugned
Mark or any other mark which is identical or similar to MARINE
Registered Marks or any essential feature thereof including the mark
MARINE or any other marks similar thereto;
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(b) That pending the hearing and final disposal of the suit, the
Defendants, its Directors, proprietors, partners, owners, servants,
subordinates, representatives, stockists, dealers, agents and all other
persons claiming under them be restrained by an order and
injunction of this Hon'ble Court from infringing in any manner the
Plaintiff's copyright in the artistic work comprised in/reproduced on
either of the MARINE Artistic Works including in particular the
MARINE Artistic Work 2 and MARINE Artistic Work 3 and from
reproducing/copying the said artistic works or a substantial part of
the said artistic works (including in particular the depiction of the
plywood in a slanting manner floating in water which is splashing
along with droplets of water) on the Impugned Goods or the
Impugned Labels (including those depicted at Exhibit K to the Plaint)
or any bottles, cartons, packaging material or advertising material,
literature or any other substance and from manufacturing and
selling or offering for sale products upon or in relation to which the
said artistic works have been reproduced or substantially reproduced
or by issuing copies of such works to the public”.
The Notice of Motion is now taken up for final hearing.
4. The infringement alleged by the Plaintiff relates to three registered
trademarks (two word marks and one label mark), which marks along with their
registration numbers are reproduced hereunder as A, B and C respectively.
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A
FEVICOL MARINE
Reg. No.
1319822 (Word
mark)
B
Reg. No.
1319821 (Word mark)
C
Reg. No.
1319823 (Label
mark)
5. The Registration Certificates in respect of the above three registered marks
are at pages 58, 61 and 63 of the Plaint. All three registrations are effective since 9th
November, 2004. Two registrations (Pages 58 @ 59 and 61 @ 62 of the Plaint) have
a user claim of 1st May, 2003. The third registration (Page 63 @ 64 of the Plaint) has
a user claim of 1st May, 2003. The Plaintiff has laid stress on the fact that all the
three registrations are absolute and unconditional, and in particular the Registrar,
although entitled to, did not impose any condition or limitation on the word
'MARINE' whilst granting registration and resultantly registration has been granted
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in respect of the entirety of the marks.
6. In addition to the three registered trademarks, the Plaintiff has filed
applications for registration in respect of five other trademarks, particulars of which
are given hereunder:
Trademark Reg/Appln. Details Class Status
FEVICOL MARINE (label) 2110954 1 Pending
MARINE 1918007 1 Pending
MARINE 1972339 1 Pending
FEVICOL MARINE(Label) 2110954 1 Pending
FEVICOL MARINE(Label) 2425737 1 Pending
As can be seen from the table above, three of the five applications are for label
marks and two applications are in respect of the word marks, and that all the five
applications are pending registration. The two pending word marks applications are
in respect of the word 'MARINE' (by itself/stand alone). These applications have
been numbered 1918007 and 1972339. A perusal of the advertisement in respect of
Trademark Application No. 1972339 (for the word mark 'MARINE' ) establishes that
the user claimed therein has been since 2003. According to the Plaintiff, due to an
inadvertent error, Trademark Application No. 1918007 also for the word mark
'MARINE' wrongly mentioned the user claim as “proposed to be used”. According
to the Plaintiff, upon this error being noticed, the Plaintiff filed an application in
Form TM16 for amending the user claim date, copy of which is tendered in Court.
7. According to the Plaintiff, the Defendant by using the mark 'JIVANJOR
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MARINE PLUS' is infringing the Plaintiff's registered mark and is also guilty of
passing off their goods as that of the Plaintiff.
8. The Defendant contends that the Plaintiff's mark is 'FEVICOL MARINE' and
the Defendant's mark is 'JIVANJOR MARINE PLUS' and that both the Plaintiff and the
Defendant are using the word 'MARINE' in a descriptive manner. The main defence
of the Defendant is that the word 'MARINE' is inherently descriptive, is devoid of
any distinctive character, is incapable of being registered as trademark and therefore
cannot be claimed to be a trademark of the Plaintiff even though it forms part of the
registered trademark/label mark 'FEVICOL MARINE'.
9. As submitted by the Plaintiff it is essential to examine at the outset, whether
the word 'MARINE' forms an essential part of each of the three registrations set out
as A, B and C in paragraph 4 above. I have perused the three marks set out as A, B
and C in paragraph 4 above. As can be seen from the said marks, what is set out at
A is the word mark 'FEVICOL MARINE'. The two components of the registered
word mark are the word 'FEVICOL' and the word ‘MARINE' which are arranged side
by side. Both these words are in the same font and of the same size and are
therefore of equal prominence. At B, the registered word mark 'FEVICOL MARINE'
is set out. This word mark consists of the words 'FEVICOL MARINE' written one
below the other. The word 'FEVICOL' is written in a font which is slightly larger
than the word 'MARINE' . The word 'MARINE' however, notwithstanding the slight
difference in the font size, is very prominent and therefore constitutes a prominent
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and essential feature of the registered mark and cannot be regarded as insignificant
or inconsequential or non essential or not noticeable. The mark set out at C in
paragraph 4 above, is a label mark consisting of the device of two elephants pulling
a sphere and the words 'FEVICOL' and 'MARINE' written one below the other. Once
again both these parts are of comparable prominence and the word 'MARINE' forms
an essential and prominent part of the registered mark as well. The word 'MARINE'
therefore cannot be regarded as inconsequential or insignificant or non essential or
something that will not be noticed.
9.1 It is also correctly submitted on behalf of the Plaintiff that when
comparing two marks (a registered mark and the offending/impugned mark) in an
infringement action, the Court will compare the offending/impugned mark with the
prominent and essential features of the registered marks and that the Court is not
required to only compare the single most prominent feature of the registered mark.
In other words, in the exercise of comparing rival marks, more than one prominent
and essential feature can exist.
9.2 Therefore upon perusal of all the three registered marks, I am prima facie
satisfied that the word 'MARINE' forms a prominent and essential part or feature of
all the three registered trademarks set out at A, B and C in paragraph 4 above.
10. The Plaintiff has submitted that the products bearing the Suit marks are
promoted and/or advertised and/or bought and/or sold and/or associated with the
mark/word 'MARINE' and not merely 'FEVICOL MARINE'. This submission is
vehemently denied/disputed by the Defendant.
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10.1 As pointed out by the Plaintiff, its business activity extends to manufacture
and sale of (i) adhesives; (ii) sealants; (iii) construction and paint chemicals; (iv)
automotive chemicals; (v) art material, (vi) industrial and textile resins; and (vii)
organic pigments and preparations. This diversity of business and products is carried
out by the Plaintiff through various divisions. One such division is the Fevicol
Division. The Fevicol Division manufactures and/or markets several products under
different brand names such as: (i) MARINE ; (ii) DDL; (iii) SPEEDX; (iv) PL111, (v)
NAIL FREE, etc. These products cater to different segments and/or are for different
purposes (e.g. NAIL FREE is an adhesive used in relation to glass and/or mirror;
'MARINE' is an adhesive used in relation to wet and/or humid conditions). These
individual products are identified and/or distinguished from one another by using
different brand names. These brand names are known as product identification
marks/brands. 'MARINE' is one such subbrand/product identification mark. When
used in conjunction with the house mark ‘FEVICOL' or independently thereof, the
product identification marks/brands indicate and/or connote to the trade and/or
members of the public (i) what that product is (e.g. 'MARINE' brand adhesive);
and/or (ii) with which house brand (in FEVICOL) the same is associated. This is
necessary since the product bearing one product identification mark/brand cannot or
may not meet the purpose of another product bearing another product identification
mark, even though both products may bear the same house mark ‘FEVICOL'. Hence
the product identification marks/brands serve to distinguish and/or identify the
individual product in question. The product identification marks/brands therefore
serve the important purpose of identifying and/or distinguishing one product from
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the other. It is for this reason that the Plaintiff had obtained separate trademark
registrations and/or filed separate trademark applications for the various product
identification marks/brands. The Plaintiff has at pages 41 to 52 of the Plaint
annexed its catalogue which shows the use of several product identification
marks/brands. The Plaintiff is therefore correct in its submission that no one will
go to a shop and ask for ‘FEVICOL'. If he does so, he will be asked, “what ‘FEVICOL '
product?”.
10.2 The Plaintiff has in support of its contention that in the trade, products are
known by, called for and sold with reference to these product identification
brands/marks, placed on record some of the bills and/or invoices. Pages 35 to 40
are the invoices which show that individual products are referred to and/or sold
and/or purchased with reference to product identification marks/brands. A perusal
of the same shows that the invoices issued by the Plaintiff as well as the orders
received by the Plaintiff refer to a product only by the different brand names like
'MARINE', ‘DDL', etc. (i.e. without use of the housemark 'FEVICOL'). The Plaintiff has
in paragraphs 10, 11, 12, 13 and 14 of the Plaint referred to: (i) the sale of the
Plaintiff's product under the 'MARINE' mark; (ii) the success and popularity of the
products bearing the 'MARINE' mark; (iii) the goodwill generated in respect of the
'MARINE' mark/'MARINE' products; and (iv) the efforts made by the Plaintiff to
advertise/promote the 'MARINE' products/brand. It is evident from the Certificate
of Khanna & Panchmia, Chartered Accountants, dated 17th July, 2013, annexed as
ExhibitH1 to the Plaint, that the Plaintiff began the sale of 'MARINE' labelled
products/commenced the use of the 'MARINE' brand from the Financial Year 2003
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2004. It is the case of the Defendant that they commenced using the impugned
mark in June, 2012. If the sales figures of the Plaintiff upto 31st March, 2012 are
considered, the aggregate sales by the Plaintiff till 31st March, 2012, are in excess of
Rs. 130 crores. If half of the sales for the Financial Year 20122013 (period April to
September) are added, the total sales are in excess of Rs. 180 crores. Consequently,
by the time the Defendant commenced the use of the impugned mark, the Plaintiff
had been in the market for more than nine years and had aggregated sales in excess
of Rs. 180 crores.
10.3 The Defendant has submitted that there are several products available in
the market containing the mark 'MARINE'. However, the Defendant has been unable
to show the sales of the other 'MARINE' products. Therefore, the extensive and
continuous sales of the Plaintiff's 'MARINE' products/use of the 'MARINE' mark has
to be seen in the backdrop of the fact that the Defendant has been unable to place
before this Court sufficient material to show any significant sales of other 'MARINE'
products. Consequently as submitted by the Plaintiff, the position that emerges is
that the Plaintiff was the only one who was manufacturing and/or selling products
(of any significant volume) with the 'MARINE' trademark. Resultantly, a person who
wanted the 'MARINE' adhesive would ask for ‘MARINE' and not 'FEVICOL MARINE'
as there was no other 'MARINE' branded products in the market for him to need the
addition of the prefix 'FEVICOL' to distinguish one 'MARINE' from the other. The
Plaintiff has also correctly submitted that when a customer goes to a shop to buy
biscuits depending on what he wants, he simply asks for them by their product
identification mark/brand or subbrand e.g. 'Marie' or 'Monaco' or 'Goodday' or
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'Krackjack' or '50:50' or 'Maska Chaska'. He does not preface it with the name of the
manufacturer i.e. Parle or Britannia.
10.4 In the circumstances, it is clear that by reason of open, continuous and
extensive sales over a period of about nine years, the mark 'MARINE' either by itself
or as a component/constituent of the registered trademark 'FEVICOL MARINE' has
acquired a secondary meaning/further distinctiveness and has become exclusively
associated with the Plaintiff.
11. It is submitted on behalf of the Defendant that the word 'MARINE' is a
common dictionary word and that until the application for the word mark 'MARINE'
proceeds for registration, no monopoly in respect thereof can be granted. It is
submitted that granting reliefs to the Plaintiff will amount to creating a monopoly in
the Plaintiff's favour over a common word in the English language and that the Court
should be slow in passing any orders which would have this effect. The Plaintiff has
relied upon the judgment of this Court in the case of I.T.C. Limited Company vs.
G.T.C. Industries Ltd. and another1
and the decision in the English Law of Joseph
Crosfield cited therein to urge that the word 'MARINE' is a “part of the great common
of the English language” and/or “devoid of distinctive character” and/or “not capable
of distinguishing the goods of one trader from another” and therefore the Court
would be in error in granting an injunction.
11.1 As set out hereinafter, the Defendant has itself applied for registration of a
mark described by it as the 'MARINE PLUS' (Label) comprising of the words 'MARINE
1 2002 (25) PTC 465 Bom.
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PLUS' as its leading and essential feature and is therefore estopped from contending
that the word 'MARINE' is descriptive or has become publici juris or ‘common to
trade'. By the act/action of making the application, it manifested its own state of
mind/understanding that 'MARINE PLUS' used by it was used as a mark. This is not
in any way altered/diluted/affected by the subsequent withdrawal of the application
(on legal advice) post the filing of the Suit.
11.2 The Defendant itself has contended that the word 'MARINE' is a dictionary
word, meaning “of or relating to the sea” (as defined in the Oxford English Reference
Dictionary). The dictionary meaning “of or relating to the sea” does not in any
manner describe the products of the Plaintiff/Defendant or the characteristics of the
products of the Plaintiff/Defendant. The word 'MARINE' is not descriptive of the
products of the Plaintiff/Defendant. The Defendant has also relied on the meaning
of the word 'MARINE GLUE' as “glue that is not water soluble”. The word 'MARINE
GLUE' finds no mention in the Oxford Dictionary, but only in an online dictionary, the
author, veracity or acceptance of which is not known and which is neither a widely
accepted nor a renowned dictionary as the Oxford Dictionary. Added to this, as
stated hereinabove, the fact that the Defendant itself applied for registration of the
same as a trademark, inherent in which is the admission that 'MARINE' is distinctive
and in any event capable of distinguishing the products of one person from those of
another and is capable of being registered as a trademark. The contention of the
Defendant that the word 'MARINE' is a common, customary term, generic,
laudatory or nondistinctive mark within the meaning of Section 9 (c ) of the Trade
Marks Act, 1999 (“the Act”) in relation to “waterproof adhesives” cannot be
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accepted. The Plaintiff is correct in its contention that persons purchasing the
products of the Plaintiff and the Defendant would normally be carpenters, who
would not be necessarily aware of the alleged meaning of the word 'MARINE' and
the descriptive nature of the mark, if any, (which is denied by the Plaintiff), and is of
no significance to them, and any product bearing the mark 'MARINE' would be
associated by them with the Plaintiff and purchased accordingly.
11.3 The Judgment of this Court in I.T.C. Ltd. vs. G.T.C. (supra), or for that
matter the English decision of Joseph Crosfield cited therein have absolutely no
application or relevance to the present case. The judgment of this Court in ITC, as
also the case of Joseph Crosfield makes it apparent that the said case pertain to
rectification. In the case of ITC (supra), the Registry had rejected an opposition
that the mark applied for was a common word and/or non distinctive and/or
descriptive and/or laudatory and granted registration. The grant of registration was
challenged before the High Court in a rectification petition. The subject matter of
the challenge in the proceedings before this Court was the validity and/or
correctness of the registration granted. It is as a part of this inquiry that the Court
considered whether the word 'Gutsy' could be registered i.e. whether it was capable
of distinguishing goods of the trader or of a non distinctive character. The same
inquiry was done in the case of Joseph Crosfield. This inquiry cannot be made or be
gone into in the present case. The present action is one of infringement. The
correctness of the registration has been conceded. The Registry has held that the
marks in question (whose registration has been granted) are fit to be registered.
They have been found to be: (i) capable of distinguishing the goods of one trader;
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and (ii) not descriptive or of a distinctive character. As submitted by the Plaintiff
therefore the correct question to be addressed is what does the registration cover?
Does it include 'MARINE' or does it exclude 'MARINE'? If 'MARINE' is included, an
action for infringement will lie and the Defendant can only rely upon the statutory
defences (Sections 30 and 35 read with Section 17 of the Act). If 'MARINE' is not
included, the infringement part of the action will fail. Therefore there cannot be a
third option. I have already reached a prima facie finding as set out in paragraph 9.2
hereinabove that the word 'MARINE' forms a prominent and essential part or feature
of all the three registered trademarks set out at 'A', 'B' and 'C' in paragraph 4 above.
11.4 In any event, even otherwise there is no substance in the Defendant's
contention. This is because there is no absolute and/or total and/or complete bar to
the registration of a common word. An ordinary word can become distinctive by use.
In the present case, the Plaintiff has been the only user of the 'MARINE' mark in the
market since 2003 and has used it extensively and on a pronounced scale for nine
years.
11.5 Relying on the decision of the Learned Single Judge of this Court in Asian
Paints Ltd. vs. Home Solutions Retail (India) Ltd. 2
, the Defendant contended that this
decision is an authority for the general proposition that where the Plaintiff's
registered trade mark contains descriptive/nondistinctive content, injunction must
be refused. The facts of the case were as under:
(i) The Plaintiff was the registered proprietor of the device/label mark “ASIAN
PAINT HOME SOLUTIONS”. The device/label was an artistic work which depicted a
2 2007 (35) PTC 697
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house in the alphabet “O”. The registration covered goods (inter alia paints) under
Class 2. The Plaintiff had secured no registration in respect of services.
(ii) The Defendant on the other hand was offering ‘services' in respect of home
care convenience and utility stores offering home products of other manufacturers
under their brand name under one roof.
(iii) In relation to these services, the Defendant was using the mark “HOME
TOWN” and not “HOME SOLUTIONS”.
(iv) The Defendants contended that the adoption of its corporate name “Home
Solutions Retail (India) Ltd.” was bona fide because the corporate name was
descriptive of the intended business of the Defendant Company. In this context, the
Court made the following observations:
(a) In paragraph 5, the Court concluded that having regard to the fact that the
registration covered goods, and the Defendant's mark was used in relation to
services. The Court therefore held that,“Thus understood, it will not be a case of
infringement of registered trademark as such”;
(b) In paragraph 7 the Court answered the question whether the rival marks were
identical or deceptively similar. The Court concluded that there was a marked
difference in the rival marks viz. “ASIAN PAINTS HOME SOLUTIONS” and “ HOME
TOWN”. The Court therefore answered the issue by observing that, “ By no standards
it can be said that the two marks are identical or similar”. A similar finding is to be
found in paragraph 10 of the judgment.
(c) In paragraph 8, the Court noted the Plaintiff's argument that the adoption by
the Defendant of the mark “HOME SOLUTIONS” in its corporate name was mala
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fide. The Court answered it in the negative, in paragraph 9, by observing that the
corporate name of the Defendant was reflective of its intended business namely that
of offering services (solutions) in respect of homes. A similar finding is to be found
in paragraphs 10 and 13 of the judgment.
(d) It was in this backdrop that the Court accepted the defence based on Section
30 (2) and Section 35 of the Act. Even whilst doing so, the Court caveated it by
saying that, “at this stage of the proceedings” and “at least at this adinterim stage”.
11.6 The observations in the above judgment in the said decision are therefore to
be viewed and construed in the context of that matter. They do not lay down any
general proposition of law. All that is observed therein is that in that case on the
basis of the material before it, at that stage (adinterim) the court was satisfied that
the expression “HOME SOLUTIONS” was generic and publici juris and inherently
incapable of becoming distinctive of any single person. The present case is
completely different. In this case the marks are not different or dissimilar; both the
parties are using it in relation to goods i.e. there is no goods vs. services issue. The
Defendant's adoption as set out hereinafter is prima facie lacking in bona fides and
no material has been placed on record to show that the mark is publici juris. The
Defendant's defence on “descriptive” fails on facts in the present case since ‘MARINE'
is not descriptive and in any case has been used as a trademark. The said judgment is
of no assistance to the Defendant.
11.7 The Defendant has also relied on the judgment in the case of Carew Phipson
Ltd. vs. Deejay Distilleries3 wherein it is held that purely descriptive terms are totally
3 AIR 1994 Bom 231
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unregisterable. However this judgment has no application to the present case since
the case in question is one of passing off. The Plaintiff therein therefore could
claim no statutory monopoly. The principles which govern a case of infringement
and those which govern a case of passing off are very different on many issues. In
an infringement action, the Defendant must bring itself within the ambit of the
statutory exceptions/defences provided in the Act itself (Sections 17, 30, 35, etc.). As
set out hereinafter, in the present case it has clearly failed. Hence the judgment is of
no relevance. Moreover, as set out above, the word 'MARINE' is not descriptive of
the Defendant's product and by reason of open, continuous and extensive sales over
9 years has become distinctive of the Plaintiff and its products.
11.8 I am therefore prima facie of the view that the submissions of the Defendant
as recorded in paragraph 11 hereinabove cannot be accepted.
12. The Defendant has also submitted that the Plaintiff has been using the word
‘MARINE' in a descriptive manner and in fact the Plaintiff has never used and/or
promoted the stand alone word 'MARINE' as a trademark. It is submitted that it is
amply clear from the Plaintiff's product specifications, product features and benefits,
label highlights, tag lines of the Plaintiff's promotional material etc. that the term
'MARINE' is used by the Plaintiff to designate the characteristics and quality and
intended purpose of its products. It is submitted that the Defendant is also using the
word 'MARINE' in a descriptive manner to describe that the water insoluble
adhesive is to be used for 'MARINE PLY' and the said adoption is therefore honest
and bona fide.
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12.1 The Learned Senior Advocate appearing for the Plaintiff has in response
submitted that the manner in which the Plaintiff is using the word 'MARINE' is to be
judged primarily from the product of the Plaintiff. Additionally, reference can be
made to: (i) the manner in which the word 'MARINE' is shown in advertisements;
and (ii) the manner in which products bearing the mark 'MARINE' are purchased
and sold in the trade. If any one of the above is considered, it will immediately
become apparent that the Plaintiff is using the word 'MARINE' as a mark and not in
a descriptive sense.
12.2 I have in the earlier paragraphs of this order already recorded my prima facie
finding that the word 'MARINE' forms a prominent and essential part or feature of
all the three registered trademarks set out at A, B and C in paragraph 2 above and
that the mark 'MARINE' in relation to the business of adhesives has come to be
exclusively identified and/or associated with the Plaintiff alone. I have also perused
the advertisements of the Plaintiff's products depicted at pages 92, 93 and 94 of the
Plaint and have noted that as submitted by the Plaintiff the containers bearing the
Plaintiff's products have the entirety of the registered trademark of the Plaintiff
together with an additional feature of the device of a plank being immersed in the
water. If the trade dress of these containers is seen, it is obvious that the Plaintiff
has applied to the container, the entirety of the registered trademark at page 63 of
the Plaint. The Plaintiff is therefore using in relation to its goods and on them its
registered trademark as registered. It is therefore clear from the said advertisements
that the word 'MARINE' is used by the Plaintiff as a trademark and not in a
descriptive sense.
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12.3 Again, if the advertisements at pages 92 to 94 of the Plaint are seen, they
also show that in between the registered trademark (as registered) and the image of
a wooden plank being immersed in water, are the words “Waterproof Adhesive”.
These are descriptive words and indicate the quality, characteristic or intended use
of the product. This further reinforces the Plaintiff's submission that it is using the
word 'MARINE' as a mark and not in a descriptive sense. It is correctly submitted on
behalf of the Plaintiff that had the word ‘MARINE' being used in a descriptive sense,
there was no need or warrant to add the description “Waterproof Adhesive” as has
been done by the Plaintiff. It is therefore apparent that 'MARINE' is the trademark
and “Waterproof Adhesive” is the description.
12.4 Consistent with this, the representative invoice (page 35 of the Plaint),
purchase orders (pages 36, 38 to 40 of the Plaint) and the Plaintiff's product guide
(page 39 of the Plaint) clearly indicate that the word 'MARINE' is used as a mark
and not in a descriptive sense. The Defendant has relied on the items at pages 65 to
87 of the Plaint and the reference to the description 'FEVICOL MARINE' therein.
However, the same does not assist the Defendant since as submitted by the Plaintiff
the documents at pages 65 to 87 of the Plaint are not invoices which show how the
product is sold in the market or associated with the public. These documents on the
face thereof state that they are “DEPOT CHALLANCUMBILL” and “NOT AN
INVOICE”. They are internal documents between the Plaintiff and its Dealers.
12.5 As submitted by the Plaintiff, the fact that the Plaintiff is using the word
'MARINE' as a mark is further reinforced from the extract of the Plaintiff's product
guide which is at pages 41 to 52 of the Plaint. This extract refers to 11 products of
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the Fevicol Division of the Plaintiff and contains a photograph of the actual
container in which the products are sold. It can be seen from the product guide that
for all the products Fevicol is used as a house/umbrella mark in conjunction with
individual product identification marks/brands like SPXPRESS; PL 111; PL 222;
707FW; DDL; SR998; 998FW; SR 50. If the Defendant's argument is to be accepted,
each of the above products identification marks/brands will have to be regarded as
descriptive. As correctly submitted by the Plaintiff, how such alpha numeric can be
regarded as descriptive defies logic and that this reinforces the fact that these
descriptions are product identification marks/brands which are used in conjunction
with the house/umbrella marks/brands.
12.6 The Plaintiff has filed a Trademark Application No. 1918007 seeking
registration of the word mark 'MARINE'. In respect of this application, the Registrar
of Trademarks while advertising the same has imposed the condition “This is subject
to association with registered/pending Registration No. 1319821”. Trademark No.
1319821 is the registered trademark (word mark 'FEVICOL MARINE' and the
registration certificate in respect thereof is at page 61 of the Plaint). Section 16 of
the Act contains provisions for registration of a trademark as an associated
trademark. A reading of Section 16 of the Act makes it clear that for the applicability
thereof, it is essential that, (i) there are two marks; (ii) there is a common
owner/proprietor; and (iii) the two marks must be identical or so resemble one other
as to be likely to deceive or cause confusion (deceptively similar). In other words,
association can only be ordered between two trademarks when they are identical or
deceptively similar. In ordering association between the two, the Registrar obviously
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concluded that there was identity/deceptive similarity between the two. It is obvious
that there can be no identity/deceptive similarity between 'FEVICOL' and 'MARINE' .
The question of identity/deceptive similarity could only arise if the Registrar
compared 'MARINE' and 'FEVICOL MARINE' (and not 'MARINE' and Fevicol only).
The Plaintiff is correct in its submission that the Registrar treated the word 'MARINE'
forming a part of 'FEVICOL MARINE' as a trademark, since in the absence thereof,
there could never be an order of association. To put it differently, the Registrar
accepted that the word 'MARINE' (which formed part of the registered trademark
'FEVICOL MARINE' ) was very much a trademark. Though it is true that it is this
Court which has to decide whether the word 'MARINE' is used by the Plaintiff as a
trademark or in a descriptive sense, the Plaintiff has correctly tried to draw support
from the aforesaid condition imposed by the Registrar of Trademarks in order to
submit that even the Registrar of Trademarks was of the view that the word
'MARINE', in the registered trademark 'FEVICOL MARINE', is a trademark (and not
descriptive) and considered 'MARINE' and ‘FEVICOL MARINE' as
identical/deceptively similar.
12.7 As submitted by the Plaintiff, there is yet another fundamental fallacy in the
argument of the Defendant viz. the assumption that the word 'MARINE' is
descriptive of the use to which the Plaintiff's product is put. As set out in the Plaint
and on the products themselves, the Plaintiff's product is a water resistant synthetic
adhesive which is used for conditions where the product will be exposed to water or
high humidity. The Defendant has assumed that 'MARINE' is synonymous with
and/or indicative of water. This is not the case, as the Defendant itself has disclosed
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at page 83 of its reply affidavit, by relying on the Oxford Dictionary that the word
‘MARINE' is understood as indicative of matters pertaining to the sea.
12.8 For the aforestated reasons, I am of the view that the Plaintiff is using the
word 'MARINE' as a trademark and not in a descriptive sense.
13. The Defendant has strenuously contended that the Defendant itself is using
the word 'MARINE' in a descriptive sense. This contention of the Defendant is denied
and disputed by the Plaintiff. The Plaintiff has drawn the attention of this Court to
the photograph at page 99 of the Plaint. This photograph shows that in addition to
the words “JIVANJOR” and the words 'MARINE PLUS', the Defendant has also used
the words “ 'MARINE' PLYWOOD SPECIAL ADHESIVE” & “HEAT AND WATERPROOF
ADHESIVE”. As submitted by the Plaintiff, this makes it clear that where the
Defendant wishes to use words which are descriptive of its product, it has used the
words “ ‘MARINE' PLYWOOD SPECIAL ADHESIVE” & “HEAT AND WATERPROOF
ADHESIVE”. Hence it is this description which is descriptive. The words “MARINE
PLUS” are not descriptive but are used as a mark. In other words, what the
Defendant is trying to convey to the members of the trade and the public is that the
product in question is sold under the 'MARINE' brand/subbrand.
14. The Defendant has further contended that the adoption of the word
'MARINE PLUS' by the Defendant is honest and bona fide.
14.1 As stated above, the Plaintiff adopted its trademark in 2003 and has since
then been using the same openly, continuously and on an extensive scale. By June
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2012, when the Defendant purportedly started the use of the impugned mark, the
Plaintiff had been in the market for nine years and had sales in excess of Rs. 180
crores. Again, as already held hereinabove, the word 'MARINE' forms an essential
part of the Plaintiff's trademark/brand and the products of the Plaintiff were sold
and purchased with reference to the word 'MARINE'. The trade packaging/dress of
the containers in which the Plaintiff's products were sold contained a pictorial
depiction of a plank of wood dipping into the water and water being splashed in
the process. The Plaintiff's product containing the pictorial depiction of a plank of
wood dipping into water with water being splashed (at pages 92, 93 and 94 of the
Plaint) is reproduced hereunder:
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A picture of the very same pictorial depiction on the product of the Defendant (page
99 of the Plaint) is reproduced hereunder:
If both the pictorial depictions are compared it becomes instantly apparent that the
Defendant when it entered the market, not only copied the Plaintiff's mark
'MARINE' but even the artistic work comprising the device of a wooden plank being
dipped into the water, and the water splashing. The statement now made by the
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Defendant that they have since 2013 stopped using the said pictorial depiction of a
plank of wood dipping into water with water being splashed in the process, does not
in any way help the Defendant's contention that their adoption is honest and bona
fide.
14.2 Further, the Defendant also filed a Trademark Application No. 2456946 for the
label mark 'MARINE PLUS' which label mark is reproduced hereunder.
Had the Defendant not been using 'MARINE'/'MARINE PLUS' as a trade mark it
would have never applied for registration of the label mark titled ‘MARINE PLUS'
(label) containing the words “MARINE' PLUS” as its leading, prominent and
essential feature. The Defendant has now contended that the Trademark Application
No. 2456946 for the label 'MARINE'/'MARINE PLUS' has been withdrawn by them.
14.3 As laid down in several decisions of this Court as well as other Courts, the
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Defendant who seeks registration of a mark is estopped from urging that the mark is
incapable of registration. Faced with the said judgments, the Defendant has
borrowed the language used by a Learned Single Judge in his decision in Hem
Corporation Private Limited and Ors. vs. ITC Limited4
and has come up with an
argument that the rule of estoppel does not apply to the present case because the
Defendant had applied for a label mark registration for the entire get up for
packaging including the descriptive words 'MARINE PLUS'. In the said decision the
Learned Judge has held, “The Reliance upon the Defendant's application for
registration of the label mark is, however, of no assistance in considering this aspect.
The application for registration was not of the word mark “MADHUR”. The label
contains the entire get up of the packaging including the words “MANGALDEEP
MADHUR 100”. The label by itself only begs the question viz. whether the word
MADHUR is used as a mark or not.”
14.4 In my view, as submitted by the Plaintiff, this attempt to distinguish itself,
now belatedly made by the Defendant in the written submissions does not withstand
scrutiny for the reasons mentioned hereinbelow:
(i) The mark applied for by the Defendant is reproduced hereinabove. It is true
that it is a label mark. However, if the mark is seen, the most prominent and
noticeable part/feature of the mark is the word 'MARINE PLUS'. The mark has been
described in the column “TM Applied for” as 'MARINE PLUS' Label” .The word
'MARINE' therefore forms a prominent and/or essential feature of the mark applied
4 Notice of Motion No. 3940 of 2009 in Suit No. 2808 of 2009
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for. More importantly, the Defendants understood the trademark applied for as “
'MARINE' PLUS”.
(ii) The Defendant was therefore attempting to obtain a monopoly over the words
'MARINE' PLUS' and 'MARINE' and in view thereof, the rule of estoppel stated above
will apply. The question to be asked is, “Had the Defendant's mark been registered,
would it have objected and/or been entitled to object to 'MARINE PLUS' or 'MARINE'
being used by someone else?” The answer is obvious.
(iii) The Defendant understood this to mean exactly what the Plaintiff asserts, as
is clear from its own assertion and actions. It is an admitted fact that, after the
Plaintiff pointed out the said application, the Defendant withdrew the same. The
Defendant (at page 26 of its Written Submissions) has at several places accepted that
the application made was a mistake [“mistaken application”, “mistaken advice
received”; “realizing its mistake”, etc.]. The Plaintiff has correctly raised a question,
“If the label mark application was for the entire get up for packaging including the
descriptive words 'MARINE PLUS', then why did the Defendant withdraw it and why
does the Defendant still continue to call it a mistake?” The answer is selfevident.
The Defendant itself considered the application as made, a source/cause for concern
and therefore not only withdrew it but asserted that the very making of it was a
mistake.
(iv) The applicability of the principle and/or rule of estoppel is not restricted to
cases where the mark objected to and mark applied for are identical, but covers cases
where there is identity of the prominent and/or essential features, as is evident from
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the decision of this Court in Ultratech Cement Limited vs. Alaknanda Cement Pvt.
Ltd.5
, decided on 28th June, 2011, where the doctrine/principle was applied. In that
case, the Plaintiffs' mark was “Ultratech Cement. The Engineers Choice” and the
Defendant had sought registration of a label containing the word “Ultra Tuff”.
(v) The decision of the Learned Single Judge in Hem Corporation (supra)
extracted in clause 13.3 is not in any manner inconsistent with the Plaintiff's
submission. In the facts of that case, the Learned Judge did not consider the label
mark application sufficient to attract the test/principle. This was on the facts of that
particular case. The case at hand has to be decided on its own merits and the facts of
the present case. On the present facts, the principle/test is squarely applicable.
I am therefore prima facie satisfied that the adoption of the word ‘MARINE PLUS' by
the Defendant is neither honest nor bona fide.
15. The Defendant has next contended that the Suit is liable to be dismissed
under Section 35 of the Act, since the purpose of using the word 'MARINE PLUS' on
the Defendant's label is to educate or inform the customers that the products offered
by the Defendant are heat and water proof, and the word 'MARINE PLUS' is a bona
fide description of the character of the Defendant's product offered under the mark
'JIVANJOR MARINE PLUS'. The Defendant also contends that the use of the word
'MARINE PLUS' is protected under Section 30 (2) of the Act.
5 2011 (5) BCR 588
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15.1 The aforestated conduct on the part of the Defendant in copying the label of
the Plaintiff; using the mark 'MARINE' and applying for the registration of the label
titled 'MARINE PLUS' (label) makes it abundantly clear that the adoption of the
mark 'MARINE PLUS' is as a trademark and is with a view to encash upon the
significant goodwill and reputation acquired by the Plaintiff's 'MARINE' marks. The
word 'MARINE PLUS' is not descriptive, and in any event is not used by the
Defendant as a bona fide description of the character of the product of the
Defendant. The case of the Defendant that the use of 'MARINE PLUS' is to indicate
to the customers that its product is “heat and water proof” is contrary to its own case
that 'MARINE' means “of or relating to the sea” and not “heat and water proof”.
Furthermore, the product of the Defendant depicted at ExhibitE to the reply at page
80, specifically bears the legend “Heat & water proof adhesive” and hence the use of
'MARINE PLUS' to communicate the same to the customer was not even necessary.
The Defendant is obviously using 'MARINE PLUS' as a trademark and not in the
descriptive sense. Since the Defendant is using 'MARINE'/ 'MARINE PLUS' as a
trademark, Sections 35 and 30 (2) of the Act cannot be resorted to. In any event,
the additional requirement of bona fide use is lacking for the purpose of Section 35.
The defence sought to be raised is clearly an afterthought. The Defendant has
admitted that 'JIVANJOR MARINE PLUS' ( and in effect 'MARINE PLUS' which is a
leading and essential feature thereof) has been adopted and is being used as a
trademark by the Defendant.
16. The Defendant has also relied on Section 17 of the Act in support of its
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contention that the Plaintiff cannot restrain the Defendant in any manner from
using the word 'MARINE'. In this context, the arguments of the Defendant are as
follows:
(i) Section 17 (1) of the Act prescribes that, in the case of a ‘composite mark'
(namely a mark consisting of several matters), the exclusive right conferred by
registration, is on the trademark taken as a whole;
(ii) Section 17 (2) (b) of the Act expressly prescribes that where a composite
mark contains matter which is common to the trade or is otherwise of a non
distinctive character, registration of the composite mark shall not confer any
exclusive rights in the matter forming only a part of the whole of the registered
mark;
(iii) In other words, the statute does not grant protection (exclusivity) over such
parts or constituents of a composite mark, which are ‘common to the trade' or of a
‘nondistinctive character';
(iv) The word 'MARINE' forms a part or constituent of the composite mark
“FEVICOL MARINE”. In relation to the goods to which it is applied/used, the word
'MARINE' is common to the trade and/or of a nondistinctive character.
Consequently, by reason of Section 17 (2) (b), the Plaintiff cannot claim any
exclusivity;
(v) The Plaintiff's reliance on the fact that the Registrar whilst granting
registration, did not impose a condition or limitation (qua the word 'MARINE') is of
no assistance, since the provisions relating to “disclaimer” (existing in the 1958 Act)
have been deleted in the 1999 Act. The reason for the deletion of the provisions
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relating to disclaimer is because Section 17 explicitly clarifies the legal position that
there is no exclusivity in respect of descriptive or nondistinctive constituents or
parts of a registered mark. Therefore, the requirement of a disclaimer provision is
unnecessary. Reliance in this behalf is placed on the Statement of Objects and
Reasons of Section 17, which are extracted at page 17 of the Defendant's
submissions; and
(vi) If this test is applied, then the marks to be compared are “JIVANJOR MARINE
PLUS” and “FEVICOL MARINE”. These are not deceptively similar.
16.1 The Defendant has sought to suggest that by reason of the deletion of
provisions relating to disclaimer, the Registrar cannot impose any conditions or
limitations whilst granting registration. As correctly submitted by the Plaintiff, this
suggestion is contrary to the provisions of the 1999 Act i.e. Sections 18 (4), 20 (1)
and 23 of the Act which expressly authorise and empower the Registrar, at the stage
of acceptance and advertising of applications, to impose, inter alia conditions or
limitations on the mark applied for. The submission relating to disclaimer by the
Defendant is therefore of no substance.
16.2 It is true that the registration of a composite mark confers upon the
registered proprietor a monopoly over the trademark taken as a whole. It is not the
Plaintiff's contention that the registration of a composite mark confers upon the
registered proprietor exclusivity over each and every constituent part thereof (no
matter how minuscule or insignificant it may be in relation to the mark considered
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as a whole). The Court therefore has to examine the mark as a whole. As a part of
this evaluation process, the Court is required to determine what is/are the prominent
and/or essential features of the mark taken as a whole. The protection and/or
exclusivity will be conferred on these features and not on insignificant trivia. This
Court has therefore at the outset after considering the relevant factors prima facie
come to the conclusion that the word 'MARINE' forms a prominent and/or essential
feature of the registered trademark (considered as a whole) . If the Defendant's
arguments are accepted, the consequences will be startling. Composite marks will
become useless. The same will be infringed with impunity by the simple expedient of
using a trademark which has, as its essential or prominent feature(s), the essential
and prominent feature of the registered mark with the addition of other matter. The
mandate of Section 17 (1 ) will be totally frustrated.
16.3 Again, in my view, nothing in Section 17 (2) of the Act bars the Plaintiff's
entitlement to the relief as claimed. Section 17 (2) (a) is plainly not applicable . The
defendant does not even claim so. The Defendant's only claim that Section 17 (2)
(b) of the Act bars the grant of relief in the Plaintiff's favour. The Defendant's claim
in this behalf is premised on the assumption that the word 'MARINE' is ‘ common to
the trade' and/or ‘of a nondistinctive character'. For this plea to succeed, the
Defendant must establish that the word 'MARINE' is either ‘common to the trade' or
'of a nondistinctive character'. The onus to do so is entirely on the Defendant. As set
out herein, the Defendant has failed to discharge the burden or onus upon them.
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16.4 The aforestated reliance on Section 17 of the Act and the submissions made in
regard thereto by the Defendant therefore cannot be accepted and are rejected.
17. The Defendant has contended that there are some other entities across India
and internationally that are using the word 'MARINE' as a part of their label and the
word 'MARINE' has become publici juris/common to trade. The Defendant has also
set out in a tabular format the labels inter alia containing the word 'MARINE' which
it claims are in use. The Defendant contends that the Plaintiff therefore has no
exclusive rights/monopoly over the word 'MARINE'. The Defendant has also
produced copies of four invoices as evidence of sale of two other products under the
mark 'MARINE'.
17.1 It is a settled legal position that the use of a registered mark or the essential
feature thereof by others is not a defence available to the Defendant in an action for
infringement and passing off. Merely because the Plaintiff has chosen to sue one
infringer first and has not at such time sued others for infringement is also no
defence in an action for infringement and passing off and it is settled law that it is
the prerogative of the Plaintiff/registered proprietor/owner of a mark whom to sue
so as to protect its rights. Furthermore, it is essential for the Defendant to
demonstrate substantial and continued use over a period of time of the mark by
others failing which no defence of common to the trade/publici juris can be set up.
(Corn Products Refining Co. vs. Shangrila Food Products Ltd.6
; F.D. Diesel vs. S.M.
6 AIR 1960 SC 142
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Diesel7
; Ultratech Cement Ltd. vs. Alaknanda Cement Pvt. Ltd.(supra); Shaw Wallace
and Company Ltd. and another vs. Mohan Rocky Spring Water Breweries Ltd.8
. The
Defendant has failed to prove that there are a number of entities over India or
internationally that are using the word 'MARINE', or that such use is substantial or
continuous over a period of time. As submitted by the Plaintiff, let aside proof, there
is not even a pleading to this effect. The four invoices produced by the Plaintiff are
insufficient and deserve to be disregarded. They do not satisfy the test of extensive,
actual and continuous use in the market. The Defendant has tried to take
advantage of the reputation of the Plaintiff not only by the use of the mark
'MARINE'/'MARINE PLUS' but also by the use of the copied impugned label and
hence cannot be allowed to rely upon the alleged use of the mark 'MARINE' on other
grounds. The submissions advanced by the Defendant to distinguish the above
judgments are unconvincing and of no assistance to the Defendant.
18. The Defendant has submitted that the Plaintiff has not disclosed that their
application for the mark 'MARINE' are under opposition and not pending as claimed
by the Plaintiff and that the Plaintiff has concealed the fact that the trademark
Application Nos. 2110954 and 1918007 for the marks 'FEVICOL MARINE' and
'MARINE' are opposed by Blue Coat Pvt. Ltd.
18.1 The Plaintiff has stated in paragraph 9 at page 8 to the Plaint that the
trademarks 'FEVICOL MARINE' (Label) and 'MARINE' under application Nos.
7 1994 PTC 75
8 2006 (33) PTC 180 (Bom)
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2110954 or 191 8007 are pending and the same is true. The Plaintiff has correctly
submitted that the marks are /will be pending until they proceed to registration and
the Plaintiff has rightly stated that the trademarks 'FEVICOL MARINE ' (Label) and
'MARINE' under Application Nos. 2110954 or 1918007 are pending. The
oppositions are proceedings between the Plaintiff and another entity and do not in
any manner impact nor bear significance for the purpose of the present Suit and the
issues raised in the present Suit. The proceedings filed by Blue Coat Pvt. Ltd. will be
decided on its own merits. The question of disclosing the same or suppressing the
same does not and cannot therefore arise.
19. The Defendant has further contended that the Plaintiff has concealed the fact
that the Plaintiff's trademark registrations under Nos. 1319821, 1319822 and
1319823 for the mark 'FEVICOL MARINE’ are under rectification before the
Intellectual Property Appellate Board and hence the Plaintiff deliberately did not file
the legal proceedings certificate.
19.1 The Plaintiff is correct in its submission that the Plaintiff has specifically
craved leave to refer to and rely upon the entries of the Register of Trademarks in
relation to the registration of the Plaintiff referred to in the Plaint and hence the
question of suppression of the said document does not arise. In any event the records
of the Registry are public documents and can be accessed by the Defendant at any
given point of time. The said rectification proceedings are pending and the Plaintiff
is and continues to be the registered proprietor of the trade marks under 1319821,
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1319822 and 1319823 and the registrations as on the date of filing the Suit were
and continue to be valid and subsisting. The said rectification proceedings filed by a
third party are irrelevant in so far as the present proceedings are concerned. The
question of disclosing the same or suppressing the same does not and cannot
therefore arise.
20. The Defendant has next contended that the Plaintiff had issued a legal notice
to Blue Coat Pvt. Ltd. on 28th June, 2010, and that the said Blue Coat Pvt. Ltd. had
responded to the said legal notice on 3rd August, 2010, and filed
oppositions/rectifications against the trademarks 'FEVICOL MARINE'/'MARINE' of
the Plaintiff. The Defendant contends that despite the same, the Plaintiff has not
taken any action against Blue Coat Pvt. Ltd. and that Blue Coat Pvt. Ltd. continues to
use the label mark inter alia containing the words 'BLUECOAT MARINE'. The
Defendant submits that the Plaintiff has concealed and suppressed this material fact
in the Plaint. The Plaintiff has correctly submitted that the aforesaid alleged facts
have no bearing whatsoever on the present Suit and the question of suppression
does not arise. It is settled law that the Plaintiff is not obliged to take action against
every small infringer (assuming that Blue Coat Pvt. Ltd. is still using the mark).
21. The Defendant has lastly contended that the Plaintiff has obtained trademark
registration for the mark 'FEVICOL MARINE', wherein the essential feature of the
mark is “FEVICOL”. The Defendant contends that it is using the word 'MARINE
PLUS' in combination and conjunction with its house mark 'JIVANJOR' and that the
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deciding factor for determining the difference between both the marks is the
presence of 'FEVICOL' and 'JIVANJOR' which are the essential and distinguishing
features of the rival marks and have coexisted for years without any confusion or
deception. The Defendant contends that there is no likelihood of confusion or
wrong/mistaken association of the Defendant's mark and the Plaintiff's mark.
22. As held hereinabove, the Defendant has adopted an essential feature of a
registered trademark of the Plaintiff. This by itself is actionable. Actual confusion
need not be proved for infringement. It is required for passing off. Secondly, even
for passing off, there is a clear case of deception and/or confusion. The contention of
the Defendant is not tenable since the Defendant itself states that 'JIVANJOR' is the
housemark of the Defendant. It is evident that the product identification mark used
by the Defendant is 'MARINE PLUS' and that the same is being used as a trademark.
The consumers can never identify the product only by the house mark and it is
inevitable that the products are referred to and called out only by their product
identification marks. It is the settled position that the use of a mark as a subbrand
also amounts to infringement and an injunction ought to follow. As pointed out by
the Plaintiff, the products bearing the housemark ‘FEVICOL' have achieved a
turnover close to around Rs. 1000 crores, out of which the turnover of the products
bearing the mark 'MARINE' (which is only one of the products of the many products
bearing the house mark 'FEVICOL') has exceeded Rs. 100 crores. The mark 'MARINE'
by itself has gained tremendous reputation and goodwill and further distinctiveness
and secondary meaning which is associated by the consumers, trade and public at
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large with the Plaintiff alone. The invoices produced by the Defendant themselves
show that the products of the Defendant are also referred to as 'MARINE PLUS COP',
'JJ MARINE PLUS, 'JJ MARINE PLUS CLP, 'J MARINE PLUS COP', i.e. 'MARINE
PLUS' being the leading and essential feature and not 'JIVANJOR'. Furthermore, the
fact that the Defendant refers to its ‘mark' as 'JIVANJOR MARINE PLUS ' itself is an
admission on the part of the Defendant that 'MARINE PLUS' is being used as a
trademark/part of its trademark. Whether the rival marks are similar or not will have
to be approached from the point of view of average intelligence and imperfect
recollection of consumers who would normally be carpenters or such similarly
literate persons and are bound to get confused.
23. For the aforestated reasons, the Notice of Motion is allowed in terms of prayer
clauses (a), (b) and (c ). The Defendant shall pay cost of the Notice of Motion to the
Plaintiff.
24. The hearing of the Suit is expedited. Defendant to file written statement on
or before 27th January, 2014. Place the Suit for framing of issues on 29th January,
2014.
(S.J. KATHAWALLA, J.)
