Bombay High Court
Garware Polyster Limited vs 3M Company And Anr on 12 July, 2016
Bench: G.S. Patel
Garware Polyster v 3M Company & Another
NMSL1445-15-F.DOC
MP/RB
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION (L) NO. 1445 OF 2015
IN
SUIT NO. 612 OF 2015
GARWARE POLYESTER LIMITEDig
a Company incorporated and registered
under the Companies Act, 1956 having its
registered office at Western Express
Highway, Vile Parle (East), Mumbai - 400
057 ...Plaintiff
versus
1. 3M COMPANY
a company incorporated under the
laws of the United States of America
having its registered office at 3M
Corporate Headquaters, 3M Centre,
St. Paul, MN 55144-100 Kegal
2. 3M INDIA LIMITED
a Company incorporated and
registered under the Companies Act,
1956, and the Indian subsidiary of
Defendant No. 1, having its registered
office at Concorde Block, UB City, 24
Vittal Mallya Road, Bangalore-560001 ...Defendants
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Garware Polyster v 3M Company & Another
NMSL1445-15-F.DOC
A PPEARANCES
FOR GARWARE Mr. V.V. Tulzapurkar, Senior Advocate,
a/w Mr. Dipin Vora & Ms. Priya
Thakkar i/b Jehangir Gulabbhai &
Bilimoria & Daruwalla.
FOR DEFENDANTS Dr. V. V. Tulzapurkar, Senior Advocate,
NOS. 1 & 2 a/w Mr. Ramesh Gajria, Mr. C. A.
Brijesh & Ms. Deepa Hote i/b Gajria
& Co.
CORAM : G.S.Patel, J.
JUDGMENT RESERVED ON : 28th June 2016
JUDGMENT PRONOUNCED ON : 12th July 2016
JUDGMENT:
1. This is a suit in trade mark infringement and passing off in
relation to --I shall use as neutral a description as I am able --
window films for sun protection. Garware ("Garware") claims that
the Defendants' ("3M Co" and "3M India", respectively;
collectively, "3M") use of the expression 'SUNCONTROL' or
'SUN CONTROL' in their mark in relation to polyester or plastic
films used for this purpose infringes its device marks SUN
CONTROL, SUN CONTROL CLASSIC, SUNCONTROL,
and GARWARE SUNCONTROL, all registered in Class 17, and
SUN CONTROL CLASSIC, registered in Class 16.
2. Garware manufactures and sells a range of polyester and
plastic films, including reflective, non-reflective, safety, privacy,
specialty and decorative films. It manufactures dyed polyester films
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using a process for which it has a patent in 15 countries. Its first
plant was established in Aurangabad in 1976. Garware has won many
awards and received recognition for excellence in innovation. In
1982, Garware adopted the marks SUN CONTROL and
SUNCONTROL in relation to polyester films, plastic films,
packing and packaging, and insulation material. These were
registered in 19831 and 19992 respectively, with a disclaimer that
Garware had no exclusivity over the word 'control'. It claims
extensive and continuous usage since. As regards Garware's other
marks, SUN CONTROL Classic was registered in 1998 in Classes
16 and 17,3 where there was a disclaimer over the word 'classic', and
GARWARE SUN CONTROL was registered in 2002, in Class 17.4
Garware's mark has a device of a sun before the word
'SUNCONTROL'. Garware holds 70% of the market share in
India, and 80% of its products are exported. It has a significant
international presence, with 32 registrations in overseas jurisdictions
across Asia, Europe, South America, North America and Africa, as
also several countries under the Madrid Protocol.5 As a result of its
high sales figures6 and considerable promotional expenses,7 Garware
claims its goods with these marks have acquired substantial repute
and goodwill.
1 Plaint, Exhibit "A1", p. 40.
2 Plaint, Exhibit "A4", p. 46.
3 Plaint, Exhibit "A2", p. 42; Plaint, Exhibit "A3", p. 44.
4 Plaint, Exhibit "A5", p. 48.
5 Plaint, Exhibits "B1" to "B32", pp. 50-92.
6 Plaint, Exhibits "E1" to "E109", pp. 95-203.
7 Plaint, Exhibit "D", p. 94.
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3. 3M India is an Indian subsidiary of 3M Co. The latter needs
no introduction. It is an old, established and reputed US-based
company, known the world over for its range of products. These
range from industrial products to those meant for everyday home
and office use. The legal fraternity is itself no stranger to at least one
such range of office stationery, the fabled Post-It sticky notes.
4. Garware says that in April 2014, it came across 3M Co's
identical usage of its mark 'SUNCONTROL'. On further inquiry,
Garware discovered that 3M Co uses the mark 3M Sun Control
Window Films in relation to its window films.8 On 26th April 2014,
Garware sent 3M Co a cease-and-desist notice, claiming prior usage
and registration.9 3M Co refused.10 Further correspondence
followed.11 The defences taken by the Defendants in the letters
exchanged are also, essentially, the defences taken in the present
Motion. These are set out below.
5. The defence, stated briefly, is this: the trade mark used is 3M
or SCOTCHTINT and sun control is only used descriptively to
denote the kind, quality and intended purpose of the goods; and the
expression is publici juris, i.e., common to the trade, and Garware
cannot, therefore, in view of Sections 30(2) and 35 of the Trade
Marks Act, 1999 ("TMA 1999"), claim exclusive rights over the
expression. 3M also says there is acquiescence because Garware
delayed in initiating infringement proceedings.
8 Plaint, Exhibit "H", p. 10
9 Plaint, Exhibit "I", p. 257
10 Plaint, Exhibit "J", p. 261
11 Plaint, Exhibit "K", p. 269; Plaint, Exhibit "L", p. 271
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6. For Garware, Mr. Tulzapurkar contends that the expression
'sun control' is not descriptive. The reason, he says, is that 'sun
control' simply does not describe the products in question. It is
therefore incapable of being used descriptively in relation to these
products. These are polyester films. The expression 'sun control'
has no direct reference to the character or quality of the goods in
question. It is therefore not descriptive. Further, in its own trade
mark registration applications, 3M Co does not describe its products
as 'sun control films'.12 Therefore, he says, 3M's assertion that the
expression is used descriptively is incorrect. 3M uses it as a trade
mark, in a 'trade marky' sense. That is an infringement. When,
further, 3M uses 'sun control' in a domain name, this also suggests
that the use is as a trade mark, and not descriptively. It is well-
settled, he says, that the use of trade mark in a domain name is also
infringement.
7. In any case, Mr. Tulzapurkar argues that even if the
expression is otherwise considered to be descriptive, it has now
attained a distinctive character on account of Garware's extensive
use of it since 1982. This, he says, is evidenced by the voluminous
sales and advertising expenses. It is on account of such extensive use
by Garware that the mark 'sun control films' has come to be
associated exclusively with Garware. Mr. Tulzapurkar invites my
attention to an incident concerning one V-Kool Films (India) Pvt.
Ltd. In 2006, V-Kool advertised in 'Overdrive', an automobile
magazine, in which it claimed to be "India's No.1 Sun Control Film
12 Rejoinder Affidavit, Exhibit "E", p. 31; Rejoinder Affidavit, Exhibit "F",
p. 34; Rejoinder Affidavit, Exhibit "G", p. 36; Rejoinder Affidavit,
Exhibit "H1", p. 38; Rejoinder Affidavit, Exhibit "H2", p. 39;
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brand" and referred to its product as "sun control films". Garware,
on seeing this advertisement, sent a cease-and-desist notice to V-
Kool. V-Kool complied.13 This, according to Mr. Tulzapurkar, is
evidence of the distinctiveness of Garware's 'mark'.
8. Mr. Tulzapurkar also contends that 'SUN CONTROL' is
the essential or distinguishing feature of Garware's mark, not the
sun device. This, he says, is evident when one looks at the mark.
The expression is in bold italicized capital letters; this is eye-
catching and visible. The sun device is small and offset to the left. In
the UK, the mark registered is GARWARE SUNCONTROL,
without the sun device.14 This establishes that the sun device is
irrelevant; and therefore, in his submission, 3M's use of the mark on
their products is apt to cause confusion among consumers. There is
every likelihood of confusion about the source or origin of these
products. Consumers may well associate 3M's products as
Garware's. For these reassons, Garware is entitled to the protection
under Section 32 of the Act.
9. Mr. Tulzapurkar goes on to say that it matters little even if
3M's use of the expression is considered to be descriptive. The test,
in law, is not how the infringer intended to use the mark, but whether
or not the mark is likely to be construed as a trade mark. If it is likely
to be so construed, then the intention of the infringer is immaterial.
Moreover, in his submission, it cannot be argued that the mark is
13 Plaint, Exhibit "G", p. 252
14 Plaint, Exhibit "B-8", p. 44
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incapable of registration: Garware already has in place numerous
registrations worldwide.
10. Dr. Tulzapurkar for the Defendants refutes each of these
submissions. He submits that the expression 'sun control' is purely
descriptive. It cannot be anything else. It is an expession frequently
used in reference to plastic or polyester films to indicate kind,
quality and intended purpose. These are routinely used for what the
expression directly suggests: to control dangerous UV radiation and
heating by the sun through glass. When applied to glass, these films
cut the radiation and heat. The expression combines two ordinary,
commonplace, generic words. None may monopolize them.
11. Dr. Tulzapurkar has a compilation of material to buttress
these arguments on facts. He first refers to a letter from a customer
in 1976, which refers to 3M Co's product under the mark SCOTCH
TINT (3M Co's other registered trade mark), as a 'sun control
film'.15 This, he points out, was well before Garware entered the
scene. The letter shows that the expression is one used in everyday
parlance. There is another letter from a hospital, of 1978, and this,
too, describes the product in question as a 'sun control' film.16
Central and State Governments, in various legislative materials,
custom authorities in their notices,17 government agencies in their
tenders, and even Courts in their judgments18 use 'sun control films'
to describe the kind, quality and intended purpose of the goods.
15 Defendant's Compilation, Volume 1, p. 52
16 Defendant's Compilation, Volume 1, p. 53
17 Defendant's Compilation, Volume 1, p. 267
18 Defendant's Compilation, Volume 1, p. 288
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Rule 172 of the Gujarat Motor Vehicles Rules, 1989 prohibits certain
kinds of 'sun control films'.19 There is a tender issued by the All
India Institute of Medical Sciences for 'sun control films',20 and
others that relate to bus bodies21 and Ennore Port.22 An article in
'The Hindu'23 uses the same expression. In all these, the expression
is used as a description, in an everyday sense.
12. What sets the matter at rest, Dr. Tulzapurkar says, is
Garware's own descriptive use of the expression. Garware's
registration certificates found in Exhibit "A" of the Plaint describe
its products as "polyester films for arresting the radiation of ultra
violet rays". This, he contends, is precisely what the expression 'sun
control' means.24 The patent specification in Garware's application
No. 6316531B1 in America,25 for a process patent for dyeing
ultraviolet stabilized films also shows that Garware itself understood
the expression to be purely descriptive: 26
"More specifically, the Garware et al patent was
directed to a new process for the manufacturer of dyed
film for sun control application."
(Emphasis added)
19 Defendant's Compilation, Volume 1, p. 269
20 Defendant's Compilation, Volume 1, p. 218
21 Defendant's Compilation, Volume 1, p. 219
22 Defendant's Compilation, Volume 1, pp. 256, 263
23 Defendant's Compilation, Volume 1, p. 283
24 Plaint, Exhibit "A1", p. 40; Plaint, Exhibit "A2", p. 42; Plaint, Exhibit
"A3", p. 44; Plaint, Exhibit "A4", p. 46; Plaint, Exhibit "A5", p. 48;
25 Defendant's Compilation, Volume 1, p. 303
26 Defendant's Compilation, Volume 1, p. 307
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13. The brochure27 and application28 filed by Garware with the
Trade Marks Registry, while seeking registration of the mark SUN
CONTROL in Class 17 also use the expression descriptively:
"Garware Plastics & Polymers Limited have developed
Polyester Film for Sun Control applications, making it
the newest and most significant development in Sun
Control technology."29
14. Further, Garware disclaimed the word Control in the mark
SUN CONTROL when the Examiner of Trade Marks raised an
objection to its descriptive nature. The word SUN is, of course,
descriptive. Moreover, the expression over which Garware now
claims a monopoly finds no place at all in its invoices for 1993 to
2000.
15. By its own descriptive usage of SUN CONTROL, Garware
is, Dr. Tulzapurkar submits, estopped from now claiming exclusivity
over it. Paragraph 12.13 of McCarthy on Trademarks and Unfair
Competition has this to say:30
"(2) Plaintiff's Use. If the proponent of trademark
status itself uses the term as a generic name, this is
strong evidence of genericness. A kind of estoppel
arises when the proponent of the trademark use is
proven to have itself used the term before the public
27 Defendant's Compilation, Volume 1, p. 106
28 Defendant's Compilation, Volume 1, p. 104
29 Defendant's Compilation, Volume 1, p. 107
30 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
(Thomson West, 2006), Volume 2, 4th edition, p.12-33.
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as a generic name, yet now claims that the public
perceives it as a trademark."
16. Dr. Tulzapurkar relies on the decision of this court in Schering
Corporation & Anr. v M/s United Biotech Ltd & Anr.,31 in which
Deskhmukh J. held that when a proprietor adopts a trade mark on
the basis of the name of the generic expression (in that case, a drug
or ingredient), it would be safe to assume that he is aware that other
proprietors are also likely to adopt and use similar marks should
their products be based on the same generic expression. In such
cases, the first user can claim no exclusivity in either the name or
trade mark.
17. The decision of the Delhi High Court in Marico Limited v
Agro Tech Foods Limited is instructive.32 The mark in question was
LOW ABSORB, one that the respondents used in conjunction with
their trade mark SUN DROP. The Division Bench held that, at
best, the mark was a combination of two popular English words; was
descriptive of the nature of the product; and that this adoption ran a
risk, viz., that others in the field would also be entitled to use the
same, or similar, phrase. The acquisition of a 'secondary meaning' is
not lightly to be assumed. For such a claim to succeed, there must
be evidence of uninterrupted use of considerable longevity without a
competitor attempting to use it too. Where a plaintiff has no right to
exclusivity, he cannot claim another's disentitlement to use the
same expression or one similar to it.
31 (2010) 7 Mah LJ 611.
32 2010 (44) PTC 736 (Del)
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18. In British Vacuum Cleaner Company Ltd. v New Vacuum
Cleaner Company Ltd.,33 Parker J. held that there is a distinction
ordinary descriptive words and a 'fancy word', one that does not
primarily relate to the article, but perhaps to the person
manufacturing it. In principle, there can be no restraint against the
use of general, commonplace words:
"Now here I think that the principles which are laid
down in the reported cases have some application. I do
not consider myself that if a company chooses to
incorporate into its own name words descriptive of the
article in which it deals it can fairly claim a monopoly of
the use of those words in trade names. It seems to me
that it runs the risk of having articles similarly described
in the trade names of rival traders. If any such
monopoly can be gained by such means it appears to
me that, from the point of view of the public, the sooner
the provisions of the Companies Act in that respect are
altered, the better."
19. I believe Dr. Tulzapurkar to be completely correct in saying
that Sections 30(2)(a) and 25 of the TMA 1999 provide for just such
a situation.
"30. Limits on effect of registered trade mark.
(1)....
(2) A registered trade mark is not infringed
where--
33 1907 2 Ch 312, p. 328
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(a) the use in relation to goods or
services indicates the kind, quality,
quantity, intended purpose, value,
geographical origin, the time of
production of goods or of
rendering of services or other
characteristics of goods or
services"
"35. Saving for use of name, address or description
of goods or services
Nothing in this Act shall entitle the proprietor or a
registered user of a registered trade mark to interfere
with any bona fide use by a person of his own name or
that of his place of business, or of the name, or of the
name of the place of business, of any of his
predecessors in business, or the use by any person of
any bona fide description of the character or quality
of his goods or services."
(Emphasis added)
20. In my judgment, the expression 'sun control' is purely
descriptive. It only indicates the kind, quality and intended purpose
of these films. It describes their main characteristic, which is to
block certain effects of sunlight. The material Dr. Tulzapurkar has
marshalled shows this. Garware's own use of the expression has
been descriptive, and whether or not there is any kind of estoppel, in
the sense of an evidentiary prohibition to the claim, there is
certainly a fatal inconsistency. A registered proprietor may not
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interfere with a bona fide descriptive use that relates to the character
or quality of the goods in question.34
21. Further, Garware cannot show that 3M's use is calculated to
deceive. To the contrary: 3M's bona fide intention is evident from
their use of the marks 3M or SCOTCHTINT along with 'sun
control'.
22. I am unable to accept Mr. Tulzapurkar's argument that the
'essential feature' of Garware's mark is 'sun control'. That cannot
be; the use is purely descriptive of what it is that Garware's polyster
films actually do. The marks must be compared as a whole. Garware
uses the sun device; 3M uses its marks 3M or SCOTCHTINT.35 In
any case, I think Garware is getting more than a little ahead of itself.
3M is not some fly-by-night operator, or some cheap imitator
operating in the shadows. 3M has a colossal international presence
with well-known trade marks and huge sales.
23. These two words, sun and control, are, as Dr. Tulzapurkar
correctly says, ordinary words commonly found in any (and every)
dictionary. Their combination is not unique. There is no innovation
or invention in the juxtaposition of these two words; nor is their
combination in any sense 'distinctive'. Garware's own trade mark
and patent application show this. Garware uses a description as part
of its mark. It can claim no monopoly on that description. What
Garware now suggests has possibly unimaginable consequences. If
34 Irvings Yeast-Vite Ltd. v F.A. Horsenail, 51 RPC 110
35 Defendant's Compilation, Volume 1, p. 54
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its submission is to be accepted, then the day is not far when
someone will claim a similar monopoly over every common phrase:
'fountain pen', perhaps, or 'yellow highlighter'.
24. The decisions on which Mr. Tulzapurkar relies do not, in my
view, sufficiently support him in this case. There was a very similar
defence Hem Corporation Pvt. Ltd. v ITC Ltd.36 The products in
question were incense sticks. The defendant argued that the word
'MADHUR' was used descriptively, to denote the sweet fragrance
of the product, in conjunction with its trade mark
'MANGALDEEP'. In paragraphs 24 and 25, Vazifdar, J., held that
even if the Defendant genuinely intended to use the mark
descriptively, it would still constitute infringement if such use was
likely to be taken as a trade mark as per sections 29(1) and 2(zb)(ii)
of the Act. The test is whether the expression is used to distinguish
rather than describe. That is undoubtedly correct, and well-
established,37 but I do not see how it carries Garware's case further.
In Hem Corporation, the Court found the use not to be purely
descriptive, and therefore granted relief. Further, there was an
admission, albeit unwitting, that the expression in question,
MADHUR, was used as a 'sub-brand', i.e., as a trade mark (or, more
accurately, a trade mark within a trade mark).
25. Mr. Tulzapurkar cites Sapat International Pvt. Ltd. v Girnar
Food and Beverages Pvt. Ltd.38 for two propositions. First, that even a
36 2012 (52) PTC 600 (Bom)
37 Sopariwala Exports & Anr. v Shreenathji Overseas, Notice of Motion No.
407 of 1994, in Suit No. 920 of 2013, decided on March 31st 2015.
38 2016 (65) PTC 499 (Bom)
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descriptive word or term may attain distinctiveness by reason of
extensive use.39 That is of course correct as a general proposition,
but it seems to me that the proposition is being read in isolation,
unviably divorced from its companion requirements. The use must
be not just extensive; it must also be uninterrupted, and it must be
exclusive. If others have used it, and used it descriptively (doubly so
if the claimant himself has used it descriptively), then no question
arises of it ever ascending to the rarefied heights of distinctiveness
merely by dint of length of time. For the words to achieve a
secondary meaning, the primary meaning must be shown to have
been lost. A man may say "I have taken two everyday words, and
combined them. But only I have used them so widely and for so
long; there are no others who have attempted to do so. I claim no
monopoly in these words, but I do say that my use of these, to so
great an extent, in this form, for this length of time without
interruption, challenge or competitor has now so elevated them that
their primary and plain meaning has been left behind and they have
taken on a new avatar, a secondary meaning. This secondary
meaning is now uniquely associated with my goods and those alone,
and with no one else's." That level of user demands proof, even at
the prima facie stage. The claim may be dislodged in a variety of
ways; for instance, by showing that there is no such association for
others use the same expression and do so to describe their own
products. Where it is further shown that the claimant or plaintiff has
himself used the phrase in a descriptive sense, the claim will be
defeated. There is no presumption of distinctiveness. Absent cogent
material, distinctiveness is not a conclusion easily to be reached.
39 T.V. Venugopal v Ushodaya Enterprises Ltd., (2011) 4 SCC 85
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There is not, as I have noted, before me any evidence of the
expression having acquired a secondary meaning. Garware must
show that 'sun control' is exclusively associated with its products.
This it is unable to do. On the contrary, the sizeable material placed
on record by Dr. Tulzapurkar clearly shows that the expression is
still used generically.
26. Mr. Tulzapurkar's second submission drawn from Sapat v
Girnar is that the infringer's intention is immaterial.40 If the use of
even commonplace words is such that there is a likelihood of
confusion or of association with the plaintiff's mark, then that is
enough to warrant an injunction. That manner of use would run
afoul of Section 29. In the Sapat v Girnar case, the two words were
also commonplace, chai and time, in relation to tea. The defendant
there used the same words, similarly juxtaposed. Gupte J held that
Sapat could not claim any monopoly in either of the words; yet,
their use in a similarly juxtaposed manner, was sufficient for the
grant of relief. He found the defendant's mark to be structurally
similar, and there to be a likelihood of confusion or deception as to
the origin of the goods. Therefore, the case turned on the manner in
which the defendant used the two marks. I fail to see the parallel to
this case. Here, 3M uses a descriptive phrase in conjunction with its
well-known marks 3M or SCOTCHTINT. The two marks are
entirely different. No one seeing 3M's sun control film mark is even
remotely likely to take it for Garware's.
40 Also: Nestle India Limited v Mood Hospitality Pvt. Ltd., 2010 (42) PTC
514 (Del).
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27. Mr. Tulzapurkar's reliance on the decision in Central Camera
v Registrar of Trade Marks41 is inapposite. There, the Court held that
the prohibition under Section 9(d) of the Trade & Merchandise
Marks Act, 1958 applied only to words that directly referenced the
character or quality of the goods. The mark there was 'solar' and
sought to be used with photographic gear; the connection was held
to be too remote. I do not see how I can be dragged to the same
conclusion here. The expression 'sun control' does have a direct
reference to the character of the goods; it is the very function of the
goods. The material placed by Dr. Tulzapurkar shows precisely this.
I reject out of hand the argument in the plaint that 'sun control' is
not descriptive because Garware's product does not 'control the
sun'. Neither do the expressions 'sun block', 'sun screen' or 'sun
roof', yet each one of these is purely descriptive.
28. I am unable to understand the relevance to this case of the
decision in Satyam Infoway Ltd. v Sifynet Solutions Pvt. Ltd.,42 in
which the Supreme Court held that an Internet domain name may
have all the characteristics of a trade mark and may found an action
in passing off. This does not mean that every domain is per se a trade
mark, or that every use of every expression in every domain is as a
trade mark. Merely because 3M's website uses 'sun control' in its
domain name, it does not follow that this is use as a trade mark, or
that it ceases to be descriptive.
41 1980 Bom CR 626.
42 (2004) 6 SCC 145.
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29. As an extension to his argument on the descriptive nature of
'sun control', Dr. Tulzapurkar argues that the expression 'sun
control' is publici juris, i.e, in the public domain, and common to the
trade. It is used to describe the product by traders, manufacturers,
customers and the public in general. As he puts it, this is the essence
of the concept of publici juris. There can be no monopoly over such
an expression. He refers to a list of entities with registrations or
applications for SUN CONTROL in India and around the world.43
There are 12 international users of SUN CONTROL, all
manufacturers or traders of films, or related products. One of the
international entities, American Sun Control Commercial Division,
which provides design and installation services for all forms of
natural and artificial light control, was founded in 1969, long before
Garware's adoption of its mark. Though Garware claims to have a
significant presence in the USA, it has not proceeded against any of
these users. There are, in his compilation, examples of Indian
applications or registrations in the name of third parties, all with the
mark SUN CONTROL.44 There are entities in other jurisdictions as
well: USA,45 UK,46 WIPO registrations,47 and elsewhere:48
THERMOBEL SUNCONTROL under registration No. 9015132 in
Belgium for building glass and window glass; HOTSPOT SUN
CONTROL under registration No. T1107010G in Singapore for
window insulating and other plastic films; and SUN CONTROL
43 Reply in Affidavit of Defendants, pp. 25-32
44 Reply in Affidavit of Defendants, p. 27
45 Reply in Affidavit of Defendants, p. 29
46 Reply in Affidavit of Defendants, p. 29
47 Reply in Affidavit of Defendants, p. 30
48 Reply in Affidavit of Defendants, pp. 30-32
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I.V. in France that dates back to 1977, well prior to Garware's
adoption.
30. Mr. Tulzapurkar, on the other hand, argues that the
expression 'sun control' cannot be considered publici juris since
none of the registrations alluded to by Dr. Tulzapurkar, at least in
the Indian jurisdiction, pertain to goods in Classes 16 or 17. Label
1163461 (Sunanda Chemicals) is for chemicals for insulation coating
and is proposed to be used. This markwas valid only till 1st January
2013 and apparently has not been renewed since. Label 2087705
(Kishanlal Gupta) has been abandoned. Label 1574496 (Garnier Sun
Control) is in Class 03, relating to cosmetics. It has been registered
with a condition such that the applicant has no exclusive right in
respect of the words 'sun' and 'control' separately. Label 1746896
(Sun Shine Electric Co. Pvt. Ltd.) is registered in Class 09 relating
to electricals. Even in international jurisdictions, there is only one
('HOTSPOT Sun Control') that is in Class 17, and it is registered in
Singapore.
31. I am unable to accept Garware's arguments; these seem to me
to entirely overlook the considerable material of descriptive use,
including by Garware itself, that has been made available by Dr.
Tulzapurkar. On an overall prima facie assessment, it seems to me
clear that the expression is understood and used not only generally,
but by Garware itself, as a description of what the product is and
what it does.
12th July 2016
Garware Polyster v 3M Company & Another
NMSL1445-15-F.DOC
32. The point on acquiescence, though pleaded, is not pressed. It
does not, therefore, need to be considered.
33. For the foregoing reasons, the Notice of Motion fails. It is
dismissed, but with no order as to costs.
(G.S. PATEL, J.)
12th July 2016
