Bombay High Court
Pidilite Industries Limited vs Riya Chemy on 11 November, 2022
Bench: R. I. Chagla
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
K.S. Jadhav
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION (L) NO. 15502 OF 2021
IN
COMMERCIAL IP. SUIT NO.147 OF 2022
Pidilite Industries Limited ...Applicant/
Plaintiff
Versus
Riya Chemy ...Defendant
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Mr. Hiren Kamod a/w Nishad Nadkarni, Mr. Aasif Navodia &
Ms. Khushboo Jhunjhunwala i/b Khaitan and Co., Advocates for
Plaintiff.
Mr. S. Ramakrishnan a/w Ms. Girish Thakur, Advocates for
Defendant.
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CORAM : R.I. CHAGLA, J.
JUDGMENT RESERVED ON : 27TH SEPTEMBER, 2022.
JUDGMENT PRONOUNCED ON : 11TH NOVEMBER, 2022.
JITENDRA
SHANKAR
NIJASURE
JUDGMENT (Per R.I. Chagla, J.)
Digitally signed
by JITENDRA
SHANKAR
NIJASURE
Date:
1. The present Interim Application has been heard finally at
2022.11.14
11:31:35
+0530
the ad-interim stage by consent of the parties.
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
2. A brief background of facts is necessary.
3. 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. (later known as Mahindra Electrochemical Products
Ltd. - "MEPL".) in or about the year 1968, and has been
continuously, extensively and in an uninterrupted manner used
since then. (Paragraph 5, pages 4-5 of the Plaint)
4. The said mark and the artistic representation thereof have
been acquired by the Plaintiff pursuant to agreement dated 27
March 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 (Paragraph 5, pages 4-5 of the Plaint).
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
5. Plaintiff's earliest trade mark registration bearing no.
282168 in respect of the mark M-SEAL, dated 16th August 1972,
claiming use from 1st December 1968 is at Exhibit B-1, pages
67-68 of the Plaint. The mark M-SEAL (word per se) is the
leading and essential feature of the said registration of the
Plaintiff. Copies of trade mark registration certificates / online
case statuses from the website of the Trade marks Registry, in
respect of the Plaintiff's M-SEAL registered marks are at Exhibits
B-1 to B-10, pages 67-87 of the Plaint. The registrations are
valid and subsisting and the entries appearing on the register of
trade marks including the dates of use thus constitute prima
facie evidence of such facts. As stated above, the Plaintiff's
sample M-SEAL trade mark registrations are set out below:
Mark Application Class & Date of Use Date of
No. Status Application
282168 1 01.12.1968 16.08.1972
Registered
916539 16 07.04.2000
Registered -
916538 2 07.04.2000
Registered -
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
916540 19 07.04.2000
Registered -
961689 1 06.10.2000
Registered
-
1347394 1 01.10.2001 29.03.2005
Registered
M-SEAL PHATAPHAT 982544 1 01.04.1996 09.01.2001
Registered
M-SEAL SUPERFAST 982543 1 01.02.1998 09.01.2001
Registered
1347392 1 01.10.2001 29.03.2005
Registered
1347391 1 01.10.2001 29.03.2005
Registered
6. It is stated that the Plaintiff's M-SEAL registration bearing
No. 982544 (Exhibit B-7, pages 79-80 of the plaint) contains a
disclaimer with regard to the word PHATAPHAT, however the
mark as a whole is registered and to that extent all features
taken as a whole stand protected by the registration. Further, it
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
is stated that registration bearing no. 282168 (Exhibit B-1, page
67-68 of the plaint) contains a disclaimer with regard to the
word SEAL and the registrations bearing nos. 961689 (Exhibit B-
5, pages 76-77 of the Plaint) and 1347392 (Exhibit B-9, pages
83-84 of the Plaint) 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". However, the Plaintiff states that these conditions do
not limit the rights of the Plaintiff including for reasons set out
hereinafter and in any event the rest of the M-SEAL registrations
have no conditions/limitations. In any event, the Plaintiff's mark
M-SEAL (word per se) has been taken judicial notice of and has
also received judicial protection in the past by this Hon'ble
Court [Pidilite Industries Limited Vs. S.M. Associates & Ors, 2004
(28) PTC 193 (Bom)]1, despite the presence of and after
consideration of the disclaimers/conditions imposed. The Plaintiff
states that it is independently entitled to succeed in the present
suit on the basis of the registrations listed in the table above
1 2004 (28) PTC 193 (Bom)
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
and the facts/circumstances pleaded. Furthermore, common law
rights in the said features subsist in favour of the Plaintiff.
7. The unique and distinctive artistic representation of M-
SEAL 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. The initial M-SEAL label had been
assigned to the Plaintiff in the year 2000 by the Plaintiff's
predecessors in title and the same has been slightly modified by
the Plaintiff from time to time thereafter. One of the recent
packaging labels in respect of the M-SEAL (Phataphat) product
was being used by the Plaintiff since 2001, a slightly modified
version of which is being used since 2008. Plaintiff's copyright
registration certificate in respect of one of the M-SEAL Labels is
at Exhibit 2, pages 112-114 of the Plaintiff's Affidavit in
Rejoinder.
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
8. The M-SEAL Label(s) inter alia bear the following
essential features: i) a distinctive white, blue and red color
scheme; ii) contrasting red, white or black lettering; iii) the mark
'M-SEAL' written in a unique and distinctive stylized manner
written in red font upon a white background i.e. ; iv)
the identification-mark PHATAPHAT written on the label; v) the
unique and distinctively represented tagline " SEALS JOINS FIXES
BUILDS" (hereinafter referred to as the "M-Seal Tagline");
written on the label. The label has other distinctive features as
well all of which are represented and placed in a distinctive
layout, colour scheme and get up. Though the initial label of
2001 for the product in question was slightly modified in 2008,
the essential and distinctive features of the label continue to
remain the same as set out above and both the M-SEAL Labels
and the features thereof continue to be identified and associated
by the trade and public at large with the Plaintiff alone. The M-
SEAL Label(s) also containing the identification mark
PHATAPHAT and the M-Seal Tagline also function as, and are
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
used as a trade mark and trade dress upon and in relation to the
M-SEAL products of the Plaintiff. (paragraphs 6 and 7, pages 5-7
of the plaint).
9. The Plaintiff states that the Plaintiff's M-SEAL brand has
been openly, continuously, extensively and uninterruptedly used,
promoted and advertised by Plaintiff's predecessors in title and
thereafter by the Plaintiff since at least 1968. Within a short
span of time from the commencement of sales, Plaintiff's
products sold under the mark M-SEAL, including in particular
the unique stylized manner in which the mark M-SEAL is being
used i.e. , the earlier labels and the M-SEAL Labels
also containing the M-SEAL Tagline and the sub mark
PHATAPHAT, popularly came to be known and referred to as M-
SEAL amongst the public at large and came to be associated
exclusively with the Plaintiff. It is stated that the Plaintiff's
brand M-SEAL as well as the stylized representation thereof as
well as the M-SEAL Labels, M-SEAL Tagline and identification
mark PHATAPHAT are well known.
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
10. The Plaintiff states that the Plaintiff's products under the
M-SEAL brand have been extensively sold and have become
extremely successful and popular and have earned Plaintiff crores
of rupees in revenues. Reliance is placed on certificate of a
Chartered Accountant certifying sales figures in respect of
Plaintiff's products sold under the M-SEAL brand, since the year
2000-01 till March 2020, at Exhibit C, Pages 88-89 of the Plaint.
The Plaintiff states that it has invested substantially in
advertising, publicizing, and promoting its products under brand
M-SEAL over the last several years and such promotional
expenditure exceeds crores of rupees. Reliance is placed on the
certificate of a Chartered Accountant certifying promotional and
advertisement figures in respect of Plaintiff's M-SEAL products,
since the year 2015-16 till 2019-20 at Exhibit E, page 170 of the
Plaint.
11. The Plaintiff states that in or about December 2020, the
Plaintiff was shocked and surprised to come across sealant
products of the Defendant being sold under the mark R-SEAL,
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
which mark is deceptively similar to the Plaintiff's registered
trade mark M-SEAL. The mark R-SEAL is also written and used
by the Defendant in an identical stylized manner of disjuncting
the first letter of the mark from the rest and extending the first
letter into an underlining for the rest of the mark i.e., ,
as to that of the Plaintiff's mark . The said product
of the Defendant is identical to the M-SEAL product of the
Plaintiff and the Defendant's product also bears an impugned
packaging/labels/trade dress which is an reproduction of and/or
in appearance, almost identical or deceptively similar to the M-
SEAL products of the Plaintiff, and the M-SEAL Labels. The
Plaintiff further states that the dishonesty and mala fides of the
Defendants is evinced by the fact that the impugned label used
by the Defendant on its product also bears the impugned taglines
"SEALS JOINS FIXES BUILDS"/ "BUILDS FIXES JOINS SEALS"
which are identical with the M-SEAL Tagline. The impugned
products of the Defendant also bear the impugned identification
mark JHAT-PAT that is deceptively similar to the Plaintiff's
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
identification mark PHATAPHAT (paragraph 18, page 15 of the
Plaint).
12. A comparison of the rival products and features (also
available at page 16 of the Plaint) was tendered across the bar
during the hearing dated 12 August 2022 and the same is also
reproduced herein for ease of reference :
Plaintiff's M-SEAL product Defendant's impugned products
M-SEAL vs
R-SEAL and
stylization,
underlining,
manner of
usage of
marks
PHATAPHAT vs
JHATPAT
Tagline
SEALS JOINS
FIXES BUILDS
Versus
BUILDS FIXES
JOINS SEALS
Colour combination and overall trade dress; use of blue, red,
white and black, as well as layout / placement of features.
Usage of identical terms "FAST CURING EPOXY COMPOUND/PUTTY"
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
13. A notice dated 15 December 2020, was addressed to the
Defendant by the Plaintiff through its advocates, calling upon the
Defendant to cease and desist from committing the wrongful acts
and from violating the Plaintiff's rights in its registered trade
marks, copyrights and passing off. Vide a letter dated 19
December 2020, the Defendant, through its advocates, replied to
the Plaintiff's aforesaid letter, inter alia setting up a stand and
refusing to comply with the Plaintiff's requisitions.
14. The Plaintiff states that it had noted from the contents of
the Defendant's reply dated 19 December 2020, that the
Defendant has also made applications and wrongfully obtained
trade mark 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. Online case statuses from the website of the Trade Marks
Registry in respect of the aforesaid Impugned Trade Mark
Applications of the Defendant are at Exhibits M-1 and M-2,
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
pages 214 to 217 of the Plaint. Prior to institution of the suit,
on or about 9 April 2021, the Plaintiff has filed rectification
applications before the Trade Marks Registry against the
Defendant's application nos. 860804 and 860805 aforesaid.
Reliance is placed on copies of the rectification applications at
Exhibits M-3 and M-4, Pages 218-256 of the Plaint. The Plaintiff
states that the aforesaid applications and registrations by the
Defendant are ex-facie illegal, fraudulent and ought to shock the
conscience of this Court. The Plaintiff states that the registrations
ought not to have proceeded to registration and are liable to be
cancelled and removed from the Register of Trade marks. The
rectification proceedings are pending adjudication.
15. Mr. Kamod, learned Counsel for the Plaintiff has
submitted that infringement of a registered trade mark takes
place by use of either an identical or a deceptively similar trade
mark in relation to identical or similar goods. He has placed
reliance on Section 29 of the Trade Marks Act, 1999 - in
particular Sections 29(2)(b) and 29 (4). He has submitted that
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
Defendant's usage of the impugned marks R-SEAL and/or
, which are deceptively similar to the Plaintiff's mark
M-SEAL and its unique stylized representation , is
infringing the rights of the Plaintiff in its registered M-SEAL
trade marks including the M-SEAL labels. The impugned mark R-
SEAL is also structurally and phonetically similar to the
Plaintiff's mark M-SEAL. No explanation has been given by the
Defendant for adoption of the same style of writing of the
impugned mark, as that of the Plaintiff's mark M-SEAL. The
dishonesty on the part of the Defendant in adopting the
impugned mark and as well as its representation (including the
underline from the end of the first alphabet to the last and the
colour scheme) is evident and apparent. It is evident that the
Defendant has made every attempt to copy each feature of the
Plaintiff's marks in an attempt to confuse consumers with the
striking similarities whilst making minor and insignificant
differences in an attempt to build up an unsustainable defense
on the basis thereof.
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
16. Mr. Kamod has submitted that it is settled law that
merely replacing one alphabet of the impugned mark and/or
varying the font slightly, is inconsequential and the impugned
mark is almost identical and/or deceptively similar to the
Plaintiff's M-SEAL registered mark. The same is also being used
in respect of identical goods as that of the Plaintiff.
17. Mr. Kamod has submitted that Defendant's impugned
label bearing the impugned mark R-SEAL, is an imitation and/or
a reproduction / a substantial reproduction of the Plaintiff's
artistic copyright work comprised in the Plaintiff's M-SEAL
Label(s) set out at Exhibit A, page 66 of the Plaint. Such
copying and use amounts to infringement of the copyright of the
Plaintiff subsisting in the said artistic works comprised in the
said M-SEAL Label. He has placed reliance on Section 51 of the
Copyright Act, 1957. He has submitted that it is the Defendant's
admitted case that the colours used in the impugned label are
similar to that of the Plaintiff. Slight variations in representation
or placement of the colours are inconsequential and do not make
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
the Defendant's use non-infringing. The test to establish
infringement of copyright is well settled. The Defendant's
impugned work/label need not be an exact reproduction of the
Plaintiff's work/label. It would be sufficient to establish
copyright infringement if the Defendant's label looks similar or
like a copy or is reproduction of substantial part of the
Plaintiff's label, which in this case it evidently is. He has
submitted that it is settled law that every intelligent copying
must introduce a few changes, but that would not affect the
Plaintiff's case in any manner. The Defendant's impugned work
has incorporated essential and substantial features of the
Plaintiffs work and therefore the test to establish copyright
infringement has been met. Mr. Kamod has relied upon the
judgment of this Court in Pidilite Industries Limited Vs. S.M.
Associates & Ors. (supra) at Paragraph 24 & 25. He has
submitted that bare perusal of the rival labels leaves an
unmistakeable impression that the Defendant's impugned label is
nothing but a reproduction of the essential features of the
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
Plaintiff's M-Seal Labels.
18. Mr. Kamod has submitted that by using the impugned
marks, label, identification mark, tagline and overall trade dress
in respect of its R-SEAL products, the Defendant is seeking to
misrepresent its goods as those of the Plaintiff or as having some
connection with the Plaintiff, causing irreparable damage to the
Plaintiff and to the goodwill and reputation of the Plaintiff's
business and is also diluting the distinctiveness of the mark M-
SEAL, , M-SEAL Registered Marks and the M-SEAL
Label also containing the M-SEAL Tagline and the identification
mark PHATAPHAT of the Plaintiff. Such usage is likely to cause
confusion and deception amongst the members of the trade and
public at large. The same is a deliberate attempt on the part of
the Defendant to trade upon the reputation and goodwill of the
Plaintiff. The Defendant's mark R-SEAL written in an identical/
deceptively similar stylized manner as that of the mark
of the Plaintiff, the white, blue and red colour
schemes, the red font, the overall layout and trade dress and
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
usage of the impugned labels, taglines and identification mark is
clear evidence of the dishonest intentions of the Defendant to
deceive and confuse the public, consumer and traders. Such
wrongful actions of the Defendant amount to the tort of passing
off and/or unfair competition and/or dilution and are actionable
as civil wrongs.
19. Mr. Kamod has further submitted that identical defenses,
as those being raised by the present Defendant, have already
been raised by another Defendant in the past against the Plaintiff
in respect of a suit for infringement of trade mark and copyright
pertaining to the M-SEAL product of the Plaintiff. The same have
been adjudicated upon by this Court in favour of the Plaintiff
and injunctive reliefs have been granted in favour of the
Plaintiff. Reliance is placed on the judgment of this Court in
Pidilite Industries Limited Vs. S.M. Associates & Ors. (supra) at
Paragraphs 1, 2, 7, 9, 39, 40, 41, 42, 42(8), 42(9), 43, 45, 46,
47, 51, 52, 53, 54, 55, 56, 57, 58, 59, 60, 63, 76 and 84.
20. Mr. Kamod has submitted that the Plaintiff is the prior
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
adopter and user of the mark M-SEAL for which he has relied
upon the Plaintiff's trade mark registration bearing no. 282168
in class 1, in respect of the mark M-SEAL dated 16th August,
1972, and with a user claim from 1 st December, 1968. He has
relied upon Pidilite Industries Limited (supra) to contend that the
Plaintiff's acquisition of M-SEAL mark in 2000 was together with
the goodwill and that judicial notice of the same had been taken
in the said decision.
21. Mr. Kamod has submitted that the Defendant has failed to
prove its alleged user claim or alleged reputation or goodwill.
Further, the documents relied upon by the Defendant are
subsequent to the user claim of the Plaintiff. The alleged sales
figures provided by the Defendant are in respect of entire
Defendant's firm and not in respect of R-SEAL products alone (if
at all). He has further submitted that the alleged certificate of
Chartered Accountant relied upon by the Defendant in the
supplementary Affidavit-in-Reply at Annexure-G, Page 215 is in
respect of the turnover of the Defendant's firm and not its R-
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
SEAL products alone (if at all). The Defendant had also sought
to place reliance on (purported invoices from the year 1999 to
2005) which are alleged to be annexures to a user affidavit filed
by it before the Trade Mark Registry. However, the Defendant
has itself admitted that the said alleged annexures are not
available and have not been produced. Defendant's reliance upon
the same, therefore, is impermissible and of no assistance to the
Defendant.
22. Mr. Kamod has submitted that the Defendant has neither
pleaded nor alleged any acquiescence on the part of the Plaintiff.
The Defendant has not even pleaded that it is an honest and/or
concurrent user. He has placed reliance on judgment in ITC
Limited Vs. NTC Industries Ltd, MANU/MH/2559/2015 2
(Paragraphs 15, 17, 17(26), and 19 at pages 6 to 8) and in
Aglowmed Limited Vs. Aglow Pharmaceuticals Private Limited,
MANU/MH/2075/20193 (Paragraph 18 at page 10). The Defendant
has admitted that it has not taken the defense of acquiescence.
2 MANU/MH/2559/2015
3 MANU/MH/2075/2019
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
In any event, the Plaintiff has not acquiesced to the Defendant's
user of the impugned mark/label/trade/dress/getup/tagline. Mr.
Kamod has also submitted that there is no honesty in the
Defendant's adoption. He has placed reliance upon the
judgment of this Court in Cadilla Pharmaceuticals Limited Vs.
Sami Khatib, MANU/MH/0497/20114 (Paragraph 15 at page 5
and paragraph 23 (B) at page 9) in support of his contention
that honesty in adoption is not a defence to an action for
infringement.
23. Mr. Kamod has further submitted that the Defendant has
not produced any Search Report and in fact submitted in Court
that no search was conducted by the Defendant before adopting
the impugned mark. The Defendant has not taken elementary
precaution of making himself aware by looking at the public
record of Registrar as to whether the mark in question is the
property of another. Thus, the Defendant has gambled by
investing whatever amount it may allegedly have, in its
4 MANU/MH/0497/2011
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
infringing mark and its usage of the infringing mark cannot be a
defence to an action by a registered proprietor of a prior
adopted and registered mark. Mr. Kamod has in this context
relied upon the decision of the Division Bench of this Court in
Bal Pharma Ltd. Vs. Centaur Laboratories Pvt. Ltd., 2002 (24)
PTC 226 (Bom) (DB)5 (paragraph 9).
24. Mr. Kamod has submitted that the word 'SEAL' or the
colour scheme of 'M-SEAL' packaging/label is not common to
the trade or generic. He has submitted that the Defendant has
not led any documentary evidence whatsoever to show the
extent of sales or even the existence of sales of the alleged
products bearing marks containing the term SEAL. He has placed
reliance upon the decision of this Court in Jagdish Gopal Kamath
& Ors. Vs. Lime & Chilli Hospitality Services, 2015 (62) PTC 23
[Bom]6 in the context of his submission that it is not enough to
merely show some use (albeit absolutely no use has been shown
by this Defendant). In order to show that the term SEAL has
5 2002 (24) PTC 226(Bom)(DB)
6 2015 (62) PTC 23 [Bom]
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
become generic or become common to trade, the burden is on
the Defendant, who must show use by the trade that is
extensive. Further, it has been held by this Court in Pidilite
Industries Limited Vs. S.M. Associates & Ors. (supra) that the
principle or requirement of proving extensive and substantial use
by third parties is applicable and even binds the Defendant at
the interlocutory stage, and the Defendant has to discharge such
burden conclusively even at the interlocutory stage. In the
present case, the Defendant has submitted that it cannot produce
any evidence of other third parties using marks containing SEAL
or the alleged "natural colours" since it does not know now to
prove such use. Therefore, there has been a failure on the part
of the Defendant in discharging the burden upon it to prove its
contention, that SEAL or that the colour scheme of M-SEAL is
allegedly common to the trade, including even at the prima facie
stage.
25. Mr. Kamod has further submitted that the Defendant itself
has adopted, used and also fraudulently secured registration of
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
the impugned R-SEAL marks bearing Nos. 860804 and 860805
containing the term SEAL as their leading and essential features
in a trade mark sense. He has placed reliance upon the decision
of this Court in of Pidilite Industries Limited Vs. Jubilant Agri &
Consumer Products Limited, (supra) (paragraph 10.1 at page 7
and paragraphs 13.2 to 13.4 at pages 13-15) and the decision of
this Court in judgment of Jagdish Gopal Kamath & Ors Vs. Lime
& Chilli Hospitality Services,(supra) (paragraphs 23, 29-30) in
support of his submission that the Defendant is therefore
estopped from contending that the term SEAL is allegdly
common to the trade or generic or incapable of protection or
registered in the name of various other manufacturers or third
parties.
26. Mr. Kamod has further submitted that the disclaimers on
one of the Plaintiff's trade mark registrations (bearing no.
282168) with respect to "SEAL", does not limit the rights of the
Plaintiff in any manner. He has placed reliance upon decision of
this Court in Pidilite Industries Limited Vs. S.M. Associates &
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
Ors. (supra) at Paragraph 46 and 47 and Serum Institute of India
Limited Vs. Green Signal Bio Pharma Pvt. Ltd. and Ors., 2011
(6) Bom CR827 at Paragraph 17 at page 12 in support of his
contention that for the purpose of comparison of the marks to
adjudicate upon the possibility of confusion or deception of the
public, the whole of the mark (including the disclaimed portion)
would have to be compared as that is how a common man
would view the marks in the market. The very disclaimer which
the Defendant has sought to be relied upon was considered by
this Court in Pidilite Industries Limited Vs. S.M.Associates & Ors
(supra) and upon which this Court has accorded judicial notice
and protection to the Plaintiff's mark M-SEAL (word per se).
27. Mr. Kamod has submitted that in the present case the
Defendant is claiming rights in the impuged R-SEAL marks
including the word SEAL, forming the leading and essential
feature thereof, whilst at the same time claiming that the same
is generic. Mr. Kamod has placed reliance upon the decision of
7 2011 (6) Bom CR 82
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
this Court in Jagdish Gopal Kamath & Ors. Vs. Lime & Chilli
Hospitality Services,(supra) at Paragraphs 23, 29-30 to contend
that the conduct of the Defendant is malafide and the Defendant
has taken inconsistent and contradictory stands, blowing hot and
cold at the same time.
28. Mr. Kamod has submitted that it is well settled by this
Court in Lupin Vs. Johnson & Johnson, AIR 2015 Bom 508 at
Paragraphs 24, 26, 45, 59(1), 59(3) and 59(5) as well as in
Pidilite Industries Limited Vs. Poma-Ex Products, 2017 (72) PTC
1 (Bom)9 at Paragraphs 79, 81-84 that the Court has the power
to go behind the Defendant's regisration, even at the
interlocutory stage and can grant injuction against the Defendant
if registration of the trade mark of the Defendant is prima facie
found ex facie illegal, fradulent and shocks the conscience of the
Court.
29. Mr. Kamod has submitted that in comparison of rival
marks / labels to consider whether they are similar, it has been
8 AIR 2015 Bom 50
9 2017 (72) PTC 1 (Bom)
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
laid down by the Supreme Court in Cadilla Healthcare Limited
Vs. Cadilla Pharmaceuticals Limited, 2001 (2) PTC 541 SC10 that
attention and stress is to be given to the common features in the
two rather than on differences in essential features. Further, this
Court in Jagdish Gopal Kamath & Ors Vs. Lime & Chilli
Hospitality Services, 2015 (62) PTC 23 [Bom] 11 at Paragraphs
17-18 has laid down that trivial and non-distinctive matters-what
one might describe as mere sideshows-do not sufficiently
distinguish a rival mark.
30. Mr. Kamod has accordingly submitted that the rival
marks / labels cannot sail together or co-exist without causing
confusion and deception of the public at large and without
violating the rights of the Plaintiff. He has submitted that a
prima facie case has been made out by the Plaintiff for grant of
interim reliefs sought for. Further, the balance of convenience
and irreparable loss, harm and injury is also apparent from the
pleadings and the material on record. The Defendant has various
10 2001(2) PTC(541)SC
11 2015 (62) PTC 23 [Bom]
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
other products apart from the impugned product, as is the
Defendant's own case, and therefore the Defendant's contention
that its business will shut down if an injunction is granted, is
false on the face of it.
31. Mr. Ramakrishnan, the learned counsel for the Defendant
has submitted that the Plaintiff has failed to produce the Deed of
Assignment and therefore, the details of the Assignment of
Trademark and Copyright is unknown. Further, the extract from
the website of the Trademark Registry provided by the Plaintiff's
records that the details of assignment are unknown. He has
submitted that decision of this Court in the M-Seal Vs. S M-Seal
(supra) cannot be binding and a different interpretation is
possible based on the reading on the entire Deed of Assignment.
32. Mr. Ramakrishnan has further submitted that the Plaintiff
has failed to prove that they had used the said mark prior to the
year 2000. He has further submitted that the marks M-Seal
Phataphat and M-Seal Superfast registrations which have been
produced by the Plaintiff is fraudulent since the user details in
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
each of these certificates says 1996 and 1998 respectively. The
assignment, admitted by the Plaintiff themselves is in the year
2000 therefore, there is no possibility of having used the same
prior to that. The Chartered Accountant certificate provided by
the Accountant is of the year 2000 onwards for M-Seal
Trademark and 2005 onwards for M-Seal advertising.
33. Mr. Ramakrishnan has submitted that the Defendant has
produced invoices from the year 2005. However, for the period
from 1999 to 2005 the Defendant has been unable to produce
invoices since the same were destroyed by them being invoices
older than 7 years and beyond the period of Income Tax audit.
The Defendant in the year 2005 moved from manual invoicing to
Tally ERP because of which prior data could not be extracted.
He has placed reliance upon Affidavits which were filed at the
time of reply to the Examination Report of the two marks of the
Defendant and it is at Annexure-E to the supplementary Affidavit
filed by the Defendant wherein at Paragraph 4 in both Affidavits
it is clearly stated that invoices for the years 1999 to 2005 have
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
been produced which establishes that the trademarks of the
Defendant has been in use since the year 1999.
34. Mr. Ramakrishnan has submitted in support of its
contention that Seal being a general word (in addition the same
being the disclaimer in the Trademark of the Plaintiff that was
assigned) it is required to show that the industry practice is the
use of said word with their products. Alternatively, he has
submitted that from trademark applications, the 1968 application
of the Plaintiff is a device mark whereas the Defendant has
obtained registration of R-Seal word mark and device mark.
Therefore, the Defendant is on a stronger footing as compared to
the Plaintiff. The Plaintiff's application comes with a disclaimer
on the use of the word Seal whereas the Defendant's registration
both as device and word mark have no such disclaimers. Mr.
Ramakrishnan has submitted that though several judgments have
been relied by the Plaintiff which states that when series theory
is being argued, sales of the other marks is also to be shown.
However, there is no explanation provided as to how the same
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
can be done apart from showing a trademark registration since
no company will be willing to reveal their sales or user figures.
35. Mr. Ramakrishnan has submitted that the registration
certificates of both its marks would show that the said marks
have gone through a process of scrutiny by the Trademark
Registry wherein an examination report was also generated to
which the Defendant had responded and only after the same was
the registration accorded for both applications of the Defendant.
In both Examination Reports, M-Seal has not been stated as a
conflicting mark. Though Plaintiff has alleged fraud, no
substantiation of the same has been made. The Plaintiff has not
provided proof to show that at the time of the alleged
Assignment of the Trademark in its favour by Mahindra, it has
done a detailed search / due-diligence. Therefore, the Plaintiff
cannot claim any kind of parity in this regard by shifting onus
on the Defendant to have conducted searches before filing its
applications. It is the Defendant's categorical submission that its
mark is completely different from the M-Seal mark.
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
36. Mr. Ramakrishnan has submitted that the defence of
acquiescence has not been taken by the Defendant since it has
always been the Defendant's stand that its marks are different
from that of the Plaintiff.
37. Mr. Ramakrishnan has submitted that there are various
differences when comparing the rival marks of the Plaintiff and
the Defendant. The Plaintiff when comparing with the image
extracted in Page 16 of the Plaint has done a mix and match of
the two images of horizontal and vertical boxes in order to
create confusion. Mr. Ramakrishnan has submitted that with
regard to the box containing the particulars in horizontal manner
- M-Seal prominent colour is black and blue whereas R-Seal the
white background is prominent. The manner or presentation of
the names are also different since R-Seal has a Star and Riya
over the same. This is in line with its Registration under
Trademark No.860805. Further, Jhatphat and Phataphat are
phonetically different. The logo of M-Seal is in the center of the
box whereas the Defendant's details are spread across the box.
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
The two packing can be easily distinguished. With regard to the
box containing the particulars in vertical manner - M-Seal
prominent colour is black and blue whereas R-Seal has an array
of colours and images. In fact in these boxes R-Seal's use of the
word Jhatphat is on the sides of the box and not on the face of
it. The two packing can be easily distinguished. The manner or
presentation of the names are also different since R-Seal has a
Star and Riya over the same. This is in line its Registration
under Trademark No.860805. He has further submitted that the
words builds/seals/fixes/joins are the properties of the product
and is not a tag-line by any means. No consumer recognizes
either of the products by these words. Further, when a
consumer comes to the shop he either would ask for M-Seal or
R-Seal and not M-Seal Phataphat or R-Seal Jhatphat.
38. Mr. Ramakrishnan has submitted that with regard to the
allegation of copyright infringement, the Plaintiff has produced
their copyrighted label at Exhibit-2 of the Affidavit in Rejoinder.
A mere perusal of the label and the packs of the Defendant will
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
clearly establish that there is a world of difference between the
two. The copyright certificate issued for the Plaintiff states that
the same is used from 2001 whereas the Defendant has been
using the packs since 1999 itself. He has accordingly submitted
that though copyright infringement is pleaded, there are no
proper details on what aspect of the Defendant's image /
packing is infringing the copyright of the Plaintiff and a vague
pleading is made in the Plaint.
39. Mr. Ramakrishnan has sought to distinguish the decisions
relied upon by the Plaintiff. He has submitted that in so far as
Lupin case which is relied upon by Mr. Kamod, the principle
laid down therein is not in dispute, namely whether the Court
can go into the prima facie validity of the trademark though the
question of registration is to be decided by the trademark
registry. However, it was submitted therein that the main suit
ought to be stayed post orders on the Ad-interim Relief
Application since the validity of the registration was pending
before the Trademark Registry and thus Section 124 will apply
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
in all force.
40. Mr. Ramakrishnan has distinguished the decision in the
case of Pidilite Industries Limited Vs. Poma Ex-Products case
(supra) relied upon by the plaintiff. In that case, the judgment
makes the argument acknowledging that two registrations there
is a disclaimer regarding the use of the word 'kwik' whereas the
same is not the case in two others. The Plaintiff therein had
admitted that the disclaimers play a vital role and the words
that are disclaimed are generic in nature. The Judge in that
case had agreed to this line of argument. The samples of
fewikwik and kwikheal in that case reveal that the exact same
colours and presentation of the colours were used by the
infringing mark and it was on this basis that the Court held in
favour of fevikwik. Moreover, after interim order was granted,
kwikheal secured trademark registration. The facts of the
present case are entirely different since the registration precedes
the assignment of trademark itself.
41. Mr. Ramakrishnan has submitted that the decision of this
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
Court in Pidilite Industries Limited Vs. Jubilant Agri & Consumer
Products Limited, (supra) is different from the present case as in
that case, the Defendant had withdrawn its Trademark
Application. The Judge in that case concluded that customers
refer to the product of fevicol as "marine" and not "fevicol
marine". In the present case, customers would refer to the
product as M-Seal or R-Seal and not M-Seal Phataphat and R-
Seal Jhatpat. In that case, the images of marine and marine
plus are seen, the picture of ply falling into the water puddle is
common in both and this would definitely cause confusion to an
illiterate person. It is in the facts of that case that it was
canvased that marine does not have a disclaimer or in the
present case, "Seal" is common in the industry.
42. Mr. Ramakrishnan has distinguished the decision of this
Court in Cadilla Pharmaceuticals Limited Vs. Sami Khatib (supra)
wherein there was dispute between two word marks. Further,
there was discussion on the importance of wordmarks as regards
medical products wherein it is concluded that the tests ought to
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
be more stringent for medicinal products. The decision is not
applicable in the facts of the present case.
43. Mr. Ramakrishnan has further submitted that the decision
in Aglowmed Limited case (supra) and ITC Vs. NTC (supra) are
decision of acquiescence and as has been submitted on behalf of
the Defendant in the present case, that the same is not in
contention. It is the case of the Defendant herein that two
marks are different and thus, there is no question of
acquiescence.
44. The decision relied upon by the Plaintiff namely Serum
Institute of India Limited (supra) is a case of registered versus
unregistered mark and in that context it was stated that sales
figures of other marks / brands ought to have been produced.
Further, there is no explanation on how this can be achieved
since no entity will be willing to part with its sales figures
randomnly. This case was between two wordmarks and in
wordmarks the words by themselves plays an important role
unlike device marks in the present case wherein the entire marks
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
wherein the entire layout is to be seen. This Court in that case
had relied upon the invoice provided by the Chemist in which
the brandnames were used interchangeably and was regarding
placement of "ONCO" and "BCG" which does not arise in the
present case.
45. Mr. Ramakrishnan has submitted that the decision relied
upon by the Plaintiff namely Bal Pharma Ltd. Vs. Centaur
Laboratories Pvt. Ltd.,(supra) is inapplicable in the present case
as that decision was on acquiescence which does not arise in the
present case. Further, the decision relied upon by the Plaintiff
namely Jagdish Gopal Kamath & Ors. Vs. Lime & Chilli
Hospitality Services (supra) was a case where both entities were
using "cafe madras" and where the Defendant applied for
registration after receipt of cease and desist notice. The present
case is different since R-Seal was applied for in the year 1999
itself prior to the assignment of the trademark.
46. Mr. Ramakrishnan has further distinguished the decision
of this Court in Pidilite Industries Limited Vs. S.M. Associates &
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
Ors (supra) which has been relied on behalf of the Plaintiff. He
has submitted that in that case the Defendant had only added
the letter "S" to "M-Seal" and thus was found infringing in
addition to the fact that the placement of colours used was
similar to the M-Seal packing. Further, an individual working in
Pidilite went ahead and created S M-Seal which was established
as being deceptively similar to M-Seal. He has submitted that in
the present case the word "R-Seal" has been used and there is a
Star between R-Seal and further the word "Riya" also is part of
its mark.
47. Mr. Ramakrishnan has relied upon the decision of Delhi
High Court in Hamdard National Foundation (India) & Anr. Vs.
Sadar Laboratories Pvt .Ltd. (CS COMM 551/2020, 9th January,
2022)12 in support of his submission that when the brands have
been in peaceful co-existence for a long time, the question of
confusion does not arise.
48. Mr. Ramakrishnan has further submitted that the
12 CS COMM 551/2020, 9th January 2022
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
documents relied upon which includes Chartered Accountant
Certificate reflecting Defendant's sales as an entity and the
Advertising and promotional material of the Defendant which are
at Exhibit-G and H of the supplementary Affidavit respectively
would go to show that the Defendant has been using the word
mark and device mark for a long time and the Defendant being
a woman enterprise that is more than two decades old would
suffer gross prejudice in the event of interim relief being granted
in favour of the Plaintiff. The Defendant has obtained
registration in a legal manner and has not committed fraud at
any point of time. In the event interim relief sought for by the
Plaintiff is allowed, the Defendant will have no option but to
shut down its business since almost 80-85% of its sales are from
the R-Seal brand. Accordingly, it has been submitted that the
relief sought for by the Plaintiff be not granted.
49. Having considered the rival submissions, I am of the
prima facie view that the Plaintiff is the prior adopter and user
of the mark M-Seal. It appears from the documents on record
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
at Exhibit-B1 to the Plaint that the Plaintiff's Trademark
Registration bearing No.282168 in Class 1 in respect of the mark
M-SEAL is dated 16th August, 1972 and with a user claim from
1st December, 1968. 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 user claim of the Plaintiff of 1972. I do
not find any merit of the submission of the Defendant that the
Plaintiff cannot claim use of the mark M-SEAL since 1972 and/or
registration of the mark from 1 st December, 1968 and / or that
the mark was acquired by the Plaintiff from its predecessors in
title only in 2000. I find that the Plaintiff's acquisition of the
M-SEAL marks in 2000 was together with the goodwill thereof.
Section 38 and 42 of the Trade Marks Act, 1999 specifically
provides for assignment with goodwill. The Plaintiff is entitled to
claim all rights and privileges in the said marks, including
statutory and common law rights, from the date of first usage of
the said marks by its predecessors in title i.e. from 1968. The
use of the said marks by the Plaintiff's predecessors in title is
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
deemed to be use by the Plaintiff and inures to the benefit of
the Plaintiff. An acquisition of the mark does not change the
date of first usage of the mark and this will apply to the
Plaintiff's trademark registration in respect of M-SEAL Phataphat
and M-SEAL Superfast marks which assignment had taken place
in the year 2000, but the user of this marks would go back to
the usage of the marks by the predecessors in title. Thus, there
is no merit in the Defendant's contention that the Plaintiff's
trademark registration in respect of the aforementioned marks of
the Plaintiff have a false user claim, claiming user from 1996
and 1998, despite the assignment taking place in the year 2000.
50. It is necessary to note that the averments and documents
produced by the Plaintiff sufficiently demonstrate the fact of the
acquisition. Further, this Court in Pidilite Industries Limited Vs.
S.M. Associates & Ors. (Supra) has taken judical notice of the
same and had recorded in Paragraph 2 of the said decision that
the predecessors in title had applied for and obtained with effect
from 16th August, 1972, the registration of the trademark
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
"M-seal" under the Registration No. 282168 in Class 1 and that
the registration of the said mark is valid and subsisting having
been renewed upto 16th August, 2007. Further, the recordal of
assignment is reflected and freely available on the website of the
Trade Marks Registry and which is, inter alia in respect of the
Plaintiff's M-SEAL mark bearing No.282168 in Class 1 which has
also been tendered across the bar during the hearing on 22 nd
August, 2022. Thus, the Registrar of Trade Marks, pursuant to
an application by the Plaintiff has after application of mind
confirmed the recordal of assignment in respect of the mark
M-SEAL. Under Section 45 of the Trade Marks Act, 1999, this
prima facie evidence of the Plaintiff's ownership of the mark
M-SEAL.
51. I find that the Defendant has failed to produce documents
in support of its alleged user claim in respect of the impugned
marks from 1999. The earliest invoice made available by the
Defendant in respect of its R-SEAL product is of the year 2005,
which is subsequent to the Plaintiff's adoption and use of the
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
mark M-SEAL. Further, I find that the sales figures provided by
the Defendant is in respect of the Defendant's firm and not in
respect of the R-SEAL products alone. The certificate of the
Chartered Accountant is also in respect of the turnover of the
Defendant's firm and not its R-SEAL products alone. Thus, the
Defendant has failed to produce the relevant documents
pertaining to the use of the impugned R-SEAL products and / or
in order to show its user was based on its documents.
52. The Defendant had made an attempt to place reliance on
Annexures which are purported invoices from the year 1999 to
2005, in its user affidavit filed by it before the Trade Marks
Registry which is at Annexure-E to the Defendant's
Supplementary Affidavit-in-reply. However, these Annexures have
not been made available and hence, mere reference of these
Annexures is of no significance and of no assistance to the
Defendant. Thus, I am of the prima facie view that the
Defendant is not the prior adopter or user of the marks in
question and not entitled to any rights thereon.
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
53. I am further of the prima facie view that upon
comparison of the rival products and features which are tendered
across the bar and which have been referred to hereinabove, 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. No attempt has been made by the
Defendant to explain or justify the adoption of the impugned
mark / impugned features or deceptive similar colour
combination, its representation (including with an identical under
lining of the mark beginning from the end of the first alphabet),
label, identification mark as well as tagline. I find no substance
in the Defendant's contention that the colours used by the
Defendant in respect of its packaging label are natural colours
and would not cause any confusion amongst the public at large.
54. It is necessary to note that the Defendant has not taken
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
the defence of acquiescence since it is their stand that the
impugned marks is different from that of the Plaintiff. Thus, the
Defendant has neither pleaded nor alleged any acquiescence on
the part of the Plaintiff. The Defendant has also not pleaded that
it is an honest and / or concurrent user. It is now not open for
the Defendant to make any submission that the Plaintiff had
acquiesced in the Defendant's user of the mark and / or that the
Defendant is an honest concurrent user. The decision relied upon
on behalf of the Plaintiff in ITC Limited Vs. NTC Industries Ltd
(supra) and in Aglowmed Limited Vs. Aglow Pharmaceuticals
Private Limited (supra) have held that acquiescence must be
pleaded and proved. It is settled law that when the Defendant's
adoption itself is dishonest, no amount of user can create any
rights in favour of the Defendant. In my prima facie view, there
is no honesty in the Defendant's adoption of the impugned
mark, apart from it being well settled that honesty in adoption
is also not a defence to an action for infringement. The decision
of this Court in Cadilla Pharmaceuticals Limited Vs. Sami Khatib
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
(supra) is apposite.
55. In the present case, the Defendant has not taken the
elementary precaution of making himself aware by looking at the
public record of Registrar as to whether the mark in question is
the property of another. It is the contention on behalf of the
Defendant that in the Examination Report which was generated
through scrutiny by the Trade Marks Registry, M-SEAL had not
been stated as a conflicting mark. However, the Defendant has
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. It has been held by this
Court in Bal Pharma Ltd Vs. Centaur Laboratories Pvt. Ltd.
(supra) that the Defendant by not conducting such search of
public record of the Registrar has gambled by investing whatever
amount it may allegedly have in its infringing mark and its
usage of the infringing mark cannot be a defence to an action
by a registered proprietor of a prior adopted and registered
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
mark. I do not find any merit in the Defendant's contention
that the Plaintiff ought to have done a search of the register of
Trade Marks prior to adopting the M-SEAL mark. This
particulary, since the adoption, use and registration of the
M-SEAL mark by the Plaintiff's predecessor in title, is admittedly
prior to the registration and user by the Defendant of its mark.
56. Further, the case is not of honest and concurrent user as
it is the Defendant's contention that the Defendant's mark is
different from that of the Plaintiff. 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.
57. The Defendant has sought to rely upon certain action
taken by it against Roffe Construction Chemicals Private Limited
and reliance has been placed on the judgment passed in that
matter by the City Civil Court in Bangalore. I find that the case
relied upon has no relevance and it makes no difference that the
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
judgment in that case was passed after purchase / assignment of
assets of Roffe Construction Chemicals Pvt. Ltd. by the Plaintiff.
This is particularly considering that the purchase / assignment of
the assets of Roffe Construction Chemicals Pvt. Ltd. by the
Plaintiff in the year 2004 did not include nor had any
connection with the alleged mark R-SEAL which is the impugned
mark in the present case. The Plaintiff was not even made a
party to the proceedings. It is noted that the judgment in that
case was passed in an undefended suit and does not assist the
Defendent herein in any manner whatsoever.
58. I do not find any merit in the contention of the
Defendant that the term "SEAL" or colour scheme of M-SEAL
packaging/label is common to the trade or generic. The
Defendant has been unable to produce any material in support of
this contention. It is settled law that 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
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
by third parties, lies on the party who is ascerting and/or
relying upon it. In the present case, the Defendant has not led
any documentary evidence whatsoever to show the extent of
sales or even the existence of sales of the alleged products
bearing the marks containing the term "SEAL". Likewise, the
Defendant merely stating that the colours used by them in
respect of the packaging of the impugned product are natural
colours used by the companies across industries, has given no
justification for adoption of colours similar to the Plaintiff's M-
SEAL packaging/label. The Defendant, on whom the burden lies,
must show that the use by the trade is extensive. This has been
laid down in the judgment relied upon on behalf of the Plaintiff
namely Jagdish Gopal Kamath & Ors. Vs. Lime & Chilli
Hospitality Services (supra). This principle or requirement of
proving extensive and substantial use by third parties is even
applicable and binds the Defendant at the interlocutary stage has
been laid down by this Court in Pidilite Industries Limited Vs.
S.M. Associates & Ors. (Supra). In fact, in the present case the
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
Defendant has admitted that it cannot produce evidence of other
third parties using marks containing SEAL or the alleged
"natural colours" since it does not know how to prove such use.
Thus, the Defendant has admitted its failure to discharge the
burden upon them to prove their contention that SEAL or the
colour scheme of M-SEAL is allegedly common to the trade.
59. 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 cotending 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. Pidilite Industries Limited Vs. Jubilant Agri & Consumer
Products Limited, (supra) and Jagdish Gopal Kamath & Ors. Vs.
Lime & Chilli Hospitality Services (supra) are apposite.
60. With regard to the arguments on disclaimer on some of
the Plaintiff's marks and as to whether it negates the rights of
the Plaintiff to claim exclusivity and protection thereof, this has
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
been already decided by this Court in the Plaintiff's own case
against S.M. Associates & Ors. (Supra) . This Court has in
Paragraph 47 of the said decision held as under -
"I am in respectful agreement that despite a
disclaimer in respect of the word "Seal" I must have
regard to the whole of the Plaintiffs mark including the
disclaimed matter while deciding the question of
infringement. A contrary view could lead to peculiar
results. Take for instance where the disclaimed word is
written in a distinctive style with embellishments within,
on or around it, and the Opponents mark also consists of
the disclaimed word written in the same distinctive
manner. Were it open to the Opponent to contend that the
disclaimed word ought to be ignored there would be
nothing left to compare. Let me carry this illustration
further with the modification that the embellishments in
the two marks are different. If the disclaimed word is to
be ignored all that would be left is the embellishments.
This is not how a person in the market would view the
marks while purchasing a product. There would remain an
equal degree of possibility of deception and confusion as
the public, being oblivious to the disclaimer would not
analyze the marks as suggested by Dr. Shivade. In the
circumstances, the disclaimer in the present case does not
affect the Plaintiffs right to obtain an injunction for
infringement."
61. This Court has in the above decision held that the
Plaintiff's mark would have to be regarded as a whole including
the disclaimed matter while deciding the question of
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
infringement. Declaimers 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. This is how a common man would view the
marks while purchasing the product. This Court has thereby
accorded judicial notice and protection to the Plaintiff's mark M-
SEAL (word per se) despite the presence of, and after
consideration of the very same disclaimer/condition on the
Plaintiff's mark. The decision of this Court in Serum Institute of
India Limited Vs. Green Signal Bio Pharma Pvt. Ltd. (supra) is
also on these lines.
62. It is necessary to note that the Defendant's registration for
R-SEAL does not have a disclaimer and by which the Defendant
has sought to claim rights in their mark including SEAL, which
forms the leading and essential feature thereof, whilst at the
same time claiming that the same is generic. This conduct of
the Defendant in taking inconsistent and contradictory stands is
evidently mala fide by blowing hot and cold at the same time.
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
The decision of this Court in Jagdish Gopal Kamath & Ors. Vs.
Lime & Chilli Hospitality Services (supra) is relied upon on
behalf of the Plaintiff in this context is apposite.
63. Merely because the Defendant has registered its mark does
not take away the power of this Court, even at interlocutory
stage, to go behind the Defendant's registration and grant
injuction if registration of the Defendant's marks is prima facie
found ex facie illegal, fraudulent and shocks the conscience of
the Court. This has been expressly held in the decision relied
upon on behalf of the Plaintiff namely Lupin Vs. Johnson and
Johnson (supra).
64. In my prima facie view, the Defendant's registrations for
the impugned marks R-SEAL and are ex-facie illegal, fraudulent
and of a nature that would shock the conscience of this Court.
The Plaintiff's rectification proceedings in respect of the said
registrations are pending adjudication before the Trade Marks
Registry. Further, in my prima facie view, the Defendant has
obtained the aforesaid registrations by playing a fraud upon the
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
Registrar of Trade Marks and concealing from him, the existence
of the Plaintiff's prior registered marks. The Registrar of Trade
Marks, being the custodian of all marks, ought to have
conducted a search of the register before proceeding to accept
the Defendant's applications, to ensure that the Defendant's
marks are not violating the rights of any prior user or
proprietor. Prima facie, the Defendant's marks R-SEAL and ,
being deceptively similar to the Plaintiff's registered marks M-
SEAL 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. It is therefore evident that the
aforesaid registrations of the Defendant are, including at the
prima facie interlocutory stage, fraudulent and illegal, in
violation of the provisions of the Trade Marks Act, 1999.
Therefore, this Court has the power to go behind the
Defendant's registrations and grant and injunction against the
Defendant's wrongful activities with a view to secure the rights
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
of the Plaintiff.
65. In my prima facie view, I find that the rival marks / labels
are similar and cannot sail together without any confusion. It is
settled law as laid down by the Supreme Court in Cadilla
Healthcare Limited Vs. Cadilla Pharmaceuticals Limited (supra)
that while comparing rival marks, attention and stress is to be
given to the common features in the two rather than on
differences in essential features. Trivial and non-distinctive
matters-what one might describe as mere sideshows-do not
sufficiently distinguish a rival mark. This has been held in
Jagdish Gopal Kamath & Ors. Vs. Lime & Chilli Hospitality
Services,(supra). The Defendant's similarities in the rival marks
and lables which can be seen from comparison of the rival
marks and which have been referred to hereinabove makes clear
the obvious give away of the conduct of the Defendant and the
infringing nature of the impugned marks/labels/identification
mark/tagline and overall trade dress of the impugned products. It
has been held by this Court in Pidilite Industries Limited Vs.
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
S.M. Associates & Ors. (Supra) that every intelligent copying
would seek to introduce some differences or changes, 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 disception of the
public at large and without violating the rights of the Plaintiff.
The decision of Delhi High Court in Hamdard National
Foundation (India) & Anr. Vs. Sadar Laboratories Pvt Ltd. (supra)
relied upon on behalf of the Defendant is in my view irrelevant
to the facts of the present case. In that case, the Court has held
that there were no similarities in the words Rooh Vs. Dil and
no injuction came to be granted. The judgment in that case is
under challenge in appeal.
66. I do not find any substance in the attempt made on behalf
of the Defendant to distinguish the decisions relied upon by the
Plaintiff, in particular the factual distinction. What is necessary
to note is that principles laid down in these decisions have
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
withstood the test of time and have been followed, relied upon
and upheld by the Court time to time and is now settled law.
67. In view of the above findings and in particular considering
that a prima facie case has been made out by the Plaintiff for
grant of interim reliefs as well as balance of convenience and
irreparable loss, harm and injury which will be caused to the
Plaintiff if the injunction is not granted as against the
Defendant's own case of prejudice caused to it, it is apparent
that the balance of convenience weighs in favour of the Plaintiff.
Further, the Defendant has other products apart from the
impugned product and the contention of the Defendant that its
business will shut down if an injunction is granted, cannot be
accepted.
68. Accordingly, the following order is passed :
i) Interim Application (L) No.15502 of 2021 is made
absolute in terms of prayer clause 'a' to 'd', which reads as
under :
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
a. 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 through or
under them or acting on their behalf or under their
instructions be restrained by a perpetual order and
injunction of this Hon'ble Court 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 Product (including its features or
colour schemes) ;
b. 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 through or
under them or acting on their behalf or under their
instructions be restrained by an order and injunction of
this Hon'ble Court from infringing in any manner the M-
SEAL Registered Marks of the Plaintiff bearing nos.
282168, 916539, 916538, 916540, 961689, 1347394,
982544, 982543, 1347392, and 1347391 and from using
in relation to Impugned Products or any other goods for
which the M-SEAL Registered Marks are registered or any
goods similar thereto, the impugned mark R-SEAL, or any
other mark or label which is identical with or similar to
the M-SEAL Registered Marks of the Plaintiff (including
the mark M-SEAL per se or ) and from manufacturing,
selling, offering for sale, distributing, advertising or
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
otherwise dealing with the Impugned Products or any
other goods bearing the impugned mark R-SEAL or any
label or mark identical or deceptively similar the M-SEAL
Registered Marks or any features thereof ;
c. 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 through or
under them or acting on their behalf or under their
instructions be restrained by an order and injunction of
this Hon'ble Court 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 (including those depicted
at Exhibits H to the Plaint) or any bottles, cartons,
packaging material or advertising material, literature or
any other substance and from manufacturing, selling,
offering for sale, distributing, advertising or otherwise
dealing with any Impugned Products or other similar
products upon or in relation to which any labels or works
infringing the said artistic works have been reproduced or
substantially reproduced ;
d. 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 through or
under them or acting on their behalf or under their
instructions be restrained by an order and injunction of
this Hon'ble Court from committing the tort of passing off
and from manufacturing, marketing, selling, advertising,
distributing, offering to sell or otherwise dealing in any
manner in the Impugned Products or any similar goods or
1-IA (L) 15502 of 2021 in Comm. IP. Su. 147 of 2022.doc
any other goods bearing the impugned marks 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 Product (including its features or
colour schemes);
ii) The interim Application is accordingly disposed of.
iii) There is no order as to costs.
[R.I. CHAGLA, J.]
