[Cites 15, Cited by 0]
Bombay High Court
Asian Paints Limited vs Tarun Paints Private Limited on 13 March, 2026
Digitally signed
by SHAGUFTA
2026:BHC-OS:6582
SHAGUFTA QUTBUDDIN
PATHAN
QUTBUDDIN
Date:
PATHAN 2026.03.13 IA-L-28196-2024.doc
19:57:13
+0530
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (LODGING) NO.28196 OF 2024
IN
COMMERCIAL IP SUIT (LODGING) NO.27857 OF 2024
Asian Paints Limited, registered under
Indian Companies Act 1913 and
existing under the provisions of
Companies Act, 2013, having its
registered office at 6-A, Shantinagar,
Santacruz (E), Mumbai-40005300 ...Applicant
IN THE MATTER BETWEEN :
Asian Paints Limited, registered under
Indian Companies Act 1913 and
existing under the provisions of
Companies Act, 2013, having its
registered office at 6-A, Shantinagar,
Santacruz (E), Mumbai-40005300 ...Plaintiff
Versus
1. Tarun Paints Private Limited,
a company incorporated under the
Companies Act, 1956, having its
manufacturing unit at F 527-528
Phase 2, M. G. Road, UPSIDC, Masoori,
Ghaziabad, Uttar Pradesh-201302.
2. Tarun Brush Industries,
whose constitution is unknown,
having its address at SI-54,
Shastri Nagar Ghaziabad, ...Defendants
Uttar Pradesh - 201002.
------------
Mr. Vinod Bhagat a/w Ms. Twisha Singh i/b Mr. Vinod A. Bhagat for the
Applicant/Plaintiff
SQ Pathan 1/19
::: Uploaded on - 13/03/2026 ::: Downloaded on - 13/03/2026 22:44:35 :::
IA-L-28196-2024.doc
Mr. Atmaram Patade a/w Mr. Pranav Manjrekar, Mr. Bhagawan Kasture,
Ms. Shraddha Patil, Mr. Atharva Kudtarkar and Mr. Rahul R. Dubey i/b Mr.
Atmaram Patade for the Defendants
------------
CORAM : SHARMILA U. DESHMUKH, J.
RESERVED ON : FEBRUARY 13, 2026
PRONOUNCED ON : MARCH 13, 2026
ORDER :
1. This is an action for infringement of trade mark, copyright and
passing off. By way of the interim relief, the Plaintiff seeks to restrain
the Defendants from using the impugned label marks RED OXIDE
metal primer, WOOD primer, APCA GOLD enamel, ASIA TUFF cement
paint, ASIA TUFF wall putty, APCA GOLD primer and APCA GOLD
enamel or any other deceptively similar mark. Vide order dated 13 th
September 2024, this Court had granted ad-interim relief in terms of
prayer clauses (a), (b) and (d) of the Plaint. Subsequently, by order
dated 21st August 2025, Leave Petition came to be allowed. By order
of 5th February 2026, the statement of learned counsel for the
Defendants was recorded that the Defendants are willing to revise the
(a) word and label mark of APCA GOLD, (b) label mark and artwork of
WOOD PRIMER, and (c) label mark and artwork of RED OXIDE METAL
PRIMER. By the present order, the submission is accepted as
undertaking given to this Court. In view of the said submission, the
IA-L-28196-2024.doc
dispute in the present case is now confined to the infringement of the
trademark "ASIAN PAINT" by use of the word mark "ASIA TUFF".
2. The Plaintiffs' case is that it is using the word "ASIAN PAINTS" as
a trademark continuously since the year 1952 and by virtue of the long
association of the mark with the Plaintiff's goods, the trademark has
lost its primary significance and acquired a secondary meaning. The
Plaintiff is the registered proprietor of the trademark ASIAN PAINTS
and of the formative marks wherein the word ASIAN occupies the
leading and essential feature. The registration certificates, statement
of year-wise total sales turnover, advertisement expenses, specimen
of sales invoices, and promotional material are placed on record. The
Plaintiff's mark is declared as well known trade mark by the registrar
of trade marks. It is pleaded that the Plaintiff became aware of the
use of the impugned mark ASIA TUFF cement paint, ASIA TUFF wall
putty, which is deceptively similar to the Plaintiff's registered
trademark in or around the first week of August 2024. A search in the
trademark registry revealed that the Defendant No 1 had filed an
application on 2nd February, 2018 for registration of the impugned
mark ASIA TUFF in Class 2 claiming user since 8 th April, 2007 which
registration has been refused under Section 11 of the Trade Marks Act,
citing the Plaintiff's trademark ASIAN PAINTS. On 31 st July 2002, the
IA-L-28196-2024.doc
Defendant No.2 applied for registration of the impugned word mark
ASIA TUFF claiming user since 31st February, 2002. The Plaintiff has
filed the necessary notice of opposition on 31 st July 2002 and no
counter statement appears to have been filed implying abandonment
of the application.
3. The affidavit-in-reply raises an objection to jurisdiction on the
ground that the Plaintiff's subordinate office is located in Uttar
Pradesh where the cause of action arose. The Defendant No. 2 which
was constituted on 10th January, 1992 ceased its operations after
incorporation of Defendant No 1 on 8 th January 2007 and since 1992
the Defendants are in paint industry operating from Ghaziabad, Uttar
Pradesh. The flow chart produced at Paragraph 12.8 shows that the
trade mark application for registration of trade mark ASIA TUFF filed
on 31st July, 2002 by Defendant No 2 and on 2 nd February, 2018 by
Defendant No 1 have been abandoned. The Defendants are copyright
owners in the original artistic work and have gathered enormous
goodwill and reputation in the labels/artistic work of its products
marketed under the mark ASIA TUFF. The Defendants have adopted
the impugned trade mark in the year 2002 and are prior adopters. The
impugned mark and the copyright is distinct and unique and without
prejudice, the Defendants are willing to revise the label / artistic work
IA-L-28196-2024.doc
of the products sold under the mark ASIA TUFF in order to avoid
unwanted litigation. The action suffers from delay, laches and
acquiescence as the Plaintiff was aware about the Defendant No.2 as
on 2nd March 2005 and had complete knowledge about the
Defendants' products. It is contended that the Defendants' presence
is active in the market since 2002 followed by the trademark
registration application in the year 2002 and the present Suit has been
filed in the year 2024. It is pleaded that some of the
distributors/whole-sellers/retailers have stated on affidavit that the
Plaintiff's and the Defendants' products have been prominently
displayed in their business premises and the Plaintiff's representative
has been aware of the Defendants' products since long.
4. Mr. Bhagat, learned counsel appearing for the Plaintiff submits
that the contest is between ASIAN PAINTS vs. ASIA TUFF. He submits
that in the impugned mark, the word ASIA is given prominence and
the word TUFF is written below the word ASIA. He submits that the
word TUFF is descriptive and the registrar of trademark has held that
it should be disclaimed in view of the registration of the Plaintiff's
mark of ASIAN and ASIAN PAINTS. He submits that the trade mark
ASIAN PAINTS has been granted registration without any disclaimer.
He points out the invoice showing the use of the device mark of
IA-L-28196-2024.doc
ASIAN PAINTS since the year 1968 and the product of ASIAN
REDOXIDE POWDER being sold since the year 1970. He submits that
the mark ASIAN PAINTS has been declared as a well-known mark in
the list published on 24th February 2020. He submits that insofar as
the Defendants are concerned, few invoices are produced of the year
2017 which does not demonstrate extensive and continuous use. He
submits that the examination report in respect of the application filed
by the Defendant No.1 states that the word TUFF should be disclaimed
and that the objection is on the ground that the name of the continent
is not a distinctive mark. He submits that the application of the
Defendant No.2 for the word mark ASIA TUFF has been abandoned.
He submits that there is no explanation given for adoption of the mark
ASIA TUFF which is claimed to have been adopted since the year 2002
and the invoices which have been annexed shows the use of the mark
ASIA TUFF is of the year 2017. He submits that no stand alone turnover
statement is produced and only composite sales turnover is produced
on record. He submits that the leading feature of the Plaintiff's
registered mark is ASIAN and the Defendants' impugned mark ASIA is
deceptively similar to the Plaintiff's registered mark. In support he
relies upon various interim orders passed by this Court and Delhi High
Court and the following decisions :
IA-L-28196-2024.doc
(i) Manugraph India Ltd. vs. Simarq Technologies Pvt. Ltd.
& Ors.1
(ii) Asian Paints (India) Ltd. vs. Satish Kumar & Ors.2
5. Mr. Patade, Learned counsel appearing for the Defendants
would submit that there is no registration of the word mark ASIAN
PAINTS and the marks have to be compared as a whole and when so
compared, the marks are dissimilar. He submits that the plaint
proceeds on the ground of infringement of the word ASIAN PAINTS /
ASIAN, whereas, there is no registration obtained for the stand alone
mark of ASIAN. He would point out that the Defendants' sales turn
over produced on record is in respect of all trademarks including ASIA
TUFF. He submits that the pleading in Paragraph 12.10 of reply would
indicate the use of the mark at least since the year 2008. He submits
that the Plaintiff had knowledge of the Defendants since the
Defendants are carrying on business since about 22 years and no
action has been taken. He submits that the Plaintiff mark is declared
as a well-known mark in the year 2020 and is not in respect of the
word ASIAN. He would further point out the affidavit of the common
distributor stating that it was distributing the products of the Plaintiff
and Defendants and are displayed in his business premises next to
1 2016 SCC OnLine Bom 5334 : (2016) 4 AIR Bom R. 712
2 CS (OS) 1319/2005 dated 17.07.2013 (Delhi High Court)
IA-L-28196-2024.doc
each other for over 10 years and there is no complaint of any
confusion. He further points out that in the prayer clause, the Plaintiff
seeks action against use of the trademark ASIAN without any
registration secured by the Plaintiff in respect of ASIAN. He submits
that even the ex-parte order speaks of ASIAN / ASIAN PAINTS, without
noticing that there was no registration for the word ASIAN. In
support, he relies upon the following decision :
(i) Pernod Ricard India Pvt. Ltd. & Ors. vs. Karanveer Singh
Chhabra3
6. Rival contentions now fall for determination:
7. In view of the statement recorded on 5th February 2026, the
contest has narrowed down between the Plaintiff's registered
trademark ASIAN PAINTS vs. ASIA TUFF-the Defendants' mark. The
relief sought is against infringement of the registered trade mark and
against passing off and no relief of copyright infringement is sought in
respect of the impugned mark AISA TUFF. This Court is therefore
called upon to assess the deceptive similarity between the marks
ASIAN PAINTS vs ASIA TUFF.
8. The rival marks are reproduced hereinbelow for the purpose of
comparison:
3 MANU/SC/1095/2025
IA-L-28196-2024.doc
Plaintiff's Products Defendant's products
9. In Pernod Ricard India Pvt. Ltd. & Ors. vs. Karanveer Singh
Chhabra (supra), the Hon'ble Apex Court noted that the anti-
dissection rule and the dominant feature test, are not mutually
exclusive and identifying a dominant feature can serve as an analytical
aid in the holistic comparison of the marks. In certain cases the
infringing component may overshadow the remainder of the mark to
such an extent that confusion or deception becomes virtually
inevitable. While assessing deceptive similarity, due weight must be
IA-L-28196-2024.doc
given to the dominant element, without disregarding the composite
nature of the mark. The Hon'ble Apex Court held that the emphasis on
a dominant feature alone will not be determinative and the ultimate
test remains whether the mark viewed as a whole, creates a deceptive
similarity likely to mislead an average consumer of ordinary
intelligence and imperfect recollection.
10. In M/s. Hiralal Prabhudas V/s. M/s. Ganesh Trading Co. 4, this
Court has aptly summarized the principles for deciding the question of
deceptive similarities in paragraph 5 as follows :-
"5. What emerges from these authorities is (a) what is the main idea
or salient features, (b) marks are remembered by general
impressions or by some significant detail rather than by a
photographic recollection of the whole, (c) overall similarity is the
touchstone, (d) marks must be looked at from the view and first
impression of a person of average intelligence and imperfect
recollection, (e) overall structure, phonetic similarity and similarity of
idea are important and both visual and phonetic tests must be
applied, (f) the purchaser must not be put in a state of wonderment,
(g) marks must be compared as a whole microscopic examination
being impermissible, (h) the broad and salient features must be
considered for which the marks must not be placed side by side to
find out differences in design and (i) overall similarity is sufficient. In
addition, indisputably must also be taken into consideration the
nature of the commodity, the class of purchasers, the mode of
purchase and other surrounding circumstances."
11. Applying the well settled principles to the facts of the present
case, prima facie comparison of the rival marks will inevitably point out
that the dominant feature of the Plaintiff's mark is the word ASIAN
which overpowers the word PAINTS. The impugned mark of Asia Tuff
4 1983 SCC OnLine Bom 284 : AIR1984 Bom. 218
IA-L-28196-2024.doc
prominently displays the word ASIA with the word TUFF written below
the word ASIA. Insofar as, the word TUFF is concerned, the same is
descriptive, which has been prima facie held so by the Registrar, while
considering the Defendant No.2's registration application. The
products marketed under the rival marks are paints/wall putty etc, and
the relevant consumers would be contractors or labourers involved in
renovation, construction work etc. The test of average man with
imperfect recollection when applied, considering the relevant
consumer base, prima facie the consumers would ask for the Plaintiff's
product by referring to the name ASIAN which is the striking element
and will most probably be likely to be confused when confronted with
the Defendant's product bearing the mark ASIA TUFF. There is
deceptive visual and phonetic similarity between the two marks.
Keeping in mind the use and registration of the formative marks of
ASIAN PAINTS, there is strong likelihood of consumers being misled
into presuming that the Plaintiff has introduced another trademark by
using the word TUFF and would associate the Defendant's product
with that of the Plaintiff constituting infringement under Section 29(2)
of Trade Marks Act, by reason of likely association with the Plaintiff.
The Defendant No 1's registration of the word mark ASIA TUFF has
been refused registration by citing the Plaintiff's mark "ASIA PAINTS
WOOD TECH TERMISHIELD". The registrar of trade marks was of the
IA-L-28196-2024.doc
opinion of likelihood of confusion being created by reason of
registration of the impugned mark. The Defendants accepted the
position and abandoned its application. Upon considering the overall
impression created by ASIAN PAINTS, the prominence is given to the
word ASIAN, which is distinctive. Greater weightage must be given to
the dominant element. The Defendants mark ASIA TUFF gives
prominence to word ASIA, which is likely to be taken as ASIAN. There
is overall visual and phonetic similarity between the rival marks.
12. The Plaintiff is the registered proprietor the word mark and
device mark of ASIAN PAINTS, with the earliest registration of ASIAN
PAINTS word mark applied on 20th July, 1990 on proposed to be used
basis. At Exhibit A-2 , the list of registrations secured by the Plaintiff in
respect of ASIAN PAINTS and its formatives, which are about 40 in
number are set out. On the other hand, the Defendants are using the
unregistered mark ASIA TUFF. The application for registration of the
mark ASIA TUFF firstly by Defendant No 2 in the year 2002 and
thereafter by the Defendant No 1 in the year 2018 have been
abandoned. The Defendants have annexed the copy of the trade mark
application at Page 269 of the reply which shows that the application
was made on 31st July, 2002 for registration of the word mark ASIA
TUFF with user claim of 31 st January, 2002. The examination report
IA-L-28196-2024.doc
states that the disclaimer of the word "TUFF" should be agreed to and
that objection arises because the name of continent is not distinctive
mark. The application is thereafter stated to have been abandoned.
The examination report prima facie indicates that the word "TUFF" was
held to be descriptive and that the word "ASIA" was non distinctive.
The abandonment of the applications prima facie indicates acceptance
of the position that the Defendants mark is incapable of registration.
Section 9 and Section 11 of Trade Marks Act, which deals with absolute
and relative grounds of registration respectively places an embargo on
registration of a mark which is non-distinctive or is likely to cause
confusion. The objection of likelihood of confusion raised by the
Registrar by citing the mark "ASIA PAINTS WOOD TECH
TERMISHIELD"can be extended to the mark ASIAN PAINTS as what is
missing is one alphabet "N", which is terminating word and likely to be
slurred over.
13. One of the contentions of Mr. Patade is that the Plaintiff cannot
seek injunctive relief in respect of the word "ASIAN" as there is no
stand alone registration of the word. The said contention is premised
on Section 17 of the Trade Marks Act, which reads as under:
"17. Effect of registration of parts of a mark.- (1) When a trade
mark consists of several matters, its registration shall confer on
the proprietor exclusive right to the use of the trademark taken
as a whole.
IA-L-28196-2024.doc
(2) Notwithstanding anything contained in sub-section (1),
when a trade mark -
(a) contains any part -
(i) which is not the subject of a separate application by the
proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as
a trade mark; or
(b) contains any matter which is common to the trade or
is otherwise of a non-distinctive character;
the registration thereof shall not confer any exclusive right in
the matter forming only a part of the whole of the trade mark so
registered."
14. Considering the statutory provisions, the right conferred
on the registered proprietor is to the use of the trade mark taken as a
whole. The provisions of Section 17 was considered by the Calcutta
High Court in the case of Three-N-Products Private Limited vs Emami
Ltd.5, where it was held as under:
"35. The words 'the registration thereof shall not confer any
exclusive right" towards the end of Section 17(2) have to be
understood in the context. The import of such words is that the
registration of the composite mark will not ipso facto confer any
exclusive right as to the parts of the composite mark. But if the
owner can establish exclusivity aliunde, the owner can assert the
exclusivity. The registered owner is entitled to protection of its
goodwill in such prominent feature as in an action for passing off
unless the registered owner seeks to rely on Section 17(2)(b) of
the Act in respect of a distinctive matter not common to the
trade."
15. By seeking injunctive relief against the use of the word ASIAN,
the Plaintiff claims distinctiveness under Section 17(2)(b) of Trade
Marks Act, 1999. The Plaintiff's mark having been registered without
5 (2008) SCC OnLine Cal 589
IA-L-28196-2024.doc
any disclaimers prima facie satisfies the test of distinctiveness. The
word ASIAN is arbitrary and unconnected with the products in
question and it is not the case of the Defendants that the word is
common to the trade. Having prima facie established the test of
exclusivity, being the essential feature of the registered trade mark,
the Plaintiff is entitled to protection of the word ASIAN.
16. One of the defences raised by the Defendants is under Section
34 of the Trade Marks Act, 1999 of being prior user of the mark ASIA
TUFF since the year 2002. Firstly, the Plaintiff has secured registration
of its word mark ASIAN PAINTS on 20 th July, 1990 and has produced
specimen invoice issued on 8th July, 1968 showing the use of the
device mark of ASIAN PAINTS. Section 34 of Trade Marks Act, 1999
saves the vested right of the user of the mark which has been used
continuously from a date prior to the use of the registered trade mark
or the date of registration of the trade mark whichever is earlier. In
present facts, to avail the benefit of Section 34 of Trade Marks Act, it
was necessary to prima facie demonstrate user of the mark ASIA TUFF
prior to user shown on 8 th July, 1968 or atleast prior to the date of
registration of ASIAN PAINTS in the year 1990. There are in all four
invoices dated 11th July, 2017, 14th July, 2017, 22nd July, 2017 and 1st
October, 2017 produced with the reply affidavit reflecting the mark
IA-L-28196-2024.doc
ASIA TUFF. The only other document is the trade mark application by
the Defendant, which even if accepted as material to substantiate the
use by the Defendants, claims user of the mark since 31 st January,
2002 which user is subsequent to the registration of the Plaintiff's
trade mark of ASIAN PAINTS of the year 1990.
17. The other defences raised is about the knowledge, delay and
acquiescence, by relying on the affidavit of common distributor. It is
well settled that delay by itself, is no defence in an action for
infringement and for the purpose of showing acquiescence, it is
necessary to show some positive act on part of the Plaintiff, which is
missing in the present case. There is specific pleading in the plaint
that the Plaintiff had come across the goods bearing the mark ASIA
TUFF in August, 2024. The Defendants have not produced material on
record to demonstrate that the mark was used in respect of its
products prior to the year 2017. The invoices are sporadic and fails to
establish such extensive use so as to have visible presence in the
concerned segment to come to the knowledge of the Plaintiff. The
affidavit of one single distributor is inadequate to show the Plaintiff's
knowledge about existence of the Defendants
18. Even accepting, for the purpose of argument that the Plaintiff's
mark has been declared as a well-known mark in the year 2020, the
IA-L-28196-2024.doc
long-standing and extensive user of the mark ASIAN PAINTS by the
Plaintiff cannot be denied. The Defendants being late entrants in the
market, are prima facie presumed to be aware of the Plaintiff's
existence, especially when the Plaintiff is in the same industry. There
is no explanation tendered by Plaintiff for accepting the bonafide
adoption of the deceptively similar mark by the Defendants.
Considering that the Registrar had refused the registration of the
mark by citing the Plaintiff's conflicting mark way back in the year
2002, the Defendants ought to have been put to notice of the fact that
continuation of the use of the mark would be at the Defendants' own
peril.
19. The objection to jurisdiction is sufficiently answered by Section
134 (2) of the Trade Marks Act. There is no application filed under
Order VII, Rule 10 for return of plaint. The averments in the plaint
pertaining to jurisdiction prima facie satisfy the requirements of
Section 134(2) of Trade Marks Act. This Court, by order dated 21 st
August 2025, has already granted the Leave Petition and the action of
passing off was permitted to be combined with the action for
infringement of trade mark and copyright.
20. For the purpose of considering the action of passing off, it is
settled that an intent to deceive is not a necessary element but
IA-L-28196-2024.doc
requires proof of likelihood of confusion or deception and actual
deception or damage need not be proved. The classic trinity would
require proof of goodwill and reputation, misrepresentation and
likelihood of damages. In a case for passing off, the Defendants can
escape liability, if it can show that the added material is sufficient to
distinguish the goods of the Defendants from that of the Plaintiff. The
manner of packaging, the use of different colour scheme, the added
elements of vertical lines, additional words forming part of the
Defendant's trade dress would indicate that the products are not
designed so as to pass off as goods of the Plaintiff. Prima facie, it is not
possible to come to a finding of misrepresentation, intended or
unintended as there are sufficient points of distinction. The
Defendants cannot claim balance of convenience by reason of
existence since long as the Defendants in the year 2002 were refused
registration of their mark. Having proceeded with the use of the mark,
the Defendants have done so at its own peril.
21. In light of the above, prima facie case has been made out for
confirming the ad-interim relief which was granted by the order dated
13th September 2024, in respect of the impugned mark ASIA TUFF wall
putty and ASIA TUFF cement paint, in terms of prayer clause (a),
restraining the Defendants from manufacturing, marketing, or using,
IA-L-28196-2024.doc
in any manner whatsoever, in relation to its cement paint/wall putty,
paints or other like goods used in paint industry, the impugned mark
of ASIA TUFF cement paints and ASIA TUFF wall putty, or any other
mark identical with or similar to the Plaintiff's trade mark ASIAN,
ASIAN PAINTS so as to infringe upon the Plaintiff's registered
trademark of ASIAN PAINTS.
22. The Interim Application stands allowed in above terms.
[SHARMILA U. DESHMUKH, J.]
