Delhi High Court
Asian Paints Ltd. vs M/S Chandra Paints & Brush ... on 21 August, 2009
Author: S.Ravindra Bhat
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Pronounced on : 21.08.2009
+ I.A. No. 8463/2008 and 11439/2008 in CS (OS) No. 1365/2008
ASIAN PAINTS LTD. ..... Plaintiff
Through: Ms. Pratibha M. Singh and Ms. Archana Sachdeva,
Advocates
versus
M/s Chandra Paints & Brush Industry & Anr. ..... Defendants
Through: Mr. Rajinder Aggarwal, Advocate
CORAM:
HON'BLE MR. JUSTICE S. RAVINDRA BHAT
1. Whether the Reporters of local papers Yes
may be allowed to see the judgment?
2. To be referred to Reporter or not? Yes
3. Whether the judgment should be Yes
reported in the Digest?
S.RAVINDRA BHAT, J.
*
1. This order will dispose I.A. No. 8463/2008 (filed by the plaintiff under Order
XXXIX Rules 1 and 2) and I.A. No. 11439/2008 (filed by the first defendant under
Order XXXIX Rule 4) in CS (OS) No. 1365/2008.
2. The brief facts necessary for deciding these applications are that the plaintiff,
Asian Plaints Ltd. filed a suit for permanent injunction restraining the defendants
from infringing the plaintiff's registered trade mark/logo "ASIAN PAINTS
APCOLITE PREMIUM GLOSS ENAMEL" and the copyright in the artwork in the
said mark/logo. It is alleged that the defendants have come out with products under
I.A. Nos. 8463/2008 & 11439/2008 Page 1
the marks "GREAT ASIAN PREMIUM GLOSSY ENAMEL", "GREAT ASIAN HI-
GLOSS SYNTHETIC ENAMEL" and "SUPER ASIAN PREMIUM SYNTHETIC
ENAMEL" which are deceptively similar, in terms of the trade mark/logo, the trade
mark and the artwork, to the plaintiff's well known product.
3. The plaintiff submits that it is engaged in the business, inter alia, of
manufacturing and marketing paints, varnishes, thinners, stainers, distempers,
synthetic enamel and other like goods for decorative as well as industrial use for
about five decades under its prominent and well known mark as well as trade name
"ASIAN PAINTS"; the mark has been in continuous use since the year 1952 till date
and is exclusively identified with the plaintiff as being distinctive plaintiff's goods
and is also a well-known mark under section 2(1)(zg) of the Trade Marks Act, 1999;
thus, the plaintiff claims to have acquired common law rights therein. It is claimed
that the plaintiff's group companies operate in 20 countries across the world and have
manufacturing facilities in each of them. The group operates in five regions across the
world viz. South Asia, South East Asia, South Pacific, Middle East and Caribbean
Region. As such the plaintiff enjoys extensive international presence.
4. The claimed expenditure on advertisement and gross sales of the plaintiff's
product for the last few years is stated as follows:
Year Gross Sales Advertisemen
(Rs. in Lacs) t
(Rs. in Lacs)
2003 - 207985.00 6824.20
2004-2005 223153.20 6991.70
2005-2006 265521.90 9097.30
2007-2008 388920.17 16484.78
5. It is stated that the plaintiff company has, since its inception in the year 1945,
coined and adopted and extensively used the trade mark/name ASIAN PAINTS. By
I.A. Nos. 8463/2008 & 11439/2008 Page 2
virtue of this, the said trade mark/name has acquired secondary meaning and is
instantly associated with the plaintiff. The plaintiff claims to have registered its mark
"ASIAN PAINTS" (label) under Class 2 on 17.02.2000. Plaintiff enjoys registration
for various other marks under Class 2. Plaintiff also has copyright registrations in its
favour for the artistic works involved in the marks ASIAN PAINTS (A-51166/91)
and the device of GATTU (A-51167/91). Apart from domestic registrations the
plaintiff also claims to have registrations in Sri Lanka, Bangladesh, Bhutan, Kuwait,
Qatar, etc.
6. The first defendant is a proprietary concern involved in the manufacture of
paints by the names "GREAT ASIAN" and "SUPER ASIAN" and the same are being
marketed under the name "Citizen Paints Industries", the second defendant. Plaintiff
claims knowledge that around January, 2007 the defendants were manufacturing paint
cans under the marks "GREAT ASIAN GLOSSY SYNTHETIC ENAMEL",
"GREAT ASIAN HI-GLOSS SYNTHETIC ENAMEL" and "SUPER ASIAN
PREMIUM SYNTHETIC ENAMEL" which are deceptively similar to plaintiff's
"ASIAN PAINTS APCOLITE PREMIUM GLOSS ENAMEL" for which the
plaintiff has registration under Class 2 w.e.f. 02.12.2002.
7. The plaintiff concedes that the first defendant has registration for the mark
"GREAT ASIAN" under Class 2 w.e.f. 13.03.2000 but emphasises that being a prior
user, adopter and also registered proprietor of the mark/logos ASIAN and ASIAN
PAINTS (since the said mark was in existence since 1950s in India and 1978
globally), the exclusive rights to exploit the said marks vest with the it (the plaintiffs).
Thus, the conduct of defendants constitutes infringement of rights in the registered
trade marks and passing off, infringement of copyright; and dilution. Upon acquiring
knowledge of the defendants infringing activities, the plaintiff sent a notice dated
I.A. Nos. 8463/2008 & 11439/2008 Page 3
12.01.2007 in response to which the defendants wrote letter dated 29.01.2007
showing their willingness to change the designs on the tins and seeking some time to
dispose of products worth Rs. 2,01,500/-, which they were already in possession of at
that time. The plaintiff allowed 15 days time to the defendants to dispose of those
goods and 15 days to give an undertaking by their letter dated 28.02.2007. A "cease
and desist" notice dated 28.03.2008 was served upon the defendants in response to
which by their letter dated 04.04.2008 they stated that the design and artwork on their
products are completely different from the plaintiff's. Since all its efforts went in vain
the plaintiff has approached this court for an appropriate remedy.
8. The plaintiff also points out an instance of previous litigation between the
same parties when in the year 1995 the same plaintiff had filed a suit against the said
defendant, in that case the subject matter of the issue was the word and logo of
GATTU (the boy device) the suit was decreed as settled between the parties when the
defendant undertook never to use the logo or the word GATTU in any of their
products.
9. By order dated 23.07.2008 of this court ad interim ex-parte injunction was
granted against the defendants. The first defendant has filed an application under
Order XXXIX Rule 4 for vacation of the said order on the premise that that the
plaintiff was fully aware that the defendant had applied for registration of his trade
mark "GREAT ASIAN" on 25.10.2003 itself when the said trade mark was published
in the trade mark journal MEGA4, as on the very same page a product of the plaintiff
by the name of "APCOLITE" also appeared. The first defendant's mark was granted
registration on 28.03.2005 w.e.f. 13.03.2000; the plaintiff never objected to the
application of the first defendant even though it had knowledge of the same. As the
I.A. Nos. 8463/2008 & 11439/2008 Page 4
plaintiff did not challenge the grant of registration at the relevant time, it cannot raise
any objections now.
10. The first defendant states that there is no resemblance between the two marks
and as such, the plaintiff can neither establish infringement nor passing off. It is also
stated that in an attempt to circumvent the procedures as prescribed under the 1999
Act, the plaintiff has filed the present suit rather than applying for cancellation of the
first defendant's registered trade mark. Relying on section 29 of the Act (Sic Section
28(3)). That provision reads as follows "where two or more persons are registered
proprietors of trade marks, which are identical with or nearly resemble each other,
the exclusive right to the use of any of those trade marks shall not (except so far as
their respective rights are subject to any conditions or limitations entered on the
register) be deemed to have been acquired by any one of those persons as against any
other of those persons merely by registration of the trade marks but each of those
persons has otherwise the same rights as against other persons (not being registered
users using by way of permitted use) as he would have if he were the sole registered
proprietor" it is submitted that the plaintiff is not entitled to an ex-parte ad interim
injunction.
11. In its reply to the plaintiff's temporary injunction application, the defendant
denies that it is involved in manufacturing any product under the mark "SUPER
ASIAN" or is in any way related to any such mark. It is also denied that the first
defendant was in any manner concerned with the second defendant i.e. Citizen Paint
Industry. It is stated that on receiving the first legal notice from the plaintiff the first
defendant merely agreed to make suitable changes in the flower design appearing on
its packing of the paint, as a matter of courtesy which was misinterpreted by the
plaintiff.
I.A. Nos. 8463/2008 & 11439/2008 Page 5
12. The plaintiff here states that the trade mark registration of the first defendant
confines itself to the word "GREAT ASIAN" and that such registration cannot be
permitted as defence to dishonest adoption especially when the trade mark adopted by
the defendant is not limited to the mark only but also to the colour, packaging, set-up,
artistic layout etc. of the entire label and paint-tin. The plaintiff being the prior
adopter, user, proprietor of the mark, label, get-up and each and every element of its
product, is entitled to protection.
13. A trade mark registration consisting of a mark which is identical/deceptively
similar to an earlier mark whether registered or not is not a defence and an injunction
can be granted by the court if certain basic tests are satisfied. The plaintiff placed
reliance on a decision, N.R. Dongre v. Whirlpool Corporation, 1996 PTC (16) 476;
where it was observed that:
"(41) The concept and principle on which passing off action is grounded is
that a man is not to sell his own goods under the pretence that they are the
goods of another man. A trader needs protection of his right of prior user of a
trade mark as the benefit of the name and reputation earned by him cannot be
taken advantage of by another trader by copying the mark and getting it
registered before he could get the same registered in his favor. We see no
reason why a registered owner of a trade mark should be allowed to deceive
purchasers into the belief that they are getting the goods of another while they
would be buying the goods of the former which they never intended to do. In
an action for passing off it should not matter whether misrepresentation or
deception has proceeded from a registered or an unregistered user of a trade
mark. He cannot represent his own goods as the goods of some body else.
42. In Delco Engineering Works vs. General Motors Corporation ILR 1974
Punjab & Haryana 502 it has been held that an action for passing off is
founded on the desirability of preventing commercial immorality or
dishonesty by a trader who by using a particular mark, whether registered or
unregistered wants to falsely represent that his goods are the goods of some
one else so that he can take undue and unfair advantage of the reputation of
the other person in the mark. Therefore, it cannot be stated that under section
28 of the Act the statutory right of use acquired by a trader by registration of
a mark is a defence to proceedings for passing off initiated by a prior user of
the mark. In our opinion the learned Single Judge correctly analysed the
decision of the Division Bench in Century Traders vs. Roshan Lal Duggar and
we record our respectful approval thereto by holding that there is no statutory
I.A. Nos. 8463/2008 & 11439/2008 Page 6
bar to a prior user of a trade mark for bringing an action for „passing off‟
against a registered proprietor thereof. It is also wholly immaterial in an
action for passing off that the opposition of the plaintiff to the registration of
the mark in favor of the defendant was not accepted. In an action for passing
off, it is no defense that the defendant's trade mark is registered and that of
the prior user is not so registered."
In the above case the court had to deal with interpretation of Section 28 read with
Section 30 of the Trade and Merchandise Marks Act, 1958 which was repealed and
replaced by the Trade Marks Act, 1999. Section 28 of the earlier Act corresponds
with the section 28 of the 1999 Act.
14. The court has considered the pleadings of the parties. The plaintiff's
reputation as a leading brand manufacturing paints and varnishes and other like
products is unquestioned; it appears to have heavily spent money on popularizing its
product. The plaintiff has supplied photographs of the its product i.e. "ASIAN
PAINTS APCOLITE PREMIUNM GLOSS ENAMEL" and the defendant's
infringing products i.e. "GREAT ASIAN GLOSSY SYNTHETIC ENAMEL",
"GREAT ASIAN HI-GLOSS SYNTHETIC ENAMEL" and "SUPER ASIAN
PREMIUM SYNTHETIC ENAMEL" in its interim injunction application. The
defendant has nowhere disputed the pictures supplied by the plaintiff as not being of
its products, though it stated that it has never manufactured any product under the
name/mark "SUPER ASIAN".
15. The plaintiff sues for infringement and passing off in respect of trade mark as
a whole. No doubt, the first defendant has set up a case for registration, of its mark, to
resist the application. Yet, the Court cannot be unmindful of the fact that both the
marks are to be seen as a whole, Cadila Healthcare Ltd. v. Cadila Pharmaceuticals
Ltd., 2001 (5) SCC 73, is an authority for the proposition that the Court should not
place the two marks side by side, to contrast the differences. The correct way to
I.A. Nos. 8463/2008 & 11439/2008 Page 7
consider if the impugned mark infringes, is to gauge its overall effect on the mind of
an ordinary consumer of average intelligence.
16. The products of both parties are available in cylindrical shaped tin containers
in colour combination of red and yellow used in more or less the same proportion.
The design of flower is common to the products and appears in more or less similar
fashion in terms of shape, look and placement on the container. Even the font size and
style used on the products is similar. There is an undoubted resemblance between the
said products. Although the first defendant claims to be a bona fide user and
registered trade mark owner for "GREAT ASIAN" yet that cannot stand in defence at
this stage as the plaintiff's stand of being a prior adopter and user is uncontroverted.
Further, the defendant has not clarified as to how is its adoption and usage of the
expression "ASIAN" in relation to the paints is bona fide; there has to be something
on record to show that the defendant's adoption of the said expression was veritable.
Merely stating that the use was bona fide does not make it a prima facie case for
permitting such use, at this stage.
17. In view of the above discussion, there is no reason for this court to vacate the
order dated 23.07.2008 in terms of the first defendant's interlocutory application.
Accordingly I.A. No. 11439/2008 is dismissed but without any order as to costs. For
the same reasons, I.A. 8463/2003 is allowed, and the subsisting interim order shall
bind the parties till disposal of the suit.
(S. RAVINDRA BHAT)
JUDGE
AUGUST 21, 2009
I.A. Nos. 8463/2008 & 11439/2008 Page 8
