Pidilite Industries Ltd. v. Jubilant Agri & Consumer Products Ltd.
2014 (57) PTC 617 (Bom)
Plaintiff was the registered proprietor of the trademark ‘FEVICOL MARINE’ and various other marks using the words ‘FEVICOL MARINE’.
Defendant was using the mark ‘JIVANJOR MARINE’ for identical products. The Plaintiff filed a suit against the Defendant for infringement of trade mark and passing off.
• Plaintiff adopted the mark MARINE in the year 2003 and is using the same since then.
• Despite the house mark, ‘FEVICOL’, the product of the Plaintiff is demanded in the name of ‘MARINE’.
• ‘MARINE’ is an adhesive used in relation to wet and/or humid conditions.
• Orders received by the Plaintiff and invoices issued by the Plaintiff refer to ‘MARINE’ and not ‘FEVICOL MARINE’.
• The Defendant has also copied the pictorial depiction of a plank of wood dipping into water with water being splashed as used by the Plaintiff.
• When the Defendant has by itself applied for a mark comprising the word ‘MARINE’, the Defendant cannot claim that the Plaintiff’s mark is descriptive, generic or common to trade.
• The word ‘MARINE’ is descriptive and not inherently distinctive.
• There are several products available in the market containing the word ‘MARINE’.
• Rule of estoppel does not apply to the present case because the Defendant had applied for a label mark registration for the entire get up for packaging including the descriptive words ‘MARINE PLUS’.
• Plaintiff cannot claim rights in the word ‘MARINE’ in light of Section 17 of the Trade Marks Act, 1999.
• The essential features of the rival marks are ‘FEVICOL’ and ‘JIVANJOR’, which are the house marks of the parties and the house marks are the deciding factors to test confusion.
• The word ‘MARINE’ forms a very prominent part of the registered trade mark of the Plaintiff.
• Defendant has itself applied for registration of a mark described by it as the ‘MARINE PLUS’ (Label) comprising of the words ‘MARINE PLUS’ as its leading and essential feature and is therefore stopped from contending that the word ‘MARINE’ is descriptive or has become publici juris or ‘common to trade’.
• The word ‘MARINE’ means ‘of or relating to the sea’ and therefore nowhere describes the Plaintiff’s product. If the Plaintiff was using the mark ‘MARINE’ in a descriptive sense, there was no need to use the words ‘Waterproof Adhesive’ to add to the description.
• The Defendant has not only copied the Plaintiff’s mark ‘MARINE’ but even the artistic work of wooden plank being dipped into water.
• Had the Defendant not been using ‘MARINE’ as a trade mark it would have never applied for registration of the label mark comprising ‘MARINE’.
• The argument of the Defendant that the law of estoppel will not operate against it as it has not applied for the word mark but for a label mark comprising the words ‘MARINE PLUS’ cannot be acceded to as the applicability of principle and/or rule of estoppel is not restricted to cases where the mark objected to and mark applied for are identical, but covers cases where there is identity of the prominent and/or essential features.
• Keeping regard to Section 17 of the Act, the protection and/or exclusivity will be conferred on these features and not on insignificant trivia. If the Defendant’s arguments are accepted, the consequences will be startling. Composite marks will become useless. The same will be infringed with impunity by the simple expedient of using a trademark which has, as its essential or prominent feature(s), the essential and prominent feature of the registered mark with the addition of other matter. The mandate of Section 17(1) will be totally frustrated.
• Nothing in Section 17(2)(b) of the Act bars the Plaintiff’s entitlement to the relief as claimed. The Defendant’s claim in this behalf is premised on the assumption that the word ‘MARINE’ is ‘ common to the trade’ and/or ‘of a non-distinctive character’. For this plea to succeed, the Defendant must establish that the word ‘MARINE’ is either ‘common to the trade’ or ‘of a non-distinctive character’. The onus to do so is entirely on the Defendant who has failed to discharge the same.
• The contention of the Defendant that House marks are to be seen is not tenable as it is evident that the product identification mark used by the Defendant is ‘Marine PLUS’ and that the same is being used as a trademark. The consumers can never identify the product only by the house mark and it is inevitable that the products are referred to and called out only by their product identification marks. It is the settled position that the use of a mark as a sub-brand also amounts to infringement and an injunction ought to follow. The mark ‘MARINE’ by itself has gained tremendous reputation and goodwill and further distinctiveness and secondary meaning which is associated by the consumers, trade and public at large with the Plaintiff alone.
• The invoices produced by the Defendant themselves show that the products of the Defendant are also referred to as ‘Marine Plus Cop’, ‘JJ Marine Plus, ‘JJ Marine PLUS CLP, ‘J Marine Plus Cop’, i.e. ‘Marine Plus’ being the leading and essential feature and not ‘Jivanjor’. Furthermore, the fact that the Defendant refers to its ‘mark’ as ‘Jivanjor Marine PLUS ‘ itself is an admission on the part of the Defendant that ‘Marine PLUS’ is being used as a trademark/part of its trademark.
The Defendant was restrained from using the mark ‘MARINE’ as well as a deceptively similar label as that of the Plaintiff.