Trademark has been defined as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colours. Once a trademark gets registered and validated, no person other than the owner of proprietary rights of the trademark has the exclusive authority to use the trademark in relation and vice versa. However, the exclusive right to the use of the trademark shall be subject to certain conditions and limitations.
As per section 29 of the Trademarks Act, 1999 the infringement of trademarks means use of a mark, by an unauthorized or an authorized person or a person who is not the registered proprietor, which is identical or deceptively similar to the trademark in relation to the goods or services in respect of which the trademark is registered.
In the recent case of Pidilite Industries Limited v. Fixo Industries where defendants were selling product under the mark which was deceptively similar to applicant’s mark, not only in the placement of the words used in the mark, but also in the design of the package in which the adhesive is sold, which is a colorable imitation or substantial reproduction of plaintiff’s original package,
The court barred defendants from manufacturing, marketing, selling, advertising, offering to sell or dealing in the disputed goods bearing the mark FIXO KWIK that is identical or similar to the FEVI KWIK trademarks. Plaintiff’s counsel submitted that Plaintiff is a world-renowned business entity in adhesives and sealants construction and paint chemicals, automotive chemicals etc., and that this request is concerned about the product “FEVI KWIK”. It is stated that the trademark “FEVI KWIK” was designed and adopted in 1987 by the plaintiff and has been used continuously since 1991.
The Court noted that a simple reading of the two marks would show that the mark allegedly used by the defendants is on its face deceptively similar to the plaintiff’s registered mark. There is enough evidence in the record to show that, prima facie, the mark allegedly used by the defendants would tend to confuse a buyer. The Court further noted that the general impression created by the product allegedly put on the market by the defendants has the effect of confusing the consumers and it can be said that on the face of it, the defendants appear to be committing the act of deception. The Court noted that the use of the word “KWIK” and the phrase “ONE DROP INSTANT ADHESIVE” as well as the image of a globe creates deception and it is found that there is a risk that the consumer is confused when defendants’ product is placed before him. The Court therefore concluded that the plaintiff would continue to suffer irreparable loss if the injunction was not granted and, therefore, the balance of convenience is clearly in favor of the plaintiff.
It is advisable to ensure if your brand name is falling under deceptively similar to any other existing brand in your business category or not to avoid any legal implication and business interruptions.
- Section 2(1)(zb), Trademarks Act, 1999.
- Section 28, Trademarks Act, 1999.
- Section 29, Trademarks Act, 1999.
- Pidilite Industries Limited v. Fixo Industries, Commercial IP Suit No. 6245 of 2022, decided on 10-10-2022.