Bombay High Court: The plaintiff sought an order of injunction restraining the defendant from infringing its “LW” and “LW+” registered trade marks and for which necessary relief had been sought viz. for injunction restraining infringement of trade mark, copyright, and passing off of the plaintiff’s registered trade marks by the impugned marks of the defendant viz. LW with or without the marks HYDROBUILD or HYDROTITE and/or Power. R.I. Chagla, J., opined that the defendant’s use of the impugned mark “LW” with “HYDROBUILD POWER” and/or “HYDROBUILD” incorporated therein, would prima facie amount to an infringement of the plaintiff’s registered trade mark “LW” as the impugned marks had encompassed the whole of the plaintiff’s “LW” mark
. Thus, the Court restrained the defendant from using the plaintiff’s marks “LW” and “LW+”.
Background
The plaintiff carried on business in the field of waterproofing chemicals, construction bonding chemicals/materials/additives products amongst other products including construction and paint chemicals, adhesives, sealants, automotive chemicals, art materials, industrial adhesives, industrial and textile resins and organic pigments and preparations since 1969. The mark ‘DR. FIXIT’ was adopted by the plaintiff in 2001 and was being used since then. The plaintiff stated that one of the oldest products within the DR. FIXIT range of products was sold under the marks “LW” and “LW+” and its use commenced around the year 1990. The plaintiff claimed to be the first to adopt and use the same as a trade mark and stated that the mark “LW” (word per se) was the leading and essential feature of all its registrations.
The plaintiff stated that in or about September 2015, it came across a trade mark application filed by the defendant for the mark “Hydrobuild LW POWER” in Class 1. The plaintiff stated that around December 2020, it came across the defendant’s products that was being manufactured and marketed bearing the mark LW (along with HYDROBUILD), which was identical/deceptively similar to the plaintiff’s LW/LW+ marks and which products were identical to the DR. FIXIT and LW/LW+ products of the plaintiff.
It was submitted that the products of the defendant also bear a label/trade dress which was a colourable imitation/substantial reproduction of the plaintiff’s LW+ Label and the artistic works therein including the distinctive blue and yellow colour scheme in an almost identical layout, the identical mark LW, and the overall trade dress, get up and packaging. The said label/trade dress used on the defendant’s products also bear the image of a man wearing a construction helmet which was, included in the overall context of things, contextually deceptively similar to the plaintiff’s LW/LW+ Marks and LW+ Label. The plaintiff stated that the defendant had also fraudulently obtained a registration for a variant of the impugned mark i.e., “HYDROBUILD LW” in Class 1.
Analysis, Law, and Decision
The Court noted that the defendant had a prior registration of “HYDROBUILD” and inspite of which the defendant made an application for registration of the mark “HYDROBUILD LW” and “HYDROBUILD LW POWER” without disclaiming “LW”. The said application of the defendant for registration of the impugned marks “HYDROBUILD LW” and “HYDROBUILD LW POWER” were made in 2014 and registration was obtained for a variant of the impugned mark i.e., in Class 1. The impugned mark had incorporated the plaintiff’s registered mark “LW”, which was registered by the plaintiff prior to the defendant’s registration under Classes 1 and 19. Thus, the Court stated that undoubtedly, the plaintiff was using “LW mark” much prior to use of “LW” with “HYDROBUILD” by the defendant.
The Court opined that the defendant’s use of the impugned mark “LW” with “HYDROBUILD POWER” and/or “HYDROBUILD” incorporated therein, would prima facie amount to an infringement of the plaintiff’s registered trade mark “LW” as the impugned marks had encompassed the whole of the plaintiff’s “LW” and the rival products being identical.
The Court stated that mere addition of prefix and/or suffix to the impugned mark was inconsequential, thus, it rejected the defendant’s contention that the use of the word “HYDROBUILD” before “LW” in the impugned marks was sufficient to distinguish the rival marks. The Court observed that the leading and essential feature of the defendant’s marks was “LW” and if the defendant’s contention was to be accepted, this would defeat the purpose of the , whereby the defendant would simply add any prefix or suffix to a well-established mark and then claim that the two marks were not similar due to the presence of the prefix or suffix.
The Court opined that the comparison of the defendant’s impugned label with that of the plaintiff’s label in respect of identical products would show that there had been an imitation and/or reproduction/substantial reproduction of the plaintiff’s LW+ label and the plaintiff’s artistic copyright work therein including the image of a man wearing a construction helmet, the colour scheme and layout and overall trade dress.
The Court further opined that the close identity/resemblance of the defendant’s impugned marks and the plaintiff’s registered marks LW / LW+ and LW+ label clearly showed defendant’s intention to deceive and confuse the public, consumer, and traders. The Court relied on Laxmikant V. Patel v. Chetanbhai Shah, and Sabmiller India Ltd. v. Jagpin Breweries Ltd., ; and opined that even likelihood of confusion and deception was sufficient and thus, rejected the defendant’s contention that there must be actual incidences of confusion.
The Court observed that the plaintiff had been vigilant in protecting its intellectual property rights including its rights in LW/LW+ marks and LW/LW+ labels and had been successful in obtaining orders from this Court protecting such rights in the said marks. Thus, judicial protection and recognition had been accorded to the plaintiff’s LW/LW+ marks and LW/LW+ labels.
The Court stated that there was inconsistency between the use of the mark “HYDROBUILD” and “HYDROBUILD LW POWER” which was alleged to be used since 2009. Further, the Court opined that had the marks “HYDROBUILD LW” or “HYDROBUILD LW POWER” been in use since 2009, there would have been no reason for the defendant to make an application for “HYDROBUILD” in 2010 on a “proposed to be used basis”.
The Court relied on Pidilite Industries Ltd. v. Zar Metamorphose Combine, and opined that this Court had in prior orders held in favour of the plaintiff on the balance of convenience, particularly on the ground that the plaintiff was using the alphabets “LW” and “LW+” for identifying its goods and both were its registered trade marks. The Court opined that the defendant would not suffer much if it was called upon to describe its goods by reference to the full phrase ‘Liquid Water Proofing’. However, the plaintiff would clearly suffer in terms of dilution of its registered trade marks “LW” and “LW+”, if the defendant was to be permitted user of “LW” and “LW+” for describing its goods.
The Court held that the plaintiff had made out a prima facie case for grant of interim relief and the registration of the trade mark of the defendant was found to be ex-facie illegal, fraudulent, and shocked the conscious of the Court. Further, irreparable harm, loss and injury will be caused to the plaintiff due to the defendant’s continued use of the impugned marks which were wrongful activities and the defendant had various other products apart from the impugned product and therefore its business would not be affected upon the grant of injunction.
The Court granted interim relief to the plaintiff and restrained the defendant, its directors, proprietors, partners, owners, employees, workers, subordinates, representatives, stockists, dealers, agents, and all other persons claiming through or under them or acting on their behalf or under their instructions from using the impugned marks “LW” with or without the marks “HYDROBUILD” or “HYDROTITE” and/or “POWER” or the impugned labels or any other mark which was identical with or similar to the marks LW/LW+ or LW/LW+ labels of the plaintiff upon or in relation to the impugned products and from manufacturing, selling, offering for sale, advertising or dealing in constructions chemicals or chemicals/compounds or similar goods or any other goods bearing the impugned marks to the extent that they incorporate or use “LW or LW+”.
[Pidilite Industries Ltd. v. Dubond Products India Pvt. Ltd., Interim Application (L) No. 11255 of 2021, Order dated 21-01-2024]
Advocates who appeared in this case :
For the Plaintiff: Hiren Kamod, Nishad Nadkarni, Aasif Navodiya, Khushboo Jhunjhunwala, Jaanvi Chopra, Rakshita Singh and Prem Khullar i/b. Khaitan and Co.
For the Defendant: Chaitanya Chavan with Rahul Singh, Yash Naik, and Arbaaz Shaikh i/b. Legal Catalyst.
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