PIDILITE INDUSTRIES V SANJAY JAIN
Written by Maanya Chaturvedi, 2nd year {National Law University, Delhi}
The case of Pidilite Industries v Sanjay Jain[1] involved Pidlite Industries, a leading manufacturer of adhesives in India, and Sanjay Jain, representing KWIKHEAL, another adhesive manufacturing enterprise.
FACTS
Pidlite Industries, the applicant, has its products sold under many trademarks, such as “Fevikwik”, “Fevicol”, “Fevistick” etc, and all the products are extremely known and commonly used in the nation. “Fevikwik” specifically, was registered as a trademark in 1987, and this mark has continued since[2]. The applicant also claimed, that along with the name, they also had unique packaging, with several elements which made the product recognizable, including the colour scheme, as well as a depiction of the product’s container on the packaging[3]. In context of such recognizable elements, the applicant claimed copyright ownership over the trademark.
Kwikheal, represented by the respondent, also manufactured adhesive, with packaging that the applicant claimed to be infringing on copyright, due to common elements. As per the applicant, they filed a suit against the respondent as soon as this came to their knowledge, and were first granted an ad interim injunction and then absolute injunction in 2017[4].
The respondent then changed the packaging, and registered it as trademark, which was challenged by the applicant in the present case, who argued that the new mark was deceptively similar to petitioner’s mark, and the goods that it is registered for is similar to the applicant’s product.
ISSUE
The question which then lay before the court was to determine whether the mark registered by the respondent was deceptively similar to that of the petitioner.
RULE:
As per Section 47 of the Trade Marks Act[5], a mark can be removed from registration if it is registered by the proprietor without bonafide intention to use it and there has been no usage of it up to 3 months before the application against it. As per Section 57, the relevant tribunal or court may then cancel the mark if it is found to be contravening the conditions requires[6].
ANALYSIS
As per the applicant, the new mark was made in bad faith[7]. The applicant’s mark is well known, and due to the similarities between the two, the respondent benefitted from the popularity and goodwill accumulated, by projecting to potential customers that their product was associated with the applicant.
They also further asserted that “Kwik” was an essential element of the product and had been earlier stated by the Bombay High Court in Pidlite Industries v Poma- Ex Products, to be an uncommon word, and is a dominant part of the applicant’s mark, with its usage by the respondent being misleading[8]. Relying on the previous injunction granted by the court, the applicant claimed that the same findings would apply presently.
The respondent contended that “Kwik” cannot be claimed to be under exclusive usage by the applicant, and noted the High Court’s findings to be prima facie but not conclusive[9]. Further, they submitted that instead of “Kwik”, “Fevi” was the dominant part of the applicant’s mark, and was attached to all their products, with the other merely being used in one sub-brand[10].
The court ruled that the observations of the Bombay High Court could not be completely applied in the present circumstances, given the change in packaging by the respondent following the injunction. Further, as ruled in Lupin Ltd. Vs. Johnson & Johnson[11] and submitted by the respondent, the prima facie findings made by the court earlier could not shape the final decision of the court as regarding the application for rectification presently under consideration.
Additionally, the court found the respondent’s mark to be differing from that of the applicant in a number of ways which set it apart, and held the two not to be deceptively similar given the physical and aesthetic differences, which were present in multitudes[12]. Applying the anti-dissection rule laid down in M/S South India Beverages Pvt. Ltd. v. General Mills Marketing Inc[13], the court held that when comparing device marks, the marks need to be considered as a whole, and not in terms of just a few elements. When looking at the device mark on the packaging, which the applicant alleged to be similar to theirs, it becomes apparent that as a whole, the mark is not deceptively similar just because certain parts of it look similar.
In consonance with the argument submitted by the respondent, the court also found that “Fevi” was indeed the dominant segment of the mark[14], given how it was associated with many other products made by the brand. The suffix “Kwik” simply denotes the type of product, distinguishing it from other sub-brands, and is not a dominant element by itself.
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Most importantly, it was noted that among the five registrations made of the mark, two explicitly state that the registration does not give the applicant exclusive rights over the word “Kwik”. Even if this disclaimer is not present in all registrations, the fact that it is present in two is sufficient enough to display that there is exclusivity present[15]. The claim over “Kwik”, is thus expansive beyond legitimate bounds, as decided in Registrar of Trade Marks v Ashok Chandra Rakhit.[16]
Further supported by Vardhman Buildtech Pvt Ltd v Vardhman Properties[17], it has also been previously established that registering a trademark gives exclusive rights over the whole word in the trademark, but not the individual constituents which form the phrase.
As there is no exclusive right over “Kwik”, a rectification application against “Kwikheal” cannot be granted, given that there is no infringement on the applicant’s trademark. There is no monopoly over the word, and the applicant must rely on argument beyond that ruled by the Bombay High Court in order to successfully petition for rectification.
Thus, the judgement conclusively ruled in favour of the respondent, and established a clear boundary in terms of what can be claimed as trade mark, and what exceeds the pre- set limits and cannot be claimed to be infringed. Going beyond what was decided in the judgement by Bombay High Court, the decision also took a more firm stance on what are these permissible limits.
The decision is a multi-faceted one, in terms of impact. Given how companies create a large array of products and claim trademark rights over them, it is essential to define what is part of the trademark and what isn’t, so that broader phrases and common words cannot be trademarked. If this is allowed, it would stifle the creativity of the market and put a major limit on trademarking in general, given that there is a limited number of words commonly used in industries as per what they produce. If the boundaries are made to be too vast, then usage of many terms can be monopolized by certain companies, making naming and marketing extremely difficult for others.
Additionally, it is also important to distinguish between what is the dominant part of a trademark, and what is an additional part. Given that conglomerates tend to create many sub-brands with one dominant part and another addition as a suffix or prefix, disallowing making the entire phrase as a trademark is also beneficial for smaller companies who would otherwise find it difficult to avoid coinciding with the large number of sub-brands under major companies present in the market. Similarly, by upholding the anti-dissection rule, the judgement also protects parties from unnecessary allegations of infringement on device marks when in fact the mark needs to be considered in its entirety.
Not allowing rectification filed solely on the basis of merits of the previous injunction was also crucial in re-strengthening the notion of building a case on its own merits, and not simply relying on prima facie findings, from a case which may or may not have the necessary levels of similarity required to apply the principles expounded in it.
Thus, the case is undoubtedly a step forward in terms of ensuring the fair use of intellectual property rights, and solidifying the boundaries between what is common use and what is trademark, further balancing both the right to protect one’s intellectual property, as well as the need to creatively display and market.
[1] Pidlite Industries v Sanjay Jain, 2024 C.O. (COMM.IPD-TM) 371/2022
[2] Ibid para 8.
[3] Ibid para 9-12.
[4] Ibid para 13.
[5] Section 47, Trade Marks Act 1999
[6] Section 57, Trade Marks Act 1999
[7] n(1) para 17.3.
[8] Pidlite Industries v Poma-Ex Products, 2017 2695/2016, para 91-92, 129.
[9] n(1) para 18.2.
[10] Ibid para 18.5.
[11] Lupin Ltd v Johnson and Johnson, 2012 2178/2012.
[12] n(1), para 20-22.
[13] M/S South India Beverages Pvt. Ltd. v. General Mills Marketing Inc, 2014 389/2014.
[14] n(1) para 24.
[15] Ibid para 25.
[16] Registrar of Trade Marks v Ashok Chandra Rakhit, 2012 SCCOnline SC 12, para 8.
[17] Vardhman Buildtech Pvt Ltd v Vardhman Properties, 2016 SCCOnline Del 4738, para 8-10.
