Dr. Fixit fixes Trademark Infringement

By Arpit Kalra and Pranit Biswas

CASE ANALYSIS: Pidilite Industries Ltd V/S Platinum Waltech Ltd

Recently the Bombay High Court in a trademark infringement case restrained Platinum Waltech Ltd. (Defendants) by an order of injunction from selling their waterproofing products under the mark LWC and from infringing Pidilite Industries’ (Plaintiff) trademark and design registrations as well as their copyright in their artistic work.

CONTENTIONS OF THE PLAINTIFF

• That Plaintiff is a well-known manufacturer and a vendor of waterproofing chemicals, construction bonding chemicals, materials, additives and other products relating to the construction and paint industry and has a worldwide presence.

• That Plaintiff has adopted and used several house marks upon its range of products which include the DR FIXIT mark with a distinctive device of a man wearing a yellow construction helmet and have trade mark registrations for the same. This device mark is a crucial part of their overall house mark and is an essential feature of most of its registered trademarks. The Plaintiff has used this distinctive label/mark to promote various products over the years and thus has acquired significant reputation and goodwill in the mark of the man in a yellow construction helmet.

• That LW and LW+ are the oldest products of the Plaintiff within the DR FIXIT The mark LW continues to be used as a product identification mark within the range of products. An improved variant was launched in 2009 under the mark LW+. The LW and LW+ products within the DR FIXIT range are specially formulated compounds composed of a surfactive plasticizing agent, polymer and additive.

• That the Plaintiff has adopted and has continuously without any interruption been using these marks since 1993.

• That the Plaintiff’s label for the DR FIXIT range including LW and LW+ is distinctive and features a unique yellow-gold and blue colour combination in horizontal bands. The container has a distinctive appeal which includes elevated ridges and grooves on both sides, a particular canary yellow cap, unique shaped handle and the Plaintiff has valid and subsisting design registrations for these containers.

• That the Plaintiff has eight trade mark registrations for both LW and LW+ and has also made considerable expenses on promotion and advertising of their products on television and elsewhere.

(Note: Few of the registrations that the Plaintiffs have depended upon and that are mentioned in the said order have been enumerated below)

Trademark Registrations

Design Registrations

DEFENSES BY THE DEFENDANT

• That LWC, the label, the device and the containers are trivial and the law does not aid trivialities.

• That use of LWC is purely descriptive and stands for ‘liquid waterproof / waterproofing compound’.

• That the man portrayed on their packaging is more youthful than that portrayed on Plaintiff’s packaging. The colour of the beard along with the placement of man in the yellow construction helmet is also different on both the containers.

TABLE OF COMPARISON

FINDINGS OF THE COURT

• The DR FIXIT, the LW/LW+ labels and the artistic work and copyright in these vests with the Plaintiff as evidenced by their registrations and worldwide reputation enjoyed by them in the same.

• The Defendant’s product container is almost indistinguishable from that of the Plaintiff’s. It has similar elevated ridges in the same colour scheme including the yellow cap. Additionally, it also features a similar man wearing a tie and yellow construction helmet.

• The use of LWC by the Defendant is not in the sense of an abbreviation of ‘liquid waterproof compound’ but is prima facie being used from a trade mark perspective. The Defendant has just added the letter ‘C’ on the Plaintiff’s mark LW and claiming it to be an abbreviation instead.

• The Defendants have not provided any bona fide reason for the adoption of the mark or the date of adoption of the same. Additionally, there is nothing to support or that can rationally explain the reason behind the adoption by the Defendants of the statutorily- protected design of the Plaintiff’s container.

• Given the large scale of sales and advertisements of the Plaintiff’s products it is impossible that the Defendant did not know the Plaintiff’s products and their huge market presence when their products are known throughout the length and breadth of this country.
• The court itself faced a great difficulty to distinguish the products in one look. Therefore the general public can readily imagine the Defendant’s product to be one of the variants of the Plaintiff’s products and label.

ANALYSIS

Even though the Defendants endeavored to justify the adoption of the mark LWC and pointed out differences in their packaging including the placement of details on both the containers, the same was not enough to satisfy the court. The inefficiency on their part was of not providing user detail and reason for adoption of such similar packaging and design. In trademark infringement and passing off cases, minute details are not seen separately, it is the packaging and the overall look-and-feel of the product which matters, as the actual test is if a person of average intelligence and imperfect recollection is able to differentiate and perceive that the products emanate from different sources, as was observed by Hon’ble Mr. Justice G.S. Patel. The first look of both the containers was an instant give-away of the malafide intention of the Defendant behind adoption of such packaging.

Sulagna Goswami, Associate at S.S. Rana & Co., has assisted in the research of this article.

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