Trademark cases not as smooth as silk

Trademark cases not as smooth as silkIn the recent case of Berger Paints India Limited v JSW Paints Private Limited before the Calcutta High Court, the plaintiff, Berger, sought an injunction against the defendant, JSW, to restrain it from using the plaintiff’s trademark, Silk, for its paint.

The plaintiff has been in the paint production business since 1923 and has a significant presence in many countries, including India. It is known today as one of the most prominent companies in the paint industry in India, being the second-ranked company in the sector. The plaintiff claimed that it has been using the registered mark Silk either on a standalone basis or in conjunction with its house name Berger Lewis since 1980. Since that date, the plaintiff has applied for around 250 trademarks, including such brands as Luxol Silk, Lewis Berger Silk, Lewis Burger Silk Glamor and Experience Silk.

It became aware of the alleged infringement of its mark by the defendant in December 2019. The plaintiff issued a cease and desist notice the same month, calling on the defendant immediately to cease using the plaintiff’s trademark Silk as a standalone or in combination with other branding. The plaintiff demanded that the defendant refrain from promoting, advertising, and using in campaigns their trademark Silk in any manner. In its reply, the defendant refused to stop using its mark Halo Silk. This led to the infringement application to the court.

The court held that silk is a common word used in the paint industry to describe the quality and finishes of paint. The product may be available to customers in various finishes such as glossy, matte and satin. The use of the word silk is therefore descriptive and indicates the particular nature of the paint finish. Thus no one can claim an exclusive right to the word silk.

In a further rejection of Berger’s case, the court found that the plaintiff had accepted a condition in the grant of four of its trademarks, stating that the word silk should be depicted only in the way and manner shown in the trademark application. The grants further stipulated that the plaintiff had been given no exclusive right to the word silk.

The court analysed section 29(4) of the Trademarks Act, 1999, which deals with trademark dilution for dissimilar goods or products. The court, in its judgment set out the following elements a trademark holder has to establish to found a case of trademark dilution by an alleged infringer. First, the trademarks must be identical or similar. Next, the trademark holder has to establish the reputation of the senior mark in India. Third, the infringer has to be using the impugned mark without due cause. Lastly, the infringer must gain an unfair advantage or the trademark holder must suffer detriment to the distinctive character or reputation of the registered trademark.

In addition, in comparing the respective appearances of the trademarks used by the parties, the court held that the shape of the products, their packaging and the colour combinations, as well as the words used in the defendant’s mark, were completely different from those in the plaintiff’s trademark. This proved that the defendant’s mark was not deceptively similar to the trademark of the plaintiff. The defendant had no intention to pass off its own products as those of the plaintiff by using the mark silk. The defendant sold its products under the name Halo and the word silk was used merely to describe the quality and the finish of the paints. This further proved that there was no question of dilution of the plaintiff’s trademark.

The plaintiff had not established any of the allegations in dispute that were necessary to found a case of trademark dilution by the defendant. Berger had failed to found a case that there was a deceptive similarity between the mark silk used by the defendant and its existing trademarks. The court therefore refused to grant the injunction sought by the plaintiff.

The court, in reaching its judgment emphasised the point that trademark protection involves establishing a connection in the course of trade between a manufacturer and its goods and services. Such a connection is the point of origin of the product. Any alleged trademark infringement has to be assessed by comparing the two marks side-by-side. In this way, a court will be able to decide the likelihood of confusion and deception.

Authors: Manisha Singh and Shubhankar Sushil Sharma

First Published By: Law.Asia here