Case Note & Summary
The plaintiff, Pidilite Industries Limited, a leading manufacturer of adhesives and sealants, filed a suit against Poma-Ex Products and others for trademark and copyright infringement and passing off. The plaintiff's well-known product 'FEVIKWIK' is a cyanoacrylate instant adhesive sold in distinctive yellow and blue packaging with specific colour combinations, layout, and a blue ball device. The plaintiff held several trademark registrations for 'FEVIKWIK' and its packaging since 1987, including word marks and label registrations. The defendant adopted the mark 'KWIKHEAL' for an identical product packaged in a similar yellow and blue trade dress, with red lettering and an identical blue ball device. The plaintiff discovered the defendant's application for registration of its label in April 2014 and filed the suit. At the hearing of the notice of motion for interim injunction, the plaintiff deleted other defendants and proceeded only against Poma-Ex Products. The plaintiff argued that 'KWIKHEAL' is deceptively similar to 'FEVIKWIK', and the overall similarity of marks and packaging was likely to confuse consumers, thereby infringing its registered trademarks and copyright. The defendant did not appear to make substantive submissions. The court considered the evidence of sales, promotional expenditure, and registrations, and found that despite a disclaimer on the exclusive use of 'KWIK' in one registration, the overall similarity of the marks and packaging constituted infringement. The court concluded that the plaintiff had made out a prima facie case for trademark infringement, trade dress infringement, and passing off. The balance of convenience favored the plaintiff, and irreparable injury would result without interim relief. Accordingly, the court was inclined to allow the notice of motion and grant an injunction restraining the defendant from using the impugned mark and packaging. The judgment was reserved on 19 June 2017 and pronounced on 2 August 2017, granting the injunction.
Headnote
A) Trademark Infringement - Deceptive Similarity - Infringement Despite Disclaimer - Trade Marks Act, 1999 - The court considered the similarity between 'FEVIKWIK' and 'KWIKHEAL' for identical goods. Despite a disclaimer for the exclusive use of 'KWIK' in one registration, the overall similarity of the marks, including the arrangement and get-up, was likely to cause confusion. The disclaimer did not disentitle the plaintiff from protection of the mark as a whole, especially since subsequent registrations had no such disclaimer. Held, defendant's use of 'KWIKHEAL' infringed the plaintiff's registered trademark. (Paras not numbered) B) Trade Dress Infringement - Distinctive Packaging - Imitation of Colour Combination and Get-up - Trade Marks Act, 1999, Sections 2(zb), 29 - The plaintiff's 'FEVIKWIK' products used a unique yellow and blue colour combination with specific layout, font, and a blue ball device. The defendant's packaging was found to be a colourable imitation of this trade dress, copying the overall look and feel, which was distinctive and associated exclusively with the plaintiff. The court found infringement of the packaging registrations. (Paras not numbered) C) Passing Off - Misrepresentation - Deception of Consumers - Trade Marks Act, 1999, Section 27 - The defendant's use of a deceptively similar mark and packaging was likely to mislead the public into believing that the defendant's goods were those of the plaintiff. This misrepresentation amounted to passing off and was causing damage to the plaintiff's substantial goodwill and reputation. (Paras not numbered) D) Interim Injunction - Prima Facie Case - Balance of Convenience - Specific Relief Act, 1963 - The plaintiff established a strong prima facie case of trademark infringement, trade dress infringement, and passing off. The balance of convenience was in favour of the plaintiff, and irreparable injury would result if the injunction was not granted. The court thus granted interlocutory relief restraining the defendant from using the impugned mark and packaging. (Paras not numbered)
Issue of Consideration
Whether the defendant's use of the trademark 'KWIKHEAL' and its packaging for instant adhesive amounts to infringement of the plaintiff's registered trademarks 'FEVIKWIK' and its distinctive packaging registrations, and passing off
Final Decision
The court was inclined to grant the interim injunction in terms of prayer clauses (a) and (b) restraining the defendant from using the mark 'KWIKHEAL' and similar packaging. However, the final extract of the operative order is not available in the provided text.
Law Points
- Trademark infringement
- passing off
- disclaimer of exclusive use
- distinctiveness
- deceptive similarity
- trade dress
- interim injunction
- prima facie case
- balance of convenience
- likelihood of confusion
- well-known mark
- registered trademark
- colourable imitation
- get-up
- layout
- copyright in packaging
