The Bombay High Court recently granted interim reliefs to Pidilite Industries Limited in a suit against Dubond Products Pvt Ltd restraining them from trademarks, copyrights and overall packaging of in respect of the product range DR. FIXIT LW/LW+ product. In doing so the court has gone behind the Defendant’s registration of the impugned mark at the interim stage.
Pidilite contended that the Defendant’s marks LW/LW+, with or without the words HYDROBUILD / HYDROTITE, are infringing its registered mark LW/LW+ and that the label and overall packaging of the Defendant’s products violated Pidilite’s copyrights in labels/artistic works used for its DR. FIXIT LW/LW+ products. The Defendant claimed that it has been using the impugned mark since 2009 and that its mark HYDROBUILD LW is registered. The Defendant also sought to contend that Pidilite’s marks LW/LW+ were descriptive in nature and meant ‘Liquid Waterproofing’, which according to them was common to trade and in which no exclusivity ought to be permitted.
The Single Judge of Bombay High Court, after a detailed hearing ruled in favour of Pidilite and observed that: (i) Pidilite had been using the marks LW/LW+ much prior to use of LW by the Defendant; (ii) Pidilite has been vigilant in protecting its intellectual property rights in LW/LW+ marks and judicial protection and recognition has been accorded to the Plaintiff's LW/LW+ marks from time to time in various decisions of the Bombay High Court; (iii) that mere addition of a prefix and/or suffix and making minor changes to the impugned mark/label/packaging is not sufficient; (iv) that the usage of the impugned marks and labels is likely to cause confusion and deception amongst members of the trade and public at large; (v) the Defendant failed to prove extensive and substantial use of LW by third parties or to demonstrate that the same is common to trade; (vi) that the Defendant's registration of the impugned mark is ex- facie illegal, fraudulent and of a nature that shocks the conscience of the court and that the present case is a fit case to go behind the Defendant’s registration of the impugned mark and grant reliefs to the Plaintiff.
The Plaintiff was represented by Counsel Mr Hiren Kamod who was instructed by Mr Nishad Nadkarni, Mr Aasif Navodia, Ms Khushboo Jhunjhunwala, Ms Jaanvi Chopra, Ms Rakshita Singh and Mr Prem Khullar.
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