Savvy Thakur
Published on: 16 November 2022 at 21:25 IST
The Bombay High Court grant interim relief to the adhesive and sealant company Pidilite (plaintiff) regarding their trademark M-Seal last week, preventing another business from using the mark R-Seal. [Pidilite Industries Limited vs. Riya Chemy]
According to Justice Riyaz Chagla, a single judge, the defendants fraudulently obtained the term R-Seal’s registration by tricking the Registrar of Trade Marks and concealing the plaintiff’s prior registered marks from him.
“The Defendant’s registrations for the disputed marks R-SEAL and are, in my prima facie opinion, ex-facie illegal, fraudulent, and of a nature that would shock this Court’s conscience.”
The opposite party’s correction procedures in regard of the said enrollments are forthcoming settlement before the Exchange Imprints Vault.
The court stated, “In addition, in my prima facie view, the Defendant has obtained the aforementioned registrations by playing a fraud upon the Registrar of Trade Marks and concealing the existence of the Plaintiff’s prior registered marks from him.”
The Court added that the Registrar of Trade Marks, as the custodian of all marks, should have searched the register before accepting the defendant’s applications to ensure that the defendant’s marks do not violate the rights of any previous users or owners.
The Court granted Pidilite an interim injunction in light of the precedent.
The bench acknowledged the plea that Pidilite had filed against the defendants’ use of the mark “R-Seal Jhat Pat,” which it claimed was misleadingly similar to its product “M-Seal Phataphat.”
The bench noted from the records that the plaintiff company demonstrated that it adopted the aforementioned mark in 1968 and has continued to use it ever since. On the other hand, the defendants were only able to present a document demonstrating that they adopted the mark R-Seal in 2005.
The judge of the opinion that the defendant is not entitled to any rights as it is not the prior adopter or user of the marks in question.
Further it was added that, “… Defendant’s adoption of the contested mark and its representation, among other things, is evident from a comparison of rival products and features are infringing on the Plaintiff’s rights, and this is not coincidental,”
The Court was of the opinion that the defendants did not attempt to explain or justify why they chose the mark, its features, deceptive similar color combination, its representation (including an identical underlining of the mark beginning with the first letter of each alphabet), identification mark, or tagline.
The bench expressed that there is no relevant facts in the defendant’s contention that the colors used by the defendant in respect of its packaging label are natural colors and would not cause any confusion among the public at large.
“It is evident that the balance of convenience weighs in favor of the Plaintiff, considering that the Plaintiff has made a prima facie case for the grant of interim reliefs as well as the balance of convenience and the irreparable loss, harm, and injury that will be caused to the Plaintiff if the injunction is not granted as opposed to the Defendant’s own case of prejudice caused to it.”
Additionally, the judge noted that the contention of the Defendant that its business will shut down if an injunction is granted cannot be accepted. As the defendant has other products in addition to the product in question.
The court also said that the phrase “M-Seal” needs to be looked at in its entirety and rejected the defendant company’s claim that some of the plaintiff’s products have “Seal” disclaimers.
“Disclaimers do not enter the market, and the average consumer or common man would not be aware of any disclaimers included in a trademark registration. A typical consumer would view the marks in this manner when making a purchase. Despite the presence of, and after consideration of the very same disclaimer/condition on the Plaintiff’s mark,”
The bench noted that the defendant registered its mark fraudulently without consulting the Registrar of Trademarks’ public record.
“The Defendant’s marks R-SEAL appear to be confusingly similar to the Plaintiff’s registered marks MSEAL and violate the Plaintiff’s rights.”
As a result, the defendant Marks is not qualified to proceed with registration and are in violation of the Section 11 of the Trade Marks Act of 1999 the judge ruled.
The judge stated that the Court has the authority to go behind the defendants’ registrations and grant an injunction against their illegal activities in order to protect the Plaintiff’s rights because of their fraudulent registration.
Hence, the Court issued notice to prevent the Plaintiff mark MSEAL. (word per se)
