Pidilite obtains relief from HC against trademark counterfeiting of its waterproofing products
In relief for Pidilite Industries Limited, the Bombay High Court has prevented Platinum Waltech Limited from selling its waterproofing product which infringes the trademark of Dr Fixit LW and LW +, which is Pidilite’s line of waterproofing products.
Judge Gautam Patel recently banned Platinum Waltech Ltd from manufacturing, selling, advertising or selling such goods while imposing a cost of Rs 2.5 lakh.
When issuing the restraining order, Justice Patel observed: “Now if we take the four elements together – the use of LWC (too similar to LW / LW +), a similar tag, a device similar and a similar container – then the prima facie case of both counterfeiting and deception is more or less on its own.
The HC was hearing a complaint filed by Pidilite Industries to prevent Platinum Waltech from using its “LCW sealant” which had several similarities to its Dr Fixit LW and LW +, including the container and design.
According to Pidilite’s lawyer, Hiren Kamod, they came across Platinum Waltech’s product in October 2020 which infringes their trademark. As well as having an almost indistinguishable container design and color, it even has a similar image of a man wearing a yellow construction helmet. In addition, the letters LCW were prominently displayed on the container.
Pidilite, a well-known waterproofing brand with a global presence, has been manufacturing industrial and textile resins and organic pigments since at least 1969. The other brands (PIDIPROOF, PIDIPROOF LW and LW) have been in use since at least 1993.
Kamod claimed that Pidilite has developed a line of waterproofing products under the Dr Fixit brand which is distinctive and features a unique combination of yellow-gold and blue colors in horizontal stripes. He also has a drawing of a man wearing a yellow construction helmet. He adopted Dr Fixit’s LW and LW + in 2001.
Platinum Waltech advocate S. Kazi argued there were differences in their design as their container featured a young man with a suit and tie. In addition, LWC is in common use for waterproofing solutions and so it cannot be said that they copied Pidilite’s LW / LW + brand, Kazi argued.
An affidavit has been filed by Platinum Waltech claiming that its use of the LWC, label, device and containers is insignificant and that the law does not facilitate trivialities. “This submission need only be declared rejected, especially in the context of trademark and copyright law,” Judge Patel observed. .
The court did not even agree with the defense argument that LWC used by them was purely descriptive and meant “waterproof compound / liquid waterproofing”.
“LWC alone does not describe anything. It is not in itself descriptive. The defendant (Platinum Waltech) claims that this is a well-known and commonly used abbreviation for “liquid impermeable compound”. The ipsis dixit (a person’s own assertion without relying on any authority or evidence) of the defendant does not make it so, ”Justice Patel added.
Interestingly, Platinum Waltech didn’t mention when it first started using said container with the LWC brand. “Indeed, this is a curious omission because nowhere in the affidavit do I find any mention of two particularly important aspects: (a) when the defendant adopted the mark; and (b) how he came to adopt this brand, ”observed the court.
For the year 2018-2019, Pidilite’s LW + brand sales exceeded Rs 265 crore per year and the company had spent considerable sums on its promotion and advertising.
Judge Patel observed: “In view of the sales of the plaintiff (of Pidilite), it is inconceivable that the defendant was not aware of the presence of the plaintiff in the market. The applicant is not an operator located in a taluka. It has a global presence and its products are known all over the country. “
On the question of how to decide whether there has been an infringement, Justice Patel observed: “The test is what a person of average intelligence and imperfect memory might perceive; and very often that person is a judge of a High Court. I would have had the greatest difficulty without an extremely thorough examination to be able to discern the Respondent’s products as emanating from a separate source and I would quite easily have imagined that the Respondent’s product is in fact one more variation of the product portfolio. and applicant labels. The dead gift, as I noted, is the container.
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Posted on: Saturday September 04, 2021 6:49 PM IST