The Bombay High Court recently ruled that there is no prima facie deceptive similarity between the logos of Fevicol manufacturer Pidilite Industries, which features two elephants against a sunset backdrop, and Chiripal Industries, which features the word Tikawoo with the device of a rhino against a sun backdrop.
“Merely because the Sun is shown in the background of the image of a Rhino in the impugned mark of the defendant (Chiripal), it cannot be said that there is either deceptive similarity or a case of slavish copying of the registered trademark of the plaintiff (Pidilite) or artistic work in the plaintiff’s trademark, which consists of two elephants pulling in opposite directions with Sunset in the background,” Justice Manish Pitale held while refusing to restrain the defendant from using the logo.
However, the court granted an interim injunction in favour of Pidilite, prohibiting Chiripal from using marks that are similar or identical to the plaintiff’s “HEATX,” “LW+,” and “LW” marks.
The plantiff Pidilite Industries claimed infringement and passing off with respect to its registered trademarks HEATX, LW+, LW, and DR. FIXIT with an image of a man wearing a yellow construction helmet and copyright over a logo with two elephants pulling in opposite directions against a sunset backdrop.
The plaintiff claimed that the defendant infringed on its trademarks and copyrights with its trademarks HEAT-TIK, LWP+, and MR. ENGINEER, which featured an image of a man wearing a construction helmet and a rhino in the background of a sun. It claimed that the defendant is using the trademark HEAT-TIK for identical product of heat resistant adhesive.
The court emphasised that when comparing rival marks, the overall impression should be appreciated rather than delving into each feature of the marks to determine similarity or difference.
According to the court, there is no prima facie case demonstrating deceptive similarity between the words Dr. Fixit and Mr. Engineer. It compared the image of a man wearing a yellow construction helmet in the plaintiff’s registered mark to the image of a man wearing a construction helmet in the defendant’s registered mark and concluded that the defendant did not engage in deceptive similarity or copying.
The court found prima facie deceptive similarity between the plaintiff’s marks LW and LW+ and the defendant’s mark LWP+. It rejected the defendant’s argument that Pidilite does not have a monopoly on LW and LW+ because they are abbreviations for liquid waterproofing, which is a descriptive term. The defendant failed to demonstrate prima facie unsustainable registration of the plaintiff’s trademarks LW and LW+, the court held.
“The defendant is not justified in claiming that LW is a short form of the product’s descriptive nature, i.e. liquid waterproofing, or that it is commonly used in trade. Acceptance of the contention pertaining to common to trade would require the defendant to pass the stringent test of demonstrating extensive use of the said mark. “At this point, the defendant has failed to persuade this Court in that regard,” the court ruled.
The court ruled that the plaintiff’s registered trademark HEATX and the defendant’s mark HEAT-TIK can cause confusion. The court accepted the plaintiff’s contention that if the two words are spoken quickly, there may be confusion because people from different backgrounds and from different parts of the country can pronounce English words in a way that causes confusion.
Furthermore, when compared to plaintiff’s HEATX presented in a specific colour scheme, the overall colour scheme of the defendant’s product with the use of the impugned mark HEAT-TIK is likely to create confusion in the minds of the consumer, the Court held.
