This case Analysis is done by Bhavika Makhija, 2nd year BALLB student at Indore Institute of Law.
Case No : GA 1 of 2020
Citation:2023 SCC OnLine Cal 4949.
Date of order: 12-12-2023
Background: Berger Paints, a well-established player in the market, sought legal recourse against JSW Paints, a newer entrant, alleging that JSW’s branding and marketing strategies were misleading consumers and infringing upon Berger’s established trademarks. This case not only highlights the complexities of intellectual property rights in the context of brand identity but also underscores the challenges faced by companies in navigating competitive practices within a rapidly evolving marketplace. The case revolves around the legal dispute of trademark infringement. The plaintiff company in 2020 brought a suit against the defendant company praying for injunction restraining the defendant from using the trademark or its variant “SILK” on its products.
Issues Raised:
- Whether the use of the word “SILK” by the defendant is the infringement of the trademark rights obtained by the plaintiff?
- Is the mention of SILK by JSW paints private limited is for deceiving the consumers and taking undue advantage of the reputation of plaintiff?
Rule of Law:
- Trade Marks Act, 1999
Plaintiff Contentions:
The petitioner argued that the trademark containing the expression “SILK” adopted by the defendant constitutes infringement of plaintiff’s trademark and statutory rights. The expression is used by the defendant after being fully aware about the plaintiff’s reputed business carried under the trademark “SILK”. The petitioner further mentioned that the defendant deliberately adopted the use of mark “SILK” to derive wrongful advantage and trade upon plaintiff’s products goodwill and reputation.
Defendant Contentions:
The defendant submitted that “SILK” used on packaging is not for the purpose of trademark but to represent the quality and feature of the product. The plaintiff is attempting to claim a monopoly in terms which is not permissible.The defendant challenged the plaintiff’s exclusive rights over “SILK”, citing the lack of statutory or common law support. It was contended that the defendant filed trademark applications for labels in January 2020, specifically for the silk finish variant, which were accepted and advertised by the Registrar of Trademarks.
Judgment:
The court held that the packaging and color scheme of both the companies are different. By comparison both marks are substantially different and have no similarity. The plaintiff failed to establish deceptive similarity. Therefore, there is no infringement of the plaintiff’s right granted under trademark protection. Hence, the prayer for injunction by plaintiff is refused. The packaging used by both the companies was different and there was no intention of defendant to use the mark “SILK” as trademark and take advantage of plantiff reputation. The defendant already filled application with registrar of trademark is the clear indication that they do not intent to harm the reputation of plaintiff’s company nor they want to steal the consumers or their trademark.
Conclusion:
Trademark is a “ badge of origin”. The two trademarks cannot be similar. It should be distinctive and capable of distinguishing the goods from each other. The marks should not mislead or create the confusion in minds of consumers giving wrongful advantage to one over other.
A trademark is said to be infringed when there is similarity between the identity or goods & services dealt, likely to cause confusion to the public. the purpose for which a trademark is obtained must be mentioned while obtaining the registration and it is subject to conditions imposed by the registrar of trade mark.
In the above mentioned case there exists no similarity in the mark used by both the companies as well as there was no scope of creation of confusion in the mind of the public. The term “SILK” is used by many paint companies such as asian paint etc to denote the finish (glossy, smooth) and quality of the product. Thus, there is no violation or infringement of any right of plaintiff by defendant.
