Jubilant Co restrained from infringing Pidilite's trademarks

Mumbai: Holding that it was a case of an infringement of copyright and passing off goods in someone else’s name, the Bombay High Court has restrained M/s Jubilant Agri & Consumer Products Ltd from using the registered trademarks of M/s Pidilite Industries Ltd.

The order was passed on January 13 by Justice S J Kathawala on a suit filed by Pidilite Industries Ltd seeking to restrain Jubilant Agri and Consumer Products Ltd from using its registered trademark as its own.

The infringement alleged by the plaintiff (Pidilite) related to three registered trademarks (two word marks “Fevicol Marine’ and one label mark showing two elephants pulling an object in opposite directions).

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[caption id=“attachment_1355123” align=“alignleft” width=“380”]  Logo taken from company website.[/caption]

According to Pidilite, the defendant company, by using the mark ‘JIVANJOR MARINE PLUS’ was infringing upon its (Pidilite’s) registered mark and was also guilty of passing off their goods as that of the Plaintiff.

Jubilant Agri & Consumer Products Ltd contended that the Pidilite’s mark is ‘FEVICOL MARINE’ and their (Jubilant’s) mark is ‘JIVANJOR MARINE PLUS’ and that both the Plaintiff and the Defendant are using the word ‘MARINE’ in a descriptive manner.

The main defence of the Defendant was that the word ‘MARINE’ is inherently descriptive, is devoid of any distinctive character, is incapable of being registered as trademark and, therefore, cannot be claimed to be a trademark of the plaintiff even though it formed part of the registered trademark/label mark ‘FEVICOL MARINE’.

“Upon perusal of all the three registered marks, I am prima facie satisfied that the word ‘MARINE’ forms a prominent and essential part or feature of all the three registered trademarks set out in the plaintiff’s suit”, said the Judge.

The court held that the defendant had tried to take advantage of the reputation of the plaintiff not only by the use of the mark ‘MARINE’/‘MARINE PLUS’ but also by the use of the copied impugned label and hence cannot be allowed to rely upon the alleged use of the mark ‘MARINE’ on other grounds.

The court held, “the defendant had adopted an essential feature of plaintiff’s registered trademark. This by itself is actionable. Actual confusion need not be proved for infringement. It is required for passing off”.

“Secondly, even for passing off, there is a clear case of deception and/or confusion. The contention of the defendant is not tenable since the defendant itself states that ‘JIVANJOR’ is its housemark. It is evident that the product identification mark used by the defendant is ‘MARINE PLUS’ and that the same is being used as a trademark.”

“The consumers can never identify the product only by the house mark and it is inevitable that the products are referred to and called out only by their product identification marks.

It is the settled position that the use of a mark as a subbrand also amounts to infringement and an injunction ought to follow”, the judge ruled.

As pointed out by the plaintiff, the products bearing the housemark ‘FEVICOL’ have achieved a turnover close to around Rs 1000 crore, out of which the turnover of the products bearing the mark ‘MARINE’ (which is only one of the products of the many products bearing the house mark ‘FEVICOL’) has exceeded Rs 100 crores, the Judge observed.

“The mark ‘MARINE’ by itself has gained tremendous reputation and goodwill and further distinctiveness and secondary meaning which is associated by the consumers, trade and public at large with the Plaintiff alone, the court said.

The invoices produced by the defendant themselves show that the products of the defendant are also referred to as ‘MARINE PLUS COP’, ‘JJ MARINE PLUS, ‘JJ MARINE PLUS CLP, ‘J MARINE PLUS COP’, i.e ‘MARINE PLUS’ being the leading and essential feature and not ‘JIVANJOR’, said the judge.

PTI