1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO.934/2009 IN SUIT No.526/2009 M/s Show Paints. ..Plaintiff -VERSUS- M/s Pidilite Industries Ltd. ..Defendant ............... Mr.Vallabh Savana, Advocate for the Plaintiff. Dr.Veerendra Tulzapurkar, Senior Counsel along with Mr.V.R.Dhond, Mr.Manish Saurastri and Mr.U.Tewari i/b Krishna & Sauratri Associates, for the Defendant. ............... CORAM: A.P.DESHPANDE, J. 23rd June, 2009.() PC:- 1 Though the motion is fixed for ad-interim relief, however, by consent of the learned counsel appearing for the parties, the same is taken up for final hearing and disposal. 2 The Plaintiff carries on business of manufacture of paints and is marketing the same under the different marks/names. It is the case of the Plaintiff that it has acquired the statutory rights in the said marks. The Plaintiff applied for registration of the trade mark RAINCOAT on 30.03.2005 falling under Clause(2) of Schedule-V of Trade Marks Act, 1999. The Plaintiff’s trade mark “RAINCOAT” was granted registration and the same is valid and subsisting. It is then contended that the trade mark RAINCOAT used by the Plaintiff in relation to the paints is highly distinctive and same is in continuous use of the Plaintiff for last several years. It is also claimed that the trade mark has acquired a unique reputation in the minds of the purchasing public and the trade on account of its excellent quality, extensive use and wide publicity, so also the same is exclusively identified and associated with the goods of the 2 Plaintiff and no one else. 3 The Defendant is also manufacturing paints and marketing the same under the trade name “DR FIXIT”. The Defendant’s trade mark is also registered. According to the Plaintiff, as the Plaintiff noticed the use of the Plaintiff’s trade mark RAINCOAT by the Defendant, the Plaintiff issued notice through an Advocate dated 24.06.2008 to cease and desist from using the mark RAINCOAT. However, instead of complying with the demand, the Defendant filed a caveat in this Court. 4 On the above referred pleadings the suit has been filed by the Plaintiff making a grievance of infringement of the trade mark. It is claimed that use of the Plaintiff’s trade mark by the Defendant is with dishonest intention and ulterior motive to confuse and deceive the customers into believing that their goods are the goods of the Plaintiff. Thus, case of passing of the goods by the Defendant as that of the goods of the Plaintiff is also sought to be made out. 5 According to the Defendant, so far as the registered trade mark is concerned the same is a combination of device/logo and the word mark. The word mark alone is not registered but the device depicting a house with flying bird together with the word “RAINCOAT” is registered. On this premise the learned senior counsel Dr.Tulzapurkar appearing for the Defendant has contended that having regard to the provisions of Section 17 of the Trade Marks Act, 1999 the Plaintiff cannot make a grievance of infringement of the trade mark RAINCOAT. In his submission Section 28 which confers rights by virtue of registration in favour of the party obtaining it is subject to the other provisions of the statute including Section 17 of the Act. Section 17 reads thus:- “17. Effect of registration of parts of a mark:- (1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole. (2) Notwithstanding anything contained in sub-section (1), when a trade mark-- (a) contains any part-- (i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or 3 (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non-distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.” 6 Conjoint reading of Section 28 with Section 17 of the Trade Marks Act brings home the legal position that the registration of a trade mark gives the registered proprietor thereof exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain the relief in respect of infringement thereof, however, subject to mandate of Section 17. Section 17(1) lays down that when the trade mark consists of several matters its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole. Sub-section (2) of Section 17 which begins with non-obstenti clause provides that sub-section (1) will not confer any exclusive right in respect of a part of the whole of the trade mark if (1) no separate application is made in respect of the part or (2) if the part is not separately registered. In the present case the trade mark consists of two parts (1) a device which is in the form of logo with design of house and flying bird therein and (2) the word mark RAINCOAT. Perusal of the registration of the trade mark reveals that both the parts together and as a whole are registered and hence, the Plaintiff cannot claim any right in respect of a part thereof meaning thereby the word mark RAINCOAT. It is not even averred by the Plaintiff that the Plaintiff/proprietor has made a separate application for registration of the part or that the trade mark in relation to any part is separately registered. Hence, it can be safely concluded that the Plaintiff has failed to make out prima facie case for grant of ad-interim injunction inasmuch as the Plaintiff can only make a claim to the whole of registered trade mark and not to a part of it viz. RAINCOAT. 7 It is next contended by the learned senior counsel appearing for the Defendant that the word mark RAINCOAT is common to the trade and is 4 not having any distinctive character. The submission is that the word mark RAINCOAT is used commonly in the context of a coat made up of water resistance material. It is also commonly used to denote a coat which protects and preserves metal and timber besides other articles. Thus, in the submission of the Defendant, any waterproof or water resistant coat deviced for protection against rain is commonly known as RAINCOAT and hence, no one can claim exclusivity or distinctiveness in use of the said word. The Defendant has placed on record enough material in the form of dictionary meaning and copies of the printouts of some of the downloads of the contents from websites in relation to RAINCOAT products and copies of the computer printouts of the downloads from websites showing the use of word and expression RAINCOAT. The material is also placed on record in the form of articles relating to the RAINCOAT from various books to substantiate that the word RAINCOAT is commonly used. Relying on the said material, the Defendant has contended that the Plaintiff’s case also falls under sub-section (2)(b) of Section 17. The submission is well merited. 8 I am of the prima facie view that the Plaintiff has failed to make out a case about infringement of the trade mark in view of the fact that the Plaintiff is making grievance of infringement of only one part of the registered trade mark. Admittedly the Defendant has not used the device/logo which forms one of the part of the registered trade mark. Having regard to the definition of mark which includes the device and word, it is clear that the device and the word together would constitute a mark. The device registered by the Plaintiff is an emblematic design or a logo and thus, the Plaintiff cannot sue for infringement only of a part of the registered trade mark. Other contentions of the Plaintiff are in relation to the action based on passing of. A bare look at the products of the Plaintiff and the Defendant would reveal that two products are entirely different in colour, label and writing thereon. The Plaintiff’s product has totally different label than that of the Defendant’s product. The Plaintiff’s product prominently depicts the device of house and flying bird whereas the product of the Defendant prominently depicts the word DR FIXIT with a man in 5 picture. Except the use of word RAINCOAT there is no similarity. It cannot be said that the product of Defendant can be passed of as that of the Plaintiff. Visual perusal of both the products would negate the claim of Plaintiff about passing of. In no case a consumer would be mistaken by one product for the other. Hence, there is no substance in the Plaintiff’s claim of passing of. It would not be out of place to state that the Defendant has registered its trade mark DR FIXIT which finds place on its product with prominence. The case of the Plaintiff for infringement of trade mark also has no merit. 9 In the result as the Plaintiff has failed to establish a prima facie case for grant of interim relief, hence, the motion stands dismissed. JUDGE kps