Bombay High Court: In the present case, the applicant, Pidilite Industires Ltd. filed an application claiming that the defendant, Innovation Coatings Pvt. Ltd., by using the mark “INOVA 1K PUR” was infringing the applicant’s registered trade mark “1K PUR”. A Single Judge Bench of Manish Pitale, J., opined that the defendant by adopting “1K PUR” in its mark and failing to make out a case about the same being a commonly used trade description, adopted the mark in a dishonest manner. The Court also opined that not only was the defendant blowing hot and cold at the same time by doubting the registration of the applicant’s trade mark on the one hand and on the other hand applying for registration of its own mark, it was also taking the risk of seeking registration when the trade mark “1K PUR” of the applicant was already registered and formed part of the register of the Trade Marks Registry.
The Court thus held that till the final disposal of the suit, the defendants were restrained from manufacturing, marketing, selling, advertising, offering to sell or dealing in the impugned products or adhesives or any similar goods or any other goods bearing the applicant’s mark “1K PUR” (with or without any other mark), or any other mark/label identical with or similar to or in any manner comprising of the mark “1K PUR”.
Background
The applicant stated that its registered trade mark “1K PUR” was used in connection with its adhesive products along with its well-known registered trade mark/house mark “FEVICOL”. The said adhesive product bearing the registered mark “1K PUR” was one component ready to use moisture curing fast setting adhesive with gap filling properties. The registration for trade mark “1K PUR” was dated 20-7-2013 with user claim since 13-10-2006, while the registration for the mark “FEVICOL 1K PUR” was dated 20-7-2013 with user claim since 13-10-2006. The applicant also had registration for the label mark/device mark 
, which was dated 3-1-2008. The applicant thus claimed statutory rights in its registered trade mark “1K PUR”, and also, common law rights based on continuous use since 2006.
The applicant came across defendant’s products in 2021, which had the mark “INOVA 1K PUR”. On 16-3-2021, the applicant sent a cease-and-desist notice to the defendant, alleging that by using the impugned mark “INOVA 1K PUR” on its adhesive product, it was indulging in infringement of the applicant’s registered mark and that it was passing off its product as that of the applicant. Further, in July 2021, the applicant come across trade mark application filed by the defendant on 5-4-2021, seeking registration of the impugned mark “INOVA 1K PUR” in class 1, on proposed to be used basis. The applicant stated that the filing of the said application by the defendant, after receiving the cease-and-desist notice from the applicant, showed its malafide and dishonest conduct.
The defendant claimed that the use of “1K PUR” on its product was a trade description, which literally meant one component polyurethane resin and it was submitted that the applicant fraudulently obtained registration for such trade description. It was also submitted that despite registration of the mark of the applicant, i.e., “1K PUR”, the applicant could not claim any exclusive right to use the same, particularly when it could be demonstrated that since the year 1930, “PUR” was a known abbreviation for polyurethane resin/reactive and “1K” meant one component. Thus, such a generic trade description could certainly not be used by the applicant exclusively as its trade mark.
The defendant submitted that the expression “1K PUR” was common to trade and its origin pertained to the German word “Komponente”, which meant “Component”. Whereas the applicant stated that the defendant could not rely upon the German word “Komponente” as the origin for the expression “1K”, to claim that it was a commonly used trade description in India, because the said word was not commonly used or understood in India.
Analysis, Law, and Decision
The Court did not agree with the defendant’s contention that “1K PUR” was used in a descriptive sense, indicating the nature of the adhesive. The Court noted that in the defendant’s application, it did not incorporate any condition or limitation to the use of the impugned mark and registration was sought for the entirety of the mark “INOVA 1K PUR”. Further, the defendant used the words “Moisture Curing Polyurethane Adhesive” in a descriptive sense to state the nature of the adhesive, thus, the Court opined that it was clear from the way the impugned mark “INOVA 1K PUR” was being used on the impugned product, that “1K PUR” formed an integral and essential feature of the trade mark and was used in a trade mark sense and not in a descriptive sense.
The Court, after considering the applicant’s registered trade marks/label mark, i.e., “1K PUR”, “FEVICOL 1K PUR” and 
, opined that due to continuous use since the year 2006 with registrations dating back to the years 2008 and 2013, it could be said to be a product identification mark/brand as the house mark of the applicant i.e. “FEVICOL” was in use for a considerable period of time.
The Court rejected the defendant’s contention that the expression “1K PUR” was common to trade or publici juris, and opined that a party asserting that a word or expression had become common to trade or publici juris, must place on record substantial material to support such a contention and must satisfy the test of extensive, actual, and continuous use of such an expression in the market, which necessarily entailed detailed material to be placed on record showing sales figures and other such material of third parties using such an expression or mark extensively, substantially and continuously.
The Court did not agree with the contention that the alphabet “K” used in the mark “1K PUR” referred to the word “Komponente” in German language and that it was a commonly used trade description in India. The Court stated that even if a word or expression might be commonly used in another jurisdiction or Country, in the absence of the same being used commonly in India, a party could not claim that the said word was commonly used in trade and hence, could not form part of a trade mark.
The Court opined that the defendant by adopting “1K PUR” in its trade mark and failing to make out a case about the same being a commonly used trade description, could be said to have adopted it in a dishonest manner. Thus, a prima facie case was made in the applicant’s favour. The Court opined that not only was the defendant blowing hot and cold at the same time by doubting the registration of the applicant’s trade mark on the one hand and on the other hand applying for registration of its own mark, of which one of the leading feature was the applicant’s mark, and it was also taking the risk of seeking registration when the trade mark “1K PUR” of the applicant was already registered and formed part of the register of the Trade Marks Registry.
The Court opined that a strong case was made out by the applicant to claim that by incorporating “1K PUR” as a leading and essential feature in the impugned mark “INOVA 1K PUR”, the defendant was seeking to pass off its products as that of the applicant and therefore, a prima facie case for the action of passing off was made out against the defendant.
The Court allowed the application and held that till the final disposal of the suit, the defendants, its directors, proprietors, partners, owners, servants, subordinates, representatives, stockists, dealers, agents and all other persons claiming through or under them or acting on their behalf or under their instructions be restrained by an order and injunction from manufacturing, marketing, selling, advertising, offering to sell or dealing in the impugned products or adhesives or any similar goods or any other goods bearing the impugned mark “1K PUR” (with or without any other mark), or any other mark/label identical with or similar to or in any manner comprising of the mark “1K PUR” of the applicant.
[Pidilite Industries Ltd. v. Innovation Coatings (P) Ltd., 2025 SCC OnLine Bom 1543, decided on 25-4-2025]
Advocates who appeared in this case:
For the Applicant/Plaintiff: Hiren Kamod a/w Nishad Nadkarni, Aasif Navodia, Khushboo Jhunjhunwala, Rakshita Singh, and Jaanvi Chopra i/by Khaitan & Co. for Applicant/Plaintiff.
For the Defendant: Alankar Kirpekar a/w Shekhar Bhagat, Ayush Tiwari, Rajas Panandikar, Chinmay Pagedar i/by Shekhar Bhagat and Neelaja Kirpekar for Defendant.
