{"id":310543,"date":"2024-01-02T17:00:32","date_gmt":"2024-01-02T11:30:32","guid":{"rendered":"https:\/\/www.scconline.com\/blog\/?p=310543"},"modified":"2024-01-05T16:25:30","modified_gmt":"2024-01-05T10:55:30","slug":"calcutta-high-court-dismisses-berger-paints-trademark-infringement-plea-against-jsw-paints-scc-blog","status":"publish","type":"post","link":"https:\/\/www.scconline.com\/blog\/post\/2024\/01\/02\/calcutta-high-court-dismisses-berger-paints-trademark-infringement-plea-against-jsw-paints-scc-blog\/","title":{"rendered":"Calcutta High Court dismisses Berger Paint\u2019s trademark infringement plea against JSW Paints due to lack of deceptive similarity"},"content":{"rendered":"
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Calcutta High Court:<\/span> While deciding whether the defendant’s use of “SILK” constitutes trademark infringement or is merely a descriptive term in the paint industry, a single-judge bench comprising of Krishna Rao,* J.<\/span>, took into account the distinctive features of each party’s label marks and the absence of fraudulent intent by the defendant and dismissed the petitioner’s application for injunction.<\/p>\n

“Upon examining the containers and labels, this Court found that there is no actual similarity between the marks “SILK” of both the plaintiff and the defendant. This Court held that the plaintiff failed to establish deceptive similarity.”<\/p>\n

Factual Matrix<\/p>\n

In the instant matter, the petitioner-plaintiff, Berger Paints India Ltd., filed an application seeking an injunction to restrain the defendant-respondent from infringing its registered trademark “SILK” by using the trademark “HALO SILK”. The plaintiff, originally incorporated in 1923 as Hadfields India Ltd., has evolved into Berger Paints India Ltd. and has a significant international presence. The plaintiff owns over 250 trademarks in India, including the registered trademark “SILK” adopted in 1980 for paint products. In December 2019, the plaintiff discovered that the defendant, a newcomer in the paint industry, was using the mark “HALO SILK” for its products. The plaintiff issued a legal notice to cease and desist, but the defendant refused to comply. The defendant, a newcomer in the paint industry, has been marketing its products using the mark “HALO SILK”, leading to a legal dispute.<\/p>\n

Petitioner’s Contentions<\/p>\n

The plaintiff contended that “SILK” has been used since 1980 and has become a highly sought-after brand in the field of paint and allied products. It was contended that the plaintiff conducted extensive promotional campaigns to establish the reputation of its trademark “SILK”. The plaintiff alleged that the defendant’s use of “SILK” in conjunction with “HALO” infringes on its well-known trademark, causing confusion and taking advantage of the plaintiff’s reputation. The plaintiff asserted that the defendant has no right to use the “SILK” mark, as it is the exclusive property of the plaintiff for paint products.<\/p>\n

Respondent’s Contentions<\/p>\n

The defendant argued that “SILK” on the defendant’s packaging is used to describe the characteristics\/quality\/finish of its products, not as a trademark. The defendant claimed that the use of “SILK” is industry jargon indicating a mid-shine finish and easy maintenance. According to the defendant, the term “SILK” for paint finish is customary in the trade and not capable of exclusive protection. 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.<\/p>\n

Moot Point<\/p>\n

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  1. \n

    Whether the defendant’s use of “SILK” amounts to infringement constitutes trademark infringement or if the term is merely descriptive and customary in the paint industry?<\/p>\n<\/li>\n

  2. \n

    Whether the plaintiff can claim exclusive rights over the term “SILK”?<\/p>\n<\/li>\n<\/ol>\n

    Legal Provisions<\/p>\n