Bombay HC restrains Jubilant Agri from infringing Pidlite's trademark


Court :
Bombay High Court

Brief :
The Bombay High Court restrained Jubilant Agri & Consumer Products Limited not to use words like 'Marine' in its products, which infringes on Pidilite Industries Limited brand 'Fevicol Marine'

Citation :
I.T.C. Limited Company vs. G.T.C. Industries Ltd. and another Asian Paints Ltd. vs. Home Solutions Retail (India) Ltd.  Carew Phipson Ltd. vs. Deejay Distilleries Hem Corporation Private Limited  and Ors. vs.  ITC Limited Ultratech Cement Limited vs. Alaknanda Cement Pvt. Ltd. Corn Products Refining Co. vs.  Shangrila  Food  Products Ltd F.D. Diesel vs.  S.M. Diesel Shaw Wallace and Company Ltd. and another vs. Mohan Rocky Spring Water Breweries Ltd

Bombay High Court

 KPPNair 1                                    NMSL 1717 of 2013  

IN THE HIGH COURT OF JUDICATURE AT BOMBAY

ORDINARY ORIGINAL CIVIL JURISDICTION 

NOTICE OF MOTION (L) NO. 1717 OF 2013

 IN

SUIT  (L) NO. 752  OF 2013

Pidilite Industries Limited  ...Applicant

In the matter between:

Pidilite Industries Limited  ...Plaintiff

        vs.

Jubilant Agri & Consumer Products Limited  ...Defendant

Mr. V.R. Dhond, Senior Advocate, along with Mr. Nishad Nadkarni, Mr. Vaibhav Keni 

and   Mr.   Sumeet   Rane,   instructed   by   M/s.   LEGASIS   PARTNERS,   for   the 

Applicant/Plaintiff.

Mr. Ravi Kadam, Senior Advocate, along with Mr. A.A. Kirpekar, instructed by M/s. 

MAG LEGAL, for the Defendant. 

                

                   CORAM:    S.J. KATHAWALLA, J.

           Order reserved on:         10th

       October, 2013

            Order pronounced on:     13th 

      January, 2014

ORDER:

1. The above Suit is filed by the Plaintiff against the Defendant on the ground 

that the Defendant  is infringing the registered trademarks of the Plaintiff, infringing 

the copyrights  of the Plaintiff and committing the tort of passing off  its goods as the 

goods of the Plaintiff in the circumstances set out in the Plaint.  

 

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2. By  the above Notice of Motion,  the Plaintiff has sought ad­interim/interim 

reliefs restraining the Defendant from infringing the trademarks and copyrights of 

the Plaintiff and/or committing the act of passing off its goods as that of the Plaintiff. 

3. By an ex  parte order dated 29th August,2013, ad­interim injunction in terms 

of prayer clauses (a) and (b)  of the Notice of Motion have been granted in favour of 

the Plaintiff and against the Defendant which prayers are reproduced hereunder:

“(a)  That  pending  the hearing and final disposal of  the  suit,  the  

Defendants,   its   Directors,   proprietors,   partners,   owners,   servants,  

subordinates, representatives, stockists, dealers, agents and all other 

persons   claiming     under   them   be   restrained   by   an   order   and  

injunction   of   this   Hon'ble   Court   from   infringing   the   Plaintiff's 

MARINE   Registered   Marks   bearing   registration   Nos.   1319822,  

1319821 and 1319823 in any manner and from using in relation to  

Impugned Goods or any other goods for which the MARINE Marks 

are registered or any goods similar to the goods for which MARINE  

Registered Marks are registered,  the  Impugned Mark or any other 

mark which is identical or similar to MARINE Registered Marks or 

any  essential feature  thereof including  the mark MARINE  or  any  

other   marks   similar   thereto   and   from   manufacturing,   selling,  

offering for  sale, advertising  or dealing in  Impugned goods under 

Impugned Mark and from manufacturing, selling offering for sale,  

advertising or dealing in any goods (for which MARINE Registered  

Marks are registered or which are  similar  to  the goods for which  

MARINE  Registered Marks    are  registered)  bearing  the  Impugned  

Mark or any other mark which is identical or similar to  MARINE  

Registered Marks or any essential feature thereof including the mark  

MARINE or any other marks similar thereto;

 

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(b)     That pending the hearing and final disposal of the suit, the  

Defendants,   its   Directors,   proprietors,   partners,   owners,   servants,  

subordinates, representatives, stockists, dealers, agents and all other 

persons   claiming     under   them   be   restrained   by   an   order   and  

injunction of this Hon'ble Court from infringing in any manner the  

Plaintiff's copyright in the artistic work comprised in/reproduced on  

either   of   the   MARINE   Artistic Works   including   in   particular   the  

MARINE Artistic Work 2 and MARINE   Artistic Work 3 and from  

reproducing/copying the said artistic works or a substantial part of 

the said artistic works (including in particular the depiction of the  

plywood in a slanting manner floating in water which is splashing  

along   with   droplets   of   water)     on   the   Impugned   Goods   or   the  

Impugned Labels (including those depicted at Exhibit K to the Plaint)  

or any bottles, cartons, packaging material or advertising material,  

literature  or   any   other    substance   and  from   manufacturing  and  

selling or offering for sale products upon or in relation to which  the  

said artistic works have been reproduced or substantially reproduced  

or by issuing copies of such works to the public”.

The Notice of Motion is now taken up for final hearing. 

4. The   infringement   alleged   by   the   Plaintiff   relates   to   three   registered 

trademarks (two word marks and one label mark), which marks along with  their 

registration numbers are reproduced hereunder as A, B and C respectively.  

 

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A

                   

             FEVICOL MARINE

      Reg. No. 

1319822 (Word 

mark)

B

         

 

      Reg. No. 

1319821 (Word mark)

C

       Reg. No. 

1319823 (Label 

mark)

5. The   Registration Certificates in respect of the above three registered marks 

are at pages 58, 61 and 63 of the Plaint.  All three registrations are effective since  9th 

November, 2004. Two registrations (Pages 58 @ 59 and 61 @ 62 of the Plaint) have 

a user claim of 1st May, 2003. The third registration (Page 63 @ 64 of the Plaint) has 

a user claim of 1st May, 2003.  The Plaintiff has laid stress on the fact that  all the 

three registrations are absolute and unconditional, and in particular the Registrar, 

although   entitled   to,   did   not   impose   any   condition   or   limitation   on   the   word 

'MARINE' whilst granting registration and resultantly registration has been granted 

 

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in respect of the entirety of the marks. 

6. In   addition   to   the   three   registered   trademarks,   the   Plaintiff   has   filed 

applications for registration in respect of five other trademarks, particulars of which 

are given hereunder:

Trademark Reg/Appln. Details Class  Status

FEVICOL MARINE (label) 2110954 1 Pending 

MARINE 1918007 1 Pending 

MARINE  1972339 1 Pending 

FEVICOL MARINE(Label) 2110954 1 Pending 

FEVICOL MARINE(Label) 2425737 1 Pending

As can be seen  from  the  table above,  three of  the  five applications are  for label 

marks and two applications are in respect of the word marks, and that all the five 

applications are pending registration.  The two pending word marks  applications are 

in respect of the word 'MARINE'  (by itself/stand alone).  These applications have 

been numbered 1918007 and 1972339.  A perusal of the advertisement in respect of 

Trademark Application No. 1972339 (for the word mark 'MARINE' ) establishes  that 

the user claimed therein  has been since 2003.  According to the Plaintiff, due to an 

inadvertent   error,   Trademark   Application   No.   1918007   also   for   the   word   mark 

'MARINE'  wrongly mentioned the user claim  as “proposed to be used”.  According 

to  the Plaintiff, upon  this error being noticed, the Plaintiff filed an application  in 

Form TM­16 for amending the user  claim date, copy of which is tendered in Court. 

7. According   to   the   Plaintiff,     the   Defendant   by  using   the  mark   'JIVANJOR 

 

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MARINE   PLUS' is  infringing  the  Plaintiff's   registered mark  and is  also  guilty  of 

passing off their goods as that of the Plaintiff.  

8. The Defendant contends that the Plaintiff's mark is 'FEVICOL MARINE'  and 

the Defendant'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 is 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 forms part of the 

registered trademark/label mark 'FEVICOL MARINE'.  

9. As submitted by the Plaintiff it is essential to examine at the outset, whether 

the word 'MARINE'  forms an essential part of each  of the three registrations set out 

as A, B and C in paragraph 4 above. I have perused the three marks set out as A, B 

and C in paragraph 4 above.   As  can be seen from the said marks, what is set out at 

A is  the word mark  'FEVICOL MARINE'.     The  two components of  the  registered 

word mark are the word 'FEVICOL' and the word ‘MARINE' which are arranged side 

by  side.     Both  these words  are in  the  same  font  and of  the  same  size  and  are 

therefore of equal prominence.   At B,  the registered word mark 'FEVICOL MARINE' 

is set out. This word mark consists of the words 'FEVICOL MARINE'   written one 

below the other.   The word 'FEVICOL'   is written in a font which is slightly larger 

than the word 'MARINE' .  The word 'MARINE'   however,  notwithstanding the slight 

difference in the font size, is very prominent and therefore constitutes a prominent 

 

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and essential feature of the registered mark and cannot be  regarded as insignificant 

or inconsequential or non essential or not noticeable.   The mark  set out at C in 

paragraph 4 above, is a label mark consisting  of the device of two elephants pulling 

a sphere and the words 'FEVICOL' and 'MARINE'  written one below the other.  Once 

again both these parts are of comparable prominence and the word 'MARINE'  forms 

an essential and prominent part of the registered mark as well.  The word 'MARINE' 

therefore cannot be regarded as inconsequential or insignificant or non essential or 

something that will not be noticed. 

9.1 It       is   also   correctly   submitted   on   behalf   of   the   Plaintiff   that   when 

comparing two marks (a registered mark and the offending/impugned mark) in an 

infringement action, the Court will compare the offending/impugned mark with the 

prominent and essential features of the registered marks and that the Court is not 

required to only compare the single most prominent feature of the registered mark. 

In other words, in the exercise  of comparing rival marks, more than one prominent 

and essential feature can exist.

9.2 Therefore 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 at A, B and C in paragraph 4 above. 

10. The Plaintiff has  submitted    that  the products bearing  the Suit marks  are 

promoted and/or advertised and/or bought and/or sold  and/or associated with the 

mark/word   'MARINE'   and   not   merely   'FEVICOL   MARINE'.     This   submission   is 

vehemently denied/disputed by the Defendant.  

 

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10.1 As pointed out by the Plaintiff, its business activity  extends to manufacture 

and sale of (i) adhesives;  (ii) sealants; (iii) construction and paint chemicals; (iv) 

automotive chemicals; (v) art material, (vi) industrial and textile resins; and (vii) 

organic pigments and preparations.  This diversity of business and products is carried 

out  by  the  Plaintiff  through  various  divisions.    One  such  division is  the  Fevicol 

Division.   The Fevicol Division manufactures and/or markets several products under 

different brand names such as: (i) MARINE ; (ii) DDL; (iii) SPEEDX; (iv) PL­111, (v) 

NAIL FREE, etc.   These products cater to different segments and/or are for different 

purposes (e.g. NAIL FREE is an adhesive used in relation to   glass and/or mirror; 

'MARINE'  is an adhesive used in relation to wet and/or humid conditions). These 

individual products are identified and/or distinguished from one another by using 

different brand names.   These  brand names  are  known  as  product identification 

marks/brands.  'MARINE'  is one such sub­brand/product identification mark. When 

used in conjunction with the house mark  ‘FEVICOL'  or independently thereof, the 

product identification marks/brands indicate  and/or  connote  to  the  trade  and/or 

members of the public (i) what that product is (e.g. 'MARINE'     brand adhesive); 

and/or (ii) with which house brand (in FEVICOL)  the same is associated.  This is 

necessary since the product bearing one product identification mark/brand cannot or 

may not meet the purpose of another product bearing another product identification 

mark, even though both products may bear the same house mark ‘FEVICOL'.  Hence 

the  product  identification marks/brands  serve  to  distinguish  and/or identify  the 

individual product in question.  The product identification marks/brands therefore 

serve  the important purpose of identifying  and/or distinguishing one product from 

 

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the other.   It is for this reason that the Plaintiff had obtained separate trademark 

registrations and/or  filed separate  trademark applications  for  the various product 

identification marks/brands.      The  Plaintiff  has  at  pages  41  to  52  of  the  Plaint 

annexed       its   catalogue   which   shows   the   use   of   several   product   identification 

marks/brands. The Plaintiff  is therefore correct in its submission that no one will 

go to a shop and ask for ‘FEVICOL'. If he does so, he will be asked, “what ‘FEVICOL ' 

product?”.

10.2 The Plaintiff has in support of its contention that in the trade, products are 

known   by,   called   for   and   sold     with   reference   to   these   product   identification 

brands/marks, placed on record some of the bills and/or invoices.  Pages 35 to 40 

are  the invoices which show  that individual products are  referred  to and/or sold 

and/or purchased with reference to product identification marks/brands.  A perusal 

of  the same shows  that  the invoices issued by  the Plaintiff as well  as  the orders 

received by the Plaintiff  refer to a product  only by the different brand  names like 

'MARINE', ‘DDL', etc. (i.e. without use of the housemark 'FEVICOL'). The Plaintiff has 

in paragraphs 10, 11, 12, 13 and 14 of the Plaint  referred  to: (i) the  sale  of the 

Plaintiff's product under the 'MARINE'  mark; (ii) the success and popularity of the 

products bearing the 'MARINE' mark; (iii) the goodwill generated in respect of the 

'MARINE' mark/'MARINE'   products; and   (iv) the efforts made by the Plaintiff to 

advertise/promote the 'MARINE'   products/brand.  It is evident  from the Certificate 

of Khanna & Panchmia, Chartered Accountants, dated 17th  July, 2013, annexed as 

Exhibit­H1   to   the   Plaint,   that   the   Plaintiff   began   the   sale   of   'MARINE'   labelled 

products/commenced the use of the 'MARINE' brand from the Financial Year 2003­

 

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2004. It is the case of the Defendant that   they commenced using the   impugned 

mark in June, 2012.   If the sales figures of the Plaintiff upto 31st March, 2012 are 

considered, the aggregate sales by the Plaintiff till 31st March, 2012, are in excess of 

Rs. 130 crores.  If half of the sales for the Financial Year 2012­2013 (period April to 

September) are added, the total sales are in excess of Rs. 180 crores.  Consequently, 

by the time the Defendant commenced the use of the impugned mark, the Plaintiff 

had been in the market for more than nine years and had aggregated sales in excess 

of Rs. 180 crores.   

10.3    The Defendant has submitted that  there are several products available in 

the market containing the mark 'MARINE'. However, the Defendant has been unable 

to show    the sales of  the other  'MARINE' products. Therefore,  the extensive   and 

continuous sales of the Plaintiff's 'MARINE' products/use of the 'MARINE'  mark has 

to be seen in the backdrop of the fact that the Defendant has been unable to place 

before this Court sufficient material to show any significant sales of other 'MARINE' 

products.  Consequently as submitted by the Plaintiff, the position that emerges is 

that the Plaintiff was the only one who was manufacturing and/or selling products 

(of any significant volume) with the 'MARINE'  trademark. Resultantly, a person who 

wanted the 'MARINE'  adhesive would ask for ‘MARINE'  and not 'FEVICOL MARINE' 

as there was no other 'MARINE'  branded products in the market for him to need the 

addition of the prefix 'FEVICOL'  to distinguish one 'MARINE'  from the other.  The 

Plaintiff has also correctly submitted that when a customer goes to a shop to buy 

biscuits  depending on what  he wants,  he  simply  asks  for  them  by  their  product 

identification  mark/brand   or   sub­brand   e.g.  'Marie'   or   'Monaco'  or   'Goodday'   or 

 

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'Krackjack' or '50:50' or 'Maska Chaska'.  He does not preface it with the name of the 

manufacturer i.e. Parle or Britannia.  

10.4 In the circumstances,  it is clear that by reason of open, continuous and 

extensive sales over a period of about nine  years, the mark 'MARINE' either by itself 

or as a component/constituent of the registered trademark 'FEVICOL MARINE' has 

acquired a secondary meaning/further distinctiveness and has become exclusively 

associated with the Plaintiff.

11.   It is submitted on behalf of  the Defendant  that  the word  'MARINE' is    a 

common dictionary word and that until the application for the word mark  'MARINE' 

proceeds   for   registration,   no  monopoly  in   respect   thereof   can   be   granted.   It   is 

submitted that granting reliefs to the Plaintiff will amount to creating a monopoly in 

the Plaintiff's favour over a common word in the English language and that the Court 

should be slow in passing any orders which would have this effect.  The Plaintiff has 

relied upon  the judgment of  this Court in  the case of  I.T.C. Limited Company vs. 

G.T.C. Industries Ltd. and another1

   and the decision in the English Law of Joseph 

Crosfield cited therein to urge that the word 'MARINE' is a “part of the great common 

of the English language” and/or “devoid of distinctive character” and/or “not capable 

of distinguishing  the goods of one  trader  from  another” and  therefore  the Court 

would be  in error in granting an injunction.  

11.1 As set out hereinafter, the Defendant has itself applied for registration of a 

mark described by it as the 'MARINE PLUS' (Label) comprising of the words 'MARINE 

1 2002 (25) PTC 465 Bom.

 

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PLUS' as its leading and essential feature and is therefore estopped from contending 

that the word 'MARINE' is descriptive or has become  publici juris    or ‘common  to 

trade'.   By  the act/action of making the application, it manifested its own state of 

mind/understanding that 'MARINE PLUS' used by it was used as a mark.  This is not 

in any way altered/diluted/affected by the subsequent withdrawal of the application 

(on legal advice) post the filing of the Suit. 

11.2 The Defendant itself has contended that the word 'MARINE' is a dictionary 

word, meaning “of or relating to the sea” (as defined in the Oxford English Reference 

Dictionary). The dictionary meaning   “of or  relating  to  the  sea” does not in  any 

manner describe the products of the Plaintiff/Defendant or the characteristics of the 

products of  the Plaintiff/Defendant. The word  'MARINE'   is not descriptive of the 

products  of the Plaintiff/Defendant.  The Defendant has also relied on the meaning 

of the word 'MARINE GLUE' as “glue that is not water soluble”.  The word 'MARINE 

GLUE' finds no mention in the Oxford Dictionary, but only in an online dictionary, the 

author, veracity or acceptance of which is not known and which is neither a widely 

accepted nor a renowned dictionary as the Oxford Dictionary.     Added to  this, as 

stated hereinabove, the fact that the Defendant itself  applied for registration of the 

same as a trademark, inherent in which  is the admission that 'MARINE' is distinctive 

and in any event capable of distinguishing the products of one person from  those of 

another and is capable of being registered as a  trademark. The contention of  the 

Defendant     that   the   word   'MARINE'     is   a   common,   customary   term,   generic, 

laudatory or non­distinctive mark  within the meaning of Section 9 (c ) of the Trade 

Marks   Act,   1999   (“the   Act”)   in   relation   to   “waterproof   adhesives”     cannot   be 

 

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accepted.    The  Plaintiff is  correct in its  contention  that  persons  purchasing  the 

products of  the Plaintiff and  the Defendant   would normally   be carpenters, who 

would not be necessarily aware of the alleged meaning of the word 'MARINE' and 

the descriptive nature of the mark, if any, (which is denied by the Plaintiff), and is of 

no significance to  them,   and any   product bearing  the mark 'MARINE' would be 

associated by them with the Plaintiff and purchased accordingly.  

11.3     The Judgment of this Court in I.T.C. Ltd. vs.  G.T.C. (supra),  or for that 

matter the English decision of   Joseph Crosfield cited therein   have absolutely no 

application or relevance to the present case.   The judgment of this Court in  ITC, as 

also  the case of Joseph Crosfield makes it apparent  that  the said case pertain  to 

rectification.  In the case of ITC (supra), the  Registry had rejected  an opposition 

that  the mark  applied  for   was  a    common word  and/or non distinctive  and/or 

descriptive and/or laudatory and granted  registration.  The grant of registration was 

challenged before the High Court in a rectification petition. The subject matter of 

the   challenge   in   the   proceedings   before   this   Court   was   the   validity   and/or 

correctness of the registration granted.   It is as a part of this inquiry that the Court 

considered whether the word 'Gutsy' could be registered i.e. whether it was capable 

of distinguishing goods of  the  trader or of a non distinctive character. The  same 

inquiry was done in the case of Joseph Crosfield.   This inquiry cannot be made or be 

gone   into   in   the   present   case.   The   present   action   is   one   of   infringement.   The 

correctness of  the  registration has been conceded. The Registry has held  that  the 

marks in question (whose registration has been granted) are fit to   be registered. 

They have been found to be: (i) capable  of distinguishing the goods of one trader; 

 

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and (ii) not descriptive or of a distinctive character.   As submitted by the Plaintiff 

therefore the correct question to  be addressed is  what does the registration cover? 

Does it include 'MARINE' or does it exclude 'MARINE'?   If 'MARINE' is included, an 

action for infringement will lie and the Defendant can only rely upon the statutory 

defences  (Sections 30 and 35 read with Section 17 of the Act). If 'MARINE' is not 

included, the infringement part of the action will fail. Therefore  there cannot be a 

third option.  I have already reached a prima facie finding as set out in paragraph 9.2 

hereinabove that the word 'MARINE' forms a prominent and essential part or feature 

of all the three registered trademarks set out at 'A', 'B' and 'C' in paragraph 4 above.  

11.4 In   any   event,   even   otherwise   there   is   no   substance   in   the   Defendant's 

contention. This is because  there is no absolute and/or total and/or complete bar to 

the registration of a common word. An ordinary word can become distinctive by use. 

In the present case, the Plaintiff has been the only user of the 'MARINE' mark  in the 

market since 2003  and has used it extensively and on a pronounced scale for nine 

years. 

11.5 Relying on the decision of the Learned Single Judge of this Court in    Asian 

Paints Ltd. vs. Home Solutions Retail (India) Ltd. 2

,  the Defendant contended that this 

decision   is   an   authority   for   the   general   proposition   that   where   the   Plaintiff's 

registered trade mark contains descriptive/non­distinctive content, injunction must 

be refused. The facts of the case were as under:

(i) The Plaintiff was the registered proprietor of the device/label mark “ASIAN 

PAINT HOME SOLUTIONS”.  The device/label was an artistic work which depicted a 

2 2007 (35) PTC 697

 

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house in the alphabet “O”.  The registration  covered goods (inter alia paints) under 

Class 2.   The Plaintiff had secured no registration in respect of services. 

(ii)  The Defendant on the other hand was offering ‘services' in respect of home 

care convenience and utility stores offering home products of other manufacturers 

under their brand name under one roof.

(iii) In   relation   to   these   services,  the   Defendant   was   using   the   mark   “HOME 

TOWN” and not “HOME SOLUTIONS”.

(iv) The Defendants contended that the adoption of its corporate name  “Home 

Solutions   Retail   (India)   Ltd.”   was   bona   fide   because   the   corporate   name   was 

descriptive of the intended business of the Defendant Company.   In this context, the 

Court made the following observations:

(a) In paragraph 5, the Court concluded that having regard to the fact that the 

registration   covered   goods,   and   the   Defendant's   mark   was   used   in   relation   to 

services. The Court  therefore held  that,“Thus understood, it will not be a case of 

infringement of registered trademark as such”;

(b) In paragraph 7 the Court answered the question whether the rival marks were 

identical  or  deceptively  similar.    The  Court  concluded  that  there  was  a marked 

difference in the rival marks viz. “ASIAN PAINTS HOME SOLUTIONS”  and “ HOME 

TOWN”. The Court therefore answered the issue by observing that, “ By no standards 

it can be said that the two marks are identical or similar”.  A similar finding is to  be 

found in paragraph 10 of the judgment.  

(c)    In paragraph 8, the Court noted the Plaintiff's argument that the adoption by 

the Defendant of  the mark “HOME SOLUTIONS” in its corporate name was mala 

 

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fide. The Court answered it in the negative, in paragraph 9, by observing that the 

corporate name of the  Defendant was reflective of its intended business namely that 

of offering services (solutions) in respect  of homes. A similar finding is to be found 

in paragraphs 10 and 13 of the judgment. 

(d)     It was in this backdrop that the Court accepted the defence based on Section 

30 (2) and Section 35 of the Act.   Even whilst doing so, the Court caveated  it by 

saying that, “at this stage of the proceedings” and “at least at this ad­interim stage”. 

11.6    The observations in the above judgment in the said decision are therefore to 

be viewed and construed in the context of that matter.  They do not lay down any 

general  proposition of law. All that  is observed therein is that in that case on the 

basis of the material before it, at that stage (ad­interim) the court was satisfied that 

the expression “HOME SOLUTIONS”   was generic  and  publici juris and inherently 

incapable   of   becoming   distinctive   of   any   single   person.       The   present   case   is 

completely different.  In this case the marks are not different or dissimilar; both the 

parties are using it in relation to goods i.e. there is no goods vs. services issue.  The 

Defendant's adoption as set out hereinafter is prima facie lacking in bona fides and 

no material  has been placed on record to show that the mark is publici juris. The 

Defendant's defence on “descriptive” fails on facts in the present case since ‘MARINE' 

is not descriptive and in any case has been used as a trademark. The said judgment is 

of no assistance to the Defendant. 

11.7 The Defendant has also relied on the judgment in the case of Carew Phipson 

Ltd. vs. Deejay Distilleries3 wherein  it is held that purely descriptive terms are totally 

3 AIR 1994 Bom 231

 

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unregisterable.  However this judgment has no application to the present case since 

the case in question is one of passing off.    The Plaintiff therein  therefore could 

claim  no statutory monopoly. The principles which  govern a case of infringement 

and those which  govern a case of passing off are very different on many issues.  In 

an infringement  action,  the Defendant must  bring itself within  the  ambit  of  the 

statutory exceptions/defences provided in the Act itself (Sections 17, 30, 35, etc.). As 

set out hereinafter, in the present case it has clearly failed. Hence the judgment is of 

no relevance.  Moreover, as set out above, the word 'MARINE' is not descriptive of 

the Defendant's product and by reason of open, continuous and extensive sales over 

9 years has become distinctive of the Plaintiff and its products. 

11.8 I am therefore prima facie of the view that the submissions of the Defendant 

as recorded in paragraph 11 hereinabove cannot be accepted. 

12. The Defendant has also submitted that the Plaintiff has been using the word 

‘MARINE'  in a descriptive manner and in fact the Plaintiff has never used and/or 

promoted the stand alone word 'MARINE'  as a trademark.  It is submitted that it is 

amply clear from the Plaintiff's product specifications, product features and benefits, 

label highlights, tag lines of the Plaintiff's promotional material etc.  that the term 

'MARINE' is used by the Plaintiff to designate   the characteristics and quality and 

intended purpose of its products.  It is submitted that the Defendant is also using the 

word   'MARINE'     in   a   descriptive   manner     to   describe   that   the   water   insoluble 

adhesive  is to be used for  'MARINE  PLY'  and the said adoption is therefore honest 

and bona fide.  

 

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12.1 The   Learned   Senior   Advocate   appearing   for   the   Plaintiff   has  in   response 

submitted that the manner in which the Plaintiff is using the word 'MARINE'  is to be 

judged primarily  from  the  product  of  the Plaintiff. Additionally,  reference can be 

made to: (i) the manner in which the word 'MARINE'  is shown in advertisements; 

and (ii) the manner in which products bearing the mark 'MARINE'  are purchased 

and sold in the trade.   If any one of the above is considered, it will immediately 

become apparent that the Plaintiff is using the word 'MARINE'  as a mark and not in 

a descriptive sense.  

12.2 I have in the earlier paragraphs of this order already recorded my prima facie 

finding that  the word 'MARINE' forms a prominent and essential part or feature of 

all the three registered trademarks set out at A, B and C in paragraph 2 above and 

that  the mark  'MARINE' in relation    to  the business of adhesives has come  to be 

exclusively identified and/or associated with the Plaintiff alone.   I have also perused 

the advertisements of the Plaintiff's products depicted at pages 92, 93 and 94 of the 

Plaint and have noted that as submitted by the Plaintiff the  containers bearing  the 

Plaintiff's  products  have  the entirety  of  the  registered  trademark  of  the  Plaintiff 

together with an additional feature of the device of a plank being immersed in the 

water.  If the trade dress of  these containers is seen, it is obvious that the Plaintiff 

has applied to the container, the entirety of the registered trademark at page 63 of 

the Plaint. The Plaintiff is therefore using in relation to its goods and on them its 

registered trademark as registered. It is therefore clear from the said advertisements 

that  the word    'MARINE'   is used  by  the  Plaintiff  as  a  trademark  and  not in  a 

descriptive sense.  

 

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12.3    Again, if the advertisements at pages 92 to 94 of the Plaint are seen, they 

also show that in  between the registered trademark (as registered) and the image of 

a wooden plank being immersed in water, are the words   “Waterproof Adhesive”. 

These are descriptive  words and indicate the quality, characteristic or intended use 

of the product.   This further reinforces the Plaintiff's submission that it is using the 

word 'MARINE'  as a mark and not in a descriptive sense. It is correctly submitted on 

behalf of the Plaintiff that had the word ‘MARINE'  being used in a descriptive sense, 

there was no need or warrant to add the description “Waterproof Adhesive” as has 

been done by the Plaintiff.  It is therefore apparent  that 'MARINE' is the  trademark 

and “Waterproof Adhesive” is the description. 

12.4         Consistent with  this,  the  representative invoice (page 35 of  the Plaint), 

purchase orders (pages 36, 38 to 40 of the Plaint) and the Plaintiff's product guide 

(page 39 of the Plaint) clearly indicate that the word 'MARINE'  is used as a mark 

and not in a descriptive sense.   The Defendant has relied on the items at pages 65 to 

87 of  the Plaint and  the  reference  to  the description  'FEVICOL MARINE'  therein. 

However, the same  does not assist the Defendant since as submitted by the  Plaintiff 

the documents at pages 65 to 87 of the Plaint are not invoices which show how the 

product is sold in the market or associated with the public.  These documents on the 

face   thereof     state   that   they   are   “DEPOT   CHALLAN­CUM­BILL”   and   “NOT   AN 

INVOICE”.  They are internal documents between the Plaintiff and its Dealers.  

12.5    As submitted by the Plaintiff, the fact that the Plaintiff  is using the word 

'MARINE'  as a mark is further reinforced  from the extract of the Plaintiff's  product 

guide  which is at pages 41 to 52 of the Plaint.  This extract refers to 11 products  of 

 

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the   Fevicol   Division   of   the   Plaintiff   and     contains   a   photograph   of   the   actual 

container in which the products are sold.  It can be seen from the product guide that 

for all  the products Fevicol is used as a house/umbrella mark in conjunction with 

individual product identification marks/brands like    SPXPRESS;  PL  111;  PL  222; 

707FW; DDL; SR998; 998FW; SR 50.  If the Defendant's argument is to be accepted, 

each of the above products  identification marks/brands will have to be regarded as 

descriptive.  As correctly submitted by the Plaintiff, how such alpha numeric can be 

regarded   as   descriptive   defies   logic   and   that   this   reinforces   the   fact   that   these 

descriptions are product identification marks/brands which are used in conjunction 

with the house/umbrella marks/brands.

12.6 The   Plaintiff   has   filed   a   Trademark   Application   No.   1918007   seeking 

registration of the word mark 'MARINE'.   In respect of this application, the Registrar 

of Trademarks while advertising the same has imposed the condition “This is subject 

to association with registered/pending Registration No. 1319821”.     Trademark No. 

1319821   is   the   registered   trademark   (word   mark   'FEVICOL   MARINE'     and   the 

registration certificate in respect thereof is at page 61 of the Plaint). Section 16 of 

the   Act   contains   provisions   for   registration   of   a   trademark   as   an   associated 

trademark. A reading of Section 16 of the Act makes it clear that for the applicability 

thereof, it  is   essential  that,  (i)   there    are   two marks;  (ii)    there is  a  common 

owner/proprietor; and (iii) the two marks must be identical or so resemble one other 

as to be likely to deceive or cause confusion (deceptively similar).  In other words, 

association can only be ordered between two trademarks when they are identical or 

deceptively similar.   In ordering association between the two, the Registrar obviously 

 

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concluded that there was identity/deceptive similarity between the two. It is obvious 

that there can be no identity/deceptive similarity between 'FEVICOL' and 'MARINE' . 

The   question   of   identity/deceptive   similarity   could   only   arise   if   the   Registrar 

compared 'MARINE' and 'FEVICOL MARINE'  (and not 'MARINE' and Fevicol only). 

The Plaintiff is correct in its submission that the Registrar treated the word 'MARINE' 

forming a part of  'FEVICOL MARINE'  as a trademark, since in the absence thereof, 

there could never be an order of  association. To put it differently,    the Registrar 

accepted  that the word 'MARINE' (which formed part of the registered trademark 

'FEVICOL MARINE' ) was very much a trademark.  Though it is true that it is this 

Court which has to decide whether the word 'MARINE'  is used by the Plaintiff as a 

trademark or in a descriptive sense, the Plaintiff has correctly tried to draw support 

from  the aforesaid condition imposed by  the Registrar of Trademarks in order  to 

submit   that   even   the   Registrar   of   Trademarks     was   of   the   view   that   the   word 

'MARINE',  in the registered trademark 'FEVICOL MARINE', is a trademark (and not 

descriptive)   and   considered   'MARINE'     and   ‘FEVICOL   MARINE'     as 

identical/deceptively similar. 

12.7  As submitted by the Plaintiff, there is yet another fundamental fallacy  in the 

argument   of   the   Defendant   viz.   the   assumption     that   the   word   'MARINE'     is 

descriptive  of the use to which the Plaintiff's product is put. As set out in the Plaint 

and on the products themselves, the Plaintiff's product is a water resistant synthetic 

adhesive which is used for conditions where the product will be exposed to water or 

high humidity.   The  Defendant has assumed that 'MARINE'  is synonymous  with 

and/or indicative of water.  This is not the case, as the Defendant itself has disclosed 

 

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at page 83 of its reply affidavit, by relying on the Oxford Dictionary  that the word 

‘MARINE'  is understood  as indicative of matters pertaining to the sea. 

12.8  For the aforestated reasons, I am of the view that  the  Plaintiff is using the 

word  'MARINE' as a trademark and not in a descriptive sense. 

13. The  Defendant has strenuously contended that the Defendant itself is  using 

the word 'MARINE' in a descriptive sense. This contention of the Defendant is denied 

and disputed by the  Plaintiff.  The Plaintiff has drawn the attention of this Court to 

the photograph at page 99 of the Plaint. This photograph shows that in addition to 

the words “JIVANJOR”    and the words 'MARINE PLUS', the Defendant has also used 

the words “ 'MARINE' PLYWOOD SPECIAL ADHESIVE” & “HEAT AND WATERPROOF 

ADHESIVE”.   As   submitted   by  the   Plaintiff,     this   makes   it   clear   that   where   the 

Defendant wishes to use words which are descriptive of its product, it has used the 

words  “  ‘MARINE'  PLYWOOD  SPECIAL ADHESIVE” &  “HEAT AND WATERPROOF 

ADHESIVE”.  Hence it is this description which is descriptive.  The words “MARINE 

PLUS”     are not descriptive   but are used as a mark.    In other words, what  the 

Defendant is trying to convey to the members of the trade and the public is that the 

product in question is  sold under the 'MARINE'  brand/sub­brand.  

14. The     Defendant   has   further   contended     that   the   adoption   of   the   word 

'MARINE PLUS'  by the Defendant is honest and bona fide.   

14.1 As stated above, the Plaintiff adopted its trademark in 2003  and has since 

then  been using the same openly, continuously and on an extensive scale.  By June 

 

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2012, when the Defendant purportedly started the use of the impugned mark, the 

Plaintiff had been in the market for nine years and had sales in excess of Rs. 180 

crores.  Again, as already held hereinabove, the word 'MARINE'  forms an essential 

part of the Plaintiff's trademark/brand and the products of the Plaintiff were sold 

and purchased with reference to the word 'MARINE'.   The trade packaging/dress of 

the   containers   in   which   the   Plaintiff's   products   were   sold   contained   a   pictorial 

depiction of a plank of wood dipping into the water and   water being splashed in 

the process.   The Plaintiff's product containing the pictorial depiction  of a plank of 

wood  dipping into water  with water being splashed (at pages 92, 93 and 94 of the 

Plaint) is reproduced hereunder:

 

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A picture of the very same pictorial depiction on the product of the Defendant (page 

99 of the Plaint) is reproduced hereunder:

If both the pictorial depictions are compared it becomes instantly  apparent that the 

Defendant   when   it   entered   the   market,     not   only   copied     the   Plaintiff's   mark 

'MARINE'   but even the artistic work comprising the device of a wooden plank being 

dipped into the water, and the water splashing.   The statement now made by the 

 

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Defendant that they have since 2013 stopped using the said pictorial depiction of a 

plank of wood dipping into water with water being splashed in the process,  does not 

in any way help the Defendant's contention that their adoption is honest and bona 

fide.  

14.2  Further, the Defendant  also filed a Trademark Application No. 2456946 for the 

label mark 'MARINE PLUS' which label mark is reproduced hereunder.

Had  the Defendant not  been using  'MARINE'/'MARINE  PLUS'  as  a  trade mark it 

would have never applied for registration of the label mark titled ‘MARINE PLUS' 

(label)   containing   the   words   “MARINE'   PLUS”     as   its   leading,   prominent   and 

essential feature. The  Defendant has now contended that the Trademark Application 

No. 2456946 for the label 'MARINE'/'MARINE PLUS'  has been withdrawn by them.  

14.3      As laid down in several decisions of this Court as well as other Courts, the  

 

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Defendant who seeks registration of a mark is estopped from urging that the mark is 

incapable   of   registration.     Faced   with   the   said   judgments,   the   Defendant   has 

borrowed  the language  used  by  a  Learned  Single  Judge in  his  decision in  Hem 

Corporation Private Limited  and Ors. vs.  ITC Limited4

    and  has  come up with  an 

argument that the rule of estoppel does not apply to the present case because the 

Defendant   had   applied   for   a   label   mark   registration   for   the   entire   get   up   for 

packaging including the descriptive words 'MARINE PLUS'.  In the said decision the 

Learned   Judge   has   held,     “The   Reliance   upon   the   Defendant's   application   for 

registration of the label mark is, however, of no assistance  in considering this aspect.  

The  application for   registration  was  not  of   the  word   mark  “MADHUR”.  The   label  

contains   the   entire   get   up     of   the   packaging   including   the   words   “MANGALDEEP  

MADHUR   100”.   The   label   by   itself   only   begs   the   question   viz.   whether   the   word  

MADHUR  is used as a mark or not.”

14.4 In my view, as submitted by  the Plaintiff,  this attempt to distinguish itself, 

now belatedly made by the Defendant in the written submissions does not withstand 

scrutiny for the reasons mentioned hereinbelow:

(i) The  mark  applied for by the Defendant is reproduced hereinabove.   It is true 

that it is  a label mark. However, if    the mark is  seen,  the most  prominent  and 

noticeable part/feature of the mark is the word 'MARINE PLUS'. The mark has been 

described in  the column “TM Applied  for” as  'MARINE PLUS'  ­ Label” .The word 

'MARINE'  therefore forms a prominent and/or essential feature of the mark applied 

4 Notice of Motion No. 3940 of 2009 in Suit No. 2808 of 2009

 

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for.  More importantly, the Defendants understood the trademark applied for  as “ 

'MARINE' PLUS”.

(ii) The Defendant was therefore attempting to obtain a monopoly over the words 

'MARINE' PLUS' and  'MARINE' and in view thereof, the rule of estoppel stated above 

will apply. The question to be asked is, “Had the Defendant's mark been registered, 

would it have objected and/or been entitled to object to 'MARINE PLUS'  or 'MARINE' 

being used by someone else?” The answer is obvious.  

(iii)  The Defendant understood this to mean exactly what the Plaintiff asserts, as 

is clear  from its own assertion and actions.  It   is an admitted  fact  that, after  the 

Plaintiff pointed out  the said application,  the Defendant withdrew  the same. The 

Defendant (at page 26 of its Written Submissions) has at several places accepted that 

the   application   made   was   a   mistake   [“mistaken   application”,   “mistaken   advice 

received”; “realizing its mistake”, etc.].  The Plaintiff has correctly raised a question, 

“If the label mark application was for the entire get up for packaging including the 

descriptive words 'MARINE PLUS', then why did the Defendant withdraw it and why 

does the  Defendant still continue to call it a mistake?”  The answer is self­evident. 

The  Defendant itself considered the application as made, a source/cause for concern 

and therefore not only withdrew it but asserted  that the very making of it was a 

mistake.    

(iv)  The applicability of the principle and/or rule of estoppel is not restricted to 

cases where the mark objected to and mark applied for are identical, but covers cases 

where there is identity of the prominent and/or essential features, as is evident from 

 

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the decision of  this Court in  Ultratech Cement Limited vs. Alaknanda Cement Pvt.  

Ltd.5

, decided on 28th June, 2011, where the doctrine/principle was applied. In that 

case,  the  Plaintiffs' mark was  “Ultratech Cement. The Engineers Choice”  and  the 

Defendant had sought registration of a label containing the word “Ultra Tuff”.

(v)           The   decision   of   the   Learned   Single   Judge   in  Hem   Corporation  (supra) 

extracted in  clause     13.3 is  not in  any manner  inconsistent   with   the   Plaintiff's 

submission.  In the facts of that case, the Learned  Judge did not consider the label 

mark application sufficient to  attract the test/principle. This was on the facts of that 

particular case. The case at hand has to be decided on its own merits and the facts of 

the present case.  On the present facts, the principle/test is squarely applicable.  

 

I am therefore prima facie satisfied that the adoption of the word ‘MARINE PLUS' by 

the Defendant is neither honest nor bona fide.  

15. The   Defendant has next contended  that  the Suit is liable  to be dismissed 

under Section 35  of the Act, since the purpose of using the word 'MARINE PLUS'  on 

the Defendant's label is to educate or inform the customers that the  products offered 

by the Defendant are heat and water proof, and the word 'MARINE PLUS' is a bona 

fide description of the character  of the Defendant's product offered under the  mark 

'JIVANJOR MARINE PLUS'.    The Defendant also contends that  the use of the word 

'MARINE PLUS'  is protected under Section 30 (2) of the Act.  

5 2011 (5) BCR 588

 

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15.1 The aforestated conduct on the part of the Defendant in copying the label of 

the Plaintiff; using the mark 'MARINE' and applying for the registration of the label 

titled  'MARINE PLUS' (label) makes it abundantly clear  that  the adoption   of  the 

mark  'MARINE PLUS'   is as a  trademark and is with a view  to   encash upon  the 

significant goodwill and reputation acquired  by the Plaintiff's 'MARINE' marks.   The 

word  'MARINE  PLUS'   is  not  descriptive,    and in  any event is  not  used  by  the 

Defendant     as   a   bona   fide   description   of   the   character   of   the   product   of   the 

Defendant.  The case of the Defendant that the use of 'MARINE PLUS' is to indicate 

to the customers that its product is “heat and water proof” is contrary to its own case 

that   'MARINE' means “of or relating to the sea” and not “heat and water proof”. 

Furthermore, the product of the Defendant depicted at Exhibit­E to the reply at page 

80, specifically bears the legend “Heat & water proof adhesive” and hence  the use of 

'MARINE PLUS' to communicate the same to the customer was not even necessary. 

The Defendant is obviously using  'MARINE PLUS' as a  trademark and not in  the 

descriptive  sense.   Since  the Defendant is using    'MARINE'/  'MARINE PLUS'  as a 

trademark, Sections 35 and 30 (2) of the Act  cannot be resorted to. In any event, 

the additional requirement of bona fide use is lacking for the purpose of Section 35. 

The  defence   sought   to  be   raised  is  clearly  an   afterthought.  The  Defendant   has 

admitted that  'JIVANJOR MARINE PLUS'  ( and in effect 'MARINE PLUS' which is a 

leading  and essential  feature  thereof)  has  been  adopted  and is  being used  as  a 

trademark by the Defendant. 

16. The Defendant  has  also  relied  on  Section  17  of  the Act in  support  of its 

 

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contention  that the Plaintiff  cannot  restrain the Defendant in any manner from 

using the word 'MARINE'.  In this context, the arguments of the Defendant are as 

follows: 

(i) Section 17 (1) of the Act prescribes that, in the case of a ‘composite mark' 

(namely  a mark  consisting  of  several matters),  the  exclusive  right  conferred  by 

registration, is on the trademark taken as a whole;

(ii) Section 17  (2)  (b) of the Act expressly prescribes that where a composite 

mark  contains matter  which is  common  to  the  trade  or is  otherwise  of  a  non­

distinctive   character,   registration   of   the   composite   mark   shall   not   confer   any 

exclusive  rights in  the matter  forming only a part of  the whole of  the registered 

mark;

(iii) In other words, the statute does not grant protection (exclusivity) over such 

parts or constituents of a composite mark, which are ‘common to the trade' or of a 

‘non­distinctive character';

(iv) The   word   'MARINE'   forms   a   part   or   constituent   of   the   composite   mark 

“FEVICOL MARINE”.  In relation  to the goods to which it is applied/used, the word 

'MARINE'   is   common   to   the   trade   and/or   of   a   non­distinctive   character. 

Consequently,   by   reason   of   Section   17   (2)   (b),   the   Plaintiff   cannot   claim   any 

exclusivity;

(v) The   Plaintiff's   reliance   on   the   fact   that   the   Registrar   whilst   granting 

registration, did not impose a condition or limitation (qua the word 'MARINE') is of 

no assistance, since the provisions relating to “disclaimer” (existing in the 1958 Act) 

have been deleted in  the 1999 Act. The reason  for  the deletion of  the provisions 

 

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relating to disclaimer is because Section 17 explicitly clarifies the legal position that 

there is no exclusivity in  respect  of  descriptive or non­distinctive constituents  or 

parts of a registered mark. Therefore, the requirement  of a disclaimer provision is 

unnecessary. Reliance in  this  behalf is  placed  on  the    Statement  of Objects  and 

Reasons   of   Section   17,   which   are   extracted   at   page   17   of   the   Defendant's 

submissions; and 

(vi)     If this test is applied, then the marks to be compared are “JIVANJOR MARINE 

PLUS”  and “FEVICOL MARINE”. These are not deceptively similar.  

16.1 The Defendant   has   sought   to   suggest   that   by  reason     of  the   deletion   of 

provisions  relating  to  disclaimer,  the  Registrar  cannot impose  any  conditions  or 

limitations whilst granting registration. As correctly submitted by the Plaintiff, this 

suggestion is contrary to the provisions of the 1999 Act i.e. Sections  18 (4), 20  (1) 

and 23 of the Act which expressly authorise and empower the Registrar, at the stage 

of  acceptance  and  advertising  of  applications,  to impose, inter  alia  conditions  or 

limitations on the mark applied for. The submission relating to disclaimer   by the 

Defendant is therefore of no substance. 

16.2 It   is   true     that   the   registration     of   a   composite   mark   confers   upon   the 

registered proprietor a monopoly over the trademark taken as a whole.   It is not the 

Plaintiff's  contention  that  the  registration  of  a  composite mark  confers upon  the 

registered proprietor exclusivity over each and every constituent part  thereof (no 

matter how minuscule or  insignificant it may be in relation to the mark considered 

 

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as a whole). The Court therefore  has to examine  the mark as a whole. As a  part of 

this evaluation process, the Court is required to determine what is/are the prominent 

and/or  essential  features  of  the mark  taken  as  a  whole.  The  protection  and/or 

exclusivity will be conferred on these features and not on insignificant trivia.   This 

Court has therefore at the outset after considering the relevant factors prima facie 

come to the conclusion  that the word 'MARINE' forms a prominent and/or essential 

feature of  the  registered  trademark (considered  as  a whole) .  If  the Defendant's 

arguments are accepted, the consequences will be startling.  Composite marks will 

become useless. The same will be infringed with impunity by the simple expedient of 

using a trademark which has, as its essential or prominent feature(s), the essential 

and prominent feature of the registered mark with the addition of other matter. The 

mandate of Section 17 (1 ) will be totally frustrated. 

16.3 Again, in my view, nothing in Section  17 (2) of the Act  bars the  Plaintiff's 

entitlement to the relief as claimed. Section 17 (2)  (a) is plainly not applicable . The 

defendant does not even claim so. The Defendant's only claim that Section 17  (2) 

(b) of the Act bars the grant of relief in the Plaintiff's favour. The Defendant's claim 

in this behalf is premised on the assumption that  the word 'MARINE' is  ‘ common to 

the  trade' and/or ‘of   a non­distinctive character'.     For  this plea  to succeed,  the 

Defendant must establish that the word 'MARINE' is either ‘common to the trade' or 

'of  a non­distinctive character'. The onus to do so is entirely on the Defendant. As set 

out herein, the Defendant has failed to discharge the burden or onus upon them. 

 

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16.4 The aforestated reliance on Section 17 of the Act and the submissions made in 

regard thereto  by the Defendant therefore cannot be accepted and are rejected. 

17. The Defendant has contended that there are some other entities across India 

and internationally that are using the word 'MARINE' as a part of their label and the 

word 'MARINE' has become publici juris/common to trade.   The  Defendant has also 

set out in a tabular format the labels inter alia containing the word 'MARINE' which 

it  claims  are in  use. The Defendant  contends  that  the  Plaintiff  therefore  has no 

exclusive   rights/monopoly   over   the   word   'MARINE'.   The   Defendant   has   also 

produced copies of four invoices as evidence of sale of two other products under the 

mark 'MARINE'.  

17.1 It is a settled legal position that the use of a registered mark or the essential 

feature thereof by others is not a defence available to the Defendant in an action for 

infringement and passing off.   Merely because the Plaintiff has chosen to sue one 

infringer  first  and  has  not  at  such  time  sued  others  for infringement is  also  no 

defence in an action for infringement and passing off and it is settled law that it is 

the prerogative of the Plaintiff/registered proprietor/owner of a mark whom to sue 

so   as   to   protect   its   rights.   Furthermore,   it   is   essential   for   the   Defendant   to 

demonstrate substantial and continued use over a period of  time of  the mark by 

others  failing which no defence of common to the trade/publici juris can be set up. 

(Corn Products Refining Co. vs.  Shangrila  Food  Products Ltd.6

;  F.D. Diesel vs.  S.M. 

6 AIR 1960 SC 142

 

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Diesel7

; Ultratech Cement Ltd. vs. Alaknanda Cement Pvt. Ltd.(supra); Shaw Wallace  

and Company Ltd. and another vs. Mohan Rocky Spring Water Breweries Ltd.8

.    The 

Defendant has failed to prove   that there are a   number of entities over India or 

internationally that are using the word 'MARINE', or that such use is substantial or 

continuous over a period of time. As submitted by the Plaintiff, let aside proof, there 

is not even a pleading to this effect. The  four invoices produced by the Plaintiff are 

insufficient and deserve to be disregarded. They do not satisfy the test of extensive, 

actual       and   continuous   use   in   the   market.   The   Defendant   has   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  submissions  advanced  by  the Defendant  to  distinguish  the  above 

judgments are unconvincing  and of no assistance to the Defendant. 

18. The Defendant has submitted that the Plaintiff has not disclosed  that their 

application for the mark 'MARINE' are under opposition and not pending as  claimed 

by  the  Plaintiff  and  that  the  Plaintiff  has  concealed  the  fact  that  the  trademark 

Application Nos. 2110954 and 1918007      for  the marks  'FEVICOL MARINE'   and 

'MARINE' are opposed by Blue Coat Pvt. Ltd. 

18.1 The  Plaintiff  has  stated in  paragraph   9   at   page   8  to   the   Plaint   that   the 

trademarks   'FEVICOL   MARINE'   (Label)   and   'MARINE'   under   application   Nos. 

7 1994 PTC 75 

8 2006 (33) PTC 180 (Bom)

 

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2110954  or 191 8007 are pending and the same is true. The Plaintiff has correctly 

submitted that the marks are /will be pending until they  proceed to registration and 

the Plaintiff has rightly stated that the trademarks 'FEVICOL MARINE ' (Label) and 

'MARINE'   under     Application   Nos.   2110954     or   1918007   are   pending.   The 

oppositions are proceedings between the Plaintiff and another entity and do not in 

any manner impact nor bear significance for the purpose of the present Suit and the 

issues raised in the present Suit. The proceedings filed by Blue Coat Pvt. Ltd. will be 

decided on its own merits. The question of disclosing the same or suppressing the 

same does not and cannot therefore arise. 

19.   The Defendant has further contended that the Plaintiff has concealed the fact 

that   the   Plaintiff's   trademark   registrations   under   Nos.   1319821,   1319822   and 

1319823      for  the mark  'FEVICOL MARINE’    are  under  rectification  before  the 

Intellectual Property Appellate Board and hence the Plaintiff deliberately did not file 

the legal proceedings certificate. 

19.1 The  Plaintiff is  correct in its  submission  that  the  Plaintiff  has  specifically 

craved leave to refer to and rely  upon the entries of the Register of  Trademarks in 

relation to the registration of the Plaintiff referred to in the Plaint and hence the 

question of suppression of the said document does not arise. In any event the records 

of the  Registry are public documents and can  be accessed by the  Defendant at any 

given point of time. The said rectification proceedings are pending and the Plaintiff 

is and continues to be the registered proprietor of the trade marks under 1319821, 

 

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1319822 and 1319823 and the registrations as on the date of filing the  Suit were 

and continue to be valid and subsisting. The said rectification proceedings filed by a 

third party are irrelevant in so far as the present proceedings are concerned. The 

question   of   disclosing   the   same   or   suppressing   the   same   does   not   and   cannot 

therefore arise. 

20. The Defendant has next contended that the Plaintiff had issued a legal notice 

to Blue Coat Pvt. Ltd. on 28th June, 2010, and that the said Blue Coat Pvt. Ltd. had 

responded   to   the   said   legal   notice   on   3rd  August,   2010,   and   filed 

oppositions/rectifications against  the  trademarks  'FEVICOL MARINE'/'MARINE'   of 

the Plaintiff. The Defendant contends that despite   the same, the Plaintiff has not 

taken any action against Blue Coat Pvt. Ltd. and that Blue Coat Pvt. Ltd. continues to 

use   the   label   mark   inter   alia   containing   the   words   'BLUECOAT   MARINE'.   The 

Defendant submits that the Plaintiff has concealed and suppressed this material fact 

in the Plaint.   The Plaintiff has correctly submitted that the aforesaid alleged facts 

have no bearing whatsoever on  the present Suit and  the question of suppression 

does not arise. It is settled law that the Plaintiff is not obliged to take action against 

every small infringer (assuming that Blue Coat Pvt. Ltd. is still using the mark).  

21. The Defendant has lastly contended that the Plaintiff has obtained trademark 

registration for  the mark 'FEVICOL MARINE', wherein  the essential  feature of  the 

mark is   “FEVICOL”. The Defendant contends  that it is using  the word    'MARINE 

PLUS' in combination and conjunction with its house mark 'JIVANJOR' and that the 

 

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deciding   factor     for   determining   the   difference   between   both   the   marks   is   the 

presence of  'FEVICOL'  and  'JIVANJOR' which are  the essential  and distinguishing 

features of the rival marks and have co­existed for years without any confusion or 

deception.   The   Defendant   contends   that   there   is   no   likelihood   of   confusion   or 

wrong/mistaken association of the Defendant's mark and the Plaintiff's mark. 

22.   As held hereinabove,  the Defendant has adopted an essential  feature of a 

registered  trademark of  the Plaintiff. 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 the 

housemark of the Defendant. 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. As pointed out by 

the   Plaintiff,   the   products     bearing   the   housemark   ‘FEVICOL'   have   achieved   a 

turnover close to around Rs. 1000 crores, 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 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 

 

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large with the Plaintiff alone. 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'.  Furthermore, the 

fact that the Defendant refers to its ‘mark' as 'JIVANJOR MARINE PLUS ' itself is an 

admission  on  the  part  of  the Defendant  that  'MARINE  PLUS' is  being used  as  a 

trademark/part of its trademark. Whether the rival marks are similar or not will have 

to  be  approached  from  the  point  of  view  of  average intelligence  and imperfect 

recollection  of  consumers who  would  normally  be  carpenters    or  such  similarly 

literate persons and are bound to get confused. 

23. For the aforestated reasons, the Notice of Motion is allowed in terms of prayer 

clauses (a), (b) and (c ).  The Defendant shall pay cost of the Notice of Motion to the 

Plaintiff. 

24. The hearing of the Suit is expedited.  Defendant to file written statement on 

or before 27th  January, 2014.  Place the Suit for framing of issues on 29th  January, 

2014.

(S.J. KATHAWALLA, J.)

 

Vineet Kumar
on 24 January 2014
Published in Intellectual Property Rights
Views : 1079


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