Calcutta High Court: “The Dilution of Trademark, Is a Species of Infringement”

In the case of Berger Paints India Limited v. JSW Paints Private Limited[1], the Calcutta High Court addressed the issue of trademark dilution, which aims to safeguard well-known trademarks from losing their distinctive appeal even when used with unrelated products or services. The Court refused to grant an injunction in favour of the Plaintiff stating that they had failed to establish deceptive similarity.

FACTS

In this case, Berger Paints India Ltd., the petitioner-Plaintiff, sought an injunction to stop the Defendant-respondent from infringing on its registered trademark "SILK" by using the mark "HALO SILK." Originally founded in 1923 as Hadfields India Ltd. and now operating as Berger Paints India Ltd., the Plaintiff has a significant international presence and holds over 250 trademarks in India, including the "SILK" mark, which has been registered since 1980 for its paint products. In December 2019, the Plaintiff discovered that the Defendant, a new player in the paint industry, was marketing products under the "HALO SILK" trademark.

DECISION OF THE COURT

The Court examined trademark protection, observing that it serves as a "badge of origin" to link manufacturers with their products and guard against consumer deception. Trademark infringement is assessed by comparing marks to determine the likelihood of confusion, as established in cases like Durga Putt Sharma v. Navaratna Pharmaceuticals Laboratories[2] and F. Hoffman La Roche & Co. v. Geoffrey Manner Co. (P) Ltd.[3] The Court also considered the principle of trademark dilution, which safeguards well-known marks from losing their distinctiveness due to unauthorized use on dissimilar goods, referencing Daimler Benzaktiegesellschaft v. Eagle Flask Industries Ltd.[4] The Court clarified that Section 29(4) of the Trademarks Act, 1999, addresses dilution and does not require a likelihood of confusion but necessitates proof of the mark’s reputation, identity or similarity, and unfair advantage or detriment. Despite the Plaintiff’s claims of deceptive similarity and the Defendant’s use of "SILK" as a descriptive term for paint finishes, the Court found no actual similarity between the marks and noted the descriptive nature of the word "SILK" in the industry. Further the Court stated that “Trademark dilution protects well-known trademarks from losing their appeal when used in connection with diverse and dissimilar products or services”. The Plaintiff’s trademarks were found to include disclaimers and limitations, further distinguishing them from the present case. Consequently, the Court dismissed the Plaintiff’s application for an injunction, concluding that no infringement or deceptive similarity was established.    

With regards to comparison of the two marks, the Court stated that “The purpose of the comparison is for determining whether the essential features of the Plaintiffs trade mark are to be found in that used by the Defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade.” Thus, when considering the marks as a whole, the essential features of the marks are to be compared.

CONCLUSION

The ruling in this case  highlights the necessity for trademarks to demonstrate distinctiveness to be protected under law. In trademark disputes, especially in competitive industries, the distinctiveness of a mark is crucial in differentiating it from other marks that might use similar or common terms.

The Court’s assessment underscores that trademarks must do more than merely resemble common terms used in the industry. For a trademark to qualify for protection, it must possess a level of uniqueness and distinction that prevents it from being confused with or diluted by similar terms used by other companies. This ruling sets a precedent for how such disputes are adjudicated, particularly when dealing with terms that might be considered descriptive or customary within a particular sector. Hence, this decision provides valuable guidance for both established brands and newcomers on the importance of ensuring that trademarks are sufficiently distinctive and not merely descriptive of the products or services they represent.

References:

[1] 2023 SCC OnLine Cal 4949

[2] 1965 AIR 980

[3] 1970 AIR 2062

[4] (1995) 2 Del 817