TRY TO “FIX IT” BUT FIRST SHOW BONAFIDE INTENT

Recently in the case of Pidilite Industries Ltd v. Q-Chem Sealers Pvt Ltd., the Bombay High Court granted an interim injunction restraining the Defendant from using the marks “LW” “LW+” or “URP”, labels bearing these marks and the unique design of the DR. FIXIT containers.

The Plaintiff, Pidilite Industries is a well-known manufacturer of water-proofing chemicals, paint chemicals, adhesives etc. and their products are sold under various trademarks including “LW”, “LW+” “URP” and “DR. FIXIT”. The Plaintiff claimed trademark infringement, infringement of their artistic work, design and passing off against the Defendant based on their use of similar products and packaging/containers containing their products.

Based on the Plaintiff’s arguments, the Court noted that their packaging has visual appeal and their design is not a matter of functionality. It was also observed that the containers have elevated ridges or grooves on both sides and there is a unique yellow handle for the DR. FIXIT products with a yellow cap and orange cap for the URP products, hence making their products distinctive. The Plaintiff thus claimed that they owned a variety of intellectual property rights including trademark, copyright and design in their products and their packaging and that the Defendant had wrongfully used not only the “LW”/”LW+” labels and “URP” mark but had also “attempted to pirate the design-protected DR FIXIT container.”

Referring to a comparison between the products of the Defendant and the Plaintiff, the Court held that, “It seems to be inconceivable having regard to these images…that any of these adoptions by the Defendants could possibly be said to be bona fide.” The Court noted that the Defendant’s container had encompassed the whole of the Plaintiff’s mark “LW” and with the addition of the letter “C” to create their mark “LWC”. Similarly, the Court also noted that the Defendant had adopted the whole of the “URP” mark of the Plaintiff and added the letter “SBR” to the same to make it “URP-SBR”. Furthermore, with regards to the containers, the Court also noted that the impugned containers had an identical oblong shape, ridges on the side, shoulders on top and identically shaped caps. In fact, the Court also noted that the impugned mark “LWC” was similarly placed at the prominent place of the product packaging.

Granting the order in favour of the Plaintiff, the Hon’ble Justice stated that, “There is no doubt in my mind that there is a very strong prima facie case made out both in infringement and passing off for all three forms of intellectual property that the Plaintiff seeks to protect. I can see no valid justification for the Defendants adoption of the marks, use of the labels, and use of the container.”

Comment

Product packaging and labeling are identifiers and creators of a unique brand image and in the present case, DR. FIXIT’s container was found to be distinctive in the trade. Therefore, the Court rightly held that such type of infringement wherein various intellectual property is also involved can only be justified as a result of mala fide intentions.

1. Pidilite Industries Ltd vs. Q-Chem Sealers Pvt Ltd. (COMMERCIAL IP SUIT (L) NO. 11236 OF 2021)