In a relief for Pidilite Industries Limited, the Bombay High Court has restrained Platinum Waltech Limited from selling its waterproofing product which infringes trademark of Dr Fixit LW and LW+, which is Pidilite’s range of waterproofing products.
Justice Gautam Patel recently restrained Platinum Waltech Ltd from manufacturing, selling, advertising or dealing in such goods while imposing cost of Rs 2.5 lakh.
While issuing the restraining order, Justice Patel observed: “Now if we consider all four elements together — the use of LWC (too similar to LW/LW+), a similar label, a similar device, and a similar container — then the prima facie cases both on infringement and passing off more or less makes themselves.”
The HC was hearing a suit filed by Pidilite Industries seeking restrain on Platinum Waltech from using its ‘Waterproofing Compound LCW’ which had several similarities with its Dr Fixit LW and LW+ including the container and the design.
According to Pidilite’s counsel, Hiren Kamod, they came across Platinum Waltech’s product in October 2020 which infringes on their trade mark. Apart from having an almost indistinguishable container design and colour, it even has similar picture of a man wearing a yellow construction helmet. Also, letters LCW were prominently displayed on the container.
Pidilite, a well-known brand in waterproofing having global presence, has been manufacturing industrial and textile resins and organic pigments since at least 1969. The other marks (PIDIPROOF, PIDIPROOF LW and LW) have been used since at least 1993.
Kamod contended that Pidilite developed range of waterproofing products under the brand of Dr Fixit which is distinctive and features a unique yellow-gold and blue colour combination in horizontal bands. Also it has a design of a man wearing a yellow construction helmet. It adopted Dr Fixit’s LW and LW+ in 2001.
S. Kazi, advocate for the Platinum Waltech argued that there were differences in their design as their container featured a young man with a suit and tie. Besides, LWC is a common usage for waterproofing solutions and hence it cannot be said that they have copied Pidilite’s LW/LW+ trademark, argued Kazi.
An affidavit was filed by Platinum Waltech contending that its use of LWC, the label, the device and the containers are trivial and the law does not aid trivialities. “This submission has only to be stated to be rejected, especially in the context of trademark and copyright law,” observed Justice Patel. .
The court did not even agree with the defence argument that LWC used by them was purely descriptive and stood for ‘liquid waterproof / waterproofing compound’.
“LWC on its own describes nothing. It is not per se descriptive. The Defendant (Platinum Waltech) claims it is a well-known and commonly used abbreviation for ‘liquid waterproof compound’. The ipse dixit (a person's own assertion without relying on any authority or proof) of the Defendant does not make it so,” added Justice Patel.
Interestingly, Platinum Waltech did not mention when it started using the said container with the LWC mark. “Indeed, that is a curious omission because nowhere in the Affidavit do I find any mention of two singularly important aspects: (a) when the Defendant adopted the mark; and (b) how it came to adopt this mark,” observed the court.
For the year 2018-2019, the sales for Pidilite’s LW+ mark were in excess of Rs 265 crores annually and the company had spent considerable amount on its promotion and advertising.
Justice Patel observed: “Given the Plaintiff’s (Pidilite’s) sales, it is inconceivable that the Defendant would have been unaware of the Plaintiff’s market presence. The Plaintiff is not some localized operator in a taluka. It has a global presence and its products are known throughout the length and breadth of this country.”
On the question of how to decide if there was infringement, Justice Patel observed: “The test is what a person of average intelligence and imperfect recollection might perceive; and very often that person is a Judge of a High Court. I should have had the greatest difficulty without an extremely close examination in being able to discern the Defendant’s products as emanating from a distinct source and would quite readily have imagined that the Defendant’s product is in fact one more variant from the Plaintiff’s portfolio of products and labels. The dead giveaway, as I have noted, is the container.”
