The Delhi High Court in PIDILITE INDUSTRIES LTD. vs SANJAY JAIN & ANR [C.O. (COMM.IPD-TM) 371/2022 dated 22nd March, 2024] dismissed Pidilite Industries' petition seeking rectification and removal of the trademark 'POMA-EX KWIKHEAL' registered in favour of Sanjay Jain. The Court held that despite Pidilite's well-known 'FEVIKWIK' mark, the impugned mark was not deceptively similar when viewed as a whole under the anti-dissection rule. Crucially, Pidilite's registration for 'FEVIKWIK' expressly disclaimed exclusive rights over the word 'KWIK', preventing them from monopolizing the generic term. The Court found Pidilite's claims over 'KWIK' to be an overreach beyond legitimate trademark rights.
Facts of the Case:
The Petitioner, Pidilite Industries Ltd., is a renowned company dealing in adhesives, sealants and other construction chemicals. It owns several well-known trademarks like 'FEVIKWIK', 'FEVICOL', 'FEVISTIK' etc., with the common dominant part being 'FEVI'. Pidilite adopted a unique packaging for 'FEVIKWIK' products in November 2007, comprising a yellow and blue color scheme, the mark 'FEVIKWIK' in red lettering, a blue ball device, and the words "one drop instant adhesive". This distinctive packaging was registered in 2008 across classes 1 and 16, with two registrations (No. 1643620 and 1643621) carrying the limitation "registration shall give no right to exclusive use of 'KWIK'". The Respondent, Sanjay Jain, obtained registration for the impugned mark 'POMA-EX KWIKHEAL' (device) on December 16, 2014 in class 1, claiming use since July 1, 2011.
Earlier, the Bombay High Court had granted an injunction against the Respondent on May 5, 2014, restraining them from using 'KWIKHEAL' or any mark deceptively similar to Pidilite's 'FEVIKWIK' packaging/trademark. This injunction was made absolute on August 2, 2017. After the injunction, the Respondent changed their packaging to the impugned 'POMA-EX KWIKHEAL' device mark. Aggrieved by this registered mark's alleged deceptive similarity to 'FEVIKWIK', the Petitioner filed this rectification petition seeking its removal.
Issue:
Whether the registered trademark 'POMA-EX KWIKHEAL' is deceptively similar to the prior 'FEVIKWIK' trademark, necessitating its removal from the register?
Held by the Court:
The Delhi High Court in C.O. (COMM.IPD-TM) 371/2022 held as under:
The Bombay HC's prima facie findings were limited to the Respondent's previous packaging and cannot impact the rectification of the new device mark.
Comparing the marks as a whole under the anti-dissection rule, the impugned device mark has apparent dissimilarities from Pidilite's 'FEVIKWIK' packaging/mark.
'FEVI' is the dominant, distinctive part of Pidilite's marks, not 'KWIK'. The customer recall is based on 'FEVI'.
Two of Pidilite's 'FEVIKWIK' registrations expressly disclaim exclusive rights over 'KWIK', limiting their monopoly claim.
'KWIK' being a colloquial variation of 'QUICK', others can use it. Pidilite cannot have exclusivity or removal rights over marks containing 'KWIK'.
Pidilite's claim over 'KWIK' is an expansive one beyond legitimate bounds, which disclaimer/limitations are meant to prevent.
The Registrar imposing the 'KWIK' disclaimer shows intent to prevent monopolizing generic words.
Hence, the rectification petition against the respondent's 'POMA-EX KWIKHEAL' mark was dismissed.
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