The Bombay High Court has pointed out that in an action for trademark infringement, while marks are to be compared as a whole, greater weight must be given to the dominant and essential feature of the mark. Deceptive visual and phonetic similarity in the dominant feature of two marks is likely to cause confusion and establish infringement, even if the remaining parts of the marks are different.
Under Section 17(2)(b) of the Trade Marks Act, 1999, the Court stated that the proprietor of a composite trademark is entitled to claim exclusivity and seek protection for a part of the mark, even if not separately registered, provided that the part is established to be a distinctive and essential feature of the whole mark and is not common to the trade.
The High Court ruled that the defence of prior use under Section 34 of the Trade Marks Act, 1999, requires the defendant to prove continuous use of the mark from a date prior to the earlier of the plaintiff’s first use or date of registration, and sporadic use is insufficient to establish this defence. Further, a defendant who continues to use a mark despite the refusal of their trademark application on grounds of its similarity to a registered mark does so at their own risk and cannot claim the balance of convenience.
A Single Judge Bench of Justice Sharmila U. Deshmukh observed that compared the plaintiff’s registered trademark ‘ASIAN PAINTS’ with the defendants’ mark ‘ASIA TUFF’. It observed that the dominant and striking feature of the plaintiff’s mark is the word “ASIAN”, which overpowers the word “PAINTS”. Similarly, in the defendants’ mark, the word ‘ASIA’ is displayed prominently, while the word ‘TUFF’ is descriptive and was required to be disclaimed by the Trademark Registrar.
The Bench concluded that for an average consumer with imperfect recollection, there is a strong likelihood of confusion due to the deceptive visual and phonetic similarity between ‘ASIAN’ and ‘ASIA’. This similarity could lead consumers to associate the defendants’ products with the plaintiff, constituting infringement under Section 29(2) of the Trade Marks Act.
On protection of a part of a Mark, as per Section 17, the defendants argued that the plaintiff could not claim protection for the word ‘ASIAN’ as it was not separately registered. The Bench rejected this, citing Section 17(2)(b) of the Trade Marks Act, and observed that if a part of a registered composite mark is distinctive and not common to the trade, the proprietor can establish exclusivity over that part. Since the word ‘ASIAN’ is arbitrary in relation to paints and the plaintiff’s mark was registered without any disclaimer, the Bench found that the plaintiff had prima facie established distinctiveness and was entitled to protection for ‘ASIAN’ as the essential feature of its trademark.
On the defence of Prior Use, the defendants claimed to be prior users of the mark ‘ASIA TUFF’ since 2002, raising a defence under Section 34 of the Trade Marks Act. The Bench observed that the plaintiff’s registration of “ASIAN PAINTS” dates back to 1990, with evidence of use since 1968. To succeed, the defendants needed to demonstrate continuous use of their mark from a date prior to 1968 or at least 1990. The defendants’ claimed use from 2002 was subsequent to the plaintiff’s registration, and the few invoices from 2017 were deemed sporadic and insufficient to prove continuous prior use.
Lastly, while considering the action of passing off, the Bench examined the ‘classic trinity’ of reputation, misrepresentation, and damage. It observed that the defendants’ packaging, colour scheme, and overall trade dress had sufficient distinguishing elements. Therefore, there was no misrepresentation intended to pass off the defendants’ goods as those of the plaintiff.
Briefly, the plaintiff has been using the trademark ‘ASIAN PAINTS’ since 1952 and is the registered proprietor of this mark and its formative variations, where ‘ASIAN’ is the essential feature. The plaintiff’s mark has also been declared a well-known trademark. Hence, the plaintiff initiated an action for infringement of trademark, copyright, and passing off against the defendants, Tarun Paints Private Limited and Tarun Brush Industries, since the plaintiff became aware in August 2024 that the defendants were using the impugned mark “ASIA TUFF” for their products.
The defendants had previously attempted to register the ‘ASIA TUFF’ mark. An application by Defendant No. 2 in 2002 (claiming use since January 2002) was abandoned after the plaintiff filed an opposition. Another application by Defendant No. 1 in 2018 (claiming use since April 2007) was refused registration under Section 11 of the Trade Marks Act, citing the plaintiff’s trademark.
The defendants contended that they were prior adopters of the mark in 2002, that the court lacked jurisdiction, and that the plaintiff’s action was barred by delay, laches, and acquiescence, as the plaintiff was allegedly aware of their products for a long time. Before this order, the defendants had already agreed to revise the word and label marks for their other products, namely APCA GOLD, WOOD PRIMER, and RED OXIDE METAL PRIMER, narrowing the dispute to the marks ‘ASIAN PAINTS’ versus ‘ASIA TUFF’.
Appearances:
Advocates Vinod Bhagat and Twisha Singh, for the Applicant/Plaintiff
Advocates Atmaram Patade, Pranav Manjrekar, Bhagawan Kasture, Shraddha Patil, Atharva Kudtarkar and Rahul R. Dubey, for the Defendants
