Bombay High Courts grants interim relief to M-Seal, restrains use of mark R-Seal

The Bombay High Court last week granted interim relief to adhesive and sealant company Pidilite (plaintiff) with respect to their trademark M-Seal, restraining another firm from using the mark R-Seal [Pidilite Industries Limited vs Riya Chemy]..Single-judge Justice Riyaz Chagla said that the defendants fraudulently secured registration of term R-Seal by hoodwinking the Registrar of Trade Marks and concealing from him, the existence of the plaintiff’s prior registered marks."In my prima facie view, the Defendant’s registrations for the impugned marks R-SEAL and are ex-facie illegal, fraudulent and of a nature that would shock the conscience of this Court. The Plaintiff’s rectification proceedings in respect of the said registrations are pending adjudication before the Trade Marks Registry. Further, in my prima facie view, the Defendant has obtained the aforesaid registrations by playing a fraud upon the Registrar of Trade Marks and concealing from him, the existence of the Plaintiff’s prior registered marks," the Court said.The Registrar of Trade Marks, being the custodian of all marks, ought to have conducted a search of the register before proceeding to accept the defendant’s applications, to ensure that the defendant’s marks are not violating the rights of any prior user or proprietor, the Court added.In view of the above, the Court granted interim injunction in favour of Pidilite..The bench was seized of a plea filed by Pidilite taking exception to the use of the mark 'R-Seal Jhat Pat' by the defendants, which it claimed was deceptively similar to its product 'M-Seal Phataphat.' The bench noted from the records that the plaintiff firm proved that it adopted the said mark in 1968 and has been using it since then, however, the defendants could not bring anything on record except a document showing it adopting the mark R-Seal in 2005."Thus, I am of the prima facie view that the Defendant is not the prior adopter or user of the marks in question and not entitled to any rights thereon. I am further of the prima facie view that upon comparison of the rival products and features, the Defendant’s adoption of the impugned mark and its representation etc. are violative of the rights of the Plaintiff and this is not a matter of co-incidence," the judge said.The Court was of the view that the defendants made no attempt to explain or justify the adoption of the mark/ features or deceptive similar colour combination, its representation (including with an identical under lining of the mark beginning from the end of the first alphabet), identification mark as well as tagline. "I find no substance in the Defendant’s contention that the colours used by the Defendant in respect of its packaging label are natural colours and would not cause any confusion amongst the public at large," the bench opined..In its 61-page judgment, the bench also rejected the contention of the defendant company that if it is restrained from using the disputed mark R-Seal, then it will have to shut its business."Considering that a prima facie case has been made out by the Plaintiff for grant of interim reliefs as well as balance of convenience and irreparable loss, harm and injury which will be caused to the Plaintiff if the injunction is not granted as against the Defendant’s own case of prejudice caused to it, it is apparent that the balance of convenience weighs in favour of the Plaintiff. Further, the Defendant has other products apart from the impugned product and the contention of the Defendant that its business will shut down if an injunction is granted, cannot be accepted," the judge observed..The Court also said that the phrase M-Seal will have to be considered as a whole and rejected the contention of the defendant company that some of the products of the plaintiff have disclaimers for the word 'Seal.'"Disclaimers do not go to the market and a common man of average intelligence or the average consumer would have no knowledge of any disclaimers present in a trade mark registration. This is how a common man would view the marks while purchasing the product. This Court has thereby accorded judicial notice and protection to the Plaintiff’s mark MSEAL (word per se) despite the presence of, and after consideration of the very same disclaimer/condition on the Plaintiff’s mark," the bench observed..The bench noted that the defendant fraudulently obtained registration of its mark without looking at the public record of the Registrar of Trademarks."Prima facie, the Defendant’s marks R-SEAL being deceptively similar to the Plaintiff’s registered marks MSEAL and are violative of the rights of the Plaintiff. Accordingly, they are violative of the provisions of the Trade Marks Act, 1999 including Section 11 of the Act and ought not to have proceeded to registration," the judge held.Given the fraudulent registration on part of the defendants, the judge said, the Court has the power to go behind the defendant’s registrations and grant and injunction against its wrongful activities with a view to secure the rights of the Plaintiff..Advocates Hiren Kamod, Nishad Nadkarni, Aasif Navodia and Khushboo Jhunjhunwala along with Khaitan and Co. appeared for the Plaintiff.Advocates S Ramakrishnan and Girish Thakur represented the Defendant..[Read Order]