Facts of the case
The plaintiff, Pidilite industries ltd. Registered the trademark in 1987 for its product ‘Fevikwik’ in respect of “adhesive for domestic, technical and industrial purposes”. The plaintiff applied and obtained registration of Fevikwik in 2008 and it registered its trademark Fevikwik through trademark registry and produced the certificate.
The defendant, Poma-ex Products got its trademark registered in 2014 was in continuous use of the mark Kwikheal since July 2011
Plaintiff became aware of defendant’s trademark being registered in 2014. Plaintiff sued the defendant for infringement of its trademark and passing off.
An ad interim injunction was passed by high court to stop the defendant from selling its infringing product. Even after the grant of injunction it was found that poma-ex product was selling its goods with the similar packaging and trade dress as that of the plaintiff.
Issues raised were:
Whether Kwikheal has infringed the registered wordmark of Pidilite industries ltd.?
Whether Kwikheal has infringed the registered ‘distinctive packaging’ of the plaintiff’s Fevikwik?
Reasoning of the court:
The court held that the work ‘kwik’ used as suffix in ‘fevikwik’ and prefix in ‘kwikheal’ both the marks of the plaintiff and defendant cannot be said to be commonly used word by the public or company to trade. The defendant has received the registration on the word itself, hence its descriptive nature cannot be claimed by it. It was also held that with the word ‘kwik’ there exists an element of confusion or deception if it is used by both the plaintiff and the defendant.
The plaintiff also questioned the validity of the registration of trademark of ‘kwikheal’ and also stated that the trademark is accountable for infringement of its packaging as it is not using its registered trademark but is using a label on its packaging which is similar to the packaging of ‘fevikwik’ with similar combination of colors of yellow and blue.
On comparison of the products it indicated that the adoption of trademark ‘kwikheal’ by the defendant was with dishonest intention and it created confusion in the minds of the customers and to take undue advantage of the goodwill as well as the reputation of the plaintiff.
It was held by the court that there exists a high degree of phonetic similarity between the mark of plaintiff ‘fevikwik’ and the mark of defendant ‘kwikheal’. The word ‘kwik’ was a ruling part of the trademark of the plaintiff.
In the view of the court, the balance of convenience lies in favor of the plaintiff after comparing the mark ‘fevikwik’ with the mark of the defendant ‘kwikheal’ which is prima facie deceptive or misleading.