Trademark Dispute between FEVIKWIK AND KWIKHEAL
INTRODUCTION
A trade mark means, in respect of any products and services, a sign which serves to distinguish in the commercial space the products and services from any legal entity or person entitled to use the sign in its capacity as owner of the sign. “The Trade Marks Act, 1999” governs the use of trademarks in India. It concerns with the registration and protection of trademarks for products and services alike from being used deceptively, false marks. As such a proprietary right is granted by way of registration of a trademark, whereby the owner of the mark or other parties granted a license to use the brand has the exclusive right to use it for the purpose of making money.
This case presents an interesting overlap of trademark law concepts, namely with respect to the issues of distinctive character of marks, trademark rectification and the scope of trademark protection as it relates to elements of registered marks. Under “Sections 47 and 57 of the Trade Marks Act, 1999”, “Pidilite Industries Ltd.” instituted a rectification action at the Delhi High Court in a bid to have the defendant’s “KWIKHEAL” trademark removed from the Trade Marks Register. The petitioner, who owns strong trademarks like “FEVIKWIK” and “FEVICOL,” argued that the respondent’s mark is confusingly similar to theirs, thus their brand identity could be potentially diluted.
FACTS OF THE CASE
The court case of “Pidilite Industries Ltd. v. Sanjay Jain and Another,” which was the basis of the case, was in fact the decision of the petitioner in the suit who, under “Sections 47 and 57 of the Trade Marks Act, 1999,” required the respondents to cease using the trade name “KWIKHEAL” and have the same struck off the list of the register of trademarks. The latter is a company that has produced glue that is well related, and the brand “FEVIKWIK” of which Pidilite is the owner and thus, filed a case for harm to its reputation. The petitioner through the simple means of regular and massive use and advertising of its “FEVIKWIK” trademark already holding a strong market with a design not changed since 1987, argued that it had a right to the recognition of goodwill in such a name.
In the previous case that was the basis for this dispute, the Bombay High Court placed a provisional injunction on the defendant’s earlier packaging, which was similar to the Pidilite’s distinctive packaging. The rectification petition was filed, after defendants changed their packaging and got trademark registration for the new brand, “KWIKHEAL.” Pidilite alleged that the respondents’ use of the word “KWIK” in their updated brand name infringed their trademarks and misled consumers.
KEY ISSUES OF THE CASE
That, whether the respondent’s trademark “KWIKHEAL” a violative mark as it is similar to petitioner’s brand “FEVIKWIK”?
That, whether the respondent exploit the unfair advantage of the petitioner brand’s goodwill in the trademark application?
That, whether the petitioner’s registration does include disclaimers that affect his ability for asserting an exclusive power to exclude the others from using the term, moreover in relation with the word “KWIK”, is correct?
That, whether the trademark of the defendant whose mark was registered may be deleted in accordance with “Section 47 and Section 57 of the Trade Marks Act 1999.”?
CONTENTIONS FROM THE PETITIONER SIDE
The goods that the contested mark is registered for are identical or comparable, and the contested mark’s main feature is similar to the petitioner’s prior mark.
The disputed mark, due to its disorderly designation, would cause confusion to the public and through the fraud, the petitioner would be the illegally new entrant to the Indian market.
The mark under dispute was granted on bad faith because the former mark, which was banned by the Bombay High Court, guaranteed the consumer that they were the petitioner’s mark.
The defendant still uses the identical red “KWIKHEAL”. The mark of that the petitioner uses letters “FEVIKWIK”. Neither any real intention to use the mark existed when it was registered nor any mark has ever been actually used, marking, so according to “Section 47 of the Trade Marks Act, 1999,” the mark shall be removed.
The petitioner contends that the mark which has been challenged was registered without having a bona fide or valid intention to use it and has not been in use so far, which makes it liable for expungement under Section 47 of the Act.[1]
The counsel for petitioner majorly relied on a verdict of the Bombay High Court in “Pidilite Industries Ltd. v. Poma-Ex Products, 2017 SCC OnLine Bom 7470”.[2]
The petitioner has also stated as by “KWIK” is their trademark main feature, and thus the claim was also supported by the Bombay High Court. No appeal has been filed by the undersigned to the said order, which has now become final and hence, binding the respondent to follow the same.
CONTENTIONS FROM THE RESPONDENT SIDE
The respondent points out that the findings of the Bombay High Court in the case of “Pidilite Industries Ltd. v. Poma-Ex Products,” were of prima facie nature, and they were supposed to be for interim relief in an infringement suit.
The respondent contends that the disclaimer on the term “KWIK” found in two trademark registrations of the petitioner, restricts the petitioner from asserting the uniqueness of this word.
The respondent’s evidence consists of information about the trademarks using the name “KWIK” such as “STIKWIK, SOLKWIK and ULTRAKWIK” thus confirming that “KWIK” is a common name in the adhesive and other affiliated industries. By showing the commonly used “KWIK,” the respondent also does the fact that the term embodies a sense of generalness and is not primarily identified with the petitioner.[3]
Respondent’s argument is based on “Section 31 of the Trade Marks Act, 1999,” which provides that the trademark registration is the prima facie evidence of the authenticity of the brand. Also, the registration of “KWIKHEAL” has been made with no objections or oppositions.[4]
According to the respondent, the most recognizable and distinctive aspect of the petitioner’s trademarks is “FEVI”, as can be seen from their branding strategy (e.g., “FEVIKWIK, FEVICOL, FEVISTIK”). Therefore, based on the way “KWIK” is presented as a secondary or non-dominant element, the respondent claims that “KWIKHEAL,” which he uses, does not violate the petitioner’s branding rights.[5]
ANALYSIS OF THE JUDGEMENT
The Delhi High Court, did not rely on the Bombay High Court’s order, stating:
“The packaging that was allegedly infringing as per the Bombay High Court was changed, thus, making the earlier ones invalid. The Bombay High Court’s comments were only prima facie, not the final decision.”
The catchy phrase “POMA-EX” appearing in the respondent’s mark distinguishes it from the product of the petitioner. The respondent resorted to different colours (red, green, black, yellow) than the petitioner who used blue and yellow only. “The descriptive image of the product is in a cylindrical shape, whereas the plaintiff’s product displays a different contoured shape with a dropper which can be twisted to break open.”[6]
“It has been held in South India Beverages “Pvt. Ltd. v. General Mills Marketing Inc.,” that in comparing device marks they have to be taken as a whole and not dissected. The ‘anti dissection rule’ therefore applies to the impugned mark”[7]
According to the Court, “FEVI” prefix is the one that instantly comes to the minds of the customers who want to buy the “Pidilite products”, and thus the suffix “KWIK” is overlooked by such buyers. As a result, the term “KWIK” could not be solely owned nor could it be regarded as unique by a single company. Moreover, Pidilite’s registration of “FEVIKWIK” was subject to a disclaimer, which made it clear that Pidilite was not granted exclusive rights to the word “KWIK.” This disclaimer was found by the Court to be a key point in reducing the petitioner’s claims. It was highlighted that the Registrar of Trademarks that “KWIK” is a common element.[8]
In respect of disclaimer/limitation, the court referred the case of “Registrar of Trade Marks v. Ashok Chandra Rakhit, in which the Hon’ble Supreme Court of India stressed the role of disclaimers in keeping trademark owners from overstepping limits.”[9]
According to the Court, the word “KWIK” is the colloquial form of “Quick” and is frequently encountered in commercial settings.[10]
The Court further stated regarding the issue of a part of a registered mark, that it would be an instructive to refer to the “Division Bench of this Court’s decision in Vardhman Buildtech Pvt. Ltd. v. Vardhman Properties Ltd., 2016 SCC OnLine Del 4738, the judgment gives us clarity that trademark proprietors must file a separate registration of individual elements to declare the exclusivity of them.”[11]
The Court refused the rectification petition and it decided that, “respondent’s device mark which, as noted above, has distinctive dissimilarities. The petitioner cannot have monopoly over the mark “KWIK” and all its variations. The petitioner never opposed the registration of the respondent’s new device, which was granted after the Bombay High Court injunction, despite the suit being still pending.”[12]
CONCLUSION
The Delhi High Court, in “Pidilite Industries Ltd. v. Sanjay Jain,” resolved some challenging issues in Trademark Law. The Court rejected the rectification petition that “Pidilite Industries filed,” stating that the respondent’s trademark “KWIKHEAL” was differentiated enough from “FEVIKWIK” in terms of design, trade dress, and brand names.
The decision thus emphasizes that disclaimers play a vital role in delimiting the range of the exclusivity rule. The Court managed to introduce the “anti-dissection rule” and stated that trademarks must be observed as a single unit.
The Court finally refused Pidilite’s allegations and stated that the concept of fair competition is a necessity.
Author: Arobrata Das, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing
REFERNCES
- SCC Online.
- Live Law.
- The Trade Marks Act, 1999.
[1] Para 17.8.
[2] Pidilite Industries Ltd. v. Poma-Ex Products, 2017 SCC OnLine Bom 7470
[3] Para 18. 3.
[4] Para 18. 4.
[5] Para 18. 5.
[6] Para 22.
[7] South India Beverages Pvt. Ltd. v. General Mills Marketing Inc., 2014 SCC OnLine Del 1953.
[8] Para 24 and 25.
[9] Registrar of Trade Marks v. Ashok Chandra Rakhit, 1955 SCC OnLine SC 12
[10] Para 27.
[11] Vardhman Buildtech Pvt. Ltd. v. Vardhman Properties Ltd., 2016 SCC OnLine Del 4738.
[12] Para 29.
