Sanchayita Lahkar

The High Court of Judicature at Bombay Single Bench of Justice Manish Pitale issued an injunction restraining a defendant company from using the trademark "INOVA 1K PUR" on its adhesive products. The Court recognized "1K PUR" as an established product identification mark associated with the applicant's "Fevicol" brand. The Court granted interim reliefs preventing the defendants from manufacturing, selling, or advertising adhesives under the impugned mark, pending the final disposal of the suit.

The applicant, Pidilite Industries Limited, sought protection for its registered trademarks "1K PUR" and "FEVICOL 1K PUR," both associated with adhesive products. The plaintiff asserted statutory and common law rights, citing continuous usage since 13 October 2006 and registrations dating back to 20 July 2013. Supporting documentation, including registration certificates and sales data, indicated a cumulative turnover of approximately Rs. 484 lakhs between 2006 and 2021.

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Pidilite alleged that in March 2021, it discovered Innovation Coatings Pvt. Ltd. selling adhesive products under the mark "INOVA 1K PUR" via third-party e-commerce platforms. A cease-and-desist notice was served on 16 March 2021, yet no response was received. Subsequently, the defendant filed a trademark application on 5 April 2021 for "INOVA 1K PUR" on a "proposed to be used" basis.

The plaintiff contended that the defendant's act of seeking registration, post notice, indicated malafide intent. Arguments were based on the claim that "1K PUR" was not a generic term but a distinctive sub-brand under "Fevicol," developed over nearly two decades.

The defendant responded that "1K PUR" was merely a trade description meaning "one component polyurethane resin" and asserted that "1K" was derived from the German "Komponente." Alleging that "PUR" and "1K PUR" were generic and in wide use since the 1990s, the defendant argued that Pidilite's registration was invalid and that the mark lacked distinctiveness.

Further, the defendant argued that even the applicant's products bore "moisture curing 1K polyurethane adhesive" descriptions, demonstrating descriptive rather than proprietary use. Citing patent literature and multiple precedents, the defendant claimed the mark's use was descriptive, challenging the exclusivity claimed by the applicant.

In rejoinder, the plaintiff argued that the defendant, by filing its own trademark application, was estopped from asserting that "1K PUR" was generic. The applicant cited judgments stating that mere addition of prefixes or suffixes (such as "INOVA") would not excuse trademark infringement where a leading feature of the registered mark was appropriated.

The Court recorded that the applicant possessed "registration for its trade mark '1K PUR' and 'FEVICOL 1K PUR' dating back to 20th July 2013 with user claim since 13th October 2006." It noted that "the applicant is entitled to claim statutory protection and rights in respect of the trade mark '1K PUR' in the light of the said registrations in its favour."

The Bombay High Court observed that "the applicant/plaintiff is asserting its intellectual property rights in its registered trade mark ‘1K PUR’, which is used in connection with adhesive products along with its well known registered house mark ‘FEVICOL’." It recorded that the applicant had registrations dating back to July 2013, with user claim from 2006, and noted that "continuous use since the year 2006 with registrations dating back to the years 2008 and 2013, can be said to be a product identification mark/brand."

The Court stated that "the defendant has not incorporated any condition or limitation to the use of the impugned trade mark and registration is sought for the entirety of the trade mark i.e. ‘INOVA 1K PUR’." It observed that "it is clear from the manner in which the impugned trade mark ‘INOVA 1K PUR’ is being used on the impugned product, that ‘1K PUR’ forming an integral and essential feature of the trade mark is used in a trade mark sense and not in a descriptive sense."

On the defendant’s challenge to the applicant's mark being common to trade, the Court recorded that "assertions regarding common to trade or publici juris cannot be made by simply referring to certain material in the public domain, showing the use of a particular expression." It emphasized that "a party is required to satisfy the test of extensive, actual and continuous use of such an expression in the market, which necessarily entails detailed material showing sales figures and other such material." The Court concluded that "there is no material to show substantial, continued, extensive and actual use of the said expression as a trade mark", and thus the defendant’s claim was rejected.

Further, the Court stated that "the defendant cannot rely upon the German word ‘Komponente’ as the origin for the expression 1K, to claim that it is a commonly used trade description in India," noting that "it would be stretching the matter a bit too far to expect that a carpenter and other such persons, who purchase adhesives, understand ‘1K PUR’ as one Komponente polyurethane resin adhesive."

Discussing the alleged addition of the word "INOVA," the Court stated that "mere addition of a word to the mark in question cannot be of any advantage to a party and that a case of infringement is indeed made out," citing Ruston & Hornsby Ltd. v. Zamindara Engineering Co.

The Court observed that "the defendant has failed to demonstrate how the registration of the applicant’s trade mark could be said to be ex-facie illegal or fraudulent or that it would amount to shocking the conscience of this Court." It stated that "the documents on record show continuous commercial user of the mark ‘1K PUR’ in respect of adhesives by the applicant from the year 2006."

Regarding the principle of estoppel, it was stated that "a party cannot be allowed to blow hot and cold at the same time," and that "the defendant itself applied for registration of the impugned mark incorporating ‘1K PUR’, hence it cannot now dispute the distinctiveness of the mark."

On the question of dishonest adoption, the Court recorded that "prima facie the adoption of the trade mark ‘INOVA 1K PUR’ by the defendant can be said to be dishonest and with an intention to ride upon the goodwill of the applicant." It stated that "the material brought to the notice of this Court shows that on third party e-commerce websites like indiamart.com, when the products of the defendant are searched, the first entry seen is ‘FEVICOL’ adhesive and below that the words ‘INOVA 1K PUR’ are found." This was found to reinforce the applicant’s case for interim relief.

Rejecting the defendant’s allegations about misrepresentation, the Court observed that "the descriptive words ‘moisture curing 1K polyurethane adhesive’ are in any case used in a descriptive sense and these proceedings are really concerned with the depiction of the registered trade ‘1K PUR’ on the products of the applicant."

In conclusion, the Court stated that "unless interim reliefs as prayed on behalf of the applicant are granted concerning infringement and passing off, it will continue to suffer grave and irreparable loss, thereby demonstrating that the balance of convenience is also in favour of the applicant."

The Bombay High Court allowed the interim application in terms of prayer clauses (a), (b), and (c) as extracted from the judgment. The Court directed that pending the hearing and final disposal of the suit, the defendants, their directors, proprietors, partners, owners, servants, subordinates, representatives, stockists, dealers, agents, and all other persons claiming through or under them or acting on their behalf or under their instructions are restrained by an order and injunction of this Hon’ble Court from manufacturing, marketing, selling, advertising, offering to sell or dealing in the impugned products or adhesives or any similar goods or any other goods bearing the impugned mark "1K PUR" (with or without any other mark), or any other mark/label identical with or similar to or in any manner comprising of the marks "1K PUR" of the Plaintiff.

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Further, the Court directed that pending the hearing and final disposal of the suit, the defendants, their directors, proprietors, partners, owners, servants, subordinates, representatives, stockists, dealers, agents, and all other persons claiming through or under them or acting on their behalf or under their instructions are restrained from infringing in any manner the "1K PUR" registered marks of the Plaintiff bearing registration numbers 2567654, 2567653, and 1637794 in any manner. They are restrained from using, in relation to the impugned products or adhesives or any other goods for which the "1K PUR" mark of the Plaintiff is registered, or any goods similar to the goods for which the "1K PUR" mark of the Plaintiff is registered, the impugned mark "1K PUR" (with or without any other mark), which is identical with or similar to the "1K PUR" or "FEVICOL 1K PUR" or "1K PUR" registered marks of the Plaintiff, and from manufacturing, selling, offering for sale, advertising, or dealing in adhesives or similar goods or any other goods bearing the impugned mark "1K PUR" (with or without any other mark).

Additionally, the Court directed that pending the hearing and final disposal of the suit, the defendants, their directors, proprietors, partners, owners, servants, subordinates, representatives, stockists, dealers, agents, and all other persons claiming through or under them or acting on their behalf or under their instructions are restrained from committing the tort of passing off in any manner and from manufacturing, marketing, selling, advertising, offering to sell or dealing in the impugned products or adhesives or any similar goods or any other goods bearing the impugned mark "1K PUR" (with or without any other mark), or any other mark/label identical with or similar to or in any manner comprising of the marks "1K PUR" of the Plaintiff.

Advocates Representing the Parties:

For Applicant/Plaintiff: Mr. Hiren Kamod with Mr. Nishad Nadkarni, Mr. Aasif Navodia, Ms. Khushboo Jhunjhunwala, Ms. Rakshita Singh, and Ms. Jaanvi Chopra, instructed by Khaitan & Co.

For Defendant: Mr. Alankar Kirpekar with Mr. Shekhar Bhagat, Mr. Ayush Tiwari, Mr. Rajas Panandikar, and Mr. Chinmay Pagedar, instructed by Shekhar Bhagat and Neelaja Kirpekar.

Case Title: Pidilite Industries Limited v. Innovation Coatings Pvt. Ltd.

Neutral Citation: 2025: BHC-OS:6960

Case Number: Interim Application (L) No. 20626 of 2021 with Leave Petition No. 295 of 2021 in Commercial IP Suit No. 18 of 2022

Bench: Justice Manish Pitale

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