EFFECT OF DURATION OF TRADEMRK’S PRIOR EXISTENCE ON TM

INFRINGEMENT CASES PERTAINING TO INTERIM INNJUNCTIONS

Case 1:

Pidilite Industries Limited vs Platinum Waltech Limited, Bombay High Court [I.A NO. 1
OF 2020]

3. The Suit seeks reliefs in trade mark, copyright and designs combined with causes of action in
passing off in each. The Plaintiff is a well-known manufacturer and vendor of waterproofing
chemicals, construction bonding chemicals, materials, additives and other products relating to the
construction and paint industry. It also manufactures industrial and textile resins and organic
pigments since at least 1969.

5. The Plaintiff has trade mark registration of the mark DR FIXIT and the device of the man with
the yellow construction helmet. This device is a leading, essential and distinctive feature of its
mark in various classes. The mark and the label have been used continuously and without
interruption since adoption. The mark and the label have promoted the products. This is why Mr
Kamod for the Plaintiff says that the Plaintiff has acquired significant reputation and goodwill in
the mark and the distinctive device of the man in a yellow construction helmet.

6. One of the oldest products of the Plaintiff within the DR FIXIT range is sold under the marks
LW and LW+. The Plaintiff began use of the mark in 1993. The house mark DR FIXIT came to
be introduced in 2001 as an umbrella brand for all its waterproofing and bonding products. The
mark LW continues to be used as a product identification mark within the range of products. An
improved variant was launched in 2009 under the mark LW+. The LW and LW+ products within
the DR FIXIT range are specially formulated compounds composed of a surface active
plasticizing agent, polymer and additive. This used as additives for cement, concrete, mortar and
plasters and assists in waterproofing.

11. Again, the Plaintiff claims goodwill and reputation acquired by dint of such usage over an
extended period of time. This use has been continuous and uninterrupted.
18. As to the device of DR FIXIT, it is no answer to say that the man portrayed by the Defendant
is more than youthful than that portrayed by the Plaintiff. Perhaps these only speak to the fact
that the Defendant began its use much after the Plaintiff.

22. The Interim Application will have to be made absolute in terms of prayer clauses (a), (b), (c)
and (d) of the Interim Application, which read thus:

Case 2:

Alkem Laboratories Ltd vs Dr Reddys Laboratories Ltd. & Ors. CS(COMM) 506/2021

2. “…The plaintiff obtained registration of the mark PAN-40 on 20.01.2000, the mark PAN- 20
was registered on 20.01.2000, and the mark PAN-20 MD was registered on 09.02.2010 and so
on. In 2004, the plaintiff adopted the most successful variant of the PAN Family of Marks, i.e.
the trademark/brand 'PAN-D'. The mark PAN-D has been continuously, extensively and
uninterruptedly used for pharmaceutical, medicinal and ayurvedic preparations and substances.”

9. The fact is that the plaintiff has admittedly been using the 'PAN' set of marks since 2000.
Number of its marks including PAN- D, PAN -40 and PAN- 20 are registered for a long time. On
the other hand, the defendants have recently entered the market with their product 'Dr.PAN' and
'Dr.PAN D'. The trademark sought to be used by the defendants is quite similar to the trademarks
being used by the plaintiff.

13. Hence, court noted a catenae of judgments to conclude that 'Liv.52' is still distinctive, which
has been used for the last 57 years.

14. At this stage, I cannot help noticing that the plaintiff has been using the PAN set of marks
since the year 2000 i.e. 21 years. The defendants who have started manufacturing the impugned
product would have to show that the word 'PAN is generic and un-protectable in law. I also
cannot help noticing that the defendants themselves have applied for registration of the
impugned mark and hence prima facie cannot claim the mark has become publici juris.

16. The plaintiff has made out a prima facie case. The defendants are restrained by an ex-parte
injunction.

Case Law 3:
Bajaj Electricals Limited vs Gourav Bajaj And Anr. [I.A NO. 1 OF 2020]

3. It is stated that the Plaintiff is a public limited company duly incorporated under the Indian
Companies Act, 1913 and deemed to exist within the purview of the Companies Act, 2013. It is
stated that the Plaintiff is a part of the Bajaj conglomerates of businesses and industries, one of
the oldest business groups in India…It is stated that in or about January 1961, the Plaintiff
honestly, independently and in a bona fide manner adopted and commenced use of the trade
mark / name / house mark BAJAJ in relation to its said goods and services.

7. It is further stated that the Plaintiff's BAJAJ trade mark has also been declared as a well-
known mark by this Court.

11. The Plaintiff has been using the name and mark BAJAJ since 1961; BAJAJ has been
recognized as a well- known mark, both by Courts as well as by Registry; Plaintiff has hundreds
of registration for their mark BAJAJ and marks derived from BAJAJ issued in their favour;
Plaintiffs turnover runs into crores; while examining the Defendants' mark, the Registrar has
cited Plaintiff's marks. All these factors support the contention of the Plaintiff that the adoption
and use by Defendants of their impugned name and mark is dishonest. I am of the opinion that
the use of the impugned trade mark / name BAJAJ, impugned label and the impugned website
address www.apnabajajstore.com cannot be said to be honest. In these circumstances, a strong
prima facie case for the grant of ad-interim reliefs is made out. Unless reliefs as prayed for are
granted, the Plaintiff is likely to suffer injury.

12. There will thus be an ad interim order in terms of prayer clauses (a), (b) and (c) of the Interim
Application, which read as follows.

My comment on the research question:

Section 11(6) of Trademark Act, 1999 provides as follows:

(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take
into account any fact which he considers relevant for determining a trade mark as a well-known
trade mark including-
(i) the knowledge or recognition of that trade mark in the relevant section of the public including
knowledge in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) the duration, extent and geographical area of any promotion of the trade mark, including
advertising or publicity and presentation, at fairs or exhibition of the goods or services to which
the trade mark applies;
(iv) the duration and geographical area of any registration of or any application for registration
of that trade mark under this Act to the extent they reflect the use or recognition of the trade
mark;
(v) the record of successful enforcement of the rights in that trade mark; in particular, the extent
to which the trade mark has been recognized as a well-known trade mark by any court or
Registrar under that record.

Although any one of the abovementioned factors may be sufficient so as to determine a mark as
well known, yet three out of five conditions point towards duration of trademark to be an integral
factor of consideration for the same. Additionally, it is settled that well known trademark enjoys
stronger and better protection in case of trademark infringement, if any. Thus, it is inferenced
that a well-known mark is to some extent, driven by duration by virtue of Section 11(6) and so
any judicial pronouncement where a well-known mark owner was granted interim injunction
could be persuaded as being affected by the duration of existence of trademark in the market.

It is stated that the Defendants are operating two retail electronic and electrical appliances stores at
Abohar, Punjab under the impugned trade name / impugned mark "APNA BAJAJ STORE".

is stated that the Defendants are also operating a website under the impugned domain name
www.apnabajajstore.com.