Asian Paints Limited vs Lalith Choudhary

1. At the outset Mr. Bhagat, learned Counsel appearing for the Applicant tenders the draft amendment. The amendments are taken on record and marked ‘X’ for identification. By the said amendment, the Applicant seeks to delete the impugned mark “ASTON PAINTS acrylic emulsion” from prayer clause a(i) and f(i) of the suit and the Interim Application, the consequential averments pleaded in paragraph 15(b) of the Plaint, and to annex the trade mark registration and/or online status pages of the registrations with consequential pleading in paragraph 15(b) of the plaint and to carry out all consequential amendments in the suit, interim application, affidavits,

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leave petition and other ancillary documents. Leave to amend granted. Amendment to be carried out within a period of two weeks. Reverification dispensed with.

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2. By order of 22^nd June, 2023, this Court had granted adinterim relief in terms of infringement of the Plaintiff’s trade mark/label marks “TRACTOR EMULSION”, “TRACTOR EMULSION SHYNE” and “TRUCARE exterior wall primer”. As leave under ClauseXIV was not obtained, the relief in terms of passing off was not granted. Subsequently the Court Receiver executed the commission and during the execution of the order few more infringing label marks were found i.e. ROYALE, ASTON PAINTS wall primer and BILDAR PAINTS.

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3. Mr. Bhagat, would seek ad-interim relief in respect of infringement of trade mark and copyright in terms of the additional marks found as well as relief of passing off in respect of the present impugned marks as well as the earlier marks.

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4. Though served none appears on behalf of the Defendant. By order of 22^nd June, 2023 this Court had come to a prima facie finding upon comparison of the rival marks that there is overall similarity in the marks, artwork and the trade dress which is deceptively and confusingly similar to that the marks of the Plaintiff. This Court held that the comparison of the rival labels led to an

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inference that the impugned marks depicted under the pirated artwork by the Defendant has the propensity to deceive the consumer into believing that the products sold under the impugned marks are associated with that of the Plaintiff. The substantial goodwill and reputation earned by the Plaintiff is noted by the Court which is demonstrated from the sales figure and promotional expenses which are placed on record. Prima facie the Plaintiff’s label mark/trade dress by reason of the reputation and goodwill generated by the Plaintiff is identified by the general public with that of the Plaintiff’s products.

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5. The execution of the order of ad-interim relief has revealed three more impugned marks i.e. “Royal”, “ASTON PAINTS wall primer” and “BILDAR PAINTS TULIP”. Mr. Bhagat would submit that the impugned marks infringes the Plaintiff’s label mark and artistic works in the marks “ROYALE”, APEX ULTIMA, and APEX SHYNE.

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6. The rival products are reproduced herein below for

comparison.

PLAINTIFF’S MARKS

DEFENDANT’S MARKS

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7. An overall comparison of the rival products will prima facie disclose that deceptive similarity in the label mark/trade dress and the artistic work. The Defendant by use of identical layout with same proportions and placement has depicted its mark in a manner which will deceive the consumer with average intellect and imperfect recollection to believe that the Defendant’s product is that of the Plaintiff. The reputation and goodwill generated by the Plaintiff in the trade channel requires no reinforcement. As far as the impugned mark “Royal” is concerned, there is phonetic similarity between the two marks apart from the overall similarity in the artistic work. The artistic work in the label marks “APEX ULTIMA” and “APEX SHYNE” has been slavishly copied by the Defendant. The attempt appears to be to come

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as close as possible to the Plaintiff’s registered mark. The test of infringement is matter of first impression and when so applied the impugned marks are deceptively similar to that of the Plaintiff’s label mark. Considering identity of the goods as well as the similarity of the mark, the likelihood of confusion amongst the consumers cannot be ruled out. Further considering that the Plaintiff has garnered enormous goodwill and reputation in the market prima facie it appears that the Defendant with dishonest intention to ride upon the goodwill and reputation of the Plaintiff has copied the label mark and artistic work.

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8. As far as the infringement of the Plaintiff’s mark of ROYALE, APEX SHYNE, APEX ULTIMA is concerned a strong prima facie case is made out by the Plaintiff. In event the Plaintiff is not granted ad-interim relief the Plaintiff will suffer irreparable harm/loss which will have the effect of diluting and debasing the Plaintiff’s label mark and copyright in the artistic work. The manner in which the label marks/trade dress/get up/packaging has been copied by the Defendant cannot be said to be matter of mere coincidence.

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9. The goodwill and reputation acquired by the Plaintiff prima facie discloses that the Plaintiff’s mark is identified by the public with its products. The Plaintiff’s label mark and trade dress distinguishes the Plaintiff’s goods from that of others. The use of the

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pirated artistic work will mislead the public in associating the Defendant’s goods as that of Plaintiff resulting in damaging the Plaintiff’s goodwill and reputation and thereby the balance of convenience is in favour of Plaintiff. The burden was upon the Defendant to show that added material as far as his label mark is concerned is sufficient to distinguish goods of the Defendant from that of the Plaintiff, which has not been discharged in present case.

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10. In light of the above strong prima facie case for grant of adinterim relief in terms of prayer clause (a)(i), (b)(i), (c)(i) and (c) is made out which reads thus:

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“a(i) pending the hearing and final disposal of the suit, the Defendant by themselves, their proprietor, servants, agents, distributors, stockists, assignees and all those connected with the Defendant in their business be restrained by an order and temporary injunction of this Hon’ble Court from manufacturing, marketing, distributing, selling and/or using in any manner whatsoever in relation to their emulsion, wall primer, paints or other like goods used in the paint industry, the impugned mark ROYAL advanced wall primer and the impugned label marks of ASTON PAINTS wall primer and BILDAR PAINTS TULIP emulsion or any mark/s or label/s identical with and/or deceptively similar to the Plaintiff’s trade marks ROYALE, APEX ULTIMA weather proof emulsion label and APEX SHYNE dust proof label so as to infringe upon the Plaintiff’s said trade mark ROYALE registered under Nos. 904263, 904264, 944265, 1299194, 1841835, 1841836, 1994713, 1994715, 1994716, 1994718, 1994719, 1994721, 1994723, 1994724, 2085431,2276312, 2398737, 2398741, 2844865, 2985791, 2985792,

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2992271,3050117, 3176569, 3259454, 3259455, 3259457, 3259458, 3272234,3272235, 3272236, 3286762, 3559542, 3569037, 3569038, 3569039, 3569040, 3569041, 3569042, 3570575, 3570576, 3570577, 3570602,3661422, 3661423, 3680416, 4632840, 4768409, 4768415, 4881194,5027899, 5084327, 5401880, 5415550 and 5481974, the trade mark APEX ULTIMA weather proof exterior emulsion registered under No. 2130512 and the trade mark APEX SHYNE DUST PROOF registered under No. 4930048, all in class 02;

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b(i) pending the hearing and final disposal of the suit, the Defendant by themselves, their proprietor, servants, agents, distributors, stockists, assignees and all those connected with the Defendant in their business be restrained by an order and temporary injunction of this Hon’ble Court from manufacturing, marketing, distributing, selling and/or using in any manner whatsoever in relation to their emulsion, wall primer, paints or other like goods used in the paint industry, the impugned pirated artworks depicted on its ASTON PAINTS wall primer, BILDAR PAINTS TULIP emulsion and ASTON PAINTS acrylic exterior emulsion (appended at Exhibit X1 to the Plaint) bearing a colour scheme, layout, get-up, style, artwork, trade dress and representation or any other artwork which is substantially/strikingly similar as regards the colour scheme, lay-out, get-up, style, artwork, trade dress and representation to the Plaintiff’s original artistic labels of APEX ULTIMA weather proof exterior (appended at Exhibit P2 to the Plaint), APEX SHYNE DUST PROOF (appended at Exhibit P7 to the Plaint), ACE ADVANCED exterior emulsion (appended at Exhibit P10 to the Plaint), so as infringe upon the Plaintiff’s copyrights subsisting in its ACE ADVANCED exterior emulsion and APEX ULTIMA weather proof exterior emulsion labels and so as to infringe upon the Plaintiff’s copyrights vesting in its APEX SHYNE DUST PROOF label registered under No. A-144769/2023 dated 18.05.2023;

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c(i) the Defendant by themselves, their proprietor, servants, agents, distributors, stockists, assignees and all those connected with the Defendant in their business be restrained by a perpetual order and injunction of this Hon’ble Court from manufacturing, marketing, distributing, selling and/or using in any manner whatsoever in relation to their emulsion, wall primers, paints or other like goods used in the paint industry, the impugned mark ROYAL advanced wall primer and the impugned trade dress on its ASTON PAINTS wall primer, BILDAR PAINTS TULIP emulsion and ASTON PAINTS acrylic exterior emulsion labels or from using any mark or trade dress identical with and/or deceptively similar to the Plaintiff’s distinctive and prior used trade marks and the distinctive trade dress of ROYALE and APEX ULTIMA weather proof emulsion, APEX SHYNE Dust Proof and ACE ADVANCED exterior emulsion labels, so as to pass off the Defendant’s goods and business as and for the goods and business of the Plaintiff or in some way connected or associated therewith;

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(c) pending the hearing and final disposal of the suit the Defendant by themselves, their proprietor, servants, agents, distributors, stockists, assignees and all those connected with the Defendant in their business be restrained by an order and temporary injunction of this Hon’ble Court from manufacturing, marketing, distributing, selling and/or using in any manner whatsoever in relation to their emulsion, wall primers, paints or other like goods used in the paint industry, the impugned label marks and the impugned trade dress on their ASTON PAINTS WALL premium interior emulsion, BILDAR PAINTS premium emulsion and ARTTEK interior/exterior wall primer labels or from using any mark or trade dress identical with and/or substantially similar to the Plaintiff’s distinctive and prior used trade marks and the distinctive trade dress of TRACTOR emulsion, TRACTOR SHYNE emulsion and TRUCARE exterior wall primer labels, so as to pass off the

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Defendant’s goods and business as and for the goods and business of the Plaintiff or in some way connected or associated therewith;”

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11. The present ad-interim reliefs are in addition to the earlier reliefs granted by order of 22^nd June, 2023. The ad-interim reliefs to

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continue till next date.