In a recent trademark and design infringement case brought before the Delhi High Court, the Court issued an ex parte ad interim injunction in favour of the Plaintiff, Pidilite Industries Limited, restraining the Defendants, John Doe(s) /Ashok Kumar(s) & Ors, from manufacturing, authorising the manufacture, selling, importing, exporting, retailing, distributing, marketing and/or using or dealing in the products identical and/or deceptively similar to the Plaintiff’s trademarks DR FIXIT and ARALDITE either as a trademark, trading name, domain name or as a part of the packaging, artwork, get-up, layout, designs or in any manner whatsoever.
Brief Facts
The Plaintiff, founded in 1959 and incorporated under the Companies Act, 1956 is a leading entity in the adhesives, sealants, construction chemicals, hobbies colours, and polymer emulsions sectors in India. The Plaintiff has developed a strong reputation, with brands such as FEVICOL, DR.FIXIT, ARALDITE, and FEVIKWIK becoming synonymous with quality and reliability in both the Indian and global markets, is a recipient of several prestigious awards and enjoys significant social media presence across various platforms.
The Plaintiff holds numerous trademark registrations for DR.FIXIT (word mark per se) and ARALDITE (word mark per se) as well as DR FIXIT and ARALDITE distinct label/packaging, including design registrations for DR. FIXIT containers in which its products are sold. These registrations provide comprehensive protection for its products across various classes and categories.
In April 2024, the Plaintiff became aware of counterfeit products being available for sale across various wholesale markets in Delhi NCR and Uttar Pradesh regions and being visually identical to the Plaintiff’s products.
The Plaintiff sought to implead unknown Defendants (John Doe) to account for unknown entities associated with the Defendants’ counterfeiting activities, as it lacked complete information regarding the full network and source of counterfeiters. By doing so, the Plaintiff aimed to avoid premature disclosure of identities and prevent hindrance to any potential search and seizure operations.
Plaintiff’s Submissions
The Plaintiff submitted that it has obtained trademark registrations for the word marks and distinctive label/packaging of both DR.FIXIT (word mark per se) and DR.FIXIT distinctive label/ packaging thereof as also the trademark ARALDITE (word per se) and ARALDITE distinctive label/ packaging thereof and the design registrations in the name of the Plaintiff.
The Plaintiff alleged that the Defendants were involved in the unauthorised manufacture, sale and distribution of counterfeit products bearing the Plaintiff’s well-known trademarks, and that the Defendant’s counterfeit products were visually identical to those of the Plaintiff.
The Plaintiff argued that the Defendants were well aware of the Plaintiff and its products, and the infringing counterfeit products were clear evidence of intention of the Defendant to ride upon the goodwill and reputation of the Plaintiff and that any continued sale of these counterfeit goods would cause irreparable harm, loss and injury to the Plaintiff’s goodwill and reputation, particularly since its trademarks have been declared well-known under Section 2(zg) of the Trade Marks Act, 1999.
The Plaintiff also highlighted various competing differences between its genuine products and the counterfeit ones, including discrepancies in the packaging, weight, batch numbers, and hazard symbols. It was also noted that the Defendants’ counterfeit products lacked the same quality and reliability as the Plaintiff’s genuine offerings.
The Plaintiff sought an ex parte injunction to prevent the Defendants (John Doe) from continuing their infringing activities while also seeking the appointment of Local Commissioners to visit the Defendants’ premises and seize infringing goods.
Court’s Observations and Order
Upon reviewing the arguments and documents presented by the Plaintiff, the Court observed that the Plaintiff had made out a prima facie case for the grant of an ex parte ad interim injunction and granted an ex parte ad interim injunction in favour of the Plaintiff. The trademarks DR.FIXIT and ARALDITE, both in word form and in distinctive packaging, were declared well-known trademarks, and the design registrations of DR.FIXIT containers were valid and subsisting.
The Court further noted that the balance of convenience was in favour of the Plaintiff and against the Defendants (John Doe), and there was a likelihood of irreparable harm, loss and injury to the Plaintiff should the injunction not be granted. In addition to the injunction, the Court allowed the Plaintiff’s application to appoint Local Commissioners to visit the Defendants’ premises and seize counterfeit products.
Authors: Manisha Singh and Lisha Chauhan
First Published by: Lexology here