The ‘Kwik’ Fix – Part I

Earlier this month, through an interim order, the Bombay HC held that the mark “Kwikheal” is deceptively similar to “Fevikwik”. The court through J. Dhanuka undertook an elaborate analysis of the issues at hand and went on to grant an injunction against the proprietors of “Kwikheal.”

As simple as the above seems to be, the order is equally layered. It records an exhaustive back-and-forth between the two parties and well-reasoned findings by the Judge. Before we launch into an analysis of these findings, we must take a look at how they came to be:

In 2014, Pidilite Industries, the renowned manufacturers of “Fevikwik” adhesives sued Poma-Ex Products, the manufacturers of “Kwikheal” adhesives over infringement of trademark and passing off. Pidilite industries are well known for products such as “Fevicol” “fevistick”, “feviart”, “Mr.Fixit” etc.

Pidilite registered the “fevikwik” mark through four certificates. All four of these were placed on record. I have cross-checked these with the e-register and tabulated the relevant details of the four registrations:

Pidilite has also spent considerable amounts on the advertising and promotion of “fevikwik” products – amounting to about Rs. 2125 Lakhs in 2012-2013. It further evidenced its reach in the market by recording over Rs. 305 crores in turnover from the sale of its Fevikwik products in the same accounting year.

In contrast, Poma-Ex does not have any such expenditure or turnover on record. Although it has also registered the “Kwikheal” mark, it has done so through only a single registration in Class 16. The details of that are similarly tabulated:

On 5^th May, 2014, the Bombay HC passed an ad-interim injunction against Poma-Ex, restraining them from selling their products under what the Court prima facie found to be a deceptively similar mark. Despite this, several photographs taken by a deponent during investigation of a few shops in Ludhiana (attached in the affidavit but not accessible) reveal that Poma-Ex violated the same. According to the photographs, Poma-Ex’s products are still being sold under mark and packaging that is deceptively similar to that of “Fevikwik.” In fact, one picture even shows that both the rival products are placed in shelves labeled “Fevikwik”.

Pidilite’s primary allegations are that Poma-Ex’s “Kwikheal” mark infringes and/or passes off as their mark “Fevikwik”, including the “Fevikwik” distinctive packaging. Pidilite made out a strong case, and approached the same through some notable constructs –  (a) that “Kwikheal” (although registered) infringes/passes off its word mark “Fevikwik” (b) that Kwikheal’s registration itself is invalid, and that (c) Kwikheal infringes/passess off its distinctive packaging.

I have followed the case by drawing on these key issues:

Does Kwikheal infringe the word mark Fevikwik?

Pidilite argued that both “fevi” and “kwik” are two separate elements of the word mark “fevikwik”. Of this, “kwik” is the dominant feature – which was deliberately adopted by Poma-Ex.  Further, “kwik” is a derivation of the word “quick” and has garnered considerable reputation and goodwill through commercial use by Pidilite. As this commercial use began way before Poma-Ex’s use of the mark, the adoption of the word mark is colourable and also attracts a claim of passing off.

In response to this, Poma-Ex countered that “kwik” is a word common to the trade since it is a misspelt version of the word “quick” and relates directly to the products in question i.e. instant adhesives. Accordingly, Pidilite cannot have a monopoly over the word. They further argued that the word-marks “Kwikheal” and “Fevikwik” have no phonetic similarities and that the word “Kwik” is used as a prefix by Poma-Ex, whereas it is used as a suffix by Pidilite.

The Court opined that there was phonetic similarity between “fevikwik” and “kwikheal” – primarily due to the use of the essential feature, “kwik”. It held that “kwik” is not a common word, since Poma-Ex could not show a dictionary meaning of the same or any other documents to prove it. Further, relying on Rahul Uttam Suryavanshi v. Sunil Manikchand, held that they cannot claim the word “kwik” is common or descriptive because they themselves have gotten the word registered. In doing so, the Court also rejected the contention that “Kwik” was used as a suffix in “Kwikheal” and can therefore not lead to any confusion with “Fevikwik”.

Disclaimers on registration applicable?

A notable argument put forward by Poma-Ex was that two out of four of the registered marks included a disclaimer against exclusive of the word “Kwik” (see table above). Pidilite contended that this being true, it would not affect the operation of the two other registration certificates which did not have such a disclaimer. However, Poma-Ex argued that the two trademarks that had the disclaimers and the remaining two marks that did not have the disclaimer, were in fact associated trademarks. Therefore, the disclaimers would be operational for all the registrations.

The Court refused to agree with this. It opined that associated trademarks are to be registered as such. Upon reading section 2(c) of the Trademarks Act, 1999 along with section 16, it is clear that, “to avoid any confusion in a situation where an application for registration in respect of any goods or services is identical with another trade mark which is registered or in the name of the same proprietor in respect of the same goods or description of goods or same services or description of services or so nearly resembles it, the Registrar may at any time require that the trademarks shall be entered on the register as associated trademarks” (emphasis mine)

Further, no part of the Trademarks Act specifies that a disclaimer in one registration should be imported into another. It relied on Skol Breweries Ltd. v. Som Distilleries to hold that every registration is an independent registration and that the disclaimers would not be applicable to the other registrations.

Validity of the “Kwikheal” registration

The next thing that Pidilite did was to launch an offensive against the registration of “Kwikheal”. It (1) first, contended that a court can go behind the registration of a trademark and grant an injunction against use of the same in the interim stage, if the registration is prima facie illegal, fraudulent and shocks the conscience of the court; (2) the registration of “Kwikheal” is in contravention of section 11 (1) of the Trademarks Act and is therefore illegal; (3) Poma-Ex failed to disclose the ad-interim injunction operating against the “Kwikheal” mark to the registry, before receiving its certificate of registration; and (4) due to this illegality, the validity of registration is affected, making it impossible for Poma-Ex to exercise the exclusive rights granted by the registration.

The Court squarely agreed with these contentions. It relied on Lupin Ltd. v. Johnson & Johnson, to hold that it could, in its interim stage, go into validity of the registration of the trademark. In order to grant interim relief and consequentially decide the issue of infringement, the court could go into a prima facie consideration of validity of registration. The Court allowed Pidilite’s contentions that 11(1)(a) and 11(1)(b) are on a higher pedestal than sections 11(2) and 11(3). This is because the condition in section 11(5) which states that grounds of refusal laid out in sections 11(2) and (3) can only be raised in opposition proceedings, does not apply to section 11(1)(a) and (b). In consequence, since the “kwikheal” mark is identical to the registered trademark “Fevikwik” and there was a similarity/identity of the goods covered by it, section 11(1) applied and the registration was prima facie invalid.

Here, it would be fitting to note that precedent as per Lupin Ltd. is slightly more nuanced than the Court has let on. The ratio in Lupin Ltd. allows a defendant to bring up illegality/fraud of a plaintiff’s registration even in the interim stage, so that the Court may consider invalidity of registration of the plaintiff’s mark on those grounds and refrain from granting an injunction in favour of the plaintiff – thereby unjustly enriching him. It is for that reason, that it becomes an important prima-facie consideration to be undertaken by the Court at the interim stage. Further, towards the end of the Lupin Ltd. order, the court also warns against an elaborate investigation into this issue at the interim stage. A registered mark provides a strong presumption in favour of the proprietor. Therefore, a “high prima facie threshold” is required to challenge the invalidity of registration at the interim stage.  While the Court in this case, definitely believes this high threshold to have been satisfied in the present case, I consider the same to be debatable.

In Part II, I deal with the remaining issues and an analysis of the order.

Image from here.