Previously, in Part I, I had introduced the facts of the case and had dealt with some of the key issues thrown up by this order, including: infringement of the word-mark “Fevikwik”, disclaimers on the registrations, and validity of registration of “Kwikheal”. Here, I deal with the remaining issues and attempt an analysis of the order.
Pidilite claimed that even if Poma-Ex’s registration was valid, it wouldn’t allow for a defence u/s 28, 29 or 30 of the trademarks Act. This is because (and it gets interesting and also slightly complicated here) in practice, Poma-Ex had not used its own registered trademark, but one that was similar to Fevikwik’s distinctive packaging. The mark and packaging in use was confusingly similar to that of Fevikwik – being of a colour combination of yellow and blue, with the word “Kwikheal” in red font similar to “Fevikwik”, including a little blue ball on top. That this confusingly similar mark is still in usage is clear from the photographs attached in the affidavit, as obtained from the deponent’s investigations of shops in Ludhiana. Therefore, it was claimed that there was a clear case of infringement and also of passing off – since Pidilite had acquired considerable reputation and goodwill in the mark, which was clearly being misrepresented by Poma-Ex and if allowed to continue, would result in damage. The previously delivered ad-interim order had also confirmed the same.
The Court agreed with these contentions and held that the packaging of the two were identical. Further, it also held that in contrast with Pidilite, Poma-Ex had not evidenced any sort of expenditure on promotion or advertising of “Kwikheal”. In view of this as well as Fevikwik’s reputation, the Court opined that the Kwikheal packaging was colourable and was likely to cause confusion among the public.
The Court tightened its opinion by relying on Hiralal Parbhudas v. Ganesh Trading Co. which held, “a person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same marks as that with which he was acquainted” – and confirmed that “the overall structural and phonetic similarity between two products (Fevikwik & Kwikheal packaging) is likely to cause confusion between them in the mind of the customers.” The court also held that this confusion would cause damage and lead to a successful claim of passing off.
Through an elaborate decision tracing the issues outlined above, the Bombay HC has held the “Kwikheal” mark – including the packaging – to be deceptively similar to the “Fevikwik” mark. That being so, there are some aspects of the order I’d like to highlight:
Word mark independent of distinctive packaging?
First, I’m not sure if the Court correctly allowed the registered “Kwikheal” mark to have infringed both the word mark “Fevikwik” and its distinctive packaging. It is true that both the word mark and the distinctive packaging have been challenged and also upheld by the Court. However, I believe the Court should have made a difference between the two. To my mind, the problem boils down to a similarity of packaging. In other words, the similarity of the Kwikheal label mark with that of Fevikwik’s distinctive packaging.
Let me explain: as noted from the table in the previous post, while “Fevikwik” has independent registrations for the wordmark and the distinctive packaging, “Kwikheal” mark is a single mark. Kwikheal was registered as a mark under class 16. The only Fevikwik mark registered under the same class is its distinctive packaging. To me, two things that work in favour of the Kwikheal registration are – (a) that the registered label mark is not similar to Fevikwik’s distinctive packaging (see order p.56-57) and (b) this distinctive packaging mark is one of the two registrations, that has a disclaimer against exclusive use of the word “kwik”.
A reading of the order shows that Pidilite’s primary concern is that there exists in the market, a mark that is deceptively similar to Fevikwik. However, this mark is different from the mark that has been registered by Poma-Ex. That being so, should the Court have gone behind the validity of registration of the trademark at all? Further, should the court have allowed Pidilite to extract one part of its word mark i.e. “Kwik” from the packaging, and claim monopoly over it – despite a difference in the packaging/label of the two products? And also despite the disclaimer operating against it?
Would it be more prudent to first, view the distinctive packaging as independent of the wordmark, and then consider if Kwikheal really infringes Fevikwik?
Having said that, I do admit that the fact situation is a little complex in that the mark in use is different from the registered one. And as such, must be kept in mind before commenting on the correctness of the court’s order.
Long-drawn interim orders
Finally, although the Court has noted that this was an interim consideration and that the balance of convenience is prima facie in favour of Pidilite, this order can hardly be called one. Apart from the consideration of some evidence, which it deferred till the trial stage, the order goes on for more than 60 pages in determination of whether “Kwikheal” infringes or passes off as “Fevikwik”. As highlighted above, this determination includes a heavy evaluation of existing case law, its application on facts and elaborate adjudication.
This order closely follows a Supreme Court order that expressed disappointment over the overwhelming number of long-drawn interim orders in the field of IP. Prateek covered that order here and the entire order can be accessed here. The Apex Court’s primary concern is that this “disturbing trend” of interim orders doubling as exhaustively written, almost-final decisions could be due to the acceptance that many of these interim orders actually operate for a long time, making the final settlement of the dispute a “far-cry”.
I’d finally, like to lead our readers to an interesting comment raised by Mr. Jagdish Sagar, in response to Prateek’s post. Mr. Sagar agrees that trials often take way too long. He also notes that very rarely do trials change the outcome of most copyright and trademark suits – which usually only includes an infringement that needs to be restrained. Further, often litigants might not be able to afford a high valuation of their suit. Mr. Sagar reckons that to solve these problems, summary judgments which are possible under Or. XIII-A for commercial suits, would have also been intended by the legislature for IP suits.
Indeed, while doctrine demands that interim orders remain cursory at best, a pertinent question rings out: “in practice, where to draw the line without perpetuating an injustice through the duration of a long trial?”
Fun fact/end note: If you type in “Kwikheal” on Google, it throws up the webpage of this well-known IT securities company: http://www.quickheal.com/.
Image from here.