Astral Ltd Vs Ashirvad Pipes Pvt Ltd

Amit Bansal, J

I.A. 7334/2022 (O-XXXIX R-1 & 2 of the CPC)

1. By way of the present judgment, I shall decide the application filed on behalf of the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC) for grant of interim injunction.

PROCEEDINGS IN THE SUIT

2. Summons in the suit was issued on 11th May, 2022. However, no ad interim injunction order was passed in favour of the plaintiff. Thereafter, the matter was listed on various dates and pleadings have been completed in the suit as well as the present application. I.A. 7334/2022 was heard on 3rd February, 2023, when the judgment was reserved and counsels were given time to file written submissions. Both the sides have filed their respective brief notes of submissions.

CASE SET UP IN THE PLAINT

3. The case set up in the plaint is as under:

3.1 Plaintiff company was incorporated on 25th March, 1996 as a private limited company and in the year 2006, the plaintiff company was converted into a public limited company.

3.2 Plaintiff company is engaged in the business of manufacturing, distributing and selling of high-quality pipes, parts and fittings for use in plumbing, sewage, drainage, fire protection and the like. The plaintiff company has manufacturing facilities at six locations in India and has received various awards and accolades in respect of its various products.

3.3 In the year 2004, the plaintiff company became the first entity to launch Chlorinated Polyvinyl Chloride (CPVC) piping systems in India.

3.4 The plaintiff has filed and obtained various registrations in respect of the mark ‘CPVC PRO’ and ‘CPVC PRO’ formative trademarks, which are detailed in paragraph 15 of the plaint.

3.5 Some of the registrations of the plaintiff have a disclaimer that no exclusive rights have been granted in respect of the words ‘CPVC PRO’ and ‘CPVC CHEM PRO’. However, the subsequent registrations do not have this condition. Some of the applications filed on behalf of the plaintiff in respect of ‘CPVC PRO’ and ‘CPVC PRO’ formative marks have been objected to.

3.6 Plaintiff has engaged various celebrities and superstars from time to time to advertise their products under the aforesaid trademarks.

3.7 The statement in respect of domestic sales and exports of the plaintiff have been provided in paragraph 20 of the plaint. In the year 2021–2022, the sales of the plaintiff in respect of the trademarks ‘CPVC PRO’ was around Rs.954 crores.

3.8 On account of its superior quality, continuous and extensive use, and large scale publicity, the plaintiff’s trademark ‘CPVC PRO’ has acquired immense reputation and goodwill in the market. Accordingly, the plaintiff claims both statutory as well as common law rights in the trademark ‘CPVC PRO’.

3.9 Defendant has also filed various trademark applications in respect of similar products which are pending as on date. The grievance of the plaintiff is with regard to the impugned mark ‘CPVC FLOWPRO’, wherein ‘CPVC’ and ‘PRO’ are being used together and the same is similar to the trademark of the plaintiff, ‘CPVC PRO’.

3.10 The trademark application of the defendant was filed in January, 2021, on a ‘proposed to be used basis’, whereas the plaintiff has been using the ‘CPVC PRO’ marks since 2016. In this regard, invoices have been placed on record by the plaintiff.

3.11 The adoption of the trademark ‘CPVC FLOWPRO’ by the defendant is dishonest and an attempt to ride on the goodwill and reputation of the plaintiff.

3.12 A cease and desist notice dated 17th December, 2021 was issued by the plaintiff to the defendant. The aforesaid notice was replied to by the defendant.

3.13 Accordingly, the present suit was filed seeking a decree of permanent injunction along with other ancillary reliefs.

CASE SET UP IN THE WRITTEN STATEMENT

4. The case set out in the written statement is as under:

4.1 The plaintiff does not have any grievance with the use of the word ‘CPVC’ by the defendant as it is an abbreviation of the material of the plastic. The plaintiff objects to the use of the word ‘PRO’, which cannot be monopolized by the plaintiff. Reliance is placed on the various dictionary meanings of the word ‘PRO’, which show that the word ‘PRO’ is a generic, descriptive and laudatory word. The word ‘PRO’ is used by several well-known companies in relation to different products as part of their marks, details of which are given in paragraph 14 of the written statement.

4.2 In several of the registrations granted in favour of the plaintiff, a condition has been imposed on the plaintiff that the plaintiff shall not have exclusive right over the marks/terms ‘CPVC PRO’, ‘CPVC CHEM PRO’ and ‘CHEM PRO’. Further, several of the plaintiff’s marks were refused registration under Section 9 of the Trade Marks Act, 1999. Therefore, the other registrations granted to the plaintiff in respect of ‘CPVC PRO’ formative marks are bad in law and the plaintiff cannot rely upon them.

4.3 The trademark registrations in respect of word marks ‘CPVC PRO’ have to be treated as suspended since it was obtained during the COVID-19 pandemic. Reliance in this regard is placed on the judgment dated 21st March, 2022 passed by this Court in WP(C)-IPD No.4/2022 titled Dr. Reddy Laboratories Limited v. Controller General of Patents Designs and Trademarks.

4.4 The plaintiff has always used the words ‘CPVC PRO’ in conjunction with its house mark ‘ASTRAL’ and has never used the same independently. Therefore, the plaintiff cannot claim any distinctiveness in respect of the mark ‘CPVC PRO’.

4.5 The defendant has been selling its products under the trademark  since the year 1975. Details of turnover of the defendant are given on page 44, paragraph 11 of the written statement. In the year 2021, the defendant had a revenue of around Rs.3,500 crores.

4.6 Defendant has been selling and exporting products under the mark  since November, 2021.

4.7 The mark/expression ‘ASHIRVAD BY ALIAXIS CPVC FLOWPRO’ is dissimilar to the mark/expression used by the plaintiff and therefore, there cannot be any cause for confusion. Both the plaintiff and the defendant use their house marks ‘ASTRAL’ and ‘ASHIRVAD’ respectively in conjunction with the words ‘CPVC’, ‘PRO’ and/or ‘CPVC PRO’.

SUBMISSIONS ON BEHALF OF THE PLAINTIFF

5. Supplementing the averments made in the plaint, counsel for the plaintiff made the following submissions:

5.1 In view of the fact that the plaintiff has obtained subsequent registrations without any disclaimer, the conditions imposed while granting earlier registrations are not relevant and the present suit for infringement and passing off is maintainable.

5.2 The adoption of the mark ‘CPVC FLOWPRO’ by the defendant is dishonest as the words ‘CPVC FLOWPRO’ are the most prominent words used on their pipes and fittings. The defendant is already selling CPVC pipes under the trademark ‘ASHIRVAD FLOW GUARD’ in terms of the license agreement entered into by the plaintiff with Lubrizol.

5.3 A party can be given proprietary rights even in respect of laudatory and dictionary words. In view of the fact that the defendant has also applied for registration in respect of the words ‘CPVC PRO’, the defendant cannot claim that the said mark is generic.

5.4 No one in the market is using the mark ‘CPVC PRO’ or the word ‘PRO’ in respect of pipes and fittings.

SUBMISSIONS ON BEHALF OF THE DEFENDANT

6. In support of the averments made in the written statement, senior counsel appearing on behalf of the defendant has made the following submissions:

6.1 Even though in respect of four of the plaintiff’s registrations, there is a disclaimer in respect of the word ‘CPVC PRO’, the plaintiff has deliberately filed applications in various Classes in respect of the trademark ‘CPVC PRO’ so that some of the registrations are granted without any disclaimers.

6.2 Descriptive and generic marks such as ‘CPVC’ and/or ‘PRO’ cannot be monopolized by a party on the ground that they are the first user thereof.

6.3 Without prejudice to the contention of the defendant that the word ‘PRO’ is laudatory and cannot be monopolized, the defendant is not using the word ‘PRO’ on a stand-alone basis. The defendant is using the term ‘FLOWPRO’ in conjunction with ‘CPVC’.

6.4 The pipes and fixtures in the market are known by the respective brands, which in the present case is ‘ASTRAL’ in respect of the plaintiff and ‘ASHIRVAD’ in respect of the defendant. Both the aforesaid brands are distinctive and appear prominently on the products of the parties. There cannot be any question of passing off as products of both plaintiff and defendant are sold with their house marks.

6.5 Evidence of subsequent use of the mark post registration cannot be looked into in an infringement action.

6.6 Whether or not the marks ‘CPVC’ and ‘PRO’ have acquired distinctiveness is a matter of trial.

7. I have heard the counsels for the parties and perused the record.

ANALYSIS AND FINDINGS

8. At the outset, reference may be made to the competing marks of the parties, which are reproduced hereinbelow:

9. A perusal of the above would show that the defendant is using the words ‘CPVC’ and ‘PRO’ along with its house mark ‘ASHIRVAD’/ ‘ASHIRVAD BY ALIAXIS’ even though the house mark is written in a slightly smaller font. In the first instance, the plaintiff is using the words ‘CPVC’ and ‘PRO’ along with its house mark ‘ASTRAL’. In the second instance, the plaintiff is using ‘CPVC PRO’ without its house mark ‘ASTRAL’. Where the term ‘ASTRAL’ is used by the plaintiff in conjunction with ‘CPVC PRO’, the usage of the distinctive house marks of the parties negate any possibility of deception or confusion in the marks. Further, in both the aforesaid usages of the plaintiff, the word ‘CPVC’, in respect of which the plaintiff does not claim exclusivity, is written in a much larger font as compared to the other elements of the mark. In fact, the word ‘PRO’, for which the plaintiff seeks exclusivity, has been written in a smaller font in the plaintiff’s product, whereas in the defendant’s product, it is in the same font size as the word ‘CPVC’. Further, the word ‘PRO’ is not being used by itself but as a component of the term ‘FLOWPRO’ by the defendant. Even the font and style of writing of ‘CPVC’ and ‘PRO’ in the competing marks are distinguishable. Therefore, in my prima facie view it cannot be said that there is a possibility of confusion or deception being caused among the customers of the two products.

10. At this stage, reference may be made to the various trademark registrations granted to the plaintiff as set out in paragraph 15 of the plaint.

11. A perusal of the table above would show that the registrations at serial no.1 to 10 are of various composite marks, which include the house mark of the plaintiff, ‘ASTRAL’. The registrations at serial no.11 to 15 are subsequent registrations in respect of device marks with the words ‘CPVC MULTI PRO’, ‘CPVC CHEM PRO’, ‘CPVC PRO’ and ‘CPVC FIRE PRO’ written in a stylized manner. The registrations at serial no.1 to 3 and 12 above have a condition that no exclusive rights have been given to the plaintiff over the terms ‘CPVC PRO’, ‘CPVC CHEM PRO’ and ‘CHEM PRO’. It is also be noted that the applications at serial no. 11 to 15 in the table above have been filed on a ‘proposed to be used basis’, except serial no. 14, which has been filed with the claim of use of around one month. Furthermore, a perusal of the registration granted in favour of the plaintiff at serial no. 14 would also show that the registration has been granted in respect of the stylized manner of writing and not in respect of the words ‘CPVC PRO’ either in conjunction with each other or individually.

12. It is also relevant to note here that other applications filed by the plaintiff for the mark ‘CPVC PRO’ and ‘CPVC PRO’ formative marks, all dated 6th September, 2016, have been objected to by the Registry on the ground that they lack distinctiveness. Yet, the applications at serial no.11 to 15, in respect of similar trademarks, were accepted by the Registry. Further, when conditions with regard to use of the term ‘CPVC PRO’ have been imposed on the earlier registrations of the plaintiff given at serial no.1 to 3 and 12 above, there is no explanation as to why similar conditions were not imposed by the Registry in respect of the trademark applications given at serial no.11, 13, 14 and 15 above. It appears that the plaintiff was randomly filing registrations for marks with minor variations in several Classes, hoping that some of the registrations would be granted without any conditions. To illustrate, the plaintiff has been granted registration in respect of the mark  in Class 19 without any disclaimer/condition on the registration, whereas registration of the identical mark under TM Application No.3355649 has been refused by the Registry in Class 17. This raises a serious doubt with regard to the validity of the registrations granted in favour of the plaintiff at serial no.11 to 15 in the table above. Therefore, at this interlocutory stage, the plaintiff cannot claim monopoly over the words ‘CPVC’ or ‘PRO’ either individually or in conjunction with each other/other words and these registrations cannot be relied upon the plaintiff in the present suit for infringement.

13. The registrations at serial no.16 and 17 were in respect of ‘CPVC PRO’ word marks per se. The same were granted in 2020, during the COVID-19 period, in the absence of any oppositions. In this regard, reference may be made to the judgment in Dr. Reddy Laboratories Limited (supra), wherein a Coordinate Bench of this Court has made the following observations:

“18. In any event, in terms of the orders of the Supreme Court extending the period of limitation in all proceedings and the stand of the CGPDTM before the Delhi High Court in W.P.(C) 3059/2020, the CGPDTM has a duty to extend the limitation for filing oppositions to trademark applications…

(v) Insofar as trademark registration certificates which may have been issued during the pandemic period, the registration certificates shall be dealt with in the following manner:

(a) In respect of the trademark applications in which no oppositions have been already filed or are received till 30th May, 2022, the said registration certificates shall remain valid and the said applicants shall enjoy their statutory rights in accordance with law.

(b) In respect of those trademark applications where oppositions have already been filed or are filed by 30th May, 2022, the registration certificates shall either not be issued or if already issued, the same shall stand suspended till the oppositions are decided by the office of the CGPDTM.”

14. In light of the aforesaid judgment, since the defendant had filed oppositions before 30th May, 2022, the registrations granted in favour of the plaintiff and provided at serial no.16 and 17 in the table above would stand suspended until the oppositions are decided. Therefore, no reliance can be placed on the registrations of the word mark ‘CPVC PRO’.

15. Counsel for the plaintiff has further submitted that the plaintiff has no objection to the defendant using the word ‘CPVC’ as it is an abbreviation for a material of the plastic. However, an objection is raised with regard to the use of the word ‘PRO’ in conjunction with the word ‘CPVC’ as the plaintiff claims that the word ‘CPVC FLOWPRO’ is deceptively similar to the mark used by the plaintiff, ‘CPVC PRO’. It is a settled position of law that generic, laudatory and descriptive marks cannot be monopolized by anyone unless a case is made out in respect of the mark acquiring distinctive character or of its well-known status. The fact that conditions were imposed on the plaintiff by the Registry, against the use of generic terms like ‘CPVC PRO’ and ‘CPVC CHEM PRO’, is clearly indicative of the fact that the plaintiff cannot monopolize the terms ‘CPVC’ or ‘PRO’, individually or in conjunction with each other.

16. To show that the word ‘PRO’ is generic and laudatory, the counsel for the defendant has submitted dictionary meanings of the said word, which are as under:

“Cambridge Dictionary: The word ‘PRO’ means:

(a) ‘a professional or somebody who is better than others at doing something;

(b) ‘a person who receives money for playing a sport’;

Oxford Dictionary: The word PRO means:

‘a person who works as a professional, especially in a sport’.”

17. In support of their submission that the word ‘PRO’ is commonly used in the trade, the defendant has also placed material on record to show that various companies are selling pipes and other products in the construction industry using the word ‘PRO’. Counsel for the plaintiff has disputed this submission and stated that no other pipes with the word mark ‘PRO’ are available in the market. Be that as it may, this aspect can only be established in the trial and at a prima facie stage, the Court would have to take cognizance of the material placed on record by the defendant.

18. Counsel for the plaintiff has placed reliance on my judgment in Soothe Healthcare Pvt. Ltd. v. Dabur India Limited, 2022 SCC OnLine Del 645. In the said case, the plaintiff sought an interim injunction against the defendant on the ground that the trademark of the defendant ‘SUPER PANTS’ was deceptively similar to the trademark of the plaintiff ‘SUPER CUTES’ and ‘SUPER CUTESTERS’. Relying upon the judgment of a Division Bench of this Court in Marico Limited v. Agro Tech Food Limited, 2010 (44) PTC 736 (Del) DB, the application for interim injunction was dismissed. It was held, inter alia, that since the word ‘SUPER’ is being used in a laudatory manner, it is devoid of any distinctive character and incapable of distinguishing the goods of the plaintiff from that of others, and therefore, even if the plaintiff had obtained registration in respect of the mark ‘SUPER’, it would not give the plaintiff exclusive right to use the mark ‘SUPER’. It was further noted that the fact that the house mark is written in a slightly smaller font would not make a material difference. One of the other grounds for denying injunction was that the defendant in the said case was using the mark ‘SUPER PANTS’ along with its house mark ‘Dabur’. The relevant observations of the said judgment are set out below:

“8.       A comparison of the packaging of the defendant and the plaintiff above shows that other than the word “SUPER” occurring in both the aforesaid packaging, there is no other similarity. The packaging of the defendant includes the trade mark of the defendant, “Dabur” which is prominently displayed. Merely because the word “Dabur” is written in a slightly smaller font as compared to “SUPER PANTS”, in my opinion, would not make any difference. The fact of the matter is that the word “Dabur” is prominently displayed on the packaging along with the word “baby”. The colour scheme of the packaging is also totally different. The colour scheme of the plaintiff is yellow and orange/blue and yellow, and the defendant is primarily green. From the description of the packaging of the defendant's product, it is more than clear that there is enough added material therein to distinguish the defendant's product from that of the plaintiff. Therefore, it cannot be said that there is a possibility of confusion or deception being caused among the customers of the two products. Hence, I am not convinced that the defendant is passing off their goods as those of the plaintiff.

9.         The next issue that comes up for consideration is whether word “SUPER” is a descriptive or a laudatory word and whether it can attain distinctiveness in respect of the goods of the plaintiff. As per the Oxford's Learners Dictionary, the word “SUPER” means “extremely good”, and as per the Cambridge Dictionary also, the word “SUPER” means “excellent or extremely good”. Clearly, as per its dictionary meaning, the word “super; is a laudatory word of the English Language.

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13.       In view of the above, I am of the opinion that the mark “SUPER” is devoid of any distinctive character and not capable of distinguishing the goods of the plaintiff. Therefore, even if the plaintiff has obtained registration in respect of the marks “SUPER CUTESTERS”, “SUPER CUTES” and “SUPER CUTEZ”, it would not give him exclusive right over the use of the word “SUPER”.”

19. The appeal filed against the aforesaid judgment was dismissed by the judgment of a Division Bench of this Court, reported as Soothe Healthcare Private Limited v. Dabur India Limited, 2022 SCC OnLine Del 2006. The relevant observations of the Division Bench are set out below:

“37.     The judgments relied upon are not applicable to the facts of the present case. There is no quarrel to the proposition that even an ordinary word or a descriptive word, if acquires a secondary meaning and has acquired a distinctive character, can be protected by way of an injunction when identified with a particular product or being from a particular source. As discussed above, DABUR's mark, i.e., “DABUR BABY SUPER PANTS” when taken as a whole cannot be termed as deceptively similar to SOOTHE's registered marks referred in ‘paragraph 2’ above. As far as the use of the word “SUPER” by DABUR in its mark, the same, prima facie seems to be laudatory and descriptive of the product being offered by DABUR. Indisputably, the term “SUPER” is widely used in respect of various products not only of similar nature but also of different class and categories. SOOTHE cannot, therefore, prima facie claim that the use of the word “SUPER” by DABUR in its mark is deceptively similar to SOOTHE's registered trademark for the reason that the word “SUPER” also appears in SOOTHE's marks referred in ‘paragraph 2’ above. SOOTHE also cannot prima facie claim that the word “SUPER” appearing in its registered mark has acquired a secondary meaning or a distinctive character when used in a particular product of SOOTHE, i.e., diapers.”

20. The present case is covered on all fours by the aforesaid judgments. The word ‘PRO’, of which exclusive use was sought by the plaintiff, is similar to the word ‘SUPER’ as both are laudatory words. Prima facie, the word ‘PRO’, either by itself or in conjunction with the word ‘CPVC’, appears to be non-distinctive and laudatory in terms of Section 9 of the Trade Marks Act, 1999. Even if the plaintiff has obtained registrations in respect of ‘CPVC PRO’ and ‘CPVC PRO’ formative marks, the plaintiff cannot have exclusive rights to use the word ‘PRO’. Hence, at this interlocutory stage, the plaintiff has failed to make out a case of infringement.

21. Plaintiff has also claimed that the mark ‘CPVC PRO’ has become distinctive of its goods on account of its usage. Admittedly, the plaintiff has used the mark ‘CPVC PRO’ and other formative marks using the words ‘CPVC’ and PRO’ only with effect from 2016. Nothing has been filed on behalf of the plaintiff to show that the plaintiff has advertised or promoted the mark ‘CPVC PRO’ on a stand-alone basis. Therefore, at an interlocutory stage, the plaintiff cannot claim acquired distinctiveness or goodwill in the term ‘CPVC PRO’, which can only be established during the trial. Even otherwise, as observed above, a comparison of the competing marks of the plaintiff and the defendant reveals that there is no likelihood of confusion in the market. Hence, I am of the prima facie view that the defendant is not passing off its goods as those of the plaintiff.

22. Counsel for the plaintiff has vehemently argued that the products in question, pipes, are used by plumbers, who identify the product with the term ‘CPVC PRO’ and not the house marks. I do not find merit in this submission of the plaintiff. I see no reason as to why persons in the trade, including plumbers, would not identify with a product through the house mark which finds mention on the product. Nor has the plaintiff filed any material to substantiate such a claim.

23. Counsel for the plaintiff has placed strong reliance on the recent judgment of the Division Bench in PEPS Industries Private Limited v. Kurlon Limited, 2022 SCC OnLine Del 3275 to contend that (i) when the defendant has sought for registration of the same mark as that of the plaintiff (‘NO TURN’ in the said case), such a defendant is estopped from raising a question on the validity of the said mark on the ground of it being descriptive in nature; and, (ii) registration granted in favour of the plaintiff is prima facie evidence of its validity and cannot be ignored unless a question on the validity of the registration is raised.

24. In the present case, the defendant has sought registration of the marks bearing the word ‘CPVC’ not on a stand-alone basis but along with its house mark ‘ASHIRVAD’. Therefore, it cannot be said that the defendant is estopped from raising the issue of non-distinctiveness of the term ‘CPVC PRO’ or its individual components. Further, in the present case, the defendant has raised objections with regard to validity of the registrations granted in favour of the plaintiff. Therefore, the judgment in PEPS Industries (supra) is clearly distinguishable and would not advance the case of the plaintiff.

25. In light of the discussion above, I am of the view that the plaintiff has failed to make out a prima facie case for grant of interim injunction.

26. Accordingly, I.A.7334/2022 filed on behalf of the plaintiff under Order XXXIX Rules 1 and 2 of the CPC is dismissed.

27. Needless to state, any observations made herein are only for the purposes of adjudication of the present application and would have no bearing on the final outcome of the suit.

CS(COMM) 309/2022, I.A. 8856/2022(O-XI R-1(4) of CPC), I.A. 9750/2022 (O-XI R-1(10) of CC Act), I.A. 12468/2022(u/s 124 of Trade Mark Act) and I.A. 19036/2022(O-XI R-1(4) of CPC)

28. List for consideration on 24th April, 2023.