This legal article examines a case where the Plaintiff, claiming to be the
registered proprietor of the trademark "SILK" since 1980 in relation to paints
and related products, sought legal redress against the Defendant's use of the
term "SILK" in conjunction with the trademark "HALO." The central question
addressed by the court was whether the Defendant's use of "SILK" amounted to a
violation of the Plaintiff's trademark rights.
The case at hand involves a dispute between a Plaintiff, associated with the
trademark "BERGER" and "SILK," and a Defendant utilizing the term "SILK" in
conjunction with the trademark "HALO." The Plaintiff asserted ownership of the
"SILK" trademark dating back to 1980, specifically in connection with paints and
allied products. On the other hand, the Defendant argued that its use of "SILK"
was merely descriptive of the finish or sheen of the paint sold under the mark
"HALO," and it had not sought separate registration for the term.
The Defendant contended that its products were marketed under the
well-established mark "HALO," with "SILK" serving as one of several descriptive
terms indicating the finish or sheen of the paint. The Defendant emphasized that
"SILK" was used alongside other terms like matt, satin, and gloss, all falling
under the umbrella of the "HALO" mark. Crucially, the Defendant asserted that it
had not applied for a standalone registration of the term "SILK."
The court, in its analysis, considered the distinctiveness and similarity
between the Plaintiff's and Defendant's marks. It was observed that the
Plaintiff's use of "SILK" was in conjunction with the "BERGER" mark, while the
Defendant's use was in association with the "HALO" mark. The court highlighted
the absence of actual similarity between the marks "SILK" of both parties,
considering the entirety of the trademarks used by each.
The court acknowledged the Defendant's argument that "SILK" was utilized to
describe a specific attribute of its paint finish under the "HALO" mark. The
fact that the Defendant had not sought separate registration for "SILK" was a
key factor considered by the court.
The concluding Note:
Ultimately, the court refused to grant an injunction in favor of the Plaintiff.
The decision hinged on the court's finding that the trademarks of the Plaintiff
and Defendant were entirely different, and there was no substantial similarity
between their respective uses of the term "SILK." The court's recognition of the
descriptive nature of "SILK" in the Defendant's context, along with the absence
of a standalone registration, played a pivotal role in shaping this decision.
The Case Law Discussed:
Case Title: Berger Paints India Limited Vs JSW Paints Private Limited
Date of Judgement/Order:12.12.2023
Case No. CS 64 of 2020
Neutral Citation No:N.A.
Name of Hon'ble Court: Calcutta High Court
Name of Hon'ble Judge: Krishna Rao HJ
Ideas, thoughts, views, information, discussions and interpretation expressed
herein are being shared in the public Interest. Readers' discretion is advised
as these are subject to my subjectivity and may contain human errors in
perception, interpretation and presentation of the fact and issue involved
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539