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The Use of a Mark in a Non-Trademark Sense

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.

Defendant's Position:
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."

Court's Analysis:
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 herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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