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Role of Imagination Test and Competitors' Need Test in Trademark Disputes

In this case of 'WEATHERSHIELD,' used by the plaintiff for paints and coatings, versus 'JK SUPER STRONG BUILD SAFE WEATHER SHIELD,' used by the defendant for cement and building and construction materials, the court's reliance on the degree of imagination test and competitors' need test provides a detailed illustration of these concepts in action. This article examines the application of these tests and the court's rationale in determining trademark infringement, leading to the interim relief granted to the plaintiff.

The plaintiff's mark 'WEATHERSHIELD' has been in use since the 1970s and is registered in over 91 countries. In India, it holds registrations dating back to 1995. In contrast, the defendant applied for registration of 'JK SUPER STRONG BUILD SAFE WEATHER SHIELD' in September 2019 for building and construction materials, including cement. Upon discovering the defendant's applications, the plaintiff initiated a legal dispute, arguing potential infringement and confusion due to the similarity of the marks.

Imagination Test and Competitors' Need Test:
The court utilized two key tests to assess the distinctiveness and protectability of the plaintiff's mark: the degree of imagination test and the competitors' need test. These tests are interrelated and help determine whether a mark is descriptive or suggestive, and thus, the extent of protection it deserves.

Degree of Imagination Test:
This test evaluates how much imagination is required for consumers to associate the mark with the product. A mark requiring a high degree of imagination is less likely to be considered descriptive and more likely to be protected. In this case, the court noted that 'WEATHERSHIELD' is a unique and distinctive combination of common words 'weather' and 'shield'. The term does not appear in dictionaries, underscoring its distinctiveness. The combination suggests a product that protects against weather, but this association is not immediately obvious, necessitating a higher degree of imagination.

Competitors' Need Test:
This test assesses whether competitors need to use the term to describe their goods. If a term is essential for competitors to describe their products, it is likely to be considered descriptive and less protectable. The court found that the defendant had numerous alternative ways to convey the idea of weather protection without using the exact term 'WEATHERSHIELD'. Alternatives such as 'all weather protection', 'weather protector', or 'weather guard' could effectively communicate the same message without infringing on the plaintiff's mark.

Application to the Case:
The court observed that the defendant's use of 'WEATHER SHIELD', with or without a space, and its placement on packaging indicated an intent to use it as a distinctive trademark rather than merely a descriptive term. This was evident from the manner of its presentation on packaging and in advertisements. Additionally, both productscement and paints are complementary in the construction industry and often purchased by the same group of consumers, including home builders, contractors, and masons.

Complementary Goods and Trade Channels:
The court highlighted that both cement and paints are used in construction and are often sold through the same trade channels, such as hardware and paint shops. This complementary relationship and common market channels increase the likelihood of confusion among consumers if identical or similar marks are used for both products. Thus, the court found that the concurrent use of 'WEATHERSHIELD' and 'WEATHER SHIELD' would likely lead to confusion, warranting interim relief in favor of the plaintiff.

The application of the imagination test and competitors' need test in this trademark dispute underscores the importance of evaluating the distinctiveness of a mark and the necessity for competitors to use similar terminology. The court's detailed analysis in favor of the plaintiff highlights how these tests are used to protect trademarks that are unique and do not impose undue restrictions on competitors. This case reaffirms that trademarks requiring a higher degree of imagination and not essential for describing competitors' products are afforded greater protection, ensuring fair competition and consumer clarity in the marketplace.

Case Title: Akzo Nobel Coating International BV Vs JK Cement
Judgment/Order Date: 28.05.2024
Case No. CS(COMM) 212/2023
Neutral Citation: 2024:DHC:4694
Name of Court: High Court of Delhi
Name of Hon'ble Judge: Anish Dayal, H.J.

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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