Asian Paints Wins Over Asian Bird

24 September 2012

In Asian Paints v. Ayush Paints & Chemicals, Asian Paints Limited, one of India’s leading paint companies, filed a suit for infringement of its trademark ‘Asian’ before the High Court of Delhi against Ayush Paints and Chemicals, a proprietary firm, that was engaged in manufacturing and sale of paints under the mark “Asian Bird.”

On an interlocutory application filed by the Plaintiff, the Court ordered an ex parte interim injunction against the Defendant and also appointed a local commissioner to visit the Defendant’s premises to investigate the alleged use of the mark by the Defendant.

Asian Paints is India's largest paint company.

The commission was executed and a report was filed with the Court revealing that more than 267 cans of paints were found and seized from the Defendant’s premises bearing different marks comprising predominantly the “Asian” mark and logo.

Despite service of notices and summons, the Defendant preferred not to appear in the matter and, accordingly, the Court directed the proceeding to be ex parte.

However, subsequently, the Defendant filed its written statement in the matter along with an application to set aside the Order of the Court which directed the matter to proceed ex parte. When the application was listed before the Court, no one appeared for the Defendant and the application was dismissed in default.

Consequently the main suit in the matter was listed for hearing and was decided on the basis of the Plaintiff’s contentions along with the averments made in the written statement filed by the Defendant.

The Plaintiff company contented that it has adopted and extensively used the trademark and trade name “Asian Paints”in relation to paints and cognate or allied goods and thus were the owner, prior user and registered proprietor of the “Asian Paints” trademark in India.

The Plaintiff also contented that it has used “Asian” in relation to the said goods since 1965 and that, hence, the marks have acquired a distinct connotation and have come to be exclusively associated with the Plaintiff’s trade in the minds of the general public and that the marks have become well-known trademarks in India.

The Plaintiff further submitted that the illegal adoption and usage of a deceptively similar mark by the Defendant amounts to a dishonest and mala fide attempt to deceive the public, to ride upon the goodwill and reputation of the Plaintiff and also to pass off the goods as the Plaintiff’s goods.

In support of their contentions, the Plaintiff submitted sales figures for 2007-2008, sales invoices, advertisement clippings in various newspapers and various trademark registration certificates of the “Asian” mark. The Plaintiff also submitted copyright certificates in order to protect the underlying artistic work in its labels.

On the other hand, the key contentions of the Defendant company were that they had never manufactured the product under the alleged mark and, on the contrary, they were producing and selling unlabelled 20 litre barrel drums of paints in wholesale markets.

However, it was found that the averments made by the Defendant were inconsistent with the findings of the local commissioner who visited the premises of the Defendant pursuant to the Order of the Court and seized several cans of paints bearing different marks, with predominant use of the “Asian” mark.

The Court, after considering the contentions of the Plaintiff, the written statements submitted by the Defendant company and also the local commissioner’s report, held that the Defendants deliberately and with mala fide intention infringed the registered trademark of the Plaintiff company. The Court ruled in favour of the Plaintiff by which the Defendants, its agents, distributors, dealers, servants, representatives and assignees, were restrained from using the trademark “Asian Paints” or the “Asian” mark or device or any other similar or deceptively similar mark and from infringing and passing off of the Plaintiff’s products.

LEX ORBIS Intellectual Property Practice

709/710, Tolstoy House, 15-17,

Tolstoy Marg, New Delhi - 110 001,

India

T: +91 11 2371 6565

F: +91 11 2371 6556

E: mail@lexorbis.com

W: www.lexorbis.com

Law firms

IPO-Pakistan holds consultative sessions for National IP Strategy with WIPO

23 December 2024