Berger Paints India Private Limited V. Jsw Paints Private Limited – Redefining Trademark Dilution In Indian Jurisprudence

Contributor: Manthan Patel

According to Black’s Law Dictionary, dilutions mean “The act of reducing the proportion of  ownership held by current investors through issuance of new shares of common stocks”,2but in  the ambit of Intellectual Property law, it means when a famous or a well-known mark is  infringed it causes dilution of such mark. Dilution is when one famous mark is infringed it loses  its exclusivity. This causes erosion of the mark and it exhausts its stand-alone quality and its  ability to be recognized clearly from a crowd of trademarks present in the global market.3  

Distant from trademark infringement, which focuses on the confusion of the consumer, dilution  deals with the unauthorized use of a trademark in a way that diminishes its uniqueness or  reputation in the market. In the Landmark judgment of the Daimler Benz Aktiegessellschaft &  Anr. v. Hybo Hindustan,4 which formed the elementary of the concept of trademark Dilution.  In the particular judgment, the court prohibited the defendant from using the “Benz” mark for the  undergarments, underscoring that dilution can occur without creating confusion among the  consumers.  

In this article, there will be a discussion on the recent judgment of Berger Paints India Limited  v. JSW Paints Private Limited,5 which has garnered significant attention for its detailed analysis  and implementation in the field of Trademark dilution. This article will delve into the specifics of  this concerned case, examining how it aligns with or diverges from previous interpretations of  

trademark Dilution and Its likely impact on the future legal landscape of Trademark Dilution. We  aim to understand the evolving nature of trademark Dilution jurisprudence in India. 

Application And Criticism

In India, regarding Trademark Dilution, notably under Section 29(4) of the Trademark Act,  1999.6It has broadened the scope of protection for well-known trademarks beyond the traditional  “likelihood of Confusion” test as mentioned above. This provision ultimately aims to preserve  the distinctiveness and reputation of registered trademarks, even when the ambit of the services  is different. However, each coin has two sides, when it comes to trademark laws in India it is  considered that it is still in the developing stage, and there is still room for improvement. In the  same order critics point out that its exclusive focus on the potential harm to trademarks may  unduly restrict competition, potentially stifling innovation and market dynamics. 7 

Moreover, inference can be drawn from some important cases, such as Daimler Benz  Aktiegessellschaft & Anr. v. Hybo Hindustan8 and ITC v Philip Morris Products SA &  Ors.9 has shaped the interpretation of Section 29(4). These judgments elucidated the significance of preserving the unique identity and reputation of a well-known trademark, emphasizing the  need for robust protection mechanisms. As mentioned above the surroundings of trademark  dilutions in India are still evolving, with ongoing cases like Berger Paint India Limited  contributing to its development.  

Important Elements

Further, drawing inference from the landmark judgment of ITC v Philip Morris Products SA  & Ors,10 wherein the important elements of trademark dilution has been mentioned and  explained. These are the following main element of Trademark Dilution: – 

  1. The contested mark is the same as the well-known mark or comparable to it. 2. In India, the injured or well-known mark has a reputation. 
  2. There is no justification for using the contested mark. 
  3. The use of the contested mark results in the well-known mark being used without  authorization. 

Critical Analyses Of The Ruling Of Berger Paints India Limited V. Jsw Paints Private Limited 11

  1. BRIEF FACTS AND TIMELINE 

In the recent case of Berger Paints, before the Hon’ble High Court of Calcutta, wherein Berger  Paint India Limited was the Plaintiff, and sought an injection against the defendant company,  JSW, from restraining them from using the Plaintiff’s trademark “Silk”, for its paints. 

In this case, the plaintiff, Berger Paints a prominent paint company established in 1932, sought  an injection against JSW Paints for using the term “Silk” in their paint product branding “Halo  Silk”. Moreover, since 1980 Berger Paints has been using the trademark term in their paint  product line and also registered approximately 250 trademarks embracing the term. Further,  Berger Paints discovered the use of the term “Silk” by the defendant, JSW Paints in December  2019, and issued a cease and desist notice, which JSW Paints has refused.

The court’s analyses were focused on several key aspects, which have been the result of the  observation of the important elements of trademark dilutions mentioned above. The following is the court’s analysis: – 

  1. Firstly, the analysis of the Descriptive nature of the term “Silk” – The court held that the  term “Silk” is itself a descriptive term in the context of paint products. Descriptive terms  generally describe a characteristic or quality of the goods or services and are not  inherently distinctive. In this case, Berger Paints were required to demonstrate that the  term “Silk” has formed a secondary meaning, and especially has to associate it with their  product in the minds of consumers.  
  2. Secondly, Berger Paints failed to establish the necessary secondary meaning of the term  “Silk” – While Berger Paints provided evidence of Extensive use and marketing of their  “Silk” products, the court found that this was not sufficient to establish that “Silk” has  acquired the necessary secondary meaning. The court emphasized that Berger Paint had  accepted trademark registration conditions that did not grant exclusive rights to the word  “Silk”.  
  3. Confusion among the consumers – The court in the concerned case considered whether  an average consumer might mistakenly believe that JSW’s “Silk” paint products were  associated with or endorsed by Berger Paints. Given the descriptive nature of the term  and the distinct branding of JSW Paints, the court concluded that there was no substantial  likelihood of consumer confusion.  

Consequently, in this concerned case of Berger Paints India Limited v. JSW Paints Private  Limited, before the Hon’ble Justice Krishna Rao, the Hon’ble High Court of Calcutta, Denied  the injunction and allowed JSW Paints to continue using “Silk” to describe their paint finish 

Conclusion

In conclusion, the judgment of Berger Paints India Limited v. JSW Paints Private Limited provided a holistic idea about the details and practical approach of trademark dilution,  particularly with regard to the descriptive terms within any specific industry in question. While it  does not necessarily provide a new interpretation of trademark dilution, nevertheless it reinforces  the existing principles and emphasizes the importance of contextual and practical consideration  in Trademark Disputes in India. Further, this concerned judgment will definitely serve as a significant reference point for future disputes in the ambit of trademark Dilution, while  highlighting the complexities and nuances of trademark laws in India. 

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