Infringement spat between two paint rivals highlights limits of using common words as trademarks in India

The High Court of Calcutta has examined the legal limits of using common words as trademarks in an infringement case involving use of the word ‘silk’ by two rival paint retailers (Berger Paints India Limited v JSW Paints Private Limited, GA 1 of 2020 in CS 64 of 2020).

Case background

Established in 1923 in West Bengal, Berger Paints owns over 250 trademarks for paint products, including a registration for SILK and several SILK formative marks. SILK was first adopted as a mark in 1980 and Berger used it in the same year as LUXOL SILK.

In December 2019, Berger learned that JSW Paints – a new entrant in the paint industry – was using the trademark HALO SILK in relation to its paint products. Berger issued a cease-and-desist notice to JSW, but JSW refused to comply. This led Berger to file a suit for infringement and passing off, claiming that SILK had become a reputed brand in the industry and was associated exclusively with Berger.

JSW’s main argument was that it was not using SILK in a trademark sense. Rather, it argued that the word ‘silk’ was meant to be indicative of the paint’s characteristics. The word was one of many descriptors that JSW was using (others included matt, gloss and satin) but only to represent the quality and finish of their paint products.

JSW also argued that many other reputable manufacturers – such as Asian Paints, Dulux and Johnstone’s – were also using the word ‘silk’ to describe emulsions with a high-sheen finish. Thus, using the word to describe a paint finish was common to the trade and therefore did not qualify for exclusive protection. JSW also drew the court’s attention to the fact that its trademark applications for labels bearing the words HALO along with SILK, meant to be used for its silk finish paint, had proceeded to advertisement without any objection at the examination stage.

Court decision

Analysing the law and submissions made by the parties, the court agreed that JSW’s brand name was Halo and that ‘silk’ was being used merely to indicate a certain characteristic of its product. Moreover, other players in the industry were also using the same word to describe a paint finish.

Crucially, Berger’s registrations – including registration 2598721 for SILK in Class 2 – had been granted under the condition that it would not enjoy exclusive rights over the word ‘silk’ per se. Taking Berger and JSW’s dissimilar packaging, container shapes and colour schemes into account, the court held that Berger had failed to establish deceptive similarity between the rival marks.

Section 17(2) of the Trade Marks Act 1999, which deals with registrations of parts of a mark, states that when any part of a trademark is “common to the trade” or is otherwise of a “non-distinctive character”, the registration shall not confer any exclusive right to that part of the registered mark. Since SILK formed part of many registrations obtained by Berger, JSW argued that under Section 17(2), Berger could not claim exclusive rights over the word ‘silk’, irrespective of any disclaimer or condition imposed on it.

Key takeaways

Distinctiveness is the touchstone of trademark law, so it is crucial to consider whether the mark in question is inherently distinctive or if it has acquired distinctiveness by virtue of its usage. In cases such as this one, where the mark is an inherently non-distinctive word and is being used by several industry players to indicate a particular kind of quality, exclusivity and blanket protection do not apply.