Calcutta HC Declines Appeal Against Order Which Held That Using Word 'Silk' To Denote Paint's Finish Was Customary, Not Protectable As Trademark

The Calcutta High Court has upheld an order by a single bench which held that using the word 'silk' to denote a paint's finish was customary in nature, and could not be protected as a trademark.

A division bench of Justices IP Mukherji and Prasenjit Biswas held:

There shall be no interference with the impugned judgment and order dated 12th December 2023 provided the respondent uses the word “silk” on the tumbler only when the product contained therein has a silk finish and does not use that word when the product has any other finish/sheen. Such description would be maintained in the website of the respondent and in any other form of advertisement of the product.

Before the single, bench the appellants (Berger) had contended that it owned registrations for the term "SILK" since the year 1980 concerning its paints and related products. It contended that the use of 'SILK' adopted by JSW Paints in respect of identical products constituted an infringement of the Plaintiff's registered trade mark 'SILK'.

It was also submitted that JSW Paints allegedly adopted the trade mark intentionally, knowing fully well about Berger Paints' business carried under their trade mark SILK, to derive wrongful advantage and to trade upon the goodwill and reputation of the paint products of Berger Paints.

On the other hand, JSW Paints argued that its use of the term "SILK" was in terms of industry practice and merely descriptive of the finish or sheen of the paint sold under the trademark "HALO”.

It submitted that its products were marketed under the well-established mark "HALO," and the term "SILK" served only as one of several descriptive terms alongside other terms like matt, satin, and gloss, all describing the finish of paints within the range sold under the "HALO" mark.

Accordingly, the single bench had agreed with JSW's submissions and dismissed the plea.

In the present appeal, the court noted that counsel agreed that the word “silk” on the tumbler of the products of the parties should denote a description of the products. But when this word is so couched with the trademark or trade name of a product it might tend to pass off the goods of one party as those of the other.

It thus dismissed the appeal while stating that the appellant's right to exclusively use the word 'silk' for its products shall be decided at trial.

JSW Paints was represented by Sr Adv S N Mukherjee, Counsel Debnath Ghosh and a team from Khaitan & Co. comprising; Nishad Nadkarni, Partner; Shounak Mitra, Partner, Vaibhavi Pandey, Principal Associate & Zulfiqar Ali Alquaderi, Principal Associate.

Citation: 2024 LiveLaw (Cal) 93

Case: Berger Paints India Ltd. Versus JSW Paints Pvt. Ltd

Case No: APOT No. 58 of 2024 With CS No. 64 of 2020

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