Use Of 'Silk' To Denote Paint's Finish Customary, Can't Be Protected As Trademark: Calcutta High Court Dismisses Berger's Plea Against JSW Paints

The Calcutta High Court recently dismissed an interim injunction application in a suit filed by Berger Paints to restrain JSW Paints from using the term 'SILK' in conjunction with their product range sold under the trademark 'HALO'.

A single bench of Justice Krishna Rao held:

The use of the expression “SILK” for paint finish is customary in the trade and is not capable of being protected as trademark with respect of paints, emulsions and distempers. The defendant has not applied for the registration of the mark “SILK” and does not intend to market its product under a trade mark “SILK”. The products of the defendant are sold under the mark “HALO”, such as, with the word “Silk” being used only to define the finish/sheen of the paint. By comparison of the two marks, in my view both appears to be substantially different and there is no similarity between both the labels.

It was argued by Berger Paints 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.

JSW Paints accordingly asserted that the mark SILK is descriptive for the finish of paint products and even otherwise, Berger Paints had not applied for or secured a standalone registration of the term "SILK" as a trademark.

Court observed that Berger Paints' use of "SILK" was in conjunction with the "BERGER" mark, while JSW Paint's use was in association with the "HALO" mark.

It concluded that there was no actual similarity between the rival marks when applied on the respective product labels which were substantially different. The court also took note of JSW Paints' contention that "SILK" was being used as a product descriptor to describe a specific attribute of its paint finish under the "HALO" mark.

Accordingly, the court refused to grant an injunction in favour of Berger Paints and dismissed the interim application.

Mr. Surajit Nath Mitra, Sr. Adv., Mr. Sayantan Basu, Mr. Sourav Sengupta & Mr Aman Baid, Advocates, represented Berger Paints

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) 1

Case: Berger Paints India Limited v JSW Paints Private Limited

Case No: IA No: GA 1 of 2020 In CS 64 of 2020

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