Law & Practice

INDIA: Of Composite Suits and Bona Fide Adoptions

Published: October 6, 2021

Shrabani Rout Remfry & Sagar Gurgaon, India


Mathews Verghese Inttl Advocare Noida, India Trademark Office Practices Committee—India IPO Subcommittee

In a recent decision, the Bombay High Court held that a composite suit combining multiple causes of action—particularly of trademark, copyright, design infringement, and the tort of passing off—was maintainable.

The court reached this decision in Pidilite Industries Ltd. v. Q-Chem Sealers Pvt Ltd, Commercial IP Suit (L) No. 11236 of 2021, dated June 16, 2021. In doing so, it endorsed the decision of the High Court of Delhi in Carlsberg Breweries v. Som Distilleries and Breweries, CS (COMM) 690, of 2018.

The plaintiff, Pidilite, active in the Indian market since 1969, is a well-known manufacturer of waterproofing chemicals, adhesives, and related products. It contended that the defendant had pirated the design of its DR. FIXIT containers (for which it owned design registration Nos. 212886 and 212887) sold under the LW/LW+ trademarks and labels (registration Nos. 2448213, 2447182, 2308687, 2472730, 2472713, 2448212, 2447181, and 2308686) and the URP trademarks (3057490, 2472722, 2472723, and 2472720).

The court considered a comparative chart containing details of the trademarks, labels, and designs of the containers belonging to the plaintiff and defendant. It held that the defendant was indeed violating the plaintiff’s proprietary rights and that the plaintiff was entitled to statutory protection by virtue of its registrations. Given the extensive evidence of use and sales provided to the satisfaction of the court, it also held that, insofar as the copyright and trademarks were concerned, the plaintiff was also entitled under the common law remedy of passing off. The defendant did not appear before the court and, absent of any proof of “bona fide adoption” on its part, an ex-parte ad-interim order was passed ordering it to stop using the plaintiff’s proprietary trademarks, designs, and copyright in question.

The immediate facts of this case aside, its greater significance perhaps lies in the fact that it has followed the Delhi High Court’s precedential Carlsberg decision holding that two causes of action—of infringement and passing off—can be combined and tried in a composite suit. A five-judge (full bench) decision by the Delhi High Court is supposed to be binding on subordinate authorities; however, there have been instances regarding other points of law where the Bombay High Court has argued in favor of interpretations different from prevailing jurisprudence, ergo the significance of the Pidilite decision at hand.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2021 International Trademark Association