In      October 2021, Pidilite came across an instant adhesive product being sold by Fixo Industries (‘Fixo’) under the mark “FIXO KWIK”, which was deceptively similar to its registered mark ‘FEVI KWIK’. Upon investigation, Pidilite found that, two applications for registration of trademark were filed by Fixo which were refused by the Ld. Trade Marks Registry. However, despite the refusal, Fixo continued to sell its counterfeit products under the mark FIXO KWIK.

Hence, Pidilite approached the Bombay High Court seeking ad-interim reliefs. Pidilite contended that, the impugned mark was nearly-identical to its own mark not only with respect to the placement of the words used in the mark but also the designing of the packet in which the adhesive is sold and the same was a colorable imitation or a substantial reproduction of the original packet of ‘FEVI KWIK’.

Source - Judgement

Pidilite further submitted that, all its packaging and the marks and color combinations on it were uniquely curated by them and thereon were being sold extensively and continuously in the market.

Against this Swastik Enterprises (Defendant No.2) countered filing its affidavit, denying anything in relation to the impugned mark used by Fixo. Defendant No.2 submitted that there was absence of substantial material in the papers filed along with the plaint to demonstrate as to what is the cause of action Pidilite could possibly have against Defendant No.2. Further it was submitted that in the absence of any tangible material to show any connect between the alleged impugned product and Defendant No.2, no ad-interim relief could be granted to Pidilite, at least in so far as Defendant No.2 was concerned.

After considering all the submissions and taking a look at both the products, the Court was of the opinion that the mark used by Fixo was prima facie deceptively similar to FEVI KWIK. The Court observed that, under section 2(1)(h) of the Trademarks Act. 1999 - A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. In this case, the color combination on the packaging, the font, font color and the sentence – “ONE DROP INSTANT ADHESIVE” coupled with the placing of all the elements on the package, did have the likelihood of confusion among the customers of FEVI KWIK.

Therefore, the Court restrained Fixo from the following:

1.     Manufacturing, marketing, selling advertising, offering to sell or dealing in the products dealt in by Fixo or instant adhesives or any similar goods or any other goods bearing the FIXO KWIK. Any activity comprising of reproducing the mark FEVI KWIK in any manner.

2.     Infringing the FEVI KWIK registered mark bearing numbers - 465651, 1643621, 1643620, 1128234, 1295076, 705500, 1128236 and 689062 and from using in relation to products manufactured by Fixo or any other goods for which the FEVI KWIK Registered Marks are registered or any goods similar thereto.

3.     Infringing in any manner the Pidilite’s copyrights in the artistic work comprised in/reproduced on its FEVI KWIK Distinctive Label/Packaging and from reproducing/ copying the said artistic works or any substantial part of the said artistic works on the Fixos’ manufactured counterfeit Products.

4.     Finally, the court restrained Fixo from committing the tort of passing off in any manner, which may include manufacturing, selling, and advertising. This may also include dealing in the counterfeit products by Fixo under the mark FIXO KWIK.  The present matter has been further listed on 05/12/2022.