The Calcutta High Court recently dismissed an interim injunction application in a suit filed by Berger Paints to restrain JSW Paints from using the trademark 'HALO'. 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 sought to contend that the use of ‘SILK’ adopted by JSW Paints in respect of identical products constitutes infringement of the Plaintiff’s registered trade mark ‘SILK’. Berger Paints also sought to argue that JSW Paints allegedly adopted the trade mark wantonly and knowing fully well about Berger Paints’ business carried under their trademark SILK, so as to derive wrongful advantage and to trade upon the goodwill and reputation of the paint products of Berger Paints.
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”. 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 finish of paint products and even otherwise, Berger Paints has not applied for or secured a standalone registration of the term "SILK. "The Calcutta High 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. The court then came to a conclusion that there is no actual similarity between the rival marks, when applied on the respective products labels which are 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. The court refused to grant an injunction in favor of Berger Paints and dismissed the interim application.