Bombay High Court Upholds '1K PUR' Trademark, Grants Injunction Against Infringement.


25 April 2025 Trademark Laws in India >> Intellectual Property Rights  

In a significant ruling for intellectual property rights, the High Court of Judicature at Bombay has granted an interim injunction in favor of Pidilite Industries Limited, asserting its intellectual property rights in the registered trademark "1K PUR" against Innovation Coatings Pvt. Ltd. The decision, delivered by the Honourable Mr. Justice Manish Pitale on April 25, 2025, restrains Innovation Coatings Pvt. Ltd. from manufacturing, marketing, selling, advertising, or dealing in products bearing the mark "1K PUR" or any similar mark.

Pidilite Industries Limited, known for its "FEVICOL" house mark, has been using "1K PUR" in connection with its adhesive products, claiming continuous use since October 13, 2006, with registrations dating back to July 20, 2013. The company asserted statutory rights based on these registrations and common law rights due to continuous use. Sales figures for "1K PUR" products showed a steady increase between 2006 and 2021, with total sales turnover reaching approximately Rs. 484 lakhs.

 
 

The dispute arose in March 2021 when Pidilite Industries Limited discovered Innovation Coatings Pvt. Ltd. selling adhesive products under the mark "INOVA 1K PUR" through e-commerce websites. A cease and desist notice was sent on March 16, 2021, but no response was received. Subsequently, in July 2021, Pidilite learned that Innovation Coatings had filed a trademark application for "INOVA 1K PUR" on April 5, 2021, on a "proposed to be used" basis. Pidilite argued that this demonstrated mala fide and dishonest conduct by the defendant.

Innovation Coatings Pvt. Ltd. countered that "1K PUR" is a generic trade description meaning "one component polyurethane resin" and that Pidilite had fraudulently obtained registration for it. They argued that "PUR" has been an abbreviation for polyurethane resin since 1930 and "1K" signifies "one component," making it a generic description not subject to exclusive rights. The defendant also alleged misrepresentation by Pidilite regarding product photographs in the plaint. Furthermore, Innovation Coatings cited the extensive use of "PUR" in patent literature since 1996 and 2004, claiming "1K PUR" was common to trade and derived from the German word "Komponente" (Component).

However, the Court found that "1K PUR" formed a leading and essential feature of Innovation Coatings' trademark "INOVA 1K PUR," and that Innovation Coatings had not incorporated any disclaimer in its trademark application, indicating a claim of exclusivity. The Court noted that Pidilite's "1K PUR" serves as a product identification mark or sub-brand, distinguishing its products. Importantly, the Court observed that average consumers, such as carpenters, identify "1K PUR" with Pidilite's product rather than understanding it as a technical description.

The Court rejected Innovation Coatings' contention that "1K PUR" was common to trade or publici juris, emphasizing the lack of substantial material demonstrating extensive and continuous use by third parties in India, including sales figures. The argument about the German origin of "Komponente" was also dismissed, as the word is not commonly understood in India.

Referencing Supreme Court precedent in Ruston & Hornsby Ltd. v/s. Zamindara Engineering Co., the High Court reiterated that merely adding a word like "INOVA" to an infringing mark does not negate infringement if the essential feature remains. The Court also found the defendant's adoption of "1K PUR" to be dishonest, particularly given their trademark application post-cease and desist notice without specifying any limitations.

The Court concluded that Pidilite Industries Limited had established a strong prima facie case for both infringement and passing off. The sales turnover and goodwill earned by Pidilite for "1K PUR" were deemed sufficient, while Innovation Coatings failed to provide similar material regarding its goodwill. The Court also noted evidence from e-commerce websites where searches for Innovation Coatings' products sometimes showed Pidilite's "FEVICOL" adhesive first, further supporting the claim of dishonest intent.

As a result, the interim application was allowed, restraining Innovation Coatings Pvt. Ltd. from using the mark "1K PUR" in connection with its products.


Section 36, Trade Marks Act - 1999  

TRADE MARKS ACT, 1999