This note briefly sums up the judgement passed by the Madras High Court in a suit between two entities dealing in ‘bitumen emulsion.’ The Plaintiff, Hindustan Colas Private Limited (Hindustan) filed the suit against the Defendant, Muthoos Enterprises (Muthoos), alleging copyright infringement, passing off, and consequential reliefs.

Hindustan’s case:

1. They adopted the mark ‘Hincol’ along with its distinct logo/label as early as in the year 1996 for its flagship product, ‘bitumen emulsion.’ The colour scheme of black and yellow on a barrel is identified with them for the last 27 years.
2. Muthoos for identical products that is ‘bitumen emulsion’ has copied the colour scheme of black and yellow, get up containing the yellow in a diamond shape and layout thereof bearing an overall similarity which amounts to copyright infringement and passing off.
3. Being the owner and prior adopter of label and trade dress, they are entitled to restrain competitors from using deceptively similar trade dress/get-up.
4. Considering the identical nature of the products, same target customers, similarities of marks, and identical trade dress, a case of passing off is made out.
5. Muthoos use of the mark and the identical trade dress results in the tarnishing of Hindustan’s goodwill and reputation.

Muthoos contentions:

1. The suit is not maintainable as the mark ‘Muthoos’ has been registered since the year 2009 and Hindustan has not initiated any action to rectify the same.
2. Hindustan after addressing cease and desist letter in the year 2011 filed the suit alleging copyright infringement only in the year 2019.
3. The logos used by the parties are entirely different and there is no case of passing off.
4. Given the absence of any copyright registration in respect of any artistic work and style, Hindustan cannot invoke the provisions and sections of the Copyright Act to prevent Muthoos from manufacturing, distributing, and selling ‘bitumen emulsion’ in the name and style of Muthoos.
5. Section 33 of the Trademarks Act lays down that if the proprietor of an earlier trademark has acquiesced for a continuous period of five years in the use of the registered trademark being aware of the use, he shall no longer be entitled based on the earlier trademark to apply for a declaration that the registration of the later trademark is invalid.
6. The rival logos/labels are not deceptively similar to cause confusion among the trade and public.
7. The mark Muthoos has been registered since the year 2009, having been allowed to use the trademark for more than ten years, the action is hit by the provisions of Section 33 of the Trademarks Act and thus, liable to be dismissed.

Further to the framing of issues, the matter proceeded to trial. Both sides adduced oral and documentary evidence to substantiate their case.

Courts findings

1. Hindustan’s case is that Muthoos has adopted the appearance, get up, and shape of their label in respect of its registered trademark ‘Hincol’. Though they are using the trademark ‘Muthoos Enterprises’,
2. Both parties are dealing with ‘bitumen emulsion’ which is purchased by seasoned civil contractors or persons who buy the same on the advice of experienced civil contractors. The product is not purchased based on the trade dress of its label but on the brand name.
3. Both Hincol and Muthoos are registered trademarks. Though the suit was filed in the year 2019 Hindustan till date has not initiated any action for rectification of the trademark ‘Muthoos’ and its trade dress. Muthoos has been using the trademark for its product ‘bitumen emulsion’ without interruption for the past several years.
4. Oral and documentary evidence show that Hindustan had addressed a cease-and-desist letter to Muthoos in the year 2011, however, did not initiate any action till the year 2019. Passing off action is a common law remedy, and the Limitation Act is applicable. Thus, it can be held that the suit is barred by limitation.
5. On a comparison of the rival labels, it is clear that the Muthoos logo is rectangular and contains a quadrilateral in yellow with a black line around it and the word ‘Muthoos’. There are sufficient dissimilarities which helps to avoid confusion regarding the origin of goods. Considering that the product ‘bitumen emulsion’ will be purchased by customers not based on their get-up/trade dress but on the brand name, no person of average intelligence and imperfect recollection will get confused between the rival products as the trademarks are totally different and not deceptively similar.
6. In the instant case, Hindustan has not satisfied the tests for passing off. Though they have a reputation for their trademark ‘Hincol’, it cannot be said that Muthoos has damaged the former’s reputation considering the fact that the rival trademarks and trade dress/get-up are entirely different.

In light of the above findings, the Court held that Hindustan had failed to prove the allegations against Muthoos and accordingly dismissed the suit.

Comment

This judgement signifies the importance of timely action in infringement and passing off cases. Further, the trade channels of an industrial product being specific and specialised, the test of confusion may be different when compared with a consumer product.