Akzo Nobel Coatings International B V (Akzo) filed the suit against JK Cement Ltd (JK Cement) alleging trademark infringement, passing off, etc., and to restrain the latter from using the mark ‘WEATHERSHIELD’.

This note discusses the contentions raised by the parties and the findings of the Court. The court examined various aspects, including the distinctiveness of the ‘WEATHERSHIELD’ mark, the similarity of the marks, potential consumer confusion, and the intention behind JK Cement’s use of the mark.

Akzo sought injunction raising the following contentions:

1. They are a leading global paint and coating company, known for brands like ‘DULUX’, ‘ICI’, and ‘WEATHERSHIELD’.
2. They adopted the mark ‘WEATHERSHIELD’ in the 1970’s for paints and coatings and have used it continuously and extensively since then.
3. The ‘WEATHERSHIELD’ mark is registered in over 91 countries of the world. In India the mark is registered in classes 2, 9, 16 and the earliest registration dates to the year 1995.
4. They have filed invoices evidencing sales of products from 2010-2021 and promotional and advertisement materials to substantiate extensive use of the ‘WEATHERSHIELD’ mark.
5. They are aggrieved by the use of the mark ‘Weathershield’ by JK Cement in in relation to the product .
6. In January 2020, JK Cement filed two trademark applications, ‘JK SUPER STRONG BUILD SAFE WEATHER SHIELD’ and which have been opposed by Akzo and the proceedings are ongoing before the Trademark Registry. JK Cement has also filed a cancellation petition against Akzo’s registered mark ‘WEATHERSHIELD’ which is pending adjudication.
7. In September 2022, Akzo learned JK Cement’s products bearing the mark ‘WEATHER SHIELD’ was available in the market which led to the filing of the suit.
8. JK Cement cannot claim that the mark ‘WEATHERSHIELD’ is non-distinctive as they themselves have applied for registration. Their product packaging shows that the mark ‘WEATHER SHIELD’ is used in a standalone manner and not descriptively.
9. JK Cement has failed to provide any document showing that ‘WEATHERSHIELD’ has been used for paints by any other party worldwide.
10. The use of the house mark JK does not take away the fact that ‘WEATHER SHIELD’ was being used as a sub-brand and was not being used in a descriptive manner.
11. Their use of ‘WEATHER SHIELD’ also constituted passing off as masons and contractors often purchase both cement and paints, there could be an issue of association between the products, creating confusion in the market.

JK Cement countered the injunction by raising the following contentions:

1. The term ‘WEATHERSHIELD’ is non-distinctive as it describes products that protect against weather-related changes, and thus, it is commonly used by various enterprises in their business operations.
2. The products offered by the parties are different and distinct. Their products include ‘cement’ and related materials, while Akzo specializes in ‘decorative paints and coatings.’
3. Their products are not sold in hardware stores where construction materials are typically available. The trade dress of the product is different and the term ‘WEATHER SHIELD’ is used by JK Cement to describe their product, which protects against various weather conditions.
4. There is a delay in filing the action by Akzo and it is merely to harass them.
5. Suit for infringement is not maintainable as Akzo’s ‘WEATHERSHIELD’ mark is not registered in Class 19 for the goods i.e., cement.

Court’s analysis and findings

1. Distinctiveness of ‘WEATHERSHIELD’: The Court found that ‘WEATHERSHIELD’ is a coined term with no dictionary meaning, thus making it distinctive. The term has been used by Akzo since the 1970’s and has acquired a secondary meaning associated with their products.
2. JK Cement Ltd. used the mark ‘WEATHER SHIELD’ in a manner that suggested it was a sub-brand rather than a descriptive term, supported by their promotional materials and packaging. The Court held that the similarity between ‘WEATHERSHIELD’ and ‘WEATHER SHIELD’ could cause confusion among consumers, particularly since both marks are used in the construction industry.
3. The Court noted that paints and cement are allied and cognate goods, often purchased by the same group of consumers such as contractors and builders, thus increasing the likelihood of confusion. The Court also found sufficient evidence to support a claim of passing off, based on Akzo’s established reputation and JK Cement’s misrepresentation of the mark as their own.
4. JK Cement argued that Akzo’s delayed action suggested harassment, but the Court found the delay justified as Akzo Nobel acted upon discovering the actual use of the mark.

Considering the above findings, the Court granted an injunction in favour of Akzo restraining JK Cement from using the mark ‘WEATHERSHIELD’. However, the Court granted JK Cements eight weeks to exhaust their current stock of the products bearing the mark.

Comment

The order emphasizes that the Court gave weightage to reputation and extensive use of the mark, the complementary nature of paints and cement in the construction industry, and the likelihood of consumer confusion.