The Bombay High Court has allowed the marks PLASTO and PLAXO to co-exist in respect of similar goods falling in different classes i.e., flexible pipes included in Class-17 and rigid (nonmetal pipes) in Class-19.

The order was passed by the Bombay High Court in an appeal filed against the order of the District Judge, Nagpur. The Plaintiff, Plasto Containers (I) Pvt. Ltd (Plasto) filed the suit against the Defendant, Plaxo Pipes, and Films Pvt. Ltd (Plaxo) before the District Court, alleging trademark infringement, damages, etc., and to restrain the latter from using the mark ‘PLAXO’ or any other mark deceptively similar to ‘PLASTO’ concerning their business.

Proceedings before the District Court:

In the suit, Plasto contended that it had been engaged in the business of manufacturing, supplying, and exporting an expensive range of water storage tanks, plastic water tanks, PVC pipes and fittings, and plastic pipes, for several years under the distinctive trademark/logo ‘PLASTO’. It relied on its exclusive rights in the mark ‘PLASTO’ registered in classes 19 and 21. A lawsuit was filed on becoming aware of the use of the deceptively similar mark ‘PLAXO’ for similar/overlapping products.

Plaxo filed a written statement and a counter to the injunction application contending that it has been using the mark ‘PLAXO’ since 2014 and not in any manner causing confusion and affecting Plasto’s business.

After hearing the parties, the District Judge granted an injunction in favor of Plasto, restraining Plaxo from using the mark which order is challenged by this appeal.

In the appeal, Plaxo contends:

1. The District Court overlooked the malafides of Plasto as they deliberately did not disclose that ‘PLAXO’ is a registered trademark, and no infringement claim will lie against it.
2. The Court below erred in not considering that the ‘PLAXO’ mark has been used since 2014 and registered in Class 17.
3. The classification of goods and services in classes 19 and 21 differs from those in class-17. Moreover, the products dealt with by the rival parties are different, and there will be no confusion.
4. Both parties use plastic as a raw material. The word ‘PLA’ is descriptive and public juris, an abbreviation of the generic term ‘plastic,’ and the suffix portion “STO” and “AXO” are dissimilar.

Plasto relied upon the findings of the District Court and reiterated that adopting the mark ‘PLAXO’ is dishonest. Moreover, using a deceptively similar mark concerning overlapping products is bound to confuse, and there is no reason for interference in the order passed by the District Judge.

After considering the pleadings, arguments, and case laws, the High Court held:

• The pleadings show that the mark ‘PLASTO’ is registered in classes 19 and 21, and ‘PLAXO’ is registered in class 17. Admittedly, the mark ‘PLAXO’ is being used in relation to flexible pipes, which fall in class 17, for which PLASTO mark is not registered.
• The District Judge seems to have been swayed by the fact that the ‘PLASTO’ mark is registered and thus entitled to protection. However, in the instant case, the goods of the rival parties are registered in different classes, and Plasto does not have a registration for the goods in which Plaxo is dealing. There is no challenge to the registration of Plaxo; they deal in flexible pipes, whereas Plasto produces nonmetal/rigid pipes for building materials. The flexible pipes and pipes required under building materials are classified into two classes; flexible pipes are included in Class-17, whereas rigid (nonmetal pipes) are included in Class-19.
• The Court below has failed to consider the goods Plasto has obtained registration for. It ought to have inquired whether the products dealt with by Plaxo falls in classes 19 and 21, and if not, then there would not be any similarity. Moreover, if there is any dispute about the product class, the Registrar of Trademarks is the competent authority to decide.
• The District Judge should have noted that the classification of goods and services as per class-19 and-21 differs from that of class-17. Moreover, Plaxo does not deal in tanks or building materials. Without any inquiry into the class for which the product is registered under the Trademarks Act, 1999, granting protection under Section 29 for infringement is erroneous.
• The argument that the Appellate Court ought not to interfere in the discretion exercised by the lower Court is not applicable in the facts and circumstances of the instant case, as the District Judge has decided on the wrong premise that the matter is for infringement of trademark.

Given the above, the High Court allowed the appeal, set aside the injunction order, and remanded the matter to the District Court for fresh consideration.