Too Close for Comfort: Bombay High Court Holds 'Super Asian Plus' Deceptively Similar To 'Asian Paints

Soumya Juneja
1 day ago
3 min read

Introduction

Recently, in the case of Asian Paints Limited vs. Manju Rani Jindal¹, the Bombay High Court discussed the issue of deceptive similarity between two marks. The Court granted a permanent injunction in favour of the Plaintiff, restraining the Defendant from manufacturing, marketing, selling and/or likely to market and sell and/or using in any manner whatsoever in relation to wall putty, cement paints and other goods used in the paint industry, the impugned mark “SUPER ASIAN PLUS” or any mark/s identical with and/or deceptively similar to the Plaintiff's distinctive trademarks i.e. ‘ASIAN’ and ‘ASIAN PAINTS’.

Background

The Plaintiff i.e. Asian Paints Limited is a company incorporated in 1956 and since then, has been continuously using the mark ‘ASIAN’ and marks comprising the word ‘ASIAN’. The Defendant has been using the mark ‘SUPER ASIAN PLUS’ (the “impugned mark”) in relation to the same goods that are manufactured and sold by the Plaintiff, i.e., wall putty, cement paint, paints and other goods like those of the Plaintiff. It is worth noting that the Plaintiff has been using its house mark “ASIAN PAINTS” continuously since 1952 and the mark “ASIAN” since 1965.

Issues of the case

Whether the Defendants' use of the mark "SUPER ASIAN PLUS" constitutes infringement of the Plaintiff's registered trademarks and amounts to passing off?

Whether the Plaintiff is entitled to damages and costs?

Contentions by the Plaintiff

The following arguments were put forward by the Plaintiff:

The Plaintiff claimed that they had been using the trademark ‘ASIAN’ continuously since 1956 and due to such continuous use, their mark has gained secondary meaning.
- Further, the Plaintiff claimed that they are the registered proprietor of ‘ASIAN PAINTS’ since at least 2000.
- Thus, the trademark ‘ASIAN PAINTS’ has been continuously in use since 1952 and has gained a well-known status.
- The Plaintiff also placed reliance on the decision held by the Delhi High Court in the case of Asian Paints (India) Limited v. Satish Kumar & Others., where the Court held that “the use of the mark GREAT ASIAN, ASIAN GLOW and SUPER ASIAN by the defendants is also actionable, since these marks are apparently confusingly similar to those of the plaintiff‟s marks, as ASIAN constitutes the dominant feature of the plaintiff‟s marks. ASIAN in respect of paints cannot be claimed to be generic…”.
- It was further argued that in the Defendant’s trademark i.e. ‘SUPER ASIAN PLUS’, ‘ASIAN’ is the dominant element, whereas the rest of the words are minuscule-sized.
- Finally, the Plaintiff also claimed that they are the prior user and adopter of its trademarks.

Decision

The Court affirmed that Plaintiff’s trademarks have achieved "well-known" status, commanding significant market goodwill. Utilizing the "overall and broad impression" test, the Court determined that the mark "SUPER ASIAN PLUS" is deceptively similar to the Plaintiff's because the registered trademark "ASIAN" was entirely incorporated as its dominant and primary element. Due to the identical nature of the competing products, the Court found a strong probability of consumer confusion. Furthermore, the Defendants' bad faith and dishonest intentions were clearly demonstrated by their failure to contest the lawsuit and their use of a fabricated manufacturer name ("Super Gloss Paints").

Regarding financial remedies, the Court applied Section 35 of the CPC, as amended by the Commercial Courts Act, 2015, to award substantial compensatory costs to the Plaintiff, noting that the Defendants' negligent conduct forced the Plaintiff to incur avoidable litigation expenses.

The Defendant’s trademark i.e. “SUPER ASIAN PLUS” was held to be deceptively similar to the Plaintiff’s trademarks i.e. “ASIAN” and “ASIAN PAINTS”. The Court held that the use of the Defendant’s mark was dishonest and in bad faith, amounting to infringement and passing off and granted permanent injunction restraining the Defendant from manufacturing, marketing, selling and/or likely to market and sell and/or using in any manner whatsoever in relation to wall putty, cement paints and other goods used in the paint industry, the impugned mark “SUPER ASIAN PLUS” or any mark/s identical with and/or deceptively similar to the Plaintiff's distinctive trademarks i.e. ‘ASIAN’ and ‘ASIAN PAINTS’.

Under the mandate of Section 35 of the CPC (as amended by the Commercial Courts Act), the Court decreed the suit in terms of the prayers for a perpetual injunction and the delivery-up of all infringing materials for destruction.

Conclusion

The Bombay High Court’s decision reinforced the strong protection afforded to well-known trademarks under Indian trademark law. The ruling also highlights that courts will take a strict view of dishonest adoption and bad-faith conduct, especially where a defendant attempts to capitalize on the goodwill and reputation of a well-established brand.