Case: – Berger Paints India Limited and JSW Paints Private Limited;
In a recent legal development, the Calcutta High Court delivered a significant verdict in the trademark dispute in the above-mentioned case. The plaintiff had filed a suit seeking an interim injunction against Defendant, restraining them from using the term ‘SILK’ in conjunction with their product range sold under the trademark ‘HALO.’ The Hon’ble High Court, dismissed Plaintiff’s application, providing key insights into the legal intricacies of the case.
The court held that the use of the term “SILK” for paint finish is customary in the trade and is not capable of being protected as a trademark for paints, emulsions, and distempers. Notably, Defendant had not applied for the registration of the mark “SILK” and did not intend to market its product under a trademark of the same. The products of Defendant were sold under the mark “HALO,” with the term “SILK” used merely to define the finish or sheen of the paint.
Plaintiff, claiming ownership of registrations for the term “SILK” since 1980, argued that the defendant use of ‘SILK’ in relation to identical products constituted an infringement of their registered trademark. The contention was that defendant intentionally adopted the trademark, fully aware of plaintiff business under the ‘SILK’ mark, to gain an unjust advantage and trade on the goodwill of plaintiff paint products.
However, defendants defended its use of the term “SILK” by asserting industry practice and contending that it was merely descriptive of the finish or sheen of the paint sold under the well-established “HALO” trademark. The court acknowledged defendants’ argument, emphasizing that the term “SILK” was being used as a product descriptor to describe a specific attribute of its paint finish under the “HALO” mark.
The court ultimately ruled against granting an injunction in favor of plaintiff, citing the lack of actual similarity between the two marks when applied to their respective product labels, which were deemed substantially different. The observation that plaintiff use of “SILK” was in conjunction with the “BERGER” mark, while defendants use was associated with the “HALO” mark, played a crucial role in the court’s decision.
In conclusion, the judgment highlights the importance of considering industry practices, the descriptive nature of terms, and the specific context in which trademarks are used when adjudicating trademark disputes. The decision is poised to have implications for future cases involving descriptive terms within the paint industry, setting a precedent for the protection of trademarks in similar contexts.

Author of this article:
Adv. Ravish Bhatt,
Partner, R&D Law Chambers,
Dual Qualified Lawyer Solicitor | International Tax Affiliate

Connect with Mr. Bhatt on Linkedin: https://www.linkedin.com/in/adit-ravishbhatt/

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