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ORDINARY ORIGINAL CIVIL JURISDICTION
COMMERCIAL IP SUIT NO. 271 OF 2015
Asian Paints Limited …Plaintiff
Ms. Rucha Ambekar, Master (Adm.) to the Court Receiver, present.
None for the Defendants.
JUDGMENT
1. The present Suit seeks the following substantive reliefs: a. "that the Defendants, by themselves, their proprietor, heirs, servants, agents, stockists, dealers, assignees and all those connected with them in their business be restrained by a perpetual order and injunction of this Hon'ble Court from manufacturing, marketing, selling and/or likely to market and sell and/or using in any manner whatsoever in relation to their wall putty, cement paints and other like 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 trade marks ASIAN PAINTS and ASIAN, for such use thereof by the Defendants amount to infringement of the Plaintiff's trade marks ASIAN PAINTS registered under Nos. 904238, 904237, 1154822, 1154823, 1154824, 1154825, 1154827, 1154828, 1154830, 1154831, 1154832, 1154834, 1154835, 1154836, 1154837, 1154838, 1994707, 1994709 and the Plaintiff's trade mark ASIAN registered under Nos. 965439, 965441 and 1154821, all in class 02; b. that the Defendants by themselves, their proprietor, heirs, servants, agents, stockists, dealers, assignees and all those connected with them in their business be restrained by a perpetual order and injunction of this Hon'ble Court from manufacturing, marketing, selling and/or likely to market and sell and/or using in any manner whatsoever in relation to their wall putty, cement paints and other like 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 and prior used trade marks ASIAN PAINTS and ASIAN for such use thereof by the Defendants amount to passing off the Defendant's goods and business as and for those of the Plaintiff or in some way connected or associated therewith; c. that the Defendants be ordered and decreed to deliver-up to the Plaintiff for destruction all such materials including wall putty, cement paints and other like goods used in the paint industry. gunny bags, poly bags, pouches, labels, stickers, advertising and packing materials, stationery, dyes, screens, blocks, moulds stencils, papers, vouchers, bill books, carry bags, and other goods bearing the impugned mark SUPER ASIAN PLUS as complained off; d. that the Defendant be ordered and decreed to pay to the Plaintiff, a sum of Rs. 5,00,000/- by way of damages together with interest at the rate of 21 % per annum from the date of filing of the suit till payment or in the alternative the Defendants be ordered and decreed to render a true and faithful account of all the profits earned by the Defendants by using the impugned mark SUPER ASIAN PLUS and the Defendants be further ordered and decreed to pay to the Plaintiff such amount as may be found due on such account being taken”
2. The Plaintiff is a company incorporated under the provisions of the Companies Act, 1956, and is the registered proprietor of the trade marks ASIAN PAINTS and ASIAN (“the Plaintiff’s registered trade marks”).
3. The Defendants are using the mark SUPER ASIAN PLUS (“the impugned mark”), which is deceptively similar to the Plaintiff’s registered trade marks in relation to the very 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.
4. This Court, vide an order dated 3rd February 2015, passed an ex-parte adinterim Order of injunction against Defendant No. 1. Thereafter, vide Orders dated 11th March 2015 and 18th June 2015, this Court allowed the Plaintiff to amend the Plaint and implead Defendant Nos. 2, 3 and 4. It is the Plaintiff’s case that Defendant Nos. 1 and 2 (husband and wife) are engaged in manufacturing and marketing cement paint and wall putty bearing the impugned mark and that Defendant No. 3 purchases goods from Defendant No. 1, which are then packed by Defendant No. 4.
5. Vide an Order dated 29th June 2015, this Court injuncted all the Defendants from using the impugned mark or any mark that is similar to Plaintiff’s registered marks in any manner, pursuant to the paint products and also directed the Defendant Nos. 3 & 4 to make disclosures and further directed the Court Receiver to visit the premises of the Defendant Nos. 3 & 4.
6. However, while the Court Receiver was unsuccessful in locating the address of the Defendant No. 3, the Court Receiver found and seized goods bearing marks deceptively similar to those of the Plaintiff at the premises of the Defendant No. 4. It was thus the case of the Plaintiff that all the Defendants were acting in concert and in collusion with each other.
7. Thereafter, vide an Order dated 11th August 2016, this Court granted the Plaintiff Leave under Clause XIV of the Letters Patent and also allowed the prayer for passing off in Notice of Motion No. 1909 of 2015. The Defendants did not challenge the Orders dated 3rd February 2015 and 29th June 2015. Thus the interim reliefs granted in favour of the Plaintiff on its prayers for infringement and passing off have attained finality.
8. Despite service of the Writ of Summons on Defendant Nos. 1, 2 and 4, the said Defendants have not filed any Written Statement nor have the Defendants contested the trial of the Suit. Further, the Plaintiff attempted to serve the Writ of Summons upon Defendant No. 3 but was, however, unsuccessful. Though the Defendant Nos. 1 and 2 were represented by their Advocate at the interim stage, no one has appeared on their behalf for the hearings when the Suit was listed on 24th November 2025, 15th December 2025, 19th January 2026 and today, i.e., 16th February 2026, when it was listed ‘For Final Hearing’. Submissions on behalf of the Plaintiff
9. Mr. Bhagat, the learned counsel appearing on behalf of the Plaintiff, submitted that the Plaintiff is the registered proprietor of the trade mark ASIAN PAINTS under the registration nos. 904238 and 904237 dated 17th February 2000, and under the registration nos. 1994707 and 1994709, dated 16th July 2010, all in class 02, whose registrations are valid and subsisting to date. He then submitted that the Plaintiff has been using the trade mark ASIAN PAINTS upon and in relation to paint goods continuously since the year 1952 and that the said trade mark has been widely publicised by the Plaintiff through various media of publicity. He has further submitted that the trade mark ASIAN PAINTS appears on all of the Plaintiff’s goods and is in fact the House Mark of the Plaintiff. He then submitted that the Plaintiff has done enormous business under the trade mark ASIAN PAINTS, and the said mark has become distinctive of the Plaintiff’s products, and thus valuable common law rights have accrued in favour of the Plaintiff. Mr. Bhagat has also submitted that the Plaintiff’s trade mark ASIAN PAINTS has been declared as a wellknown trade mark by the Trade Marks Registry, under Rule 124 of the Trade Marks Rules, 2017.
10. Mr. Bhagat then submitted that the Plaintiff is also the registered proprietor of the trade mark ASIAN and of marks bearing ASIAN as the leading and essential feature under registration nos. 965439 dated 31st October 2001 and 965441 dated 20th October 2000, both in class 02, which registrations are valid and subsisting till date. He submitted that the Plaintiff has been using the trade mark ASIAN continuously since the year 1965 in relation to its paint goods and has acquired a secondary meaning relating to the goods of the Plaintiff alone. He further submitted that ordinarily in the course of trade, the Plaintiff’s products are referred to, called out and purchased as ASIAN. He then submitted that the Plaintiff has done enormous business under the trade mark ASIAN, and the said mark has acquired a distinct connotation in relation to the Plaintiff’s products, and thus valuable common law rights have accrued in favour of the Plaintiff.
11. Mr. Bhagat further submitted that in January 2015, the Plaintiff discovered that the Defendant Nos. 1 and 2 were manufacturing/using the impugned mark SUPER ASIAN PLUS in respect of wall putty and cement paint. The Plaintiff accordingly sought to effect a trap purchase but was not successful and could only discreetly take photographs of the infringing products lying at the said Defendants’ factory premises. Mr. Bhagat pointed out that in the impugned mark SUPER ASIAN PLUS, the word ASIAN occupies the leading, essential and prominent feature, and the words SUPER and PLUS are written in small minuscule-sized font. When seen at a glance, the Defendants’ impugned mark would be identified, referred to and called out as ASIAN, being identical to the Plaintiff’s trade mark ASIAN and being deceptively similar to the trade mark ASIAN PAINTS. He thus submitted that when the mark SUPER ASIAN PLUS is considered as a whole, the impugned mark is deceptively similar to the Plaintiff’s trade marks ASIAN PAINTS and ASIAN.
12. He then submitted that the Plaintiff upon examination of the Defendant's products viz. polybags/gunny bags, bearing mark SUPER ASIAN PLUS, learnt of the name of one manufacturer, ‘Super Gloss Paints’ mentioned therein, which he submitted appears to be a fictitious name and is only mentioned to mislead and/or to escape liability, as the said impugned goods are actually being manufactured and marketed by the Defendant Nos. 1 and 2.
13. Mr. Bhagat has submitted that the Defendants’ use of the impugned mark SUPER ASIAN PLUS is clearly malafide and dishonest, and the Defendants are clearly attempting to encash upon the Plaintiff’s goodwill and reputation. He submitted that the Defendants have clearly infringed the Plaintiff’s trade marks ASIAN PAINTS and ASIAN and have attempted to pass off their goods as and for those of the Plaintiff and have thereby caused loss and damage to the Plaintiff. It is thus that the Plaintiff is seeking a permanent injunction restraining the Defendants from infringing the Plaintiff’s trade marks and passing off the impugned products as being those of the Plaintiff, in addition to damages of Rs. 5,00,000/-.
14. Mr. Bhagat then placed reliance upon the decision of the Hon’ble Delhi High Court in the case of Asian Paints (India) Limited v. Satish Kumar & Others[1], to point out that the trade mark ASIAN in respect of paints cannot be claimed to be generic. It is associated and identified with the Plaintiff and with no one else. Further, he pointed out that this Court in the case of Anheuser Busch Inbev India Ltd v. Jagpin Breweries Limited & Ors.2, has established the principle that the test of infringement requires the Court to assess the overall and broad impression of the marks rather than a meticulous, side-by-side comparison, and what is to be considered are the essential, dominant, and memorable features of the rival marks and not the minor differences in detail.
15. Mr. Bhagat submitted that the Plaintiff’s authorised representative, Mr. Yash Patade, had led evidence by filing his Affidavit of Evidence in lieu
2 2025:BHC-OS:24174. of examination-in-chief, wherein he proved the case pleaded in the Plaint. He submitted that based on the evidence of Mr. Patade and the documents which were relied upon, the Plaintiff’s longstanding use of the trade marks ASIAN PAINTS and ASIAN, the extensive goodwill and reputation attached thereto, and their recognition in the trade and amongst consumers were firmly established. He submitted that the evidence further demonstrated the validity and subsistence of the Plaintiff’s registrations, the distinctiveness of the marks, and the deceptive similarity between the Plaintiff’s marks and the impugned mark SUPER ASIAN PLUS. The Affidavit and accompanying exhibits also substantiated the Defendants’ acts of infringement and passing off.
16. Mr. Bhagat then pointed out that despite service of the Writ of Summons, the Defendants neither filed a Written Statement nor appeared to contest the Suit. Consequently, the Plaintiff’s evidence remained wholly uncontroverted. In these circumstances, he submitted that the Plaintiff had discharged its burden of proof and was entitled to the reliefs as prayed for, including an award of costs.
17. Mr. Bhagat then submitted that the present Suit being a Commercial Suit, the regime of costs under Section 35 of the Code of Civil Procedure, 1908 ("CPC"), as amended by Section 16 of the Commercial Courts Act, 2015, is attracted. He pointed out that under the amended Section 35, the Court is required to award realistic rather than nominal costs, and the Court must also take into consideration (i) the conduct of the parties, (ii) whether a party has succeeded on part or the whole of the case, and (iii) whether any reasonable offer to settle was made and unreasonably refused. He submitted that these factors, read with the statutory mandate that costs should ordinarily follow the commercial dispute, place an obligation on the Court to ensure that a successful litigant is compensated for the actual costs incurred. In the present case, he submitted that the Defendants’ conduct was clearly dishonest since the Defendants had adopted a deceptively similar mark and had, despite ample opportunity, failed to appear, much less made an offer to settle the matter. He submitted that the Court must take all these factors into consideration, including the fact that the products involved were chemical preparations, where public health and safety considerations were involved, which warrants a stricter award of costs, both to compensate the Plaintiff and to deter similar conduct by others.
18. After having heard Mr. Bhagat and having considered the pleadings, evidence and case law upon which reliance has been placed, I find as follows:
PAINTS and ASIAN have acquired distinctiveness and are exclusively associated in the minds of the trade and public with the Plaintiff alone. The declaration of ASIAN PAINTS as a wellknown trade mark, evidenced by Exhibit PW-10, reinforces this position and evidences the Plaintiff’s substantial goodwill and reputation.
Asian Paints (India) Limited v. Satish Kumar & Others and Anheuser Busch Inbev India Ltd. v. Jagpin Breweries Limited & Ors. is in my view, entirely apposite. The principles laid down in these decisions, in particular regarding the assessment of dominant features and overall impression, would squarely apply to the present case. The Plaintiff has therefore clearly made out a case for both infringement of its registered trade marks and passing off.
5,00,000/- with the interest of 21% per annum from the date of institution of the Suit, the Plaintiff has not led any evidence in support of its claim for damages or to prove the loss suffered. A perusal of the Affidavit of Evidence filed by the Plaintiff discloses that the Plaintiff has not attempted to prove the loss or damages which have been claimed in the Suit.
I. In the facts of the present case, the record demonstrates that the
Defendants have been negligent in prosecuting the matter and have, by their conduct, compelled the Plaintiff to incur substantial and wholly avoidable expenditure. Despite being duly served, the Defendants have chosen not to appear or contest the Plaintiff’s claim. There is, therefore, nothing on record to even remotely suggest that the adoption of the impugned mark SUPER ASIAN PLUS by the Defendants was honest or bona fide.
19. Hence, I pass the following order: ORDER i. The suit is decreed in terms of prayer clause (a) to (d). ii. The Defendant Nos. 1, 2 and 4 shall each pay a sum of Rs. 3,00,000/- as costs to the Plaintiff within 8 weeks from today. iii. In the event that the Defendant Nos. 1, 2 and 4 do not pay the costs within a period of 8weeks from today, then the said sum will be payable with interest at the rate of 8% per annum. iv. The Plaintiff shall be at liberty to apply for the return of the original documents on the usual terms. v. The Court Receiver will stand discharged without passing of the accounts on the Plaintiff’s undertaking to make payment of all the necessary costs, charges and expenses of the Court Receiver. The Court Receiver’s Report is accordingly disposed of. vi. The Suit is disposed of in these terms, and Interim Applications, if any, would not survive and are therefore accordingly disposed of. [ARIF S. DOCTOR, J.]