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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
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,
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 Defendant is 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
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
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
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
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
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
Kumar & Others1
, 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 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
2013 SCC OnLine Del 2647.
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: A.The Plaintiff has proved that the Plaintiff is the registered proprietor of the trade marks ASIAN PAINTS and ASIAN. The registration and renewal certificates appended at Exhibits B and E to the Plaint correspond with the Legal Proceedings Certificates exhibited as PW-5 and PW-11 in evidence. These registrations are valid and subsisting. The statutory rights flowing from such registrations are therefore firmly established. B.In addition to statutory rights, the Plaintiff has also proved prior, continuous and extensive use of the said marks through the
evidence of PW-1, Mr. Yash Patade and the accompanying documents, which include sales figures, advertisement expenditure statements, invoices and promotional material (Exhibits C, D, F and G to the Plaint, corresponding with Exhibits PW-6, PW-7, PW-8, PW-9, PW-12 and PW-13). All this clearly establishes longstanding and extensive commercial use of the marks ASIAN PAINTS and ASIAN. The turnover figures, reflecting steady growth from approximately ₹12,000 crores in 2013-14 to over ₹29,000 crores in 2024-25, further substantiate the scale of the Plaintiff’s operations and the commercial strength of its marks. C.The Plaintiff's evidence also establishes that the marks ASIAN 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 well-known trade mark, evidenced by Exhibit PW-10, reinforces this position and evidences the Plaintiff’s substantial goodwill and reputation. D.Insofar as the impugned mark, SUPER ASIAN PLUS, is concerned, it is evident that the registered mark, ASIAN, is wholly subsumed therein. The word “ASIAN” constitutes the
leading, prominent and essential feature of the impugned mark. The addition of the words “SUPER” and “PLUS” does not, in my view, in any manner materially distinguish the mark, particularly when the rival goods are identical. On an overall and broad comparison, there is clear deceptive similarity between the Plaintiff’s marks and the impugned mark. E. Additionally, given that the identity of the goods is the same and the dominance of the word ASIAN in the impugned mark, the likelihood of confusion and deception is not merely possible but probable. Such confusion is likely to lead consumers to associate the Defendants’ goods with the Plaintiff, thereby causing damage to the Plaintiff’s goodwill. F. In the above context, the Plaintiff’s reliance upon the decisions in 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.
G.I must, however, note that despite claiming damages of Rs. 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. H.The present suit, being a Commercial Suit, is governed by the provisions of the Commercial Courts Act, 2015. Section 35 of the CPC, as amended by Section 16 of the Commercial Courts Act, 2015, mandates that costs shall ordinarily follow the event and be awarded to the successful party. The provision further requires the Court, while determining costs, to have due regard, inter alia, to the conduct of the parties. 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. J. Also, the Defendants’ complete failure to contest the proceedings is a relevant circumstance which lends further credence to the Plaintiff’s case that the adoption of the impugned mark is entirely dishonest and actuated by bad faith. In these circumstances, having regard to the conduct of the Defendants and the statutory mandate under Section 35 of the CPC as amended, the Plaintiff is entitled to an award of compensatory costs. 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. 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.]