Berger Paints India Ltd v. Jsw Paints Pvt Ltd

IA No: GA-Com 1 of 2024 APOT No. 58 of 2024 With CS No. 64 of 2020

IN THE HIGH COURT AT CALCUTTA

In appeal from its ORDINARY ORIGINAL CIVIL JURISDICTION CIVIL APPELLATE JURISDICTION (Commercial Division) Berger Paints India Ltd.

Versus

JSW Paints Pvt. Ltd.

Before:

The Hon'ble Justice I. P. MUKERJI And The Hon'ble Justice PRASENJIT BISWAS Date: 10th April 2024 Appearance:

Mr. Abhrajit Mitra, Sr. Advocate Mr. Sayantan Basu, Advocate Mr. Niladri Khanra, Advocate Mr. Kavach Kashyap, Advocate Ms. Abanti Bose, Advocate for the appellant Mr. Debnath Ghosh, Advocate Mr. Shounak Mitra, Advocate Ms. Vaibhavi Pandey, Advocate for the respondent The Court: We have heard both learned counsel for the parties. The arguments were so fair and to the point that we are in a position to dispose of this appeal dispensing with all formalities. Learned counsel are ad idem that the word "silk" on the tumbler of the products of the parties should denote description of the products. But when this word is so couched with the trademark or trade name of a product it might tend to pass off the goods of one party as those of the other.

In those circumstances, there shall be no interference with the impugned judgment and order dated 12th December 2023 provided the respondent uses the word "silk" on the tumbler only when the product contained therein has a silk finish and does not use that word when the

product has any other finish/sheen. Such description would be maintained in the website of the respondent and in any other form of advertisement of the product.

Mr. Abhrajit Mitra, learned senior counsel appearing for the appellant submits that the above observation would not defeat his claim in the suit that his client has proprietary rights over the word "silk" in relation to the product.

This is denied by Mr. Denbath Ghosh, learned counsel appearing for the respondent.

At this prima facie stage, we maintain our observation made above and hold that such a right is yet to be established at the trial of the suit. All contentions are kept open to be decided at the trial. The appeal (APOT 58 of 2024) and the stay application (IA No: GA-com 1 of 2024) are disposed of.

As affidavits were not invited, the allegations contained in the stay application are deemed to have been not admitted. We expect that the suit would be speedily got ready for trial and hearing so as to conclusively decide the issues in question. (I. P. MUKERJI, J.) (PRASENJIT BISWAS, J.) R. Bose