Bombay High Court Bars Use of ‘ASIA TUFF’ Mark, Finds Likely Confusion with Asian Paints Brand

Bombay High Court Bars Use of ‘ASIA TUFF’ Mark, Finds Likely Confusion with Asian Paints Brand

Introduction

The Bombay High Court has granted an interim injunction in favour of Asian Paints Limited, restraining a rival firm from using the mark “ASIA TUFF” for cement paint and wall putty products. Justice Sharmila U. Deshmukh held that the rival marks displayed deceptive visual and phonetic similarity and were likely to cause confusion among consumers, thereby establishing a prima facie case of trademark infringement.

Factual Background

Asian Paints Limited filed a suit alleging that the defendants, Tarun Paints Private Limited and Tarun Brush Industries, were using the mark “ASIA TUFF” for cement paint and wall putty, which was deceptively similar to its well-known trademark “ASIAN PAINTS.”

The plaintiff stated that it had been using the mark “ASIAN PAINTS” continuously since 1952 and that the word “ASIAN” constituted the dominant and distinctive element of its trademark. Asian Paints further pointed out that the Registrar of Trade Marks had previously raised objections to the defendants’ trademark applications for “ASIA TUFF,” citing the plaintiff’s earlier mark. These applications were later abandoned.

Procedural Background

The plaintiff approached the Bombay High Court seeking a permanent injunction and interim relief restraining the defendants from using the impugned mark “ASIA TUFF.” During the course of proceedings, the defendants indicated that they were willing to revise certain other disputed labels originally included in the litigation. After recording this statement, the Court noted that the dispute before it was confined to the question of whether the use of the mark “ASIA TUFF” infringed the registered trademark “ASIAN PAINTS.”

Issues

1. Whether the mark “ASIA TUFF” was deceptively similar to the registered trademark “ASIAN PAINTS.”

2. Whether the defendants had established prior use of the impugned mark.

3. Whether the plaintiff was entitled to interim injunctive relief for trademark infringement and passing off.

Contentions of the Parties

The plaintiff contended that the defendants had adopted the mark “ASIA TUFF” in order to ride on the goodwill and reputation of its well-known trademark “ASIAN PAINTS.”

It argued that the word “ASIAN” constituted the dominant element of its trademark and that the defendants’ mark prominently featured the word “ASIA,” which was likely to be perceived as a variation of “ASIAN.”

The defendants argued that they had been using the mark “ASIA TUFF” since 2002 and were therefore prior adopters. They also contended that the marks must be compared as a whole and that the plaintiff could not claim exclusive rights over the word “ASIAN” since it did not hold a standalone registration for that word.

The defendants further relied on an affidavit from a distributor stating that both companies’ products had been displayed together in retail outlets for several years without causing confusion among consumers. They also raised the defence of delay and acquiescence, asserting that the plaintiff had knowledge of their use of the mark for many years before filing the suit.

Reasoning and Analysis

The Court examined the rival marks and observed that the dominant feature of the plaintiff’s mark was the word “ASIAN.” The impugned mark “ASIA TUFF” prominently used the word “ASIA,” which was likely to be perceived by consumers as “ASIAN,” thereby creating phonetic and visual similarity. Applying the test of the average consumer with imperfect recollection, the Court observed that the relevant consumers for the products in question—such as contractors, labourers, and persons involved in construction or renovation—would likely refer to the plaintiff’s products simply by the name “ASIAN.”

In such circumstances, the presence of the word “ASIA” in the defendants’ mark was likely to cause confusion when consumers encountered products bearing the mark “ASIA TUFF.” The Court rejected the defendants’ claim of prior use, noting that although they asserted use since 2002, they had produced only four invoices from 2017. These invoices were sporadic and insufficient to establish continuous or substantial use of the mark.

The Court also noted that the Registrar of Trade Marks had raised objections to the defendants’ mark as early as 2002. The defendants therefore ought to have been aware that continued use of the mark would be at their own risk. However, on the claim of passing off, the Court found no prima facie case because the defendants’ packaging, colour scheme, and additional design elements were sufficiently distinct to avoid misrepresentation.

In this case the plaintiff was represented by Advocates Vinod Bhagat and Twisha Singh. Meanwhile the Advocates Atmaram Patade, Pranav Manjrekar, Bhagawan Kasture, Shraddha Patil, Atharva Kudtarkar and Rahul R. Dubey.

Decision

The Bombay High Court confirmed the ad-interim injunction and restrained the defendants from manufacturing, marketing, or using the mark “ASIA TUFF” or any deceptively similar mark in relation to cement paint, wall putty, paints, or allied products during the pendency of the suit.