Dow wins trademark infringement case in India

Bombay, India – In January 2024, Dow came across defendant A’s application to register the impugned mark DOLLSIL and opposed it. Since the defendant claimed use of the impugned mark, Dow conducted market investigations, which also revealed defendants B and C and the fact that all defendants were not only using the impugned mark DOLLSIL but also Dow’s other registered trademarks NEUTRALPLUS, 789 and GP SILICONE SEALANT, as well as Dow’s artworks, packaging and trade dress.

It was found that the defendants were collectively importing and marketing the said products. This led Dow to file a suit for trademark and copyright infringement and passing off before the Bombay High Court (Dow Chemical International Pvt Ltd and Ors v Sweta Bharat Jain, trading as M/s VL Enterprises and Ors, COMIP SUIT/L, 19648 2024).

The court found that the defendants’ mark DOLLSIL was nearly identical to Dow’s mark DOWSIL. Further, the defendants’ marks 789, NEUTRAL PLUS and GP SILICONE SEALANT were all identical to Dow’s prior registered trademarks, while an examination of the rival products indicated that they had slavishly lifted Dow’s copyrighted artworks.

On 5 July 2024, the court passed an ex parte ad interim injunction, restraining the defendants from using the impugned marks, artworks and packaging. The court also appointed court receivers to execute local commissions, empowering them to – with police assistance – search the defendants’ premises and seize infringing products. Following successful local commissions, which resulted in the seizure of over 30,000 infringing products, the defendants sought an amicable resolution to the dispute.

A settlement was reached, pursuant to which the suit was decreed in Dow’s favor on 30 August 2024, within just two months of it being filed. The defendants paid Dow INR 1 million (approximately US$12,000) in damages and also agreed to withdraw their trademark application. Meanwhile, Dow agreed to release the seized products for sale after sufficiently rebranding them to distinguish the marks and packaging from Dow’s registered trademark.