Phonetic and Visual Similarity Sufficient for Infringement
Introduction: The case of Nuvoco Vistas Corporation Ltd. v. JK Lakshmi Cement Ltd. & Anr. is a significant trademark infringement dispute adjudicated by the High Court of Delhi. The plaintiff, a leading cement manufacturer, alleged infringement of its registered trademark "CONCRETO" by the defendants who adopted the mark "CONCRETA" for similar products. The plaintiff sought permanent injunction, damages, and ancillary reliefs under the Trade Marks Act, 1999. The central issue was whether the defendants' use of a deceptively similar mark for cement constituted trademark infringement and passing off, and whether the plaintiff’s prior user status and proprietary rights warranted interlocutory protection.
Factual Background: Nuvoco Vistas Corporation Ltd. is a prominent manufacturer of cement and building materials, marketing its products under various trademarks, including “CONCRETO.” The trademark “CONCRETO” has been registered since 2005 and has been in use since at least 2002. The plaintiff asserted that it has invested substantially in promoting this brand, resulting in its recognition as a well-known mark. In 2016, due to an order of the Competition Commission of India (CCI) requiring divestment of certain brands previously held by LafargeHolcim, the plaintiff—then known as Lafarge India—was permitted to retain ownership and use of the trademark CONCRETO.
The dispute arose when JK Lakshmi Cement Ltd. introduced a product under the mark “CONCRETA,” which the plaintiff claimed was deceptively and confusingly similar to “CONCRETO.” Despite visual differences in get-up and labeling, the plaintiff contended that the phonetic and visual similarities were sufficient to constitute infringement under Section 29 of the Trade Marks Act, 1999.
Procedural Background:The plaintiff filed a suit for permanent injunction and damages before the Delhi High Court in 2017, registered as CS(COMM) 256/2017. An ex parte ad-interim injunction was granted on 11 April 2017. Subsequently, the defendants filed an application under Order 39 Rule 4 CPC seeking vacation of the injunction, alleging suppression of facts and misrepresentation regarding trademark ownership, particularly concerning marks associated with "LAFARGE." The plaintiff responded by filing an affidavit clarifying the transitional arrangements post-CCI divestment order and affirming its ownership of the "CONCRETO" marks. The matter was heard in detail, culminating in the judgment delivered on 15 April 2019.
Core Dispute:The primary issue was whether the defendants’ use of the mark “CONCRETA” infringed the plaintiff’s registered trademark “CONCRETO.” This included examining the phonetic and visual similarity of the marks, the scope of statutory rights under Section 28 of the Trade Marks Act, and whether the plaintiff was the rightful proprietor entitled to enforce those rights. Another dimension of the dispute related to the defendants’ allegation of suppression regarding ownership, given the historical association of the mark with “LAFARGE” and the divestment mandated by the CCI.
Discussion on Judgments:The plaintiff relied on Laxmikant V. Patel v. Chetanbhat Shah, (2002) 3 SCC 65, where the Supreme Court held that even innocent infringement cannot be condoned and that courts must focus on similarities rather than differences in trademark cases.
The plaintiff also referred to Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel, AIR 2006 SC 3304, emphasizing that the adoption of deceptively similar marks amounts to infringement regardless of the use of different corporate identifiers.
In Inter IKEA Systems BV v. Annanya Gautam & Anr., CS(COMM) 1089/2018 (Delhi HC, decided on 28 September 2018), the Court held that visual and phonetic similarities are independently sufficient to establish infringement.
The classic precedent of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, was invoked to argue that in infringement cases, what matters is whether the essential features of the mark have been copied, even if other distinguishing features are present.
The defendants relied on J.R. Kapoor v. Micronix India, 1994 Supp (3) SCC 215, to argue that generic and descriptive marks like “Concrete” cannot be monopolized.
To counter the ex parte injunction, the defendants cited Morgan Stanley Mutual Fund v. Kartick Das, (1994) 4 SCC 225, asserting that the plaintiff had a duty of utmost good faith and had failed to disclose the full impact of the CCI order.
To rebut the claim of estoppel due to third-party use, the plaintiff cited Pankaj Goel v. Dabur India Ltd., 2008 (38) PTC 49 (Del) (DB), and Express Bottlers Services Pvt. Ltd. v. Pepsi Inc., 1989 (7) PTC 14, which held that selective enforcement does not amount to waiver or acquiescence.
Reasoning and Analysis of the Judge:Justice Manmohan held that there was no falsehood or suppression by the plaintiff. The plaintiff was the registered proprietor of the relevant trademarks at the time of filing, and transitional arrangements permitted use of certain marks even during the CCI-mandated phase-out period. It was further noted that the mark “CONCRETO” was not part of the excluded brands in the CCI order.
The Court rejected the defendants’ argument that the plaintiff lacked ownership rights, emphasizing that the plaintiff had continuously used the CONCRETO mark prominently and independently of the LAFARGE name.
On the question of similarity, the Court found that “CONCRETA” and “CONCRETO” were visually and phonetically similar. The substitution of a single letter—‘A’ for ‘O’—was insufficient to distinguish the marks. Since both parties operated in the cement industry and sold overlapping product categories, consumer confusion was likely.
It was also held that even if the defendants used their corporate logo, it would not neutralize the deceptive similarity arising from the impugned mark. Further, the Court dismissed the geographic and product-type differentiation argument, observing that the plaintiff’s trademark registration for “cement” was not territorially or varietally restricted.
Finally, the Court found that the defendants had acted in bad faith by choosing a mark closely resembling that of a competitor in the same industry. Arguments of equity and clean hands could not be invoked by a party that was itself infringing a registered mark.
Final Decision:The High Court confirmed the ex parte ad-interim injunction dated 11 April 2017, thereby restraining the defendants from using the mark “CONCRETA” or any other deceptively similar mark to “CONCRETO.” The defendants’ application under Order 39 Rule 4 CPC to vacate the injunction was dismissed. The Court directed that the findings were prima facie and would not prejudice the parties at trial.
Law Settled in This Case:This case reinforces that phonetic and visual similarities—especially in the same trade and product category—are sufficient to establish trademark infringement. Even minor alterations in spelling do not absolve infringers when the overall commercial impression remains similar. The decision also clarifies that descriptive terms, when registered and continuously used, may acquire distinctiveness warranting statutory protection. Moreover, prior use and registration confer exclusive rights under Section 28 of the Trade Marks Act, and equitable defences are not available to deliberate infringers. Importantly, the ruling upholds that transitional corporate arrangements and regulatory divestments do not automatically defeat trademark rights when proprietary control is preserved or transferred validly.
Case Title: Nuvoco Vistas Corporation Ltd. Vs. JK Lakshmi Cement Ltd. & Anr.
Date of Order: 15 April 2019
Case Number: CS(COMM) 256/2017
Name of Court: High Court of Delhi
Name of Judge: Hon’ble Mr. Justice Manmohan
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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