GARWARE POLYESTER LIMITED Vs. 3M COMPANY

JUDGEMENT

(1.) This is a suit in trade mark infringement and passing off in relation to - -I shall use as neutral a description as I am able - - window films for sun protection. Garware ("Garware") claims that the Defendants' ("3M Co" and "3M India", respectively; collectively, "3M") use of the expression 'SUNCONTROL' or

(2.) Garware manufactures and sells a range of polyester and plastic films, including reflective, non -reflective, safety, privacy, specialty and decorative films. It manufactures dyed polyester films using a process for which it has a patent in 15 countries. Its first plant was established in Aurangabad in 1976. Garware has won many awards and received recognition for excellence in innovation. In 1982, Garware adopted the marks SUN CONTROL and SUNCONTROL in relation to polyester films, plastic films, packing and packaging, and insulation material. These were registered in 1983 Plaint, Exhibit "A1", p. 40. and 1999 Plaint, Exhibit "A4", p. 46. respectively, with a disclaimer that Garware had no exclusivity over the word 'control'. It claims extensive and continuous usage since. As regards Garware's other marks, SUN CONTROL Classic was registered in 1998 in Classes 16 and 17,3 where there was a disclaimer over the word 'classic', and GARWARE SUN CONTROL was registered in 2002, in Class 17.Plaint, Exhibit "A5", p. 48. Garware's mark has a device of a sun before the word 'SUNCONTROL'. Garware holds 70% of the market share in India, and 80% of its products are exported. It has a significant international presence, with 32 registrations in overseas jurisdictions across Asia, Europe, South America, North America and Africa, as also several countries under the Madrid Protocol.Plaint, Exhibits "B1" to "B32", pp. 50­92. As a result of its high sales figuresPlaint, Exhibits "E1" to "E109", pp. 95­20 Plaint, Exhibit "A2", p. 42; Plaint, Exhibit "A3", p. 44.. and considerable promotional expenses,Plaint, Exhibit "D", p. 94. Garware claims its goods with these marks have acquired substantial repute and goodwill.

(3.) 3M India is an Indian subsidiary of 3M Co. The latter needs no introduction. It is an old, established and reputed US -based company, known the world over for its range of products. These range from industrial products to those meant for everyday home and office use. The legal fraternity is itself no stranger to at least one such range of office stationery, the fabled Post -It sticky notes.