Patna High Court Temporarily Restrains Local Company From Using 'Johnson' Mark For Paint Products

The Patna High Court has recently restrained Johnson Paints Private Limited from using the “JOHNSON” brand name, granting temporary relief to Johnson Paints Co.

Setting aside a Commercial Court order that had refused an injunction, a Division Bench of Justice Rajeev Ranjan Prasad and Justice Praveen Kumar found that the lower court erred in concluding that no prima facie case of prior use or goodwill was made out.

Examining the respondent's claim of rights based on a chain of assignment deeds allegedly dating back to 1990, the High Court found serious defects in those documents.

It observed, "If these four assignment deeds are looked into, without much discussion, prima facie, this Court would have no hesitation in recording that the assignment deeds, which have been seriously questioned by the plaintiff, would not help the defendant-respondent in making a submission that they had derived their rights to user by virtue of these deed of assignments. These assignments are not supported by any material at all"

The court further held that these documents lacked credibility and could not establish prior user in favour of the defendant.

The dispute arose from a suit filed by Johnson Paints Co, a partnership firm founded by the late Krishna Prasad, which claimed continuous use of the “JOHNSON” mark since April 1987 for products such as red oxide, primer, and cement paints. The firm asserted that decades of use had built substantial goodwill in the mark.

The commercial Court had rejected the plea for injunction, pointing to inconsistencies in early tax registration records and an “intriguing” gap in sales figures between 1987 and 1999, concluding that the plaintiff failed to establish prior use.

However, the High Court found that such reliance could not be sustained in view of subsequent clarification by the tax authorities. It noted that a Public Information Officer from the State Tax department had admitted that incorrect information was earlier furnished under the RTI Act and clarified that the registrations in fact dated back to 1986–1987.

Looking closely at the record, the Bench noted that the plaintiff had placed on record invoices, tax assessment orders and other contemporaneous material dating back to 1987–88, which at this stage indicated continuous use of the mark.

The respondent, Johnson Paints Private Limited, incorporated in 2009, sought to trace its claim to earlier use through a series of assignment deeds. But the Court found several gaps in these documents. They lacked basic features such as company seals and authorised signatures, and there was nothing to show that the alleged assignors had actually carried on any business under the mark.

Against this, the Court said the law clearly protects a prior user. Referring to Section 34 of the Trade Marks Act, it held that such rights can prevail even over a registered proprietor. On the material before it, the plaintiff's use of the mark went back decades before the respondent's claim.

Observing that use of an identical mark for similar products was likely to cause confusion and dilute the plaintiff's goodwill, the court held that refusal of an injunction would result in irreparable harm.

Accordingly, the High Court restrained Johnson Paints Private Limited and its agents from manufacturing, selling, or advertising products under the “JOHNSON” mark or any deceptively similar variant.