Nippon Paint ("Nippon") filed an action claiming the common law tort of passing-off against ICI Paints ("ICI") for the sale of its "ICI Dulux Supreme 3 in 1", "Dulux Supreme 3 in 1" and "Supreme 3 in 1 from ICI Dulux" which Nippon alleged were confusingly similar to its "Nippon Paint 3 in 1" paint label.
ICI defended its use of the phrase "3 in 1" as being used in a descriptive or generic sense and not in a trade mark sense and that many other manufacturers had used it to promote their products. Further the overall get-up of the ICI products were different from the Nippon product thus clearly distinguishing the 2 types of products.
The High Court found on the evidence that the phrase "3 in 1" was a generic term and was "an indicia or reference to the inherent qualities" of Nippon’s paint. Nippon’s witness when cross-examined had in fact replied that the phrase "3 in 1" described the 3 main attributes of Nippon’s paint.
The Court further found that no secondary meaning had been acquired in the phrase "3 in 1" as Nippon had never used the phrase in isolation but consistently as "Nippon Paint 3 in 1".
The Court also found that there was no misrepresentation by ICI and that there was no confusion arising between "Nippon Paint 3 in 1" and "ICI Dulux Supreme 3 in 1" as the get-up between the 2 products was sufficiently different.
As Nippon failed in establishing goodwill in the phrase "3 in 1" and as the Court failed to find any misrepresentation and public confusion no issue of damages arose and Nippon’s claim was dismissed in its entirety.
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