Two of the paint industry’s leading manufacturers are currently engaged in a court battle over the use of the phrase "3-in-1". Nippon Paint ("Nippon") is alleging that its rival, ICI Paints ("ICI"), has been passing off products that are confusingly similar to its "Nippon 3-in-1" interior wall paint.

Nippon claims that it has been building up goodwill in its 3-in-1 product "Nippon 3-in-1" since 1995 and its total annual sales have since substantially increased. Nippon then states that ICI has been riding on that goodwill by selling "ICI Dulux Supreme 3 in 1" and "Dulux Supreme 3 in 1" paint, which it claims are similar to "Nippon 3-in-1". Nippon has also alleged that ICI had intentionally misdescribed its paint as "3-in-1" when the paint had more than 3 properties.

Apart from seeking an injunction to stop ICI from passing off any paint product connected with its 3-in-1 paint, Nippon has also claimed for an inquiry into damages as well as delivery up of the paint in question.

ICI is defending its position by saying that the phrase "3-in-1" can only be used in a descriptive or generic sense, and not in a trade mark sense, as many manufacturers have used it to promote various products. As such, ICI has argued that it is for Nippon to show that "3-in-1" has acquired a secondary meaning in relation to paint products to indicate the maker of the paint product. In any event, ICI is asserting that the names "ICI Dulux Supreme 3 in 1" or "Dulux Supreme 3 in 1" do not resemble "Nippon 3-in-1".

The contents of this publication are intended for informational purposes only and should not be construed as legal advice or legal opinion, which can be rendered properly only when related to specific facts.