KHUSHI RAM BEHARI LAL VS WHITEFIELDS INTERNATIONAL

$~4

IN THE HIGH COURT OF DELHI AT NEW DELHI

Decided on:- 11^th April, 2018

+

CM (M) 283/2016

M/S KHUSHI RAM BEHARI LAL                         ..... Petitioner

Through:        Mr. S.K. Bansal, Mr. Vinay

Kumar Shukla & Mr. Ajay

Amitabh Saran, Advs.

versus

M/S WHITEFIELDS INTERNATIONAL PVT. LTD.

& ANR.                                                                                             ..... Respondents

Through:         Mr. Akhil Sibal, Sr. Adv. with

Mr. Akhil Schar, Mr. Nikhil

Chawla & Ms. Gayatri

Nandwani, Advs.

CORAM:

HON'BLE MR. JUSTICE R.K.GAUBA

ORDER (ORAL)

1.                 The petitioner is the plaintiff of the civil suit (TM 07/2013) which was filed sometime in 2013 initially against the first respondent for reliefs in the nature of permanent injunction for restraint order against passing off or infringement of the trademark and the copyright of the plaintiff besides other reliefs in the nature of delivery up, rendition of accounts etc., the cause of action claimed being with regard to the use of trademark/label “Taj Mahal” with device of Taj Mahal of copyright whereof the plaintiff claims to be the owner. As per the pleadings set out in the plaint, the plaintiff had come across trading by the respondent in the impugned goods under the trademark/

CM (M)No.283/2016                                                                                                          Page 1 of 5

device of Taj Mahal sometime in the week of April, 2013, its inquiries having revealed the respondent having started the impugned activity “recently”, such use being clandestine, surreptitious, sporadic restricted and minimal.

2.                 The petition at hand has been filed against the order dated 20.10.2015 whereby the application of the plaintiff seeking permission to amend the plaint invoking the provision contained in Order VI Rule

17  of the Code of Civil Procedure, 1908, was dismissed.

3.                 Some background facts need to be noted briefly at this stage. On 14.09.2006, the first respondent had filed a trademark application bearing application no. 1487304 for registration of the trademark

“India Crown” (label). The said application was advertised in the trademark journal no. 1402 on 16.10.2008. The petitioner submitted an opposition to the said application for registration of trademark on 29.01.2009. On 06.07.2010, the petitioner had issued and served on the first respondent notice to “cease and desist” against use of the impugned device Taj Mahal.

4.                 In the suit from which the present proceedings arise, instituted on 26.05.2013, the petitioner had prayed for ad interim injunction. The trial court by its orders dated 27.05.2013 and 03.07.2013, had

granted such ad interim injunction. Meanwhile, the second respondent had also come to be added as the second defendant in the suit. On an application moved on 03.08.2013 by the second respondent under Order XXXIX Rule 4 CPC, the matter was reconsidered and by order dated 10.09.2013 the ad interim injunction was vacated. Pertinent to note, the second defendant had pointed out

CM (M)No.283/2016                                                                                                          Page 2 of 5

to the trial Court at that stage, the suppression of certain facts by the petitioner/plaintiff of the suit, the same concerning the opposition to the application of the first respondent for registration of trademark, as submitted on 29.01.2009, and the notice to cease and desist issued and served on 06.07.2010.

5.                 It is immediately after the vacation of the stay by the afore-mentioned order that the petitioner moved the application for amendment under Order VI Rule 17 CPC. The application proposed certain additions to existing paras 34 and 35 of the plaint. Though the application would state that the petitioner wanted the existing paras to

be “substituted”, it has been confirmed at the hearing that the existing pleadings in the corresponding paras are intended to be retained, facts concerning the trademark application of the first respondent and the notice of opposition filed by the petitioner are proposed to be added to para 34 and similarly retaining the existing pleadings in para 35, the petitioners seek to bring on record the service of cease and desist notice dated 06.07.2010 explaining background facts concerning therewith.

6.                 The trial Judge has rejected the prayer for amendment on the

ground it would introduce “new facts” which are not “subsequent events”, the absence of such pleadings at the inception creating doubts about the intent of the plaintiff. In the view of the trial Court, the permission to amend would add a “new cause of action”, the effort to fill in lacunae after “substantial decision by the court” being impermissible.

CM (M)No.283/2016                                                                                                          Page 3 of 5

7.                 The learned senior counsel for the respondents has placed reliance on judgments titled as Surinder Kumar & Ors. vs. Swarn Singh 150 (2008) Delhi Law Times 294 (DB) and Revajeetu Builders & Developers vs. Narayanaswamy & Sons & Ors. 2009 (13) SCALE

241  to argue that the amendment has been rightly rejected by the trial court and this Court ought not interfere. The thrust of his arguments was that the amendment is an abuse of the process and that it does not pass the muster to hold the amendment being necessary for determination of the real dispute between the parties.

8.                 It does appear that the petitioner has been found guilty of suppression of material facts at the time of adjudication on the application under Order XXXIX Rule 4 CPC and resultantly has already been denied the benefit of ad interim injunction. But, it is inherent in the order whereby the application under Order XXXIX Rule 4 CPC was allowed that the facts concerning notice of opposition to the application for registration of the trademark and the notice to cease and desist are material to the controversy. In this view of the matter, it is not correct on the part of the respondents to now take an about turn and argue that the facts sought to be added are not necessary for determination of the real dispute between the parties. The relevancy of such facts has been demonstrated by the respondents themselves and they cannot be allowed to now speak otherwise.

9.                 It is not that the petitioner is withdrawing the existing pleadings so as to create the impression that the cause of action with reference to the impugned activity, noticed in the first week of April, 2013, is effaced. The existing pleadings are being retained and alongside the

CM (M)No.283/2016                                                                                                          Page 4 of 5

same, the facts of the earlier period, as brought to the notice of the trial court by the defendants, are being brought on record. The application for amendment does not make out a new case not the least to bring a new cause of action. The amendments would not alter the nature of the suit and there is no substantive decision taken by the trial court yet. The issues are yet to be framed and the case is yet to enter the stage of trial.

10.            The apprehension of the respondents that the petitioner, after this amendment, would be in a position to re-claim the ad interim

injunction by creating an impression that there has been no suppression of facts is wholly misplaced. The previous proceedings would always be there for the defendants to show to the trial court the chronology of events in proper light.

11.            In the opinion of this Court, the amendments are necessary for effectual and complete determination of the controversy raised by the suit and, therefore, the impugned order cannot be upheld.

12.            Thus, the petition is allowed. The impugned order is set aside. The permission to amend the plaint is granted. The amended plaint shall be taken on record by the trial Court. The respondents have the liberty to file a written statement in answer to the amended plaint for which the trial court will give appropriate opportunity.

R.K.GAUBA, J.

APRIL 11, 2018

nk

CM (M)No.283/2016                                                                                                          Page 5 of 5

THE EVOLUTION OF LAW ON SHAPE TRADE MARK IN INDIA

THE EVOLUTION OF LAW ON SHAPE TRADE MARK IN INDIA

AJAY AMITABH SUMAN, ADVOCATE, HIGH COURT OF DELHI

            It is a general saying that “A picture is worth a thousand words”. A Pictures casts great impression on the human mind. If a picture or shape is striking, then it lasts for a longer period of time in the memory of a man.

            The basic premise of law regarding the protection of trademark is evolved on the concept of association of particular name with a particular legal entity.  By passage of time, the Trade Mark Law evolved to include inter-alia the shape of a product as a trademark.

            Section 2(zb) of the Trade Marks Act 1999

Ø    2(zb):trade mark means a mark capable of being         represented graphically and which is capable of      distinguishing the goods or services of one person from        those of others and may include shape of goods, their            packaging and combination of colours;

            The Trade Marks Act further provides the conditions which is anti thesis of the shape of product to be qualified as a trademark. Section 9 (3) of the Trade Marks Act 1999 provides the absolute ground of refusal for a shape trade mark. The same provides as here under:

Ø    9(3):A mark shall not be registered as a trade mark if it        consists exclusively of:

Ø    the shape of goods which results from the nature of the        goods themselves; or

Ø    the shape of goods which is necessary to obtain a        technical result; or

Ø    the shape which gives substantial value to the goods.

            From combined reading of Section 2(zb) and Section 9(3) of the Trade Marks Act 1999, the following picture emerges regarding the shape of a product to function as a trademark. Following conditions is sine qua non for the shape Trademark:

Ø    The shape of the product should be capable of being represented    graphically.

Ø    It should capable of distinguishing the goods or services of one person from those of other.

Ø    The shape results from the nature of the goods themselves.

Ø    The Shape should not be functional in nature AND

Ø    It should not give substantial value to the goods.

            Before proceeding further it is relevant to point out here that Design Act also dealt with the issue of Shape of a product. As per the definition of Design Act 2000, the same is inclusive of Shape of a Product Also. Section 2(d) of the Designs Act, 2000 defines a design as under:

            "design" means only the features of shape, configuration,     pattern, ornament or composition of lines or colours applied      to        any article whether in two dimensional or three         dimensional or in both forms, by any industrial process or       means, whether manual, mechanical or Chemical, separate         or        combined, which in the finished article appeal to and are      judged solely by the eye; but does not include any mode or   principle of construction or anything which is in substance a             mere mechanical device, and does not include any trade       mark as defined in Clause (v) of Sub-section (1) of Section 2       of         the Trade and    Merchandise Marks Act,    1958 (43 of 1958)             [Now Trade Marks Act 1999]        or        property   mark    as            defined in  Section  479  of  the  Indian    Penal  Code (45 of    1860) or any artistic work as defined in             Clause (c)      of Section             2 of the Copyright Act, 1957 (14 of 1957)."

            From perusal of the provision of the Design Act 2000, it is that  "design" means those features of shape, configuration, pattern, ornament or composition of lines or colours applied to an article which appeal to and are adjudged solely by the eye but it does not include "trade mark" as ' defined in the Trade Marks Act.  Trade mark and design are entirely different connotations. The trade mark  is put on a product to link it to its manufacturer/producer, who may be the proprietor of the registered trade mark or who might have acquired reputation. On the other hand, the design is merely a feature of shape, pattern, configuration, ornament or composition of lines or colours applied to an article to make it attractive and appealing to the eye of the consumer.

       The other difference is that a Trade mark may also be attractive and appealing to the eye but it should be directly relatable to the owner of the goods whereas the design may be merely appealing or attractive to the eye and need not give any indication to the consumer  about the identity of the manufacturer or producer of the article. The basic difference between a trade mark and design is that trade mark signals to the mind the source or identity of the producers/manufacturer of the article whereas design appeals to the eye and attracts the consumer/purchaser. Thus those shape which are source indicator of the owner, are qualified as trademark, though it may or may not have the aesthetic quality, while those shapes which are solely guided by the aesthetic feature, irrespective of this fact whether is it source indicator of the owner or not, are qualified as Design.

            For A shape to be a Design, it is not necessary that it is distinctive to the owner , while the for a Shape to serve as the shape trademark, it must show the acquired distinctiveness .Normally the shape of the good is not considered as a strong trademark. Rather it is considered as a weak trademark. However on the basis of acquired distinctiveness, the shape of a product can serve the function of a trade mark. But as there been various restriction of the shape of a product to serve as a trademark, normally it is not considered as easy to establish proprietary rights in the shape as a trademark.

            In case it is found that the shape of a product results from the nature of the goods or is functional in nature or it gives give substantial value to the goods, then its registrations as a shape trademark can be declined even if it has acquired distinctiveness. Reason behind imposing the tough condition on the shape to serve as a trademark is that no one should be allowed to create the un warranted monopoly on the shape of a product to throttle out the healthy competitors.

            The unique feature of the shape trade mark is that it is intrinsic part of the products itself. Normally the conventional trade marks are super imposed on the product. The conventional trade marks like Name, Label, Logo , packaging material, the unique wrappers etc appearing on the products are not inseparable part of the product. These are being affixed on the product. While the shape trade mark of a product is inseparable part of the part of the product. The shape of the goods is also inclusive of pattern, configuration etc. If the product itself is a shape of the product and has aesthetic attributes, then it serves the function of a design and is not qualified as a trademark.

            Now by passage of time the Indian Courts have also started to recognize the shape of a good as a source indicator. The Mumbai High Court, in recent Judgment dealt with the issue of shape as a trademark. The Hon’ble Mumbai High Court, in VODKA CASE [1], recognized the shape of the bottle of the plaintiff as a trademark. The plaintiff namely  Gorbatschow Wodka filed the Suit on the basis that the shape of its bottles of Vodka was distinctive and formed an intrinsic part of its goodwill and reputation. The shape of bottle which the defendant had adopted under the trademark SALUTE was alleged to be deceptively similar to that of the plaintiff.

            The Suit was filed in which ex-parte injunction was granted. After appearing in the matter, the defendant alleged that its products were sold under the trademark SALUTE. The products of the defendant were sold in different colour. The product of the defendant were to be consumed by the educated consumers. Hence there can not be any possibility of any confusion.

            The Hon’ble Mumbai High, while granting injunction against John Distilleries Limited, the defendant therein, observed as under:

            “Under the Trade Marks Act, 1999, the shape of goods is now statutorily recognized as being constituent element of a trade mark. Section 2(zb) of the Trade Marks Act, 1999 defines the expression 'trade mark' to mean "a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others" and to include the "shape of goods, their packaging and combination of colours". Parliament has, therefore, statutorily recognized that the shape in which goods are marketed, their packaging and combination of colours for part of what is described as the trade dress. A manufacturer who markets a product may assert the distinctive nature of the goods sold in terms of the unique shape through which the goods are offered for sale."

            "The shape of the bottle which the plaintiff has adopted has no functional relationship with the nature of the product or the quality required of the container in which Vodka has to be sold. The shape, to use the language of a leading authority on the subject, is capricious. It is capricious in the sense that it is novel and originated in the ingenuity and imagination of the plaintiff. Prima facie, a comparison of the shape of the bottle which has been adopted by the defendant with the bottle of the plaintiff would show a striking similarity.”

            This is not that prior to enactment of Trade Marks Act 1999, the Indian Courts has not recognized the shape as a trade mark.  In the year 1990 itself, in M.R.F. case [2], the Hon’ble High Court of Delhi recognized the pattern of a tyre as trademark. In MRF case, the plaintiff filed the suit against the defendant, seeking the relief of permanent injunction against user of selling auto-rickshaw tyres having prominent features of the tread pattern similar to that of the tread pattern of the auto rickshaw tyres of the plaintiff. The Court observed that the tread pattern of the plaintiff’s tyres was essential and integral part of the tyre. The Court was of the view that unlike a wrapper, a label or a container, the tread was not something external to the tyre but it was an indivisible part. The Court also observed that similarity of the tread pattern may also raise a presumption of common origin or close business association between the plaintiff and the defendant. After observing the possibility of similarity of tread pattern of the parties, the Hon’ble High Court of Delhi, granted injunction in favour of the plaintiff.

            In ZIPPO[3] case, the Hon’ble High Court of Delhi restrained the defendants from using the identical shape. This case was related to shape of lighters. The plaintiff filed the Suit claiming itself to be world leader in manufacture and trade of lighters, which it sells under its invented trademark Zippo. It was alleged that important feature of the plaintiff’s lighter was the chimney or windscreen enclosing the wick with round air holes punched into its sides in horizontal rows of three-two-three formation. It was claimed that the shape of the lighter as well as well as the windscreen chimney are unique and have acquired a secondary meaning to denote the plaintiff's cigarette lighters.

            The plaintiff filed the suit against the defendants as the defendants were selling counterfeit Zippo lighters from its various outlets in Delhi and those lighters not only bore the word mark Zippo, but also constituted infringement of plaintiff's shape mark and were in fact verbatim imitation of the product of the plaintiff. The Hon’ble High Court of Delhi, while grating the relief of injunction in favour of the plaintiff and against the defendants observed that on seeing the lighter of the defendant bearing the trademark ZIPPO and/or on having a 3-dimensional shape identical to that of the product of the plaintiff-company, the customer may form a bona fide impression that either this is the genuine product of the plaintiff-company or it has been manufactured in collaboration and/or under licence from it. Accordingly the defendants were injuncted from using the 3 dimensional Shape Trade Mark, similar to that of the plaintiff.

            In DGT Case[4], the Hon’ble High Court of Delhi was having occasion to deal with the plea of the defendant that the design of a product can not be used as shape trade mark. The defendant raised the argument that relief for passing off can not be based in relation to design as shape trade mark. The Hon’ble High Court of Delhi after relying upon para 34 of  Mohan Lal case[5] , "The plaintiff would be entitled to institute an action of passing off in respect of a design used by him as a trade mark provided the action contains the necessary ingredients to maintain such a proceeding” also rejected the plea of the defendant that no registration of a trademark in relation to the shape of the products could be granted. The Hon’ble High Court of Delhi further held ” It will always be open to the Plaintiff, as long as it satisfies the Court about the ingredients of a suit for passing off, to maintain such action.” Thus the Hon’ble High Court of Delhi. After relying upon the Mohan Lal case, laid down that Suit in Design of a product can be maintainable as passing off for shape trademark , provided such passing off action contains the necessary ingredients to maintain such a proceeding.

            In Lilly ICOS Case[6] plaintiff filed the suit alleging that the Defendants has adopted the trade mark MCALIS which is deceptively similar to the plaintiff's well known trade mark CIALIS. Also, the CIALIS Tablet Trade Dress including distinctive yellow almond shaped tablet with inscription C20 and distinctive CIALIS Swirl have been allegedly copied by the Defendants. The plaintiff claimed that the same developed a unique packaging with unusual artwork, referred to as the "Cialis Swirl". The tablet sold under trademark CIALIS was given a unique and unusual shape of an almond and colour of light yellow. In this the defendant was restrained as defendant could give no justification whatsoever for adoption and use the deceptively similar trade mark with the swril device as well as the trade dress of the tablet of the plaintiff, which was also inclusive of plaintiff’s unique shape of the product.

            Thus it can safely be said that the Indian Courts are not lagging behind, in so far the recognition of rights in Shape Trade Marks is concerned.

---

[1] Gorbatschow Wodka Kg v. John Distilleries Limited, 2011(47)PTC100(Bom)

[2] M.R.F.Limited v. Metro Tyres Limited, 1990 PTC 101

[3] Zippo Manufacturing Company vs. Anil Moolchandani and Ors.  2011(48)PTC390(Del): 185(2011)DLT51: 2011IXAD(Delhi)661

[4] 2013(55)PTC271(Del) DGT Holding B. V & Anr Vs Ravi Scientific Industries & Anr.

[5] MANU/DE/1254/2013 : MIPR 2013 (2) 156 Mohan Lal v. Sona Paint & Hardwares

[6] Lilly ICOS LLC and Anr. Vs Maiden Pharmaceuticals Limited 2009(39)PTC666(Del)