RSPL Health Private Limited Vs Deep Industry

Case Title: RSPL Health Private Limited Vs Deep Industry

Date of Order: 10 November 2014

Case No.: CS (OS) No.1660/2014

Court: Delhi High Court

Judge: Hon'ble Mr. Justice Manmohan Singh

Introduction

This case involves a dispute between RSPL Health Private Limited (plaintiff) and Deep Industry (defendant) concernin trademark infringement, passing off, and copyright infringement. The plaintiff sought a permanent injunction to restrain the defendant from using Trade Dress and packaging and branding allegedly similar to its well-known "XPERT" brand.

Factual Background

RSPL Health Private Limited is engaged in manufacturing and selling washing soaps, detergent cakes, and cleaning products under the trademark "XPERT," which has been in use since 1993. The plaintiff claimed ownership of copyright over the artistic elements of the "XPERT" label, including its unique color scheme, lettering style, and overall trade dress. The plaintiff also asserted that the punch line "Pehle Istemal Karen Phir Vishwas Karen" had acquired distinctiveness.

The defendant, Deep Industry, was found selling dishwashing bars and similar cleaning products under the trademark "POSH." The plaintiff alleged that the defendant's packaging was deceptively similar to "XPERT" in terms of layout, design, and color combination. The suit was filed when the plaintiff discovered in March 2014 that the defendant was using an allegedly infringing label.

Procedural Background

The plaintiff filed a suit seeking a permanent injunction against the defendant, along with an application under Order 39 Rule 1 and 2 CPC for interim relief. On 29 May 2014, the court granted an ex-parte interim injunction restraining the defendant from using the impugned packaging. The defendant responded by filing an application under Order 39 Rule 4 CPC seeking vacation of the interim order.

Issues Involved

Whether the defendant's packaging amounted to trademark infringement and passing off. Whether the plaintiff had an exclusive right over the trade dress and artistic elements of the "XPERT" label. Whether the suit was maintainable in terms of jurisdiction. Whether there was any delay or laches in filing the suit.

Submission of Parties

The plaintiff contended that the defendant deliberately copied the "XPERT" label's essential features, creating a likelihood of confusion among consumers. It argued that the defendant's label was deceptively similar in terms of layout, color combination, and artistic arrangement, which misled customers into believing the products originated from the plaintiff.

The defendant countered that "POSH" was a registered trademark of a third party, Darshan Detergents Pvt. Ltd., and that it was merely a licensee. It argued that color pink was common in the detergent industry, citing brands like Surf Excel and Tide. The defendant also challenged the jurisdiction of the Delhi High Court, claiming that it operated only in Maharashtra. Additionally, the defendant argued that the plaintiff delayed in bringing the suit since "POSH" was registered in 2005.

Discussion on Judgments Cited

The court referred to various precedents to establish that similarity in trade dress, even without phonetic similarity, can cause consumer confusion.

Anglo-Dutch Paint, Colour and Varnish Works Pvt. Ltd. v. India Trading House, AIR 1977 Delhi 41, held that deceptive similarity in trade dress could cause confusion even when brand names were different.

Burroughs Wellcome (India) Ltd. v. Uni-Sole Pvt. Ltd., (1999) 19 PTC 188 (Del), established that copyright exists in artistic work irrespective of registration.

Parle Products (P) Ltd. v. J.P. and Co., Mysore, AIR 1972 SC 1359, emphasized that trade dress and overall impression matter more than minute differences.

Vicco Laboratories Bombay v. Hindustan Rimmer, AIR 1979 Delhi 114, granted an injunction based on deceptive similarity in packaging despite different brand names.

Nova Ball Bearing Industries v. Mico Ball Bearing, (1981) 19 DLT 20, held that similarity in packaging can mislead consumers despite differences in brand names.

Hoffmann-La Roche and Co. A.G. v. D.D.S.A. Pharmaceuticals Limited, 1972 RPC 1, ruled that marketing identical capsules despite different brand names amounted to passing off.

Smith Kline and French Laboratories Limited v. Trade Mark Applications, 1974 RPC 91, stated that color schemes in branding can serve as trademarks if they indicate origin.

Tavener Rutledge Ld. v. Specters Ld., 1959 RPC 83, held that even slight similarities in packaging could cause confusion among consumers.

Reasoning and Analysis

The court noted that the defendant's packaging was strikingly similar to the plaintiff’s label except for the brand name. It held that the likelihood of confusion was high, given that both products catered to the same market segment and were sold through the same distribution channels.

On the issue of delay, the court rejected the defendant’s argument, observing that the plaintiff acted promptly upon discovering the alleged infringement. The defendant’s reliance on prior registration was dismissed as it had only recently switched to the pink color scheme, which was central to the plaintiff’s claim.

Regarding jurisdiction, the court upheld its authority to hear the case under Section 62(2) of the Copyright Act, 1957, as the plaintiff had a presence in Delhi.

Final Decision

The court confirmed the interim injunction granted earlier, restraining the defendant from using the impugned packaging. The defendant’s application for vacation of the order was dismissed. The matter was directed to proceed further for trial.

Key Legal Principles Settled

Trade dress similarity can constitute trademark infringement even if brand names differ. Copyright in artistic work exists even without registration. Delay in filing suit does not disentitle a plaintiff if the infringement is recent. Jurisdiction can be invoked under Section 62(2) of the Copyright Act if the plaintiff has a presence in the forum state. The test for deceptive similarity considers the overall impression rather than minute differences.

Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi