IN THE HIGH COURT OF DELHI
Decided On: 10.11.2014
Appellants: RSPL
Health Private Limited
Vs.
Respondent: Deep Industry
Judges/Coram:
Counsels:
For Appellant/Petitioner/Plaintiff: S.K. Bansal , Adv., Ajay
Amitabh Suman , Santosh Kumar and Amit
Chanchal Jha , Advs.
For Respondents/Defendant: Abdhesh Chaudhary
and Nilendu Vatsyayan , Advs.
JUDGMENT
1. The present suit for permanent
injunction restraining infringement of copyright, passing off, rendition of
accounts, delivery up etc. has been filed by the plaintiff against the
defendant. Alongwith the suit, plaintiff also filed an application under Order
39 Rule 1 and 2 read with Section 151 CPC being I.A. 10669/2014.
2. Summons were issued in the suit and
notice in the application to the defendant on 29th May, 2014. After hearing,
detailed exparte order was passed against the defendants restraining them from
manufacturing, marketing, supplying, using, selling, soliciting, exporting,
displaying, advertising or by any other mode or manner dealing with the
impugned artistic work/packaging/ label/trade dress/colour combination POSH
Label or any other artistic work/packaging/label identical with or deceptively
similar to the plaintiff's said label/packaging/colour combination/artistic
work XPERT Label in relation to the impugned goods, viz., all kinds of
dish-wash bars and liquids, soaps and cleaning material and other allied and
cognate goods or from doing any other acts or deeds amounting to infringement
of plaintiff's trademark XPERT and/or XPERT Label; passing off or otherwise
violation by way of passing off the plaintiff's trademark, label, trade dress
XPERT and/or XPERT LABEL and infringement of plaintiff's copyrights in the said
XPERT artistic work/label or trade dress.
3. Upon service of interim order,
defendant filed a written statement and an application bearing I.A. No
12699/2014 under Order 39 Rule 4 CPC for vacation of the interim order passed
on 29th May, 2014. By this order, I propose to decide two pending applications
i.e. I.A. 10669/2014 and I.A. No 12699/2014.
4. Brief facts of the case as stated in
the plaint are that the plaintiff, engaged in the business of manufacturing and
selling washing soaps, washing powder, detergent cakes, and toiletries,
bleaching preparations and substances for laundry use, cleaning, polishing,
perfumery, hair lotions and other related goods, under the trademark XPERT. The
said trademark is stated to have been conceived, coined and adopted by the
predecessors of the plaintiff in the year 1993.
5. The plaintiff claims to be the owner
and proprietor of the copyright of the XPERT and/or XPERT LABEL under the
provisions of Copyright Act, 1957. The labels bearing the mark XPERT along with
other features are stated to have a unique get up, make up, color scheme,
lettering style, arrangement etc. The plaintiff also claims to be the owner of
the punch lines 'Pehle Istemal Karen Phir Vishwas Karen' in relation to its
goods.
6. Plaintiff and its predecessors have
a number of trademark registrations in India for the trademark XPERT. While
some of the applications for registration are pending. The details of the said
applications are mentioned in a list in Para 8 of the plaint. The plaintiff
holds copyright in the XPERT label as well as the punch lines.
7. It is averred by the plaintiff that
the plaintiff's goods bearing the said trademark/label are of excellent quality
and high standard and are highly demanded in the markets. The said goods are
distributed and sold across the country and have resulted in handsome sales and
value trade.
8. Further it is averred that the
plaintiff has been advertising and promoting its said trademark/label and said
punch lines through different means and modes by way of extensive
advertisements in national newspapers, magazines, hoardings, and various
prominent national TV channels etc. The plaintiff has spent substantial amount
of money thereof.
9. The plaintiff claims that the
plaintiff's trademark/label and said punch lines have become distinctive of the
plaintiff. The public and trade associate, identify and distinguish the said
trademark/label and the said punch lines with the plaintiff and plaintiff's
goods and business and the same have become well-known within the meaning of
Section 2(1)(zg) and Section 11 of the Trade Marks Act, 1999 (hereinafter
referred to as "the Act") .
10. The plaintiff's goods and business
under the said trademark are global in character and has acquired reputation
and goodwill due to its excellent quality and high standards. The plaintiff's
goods are commercially available in many countries of the world.
11. The plaintiff has been vigilant in
protecting its right in the said trademark/label by taking appropriate legal
actions against third parties and has obtained orders in its favour.
12. The defendant is stated to be also
engaged in the business of manufacturing and marketing all kinds of soaps,
dish-wash bars and liquids and other cleaning materials under the
trademark/label POSH in relation to the impugned goods and business.
13. It is the case of the plaintiff that
in or about fourth week of March, 2014, the plaintiff came across the goods of
the defendant under the impugned packaging/label. Plaintiff noticed that the
defendant has substantially copied the XPERT label of the plaintiff with all
its features and artistic work, layout design, lettering style, get up, make
up, colour combination and idea thereof. The overall look of the two labels is
same. The two labels are deceptively similar in each and every aspect including
visually, structurally, in its basic idea and essential features.
14. It is averred that the defendant
aims to mislead consumers and members of the trade into believing that the
products bearing impugned trademark POSH emanate from or are connected with the
plaintiff and thereby causing confusion or deception in the course of trade as
to the source or origin of the products. The sub- standard quality of the
defendant's products is also bound to cause irreparable harm to the goodwill
and reputation to the plaintiff.
15. The goods of the defendant with the
impugned label and the business of the defendant are identical to that of the
plaintiff. The goods of the defendant as well of the plaintiff are sold at the
same shops. The class of purchasers of the goods of both the plaintiff and the
defendant are the same. The confusion and deception is bound to happen in such
a case.
16. It is averred that the defendant has
adopted and is using the impugned packaging/label fraudulently and with
ulterior motives to take advantage and to trade upon the reputation of the
plaintiff thereby passing off its goods and business as that of the plaintiff.
17. Plaintiff is stated to have been
suffering huge losses both in business and in reputation due to the defendant
and has so filed the present suit against the defendant.
18. On the other hand, the defendant has
taken a stand that the present suit is not maintainable for the want of
jurisdiction. The defendant has commercial presence and supplies its dish-wash
bars under the mark POSH only in Maharashtra. Accordingly this Court has no
jurisdiction to try the present suit. Further the suit has not been properly
valued for the purpose of jurisdiction, and also does not disclose any cause of
action for filing it thereof.
19. The suit is bad for non-joinder of
parties as the trademark POSH is registered trademark of M/s. Darshan
Detergents Pvt. Ltd. and the defendant is a licensee thereof.
20. The defendant averred that the
plaintiff cannot claim any monopolistic proprietary right on the colour pink used
as a trade practice and as a get-up in several similarly placed goods like Surf
Excel detergent powder, member's mark air freshener, Vanish Detergent powder,
TIDE detergent powder, HENKO detergent powder & bar etc.
21. It is contended that the suit does
not make out a case of passing off as the plaintiff is claiming proprietary
right in the mark X- PERT and not POSH which is the registered trademark used
by the defendant. The two trademarks are phonetically and structurally
different from each other and there cannot be any deception or confusion as
alleged by the plaintiff. The colour combination of pink due to usage has
become common to the detergent trade and cannot be owned by any particular
business concern.
22. The present suit has been filed by
the plaintiff for avoiding healthy competition offered by the defendant who by
indigenous efforts are making available standard quality of goods at affordable
price. The colour pink is feminine. In color psychology, pink is a sign of
hope. It is a positive color inspiring warm and comforting feelings. It is
associated with the detergent industry and its use is common to trade.
23. Defendant's products sold under the
trademark POSH enjoy reputation and goodwill all over the state of Maharashtra
and there cannot be any deception.
24. The get-up and look of packaging of
the defendant's products under POSH is different from plaintiff's packaging of
XPERT. The name and style of representing the trade names are completely
different, with the text placing and font and colour of the same not being
similar. POSH is a value for money product and has a different image in the
minds of purchasers and has its famous punch line 'ab aap bhi ban sakti hai
Miss Chamko'. POSH has a clear and distinct brand name in the market, whereas
XPERT has a different market strategy and the plaintiff's punch line is 'Pehle
Istemal Karen Phir Vishwas Karen'. The artistic work and colour combination of
trade dress is very different in the sense the POSH label shows a traditionally
dressed Indian women instead of celebrities on the label. Any commonly seen
dish-wash bar label in the market will show a lady and some utensils. There is
no similarity in the literary work on the back side as all the statutory
requirements of Weights & Measures in POSH label are printed only in Black
Color whereas in label of the plaintiff's XPERT, they are written in Red and
Blue color and a different font and font size.
25. It is the trend of the
dish-wash/detergent industry that the manufacturers prefer to use pink colour
in their wrapping. Besides other brands, NIRMA is an instance of the brand that
was using the colour yellow for almost 30 years but now has switched to pink
colour since last two years seeing the shift towards new colour trends in the
market.
26. The defendant has promoted the trade
POSH by advertising it through different modes like printing the mark on
T-shirts, notepads, bags etc. and has spent substantial amount on such
marketing and has not used the goodwill of the plaintiff.
27. It is averred that the present suit
is merely an outcome of a business rivalry whereby the plaintiff is trying to
injure the reputation and cause loss to the business of the defendant. The
trademark POSH was registered in class 3 in the year 2005 without any
objections. Yet the plaintiff waited all this while to evaluate the business of
the defendant and then came forward to file the present suit in the year 2014.
There is delay in filing the present case which disentitles the plaintiff from
getting the discretionary relief of injunction.
28. Before I proceed to decide the
application, it is imperative to examine the representations of the
labels/packaging of products of both the parties simultaneously. The
representations are as under:
29. On perusal of the two
labels/packaging, it appears to the Court that the layout design, colour
scheme, get up, arrangement of artistic features, lettering style in the two
labels/packaging are almost similar except the brand names of the parties which
are different.
30. The following cases are relevant in
this regard:
(i) In Anglo-Dutch Paint,
Colour and Varnish Works Pvt. Ltd v. India Trading House, MANU/DE/0158/1976 :
AIR 1977 Delhi 41, the plaintiff claimed the relief on the basis of get up,
layout and arrangement of violet grey and white colour combination of the
plaintiffs' container. It was alleged that the defendant has very recently
adopted identical container in respect of white paints as mentioned in Para 3
and 4 of the judgment. In Para 9 of the said judgment, it is observed as under:
"Having noticed the
principles which have to be borne in mind, the application thereof is not
difficult in the present case. It is true that there is a phonetic difference
between the numerals "1001" and "9001" but taking into account
the entire get up the combination of colours, it will be noted that the
essential features of plaintiffs' containers have been absolutely copied. The
entire scheme of the containers is also the same. There is a common large
circle with the same colour scheme and with the same background. There is the
same description of Superior White on top and Zinc paint on the bottom in the
circle. Again, the White circle with grey lettering is identically
super-imposed on violet background. The only difference is that instead of
white parallelogram shapes on top and base borders there are white triangles
and on the white parallelograms instead of numeral "1001" in grey
lettering, the numeral on the defendant's container is "9001" but the
overall effect is just the same. The commodity is such that it is likely to be
purchased by customers from all strata of society including the petty
"karkhandars. and contractors."
(ii) In the case of
Burroughs Wellcome (India) Ltd v. Uni-Sole Pvt. Ltd. MANU/MH/0277/1998 : (1999)
19 PTC 188 , it was observed as under:
"Copyright is a form
of intellectual property. With advancement in technology it is very easy to
copy. The basic test in actions based on the infringement of the copyright is
that if a thing fetches a price, it can always be copied and therefore, it
needs adequate protection. It is well settled that although under the Copyright
Act, 1957, there is a provision of registration, under Section 44 of the Act.
It is not in doubt that the said procedure is an enabling provision and registration
is not compulsory for the purpose of enforcing copyright. Section 44 of the Act
provides for registration of work in which copyright exists but in order to
claim copyright registration is not necessary. This is because registration is
only to raise a presumption that the person shown in the certificate of
registration is the author. This presumption is not conclusive, but no further
proof is necessary unless there is a proof rebutting the contents of the said
certificate. Under Section 48 of the Registration Act, therefore, the act of
registration is ex-facie prima facie evidence of the particulars incorporated
in the certificate. There is no provision under the Act which deprives the
author of the rights on account of non registration of the copyright. There is
nothing in the Act to suggest that the registration is condition precedent to
the subsistent of the copyright or acquisition of copyrights or ownership
thereof or for relief of infringement of copyright. The sine-qua non of
existence of a copyright is expenditure of skill, labour and capital on any
work expanded by a person/author and unless the original work is produced in
court to prima facie show that the work has originated from author, no relief
can be granted. In other words, copyright exists even without it being
registered for the purpose of its enforcement. The nature of copyright is also
meant to be borne in mind. It subsists in any material form in which ideas are
translated. Copyright is a incorporeal right. It does not lie in any idea, but
it lies in the expression in which the idea is expressed. The work of an author
therefore, becomes the subject matter of the copyright. In essence the
copyright is a negative right of preventing copying of physical material in the
field of art, literature etc. Once an idea is written down, the writing becomes
the subject matter of copyright. With globalization and advancement of
technology, even computer programmes come within the copyright. Any work
conveying a particular information comes within the subject matter of a
copyright and it needs protection".
(iii) In the case of Vicco
Laboratories Bombay v. Hindustan Rimmer, Delhi, reported at MANU/DE/0013/1979 :
AIR 1979 Delhi 114, the case of the plaintiffs before Court was that the
plaintiffs have been marketing the cream in a collapsible tubes of 3 different
sizes which has the distinctive get up etc. The collapsible tube has red
background with floral design in yellow colour under the trademark 'Vicco
Turmeric Vanishing Cream', in the carton as well as tube in yellow strip in the
bottom. The case against the defendant was that they have been marketing the
vanishing cream in the carton and tube which are a colourable imitation of the
plaintiff's carton and tube under the trademark 'Cosmo'. This Court granted the
injunction against the defendant and held as under:
"The plaintiffs claim
passing off by the defendants of their product as and for the product of the
plaintiff's on the basis of copy of the distinctive get up and colour scheme of
the collapsible tubes and the cartons by them. The defendants are not entitled
to represent their goods as being the goods of the plaintiffs. The two marks
"Vicco" and "Cosmo" used by the plaintiffs and defendants
respectively are no doubt different and the mark "Cosmo" by itself is
not likely to deceive but the entire get up and the colour scheme of the tube
and the carton adopted by the plaintiffs and the defendants are identical in
every detail and are likely to confuse and deceive the customer easily. The get
up and the colour scheme of the plaintiff'. adopted in every detail by the
defendants for their tube and carton cannot be said to have been adopted by the
defendants unintentionally."
(iv) In the case of Nova
Ball Bearing Industries v. Mico Ball Bearing, MANU/DE/0333/1980 : (1981) 19 DLT
20, it has been held as under:
"A comparison of the
two cartons "NOVA" and "JANI" would reveal that two cartons
are exactly similar in size, colour scheme and get up, the only difference that
the trade mark of the defendants is written at 5 places and that of the
plaintiff at 3 places. The two cartons bear such a close resemblance that they
can easily confuse and deceive a customer."
It was further observed:-
"The plaintiffs are
actually using the artistic carton entitled 'NOVA' since 1971. They got their
copyright in the said carton registered in 1978. The plaintiffs are clearly the
prior user of the impugned carton. The defendants, it appears, got the
copyright in the impugned carton registered in their same by suppressing the
fact of its earlier registration in the name of the plaintiffs. It may be
noticed here that the counsel for the plaintiffs stated that the plaintiffs
have already moved for the rectification of the register of copyright."
"Prima facie, the
defendants seem to be guilty both of infringement of the copyright and passing
off."
(v) In Cases and Material
on Trade Mark and Allied Laws, Vol.I at Page No.969 Muller and Phipps
International Corporation and Anr. v. Anita Cosmetics and Anr., the following
observations are made at para 5 page No. 971:
"It is true that the
use of the mark COUNTESS by itself is not likely to deceive the customers. But
if the two containers CUTICURA and COUNTESS are put side by side, it becomes
apparent that in the get up, colour scheme and the similarity the containers
are so similar that they easily confuse and deceive the customers. The
defendant No.1 has adopted the get up and colour scheme of the container to the
plaintiffs. in every detail and they are identical in appearance."
(vi) In the case of
Sodastream Ltd. v. Thorn Cascade Co Ltd. reported at 1982 RPC 459 ,
the plaintiffs were marketing the gas cylinders of grey colour under their
trademark 'sodastream' and the defendants having also been marketing their
black colour cylinders under their own trademark 'Thorn Cascade', the proposals
of the defendants to refill the grey colour gas cylinders of the plaintiff,
even with their own trademark amounts to passing off as the grey colour
cylinder is distinctive of the plaintiffs in respect of which the reputation
accrued in favour of the plaintiffs. Interlocutory injunction granted.
(vii) In another case
Hoffmann-La Roche and Co. A.G. v. D.D.S.A. Pharmaceuticals Limited, reported in
1972 RPC 1 , the plaintiffs manufactured and marketed
chlordiazepoxide in distinctive black and green capsules bearing the word
"Roche" on each capsule, the defendants also marked and advertised
the drug chlordiazepoxide in black and green 10mg capsules which were identical
to those of the plaintiffs except that they bore the letters "DDSA"
instead of the plaintiffs' name. The plaintiffs were granted interlocutory
injunction to restrain the defendants from passing off capsules of the patented
drug as the goods of the plaintiffs. It was held that marketing of the capsules
by the defendants in almost identical form to those of the plaintiffs was
calculated to cause damage to the plaintiffs. It was further held that there
was a likelihood of confusion as both the capsules contained the same drug. The
public were not concerned with the identity of the manufacturing of the capsules
as long as the capsules contained the same substance and had the same effect.
(viii) In case of Smith
Kline and French Laboratories Limited. vs Trade Mark Applications, reported at 1974
RPC 91 , it was observed as under:
"The upshot of all
these cases is to my mind to establish that a scheme of colouring applied to
goods may be a mark within the definition in Section 68. That definition as was
pointed out in contrast to other definitions in the Act, starts with the word
"includes" showing that the definition is purposely not limited to
the precise words which follow. The combination of colour giving a speckled
effect in the present case is, in my judgement, no less a mark than the red
lines in Redduway's hose case of the "heading" in the cotton cases
and in the Winter-Hoffmann-La Roche chlordiazepoxide case."
It was further observed:
"The truth of the
matter is I think as follows. In some cases the colour is an essential part of
the article as an article whilst in others it is something which is not essential
and has been added for some other reason. If it has been added so as to denote
the origin of the goods, and the evidence shows that in practice it does so, it
can properly be said that it is being used as a mark in the trade mark sense.
The answer is no doubt one of degree and will depend on the evidence. It would
be highly unlikely that colour in a lipstick could ever become distinctive of
one manufacturer because in such a case colour is an essential element in and
part of the article itself. It is for that reason that the customer buys it.
Colour in a passenger motor car would normally be in a similar but not so
conclusive a position, but I see no reason why a trader, as some do, should not
paint his delivery vans or racing cars in specific distinct colours to indicate
the origin of the car or of the goods it normally carries as emanating from
him. With drugs, on the other hand, the position is the opposite of the
lipstick. Colour is of no importance to the article as a drug and it may, if
sufficiently, distinctive, be an exceedingly effective indication of origin.
It was further observed: I
cannot see why other manufacturers should want to adopt the applicants. colour
arrangements here except for the improper motive of trying to benefit from the
latter's established goodwill."
(ix) In the case of Tavener
Rutledge Ld. v. Specters Ld. 1959 RPC 83 , it was
observed as under:
"It seems to me that
one has to take into consideration people who have what is called imperfect
recollection, as was pointed out in the case of Saville Perfumery Ld. v. June
Perfect Ld. (1941) 58 RPC 147 and one has to allow for
cases where the person who has not got the two tins side by side perhaps does
not remember the plaintiffs name accurately, or does not know that there are two
different traders in the same line of business, or many others for that matter,
and takes a casual glance at the tin and imagines that it is the kind of fruit
drops that he wants, not entirely casually, but looking at it in the ordinary
way that such a customer would go into a shop and see a pile of tins or
something of that sort. Afterwards of course raise objection, but it seems to
me that it is a case of confusion if customers are induced to buy by a
recollection of the general get up of the plaintiffs. tin so that they purchase
a tin of the defendants. sweets by mistake and I am bound to say that I have
come to the conclusion that such confusion is not only possible but is
likely."
31. During the course of arguments, it
has not been denied on behalf of the defendant in the present case that the
label/packaging material is not dis-similar. It is evident that the
label/packaging used by the defendant is deceptively similar to that of the
plaintiff. The colour combination, get-up and arrangement of features must have
been designed by the defendant while placing the label and packaging of the
plaintiff. Thus, the defendant is not the owner or the author of the impugned
artistic work.
32. Admittedly, both the parties are
engaged in the same business. They deal in the goods of similar nature. The
said goods would be sold at the same shops and cater to the same class of
purchasers. The chances of likelihood of confusion cannot be ruled out in such
a case, the same being very high. The Supreme Court in the case of Parle
Products (P) Ltd. Vs. J.P. and Co., Mysore MANU/SC/0412/1972 : AIR 1972 SC 1359
has referred to Karly's Law of Trade Marks and Trade (9th edition paragraph
838) , which observed as under:
"Two marks, when
placed side by side, may exhibit many and various differences vet the main idea
left on the mind by both may be the Same . A person acquainted with one mark,
and not having the two side by side for comparison, might well be deceived, if
the goods were allowed to be impressed with the second mark, into a belief that
he was dealing with goods which bore the same mark as that with which he was
acquainted. Thus, for example, a mark may represent a game of football; another
mark may show players in a different dress, and in very different positions, and
yet the idea conveyed by each might be simply a game of football. It would be
too much to expect that persons dealing with trade-marked goods, and relying,
as they frequently do, upon marks, should be able to remember the exact details
of the marks upon the goods with which they are in the habit of dealing. Marks
are remembered rather by general impressions or by some significant detail than
by any photographic recollection of the whole. Moreover, variations in detail
might well be supposed by customers to have been made by the owners of the
trade mark they are already acquainted with for reasons of their own."
33. As far the issue of delay is
concerned, the defendant has alleged that there is delay on part of the
plaintiff to file the suit since the trademark POSH was registered in class 3
in the year 2005 without any objections. On perusal of the said trademark
registration of the defendant dated 21st March, 2005, it is apparent that the
same is granted for the label in yellow colour and is different from the
impugned label. Even otherwise the defendant in Para 13 of its written
statement has admitted that the defendant's have only recently switched to pink
colour get up while its product is in existence since the year 1999. No
evidence has been produced by the defendant in respect of use of the impugned
pink label as to since when has the same been used. In view thereof, the
question of delay does not arise. The said contention of the defendant is
rejected.
34. So far as the issue of jurisdiction
is concerned, since the plaintiff has presence in Delhi, by virtue of Section
62(2) of the Act, this Court has the jurisdiction to entertain and try the
present suit.
35. Thus, no grounds have been made by
the defendant for vacation of the ex-parte order. On the other hand, the
plaintiff has made a strong prima facie case for confirmation of the interim
orders. All the conditions of granting the injunction in the present case are
satisfied. Under these circumstances, the interim order passed on 29th May,
2014 is confirmed. Applications, being I.A. 10669/2014 and I.A. No 12699/2014,
are disposed of accordingly.
CS (OS) No.1660/2014
List before the Joint
Registrar on 2nd December, 2014, the date already fixed.
