* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Reserve: March 18, 2009
Date of Order: May 11, 2009
+ CS(OS) 513/2009
% 11.05.2009
Perfetti Van Melle S.P.A & Anr. ...Plaintiffs
Through : Mr. Rajiv Nayyar, Sr. Adv. with Mr. R.K. Virmani, Ms. Rashmi
Virmani, Ms. Mihra Sood and Mr. Thomas George, Advocates
Versus
Shankarlal Dhingra & Ors. ...Defendants
Through:
JUSTICE SHIV NARAYAN DHINGRA
1. Whether reporters of local papers may be allowed to see the judgment?
2. To be referred to the reporter or not?
3. Whether judgment should be reported in Digest?
JUDGMENT
1. Plaintiffs filed this suit for permanent injunction against defendants alleging infringement of copyright. The contention of the plaintiffs is that the plaintiff No.1 was carrying out its activities in India through its wholly owned subsidiary i.e. plaintiff No.2. Plaintiffs were renowned manufacturers and sellers of confectionary items including Chewing gum with the brand name „Center Fresh‟, „Center Shock‟ etc and the products were being packed in a unique and distinct trade dress having artistic work within the meaning of section 2(c) of Copyright Act, 1957. The plaintiffs were thus the owner of the copyright in such artistic work. Plaintiffs had spent considerable amount in advertisement and promoting their products "Centre Fresh" etc in India. In April 2008, plaintiffs came across a brand of chewing gum packed and sold in CS(OS) 513/2009Perfetti Van Melle SPA & Anr. v. Shankarlal Dhingra & Ors. Page 1 Of 6 packaging/wrappers marked "Super Mint", near identical to the plaintiffs‟ product "Centre Fresh" and the wrappers of product "Centre Fresh". Plaintiff No.1 then sent a cease and desist notice through its trademark attorneys to defendant No.2 on 21st July 2008, requiring defendant No.2 to stop using the impugned wrapper. Plaintiff No.1 received a defiant reply dated 28th July 2008 from the attorneys of defendant. It is alleged by plaintiffs that defendants No.1,2, 3 and 4 were primarily carrying on the infringing activities in name of Defendant No.5 and indulging in large scale violations of the trade mark and copyright of the Plaintiffs by selling their products under the trademark "Super Mint" with a deceptively similar wrapper/label/ packaging and trade dress pertaining thereto throughout India. Plaintiffs learnt that the defendant No.5 had applied for the registration of artistic work comprised in the label/wrapper "MG Super Mint Liquid Filled Gum" (Label) bearing number A- 79261/2007 and this wrapper was registered in the name of defendant No.5. Plaintiffs then filed an appropriate application before the statutory authority for cancelling the impugned registration on 26th February, 2009. It is stated that the colour scheme of the wrapper/ packaging was nearly identical to the colour scheme of the plaintiff‟s packaging of "Center Fresh". Defendants were also offering their products in different flavours reproducing the colour combination, layout and arrangement of features of the plaintiff. It is submitted that the features of the plaintiffs‟ wrapper were being reproduced by defendant without any authority and the defendants were infringing the copyright of the plaintiff.
2. All the defendant, as narrated in the array of parties, are of Gwalior or Indore in Madhya Pradesh. Territorial jurisdiction of Delhi Court has been invoked by the plaintiff on the ground that the plaintiff was carrying on its CS(OS) 513/2009Perfetti Van Melle SPA & Anr. v. Shankarlal Dhingra & Ors. Page 2 Of 6 business within the territorial jurisdiction of this Court and the defendants have infringed the copyright in label of the plaintiff‟s goods as demonstrated above, hence this court has jurisdiction to try and to determine the suit under Section 62(2) of the Copyright Act. It is submitted that the defendants were also carrying on their business and selling their products in Delhi within the jurisdiction of this Court.
3. Learned counsel for plaintiff relied upon Colgate Palmolive Company & Another v. Anchor Health and Beauty Care Pvt. Ltd. 108 (2003) DLT 51 and argued that dress and combination varies from product to product and from customers to customers and copying of the trade dress and colour combination of product would also give rise to passing of action within the definition of Trademarks Act, even if the names of the products were altogether different. In the case of Colgate Palmolive (supra), the tooth powder of the defendant was having name „Anchor‟ as against the name of plaintiff as „Colgate‟ but the court held that similarity of trade dress as substantially apparent from the look of the two packages would come within the meaning of passing off. It is argued by counsel for the plaintiff that in the present case also, it was a case of passing off and it was a fit case for grant of injunction because of similarity in trade dress.
4. A perusal of reply to the notice of the plaintiffs given by the defendant No.5 would show that defendant No.5 has taken a stand that the defendant No.5 was a registered proprietor of copyright in art involved in wrapper containing words "Super Mint" under Copyright Registration Act and its registration number was A-7926/07 dated 21st May 2007. The wrapper of defendant‟s product clearly indicated that the goods were manufactured by CS(OS) 513/2009Perfetti Van Melle SPA & Anr. v. Shankarlal Dhingra & Ors. Page 3 Of 6 M.G. Food Products Harkota Bala Bai Ka Bagh Taragunj Gwalior-474001. It is from this notice that plaintiff learnt about the registration of the wrapper of product of defendant No.5 with Copyright Registry and that is how plaintiff submitted that it has moved appropriate application with the competent authority.
5. A bare look at the wrapper of the plaintiffs and defendants would show that the two wrapper colours have different shades. They were not similar in content. Neither the defendant had copied the art of the plaintiffs‟ wrapper. While plaintiff‟s wrapper shows two parts of gum spilt at one point, held together and liquid oozing out downward, the defendant‟s wrapper shows that the two half parts separated and placed at two different places on wrapper and in one liquid is going upward and in the other, liquid is going downward. The art involved in two wrappers is such that prima facie it does not create any confusion nor the name "Super Mint" and the "Center Fresh" are having similarly of any manner. Thus, it cannot be said that it was a case either of infringement or passing off of the products of the plaintiff as that of the defendants. It cannot be a case of infringement because defendant No.5 has a different trade name and a registered wrapper. It is not a case of passing off because there is no commonality between the two wrappers except shade of the colour. Plaintiff cannot have monopoly over any colour. There is no colour combination on plaintiffs wrapper in a particular manner which could create even a semblance of any right of plaintiff in the blue colour used in the wrapper of the plaintiff. Colour is a nature‟s gift to the mankind and nobody can have monopoly over one particular colour and say that since he is using colour blue, nobody would be allowed to use the colour blue on its wrappers or use of colour blue shall tantamount to infringement. CS(OS) 513/2009Perfetti Van Melle SPA & Anr. v. Shankarlal Dhingra & Ors. Page 4 Of 6 There is no ban on using a wrapper of a particular colour. Therefore, no case is made out either of infringement or passing off.
6. Even otherwise, this Court has no jurisdiction to entertain the instant suit in view of the Judgment of the Apex Court in Dhodha House case. The defendants in the case in hand are residents of Madhya Pradesh. They are having their business activities in Madhya Pradesh. Their products are being manufactured in Madhya Pradesh. Plaintiff has failed to point out any place of business of defendants in Delhi. Some receipts have been placed on record by plaintiff. These receipts are commonly available at any stationary shop. The receipts do not bear the name of any shop or any place or the person who prepared the receipts. Such receipts can be obtained from any stationary shop, filled up and placed on record. For invoking jurisdiction of this Court, plaintiff has to show that the cause of action had arisen within Delhi but the plaintiff has failed to show any cause of action had arisen in Delhi. A decree of permanent injunction restraining defendants or their agents from manufacturing, selling and dealing with the products using labels allegedly similar to that of the plaintiffs‟ labels cannot be enforced in Delhi. It has to be enforced in Gwalior where the alleged business activities of defendants are being carried out. From a perusal of plaint of plaintiff, it is clear that no part of cause of action had arisen in Delhi. The allegations of sale on the basis of receipts showing no connection with defendants cannot be the basis of invoking jurisdiction of Delhi Court. In this case, the cause of action, if any, arose at Gwalior where all the defendants are residing and carrying on their business activities.
7. In view of the foregoing facts and circumstances, I consider that this CS(OS) 513/2009Perfetti Van Melle SPA & Anr. v. Shankarlal Dhingra & Ors. Page 5 Of 6 suit is not maintainable. The suit filed by plaintiffs is hereby dismissed. All the interim applications, also stand disposed of.
May 11 , 2009 SHIV NARAYAN DHINGRA J. rd
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