* IN THE HIGH COURT OF DELHI AT NEW DELHI
Judgment delivered on: April 04, 2014
+ FAO NO. 520/2011
KRBL LTD. ..... Appellant
Through: Mr. S.K.G. Bansal, Mr. Amit
Chanchal Jha, Mr. Ajay Amitabh
Suman, Mr.Pankaj Kumar & Mr.
Santosh Kumar, Advocates
Versus
PK OVERSEAS PVT. LTD. ..... Respondent
Through: Mr. Sandeep Sethi, Senior
Advocate with Mr. N.K.
Manchanda, Advocate
CORAM:
HON'BLE MR. JUSTICE KAILASH GAMBHIR
ORDER
KAILASH GAMBHIR, J C.M. Appl. No.2992/2012
1. By this application filed under Section 5 of Limitation Act, the applicant seeks condonation of delay of 32 days in filing the accompanying review application. For the reasons stated in the application, the same is allowed and the delay of 32 days in filing the review application is condoned.
2. The application stands disposed of.
Rev. Pet. No. 109/2012
1. By this application moved under Order 47 Rule 1 read with Section Review Pet. 109/2012 in FAO No.520/2011 Page 1 of 24 151 of Code of Civil Procedure, 1908 (hereinafter referred to as CPC) the appellant/applicant seeks review of the order dated 7th December 2012, whereby this court had dismissed the appeal filed by the appellant challenging the dismissal of its stay application by the learned trial court in a suit for permanent injunction.
2. Addressing arguments in support of the review application, Mr. S.K.G. Bansal, counsel for the appellant strongly contended that there is an error apparent on the face of record in the order dated 7 th December 2012 passed by this court due to the following reasons:-
i) In paragraph 3 of the order, this court did not record the submission made by counsel for the appellant correctly thereby referring to the usage of the artistic packaging of the appellant's product in a particular colour combination from the year 2005 whereas the counsel submitted the year 2000 instead of 2005.
ii) Likewise the court had erred in recording the submission that the respondent brought out a deceptively similar packaging material with almost identical colour combination much later in the year 2009, however the year mentioned by the counsel for the appellant was 2004;
iii) In para 5 of the order, this court had erred in considering the observation made by the learned trial court with regard to placing on record various bills/ invoices by the appellant Review Pet. 109/2012 in FAO No.520/2011 Page 2 of 24 from the year 2005 onwards while the bills placed on record were from the year 2000 onwards.
iv) This court had missed the critical piece of documentary evidence placed on record, the photocopy of Registration Certificate issued by the Office of the Registrar of Copyright granting registration of the artistic work in depicting certain special features, get up and trade dress of their product being sold under the trademark 'AARTI' in favour of the appellant vide registration No. A-70764/2005 dated 28.4.2005 which became effective from the date of its application dated 6th December, 2003.
v) The court had further ignored the fact admitted by the defendant of adopting the mark 'Diya' alongwith its label since the year 2004 in para 11 of preliminary objections to the written statement.
3. The aforesaid indisputable facts which were placed on record, as per the counsel for the appellant, were inadvertently glossed over by this court as can be seen from the order dated 7 th December 2012 and therefore, the mistake and error is writ large on the very face of it, on the part of this court in not appreciating the facts in its right perspective.
4. Counsel further submitted that grievance of the appellant was not with regard to the infringement of the trademark 'Aarti' or having any problem with the trademark 'Diya' of the respondent nor even with the Review Pet. 109/2012 in FAO No.520/2011 Page 3 of 24 colour of the label/packaging material brought up by the respondent. The prime concern of the appellant both before the learned trial court and this court was with regard to unabashed violation on the part of the respondent towards the registered copyright of the appellant in the said artistic work of their label 'Aarti', it's essential features, get up and trade dress / packaging material.
5. Counsel further argued that had this court taken into consideration the aforesaid facts, it would have certainly exercised its discretion in favour of the appellant by the grant of ad-interim injunction and it is only because of non consideration of the aforesaid facts, the appeal filed by the appellant was dismissed.
6. In support of his arguments, counsel for the appellant placed reliance on the following judgments:
a. M/s Viraj Manilal and Co. Vs M/s N.S. Bedi Co. And Anr. (1988-PTC-62);
b. Board of Control for Cricket, India vs Netaji Cricket Club AIR 2005 SC 592;
c. Dabur India Ltd. Vs Ashok Aushadhi Udyog 2009 (41) PTC 416 (Del.);
d. William Grant & Sons Ltd. Vs McDowell &
company Ltd. 1997 PTC (17);
e. D.C.S Bureau vs United Concern AIR 1967 Madras
381;
Review Pet. 109/2012 in FAO No.520/2011 Page 4 of 24
f. Glaxo Operations UK Ltd. Vs Samrat
Pharmaceuticals reported in AIR 1984 Delhi 265.
7. Refuting the arguments advanced by counsel for the appellant, Mr. Sandeep Sethi, learned Senior Advocate appearing for the Respondent vehemently urged for outright dismissal of the present review application.
8. The counsel argued that in the disguise of the present review application, the appellant has sought re-hearing of the matter and re- appreciation of the facts and circumstances involved in the present case, with the help of the judgments, which were not cited earlier and same is impermissible in law. Counsel further argued that the scope of the review in terms of Order 47 Rule 1 is very limited as the same cannot travel beyond the well defined parameters envisaged in the rule itself. Counsel further argued that if such a course is adopted, then it will amount to re- appreciation and re-examination of the entire material on record, which could only be done by way of challenging the said order and not by filing a review before the same court. Counsel also argued that non consideration of any material on record by the court, can afford a ground to the aggrieved party to challenge the same before the higher court but not to re-agitate the same issue before the same court. Review Pet. 109/2012 in FAO No.520/2011 Page 5 of 24
9. Counsel further argued that this court has passed a well reasoned order and error which has been pointed out by learned counsel for the appellant in paragraph 3 of the order, just pertains to submission made by counsel for the appellant and the said para is not a part of the operative part of the order passed by this court. Further the Counsel argued that this court in order dated 7th December 2012 has clearly observed that it had gone through the entire material on record and found no ground to interfere with the order passed by the learned trial court, after placing reliance on the judgment of the Apex Court in the case of Skyline Education Institute vs S L Vasawani reported in (2010) 2 SCC 142.
10. Counsel also argued that the counsel for the appellant failed to point out that there was any error apparent on the face of the record or something new was revealed, which was not within the knowledge of this court despite the exercise of due diligence and thus in the absence of satisfaction of basic ingredients as envisaged under Order 47 Rule 1 of CPC, the appellant through the present review application cannot seek from the court to re-write its judgment with the help of the judgments cited by the counsel for the appellant at this stage.
11. Learned senior counsel for the respondent further disputed the Review Pet. 109/2012 in FAO No.520/2011 Page 6 of 24 proprietorship of the appellant with regard to the artistic work of the appellant by inviting attention of this court to the photocopy of the registration certificate placed on record wherein the name of the author of the artistic work has been disclosed to be that of Shri Rakesh Khanna. Counsel argued that the appellant has not placed on record any documentary evidence to show that the said artistic work was assigned by Shri Rakesh Khanna in favour of the appellant. In support of his arguments, counsel for the respondent has placed reliance on the following judgements:-
a) Smt. Meera Bhanja vs Smt. Nirmala Kumar
Choudhary, AIR 1995 SC455
b) Parsion Devi vs Sumitri Devi, (1997) 8 SCC 715
c) Inderchand Jain (Dead) Through LRS. vs Motilal
(Dead) Through LRS., (2009) 14 SCC 663
d) Dolat Oil Industries vs Krishna oil Industries, 2002
(24) PTC 468 (Guj)
12. I have heard the learned counsel for the parties at considerable length and given my anxious consideration to the arguments advanced by them.
13. Contention raised by the counsel for the appellant in the review petition was that this court had made the same error as committed by the Review Pet. 109/2012 in FAO No.520/2011 Page 7 of 24 learned trial court at the time of passing of an interim order. The next submission of the counsel for the appellant that this court had overlooked the vital piece of documentary evidence, the same being the registration certificate issued by the Office of the Registrar, Copyrights, granting registration of the artistic work in favour of the appellant with regard to the essential features of trade dress and get up of their packaging material of their product being sold under the trademark 'AARTI'. The last error pointed out by the counsel for the appellant was that this court had overlooked the admission made by the respondent in the written statement admitting the fact that he had adopted the trademark/ label/trade dress of their product 'Diya' since the year 2004, which clearly demonstrates on record that the respondent adopted and started using the trade dress/label on their packaging material of the trademark 'Diya' much after the application for registration was made by the appellant i.e. 6th December, 2003 for their artistic work.
14. The power of review can be exercised only where the circumstances are strictly covered within the explicit limits set out under Order 47 Rule 1 CPC. The three specific grounds which have been envisaged under Order 47 Rule 1 CPC, to review any order been passed Review Pet. 109/2012 in FAO No.520/2011 Page 8 of 24 by the same court are :
(i) discovery of new and important matter or evidence which, after exercise of due diligence, was not within the applicant's knowledge or could not be produced by him at the time when the decree was passed or order was made
(ii) mistake or other error apparent on the face of the record or
(iii) any other sufficient reason.
15. In the present case, the applicant has invoked the second ground, i.e., order suffers from an error apparent on the face of record. An error apparent on the face of record cannot be defined precisely or exhaustively there being an element of indefiniteness inherent in its very nature and it must be left to be determined judicially on the facts of each case (Ref. Hari Vishnu v. Ahmed Ishaque, AIR 1955 SC 233).
16. In Thungabhadra Industries Ltd. v. Govt. of A.P. (1964) 5 SCR 174, a three-Judge Bench reiterated that the power of review is not analogous to the appellate power and observed:
"A review is by no means an appeal in disguise whereby an erroneous decision is reheard and corrected, but lies only for patent error. We do not consider that this furnishes a suitable occasion for dealing with this difference exhaustively or in any great detail, but it would suffice for us to say that where without any elaborate argument one could point to the error and say here is a substantial point Review Pet. 109/2012 in FAO No.520/2011 Page 9 of 24 of law which stares one in the face, and there could reasonably be no two opinions, entertained about it, a clear case of error apparent on the face of the record would be made out."
17. In Board of Control for cricket, India vs Netaji Cricket Club, AIR 2005 SC 592, the Hon'ble Supreme Court had observed that any application for review would not only be maintainable upon discovery of new and important piece of evidence or when there exists an error apparent on the face of record but also if the same is necessitated on account of some mistake or for any other sufficient reason.
18. The Apex Court in Haridas Das Vs. Usha Rani Banik, AIR 2006 SC 1634 categorically held that the parameters for review are prescribed in Order XLVII Rule I of the CPC and for the purposes of this lis, it can permit the party to press for a rehearing on account of some mistake or error apparent on the face of the record or for any other sufficient reason.
19. The principles governing the review jurisdiction of the court has been recently explained by the Apex Court in Kamlesh Verma v. Mayawati & Ors., (2013) 8 SCC 320 and relevant para of the same is reproduced as under:-
"20. Thus, in view of the above, the following grounds of review are maintainable as stipulated by Review Pet. 109/2012 in FAO No.520/2011 Page 10 of 24 the statute:
20.1. When the review will be maintainable:-
(i) Discovery of new and important matter or
evidence which, after the exercise of due
diligence, was not within knowledge of the
petitioner or could not be produced by him;
(ii) Mistake or error apparent on the face of the
record;
(iii) Any other sufficient reason.
The words "any other sufficient reason" has been interpreted in Chhajju Ram vs. Neki, AIR 1922 PC 112 and approved by this Court in Moran Mar Basselios Catholicos vs. Most Rev. Mar Poulose Athanasius & Ors., (1955) 1 SCR 520, to mean "a reason sufficient on grounds at least analogous to those specified in the rule". The same principles have been reiterated in Union of India vs. Sandur Manganese & Iron Ores Ltd. & Ors.(2013) 8 SCC 337.
20.2. When the review will not be maintainable:-
(i) A repetition of old and overruled argument is not enough to reopen concluded adjudications.
(ii) Minor mistakes of inconsequential import.
(iii) Review proceedings cannot be equated with the original hearing of the case.
(iv) Review is not maintainable unless the material error, manifest on the face of the order, undermines its soundness or results in miscarriage of justice.
(v) A review is by no means an appeal in disguise whereby an erroneous decision is re-heard and corrected but lies only for patent error.
(vi) The mere possibility of two views on the subject cannot be a ground for review.
(vii) The error apparent on the face of the record should not be an error which has to be fished out and searched.
(viii) The appreciation of evidence on record is fully Review Pet. 109/2012 in FAO No.520/2011 Page 11 of 24 within the domain of the appellate court, it cannot be permitted to be advanced in the review petition
(ix) Review is not maintainable when the same relief sought at the time of arguing the main matter had been negatived."
20. However, when I talk of an error which should be apparent on the face of the record, then such error at least should be patent and easily located and not an error for which you have to search. Once patent errors are brought to the notice of the court by an aggrieved party, and those errors have an important bearing on the subject matter of controversy between the parties, it is manifest that for imparting substantial justice to the parties the court is duty bound to rectify such errors found in the order. The term "mistake or error apparent" signifies an error which is evident per se from the record of the case and does not require detailed examination, scrutiny and elucidation either of the facts or the legal position. The error on account of some mistake or error apparent on the face of record is permissible to rectified and decided judicially on the facts of the case.
21. In the light of the aforesaid legal dicta, this court finds much force in the argument raised by the counsel for the applicant that at the time of passing of the order dated 7th December 2011, certain imperative errors Review Pet. 109/2012 in FAO No.520/2011 Page 12 of 24 were committed by this court which are quite apparent. The most important being the applicant having obtained the registration of the artistic work of their trademark 'AARTI' with certain essential features of trade dress and get up of their packaging material.
22. It is quite manifest that , the respondent herein has not claimed any ownership in the said artistic work for which registration was granted in favour of the appellant.
23. At the stage of deciding an interim application under Order 39 Rule 1 & 2 of CPC, I only need to consider the undisputed facts and the material placed on record. On perusal of the documents placed on record by the parties and the contentions raised by their respective counsels, this court does not bear any doubt in order to review the order dated 7th December, 2012 passed by this court. As per the counsel for the appellant, there is an error apparent on the face of record as this court recorded wrong submissions made by the counsel for appellant while referring to the usage of the packaging material by the appellant, its year of registration and the dates of various invoices produced.
24. The applicant and the respondent are in the same trade of selling Basmati rice. The applicant has been selling their products under the Review Pet. 109/2012 in FAO No.520/2011 Page 13 of 24 trademark 'AARTI' while the respondent has been selling their products under the trademark 'DIYA'. The applicant had placed on record the photocopy of the registration certificate of their artistic work in respect of their label/packaging material which clearly shows that the applicant was the registered proprietor of the artistic work of a particular design or get up/layout and other essential features of their label/trade dress for packaging their products 'AARTI'. The respondent, on the other hand, in the written statement itself took a stand that he started using the particular label/trade dress of their products 'DIYA' from the year 2004 and therefore, using of the label and trade dress by the respondent for their said product was much after the application was made by the applicant for registration of their artistic work. The applicant has also placed on record various invoices from the year 2000 onwards, in which the invoices from the year 2003 also bear the said label of the applicant which depicts that the applicant brought the said label having certain essential features much prior to the introduction of the label 'DIYA'by the respondent.
25. It is a settled legal position that for the purpose of infringement of copyright, an exact reproduction or copy of the same is not necessary. Review Pet. 109/2012 in FAO No.520/2011 Page 14 of 24 What is essential and sufficient to see is whether there is any reproduction of substantial parts of the essential features of the artistic work of the aggrieved party (Ref. D C S Bureau vs United Concern AIR 1967 Madras 381).
26. In C. Cunniah & co. Vs Balraj and Co. (1960) 1 Mad LJ 53 at pg 56, the bench had clearly laid down "Applying this test, the degree of resemblance between the two pictures, which is to be judged by the eye, must be such that the person looking at the respondents' picture must get the suggestion that it is the appellant's picture. In this sense, the points of similarity or dissimilarity in the picture assume some importance.... We agree that this could not be the sole test, though, incidentally, the points of resemblance and dissimilarity assume some importance in the case of finding out whether, taken as a whole, the respondents' picture produces the impression in the mind of any observer, which amounts to a suggestion of the appellants' picture.
One picture can be said to be a copy of another picture only if a substantial part of the former picture finds place in the reproduction.
27. In Lord Herschel L C in Hanfstaengl vs Raines & Co. 1895 AC 20 (25), while dealing with that fact that there can be no test to decide what a substantial part of the picture is. One useful test which has been followed in several decisions of court, the Hon'ble court held as under:
".....it depends really, on the effect produced upon the mind by a study of the picture and of that which is alleged to be a copy of it, or at least of its design."
28. Under Section 48 of the Copyright Act, 1957 the Register of Review Pet. 109/2012 in FAO No.520/2011 Page 15 of 24 Copyrights is a prima facie evidence of the particulars entered therein and in view of this provision, this court does not find any merit in the argument advanced by the counsel for the respondent that in the registration certificate, name of the applicant is not mentioned against the name of the author who had devised the artistic work. There is no gainsaying that the author of the artistic work and one who engages such author to design their work need not be the same person and it is the person in whose favour and under whose employment, or under any contract, the author has devised its artistic work, shall become the owner in the absence of any agreement or contract to the contrary.
29. The applicant in appeal bearing FAO NO. 520/2011 dated 24.11.2011 claimed restraint of its copyright in the artistic work of the essential features and layout of their trade dress of the products Basmati rice being sold under the trademark 'AARTI' from the use and marketing of same kind of label and packaging material by the respondent for selling their product under the trademark 'DIYA'.
30. As per the case of the appellant, label including its overall get up including arrangement of features of the label constitutes original artistic work within the meaning of Section 2(c) of the Copyright Act, 1957 Review Pet. 109/2012 in FAO No.520/2011 Page 16 of 24 thereby entitling the appellant to copyright protection under Section 14 of the Copyright Act, 1957.
31. In Ardath Tobacco Company Ltd v. Munna Bhai, 2009 (39) PTC 208, the Court was satisfied that the cigarettes marketed by the defendants had "copied the trade dress of the same goods of the plaintiff." The Court was also impressed that despite the plaintiff's mark not being used on the defendant's packet, the other features adopted were identical. The Court then proceeded to observe that since single cigarette sticks were sold more in this country than full packets, an action for infringement of trade mark in relation to cigarette packets had to be viewed in such light. The Court reasoned that since a casual purchaser may be misled into thinking a certain packet was something that it actually was not, there would be a possibility of confusion or deceit. The judgment should be read in the context that the Court found the two rival packets to so nearly resemble each other that there was likelihood of confusion.
32. In Colgate Palmolive Company & Another v. Anchor Health and Beauty Care Pvt. Ltd. 108 (2003) DLT 51, Colgate Palmolive , the tooth powder of the defendant was having name "Anchor" as against the name Review Pet. 109/2012 in FAO No.520/2011 Page 17 of 24 of plaintiff as "Colgate" . It was held by the Hon'ble Supreme Court that the trade dress and combination varies from product to product and from customers to customer 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. The court further 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.
33. In Cadbury India Limited and Ors. Vs. Neeraj Food Product , 142(2007)DLT724, the Delhi High Court held that "the packaging adopted by the defendant is also pillow pack which is identical in size, shape, colours and get up and conveys the same idea. The intention of the defendant in copying the same is clearly dishonest and intended to ride on the goodwill, reputation and popularity of the plaintiff's product entitling the plaintiff to sustain its passing off action against the defendant. The defendant is prima facie also violating thereby the copyright of the plaintiff in the artistic work of plaintiff's packaging." Review Pet. 109/2012 in FAO No.520/2011 Page 18 of 24
34. In another recent case of Gorbatschow Wodka v. John Distilleries, 2011 (47) PTC 100 (Bom.) the Plaintiff, Gorbatschow Wodka, filed an infringement action before the Bombay High Court alleging that the Defendant has invaded its intellectual property rights by adopting a deceptive variation of the shape of the bottles of the Plaintiff. The court while deciding the said petition held as under:
20. In F. Hoffmann La Roche & Company A.G. v. D.D.S.A. Pharmaceuticals Limited (1972) 1 R.P.C. 1 the Plaintiffs manufactured and marketed a drug under the registered mark 'LIBRIUM' in distinctive black and green capsules. The Defendant who was also a pharmaceutical manufacturer, applied for and was granted a compulsory licence in respect of the Plaintiffs' patent and proceeded to market and advertise the drug in black and green capsules which were identical to those of the Plaintiffs except that they bore letters different from those of the Plaintiffs. An injunction was granted.
21. Mr. Justice R.M. Lodha (as His Lordship then was), as a Single Judge of this Court, in Kemp and Company v. Prima Plastics Ltd. 2000 PTC 96 considered an action where the Defendants were alleged to have infringed the registered design of a chair manufactured by the Plaintiff and for passing off by the Defendants by adopting a similar design, shape and configuration. The Learned Single Judge cited with approval the following extract from Copinger and Stone James on Copyright:
There may, indeed, be cases where an article itself is shaped in an unusual way, not primarily for the purpose of giving some benefit in use or for any other practical purpose but capriciously in order purely to give the article a distinctive appearance characteristic of that particular manufacturer's goods. In such a case the manufacturer might be able, in the course of time, to establish that he has a reputation and goodwill in the distinctive appearance of the article itself which will give him a cause of action in passing Review Pet. 109/2012 in FAO No.520/2011 Page 19 of 24 off if his goods were copied. In those circumstances, the putting of a copy on to the market with the distinctive feature or combination of features in question would amount to a misrepresentation that it emanated from the Plaintiff.
The Learned Single Judge held as follows:
If the Plaintiff has to succeed on the ground of passing off, he must show something more than mere similarity between the goods. Exceptions apart, where an article is shaped in an unusual way not primarily for giving same benefit in use or for any other practical purpose, but capricious in order purely to give an article a distinctive appearance, characteristic of that particular manufacturer's goods, a case may be made out by the Plaintiff that he has reputation and goodwill in the distinctive appearance of the article itself which could provide him a cause of action in passing off if his goods were copied.
22. The test is whether the shape that has been adopted by the Plaintiff is one that is adopted capriciously, purely to give the article a distinctive appearance or characteristic of the goods of the manufacturer. If that be so, the manufacturer may be able to establish that he has a reputation and goodwill in the distinctive appearance of the article itself which would furnish a cause of action in passing off. In a judgment of the Division Bench of this Court in Aktiebolaget Volvo v. Volvo Steels Limited 1998 PTC (18) (DB) the Division Bench has laid a considerable amount of emphasis on the reason for the adoption of the mark. If the Defendant has no plausible explanation, then that is certainly a circumstance which must weigh in the balance. In R.R. Oomerbhoy Pvt. Ltd. v. Court Receiver : 2003(27) PTC 580 (Bom) a Division Bench of this Court adverted to the fact that the shape of the container and of the plastic bottle in which the Defendant had sold its product, had a striking resemblance to those of the Plaintiff. In a judgment of the Delhi High Court in Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd. 2003(27) PTC 478 a Learned Single Judge observed that "trade dress is the soul for identification" of goods to their source or origin and a customer forms an overall impression of the source of origin of the goods from a visual impression of the colour combination as well as from the shape of the container and packaging. A conscious imitation of the colour combination, get up or layout of the container would lead to the design of the Defendant to cause confusion in the mind of the customer.Review Pet. 109/2012 in FAO No.520/2011 Page 20 of 24
23. The Supreme Court in its judgment in Khoday Distilleries Limited v. Scotch Whisky Association : 2008 (10) SCC 723 emphasized that the class of purchasers who are likely to buy the goods by their education and intelligence and the degree of care which they are likely to exercise in purchasing or using the goods would be required to be considered. In that context, the Supreme Court relied on the earlier judgment in Cadila Health Care Ltd. v. Cadila Pharmaceuticals: (2001) 5 SCC 73 The Supreme Court inter alia emphasized that when the class of buyers is educated and rich, the test is to be applied is different from one where the product would be purchased by villagers or by the illiterate and poor. The Supreme Court held in that case that had the test been applied, the matter might have been different and in a given case probably the Court would not have interfered. The Court was, however, inclined to interfere because a wrong test had been applied which had led to a wrong result. In the present case, the Court must undoubtedly place in the balance the fact that both the Plaintiff and the Defendant are selling Vodka which has a distinctive clientele. For the purposes of the application for interlocutory relief one can well proceed on the basis, as was suggested by the Defendant, that the purchasers of Vodka are primarily educated and well placed in life. But that by itself is not dispositive of the issue as to whether the conduct of the Defendant does or does not amount to passing off. In the present case, there are several circumstances, which must equally be placed in the balance by the Court. Firstly, the Plaintiff has prima facie established both a trans border reputation as well as a reputation in the market in India and the fact that the unique shape of the bottle is an important element in tracing the source of origin of the product to the Plaintiff; Secondly, under the Trade Marks Act, 1999, the shape of goods and their packaging is statutorily recognized as a constituent element of a trade mark as distinguishing the goods or services of a person with those of others; Thirdly, the submission of the Plaintiff that no other manufacturer either globally or in India has adopted the shape of the bottle of the Plaintiff (save and except for the Defendant) has not been disputed in the course of submissions by counsel for the Defendant; Fourthly the shape which has been adopted by the Plaintiff is unique to the point of being capricious. The Defendant has absolutely no plausible or bona fide explanation for adopting a shape which is strikingly similar; Even though the ad interim order of the Court permitted the Defendant to sell Vodka, though in a 'distinct shaped bottle' the Defendant has chosen not to do so. The Defendant has no explanation of how this particular design was adopted; and Fifthly, the attempt of the Defendant if it is allowed would result in diluting the distinctiveness and exclusivity of the mark of Review Pet. 109/2012 in FAO No.520/2011 Page 21 of 24 the Plaintiff which has as an essential ingredient, the distinctive shape of the bottle in which Vodka is sold. This would only embolden other infringers to invade upon the proprietary right of the Plaintiff and would ultimately result in a destruction of the goodwill associated with the mark of the Plaintiff.
25. Perhaps the point may well be stated in the following expression of principle in the judgment in Slazenger & Sons v. Feltham & Co. Nov.6, 1889 R.P. Design 531 which emphasizes "the honesty of the case":
... There is sufficient nearness, sufficient neighbourhood, in the one word to the other, to justify me in coming to the conclusion that it is calculated to deceive. I shall, no doubt, be assumed to conclude and I make no secret that I do conclude that that finding is at least consistent with the honesty of the case.
As Lord Justice Lindley held in that case:
Well, what is that for? One must exercise one's common sense, and, if you are driven to the conclusion that what is intended to be done is to deceive if possible, I do not think it is stretching the imagination very much to credit the man with occasional success or possible success. Why should we be astute to say that he cannot succeed in doing that which he is straining every nerve to do?
35. With the aforesaid legal spectrum and in view of the facts and circumstances of the present case, the appellant has been able to make out a prima facie case for grant of injunction against the respondent.
36. On a bare look of the label of the applicant and that of the respondent, there can be no hesitation in saying that the respondent has substantially copied the essential features of the artistic work of the applicants label, prominent being the two white line border in a blue temple like shape, yellow Diya shown in a circle with a red background, Review Pet. 109/2012 in FAO No.520/2011 Page 22 of 24 attached with a rectangular kind of box with the brand name 'ÁARTI' inside.
37. In light of the foregoing discussion, prima facie I find that the artistic features as adopted by the respondent is very similar to the applicant's label/ trade dress that there is every likelihood of the same deceiving unwary purchasers that the goods acts which they were purchasing were those of the plaintiff. In the light of this discussion, I have no hesitation in holding that the applicant herein has made out a prima facie case against the respondent entitling it to grant of interlocutory injunction.
38. I am inclined to allow the review petition filed by the appellant under Order 47 rule 1 and 2 of CPC, thereby reviewing the order dated 7th December 2012 passed by this court. Accordingly the present appeal bearing FAO No. 520 of 2011 is allowed in terms of its prayer clause (a) and (b).
39. Accordingly the grant of ad- interim injunction under Order 39 Rule 1, 2 stands allowed and the respondent , its directors, employees, servants, agents etc. are restrained from marketing, selling or using in any manner whatsoever the appellant's registered copyright in its artistic Review Pet. 109/2012 in FAO No.520/2011 Page 23 of 24 work/ trade dress/ trade label which is deceptively or confusingly similar to that of the appellant till the final disposal of the present case.
40. It may be noted that nothing expressed herein above shall be treated as an expression on the merits of the case.
41. Hence, the review Petition stands allowed in the above terms.
KAILASH GAMBHIR, J APRIL 04, 2014 pkb Review Pet. 109/2012 in FAO No.520/2011 Page 24 of 24