Bombay High Court
Samex India Pvt Ltd vs Mohammed Adams Sole Proprietor Of Ms ... on 1 August, 2024
Author: R.I. Chagla
Bench: R.I. Chagla
9-ial-15350-2023.doc
jsn
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
Digitally
JITENDRA
signed by
JITENDRA
SHANKAR
ORDINARY ORIGINAL CIVIL JURISDICTION
SHANKAR NIJASURE
NIJASURE Date:
2024.08.16
18:25:53
+0530
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO.15350 OF 2023
IN
COM IPR SUIT NO.352 OF 2023
Samex India Pvt. Ltd. ...Applicant /
Plaintiff
Versus
Mohammed Adams Sole Proprietor of Ms. Lail ...Defendant
Spices
----------
Akshay Patil and Shirley Mody, i/b. K. Ashar and Co. for the
Applicant / Plaintiff.
Subhradeep Banerjee with Sudhakar Pandaram for Defendant.
----------
CORAM : R.I. CHAGLA J.
DATE : 1ST AUGUST, 2024.
ORDER :
1. The pleadings are complete in the above Interim
Application and by consent of parties, the Interim Application is
heard finally.
2. By this Interim Application, the Applicant / Original
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Plaintiff has sought order of injunction restraining Defendant from
infringing and passing off the Plaintiff's registered trade marks and
passing off other unregistered trade marks / labels. Apart from the
infringement and / or passing off the trade marks, the Plaintiff is also
claiming relief of infringement of copyright in its original artistic
work "Emperor Akbar Green Cardamom" lables / packaging in
distinct packaging described as "Emperor Akbar Cardamom Red
Grade", "Emperor Akbar Cardamom Orange Grade", "Emperor Akbar
Cardamom Green Grade" and "Emperor Akbar Cardamom Pink
Grade".
3. The Plaintiff was originally incorporated as a partnership
firm "Samex Agency" in the year 1981 and was converted into a
private limited company sometime in 2016. The Plaintiff is in the
business of supplying, marketing, exporting and distributing wide
ranges of products, including spices. The present suit concerns the
Plaintiff's business of sale of spices particularly "Packaged
Cardamom" and the registered trade mark in relation to packaged
Cardamom brand "Emperor Akbar Green Cardamom" label / trade
dress and other unregistered trade marks/labels.
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4. The Plaintiff's predecessor in title, Samex Agency,
applied under Section 23(2) of the Trade Mark Act, 1999 for
registration of various trademarks including trademark No. 3121337
dated 9th December 2015 being (Exhibit B at page 120 of the Plaint)
being "Emperor Akbar Green Cardamom" label / trade dress. The
trade mark "Emperor Akbar Green Cardamom" label / trade dress is
also an original artistic work. Samex Agency upon its conversion had
assigned and transferred the trade marks including trade mark no.
3121337 dated 9th December 2015 to the Plaintiff. The Plaintiff has
also registered or applied for registration of its trade marks in various
countries. In addition to registration of trade mark "Emperor Akbar
Green Cardamom" label / trade dress, the Plaintiff as the owner of
the original artistic work depicted as a trade mark registered as trade
mark no. 3121337 is also a copyright holder of the same within the
meaning of Section 14 of the Copyright Act, 1957.
5. In view of registrations of Trade Mark at Exhibit - "B" of
the Plaint more particularly trade mark no. 3121337 in respect of
trade mark "Emperor Akbar Green Cardamom" label / trade dress,
the Plaintiff has exclusive right to the said trademark and is entitled
to the rights conferred under Section 28 of Trade Marks Act.
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6. Apart from the registered trade mark no. 3121337 which
is combination of colours purple, white and gold and other non
function design elements, the Plaintiff also uses other labels/packing
for its packaged cardamom brand "Emperor Akbar Green Cardamom"
in different colour combination which are as under:-
(a) "Emperor Akbar Cardamom Red grade" which is
combination of red, white and gold and other non function design
elements.
(b) "Emperor Akbar Cardamom Orange grade" which is
combination of Orange , white and gold and other non function
design elements.
(c) "Emperor Akbar Cardamom Green grade" which is
combination of Green, white and gold and other non function
design elements.
(d) "Emperor Akbar Cardamom Pink grade" which is
combination of pink, white and gold and other non function
design elements.
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The unique packaging of the goods of the Plaintiff, combination of
colours, distinct shape, size, texture and graphics of the packaging
has given the Plaintiff's trade marks "Emperor Akbar Green
Cardamom" labels or trade dress a unique identity and exclusive
association with the Plaintiff. The Plaintiff's product sold with the
said labels/ trade dress have become a flagship brand of the
Plaintiff.
7. The Plaintiff uses distinct packaging for its packaged
cardamom brand depending on the size/diameter of cardamom. The
Plaintiff's packaging although have a common design elements, the
predominant colour of packaging is changed to denote the size and
quality of cardamom. For example, instead of predominant colour
purple, the Plaintiff uses colour red or orange or green or pink on its
packages. Although the other packages described above are not
registered as a trade mark, they constitute a distinct label mark and
an original artistic work and enjoy protection under the Copyright
Act, 1957. The Plaintiff claims ownership of copyright in the distinct
artistic work in the other packaging as described above.
8. The Plaintiff claims to have become a market leader in
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packaged branded Indian green cardamom. The packaged branded
green cardamom of the Plaintiff sold with the registered trade mark
as well as un-registered mark "Emperor Akbar Green Cardamom" and
various labels/ trade dress in different colour combination are
extremely popular in India and world over. The products of the
Plaintiff are exported all over the world, particularly North American
and Middle Eastern countries such as the USA, U.A.E., Saudi Arabia,
Oman etc.
9. The Plaintiff's product sold under the trade marks/brand
name "Emperor Akbar Green Cardamom" with distinct labels/ trade
dress is also registered with the Spice Board, constituted by Ministry
of Commerce & Industry, Government of India for promotion
particularly export of Indian Spices. The Spice Board encourages
Indian Spice Traders to promote their brands in India as well as
abroad. The Spice Board undertakes various promotional programs
for promotion of Indian Brands of Spices and the Plaintiff has
participated in various promotion events organised by the Spice
Board. The Plaintiff registered its Brand "Emperor Akbar" and its
unique packaging/label with Spice Board in the year 2008. The
registration granted to the Plaintiff by the Spice Board dated 17 th
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December 2008 is annexed as Exhibit-D to the Plaint. The Spice
Board has also awarded the Plaintiff the award of topmost exporter
of cardamom from India for the years 2018-19 and 2019-20. The
Plaintiff has been issued with various certifications including ISO
220000:2018 for food safety management systems.
10. The Plaintiff has been promoting its trademarks and the
labels on various platforms such as print, social media etc. The
Plaintiff in order to protect its trade mark has also issued public
notices in the newspapers to create awareness about its
trademarks/labels. The Plaintiff promotes its trade marks/labels on
video streaming platforms such as YouTube and social media
website/applications such as Facebook, Instagram, etc. the details of
which are given in paragraphs 10 & 11 of the Plaint.
11. The Plaintiff heavily promotes its packaged cardamom
with the trade marks/labels by participating in various national and
international exhibitions and events for promoting and marketing of
the goods. The Plaintiff has produced photographs of events in which
the Plaintiff participated for the purposes of promoting and
marketing its packaged cardamom and its brand name "Emperor
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Akbar Green Cardamom" with the labels and the trade dress.
12. The Plaintiff's turnover of the sales of Emperor Akbar
Natural Green Cardamom under various trademarks/labels sold F.Y.
2021-22 was Rs.294.46 crores. The sales turnover from the Financial
Year 2017-18 to F.Y. 2021-22 ranges between Rs.94 crores to Rs.294
crores. The Plaintiff also spent substantial amounts towards
advertisement, marketing, sale, promotion expenses. The Plaintiff
claims that they have spent Rs.1.20 crores (approx.) for F.Y. 2019-20,
Rs.0.63 crores (approx.) for F.Y. 2020-21 and 0.55 crores (approx.)
for F.Y. 2021-22.
13. The Plaintiff states that the Defendant was associated
with the Plaintiff from May 2021 upto February 2023. The Defendant
supplied cardamom to the Plaintiff in huge quantities. The Defendant
regularly visited the Plaintiff's warehouses and facilities. The
Defendant was well acquainted and familiar with the trade marks of
the Plaintiff and packaging of the Plaintiff's products including the
labels/ trade dress registered as trade mark no. 3121337 and other
labels/trade dress. The Defendant was also aware of the colour
coding used by the Plaintiff for grading of the product by the size and
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shape of cardamom pods.
14. The Plaintiff states that sometime towards the end of
February 2023, the Plaintiff was informed that the Defendant had
adopted a deceptively similar label / trade dress for packing of its
products under the brand name "Mubarak Green Cardamom". As the
Plaintiff and the Defendant had association, the Plaintiff confronted
the Defendant and called upon the Defendant to cease and desist and
refrain from using deceptively similar labels / trade dress/packing
which also constituted infringement and passing off of its trade mark
bearing trade mark No. 3121337 and other unregistered labels /
trade dress/packing. Despite the overwhelming similarity between
the Plaintiff's trade marks, labels, trade dress and the Defendant's
labels, more particularly packaging of its products sold under the
brand name "Mubarak Green Cardamom", the Plaintiff claims that
the Defendant brazenly continued to sell its products. The Plaintiff
also issued a cease and desist Notice dated 26 th March 2023 to the
Defendant. The Defendant replied to the Notice dated 26 th March
2023 through his Advocate's letter dated 13th April 2023 and denied
the allegations.
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15. The Plaintiff submits that the overall similarity between
the Plaintiff's trademark No. 3121337 and other unregistered labels /
trade dress/packing and Defendant's packaging of its product with
the brand name Mubarak Green Cardamom is quite stark. If the
Plaintiff's product with the brand name "Emperor Akbar Green
Cardamom" and the Defendant's product "Mubarak Green
Cardamom" are placed side by side, it is extremely difficult to
distinguish between them. An ordinary customer is bound to get
confused as to the source of the product on account of similarity
between the packaging of Plaintiff's product and the Defendant's
product having regard to particular colour combination, design,
texture and shape of the packaging. Apart from imitating the
registered trademark No. 3121337, the Defendant has also imitated
the other labels of the Plaintiff. The Defendant has slavishly adopted
identical/deceptively similar packaging and is packaging its
cardamom in green, red, pink colours with similar or identical design
and colour combination.
16. The Plaintiff has submitted that the actions of the
Defendant more particularly adopting deceptively similar colour
combination, packaging, design elements in the similar order on
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packaging clearly show the malafides on part of the Defendant.
Considering the association of the Defendant with the Plaintiff, the
adoption of the near and deceptively similar trade dress and/or
packaging by the Defendant clearly indicate that the adoption by the
Defendant is not honest and has been done with a view to ride on the
goodwill and reputation of the Plaintiff and/or cause confusion
amongst the purchasers as to the source of the goods. The Plaintiff
being an establish market leader not only in India but world over for
packets Indian Green Cardamom has build market reputation. It is
apparent that the packages of the Defendant are inspired by the
packages of the Plaintiff and are nothing but slavish imitation of the
Plaintiff's registered marks, labels and the packaging.
17. It is submitted on behalf of the Plaintiff that although the
brand names of the products of the Plaintiff and the Defendant i.e.
"Emperor Akbar Green Cardamom" and "Mubarak Green Cardamom"
bear no similarity, the adoption of trade dress, get up, with three
bock design and photo of cardamom in the circle, the golden design
round circle, colour combination, transparent element on sides of the
packing, over all layout of the Defendant's packaging makes the
product of the Defendant deceptively similar to the Plaintiff's trade
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mark. The trade dress and label adopted by the Defendant is nothing
but a slavish copy of the Plaintiff's registered trademark No. 3121337
and the other unregistered labels. A bare comparison of the products
of the Plaintiff and the products of the Defendant gives a distinct
impression that the products of the Defendant is associated with the
Plaintiff or is a product of the Plaintiff or creates confusion over the
source of the products. There is overall visual similarity between the
labels / trade dress of Plaintiff's product and that of the Defendant.
18. Mr. Akshay Patil, the learned Counsel appearing for the
Applicant / Plaintiff has submitted that in determining the similarity
between labels / trade dress of the Plaintiff's product and that of the
Defendant this Court has laid down the principles for such
comparison and relevant decision to be noted is, Sopariwalla Exports
& Ors. Vs. Kuber Khaini Pvt. Ltd.1. In that case, the Plaintiff had
alleged that the Defendants were infringing Plaintiff's registered
trademark 'Afzal' by using a label deceptively similar to that of the
Plaintiff although the trade mark of the Defendant was 'Kuber'. The
Plaintiff had submitted that the trade mark / label which was used by
the Defendants was deceptively similar to the registered trade mark /
1 2012 (15) PTC 348.
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label of the Plaintiff. A similar contention has been raised by the
Defendants in that case as in the present case viz. that since the
Plaintiffs trade mark features the word 'Kuber', there is no question of
infringement of the Plaintiff's trade mark. This Court upon
comparing the rival trade mark came to the conclusion that the
Defendant was infringing the trade mark of the Plaintiff. He has
placed specific reliance upon paragraphs 15, 17 and 18 of the said
decision.
19. Mr. Patil has also placed reliance upon the decision of the
Delhi High Court in Colgate Palmolive Co. and Anr. Vs. Anchor
Health and Beauty Care Pvt. Ltd. 2 at paragraphs 53 to 63, He has also
placed reliance upon the decision of this Court in Sanjay Soya Private
Ltd. Vs. Narayan Trading Company3, paragraphs 2, 62 and 63. He has
submitted that the Plaintiff's case is on a stronger footing as one of
the trade dress / label of the Plaintiff is registered as a trade mark
and all that the Plaintiff had to point out is that the mark / product
of the Defendant is deceptively similar to the Plaintiff's registered
trade mark.
2 2003 SCC OnLine Del 1005/2003(27) PTC 478.
3 2021 SCC OnLine Bom 407.
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20. Mr. Patil has submitted that it is absolutely just and
necessary that an interim order be passed restraining the Defendant
from infringing Plaintiff's registered trade mark 'Emperor Akbar
Green Cardamom' label / trade dress. He has submitted that the
Defendants dishonest conduct and fraudulent motive behind
adoption of the trade dress, more particularly, the past association
between the Plaintiff and Defendant, the Plaintiff apprehends that
the Defendant would remove the existing stocks of impugned goods
bearing impugned trade mark / labels from its factory / premises /
go downs etc. and dump or flood the market with the impugned
goods bearing impugned trade marks in the market with a view to
cause further losses to the Plaintiff. He has accordingly sought for
relief in the Interim Application to be granted.
21. Mr. Subhradeep Banerjee, the learned Counsel for the
Defendant has submitted that the Defendant's father's name is
Mubarak and therefore the Defendant adopted the name "Mubarak
Green Cardamom".
22. Mr. Banerjee has submitted that the color combination
adopted by the Defendant is a grading mechanism to filter the
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cardamom as per the size and industry standard. He has submitted
that a colour combination is functional aspect and no person can
claim exclusivity over the same. The trade dress will survive with the
trade mark and the trademark and the color combination must go
hand in hand to establish a case of infringement and / or passing off.
Without the tradename the colour combination will not survive.
23. Mr. Banerjee has submitted that the Defendant has been
in the spice business for the past three generations. The Defendant's
business model was to sell the spices in loose packaging to the
vendors at wholesale prices, primarily in Tamil Nadu and in different
states in India. From 2019 and 2000, the Defendant started the
business by supplying cardamom and black pepper to various retail
shop owners in and around Tamil Nadu.
24. Mr. Banerjee has placed reliance upon the permissions /
licenses obtained by the Defendant to run its business operations. He
has submitted that on 15th July, 2021, the Defendant obtained a
valid dealer license bearing No. C.S./12976/663/2020 from the
Spices Board (Ministry of Commerce and Industries). The license was
valid till 31st August, 2023. The Defendant has applied for renewal
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of the said license on 18th July, 2023. He has also placed reliance
upon the Goods and Services Tax Identification No. (GSTIN)
Certificate bearing No.33CVPM1330DIZK issued under the GST Act,
2017 on 14th February, 2022. He has also placed reliance upon valid
license bearing No.12422022000514 obtained by the Defendant
under the FSSAI Act, 2006. The license is valid upto 13th October,
2027. He has further placed reliance upon the valid trade license
bearing No.122/2021/009/000062 obtained by the Defendant from
the Office of CUMBUM Municipality on 28th February, 2023. This
license is valid until 31st March, 2024.
25. Mr. Banerjee has submitted that the Defendant
commenced business operations and applied for a trademark by the
name and style of 'Mubarak Green Cardamom' bearing trademark
application No.580 0146 and claims to have been using this
trademark since 21st October, 2019.
26. Mr. Banerjee has submitted that the documents on record
unequivocally demonstrate that the Plaintiff has been purchasing
materials from the Defendant since 2021. The Defendant had
commenced the first commercial use of the trade name Mubarak
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packaging in 2023. Since the Plaintiff and Defendant are engaged in
similar business, it is impossible that the Plaintiff was unaware of the
Defendant's presence.
27. Mr. Banerjee has submitted that the Defendant's business
was a family business and was named after his father, Mubarak. The
Defendant has been engaged in this business for the last three
generations and has broad customer base throughout Tamil Nadu
and other states in India. The Defendant has a good clientele because
of the quality of their goods.
28. Mr. Banerjee has submitted that the Defendant's mark is
entirely different and does not infringe the Plaintiff trademark. He
has submitted that there is no monopoly over a colour combination.
He has drawn comparison between the 'Emperor Akbar' and
'Mubarak Green Cardamom', in order to show the difference between
two marks which is as follows:-
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Sr No. Detail Mark Difference
1. Logo Mubarak is Emperor Akbar is accompanied by
accompanied by green green Alleppey cardamom.
cardamom; logos in
golden letters are the
trademark.
2. Package Cut to open Ziplock packaging
3. Flower A picture of a flower A stylish grey vine with gold leaves
below the word on a white background where Akbar
Mubarak appears in the center, and the
emperor is shown in small font
above the word Akbar.
4. Slogan The slogan for the The slogan used his enriching life
picture of cardamom is goodness.
taste and smell of
luxury
5. Embossing The slogan is encircled The slogan is encircled with the
with a device of device cardamom with a golden
cardamom with an ribbon.
artistic work of golden
stripe lines, and the
word premium quality
is imposed on the top of
the golden ribbon.
6. Logo Below the word Below the phrase Akbar, there is a
Mubarak, there is a golden logo of an emperor sitting on
golden logo of a sea a horse surrounded by soldiers.
trader
7. Background The logo, the mark, and The whole mark is on a white
the packaging are background bordering purple on
printed on a white both sides.
background caricatured
as a mosque dome.
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29. Mr. Banerjee has distinguished the judgments of the
Plaintiff on the ground that it is a settled position of law that a
trademark has to be looked at as a whole and not under a
microscope. He has submitted that the Plaintiff has relied upon the
judgments to show that only similarity between the Plaintiff's goods
is that of colour (which is incorrect). He has submitted that the
Plaintiff's trade mark is not phonetically, visually or in any manner
similar to that of the Defendant's mark.
30. Mr. Banerjee has placed reliance upon the decisions of
the Delhi High Court in Colgate Palmolive Company Ltd. and Anr. Vs.
Patel and Anr.4 and decision of the Privy Council in Cadbury
Schweppes Pty Ltd. and Ors. Vs. Pub Squash Co. Pty Ltd.5.
31. Mr. Banerjee has submitted that in Colgate Palmolive Vs.
Patel and Anr. (Supra), the Court determined the colour combination
alone, such as the red and white used by Colgate, could not be
monopolised, and exclusive rights granted. He has submitted that in
that case while a registered trade mark like 'Colgate' explicitly
written on a coloured background is protected, the colours are
4 2005 SCC OnLine Del.1439 equivalent (2005) 31 PTC 583.
5 (1981) 1 ALL ER 213
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considered generic and shared in the toothpaste industry. He has
submitted that this decision supports the Defendant's argument that
using the colour scheme is not infringement, as it is a functional
industry standard for grading cardamom. He has in particular placed
reliance upon paragraph 50 and 51 of the said decision.
32. Mr. Banerjee has also referred to the facts of the case in
Cadbury Schweppes (Supra) where the focus was on advertising
campaigns and their potential to cause confusion or deception in the
market. He has submitted that the Court emphasised that while a
company can build goodwill through advertising, it does not
automatically grant exclusive rights to descriptive elements like
slogans or visual images. The Plaintiff must prove that the
explanatory material has become uniquely associated with the
product and that the Defendant's actions have caused confusion or
deception among consumers. He has submitted that this is relevant to
the current case as the Defendant argues that Plaintiff's claims of
exclusivity over a colour combination are unfounded and that there is
no evidence of consumer confusion between the two products. He
has placed reliance upon paragraphs 222 and 223 of the Cadbury
Schweppes (Supra).
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33. Mr. Banerjee has accordingly submitted that the
Defendant's trade mark is valid, predating the alleged infringement
and the colour combination serves a functional purpose in the
industry. He has submitted that the Plaintiff's delay in action and
prior knowledge of the Defendant's product weaken their claims of
exclusivity. He has submitted that trademarks' visual and phonetic
dissimilarity and the colour combination's functional nature suggest
that consumer confusion is unlikely. He has submitted that the
Interim Application filed by the Plaintiff be dismissed with costs and
allow the Defendant to continue his legitimate business operations
without hindrance.
34. Having considered the submissions, in my view the
Plaintiff has established that it has a secured registration in respect of
'Emperor Akbar Green Cardamom' label vide trademark No.3121337
dated 9th December, 2015. The Plaintiff has produced several
documents annexed to the Plaint, which prima facie establishes that
the Plaintiff's registered trade mark / label / trade dress has gained
immense goodwill and reputation and exclusivity and deserves
protection from infringement. The Plaintiff has also other similar
labels "Emperor Akbar Cardamom Red grade", "Emperor Akbar
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Cardamom Orange grade", "Emperor Akbar Cardamom Green grade"
and "Emperor Akbar Cardamom Pink grade" which are in the market
for many years and enjoy substantial goodwill and reputation. The
aforementioned labels also constitute original artistic work and enjoy
protection under the Copyright Act, 1957.
35. The Defendant claims to have been in the spice business
for the last three generations. However, it is necessary to note that
the Defendant adopted the impugned trademark and packaging
sometime in February, 2023. The Defendant has itself admitted that it
had applied for registration of the device mark "Mubarak Green
Cardamom" on 9th February, 2023. The licenses which have been
relied upon by the Defendant are FSSAI license and GST registrations
which are of recent origin i.e. in the year 2022. The Defendants
registration with the Spice Board is of year 2021 i.e. 15th July, 2021
that is after the Defendant's association with the Plaintiff. What is
relevant to note is that the Defendant had an association with the
Plaintiff from May, 2021 upto February, 2023 as the Defendant
supplied Cardamom to the Plaintiff in huge quantities. During that
period there were regular visits by the Defendant to the Plaintiff's
warehouse and facilities. Thus, the Defendant was well acquainted
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and familiar with the trade marks of the Plaintiff and packaging of
the Plaintiff's products including labels / trade dress registered as
trade mark No.3121337 and other labels / trade dress. The
Defendant is also aware of the colour coding used by the Plaintiff for
grading of the product by size and shape of cardamom pods.
36. The Defendant in its Affidavit in Reply claims that the
total sales of products with impugned packaging referred as
'Premium New Packing namely 'Mubarak Green Cardamom' from
15th May, 2023 to 22nd May, 2023 was approximately 37.50 kgs of
Rs.68,907/-. The Defendant had been issued a cease and desist
notice and thereafter was not selling the products with the impugned
packing from June 2023. It is relevant to note that though the
Defendants have claimed substantial turnover, the turnover is not of
the goods sold by the Defendant through the impugned packaging.
This is borne out from the invoices produced by the Defendants for
the year 2019 - 2020 at Exhibit 'F' of the Affidavit in Reply. Thus, it is
evident that the Defendant has adopted impugned packaging some
time after February, 2023.
37. It is relevant to consider in the present case as to
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whether the impugned trade mark of the Defendant's Mubarak Green
Cardamom and other packing are deceptively similar to that of the
Plaintiff's registered mark, other labels and the artistic work in the
other labels of the Plaintiff. A comparison of the Plaintiff's product
with its trademark and the Defendants product with its label / trade
dress is reproduced as below:-
Plaintiff's Trade Mark Defendant's impugned
product/Trade Mark
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38. I prima facie find from such comparison of the rival
marks that the trade marks of the Defendant are conceptually similar
to the trade marks of the Plaintiff. The broad and salient features of
the both marks are three block design use of three colours. The
colour combination in both sets of trade marks are similar. The
artwork in both sets of trade marks is in gold colour and bears
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similarity. The Defendant has used the colour combination with
cardamom in a circle at centre of the package in the impugned trade
marks which is also identical with that of the Plaintiff's trade mark.
Further, the Plaintiff's use of the words "Natural Green Indian
Cardomom" which has been adopted by the Defendant in its
impugned trademark. Further, I prima facie find that even the side
view of the packages is similar as it consists of clear transparent
material through which cardamom can be seen. However, in the
middle of the sides of the packages there is a white colour design in
which the brand name of the Plaintiff and the brand name of the
Defendant are written.
39. The decision relied upon by the Plaintiff viz. Sopariwalla
Exports & Ors. (Supra) is factually similar to that of the present case.
The Plaintiff in that case had a registered trade mark 'Afzal' which
was held to be infringed by the Defendants trade mark 'Kuber' as the
trade mark / label used by the Defendant was held to be deceptively
similar to the Plaintiff's registered trade mark / label. This Court had
arrived at the decision after comparing the trade marks and had
found that the Defendant was infringing the trade mark of the
Plaintiff. I further find that the other cases relied upon by the Plaintiff
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viz. Colgate Palmolive Co. and Anr. (Supra) and Sanjay Soya Pvt. Ltd.
(Supra) assist the Plaintiff. Infact the Plaintiff case is on stronger
footing as the Plaintiff's trade dress / label is registered as a trade
mark and all that the Plaintiff has to point out is that the mark /
product of the Defendant is deceptively similar to the Plaintiffs
registered trade mark.
40. The decision of the Delhi High Court in Colgate
Palmolive Co. Vs. Patel & Anr. (Supra) and Privy Council in Cadbury
Schweppes Pty Ltd. & Ors. (Supra) on which reliance has been placed
by the Defendant are clearly distinguishable on facts. In the case of
Cadbury Schweppes Pty Ltd. (Supra) the Privy Council after
comparing the rival trade marks came to the conclusion that
Respondent had sufficiently distinguished its goods from those of the
Appellants, although the Respondent had deliberately taken
advantage of the Appellant's advertisement campaign. In Colgate
Palmolive Co. (Supra), the Delhi High Court has held that no one
could claim monopoly over colours or colour scheme. This is not the
contention of the Plaintiff in the present case as they are not claiming
monopoly on colour or colours schemes. It is infact the trade dress
which the Plaintiff has claimed has been infringed by the Defendants'
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impugned trade dress / label as can be seen from a comparison
which is reproduced above. Further, there is similarity between the
packing of the products of the Plaintiff and that of the Defendants.
41. It is well settled that in comparing rival trade marks, a
microscopic examination is not permissible and what is relevant are
broad and salient features. I do not find merit in the contention on
behalf of the Defendant that colour coding packing as adopted by
them is a grading mechanism to filter the cardamom as per size and
is an industry standard which is sought to be prevented. In the
present case the Plaintiff is not preventing the Defendant from
adopting colour code packing as long as the packaging is not
deceptively similar to the registered trade mark and or does not
constitute passing off.
42. I prima facie find that the Defendants' adoption of the
impugned mark is dishonest, considering that the Defendant was
supplier of the Plaintiff from March, 2021 to February, 2023 and fully
aware of the Plaintiff's registered mark. Thus, the similarity between
the rival marks cannot be termed as coincidence and prima facie I
find there to be a fraudulent motive of the Defendant in adopting the
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impugned mark / trade dress / label.
43. I thus find that the Plaintiff has made out strong prima
facie case for grant of interim relief sought for in the Application,
particularly in view of protection of the Plaintiffs' statutory right to
exclusivity of its registered trade mark. The balance of convenience is
also in favour of the Plaintiff and that the Plaintiff is likely to suffer
irreparable injury in the event the relief sought for in the Interim
Application is not granted.
44. Interim relief is granted in terms of prayer Clauses (a)
and (b) of the Interim Application, which read thus:-
(a) that pending the hearing and final disposal of the
suit, the Defendant by himself and/or his
subsidiaries/sister concerns, distributors, dealers,
affiliates, agents, stockists, dealers, franchisees,
licensees, assigns, predecessors and all persons claiming
through or acting on his behalf be restrained by a
temporary order and injunction from this Hon'ble Court
from infringing the said Trade Marks of the Plaintiff's by
using the impugned Trade Mark which is identical with
and/or deceptively similar and/or closely similar to the
said Trade Marks of the Plaintiff;
(b) that pending the hearing and final disposal of the
present suit, the Defendant be ordered and directed to
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disclose on an affidavit the quantity of goods/ quantum
of sales made by the Defendant of the impugned goods
bearing the impugned Trade Mark and deposit the same
in the Court and also disclose the details of the whole-
sellers, traders, distributors, stockists of the impugned
goods, the sale and purchase data, books of accounts,
ledgers, sales bill, invoices, purchase orders;"
45. The Interim Application is accordingly disposed of. There
shall be no order as to costs.
[ R.I. CHAGLA J. ]
