Camlin Private Limited vs National Pencil Industries
1988 Latest Caselaw 118 Del

JUDGMENT

C.L. Chandbry, J.

(1) The plaintiff has preferred this suit for permanent injunction restraining the defendants from manufacturing, selling offering for sale or dealing, in the pencils bearing the distinctive floral design, colour combination, lay out and arrangement of artistic features of the plaintiff's pencil Flora and from reproducing the floral design, colour combination, lay out and arrangement of artistic features of the cartons pertaining to the their Flora pencils and from doing any other thing as is likely to infringe the plaintiff's copyright in respect of its Flore pencil cartons and also restraining the defendants from maufacturing, selling or dealing in pencils under the trade mark Flore or any other mark as is identical to and/or deceptively similar with the trade mark Flora of the plaintiff.

(2) The case of the plaintiff as set up in the plaint, is that the plaintiff is one of the largest manufacturers of art and stationery materials and is exclusively marketing the goods of its manufacture for the last 40 years and one of the famous products of the plaintiff is its Camlin Flora pencils which are highly distinctive and are manufactured and sold in distinctive and artistic cartons since the year 1977. The distinctive features of plaintiff's Flora pencils are stated to be a colour combination of white, pink and green. The rear portion of the pencil has got two strips of white and green next to each other respectively. The floral design comprises of array of pink flowers with green leaf each on white background The trade mark Camlin Flora of the plaintiff appears on the rear portion of the pencil. Each flower has got a characteristic look about it and the arrangement of the leaf with the flower is unique. The distinctive and essential feature of the plaintiff's Flora pencil carton is also an array of pink flowers each with a green leaf arranged in rows appearing on the thin strips of white colour background on the two sides of the front panel of the said pencil carton. On account of extensive use Camlin Flora pencil and the carton have acquired a vast reputation as a high quality product originating exclusively from the plaintiff. The plaintiff claims to be the owner of the copyright in the floral design that appears on Camlin Flora and its cartons as it constitutes an original artistic work. The use, including the reproduction and publication of such floral pattern and arrangement on pencils and cartons by any other trader amounts to-infringement of the plaintiff's copyright in the said artistic work. The plaintiff also claims to have got copyright in the artistic logo script of the trade mark Flora as the same is an original artistic work.

(3) The defendants who arc alleged to be carrying on the business of manufacturing and selling of pencils have without the permission and consent and license of the plaintiff recently adopted pencils cartons and pertaining thereto that are identical to and/or deceptively similar with the plaintiff's Flora pencils and cartons. The defendants have also adopted a deceptively similar mark Flore to the trade mark Flora of the plaintiff in relation to three said pencils. The defendant's pencils comprise of colour combination of green, pink and white. The rear portion of the pencil consists of to strips of white and green colours next to each other respectively as on plaintiff's pencils. From thereon till the lead of the pencil there are floral designs as on plaintiff's pencil. The defendants have copied the plaintiff's pencil in toto and it is bound to cease confusion and and which demonstrates the malafides on the part of the defendants. The mala fides of the defendants is abundantly clear from the deliberate adoption of the mark Flore as the four letters namely Flor are common between the two trade marks and even the letter 'E' of the defendants' mark Flore is deceptively similar in logo script to the letter 'A'. The pencil of the plaintiff is known by the mark Flora and the floral on them in colour combination of pink, green and white. The adoption and use by the defendant No. I of its Flore pencil being a colourable reproduction of the plaintiff's Flora pencil amounts to infringement of the plaintiff's copyright in the said pencil. The adoption and use of the word Flore in respect of the pencils being deceptively similar to the plaintiff's trade mark Elora, phonetically as well as visually amounts to infringement of plaintiff's registered trade mark. The plaintiff has got an exclusive right under the law to the use of Camlin Flora pencils, the trade mark Flora and the cartons pertaining thereto and the floral pattern of the pencils. The plaintiff came to know in the month of April, 1935 about the unlawful adoption and use by the defendants of the trade mark Flore in relation to the pencils and despite various notices the defendants have not stopped the use. The plaintiff has suffered losses of the illegal trade activities of the defendants.

(4) The defendants are contesting the suit. The case of defendants is that the plaintiff has no cause of action against them as the trade mark Camlin Flora of the plaintiff and Tiger Flore of the defendants are absolutely different and distinct and there is no similarity between the two trade marks. The cartons of the defendants are quite distinct and different from the cartons of the plaintiff. The defendant's carton is substantially of parrot green colour while that of the plaintiff is border green colour. The defendants' carton possesses monogram of a tiger's head appearing in a circle while the monogram on the plaintiff's carton is that of pencil lead, which are absolutely different. The numerals appearing on the carton are also different. The flowers appearing on the defendant's carton are straight while on the carton of the plaintiff they are diagonal. The sizes of the carton also differ. The beginning word in the plaintiff's mark is Camlin while in the defendant's mark is TIGER. The two words are different in sound, vision, structure and idea and there is no room for any cosfusion. The purchasing public does not know what is the word 'FLORA' and they only know about the word 'CAMLIN'. The plaintiff cannot be said to have any right to the exclusive use of any design of flowers under the law. The plaintiff's pencils are known by Camlin in the market. The claim of the plaintiff to the exclusive right to use the pencil or carton has been denied. It has been denied that the plaintiff has exclusive right to use any floral design. The use of the trade mark Tiger Flore of the defendants does not constitute infringement of the registered trade mark Camlin Flora of the plaintiff. Between the two marks there is no similarity and the question of any confusion does not arise. There is no question of any loss to the plaintiff as the two trade mark and cartons Tiger Flore and Camlin Flora are absolutely deferent and distinct.

(5) The plaintiff has filed two applications being I.A. No. 3631/85 and 1850/87 seeking interim injunction. Besides repeating the allegations made in the plaint, it is asserted in the application that on account of the defendant's illegal trade activity the plaintiff has suffered losses both in its business as well as reputation. The loss to the plaintiff in reputation is incapable of being assessed in monetary terms. The plaintiff has a prima facie case. It will cause irreparable loss and injury to the plaintiff unless the defendant are restrained by an interim order.

(6) There is contest on behalf of the defendant to these applications. Besides relying upon the pleas in the written statement, it has been further stated in the replies that there is no question of any loss to the plaintiff as the two trade marks and cartons 'TIGER FLORE' and 'CAMLIN FLORA' are absolutely different and distinct. There is no scope of any confusion or deception. The plaintiff has no case at all much less a prima facie case. The balance of convenience is in favor of the defendant and the defendant would suffer irreparable loss and injury if they are restrained from using the impugned trade mark of -TIGER FLORE'.

(7) I have heard the counsel for the parties and gone through the record. The registered mark of the plaintiff is 'Camlin Flora'. In the plaint much emphasis is laid that the defendants have without the permission consent or license of the plaintiff recently adopted pencils and cartons pertaining thereto which are identical to and/or deceptively similar with the plaintiff's Flora Pencils. According to the plaintiff the words Flora and Flore are deceptively similar. On the other hand, the defendant's version is that their trade mark Tiger Flore is absolutely different and distinct. There appears to be no similarity between the two marks if both these marks are considered and compared as a whole. Principles of law which are applicable and relevant for comparing the two marks stand settled by various pronouncements of the Supreme Court. The following are the guidelines :- 1.The mark used by the person must be either identical with or deceptively similar to the registered trade mark ; 2. The question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide that question ; 3. In deciding the question of similarity between the two marks it has to be approached from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of idea in the two marks is reasonably likely to cause confusion between them. 4. In deciding the question of similarity between the two marks, the marks have to be considered as a whole.

(8) The plaintiff's mark is Camlin Flora while that of the defendant is Tiger Flore. I have carefully compared the two marks as a whole. I do not find any similarity or resemblance, phonetically or visually between the two marks. I also do not see any similarity of ideas in the two marks. No confusion is likely to be caused. The first word of the plaintiff's mark is Camlin while that of the defendant is Tiger and a buyer who has to purchase the plaintiff's pencil with Camlin mark cannot be confused or deceived to purchase defendant's pencil with Tiger mark.

(9) The learned counsel for the plaintiff wants me to read the word 'Flora' disjunctively from Camlin Flora to impress that there is similarity in the words 'Flora' and 'Flore'. I am afraid, I cannot accept the contention. The marks 'Camlin Flora' and 'Tiger Flore' are to be considered and compared as a whole. The other contention of the plaintiff is that the word 'Flora' is the distinctive and essential feature of the plaintiff's mark Camlion Flora. This contention is repudiated by the learned counsel for the defendant. The submission of the learned counsel for the defendant is that the distinctive and essential feature of the plaintiff's mark is Camlin and not Flora. The pencils of the plaintiff in the market are known as Camlin pencils and not as Flora pencils I have considered this aspect also. From the material placed on record I do not find that the word 'Flora' is distinctive and essential feature of the plaintiff's mark 'Camlin Flora'. The word 'Camlin' has been associated with the pencils of the plaintiff. It has acquired a reputation. This is also evident from the fact that the plaintiff has a number of registered marks of pencils such as camlin Sterling, Camlin Eagle, Camlin Star, Camlin Regent, Camlin Sarita, Camlin Flora and Camlin Regal.

(10) Looking from this angle too the contention of the plaintiff that 'Flora' and 'Flore' are deceptively similar has no force. The counsel for the plaintiff has relied upon a number of authorities in support of his contention i.e. . There-is no quarrel about the propositions of law decided in those authorities. In the matter of infringement of trade mark the decided cases are useful only so far as they lay down the principles of law. Each case has to be decided on its own facts. As already stated, I am of the considered opinion that the two marks are quite different and a person of average intelligence and imperfect recollection would not be confused or deceived by the two competing marks.

(11) The plaintiff has also claimed interim injunction on the basis of similarity of cartons used by the plaintiff as well as by the defendant. I have given my thoughtful consideration on this point. I have carefully examined both the cartons. In my opinion, they do not look alike and similar. There is vast difference between the two. There is difference in colour. Colour of the plaintiff's carton is dark green whereas the defendant's carton is of light green colour. Monogram on both the cartons are also different. The plaintiff's monogram is of a sharpened pencil in white rectangle against the background of a large black star. The monogram of the defendant is that of a tiger head in a white circle. The word 'Camlin' is in white ink whereas the word Tiger on the defendant's carton is in black ink. The word 'Flora' is artistically written in black ink, whereas the word 'Flore' is written in black ink with white shading. The carton of the plaintiff shows the product No. 11 "0 as compared to 1180 of the defendant. The flowers on both the cartons are dissimilar. The plaintiff's carton shows the words ''From the Makers of Camlin Art Material". The words used on the defendant's carton is "From the makers of Tiger Art Material". The general get up and the colour scheme of the two cartons is also not similar. A man of average intelligence and of imperfect recollection is not likely to be deceived or confused. In my opinion, there is no resemblance and similarity between the two cartons.

(12) It was next contended by the plaintiff that the defendant has, without its permission deliberately copied the distinctive features of the plaintiff's pencils, colour combination including lay out in older to ensure that the defendant's pencils are passed off as plaintiff's pencils. The defendant has refuted the allegations. I have compared and examined the two pencils which are the subject matter of dispute. In my opinion, both the pencils are quite similar in appearance There is a floral background consisting of little red flowers with green leaf. There are four petals of similar type on both the pencils. Shape of the flowers and colour is almost similar. Both the pencils have same type of green band at the end. In short, the two pencils look alike. These pencils are mostly purchased by small children. If a child is to buy a pencil of the plaintiff, he is bound to be confused by the two pencils. He would go by the colour combination rather than the mark written on it. Though the mark of the plaintiff's pencil is Camlin Flora and of the defendant's pencil is Tiger Flore. small children are not likely to make distinction between the two. It is also well known that such pencils are sold in small shops to children.

(13) A similar question came up before a Bench of this Court to which I was a party in deciding an interim application in R.F-A. No. 6/86. In similar circumstances it was observed as under :- "NOW we turn to the internal products in the cartons, which are pencils. Here again we find that the pencils are very similar in appearance. There is a floral background consisting of little red flowers with green leaves. These are minute in size. There are five petals in National Flora flowers and four petals in the Camlin Flora flowers otherwise these flowers look very similar. The colour is also similar and there is green band at the end of the pencil. In short the two pencils look alike. It was stated before us that if a child is to buy a pencil out of these two, he is bound to be confused between the two pencils. It is submitted that normally such pencils are sold in small shops to children. It is, therefore, suggested that we should pass an order restraining the manner in which the floral are to be printed by National Elora and it is suggested that Flora and Elora pencils should look different. This brings us to the question whether we can say that there is a monopoly or right to prevent similar looking pencil being sold by the respondent in its present form. As far as we know a monopoly may exist in a trade mark and it may sometime exist in design, or it may exist in a carton, but whether it exists in the actual product like a pencil is a different matter. . For instance if two manufacturers of cakes may make similar cakes, can they be asked to make cakes of different colours or shapes ? It is a different matter if some distinctive packing or name is copied; This question seems to be one of unique difficulty and we would refrain from expressing a view at the interim state. However, we think we .cannot prevent the use of the flowers on the pencils. All that we can do is to provide a minimum amount of identification between the two products This could be by a difference of colour between the two. Hence the minimum order we can pass at this stage is to restrain the green band on Elora pencils. We direct the respondent to use a blue circular band instead of green at the end of the pencil and thus the appellant will use a green band on the pencil and a green carton and the respondent would use a blue band and a blue carton. With these directions the Cm is disposed of.

(14) From the material placed on record, the plaintiff has been able to make out a prima facie case that the get up, colour combination and the floral arrangement of their pencils has become associated exclusively with their goods. These pencils have become distinctive of the plaintiff's goods, and these are understood by the trade and public as meaning 'that the goods are of the plaintiff's goods Reputation of the plaintiff in respect of these pencils also stands established on the record. It is clear that the defendant has exactly copied the floral arrangement, colour scheme and get up of the plaintiff's pencils. The resemblance between the two pencils is extremely close, so close that it can hardly occur except by deliberate imitation. Prima facie, I am of the view that the act of the defendant is not an honest one. The plaintiff has been able to establish a prima facie case for the grant of an interim injunction. In case the defendant is allowed to use its pencils in the same colour scheme and get up, the plaintiff is likely to suffer an injury. Balance of convenience is also in favor of the plaintiff because it is not known as to how much injury the plaintiff will suffer. Moreover, the defendant has exactly copied the salient features of the plaintiff's pencils. In the result, the application partly succeeds. The defendant is restrained from using the distinctive features of the plaintiff's pencils, namely, colour scheme, floral arrangement and general get up till the decision of the suit.