Horlicks Limited And Ors. vs Kartick Sadhukan
2002 Latest Caselaw 567 Del

JUDGMENT

B.N.Chattirvedi, J.

1. HORLICKS Limited, Plaintiff No. 1, a foreign company, is engaged in manufacture of a wide range of energy boosting food products, including foods for infants, children and invalids, malted milk, biscuits, toffees, etc. under the trademark HORLICKS, of which it claims to be the proprietor. The trademark 'HORLICKS' was registered in India in relation to foods for infants, children and invalids as well as mailed milk way back in 1943, for biscuits in 1961 and in respect of toffees in 1966.

2. The plaintiff No. 3, manufactures and markets products under the trade mark 'HORLICKS' in India with the express authorization of plaintiff No. 2. Plaintiff No. 2, is the licensee of the said trade mark by virtue of a Trademark License Agreement dated 3rd February, 1997, executed in its favor by plaintiff No. 1, permitting plaintiff No. 2 to authorise use of the trade mark upon the "contract products".

3. Plaintiff No. 3 is alleged to be the owner of copyright to the artistic work in the HORLICKS label upon which the sun/milk/wheal device is depicted and is exclusively entitled to reproduce the colour scheme, get up, lay-out and the arrangement of features of the HORLICKS label in any material form. By virtue of prior adoption, use and registration of the trade mark HORLICKS and long, continuous and extensive use thereof in India in respect of food products, the trademark is claimed to have attracted valuable goodwill and substantial reputation is attached to it.

4. The defendant, trading as Kartick Confectionery, is alleged to have started manufacturing a HORLICKS look-alike product, namely, toffees under the trademark HORLIKS in infringement of the said registered trademark. The defendant is also stated to have reproduced the plaintiffs' distinctive label which appears in white colour upon a blue background in a plain malted flavour packaging as well as the distinctive sun/miIk/wheat/device. The colour scheme and arrangement of features 'and get up of the plaintiffs' product packaging is pleaded to have been reproduced substantially by the defendant in respect of its own product packaging thereby amounting to the infringement of the copyright of plaintiff No. 3.

5. According to the plaintiffs the consumers of the product under the trademark HORLICKS include infants, children and adults and the products being meant for human consumption, it is the duty of the manufacturer to ensure that the quality and standard of the product meets the prescribed requirements under the law. The plaintiffs are said to be responsible for ensuring that the products under the trademark HORLICKS are made under their strict quality control in hygienic conditions to meet the high standards set by the plaintiffs for all their products. It is added that if the defendant is permitted to use the impugned trademark HORLIKS, which use is not authorised, permitted or licensed by the plaintiffs, the plaintiffs are at all times at a risk of facing the consequences of the defendant's conduct and unauthorised use. The plaintiffs arc said to be responsible for the public health and are bound to ensure that they do not permit counterfeiting or unlawful use of their trademarks which can lead to confusion and deception among buyers and result in harmful consequences to them. Accordingly the defendant is sought to be permanently restrained from infringing the plaintiffs' trademark HORLICKS and copyright in respect thereto.

6. The defendant failed to cause his appearance inspite of service and he was proceeded ex parte vide order dated 16.4.99.

7. The plaintiffs have produced their evidence in the form of an affidavit of one Sh. P.N. Haridas, Company Secretary of plaintiff No. 2 company, apart from relying on certain documents finding mention therein, to substantiate their claim.

8. I have heard the learned counsel for the plaintiffs.

9. The plaintiff No. 1 is found to be the proprietor of the trademark HORLICKS in respect of food for children, malted milk, biscuits and toffees, on account of its prior adoption, use and registration. In respect of toffees registration was done in India under No. 235582B in class 30 on 31.5.1966. The plaintiffs hold registration in other classes as well. The plaintiff No. 3 has spent substantial amounts on the advertisement of the product under the trademark HORLICKS. As a result the trademark HORLICKS is held to be a well known trademark in India and is singularly identifiable with the plaintiffs' and the quality assurance, which the plaintiffs' products stand for.

10. The use of the label and trademark HORLIKS by the defendant in respect of toffees is likely to cause confusion and deception particularly since the defendants have slavishly copied the trademark HORLICKS and also the colour scheme of the artistic layout of the plaintiffs' product. Ex. P. 6 represents the trade mark label being used by the plaintiffs. Ex P. 7 is the one being used by the defendant. Both the words are phonetically, structurally and visually similar. The plaintiffs1 plea that the defendant adopled the impugned trademark with dishonest and mala fide intention as the two competing trademarks are also semantically similar except the syllable 'C' of the plaintiffs mark cannot go unnoticed. A case of passing off is held established. The defendant is also shown to be infringing the plaintiffs' copyright in the artistic work of the HORLICKS label. The evidence on record substantiates the averment concerning infringement of trademark HORLICKS and copyright in HORLICKS label on the part of the defendant to encash on the reputation and goodwill of the plaintiffs by passing off his products as of plaintiffs.

11. In order to protect the proprietary interest of the plaintiffs, the suit is decreed ex parte with costs restraining the defendant, its partners or proprietor as the case may be, its officers, servants, agents and representatives ;

(a) from manufacturing and selling and offering for sale, advertising, directly or indirectly dealing in toffees or other related goods under the trademark HORLIKS or under any other mark which may be identical with or deceptively simi'ar to the plaintiffs' trademark HORLICKS, amounting to infringement of trademark registration No. 235582B;

(b) from reproducing, printing or publishing the label marked as Annexure B or any other label or packaging which is a colourable imitation or substantial reproduction of plaintiff No. 3's HORLICKS packaging marked as Annexure A and described in paragraph 8 of the plaint, amounting to infringement of copyright thereto ;

(c) from manufacturing and selling and offering for sale toffees under the trademark HORLIKS or any other mark which may be deceptively similar to plaintiff No. 1's trademark HORLICKS, get up with an arrangement of features, lay out, colour scheme etc. as described in paragraph 13 of the plaint or any other get up/arrangement of features which resembles the plaintiffs' HORLICKS product packaging in any manner whatsoever or doing any other thing so as to cause confusion or deception amounting to passing off of the goods and business of the defendant as and for those of the plaintiffs.

The suit is dismissed in respect of reliefs of delivery up and damages being given up.

A decree be drawn accordingly.