Mrs. Mohinder Kaur vs G.M. Cosmetics And Ors.
2003 Latest Caselaw 279 Del

JUDGMENT

J.D. Kapoor, J.

1. Plaintiff claims to be proprietor and user of trade mark VI- JOHN in respect of cosmetics, bleaching preparations, perfumery, polishing soap, Hair lotions and dentifrices etc. Though she has been using this trade mark since 1961 but got it registered on 27.3.1986 under No. 451633 in class 3. For the purpose of packing the aforesaid articles, the plaintiff claims to have adopted artistic cartons & tube having unique/original artistic get up, colour combination, lay out and arrangement. These were conceived and designed and created by Mr. Anil Shrivastav for M/s. Divya Arts who is an artist, some time in the year 1985 for and on behalf of plaintiff for valuable consideration. The specimen of the carton is Annexure A and the specimen of the tube and shaving cream is Annexure B. The distinguishing features of the carton and the artistic design, lay out and colour combination are as under:-

(i) There is a combination of Blue and White colour and strip in Grey colour; (ii) There is a distinct style of writing VI-JOHN on all the three sides of the carton and (iii) placement of various descriptive and essential features of the product on the carton and logo etc.

2. One of the articles namely shaving cream being sold under the trade mark since 1985-1986 has fetched Rs.1,81,74,542/-. The defendants are also engaged in the manufacture and sale of shaving cream. The trademark adopted by the defendants is VI-JONE in respect of shaving cream. The carton and the tube used by the defendants has identical colour combination, writing style, get up and lay out. It is alleged that the defendants have adopted the identical trademark, carton, and tube while keeping in mind the plaintiff's trade mark, artistic carton, tube and their reputation in the minds of purchasing public with a difference in spelling of word "JOHN". Word "JONE" though sounds alike and for the unwary customers looks alike. Defendants have adopted the identical carton as well as tube. The use of the trademark came to the notice of plaintiff some time in the month of November, 1999. Hence the present suit.

3. Summons of the suit were duly served upon the defendants but they did not contest the claims of the plaintiff and allowed themselves to be proceeded ex-parte. Plaintiff has filed affidavit by way of evidence and has produced the following documents:-

(i) Exhibit P-1 is the power of attorney executed by the plaintiff in favor of Mr. Bhupinder Singh; (ii) Exhibit P-2 is the copy of registration certificate dated 27.3.1986 in class 3; (iii) Exhibit P-3 is the copy of order allowing the recordal of change in constitution of the plaintiff's firm in Trade Marks Registry; (iv) Exhibits P-4 and P-5 are the specimen of the carton and tube published in the year 1985; (v) Exhibit P-6 is the photo copy of the assignment deed dated 6th January, 1985; (vi) Exhibits P-7 to P-7/50 are the specimen of sales bills/invoices in respect of sale of shaving cream; (vii) Exhibits P-8 is the copy of the letter dated 7.11.2000 whereby the defendants started making false claims to be the proprietor of said products after the institution of the suit; (viii) Exhibit P-9 is the legal notice dated 17.11.2000; and (ix) Exhibits P-10 and P-11 are the spicemen of the defendants impugned carton and tube.

4. The affidavit and the aforesaid documents conclusively prove that the plaintiff has been in the business of manufacturing shaving cream and other cosmetics since 1961 but got the trade mark VI-JOHN registered in the year 1985 and has been in continuous use thereof till date. The sales figures furnished by the plaintiff show that she has over the period established a goodwill and reputation in respect of shaving cream. By virtue of registration as well as prior user of the trademark, plaintiff has right to protect her trademark

5. If any person adopts a deceptively similar trademark and copies its colour combination, get up, lay out, he commits an offence of infringement of trade mark as well as copy right. The artistic work itself involves intense intellectual process and therefore becomes a property of the person who obtains service of artists for inventing lay out, colour combination, writing style of the carton as well as container.

6. The fundamental criteria to determine infringement of a trademark is that the adoption of trademark by infringing party should have near or deceptive similarity not only in look but also in sound and it is not the intelligent customers who is the determining factor it is the illiterate and unwary customers and gullible purchasers who determine the similarity in look and sound. In the instant case, not only the word `JONE' looks alike but also sounds alike. Similarly the colour combination, get up, lay out and the writing style gives a glimpse of akinness even to a person of reasonable prudence what to talk of unwary customers. A person adopts other's trade mark in order to cash upon the reputation and goodwill of its prior user. The goodwill and reputation is not established in a day. It is established over a period of years and at the huge expense of advertisements through electrononic media as well as printing media. No person can be allowed to become unjust rich and thrive upon the name and reputation of other's trademark.

7. The trademark adopted by the defendants in the instant case coupled with the copying of carton, colour combination, lay out and get up as well as containers is bound to create confusion in the minds of the customers as to the source and origin. Defendants by using the trademark of the plaintiff are passing off their goods and business as those of plaintiff's goods.

8. This being the position of law, plaintiff has succeeded in making out a case of infringement of her trade mark in question VI-JOHN and copy right as to distinctive colour combination, lay out and get up of packing carton and tube. Since this act of defendants amounts to infringement of the trademark and copyright and is an offence of passing off as the defendants have tried to pass off his goods as those of the plaintiff, suit is decreed in terms of prayers (i), (ii) and (iii) of para 29 of the amended plaint as the remaining prayers have been given up by the counsel for plaintiff. Decree sheet be drawn up accordingly.