Bonny Products Pvt. Ltd vs Bonne Care Pvt Ltd
2009 Latest Caselaw 2212 Del

     *IN THE HIGH COURT OF DELHI AT NEW DELHI

+                    IA.No.811/2008 and CS(OS) 119/2008

%                                 Date of decision: 22nd May, 2009

BONNY PRODUCTS PVT. LTD.                                ....... Plaintiff
                            Through: Mr. Sudhir Chandra, Sr Advocate with
                                     Mr R.L. Dhawan and Mr Sanat Kumar,
                                     Advocates

                                   Versus

BONNE CARE PVT LTD                                    ....... Defendant
                            Through: Mr Gurvinder Singh and Mr Dhruva
                            Bhagat, Advocates.


CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

1.     Whether reporters of Local papers may
       be allowed to see the judgment?   Yes

2.     To be referred to the reporter or not? Yes

3.     Whether the judgment should be reported
       in the Digest?                        Yes


RAJIV SAHAI ENDLAW, J.

1. The suit has been filed for the relief of permanent injunction

restraining the infringement of the registered trademark TENDER

KARE, for restraining the defendant from passing off its same goods

as that of the plaintiff by using the mark TENDER CARE, for

restraining the defendant from infringing the copyright work of the

plaintiff on its cartons/packaging and for the ancillary reliefs of

delivery, damages and costs. Alongwith the plaint an application for

interim relief (IA No. 811/2008) restraining the infringement /

passing off has also been filed. Vide interim order (after notice)

dated 2nd May, 2008 the defendant was restrained from using the

trademark of the plaintiff or any trademark similar to the trademark

of the plaintiff.

2. The plaintiff is the registered proprietor of the trademark

TENDER KARE in class 10 in respect of the feeding bottles and

nipples. The plaintiff has filed the original certificate of registration

dated 24th December, 2005 of the said mark in the court. The said

certificate was issued pursuant to the application dated 18th May,

2004. The counsel for the defendant has also during the hearing not

controverted the registration in favour of the plaintiff.

3. The undisputed / uncontroverted facts are that the plaintiff and

the defendant though both private limited companies are

managed/controlled by persons who are closely related and who

were earlier carrying on business in partnership in the name and

style of M/s Bonny Products. The defendant has filed the photocopy

of a Retirement Deed dated 11th June, 1983 of the aforesaid

partnership and wherein the persons in control / management of the

plaintiff are described as the "continuing partners" and the persons

in control and management of the defendant are described as the

"retiring partners". The senior counsel for the plaintiff during the

hearing has not controverted the said document and in fact has also

referred to the same. The following clauses of the said Retirement

deed have been referred to during the hearing and/or are relevant.

"5. The Retiring Partners further agree that they shall not be entitled to any amount on account of the name and goodwill of the firm vesting in the continuing partners. However, as far as the trade mark "BONNE" is concerned the same shall vest in the partners to the deed and both the Retiring partners and the continuing partners will be entitled to use the same only in the territories assigned to them and mentioned in the subsequent clauses of this deed.

7. That the Retiring Partners have agreed that the Continuing Partners will be entitled to continue their business under the name and style of Bonny Products at

A-80, Group Industrial Area, Wazirpur, Delhi and/or at such other and further places as they choose.

8. That the continuing partners hereby agree that the retiring partners will be entitled to set up separate business under the name and style of Paul Brothers (Manufacturers) or any other name.

9. That the parties to the deed agree that the retiring partners will be entitled to manufacture and market the goods with the trade mark "BONNE" in the Union Territories of Delhi, Pondicherry and Goa, States of Haryana, Gujarat, Maharashtra, Andhra Pradesh, Tamil Nadu, Karnataka and Kerala.

10. That the parties agree that the continuing partners will be entitled to manufacture and market the goods with the trade mark "BONNE" in the States of Punjab, Union Territory of Chandigarh, Jammu & Kashmir, Himachal Pradesh, U.P., Rajasthan, Madhya Pradesh, Orissa, Bihar, West Bengal, Assam, Nagaland, Mizoram, Meghalaya and Tripura.

11. Notwithstanding the territories mentioned in the preceding paragraphs 9 and 10 above, the parties to this deed undertake that they shall not market their goods and/or caused to be marketed their goods in any brand name in the territories other than those granted to them under this Deed except that they shall be able to sell the goods to Baby Care Marketing company in Delhi. The restrictions imposed under clauses 9, 10 and 11 would be applicable to and govern the parties to the deed as well as any new concern/firm, now existing or intended to be formed or formed and/or incorporated and would cover also any new partner(s) who may join them and/or with whom they or any of them may join in business.

12. The restrictions mentioned in clauses 9, 10 and 11 would apply only to baby feeding bottles, nipples, soothers and/or any other products bearing the trade mark "Bonne". The Retiring Partners agree that the Continuing Partners will be entitled to have their Head Office and Sales Office in Delhi."

4. The case of the plaintiff is that after the Retirement Deed

dated 11th June, 1983 aforesaid the plaintiff and the defendant have

been carrying on business, inter alia, of manufacture and marketing

of the same goods i.e., baby nipples & Soothers, baby feeding bottles

and other allied products, both under the trademark BONNE but in

their respective territories in India in terms of the retirement deed

aforesaid. It is further the case of the plaintiff that the plaintiff in

the year 1995 introduced the liquid silicon injected technology in the

manufacture of the nipples and which is much advanced than the

technology hitherto used, vastly improving the product and making it

last longer and more hygienic, superior and tender. The plaintiff

claims to have commenced manufacturing the said superior goods

under the trademark TENDER KARE in conjunction with its

trademark BONNE (which, both, the persons in management of the

plaintiff as well as those in management and control of the defendant

in terms of the Retirement Deed aforesaid were entitled to use). It is

further the case of the plaintiff that the said new technology has

vastly improved its sales and the demand for the new product under

the trademark TENDER KARE has been galloping since then. Sales

figures thereof since 1998-1999 to 2006-2007 have been pleaded to

show the growing popularity of the new product. The plaintiff claims

to be using the trademark TENDER KARE regularly and continuously

since the year 1995. The plaintiff also claims to have

devised/created the artistic work, design, colour scheme, get up,

distinctive features and dress for the packaging of the said new

product, to make the same distinguishable to the customers. The

plaintiff has filed its cartons before this court and which were not

disputed by the counsel for the defendant during the hearing. The

said trade dress of the plaintiff is described in paras 17 to 21 of the

plaint. The same inter alia comprises of a white background with two

strips in maroon colour and a bigger strip at the bottom in green; it

has the mark TENDER CARE in bold blue colour with the words

"Liquid Silicone Nipple" underneath. The carton of the plaintiff also

prominently bears the words "Liquid Silicone Means Extra

Transparency Extra Tear Strength". The said carton besides

displaying the photograph of a Nipple in the centre, also have the

caricature of a bunny rabbit on the other side of the nipple. The

plaintiff claims copyright in the aforesaid artistic work of the

carton/trade dress.

5. The grievance of the plaintiff is that it came to its notice in

November, 2007 that the defendant had started using the trademark

TENDER CARE in respect of the same goods and was marketing its

goods in a carton / packaging under trade dress almost identical to

that of the plaintiff. The plaintiff has filed before the court the

carton of the defendant also and which was not disputed by the

counsel for the defendant during the hearing. The said carton is also

in white background with a green border and maroon colour stripes

with the words BONNE in red (as in that of plaintiff) and TENDER

CARE in blue colour. It also has the words "Liquid Silicone Nipple"

written in black colour (same as plaintiff) immediately under

TENDER CARE and has a similar photograph of a nipple in the

centre as in the carton of the plaintiff and with the words "Liquid

Silicone Means Extra Transparency Extra Tear Strength" on one side

and the caricature two instead of one bunny rabbit on the other side.

After seeing these two cartons, they leave no room for doubt of the

same having potential of deception and confusion. This was also not

controverted by the counsel for the defendant. The senior counsel for

the plaintiff has also urged that the said goods are marketed to all

cross sections of the society not necessarily educated and who will

definitely not be able to distinguish between the two cartons.

6. The only contention of the defendant is that under the

Retirement Deed aforesaid the territories in which the plaintiff and

the defendant can sell their same/identical goods have been

demarcated and both have been permitted to use the mark BONNE.

It is emphasized that the plaintiff, under the Retirement Deed is not

entitled to sell or market baby feeding bottles, nipples under any

brand name/mark other than BONNE also in the territories of the

defendant; thus, the plaintiff is not entitled to use the mark TENDER

KARE/copyright aforesaid with respect to these goods in territories

of the defendant. It is further the contention that the plaintiff has

wrongfully got the trademark TENDER KARE registered for the

entire country. It is argued that the plaintiff in terms of the

retirement deed aforesaid is entitled to sell the goods with respect

whereto the trademark has been got registered only in certain

territories and thus could have got the registration only for those

territories and not qua the territories in which under the Retirement

Deed the plaintiff is not entitled to sell the said goods and in which

the Defendant alone is entitled to sell the said goods. It is contended

that the registration of a trade mark need not necessarily be for the

entire country and can be territorial. It is further contended that

since the territories are restricted, the occasion for the parties being

entitled to sell market, advertise their goods in the territory of the

other and consequently of having a reputation in the territory of the

other does not arise; that the customers/buyers of the said goods

know in which territory which party is operating and thus the

question of the plaintiff restraining infringement of the trademark/

copyright or passing off in the territory in which the defendant alone

can sell the said goods does not arise. It is argued that in these

circumstances both the parties are free to copy the

trademark/copyright of each other in their respective territories. On

inquiry as to whether such action would not amount to passing off it

is contended that in view of the situation aforesaid, the question of

one party having reputation in the territory in which it is not entitled

to carry on business for all times to come does not arise and which

reputation is essential in an action of passing off. It is further the

case when the territories have been demarcated, there is no question

of one taking advantage of the reputation of the other in its own

territory because there can be no reputation in the territory of the

other. It is stated that owing to the agreement contained in the

Retirement Deed aforesaid, it is not possible at any time in future

also that one party may be entitled to sell / market in the territory of

the other and which is unlike the governmental restrictions which

can be lifted at any time; since there is no possibility, the question of

protecting rights for such possibility also does not arise.

7. The senior counsel for the plaintiff has, per contra, contended

that the present suit is not concerned with the mark BONNE which

alone was the subject matter of the retirement deed. It is contended

that the present suit pertains to the mark TENDER KARE and the

copyright aforesaid and which admittedly has been adopted /

conceived after 11th June, 1983. It is further argued that though the

plaintiff holds the registration for the whole of India but is selling the

goods under the mark TENDER KARE and packaging in which

copyright is claimed, only in its own territories.

8. I had during the hearing itself observed that this court is not

concerned with the correctness or otherwise of the registration of

the mark TENDER KARE obtained by the plaintiff for the entire

country. The defendant shall be entitled to take appropriate

proceedings, if any, in this regard and nothing contained herein is to

come in the way of such proceedings. I had, however, during the

hearing wondered that even if there could be no case of

infringement, in view of the territorial division between the parties

and even if the registration obtained by the plaintiff for the

territories of the defendant is to be held to be bad, the action of the

defendant of admittedly copying the trademark and the trade dress

of the plaintiff would definitely amount to passing off. The

agreement between the parties contained in the Retirement Deed

aforesaid is confined with respect to the mark BONNE. It does not

prohibit the parties from manufacturing and marketing the same

goods under another trademark. The only limitation is that even if

the parties manufacture the goods subject matter of the agreement

under another trademark they are still not entitled to carry on

business with respect thereto in the territory of the other, in

contravention of the said agreement. However, if they carry on

business in the same goods in their own territory under some other

trademark and if the other party is permitted to adopt the same

trademark in its own territory, it is definitely likely to confuse a

person knowing the trademark of one in relation to one territory with

the similar/deceptively similar trademark of the other in the other

territory. The reach of advertising in today's world is unlimited;

nearly all domestic television channels have their telecast

throughout India (even outside India, in territories having large

settlement of persons of Indian origin) without restriction as to the

territories as drawn up by the parties. Any of the parties desirous of

advertising its product on television cannot do so by restricting the

telecast thereof in its own territory. The said advertisement will be

necessarily telecast in the territory of other also. The same is the

position of advertising in the print media, viz. magazines etc. - they

have circulation throughout the country. The contention that the

prospective customers know of the division of territories between

parties is preposterous. Allowing the parties to use the

trademark/copyright of each other or deceptively similar trade marks

owing to the division of territories in the Retirement Deed would

definitely amount to allowing the parties to take benefit of each

others efforts and costs in advertising. The same cannot be

permitted.

9. I had during the hearing inquired from the counsel for the

defendant whether there was any restriction on the plaintiff carrying

on business under the trademark TENDER KARE in relation to allied

goods as say baby food or milk powder in the territory of the

defendant. The answer of the counsel for the defendant was in the

negative. If that be so, then, if the defendant is permitted to use the

trademark TENDER CARE in relation to baby feeding bottles,

nipples, soothers etc in its territory and the plaintiff carries on

business of baby food or milk powder in that territory under the

mark TENDER KARE, the same is definitely likely to cause confusion,

deception and loss to each other.

10.. The courts have in relation to trademark / intellectual property

rights, granted injunction on the basis of trans-border reputation

also. The use of trademarks/names, goods whereunder have not

been available in this country or could not be available owing to

restrictions has been injuncted for the reason of having trans-border

reputation. When such reputation can travel over seas it can

certainly travel across the various districts/territories/states divided

by the parties herein between themselves. The boundaries drawn up

by the parties are illusory. They are the political boundaries of this

country and which are otherwise difficult to decipher. For instance,

travelling from Punjab (which as per the agreement is the territory of

the plaintiff) to Haryana (which as per the agreement is the territory

of the defendant), one cannot make out the difference where one

ends and the other starts. The same is the position with respect to

several other States divided between themselves by the parties. The

residents of one territory may be shopping in the other. There are no

restrictions on free movement of consumers and/or of trade and

commerce across the territories of India. The contention of the

counsel for the defendant of the plaintiff thus having no reputation in

defendant's territory and being not entitled to restrain passing off is

not found correct. All this goes to show that allowing the parties to

use each other marks is replete with the same dangers/consequences

as in any other case of infringement / passing off and the agreement

between the parties is not found by this court to come in the way of

the granting the relief to which no other defence has been disclosed.

11. The senior counsel for the plaintiff has also argued that the

defendant without investing on the new technology adopted by the

plaintiff at a huge costs is attempting to pass off its goods as

manufactured by the new technology; the defendant, without having

the Liquid Silicon injection technology, is as part of its trade dress

using the same words as used by the plaintiff to identify its products

as manufactured by said technology.

12. I am also unable to accept the contention of the defendant that

owing to the name of the parties displayed as manufacturers on their

respective cartons they are distinguishable. The names "Bonny

Products Pvt. Ltd." and " Bonne Care Pvt. Ltd." are not found such so

as to warn the prospective buyer or to distinguish. Otherwise, I do

not find any distinctive/distinguishing features in the Trade

Mark/Trade Dress. Even the caricature of bunny rabbit having

identical earlobes has been copied. It is not disputed that the

plaintiff is the prior user thereof. The action of the defendant of

adopting the similar/deceptively similar mark/trade dress is found to

be malafide and intended to illegally and to the prejudice of the

plaintiff enrich itself. The same cannot be permitted in law and has

to be injucted. The only reason therefor given by the defendant has

already been negatived above. Under Section 29(4) of the Trade

Mark Act, 1999 a registered Trade Mark is infringed if it has a

reputation in India and the use of the mark without due cause takes

unfair advantage of or is detrimental to the distinctive character or

repute of the registered trade mark. The action of the defendant

satisfies the said ingredients.

13. During the hearing I had also inquired from the counsels as to

whether in the facts and circumstances of the case the suit itself be

not disposed of in terms of the order on the application for interim

relief. The senior counsel for the plaintiff, on instructions, had fairly

stated that the suit can be so disposed of and in fact the plaintiff

would then not press the claim for damages. The counsel for the

defendant had also initially agreed but at the close of the hearing

contended that the order may deal with the application for interim

relief only and the suit be posted for trial. However, he was unable

to state that save as aforesaid what other issue arises for

determination or trial in the present case. Thus though no consent

of the defendant was given but I am of the opinion that in the facts of

the case, no issue arises for trial. In view of my finding above, I find

that the plaintiff is entitled to the injunction claimed. It was not even

suggested by the counsel for the defendant that TENDER CARE is

distinct from TENDER KARE. Exhibits P13 and P14 are

identical/similar or deceptively similar Annexures A and B to the

plaint. The defendant has not challenged the plaintiff being the

creator and not prior user of the copyright on the said

cartons/packaging and the trade dress.

14. The suit of the plaintiff is thus decreed. Though I have

observed above that this order will not come in the way of the

challenge, if any, by the defendant to the registration of the plaintiff

with respect to territories of the defendant also, but registration

being prima facie evidence of validity under Section 31 of the Act,

the plaintiff is found entitled to injunction against infringement also.

The decree for permanent injunction is passed in favour of the

plaintiff and against the defendant in accordance with prayer

paragraph 41 (a), (b) and (c). However, since the suit has been

disposed of at this stage, the parties are left to bear their own costs.

Decree sheet be drawn up.

RAJIV SAHAI ENDLAW (JUDGE) May 22, 2009 M