Societe Des Produits Nestle vs Continental Coffee Ltd.
2011 Latest Caselaw 5958 Del

         THE HIGH COURT OF DELHI AT NEW DELHI

%                     Judgment Pronounced on: 07.12.2011

+ CS(OS) 2071/2003


SOCIETE DES PRODUITS NESTLE                    ..... Plaintiff
                Through: Ms Prathiba          M. Singh, Mr
                Sudeep Chatterjee and         Mr Sudeep
                Bhandari, Advs.
                              versus
CONTINENTAL COFFEE LTD.                       ..... Defendant
              Through: None.

CORAM:-
HON'BLE MR JUSTICE V.K. JAIN

V.K. JAIN, J. (ORAL)

CS(OS) 2071/2003 and IAs No. 11337/2003 and 1760/2007

1. This suit was instituted against two defendants-

Continental Coffee Limited and Ashraj Foods Specialties Pvt.

Ltd. The name of Continental Coffee Limited was deleted

from the array of defendants vide order dated 15th May,

2009 since it claimed that it was only supplying the coffee

powder to defendant No.2, which was then selling that

coffee in the impugned packaging.

2. The plaintiff No.1 is a company registered in

Switzerland, whereas, the plaintiff No.2 is its Indian

subsidiary. The plaintiff companies deal in a large number

of products, including coffee, which they sell under the

name „NESCAFE‟. The plaintiffs are selling coffee using a

distinctive Red Mug Device on its packaging of the coffee

since the year 1978. In the year 1999, the plaintiff

introduced Red Mug device, with a Golden Line running

around the Mug, in India. The aforesaid device is stated to

be extremely distinctive of the plaintiff being used on all

packages, wrappers/labels, publicity materials etc. in

respect of coffee being sold by the plaintiffs. It is alleged

that a mere look of the aforesaid device establishes a

connection with „NESCAFE‟ Coffee of the plaintiffs and,

therefore, the device has acquired a secondary meaning and

mark identification of the plaintiffs. The plaintiffs claim to

be selling the „NESCAFE‟ Instant Coffee since 1983. The

plaintiffs also claim to be using the Red Mug as a

standalone brand for the coffee.

This is also the case of the plaintiff is that this Red

Mug Device was created by one Mr. Wolf-rudi von der

Emden, who later assigned the copyrights in the aforesaid

work to the plaintiffs.

3. The defendant is engaged in the business of

marketing of coffee. The defendant is selling coffee under

the brand name MR, using a label/device, depicting a red

mug full of black coffee. The packaging being used by the

defendant to sell coffee is alleged to be infringing copyright

of the plaintiff company since; (i) wrapper/label of the

defendants bears a Red Mug Device, (ii) the Golden Line on

the Red Mug Device of the plaintiff is also being used by the

defendants on its Red Mug (iii) 100% pure instant

granulated coffee against a red background is also being

used in their packaging, (iv) black coffee is shown poured in

the device of both the parties and (v) there is froth shown on

the coffee, in both the devices.

The plaintiffs have sought injunction restraining

the defendant infringing his copyrights in the aforesaid

work. They have also sought injunction restraining the

defendants from passing off their goods as those of the

plaintiffs, indulging in unfair competition and diluting the

mark of the plaintiffs. The plaintiffs have also sought

damages amounting to Rs.20,51,000/-, besides delivery of

the infringing materials.

4. The defendant filed written statement contesting

the suit. In the written statement, it is alleged that the label

being used by the defendant is registered in the name of Mr

Rajesh Durgani, Managing Director of defendant No. 2

under Copyright Act and it is using the label with the

consent of the author--Mr Rajesh Durgani. It is also alleged

that the plaintiff cannot claim any exclusive copyright with

respect to red mug and the red colour, they being basic

material and there being no high degree of skill and

knowledge involved in it. It was also alleged that mere use

of the design available in the market or painting the same in

red colour does not signify any skill. The defendant claims

to be using the impugned label since 1975.

5. The plaintiffs have filed affidavit of their

constituted attorney Ms Venita Gabriel by way of evidence.

In her affidavit she has stated that red mark device being

used by the plaintiff is an original artistic work which was

created by Mr Wolf-rudi von der Emden, an employee of the

company in the year 1978 and the rights in the aforesaid

device were assigned to the plaintiffs, vide declaration

Ex.PW-1/18. She has further stated that the aforesaid red

mark device is being used by the plaintiff since 1978 on a

world-wide basis. According to her, the red mug with a

golden line running around the mug, was introduced by the

plaintiff in the year 1990 and this device also is being used

world-wide. She has further claimed that Nescafe was

introduced in India in 1983 and the aforesaid red mug

device has become extremely popular even in India. In this

regard, she has referred to a TV commercial Ex.PW-1/7

which is telecast on Indian TV channels, in which the

aforesaid device has been extensively used. She has

claimed that the aforesaid red mug device is also being used

by the plaintiff as a standalone brand. According to her, the

aforesaid device has also been registered in India vide

Registration No. 1199626 in class 30 which includes coffee.

6. Ex.PW-1/18 is the declaration by Mr Wolf-rudi von

der Emden on 04th July, 2003, whereby he claimed to have

created the red mark device, shown on the document. They

are two red mark devices one created in the year 1978

which does not have a golden line around the mug and the

other is the device created in the year 1990 which has a

golden line running around with mug. In fact, the shape of

the mug in the device of 1990 is different from the shape of

the mug in the device of 1978.

7. I see no reason to disbelieve the testimony of Ms

Venita Gabriel and the documents filed by the plaintiffs

which show that the red label device being used by the

plaintiffs was created by Mr Wolf-rudi von der Emden in the

year 1990. The aforesaid red mug device was created by Mr

Wolf-rudi von der Emden in the year 1990. Though the

defendant claims to be using the mug shown in its

packaging since the year 1975, there is absolutely no

evidence to prove that the aforesaid label is being used by

the defendant since prior to 1990 when Mr Wolf-rudi von

der Emden claims to have created this work.

A perusal of the Copyright Registration obtained by

the defendant vide registration No. A 63376/2003 in respect

of packaging being used by it would show that the

defendant applied for registration only on 19th March, 2002

though it claimed first publication in the year 1975 in India.

Since there is no evidence of the aforesaid work having been

used in India, at any point of time, prior to 1990 and the

defendant has not come forward to establish that it was

using the aforesaid label since the year 1975, no reliance

can be placed on the copyright registration in favour of the

defendant as regards the date since which this packaging is

being used by the defendant.

8. In R.G. Anand Vs. Delux Films and Ors. AIR 1978

SC 1613, Supreme Court, inter alia, laid down the following

general propositions with respect to the copyrights:

"1. There can be no copyright in an idea, subject matter, themes, plots or historical or legendary facts and violation of the copyright in such cases is confined to the form, manner and arrangement and expression of the idea by the author of the copyright work.

2. Where the same idea is being developed in a different manner, it is manifest that the source being common, similarities are bound to occur. In such a case the courts should determine whether or not the similarities are on fundamental or substantial aspects of the mode of expression adopted in the copyrighted work. If the defendant's work is nothing but a literal limitation of the copyrighted work with some variations here and there it would amount to violation of the copyright. In other words, in order to be actionable the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy.

3. One of the surest and the safest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original.

4. Where the theme is the same but is presented and treated differently so that the subsequent work becomes a

completely new work, no question of violation of copyright arises.

5. Where however apart from the similarities appearing in the two works there are also material and broad dissimilarities which negative the intention to copy the original and the coincidences appearing in the two works are clearly incidental no infringement of the copyright comes into existence."

Supreme Court quoted with approval the following

observations made by Copinger in his book on copyright

(11th Edition):

"What is protected is not original thought or information, but the original expression of thought or information in some concrete form. Consequently, it is only an infringement if the defendant has made an unlawful use of the form in which the thought or information is expressed. The defendant must to be liable, have made a substantial use of this form; he is not liable if he has taken from the work the essential, ideas however original, and expressed the idea in his own form, or used the idea for his own purposes."

9. Though the defendant has claimed that since no

artistic work is involved in this device, which only uses a

mug and red colour, I am unable to accept this contention.

No one can claim an exclusive right to use red colour or a

mug, as a part of his artistic work. But, a mug can be

designed and depicted in numerous ways and, therefore, it

is difficult to dispute that hard work and labour is involved

in designing a mug in a particular way. Copyright is

available not in use of a red mug, but, in the manner the

mug is depicted in the artistic work of the author. It is not

as if the plaintiff has used the photograph of some cup

available in the market. Here, the mug was designed by Mr

Wolf-rudi von der Emden in a unique shape. Putting a

golden line around the mug also involves some artistic work

since it involves imagination and thought on the part of the

author/owner to use the golden line on the mug in such a

manner so as to create a new design by his work. Since, a

mug can be designed and depicted in number of ways,

whenever it is designed and depicted in a unique manner in

which it is not already available in the market, it is difficult

to dispute that this would qualify as an artistic work within

the meaning of Section 2(c) of Copyrights Act. In fact, the

definition of artistic work given in Section 2(c) of Copyrights

Act makes it evident that a drawing would be an artistic

work irrespective of whether the work possesses any artistic

quality or not. Therefore, drawing and depicting a cup in a

particular manner would be covered in the definition of

artistic work.

10. In order to constitute infringement of a copyright in

a work, it is not necessary that the impugned work should

be verbatim re-production of the work of the plaintiff. It

would be sufficient to constitute infringement if a

substantial or core part of work of the plaintiff is re-

produced by the defendant. The defendant has every right

to use the basic idea involved in the work of the plaintiff,

but, he is not permitted to express that idea in the same

form and the same manner in which it has been done by the

plaintiff. What has to be seen in such a case is as to

whether the defendant has merely made a fair use of the

idea or has substantially appropriated the manner in which

that idea has been depicted or expressed by the plaintiff. If

the Courts insist on the work used by the defendant being

an absolute replica of the work in which copyright is

claimed by the plaintiff, any person seeking to make a

dishonest use of the work of the plaintiff would make some

changes here and there while copying the work of the

plaintiff, so that in the event of being questioned, he may

claim that the work being used by him not being an exact

copy of the work of the plaintiff does not constitute

infringement of the copyright of the plaintiff. The test to be

applied by the Court, wherever infringement of copyright is

alleged, is to ascertain not as to whether the work of the

defendant is an exact re-production of the work of the

plaintiff, but, whether a person who comes across the work

of the defendant would form an opinion that it was the work

of the plaintiffs or not. There is no test laid down to decide

as to what constitute re-production of a substantial part of

the work. The test which the Courts have been applying in

such cases is as to effect produced on the mind of the

person who has seen the work of the plaintiff and also

comes across the work of the defendant. The degree of

resemblance between two works must be such that it

suggests an impression, in the mind of the observer, that

the work of the defendant is, in fact, the work of the

plaintiff. The Courts, therefore, are required to apply the

test called the „lay observer test‟ and find out whether the

object of the defendant appears to be the object of the

plaintiff.

11. A comparison of the packaging being used by the

defendant which is Ex.PW-1/19 with the packaging being

used by the plaintiffs would show that there are a number

of striking similarities; firstly, there is a golden ring around

the mug in the device being used by the plaintiff as well as

in the device being used by the defendant; secondly, the red

colour being used in the two devices is almost identical;

thirdly, boiling black coffee is shown in the device of the

plaintiff as well as in the device of the defendant and; lastly,

there is froth on the coffee in the two devices. To my mind,

the device being used by the defendant is, therefore, a re-

production at least of a substantial portion of the work

which Mr Wolf-rudi von der Emden had created and later

assigned to the plaintiffs. Since it is the plaintiff-company

which have been using the aforesaid device before the

defendant started using it, the copyright of the plaintiff-

company in the aforesaid work has been clearly infringed by

the defendant.

It would also been important to note there that the

defendant has not come forward to explain why it chose to

use a device which besides a red mug also has a golden line

around the mug, black coffee in the mug and a froth on the

coffee poured in the mug. The obvious inference, therefore,

is, that the defendant by use of the impugned device wants

to create confusion in the mind of the customer that the

product being sold by it has some kind of an association

with the plaintiff-company and, thereby encash upon the

reputation which the trademark of the plaintiff-company

enjoys in a large number of countries, including India.

12. In M/s P.C. Mallappa & Co. vs. McDonald's

Corporation: 1999 PTC 9 (Karn), the respondent/plaintiff

McDonald‟s Corporation was the registered proprietor of the

trademark McDonald and the corporate logo „M‟, whereas

the appellant/respondent was using the logo „M‟ along with

words Mallappa and company as its trading style. The

plaintiff/respondent was dealing in fast foods, whereas, the

appellant/defendant was trading in sanitary goods. The logo

being used by the appellant/defendant was registered under

Copyrights Act, 1957. The plaintiff claimed that use of the

logo „M‟ by the defendant/appellant was likely to cause

confusion and deception since on account of use of the logo

„M‟, people were likely to believe that the defendant has

some connection with the plaintiff, in fact there being no

connection whatsoever. While registering the logo „M‟ of the

plaintiff, the Trademark Registry had imposed a disclaimer

on the plaintiffs for exclusive use of the letter „M‟ except

substantially as shown in the representation. One

contention of the appellant/defendant was that it had a

copyright registration in its favour which the

plaintiff/respondent did not have. It was also contended

that the goods of the appellant and the respondent being

altogether different, there was no likelihood of an unwary

purchaser of average intelligence being misled by the use of

the trademark logo „M‟ by the appellant/defendant. The

plaintiff on the other hand claimed ownership of the artistic

work in logo „M‟ in the distinctive style and design of the

famous golden arches created by its Chief Marketing Officer,

Mr Paul Scharge and that this work constituted an original

artistic work within the meaning of Section 2(c) of the

Copyright Act. It was pointed out that registration of

copyright is not mandatory as per Copyright Act. The Court

was of the view that the appellant/defendant could not be

allowed to make use of plaintiff‟s logo which was also

registered in India under Trade and Merchandise Marks Act,

1958.

13. In the case before this Court at the time this suit

was filed, the application of the plaintiff for registration of

red mug device was pending before Trademark Registry.

This device was registered as a trademark vide Registration

Certificate No. 630385. Though the certificate was issued

on 29th March, 2007, the registration date is 19 th May,

2003. Though the plaintiffs have not amended the plaint so

as to implead infringement of their registered trademark, it

can hardly be disputed that the Court can and in fact ought

to take note of the events subsequent to the filing of the

suit. The plaintiffs have obtained registration of red mug

device during pendency of the suit and the registration

being effective from 19th May, 2003, i.e., more than five

months before filing of this suit on 02nd December, 2003,

the Court while deciding the case on merits, cannot ignore

the registration obtained by the plaintiff under Trade and

Merchandise Marks Act, 1958 Since the red mug device

being used by the defendant is similar to the registered

trademark of the plaintiff and in any case is likely to cause

confusion in the mind of the public, use of the impugned

device by the defendant would also constitute infringement

of the registered trademark of the plaintiff. It would be

pertinent to note here that the test to determine whether the

impugned trademark infringes the registered trademark of

the plaintiff or not is not to place the two marks side by

side, identify the similarities and dissimilarities between the

two marks and then take a view as to whether they are

similar or not and whether the impugned mark is liable to

cause confusion in the mind of the public or not. The test in

such cases is as to whether an unwary customer of average

intelligence and imperfect recollection, on seeing the

impugned mark, would assume it to be the mark of the

plaintiff or would, on account of similarities between the

impugned mark and the registered trademark of the

plaintiff, and is likely to form an opinion that the product on

which the impugned mark is used, originates from the

plaintiff or has been manufactured under licence or in

collaboration or association with it and that is why the

impugned mark has been used on that product. If the

customer on account of the use of the impugned mark is

likely to get confused with respect to the source of the

product, that itself would constitute infringement within the

meaning of Section 29(2) of Trademarks Act, wherever the

goods on which the impugned trademark is used are

identical to the goods in respect of which the plaintiff is

using its registered trademark.

14. In my view, mere registration under Copyright Act

does not authorize the defendant to use the trademark of

the plaintiff if it is found that the mark being used by him is

identical or similar to the registered trademark of the

plaintiff or it is proved that use of the impugned mark by

him on identical goods is likely to cause confusion or create

an impression of association with the registered trademark

of the plaintiff. Registration under Copyright Act, in such a

situation would be no defence to the charge of infringement

and would not take the case out of the purview of Section

29(1) and (2) of Trademarks Act, 1999.

Moreover, if it is shown that the use of its work by

the plaintiff, even if not registered under Copyright Act,

1957, is prior in point of time, the registration obtained by

the defendant would not give him a liberty to infringe the

copyright of the plaintiff. Once, it is shown that the work of

the plaintiff in an artistic work in which a copyright subsists

in its favour in terms of Section 14 of Copyright Act,

registration of a similar work by the defendant under

Copyright Act, would not save such a work if it is shown

that it is a re-production of the whole or a substantial part

of the work of the plaintiff. In taking this view, I find

support from the decision of this Court in Kaira District

Co-Operative Milk vs Bharat Confectionery Works: PTC

(Suppl)(1) 615 (Del). In that case, the plaintiff was using the

trademark AMUL in respect of various products such as

milk, butter, cheese, chocolates, etc. The defendant in that

case was found marketing biscuits under the trademark

AMUL. On being sued, the defendant resisted on various

grounds, including that the products being manufactured

by it were different from the products being manufactured

by the plaintiff and it was the owner of copyright in lettering

and design of the mark AMUL as printed on the wrappers of

biscuits. It was also claimed that the lettering and printing

style on the wrappers of the defendant was altogether

different from those of the plaintiff and there was no trade

connection in the products of the two parties. The

contention, however, was rejected by this Court noticing

that Copyright Act does not provide any procedure for

opposition of a proposed registration. The Court was of the

view that registration obtained under Copyright Act does not

provide any defence for the use of the registered trademark

of the plaintiff.

15. For the reasons given in the preceding paragraphs,

I am of the considered view that use of the impugned mark

by the defendant constitutes infringement not only of the

copyright, but also of the trademark of the plaintiff and

consequently, the plaintiff is entitled to injunction against

use of the aforesaid mark of the defendant in any manner.

Though the plaintiff has also claimed damages and delivery

up of the infringing material, no arguments on these reliefs

having been advanced, I do not deem it appropriate to grant

these reliefs to the plaintiffs.

ORDER

A decree for perpetual injunction is passed,

restraining the defendant from using the impugned

trademark Ex.PW-1/9 or any other mark which is identical

or similar to the registered trademark of the plaintiff. The

defendant is also restrained from infringing the copyright of

the plaintiff in the red mug device by re-producing the

aforesaid device or any substantial part thereof. In the facts

and circumstances of the case, there shall be no order as to

costs

Decree sheet be drawn accordingly.

(V.K. JAIN) JUDGE DECEMBER 07, 2011 ka/bg