Mother Dairy Fruit & Vegetable ... vs Mallikarjuna Dairy Products Pvt. ...
2011 Latest Caselaw 6259 Del

        THE HIGH COURT OF DELHI AT NEW DELHI

%           Judgment Delivered on: December 20, 2011

+ CS(OS) 290/2011

MOTHER DAIRY FRUIT & VEGETABLE PVT.
LTD.                                  ..... Plaintiff
      Through: Mr. Pravin Anand, Ms.Aparajita Rao,
               Advs.

                    versus

MALLIKARJUNA DAIRY
PRODUCTS PVT. LTD.                               ....Defendant
       Through: None.

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


V.K. JAIN, J

1.

On the oral request of the learned counsel for the

plaintiff, the plaintiff is permitted to file additional affidavit

by way of evidence along with additional documents.

The certified copy of the agreement between the

plaintiff and NDDB is exhibited as `Ex.PA‟ whereas the

Extracts from Register of Copyrights are exhibited as

`Exs.PB to PF‟.

2. The plaintiff - Mother Dairy Fruit & Vegetable

Private Limited is a wholly owned subsidiary of National

Dairy Development Board, a body corporate constituted

under National Dairy Development Board Act, 1987 and is

engaged in the business of manufacturing and marketing of

milk and milk products, frozen foods etc. The plaintiff has

been marketing milk and milk products under the brand

name "Mother Dairy". The plaintiff is also registered

proprietor of various labels including label registered under

registration number 1307520 in class 29 & 30, reproduced

in para 13 of the plaint. The plaintiff also claims to be the

first owner of the copyright in the artistic work of "Mother

Dairy" (Blue Logo). The plaintiff claims to be incurring

substantial expenditure on the promotion and

advertisement of its products being sold under the aforesaid

brand and logo. The plaintiff claims sale of Rs.1,346.26

crores, 1,641.29 crores and 853.85 crores for the years

2005-2006, 2006-2007 and 2007-2008 respectively and

has incurred advertising and promotional expenditure of

Rs.29.41 crores during the year 2005-2006 and Rs.31.24

crores during the year 2007-2008. The plaintiff has

adopted a wave design on the packaging in which milk is

sold by it and is using that packaging for last 5-6 years. It

is alleged that the aforesaid packaging along with its unique

design has come to be identified exclusively with the milk

products of the plaintiff. The sale of milk products of the

plaintiff was Rs.2,070 crores, 2,405 crores and 2,681 crores

in the year 2007-2008, 2008-2009 and 2009-2010

respectively. The plaintiff incurred promotional expenditure

of Rs.29.19 crores, 46.53 crores and 30.32 crores

respectively on the sale and promotion of its milk and its

milk products alone during these years.

3. The defendant which is a dairy located in Andhra

Pradesh is selling milk using a packaging/trade dress which

is alleged to be a blatent rip off the plaintiff‟s packaging for

the trade dress for the packaged milk. It is alleged that the

packaging/trade dress being used by the defendant is also

deceptively and confusingly similar to that of plaintiff and

the defendant has slavishly reproduced the trade

mark/logo/label and packaging of the plaintiff. The plaintiff

claims protection under Copyright Act in respect of the

artistic work involved in its logo and packaging. This is also

the case of the plaintiff that the defendant is infringing its

copyright in the aforesaid logo and packaging by using the

impugned packaging for selling milk.

The plaintiff has accordingly sought an injunction

restraining the defendant from using the impugned

packaging or any other packaging which is deceptively

similar to its trade mark and/or the work in which

copyright is held by it. The plaintiff has also sought delivery

up of the infringing material, rendition of accounts and

damages amounting to Rs.21,00,100/-.

4. Since no written statement was filed by the

defendant despite service of last summons on 1 st March,

2011, the right of defendant to file written statement was

closed vide order dated 16th August, 2011 and the plaintiff

was directed to file affidavit by way of evidence in order to

satisfy the Court with respect to merits of its case.

5. The plaintiff has filed affidavit of its General

Manager (Legal) Mr Y.K. Mathur by way of evidence. In his

affidavit, Mr Mathur has stated that besides being registered

proprietor of the trademark Mother Dairy, the plaintiff is

also the owner of copyright in Mother Dairy logo which it

has been using since the year 2003 which serves as a

source identifier of the products of the plaintiff. This label,

according to him, was created by a consultant for the

plaintiff-company for remuneration and, therefore, the

plaintiff is the first owner of copyright in the aforesaid logo.

The letter from the consultant, acknowledging the aforesaid

right, is Ex.PW-1/25.

6. During the course of arguments, the learned

counsel for the plaintiff confined his arguments to

infringement of the copyright which the plaintiff-company

has in the artistic work involved in mother dairy (label) and

the wave design being used by it on its packaging of the

milk. Ex.PW-1/25 is the certificate issued by Ray plus

Keshvan Design Associates Private Limited, certifying that

the Mother Dairy logo reproduced on the certificate was

created by them for the plaintiff-company in January, 2008

and that all intellectual property rights in this logo rest with

the plaintiff-company. The certificate Ex.PW-1/25 also

amounts to assignment of the work in the aforesaid logo by

Ray plus Keshvan Design Associates Private Limited to the

plaintiff, within the meaning of Section 19 of Copyright Act.

The plaintiff, therefore, now owns the copyright in the

aforesaid logo with effect from the date of this order.

The plaintiff has today placed on record the

certificates of registration Ex.DB to DF whereby the artistic

work involved in a label, containing wave design being used

by the plaintiff on the polybags in which milk is sold by it,

was registered in favour of National Dairy Development

Board. The aforesaid artistic work has been registered in a

number of colours including blue colour. The plaintiff has

also filed affidavit of Mr.Y.K.Mathur, Advocate, wherein he

has stated that since at the time of the adoption of the

aforesaid work the plaintiff was only a unit of NDDB, the

copyright in the work was registered in favour of NDDB and

when the Fruit and Vegetable unit of NDDB was registered

as a separate entity under the name of Mother Dairy Fruit &

Vegetable Private Limited, along with Mother Dairy Delhi

project of NDDB, all the business interests of NDDB in

Mother Dairy Delhi Project and the Fruit and Vegetable

Project were assigned to the plaintiff Company through an

assignment deed dated 31st March, 2000. He has also

stated that the interests in the copyrights in the

abvoereferred packaging were a subject matter of the

Mother Dairy Delhi Project and were assigned to the plaintiff

Company vide assignment deed dated 31st March, 2000.

Ex.DA is the copy of the assignment deed executed by

NDDB in favour of the plaintiff. Clause 10 of the

assignment deed, inter alia, provides that the plaintiff shall

also be entitled to the transfer of all licences including Trade

Marks, if any, valid in relation to Mother Dairy, Delhi and

Fruit and Vegetable Project, obtained by NDDB by Mother

Dairy, Delhi, or Fruit and Vegetable Project. Since the

abovereferred artistic work containing wave designs in

various colours pertained to Mother Dairy Delhi Project of

NDDB, the copyright in the aforesaid work stood transferred

to the plaintiff in terms of the assignment deed Ex.DA.

It has thus been proved that the plaintiff holds

copyright in respect of the artistic work involved in Mother

Dairy(label) as well as in the artistic work containing wave

design.

7. Ex.PW-1/36 is the packaging in which milk is sold

by the defendant. Out of two packagings, forming part of

PW-1/37, one is the packaging in which milk is sold by the

defendant whereas the other one is the packaging in which

the milk is sold by the plaintiff.

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. 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.

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. It can hardly be disputed that substantial artistic

work is involved in drawing Mother Dairy(label) as well as

the wave design forming part of the registered artistic work

of the plaintiff. The label as well as wave design, therefore,

constitute „artistic work‟ within the meaning of Section 2(c)

of Copyright Act, which, in fact, makes it clear that a

drawing would be an „artistic work‟ irrespective of whether

the design possesses any artistic quality or not. A

comparison of the packaging being used by the defendant

with the packaging of the plaintiff would show that there is

hardly any difference in the design of the logo being used by

the defendant and the design of the logo of the plaintiff. The

outer shape of both the logos is absolutely same. Both the

logos have blue colour in the background. The defendant

has written „MORNING MILK" whereas the plaintiff has

written "MOTHER DAIRY" in white letters, on blue

background. There is one border line in white colour in the

logo of the plaintiff whereas there are two border lines, in

white colour, in the logo of the defendant. Conceptually and

visually, the logo being used by the defendant is similar to

the logo by the plaintiff except that the word "MOTHER

DAIRY" in the logo of the plaintiff has been replaced by the

words "MORNING MILK" in the logo of the defendant. By

using the impugned logo, the defendant has reproduced a

substantial part of the artistic work in which the copyright

is held by the plaintiff Company.

12. The defendant, therefore, has clearly infringed the

copyright of the plaintiff in Mother Dairy logo by using the

impugned logo on the packaging in which milk is sold by it.

13. A comparison of the wave design on the packaging

of the defendant with the wave design on the packaging of

the plaintiff would show that like the plaintiff‟s, the

defendant has also used blue colour to depict the design on

its packaging. There are a number of curves in the work of

the plaintiff. The curves are found also in the work of the

defendant though they are not exactly of the same shape.

The background colour is white on the packaging of the

plaintiff as well as on the packaging of the defendant, the

polybags in which milk is sold being of white colour. In my

view, a person coming across the artistic work being used

on the packaging of the defendant, is likely to form an

opinion that the aforesaid work is the same which is found

on the packaging of the plaintiff‟s. Considering the

resemblance between the two works, the impression likely

to be formed in the mind of a person who has earlier seen

the packaging of the plaintiff and then comes across the

packaging of the defendant, particularly considering the fact

that milk is purchased by persons who may not necessarily

be well-educated and who also come from comparatively

lower strata of the society, would be that the work on the

packaging of the defendant is that of the plaintiff.

14. It would be pertinent to note here that the

defendant has not come forward to explain why he chose to

use a packaging which contains a substantial reputation of

the artistic work of the plaintiff. The obvious inference,

therefore, is that the defendant by use of the impugned

work wants to create confusion in the minds of the

customers that he has some kind of connection or

association with the plaintiff and thereby he wants to

encash upon the reputation which the product of the

plaintiff Company enjoys in the market.

15. For the reasons given in the preceding paragraphs,

I hold that the packaging being used by the defendant for

selling milk constitutes the infringement of copyright which

the plaintiff Company has in the artistic work involved in

the Mother Dairy(label) and the wave design being used by

the plaintiff. The plaintiff, therefore, is entitled to injunction

against use of the aforesaid packaging by the defendant.

16. As regards damages, it is now settled proposition of

law that though the plaintiff has not proved the actual

damages suffered by it on account of infringement of its

copyright by the defendant, it is still open to the Court to

award punitive damages in appropriate cases.

As observed by this Court in Time Incorporated v.

Lokesh Srivastava & Anr., 2005 (30) PTC 3 (Del), punitive

damages are founded on the philosophy of corrective justice

and are meant to send signal to the wrong doers that the

law does not take a breach by them as a matter between

rival parties but is also concerned about those also who are

not party to the lis but suffer on account of the breach of

law on the part of wrong doer. As held by this Court in

Hero Honda Motors Ltd. V. Shree Assuramji Scooters,

2006 (32) PTC 117 (Del), this Court noticing that in a case

where the defendant chooses to stay away from the

proceedings of the Court, punitive damages need to be

awarded, since otherwise the defendant, who appears in the

Court and submits its account books would be liable for

damages whereas a party which chooses to stay away from

the Court proceedings would escape the liability on account

of the failure of the availability of account books. In fact,

punitive damages are appropriate relief where on account of

absence of the defendant exact figure of the sale made and

profit earned by him by infringing the trademark of the

plaintiff and/or passing off his goods as those of the plaintiff

cannot be ascertained. The Courts also take into

consideration the fact that a lot of time and money is spent

by trademark owners in litigation against those who infringe

the trademark and try to encash upon the goodwill and

reputation of other brands by passing off their goods and

services as those of others. Award of punitive damages,

therefore, describes dishonesty and curbs tendency to gain

an unfair advantage by infringement of the legal rights of

others. Failure of the Court to award punitive damages is

likely to encourage unscrupulous persons actuated by

dishonest intention, to use the trademarks of others and

encash upon their goodwill and reputation which they have

built with years of hard work and labour.

17. I am of the considered view that in the facts and

circumstances of the case, the plaintiff should be awarded

punitive damages amounting to Rs.5 lakhs.

18. A decree for injunction is hereby passed

restraining the defendant from infringing copyright of the

plaintiff in Mother Dairy(logo) as well as in the artistic work

registered vide registration number A-64227/2003 by using

the impugned packaging Ex.PW-1/36 or any other

packaging which would infringe copyright of the plaintiff in

the abovereferred works. The defendant is also directed to

pay punitive damages amounting to Rs.5 lakhs to the

plaintiff along with cost of the suit.

Decree sheet be drawn accordingly.

(V.K. JAIN) JUDGE DECEMBER 20, 2011 'sn'