M/S. Hindustan Pencils Ltd. vs Gautam Industries & Anr
2013 Latest Caselaw 716 Del

-*      THE HIGH COURT OF DELHI AT NEW DELHI

+                      C.S. (O.S.) No. 309/2004

                                             Date of Decision: 13 .02.2013

M/S. HINDUSTAN PENCILS LTD.                             .......Plaintiff

                              Through:    Mr. Rajinder Singh, Adv.

                                    Versus

GAUTAM INDUSTRIES & ANR                                ......Defendants

                              Through:    None.

CORAM:
HON'BLE MR. JUSTICE M.L. MEHTA

M.L. MEHTA, J.

1. The plaintiff having given up reliefs sought regarding rendition of accounts as also seeking delivery of goods of defendant for destruction, the suit only survives for permanent injunction. The brief facts are as under:

2. The plaintiff is the manufacturer of pencils and other items of stationery and is carrying on business since the year 1997. The plaintiff adopted the trademark NATARAJ in the year 1961 along with the device of NATARAJ in respect of pencils, sharpeners and all other products in a distinctively designed label having red background and the word NATARAJ written in a particular

characteristic and style. It is also submitted that the plaintiff company is the registered proprietor of the following trademarks:

a. Trademark NATARAJ with the device of Nataraj under No. 225923 as of 14.12.64 claiming user since 22.7.1961 in respect of writing pencils.

b. Trademark NATARAJ with the device of Natarj under No. 260466 dated 06.11.1969 claiming user since 22.07.1961 in respect of pencils, refills for propelling pens, and pencil sharpeners, pens, fountain pens, erasers and pins, clips and staples included in class-16.

c. Trademark NATARAJ black lead label along with the device of Nataraj registered under No.352478 as of 17.08.1979 in respect of black lead pencils included in class-16.

d. Trademarks NATARAJ and device of Nataraj are also registered under No. 400869 and 400868 in class 16 respectively in favour of the plaintiff company.

3. It is submitted that the plaintiffs are also the registered proprietor of copyright No. A-25427/79 in respect of carton of NATARAJ with a device of Nataraj and have been selling their products packed in a box with a distinctive colour scheme and get up. It is submitted that the packing of the plaintiff's NATARAJ 621 SHARPENERS is six dimensional box. The said box has 20 sharpeners which are also

packed in an individual and distinctive packing material/carton. A detailed panel wise description of the plaintiff's carton is set-out in the plaint.

4. The plaintiff has submitted that the essential feature of the packing carton of the plaintiffs is red colour predominantly having black lines on each side of packing carton with the mark NATARAJ on the right hand side with the device of Nataraj depicted on the left hand side. The words "621 Sharpeners" are written underneath the trademark NATARAJ. On the back panel, the slogan of the plaintiff's product "SHARPENS WITHOUT A BREAK" is written in white colour. Similarly, it is submitted that the packing of the sharpener is almost same as the outside carton except on the upper side panel, the trademark NATARAJ along with a picture of a sharpened pencil under the trademark is depicted.

5. It is contended that the abovementioned features on the NATARAJ 621 SHARPENERS packing constitutes an original artistic work within the meaning of Sec. 2(c) of the Copyright Act, 1957 and that the plaintiff is the owner of the copyright therein. It is also contended that the plaintiff has been using the said packing material continuously and regularly since the year 1987 and that substantially, the carton has remained the same since its inception in the year 1961. It is further contended by the plaintiffs that they have been spending large amount of money on sale promotion and

advertisement through various media such as Radio, Television, Newspaper, Magazines.

6. The plaintiffs further claim that on account of superiority of goods, long extensive and continuous user and wide advertisement, the plaintiffs' trade mark NATARAJ and device of NATARAJ have become very popular with the stationery trade and the members of public who associate the trade mark NATARAJ with the plaintiff and no one else. They have further claimed that the get up of the carton in which the sharpeners sold connote and denote the products manufactured by the plaintiff alone. And that the general purchasing public are school going children and semi-literate person who recognize the plaintiff's products by the plaintiff's trademark and the get-up of the carton in which the products are sold.

7. The plaintiff's grievance is that during the second week of March, 2004, it came to the notice of the plaintiff that the defendants are selling their product i.e. Pencil Sharpener under the trademark PAPPU/U-MAX in the market under a near identical packing material of the plaintiff. The plaintiff has contended that the defendant has slavishly copied almost all the features of the plaintiff's packing. Furthermore, it is contended that individual packing of the defendant's sharpeners are also absolutely identical except that the trademark PAPPU/U-MAX is mentioned in place of the plaintiff's trademark. It is further contended that defendants

have not only adopted the colour scheme of the plaintiffs' packing but they also copied the slogan of the plaintiff i.e. "SHARPENS WITHOIUT A BREAK" and "SCIENTIFICALLY ANGLED BLADE SHARPENS PERFECTLY WITHOUT BREAKAGE".

8. It is contended that the plaintiff never authorized the defendant to use the similar carton in relation to their goods and that the adoption and use of the said packing material by the defendant is dishonest, malafide, tainted and solely with a view to trade upon the goodwill and reputation of the plaintiff. It is contended that the defendant by use of the said packing material is creating an impression in the mind of the general purchasing public that the defendant's business originated from the house of the plaintiff, as the trade channel of both parties is the same. And that the conduct of the defendant is solely motivated to encash upon the goodwill and reputation earned and nurtured by the plaintiff and to earn easy and illegal profits by passing off their goods as the reputed products of the plaintiff, causing irreparable loss and injury to the plaintiff as well as the consumers at large. Moreover, by virtue of the prior adoption, prior use, extensive publicity and promotion, the said packing material, which is a unique and distinctive combination of arrangement of features, get up and layout, has earned a substantial goodwill and reputation to the plaintiff. Therefore, the plaintiff has sought permanent injunction against infringement of trademark, copyright and passing off against the defendants.

9. Summons of the suit were sent to the defendants. They were not served by means of ordinary process and registered AD cover and finally they were ordered to be served by way of publication in the Newspaper 'Statesman'. The defendants were duly served, but did not appear and so were proceeded ex parte vide order dated 10.09.2008. The plaintiff led the evidence of its constituted attorney Shri P.N. Thanawala, who filed his affidavit of evidence and proved documents such as Trade Mark Certificate, Copyright Certificate, the Statement of Sales, the Advertisement Materials of plaintiff's products, its packing material as also the impugned packing material of defendants.

10. The learned counsel for plaintiff primarily relied upon the decision of this Court in the case of Hindustan Pencils Pvt. Ltd. v. Suneja Copy Products, 2009 (39) PTC 648 (Del.) in which the plaintiff had sought protection against a similar infringement regarding the packing material of its pencils in which this Court, relying upon the decision in Hero Honda Motors Ltd. v. Shree Assuramji Scooters, 2006 (32) PTC 117 (Del.) ordered permanent injunction along with delivery of products and rendition of accounts.

11.Having heard learned Counsel for the plaintiffs and making comparison of the cartons, one that of the plaintiffs and another of the defendants, I am of the opinion that plaintiffs have been able to establish their case with regard to the infringement of copyright as carton of the plaintiffs (Annexure X) and that of the defendant

(Annexure Y) are substantially similar and so are the slogans appearing on the two cartons. I have no doubt in my mind that defendants, by using such colour scheme and other features, have dishonestly adopted the artistic work of the plaintiff and for which they have been duly registered under the Copyright Act. I am further satisfied that the plaintiff is the prior user not only of the trademark NATARAJ, but also of the artistic work i.e. the packing material which was the creation of the plaintiffs and thus nobody else except the plaintiffs has the right or authority to adopt such colour scheme.

12.In view of the unassailed and unrebutted evidence of the plaintiff, reflected from the statement of Mr. Thanawala and the documents proved by him, as discussed above, the plaintiff is entitled to the relief of injunction against the defendant. Consequently, a decree of Permanent Injunction is passed in favour of the plaintiff and against the defendants restraining the latter from reproducing, printing, publishing or using colour scheme and packing material similar to that of the plaintiff for the sale of sharpeners as also for passing off its sharpeners as that of the plaintiff, in any manner whatsoever. The decree will be drawn accordingly.

M.L. MEHTA, J.

FEBRUARY 13, 2013 Kk/awanish