Dabur India Ltd. vs M/S. Laxminarayan Industries
2013 Latest Caselaw 1035 Del

-*      THE HIGH COURT OF DELHI AT NEW DELHI

+                      C.S. (O.S.) No. 1190/2005

                                             Date of Decision: 01.03.2013

DABUR INDIA LTD.                                       .......Petitioner

                              Through:   Mr. Hemant Singh, Adv., Ms.
                                         Mamta Jha, Adv.

                                    Versus

M/S. LAXMINARAYAN INDUSTRIES                          ......Respondent

                              Through:   Nemo.

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

M.L. MEHTA, J. (Oral)

1. This is a suit seeking permanent injunction against infringement of copyright and passing off. The plaintiff has also prayed for rendition of accounts and delivery up of all infringing products with respect to the plaintiff's packaging under the trademark "DABUR RED TOOTH POWDER" (English) or "DABUR LAL DANT MANJAN" (Hindi) in respect of tooth-powder, alleging that the arrangement of features, lay out, colour scheme of the defendant's container and pouch, is substantially an imitation of their artistic work. Further, the plaintiff prays for compensatory damages to the tune of Rs. 20 lakhs. The brief facts are as under.

2. The plaintiff has been manufacturing and marketing DABUR RED TOOTH POWDER since 1984, in distinctive packaging comprising colour combination of red, yellow and white. The background colour of packaging has always been red with descriptive features such as "LAL DANT MANJAN" or "RED TOOTH POWDER", appearing in yellow and trademark Dabur appearing in white. A portrait of a family i.e. a man, a woman and a child appears within a yellow coloured oval device. It is also submitted that the said packaging is already registered under Copyright Registration No. A- 49342/88. The plaintiff states that on account of extensive sales, promotional campaigns including television commercials, excellent quality control and consumer feed-back, the plaintiff's DABUR LAL DANT MANJAN packaging/pouch comprising of the trade-dress described above, have acquired distinctiveness so as to indicate trade origin and source of the plaintiff's business qua these goods. The said trade dress constituting the plaintiff's trademark has acquired goodwill and reputation in the market amongst consumers at large.

3. In the second week of March 2005, the plaintiff, through their sales representative in the market at Delhi, learnt that the defendant is manufacturing and marketing its tooth powder in packaging/pouch, reproducing the colour combination, get-up and arrangement of features, as are distinctive of the plaintiff's product. The essential features of the impugned packaging are purportedly as follows:

a. The trade-dress of the defendant's pouch also comprises the colour combination of red, yellow and white over a red background, which is identical to that of the plaintiff. b. The central panel of the pouch has a yellow hallow upon which "Lal Dant Manjan" is represented in red, which is visually similar to the one appearing on the plaintiff's plastic container.

c. Immediately below the yellow hallow, is a yellow oval device containing a picture of a family, comprising of a man, a woman and a child in the middle, which is also similar to that on the plaintiff's container pouch.

d. Above these two features, appears a trademark SWASTIK in white, to the left of which is a yellow triangular device, mentioning "Sirf 1 rupayee main", in red lettering, which is also identical to that on the plaintiff's container.

4. It is contended that the broad and distinguishing features of the defendant's container/pouch and the idea and impression conveyed thereby is overall similar to the one created by the plaintiff's container/pouch. The adoption and use of the impugned packaging by the defendants is mala fide with the intention of making misrepresentation about association of goods and business of the parties and pass off its tooth powder as for those of the plaintiffs.

5. On notice being served to the defendants, they filed a written statement wherein certain preliminary objections were taken. Firstly, it was submitted that plaintiff allegedly has no copyright on the

"DABUR RED TOOTH POWDER" (English) or "DABUR LAL DANT MANAJN". Further, it was objected that the words RED TOOTH POWDER and LAL DANT MANJAN could not be the subject matter of trademark as these are common names. It was submitted that since the filing of the present suit, the plaintiff has changed the packaging and has abandoned the impugned packaging and hence the defendant's SWASTIK LAL DANT MANJAN is quite different from that of the plaintiff's DABUR LAL DANT MANJAN. The defendant's final objection is with respect to the fact that the defendant firm had closed production in 2003 and so the plaintiff's suit is without any cause of action. The imitations of the packaging as alleged in the plaint have all been denied. It was submitted that the defendant's pouch comprises the colour combination green, black and pink in addition to the red, yellow and white. Further, the picture of a family comprising of a man, a woman and a child has been abandoned by the plaintiff. It is stated that the plaintiff now uses a different picture which comprises of four persons in the family.

6. An injunction under Order 39 Rules 1 and 2 of the Civil Procedure Code was granted to the plaintiff. The defendant, after filing the written statement, stopped participating in further proceedings conducted in the trial. Thus, the defendant has been proceeded ex parte.

7. The main issue that needs to be addressed in the suit is whether the packaging adopted by the defendant constitutes an act of

infringement of copyright and passing off, consequentially resulting in the reliefs prayed for by the plaintiff.

8. It was argued by the Ld. Counsel on behalf of the plaintiff that the manner of packaging with respect to the colour scheme, get up and lay out was an artistic work which was protected under the Copyright Act, 1957. It was stressed that the two packaging needs to be compared in its entirety and that the Court need not go into the minor differences between them. On comparison, if one of the packaging resembles the other, then protection needs to be granted to the original owner of the packaging. The Counsel for the plaintiff submitted that a decree be passed which would act as a deterrent against the use of the packaging adopted by the plaintiff. Further, the Ld. Counsel for the plaintiff, placing his reliance on the decisions of this Court in Hero Honda Motors Ltd. vs. Shree Assuramji Scooters, 2006 (32) PTC 117 (Del.) and Himalaya Drug Company vs. Sumit, 2006 (32) PTC 112 (Del.), argued that damages must be awarded in such cases where a defendant chooses to stay away from the proceedings of the Court. It was held that the defendant could not be allowed to enjoy the benefits of avoiding court proceedings. Relying on the judgments above, the Ld. Counsel submitted that the amount which was by and large awarded by the Courts in such cases would be approximately Rs. 5 Lakhs.

9. Having heard the Ld. Counsel for the plaintiff, and comparing the packaging of the plaintiff and that of the defendant, I am of the opinion that there is a stark resemblance between the two packaging. The defendant has adopted a similar kind of packaging as that of the

plaintiff by copying the latter's colour scheme and get up. Thus, it would be just and fair to grant a decree of permanent injunction, restraining the defendant from continuing to adopt their packaging which bears a resemblance to that of the plaintiff. As regards the arguments made by the Ld. Counsel for the plaintiff qua the award of damages, I am of the opinion that the award of damages would seem superfluous at this point in time owing to the fact that the defendant had already stopped the production in 2003, which fact is not disputed by the plaintiff and further the packaging adopted by the plaintiff has also changed since the institution of the suit and that the get up used as before by them is now no longer in use. In any case, there is no cogent evidence led by the plaintiff to substantiate its entitlement to damages. Since the defendant has stopped the production long back, no meaningful purpose is to be served for directing delivery of alleged infringing pouches, packaging etc to the plaintiff.

10. Thus the suit is decreed in part with respect to the grant of a permanent injunction only as indicated above. The suit is hereby disposed.

M.L. MEHTA, J.

MARCH 1, 2013/ kk/rmm