Delhi High Court
Krbl Ltd. vs Pk Overseas Pvt. Ltd. on 4 April, 2014
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Judgment delivered on: April 04, 2014
+ FAO NO. 520/2011
KRBL LTD. ..... Appellant
Through: Mr. S.K.G. Bansal, Mr. Amit
Chanchal Jha, Mr. Ajay Amitabh
Suman, Mr.Pankaj Kumar & Mr.
Santosh Kumar, Advocates
Versus
PK OVERSEAS PVT. LTD. ..... Respondent
Through: Mr. Sandeep Sethi, Senior
Advocate with Mr. N.K.
Manchanda, Advocate
CORAM:
HON'BLE MR. JUSTICE KAILASH GAMBHIR
ORDER
KAILASH GAMBHIR, J
C.M. Appl. No.2992/2012
1. By this application filed under Section 5 of Limitation Act, the
applicant seeks condonation of delay of 32 days in filing the
accompanying review application. For the reasons stated in the
application, the same is allowed and the delay of 32 days in filing the
review application is condoned.
2. The application stands disposed of.
Rev. Pet. No. 109/2012
1. By this application moved under Order 47 Rule 1 read with Section
151 of Code of Civil Procedure, 1908 (hereinafter referred to as CPC)
the appellant/applicant seeks review of the order dated 7th December
2012, whereby this court had dismissed the appeal filed by the appellant
challenging the dismissal of its stay application by the learned trial court
in a suit for permanent injunction.
2. Addressing arguments in support of the review application, Mr.
S.K.G. Bansal, counsel for the appellant strongly contended that there is
an error apparent on the face of record in the order dated 7 th December
2012 passed by this court due to the following reasons:-
i) In paragraph 3 of the order, this court did not record the
submission made by counsel for the appellant correctly
thereby referring to the usage of the artistic packaging of the
appellant's product in a particular colour combination from
the year 2005 whereas the counsel submitted the year 2000
instead of 2005.
ii) Likewise the court had erred in recording the submission that
the respondent brought out a deceptively similar packaging
material with almost identical colour combination much
later in the year 2009, however the year mentioned by the
counsel for the appellant was 2004;
iii) In para 5 of the order, this court had erred in considering the
observation made by the learned trial court with regard to
placing on record various bills/ invoices by the appellant
from the year 2005 onwards while the bills placed on record
were from the year 2000 onwards.
iv) This court had missed the critical piece of documentary
evidence placed on record, the photocopy of Registration
Certificate issued by the Office of the Registrar of
Copyright granting registration of the artistic work in
depicting certain special features, get up and trade dress of
their product being sold under the trademark 'AARTI' in
favour of the appellant vide registration No. A-70764/2005
dated 28.4.2005 which became effective from the date of its
application dated 6th December, 2003.
v) The court had further ignored the fact admitted by the
defendant of adopting the mark 'Diya' alongwith its label
since the year 2004 in para 11 of preliminary objections to
the written statement.
3. The aforesaid indisputable facts which were placed on record, as
per the counsel for the appellant, were inadvertently glossed over by this
court as can be seen from the order dated 7 th December 2012 and
therefore, the mistake and error is writ large on the very face of it, on
the part of this court in not appreciating the facts in its right perspective.
4. Counsel further submitted that grievance of the appellant was not
with regard to the infringement of the trademark 'Aarti' or having any
problem with the trademark 'Diya' of the respondent nor even with the
colour of the label/packaging material brought up by the respondent. The
prime concern of the appellant both before the learned trial court and
this court was with regard to unabashed violation on the part of the
respondent towards the registered copyright of the appellant in the
said artistic work of their label 'Aarti', it's essential features, get up and
trade dress / packaging material.
5. Counsel further argued that had this court taken into consideration
the aforesaid facts, it would have certainly exercised its discretion in
favour of the appellant by the grant of ad-interim injunction and it is only
because of non consideration of the aforesaid facts, the appeal filed by
the appellant was dismissed.
6. In support of his arguments, counsel for the appellant placed
reliance on the following judgments:
a. M/s Viraj Manilal and Co. Vs M/s N.S. Bedi Co. And
Anr. (1988-PTC-62);
b. Board of Control for Cricket, India vs Netaji Cricket
Club AIR 2005 SC 592;
c. Dabur India Ltd. Vs Ashok Aushadhi Udyog 2009
(41) PTC 416 (Del.);
d. William Grant & Sons Ltd. Vs McDowell &
company Ltd. 1997 PTC (17);
e. D.C.S Bureau vs United Concern AIR 1967 Madras
381;
f. Glaxo Operations UK Ltd. Vs Samrat
Pharmaceuticals reported in AIR 1984 Delhi 265.
7. Refuting the arguments advanced by counsel for the appellant, Mr.
Sandeep Sethi, learned Senior Advocate appearing for the Respondent
vehemently urged for outright dismissal of the present review
application.
8. The counsel argued that in the disguise of the present review
application, the appellant has sought re-hearing of the matter and re-
appreciation of the facts and circumstances involved in the present case,
with the help of the judgments, which were not cited earlier and same is
impermissible in law. Counsel further argued that the scope of the review
in terms of Order 47 Rule 1 is very limited as the same cannot travel
beyond the well defined parameters envisaged in the rule itself. Counsel
further argued that if such a course is adopted, then it will amount to re-
appreciation and re-examination of the entire material on record, which
could only be done by way of challenging the said order and not by filing
a review before the same court. Counsel also argued that non
consideration of any material on record by the court, can afford a ground
to the aggrieved party to challenge the same before the higher court but
not to re-agitate the same issue before the same court.
9. Counsel further argued that this court has passed a well reasoned
order and error which has been pointed out by learned counsel for the
appellant in paragraph 3 of the order, just pertains to submission made by
counsel for the appellant and the said para is not a part of the operative
part of the order passed by this court. Further the Counsel argued that this
court in order dated 7th December 2012 has clearly observed that it had
gone through the entire material on record and found no ground to
interfere with the order passed by the learned trial court, after placing
reliance on the judgment of the Apex Court in the case of Skyline
Education Institute vs S L Vasawani reported in (2010) 2 SCC 142.
10. Counsel also argued that the counsel for the appellant failed to
point out that there was any error apparent on the face of the record or
something new was revealed, which was not within the knowledge of this
court despite the exercise of due diligence and thus in the absence of
satisfaction of basic ingredients as envisaged under Order 47 Rule 1 of
CPC, the appellant through the present review application cannot seek
from the court to re-write its judgment with the help of the judgments
cited by the counsel for the appellant at this stage.
11. Learned senior counsel for the respondent further disputed the
proprietorship of the appellant with regard to the artistic work of the
appellant by inviting attention of this court to the photocopy of the
registration certificate placed on record wherein the name of the author of
the artistic work has been disclosed to be that of Shri Rakesh Khanna.
Counsel argued that the appellant has not placed on record any
documentary evidence to show that the said artistic work was assigned by
Shri Rakesh Khanna in favour of the appellant. In support of his
arguments, counsel for the respondent has placed reliance on the
following judgements:-
a) Smt. Meera Bhanja vs Smt. Nirmala Kumar
Choudhary, AIR 1995 SC455
b) Parsion Devi vs Sumitri Devi, (1997) 8 SCC 715
c) Inderchand Jain (Dead) Through LRS. vs Motilal
(Dead) Through LRS., (2009) 14 SCC 663
d) Dolat Oil Industries vs Krishna oil Industries, 2002
(24) PTC 468 (Guj)
12. I have heard the learned counsel for the parties at considerable
length and given my anxious consideration to the arguments advanced by
them.
13. Contention raised by the counsel for the appellant in the review
petition was that this court had made the same error as committed by the
learned trial court at the time of passing of an interim order. The next
submission of the counsel for the appellant that this court had overlooked
the vital piece of documentary evidence, the same being the registration
certificate issued by the Office of the Registrar, Copyrights, granting
registration of the artistic work in favour of the appellant with regard to
the essential features of trade dress and get up of their packaging
material of their product being sold under the trademark 'AARTI'. The
last error pointed out by the counsel for the appellant was that this court
had overlooked the admission made by the respondent in the written
statement admitting the fact that he had adopted the trademark/
label/trade dress of their product 'Diya' since the year 2004, which
clearly demonstrates on record that the respondent adopted and started
using the trade dress/label on their packaging material of the trademark
'Diya' much after the application for registration was made by the
appellant i.e. 6th December, 2003 for their artistic work.
14. The power of review can be exercised only where the
circumstances are strictly covered within the explicit limits set out under
Order 47 Rule 1 CPC. The three specific grounds which have been
envisaged under Order 47 Rule 1 CPC, to review any order been passed
by the same court are :
(i) discovery of new and important matter or
evidence which, after exercise of due diligence,
was not within the applicant's knowledge or
could not be produced by him at the time when
the decree was passed or order was made
(ii) mistake or other error apparent on the face of
the record or
(iii) any other sufficient reason.
15. In the present case, the applicant has invoked the second ground,
i.e., order suffers from an error apparent on the face of record. An error
apparent on the face of record cannot be defined precisely or
exhaustively there being an element of indefiniteness inherent in its very
nature and it must be left to be determined judicially on the facts of each
case (Ref. Hari Vishnu v. Ahmed Ishaque, AIR 1955 SC 233).
16. In Thungabhadra Industries Ltd. v. Govt. of A.P. (1964) 5 SCR
174, a three-Judge Bench reiterated that the power of review is not
analogous to the appellate power and observed:
"A review is by no means an appeal in disguise
whereby an erroneous decision is reheard and
corrected, but lies only for patent error. We do not
consider that this furnishes a suitable occasion for
dealing with this difference exhaustively or in any
great detail, but it would suffice for us to say that
where without any elaborate argument one could
point to the error and say here is a substantial point
of law which stares one in the face, and there could
reasonably be no two opinions, entertained about it, a
clear case of error apparent on the face of the record
would be made out."
17. In Board of Control for cricket, India vs Netaji Cricket Club,
AIR 2005 SC 592, the Hon'ble Supreme Court had observed that any
application for review would not only be maintainable upon discovery of
new and important piece of evidence or when there exists an error
apparent on the face of record but also if the same is necessitated on
account of some mistake or for any other sufficient reason.
18. The Apex Court in Haridas Das Vs. Usha Rani Banik, AIR 2006
SC 1634 categorically held that the parameters for review are prescribed
in Order XLVII Rule I of the CPC and for the purposes of this lis, it
can permit the party to press for a rehearing on account of some mistake
or error apparent on the face of the record or for any other sufficient
reason.
19. The principles governing the review jurisdiction of the court has
been recently explained by the Apex Court in Kamlesh Verma v.
Mayawati & Ors., (2013) 8 SCC 320 and relevant para of the same is
reproduced as under:-
"20. Thus, in view of the above, the following
grounds of review are maintainable as stipulated by
the statute:
20.1. When the review will be maintainable:-
(i) Discovery of new and important matter or
evidence which, after the exercise of due
diligence, was not within knowledge of the
petitioner or could not be produced by him;
(ii) Mistake or error apparent on the face of the
record;
(iii) Any other sufficient reason.
The words "any other sufficient reason" has been
interpreted in Chhajju Ram vs. Neki, AIR 1922 PC 112
and approved by this Court in Moran Mar Basselios
Catholicos vs. Most Rev. Mar Poulose Athanasius &
Ors., (1955) 1 SCR 520, to mean "a reason sufficient
on grounds at least analogous to those specified in
the rule". The same principles have been reiterated in
Union of India vs. Sandur Manganese & Iron Ores
Ltd. & Ors.(2013) 8 SCC 337.
20.2. When the review will not be maintainable:-
(i) A repetition of old and overruled argument is
not enough to reopen concluded adjudications.
(ii) Minor mistakes of inconsequential import.
(iii) Review proceedings cannot be equated with the
original hearing of the case.
(iv) Review is not maintainable unless the material
error, manifest on the face of the order,
undermines its soundness or results in
miscarriage of justice.
(v) A review is by no means an appeal in disguise
whereby an erroneous decision is re-heard and
corrected but lies only for patent error.
(vi) The mere possibility of two views on the
subject cannot be a ground for review.
(vii) The error apparent on the face of the record
should not be an error which has to be fished
out and searched.
(viii) The appreciation of evidence on record is fully
within the domain of the appellate court, it
cannot be permitted to be advanced in the
review petition
(ix) Review is not maintainable when the same
relief sought at the time of arguing the main
matter had been negatived."
20. However, when I talk of an error which should be apparent on the
face of the record, then such error at least should be patent and easily
located and not an error for which you have to search. Once patent errors
are brought to the notice of the court by an aggrieved party, and those
errors have an important bearing on the subject matter of controversy
between the parties, it is manifest that for imparting substantial justice to
the parties the court is duty bound to rectify such errors found in the
order. The term "mistake or error apparent" signifies an error which is
evident per se from the record of the case and does not require detailed
examination, scrutiny and elucidation either of the facts or the legal
position. The error on account of some mistake or error apparent on the
face of record is permissible to rectified and decided judicially on the
facts of the case.
21. In the light of the aforesaid legal dicta, this court finds much force
in the argument raised by the counsel for the applicant that at the time of
passing of the order dated 7th December 2011, certain imperative errors
were committed by this court which are quite apparent. The most
important being the applicant having obtained the registration of the
artistic work of their trademark 'AARTI' with certain essential features
of trade dress and get up of their packaging material.
22. It is quite manifest that , the respondent herein has not claimed any
ownership in the said artistic work for which registration was granted in
favour of the appellant.
23. At the stage of deciding an interim application under Order 39 Rule
1 & 2 of CPC, I only need to consider the undisputed facts and the
material placed on record. On perusal of the documents placed on record
by the parties and the contentions raised by their respective counsels, this
court does not bear any doubt in order to review the order dated 7th
December, 2012 passed by this court. As per the counsel for the
appellant, there is an error apparent on the face of record as this court
recorded wrong submissions made by the counsel for appellant while
referring to the usage of the packaging material by the appellant, its year
of registration and the dates of various invoices produced.
24. The applicant and the respondent are in the same trade of selling
Basmati rice. The applicant has been selling their products under the
trademark 'AARTI' while the respondent has been selling their products
under the trademark 'DIYA'. The applicant had placed on record the
photocopy of the registration certificate of their artistic work in respect of
their label/packaging material which clearly shows that the applicant was
the registered proprietor of the artistic work of a particular design or get
up/layout and other essential features of their label/trade dress for
packaging their products 'AARTI'. The respondent, on the other hand, in
the written statement itself took a stand that he started using the particular
label/trade dress of their products 'DIYA' from the year 2004 and
therefore, using of the label and trade dress by the respondent for their
said product was much after the application was made by the applicant
for registration of their artistic work. The applicant has also placed on
record various invoices from the year 2000 onwards, in which the
invoices from the year 2003 also bear the said label of the applicant
which depicts that the applicant brought the said label having certain
essential features much prior to the introduction of the label 'DIYA'by
the respondent.
25. It is a settled legal position that for the purpose of infringement of
copyright, an exact reproduction or copy of the same is not necessary.
What is essential and sufficient to see is whether there is any reproduction
of substantial parts of the essential features of the artistic work of the
aggrieved party (Ref. D C S Bureau vs United Concern AIR 1967
Madras 381).
26. In C. Cunniah & co. Vs Balraj and Co. (1960) 1 Mad LJ 53 at pg
56, the bench had clearly laid down
"Applying this test, the degree of resemblance
between the two pictures, which is to be judged by
the eye, must be such that the person looking at the
respondents' picture must get the suggestion that it is
the appellant's picture. In this sense, the points of
similarity or dissimilarity in the picture assume some
importance.... We agree that this could not be the sole
test, though, incidentally, the points of resemblance
and dissimilarity assume some importance in the case
of finding out whether, taken as a whole, the
respondents' picture produces the impression in the
mind of any observer, which amounts to a suggestion
of the appellants' picture.
One picture can be said to be a copy of another
picture only if a substantial part of the former picture
finds place in the reproduction.
27. In Lord Herschel L C in Hanfstaengl vs Raines & Co. 1895 AC
20 (25), while dealing with that fact that there can be no test to decide
what a substantial part of the picture is. One useful test which has been
followed in several decisions of court, the Hon'ble court held as under:
".....it depends really, on the effect produced upon the
mind by a study of the picture and of that which is
alleged to be a copy of it, or at least of its design."
28. Under Section 48 of the Copyright Act, 1957 the Register of
Copyrights is a prima facie evidence of the particulars entered therein
and in view of this provision, this court does not find any merit in the
argument advanced by the counsel for the respondent that in the
registration certificate, name of the applicant is not mentioned against the
name of the author who had devised the artistic work. There is no
gainsaying that the author of the artistic work and one who engages such
author to design their work need not be the same person and it is the
person in whose favour and under whose employment, or under any
contract, the author has devised its artistic work, shall become the owner
in the absence of any agreement or contract to the contrary.
29. The applicant in appeal bearing FAO NO. 520/2011 dated
24.11.2011 claimed restraint of its copyright in the artistic work of the
essential features and layout of their trade dress of the products Basmati
rice being sold under the trademark 'AARTI' from the use and marketing
of same kind of label and packaging material by the respondent for
selling their product under the trademark 'DIYA'.
30. As per the case of the appellant, label including its overall get up
including arrangement of features of the label constitutes original artistic
work within the meaning of Section 2(c) of the Copyright Act, 1957
thereby entitling the appellant to copyright protection under Section 14
of the Copyright Act, 1957.
31. In Ardath Tobacco Company Ltd v. Munna Bhai, 2009 (39) PTC
208, the Court was satisfied that the cigarettes marketed by the
defendants had "copied the trade dress of the same goods of the plaintiff."
The Court was also impressed that despite the plaintiff's mark not being
used on the defendant's packet, the other features adopted were identical.
The Court then proceeded to observe that since single cigarette sticks
were sold more in this country than full packets, an action for
infringement of trade mark in relation to cigarette packets had to be
viewed in such light. The Court reasoned that since a casual purchaser
may be misled into thinking a certain packet was something that it
actually was not, there would be a possibility of confusion or deceit. The
judgment should be read in the context that the Court found the two rival
packets to so nearly resemble each other that there was likelihood of
confusion.
32. In Colgate Palmolive Company & Another v. Anchor Health and
Beauty Care Pvt. Ltd. 108 (2003) DLT 51, Colgate Palmolive , the tooth
powder of the defendant was having name "Anchor" as against the name
of plaintiff as "Colgate" . It was held by the Hon'ble Supreme Court that
the trade dress and combination varies from product to product and from
customers to customer and copying of the trade dress and colour
combination of product would also give rise to passing of action within
the definition of Trademarks Act, even if the names of the products were
altogether different. The court further held that similarity of trade dress
as substantially apparent from the look of the two packages would come
within the meaning of passing off. It is argued by counsel for the plaintiff
that in the present case also, it was a case of passing off and it was a fit
case for grant of injunction because of similarity in trade dress.
33. In Cadbury India Limited and Ors. Vs. Neeraj Food Product ,
142(2007)DLT724, the Delhi High Court held that "the packaging
adopted by the defendant is also pillow pack which is identical in size,
shape, colours and get up and conveys the same idea. The intention of the
defendant in copying the same is clearly dishonest and intended to ride
on the goodwill, reputation and popularity of the plaintiff's product
entitling the plaintiff to sustain its passing off action against the
defendant. The defendant is prima facie also violating thereby the
copyright of the plaintiff in the artistic work of plaintiff's packaging."
34. In another recent case of Gorbatschow Wodka v. John
Distilleries, 2011 (47) PTC 100 (Bom.) the Plaintiff, Gorbatschow
Wodka, filed an infringement action before the Bombay High Court
alleging that the Defendant has invaded its intellectual property rights by
adopting a deceptive variation of the shape of the bottles of the Plaintiff.
The court while deciding the said petition held as under:
20. In F. Hoffmann La Roche & Company A.G. v.
D.D.S.A. Pharmaceuticals Limited (1972) 1 R.P.C.
1 the Plaintiffs manufactured and marketed a drug
under the registered mark 'LIBRIUM' in distinctive
black and green capsules. The Defendant who was
also a pharmaceutical manufacturer, applied for and
was granted a compulsory licence in respect of the
Plaintiffs' patent and proceeded to market and
advertise the drug in black and green capsules which
were identical to those of the Plaintiffs except that
they bore letters different from those of the Plaintiffs.
An injunction was granted.
21. Mr. Justice R.M. Lodha (as His Lordship then was),
as a Single Judge of this Court, in Kemp and Company
v. Prima Plastics Ltd. 2000 PTC 96 considered an
action where the Defendants were alleged to have
infringed the registered design of a chair
manufactured by the Plaintiff and for passing off by
the Defendants by adopting a similar design, shape
and configuration. The Learned Single Judge cited
with approval the following extract from Copinger and
Stone James on Copyright:
There may, indeed, be cases where an article itself is
shaped in an unusual way, not primarily for the
purpose of giving some benefit in use or for any other
practical purpose but capriciously in order purely to
give the article a distinctive appearance characteristic
of that particular manufacturer's goods. In such a
case the manufacturer might be able, in the course of
time, to establish that he has a reputation and
goodwill in the distinctive appearance of the article
itself which will give him a cause of action in passing
off if his goods were copied. In those circumstances,
the putting of a copy on to the market with the
distinctive feature or combination of features in
question would amount to a misrepresentation that it
emanated from the Plaintiff.
The Learned Single Judge held as follows:
If the Plaintiff has to succeed on the ground of passing off,
he must show something more than mere similarity between
the goods. Exceptions apart, where an article is shaped in
an unusual way not primarily for giving same benefit in use
or for any other practical purpose, but capricious in order
purely to give an article a distinctive appearance,
characteristic of that particular manufacturer's goods, a case
may be made out by the Plaintiff that he has reputation and
goodwill in the distinctive appearance of the article itself
which could provide him a cause of action in passing off if
his goods were copied.
22. The test is whether the shape that has been adopted by
the Plaintiff is one that is adopted capriciously, purely to
give the article a distinctive appearance or characteristic of
the goods of the manufacturer. If that be so, the
manufacturer may be able to establish that he has a
reputation and goodwill in the distinctive appearance of the
article itself which would furnish a cause of action in passing
off. In a judgment of the Division Bench of this Court in
Aktiebolaget Volvo v. Volvo Steels Limited 1998 PTC
(18) (DB) the Division Bench has laid a considerable amount
of emphasis on the reason for the adoption of the mark. If
the Defendant has no plausible explanation, then that is
certainly a circumstance which must weigh in the balance.
In R.R. Oomerbhoy Pvt. Ltd. v. Court Receiver : 2003(27)
PTC 580 (Bom) a Division Bench of this Court adverted to
the fact that the shape of the container and of the plastic
bottle in which the Defendant had sold its product, had a
striking resemblance to those of the Plaintiff. In a
judgment of the Delhi High Court in Colgate Palmolive
Company v. Anchor Health and Beauty Care Pvt.
Ltd. 2003(27) PTC 478 a Learned Single Judge
observed that "trade dress is the soul for
identification" of goods to their source or origin and a
customer forms an overall impression of the source of
origin of the goods from a visual impression of the
colour combination as well as from the shape of the
container and packaging. A conscious imitation of the
colour combination, get up or layout of the container
would lead to the design of the Defendant to cause
confusion in the mind of the customer.
23. The Supreme Court in its judgment in Khoday Distilleries
Limited v. Scotch Whisky Association : 2008 (10) SCC 723
emphasized that the class of purchasers who are likely to
buy the goods by their education and intelligence and the
degree of care which they are likely to exercise in
purchasing or using the goods would be required to be
considered. In that context, the Supreme Court relied on the
earlier judgment in Cadila Health Care Ltd. v. Cadila
Pharmaceuticals: (2001) 5 SCC 73 The Supreme Court inter
alia emphasized that when the class of buyers is educated
and rich, the test is to be applied is different from one
where the product would be purchased by villagers or by the
illiterate and poor. The Supreme Court held in that case that
had the test been applied, the matter might have been
different and in a given case probably the Court would not
have interfered. The Court was, however, inclined to
interfere because a wrong test had been applied which had
led to a wrong result. In the present case, the Court must
undoubtedly place in the balance the fact that both the
Plaintiff and the Defendant are selling Vodka which has a
distinctive clientele. For the purposes of the application for
interlocutory relief one can well proceed on the basis, as
was suggested by the Defendant, that the purchasers of
Vodka are primarily educated and well placed in life. But
that by itself is not dispositive of the issue as to whether the
conduct of the Defendant does or does not amount to
passing off. In the present case, there are several
circumstances, which must equally be placed in the balance
by the Court. Firstly, the Plaintiff has prima facie established
both a trans border reputation as well as a reputation in the
market in India and the fact that the unique shape of the
bottle is an important element in tracing the source of origin
of the product to the Plaintiff; Secondly, under the Trade
Marks Act, 1999, the shape of goods and their packaging is
statutorily recognized as a constituent element of a trade
mark as distinguishing the goods or services of a person
with those of others; Thirdly, the submission of the Plaintiff
that no other manufacturer either globally or in India has
adopted the shape of the bottle of the Plaintiff (save and
except for the Defendant) has not been disputed in the
course of submissions by counsel for the Defendant;
Fourthly the shape which has been adopted by the Plaintiff
is unique to the point of being capricious. The Defendant has
absolutely no plausible or bona fide explanation for adopting
a shape which is strikingly similar; Even though the ad
interim order of the Court permitted the Defendant to sell
Vodka, though in a 'distinct shaped bottle' the Defendant
has chosen not to do so. The Defendant has no explanation
of how this particular design was adopted; and Fifthly, the
attempt of the Defendant if it is allowed would result in
diluting the distinctiveness and exclusivity of the mark of
the Plaintiff which has as an essential ingredient, the
distinctive shape of the bottle in which Vodka is sold. This
would only embolden other infringers to invade upon the
proprietary right of the Plaintiff and would ultimately result
in a destruction of the goodwill associated with the mark of
the Plaintiff.
25. Perhaps the point may well be stated in the following
expression of principle in the judgment in Slazenger & Sons
v. Feltham & Co. Nov.6, 1889 R.P. Design 531 which
emphasizes "the honesty of the case":
... There is sufficient nearness, sufficient neighbourhood, in
the one word to the other, to justify me in coming to the
conclusion that it is calculated to deceive. I shall, no doubt,
be assumed to conclude and I make no secret that I do
conclude that that finding is at least consistent with the
honesty of the case.
As Lord Justice Lindley held in that case:
Well, what is that for? One must exercise one's common
sense, and, if you are driven to the conclusion that what is
intended to be done is to deceive if possible, I do not think it
is stretching the imagination very much to credit the man
with occasional success or possible success. Why should we
be astute to say that he cannot succeed in doing that which
he is straining every nerve to do?
35. With the aforesaid legal spectrum and in view of the facts and
circumstances of the present case, the appellant has been able to make
out a prima facie case for grant of injunction against the respondent.
36. On a bare look of the label of the applicant and that of the
respondent, there can be no hesitation in saying that the respondent has
substantially copied the essential features of the artistic work of the
applicants label, prominent being the two white line border in a blue
temple like shape, yellow Diya shown in a circle with a red background,
attached with a rectangular kind of box with the brand name 'ÁARTI'
inside.
37. In light of the foregoing discussion, prima facie I find that the
artistic features as adopted by the respondent is very similar to the
applicant's label/ trade dress that there is every likelihood of the same
deceiving unwary purchasers that the goods acts which they were
purchasing were those of the plaintiff. In the light of this discussion, I
have no hesitation in holding that the applicant herein has made out a
prima facie case against the respondent entitling it to grant of
interlocutory injunction.
38. I am inclined to allow the review petition filed by the appellant
under Order 47 rule 1 and 2 of CPC, thereby reviewing the order dated 7th
December 2012 passed by this court. Accordingly the present appeal
bearing FAO No. 520 of 2011 is allowed in terms of its prayer clause (a)
and (b).
39. Accordingly the grant of ad- interim injunction under Order 39
Rule 1, 2 stands allowed and the respondent , its directors, employees,
servants, agents etc. are restrained from marketing, selling or using in any
manner whatsoever the appellant's registered copyright in its artistic
work/ trade dress/ trade label which is deceptively or confusingly similar
to that of the appellant till the final disposal of the present case.
40. It may be noted that nothing expressed herein above shall be treated
as an expression on the merits of the case.
41. Hence, the review Petition stands allowed in the above terms.
KAILASH GAMBHIR, J
APRIL 04, 2014
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