Delhi High Court
Perfetti Van Melle S.P.A. & Anr. vs Anil Bajaj & Ors. on 17 February, 2014
$~ 49
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 72/2013
% Order dated 17.02.2014
PERFETTI VAN MELLES.P.A & ANR ..... Plaintiffs
Through: Mr.Sushant Singh and Mr.P.C. Arya, Advs
versus
ANIL BAJAJ & ORS ..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE G.S.SISTANI
G.S.SISTANI, J (ORAL)
1.
Plaintiffs have filed the present suit for permanent injunction, restraining
infringement and passing off of trade dress rights, copyright, delivery up
against the defendants. On 14.1.2005 while issuing summons in the suit
an ex parte injunction was granted in favour of the plaintiff and against
the defendants, restraining the defendants from marketing and selling their
products in the packaging/wrapping with the trade dress, get-up and
design of the plaintiff. As despite service none appeared on behalf of
defendants, defendants no.1 to 4 were proceeded ex parte on 28.1.2014
and on 4.9.2013 defendant no.5 was deleted from the array of parties. In
view of the fact that the plaint is duly supported by the affidavit of the
authorized representative of the plaintiffs, it is not necessary to direct the
plaintiffs to lead evidence in the matter and the plaint shall be treated as
an affidavit. The documents filed by the plaintiffs stand duly exhibited.
2. As per the plaint, Sh.Sudhir D. Ahuja, is the constituted attorney of the
plaintiff no.1 in India. A copy of the notarized power of attorney in
favour of Mr.Ahuja has been exhibited as Ex.P-4. The Plaintiff No. 1 is
stated to be a renowned company engaged in the manufacture, sale and
distribution of, inter alia, confectionery items including candies, toffees,
mints, breath fresheners, chewing gum, bubble gum, lollipops etc. under
various world famous trademarks. The products of the Plaintiff No. 1 are
available in many countries of the world, including India, under well
known trademarks such as ALPENLIEBE, ALPENLIEBE LOLLIPOP,
BIG BABOL, CENTER FRESH, CHLOR-MINT, CHOCOLIEBE,
CHUPA CHUPS, COFITOS, FRUITTELLA, HAPPYDENT WHITE,
MARBELS, MENTOS, amongst others. The Plaintiff no. 2 entered the
snacks segment with an innovative filled and non-fried ready-to-eat salty
snacks product for the first time in India in 2011 with the launch of its
„stop not‟ range of snacks. All these products are available both within
and outside the jurisdiction of this Hon'ble Court.
3. It is also pleaded in the plaint that the plaintiff No. 1 began its commercial
operations in 1946 when its founders, brothers Ambrogio Perfetti and
Egidio Perfetti opened Perfetti Dolcificio Lombardo in Lainate, near
Milan in Italy. Its corporate name was subsequently changed to Perfetti
S.p.A. In March 2001, the plaintiff No. 1 acquired Van Melle B.V.
(founded in 1841 by Izaak Van Melle), a confectionery manufacturing
company, to form the Perfetti Van Melle Group. The combined strength
of the two entities formed one of the most formidable confectionery
majors in the world, giving consumers the benefit of world class quality at
affordable prices. The plaintiff No. 1 has its own manufacturing units in
Italy, Bangladesh, Brazil, China, Indonesia, Turkey, Vietnam, Holland,
U.S.A, Mexico, Russian Federation, Sri Lanka, Spain, and India. The
plaintiff No. 1 has many sales and distribution offices throughout the
world.
4. It is also pleaded in the plaint that in India, the plaintiff No. 1 operates
through its subsidiary, Perfetti Van Melle India Pvt. Ltd., which is the
plaintiff No. 2 herein. The plaintiff No. 2 is a company incorporated on
26 June, 1992 under the Companies Act, 1956. The plaintiff No. 2 has its
main offices in Gurgaon and Delhi, and operates throughout India, and is
the authorized user of all trademarks of the plaintiff No. 1 in India. The
plaintiff No. 2, in effect, conducts its business using the know-how,
technology, and the intellectual property rights of the plaintiff No. 1, and
is rated as one of the best companies in India in the business of
confectionery, chewing gum, bubble gums, etc. The plaintiff No. 2 has
diversified and expanded its products portfolio to ready-to-eat, packaged
salty snacks business. Documents evidencing the Plaintiff No. 2's
business activities and range of products for India are exhibited as Ex. P-
5.
5. The suit has been filed through its director and Head - Legal, Sh.Harsh
Arora, who has been duly authorized by the Board Resolution dated
7.12.2007 exhibited as Ex.P-6.
6. It is also stated in the plaint that the plaintiff no.1 owns and operates
several websites, including its primary website, www.perfettivanmelle.it,
which provides detailed information about the company and its range of
products available in different countries and is accessible by Internet users
all over the World, including India, both within and outside the
jurisdiction of this Hon'ble Court. The Indian website of the plaintiffs is
www.perfettivanmelle.in. Information about the plaintiff companies, their
history, business, brands and products etc., as available on the
aforementioned websites, are exhibited as Ex. P-7.
7. It is further stated in the plaint that over the years, the plaintiff No. 1 has
introduced several products in the market, all of which have been well
received all over the world, including India, and the corresponding
names/trademarks have attained famous mark status. The annual
worldwide turnover figures and advertisement expenses of plaintiff No.1
for the years 2001 to 2011 are given below:
Years Annual Turnover Advertisement
figures Expenses
(million USD) (million USD)
October, 2012)
8. It is further stated in the plaint that the plaintiff no. 1 adopted the
trademark „STOP NOT‟ in the year 2009 for ready-to-eat packaged salty
snacks, and launched the range of „STOP NOT‟ brand snacks in India in
April 2011 and „STOP NOT DISK‟ in 2012. Counsel for the plaintiffs has
submitted that the trade dress, packaging and labels of the Plaintiffs'
„STOP NOT‟ range of products are artistically created with distinctive
designs thereon to distinguish the brand. Copy of the registration
certificate for the „STOP NOT‟ mark and status of all „STOP NOT‟ marks
of the plaintiffs are collectively exhibited as Ex.P-9.
9. Counsel for the plaintiffs submits that sometime in May 2012, the
plaintiff came to know that the defendants were manufacturing and
marketing savoury snacks under the name "Mr Bajaj Animal Kids".
Counsel submits that the 'Animal Kids' packaging, the pack layout and
overall design used by the defendants is identical to the plaintiffs' „STOP
NOT‟ pack. It is further submitted that the defendants have lifted the
entire artwork, layout, colour scheme, design and the individual features
therein, in toto, from the plaintiffs' prior adopted and launched „STOP
NOT‟ pack.
10. Counsel further submits that the plaintiffs sent a cease and desist notice to
the defendants No. 1-3 on 23.05.2012, requiring the defendants to stop
using the "Animal Kids" pack/label which was a nearly identical copy of
the plaintiffs' „STOP NOT‟ pack and trade dress. The defendants sent a
defiant reply on 13.06.2012 refusing to give up use of the offending
product pack. Copies of the cease and desist notice served by the
plaintiffs along with the defendants‟ reply are collectively exhibited as
Ex.P-11.
11. I have heard counsel for plaintiffs and also perused the plaint and the
documents which have been placed on record. On the basis of the
averments made in the plaint duly supported by an affidavit, which has
remained unrebutted, the plaintiffs have been able to establish that they
are the registered proprietor of the trade-mark „STOP NOT‟ in Class 30 of
the Trademarks Act and prior user of the „STOP NOT‟ trade dress. A
comparison chart, illustrating the product images of plaintiff and
defendants, exhibited as Ex. P-3, evidences that the defendants have lifted
the entire artwork, layout, colour scheme as well as design from the
plaintiffs‟ „STOP NOT‟ trade dress.
12. Although the reports filed by both the local commissioners reflect that no
packets were found at the given addresses of the defendants which bore a
similarity to the plaintiffs‟ trade dress, however, the plaintiffs have placed
on record „STOP NOT‟ look alike product packs.
13. In my view, the use of the „Animal Kids‟ packaging by the defendants,
which is a substantial reproduction of the plaintiffs‟ „STOP NOT‟ trade
dress, is likely to dilute the distinctive character of the plaintiff's packaging
and the same is likely to erode the goodwill and reputation of the
plaintiff. Having regard to the plaintiff‟s rights as a registered proprietor of
„STOP NOT‟ mark and as a prior user of the „STOP NOT‟ trade dress, the
suit is accordingly decreed in terms of prayers (a) to (c) of the plaint.
I.A. 542/2013
14. In view of the fact that the suit stands decreed, the present application
stands disposed of.
G.S.SISTANI, J
FEBRUARY 17, 2014
ssn
