Delhi High Court
M/S Dabur India Ltd. vs Rhim Pharmaceuticals on 22 May, 2014
IN THE HIGH COURT OF DELHI AT NE W DELHI
CS (OS) 1460/2010
M /S DABUR INDIA L TD . ..... PLAINTIFF
Through: Mr. Manish K Mishra,
Advocate
Versus
RHIM PHARMACEUTICALS ..... DEFENDANT
Through: Exparte
CORA M:
HON'BLE MR. JUSTICE SANJEEV SACHDEVA
Judgment
22.05.2014
SANJEEV SACHDEVA, J. (Oral)
1. The Plaintiff has filed the present Suit for permanent
injunction for restraining the Defendant from infringing
the trademark, copyright and design of the Plaintiff.
2. The Plaintiff claims to be a leading manufacturer of a
large range of pharmaceuticals, toiletries and medicinal
preparations. The Plaintiff claims to have has been
carrying on its trading activities since the year 1884.
3. The Plaintiff claims that the reputation of the Plaintiff
has been built for over a century with the input of
painstaking effort and huge investments. The goods of
the Plaintiff are marketed under its house mark
DABUR as well as under several trademarks
distinguishing one from the other such as HAJMOLA,
PUDINHARA, VATIKA, ANMOL, DABUR AMLA
HAIR OIL, DABUR JASMINE HAIR OIL, DABUR
GULABARI, DABUR LAL DANT MANJAN etc..
4. The Plaintiff claims that the trade mark DABUR of the
Plaintiff, has turnover of over Rs.2800 crores and that it
is a household brand in India. As per the Plaintiff one of
the well know n and reputed products of the Plaintiff in
Ayurvedic personal care/oral hygiene segment is
"DABUR LAL DANT MANJAN" (Hindi)/"DABU R
RED TOOT H POWDER" (English).
5. As per the Plaintiff "DABUR LAL DANT MA NJAN"
was launched by the Plaintiff in the year 1970. It is
contended that over the period of time, the said product
has attained immense goodwill and popularity amongst
the consumers of all segments in society.
6. The Plaintiff claims that it has been selling its LAL
DANT MANJAN or RED TOOTH POWDER in a
distinctive packaging under the house mark DABU R
and its "tree logo". The Plaintiff is not claiming any
right either on LA L DANT MANJAN or RED TOOTH
POWDER. Though, it is contended that over the last
four decades, the packaging and get up of Plaintiff's
DABUR LAL DANT MANJAN has undergone
changes. The DABUR LAL DANT MANJAN label of
the Plaintiff is stated to be registered since 1998 and
2005 under The Trade Marks Act. The Plaintiff claims
to have adopted the existing label of DABUR LAL
DANT MANJAN in January 2008.
7. The Plaintiff claims that it earlier used to market its
DABUR LAL DANT MANJAN in a straight
cylindrical metal container and thereafter cylindrical
plastic bottle with short neck section since 1984 and
1998 respectively. It is contended that in the year 2005,
the Plaintiff created an original design comprising of a
plastic cylindrical container with tapering upper and
lower portion from the middle section. The middle
section is broader and the upper section is elongated
with circular top and curvaceous side panels. It is
contended that the cap is so designed so as to continue
the converging tapering effect of the bottle. The front
and rear section are flattened. The Plaintiff claims to
have obtained the design registration in respect of the
said container and the cap vide design registration
No.198675 dated 28 th February, 2005 which is valid and
subsisting till 28.02.2015.
8. The Plaintiff claims to have introduced the following
packaging using a new label on the container:
9. The Plaintiff claims the following characteristics and
distinguishing features:
(i) The packaging has a colour combination of
red, white and green. The cap of the
packaging is red in colour with circular
circumference with a small flip towards the
front. The trade mark DABUR with a "tree
logo" is embossed upon top section of the
cap.
(ii) The container has background colour
combination of predominantly red, white
and green. The trade mark DABUR is
represented in white letterings towards the
upper section of the front panel.
(iii) The generic description of the product
namely LAL DANT MANJAN appears in
white lettering below DABUR. The word
LAL is written in larger font and DAN T
MANJAN in much smaller fonts below the
word LAL;
(iv) The lower section of the packaging contains
a depiction of leaves, flowers, fruits
depicting herbs in green and red with
depiction of cloves scattered in herbs.
(v) The middle section of the packaging bears
an oval device merging in the herbs of the
Bottom section. The oval device bears the
shiny rays in white, blue and silver showing
the sparking shiny background with a picture
of happy family of four members.
(vi) The above features are depicted in Hindi on
front side of the container;
(vii) The back side of the container depicts
DABUR RED TOOTH POWDER in white
lettering. DABUR and RED is written in
larger font and Tooth Powder in much
smaller fonts below the word RED;
(viii) The composition of the product, name of
manufacturer etc. are depicted in black
lettering. The device of one sparkling tooth,
an oval device bearing a picture of beaker
and two glasses with herbs in it is and the
Plaintiff's "tree logo" with the trade mark
DABUR is also depicted at the back panel".
10. The Plaintiff claims novelty in shape, configuration of
the container along with the distinctive get up including
colour combination, layout and arrangement of features
and contends that they together constitute a distinctive
trade dress of DABUR LA L DANT MANJAN
marketed by the Plaintiff, distinguishing the LA L
DANT MANJAN originating from the Plaintiff.
11. The Plaintiff claims that the LAL DANT MANJAN is
purchased and consumed by all strata of society
including illiterate and semi-illiterate in-habitat in small
townships, big cities, semi-rural cities, villages etc., and
as such the get up and the trade dress pays a significant
role in distinguishing the LAL D ANT MANJAN
manufactured and marketed by the Plaintiff.
12. The Plaintiff claims that on account of extensive use,
the trade of dress and get up of DABUR LA L DAN T
MANJAN packaging, the product of the Plaintiff has
become distinctive as insignia and indication of source
and origin of LAL DANT MANJAN so marketed in the
minds of consumers at large, particularly, the class of
consumers who may not be literate or semi-literate in
Hindi/English language and may be relying w holly on
their visual aid and recall of get up of the Plaintiff's
packaging.
13. The Plaintiff claims that the sale of Plaintiff's LAL
DANT MANJAN for the year 2009-2010 had been over
Rs.133 crores and the promotional expenses had been
over Rs.5 crores.
14. The Plaintiff claims to have spent several crores on
advertisement and promotion of the DABUR LAL
DANT MANJAN through various print and electronic
media and claims that the annual sales are in several
hundred crores.
15. The Plaintiff claims that the artistic work has been
designed by Mr. A ngad Singh Negi of M/s. Bates India
Pvt. Ltd., Milap Niketan, 8A, Bahadurshah Zafar Marg,
New Delhi-110002, at the instances of the Plaintiff for
consideration paid and an assignment deed has been
executed whereby all rights, interests and title in the
artistic work were assigned to the Plaintiff for the
complete term of protection as provided under the
Copyright Act, 1957.
16. The Defendant claims to have come to the know in the
4th week of June, 2010 through its sales representatives
that the Defendant is manufacturing and marketing
LAL DANT MANJAN in similar container having
same colour combination, trade dress and get up as that
of DABUR LAL DANT MANJAN of the Plaintiff.
17. The Plaintiff has therefore filed the present Suit for
passing off and infringement of Trademark, copyright
and design.
18. Under Section 28 of the Trademark Act, 1999
(hereinafter referred to as the Act) exclusive rights are
conferred on the registered proprietor of the trademark
to use the said trademark and obtain the relief of
injunction. Under Section 29(1) of the Act, use of
identical mark in respect of identical goods in the
course of trade would amount to infringement of the
trademark.
19. Section 2(m) of the Trade Marks Act, 1999 lays dow n
that "mark" includes a device, brand, heading, label,
ticket, name, signature, word, letter, numeral, shape of
goods, packaging or combination of colours or any
combination thereof and section 2 (q) lays down that
"package"; includes any case, box, container, covering,
folder, receptacle, vessel, casket, bottle, wrapper, label,
band, ticket, reel, frame, capsule, cap, lid, stopper and
cork. Section 2 (zb) defines trademark amongst others
to mean a mark capable of being represented
graphically and which is capable of distinguishing the
goods or services of one person from those of others
and may include shape of goods, their packaging and
combination of colours.
20. The Supreme Court in the case of B ELL CO . VS METAL
GOODS MFQ . CO . AIR 1971 SC 898 has laid down that
on registration of a trademark, the registered proprietor
gets, under section 28, the exclusive right to the use of
such trade marks in relation to the goods in respect of
which the trade mark is registered and to obtain relief in
respect of any infringement of such trade mark.
21. The Supreme Court has further laid down in A MERICAN
H OME P RODUCTS V S M AC L ABORATORIES AIR 1986
SC 137 that when a person gets his trade mark
registered, he acquires valuable rights by reason of such
registration. Registration of his trademark give him the
exclusive right to the use of the trademark in connection
with the goods in respect of which it is registered and if
there is any invasion of this right by any other person
using a mark w hich is the same or deceptively similar
to his trade mark, he can protect his trade mark by an
action for infringement in which he can obtain
injunction.
22. The Defendant was served by publication in the
newspaper 'Nai Duniya' (Hindi Edition) dated 7.3.2012
and the Hindustan Times circulating in Indore on
25.04.2012. Despite service by means of publication
nobody entered appearance on beh alf of the Defe ndan t
and accordingly the Defendant was proceeded ex-
parte vide order dated 26.7.2012.
23. The Plaintiff has led ex parte evidence of the Deputy
General Manager-legal, Dabur India Limited &
Constituted Attorney of the Plaintiff Comp any. He has
exhibited the Board resolution dated 17.9.2009 duly in
his favour as Exhibit PW-1/1.
24. The Plaintiff has deposed that it secured the
registrations of DAB UR LAL DANT MANJAN label
of 1998 and 2005 under the Trade Mar ks Act vide trade
mark registration no. 852970 in Class 03 dated
23/04/1999 and 1356522 in Class 5 dated 11/05/2005.
The trademar k registration certificate has been
exhibited as Exhibit PW-1/2. The Design registration
certificate has been exhibited as Exhibit PW-1/3.
Photograph of Plaintiffs' "RED T OOT H POWDER "
plastic container in use since 2008 has been exhibited
as Exhibit PW1/4.
25. The Plaintiff has deposed that the sale of Plaintiff's
LAL DANT MANJAN for the year 2009-2010 had bee n
over Rs.133 crores and the promotional expenses had
been over Rs.5 crores. Prom otional invoices pertainin g
to DAB UR LAL DANT MAN JAN has been exhibited
as Exhibit PW 1/5.
26. No objection certificate dated 19.5.2010 issued by Mr.
An gad Singh Negi of Bates India Pvt. Ltd. in favour of
Dabur India Ltd. has been exhibited as Exhibit P W1/6.
Assign ment deed dated 19.5.2010 executed between
M/s. Bates India Pvt. Ltd. and the Plaintiff herein
whereby all rights, interests and title in the artistic
work i.e. DAB UR LAL DANT MANJAN were
assigned to the Plaintiff for the complete term of
protection as provided under the Cop yright Act, 1957
has been exhibited as Exhibit P W1/7.
27. Photograph of Defend ant's "DENT AGUARD RED
T OOT H POWDER " has been exhibited as Exhibit
PW1/ 8.
28. Comparative chart of the prominent features of
competing packaging of the parties is as under:
DABUR LAL DANT DENTAGUARD LAL
MANJAN TRADE DRESS DANT MANJAN TRADE
DRESS
(i) The packaging has a (i) The packaging has a
colour combination of colour combination of
red, white and green. The red, white and green.
cap of the packaging is The cap of the
red in colour with circular packaging is red in
circumference with a colour with circular
small flip towards the circumference with a
front. The trade mark small flip towards the
DABUR with a "tree front.
logo" is embossed upon
top section of the cap.
(ii) The container has (ii) The container has
background colour background colour
combination of combination of
predominantly red, white predominantly red,
and green. The trade mark white and green. The
DABUR is represented in trade mark
white letterings towards DENTAGUARD is
the upper section of the represented in white
front panel. letters towards the
upper section of the
front panel.
(iii) The generic description of (iii) The generic
the product namely LAL description of the
DANT MANJAN appears product namely LAL
in white lettering below
DANT MANJAN
DABUR. The word LAL
is written in larger font appears in white
and DANT MANJAN in lettering below
much smaller fonts below DENTAGUARD. The
the word LAL; word LAL is written in
larger font and DANT
MANJAN in much
smaller fonts below
the word LAL;
(iv) The lower section of the (iv) The lower section of
packaging contains a the packaging contains
depiction of leaves, a depiction of leaves,
flowers, fruits depicting flowers, fruits
herbs in green and red depicting herbs in
with depiction of cloves green and red with
scattered in herbs. depiction of cloves
scattered in herbs.
(v) The middle section of the (v) The middle section of
packaging bears an oval the packaging bears an
device merging in the oval device merging in
herbs of the bottom the herbs of the bottom
section. The oval device section. The oval
beats the shiny rays in device bears the shiny
white blue and silver rays in white, blue and
showing the sparking silver showing the
shiny background with a sparking shiny
picture of happy family of background with a
four members. picture of happy
family of four
members.
(vi) The above features are (vi) The above features are
depicted in Hindi on front depicted in Hindi on
side of the container; front side of the
container;
(vii) The back side of the (vii) The back side of the
container depicts DABUR container depicts
RED TOOTH POWDER DENTAGUARD RED
in white lettering. TOOTH POWDER in
DABUR and RED is white lettering.
written in larger font and DENTAGUARD and
Tooth Powder in much RED is written in
smaller fonts below the larger font and Tooth
word RED; Powder in much
smaller fonts below
the word RED;
(viii) The composition of the (viii) The composition of
product, name of the the product, name of
manufacturer etc. are manufacturer etc are
depicted in black depicted in black
lettering. The device of lettering. An oval
one sparkling tooth, and device bearing a
oval device bearing a picture of one
picture of beaker and two sparkling tooth and
glasses with herbs in it is herbs in it and a "tree
and the Plaintiff's "tree logo" with the trade
logo" with the trade mark name RHIM is also
DABUR is also depicted depicted at the pack
at the back panel panel.
27. The two competing packaging of the parties is as
under:
Plaintiff's Defendant's
28. The comparison of the two competing bottles clearly
shows that the two are virtually identical in respect of
packaging. The Defendant's packagin g is deceptively
similar to the registered design of the Plaintiff and
trade dress and get up of the L AL DANT MANJAN
packaging of the Plaintiff in respect of colour
com bination and overall shape and configuration of
the packagin g and their caps.
29. The Plaintiff has deposed that the goods in question
are purchased by a substantial class of consumers wh o
are illiterate or incapable of reading the brands
represented and have to rely upon their visual aid to
recall the overall idea and impression of the get up of
packaging used by the Plaintiff.
30. The Plaintiff has deposed that the Plaintiff has been
prominently displaying the design of the container,
trade dress including colour com bination in the sales
promotional material including magazines, television
advertisements extensively in the course of trade since
2005. And further deposed that on account of such
extensive use, the said trade dress, get-up and colour
com bination of LAL DANT MANJAN packagin g in the
colour combination of red, white and green has come
about to acquire distinctiveness as a sym bol of trade
and source of the Plaintiff's LAL DANT MAN JAN.
31. The Plaintiff has produced on record orders passed in
various suits filed by the Plaintiff wherein ad-interim
injunctions have been granted in favour of the Plaintiff.
32. The Defendant has not entered appearance to dispute
the case of the Plaintiff. Nothing has come on record to
contradict the stand of the Plaintiff and to discredit the
deposition of the witness of the Plaintiff.
33. I am of the considered view that the use of the
impugned design, trade dress and get up of pac kagin g
used by the Defend ant in relation to LAL DANT
MAN JAN is likely to lead to confusion and deception
in the minds of the consumers on account of their
overall similarity with those of the Plaintiff in respect
of overall colour combination of red, white and green,
shape and configuration and its packagin g.
34. Though the Defendant is not using the mar k DAB UR
of the Plaintiff, it is clear that use of an identical
packaging, trade dress and style by the Defendant
would create confusion in the minds of the consumers
about the source of its LAL DANT MANJAN on
account of visual similarity between the trade dress
and get up of the Defend ant's packagin g with those of
the Plaintiff predominantly on accoun t of similarity of
colour combination of red, white and green as well as
the lay out and arran gement of features including the
cap, the design of the container, each being identical to
design, colour combination and over all get up of
packaging of DAB UR LAL DANT MANJAN.
35. In view of the above, I am of the considered opinion
that the Plaintiff is entitled to a decree of permanent
and mandatory injunction and also of delivery up in
terms of Paras 30 (i) to (iv) of the Plaint.
36. With regard to the prayer of the Plaintiff for a decree
for recovery of damages for Rs. 20,00,000/- is
concerned, counsel for the Plaintiff has relied upon the
Judgment of this Court in T IME INCORPORATED VS .
L OKESH SRIVASTAVA AND ANR 116 (2005) DLT 599
to contend that the Courts dealing with actions for
infringement of trademarks, copy rights, patents etc.
should not only grant compensatory damages but award
punitive damages also with a view to discourage and
dishearten law breakers who indulge in violations with
impunity out of lust for money so that they realize that
in case they are caught, they would be liable not only to
reimburse the aggrieved party but would be liable to
pay punitive damages also, which may spell financial
disaster for them.
37. In the case of HERO HONDA MOTORS L TD . V . SHREE
ASSURAMJI SCOOTERS , 125 (2005) DLT 504 it has
been held that damages in such a case should be
awarded against Defendants who choose to stay away
from proceedings of the court and they should not be
permitted to enjoy the benefits of evasion of court
proceedings. The rationale for the same is that while
Defendants who appear in court may be burdened with
damages while Defendants who choose to stay away
from the court would escape such damages. The
actions of the Defendants result in affecting the
reputation of the Plaintiff and every endeavour should
be made for a larger public purpose to discourage such
parties from indulging in acts of deception.
38. In the present case, the Defendant has chosen to stay
away from the proceedings and has not filed any
defense to the pleas of the Plaintiff. I am accordingly of
the considered opinion that the Plaintiff is entitled to
damages from the Defendant which are quantified at
Rs. 3 lakhs.
39. A decree is thus passed in favour of the Plaintiff and
against the Defendants in terms of the Para 30 (i) to
(iv) of the plaint and the Plaintiff is also entitled to a
decree for damages for a sum of Rs 3 lakhs against the
Defendant.
40. The Plaintiff shall also be entitled to costs.
41. Decree sheet be drawn up accordingly.
SANJEEV SACHDEVA, J
May 22, 2014
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