Delhi High Court
Godfrey Phillips India Limited vs P.T.I Private Limited & Ors. on 22 December, 2017
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS (Comm) No. 851/2017& IA Nos.14952-54/2017
% Reserved on: 19th December, 2017
Pronounced on : 22nd December, 2017
GODFREY PHILLIPS INDIA LIMITED ..... Plaintiff
Through: Mr. Mahir Malhotra, Mr.
Mukul Mathur, Mr. Devang,
Advocates with Mr. Ravindra
Kumar Gautam, AR of plaintiff.
versus
P.T.I PRIVATE LIMITED & ORS. ..... Respondents
CORAM:
HON'BLE MR. JUSTICE VALMIKI J.MEHTA
To be referred to the Reporter or not? YES
VALMIKI J. MEHTA, J
1. Plaintiff-Godfrey Phillips India Limited has filed the
present suit seeking injunctions, damages, etc alleging infringement of
plaintiff's registered trademarks and passing off. The prayer clauses
of the plaint read as under:-
"PRAYER
In view of the aforesaid facts and circumstances, it is humbly prayed to this
Hon'ble Court that it may be pleased to pass:
a. A decree of permanent injunction, restraining the defendants, their
partners, proprietors, employees, agents, distributors, stockiest,
licensees and all others acting for and on his behalf, from:
i. manufacturing, marketing, supplying, distributing, selling,
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trading, promoting the impugned products under the mark/label
FUN GOLD SUPER LEAF (Lable) deceptively similar to the
Plaintiff's registered trademarks including inter alia
CAVANDERS GOLD LEAF and the distinctive white, green
and gold packaging or any other mark which is identical to or
deceptively similarly to the Plaintiff's said registered marks,
and/or from using in any manner, whatsoever, the Plaintiff's
said registered marks, which amounts to infringement of the
Plaintiff's exclusive rights in the said registered trademarks.
ii. manufacturing, marketing, supplying, distributing, selling,
trading, promoting the impugned products or any product,
under a packaging FUN GOLD SUPER LEAF (Label), which
is an imitation of the Plaintiff's artistic white, green and gold
label, which amounts to infringement of the Plaintiff's
copyright.
iii. manufacturing, marketing, supplying, distributing, selling,
trading, promoting the impugned products of any other product
or service under the Plaintiff's trademarks and distinctive trade
dress, which is amounting to or can amount to Passing Off of
the offending products as that of the Plaintiff's.
b. A Decree of mandatory injunction be passed, thereby restraining
the Defendant his partners, officers, employees, agents, distributors,
stockiest, licensees and all other acting for and on his behalf, from
removing, defacing, deleting, destroying or in any manner, whatsoever,
disposing off or dealing with finished and unfinished impugned products
under FUN GOLD SUPER LEAF (Label), raw materials, dyes, blocks,
moulds, packaging material, boxes, brochures, pamphlets, promotional
material, all of which bearing the impugned marks, packaging and trade
dress and direct the Defendants to hand over the said products and
material to the Plaintiff for appropriate disposal.
c. A decree for rendition of accounts of profit and /or damages,
illegally earned by the Defendant; and /or
d. A Decree of punitive damages in favour of the Plaintiff.
e. An order for costs of the proceedings; and
f. And any other or further order, as this Hon'ble Court may deem
fit in the interest of justice and in favour of the Plaintiff.‖
2. The basic cause of action pleaded in the suit is that
plaintiff is the registered owner of the trademarks in two forms. One
registered trademark of the plaintiff is the trademark which is the word
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mark being ‗CAVANDERS'. Plaintiff sells cigarettes under the word
mark ‗CAVANDERS'. Plaintiff also pleads a cause of action of being
registered owner of the labels/getup of the packaging under which the
cigarettes are sold by the plaintiff. Packaging of the plaintiff for
selling cigarettes, besides containing the word mark ‗CAVANDERS',
also is in a scheme of colour combination of the shades of green and
gold. The plaintiff claims that such colour scheme cannot be used by
other manufacturers of cigarettes including the defendants who are
said to be using the same colour scheme. Defendants are selling
cigarettes under the word mark being ‗FUN GOLD' and which is used
as a trademark. Whereas plaintiff along with its trademark
‗CAVANDERS' uses the expression ‗GOLD LEAF', the defendants
along with the trademark ‗FUN GOLD' uses the expression ‗SUPER
LEAF'. Plaintiff pleads that in addition to the cause of action of
infringement of its trademark by the defendants, the defendants are
also causing passing off etc on account of user by them of the colour
scheme of green and gold in their packaging. In order to appreciate the
issues involved, paras 12 and 17 of the plaint are scanned below:-
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3. During the course of arguments, learned counsel for the
plaintiff concedes that the suit filed by the plaintiff against the
defendants is not with respect to infringement of the word mark of the
plaintiff ‗CAVANDERS' because admittedly the defendants are using
the brand name/word mark ‗FUN GOLD' and which word mark used
as a trademark is neither identical nor deceptively similar to
‗CAVANDERS' which is the registered trademark of the plaintiff in
Class 34 with respect to cigarettes, tobacco etc.
4. During further course of arguments the counsel for the
plaintiff was asked as to whether the suit is for infringement of the
trademark labels as a whole in that whether the defendants have
copied the trademark labels as a whole which have been registered by
the plaintiff under the Trade Marks Act, 1999 and as detailed in para
12 of the plaint (from internal pages 15 to 18 of the plaint), and to
which query the learned counsel for the plaintiff concedes that the suit
does not plead infringement of the registered trademark labels of the
plaintiff as a whole and that the plaintiff has not set up a case of
copying of the trademark labels of the plaintiff by the defendants as a
whole. It is argued that actually the suit is in fact filed alleging that
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since in the trademark labels registered of the plaintiff there are found
colours of green and gold, and which though is only a part of the
registered labels of the plaintiff, yet the defendants cannot use the
colours of green and gold in their packaging and because these two
colours form a part of registered labels of the plaintiff for selling
cigarettes.
5. To device whether an owner of a label as a registered
trademark is entitled to claim infringement on account of user by a
defendant of a part only of a registered label trademark, it is required
at this stage to refer to Section 17 of the Trade Marks Act inasmuch as
this Section specifically provides that when labels are registered as a
whole then the registered owner of the label as a whole cannot seek to
file a case alleging infringement by a defendant by using only a part of
the registered label. Section 17 of the Trade Marks Act reads as
under:-
―17. Effect of registration of parts of a mark.--(1) When a trade mark
consists of several matters, its registration shall confer on the proprietor
exclusive right to the use of the trade mark taken as a whole.
(2) Notwithstanding anything contained in sub-section (1), when a trade
mark--
(a) contains any part--
(i) which is not the subject of a separate application by the
proprietor for registration as a trade mark; or
CS(COMM) No. 851/2017 Page 11 of 22
(ii) which is not separately registered by the proprietor as a trade
mark; or
(b) contains any matter which is common to the trade or is otherwise of
a non-distinctive character, the registration thereof shall not confer any
exclusive right in the matter forming only a part of the whole of the
trade mark so registered.‖ (emphasis added)
6. In view of the aforesaid discussion, the following aspects
are clear:-
(i) Plaintiff is not suing for infringement of its registered trademark
which is a word mark of the plaintiff namely ‗CAVANDERS'
inasmuch as defendants are using a totally separate word
mark/trademark ‗FUN GOLD' for selling their cigarettes.
(ii) The suit also is not one for passing off the word mark which is
the trademark of the plaintiff, namely ‗CAVANDERS', inasmuch the
defendants are using the word mark ‗FUN GOLD' as their trademark.
(iii) Therefore the present suit is neither for infringement or passing
off with respect to the use of the trademark ‗FUN GOLD SUPER
LEAF' by the defendants as there is no identity or deceptive similarity
of the word mark used by the defendants as their trademark ‗FUN
GOLD SUPER LEAF' as compared to the word mark which is the
trademark of the plaintiff viz ‗CAVANDERS GOLD LEAF'.
CS(COMM) No. 851/2017 Page 12 of 22
(iv) The suit though alleges infringement by the defendants of the
trademark labels which were got registered by the plaintiff, and as
detailed in para 12 of the plaint, however the infringement action
against the defendants is not for the infringement of the registered
labels of the plaintiff as a whole but that infringement is alleged
because of the defendants user of the part of the registered labels of
plaintiff being two colours of green and gold, and which colours
defendants are also using on their packaging of cigarettes. The
plaintiff however in view of Section 17 of the Trade Marks Act cannot
plead infringement with respect to only part of the registered labels i.e
consisting of two colours appearing on their labels being green and
gold, and therefore the present suit alleging infringement of registered
trademark label because of only part of the registered trademark use
by the defendants, does not lie.
7. We are now therefore left with the issue as to whether
defendants are passing off their goods being cigarettes as the goods of
the plaintiff. On this issue discussion will take place under two sub-
heads. First sub-head will be whether the simple colour combination
of two colour shades of green and gold can be at all distinctive of the
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plaintiff's packaging/getup and the second sub-head will be that even
if distinctiveness exists in plaintiff's favour with respect to the two
colours of green and gold on its packaging yet whether no case of
passing off is made out in the facts of this case. However before
discussing the two aspects it is required to be noted that discussion on
these two aspects will have to take place keeping in view the
parameters as mandated to commercial suits under the Commercial
Courts, Commercial Division and Commercial Appellate Division of
the High Courts Act, 2015 inasmuch as the subject suit is a
commercial suit. Whereas in ordinary suits as per the procedure of the
Code of Civil Procedure, 1908 (CPC) when disputed questions of fact
arise then trial is mandatory but in commercial suits courts need not
hold trial even if there are disputed questions of fact if a court comes
to a conclusion that plaintiff lacks real prospect in succeeding in the
suit. Commercial suits therefore can be dismissed by adopting the
summary procedure and this summary procedure is the subject matter
of Order XIII-A of CPC as applicable because of Commercial Courts,
Commercial Division and Commercial Appellate Division of High
Courts Act. Order XIII-A Rule (3)(a) as applicable to commercial
CS(COMM) No. 851/2017 Page 14 of 22
courts provides that a court can give a summary judgment against a
plaintiff when the plaintiff has no real prospect of succeeding in the
suit claim. This is also so stated in Rule 6(1)(a) of the said Order XIII-
A. These provisions read as under:-
3. Grounds for summary judgment-The Court may give a summary
judgment against a plaintiff or defendant on a claim if it considers that--
(a) the plaintiff has no real prospect of succeeding on the claim or
the defendant has no real prospect of successfully defending the claim, as
the case may be; and
6. Orders that may be made by Court-(1) On an application made under
this Order, the Court may make such orders that it may deem fit in its
discretion including the following:--
(a) judgment on the claim;
8. The law on the aspect of distinctiveness is encapsulated
by the Supreme Court in its judgment in the case of Laxmikant V.
Patel vs Chetanbhai Shah and Another, (2002) 3 SCC 65 as under:-
―12. In Oertli v. Bowman, (at page 397) the gist of passing off action
was defined by stating that it was essential to the success of any claim to
passing off based on the use of given mark or get-up that the plaintiff
should be able to show that the disputed mark or get-up has become by
user in the country distinctive of the plaintiff's goods so that the use in
relation to any goods of the kind dealt in by the plaintiff of that mark or
get up will be understood by the trade and the public in that country as
meaning that the goods are the plaintiff's goods. It is in the nature of
acquisition of a quasi-proprietary right to the exclusive use of the mark or
get-up in relation to goods of that kind because of the plaintiff having used
or made it known that the mark or get-up has relation to his goods. Such
right is invaded by anyone using the same or some deceptively similar
mark, get-up or name in relation to goods not of plaintiff. The three
elements of passing off action are the reputation of goods, possibility of
deception jand likelihood of damages to the plaintiff. In our opinion, the
same principle, which applies to trade mark, is applicable to trade name.‖
(underlining added)
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9. The basis of the ratio of the Supreme Court with respect
to distinctiveness of a trademark or getup or other aspects existing for
the plaintiff to succeed in a suit alleging passing off is because of
Section 9(1)(a) and Section 11(3)(a) of the Trade Marks Act and these
provisions read as under:-
―Section 9. Absolute grounds for refusal of registration.-- (1) The trade
marks-
(a) which are devoid of any distinctive character, that is to say, not capable
of distinguishing the goods or services of one person from those of another
person;
........
shall not be registered:
Provided that a trade mark shall not be refused registration if before the
date of application for registration it has acquired a distinctive character as
a result of the use made of it or is a well-known trade mark.
Section 11. Relative grounds for refusal of registration-
......
(3) A trade mark shall not be registered if, or to the extent that, its use
in India is liable to be prevented--
(a) by virtue of any law in particular the law of passing off protecting
an unregistered trade mark used in the course of trade;"
10. The law therefore is that before passing off can be a basis
of cause of action for plaintiff to succeed it has to be first shown that
the plaintiff has achieved a reputation in the market with respect to its
trademark or label or any other aspect, so that the plaintiff can
establish that the trademark or other aspects with respect to which
passing off is pleaded have become distinctive with respect to the
goods of the plaintiff. Putting it in other words, unless the aspects on
the basis of which passing off is alleged are such that these aspects are
shown to have exclusive co-relation to the goods of the plaintiff, the
plaintiff cannot succeed in proving distinctiveness and hence cannot
succeed on the cause of action of passing off. This is clearly observed
by the Supreme Court in para 12 of Laxmikant V. Patel's case (supra)
wherein the Supreme Court by reference to the judgment in the case of
Oertli v. Bowman (1957) RPC 388, has stated that in an action for
passing off based on the use of a mark or getup it is necessary that the
plaintiff should be able to show that the mark or getup has become by
use in the country distinctive of the plaintiff's goods so that use of
such mark or getup by the defendant in relation to any goods of the
same kind which is dealt by the plaintiff, the same will be understood
by the public in that country as relatable to the plaintiff's goods.
Meaning thereby that when the goods of the defendant are purchased
the customer does so that as if the goods purchased are of the plaintiff.
Clearly therefore the issue of an entitlement of a plaintiff to succeed in
a suit for passing off is by showing that the getup or trade dress or any
other aspect on the basis of which passing off is alleged are such that
such getup, trade dress or any other aspect has acquired distinctiveness
and the public associates such trade dress or getup or other aspects
only and only with the plaintiff's goods.
11. The issue in the present case therefore boils down to
whether use of shades of green and golden colour by the plaintiff has
made this combination of two colours so exclusive and distinctive that
the same can only be associated with the plaintiff so that user by
defendants of such colour combination will result in passing off. The
aforesaid aspect has to be taken with the fact that while dealing with
the issue of passing off, unlike an issue of an infringement of a
registered trademark/word mark, there can exist other factors which
will result in plaintiff failing to succeed in establishing passing off
because such other factors will show that the reasonable
customers/consumers will not be deceived while purchasing the goods
of the defendant by thinking that in fact they are purchasing the goods
of the plaintiff. Such differentiating factors which will result in there
not existing passing off can be many with the most important factor
being that if the trademark which is the word mark of the defendant is
so different than what is used by the plaintiff, then passing off is not
established merely because there would be found any other similarity
such as of similar colour combination.
12. In my opinion, in the present case, even if all the
averments in the plaint are taken to be correct for the plaintiff to plead
existence of passing off allegedly on account of use by the plaintiff of
two colours green and golden in its packaging, even then the plaintiff
does not have a real prospect in establishing a case of passing off
because the word mark used by the defendants as their trademark is
totally different than the word mark which is used by the plaintiff as
its trademark i.e ‗CAVANDERS' of the plaintiff as compared to
‗FUN GOLD' by the defendants. We have to keep in mind that we
are dealing with reasonable customers who purchase cigarettes and not
reckless/negligent consumers, and that cigarettes are purchased on the
basis of the brand name/trademark of the cigarettes. Also it will be
noted that the plaintiff along with word mark ‗CAVANDERS' is using
an expression ‗GOLD LEAF' whereas the defendants are using the
expression ‗SUPER LEAF' with the trademark ‗FUN GOLD'. Also in
any case and ultimately the main word mark which is a trademark of
the plaintiff ‗CAVANDERS' is so different than the word mark which
is the trademark of the defendants namely ‗FUN GOLD' that since
there is in no manner any identity or deceptive similarity between the
two word marks/trademarks of the respective parties, therefore there
will not arise at all any issue of passing off simply because of both
parties using green and gold colours on their packaging especially
because as stated above reasonable consumers purchase cigarettes by
their brand name/word mark which is used as a trademark and thus
mere existence of similar colour scheme of two simple shades of green
and gold in the respective packaging will not cause passing off by the
defendants when selling their goods/cigarettes simply because the
plaintiff is also using those same two colours in their packaging for
cigarettes.
13. A minor aspect to be also noted is that there is
considerable difference in the pictorial representations in the
respective packaging of the plaintiff and as compared to the packaging
of the defendants on account of depicting how the use of cigarettes is
injurious to health and causes tumors or diseases in the body. I have
already reproduced above the packaging of the respective parties by
scanning para 17 of the plaint and it is seen that pictorial
representations of both the packaging of the parties are completely
different. I may also note that pictorial representation and warning of
smoking causing cancer are now required statutorily to be affixed in
the packaging and therefore since such warnings are printed in the
packaging would not mean that for reasons of these warnings plaintiff
can allege any passing off. Therefore though the aspect of pictorial
representation is not much relevant however this aspect does have a
limited bearing for denying the plaintiff right to succeed on the cause
of action of passing off in the facts of the present case.
14. I must note at this stage that in quite a few Intellectual
Property Rights (IPR) matters, every plaintiff seeks to throttle
competition in order to create a monopoly like situation for the
products of the plaintiff so that the profits carved keep on increasing
and also do not decrease. It is this tendency in certain manufacturers
and litigants which leads to filing of completely misconceived cases,
with the present case being one such completely misconceived case
having no legal cause of action. It is time that litigants and plaintiffs
in suits understand that on any and every averment a legal cause of
action is not made out in commercial suits so as to entitle plaintiffs to
throttle competing businesses. The law of passing off is essentially
the law of business morality i.e defendants cannot use because of the
concept of business morality, the trademarks or trade dress or getup or
other aspects similar to that used by the plaintiff, however the
principle of business morality as stated by the Supreme Court in the
case of Laxmikant V. Patel (supra) will also equally apply to a
plaintiff in a suit that the same business morality also requires freedom
of trade and not filing of misconceived and baseless cases against
competitors so that plaintiff enjoy monopoly like situations for their
business to make ever increasing profits.
15. In view of the aforesaid discussion, it is not found that
causes of actions of either of infringement or of passing off are made
out in favour of the plaintiff and against the defendants because the
suit lacks real prospect of succeeding in terms of the causes of action
pleaded, and consequently the suit as per the averments in the present
plaint has no merit, and is accordingly dismissed.
DECEMBER 22, 2017 VALMIKI J. MEHTA, J
