M/S Ishar Dass Amir Chand vs Mr. Jagdish Babu Sharma & Ors
2017 Latest Caselaw 5440 Del

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*     IN THE HIGH COURT OF DELHI AT NEW DELHI

+     CS(COMM) 1190/2016

      M/S ISHAR DASS AMIR CHAND               ..... Plaintiff
                    Through: Mr. Hemant Singh, Advocate

                         versus

      MR. JAGDISH BABU SHARMA & ORS                           ..... Defendants
                    Through: None

                                  Reserved On : 29th August, 2017
%                                 Date of Decision: 26th September, 2017

      CORAM:
      HON'BLE MR. JUSTICE MANMOHAN


                         JUDGMENT

MANMOHAN, J :

1. Present suit has been filed for permanent injunction restraining infringement of trademark, copyright, passing off, rendition of accounts of profits, delivery up, acts of unfair competition etc. The prayer clause in the suit is reproduced hereinbelow:-

"(a) A decree for permanent injunction restraining the Defendants, their directors, assignees in business, their distributors, dealers, stockists, retailers, servants and agents from manufacturing, marketing, selling, offering for sale, exporting, advertising, directly or indirectly dealing in Henna products under the impugned mark AMIR's/AMIR or any other mark as may be deceptively similar to the Plaintiff's trade mark AMIR's amounting to

infringement of registered trade mark No. 955547 of the Plaintiff;

(b) A decree for permanent injunction restraining the Defendants, their directors, assignees in business, dealers, stockists etc. from manufacturing, using or exporting the impugned AMIR's packaging/label or any other packaging/label that may be a colourable imitation or substantial reproduction of Plaintiff's AMIR'S trade dress/label/ packing in respect of their colour combination, get up, layout as arrangement of features as may amount to infringement of copyright of the Plaintiff therein;

(c) A decree for permanent injunction restraining the Defendants, their directors, assignees in business, their distributors, dealers, stockists, retailers, servants and agents from manufacturing, marketing, selling, offering for sale, exporting, advertising, directly or indirectly dealing in cosmetic preparations under the impugned mark AMIR/AMIR's and its packaging or in any other trade mark/trade dress/label/packaging as may be deceptively similar to the Plaintiff's trade mark AMIR's amounting to passing off of the Defendants' goods and business for those of the Plaintiff;

(d) An order for delivery of the infringing goods of the Defendants including impugned packaging, promotional materials, stationery, dyes, blocks etc. bearing the impugned trade mark AMIR'S / AMIR and AMIR (Device of Lady) to an authorized representative of the Plaintiff for destruction/erasure;

(e) an order for rendition of accounts of profits illegally earned by the Defendants and a decree for an amount so found due may be passed in favour of the

Plaintiff and against the Defendant;

(f) An order for costs in the proceedings;

(g) Any further orders as this Hon'ble Court may deem fit and proper under the facts and circumstances of the present case."

2. At the outset, learned counsel for the plaintiff had stated that he does not wish to press prayers (d) and (e) of the aforesaid prayer clause. The statement made by learned counsel for the plaintiff is accepted by this Court.

3. On 21st September, 2015, this Court had granted an ex parte ad interim injunction in favour of the plaintiff and against the defendants. The relevant portion of the said order is reproduced hereinbelow:-

"9. Having regard to the submissions made on behalf of the plaintiff, and upon perusing the averments made in the plaint and the documents placed on record and upon examining the products produced in Court for perusal, this Court is prima facie of the opinion that the plaintiff is entitled to grant of an ex parte ad interim injunction in its favour.

10. Accordingly, till the next date of hearing, the defendants, their agents, distributors, stockiest etc. are restrained from manufacturing, selling, offering for sale or exporting Henna/Henna based products under the mark, "AMIR's/AMIR" or any other mark that is identical/deceptively similar to the plaintiff's trademark, "AMIR'S", which was registered prior in time.

11. Having regard to the fact that as on date, the defendants enjoy a registration in the mark, "AMIR" and "AMIR (Device of Lady)" and even as per the plaintiff, they have remained in the market for some time, it is deemed appropriate to grant the defendants a period of

two months from today to make compliances of the aforesaid order.

12. As for the packaging/trade dress/get up of the defendants' Henna products under the trademark, "AMIR", having examined the plaintiff's packaging of its Henna products, vis-à-vis that of the defendants, till the next date of hearing, the defendants are restrained from using the said packaging, which appears to be identical/deceptively similar to the plaintiff's packaging of its Henna products."

4. Since the defendants entered appearance only on two occasions and did not file their written statement within the stipulated time granted and their right to file written statement was closed vide order dated 12th August, 2016, the defendants were proceeded ex-parte by this Court vide order dated 27th October, 2016 and the interim injunction was made absolute.

5. Mr. Hemant Singh, learned counsel for plaintiff stated that the plaintiff was the prior adopter and registered proprietor of trade mark AMIR'S in Class 3 and is engaged in the business of cultivating Henna and in manufacturing and exporting the same as natural Henna powder under the said mark. He stated that the plaintiff had been continuously and uninterruptedly using the mark AMIR'S for its products since 1996. To prove its usage of the trade mark AMIR since 01st April, 1996, the plaintiff proved its trade mark registration certificate as Ex.PW1/6.

6. He also stated that the plaintiff is the registered proprietor of the product label. He contended that the colour combination, trade dress and get-up of the label/packaging of the plaintiff's product constituted

an 'original artistic work' under Section 2(c) of the Copyright Act, 1957. The plaintiff proved its Copyright Certificate as Ex.PW1/5.

7. Mr. Hemant Singh contended that plaintiff's trade mark AMIR'S along with its label had acquired a heightened degree of distinctiveness owing to the exclusive, extensive and continuous use of the same since 1996. In support of his contention, plaintiff proved its original sale invoices showing sales and exports for the period 1996 to 2014 as Ex.PW1/8.

8. He stated that the defendant No. 1 who is a Director of defendants No. 2 and 3 was engaged in manufacturing, selling and exporting henna and henna based dyes under the mark AMIR'S with identical trade dress/get-up as that of the plaintiff's product. Plaintiff exhibited the defendant no. 2's certificate of corporation as Ex. PW1/10 which shows that it was subsequently incorporated on 17th May, 2001.

9. He submitted that the defendants had wrongly obtained a registration of the impugned mark AMIR in Class 3 for which the plaintiff had filed rectification and cancellation applications. To prove the defendants' subsequent usage of the trade mark AMIR since April 2001, the plaintiff proved the defendants' trade mark registration certificate and label registration certificate as Ex.PW1/18.

10. Mr. Hemant Singh lastly contended that in second week of August, 2015, it came to the knowledge of the plaintiff that despite the orders passed by the Food and Drugs Administration cancelling the license of the defendants, pursuant to complaints made by the plaintiff, the defendants continued to illegally manufacture, sell and

export their products under the impugned trade mark as well as trade dress/get-up deceptively similar to that of the plaintiff's. In support of his contention, he relied upon Ex.PW1/14 which is an extract of the websites selling, exporting and importing the defendants' products bearing the impugned mark/packaging.

11. Having perused the papers and having heard the learned counsel for plaintiff, this Court is of the view that as the averments in the plaint have not been rebutted by the defendants nor did the defendants bother to put forth their stand in spite of ample opportunities given by this Court, they are deemed to have been admitted.

12. This Court is of the view that the colour combination, trade dress and get-up of the label/packaging of the plaintiff's product constitutes an 'original artistic work' under Section 2(c) of the Copyright Act and the plaintiff has the exclusive right to use and produce the same under Section 14 of the Copyright Act. The use of the impugned AMIR'S Henna label by the defendants which is a colourable imitation and substantial reproduction of the plaintiff's AMIR'S Henna Label/logo in respect of its overall colour combination, lay out and arrangement of features and get up constitutes infringement of copyright of plaintiff's product under Section 51 of the Copyright Act and is liable to be injuncted under Section 55 of the Copyright Act.

13. It is pertinent to mention that the Supreme Court in R.G. Anand Vs. M/s. Delux Films and Others, AIR 1978 SC 1613 has held as under:-

"46. Thus, on a careful consideration and elucidation of the various authorities and the case law on the subject discussed above, the following propositions emerge:

1. There can be no copyright in an idea, subject-matter, themes, plots or historical or legendary facts and violation of the copyright in such cases is confined to the form, manner and arrangement and expression of the idea by the author of the copyrighted work.

2. Where the same idea is being developed in a different manner, it is manifest that the source being common, similarities are bound to occur. In such a case the courts should determine whether or not the similarities are on fundamental or substantial aspects of the mode of expression adopted in the copyrighted work. If the defendant's work is nothing but a literal imitation of the copyrighted work with some variations here and there it would amount to violation of the copyright. In other words, in order to be actionable the copy must be a substantial and material one which at once leads to the conclusion that the defendant is guilty of an act of piracy.

3. One of the surest and the safest test to determine whether or not there has been a violation of copyright is to see if the reader, spectator or the viewer after having read or seen both the works is clearly of the opinion and gets an unmistakable impression that the subsequent work appears to be a copy of the original.

4. Where the theme is the same but is presented and treated differently so that the subsequent work becomes a completely new work, no question of violation of copyright arises.

5. Where however apart from the similarities appearing in the two works there are also material and broad dissimilarities which negative the intention to copy the original and the

coincidences appearing in the two works are clearly incidental no infringement of the copyright comes into existence.

6. As a violation of copyright amounts to an act of piracy it must be proved by clear and cogent evidence after applying the various tests laid down by the case-law discussed above.

7. Where however the question is of the violation of the copyright of stage play by a film producer or a director the task of the plaintiff becomes more difficult to prove piracy. It is manifest that unlike a stage play a film has a much broader prospective, wider field and a bigger background where the defendants can by introducing a variety of incidents give a colour and complexion different from the manner in which the copyrighted work has expressed the idea. Even so, if the viewer after seeing the film gets atotality of impression that the film is by and large a copy of the original play, violation of the copyright may be said to be proved."

(emphasis supplied)

14. Further, the defendants' impugned marks AMIR'S and AMIR are identical to the plaintiff's mark. Even though both the plaintiff's and defendants' marks are registered, yet from the evidence on record, it is apparent that the plaintiff is the prior adopter of the trade mark AMIR'S along with its label and has been using the same extensively since the year 1996. From the plaintiff's sales figures it is also apparent that the product of the plaintiff under the trade mark AMIR'S along with its label and get up, in particular the colour combination of green and white has acquired distinctiveness and is identified as originating from the plaintiff. The use of the impugned trade mark/trade dress/label comprising of box design, label including the overall colour combination of golden and white by the defendants

for domestic and export sales is likely to cause confusion and/or deception in the minds of the consumers on account of imperfect recollection and the overall similarity and idea conveyed by the trade dress and packaging of both the parties. In fact, the adoption of the impugned trade mark AMIR'S and its packaging by the defendants would invariably cause confusion and deception on account of being visually, structurally and phonetically deceptively identical to the plaintiff's mark and its packaging. The use and export of the impugned trade mark AMIR'S and its packaging by the defendants constitute acts of misrepresentation, misappropriation and passing off.

15. Kerly in his treatise the 'Trade Marks and Trade Names', has stated that passing off action can succeed on the same evidence where trademark action has failed. According to Kerly, the Trade Mark Act affords no bar to a passing off action. In fact, this concept has been statutory incorporated in India by virtue of Section 27 (2) of the Trade Marks Act, 1999. Section 27 (2) clearly stipulates "nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person or the remedies in respect thereof." A Division Bench of this Court in N.R. Dongre Vs. Whirlpool Corporation, AIR 1985 Delhi 300, para 40 had on the ground of passing off, even injuncted a registered proprietor of a trademark from using the same mark. The said judgment was upheld by the Supreme Court in N.R. Dongre Vs. Whirlpool Corporation, (1996) 5 SCC 744.

16. The Bombay High Court in Cadila Pharmaceuticals Limited Vs. Sami Khatib & Anr., 2011 (47) PTC 69 Bom. has also held that the action of passing off is maintainable against export of product. The relevant portion of the said judgment is reproduced hereinunder:-

"57. There is nothing to suggest that if an infringing mark is only applied to products to be exported from India, the proprietor of the mark or the general public, does not have any interest which requires protection. There are innumerable reasons why and circumstances in which it could be said that even in a passing off action, the proprietor of a mark and the general public require protection in respect of the goods to be exported from India bearing the infringing mark. Merely because goods bearing an impugned mark are only exported it does not follow either as a question of law or even of fact that the proprietor of the mark is not likely to suffer substantial damage to his property in the goodwill. The assumption that goods that are exported are not exposed to residents or citizens of this country is fallacious. The mark is exposed by the unauthorized user thereof to various persons, even within the country, including manufacturers of the labels containing the mark, the manufacturers of cartons on which the labels may be applied and the containers in which the products are sold, the transporters of the goods and the various authorities that deal with the goods before they are actually exported and in the course of export. The process of inspection, quality control and export would involve the exposure of the infringing mark to employees, workers, proprietors and a variety of other persons.

58. Faced with this, Mr. Dwarkadas submitted that even if section 56 applies to passing off actions, the respondent must prove the factum of passing off in the country of export. In other words, according to him, passing off in respect of goods exported from India involves the concept of dual actionability. The principle requires the plaintiff to establish two factors. Firstly, that the country to which the goods are exported

recognizes the action of passing off. Secondly, the factum of passing off in the country of export must also be proved.

59. We do not find anything in the plain language of section 56 that warrants the application of the principle of dual actionability. We are not inclined to read into the section, restrictions absent therein.

60. The application of the mark by the appellant to the goods exported by it thus constitutes use of the mark by it in India. The respondent's action for passing off is, therefore, maintainable."

17. Keeping in view the aforesaid facts, mandate of law and the persistent conduct of the defendants in selling products bearing the mark AMIR'S/AMIR, the suit is decreed in terms of Para 29 (a), (b) and (c) of the prayer clause. The plaintiff shall be entitled to costs including monies spent on court-fees, Local Commissioner's fees and other expenses etc. Registry is directed to prepare a decree sheet accordingly.

MANMOHAN, J SEPTEMBER 26, 2017 dk