Kama Ayurveda Private Limited vs Rwl Healthworld Ltd. & Ors
2018 Latest Caselaw 6922 Del

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*     IN THE HIGH COURT OF DELHI AT NEW DELHI
%                                            Date of Decision: 22.11.2018

+     CS(COMM) 420/2017
      KAMA AYURVEDA PRIVATE LIMITED                      ..... Plaintiff
                          Through     Mr.Swathi Sukumar, Mr.Naveen
                          Nagarajuna and Mr.Surya Rajappan, Advs.

                          versus

      RWL HEALTHWORLD LTD. & ORS               ..... Defendants
                 Through     Mr.Parth Goswami and Mr.Vansh
                 Manchanda, Advs. for D-1 & 4.
                 Mr.Hrishikesh Baruah, Mr.Pranav Jain,
                 Ms.Radhika Gupta, Mr.Kshitij Paliwal and
                 Mr.Siddhant Kaushik, Advs. for D-2 , 3, 5 & 6.

      CORAM:
      HON'BLE MR. JUSTICE JAYANT NATH

JAYANT NATH, J. (Oral)

IA No. 7009/2017

1. This application is filed under Order 39 Rules 1 & 2 CPC seeking interim injunction to restrain the defendants from selling, offering for sale any goods bearing similar get up and packaging as that of the plaintiff‟s products. Other connected reliefs are also sought.

2. It is pleaded in the accompanying plaint that the plaintiff is involved in the business of manufacturing and marketing of array of cosmetic products including for skin care, hair care and body care. The products of the plaintiff are sold bearing the plaintiff‟s trade mark KAMA

AYURVEDA. It is pleaded that the said products are pure and natural and use plant based ingredients. Further, it is pleaded that in order to distinguish its products from other traders in the market, the plaintiff has internally developed a unique and distinctive artwork and get up for all its products. All the products are packaged in a distinctive and unique packaging with unique art work. It is pleaded that the plaintiff has various registration for the mark KAMA AYURVEDA in India and are also registered in abroad. It is pleaded that one of the best selling products of the plaintiff is a face cream named „Eladi Hydrating Ayurvedic Face Cream‟. The same is available in the market in distinctive and unique get up and packaging The original artwork, get up and packaging of the aforementioned face cream is said to have been created by Mr. Vivek Sahni, the director of the plaintiff company. It has been pleaded that the said face cream has been sold by the plaintiff in India and overseas since 2012. By virtue of long use by the plaintiff, the trade dress of „Eladi Hydrating Ayurvedic Face Cream‟ acquired significant goodwill and secondary meaning of being unique.

3. It is further pleaded that on 24.05.2017, one of the employees of the plaintiff was in Khan Market he came across the store of defendant No. 1. He came across the product named „Anantam Ageless Collection by Mantra- Green Apple Stem Cell-Face Revitalizer‟. The get up and packaging of the said product was shockingly the same as that of the plaintiff. The packaging of the said product was strikingly and deceptively similar to the get up of „Eladi Hydrating Ayurvedic Face Cream‟ manufactured and sold by the plaintiff. Hence, the present suit has been filed seeking a permanent injunction to restrain the defendants from selling, offering for sale any goods similar to the get up and packaging as that of the plaintiff‟s products.

4. I have heard learned counsel for the parties.

5. Learned counsel for the plaintiff has relied upon the judgment of the Division Bench of this court in Dabur India Ltd. vs. Amit Jain & Anr., 155 (2008) DLT 407 (DB) and of the Supreme Court in the case of Heinz Italia & Anr. Vs. Dabur India Ltd., (2007) 6 SCC 1 to contend that the colour scheme and the overall effect of the packaging used by the defendant is identical as that of the plaintiff. She has also relied upon the fact that as per the own document of the defendants, they had engaged a designer at a considerable cost. They have however bypassed the recommendations of the designer and it is pleaded that they have deliberately and malafidely adopted the present design to create confusion in the mind of general public and to pass off their own product as that of the plaintiff.

6. Learned counsel appearing for the defendants has denied the said contentions. He has pointed out that the brand used by the parties is entirely different. Even the cost is entirely different. The product of the defendant is being sold at around Rs. 1890/- whereas the product of the plaintiff is priced at only Rs. 1,125/-. It is pleaded that there is no similarity in the trade dress of the two products.

7. The Supreme Court in Heinz Italia & Anr. Vs. Dabur India Ltd., (supra) held as follows:-

"16. Likewise, it has been repeatedly held that before the use of a particular mark can be appropriated it is for the plaintiff to prove that the product that he is representing had earned a reputation in the market and that this reputation had been sought to be violated by the opposite party. In Corn Products case (supra) it was observed that the principle of similarity could not to be very rigidly applied and that if it could be prima facie shown that there was a dishonest intention on the part of the defendant in passing

off goods, an injunction should ordinarily follow and the mere delay in bringing the matter to Court was not a ground to defeat the case of the plaintiff. It bears reiteration that the word "Glucon-D" and its packaging had been used by Glaxo since 1940 whereas the word "Glucose- D" had been used for the first time in the year 1989.

17. In Cadila Healthcare case (supra), it has also been held that in the case of a passing off action the similarities rather than the dissimilarities have to be taken note of by the Court and the principle of phonetic "similarity" cannot be ignored and the test is as to whether a particular mark has obtained acceptability in the market so as to confuse a buyer as to the nature of product he was purchasing. We observe that the both Glucon-D and Glucose-D are items containing glucose and to us it appears that there is remarkable phonetic similarity in these two words.

18. We have also examined the packaging of the product and specifically Annexure P.6 (colly). Item D of Annexure P-6 is the packaging in dispute. It will be seen that the colour scheme of Glucose-D and Glucon-D is almost identical with a happy family superimposed on both. Mr. Chandra has however pointed out that in Glucose-D the happy family consisted of four whereas in the case of Glucon-D the family was of three and as such the two were dissimilar. We are of the opinion however that the colour scheme and the overall effect of the packaging has to be seen. We have also examined Item D individually which is the exclusive packaging for Glucose-D; the one on the extreme left being the packaging in the year 1989, the one in the middle being the one for the year 2000 (which is impugned in the present suit) and the third on the extreme right which is the subject matter of the suit in Calcutta which has been stayed on the application made by respondent. We are of the opinion that the packaging of Glucose-D is Glucon-D is so similar that it can easily confuse a purchaser. We also feel that mere fact that the respondents have time and again made small changes in their packaging is an attempt to continue to mislead the purchaser and to make it more difficult for the appellants to protect their mark, which the record

shows has acquired an enviable reputation in the market which is sought to be exploited by the respondent."

8. The Division Bench of this court in Dabur India Ltd. vs. Amit Jain & Anr., (supra) held as follows:-

"17. The law in regard to similarity which constitutes infringement and which in turn attracts an order of injunction has been explained by this Court in Alert India Ltd. (supra). Reference in the said case has been made to an earlier decision in J.N. Electricals (India) v. President Electricals ILR 1980 (1) Delhi 215 where it was explained that "the sameness" of features does not necessarily mean that the two designs must be identical on all points and should differ on none. They have to be substantially the same." In Alert India Ltd. it was held as under: "36. Thus for determining whether two designs are identical or not, it is not necessary that the two designs should be exactly the same. The main consideration to be applied is whether the broad features of shape, configuration, pattern etc. are same or nearly the same and if they are substantially the same then it will be a case of imitation of the design of one by the other..."

18. Likewise in Castrol India Ltd. the Calcutta High Court explained that "the word „imitation‟ does not mean „duplication‟ in the sense that the copy complained of need not be an exact replica." Reference was made to the earlier decision of the said High Court in Best Products Ltd. v. F.W. Woolworth & Company Ltd. 1964 RPC where it was held that "it is the article as a totality that must be compared and contrasted with the features of a shape and configuration shown in the totality observable from the representation of the design as registered. It was said that the Court must address its mind as to whether the design adopted by the defendants was substantially different from the design which was registered." The decision in Dunlop Rubber Co. Ltd. v. Golf Ball Developments Ltd. (1931) XLVIII RPC 268 is also a pointer to the approach to be adopted by the Court when a complaint is

made by a Plaintiff of fraudulent imitation of its design by a Defendant. It was observed "...fraudulent imitation seems to be an imitation which is based upon, and deliberately based upon, the registered design and is an imitation which may be less apparent than an obvious imitation; that is to say, you may have a more subtle distinction between the registered design and a fraudulent imitation and yet the fraudulent imitation, although it is different in some respects from the original, and in respects which render it not obviously an imitation may yet be an imitation, imitation perceptible when the two designs are closely scanned and accordingly an infringement."

As explained in Hindustan Sanitaryware if the Court is able to find that, "there is substantial and sufficient resemblance between the allegedly infringed designs and the Appellant‟s registered designs...", an injunction should follow.

9. I can now deal with the facts of this case. The plaintiff has depicted the features of their products in the plaint as follows:-

1. Colour combination: Cream, gold and dull golden.

2. Nature of art work: Floral

3. Product description contained in a delineated box with a Golden border.

4. The front side has floral artwork throughout which becomes subdued in the central area under the boarder and the text, however, it is prominent enough to be visible.

5. Placement of the trademark- Top-centre

6. Placement of the name of the product

7. Placement of quantity: Bottom-centre

8. Shape of the packaging cubical box

9. Colour of the text: Gold and Brown

10. Similarly, the defendant has depicted the features of their products as follows:-

"1. Base colour of the packaging is While/Off-white

2. Box type is cover drop down.

3. The brand name/product details are on the top of the box

4. Flowers used in the packaging pattern are Lotus

5. No such golden lining on the flowers.

11. A perusal of the judgment of the Supreme court would show that the essential aspects to be considered are that as to whether the colour scheme

and the overall effect of the packaging would create confusion in the eyes of a common person. Further whether there is a dishonest intention on the part of the defendant in passing off its goods as that of the plaintiff.

12. I have also physically perused the two products in question. A look at two goods if put together would show material distinction in the packaging being used. The goods of the plaintiff are packed in a box of different shape. The colour combination is gold and cream. In contrast, the background colour of the box of the defendant is white/off white. The floral pattern used is different. There are hardly any similarities that can confuse and mislead a purchaser. It is extremely unlikely that a common man with an average intelligence would be misled to believe the product of the defendant as that of the plaintiff. That apart, the cost of the product of the defendant and the plaintiff is also different, the cost of the product of the defendant being higher.

13. In my opinion, the plaintiff has failed to make out a prima facie case for grant of interim order. Accordingly, the present application is dismissed. CS(COMM) 420/2017 List on 21.01.2019 for framing of issues.

JAYANT NATH, J NOVEMBER 22, 2018 rb