Gujarat High Court
Vimal Dairy Limited vs Gujarat Tea Depot Company on 1 March, 2021
Bench: Ashokkumar C. Joshi
C/AO/2/2021 CAV JUDGMENT
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 2 of 2021
With
CIVIL APPLICATION (FOR STAY) NO. 1 of 2020
In R/APPEAL FROM ORDER NO. 2 of 2021
FOR APPROVAL AND SIGNATURE:
HONOURABLE DR. JUSTICE ASHOKKUMAR C. JOSHI
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1 Whether Reporters of Local Papers may be allowed YES
to see the judgment ?
2 To be referred to the Reporter or not ? YES
3 Whether their Lordships wish to see the fair copy YES
of the judgment ?
4 Whether this case involves a substantial question YES
of law as to the interpretation of the Constitution
of India or any order made thereunder ?
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VIMAL DAIRY LIMITED
Versus
GUJARAT TEA DEPOT COMPANY
==========================================================
Appearance:
MR MEHUL SHARAD SHAH(773) for the Appellant(s) No. 1
SHRI KAMAL TRIVEDI, SENIOR ADVOCATE with MR JATIN Y
TRIVEDI(2616) ADVOCATE for the Respondent(s) No. 1,2
MR YJ TRIVEDI(948) for the Respondent(s) No. 1,2
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CORAM: HONOURABLE DR. JUSTICE ASHOKKUMAR C. JOSHI
Date : 01/03/2021
CAV JUDGMENT
(A) Introductory Remarks:
Intellectual Property Rights ("IPR" for short) are the rights give to
persons over the creation of their minds. Normally, they give the
creator an exclusive right over the use of his / her creation for
certain period of time. Though the IPR is not just right to exclude
other from selling or using the own asset, it is also designated to
provide holder with the right to argue or license the rights for
commercial or other bona fide uses. Raison d'etre is to protect the
intellectual and extraordinary invention / skill / goodwill of an
individual, ultimately, enhance the field of GLOBAL TRADE.
The quia timet action is the need of the hours, wherein one feels
apprehension for the protection of his own rights (here, IPR) which
may be taken away by others in different style.
Quia timet action has been described in Black's Law Dictionary
as follows:
"Because he fears or apprehends. In equity practice, the technical
name of a bill filed by a party who seeks the aid of a court of
equity, because he fears some future probable injury to his rights
or interests, and relief granted must depend on circumstances."
(B) Keeping in mind such two aspects, the facts in detail, in the present
Appeal from Order are discussed as under. It is made clear, with
the consent of both sides, matter is taken for final decision.
1. The Appellant - Vimal Dairy Limited (Original Defendant) has
filed this Appeal from Order under Order XLIII Rule 1(r) of the Code of
Civil Procedure, 1908 for the following prayers:
"(A) To admit the present Appeal from Order
(B) To quash and set-aside the order dated 11.12.2020, passed
by the learned City Civil Court No. 29, Ahmedabad below Exh. 7
for interim injunction in Civil Suit No. 884/2020 and
thereby be further pleased to dismiss the Notice of Motion at
Exh. 7 moved by original plaintiffs- respondents herein.
(C) To permit the appellant to produce the list of documents and
authorities, by way of separate paper book along with memo of
the present Appeal from Order.
(D) Any other and further reliefs that Your Lordships may deem
just, fit and expedient be granted in favour of the appellant."
2. Factual Remarks:
The present Respondents - Original Plaintiffs have preferred Civil Suit
No. 884/2020 in the Ahmedabad City Civil Court at Ahmedabad, inter-
alia, praying for permanent injunction restraining the defendant and its
agents from manufacturing, marketing advertising for Sales, the
defendant's products under the Trademark /Label "VIMAL" "TM
Application No. 4352164 including its Art Work, Colour Scheme, Get-
up, Arrangement and/or any other Label, which is substantial and
material reproduction of the label of the plaintiffs from committing an act
of infringement of plaintiff's copy right registered label bearing No. A-
118473 / 20177 under the Copy Right Act. Plaintiffs also prayed to
restrain the defendant from committing an act of infringement of the
plaintiff's registered Trademark/labels and from committing an act of
passing of the plaintiffs' trademarks/labels. Plaintiffs further prayed for
directions to the defendant to give true and correct accounts of the goods
manufactured and marketed by them under the trademark /label VIMAL
and after verifying the accounts and deriving at the amount of the profit
earned by the defendant, to pay the said amount with 18% interest. The
suit is essentially filed for permanent injunction and seeking damages.
Respondents herein - Original Plaintiffs have filed an application for
Temporary Injunction along with the suit under Order XXXIX Rule-1(a)
of the Code of Civil Procedure, 1908 with similar reliefs prayed in the
suit.
3. The Appellant / Original Defendant states and submits that the gist
of the case of the plaintiffs can be described in nutshell to the effect that
plaintiffs are using the trademark 'WAGH BAKRI' and they have
acquired wide reputation and goodwill in the Tea Business. It is further
the case of plaintiffs that they have been using and publishing various
labels containing the word 'WAGH BAKRI' as per the demand of the
business. In view of the such demand, plaintiff No. 1 has first published
one label / wrapper in the year 2013 in India under the title "WAGH
BAKRI' Strong and Refreshing Premium Leaf Tea in English and Hindi
languages and since, then plaintiffs are the first owners of the copy right
of that Artistic work of the said label /trademark. The said label is having
distinct colour scheme, get up and arrangement and as such, that
arrangement are the material portions of the said label of plaintiffs. It is
further the case of the plaintiffs that defendant has copied substantial and
material reproduction of the Artistic work of the label of plaintiffs and
thereby the defendant is committing an act of infringement of copyright
under the provisions of the Copyright Act, 1957. It is further the case of
plaintiffs that defendant has applied for the trademark on 19.11.2019 and
legal notice was issued, which was replied by the defendant. Thereafter
the present suit came to be filed.
Appellant herein- original defendant appeared and filed reply at Exh. 16
to the injunction application and also tendered list of documents, several
judgments along with the written arguments.
4. It is the case of the defendant that Vimal Dairy Limited belongs to
the well-known, well established and diversified popularly known as
Vimal Group in Gujarat and other States. Vimal Group is actively
engaged in the diversified activities of manufacturing and marketing of a
wide spectrum of products like Edible Refined Oils/De-Oiled Cakes,
Milk and Milk products, Tea, Ice -Creams, Cables and Winding wires,
Capacitors and Transformers, Submersible Pumps, Resings and Paints,
Micronized Mineral Powder, Ceramic Tiles, Solar Panels etc. It is the
case of the defendant that the company has acquired tremendous goodwill
and market reputation among the trade, public and ultimate customers at
large. Ii is further the case of the Appellant / Original Defendant that
since inception of its business, the Appellant / Defendant Company is
continuously, extensively, and uninterruptedly using the trademark and
trade name VIMAL. It is further the case of the defendant that the suit
filed by plaintiffs is devoid of merits on the ground that the defendant
company is prominently using the trademark and trade name 'VIMAL'
and not 'WAGH BAKRI'. It is further the case of the defendant that
plaintiff's and defendants products are identified by their trade name
respectively and the public at large identifies the goods of plaintiffs and
defendant by their brand names or trade names. It is further the case of
the defendant that there are various Tea brands in India, which are using
Red, Blue and Green Colour as their label for the goods to describe the
character, quality and intended purpose of the product. The goods such as
Tea are never procured based on colour combination. Plaintiffs cannot
claim exclusive right over the colours. It is further the case of the
defendant that from the depiction in the labels, that the artwork, lay out,
getup and colour scheme are entirely different. Plaintiffs colour scheme is
having saffron background along with essential feature of its mark i.e.
'WAGH BAKRI'. That public or consumers at large identify products
with brand name 'WAGH BAKRI' and not through the get up, dress /
packaging of the product. On the other hand, defendant's colour scheme is
having dark orange background along with essential feature of its trade
mark i.e. 'VIMAL'. There is an artwork of depiction of Tea Gardens in
the backgrounds of the defendants trademark. It is further the case of the
defendant that there are various traders who are using the above colour
combination packaging to describe their tea product. It is further a case of
the defendant that company is using the trademark / trade name 'VIMAL'
in Red and White since the inception of the business. It is further the case
of the defendant that the Orange colour used by the defendant company is
a common colour and a naturally occurring colour in which no person
can claim exclusive right on it. It is further the case of the defendant that
both the marks are not phonetically similar. That 'VIMAL' and 'WAGH
BAKRI' are phonetically, visually, conceptually, and structurally
different from each other and there cannot be deception and confusion in
the minds of consumers. Appellant states and submits that with the above
and other several contentions, reply has been filed at Exh. 16 by the
defendant.
5. It is further contended that the learned City Civil Court No. 29,
Ahmedabad, without appreciating the provisions of Trademarks Act,
Copy Right Act in its true perspective and without appreciating the
evidence on record and without considering the ratio laid down by the
Hon'ble Courts in the judgments cited, has been pleased to allow the
Notice of Motion at Exh. 7 by order dated 11.12.2020 and was further
pleased to grant interim injunction as prayed for in terms of Para - 85(A),
(B) and (C) against the defendant. The interim relief granted is in the
nature of final relief.
6. Being aggrieved and dissatisfied with the order of below Exh. 7
dated 11.12.2020 passed by the City Civil Court No. 29, Ahmedabad, the
appellant herein, begs to prefer the present Appeal from Order under
Order -XLIII Rule- 1(r) of the Code of Civil Procedure, 1908.
(C) Arguments of Both sides:
7. Learned Advocate Mr. Mehul Sharad Shah for Appellant /
Original Defendant has submitted that the order passed by the learned
trial Court is ex-facie, illegal, against the provisions of the Trademark Act
and copyright Act and against the evidence on the record and therefore,
requires to be quashed and set-aside. He further submitted that the learned
trial Court has been pleased to grant temporary injunction in terms of
Paragraph - 85(A),(B) and (C) of the application, which is similarly
worded as per the main relief in th suit in paragraph 85(A),(B) and (C)
with the only exception that in the suit it was prayed for a permanent
injunction whereas in the interim injunction application it was prayed for
temporary injunction. It is respectfully submitted that relief granted by
the learned trial Court is in the nature of final relief and nothing further
remained in the suit. It is settled proposition of law that at interim stage
relief cannot be granted which is in the nature of final relief.
8. It is further contended that the learned trial Court, after recording
the contentions of both the parties, did not frame issues to grant
temporary injunction. Not only that, but there is no separate finding
recorded qua the three main ingredients. It is settled proposition of law
that the discretion of the Court is exercised to grant a temporary
injunction only when the requirements of existence of prima facie case,
balance of convenience and irreparable loss are satisfied. It is incumbent
upon the learned trial Court to record findings on each issue while
appreciating the contention of plaintiffs and the defendant.
9. That learned advocate for the appellant submitted that there are
following glaring defects surfacing in the order of interim injunction,
which can be described in nutshell as under:-
(A) The learned Trial Court has recorded the contentions of plaintiffs and
defendant and various paragraphs of various judgments without recording
the findings on the contentions raised by the parties.
(B) The learned trial Court has repoduced from page No. 42 to 65 and
page - 68 to 91 only various paragraphs of judgments, without
considerign its relevancy and thereby has given a bulky judgment without
any cogent reasons.
(C) The learned trial Court has recorded the contentions of defendant
from para 58 to 60, which is the main subject matter about using of
similar colour on the packaging. Somehow, there is no finding recorded
qua those important contentions raised in the above paragraphs and it
remained unanswered.
(D) The finding was recorded in para-82 to the effect that, "This Court
is of the prima facie opinion that plaintiffs have clearly established the
essential ingredients namely, prior use, establishment of goodwill and
reputation and chance of future loss by virtue of the use of such
deceptively similar trade name or device and therefore, plaintiffs have
prima facie case in their favour". It is an admitted fact that the trade
name of both the parties are not deceptively similar and distinctly
different i.e. WAGH BAKRI AND VIMAL. Looking to the above
findings, it is clear that what is considered is beyond the pleadings of
parties. Therefore, it shows non-application of mind at the ends of entire
discussion in the judgment.
(E) The learned trial court has committed grave error in observing that
the defendant has not been able to produce any cogent evidence to
establish that other parties were also using such colour scheme. It is
submitted that the defendant has produced as many as 19 colour wrappers
of different companies / tea vendors to show that they are using Orange
colour for their packaging.
10. Learned Advocate for the Applicant has submitted that the learned
trial court has committed a grave error in observing that the defendant has
not been able to produce any cogent and clear evidence before this court
to establish that third parties have been using the mark 'WAGH BAKRI'
along with its colour scheme, get up, arrangement etc. It is further
submitted by the learned Advocate for the Appellant / Original Defendant
that the Appellant has produced as many as 19 colour wrappers of
different companies / Tea vendors to show that they are using orange
colour for their packaging and that the said evidence is discarded by
raising suspicion that whether those parties are still using the mark in
question and prior to the use of plaintiffs. Rightly so, they cannot claim
exclusive right over orange as it is naturally occurring colour. The
colour orange is not a coined and inventive colour which is a most
important factor in claiming exclusivity in intellectual property rights and
therefore the Respondents / Original Plaintiffs cannot restrain the present
Appellant from using orange colour on the package of Tea produced by
the Appellant.
(D) Infringement of Copyright:
11. It is submitted that the label is not artistic work. No reputation or
goodwill attached with the label but reputation is with trade name
WAGHBAKRI. Label is also not an artistic work under Section 2(c)
because, it is neither a painting nor sculpture nor a drawing nor
photograph. It is merely a package prepared in computer. There cannot be
an artistic work in a Orange Colour background and therefor since
'Orange Colour' cannot be terms as artistic work, any allegation of
infringement of Copyright would not be maintainable.
12. It is submitted that Plaintiffs have alleged that Defendant has
copied colour scheme, however it is pertinent to note that the label of
Plaintiff does not contain any colour scheme, as it is sought to be
canvassed by the plaintiff and in fact the back ground is composed of
only one colour, which cannot be said to be Artistic Work as per section
2(c) of Copyright Act. It is respectfully submitted that there is no artistic
work in colour Orange. The logo of men with Goat and Tiger can be
termed as an artistic work but not Orange colour or Cup or a Saucer. The
orange colour, Cup and Saucer indicate that tea product is sold, which is
commonly used by all tea traders and manufacturers. The literature as
well as pictorial depiction in both the label are different, hence, the say of
the Plaintiffs that, the defendant has committed infringement of
Copyright is factually wrong.
13. It is submitted that plaintiffs have adopted many labels over the
years. This particular label is in use only since 2020 as it is evident from
the registration certificate. Therefore, there is no goodwill and reputation
attached to this label.
14. Learned Advocate for the Appellant / Original Defendant has
drawn the attention of this Court on Infringement of Trademark:
It is submitted that trademarks bearing registration no. 3075599,
4250078, 4250077 and 4250071 are pertaining to the 'WAGH BAKRI'
and 'WAGH BAKRI STRONG AND REFRESHING PREMIUM TEA',
however, there is no trademark for the colour scheme and therefore no
registration of colour orange or for colour scheme in favour of Plaintiffs.
Even otherwise 'orange colour' as a single colour is not capable of being
considered as 'Trademark' and therefore plaintiffs are not entitled to
institute suit for infringement of the such trademark.
15. That looking to the format of application of registration of
trademark, it is evident that there are six options i.e. colour, device, shape
of goods, sound, three dimensional work, work mark. It is an admitted
fact that there is no registration of trademark in the category of "Colour".
Not a single registration certificate is produced by the plaintiff showing
that they have any registration of trademark in the category of Orange
Colour.
16. It is submitted that under section 29, suit for infringement of
trademark is permissible only if there is a use of such trademark in the
course of trade and therefore when the suit is based on the apprehension,
no cause of action has yet arisen for the plaintiffs to bring the suit and
therefore said suit is not maintainable for lack of cause of action. In case
where there is no cause of action for the suit, no injunction can be granted
in favour of plaintiffs.
17. Even otherwise there is no likelihood of customers being deceived
or confused as the trading style/trademark of both the parties are different
and hence public is made completely aware regarding the source of origin
of packaging. It is submitted that tea is considered to be addictive food
item and therefore regular user would purchase tea by their brand names
and not by the colour scheme and therefore also there is no likelihood of
confusion or deception as alleged by the Plaintiffs.
18. Learned Advocate for the Appellant has further drawn the attention
of this this court on the Passing off Action:
It is submitted that passing off action is a remedy provided for the
protection of goodwill and reputation of the particular business. It is
submitted that as can be seen from the registered trademark of the
plaintiffs, the only reputation and goodwill that is claimed by the
Plaintiffs, pertains to 'WAGH BAKRI' and therefore no passing off
action would be maintainable as trade names of both the parties are
totally different. It is submitted that plaintiffs have not produced any
document to prove that there is any goodwill in 'orange' colour and
therefore no passing off action would be maintainable for the orange
colour.
It is respectfully submitted that Orange colour is generic in nature; there
can be no exclusive rights for generic colour scheme as well as the get-
up, which is commonly used in the market by all the tea companies.
Therefore, the argument of the plaintiffs about unique get-up, leaf or cup
and saucer on the label are not tenable as they are not coined or invented
in nature by the plaintiffs. It cannot be considered as an essential feature
for the plaintiffs' trademark as it is totally against Section 9 of the Act.
Learned Advocate for the Appellant / Original Defendant has submitted
that that generic, descriptive, and common words cannot be protected
unless and until it has acquired a secondary meaning. The customer will
ask for a product from the name of the product and not from the colour of
the product. Plaintiffs cannot claim their exclusive right on the features,
which are description, commonly used not coined or invented in nature.
(E) Legal Aspects by the Learned Advocate Mr. Mehul Sharad Shah, for
the Appellant / Original Defendant:
19. Learned Advocate for the Appellant / Original Defendant has
placed reliance on the following judgments and submitted as under:
(i) Britannia Industries Ltd. Vs. ITC Limited, reported in
2017(70) PTC p. 66 - more particularly referred to paragraph nos.
1, 2, 9, 19, 22, 23 and 24. Learned Advocate for the Appellant has
submitted that in paragraph no. 23, it is observed as under:
"the appropriation of an exclusivity claimed vis-à-vis a get-
up and particularly a colouor combination stands on a
different footing from a trade mark or a trade name because,
colours and colour combinations are not inherently
distinctively. It should, therefore, not be easy for a person
to claim exclusivity over a colour combination particularly
when the same has been in use only for a short while".
(ii) Cipla Limited Vs. M.K. Pharmaceuticals, reported in 2008
(36) PTC, 166 - He has submitted that the court in paragraph 5 has
observed as under:
"Whether defendant can copy the colour of plaintiffs' tablets
and shape of the plaintiffs' tablets? It is settled law that
there can be no monopoly over colours. Merely because
plaintiff has started using a particular colour for its tablets,
plaintiff does not get monopoly over colour so that no one
else can use that colour. The medicines are not bought by
colours by the customers......."
(iii) Colgate Palmolive Company Vs. Patel & others reported
in 2005 Law Suits (Delhi) 1540 - He has referred to paragraph
Nos. 25, 29, 31, 33, 41, 42 and submitted that the Hon'ble Court
has observed in paragraph nos. 31 and 32 as under:
".....In the instant case too the colour combination of
red and white on its own, does not identify the source
of the product since the red and white colour
combination is quite generic in nature and common to
toothpaste trade as demonstrated by the various
products and their labels relied upon by the defendant.
Moreover, there is nothing innovative or distinctive in
using the "colour white" for writing the word mark
"COLGATE', since white is a colour commonly used
for writing Alphabets/Numerals on coloured
backgrounds.
32. ...... The defendants had contended that in the
toothpaste trade the colour combination of red and
white is common to the trade. The defendant had given
a list of 16 Indian and 8 international toothpastes
along with their annexed labels to establish the
common occurrence of red colour as well as red and
white colour combination in the toothpaste industry.
Furthermore, it is the plaintiff who has claimed that it
is a world leader in toothpaste trade and has referred
to its worldwide presence in the toothpaste market so
as to inter alia establish its transborder reputation. In
this view of the matter the existence of the colour
combination red and white in the international market
not having been denied, the defendants have in my
view prima facie established that colour red as well
red and white combination are common to the
toothpaste trade internationally. The fact that some of
the brands have a negligible presence in the Indian
market or have been sued by the plaintiff or are under
a settlement with the plaintiff, still does not detract
from the fact that the colour red and the red and white
colour combination are common to the toothpaste
trade."
(iv) AIR 1996, HP, 70 - Amrit Banaspati Company
Limited v. Surat Industries Limited. Learned Advocate Mr.
Mehul Sharad Shah has drawn the attention of this court to
paragraphs 26, 36, 41 and submitted that the Hon'ble Court has
observed in paragraph 36 as under:
"simply because the colour of the two pouches was dark
blue and the writing on those pouches are in white colour,
will not make the pouches to be of similar nature, even
prima facie. Insofar as the use of this blue colour is there, it
is not prohibited. The defendants have brought on record
samples of various pouches of this dark blue colour and of
light blue colour on record being used by other concerns."
20. Learned Advocate for the Appellant / Original Defendant has
therefore submitted that after discussing various aspects, the Hon'ble
High Court refused to grant any temporary injunction.
21. Learned Advocate Mr. Shah has therefore submitted that as held by
the Hon'ble Delhi High Court in the case of 'Colgate Palmolive
Company vs. Patel & Ors. (supra); 'orange' colour in itself cannot be
considered to be a essential and/or distinctive feature capable of being
monopolized by the Plaintiffs exclusively and therefore Ld. Trial Court
ought to have appreciated that merely because a generic colour has been
adopted, it cannot be said that there is a prima facie case for passing off
when said colour is not capable of being considered as distinctive feature.
22. It is further submitted that similarly, as far as the tea manufacturing
companies are concerned, an image of 'cup', 'saucer' and 'tea leaves' are
nothing but generic features and therefore they are also incapable of
being considered as the essential/distinctive feature and therefore also
there cannot be any case for passing off merely because of adoption of
the same. As against the same, trade names of the both the parties and
their symbol are admittedly distinctive and same can be considered as
essential feature of the overall trade dress and therefore when the
essential feature of the trade dress are different, learned Trial Court ought
not to have granted interim injunction more particularly when present is
the case of passing off and not of the trademark infringement.
23. Learned Advocate Mr. Mehul Sharad Shah has further drawn the
attention of this court to Kerly's Law of Trade Marks and Trade
Names, 15 th Edition (P. 652);
"It is usually true in some degree that a trader's goods are
recognised as his by their general appearance, or "get-up".
Accordingly, resemblance of get-up is not uncommonly an
ingredient in passing off, and it is possible for imitation of get-up
alone to amount to passing off. Such cases are rare, since few
traders rely on get-up alone to distinguish their goods, so that
trade names and word trade marks are ordinarily present too, and
in these days, in this country, a difference in names is enough to
warn the public that they are getting one trader's goods and not
the other‟. Accordingly, there can hardly be passing off by get-up
alone (in the usual sense of substitution of one make of a product
for another) unless the resemblance between the goods is
extremely close, so close that it can hardly occur except by
deliberate imitation; and even that may not be enough . White,
Hudson v. Asian [1965] R.P.C. 45 (PC, Singapore) Saper v.
Specter's: 1953 (70) R.P.C. 173] But there are forms of passing
off in which a difference of name is not important: for example,
where the goods themselves are distinct enough from the
claimant‟s for a different product name to be expected4. The
relative importance to be attributed to names and word marks on
the one hand, and to get-up on the other, is a matter upon which
different people have different views; with the result that the
outcome of disputes about get-up is exceptionally hard to predict."
24. Learned Advocate Mr. Shah has submitted that the Hon'ble Madras
High Court in the case of Parle Products Limited v. Bakemans
Industries Limited, 1998 (2) ARBLR 583 has held that;
"Had there been no injunction, the defendant/respondent's
business would have multiplied and in the event of dismissal of the
suit, the loss suffered by the respondent/defendant cannot be
ascertained. On the contrary, if no injunction is granted and suit is
ultimately decreed the loss suffered by the applicant/plaintiff can
be ascertained and he can be adequately compensated. In the
result, Application No. 1210 of 1998 is allowed. O.A. No. 144 of
1998 is dismissed. Ad-interim injunction granted is vacated.
Parties to bear their respective costs."
And, further in the case of Amrit Banaspati Company Limited v. Suraj
Industries Limited (supra), the Hon'ble Court has observed as under;
"41. On the basis of the aforesaid discussion, first of all the
plaintiffs have not been able to prove prima facie case in their
favour for an action based on passing-off goods as the goods of
another. In case the injunction, prayed for, is granted it will be the
defendants who would be put to irreparable injury inasmuch as
without there being any prima facie case in favour of the plaintiffs,
the defendants are likely to suffer loss in their income which they
are deriving from the sale of those pouches of ANGAN ghee.
Balance of convenience in such circumstances would not be in
favour of the plaintiffs at all.
42. In view of the foregoing reasons, the present petition fails and
the prayer for the grant of temporary injunction and other interim
relief's asked for by the plaintiffs through the present petition are
not legally available to them at this stage and that too oh ', the
basis of the pleadings, affidavits and other documents brought on
record. The petition is, accordingly, dismissed with costs which
are assessed at Rs.3,000/- (Rupees three thousand)."
25. Learned Advocate Mr. Shah has submitted that unlike trademark
infringement, case of passing off has to be established through evidence
in the trial and therefore the learned Trial Court ought not to have granted
injunction as not only prima facie case was yet to be proved but also the
balance of convenience was in the favour of present Appellant as any
alleged injury caused to Plaintiffs could be easily restituted by the
monetary compensation while injunction to Appellant will cause
irreparable loss. It is submitted that the impugned order has not
considered factors of balance of convenience as well as irreparable loss in
appropriate way and therefore also same is required to be quashed and set
aside.
26. It is submitted that, it is pertinent to note that trademark
infringement cases relied upon by the Respondents in their affidavit in
reply to the civil application, pertains to the cases where not only the
trade-dress was similar but also trade name of the businesses were also
phonetically or actually similar and therefore ratio laid down in said cases
would not be applicable as in the present case not only the trade names of
the parties are different but also essential features are different.
27. It is further submitted that the fact that admittedly there is presence
of other brands having trade-dress of the orange colour and Plaintiffs
have not initiated any proceedings against them successfully for
restraining use of 'orange' colour clearly shows that
Plaintiffs/Respondents themselves have never considered the same as
being essential feature on its own. Therefore, the action of Respondents
to seek only restrain against the Appellant clearly shows that same is
nothing but intentional stifling of valid competition from Appellant,
which is against the public policy and requires to be deprecated.
28. Learned Advocate for the Appellant has further submitted that
various judgments relied upon by the original plaintiffs - respondent
herein are not applicable to the facts of the present case. Most of the
judgments are pertaining to the word 'mark' and not pertaining to 'similar
colour can be used or not'.
29. It is submitted that Hon'ble Supreme Court in the case of Cadila
Healthcare v. Cadila Pharmaceutical 2001 (2) PTC 541 SC has only
rejected adoption of the English principles regarding the weightage to be
given to the dissimilarities, however, Hon'ble Supreme Court has not
stated that principles concerning the colour combination as laid down in
various English judgment would not be relevant for the Indian
jurisdiction. On the contrary, in paragraph 33 (page no. 211) of the said
judgment, Hon'ble Supreme Court in the said judgment itself has stated
that the English cases would be relevant in understanding essential
feature and therefore considering the long line of English as well as
American judgments as narrated in the commentary of Kerly's Law of
Trade Marks and Trade Names and narrated by various Hon'ble High
Court (i.e. Britania Industries v. ITC Ltd.) it is clear that it would be
very difficult for anyone to claim passing off solely on the basis of colour
combination as essential feature. In such circumstances, Ld. Trial Court
ought to have appreciated that Respondents have no prima facie case of
passing off and therefore injunction ought not to have been granted.
30. It is submitted that the goods under consideration is not ordinary
tea which is sold in lose form to the general public but it is a premium
variety of the tea targeted towards the middle as well as upper-middle
class people who will be aware of the 'WAGHBAKRI' and 'VIMAL' as
two different brands as both of them have distinct identity and therefore
considering the nature of goods as well as targeted audience also there is
no possibility of passing off as alleged by the Respondents.
31 Learned Advocate for the Appellant has further submitted that the
learned Trial Court has not considered and provided reasoning and / or its
findings on various contentions raised by the Appellant and thereby
committed serious error in fact and law.
32. Learned Advocate for the Appellant has submitted that the learned
Trial Court did not framed issue at least to discuss and appreciate the
basic ingredients of granting temporary injunction i.e. prima facie case,
balance of convenience and irreparable loss. There is no discussion in the
entire judgment with the perspective of the above ingredients and only
before the operative order straightway finding was recorded qua these
ingredients. It is mandatory on the part of the learned trial court to record
its reasons qua prima facie case, balance of convenience and irreparable
loss while granting temporary injunction application, which is totally
lacking in the present order and therefore, such unreasoned order is not
sustainable in the eye of law.
33. It is further submitted that the learned Trial Court has recorded in
the judgment that the Respondents / Original Plaintiffs have fairly
admitted that they do not have any objection if the Appellant / Original
Defendant uses the word VIMAL without pilfering the prominent
features like colour scheme, get-up and arrangement of the registered
label of the Plaintiff. It is further recorded in the finding that both the
trade names are deceptively similar and therefore, plaintiffs are having
prima facie case. Therefore, apparently the finding recorded by the
learned trial court is ex-facie contradictorily, against the pleadings as well
as against the evidence on record.
34. It is therefore submitted that the learned Trial Court has failed to
appreciate that there is infringement of copyright as alleged by the
Respondents / Original Plaintiffs. That the learned Trial Court ought to
have appreciated that by virtue of registration of copyrights, no exclusive
or special right is granted to plaintiffs, in view of provisions of Section 48
of the Copyright Act. That the Respondents / Original Plaitniffs have
made a wrong statement in the plaint that Copyright of different artistic
work of packaging is also protected under Copyright Act though it is far
from truth.
35. It is submitted that the learned Trial Court has failed to appreciate
that the artistic work claimed on the basis of extract from the Register of
Copyrights and label, which are produced at page 46 and 47 of the
original paper book, cannot be said to be the artistic work because, it is
neither a painting, nor sculpture nor a drawing nor photograph. It is
merely a package, which is produced before the Registrar of Copyrights
for registration. The package appears to have been prepared
mechanically by the use of machines / computers and therefore, it does
not qualify to be said to be an artistic work as envisaged under Section
2(c) of the Copyright Act.
36. Learned Advocate for the Appellant has submitted that even if it is
considered to be an artistic work, then also that artistic work would
consist of literature, depicting of a logo of a man, goat above 'WAGH
BAKRI' and tea leaves and by no stretch of imagination, it can be said
that there is an artistic work in orange colour background as no labour or
any original idea is presented by placing orange colour. Therefore, no
Copyright can be claimed on orange colour background. Therefore, the
Respondents / Original Plaintiffs cannot claim that there is an
infringement of copyright by reproducing orange colour, which is the
main grievance of Respondents.
37. Learned Advocate for the Appellant has submitted that the learned
trial court ought to have appreciated that the artistic work of the
Appellant's / Defendant's label are entirely different. It is submitted that
the artistic work of the Appellant's label consist of a cup and saucer with
entirely different design, background consisting of landscape of tea
estates, leaves are also in more quantity and the application of such
device in work is also vastly different from that of Respondents / Original
Plaintiffs. Even the background of the Appellant's artistic work consists
of dark orange colour while the background of the Respondent's label
consists of light orange (saffron colour). The cup and saucer design are
also entirely different.
38. Learned Advocate for the Appellant has submitted that the learned
trial court ought to have appreciated that the size of oblong shape is
entirely different and colours in the said oblong shape are also different
and that the learned trial court ought to have appreciated that generic,
descriptive and common words cannot be protected unless and until it has
acquired secondary meaning. That the learned trial court has failed to
appreciate that there is no infringement of trademark pertaining to
registration of 'WAGH BAKRI' as alleged by the plaintiffs. Learned
Advocate for the Appellant has further submitted that there is no
registration of trademark in category of "colour".
39. Learned Advocate for the Appellant has further submitted that it is
an admitted fact looking to the record that none of the registration is for
colour orange background or for colour scheme and that those registration
certificates produced with the paper-book cannot be relied upon since the
user claim in those registration is from 1.1.1925 while the Copyright
extract the year of first publication in the year 2013. It is therefore
submitted that the learned trial court ought to have appreciated that the
Appellant has not committed any act of passing off. That the learned trial
court ought to have appreciated that the Respondents / Original Plaintiffs
have not shown that the sales turnover is with regard to orange label or
with regards to colour combination, get up, cup and tea saucer. The
turnover, good-will and reputationf is due to its trade name 'WAGH
BAKARI' and not due to colour combination and that the brand names of
the Respondents / Original Plaintiffs and the Appellants are totally
different and on such facts the Respondents / Original Plaintiffs have
miserably failed to prove any reputation and goodwill on orange colour as
sought to be canvassed by them.
40. In support of his submission, learned Advocate for the Appellant
has referred to and relied upon the judgment of the Calcutta High Court
in case of Kumer Khaini Private Limited v. Prabhulal, reported in
2000 Law Suits (CAL), 372 and submitted that the mark, name and get-
up must always be considered as whole thing. The Calcutta High Court
has considered the ratio laid down by the Hon'ble Supreme Court in case
of S.M.Dychem Ltd. v. M/s Cadbury (India) Ltd. reported in (2005) 5
SCC 573 wherein the Hon'ble Supreme Court has held as under:
"As to scope of a buyer being deceived, in a passing off action, the
following principles have to be borne in mind. Lord Romer, LJ has
said in Payton & Co. vs. Snelling Lampard & Co. (1900) 17 RPC
48 that it is a misconception to refer to the confusion that can be
created upon an ignorant customer. The kind of customer that the
Courts ought to think of in these cases is the customer who knows
the distinguishing characteristics of the plaintiff's goods, those
characteristics which distinguish his goods from other goods in the
market so far as relates to general characteristics. If he does not
know that, he is not a customer whose views can properly be
regarded by the Court. [See the cases quoted in N.S.Thread & Co.
vs. Chadwick & Bros. (AIR 1948 Mad. 481), which was a passing
off action]. In Schweppes' case, Lord Halsbury said, if a person is
so careless that he does not look and does not treat the label fairly
but takes the bottle without sufficient consideration and without
reading what is written very plainly indeed up the face of the label,
you cannot say he is deceived."
41. Learned Advocate for the Appellant has submitted that in the facts
and circumstances of the case, it is crystal clear that trade name of both
the parties are different and only because colour combination is more or
less same, it cannot be said that the defendant has committed any act of
passing off and therefore the order granting the injunction by the learned
trial court is required to be set aside in the interest of justice. That the
learned trial court has failed to appreciate the ratio laid down by the
Hon'ble Supreme Court in the case of S.M. Dye Chem Limited (supra).
42. Learned Advocate for the Appellant has further submitted that the
learned trial court has erred in observing that new entrant like defendant
enters the Tea business cannot use the colour combination as that of
Respondents / Original Plaintiffs in so far as the tea business is concerned
and that there is no legal force to arrive at such a conclusion more
particularly when it is an admitted fact that the Respondents / Original
Plaintiffs are not having any registration of trademark for orange colour
and orange colour is a generic colour and more particularly when the said
colour is used by several other tea vendors. It is therefore submitted that
the observations made by the learned trial court are not tenable in law and
on facts.
43. That the learned trial court has gravely erred in holding that the
entire get up and colour scheme of the package adopted by the
Respondents / Original Plaintiffs and the Appellant / Original Defendants
are identical in every detail and are likely to confuse and deceive the
customer easily. It is submitted that such a finding is recorded without
appreciating various provisions of Trademarks Act and Copyright Act as
well as settled common laws of passing off action as, except the colour of
the packet, there is no similarity in the overall design or get up of the
package.
44. Learned Advocate for the Applicant has, therefore, submitted that
the impugned order passed by the learned trial court dated 11.12.2020
below Exh.7 is unjust, illegal, against the evidence on record and against
the provisions of Trademarks Act and Copyright Act and against the
settled preposition of law and therefore, requires to be quashed and set
aside and the Application at Exh.7 moved by the Respondents / Original
Plaintiffs deserves to be dismissed.
45. Learned Counsel Mr. Mehul Sharead Shah has vehemently further
argued that in the present case, the case is related to the trademark &
copyright regarding 'WAGH BAKRI' and 'VIMAL TEA'. The learned
trial court has committed serious mistakes and errors by not discussing
the prima facie case, balance of convenience and irreparable loss and
therefore the said order deserve to be dismissed.
46. It is further contended that pursuant to the copy of order at page 91
(internal page 152), the learned trial court has discussed the facts about
Order 7 Rule 11 i.e. with regard to the rejection of plaint but the case is of
Exhibit-5 (interim injunction) where is the question is rejection of the
plaint. Further, there is vast difference between 'WAGH BAKRI' and
'VIMAL TEA' as both re different. Therefore, this case requires remand
and the learned trial court is required to decide afresh. Merely colour of
wrapper is same which is the source of natural colour. Further, not a
single word with regard to findings and there is total non-application of
mind and the same is non-reasoned judgment and therefore in absence of
prima facie evidence of plaintiff, this Appeal from Order deserve to be
allowed and accordingly stands allowed. The learned trial court to decide
fresh Exh.5 on merits.
47. Learned Advocate Mr. Mehul Sharad Shah for the Appellant /
Original Defendant has further vehemently argued that in the present
case, as per the allegations, original Defendant has copied the trademark
and copyright of the plaintiff. In fact the product of the plaintiff is of
Saffron Colour whereas the product of the defendant is of dark orange
colour. In fact the colour scheme and the names are altogether different.
Further, learned Advocate Mr. Shah has drawn the attention of this Court
at page numbers 27 and 82 of the memo of petition and submitted that he
had applied for the trade mark. He has also argued that in fact it is
originally applied by the plaintiff on 1st of January 1925 but in that form
at page number 142 is very relevant and important since the trademark
has a Colum "Device". On the contrary there were six options and out of
that six options the plaintiff has neither used the device as colour, shape
of goods and sound etc. On the contrary the word Colum 'Device' is
used and therefore the case of the plaintiff is not tenable. Further, the
colour orange is generic. Learned Advocate Mr. Shah has further
emphasized on the word 'device' and drawn the attention of this court on
column numbers 4 and 5 at page numbers 73 which are relevant where
the BAGH BAKRI TEA LEAF' is shown and further the label is of the
year 2013 and the trademark is more than 100 years but they have
changed the label recently in the year 2019.
48. It is further contended by learned Advocate Mr. Shah by drawing
the attention of this court at page no.73 (column no.4 and 5) wherein also
'WAGH BAKRI TEA LEAF' is the label which is just availed to the
original plaintiff in 2013. Therefore, the stand of more than 100 years
using present 'Mark' is not tenable. It is further contended that on the
contrary the present stand is taken on 30.7.2019 and the certificate to that
extent is issued on 25.1.2020 for 'WAGH BAKRI' premium leaf. It is
further contended that on page no. 147 of the petition also premium leaf
is referred to at page 148. The name 'WAGH BAKRI' is a big name so
far as the item of original defendant and the present Appellant is
concerned. There is nowhere tea garden, neither man nor goat, nor
'WAGH BAKRI'. Therefore, there is no question of infringement.
However cup and saucer is generic. Further, the original plaintiff and the
present Respondent has saffron colour where the present appellant and
the original defendant has dark orange colour. Therefore, there is no
similarity and therefore there is no question of deceptive nature of the
product of the present Appellant. Learned Advocate Mr. Shah has also
drawn the attention of this court at page numbers 149, 150, 151, 152, 153
and 154 and submitted that the colour orange is generic one. Further, he
has drawn the attention of this court at page number 168 and 173 and
submitted taht the defendant is using VIMAL and the same is a registered
trade mark but 'WAGH BAKRI' is in red colour. Therefore also there is
no question of deceptive to the public at large.
49. Learned Advocate Mr. Shah has further contended that in the
present case, the learned trial judge has just narrated the arguments
advanced by both the sides from 1 to 100 pages of impugned order passed
by learned trial corut, and hardly nowhere it is stated the discussion of
prima facie case, irreparable loss and balance of convenience. However,
he has drawn the attention of this court that at page 36 (internal page 77)
paragraph 42 and page 82, the stand taken by the original defendant.
Page 44 is with regard to the artistic work i.e. Tiger, page 45 (internal
page 84) is with regard to the design, page 56 (internal page 92) is with
regard to the goodwill of 'WAGH BAKRI'. Further, learned Advocate
Mr. Shah has emphatically argued that the product of the original
defendant / present Appellant is VIMAL and not the 'WAGH BAKRI'.
On all such grounds, the reasons are perverse and therefore this court is
required to interfere and set aside the oder passed by the learned Judge,
City Civil Court in temporary injunction. Further, it is also argued that
nobody is using Kesari Cha (tea) on the basis of similar get-up, since the
present Appellant has dark orange coloured VIMAL product and also he
has drawn the attention of this court at page 150, 151 and page 160 of the
impugned order.
50. At the cost of repetition, he has submitted that there is no prima
facie case neither balance of convenience nor irreparable loss to the
plaintiff and the same is not in detail discussed by the learned trial court.
Further, the orange colour is generic and used by all the traders. Further,
it is contended that if the temporary injunction is not granted, in that case,
the original Plaintiff / present Respondent has no loss. On the contrary,
the present appellant / original defendant has huge loss. Learned
Advocate Mr. Shah has also drawn the attention of this court to the
judgment in case of Picnic / Picnic v/s Picnic / Picnic, where also Exh.5
was not granted. He has also drawn the attention of this court to the
judgment of the Hon'ble Supreme Court in case of Cadbury. Further, it
is argued that time and again the Hon'ble Supreme Court has held that
some product is purchased by rich persons only. Therefore, they are
literate and normally they are literate therefore there is no chance of any
deceptiveness nor of cheating to the public at large.
51. Learned Advocate Mr. Shah has therefore prayed that in view of
what is stated herein above, Appeal from Order may be allowed, and
impugned order may be quashed and set aside considering the above-
mentioned discrepancy in the judgment as well as established principles
of law.
52. Further learned advocate Mr. Mehul S. Shah in his arguments has
drawn the attention of this Court at judgment delivered by the High Court
of Delhi in case of Kellogg Company vs. Pravin Kumar Bhadabhai
decided on 15.02.1996 reported in 1996 Law Suit (Del) 187, Para 10 of
which reads as under:
"Para 10. The law relating to 'trade dress' is very clear. Kerly in
'Law of Trade Marks' (12th Ed. 1986, para 16.67) says that it is
usually true in some degree that a trader's goods are recognised
by their general appearance, or "get-up". Accordingly,
resemblance or 'get-up' is not uncommonly an ingredient in
passing-off, and it is possible for imitation of get-up alone to
amount to passing-off. Such cases are rare, since few traders rely
on get-up alone to distinguish their goods, so that trade names and
word trade marks are ordinarily present too, and the author says:
and in these days, in this country, a difference in names is enough
to warn the public that they are getting one trader's goods and not
the others" (Sapers v. Specters ((1953) 70 RPC 173)".
Therefore, learned Advocate Mr. Shah has argued that in the present case
even if Safron & dark orange colour is common in that case too, it is not
a case of passing off.
53. Learned advocate Mr. Shah has submitted that in the present case
also name is Vimal for the original defendant whereas name 'WAGH
BAKRI' for the original plaintiff, therefore, names are totally different,
hence, no case is required for temporary injunction for present respondent
by the learned learned trial Court. Learned advocate Mr. Shah has also
placed reliance upon the Para 20 of the above referred judgment, which
reads as under:
"Para 20. Thus, the above case also lays down that the trade dress
or rather the whole thing must be seen in its entirely and not parts
in isolation. It is not permissible, therefore to say that the square
on the left side top had a small red and green border or there was
a red band horizontally and defendant's carton if examined from
close quarters, showed these feature. Viewed as a whole, one can
see that the words Kellogg's, and AIMS are prominently displayed
on each and therefore there can be no confusion, prima facie."
54. In this judgment words Kellogg's and AIMS are totally different
from each other and so there is no confusion and here in this case also the
words Vimal and Waghbakari are different from each other and
therefore there is no chance of confusion.
55. Learned advocate Mr. Shah has also placed reliance upon the
judgment delivered in case of Parle Products Limited vs. Bakemans
Industries Limited decided on 29.05.1998 reported in 1998(2)
ARBLR583(Madras), Para 11 of which reads as under:
"Para 11: The learned Counsel for the applicant submitted that
only one 'Gluco' is mentioned in the judgment which is the Gluco
Biscuits manufactured by the applicant. Be it so, the observation
that 'Gluco' is an ordinary word in which no one has any right has
not been assailed. Further, the respondent has produced sample
biscuit pockets filed additional affidavit to show that at least two
other manufactures of biscuits used the word 'GLUCO' for their
biscuits. Thought the learned Counsel refers to the products of
M/s. Surya Food and Agro Industries Pvt. Ltd. and Kwality'
Biscuits Limited, a perusal of the typed set of papers would show
that Kwality Biscuits Limited is manufacturing 'Glucose Biscuits'
and the typed set would reveal that M/s. Surya Food & Agro Pvt.
Ltd. is manufacturing 'Gluco-V Biscuits and a manufacturer known
as Sudha is manufacturing Gluco Bico. It is thus evident that
several biscuits manufacturers use the word GLUCO to indicate
that Glucose is an ingredient in the biscuits. I accept the
contention of the learned Counsel for the respondent and hold that
GLUCO is a generic word descriptive of use of Glucose in the
product. The applicant's action, in the language of Fry, Lord
Justice in the case of in Re : Dunn 1888 6 RPC 379, is 'struggle to
enclose and to appropriate as private property certain little strips
of the great open common of the English Language."
In the above judgment the common word is Gluco and in the present case
defendant has used orange colour which is generic and the same is not
created.
56. Learned Advocate Mr. Shah has emphatically and fervently
submitted that loss of the plaintiff can be ascertained if the injunction is
not granted but the loss of defendant (present petitioner) cannot be
ascertained and therefore, the present Appeal From Order is required to
be allowed and the impugned order passed by the learned trial Court may
be set aside.
57. Learned advocate Mr. Shah has lastly submitted that in no case
there are chances of confusion in the minds of customers since the words
'Vimal' and 'Waghbakari'are totally different therefore also requested to
allow the present Appeal From Order and to set aside the impugned order
of the learned Trial Court.
(F) Arguments - cum - legal aspects by learned Advocate for the
Respondent / Original Plaintiff:
58. Learned Senior Advocate Shri Kamal Trivedi for the Respondent /
original Plaintiff has submitted that In the captioned appeal, the Appellant
- orig. Defendant has challenged order dated 11.12.2020 of the learned
Trial Court, granting interim injunction in favour of the Respondent -
orig. Plaintiff in terms of para 85 (A), (B) and (C), restraining the
Appellant - Defendant from manufacturing, marketing, advertising and
selling its products by copying the registered device mark and registered
copyright of the Respondent - Plaintiff and from committing an act of
infringement thereof.
59. Learned Senior Advocate Shri Kamal Trivedi for the Respondent /
Original Plaintiff has commenced his arguments through the authorities/
citations to buttress his argument and submitted that out of total
authorities submitted by the petitioner, there are 4-5 authorities which are
no longer good law, therefore, these authorities / citations is not
applicable in the present case.
60. Learned Senior Advocate Shri Kamal Trivedi has taken this court
to the 4 registered trademarks produced at Page Nos. 23, 26, 29, and 32
in Respondent's Affidavit-in-Reply in the CA, which are equivalent to
Page Nos. 62/A, 66, 68 and 70 in Paper Book ("PB") and one registered
copyright, produced at Page No. 35 therein, which is equivalent to Page
No. 73 in PB along with their enlarged images at pgs. 25, 28, 31, 34 and
36 in Respondent's Affidavit-in-Reply in CA being equivalent to pgs. 74,
142, 143 and 145 in PB, clearly suggest that Appellant - Defendant has
copied the same in its device mark / label, while applying for its own
registration, produced at pgs. 37 and 38 in the said Affidavit-in-Reply of
the Respondent (being equivalent to pg.133 in PB).
61. Learned Senior Advocate Shri Kamal Trivedi has submitted that
the Respondent - Plaintiff is in the Tea business since 1892 and has been
a prior user of aforesaid trademarks and copyright, as compared to that of
Appellant - Defendant, who is yet to enter in the Tea business and that,
the Respondent - Plaintiff has an annual turnover of about Rs.1200 cr.
He has further submitted that the Appellant - Defendant has not yet
started its commercial business in Tea, and while denying the
distinctiveness involved in the registered trademarks and copyright of the
Respondent - Plaintiff, Appellant - Defendant itself has sought to apply
for registration for deceptive similar device mark, while claiming
distinctiveness in its copied version of colour scheme, get up, placement
of cup and saucer, leaves, etc. and thus, Appellant - Defendant has made
substantial and material reproduction of Respondent - Plaintiff's labels,
which are registered trademarks and copyright by copying (a) Saffron
colour scheme (b) Get up and arrangement, (c) Placement of cup and
saucer along with the device of leaf, and (d) the artwork prepared in the
oblong containing the word 'WAGHBAKRI' in red colour. It is
submitted that this can very well be appreciated by comparing
Respondent's - Plaintiff's label vis-à-vis Appellant - Defendant's label,
copies whereof are produced at Exh.1 (Colly.), which are otherwise at
pgs. 34 and 38 in the Respondent's Affidavit-in-Reply in CA (being
equivalent to pgs.147 and 148 of the PB). He has further submitted that
no reason is coming forth as to why the Appellant - Defendant has chosen
the said label for its VIMAL product, which is, as aforesaid, substantial
and material reproduction of the label of Respondent - Plaintiff. Learned
Senior Advocate Shri Kamal Trivedi has therefore submitted that the
Respondent - Plaintiff has made out a prima facie case on merit about
copying the essential ingredients of its device mark by the Appellant -
Defendant, coupled with Respondent's established goodwill, reputation
and prior use, followed by balance of convenience and likelihood of
causing irreparable injury, being in favour of the Respondent - Plaintiff.
Therefore, Respondent - Plaintiff was rightly issued an injunction order.
62. Learned Senior Advocate Shri Kamal Trivedi for the Respondents /
Original Plaintiffs has further submitted that in a matter of a registered
trademark as device mark with a label along with registration of
copyright thereof, what is to be seen is the over all similarity from the
point of view of a common man with average intelligence and imperfect
recollection, and one is not supposed to place both the competing marks
side by side to draw dissimilarities and to find out whether the words and
colours used therein are generic and descriptive or not.
63. Learned Senior Advocate Shri Kamal Trivedi for the Respondents /
Original Plaintiffs have placed reliance on the following judgments,
which are very much similar to the one on hand and submitted that the
Courts have made such overall comparison as discussed herein above,
while granting injunction against the usage of objectionable device mark /
label. He has relied upon the following judgments which are as under:
Sr. Name Citation Pg. Original mark Copied mark
No. No. (1st
(1st Compilation Compilation of
of Judgments of Judgments of
Respondents) Respondents)
1. Parle Products (1972) 1 SCC 1-6 A wrapper / label A wrapper / label of
(P) Ltd. vs. J.A. 818 of partly yellow partly yellow and
& Co. Mysore and partly white in partly white in
colour, having a colour, having a
picture with a girl picture of a girl and
in centre, carrying birds in the center,
a pot of water on with hay-bundle on
her head with two her head supported
calves around her with one hand and
and hens in the carrying a stick and
foreground and a bundle of food in
farm house with a the other hand with
fence in a cows and hens
background with around.
words, "Parle's
Gluco Biscuits"
printed thereon.
2. Dabur India 2012 SCC 7 - 21
Limited Vs. Online Del. 3332
Shree Baidyanath
Ayurved Bhawan
Pvt. Ltd.
3. Marico Ltd. Vs. 2014 SCC 22 - 40
Pratik Goyal Online Del. 1786
5. Mother Dairy 2015 SCC 66 - 75
Fruit & Online Del.
Vegetable Pvt. 10637
Ltd Vs. Sri
Vinayaka Milk
Products
7. Parle Agro Pvt Judgment dated 91 - 95
Ltd. vs. Gulam 28.03.2018
Moinuddin Khan rendered by
and Anr. Hon'ble Bombay
High Court
8. Parle Products MANU/MH/149 96 - 101
Pvt. Ltd. V/s. 2/ 2020
Future Consumer
Ltd.
9. Gujarat Tea Order dated 102 - 123
depot. Co. Vs. 04.08.2015
Bagharam passed by this
Krupaji Ganchi Hon'ble Court
10. Taw (1951) RPC 271 124 - 129
Manufacturing
Coy Ld. Vs.
Notex
Engineering Coy.
Ld
(G) Case Law Discussion:
64. Whatever the list of citations / authorities and discussion on the
aforesaid judgments as submitted by learned Senior Advocate Shri Kamal
Trivedi for the Respondents / Original Plaintiffs shall be discussed at the
relevant place of this judgment.
65. Learned Senior Advocate Shri Kamal Trivedi for the Respondent /
Original Plaintiff has further submitted that as held by the Hon'ble
Supreme Court in case of Midas Hygiene Industries (P) Ltd. Vs.
Sudhir Bhatia, reported in (2004) 3 SCC 90, [judgment at Sr. No.15 at
pgs. 213 - 215 in the 1st Compilation of Judgment of the Respondent -
Plaintiff), an injunction must follow in case of infringement of trade mark
or copyright and therefore, learned Trial Court has rightly granted the
injunction in question.
66. Learned Senior Advocate Shri Kamal Trivedi has further submitted
in his written notes that the following judgments relied upon on behalf of
Appellant - Defendant cannot be pressed in service and hence, are not
applicable to the present case for the reasons stated against each one of
them as indicated hereunder:
(i) S. M. Dyechem Ltd. vs. Cadbury (India) Ltd. reported in
(2000) 5 SCC 573 : (@ pg.197 in PB):
The law laid down in this judgment has been expressly held to be
bad in the later judgment of the Hon'ble Supreme Court in case of
Cadila Health Care Ltd., reported in (2001) 5 SCC 73 in para 17
to 20 (Pls. see judgment No.14 at pgs.190 to 212 in the 1 st
Compilation of the Respondent), mainly on the ground that two
English judgments relied upon in the case of S.M. Dyechem Ltd.
viz. Pianotist Co. (para.27 @ pg.216 in PB) and Payton and Co. vs.
Snelling (para 54 @ pg.224 in PB), are not applicable to Indian
conditions, and hence, the judgment of S.M. Dyechem Ltd.
(supra), cannot be referred to and relied upon.
(ii) Kellogg Company vs. Pravin Kumar Bhadabhai reported
in 1996 Law Suit (Del) 187;
The said judgment has also been found not to be laying down a
good law in later judgment of Hon'ble Delhi High Court in case of
N. Rangarao & Sons Vs. Anil Garg, reported in 2005 SCC
Online Del 1293 (rel. para 67), since reliance was placed on the
very two English judgments referred to above as well as on the
judgment of S.M. Dyechem Ltd. (supra).
(iii) Kuber Khaini Pvt. Ltd. Vs. Prabhoolal Ramratan Das
Pvt. Ltd. reported in 2000 Law Suit (Cal) 372 ;
The law laid down by the said judgment is not a good law,
inasmuch as, it has also relied upon the above very two English
judgments in case of Payton and Co Limited vs. Snelling (para 17
@ pg.264), which has been declared bad by the Hon'ble Supreme
Court in para 20 of Cadila Health Care Ltd., reported in (2001) 5
SCC 73.
(iv) K. Narayanan vs. S. Murli reported in 2008 Law Suit
(Cal) 372;
This judgment does not apply to the present case, since injunction
was denied in the said case mainly on two grounds viz. (i) the
plaintiff's mark was not registered and his application for
registration was pending, on the basis whereof, it had filed a Suit
for passing of for injuncting the other side (Pls see para 3 & 26),
and (ii) plaintiff had suppressed certain important facts. However,
in the instant case, Respondent - Plaintiff has registered trademarks
and copy rights, whereby, it has acquired a statutory recognition to
use the same to the exclusion of rest of the world.
(v) Parle Products Ltd. vs. Bakeman Industries Ltd.
reported in MANU / TN / 1824 / 1998 ;
This is also not a good law in view of the Apex Court's judgment
in case of Parle Products (P) Ltd. vs. J. P. & Co., Mysore.
(vi) Britannia Industries Ltd Vs ITC Limited reported in
MANU / DE / 0626 / 2017;
This judgment is for passing off action of Britannia and not for
infringement of trade mark or copyright, as it is there in the present
case. Secondly, in this case, Britannia was there in the business of
biscuits since many years, whereas in the present case, the
Appellant- Defendant is yet to enter in tea business. Hence, the
said judgment cannot be applied to the present case.
(vii) Cipla Limited Vs M.K Pharmaceuticals reported in
MANU / DE / 1938 / 2007;
This judgment is not applicable to the facts of the present case, as
this judgment is related to prescribed medicines / tablets with a
particular colour and shape with blister form of packagings,
wherein the get up, colour scheme, arrangement of label are not
relevant, whereas, in the present case, the same are essential
features of label. It was under these circumstances that the
Hon'ble Delhi High Court observed that there can be no monopoly
over colour and shape.
(viii) Colgate Palmolive Co. Ltd. v. Patel reported in 2003 SCC
On Line (Del) 1005:
This judgment of Hon'ble Delhi High Court is also entirely on
different facts, since, in this case, the issue was related to
monopoly of colour 'red' and 'white' and not on the entire get-up,
colour scheme arrangement and placement on label. Whereas, in
the instant matter, the case involved does not relate to claiming
monopoly over 'orange' colour, but having registered trademarks
involving a label / device mark and registered copyright on the
entire lay-out, getup, arrangement, colour scheme and placement
on leaves and other things. Even in the aforesaid case, in para-52
of the judgment, the Hon'ble Delhi High Court had ultimately held
that owing to the following reasons, there was sufficient
resemblance between Colgate Palmolive's carton of goods
comprising of registered trademark and that of the Ajanta of the
Defendant in that case, resulting in substantial and material
reproduction of trade mark of Colgate by the Defendant.
(a) Defendant's adoption of a red coloured background on the
front panel of carton is similar to that of Colgate.
(b) Adoption of white colour for inscribing the brand name
"AJANTA" is similar to the brand name "COLGATE" which is
also inscribed in white colour.
(c) Similar size and placement of the aforesaid two brand names
on the front panel of the carton of both the parties.
(d) Nature of goods being similar i.e. toothpaste, whose
intending purchaser may not be literate to bestow much attention
on a daily use product like toothpaste.
Ultimately, during the course of arguments, Hon'ble Delhi High Court
suggested to the Defendant to alter the colour scheme and other changes
in the copied version of packaging to which, Defendant was agreeable
and accordingly the matter was put to rest.
(ix) Amrit Banaspati Co. Ltd. v. Suraj Industries Ltd.
reported in MANU / HP / 0005 / 1996;
This judgment is for passing off action and not for infringement of
trade mark or copyright and also not involving a device mark /
label with a particular get-up colour scheme, arrangement of label,
etc. as it is there in the present case.
67. Learned Senior Advocate Shri Kamal Trivedi has therefore
submitted that the injunction cannot be refused solely on the basis of the
contention raised by the Appellant - Defendant that others are copying
the registered trademarks and copyright of the Respondent - Plaintiff. In
support of his submission he has referred to para-22 @ pg.382 of the
Judgment at Sr. No.22 in the 1st Compilation of the Judgments, in case of
Rangoli Chemfoods Pvt. Ltd.)
68. It is further submitted by learned Senior Advocate Shri Kamal
Trivedi that it is well established that the Appellate Court would normally
not be justified in interfering with the exercise of discretion under
Appeal, solely on the ground that if it had considered the matter at the
trial stage, it would have come to contrary conclusion. If the discussion
had been exercised by the learned Trial Court reasonably and in a judicial
manner, the fact that the Appellate Court would have taken a different
view, may not justify interference with the Trial Court's exercise of
discretion. In support of his aforesaid submission, learned Senior
Advocate Shri Kamal Trivedi has placed reliance on the following
judgments:
Sr. Citation Party Name Pg.
No. No.
(2nd Compilation
of Judgments of
Respondents)
1. (1996) 5 SCC N.R. Dongre vs. Whirlpool Corporation 312 - 326
2 2005 (2) GLH Adani Exports Ltd. vs. Marketing 327 - 339
156 Service
3. 2012 (3) GLH Sun Pharmaceuticals Industries Ltd. vs. 340 - 352
110 M/s West Coast Pharmaceuticals Works
Ltd.
69. Learned Senior Advocate Shri Kamal Trivedi for the respondents
has drawn attention of this Court at Annexure - I (Colly.) Page 23, TM
Application No. 3075599 dated 09.10.2015 and enlarged Logo on Page
25, and on Page 26, TM Application No. 4250078 dated 30.07.2019 and
enlarged Logo on Page 28, and on Page 29 TM Application No. 4250077
dated 30.07.2019 and enlarged Logo on Page 31 and therefore he pointed
out that the same are registered.
Learned Senior Advocate Shri Trivedi to buttress his arguments has
placed reliance on the Judgment delivered by the Hon'ble Supreme Court
in case of Parle Products (P) Ltd Vs. J. P. And Co., Mysore, reported
in (1972) 1 SCC 618, wherein Hon'ble Supreme Court dealt with the
question of similarity of one product to another market product or not,
therefore, instead of dissimilarity, first the Court is required to see
similarity in the products, therefore, in the present case, if we compare
the product of the plaintiff and the defendant, there is some similarity,
therefore, learned trial Court has rightly exercised the discretion in favour
of the respondents who are original plaintiffs. Learned Senior Advocate
Shri Kamal Trivedi has further argued that in the present case the learned
trial court has rightly observed that action of the plaintiff is at the doctrine
of quia timet action since the defendant has started business though the
application was proposed to be used. Therefore, if the manufacturing get
started, the plaintiff would have irreparable loss and therefore the original
plaintiff has rightly taken quia timet action against the original
defendant.
70. Learned Senior Advocate Shri Trivedi has also placed reliance on
the judgment in Case of Dabur India Limited Vs. Shree Baidyanath
Ayurved Bhawan Pvt. Ltd, decided on 02.07.2012, reported in 2012
SCC OnLine Del 3332, Para Nos. 47 and 48 which read as under:
"Para 47. In view of the above said well known settled law on
the subject, it is clear that the defendant is guilty of infringement of
copyright and passing off their goods as the goods of the plaintiff.
From the above said judgments cited it is clear that in most of the
cases the copyright has been claimed by the plaintiff on the article
itself.
Para 48. It is also pertinent to mention that the subject matter
of the colour combination, get-up and layout are not only covered
in the subject matter of copyright but also covered under the
common law remedy i.e. law of passing off. Even in the New Trade
Mark Act 1999 the definition of the mark is given in Section
2(m) which says that "Mark" include a device, brand, style, label,
ticket, name, signature, word, letter, numeral, shape of goods,
packaging or combination of colours or any combination thereof.
As per the definition and as per the judgments mentioned above it
is clear that the colour scheme, get up, layout and combination of
colours is covered under the action for passing of also."
71. Learned Senior Advocate Shri Trivedi has also placed reliance on
the judgment in Case of Marico Limited vs. Pratik Goyal & Anr.
Decided on 26.09.2014 reported in 2014 SCC Online Del 1786, Para
Nos. 25 and 26 which read as under:
"Para 25: Thus, the defendants in the present case even prima
facie are not able to establish that the third parties are actually
using the similar trademarks as alleged in the written statement.
Nothing has come out of record to show that any third party has
actually used the main PARA to their products. A mere plea, thus
raised is not enough as per settled law.
Para 26: Law of publici juris has been discussed in various cases
and the Courts have given their respective findings to the effect
that a party who has taken the defence of publici juris has to prove
his case. The same has been dealt with by the Courts in the
following cases."
Therefore, it is argued by learned Senior Advocate Shri Kamal Trivedi
for the Respondents has submitted that in the present case too, facts of
that case squarely applies too.
72. Learned Senior Advocate Shri Kamal Trivedi has drawn the
attention that if the trade mark of the plaintiff
PARACHUTE/PARACHUTE LITE is compared as a whole with the
trade mark of the defendants, PARALITE adopted by the defendants is
deceptively similar mark as that of the plaintiff as it appears that the first
part PARA is taken by the defendants from the registered trade mark
PARACHUE and the remaining portion of the mark LITE is taken by
defendants from another registered trade mark PARACHUTE LITE
where the mark LITE is a part of registration No. 888245. Thus, the
argument of the defendants are without any force.
73. Learned Senior Advocate Shri Trivedi has also placed reliance on
the judgment delivered in case of Mother Dairy Fruit & Vegetable Pvt.
Ltd. Vs. Sri Vinayaka Milk Products decided on 15.07.2015, reported
in 2015 SCC OnLine Del 10637
"Para 22. The plaintiff sells its products all over the country,
including in Hyderabad where the defendant is carrying out its
illegal activities. It is submitted by the plaintiff that the possibility
of confusion being caused by the defendant's adoption of the
impugned mark which is deceptively similar to the plaintiff's
MOTHER DAIRY (blue logo) and the trade-dress used for its
packaging is very high and in fact inevitable due to the following
reasons:
a. The defendant is selling identical products under a deceptively
similar trademark and packaging.
b. The plaintiff's and the defendant's products are sold through the
same trade channels. c. Since milk is a necessary commodity, the
classes of consumers purchasing the said products would include a
large segment of the illiterate and semi-illiterate population.
The defendant by its adoption and use of the impugned mark and
the packaging/trade dress is clearly attempting to pass off its
goods as those of the plaintiff. This is in clear violation of the
plaintiff's common law as well as statutory rights in the MOTHER
DAIRY (blue logo) trademark and the trade dress used for its milk
products. The sale and distribution of the impugned products has
resulted in great harm prejudice to the plaintiff's business, rights
and interests apart from amounting to tarnishment and dilution of
the plaintiff's reputation and goodwill. The plaintiff is suffering
huge losses and damages due to the blatant and outright violation
of its rights by the defendant."
74. Learned Senior Advocate Shri Trivedi has also placed reliance on
the judgment delivered by the High Court of Judicature at Bombay in
case of Parle Agro Private Limited Vs. Parle Agro Private Limited
decided on 28 March 2018.
75. Learned Senior Advocate Shri Trivedi has also placed reliance on
the judgment of this Court in case of Gujarat Tea Depot Company & 1
Vs. Bhagaram Krupaji Ganchi in Appeal from Order No. 116 of 2015
decided on 04.08.2015, of which para 8 reads as under:
"Para 8. The trial court by the impugned order refused to grant
injunction to the Plaintiffs. The learned Judge was of the opinion
that the Plaintiffs failed to establish a prima facie right since the
comparative study of both the marks would reveal that they are not
identical or likely to deceptive much less cause confusion in
relation to the goods in respect of which the trademarks are
registered. Learned Judge was of the opinion that the Plaintiffs
failed to establish that the mark of the Defendant was deceptively
similar to that of the Plaintiffs registered trademark. It cannot be
stated that the essential features of the trademark were adopted by
the Defendant. The learned Judge recorded that there was no
similarity in the two marks namely SHER BAKRI and WAGH
BAKRI. Since the suit was not for passing off action but only for
infringement of the trademark, it was essential for the Plaintiffs to
prove the use of the Plaintiffs' mark by the Defendant."
xxx
(iii) In case of Madan Lal Arora v. Soni Udyog (supra), learned
Single Judge of the High Court in an application for injunction
against the Defendant for using the trademark LION BRAND in
respect of sale of goods of wire netting which is similar to trade
mark TIGER BRAND of the Plaintiff, observed that it is true that
the words "TIGER" and "LION" are not phonetically similar, but
the test to be applied is whether an unwary and innocent purchaser
could be persuaded to purchase the goods of the defendants as
those of the plaintiff. It was observed that the wire nettings were
mostly purchased by the carpenters, who are barely literate, is
likely to create confusion."
76. Learned Senior Advocate Shri Trivedi has also placed reliance on
the judgment of Delhi High Court in case of N. Ranga Rao & Sons Vs.
Anil Garg & Ors., decided on 02.12.2005 reported in 2005 SCC Online
Del 1293. Of which Para Nos. 66, 67 and 68 which read as under:
"Para 66. I have given a deep thought to these rival contentions.
Para 67. It would be appropriate to first consider the parameters
on which the alleged deception has to be. In this behalf, the
judgment in Kellogg Company's case (supra) is extremely relevant.
There has been reference made to Schweppes Ld.'s case (supra) to
come to the conclusion that if a person is so careless that he does
not look and does not treat the label fairly, then he is not the
person who would form the basis of the test. There is force in the
contention of learned counsel for the plaintiff that the dictum in
Kellogg Company's case (supra) to the extent it relied upon
Schweppes Ld.'s case (supra) would not hold good in view of the
subsequent development of law in M/s. S.M. Dyechem Ltd.'s case
(supra) and the review thereof in Cadila Health Care Ltd.'s case
(supra), the Apex Court while relying upon the observations in
Schweppes Ld.'s case (supra) observed that if the customer does
not distinguish the characteristics of the two packings, then he is
not a customer whose view can properly be regarded by the Court.
However in Cadila Health Care Ltd.'s case (supra), this very
aspect was specifically considered. The Apex Court took note of
the earlier judgments in this behalf and came to the conclusion
that the decisions of the Apex Court in the last four decades
preceding clearly laid down that what had to be seen in the case of
a passing off action between the competing marks and the
likelihood of deception or confusion. The Apex Court found that
the principle of phonetic similarity cannot be jettisoned and in
determining the test vis-a-vis the person who has to be kept in
mind as a customer, the views expressed in Schweppes Ld.'s case
(supra) were found to be contrary to the decision of the Apex
Court in Amritdhara Pharmacy v. Satya Gupta, .
Para 68. In Amritdhara Pharmacy's case (supra), the product was
examined from the prospect of it being purchased by villagers and
townfolk, literate as well as illiterate and, thus, the question has to
be approached from the point of view of a man of average
intelligence and imperfect recollection. A trade may be related to
goods largely sold to illiterate or badly educated persons and the
purchaser in India cannot be equated with a purchaser of goods in
England."
Therefore, learned Senior Advocate Shri Trivedi has emphatically and
fervently submitted to buttress his arguments that the judgment produced
by the petitioner (Original-defendant) in case of Kellogg Company vs.
Pravin Kumar Bhadabhai would not held good law in view of the
subsequent development of law, therefore, the learned trial Court has
rightly exercised discretion in favour of the original plaintiff (present
respondent).
77. Learned Senior Advocate Shri Trivedi has also placed reliance on
the judgment in case of Cadila Health Care Ltd Vs. Cadila
Pharmaceuticals Ltd, reported in (2001) 5 SCC 73, of which Para Nos.
17, 18 and 20 which read as under:
"Para 17: Our attention was drawn to a recent judgment of this
Court in S.M. Dyechem Ltd. Vs. Cadbury (India) Ltd. (2000) 5
SCC 573 where in a passing off action, the plaintiff, which was
carrying on the business under the mark of Piknik, filed a suit for
injunction against the defendant which was using the mark of
Picnic for some other chocolates sold by it. On the allegation that
the defendants mark was deceptively similar, the trial court had
issued an injunction which was reversed by the High Court. On
appeal, the decision of the High Court was affirmed. One of the
questions, which this Court considered, was that for grant of
temporary injunction, should the Court go by the principle of
prima facie case, apart from balance of convenience, or
comparative strength of the case of either parties or by finding out
if the plaintiff has raised a triable issue. While Considering
various decision on the point in issue, this Court rightly conclude
at p. 591 as follows: (SCC para 21).
Para 18: We are unable to agree with the aforesaid observations
in Dyechems case (supra). As far as this Court is concerned, the
decisions in the last four decades have clearly laid down that what
has to be seen in the case of a passing off action is the similarity
between the competing marks and to determine whether there is
likelihood of deception or causing confusion. This is evident from
the decisions of this Court in the cases of National Sewing Thread
Co. Ltd.s case (supra), Corn products refining Companys case
(supra), Amritdhara Pharmacys case (supra), Durga Dutt Sharmas
case (supra), Hoffmann-La Roche & Co. Ltd.s case (supra).
Having come to the conclusion, in our opinion incorrectly, that the
difference in essential features is relevant, this Court in Dyechems
case (supra) sought to examine the difference in the two marks
Piknic and Picnic. It applied three tests, they being 1) is there any
special aspect of the common feature which has been copied ? 2)
mode in which the parts are put together differently i.e. whether
dissimilarity of the part or parts is enough to make the whole thing
dissimilar and 3) whether when there are common elements,
should one not pay more regard to the parts which are not
common, while at the same time not disregarding the common
parts? In examining the marks, keeping the aforesaid three tests in
mind, it came to the conclusion, seeing the manner in which the
two words were written and the peculiarity of the script and
concluded that the above three dissimilarities have to be given
more importance than the phonetic similarity or the similarity in
the use of the word PICNIC for PIKNIK.
Para 20: Lastly, in Dyechem's case (supra), it was observed in
para 54 as under:
As to scope of a buyer being deceived, in a passing-off action, the
following principles have to be borne in mind. Lord Romer, L.J.
has said in Payton & Co. Vs. Snelling, Lampard & Co. (1900) 17
RPC 48 that it is a misconception to refer to the confusion that can
be created upon an ignorant customer that the courts ought to
think of in these cases is the customer who knows the
distinguishing characteristics of the plaintiffs goods, those
characteristics which distinguish his goods from other goods in the
market so far as relates to general characteristics. If he does not
know that, he is not a customer whose views can properly be
regarded by the Court. (See the cases quoted in N.S. Thread & Co.
Vs. Chadwick & Bros. AIR 1948 Mad 481 which was a passing-off
action.) In Schweppes Case (1905) 22 RPC 601 (HL) Lord
Halsbury said, if a person is so careless that he does not look and
does not treat the label fairly but takes the bottle without sufficient
consideration and without reading what is written very plainly
indeed up the face of the label, you cannot say he is deceived.
These observations appear to us to be contrary to the decision of
this Court in Amritdharas case (supra) where it was observed that
the products will be purchased by both villagers and townfolk,
literate as well as illiterate and the question has to be approached
from the point of view of a man of average intelligence and
imperfect recollection. A trade may relate to goods largely sold to
illiterate or badly educated persons. The purchaser in India cannot
be equated with a purchaser of goods in England. While we agree
that in trade mark matters, it is necessary to go into the question of
comparable strength, the decision on merits in Dyechems case
(supra) does not, in our opinion, lay down correct law and we hold
accordingly."
Therefore, learned Senior Advocate Shri Kamal Trivedi has submitted
that, what is held in case of Dyechem Ltd. case (supra) is no longer a
good law.
78. Learned Senior Advocate Shri Trivedi has also placed reliance on
the judgment in case of Wander Ltd and Another Vs. Antox India P.
Ltd, reported in 1990 (Supp) SCC 727 of which Para No. 14 which reads
as under:
"Para 14: The appeals before the Division Bench were against the
exercise of discretion by the Single Judge. In such appeals, the
Appellate Court will not interfere with the exercise of discretion of
the court of first instance and substitute its own discretion except
where the discretion has been shown to have been exercised
arbitrarily, or capriciously or perversely or where the court had
ignored the settled principles of law regulating grant or refusal of
interlocutory injunctions. An appeal against exercise of discretion
is said to be an appeal on principle. Appellate Court will not
reassess the material and seek to reach a conclusion different from
the one reached by the court below if the one reached by the court
was reasonably possible on the material. The appellate court
would normally not be justified in interfering with the exercise of
discretion under appeal solely on the ground that if it had
considered the matter at the trial stage it would have come to a
contrary conclusion. If the discretion has been exercised by the
Trial Court reasonably and in a judicial manner the fact that the
appellate court would have taken a different view may not justify
interference with the trial court's exercise of discretion. After
referring to these principles Gajendragadkar, J. in Printers
(Mysore) Private Ltd. v. Pothan Joseph :
... These principles are well established, but as has been observed
by Viscount Simon in Charles Osention & Co. v. Johnston the law
as to the reversal by a court of appeal of an order made by a judge
below in the exercise of his discretion is well established, and any
difficulty that arises is due only to the application of well settled
principles in an individual case. The appellate judgment does not
seem to defer to this principle."
79. Learned Senior Advocate Shri Trivedi has also placed reliance on
the judgment in case of Ramdev Food Products (P) Ltd Vs.
Arvindbhai Rambhai Patel reported in (2006) 8 SCC 726 of which Para
Nos. 9 & 10 which read as under:
Para 9: On the premise that the respondents had been infringing its
rights, trade name and logo, the appellant company filed a suit in
the City Civil Court, Ahmedabad, which was numbered as CS
No.828 of 2000, inter alia, for the following reliefs :
"(A) The defendants by themselves, their servants, agents, partners
and all persons claiming through or under them be restrained by a
perpetual order of this Hon'ble Court from, in any manner, using
the trade mark 'RAMDEV' in their label, packing materials,
advertising materials, business materials etc., in respect of goods
which are covered under registration of the plaintiff's mark and/or
any mark which may be identical and/or deceptively similar to the
plaintiff's registered trade mark and thereby restrain them from
infringing the plaintiff's registered trade mark bearing No. 447700
and other marks bearing No.531084, 531085, 545253, 545253,
545255, 545257 and 545258."
Para 10: An application for injunction was also filed wherein
the following interim prayers were made :
"(A) The defendants by themselves, their servants, agents, partners
and all persons claiming through or under them be restrained by
an order of temporary injunction of this Hon'ble Court from, in
any manner, using the trademark 'RAMDEV' in their label,
packing materials, advertising materials, business materials etc. in
respect of goods which are covered under registration of the
plaintiff's mark and/or any mark which may be identical and/or
deceptively similar to the plaintiff's registered trade mark and
thereby restrain them from infringing the plaintiff's registered
trade mark bearing No.447700 and other marks bearing
No.531084, 531085, 545253, 545255. 545257 and 545258, till the
hearing and final disposal of the suit.
(B) The defendants by themselves, their servants, agents, partners
and all persons claiming through or under them be restrained by
an order of temporary injunction of this Hon'ble Court from using
in relation to any spices, masala bearing the name 'RAMDEV' as
produced with separate list or any label or packing material or
advertising material containing the trade mark 'RAMDEV' and/or
any mark which is identical and/or mark containing word
'RAMDEV' either on label or in trading style or trading name, so
as to pass off the defendants goods and/or business as that of the
plaintiff, till the hearing and final disposal of the suit." An
application was also filed for appointment of a Court
Commissioner"."
80. Learned Senior Advocate Shri Kamal Trivedi, further emphasized
on the aspect that the Madras High Court had not considered the dictum
of Hon'ble Supreme Court, therefore, also the reliance placed by the
learned advocate for the petitioner is not applicable to the present case.
81. Learned Senior Advocate Shri Kamal Trivedi, further argued that
as per the catena of decisions of Hon'ble Supreme Court, the product is
not required to be seen side-by-side but how the average person tests,
note of the product is important.
82. Learned Senior Advocate Shri Kamal Trivedi has also taken this
Court to Para-62 of the impugned order that the plaintiff being prior user,
therefore, defendant's stand is not tenable. On all such grounds, learned
Senior Advocate Shri Kamal Trivedi has emphasized that the learned trial
Court has rightly observed the prima facie case, balance of convenience,
irreparable loss in favour of the Respondent / Original Respondent,
therefore, there is no need to interfere with the order of learned trial
Court. Further, learned Senior Advocate Shri Kamal Trivedi has
requested this Court that everybody has an art of writing of judgment,
somebody writes prima facie case few time, therefore, writing of
judgment differs from judges to judges, therefore, he forcefully argued,
merely not having discussion on I.O. case would not set aside the
impugned order in toto whereas somebody writes prima facie case,
therefore, writing of judgment differs from judges to judges.
83. Learned Senior Advocate Mr. Kamal Trivedi has further argued
that though everybody has right to chose the colour but if there is some
similarity, in that case nobody would like to be deceived. Further,
learned Senior Advocate Mr. Kamal Trivedi has taken this court to the
decision in case of Parle Products (P) Ltd. v. J.P. & Co. Mysore
reported in (1972) 1 SCC 618 where identical matter is discussed that one
should not compare only label but one should compare the colour scheme
and another arts, whereas in the present case, colour is saffron and the
same is contended why no other colour is used by the so called
Appellant / Original Defendant. One should not go in generic, everybody
has a right to use colour but when there is a registered trade mark and
registered copy right, in that case one should be prevented from using the
same. Further, the present Respondent / Original Plaintiff has business of
Rs.12 Crores per year, and therefore, when the Appellant / Original
Defendant has yet to enter in the market, and therefore, the Respondent /
Original Plaintiff has rightly instituted the quia timet action. If the
manufacture is started in that case, there will be huge irreparable loss to
the Respondent / Original Plaintiff. Learned Senior Advocate Shri Kamal
Trivedi has referred to all the authorities which were discussed earlier in
nutshell and emphasized that the in the case of Mother Dairy Fruit &
Vegetable Pvt. Ltd. v. Sri Vinayaka Milk products reported in (2015)
SCC On Line Del 10637, where the Vinayaka Milk was having
identical colour and design and therefore the Hon'ble Supreme Court has
restrained the Defendants though the names were to be on the colours and
other scheme like blue colour is generic name but here in the present case
the orange colour is generic name, still however, the Hon'ble Supreme
Court has passed the order in favour of the Plaintiff and the Defendant
was restrained for the same. Learned Senior Advocate Mr. Kamal
Trivedi has also vehemently argued that one should see through the
average intelligence of the person how the common man takes the
product instead of relying only on intellectual person only and also drawn
attention of this Court in case Marico Limited v. Pratik Goyal reported
in 2014 SCC On Line Del 1786. Lastly, learned Senior Advocate Shri
Kamal Trivedi has taken this Court to five judgments which were heavily
placed reliance by the learned Advocate Mr. Mehul Sharad Shah for the
Appellant / Original Defendant that how the said judgments are not
relevant to the present case.
84. Learned Senior Advocate Mr. Kamal Trivedi has drawn the
attention of this Court to the judgment of the Hon'ble Supreme Court in
case of S.M.Dychem Ltd. v. M/s Cadbury (India) Ltd. reported in
(2005) 5 SCC 573 and submitted that the learned Advocate for the
Appellant / Original Defendant has heavily placed reliance on this
English Judgments. But in the case of Cadila Health Care Ltd Vs.
Cadila Pharmaceuticals Ltd (supra) on page no. 206 of the
Compilation. The S.M.Dychem Ltd. Case (supra) was not the correct
law and therefore the reliance placed by the learned Advocate for the
Appellant / Original Defendant cannot be applicable to the facts of the
present case.
85. Further, it is also discussed in the Cadila Health Care Ltd Vs.
Cadila Pharmaceuticals Ltd (supra) that the English Judgment cannot
be based to the situation in India and also argued that merely application
for availing the trade mark does not create any right. It is also contended
that the Respondent / Original Plaintiff has a registered trade mark and
copy right and therefore Appellant / Original Defendant has no right to
use the trade mark of the Respondent / Original Plaintiff.
86. Learned Senior Counsel Mr. Kamal Trivedi has also drawn the
attention of this Court in the case of Kellogg Company vs Pravin
Kumar Bhadabhai reported in 1996 PTC (16) 187 wherein learned
Senior Advocate has drawn the attention at paragraph 16 where the
judgment in case of Payton & Co. v. Snelling, Lampard & Company is
discussed, which is English judgment, which is also discussed in Cadila
Health Care Ltd.'s case (supra) and it is observed in Cadila Health
Care Ltd.'s that this English judgment cannot be relied.
87. Further, it is pointed by the learned Senior Counsel Shri Kamal
Trivedi that Gluco is generic word like in the present case the orange is
generic name but the latest law is considered in the submission of the
aggrieved party on generic name. Ultimately, learned Senior Advocate
has argued on the basis of the judgment in case of Parle Products (P)
Ltd Vs. J. P. And Co., Mysore (supra) that the courts should compare
similarity side by side and how the ordinary person will look the drug and
ultimately impliedly over-ruled the Madras High Court Judgment.
(H) Joint Legal Aspects by Learned Advocate Mr. Mehul Sharad Shah
for the Appellant / Original Defendant:
88. Further, learned Advocate Ms. Mehul Sharad Shah for the
Appellant / Original / Original Defendant has vehemently and fervently
argued that pursuant to the cations, the reliance is placed by him in case
of Britannia Industries Ltd. v. ITC Limited reported in 2017 (70) PTC
66 wherein only the High Court of Delhi was having identical issue and
held that essential attributes which need to be established for a successful
passing off action have often been considered as the classical trinity,
which, in the words of Lord Oliver in Reckitt & Colman Products Ltd.
v. Borden, 1990 RPC 341 HL are discussed. In that case injunction was
sought for restraining Britannia from, inter alia, passing off ITC's alleged
rights in the trade dress / packaging / label and dilution of the market etc.
Reliance is placed upon paragraph 19 that it is also pointed out in Kerly
that a trader, who introduces a new feature into the get-up of his goods,
does not thereby acquire any proprietary interest in it so as to be able to
prevent its use by competitors, until it has become so identified with his
goods that its use by others is calculated to deceive. The question that
needs to be examined is whether the combination of yellow and blue in
the packaging of ITC's biscuits had become so identified with ITC's
biscuits that its use by others, such as Britannia, would be regarded as
being calculated to deceive? We do not think that in the short span of
time and, particularly when Britannia has alleged that the first invoice of
ITC is of May 2016, the yellow-blue combination in the packaging of
ITC's biscuits had become so identified with ITC so as to enable ITC to
prevent its use by competitors. Ultimately, learned Advocate Mr. Mehul
Sharad Shah for the Appellant has heavily placed reliance on the aspect
that it is not easy for a person to claim exclusivity over a colour
combination particularly when the same has been in use only for a short
while. It is only when it is established, may be even prima facie, that the
colour combination has become distinctive of a person's product that an
order may be made in his favour. Learned Advocate Mr. Mehul Sharad
Shah has vehemently argued that in the present case also, the
Respondent / Original Plaintiff has claimed orange colour as exclusive
right which is not proper and therefore learned trial court has committed
an error both in law as well as in appreciating the facts and exercised the
discretion which is perverse and therefore this court is require to interfere
to set aside the same.
89. Learned Advocate Mr. Mehul Sharad Shah has placed reliance
upon the judgment of the Hon'ble Apex Court in case of Cipla Limited
v. M.K.Pharmaceuticals reported in 2007 Law Suit (Del) 526 = 2008
(36) PTC 166 wherein it is held in paragraph 5 that even if there has been
deliberate copying of similar solour and shape of the plaintiff's tablets
that would not amount to passing off, since colour and shape are not
indicative of the drugs neither they are associated with the trade mark.
There may be several other tablets of the similar shape and colour
available in the market. His Lordship was supported in his above view by
Rizla Limited v. Bryant and May Limited reported in 1986 RPC 389.
90. Learned Advocate Mr. Mehul Sharad Shah has argued that the
Appellant / Original Defendant is selling premium tea and therefore the
purchaser is either middle class or higher middle class and therefore there
is no chance for deceptiveness. Further, it was held in that case that there
should not be any monopoly over the colours and therefore the learned
trial court has not rightly decided the temporary injunction in favour of
the Respondent / Original Plaintiff. Further, it is also vehemently
submitted by learned Advocate Mr. Mehul Sharad Shah that normally
lower class people would not for for premium tea and therefore also the
learned trial court has committed mistake in exercising the discretion in
favour of the Respondent / Original Plaintiff.
91. Learned Advocate Mr. Mehul Sharad Shah has also placed reliance
on the judgment of the Hon'ble Apex Court in case of Colgate Palmolive
Co. Ltd. v. Patel and Anr. reported in 2005 Law Suit (Del) 1540 =
2005 (31) PTC 583 wherein learned Advocate Mr. Mehul Sharad Shah
has placed reliance on paragraph 25 and submitted that in that case even
if the plaintiff's case that the word 'COLGATE' and the red and white
colour scheme, both constitute essential features, then at best the
defendants could have been held to have adopted only one of the essential
features i.e. 'red and white' colour scheme and not essential features in
plural as required by the above judgment. Secondly, in the earlier portion
of the paragraph relied upon by the plaintiffs therein, it has been held that
even in an action for infringement the plaintiff must make out that the use
of the defendant's mark is likely to deceive unless the similarity between
the two marks is visually or phonetically so close that the Court reaches a
conclusion that there is an imitation. Further it is held that in view of the
court, the defendant's mark 'AJANTA' is visually and phonetically not so
close as to indicate a blatant imitation, straightaway leading to an
inference of infringement notwithstanding the red and white colour
combination. Learned Advocate Mr. Mehul Sharad Shah has also placed
reliance upon paragraph 29 and 51 of that judgment and submitted that if
one takes a look at the carton of the plaintiffs comprising of registered
trademark 190279, it shows that the word 'COLGATE' in white on a red
background i.e. the 'red and white' combination still remains the
predominant feature of the plaintiff's mark even in the altered marks and
the addition of a swirl of pincer device in blue or a splash of yellow
colour do not alter this predominant giving the plaintiff's mark a
distinctive identity entitled to protection from passing off.
92. During the course of arguments, while learned Advocate Mr. Shah
was reading the judgment in the case of Colgate Palmolive Co. Ltd. v.
Patel and Anr. (supra), learned Senior Advocate Shri Kamal Trivedi for
the Respondent / Original Plaintiff has requested this court to refer to
paragraph 52 of the judgment which reads thus:
"52. After taking into account the similarities in the defendant's
product which has been registered by comparing it with the
plaintiff's registered mark, I am of the view that in respect of the
competing two products, there is sufficient resemblance between
the plaintiff's and the defendant's product to justify the plea of
passing off. This is illustrated by the following similarities:
(i) The adoption of a red coloured background by the defendant to
the similar extent as that of the plaintiff on the front panel of the
carton.
(ii) The adoption of white colour for inscribing the brand name
AJANTA is similar to the brand name 'COLGATE' which is also
inscribed in white colour.
(iii) Similarity in the size of the two brand names 'COLGATE' and
'AJANTA'.
(iv) Similar placement of the two brand names 'AJANTA' and
'COLGATE' on the front panel of the carton.
(v) The plaintiff being the established market leader had already
established a market reputation in respect of its red and white
product marked 'COLGATE'.
(vi) The nature of goods in respect of which the two marks
'COLGATE' and 'AJANTA' are used as trademark are the same i.e.
toothpaste.
(vii) Toothpaste is a fast turnover item and an intending purchaser
who may or may not be literate is not likely to bestow much
attention on a daily use product such as a toothpaste."
93. Further, learned Senior Counsel Shri Kamal Trivedi has placed
reliance upon paragraph 55 and 57 of the judgment which reads thus:
"55. However, during the course of the arguments, suggestions
were invited from the parties and the parties have given their
suggestions for alternate packaging. In my view the suggested
carton of the defendants which is marked as 'XX' would not
amount to passing off of the plaintiff's product as per the principles
laid down in the above noted judgments. The only change made to
'XX' given as sample by the defendant is that it will be required to
print AJANTA in Hindi also in golden colour.
57. Consequently, the defendants are hereby directed to inscribe
the above mark 'AJANTA HEALTH' shown in Hindi along with the
two swirls on left and right of the said mark in Golden Colour in
the instead of the colour white as shown in Carton 'XX'."
94. Learned Advocate Mr. Shah has further argued that one should not
claim exclusivity of orange colour and also draw the attention of this
court to the order passed by the learned trial court and submitted that the
learned trial court has mainly passed temporary injunction on passing off
whereas there is no discussion of prima facie case for infringement of
trademark nor any copyright.
95. Learned Advocate Mr. Shah has further drawn the attention of this
court in case of Amrit Banaspati Company Limited v. Suraj
Industries Limited reported in 1994 Law Suit (HP) 68 = AIR 1996 HP
70 and placed reliance upon paragraph 41 which are reproduced herewith
as under:
"41. On the basis of the aforesaid discussion, first of all the
plaintiffs have not been able to prove prima facie case in their
favour for an action based on passing-off goods as the goods of
another. In case the injunction, prayed for, is granted it will be the
defendants who would be put to irreparable injury inasmuch as
without there being any prima facie case in favour of the plaintiffs,
the defendants are likely to suffer loss in their income which they
are deriving from the sale of those pouches of ANGAN ghee.
Balance of convenience in such circumstances would not be in
favour of the plaintiffs at all."
96. Learned Advocate Mr. Shah at the cost of repetition has submitted
that the Appellant / Original Defendant has submitted that the
Respondent / Original Plaintiff started the present trademark in the year
2020 though since the year 1925 always the same logo was not available
which is in the year 2020 like Man, Goat, Cup and Saucer etc. Learned
Advocate Mr. Shah has also submitted that 19 other persons (other
traders) are using the same logo. Therefore, there cannot be any
monopoly over the orange colour for the trademark or for the copyright.
Further, the trade test is totally different.
97. Per contra, learned Senior Advocate Shri Kamal Trivedi for the
Respondent / Original Plaintiff has submitted that the Respondent /
Original Plaintiff has registered trademark and copyright, therefore he
should be protected. Further, he has submitted that one should not see
side by side trade product as a whole which includes the colour, shape,
design and everything. Further, one cannot distinguish that in the case of
Cadila Health Care Ltd. (supra), it was only for the drugs and therefore
the two judgments which were not good law as held by the Hon'ble
Supreme Court is to be seen but one cannot distinguish the internal
discussion about the English law which is of no use for Indian Law so far
as the similarity and dissimilarity is concerned and therefore, the learned
trial court has rightly exercised the discretion on the basis of registration
of trademark. Further the Appellant / Original Defendant in the present
case has huge products and when they get an idea of starting the tea
business, in that case they should think about everything including
similarity and dissimilarity of the product which is used by the present
Respondent / Original Plaintiff and which is in prior use as well as the
registered trademark which has more value than any other product
especially the present Appellant / Original Defendant, which has yet to
start the business [proposed product / proposed trade name] and therefore
the Respondent / original Plaintiff has rightly instituted the suit coupled
with interim injunction for having quia timet action against the Appellant
/ Original Defendant who has lost the defence for temporary injunction
and ultimately the learned trial court has rightly decided the temporary
injunction in favour of the Respondent / Original Plaintiff and there is no
requirement of interference by this court and has prayed to dismiss the
present Appeal from Order.
98. Further, learned Senior Advocate Shri Kamal Trivedi has fairly
submitted that he is ready to conduct full fledged trial within six months
or three months or within two months on merits but has requested that his
business which is a registered trademark may not be disturbed in the eyes
of law, during the pendency of the Suit.
(I) Points Framed For Conclusion:
99. On the basis of the arguments advanced by both the sides and on
the basis of the settled principles of law, the following two points have
been framed for conclusion of this Appeal from Order:
(i) Whether the Appellant / Original Defendant proves that the
powers exercised by the learned City Civil Court No.29,
Ahmedabad below Exh.7 for interim injunction in Civil Suit No.
884/2020 is arbitrary, perverse, capricious, illegal and against the
principles of law?
(ii) What Order?
100. My Reply to the above points is as under:
(i) In negative.
(ii) As per final order.
(J) REASONS:
101. Having heard the arguments advanced by both the sides and also
on the basis of the authorities / citations referred to by both the sides,
before we advert to the controversy and the findings, it would be
appropriate to mention in brief the scope of the Appeal.
Scope of Appeal:
102. As per the settled principles of law, the Appellant Court will not
interfere with the exercise of discretion of the Court of first instance and
substitute its own discretion except where the discretion has been shown
to have been exercised arbitrarily, or capriciously or perversely or where
the court had ignored the settled principles of law regulating grant or
refusal of interlocutory injunctions. After all it is an equitable relief
wherein the Appeal is against exercise of discretion is said to be Appeal
on principle. The Appellate court will not reassess the material and seek
to reach to a conclusion different from the one reached by the court below
if the one reached by that court was reasonably possible or not. The
appellate court would normally not be justified in interfering the exercise
of the discretion under appeal solely on the ground that if it had
considered the matter at the trial stage, it would have to a contrary
conclusion. On the basis of the judgment in Wander Ltd v. Antox India
P. Ltd. (supra), wherein it was held that if the discretion has been
exercised by the Trial court reasonably and in a judicial manner, the fact
that the Appellate court would have taken a different view may not justify
interference with the Trial Court's exercise of discretion.
103. The Respondent No.1 - Gujarat Tea Depot Company and
Respondent No.2 - Gujarat Tea processors & Packers Private Limited
(Original Plaintiffs) have filed Civil Suit No. 884 of 2020 in the City
Civil Court at Ahmedabad against the Appellant / Original Defendant -
Vimal Dairy Limited for permanent injunction restraining the Appellant /
Original Defendant and its agents from manufacturing, marketing,
advertising for sales, the Appellant's / Original Defendant's products
under the Trade Mark / Label "VIMAL" "TM Application No. 4352164
including its Art Work, Colour Scheme, Get-up, Arrangement and / or
any other Label, which is substantial and material reproduction of the
label of the Respondents / Original Plaintiffs from committing an act of
infringement of Respondent's / Original Plaintiff's Trademarks / Labels.
The Respondents / Original Plaintiffs have further prayed in the Suit for
directions to the Appellant / Original Defendant to give true and correct
accounts of the goods manufactured and marketed by them under the
Trademark / Label "VIMAL" and after verifying the accounts and
deriving at the amount of the profit earned by the Appellant / Original
Defendant, to pay the said amount with 18% interest coupled with and
application for temporary injunction along with the Suit under Order 39
Rule 1 and 2 of the Code with similar reliefs prayed in the Suit.
104. The learned Trial court after hearing both the sides allowed the
temporary injunction under Order 39 Rule 1(a) of the Code against which
the Appellant / Original Defendant has approached this Court.
105. The prime grounds of the Appeal is based on the Trial Court order
being ex facie illegal, against the provisions of Trademark and Copyright
and against the evidence on record, and therefore, requires to be quashed.
It is an undisputed fact that the Respondents / Original Plaintiffs are
using "WAGH BAKRI" since the year 1925, but simultaneously, the
court is in agreement that the present "WAGH BAKRI PREMIUM TEA"
is started before two years i.e. in the year 2019. Therefore, the main
grievance of the present Appellant / Original Defendant is with regard to
the different Trademark since the Defendants / Original Plaintiffs have
"WAGH BAKRI" whereas the Appellant / Original Defendant has
"VIMAL". Further, the Respondents / Original Plaintiffs have Saffron
Colour upon their product whereas the Appellant / original Defendant has
Dark Saffron Colour upon their product and therefore there is quite
dissimilarity. Hence, there is no question of infringement of copyright
nor there is any question of passing off action by the Appellant / Original
Defendant to the Respondents / Original Plaintiffs and therefore the
learned Trial Court has passed the order which is perverse, arbitrary,
illegal and capricious.
106. In the case of Corn Products Refining Co. v. Shangrila Food
Products Ltd. Reported in AIR 1960 SC 142, it was held that the
reputation among general public should attach to trade mark and not to
the maker of the goods. Further, it is held that tests for determining
similarity of marks - trade connection between different goods - Trade
marks 'Gluvita' used with reference to biscuits and 'Glucovita' used with
reference to glucose, held were likely to cause deception or confusion.
Therefore, the Court has to see the similarity between the trade products.
107. The following is the latest trade logo of both; the Appellant /
Original Defendant and the Respondents / Original Plaintiffs wherein the
Appellant / Original Defendant is having Application No. 4352164 dated
19.11.2021:
(Original Plaintiffs /Respondents) (Original Defendant /Appellant)
108. As per authorities submitted by learned Senior Advocate for the
Respondents / Original Plaintiffs, use of single colour of the Respondents
/ Original Plaintiffs, did not qualify single colour to be trademark but in
the present case, in addition to colour, there are so many similarities such
as;
Comparison of trade marks of the Respondents / Original Plaintiffs
and the Appellant / Original Defendant:
(a) The tag line of both the trademarks start with "PREMIUM". The
tagline for "VIMAL" is "PREMIUM CTC LEAF TEA" while that of
"WAGH BAKRI" is "PREMIUM LEAF TEA" which is likely to
confuse the public at large.
(b) The cup and plate used as a shape for the trademark are deceptively
similar with white colour and similar shape of green leaves placed on the
plate.
(c) The logo of VIMAL is placed in oval shaped circle with a reddish
background and that of a WAGH BAKRI's logo is also similar to it with a
reddish background.
(d) The background of the logo for VIMAL uses similar colour that of
WAGH BAKRI which is likely to create confusion among the public at
large.
109. If we take out both the names i.e. 'WAGH BAKRI' and 'VIMAL';
from both the products, prima facie it appears that the Respondents' /
Original Plaintiffs' i.e. Copyright Label contains 'WAGH BAKRI' printed
in White Font inside round Brown Colour Oval Shape with White
coloured Cup and Saucer full of tea with Leaf placed on the top of the
Saucer. Even the original colour of the Respondents is orange whereas
the Appellant's / Original Defendant's colour is dark saffron. Leaf Tea is
common in both cup and saucer are common and design common. In the
Respondents / Original Plaintiffs it is written 'PREMIUM LEAF TEA'
whereas in the Appellant / Original Defendant it is written 'PREMIUM
CTC LEAF TEA'. By comparing two products namely of the
Respondents / Original Plaintiffs and the Appellant / Original Defendant,
it further prima facie appears that the Appellant / Original Defendant has
copied the Respondents' / Original Plaintiffs' product except in TRADE-
NAME.
110. Therefore, in sum and substance, Ex-facie there are so many
similarities and therefore, there are all chances of confusion by the
ordinary man of average intelligence and also by lower class and middle
class and others too, therefore, the ex facie, there is some substances in
observation made by the learned trial Court for exercising the equitable
relief, in favour of original plaintiff who is respondent in the present
matter, resultantly, the order of trial Court is not perverse.
111. Learned Advocate Mr. Mehul Shah has heavily argued that the
learned Trial Court has not answered all the defence taken by the
Appellant / Original Defendant and mainly up to 80 pages of his order,
the arguments are only narrated and thereafter holding prima facie case,
balance of convenience and in an arbitrarily manner, the temporary
injunction is granted which is perverse, capricious and illegal.
112. It is to be noted that the learned Trial Court has at page no. 38 of
the judgment has discussed about the judgment Hon'ble Delhi High Court
in the case of Parle Products Pvt. Ltd. v. J.P. And Co., Mysore
reported in AIR 1972 SC 1359, relied upon by the learned Advocate for
the Appellant / Original Defendant that the product involved is Corn
Flakes, which may not be used by any illiterate customers. However, the
product involved in the present case is Tea, which is purchased even by
illiterate customers such as illiterate tea vendors. Therefore, by no stretch
of imagination can the said judgment relied by the learned Advocate for
the defendant be held applicable to the facts of the present case. On the
contrary, the judgment, relied upon by the learned Advocate for the
Plaintiffs, in the considered opinion of the Court, squarely applies to the
facts of the present case. Therefore, the learned Trial Court has rightly
applied the ratio laid by the Hon'ble Apex Court in the case of Parle
Products Pvt. Ltd. v. J.P. And Co., Mysore (supra) wherein it is held
that when two marks, when placed side by side, may exhibit many and
various differences, yet the main idea left on the mid by both may be the
same. A person acquainted with one mark and not having the two side by
side for comparison, might well be deceived, if the goods were allowed to
be impressed with the second mark, into a belief that he was dealing with
goods which bore the same mark as that with which he was acquainted.
Marks are remembered rather by general impressions or by some
significant detail than by any photographic recollection of the whole and
therefore, it is not appearing that the learned Trial Court has not given
any reasons, though there may be less of reasons (few reasons), but, it
differs with loss of reasons (non-reasoned order), to some extent
judicial writing is not suffering from "Breve Judiciale non cadit pro
defectu formae". In the present case, pursuant to the impugned order
passed by the learned City Civil Court No.29, Ahmedabad, it appears that
it is not with loss of reasons and therefore, prima-facie, court is not
inclined to interfere in the same.
113. Further, it is true and Court also joined with learned Advocate Mr.
Mehul Sharad Shah for the Appellant / Original Defendant that so far as
the passing off action is concerned, registration of the product is not sine
qua non nor conditio precedent, so merely registration of trade mark of
the Respondents / Original Plaintiffs cannot drive for permanent rights of
user if one establishes prior user or passing off action in common law.
114. Further, it is to be noted that the the trade mark of the
Respondents / Original Plaintiffs is a registered trade mark coupled with
the registered copy right in compared to the Appellant / Original
Defendant who has just applied in the market has "proposed to be used".
Therefore, when the product of present appellant/original defendant has
not come in the market, they started using the product of Tea like original
plaintiff, which is prima facie, in view of the learned Trial Court is
infringing the rights of the Respondents / Original Plaintiffs in both ways
i.e. passing off action in trade mark as well as infringement of copyright.
Therefore, even if the Respondents / Original Plaintiffs have stated
the "WAGH BAKRI PREMIUM TEA" just before two years i.e.
from the year 2019 then also it is prior user in compared to the so called
Appellant / Original Defendant, proposed to be used which is still not
registered and therefore also there is no scope of interference in the order
of the learned Trial Court.
115. Learned Advocate Mr. Mehul Sharad Shah for the appellant has
also heavily placed reliance upon the various judgments which would be
discussed hereinafter, but at this juncture, the learned Trial Court has
observed that Order 7 Rule 11 CPC for which learned Advocate Mr. Shah
has vehemently and fervently argued that such discussion was not
required under Order 7 Rule 11 of the CPC wherein learned Senior
Advocate Shri Kamal Trivedi appearing with learned Advocate Mr.
Y.J.Trivedi for the Respondents / Original Plaintiffs has replied that in
the Reply filed by the Appellant / Original Defendant [written statement
of the present Appellant) was having such defence, but at this juncture
Order 7 Rule 11 is not required to be mentioned by the learned Trial
Court. Further, as such there is no detailed discussion on Order 7 Rule 11
CPC, but, by just mentioning the provisions of Order 7 Rule 11 of CPC
does not drive this court to observe the order as perverse, illegal or
capricious. Further, it is to be mentioned that the observation on Order 7
Rule 11 of CPC is discussed in the case of Toni & Guj Products Ltd. v.
Shyam Sunder Nagpal reported in 2013 SCC Online Del. 4712, in the
impugned order.
116. Further, learned Advocate Mr. Mehul Sharad Shah for the
Appellant / Original Defendant has also drawn the attention of this court
in the discussion on the quia timet action, which is not required, wherein,
this court is of the opinion that when the Respondents / Original Plaintiffs
has apprehension that its product will lose its credibility / goodwill if the
Appellant / Original Defendant start manufacturing, which is similar to
the Respondent's / Original Plaintiff's product. Upon such premises, the
learned Trial Court has rightly exercised the concept of quia timet action.
117. Therefore, if the product is likely to cause confusion or to deceive
the purchasers as to source or origin of the trade mark or the goods to be
sold in future under the said mark irrespective of the fact; (i) whether
goods intended to be sold are competitive goods or not; (ii) whether the
intention to use of infringed trade mark is to trade or cash upon the
reputation and goodwill of the Respondents / Original Plaintiffs earned
over the years through extensive advertisement and huge expenses and;
(iii) whether there is likelihood of real or tangible damage or injury to the
Respondents / Original Plaintiffs or reasonable probability if the same
would take place. In other words, whether use of the trademark by the
Appellant / Original Defendant is likely to be associated with the
Respondents' / Original Plaintiffs' trade mark or business; and lastly,
whether the hardship suffered by the Respondents / Original Defendants
would be greater than that of the Appellant / Original Defendant if the
injunction is not granted against the Appellant / Original Defendant.
Such aspect as discussed by way of authority by the learned Trial Court is
just and proper.
118. The learned Trial Court has rightly discussed at page 90 of the
judgment in paragraph 79 that the relief of passing off can be based even
on an apprehension of threat of the Respondents' / Original Defendants'
proposed launch of their products as a quia timet action.
119. The discussion made by the learned Trial Court in paragraph 79 of
the Judgment is reproduced herein below:
"Para 79. Thus, it is clear from the aforesaid decision that the
relief of passing off can be based even on an apprehension of
threat of the defendant's proposed launch of their products as a
Quia timet action. Therefore, as per the principles settled
hereinabove, this Court is also of the view that as in the case of
infringement of registered trade mark or passing off action, the
intention and object of infringer is mainly to trade or cash upon
widespread and invaluable goodwill and reputation established
over the years at huge cost by the plaintiff and in the process there
occurs a dilution of the trade mark if goods manufactured and sold
by infringer happen to be of poor quality, the underline intention
of a person who proposes to adopt either same or deceptively or
confusingly similar trade mark or the corporate name is to encash
and become unjustly rich by trading upon the goodwill and
reputation of the plaintiff. Defendants have made their application
with the trademark VIMAL with the similar color combination get
up, arrangement and background as that of the plaintiffs for
proposed to be used. I may ask a question for myself if at all the
defendants have got a trademark registered, albeit under the class
of proposed to be used, are they not going to use the same and if
they started using the same, will not prejudice the case of the
plaintiffs? The answer to the aforesaid question is Yes. As has been
rightly held in the aforesaid decision, to expect the aggrieved party
to wait and watch for the opening of business or manufacturing or
sale or goods under the apprehended infringement of trade mark is
too much. A stitch in time always saves nine and that is what is the
essence of Quia Timet Action. With the onset of information
technology in modern times, registration of a website which is
popularly konwn as domain name, a party owning a website has a
right to protect the same if any person registers the website with a
name which is inherently deceptive. In such cases either party is
directed to change the name of the site or handover to its owner.
On the same pattern and pedestal is the threatened or apprehended
invasion of the trade mark or Corporate name. I am therefore of
the prima facie opinion that even under the principles of Quia
Timet also the plaintiffs definitely have cause of action for filling
the present suit against the defendants and therefore, the suit of the
plaintiffs cannot be rejected under the provisions of Order VII Rule
-11(a) of the Code of Civil Procedure, 1908."
120. Learned Advocate Mr. Mehul S. Shah has also placed reliance on
the word device as used in the application that the colour was not used
but here, prima facie, in the product of the Respondents / Original
Plaintiffs is registered trade mark coupled with prior user and therefore
merely in column of application form the so-called orange colour is not
used would not make dis-entitlement of equitable relief. Further, as per
settled principles of law this Court is not required to re-appreciate the
prima facie evidence neither to insert anything more but to examine
whether the order is passed by the learned Trial Court is perverse,
arbitrary, illegal or capricious or not.
121. Learned Advocate Mr. Shah has also placed reliance on the aspect
that there are so many companies which are using identical orange colour.
Therefore also the Appellant / Original Defendant should not be
prevented but the Respondents / Original Plaintiffs are dominus litus and
if the Respondents / Original Plaintiffs have taken quia timet action
against the Appellant / Original Defendant, upon such premises, this court
cannot take into consideration about the use of colour orange by other
traders.
122. Learned Advocate Mr. Mehul Sharad Shah has also submitted
written notes inviting the attention of this Court on the discrepancy and
material irregularity in the order passed by the learned Trial Court.
123. It is urged that in the first para, it is with regard to the prayer of
temporary injunction at Exh.7 as prayed by the Respondents / Original
Plaintiffs. In the second para it is with regard to the ad interim relief,
which cannot be granted in the nature of final relief. This Court is in full
agreement with the statement but after all, pursuant to the impugned
order, it appears that the learned Trial Court has discussed the equitable
relief only and in the operative portion of the order, equitable relief is
granted, and therefore, merely the prayer for interim relief and the final
prayer in the suit is matching, this court is not required to interfere with
the granted equitable relief.
124. Learned Advocate Mr. Mehul Sharad Shah has stated that since
there is no discussion about the basic ingredients i.e. prima facie case,
balance of convenience and irreparable loss and therefore the present
Appeal from Order is required to be remanded to the learned Trial Court
for afresh adjudication. But as discussed earlier, the learned Trial Court
has through not titled all the three ingredients of the equitable reliefs, like
prima facie case, balance of convenience and irreparable loss, but
simultaneously, indirectly, the same aspect is mentioned and discussed
and lastly the learned Trial Court has made the conclusion on this aspect.
Further, this Court is in agreement with the submission made by learned
Senior Advocate Shri Kamal Trivedi for the Respondents / Original
Plaintiffs that an art of writing judgment and order differs from the
Hon'ble Judges to Hon'ble Judges. In the opinion of this Court also in
civil cases having the same sets of facts and circumstances, three Judges
may differ in their opinion i.e. one may allow the suit, the other may
reject the suit and the third one may partly allow the suit. Likewise in
criminal justice system also, cases having the similar facts and
circumstances, one Judge may convict, the another may award acquittal
and the third Judge may impose part punishment. Therefore, this court is
of the opinion that there cannot be any straight jacket formula for writing
a judgment. The fact remains, be that as may be, the important fact is that
whether the material aspect to grant equitable relief is discussed or not.
125. Fourthly, learned Advocate Mr. Shah has drawn the attention of
this Court on the aspect of no findings recorded upon the contentions
made by the learned Advocate for the Original Defendant / Appellant
herein by the learned Trial Court in the judgment and the observations
made are not totally the correct observation since many contentions of
both the parties are discussed and therefore such stand of the learned Trial
Court is not tenable.
126. It is also reiterated by the learned Advocate Mr. Shah that in
various paragraphs of the judgment i.e. paragraph 42 to 65 and also 68 to
91, the learned Trial Court has not considered the relevancy but, as
discussed earlier, for example in the case of judgment of the Delhi High
Court, the learned Trial Judge has discussed the relevancy in less aspects
and in other cases also though not in detailed but few are discussed. But
in view of this Court, such aspect did not drive this Court as held to be
perverse.
127. Learned Advocate Mr. Shah has also drawn the attention of this
Court that the trade name of both the parties are not deceptively and
distinctively similar i.e. "WAGH BAKRI" and "VIMAL" but in view of
this Court, finding is given by the learned Trial Court that the Court is of
the prima facie opinion that the Plaintiffs have clearly established the
essential of goodwill and reputation and chance of future loss by virtue of
the use of such deceptively similar trade name or device and therefore,
the Plaintiffs have prima facie case in their favour, therefore, merely
having two different "TRADE NAME" does not make strong defence of
original defendant.
128. Learned Advocate Mr. Shah has also placed reliance on different
authorities that would be discussed hereinafter so far as infringement of
copyright and passing off action is concerned.
129. Learned Advocate Mr. Shah has submitted written note discussing
on infringement of trademark and submitted that it is merely a package
prepared in computer. There cannot be an artistic work in the orange
colour background and therefore since orange colour cannot be termed as
artistic work, any allegation of infringement of copyright would not be
maintainable. But, this Court is of the opinion that, at the beginning of
discussion, when this Court has prima facie compared the trade names
coupled with trade, design and artistic work, it appears that the learned
Trial Court has rightly exercised the discretionary power in favour of the
Respondents / Original Plaintiffs.
130. Learned Advocate Mr. Shah has also discussed in his written note
upon the infringement of trademark and submitted that the trademarks
bearing registration no. 3075599, 4250078, 4250077 and 4250071 are
pertaining to "WAGH BAKRI STRONG AND REFRESHING
PREMIUM TEA", however, there is no trademark for the colour scheme
and therefore no registration of colour orange or for colour scheme in
favour of the Respondents / Original Plaintiffs. Even other wise 'orange
colour' as a single colour is not capable of being considered as
"Trademark" and therefore, the Respondents / Original Plaintiffs are not
entitled to institute the suit for infringement of such trademark.
131. Further also, learned Advocate Mr. Shah has placed reliance upon
six options i.e. colour, device,f shape of goods, sound, three dimensional
work and work mark. It is submitted that not a single registration
certificate is produced by the Respondents / Original Plaintiffs showing
that they have any registration of trademark in the category of 'orange
colour'. But, this Court is of the opinion that when the product is
registered, upon such premises, at this juncture, the Court is required to
examine in Appeal, only the aspects, which are discussed by the learned
Trial Court, which are perverse or not, arbitrary or not, capricious or not
and illegal or not. Therefore, when the Respondents / Original Plaintiffs
have a registered trade mark, at this juncture, this court, would not prefer
to sit in appeal as a competent authority of IPR.
132. So far as passing off action is concerned, learned Advocate Mr.
Shah has reiterated that there is no goodwill for 'orange colour', therefore
no passing off action would be maintainable for the 'orange colour' but
the learned Trial Court has discussed that if the Appellant / Original
Defendant has used the product which is identical to the Respondents /
Original Plaintiffs, in that case, the learned Trial Court has prima facie
opined that the Appellant / Original Defendant has established prior user
and reputation, though not for 'orange colour' but for trade mark as a
whole when the same is registered. Upon that premises, one cannot make
classification of each and every device.
133. The reliance placed by learned Advocate Mr. Shah upon the
judgment in the case of Britannia Industries Ltd. v. ITC Limited
(supra) is for passing of action of Britannia Industries Ltd. and not for
the infringement of trademark or copyright as is there in the present case.
Further, in the said judgment, the Britannia Industries Ltd. was there in
the business of biscuits for many years whereas in the case on hand, the
Appellant / Original Defendant is yet to enter into Tea business, and
therefore, this judgment is not helpful to the Appellant / Original
Plaintiffs.
134. The reliance placed by learned Advocate Mr. Shah in the case of
Cipla Limited v. M.K. Pharmaceuticals (supra) is not applicable to the
facts of the present case as this judgment is related to prescribed
medicines / tablets with a particular colour and shape with blister form of
packagings, wherein the get up, colour scheme, arrangement of label are
not relevant, whereas, in the present case, the same are essential features
of label. It was under these circumstances that the Hon'ble Delhi High
Court has observed that there can be no monopoly over colour and shape.
Therefore the said judgment is not helpful to the Appellant / Original
Defendant.
135. Learned Advocate Mr. Shah has placed reliance in the case of
Colgate Palmolive Company v. Patel & Ors. (supra) and more
particularly paragraph 25, 29, 31, 33, 41 and 42. In that case, it was held
that the disputed colour 'red' as well as 'red and white' combination is
quite generic in nature and common to toothpaste trade and therefore
concession was not granted. Here also, learned Advocate Mr. Shah has
fervently argued that in the present case, colour 'orange' and colour 'dark
saffron' is generic in nature and therefore the learned Trial Court has
committed error in exercising the discretion. But, in view of this court,
in the aforesaid case, the issue was related to monopoly of colour 'red'
and 'white' and not on the entire get up and colour scheme of arrangement
and placement of label whereas in the present case of the Appellant /
Original Defendant, that is in the case of "WAGH BAKRI" the case
involved does not relate to claiming monopoly over 'orange' colour, but
having registered trademarks involving a label / device mark and
registered copyright on the entire lay out, get up, arrangement, colour
scheme and placement on leaves and other things. Lastly, in that case,
the Hon'ble Delhi High Court had suggested to the Defendasnt to alter the
colour scheme and other changes in the copied version of packaging to
which, Defendant was agreeable and accordingly the matter was put to an
end. Therefore, this authority is also not helpful to the Appellant /
Original Defendant.
136. Learned Advocate Mr. Shah has also placed reliance on the
judgment in case of Amrit Banaspati Co. Ltd. v. Suraj Industries Ltd.
(supra) wherein the Hon'ble Court has refused to grant any temporary
injunction on the ground that, simply because the colour of the two
pouches was dark blue and the writing on those pouches are in white
colour, will not make the pouches to be of similar nature, even prima
facie and in so far as the use of this colour is there, it is not prohibited.
The denfendants have brought on record samples of various pouches of
this dark blue colour and of light blue colour on record being used by
other concerns. But, in view of this Court, the aforesaid authority for
passing off action and not for infringement of trade mark or copyright and
also not involving a device mark / label with a particular get up colour
scheme, arrangement of label etc. as it is there in the present case.
Therefore the said judgment is also not helpful to the Appellant /
Original Defendant.
137. Learned Advocate Mr. Shah has further placed reliance on the
Kerly's Law of Trade Marks and Trade Names, 15th Edition on page
no. 652, wherein it is observed that, it is usually true in some degree that
a trader's goods are recognized as his by their general appearance, or 'get
up'. Accordingly resemblance of get-up is not uncommonly an ingredient
in passing off, and it is possible for imitation of get up alone to amount to
passing off. But, with respect, the present case is not of solely passing
off whereas the present case is of registered mark coupled with registered
copyright and therefore, this discussion is not required to be discussed in
length.
138. The reliance placed by learned Advocate Mr. Shah in case of Parle
Products Limited v. Bakemans Industries Limited (supra) is also not
applicable to the facts of the present case. The said judgment is not a
good law in view of the judgment of the Hon'ble Apex Court in case of
Parle Products (P) Ltd. vs. J.A. & Co. Mysore (supra).
139. Learned Advocate Mr. Shah has also placed reliance upon the
discussion of the Hon'ble Apex Court in case of Cadila Healthcare v.
Cadila Pharmaceutical (supra) wherein the Hon'ble Apex Court has
rejected the adoption of the English principles regarding the weightage to
be given to the dissimilarities, however, Hon'ble Apex Court has not
stated that the principles concerning the colour combination as laid down
in various English judgment would not be relevant for the Indian
Jurisdiction. In paragraph 33 of the said judgment, the Hon'ble Apex
Court has observed that the English cases would be relevant in
understanding essential feature and therefore considering the long line of
English as well as American judgments as narrated in the commentary of
Kerly's Law of Trade Marks and Trade Names and narrated by
various Hon'ble High Court (i.e. Britania Industries v. ITC Ltd.), it is
clear that it would be very difficult for anyone to claim passing off solely
on the basis of colour combination as essential feature. Learned
Advocate Mr. Shah has submitted that In such circumstances, learned
Trial Court out to have appreciated that the Respondents / Original
Plaintiffs have no prima facie case of passing off and therefore injunction
ought not to have been granted.
140. In the opinion of this Court, this submission by the learned
Advocate Mr. Shah for the Appellant / Original Defendant is on the basis
of the judgment in case of S.M. Dye Chem Limited (supra) which was
replied by the learned Senior Advocate Shri Kamal Trivedi for the
Respondents / Original Plaintiffs, who has ultimately argued that the law
laid down in this judgment has been expressly held to be bad in the later
judgment of the Hon'ble Supreme Court in Cadila Healthcare v. Cadila
Pharmaceutical (supra) wherein paragraph 17 to 12 are mainly on the
ground that two English judgments relied upon in the case of S.M. Dye
Chem Limited (supra) and Payton & Co. vs. Snelling Lampard & Co .
(supra) are not applicable to Indian conditions and the judgment of
S.M.Dye Chem Limited (supra) cannot be referred to and relied upon.
141. This Court is in full agreement with the submission made by
learned Senior Advocate Shri Kamal Trivedi for the Respondents /
Original Plaintiffs that the judgment is required to be referred to as a
whole and not in the isolation form, once the Hon'ble Apex Court has
held that both the English judgments are not applicable to the Indian
conditions. Upon such premises, this court is not in a position to discuss
anything more except non-application of S.M.Dye Chem Limited
(surpa) in the present case.
142. Learned Advocate Mr. Shah has lastly placed reliance upon the fact
that the goods under consideration is not ordinary tea which is sold in
loose form to the general public but it is a premium variety of the tea
targeted towards the middle as well as upper middle class people who
will be aware of the "WAGH BAKRI" and "VIMAL" as two different
brands as both of them have distinct identity and therefore considering
the nature of goods as well as targeted audience also there is no
possibility of passing off as alleged by the Respondents / Original
Plaintiffs. But, this court is of the opinion that it is an undisputed fact
that the product of the Respondents / Original Plaintiffs is a registered
trade mark coupled with registered copyright as discussed earlier.
Further, this Court at this juncture, while traveling first appellate court
under Order 43 Rule 1 and Rule 2 of CPC as equity appellate court
wherein trial is yet to begin before the Trial Court. Therefore, be that as
may be, at this juncture, when the learned Trial Court has observed that
the Respondents / Original Plaintiffs has prima facie case coupled with
irreparable loss and balance of convenience, which, in view of this court,
is not perverse, arbitrary, illegal, capricious and not against the settled
principles of law. Therefore, merely middle class and upper middle
class people will be aware of "WAGH BAKRI" and "VIMAL", has two
different brands and therefore it cannot be said that the learned Trial
Court has committed any mistake.
143. Learned Advocate Mr. Shah for the Appellant / Original Defendant
has also placed reliance on the judgment in case of White Hudson & Co.
Ltd. v. Asian Organisation Ltd. reported in (1965) R.P.C. 45 (PC
Singapore). The facts and circumstances are different. Further, latest
law is discussed. Therefore, this judgment is not helpful to the
Applicant / Original Defendant.
144. Learned Advocate Mr. Shah has also placed reliance on the
judgment in case of Kellogg Company vs. Pravin Kumar Bhadabhai
(supra), but in the opinion of this Court, the said judgment is also not
found to be a good law in later judgment of the Hon'ble Delhi High Court
in the case of N. Rangarao & Sons Vs. Anil Garg (supra) since the
reliance was placed on the very English Judgment referred to above as
well as the English judgment in the case of S.M.Dye Chem Limited
(supra).
145. Learned Advocate Mr. Shah has also placed reliance upon the
judgment in case of Kuber Khaini Pvt. Ltd. Vs. Prabhoolal Ramratan
Das Pvt. Ltd. (supra). Here also, the law laid down by the said judgment
is not a good law since this judgment has placed reliance in English
Judgment in the case of Payton & Co. vs. Snelling Lampard & Co.
(supra) which has been declared by the Hon'ble Supreme Court in
paragraph 20 of the judgment in case of Cadila Healthcare v. Cadila
Pharmaceutical (supra).
146. Learned Advocate Mr. Shah has also placed reliance on the
judgment in case of K. Narayanan vs. S. Murli (supra), wherein this
judgment does not apply to the present case since the injunction was
denied in the said case mainly on two grounds;
(a) The Plaintiff's mark was not registered and his application
for registration was pending, on the basis whereof, it had filed a
Suit for passing of for injuncting the other side; and
(b) Plaintiff has suppressed certain important facts;
But, in the present case, the Respondents / Original Plaintiffs has a
registered trade mark and copy rights, whereby, it has acquired a statutory
recognition to use the same to the exclusion of rest of the world.
Therefore, this Court is of the opinion that the said judgment in case of
K. Narayanan v. S. Murli (supra) is not helpful to the Appellant /
Original Defendant.
147. Learned Advocate Mr. Shah for the Appellant / Original Defendant
has placed reliance on the judgment in case of Dhodha House and Ors.
v. S.K. Maingi & Ors. reported in MANU / SC / 2524 / 2005. In this
case, case was of jurisdiction with trademark, here in the present case
different facts and circumstances, since registered trademark and
copyright of the original plaintiff have not applicable and helpful to the
Appellant / Original Defendant.
148. Learned Advocate Mr. Shah for the Appellant / Original Defendant
has placed reliance on the judgment in case of Skyline Education
Institute (Pvt. ) Ltd. v. S.L.Vaswani & Ors. Reported in MANU / SC /
0009 / 2010. Facts and circumstances are different and the ratio in this
judgment is not helpful to the Appellant / Original Defendant but is
helpful to the stand of the Respondents / Original Plaintiffs for alleged
generic name.
149. Learned Advocate Mr. Shah for the Appellant / Original Defendant
has placed reliance on the judgment in case of Rolex Sa v. Alex
Jewellery Pvt. Ltd. & Ors. reported in MANU / DE / 0796 /2009. Facts
and circumstances are different and the ratio in this judgment is not
helpful to the Appellant / Original Defendant but is helpful to the stand of
the Respondents / Original Plaintiffs for alleged generic name.
150. Learned Advocate Mr. Shah for the Appellant / Original Defendant
has placed reliance on the judgment in case of Express Bottlers Services
Private Ltd. v. Pepsico Inc. & Ors. reported in MANU / WB / 0158 /
1988. Facts and circumstances are different and the ratio in this judgment
is also not helpful to the Appellant / Original Defendant but is helpful to
the stand of the Respondents / Original Plaintiffs for alleged generic
name.
151. Learned Advocate Mr. Shah for the Appellant / Original Defendant
has further placed reliance on the judgment in the case of Vijay Kumar
Ahuja v. Lalita Ahuja reported in MANU / DE / 1278 / 2001. The facts
and circumstances are different herein. This is an ex parte injunction by
the plaintiffs whereas in the case on hand it is bipartite. Therefore, this
judgment is also helpful the the Appellant / Original Defendant.
152. Learned Advocate Mr. Shah for the Appellant / Original Defendant
has further placed reliance on the judgment in the case of Vidarbha
Distillers v. Vidarbha Bottlers Pvt. Ltd. Reported in MANU / MH /
1197 / 2004. In this judgment the Court has laid down the following
ratio decidendi:
"When neither it is shown that Appellant is originator of design
nor there has been any phonetical similarity between products of
parties, Appellant cannot be entitled to interim relief."
Therefore, in the opinion of this Court, the facts in the case on hand are
different and therefore this judgment is also not helpful to the Appellant /
Original Defendant.
153. Learned Advocate Mr. Shah for the Appellant / Original Defendant
has further placed reliance on the judgment in the case of Bharat Hotels
Limited v. Unison Hotels Limited reported in MANU / DE / 0276 /
2004. Here also ex parte injunction is not applicable to the facts of the
case on hand. Therefore this judgment is not helpful to the Appellant /
Original Defendant.
154. Learned Advocate Mr. Shah for the Appellant / Original Defendant
has further placed reliance on the judgment in the case of Seema Arshad
Zaheer and Ors. v. Municipal Corporation of Greater Mumbai &
Ors. reported in MANU / SC / 2420 /2006. In this judgment the Hon'ble
Court has observed as under:
"But where the Plaintiffs do not make out a prima facie case for
grant of an injunction and the documents produced clearly show
that the structures are unauthorised, the court may not grant a
temporary injunction merely on the ground of sympathy or
hardship."
Therefore, the facts in the case on hand are different in the view of this
Court.
155. Learned Advocate Mr. Shah for the Appellant / Original Defendant
has also placed reliance on the judgment in the case of Camlin Private
Limited v. National Pencil Industries reported in MANU / DE / 0241 /
1988. Here in this case also the facts and circumstances are different and
therefore, this judgment is not helpful to the Appellant / Original
Defendant.
156. Learned Advocate Mr. Shah for the Appellant / Original Defendant
has placed reliance on the judgment in the case of Christian Louboutin
SAS v. Abubaker & Ors. Reported MANU / DE / 1983 / 2018. In this
case the Hon'ble Court has observed as under:
"Use of a single colour of Plaintiff did not qualify single colour to
be a Trade mark in view of provisions of Sections 2(m) and 2(zb)
of Act. Also, Section 30(2) (a) of Act, in facts of present case, was
a complete disentitlement to reliefs claimed by Plaintiff on basis of
plaint."
157. It is also true, as per this authority, that use of single colour of the
plaintiff, did not qualify single colour to be trademark but in the present
case, in addition to colour, there are so many similarities such as;
(a) The tag line of both the trademarks start with "PREMIUM".
The tagline for "VIMAL" is "PREMIUM CTC LEAF TEA" while
that of "WAGH BAKRI" is "PREMIUM LEAF TEA" which is
likely to confuse the public at large.
(b) The cup and plate used as a shape for the trademark are
deceptively similar with white colour and similar shape of green
leaves placed on the plate.
(c) The logo of VIMAL is placed in oval shaped circle with a
reddish background and that of a WAGH BAKRI's logo is also
similar to it with a reddish background.
(d) The background of the logo for VIMAL uses same colour
that of WAGH BAKRI which is likely to create confusion among
the public at large.
Therefore, in the opinion of this Court, prima facie, it drives as
"copied" and hence the facts and circumstances are different and
not helpful to the Appellant / Original Plaintiff.
(K) DISCUSSION OF AUTHORITIES AS SUBMITTED BY LEARNED
SENIOR ADVOCATE SHRI KAMAL TRIVEDI FOR THE
RESPONDENTS / ORIGINAL PLAINTIFFS:
Sr. Name Citation Pg. Original mark Copied mark
No. No.
(1st (1st
Compilation Compilation
of Judgments of Judgments
of of
Respondents) Respondents)
1. Parle Products (P) (1972) 1 SCC 1-6 A wrapper / label A wrapper / label of
Ltd. vs. J.A. & Co. 818 of partly yellow partly yellow and
Mysore and partly white partly white in
in colour, having colour, having a
a picture with a picture of a girl and
girl in centre, birds in the center,
carrying a pot of with hay-bundle on
water on her head her head supported
with two calves with one hand and
around her and carrying a stick and
hens in the bundle of food in
foreground and a the other hand with
farm house with a cows and hens
fence in a around.
background with
words, "Parle's
Gluco Biscuits"
printed thereon.
2. Dabur India 2012 SCC Online 7 - 21
Limited Vs. Shree Del. 3332
Baidyanath
Ayurved Bhawan
Pvt. Ltd.
3. Marico Ltd. Vs. 2014 SCC Online 22 - 40
Pratik Goyal Del. 1786
5. Mother Dairy Fruit 2015 SCC Online 66 - 75
& Vegetable Pvt. Del. 10637
Ltd Vs. Sri
Vinayaka Milk
Products
7. Parle Agro Pvt Ltd. Judgment dated 91 - 95
vs. Gulam 28.03.2018
Moinuddin Khan rendered by
and Anr. Hon'ble Bombay
High Court
8. Parle Products Pvt. MANU/MH/149 96 - 101
Ltd. V/s. Future 2/ 2020
Consumer Ltd.
9. Gujarat Tea depot. Order dated 102 - 123
Co. Vs. Bagharam 04.08.2015
Krupaji Ganchi passed by this
Hon'ble Court
10. Taw Manufacturing (1951) RPC 271 124 - 129
Coy Ld. Vs. Notex
Engineering Coy.
Ld
In the above cited authorities, it appears that the products were similar to
each other but the courts have made over all comparison while exercising
the discretion in issuing injunction against the usage of objectionable
device mark / labels.
158. Learned Senior Advocate Shri Kamal Trivedi has also drawn the
attention of this court on the following citations / authorities:
Sr. Citation Party Name
No
1 (1972) 1 SCC 618 Parle Products (P) Ltd. vs. J.A. & Co.
Mysore
2 2012 SCC Online Del. Dabur India Limited vs. Shree
3332 Baidyanath Ayurved Bhawan Pvt. Ltd
3 2014 SCC Online Del. Marico Ltd. v. Pratik Goyal
4 2014 SCC Online Del Allied Blenders and Distillers Pvt. Ltd
3423 Vs. Sentino Bio Products Pvt. Ltd.
5 2015 SCC Online Del. Mother Dairy Fruit & Vegetable Pvt.
10637 Ltd. v. Vinayaka Milk Products
6 2017 (2) Mh. L.J. 447 Rajeshwar Prasad Pappuji Singh Chand
Singh Vs. Prem Mehandi Centre, Nashik
7 Judgment Parle Agro Pvt. Ltd. v. Gulam
dated28.3.2018 rendered Moinuddin Khan and anr.
by Hon'ble Bombay
High Court in notice of
Motion No. 596 of 2018
8 MANU / MH / 1492 / Parle Products Pvt. Ltd. v. Future
2020 Consumer Ltd.
9 Order dated 04.08.2015 Gujarat Tea Depot. Co. v. Bagharam
passed by this Hon'ble
Krupaji Ganchi
of 2015
10 (1951) RPC 271 Taw Manufacturing Copy Ltd. v. Notex
Engineering Co. Ltd.
11 (1959) RPC 83 Tavener Rutledge Ltd. Vs. Specters Ltd.
12 2003 SCC Online Del Colgate Palmolive Co. vs. Anchor Health
1005 and Beauty Care Pvt. Ltd.
13 2005 SCC Online Del N. Ranga Rao and Sons Vs. Anil Garg
14 (2001) 5 SCC 73 Cadila Health Care Ltd. Vs. Cadila
Pharmaceuticals Ltd.
15 (2004) 3 SCC 90 Midas Hygiene Industries (P) Ltd. Vs.
Sudhir Bhatia
16 (2011) 4 SCC 85 T.V. Venugopal vs. Ushodaya
Enterprises Ltd.
17 1990 Supp SCC 727 Wander Ltd Vs. Antox India Ltd.
18 (2006) 8 SCC 726 Ramdev Food Products (P) Ltd. Vs.
Arvindbhai Rambhai Patel
19 (1996) 5 SCC 714 N.R. Dongre Vs. Whirlpool Corporation
20 2005 (2) GLH 156 Adani Exports Ltd Vs. Marketing
Service Incorporated
21 2012(3) GLH 110 Sun Pharmaceuticals Industries Ltd vs.
M/s. West Coast Pharmaceuticals Works
Ltd.
22 AIR 1960 SC 142 Corn Products Refining Co. Vs.
Shangrila Food Products Ltd.
23 2013(53) PTC 606 (Guj) Rangoli Chemfoods Pvt Ltd Vs. Indo
Brine Industries Ltd.
24 2015 (62) PTC 23 Jagdish Gopal Kamnath vs. Lime & Chili
(Bom) Hospitality Services
25 2011 (48) PTC 564 Blue Hill Logistics Pvt. Ltd. Vs. Ashok
(Mad) Leyland Ltd.
It appears on the basis of few authorities, over all, the Court is required to
examine similarity from the point of view of the common man with
average intelligence and imperfect recollection, since it is registered trade
mark with registered copyright and one is not supposed to place both the
competing marks side by side to draw dissimilarities and to find out
whether the words and colours used therein are generic and descriptive or
not.
159. Therefore, the learned Trial Court has rightly placed reliance that
in the case of infringement of trade mark or copyright, injunction is
required to be issued. However, learned Senior Advocate Shri Kamal
Trivedi has also placed reliance on the judgment in the case of Midas
Hygiene Industries (P) Ltd. Vs. Sudhir Bhatia, reported in (2004) 3
SCC 90, which, in the opinion of this Court is also applicable to the facts
of the present case.
160. Learned Senior Advocate Shri Kamal Trivedi has also placed
reliance on the judgment in case of Sun Pharmaceuticals Industries
Ltd. v. M/s West Coast Pharmaceuticals Works Ltd. reported in 2012
(3) GLH 110 wherein it was held that the Appellate Court has come to
the conclusion that the discretionary order passed by the learned Trial
Court is perverse, capricious, arbitrary and contrary to the settled
principle of law regarding, grant of refusing to grant temporary injunction
and held that it is not the function of the appellate court to reassess the
evidence adduced by both the sides pending the suit and it is also not the
function of the Appellate Court to come to any different conclusion than
the one arrived at by the Trial Court and further it is held that it is not in
the interest of the parties if the Court elaborately deals with the matter of
merits at the interim stage as it is likely that the same would prejudice the
case of the either side. Therefore, this Court is in full agreement with
this submission made by learned Senior Advocate Shri Kamal Trivedi
that the Court is not required to go in detailed merits of the case since it
prejudices the case of the either side, since the trial is yet to commence.
161. Learned Senior Advocate Shri Kamal Trivedi has also placed
reliance on the judgment in case of N.R.Dangre v. Whirlpool
Corporation reported in (1996) 5 SCC 714 wherein the principles of
equitable relief is discussed and the injunction is granted on equitable
principles. The same is also discussed in this case and therefore there is
no need to repeat the same.
162. Learned Senior Advocate Shri Kamal Trivedi has also placed
reliance on the judgment in case of Adani Exports Ltd. v. Marketing
Service Incorporated reported in (2005) 2 GLH 156 wherein it was held
that if there is no infirmity found in the order of the Trial Court,
injunction against encashment of bank guarantee and letter of credit
should not be granted except where fraud or irretrievable damage is
contended and prima facie established. Therefore, in sum and substance,
if there is no infirmity found in order of the Trial Court, in that case, the
Appellate Court is not required to interfere.
163. In the case of Corn Products Refining Co. v. Shangrila Food
Products Ltd. Reported in AIR 1960 SC 142, it was held by the Hon'ble
Apex Court that reputation among general public should attach to trade
mark and not to maker of goods.
164. Learned Senior Advocate Shri Kamal Trivedi has also placed
reliance on the judgment in case of Rangoli Chemfoods Pvt. Ltd. v.
Indo Brine Industries Ltd. Reported in 2013 (53) PTC 606 (Guj),
Jagdish Gopal Kamnath v. Lime & Chilli Hospitality Services
reported in 2015 (62) PTC (Bom) and also Blue Hill Logistics Pvt. Ltd
v. Ashok Leyland Ltd. Reported in 2011 (48) PTC 564 (Mad). In the
opinion of Court, to some extent, principles are applicable to the facts of
the present case.
165. In case of Allied Blenders and Distillers Pvt. Ltd. v. Sentino Bio
Products Pvt. Ltd. (supra), it is held that if the injunction order is not
confirmed, not only the plaintiff but the unwary customers who cannot be
compensated in terms of money would also suffer in case injunction is
not granted. Application for grant of injunction therefore allowed. In the
present case also, the learned Trial Court, would have not granted
injunction, there are all the chances of loss to unwary customers who
cannot be compensated in terms of money.
166. Learned Advocate Mr. Shah has also lastly submitted that if the
injunction is not granted, in that case the Respondents / Original Plaintiffs
have no irreparable loss since they are continuing in business but when
the injunction is granted, in that case all business of the Appellant /
Original Defendant would be ruined for which there is no chance of
assessment of loss. But, such stand is not tenable in view of earlier
discussions made herein above.
167. Therefore, also this court is required to interfere and set aside the
order passed by the learned Trial Court. But, as discussed earlier, the
learned Trial Court has not committed any mistake neither in form of
order as perverse, or arbitrary, or capricious, or illegal and therefore, this
court is not inclined to interfere in the order of the learned Trial Court.
Hence, I reply Point No. (i) in negative and answer Point no. (ii) as under:
(L) CONCLUDING REMARKS:
168. Upon all such discussions and the reliance placed by both the sides
on different authorities / citations, it appears that now it is prima facie
Res integra, that instead of dissimilarity of trade products, the Court has
to see prima facie, similarities in the product, since the man of average
prudence or average intelligence cannot be deceived in dealing with
purchasing the goods in the market, since in the present case, the product
Tea ("WAGH BAKRI PREMIUM") is such, every type of persons may
purchase including, middle class, rich person and others, they may not be
deceived by purchasing the goods of so called Appellant / Original
Defendant. Prima facie, by allowing product of the Appellant / Original
Defendant, will cause confusion in the minds of public at large. Further,
it is pertinent to note that the Appellant / Original Defendant has yet not
started manufacturing fully in the market as compared to the Respondents
/ Original Plaintiffs and therefore quia timet action was the need of the
hour in the view of the learned Trial Court, and therefore, when the
discretion is exercised by the learned Trial Court, the Appellant / Original
Defendant has knocked the door of this Court, ex facie the Appellant /
Original Defendant failed to rebut prima facie case of the Respondents /
Original Plaintffs as Absque injuria. As discussed herein above, in fleri
there is no infirmity in the order passed by the learned Trial Court and the
same is in accordance with the settled principles of law and, therefore, the
present Appeal from Order and Civil Application, filed by the Appellant /
Original Defendant is devoid of any merit and deserves to be dismissed
and accordingly stands dismissed with no order as to costs. Notice is
discharged.
169. Resultantly, the order dated 11.12.2020 passed by the learned City
Civil Court No. 29, Ahmedabad below Exh. 7 for interim injunction in
Civil Suit No. 884/2020 is hereby confirmed. However, it is made clear
that, in the facts and circumstances of the case, the learned Trial Court
shall decide the Civil Suit preferably within 10 months from the date of
receipt of the copy of this judgment and conclude the trial, preferably, on
or before 31.1.2022, without being influenced by this order passed by this
Court since the order has traveled throughout prima facie observations to
the extent of equitable relief.
Both the parties shall cooperate in concluding the IPR Suit.
(A. C. JOSHI,J)
J.N.W / PRK
