Madras High Court
Itc Limited vs N.Ranga Rao & Sons Private Ltd on 15 November, 2021
OSA Nos.183 and 184 of 2021
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 15.11.2021
CORAM :
THE HON'BLE MR.SANJIB BANERJEE, CHIEF JUSTICE
AND
THE HON'BLE MR.JUSTICE P.D.AUDIKESAVALU
OSA Nos.183 and 184 of 2021
ITC Limited
Virginia House,
37, J.L.Nehru Road,
Kolkata - 700 071
and also at 69, Chamiers Road,
Chennai 600 018. ... Appellant in
both OSAs.
Vs
N.Ranga Rao & Sons Private Ltd.
P.B.No.52, Vani Vilasa Road,
Mysore - 570 004, and branch office
at T.S.109, Block No:3, Poomagal,
5th Street, Ekkaduthangal,
Chennai 600 097. ... Respondent in
both OSAs.
Appeals filed under Order XXXVI Rule 1 of Original Side Rules
read with Clause 15 of Letters Patent against the Common Order dated
01.04.2021 in OA Nos.30 and 31 of 2021 on the file of original side of
this court.
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OSA Nos.183 and 184 of 2021
For the Appellant : Mr.Sajan Poovayya
Senior Counsel,
assisted by M/s.Arun C.Mohan,
Karthik Selvaraj,
Chandini Pradeep Kumar,
Pratibhanu Singh,
Raksha Agrawal & Sharan
Balakrishna
For the Respondent : Mr.Satish Parasaran
Senior Counsel
for Mr.Rajesh Ramanathan
COMMON JUDGMENT
(Delivered by the Hon'ble Chief Justice)
The order impugned herein by the defendant has been passed in
the confusing presentation of the plaintiff's case where the claim in a
trade mark infringement and passing-off action was founded on the
colour scheme of two primary colours, despite the names, get-up and
packaging material of the products being completely distinct; and,
some promotion material published on facebook by the defendant
appellant that were not relatable to the plaintiff's product.
2. The most startling feature is that despite the injunction sought
on the ground of infringement being declined – though the plaintiff
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OSA Nos.183 and 184 of 2021
says that it did not much press the same – an injunction on the colour
scheme in the packaging material and the facebook pages has been
issued.
3. Three applications were taken out by the plaintiff, IA No.29 of
2021 seeking an injunction on the ground of infringement; IA No.30 of
2021 seeking an injunction on the perceived copyright in the colour
scheme; and, IA No.31 of 2021 seeking an injunction against passing-
off. IA No.29 of 2021 failed, but an injunction was issued restraining
the colour combination used by the defendant – of gold and yellow or
even of copper and gold, if the appellant is to be amused. What
appears to have been missed is the fundamental ethos of a trade mark
action and what it ought to protect. Essentially, the tort is of deceit
where the complaint is that the defendant seeks to deceive an unwary
purchaser into believing that the defendant's product was from the
plaintiff's stable. The underlying assertion is of the defendant filching
the trade of the plaintiff by riding piggyback on the reputation of the
plaintiff and the plaintiff's products or its popularity.
4. The essential test is to assess whether an ordinary person
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OSA Nos.183 and 184 of 2021
would pick up the defendant's product thinking it to be the plaintiff's.
As to whether a colour scheme ought to be protected or a particular
get-up is to be conferred exclusivity or a mark has to be seen to be
deceptive depends all on the ultimate assessment as to whether one
would mistake the defendant's product for the plaintiff's. This
fundamental feature of assessment appears to be missing in the
judgment and order impugned as the trial court has gone on the basis
of the plaintiff being exclusively entitled to use the colour combination
of gold and yellow where the darker colour fades into the lighter or the
lighter colour brightens into the darker, depending on the perspective
or the point of view.
5. In addition, the defendant, as a part of promoting agarbathi
(incense sticks) sold under the name and style of Mangaldeep, had put
up pictures of Hindu Gods on its facebook page with the background
predominantly of gold and yellow and agarbathis placed on the ground
as would be during any pooja. Again, nothing from such facebook page
would relate to the plaintiff's product for the plaintiff to even raise the
remotest whimper on such ground. The impugned facebook pages had
nothing to do with the defendant's product. Secondly, nothing in such
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OSA Nos.183 and 184 of 2021
facebook pages could be said to mislead any person believing that it
had any association with the plaintiff's product since the overwhelming
feature of the facebook pages was the depiction of the Hindu idol
notwithstanding the verisimilitude of the colour combination over
which no exclusivity can, ordinarily, be sought.
6. There is no dispute that the plaintiff's product may be the
market-leader in the field of agarbathi sold under the name of Cycle
Brand. There may even be no dispute that the defendant's fledgling
Mangaldeep brand may not have much of a market share. But upon a
look at the defendant's packaging material, notwithstanding the colour
combination thereof, there is scarcely any resemblance to the
plaintiff's packaging apart from the fact that the red and yellow hues
are somewhat common.
7. There is no element of any copyright infringement as
copyright primarily exists in any literary, dramatic or artistic work; or
in any cinematograph film; or any musical work. The basis of the
plaintiff's claim is not founded on any cinema or music nor on any
literature or drama. There is no form or shape to the colour
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OSA Nos.183 and 184 of 2021
combination for the plaintiff to insist on any copyright in any artistic
material. Any artistic material, by its very nature, would have a form
or a shape and the colour scheme in the plaintiff's packaging cannot be
regarded as any artistic work.
8. Since it is the admitted position that the defendant's
Mangaldeep agarbathi or packaging material connected therewith does
not infringe the plaintiff's copyright in its device marks and there does
not appear to be any element of passing-off, notwithstanding the
similarity in the colour scheme where two primary colours are used in
both cases, there was no justification or basis for issuing any
injunction. Moreover, the facebook pages of the defendant do not
expressly refer to any product and the mere use of the backdrop
colour which is less noticeable than the picture of the idol in the
foreground has no nexus with the plaintiff's Cycle Brand agarbathi for
the plaintiff to even make any complaint in such regard.
9. The defendant has referred to two decisions, emphasising that
no person can claim exclusivity or ownership over any colour
combination, particularly if two primary colours are involved and there
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OSA Nos.183 and 184 of 2021
is no artistic work depicted. The principle is beyond question.
However, the judgments reported at (2005) 31 PTC 583 (Colgate
Palmolive Company Limited vs. Patel) and Manu/DE/1425/2019
(Surya Food and AGro Limited vs. Om Traders) may not be apposite
in the present case since the get-up and packaging material are so
different and distinctive and the facebook pages used by the defendant
have nothing to do with the packaging material used by the plaintiff in
course of its Cycle Brand agarbathi.
For the aforesaid reasons, the judgment and order impugned
dated April 1, 2021 cannot be sustained and are set aside. As a
consequence, IA No.30 of 2021 and IA No.31 of 2021 are dismissed.
OSA Nos.183 and 184 of 2021 are allowed. There will, however, be no
order as to costs. CMP Nos.8170 and 8171 of 2021 are closed.
(S.B., CJ.) (P.D.A., J.)
15.11.2021
Index : no
sra
To
The Sub Assistant Registrar
Original Side, Madras High Court,
Chennai.
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OSA Nos.183 and 184 of 2021
THE HON'BLE CHIEF JUSTICE
AND
P.D.AUDIKESAVALU, J.
(sra)
OSA Nos.183 and 184 of 2021
15.11.2021
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