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2006 DIGILAW 482 (DEL)

Asian Paints (I) Ltd. v. Ved Prakash Srivastava

2006-03-09

A.K.SIKRI

body2006
JUDGMENT : A.K. Sikri, J. The plaintiff has filed this suit for permanent injunction, infringement of copyright, passing off, damages and delivery up, etc. against the defendants. The plaintiff is engaged in the business of manufacturing and marketing of paint, varnishes, enamels and other like products and colour concentrates for the last more than 50 years. It is the registered proprietor of the mark APCOLITE bearing No. 211175 and the label of APCOLITE with the device of GATTU under number 226466, particulars whereof are given in para 8 of the plaint. The plaintiff is also the owner of the picture of GATTU registered under the Copyright Act bearing No. A-51167/91 first published in India in the year 1959. The artistic work GATTU with ASIANT PAINTS (i) Ltd. is also registered under the Copyright Act bearing No. A-51166/91 which the plaintiff claims was first published in the year 1959. Case of the plaintiff is that it has been using the trademark APCOLITE in respect of paints and synthetic enamel in a specially designed container having yellow and red colour background. In the middle of the container there is a dark green colour ribbon. The said background of red and yellow colour are used in an arrow style distinctive manner. The picture of GATTU which is the subject matter of the trademark and copyright has also been depicted. The name ASIAN PAINTS has been mentioned in the said packing material in a particular manner. In the middle side of the container there is a roundish device where the directions for use are mentioned. All the above said features of the APCOLITE containers are the original artistic work of the plaintiff who has designed the said artistic features having unique and distinctive colour scheme, getup and layout of the APCOLITE synthetic enamel which is being used for the last more than 50 years. The plaintiff is, therefore, entitled to reproduce the same. Any other person other than the plaintiff without any licence or authority in case uses the same it would amount to infringement of copyright under Section 51 of the Copyright Act, 1957. It is also claimed by the plaintiff that the said artistic work along with the trademark APCOLITE and the name ASIANT PAINTS is exclusively associated with the plaintiff and no one else. It is also claimed by the plaintiff that the said artistic work along with the trademark APCOLITE and the name ASIANT PAINTS is exclusively associated with the plaintiff and no one else. Being the corporate name ASIANT PAINTS of the plaintiff it has got various registrations, particulars whereof are given in the plaint. 2. The grievance of the plaintiff is against the defendants' manufacturing and marketing synthetic enamel by adopting the device of GATTU and it is the case of the plaintiff that by doing so the defendants are infringing the plaintiff's registered trademark as well as registered copyright in the device of GATTU. The defendants have also adopted almost similar designs of the container having yellow and red background. Along with the suit, the plaintiff had filed IA No. 9817/2001 and on 17th October, 2001 ex parte ad interim was granted restraining the defendants, their agents, representatives or any person acting on behalf of the defendants from manufacturing, marketing, distributing or selling products that is Arsian Paints or NECOLITE synthetic enamel with the same colour scheme as has been used by the plaintiff with the device of GATTU. The defendants were also restrained from using the words Arsian NECOLITE with the synthetic enamel and manufacture or market the same. A Local Commissioner was also directed to go to the business premises of the defendant No. 3 where the infringing goods were lying and prepare an inventory of the said goods in finished or unfinished condition. 3. Though the defendants were duly served and appeared through Counsel, no written statement was filed. On 8th April, 2002 nobody even appeared on behalf of the defendants and the defendants were proceeded against ex parte. The plaintiff was permitted to lead the evidence in the form of affidavits. The plaintiff had filed affidavit dated 7th May, 2002 of Sh. Nirupam Sahay, Divisional Manager and thereafter on 11th November, 2002 affidavit of Mr. Rajesh Joshi, Divisional Manager was also filed. However, due to some infirmity in these affidavits, the plaintiff, thereafter, filed another one dated 4th November, 2004 of Sh. Rajesh Joshi, Divisional Manager (North) of the plaintiff company and it is this affidavit which is taken into consideration and is treated as evidence led by the plaintiff. Rajesh Joshi, Divisional Manager was also filed. However, due to some infirmity in these affidavits, the plaintiff, thereafter, filed another one dated 4th November, 2004 of Sh. Rajesh Joshi, Divisional Manager (North) of the plaintiff company and it is this affidavit which is taken into consideration and is treated as evidence led by the plaintiff. In his affidavit, apart from affirming those facts, stated in the plaint on oath and taken note of above, the deponent has proved different registration of trademark as well as copyright as Ex. P1 to P4. Packing material used by the plaintiff for APCOLITE synthetic enamel, the photograph of which is filed along with the plaint, is Ex. P5. 4. From the aforesaid unrebutted testimony of the plaintiff, after going through the records, particularly the registration of trademark and copyright in favour of the plaintiff and comparing the infringing containers of the defendant with that of the plaintiff's, I am of the view that the defendants have copied the same background with colour scheme, getup and layout of the plaintiff's registered trademark APCOLITE. The use of the trademark in NECOLITE synthetic enamel by the defendants is also deceptively similar with that of the plaintiff's distinctive trademark APCOLITE registered under No. 211175 as of 10th September, 1962 in relation to same goods. Likewise, manufacturing of enamel paints by the defendants under the trademark Asian/Arsian amounts to infringement of the plaintiff's corporate name. The defendants have copied the entire background of the plaintiff's feature by feature including all he descriptive matters, pictures of the animals, colour scheme, getup and layout and colour combinations. It is clearly a dishonest conduct of the defendants who have tried to ride on the goodwill enjoyed by the plaintiff in respect of its products. 5. In Tata Iron and Steel Co. Ltd. v. Mahavir Steels and Ors., reported as 47 (1992) DLT 412, it was held that as it is self-evidence, there is a very small difference between the trademark FISCO and TISCO in the dispute like the present one although the Court is primarily concerned with the rights and obligations of the parties but nevertheless the Court is also required to protect the interest of the nameless and faceless consumers. The Court has to view the effect of a trademark on the buyer. The purchaser can be easily misled by phonetical similarity of the trademarks. The Court has to view the effect of a trademark on the buyer. The purchaser can be easily misled by phonetical similarity of the trademarks. Aping of trademark cannot be allowed as it confuses and deceive the customers. It seems to me that the use of the trademark FISCO by the defendants has infringed the registered trademark of the plaintiff. 6. In M/s. Pidilite Industries Pvt. Ltd. v. M/s. Mittees Corporation and Anr., reported as 1989 PTC 151 , it was held that even when the prefix in both the marks are different but while pronouncing the two marks taken as a whole, sound quite similar and even on the containers, the colour scheme and the getup is almost identical, there was likelihood of deception keeping in view the class of average customers. The application was allowed, restraining the defendants, their agents, servants, dealers, etc. from using the trademark Trevicol or any other trademark similar to plaintiff's trademark Fevicol till the decision of the suit. 7. The plaintiff is, therefore, entitled to the decree of permanent injunction. Following decree is passed: (a) Decree of permanent injunction in favour of the plaintiff and against the defendants thereby restraining the defendants, their servants, agents, distributors, shopkeepers, stockists, etc. from manufacturing, marketing, distributing or selling any products i.e. synthetic enamels, paints bearing the mark NECOLITE and picture of GATTU as well as colour combination and design which is the subject matter of the registered trademark No. 226466. They are also restrained from manufacturing, marketing, distributing or selling any product i.e. synthetic enamel paints or any other allied and cognate goods bearing the mark Arsian/NECOLITE, picture of GATTU as well as similar getup, layout and arrangement of features amounting to passing off their goods as that of the plaintiff's aforesaid products, particularly packing material like B and C which infringes the plaintiff's container Annexure A. (b) The order of delivery up of the goods seized by the Local Commissioner and given to the defendants on Superdari as per the Local Commissioner's report is also passed. The plaintiff shall also be entitled to destroy those goods after taking delivery thereof. Though no evidence in respect of the actual damages suffered is given by the plaintiff, having regard to the law laid down in the judgments of this Court in the cases of Adidas Salomon AG and Ors. The plaintiff shall also be entitled to destroy those goods after taking delivery thereof. Though no evidence in respect of the actual damages suffered is given by the plaintiff, having regard to the law laid down in the judgments of this Court in the cases of Adidas Salomon AG and Ors. v. A. Dhawan, reported as 118 (2005) DLT 560; Microsoft Corporation v. Yogesh Papat and Anr., reported as 118 (2005) DLT 580 and Times Incorporated v. Lokesh Srivastava and Anr., reported as 116 (2005) DLT 599=2005 (30)) PTC 3 (Del.), punitive damages in the sum of Rs. 2 lacs are also granted to the plaintiff. The plaintiff shall also be entitled to costs. Decree be drawn accordingly. Suit decreed.