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2009 DIGILAW 1319 (DEL)

PERFETTI VAN MELLE SPA v. KUNAL FOOD INDUSTRIES

2009-11-24

S.RAVINDRA BHAT

body2009
ORDER 1. Learned Counsel for the defendant seeks permission to place on record the affidavit of the first defendant director Mr. Harish Godhwani, stating that infringing label or any other label or mark would not be used henceforth. This Court, on the previous date, had indicated that the suit could be appropriately disposed of by confirming the interim order. 2. Learned Counsel for the plaintiff has indicated that the claim for damages would not be pressed in the event the defendant was willing to change its trademark, label, writing style as well as get-up, similar to that of plaintiff. 3. The plaintiff seeks the following main reliefs: “(i) Perpetual injunction restraining the defendants whether by themselves or their partners, and their agents, assigns, dealers, retailers or any other person claiming under them or acting on their behalf for using, selling or otherwise dealing with the trademark ‘APNELIYE’ in conjunction with the wrapper/label pertaining thereto, or any other mark/label deceptively similar, either phonetically, visually or structurally, or a colourable imitation of the trade mark ALPENLIEBE of the plaintiff No.1 and the wrapper/label pertaining thereto of the plaintiff in any manner whatsoever. (ii) An order restraining the Defendants, whether by themselves or their partners, and their agents, assigns, dealers, retailers, successors-in-title and all persons acting on their behalf and/or claiming under them from infringing the copyright of the plaintiff No. 1 in the artistic work comprising the ALPENLIEBE label/wrapper including its colour combination, layout and arrangement of features, by applying similar artistic work on the Defendants? label/wrapper, especially with regard to confectioneries, chewing gums, candies or any other allied or cognate goods, without the authority or consent of the plaintiffs. (iii) An order restraining the Defendants, whether by themselves or by their partners, agents, assigns, dealers, retailers, successors-in-title and all persons acting on their behalf and/or claiming under them, from passing off their goods by manufacturing marketing, selling, advertising, or otherwise directly or indirectly dealing in goods under the tade mark ‘APNELIYE’ and the wrapper/label pertaining thereto, or any other mark/label deceptively similar, either phonetically, visually or structurally, to the trademark ALPENLIEBE of plaintiff No.1 or a colourable imitation thereof, used in conjunction with the wrapper/label of the plaintiff No. 1. (iv) An order restraining the defendants from using the expression ‘APNELIYE’ or any other mark deceptively similar to the registered trademark ‘ALPENLIEBE’ of the plaintiff No.1 in conjunction with the wrapper/packaging presently used by the Defendants or otherwise for similar goods. (v) An order for delivery up of all the goods, stationery, dies, blocks or any other articles bearing the impugned trade mark ‘APENLIYE’ or wrapper/label pertaining thereto or capable of reproducing the mark or wrapper/label pertaining thereto, for destruction and/or erasure." The plaintiff had also sought damages to the extent of Rs.20.00 lacs. 4. This Court by its order dated 18th January, 2008 granted an ad interim injunction in the following terms: “IA No. 664/2008 in CS (OS) 91/2008-Issue notice returnable on 24.4.2008. The plaintiffs are the proprietors of the registered trademark ‘ALPENLIEBE’. They market their smooth and creamy caramel toffee under this mark. The plaintiffs have a trademark registration with effect from 24.9.1992. The artistic work on the ‘ALPENLIEBE’ label was created in 1984 and has a unique getup comprising a distinctive colour combination, layout and arrangement of features. The plaintiffs have adopted the said mark and the said artistic work on the label of the product worldwide and it has become well known. The plaintiffs claim that their trademark falls within the definition of a well known trademark under Section 2(1)(zg) of the Trademarks Act, 1999. In the year 2007 the turnover in respect of the product ALPENLIEBE was to the extent of Rs161.8 crores. The plaintiffs have also extensively advertised the mark ‘ALPENLIEBE’ as well as the distinctive label employed by them in respect of their said toffee. The advertising expenditure for the-year 2006 was to the tune of Rs13.1 crores.” The plaintiffs became aware in July 2007 that the defendants were selling sugar boiled sweets under the trademark ‘APNELIYE’ in packaging and wrappers which were deceptively similar to the plaintiffs packaging and wrappers in respect of the plaintiffs product ‘ALPENLIEBE’. A comparison of the packaging and labels of the plaintiffs product and the defendants product makes it clear, prima facie, that the defendants are trying to pass off their products as those of the plaintiffs. A comparison of the packaging and labels of the plaintiffs product and the defendants product makes it clear, prima facie, that the defendants are trying to pass off their products as those of the plaintiffs. Even the word mark ‘APNELIYE’ seems, prima facie, to be a contrived mark in an attempt to be similar to ‘ALPENLIEBE’ so as to confuse the customers and make them believe that they are actually purchasing and consuming the plaintiffs product when, in fact, it is the defendants product which is being sold to them. In these circumstances, I direct that till further orders the defendants, their agents, dealers, retailers or any other representative of the defendants are restrained from using the mark ‘APNELIYE’ in conjunction with the wrapper/label pertaining thereto so as to be similar to the plaintiffs’ product ‘ALPENLIEBE’ or its wrapper/label. “The provisions of Order 39 Rule 3, CPC be complied with within three days.” 5. The defendants in the affidavit state that they would no longer use the label ‘Apne Liya’ in respect of candies and other confectionary items with a colour scheme and getup that is similar to the plaintiff and use any other mark that would be deceptive so as to infringe the plaintiffs registered trademark. 6. In view of the statement made the suit is disposed of in terms of para 32(i) to (iv) of the suit; the interim injunction made on 18th January, 2008 also made absolute. 7. Let a decree be drawn in terms of paras 32(i) to (iv) of the suit. CS (OS) 91/2008 is accordingly decreed, in the above terms. Suit disposed of.