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Madras High Court · body

2012 DIGILAW 3416 (MAD)

Lion Dates Impex Private Ltd. v. Murugan

2012-08-01

K.B.K.VASUKI

body2012
ORDER 1. OA No. 267 of 2011 is filed for ad-interim injunction restraining the respondent herein, its directors/partners (as applicable), all its principal officers, staff, men, agents, servants, successors assigns in business, representatives or any other person claiming any right through or under the defendant from in any manner using, manufacturing packing, marketing, distributing or selling or offering for sale, advertising, displaying or indirectly using a trade dress of shape, size, method of sealing and finishing, on any of the defendants products in particular the packages of dates, which is identical/deceptively similar to the trade dress of the plaintiff in the shape, size, method of sealing and finishing, of the plaintiffs packages of dates as depicted. 2. OA No. 268 of 2011 is filed to grant an order of ad-interim injunction restraining the respondent herein, its partners/directors (as applicable), all its principal officers, staff, men, agents, servants, successors, assigns in business, representatives or any other person claiming any right through or under the defendant from in any manner using, manufacturing, packing, marketing, distributing or selling or offering for sale, advertising, displaying or indirectly using any identical or deceptively similar colour combination on the packaging of any of the defendants products in particularly dates, amounting to infringement/piracy of the registered design of the plaintiff under registered design No.222936 in Class : 07-02. 3. The plaintiff and the defendant have been dealing in the process of packing and marketing identical goods, Dates, Dates Syrup, Honey, Jam, Oats, Tamarind, Vermicelli, Salt, Olive oil and other food products under the Trade Mark Lion along with the device of Lion and Annai along with the device of Mother and Child respectively. 4. According to the plaintiff, he obtained the registration of the design for the colour scheme of its packaging in pouches for dates in design application number 222936 in class 07-02 and the registration certificate is issued on 11-1-2001. It is the further case of the plaintiff that the plaintiffs dates are sold in pouches called pouch packages, which is a distinct trade dress in the shape and size as well as method of sealing and finishing of the pouch package. The new pouch package has been adopted and being used by the plaintiff from 21-5-2009 and attained familiarity and popularity, resulting in increase in sales turn over and business goodwill and reputation of the plaintiff. The new pouch package has been adopted and being used by the plaintiff from 21-5-2009 and attained familiarity and popularity, resulting in increase in sales turn over and business goodwill and reputation of the plaintiff. Whereas, the defendant also launched identical products dates and the same are sold with identical trade dress, pouch packages in the same colour scheme, shape, size, method of sealing and finishing and such adoption is, with dishonest intention to make gain on the reputation and goodwill of the plaintiffs distinct design of the trade dress and there is every likelihood of confusion to the unwary customers consisting of uneducated, illiterates, villagers and inadequately educated. 5. According to the plaintiff, such act of the defendant amounts to infringement of the plaintiffs registered design and colour scheme and the act of the defendant in passing off its identical products as that of the plaintiff amounts to misrepresentation, leading to confusion and deception about the origin of the products or about the trade connection between the two companies. 6. The reliefs are seriously opposed by the defendant on the following grounds (i) the trademarks of the plaintiff and the defendant LION and ANNAI are neither phonetically nor visually similar (ii) the registration of preprinted aluminium foil pouch under the head packing under class 07-02 is wrongly obtained under wrong class and (iii) the novelty, in respect of which registration of design is obtained is only with respect to sealing lines of the wrapper and not for the colour scheme. Even otherwise, the plaintiff has been admittedly selling dates in aluminium foil pouches in the same trade dress shape and colour scheme much prior to the date of application for registration dated 24-5-2009, in view of the notice dated 11-5-2009 issued by the plaintiff, as such, there is no novelty in the design and the same is not registrable under Section 4 of the Act. The plaintiffs pouch packing and sealing in pre-printed aluminum foil wrapper is very common in the food industry and no proprietary right can be claimed by any one in respect of such method of packing, sealing and finishing. 7. Heard the rival submissions made on both sides. 8. The fact that both the plaintiff and the defendant carrying on business in identical food products viz. 7. Heard the rival submissions made on both sides. 8. The fact that both the plaintiff and the defendant carrying on business in identical food products viz. dates under different trade name LION and ANNAI, LION along with device LION, and ANNAI along with the device of Mother and Child are not in dispute. 9. The similarity chart in respect of packaging of the products of the plaintiff and defendant in size, shape and weight, colour scheme, layout of characters, prominent colours, descriptive materials, backside of the packet, one side of packet, material used for packing, quantity in which the packing is made and its pricing as detailed in paragraph 11 at pages 7 and 8 of the plaint is supported by the photographs of the products of the plaintiff and the defendant and the sample packing cover of the applicant products enclosed in the types set and the additional types set filed by the plaintiff and copy of the catalogue for the defendants products enclosed in the types set of papers filed by the defendant. 10. For the purpose of better understanding the similarity chart is extracted hereunder: (Tabular Matter Is Omitted...Ed) 11. The appreciation of similarity chart, in the light of the photographs of the sample packing would reveal that except trade name, size, shape, colour scheme consisting of white and green, red and yellow used for background and the letters written respectively and the position of the letters and deceptive matters, flexible laminated film used for packing and material quantity of 500 gm and 200 gm with pricing of Rs. 62/- and Rs. 21/- respectively for both the products are strikingly similar and identical. 12. The plaintiff claims exclusive right to use such pouch packing with specific colour scheme in the packing on the strength of registration of the same under the Designs Act and the defendant is charged herein for his dishonest adoption of the same colour scheme in the packaging as an act of infringement of registered design. 12. The plaintiff claims exclusive right to use such pouch packing with specific colour scheme in the packing on the strength of registration of the same under the Designs Act and the defendant is charged herein for his dishonest adoption of the same colour scheme in the packaging as an act of infringement of registered design. The adoption of identical trade dress in pouch packaging by using preprinted aluminum foil wrapper with identical colour scheme is, accordingly to the plaintiff, with dishonest intention to create confusion in the mind of and to misrepresent and mislead the customers and for enriching themselves upon the popularity and familiarity, goodwill and reputation earned by the plaintiffs product amounting to act of passing off their products as that of the plaintiff. 13. As far as the claim for registration of the design in respect of colour scheme of pouch package is concerned, the same is obtained on 11-1-2011, but relates back to the date of the application i.e. 21-5-2009. The perusal of certificate of registration along with the copy of the design enclosed at pages 2 to 6 of the typed set of papers reveals that the registration for design is obtained in respect of the novelty in colour combination of the packing in respect of the portions marked as A, B and C and what is marked as A, B and C as seen from front, back and side view, right and left side packing is silver lining of the packing. The copy of the design enclosed would not, as rightly pointed out by the learned counsel for the defendant/respondent support the plaintiffs claim that the novelty in respect of which the registration obtained is for the entire colour scheme of pouch packing and the registration certificate also refers to only colour combination and not the remaining aspects. While the colour of lining of portions A, B and C as per the photographs is silver and as the colour combination of white, red, yellow and green is used mainly on the front side of pouch packaging, the documentary material available herein does not clearly make out the case as claimed by the plaintiff in respect of colour scheme. 14. 14. Even assuming the plaint averments to be accepted that the registration of the design is in respect of colour scheme of packing and method of sealing and finishing of pouch packing by using pre-printed aluminium foil wrapper, no exclusive right can be claimed on the strength of such registration for the following reasons. Admittedly, the application for registration is made on 21-5-2009 and the same is obtained on 11-1-2011. Much prior to the same, there was exchange of notices and issuance of legal notice between the plaintiff and the defendant during 2006 and 2009 in respect of the same product dates and packing method etc. The reading of the notices enclosed at pages 6 to 13 of the defendants typed set would definitely show that the similarity and exclusive right claimed in the same are in respect of cartons/labels, pouches, bottles and containers, packing with identical colour scheme by using silver aluminium foil. As rightly argued by the learned counsel for the defendant the exclusive right claimed in exchange of letters during 2006, is regarding artistic carton/labels and pouch packing with white base with the mark LION displayed in red letters beneath, which the words DESEEDED DATES have been depicted in yellow within green rectangular box and back panel of the said packing carrying the technical details, packing details and other salient features and both pouch packing and the colour combination of white and green background with letters written in red and yellow colours are referred to in the legal notice dated 11-5-2009 as being used for selling the plaintiffs dates. As the legal notice referred to is much before the date of application for registration of the design i.e. 25-9-2009, the design in respect of which registration claimed on the date of application is neither new nor original design, but is already introduced in the market and is hence under Section 4(a) and (b) of the Design Act prohibited from claiming registration and is also liable to be cancelled under Section 19 of the Designs Act. In that event, the plaintiff cannot be permitted to claim statutory protection on the strength of the registration under Designs Act and the question of granting any order of injunction against the act of infringement of such registered design does not arise herein. 15. In that event, the plaintiff cannot be permitted to claim statutory protection on the strength of the registration under Designs Act and the question of granting any order of injunction against the act of infringement of such registered design does not arise herein. 15. As far as the relief claimed against the act of passing off is concerned, the same is not based on statutory protection on the strength of registered design, but is arising under common law based upon the principle that nobody has a right to represent his goods as that of somebody. In other words, a man is not to sell his goods or services under the pretence that they are those of another person. Passing off is said to be a species of unfair trade competition or of actionable unfair trading, by which one person, through deception, attempts to obtain an economic benefit of the reputation, which another has established for himself in a particular trade or business. The action is regarded as an action for deceit (1990 (Supp) SCC 727, Wander Ltd. v. Antox India Pvt. Ltd.) 16. The Apex Court has in Cadila Health Care case reported in 2001 PTC 541 (SC): ( AIR 2001 SC 1952 ) laid down the relevant factors to be considered for deciding the question of similarity in an action for passing off which read as follows:- (a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works. (b) The degree of resembleness between the marks, phonetically similar and hence similar in idea. (c) The nature of the goods in respect of which they are used as trademarks. (d) The similarity in the nature, character and performance of the goods of the rival traders. (e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. (f) The mode of purchasing the goods or placing orders for the goods. (g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. Weightage to be given to each of the aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case. 17. (g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. Weightage to be given to each of the aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case. 17. It is further laid down therein that while dealing with cases relating to passing off, one of the important tests to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors and what is likely to cause confusion would vary from case to case. It is equally well laid down that the products will be purchased by both villagers and townfoli, literate as well as illiterate or badly educated person and the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. 18. For appreciating the relief against passing off action, it is but relevant to consider the definition of Mark. The Trade Marks Act defines mark which includes a device, brand, heading, label, ticket, name, signature, words, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. As material form, colour and get up of the wrapper or label or container of the articles are the physical means of expression, the design of the container or the label is of greater significance as it is meant to catch the vision of any purchaser. The design of the label would include not only the trademark, but also the colour scheme and get up of the wrapper or container as well. The articles would invariably be guided by the physical appearance of the labels, as the customers have the intuitive instinct to select the goods by the design, trade dress, colour and get up and the trade name of the goods. 19. The colour combination, get up, lay- out and size of container is some sort of trade dress which enhances the overall image of the product features. There is a wide protection against imitation or deceptive similarities of trade dress as trade dress is the soul for identification of the goods as to its source and origin. 19. The colour combination, get up, lay- out and size of container is some sort of trade dress which enhances the overall image of the product features. There is a wide protection against imitation or deceptive similarities of trade dress as trade dress is the soul for identification of the goods as to its source and origin. There are no diligent or literate conscious customers, who always remain conscious to the quality of the goods when they have been purchasing, which determines an offence of passing off. They are the unwary, illiterate and gullible persons, who do not arrive at a conclusion whether goods are infringed by confusingly similar in colour combination, get up, layout printed over the container or packing. If it is not so, then the offence of passing off will cease to have its existence once the guilty party chooses a different trade name, as held in the judgment reported in (2003 (27) PTC 478 (Delhi) Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd. 20. Only in this context, the particulars given in the similarity chart at pages 7 and 8 of the typed set, are to be usefully recollected herein. The same reveals that the trade name, colour scheme, get up, letters, shape and size of packing, materials used for such package, position of the trade mark and other descriptive materials used for the products are deceptively similar and it cannot be doubted that the adoption of the same colour combination, get up and packaging, method of packing identical as that of the plaintiff would certainly cause confusion in the mind of the public that the goods are coming from the particular manufacturer. 21. The first glance of the articles of both without going into the minute details of the colour combination, get up or lay-out appearing on the container and packaging, gives the impression as to deceptive or near similarities in respect of these ingredients and it is a clear case of misrepresentation and deception amounting to an act of passing off. There is absolutely no explanation on the part of the defendant for adoption of such identical colour scheme and pouch packing. 22. There is absolutely no explanation on the part of the defendant for adoption of such identical colour scheme and pouch packing. 22. In the present case, the dishonest intention on the part of the defendant can also be well appreciated by reason of their conduct on earlier occasion in using similar trade dress in Pet bottle jar leading to exchange of notices between the parties and the same is followed by Civil Suit in C.S. No. 16 of 2008. The catalogue of the defendants products enclosed at pages 39 of the 46 of the typed set of papers filed by the defendant reveals that the defendant appears to be no longer using Pet jar bottle for the dates products, but appears to have shifted to pouch packing as that of the plaintiff and the same evidently discloses the lack of bona fide on the part of the defendant in using deceptively similar trade dress. 23. In the given situation, the observation laid down in the following authorities cited on the side of the plaintiff are to be usefully quoted and applied to the facts of the present case : 1. AIR 1970 SC 1649 in Ruston and Hornby Ltd. v. Zamindara Engineering Co. 2. AIR 1972 SC 1359 in Parie Products (P) Ltd. v. J.P. & Co., Mysore. 3. 2003 (27) PTC 478, Delhi in Colgate Palmolive Co. v. Anchor Health and Beauty Care Pvt. Ltd. 4. 2009 (40) PTC 37, Delhi in Frito Lay India v. Radesh Foods. 5. 2009 (40) PTC 519 (Delhi) (DB) Micro-fibres Inc. v. Giridhar and Co. 24. Our High Court and other High Courts in the authorities cited supra have in identical situation held that the defendant, who is guilty of an act of passing off his products as that of the plaintiffs products, is to suffer an order of injunction against such adoption. 25. As rightly argued by the learned counsel for the applicant, this is fit case wherein the plaintiff, having made out prima facie case, is entitled to get an order of injunction against the defendants passing off action. In the event of the defendant being not prevented from continuing such deceptive trade practice, it will seriously prejudice the plaintiffs reputation and goodwill, resulting in loss in sales, as such, balance of convenience warrants granting of the relief as sought for herein. 26. In the event of the defendant being not prevented from continuing such deceptive trade practice, it will seriously prejudice the plaintiffs reputation and goodwill, resulting in loss in sales, as such, balance of convenience warrants granting of the relief as sought for herein. 26. In the result, O.A. No. 267 of 2011 is ordered by granting an order of interim injunction restraining the respondent, its directors/partners (as applicable) all its principal officers, staff, men, agents, servants, successors, assigns in business, representatives or any other person claiming any right through or under the respondent from in any manner using, manufacturing, packing, marketing, distributing or selling or offering for sale, advertising, displaying or indirectly using a trade dress of shape, size, method of sealing and finishing on any of the defendants products in particular the packages of dates, which is identical/deceptively similar to the trade dress of the plaintiff in the shape, size, method of sealing and finishing of the plaintiffs packages of dates. 27. In the result, O.A. No. 268 of 2011 is dismissed. Application dismissed.