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2020 DIGILAW 827 (BOM)

ITC Limited v. Godfrey Phillips (India) Limited

2020-07-27

B.P.COLABAWALLA

body2020
B.P. Colabawalla, J. 1. At the outset, I must state that this matter was heard by me on 2nd March 2020, 3rd March 2020, 4th March 2020 and the arguments concluded on 5th March, 2020. The matter was thereafter posted on 23rd March, 2020 for passing orders. However, in the meanwhile, since the Covid-19 Pandemic interjected and the Court's normal working was disrupted, orders could not be passed on 23rd March, 2020. Now, since the lockdown imposed by the Government Authorities has been substantially lifted and things are slowly opening up, the order is being pronounced today. 2. The above Intellectual Property Suit has been filed on three separate causes of action, namely (a) the cause of action for infringement of copyright; (b) the cause of action for passing off; and (c) the cause of action for infringement of its registered trademark containing the word FLAKE and FLAKE PREMIUM. The above Interim Application seeks to restrain the Defendants from infringing the copyright of the Plaintiff; passing off the goods of the Defendants as that of the Plaintiff and restraining the Defendants from infringing the registered trademark of the Plaintiff containing the words FLAKE and FLAKE PREMIUM. At the outset I must state that both parties have cited several decisions before me. However, I am not going to refer all the decisions as admittedly, the present Interim Application has been moved only for ad-interim reliefs. 3. Having said this, it would be necessary to set out the brief facts on the basis of which the Plaintiff claims the reliefs as set out in the Interim Application. The Plaintiff is a well known manufacturer of cigarettes. In 1905, the Plaintiff adopted a distinctive trademark by combining two distinctive words "GOLD" and "FLAKE" and coined the trademark GOLD FLAKE for use in relation to cigarettes. It is thereafter stated that in 1971 the Plaintiff launched a new brand of cigarettes using the word FLAKE as a trademark. Over the years, it has launched numerous variants under its FLAKE trademark including FLAKE PREMIUM, FLAKE REFINED TASTE, FLAKE EXCEL, FLAKE FINE CUT etc. 4. According to the Plaintiff, since 1994, the Plaintiff has enjoyed gross sales to the tune of Rs. 50,475 Crores in respect of cigarettes sold under its FLAKE trademark. According to the Plaintiff, in 2018-2019 alone it has enjoyed gross sales of approximately Rs. 4. According to the Plaintiff, since 1994, the Plaintiff has enjoyed gross sales to the tune of Rs. 50,475 Crores in respect of cigarettes sold under its FLAKE trademark. According to the Plaintiff, in 2018-2019 alone it has enjoyed gross sales of approximately Rs. 6,603 Crores in respect of cigarettes sold under the trademark FLAKE. According to the Plaintiff, thus it is evident, that the Plaintiff enjoys significant good will and reputation in respect of the trademark FLAKE and the same is now exclusively associated with the Plaintiff. 5. It is thereafter stated that the Plaintiff is the registered Proprietor of a series of trademarks where FLAKE is the essential, prominent and leading feature. Pertinently, the words FLAKE PREMIUM form a prominent, essential and leading feature of its registrations in Class 34. The Plaintiff is also the registered Proprietor of the word mark WILLS FLAKE. 6. It is thereafter stated that in 2012 the Plaintiff commissioned the services of Wysiwyg Communications Private Limited for creating its original artistic work in respect of its FLAKE cigarette trademark. The Plaintiff commissioned Nidhi Harlalka - as an Artist who created the artistic work for the FLAKE REFINED TASTE cigarette pack. Both Wysiwyg and Harlalka have assigned their copyright in the artistic work and they have confirmed the Plaintiff's copyright ownership by an Assignment Deed dated 12th June, 2012. It is in these circumstances that the Plaintiff has adopted this new artistic work for its FLAKE cigarette pack in 2012. 7. It is thereafter stated that in 2016, when the legal requirement of 85% graphical health warning came into force, the Plaintiff commissioned Stylo Media Private Limited to re-design the artistic work for its FLAKE REFINED TASTE Pack in order to fit the essential elements of this label in the reduced space. The redesigning was carried out by one Mr. Meet Jain, an Artist in Stylo's employment. According to the Plaintiff, all the essential brand identifiers of the original FLAKE REFINED TASTE Pack remained intact in the re-designed label of the FLAKE REFINED TASTE Pack. Stylo and Mr. Jain have both confirmed the Plaintiff's ownership of copyright in the re-designed work by way of an Assignment Deed dated 5th October, 2016. 8. According to the Plaintiff, all the essential brand identifiers of the original FLAKE REFINED TASTE Pack remained intact in the re-designed label of the FLAKE REFINED TASTE Pack. Stylo and Mr. Jain have both confirmed the Plaintiff's ownership of copyright in the re-designed work by way of an Assignment Deed dated 5th October, 2016. 8. It is on the basis of all this material that the Plaintiff contends that the FLAKE REFINED TASTE Pack is an original artistic work and is comprised inter alia of a unique boomerang device which consists of concentric arcs of Gold and Red colour. The Plaintiff's boomerang device is a unique and distinctive source identifier. Since its adoption in 2012, the said FLAKE REFINED TASTE Pack has been extensively used on account of which the Plaintiff's said artistic work, including the boomerang device, has achieved tremendous popularity, is the case of the Plaintiff. 9. It is thereafter stated that the Plaintiff, on 31st July, 2012, applied for trademark registration of this FLAKE REFINED TASTE Pack label bearing a distinctive colour scheme, get up and the boomerang device. The Defendant opposed this registration but has not disputed the Plaintiff's proprietary rights in the boomerang device. It is thus submitted by the Plaintiff that the Defendant was well aware of the Plaintiff's adoption and use of the FLAKE REFINED TASTE Pack and the boomerang device. 10. It is the case of the Plaintiff that the FLAKE REFINED TASTE Pack is primarily sold in the North East and Eastern India, West Bengal being the major market. Since adoption in 2012, the FLAKE REFINED TASTE Pack has been used extensively, openly and without interruption by the Plaintiff. According to the Plaintiff, in 2018-2019 alone the Plaintiff enjoyed gross sales of Rs. 3,675 Crores in respect of the FLAKE REFINED TASTE Pack out of a total of Rs. 6,603 Crores in respect of cigarettes sold by the Plaintiff under the trademark FLAKE. 11. According to the Plaintiff, until December 2019, the Defendant used to sell cigarettes under the SELECT trademark in a different packaging/label/trade dress in the same market. Until December 2019, the Plaintiff's FLAKE REFINED TASTE pack peacefully co-existed with the Defendant's earlier SELECT pack. In December 2019, according to the Plaintiff, in a deliberate departure from its earlier pack, the Defendant adopted the impugned pack. Until December 2019, the Plaintiff's FLAKE REFINED TASTE pack peacefully co-existed with the Defendant's earlier SELECT pack. In December 2019, according to the Plaintiff, in a deliberate departure from its earlier pack, the Defendant adopted the impugned pack. Pertinently the impugned pack was launched in the same market where the FLAKE REFINED TASTE Pack of the Plaintiff is immensely popular. 12. According to the Plaintiff, the impugned pack deliberately adopted by the Defendant (a) is a substantial reproduction of the Plaintiff's artistic work (in the FLAKE REFINED TASTE Pack) and infringes the Plaintiff's copyright therein; (b) the use of the words FLAKE PREMIUM below the Defendant's brand name is evocative of the mark FLAKE of the Plaintiff and the impugned pack, as a trade dress for the Defendant's product, is thus plainly deceptively similar to the FLAKE REFINED TASTE Pack; (c) the Defendant has launched the impugned pack in the same market where the FLAKE REFINED TASTE Pack is immensely popular and the Defendant's use of the deceptively similar mark FLAKE PREMIUM as a trademark also amounts to passing off; and (d) the Defendant's use of the words FLAKE PREMIUM on the impugned pack infringes the Plaintiff's registration wherein FLAKE and/or FLAKE PREMIUM constitute the essential, prominent and leading features. It is on the basis of all this material that the present Suit is filed and ad-interim reliefs sought. 13. In this factual backdrop, Mr. Kadam, the learned Senior Counsel appearing on behalf of the Plaintiff, submitted that firstly the impugned pack of the Defendant infringes the Plaintiff's copyright in the FLAKE REFINED TASTE cigarette Pack. He submitted that the FLAKE REFINED TASTE Pack label was created by design studios and artists who were commissioned by the Plaintiff and who have confirmed the Plaintiff's ownership of copyright in the said artistic works. He brought to my attention the meaning of "artistic work" by relying upon Section 2(c) of the Copyright Act. He then submitted that Section 14(c) defines copyright in respect of "artistic works" and submitted that the owner of the copyright has an exclusive right to reproduce the work in any material form including inter alia to communicate the work to the public and/or to issue copies of the work to the public not being copies already in circulation. Thereafter, Mr. Thereafter, Mr. Kadam also brought to my attention the provisions of Section 51 setting out the circumstances under which a copyright is said to be infringed as well as the remedy available to the owner of the copyright as set out in Section 55. Mr. Kadam submitted that the test for copyright infringement is substantial similarity i.e. the degree of similarity such as that which would lead one to say that the alleged infringement is a copy or reproduction of the original having adopted its essential features and substance. In assessing copyright infringement, small and trivial differences introduced by the Defendant should be ignored by the Court since every intelligent copyist introduces a few changes. The infringing copy need not be exact in every microscopic detail, was the submission of Mr. Kadam. Mr. Kadam submitted that if one were to apply these tests in the present case, it was obvious that the impugned pack of the Defendant is a substantial reproduction of the FLAKE REFINED TASTE Pack and the artistic work comprised therein and which belonged to the Plaintiff. He submitted that the Defendant had blatantly adopted the following deceptively similar features: (i) the use of the boomerang devices comprising of concentric arcs of Gold and Red colours, which were identical and/or deceptively similar to the boomerang device on the FLAKE REFINED TASTE Pack of the Plaintiff; (ii) the Defendant's impugned pack has the same White, Gold and Red colour scheme as that of the Plaintiff's FLAKE REFINED TASTE Pack; (iii) it follows the FLAKE REFINED TASTE Pack in having the brand name written in a red bold font against a white background; (iv) the adoption of a five spike crest device, was a blatant copy of the five spike crest device used by the Plaintiff on its FLAKE REFINED TASTE Pack. This device used by the Defendant was a departure from the crest device appearing on the Defendant's earlier pack; and (v) the use of the words FLAKE PREMIUM below the Defendant's brand name is evocative of and similar to the trademark FLAKE of the Plaintiff. 14. Mr. Kadam submitted that the Defendants have dishonestly adopted the artistic works and label and this was clear from the fact that the Defendant was aware of the Plaintiff's adoption since it had opposed the Plaintiff's trademark application for the FLAKE REFINED TASTE Pack. 14. Mr. Kadam submitted that the Defendants have dishonestly adopted the artistic works and label and this was clear from the fact that the Defendant was aware of the Plaintiff's adoption since it had opposed the Plaintiff's trademark application for the FLAKE REFINED TASTE Pack. He submitted that the Defendant's dishonest adoption was also apparent from Table 4 of page 23 of the Plaint. He submitted that Table 4 clearly showed that the Defendant has even made changes to its house device by adopting a crown which has five spikes identical to the Plaintiff's crest used on the FLAKE REFINED TASTE Pack of the Plaintiff. Mr. Kadam submitted that all this clearly evidenced that the Defendant not only had knowledge but also access to the Plaintiff's FLAKE REFINED TASTE Pack before the Defendant adopted the impugned pack and the artistic work contained therein. He submitted that this is more so when one takes into consideration that the Defendant has admittedly adopted the impugned pack only in December 2019. Therefore, the Defendant's claim that it independently adopted the impugned pack are wholly false and unbelievable, was the submission of Mr. Kadam. He therefore submitted that for all the aforesaid reasons, the Plaintiff was entitled to an ad-interim injunction in terms of prayer clause (a) of the Interim Application for infringement of the Plaintiff's copyright in its FLAKE REFINED TASTE Pack. 15. Over and above the argument regarding infringement of copyright, Mr. Kadam submitted that the use of the words FLAKE PREMIUM on the impugned pack of the Defendant also infringes the Plaintiff's rights in its registered marks. He submitted that section 29(1) of the Trademarks Act, 1999 declares that a registered trademark is infringed when a person, who is neither the registered proprietor nor a permitted user, uses in the course of trade, a mark which is identical or deceptively similar to a registered trademark in relation to goods in respect of which the registered trademark operates and in such manner as to render the use of the mark likely to be taken as a trademark. It was Mr. Kadam's submission that in order to determine whether a particular trademark is likely to deceive or cause confusion, it is important to determine the distinguishing or essential features of the trademark and the main idea underlying that mark. It was Mr. Kadam's submission that in order to determine whether a particular trademark is likely to deceive or cause confusion, it is important to determine the distinguishing or essential features of the trademark and the main idea underlying that mark. If the competing trademark contains some essential features or conveys the same idea, then, the competing mark may be held to be deceptively similar. He submitted that it is now well settled that a registered trademark could have more than one essential feature. In the present case, Mr. Kadam submitted that FLAKE forms an essential, prominent and leading feature of the Plaintiff's word mark WILLS FLAKE. The word FLAKE and/or FLAKE PREMIUM also formed essential, prominent and leading features in the other trademarks of the Plaintiff. He submitted that there is no disclaimer of the word FLAKE imposed by the Trademarks Registry and the same has been used in several of the registered trademarks of the Plaintiff as can be seen at Exhibit-A to the Plaint. He submitted that if he was correct in his submission, then, the Defendant's use of the words FLAKE PREMIUM on the impugned pack and cigarettes of the Defendant, clearly infringes upon the Plaintiff's trademark registrations. 16. Mr. Kadam submitted that the defence taken that the word FLAKE by itself is not registered as a trademark is wholly misconceived in view of the fact that FLAKE is an essential, prominent and leading feature of its registered trademarks. In all these registrations, there is no disclaimer imposed on the word FLAKE. Mr. Kadam further pointed out that the Defendant's contention that the word FLAKE is descriptive, is wholly misconceived. He submitted that the law is well settled that while a broad range of goods may fall in a particular trade, each article/each good has a distinct quality, separate identity and is differently used. Thus, whilst manufactured tobacco is a trade covering pipe tobacco, cigarettes, cigars, gutka etc., all of these products are distinct and separate articles with their specific characteristics. Mr. Kadam submitted that in the present case, the Defendant's own pleading and material clearly go to show that the word FLAKE, if at all, only carries a descriptive meaning in relation to pipe tobacco, and it refers to a type/cut used in pipe tobacco. Mr. Kadam submitted that pipe tobacco is plainly an article that is wholly different and distinct from cigarettes. Mr. Kadam submitted that pipe tobacco is plainly an article that is wholly different and distinct from cigarettes. Thus, at best, the word FLAKE may describe a specific characteristic of pipe tobacco, viz., a smokable cut of pipe tobacco. It has absolutely no descriptive meaning in relation to cigarettes. Pipe tobacco smokers are a completely separate class of consumers and more importantly it is not even the case of the Defendant that the word FLAKE is understood to be a term connected with cigarettes by the average cigarette smoker, was the submission of Mr. Kadam. The tobacco used in cigarettes is cut tobacco which is separately defined in Vogue's Dictionary as "Cigarette tobacco which has been cut from tobacco leaves or strips ready for use in a cigarette maker … …". Mr. Kadam pointed out that pipe tobacco and cigarette tobacco are even categorized separately under The Cigarettes and Other Tobacco Products (Prohibition of Advertisement and Regulation of Trade and Commerce, Production, Supply and Distribution) Act, 2003. In this regard, he brought to my attention the provisions of section 3(k) of the said Act which makes a distinction between cigarette tobacco, pipe tobacco, hookah tobacco, chewing tobacco and pan masala. He thereafter brought to my attention the Schedule to the Act which itself separately categorizes cigarettes and pipe tobacco as distinct articles. Mr. Kadam also pointed out that the Bureau of Indian Standards (BIS) also considers cigarettes to be distinct products. The Glossary of Terms for Tobacco and Tobacco Products in BIS 2007 makes a clear distinction between fine cut tobacco and fake-cut tobacco. He submitted that while fine cut tobacco is used in cigarettes, fake-cut tobacco is used in pipes. He, therefore, submitted that all this material goes to show that the word FLAKE can never be treated as descriptive, especially in relation to cigarettes though, in a given case, it could be argued that in relation to pipe tobacco, it may be descriptive. 17. Mr. Kadam then submitted that, in any event, the Defendant is estopped from alleging that the word FLAKE and/or FLAKE PREMIUM are descriptive words as, in the past, the Defendant has obtained trademark registration of the mark SUN FLAKE without any disclaimer, and having obtained the said registration, it does not lie in its mouth to claim that the word FLAKE is descriptive. Even otherwise, in the present case itself, the Defendant has admitted use of the words FLAKE PREMIUM in a trademark sense. Having applied these words as a trademark, the Defendant is estopped from contending that the words FLAKE or FLAKE PREMIUM are descriptive in nature. In fact, the Defendant's contention that the Trademark Registry has itself considered the word FLAKE to be descriptive is incorrect since the Plaintiff is the registered proprietor of a series of trademarks where FLAKE is the essential and prominent feature. None of the trademarks cited in the affidavit-in-reply by the Defendant have a disclaimer for the word FLAKE and none of the registrations of the Plaintiff also have any disclaimer on the word FLAKE. For all these reasons, Mr. Kadam submitted that the Plaintiff, in addition to an ad-interim injunction for infringement of copyright, is also entitled to an ad-interim injunction for trademark infringement in terms of prayer clause (c) of the interim application. 18. Mr. Kadam, then lastly submitted, that the Defendant is also liable in an action of passing off. Mr. Kadam pointed out that from the sales figures itself, the Plaintiffs FLAKE range of cigarettes plainly command enormous goodwill and reputation. Since 1994, the Plaintiff has enjoyed gross sales to the tune of Rs. 50,475 crores in respect of cigarettes sold under its FLAKE trademark. In 2018-19 alone, cigarettes sold by the Plaintiff under its various trademarks, where FLAKE is a prominent and essential feature, has enjoyed gross sales of approximately Rs. 6,603.64 crores and which is more than the entire annual gross sales of the Defendant for the same year. Mr. Kadam submitted that admittedly the Defendant was aware of the Plaintiff's adoption of the FLAKE REFINED TASTE Pack since it had been opposed by the latter's application for registration of the same. He submitted that passing off is an action to restrain a Defendant from selling and/or offering its goods for sale in a manner which has deceit and/or is likely to deceive the public into thinking that the goods emanated from the Plaintiff. He submitted that passing off is an action to restrain a Defendant from selling and/or offering its goods for sale in a manner which has deceit and/or is likely to deceive the public into thinking that the goods emanated from the Plaintiff. He submitted that in order to determine whether the Defendant's impugned pack/trade dress and cigarette trade dress is deceptively similar to that of the Plaintiff, the Court must consider the following:- a. What is the main idea or salient features of the marks; b. Marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole; c. Overall similarity is the touchstone; d. Marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection; e. Overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied; f. The purchaser must not be put in a state of wonderment; g. Marks must be compared as a whole, microscopic examination being impermissible; h. The broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design; i. Overall similarity is sufficient; and j. The Court must also take into consideration the nature of commodity, the class of purchasers, the mode of purchase and other surrounding circumstances. 19. Mr. Kadam submitted that this has been so held by this Court in the case of Hiralal Prabhudas vs. Ganesh Trading Company & Ors. While applying these tests, Mr. Kadam submitted that the Court must also take into consideration the fact that the 85% health warning being in force, the use of infringing deceptively similar material will become more prominent since there is now only 15% space for advertising the label. 20. In the present case, Mr. While applying these tests, Mr. Kadam submitted that the Court must also take into consideration the fact that the 85% health warning being in force, the use of infringing deceptively similar material will become more prominent since there is now only 15% space for advertising the label. 20. In the present case, Mr. Kadam submitted that the Defendant is clearly guilty of passing off its goods as that of the Plaintiff since the impugned pack of the Defendant has adopted the following infringing features:- a. The brand name is written in capital red bold font with a deceptively similar boomerang device placed above and to the left of the brand name; b. An identical boomerang shaped device of gold and red colours has been applied to the filter of the cigarette; c. The Defendant has applied the words FLAKE PREMIUM on the impugned pack and filter of the cigarette as a trade mark; d. The Defendant has applied a five-spiked crest device on its impugned pack and cigarette filter which is a blatant copy of the Plaintiff's house crest. 21. Mr. Kadam submitted that the Defendant's earlier cigarette pack and trade dress peacefully co-existed with the Plaintiff's products for the last several years. There was absolutely no cause or warrant for the Defendant to adopt the deceptively similar device along with other similarities in the trade dress of the impugned pack, was the submission of Mr. Kadam. Mr. Kadam submitted that the Defendant's claim that the boomerang device is not unique and novel are wholly misconceived in as much as the Defendant has failed to establish that the device at Exhibit-24 of the Defendant's reply predated the Plaintiff's adoption and/or are available on a commercial scale in India. Furthermore, Mr. Kadam submitted that the law is well settled that illicit use by others does not justify the Defendant's illicit use. 22. Mr. Kadam was at pains to point out that the Defendant's adoption of the impugned pack and cigarette trade dress is also likely to cause confusion considering that the Plaintiff's FLAKE REFINED TASTE Pack enjoys substantial sales in West Bengal and the impugned pack is launched in the same market; the consumers are the same; and the trade channels are the same, viz. retail shops, pan vendors and tobacconists. retail shops, pan vendors and tobacconists. He submitted that, in fact, the application of deceptively similar features on the impugned pack and the trade dress being launched in the same market as that of the Plaintiff, itself establishes that the Defendant has a mala fide intent to illicitly undercut the Plaintiff's substantial sales, and trade on the Plaintiff's goodwill. He submitted that therefore the Plaintiff is also entitled to an ad-interim injunction for the cause of action of passing off in terms of prayer clause (b) of the interim application. 23. On the other hand, Dr. Tulzapurkar, the learned senior counsel appearing on behalf of the Defendant submitted that there was no merit in any of the contentions raised by the Plaintiff. He submitted that the use of the word FLAKE is a dictionary word and is descriptive in nature relating to tobacco and tobacco products. He submitted that the material on record clearly shows that the word FLAKE is purely descriptive of tobacco and tobacco products, including cigarettes and no one can claim any monopoly in this word as a trademark. FLAKE is essentially a term that denotes the kind and quality of tobacco used in different tobacco products and, therefore, the Plaintiff's claim for a temporary injunction, even on the basis of infringement or passing off for the use of the word FLAKE is unsustainable, in fact and in law. To support the aforesaid submission, Dr. Tulzapurkar took me through the Annexures to the affidavit-in-reply and, more particularly the Exhibits thereto viz. Exh.- 12, 13, 13A, 14, 14A, 14B, 14C and 15. Dr. Tulzapurkar submitted that the contention of Mr. Kadam that fake tobacco is descriptive of only pipe tobacco is completely misconceived. He submitted that the Plaintiff has elected not to file an affidavit-in-rejoinder to deal with the contents of the Defendant's affidavit-in-reply or compilation of documents and it is, therefore, not open for the Plaintiff to raise such contentions in arguments. Dr. Kadam that fake tobacco is descriptive of only pipe tobacco is completely misconceived. He submitted that the Plaintiff has elected not to file an affidavit-in-rejoinder to deal with the contents of the Defendant's affidavit-in-reply or compilation of documents and it is, therefore, not open for the Plaintiff to raise such contentions in arguments. Dr. Tulzapurkar submitted that the Defendant has placed material on record to show that fake tobacco can be used in cigarettes as well and in this regard he relied upon the following: (a) Compilation of articles placed on record by the Defendant at pages 2 to 4, 7 to 10, 11, 17 and 18, 20, 23, 26 and 27 and 29; (b) Definition of fake tobacco at page 387 of the Reply; (c) Definition of sheet tobacco at page 388 of the Reply; (d) Article on Sheet Tobacco at page 389 of the Reply; (e) Definition of 'Cigarette' in Cigarette and other Tobacco Products Act, 2003; (f) Section 3(p) read with the Schedule of Cigarette and other Tobacco Products Act, 2003 which, according to Dr. Tulzapurkar, makes it clear that pipe tobacco; cigarette tobacco; and hookah tobacco are one and the same thing; (g) Pages 389 and 391 of the Reply which indicates that sheet tobacco is used in cigarettes; and (h) Judgment of CESTAT in the matter of International Tobacco Company Limited vs. Commissioner of Central Excise, Ghaziabad [paragraph 10] 24. Dr. Tulzapurkar submitted that in the face of such overwhelming material, it can hardly be urged that fake tobacco is not found in cigarettes. Once this becomes a name of an ingredient of a cigarette, it can hardly be stated that the word FLAKE is not descriptive in nature, was the submission of Dr. Tulzapurkar. 25. Dr. Tulzapurkar then urged that even though the Plaintiff is a vigilant owner and enforcer of its intellectual property rights and for the last forty years is using the word FLAKE, the Plaintiff has not been able to secure a single word mark registration and, in fact, its applications have been subjected to a disclaimer and opposition by the Defendant. He submitted that the Plaintiff itself has used the word FLAKE in a descriptive manner in relation to tobacco relating to products under NAVY CUT and CAPSTAN and described them as fake tobacco. He submitted that the Plaintiff itself has used the word FLAKE in a descriptive manner in relation to tobacco relating to products under NAVY CUT and CAPSTAN and described them as fake tobacco. This being the position, the Plaintiff has knowingly (being a part of the trade) selected a purely descriptive word and it cannot claim any monopoly therein, particularly in view of the goods for which the same is used. Dr. Tulzapurkar submitted that this apart, the material on record clearly shows that the word FLAKE is used in a descriptive sense by a large number of traders and various marks are registered containing the word FLAKE. When one peruses the record, the material sufficiently demonstrates that the industry practice is such where FLAKE is used to describe tobacco and/or tobacco products, including cigarettes, was the submission. According to Dr. Tulzapurkar this further demonstrates that all persons in the industry and market trade (including the public) know that the various marks containing the word FLAKE harmoniously co-exist and, therefore, the said word cannot be monopolized. This is nothing but 'common to the trade'. He submitted that apart from the Plaintiff's Red and White fake mark, the Plaintiff is also aware that the cigarette industry in India is substantially controlled by five players, viz. the Plaintiff, the Defendant, The Golden Tobacco Company, VST and NTC, each of which have trademark registrations for marks containing FLAKE. Even though the Plaintiff may have filed rectification petitions against the registered marks of the other players in the cigarette industry in India, none of those petitions have been allowed till date and the marks validly remain on the Register. The very fact that the Plaintiff has failed to secure registration of the word FLAKE (as a word mark) in its favour and has been so far unsuccessful in it rectification petitions, the same makes it abundantly clear that the Plaintiff has no right in the word FLAKE. 26. Dr. Tulzapurkar submitted that it is a settled position of law that marks are required to be registered as a whole. Equally, in actions of the present nature, marks are required to be compared as a whole. As such, the Plaintiff or the Defendant's registration of their respective trademarks entitle the Plaintiff and/or the Defendant to claim proprietorship only over the whole of the trademark. Equally, in actions of the present nature, marks are required to be compared as a whole. As such, the Plaintiff or the Defendant's registration of their respective trademarks entitle the Plaintiff and/or the Defendant to claim proprietorship only over the whole of the trademark. There is no protection for individual features unless they are the subject matter of independent registration and more so, when such individual features are descriptive. In support of this argument, Dr. Tulzapurkar placed reliance on section 17 of the Trademarks Act, 1999. Once viewed from this standpoint, Dr. Tulzapurkar submitted that the Plaintiff's argument of reliance on its device/label registration to claim a proprietary right in relation to the word FLAKE is bound to fail. He submitted that the Plaintiff not having a word mark registration of the word FLAKE, the legal principles enshrined in section 17 would apply with full rigour and the Plaintiff is disentitled from claiming any statutory protection or maintaining any trademark infringement action on the basis of a descriptive word/feature viz. FLAKE. 27. Dr. Tulzapurkar then submitted that there is no merit in the contention of the Plaintiff that the Defendant is estopped from setting up the plea of descriptiveness since the Defendant has obtained registration of the mark "SUN FLAKE" or because the Defendant has applied for registration of the mark "SELECT FLAKE PREMIUM". He submitted that the Defendant's registration application is not for the word FLAKE per se, but is for SELECT FLAKE PREMIUM. He submitted that trademarks (word or label) are liable to be viewed and considered as a whole and neither the Defendant has applied for of secured registration of the word FLAKE or made an application for registration in respect of the word FLAKE. It is not the Defendant's case that the word FLAKE is either not descriptive or that it has become the proprietary to the Defendant. He, therefore, submitted that this does not derogate from the fact that the word FLAKE is descriptive in nature. Consequently, he submitted that there is no trademark infringement in the present case. 28. Dr. Tulzapurkar then submitted that even for infringement of copyright, no case is made out by the Plaintiff. He submitted that there is no similarity whatsoever in the comparable portions of the rival works. The general get-up, placement of material and the material itself are totally different. 28. Dr. Tulzapurkar then submitted that even for infringement of copyright, no case is made out by the Plaintiff. He submitted that there is no similarity whatsoever in the comparable portions of the rival works. The general get-up, placement of material and the material itself are totally different. The Plaintiff claims that it has a boomerang device whereas the Defendant's device is a letter "S" written in a stylized manner. It can never be considered to be a copy of the boomerang device of the Plaintiff. It is submitted that the similarity must be substantial and in the present case that is not so, especially considering that the most important parts which catch the eye are the word marks WILLS and SELECT. There is a substantial difference between the two and the Plaintiff has not been able to show as to who created the alleged artistic work. Dr. Tulzapurkar submitted that the test for copyright infringement between artistic works is that only the dissimilarities are to be looked at and not the similarities. The Plaintiff's argument of side by side comparison qua copyright in the artistic works is misconceived. The manner in which a comparison of the trade dress as argued by the Plaintiff, suggests a microscopic examination. If the examination as suggested by the Plaintiff is employed, a man looking at the rival product with a view finder will actually find the words WILLS and SELECT much before he looks at the crest and crown and other common to trade features of the trade dress, was the submission of Dr. Tulzapurkar. He submitted that even the colour combination adopted by the Defendant is common to trade and is not distinctive of the Plaintiff's products. Dr. Tulzapurkar submitted that it is the Defendant's case that the rival packs are dissimilar. This is on several counts. Firstly, 85% of the pack is covered by a statutory warning, leaving only 15% which can be termed as a label. In that label, prominently featured are the words FLAKE and SELECT which appear in a different font/writing. Secondly, in the last corner of the Plaintiff's label, the word mark WILLS along with the crest appears. As against this, in the Defendant's label, the "S" logo appears and which is wrongly equated by the Plaintiff to a boomerang. In that label, prominently featured are the words FLAKE and SELECT which appear in a different font/writing. Secondly, in the last corner of the Plaintiff's label, the word mark WILLS along with the crest appears. As against this, in the Defendant's label, the "S" logo appears and which is wrongly equated by the Plaintiff to a boomerang. Any average personal can only look at it as "S" and not a boomerang and more particularly when it is juxtaposed with the word SELECT. Thirdly, in the Plaintiff's label, there is background print in yellow shade which is conspicuously absent in the Defendant's label. Lastly, even on the side-ways comparison, there is no similarity because there is no crest and it is principally the rival marks which appear. When one takes into consideration all these factors and features, Dr. Tulzapurkar submitted that even on the ground of infringement of copyright, no case is made out by the Plaintiff. 29. Even as far as passing off is concerned, Dr. Tulzapurkar submitted that no case is made out under the said cause of action. He submitted that the Plaintiff has applied an incorrect test of comparison to the two rival marks. The two rival marks as far as the words are concerned, are WILLS FLAKE REFINED TASTE versus SELECT FLAKE PREMIUM. This, according to Dr. Tulzapurkar, cannot be a source of confusion amongst consumers under any circumstances because of sufficient added material and consumers buy cigarettes by calling for the product by its name and not by FLAKE. This being the position, even on the ground of passing off, the Plaintiff is not entitled to any relief. Dr. Tulzapurkar, therefore, submitted that on all counts, the Plaintiff is not entitled to any ad-interim relief. 30. I have heard the learned counsel for the parties at great length. Though I have recorded detailed submissions on both sides as that would only be fair to both parties, I must mention that both parties had urged me to consider this as an application for ad-interim reliefs. This being the case, though I would be giving reasons for my findings, they would be only prima facie and not in great detail. Before giving my reasons, it would be apposite to set out the rival products. 31. This being the case, though I would be giving reasons for my findings, they would be only prima facie and not in great detail. Before giving my reasons, it would be apposite to set out the rival products. 31. I must mention that barring the last two images, all images on the left are of the Plaintiff's FLAKE REFINED TASTE Pack/cigarette and on the right are of the Defendant's impugned pack/cigarette. Having reproduced the rival marks, label and trade dress, I shall deal with the issue of infringement of copyright first. It is not in dispute that the FLAKE REFINED TASTE Pack label of the Plaintiff was created by design studios and artists who were commissioned by the Plaintiff. They have confirmed the Plaintiff's ownership of copyright in the said artistic works under Deeds of Assignment dated 12th June, 2012 and 5th October, 2016. In fact, the Assignment Deed dated 12th June, 2012 is annexed at Exhibit-G to the plaint. Section 2(m) of the Copyright Act defines infringing copy in relation to an artistic work to mean "… … … a reproduction thereof otherwise than in the form of a cinematographic film; … … ...". Section 51 contemplates that a copyright is infringed when a person commits acts which are reserved to the copyright owner under section 14 without licence, or the copyright is also infringed when a person sells or makes for sale or by way of trade, displays or offers for sale any infringing copies of the work. Section 55 contemplates that in such a situation, the owner of the copyright is entitled to an injunction, damages and/or accounts. In my prima facie view the test to be applied for copyright infringement is substantial copy i.e. the degree of similarity which would lead one to say that the alleged infringing copy is a reproduction of the original having adopted its essential features and substance. I agree with the legal proposition canvassed by Mr. Kadam that in assessing copyright infringement, small/trivial differences introduced ought to be ignored since every intelligent copyist will always introduce a few changes to set up a defence against infringement of copyright. The infringing copy does not have to be exact in every microscopic detail. I shall now apply the aforesaid tests to the present case. Kadam that in assessing copyright infringement, small/trivial differences introduced ought to be ignored since every intelligent copyist will always introduce a few changes to set up a defence against infringement of copyright. The infringing copy does not have to be exact in every microscopic detail. I shall now apply the aforesaid tests to the present case. As can be seen from the images reproduced above, the impugned pack of the Defendant uses boomerang shaped devices comprising of concentric arcs of gold and red colours which, prima facie, appear to be a substantial replication to the boomerang device of the Plaintiff appearing on its FLAKE REFINED TASTE Pack. It has the same white gold and red colour scheme as that of the Plaintiff's FLAKE REFINED TASTE Pack. Further, even the colour combination and the brand name is written in a red bold font against a white background which follows the FLAKE REFINED TASTE Pack of the Plaintiff. Even the adoption of the five-spiked crest device by the Defendant and reproduced above, prima facie, appears to be a substantial copy of the five spiked crest device used by the Plaintiff. What is important to note is that the Defendant has given no reason for switching from the brand name in white colour against a red backdrop to writing the brand name in red colour against a white backdrop and which is identical to the colour scheme of the FLAKE REFINED TASTE Pack of the Plaintiff. Further, there is no reason forthcoming by the Defendant for abandoning its old crest device to adopting a five spiked crest device used by the Plaintiff on its FLAKE REFINED TASTE Pack. Further, there is no plausible explanation for a complete absence of boomerang shaped concentric arcs, or what the Defendant terms as "S", in its earlier pack, to the adoption of boomerang shaped concentric arcs with gold and red colours by the Defendant in the impugned pack. The only explanation sought to be given is that the boomerang shaped concentric arcs adopted by the Defendant are nothing but a stylized "S" to denote SELECT. What is important to note is that this so called stylized "S" was adopted by the Defendant in the impugned pack only in December 2019. The only explanation sought to be given is that the boomerang shaped concentric arcs adopted by the Defendant are nothing but a stylized "S" to denote SELECT. What is important to note is that this so called stylized "S" was adopted by the Defendant in the impugned pack only in December 2019. There is absolutely no explanation as to why this was not done earlier when admittedly the Plaintiff's FLAKE REFINED TASTE Pack and the earlier pack of the Defendant peacefully co-existed in the very same market. Further, and which is even more telling, is that out of all the stylized "S" shapes available in the world, the Defendant has chosen to adopt the alleged stylized "S" which, in my view, is clearly a substantial copy to the boomerang device of the Plaintiff. In fact, the record clearly shows that when it suits the Defendant, it adopts a completely different stylized "S" and which it has used in its stellar brand of cigarette packs. Further, in the Plaintiff's FLAKE REFINED TASTE Pack, the boomerang device comprising of concentric arcs of gold and red colour are placed on the left side of the brand of the Plaintiff. Similarly, the so-called stylized "S" and which at least, prima facie, appears to be boomerang shaped devices, is also comprising of concentric arcs of gold and red colour with the brand name placed on the right side of the devices. Further, the brand name on the Plaintiff's pack is written in capital in red bold font against a white background. Similarly the brand name of the Defendant's pack is also written in capital in a red bold font against a white background. Even the crest device of the Plaintiff and the Defendant appear to be almost identical. Looking at all this material, prima facie, I am of the opinion that the Plaintiff is entitled to an injunction in terms of prayer clause (a) restraining the Defendant from infringing the Plaintiff's copyright in its FLAKE REFINED TASTE Pack depicted at Exhibit-H of the Plaint. Looking at all this material, prima facie, I am of the opinion that the Plaintiff is entitled to an injunction in terms of prayer clause (a) restraining the Defendant from infringing the Plaintiff's copyright in its FLAKE REFINED TASTE Pack depicted at Exhibit-H of the Plaint. This is more so when one takes into consideration that this entire exercise adopted by the Defendant to change its pack was only in December 2019 even though the Defendant was selling the same brand of cigarettes in the same market as the Plaintiff much prior thereto and with a totally different pack as can be seen from the images produced earlier. In fact, in the earlier pack of the Defendant, the brand name was written in white colour against a red background which is exactly the opposite of what the Defendant has now adopted. Further, if one even looks at the crest device, the crest device appearing on the Defendant's earlier pack was very different from the crest device now adopted by the Defendant. Even the cigarette sticks and the design thereon were very different on the earlier pack of the Defendant and which have been changed in December 2019. 32. Mr. Kadam is justified in his submission that the explanation sought to be given for the so-called stylized "S" is unsustainable in view of the fact that with reference to another brand of cigarettes of the Defendant, namely, the stellar brand, the Defendant had adopted a completely different "S". It cannot be a matter of coincidence that the stylized "S" adopted in the present case is a substantial copy to the boomerang device of the Plaintiff. Mr. Kadam prima facie appears to be correct in his submission when he says that the factum of launch of the Defendant's impugned pack in the same market with a strikingly similar artistic label is itself indicative of the Defendant's ill intent. Prima facie and looking at the popularity of the FLAKE REFINED TASTE Pack of the Plaintiff in the market (North East India and West Bengal) and where the Defendant has also launched the impugned pack, it appears that the Defendant wants to boost its sales by coming as close as possible to the FLAKE REFINED TASTE Pack of the Plaintiff. Prima facie and looking at the popularity of the FLAKE REFINED TASTE Pack of the Plaintiff in the market (North East India and West Bengal) and where the Defendant has also launched the impugned pack, it appears that the Defendant wants to boost its sales by coming as close as possible to the FLAKE REFINED TASTE Pack of the Plaintiff. In these circumstances, I have no hesitation in coming to the conclusion that the Plaintiff has made out a strong prima facie case for an injunction on the ground of infringement of copyright. 33. Even as far as the relief for passing off that is sought by the Plaintiff, the reasons given above would equally apply. It is not in dispute that the Plaintiff FLAKE range of cigarettes command enormous goodwill and reputation. This fact is borne out by its sales, where since 1994, the Plaintiff has enjoyed gross sales to the tune of Rs. 50,475 crores in respect of cigarettes sold under its FLAKE mark. In 2018-19 alone, cigarettes sold under the FLAKE mark have enjoyed gross sales of approximately Rs. 6,603.64 crores. Since adoption of the FLAKE REFINED TASTE Pack, in 2018-19 alone, the Plaintiff has enjoyed gross sales of Rs. 3,675 crores in relation thereto. All this material clearly goes to show that the Plaintiff commands and enjoys an enormous amount of goodwill and reputation in the market. In testing whether the Defendant's impugned pack/trade dress and the cigarette dress is deceptively similar, the Court must see what are the salient features of the marks; that they are remembered by general impressions or by some significant detail, rather than by a photographic recollection; overall similarity; have to be viewed and looked at from the view and first impression of a person of average intelligence and imperfect recollection; the marks must be compared as a whole, microscopic examination being impermissible; and that overall similarity is sufficient to make out a case for passing off. The purchaser must not be put in a state of wonderment. If these tests are applied to the present case, and for the reasons also given by me for infringement of copyright and for the sake of brevity are not being repeated once again, I find that the Plaintiff has also made out a prima facie case for an injunction against passing off the products of the Defendant as that of the Plaintiff. 34. 34. Having said this, and considering we are at the ad-interim stage, I am today not going into the plea of the Plaintiff or the Defendant regarding whether the word FLAKE is descriptive in nature or otherwise. I make it clear that even though I have recorded detail submissions of the parties in this regard, I am not going into this issue at this stage considering that we are only at the ad-interim stage and in view of my reasons given earlier, the rights of the Plaintiff are adequately protected. This issue is expressly kept open to be agitated by both parties when the interim application is heard finally. 35. In view of the foregoing discussion, I am of the view that the Plaintiff has made out a strong prima facie case. The balance of convenience also lies in favour of the Plaintiff and grave prejudice would be caused to the Plaintiff if ad-interim reliefs are not granted for infringement of copyright and passing off. In these circumstances, there shall be ad-interim relief in terms of prayer clauses (a) and (b) which read thus: (a) Pending hearing and final disposal of the Suit, a temporary order and injunction be granted restraining the Defendant, its employees, agents, assigns, distributors, stockists and/or dealers and all others claiming through or under the Defendant from infringing the Plaintiff's copyright in its FLAKE PACK depicted at Exhibit H by reproducing, publishing or using the infringing Impugned Pack at Exhibit K or by use and, reproduction and/or publication of any other label which is a colorable imitation and/or identical and/or substantially similar to the Plaintiff's artistic work comprising the FLAKE PACK (at Exhibit H) in any manner whatsoever; (b) Pending the hearing and final disposal of the Suit, a temporary Order and injunction be granted restraining the Defendant, its employees, agents, assigns, distributors, stockists and/or dealers and all other claiming through or under the Defendant from manufacturing, selling, distributing, advertising, displaying or stocking packets and/or cigarettes and/or using in relation to the Defendant's goods: i. The Impugned Pack depicted at Exhibit K and/or any other pack deceptively similar and/or identical to the Plaintiff's FLAKE PACK depicted at Exhibit H in any manner whatsoever so as to pass off the Defendant's goods of the Plaintiff and/or emanating from the Plaintiff; ii. The Defendant's impugned cigarette stick trade dress depicted at Exhibit N and/or any other pack and/or cigarettes deceptively similar to the Plaintiff's cigarette trade dress (depicted at Exhibit M) in any manner whatsoever so as to pass off the Defendant's goods as the goods of the Plaintiff and/or emanating from the Plaintiff;" 36. The Plaintiff is at liberty to file an affidavit-in-rejoinder to the reply filed by the Defendant. If it chooses to do so, the same shall be filed in the Registry of this Court within a period of four weeks from today and a copy of the same shall be served upon the advocate for the Defendant. The interim application shall come up for hearing and final disposal in due course as per its turn. 37. At this stage and after the order was pronounced, Mr. Kamat, the learned counsel appearing on behalf of the defendant applied for a stay of the operation of this order. I have already recorded in paragraph 1 that this matter was heard on 2nd March, 2020, 3rd March, 2020, 4th March, 2020 and the arguments were concluded on 5th March, 2020. Thereafter the matter was posted on 23rd March, 2020 for passing orders. However, since the Covid-19 Pandemic interjected, the Court's normal working was disrupted and orders could not be passed on 23rd March, 2020. It is only in these circumstances that the order is being pronounced today. After having come to a prima facie conclusion that the defendant is guilty of copyright infringement as well as passing off, I do not think that this matter warrants any stay. The request for stay of the operation of this order is, therefore, rejected.