Calcutta High Court
La Opala R.G. Ltd vs Cello Plast & Ors on 16 May, 2018
Author: Soumen Sen
Bench: Soumen Sen
GA No.490 of 2018
CS No.27 of 2018
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
ORIGINAL SIDE
LA OPALA R.G. LTD.
-Versus-
CELLO PLAST & ORS.
Appearance:
Mr. Pratap Chatterjee, Sr. Adv.
Mr. Sayantan Bose, Adv.
Mr. Abhiroop Dhar, Adv.
Mr. Tanmoy Ray, Adv.
Mr. Manoj Gupta, Adv.
Mr. Kajal Sinha, Adv.
...for the plaintiff.
Mr. Siddhartha Mitra, Sr. Adv.
Mr. Goutam Kumar Ray, Adv.
Mr. Sayan Roychowdhury, Adv.
Mr. Domingo Gomes, Adv.
Mr. Sourav Jana, Adv.
Mr. T.K. Jana, Adv.
...for the defendant no.1.
BEFORE:
The Hon'ble JUSTICE SOUMEN SEN
Date : 16th May, 2018.
The Court : This is an action in passing off. The plaintiff
is well-known and well-reputed manufacturer of opal glass
tableware and is in business since 1980s. The petitioner has
significant presence in the market. The products of the
petitioner have innovative shapes, configuration, surface patterns
with artistic get up. The products having this artistic shapes
and configurations and surface patterns are imprinted with
artistic work conceptualised by the petitioner and the products
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with their distinctive shape, configuration, surface pattern and
artistic work on it form a distinctive identify of their own,
originating from the petitioner and as a whole forms a trade dress
of the product. The petitioner has referred to various trade
dresses and/or marks sold under Diva Classique and Ivory mark.
The four separate trade dresses have their brands namely as
Mystrio Black, Crimson Bloom, Golden Fall and Dazzle Purple. The
shape, surface pattern, artistic getup on the products of all the
four brands constitute a trade dress and/or has acquired the
status of a mark. The products bearing the said trade dresses are
identified as a mark by people common to the trade and public at
large and it is the said trade dresses by which the people
identify the products. The petitioner conceived the said trade
dresses and/or the marks, namely, the Dazzle Purple in 2009, the
Mystrio Black in 2010, Golden Fall in 2012 and the Crimson Bloom
in 2014. The shape, motif, art work, pattern, design and
packaging of the product of the petitioner have been created
and/or conceptualised and/or invented by the petitioner. The
petitioner has been using the same since the date of conception of
the said designs and all the brands in commercial manner
continuously and extensively since the date of conception and
there was no prior use of the same by any third party to that of
the conception and/or the use of the said motif, art work, design,
packaging and/or pattern and/or shape of the product of the
petitioner.
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The petitioner has applied for registration of the said
trade dress as shown in Annexure-E, F, G and H of the petition
respectively for registration of the same before the Trade mark
Registry in order to acquire statutory right of the said dress
and/or the mark. The said trade dress and/or the mark are
distinctive feature of the product of the petitioner. The said
applications for registrations of the said trade dress and/or the
said mark as shown in Annexures-E, F, G and H of the petition
respectively are pending before the Trade Mark Registry. The said
aesthetic design, motif, ark work is a trade dress and is an
unique creation of the petitioner and of no one else and the same
are recognized by the people common to the trade and public at
large as that originating from the petitioner only.
The petitioner has disclosed the annual sales figures of
the products of the petitioner for the said four products since
2013 which runs into crores. The petitioner has also disclosed
documents to show that the trade dress and/or mark as shown in
Annexures-E, F, G and H respectively have also been advertised
through all the publicity media, in various exhibitions and other
journals throughout the trade channel and the general public both
within and outside the jurisdiction of this Court. The annual
advertisement and promotional expenses of the petitioner have also
been disclosed in this application.
The petitioner contends that in July, 2017 the
representative of the petitioner while visiting one of its
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distributors and/or sellers of their goods in the locality of the
respondent nos.2 and 3 came across the products of the respondent
no.1 at the business premises of the respondent nos.2 and 3. The petitioner contends that the respondent no.1 along with the respondent nos.2 and 3 are surreptitiously seeking to represent the trade dress and/or the shape, pattern, artistic getup, motif and/or the design on their products as a mark for their product which is also identical and/or deceptively similar to that of the trade dress and/or the mark and/or the motif and/or the pattern and/or the artistic getup and/or the design of the product as shown in Annexures-E, F, G and H respectively of the product of the petitioner. The petitioner has produced before this Court documents to show that the infringing products were lying on 5th July, 2017.
Mr. Pratap Chatterjee, learned Senior Counsel appearing for the petitioner has produced before this Court the products of the petitioner as well as that of the respondent no.1 to show that an unwary customer with imperfect recollection would identify the product of the respondent as that of the petitioner.
That the petitioner's products were in market prior to the infringing materials possibly could not be disputed at this stage.
Both the products on visual examination appear to be deceptively similar, if not identical. The infringing products 5 are slavish imitation of that of the petitioner and cannot be said to be common to trade.
Mr. Siddhartha Mitra, learned Senior Counsel representing the respondents has relied upon a Division Bench judgement of the Delhi High Court in Kellogg Company vs. Pravin Kumar Bhadabhai & Anr. reported in 1996(16)PTC 187(Del) to submit that when these kinds of products are sold in a carton, the goods are identified with the name of the manufacturer prominently displayed in the carton and not the product individually. It is submitted that the customers would buy such products on the basis of the name of the manufacturer and not of the product. These kind of goods are not purchased by ordinary people. The purchasers are aware of the brand. Mr. Mitra has produced the carton to show that the products are not sold in pieces.
There cannot be any doubt that the cartons produced by the defendants prominently displays the name of the defendant in relation to the product but the fact remains that the products can also be sold as in pieces and separately. The documents disclosed in this proceedings show that the petitioner has purchased such products separately. All the products are not sold in carton. In any event it is no defence that since the infringing articles are sold in cartons there is no infringement. In an action for passing off the Court is regarded to protect the 'trade mark' which is an intellectual property developed by the plaintiff by its own skill and popularised it over a period of time. Since this 6 Court is of the prima facie view that there are lot of similarity in the trade dress between the two products if not absolute identity and the petitioner is able to make out a prima facie case showing that the infringing products are slavish imitation of that of the plaintiffs, there shall be an order in terms of prayer (b) of the application. The interim order shall remain valid for a period of twelve weeks from date.
Let affidavit-in-opposition be filed on or before 15th June, 2018; reply thereto, if any, be filed 22nd June, 2018. The matter will appear as 'adjourned motion' fairly at the top on 25th June, 2018.
The infringing materials produced before this Court shall be kept in a carton duly sealed with the Registrar, Original Side to be produced at the time of hearing.
The defendant shall communicate this order to all its stockists and franchises by Friday i.e., 18th May, 2018.
Mr. Mitra, learned Advocate for the respondent prays for stay of operation of the order. The same is considered and rejected.
(SOUMEN SEN, J.) A/s.