Madras High Court
Dart Industries Inc vs Techno Plastic Industries on 23 November, 2022
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
C.S.No.828 of 2015
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Judgment reserved on 01.09.2022
Judgment pronounced on 23.11.2022
CORAM
The Hon'ble Mr. Justice SENTHILKUMAR RAMAMOORTHY
Civil Suit No.828 of 2015
1. Dart Industries Inc.
(a Corporation founded under the
Laws of Delaware, U.S.A.)
14901, South Orange Blossom Trail,
Orlando, Florida 32837, U.S.A.
Rep. by its constituted Attorney
Ms. Kimberly Weate
2. Tupperware India Pvt. Ltd.
204-206, Tolstoy House,
15, Tolstoy Marg,
New Delhi, 110 001
Rep. by its Authorized Signatory,
Ms.Vandita Batta ... Plaintiffs
vs.
Techno Plastic Industries
210/10, Rampur Jattan,
(Dhakewala) Nahan Road,
Moginand, Kala Amb.
Distt.-Sirmour
Himachal Pradesh ... Defendant
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https://www.mhc.tn.gov.in/judis
Page No.1 of 52
C.S.No.828 of 2015
The suit is filed under Order IV Rule 1 of High Court O.S. Rules
read with Order VII Rule 1 of CPC, Sections 27, 134 & 135 of the Trade
Marks Act, 1999, praying to grant Judgment and Decree on the following
terms: (a) A permanent injunction restraining the Defendant, its proprietors
or partners or director as the case may be, their sister concerns, associates,
assigns in business, distributors, stockists dealers, agents and servants from
manufacturing, selling, offering for sale, advertising, directly or indirectly in
any manner including through websites or other online shopping portals
dealing in plastic products/lunch bag in any size bearing the impugned trade
dress and get-up or any other trade dress and get-up as may be that are
fraudulent or obvious imitation of the Plaintiffs' trade dress and get-up
amounting to passing off of Plaintiffs' products in any manner whatsoever;
(b) A decree for delivery up of the impugned goods of the Defendant
including their moulds along with mould drawings, CNC (Computer
Numerical Control) files, dies, blocks, plates and engraving printed
materials such as brochures or other promotional material or any other
material bearing or depicting the impugned trade dress and get up, to an
authorized representative of the Plaintiffs for destruction; (c) An order for
rendition of accounts of profits illegally earned by the Defendant and a
decree for an amount so found due or in the alternative; (d) The defendant
be ordered to pay to the Plaintiffs a sum of Rs.20,00,000.00 (Rupees twenty
lakhs only) towards compensatory and punitive damages towards the illegal
activities by the defendant; and (e) an order for costs of the proceedings.
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https://www.mhc.tn.gov.in/judis
Page No.2 of 52
C.S.No.828 of 2015
For Plaintiffs : Mr.Hemant Singh
for M/s.Arun C.Mohan,
Ms.Mamta R.Jha and
Mr.Keerthikiran Murali
For Defendant : Mr. Satish Parasaran, Senior Advocate
for M/s.R.Sathish Kumar and
Ms.V.Priya
JUDGMENT
Fascinating questions relating to the ambit of trade dress protection arise for consideration in this case, in the factual context of three products of the plaintiffs vis-a-vis three corresponding products of the defendant. Even more fundamentally, the boundaries and contours of the common law remedy of passing off are tested and challenged by entailing answers to questions such as: what is the impact of copying on a passing off action?
2. The plaintiffs are manufacturers of containers used in the kitchen to store food products. These products are sold under the brand name 'Tupperware'. The defendant is also a manufacturer of containers used for storage of food products. The defendant's products are sold under the brand name 'Signoraware'. The plaintiffs have brought this action seeking remedies in respect of alleged passing off by the defendant in relation to the _____________ https://www.mhc.tn.gov.in/judis Page No.3 of 52 C.S.No.828 of 2015 three products namely, MM Square, Best Lunch Bag and Spice Shakers. Upon the suit being instituted, an order of ad interim injunction, as prayed for, was granted on 04.11.2015. The interim application was thereafter allowed on 21.10.2016. The matter was carried in appeal by the defendant before the Division Bench in O.S.A.No.249 of 2016. By judgment dated 25.04.2017, the appeal was allowed and parties were directed to maintain status quo ante.
3. In the plaint, the plaintiffs stated as follows: The first plaintiff is a subsidiary of Tupperware Brands Corporation, Florida, U.S.A. Tupperware Brands Corporation is a multi-brand, multi-category, direct sales company. The first plaintiff is the owner of intellectual property rights in the Tupperware products. The second plaintiff was incorporated in the year 1996 as a subsidiary of the first plaintiff. It carries on the business inter alia of distribution and marketing of food grade plastic storage containers and other products. All Tupperware products are made from safe, non-toxic and non-carcinogenic materials. The turnover from the sale of Tupperware products by the second plaintiff in the Indian market increased from Rs.18.83 crore in the financial year 1998-1999 to Rs.496.68 crore in 2013- 2014. Similarly, the advertising and sales promotion expenditure increased _____________ https://www.mhc.tn.gov.in/judis Page No.4 of 52 C.S.No.828 of 2015 from Rs.1.44 crore in the financial year 1998-1999 to Rs.65.89 crore in the financial year 2013-2014.
4. The plaintiffs asserted that the overall get-up of their products are characterized by the use of a combination of features which impart a distinctive get up to the products as distinguished from other products in the market. In paragraph 16 of the plaint, the plaintiffs have set out the distinctive features of the relevant products, namely, MM Square, Best Lunch Bag and Spice Shakers (individually, the Plaintiffs' Suit Product 1, 2 and 3, respectively, and collectively, the Plaintiffs' Suit Products).
5. The plaintiffs canvassed the grievance that the defendant is intentionally targeting specific products of the plaintiffs and has fraudulently imitated their get up and trade dress by blatantly reproducing the same with impunity. In order to establish the above assertion, the plaintiffs have set out comparative representations of the corresponding products of the defendant. After stating that the plaintiffs became aware of the impugned products in the first week of August 2015, the present suit is filed.
6. The defendant denied the above assertions of the plaintiffs in the written statement. The defendant stated that it carries on business in _____________ https://www.mhc.tn.gov.in/judis Page No.5 of 52 C.S.No.828 of 2015 Himachal Pradesh and that the first plaintiff is a foreign company which has a subsidiary based in New Delhi. After adverting to previous litigation between the parties and alleging suppression thereof, the defendant stated that the plaintiffs were aware of the impugned products in May 2011 since images of these products were carried in the advertisement, which was relied upon in C.S.(O.S.)No.2457 of 2011.
7. With regard to the sales turnover mentioned by the plaintiffs, the defendant stated that the said sales turnover pertained to the entire product range of the plaintiffs and cannot be relied upon in support of a claim relating to the Plaintiffs' Suit Products. The same defence was raised in relation to the advertising expenditure also. In response to the alleged distinctive features that were set out by the plaintiffs, the defendant stated that the said features are not distinctive. According to the defendant, there are several other manufacturers in the market who use the same get up as that of the plaintiffs. By asserting that there is no evidence of secondary significance, as regards the trade dress or get up of the Plaintiffs' Suit Products, the defendant stated that the plaintiffs are not entitled to protect the same.
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8. The defendant pointed out that the plaintiffs had not filed any evidence of design registration in relation to the Plaintiffs' Suit Products. The defendant also stated that its registered trademark 'Signoraware' is clearly and conspicuously depicted on all the products. The defendant pointed out that each of its products is sold in a cardboard container with the trademark 'Signoraware' clearly printed thereon. This was also relied upon as a method of distinguishing between the Plaintiffs' Suit Products and those of the defendant.
9. A rejoinder statement was filed by the plaintiffs. In the rejoinder statement, the plaintiffs asserted that the defendant's dishonest conduct warrants an injunction. In paragraph 14 of the rejoinder, the plaintiffs set out the annual sales turnover from the financial year 2004-2005 to the financial year 2014-2015 in respect of the Plaintiffs' Suit Products. The plaintiffs asserted that the distinctiveness of their products is also established by the fact that the defendant has copied the said features exactly. The assertion of the defendant that its products are sold in cardboard containers was denied for want of knowledge and proof. Without prejudice, the plaintiffs stated that the sale in such packaging is insufficient to distinguish the products _____________ https://www.mhc.tn.gov.in/judis Page No.7 of 52 C.S.No.828 of 2015 because the products of the defendant were displayed openly on shelves at retail outlets.
10. Based on these pleadings, the Court framed the following issues on 05.07.2019:
1. Whether the Court has jurisdiction to try this suit?
2. Whether the plaintiffs are the proprietors of the suit products with respect to trade dress and get up thereof?
3. Whether the defendant is guilty of passing off their goods as those of the plaintiffs' goods?
4. Whether the plaintiffs are entitled for rendition of accounts of profits earned by the defendant?
5. Whether the plaintiffs are entitled to recover a sum of Rs.20 Lakhs as compensatory and punitive damages from the defendant as claimed?
6. Whether the plaintiffs are guilty of suppression of material facts and particulars in their plaint?
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7. Whether there are other manufacturers in the market using similar trade dress/get up of the products in the present suit?
8. Whether the plaintiffs' reliefs are liable to be dismissed on account of delay, latches and acquiescence?
11. The plaintiffs examined four witnesses. Mr.Nitin Malhotra, Associate Director – Product Marketing, was examined as PW1. In course of examination-in-chief of PW1, 13 documents were exhibited as Exs.P1 to P13. In addition, the Plaintiffs' Suit Products were exhibited as MO1 series and the Defendant's Suit Products as MO2 series. Mr.Nimit Jain, Head – Management Accounting and Finance, was examined as PW2. In course of the examination-in-chief of PW2, Ex.P14 series and Ex.P15 were exhibited. Ms.Selvi Jyothi Kumar was examined as PW3. Ms.P.Sankareswari was examined as PW4. Each of the above witnesses was cross-examined by learned counsel for the defendant. The defendant examined Mr.Vijay Kumar Bansal, authorized signatory, as DW1. In course of the examination-in-chief of DW1, 10 documents were exhibited as Exs.D1 to D10. DW1 was cross- examined by learned counsel for the plaintiffs.
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12. Oral arguments on behalf of the plaintiffs were advanced by Mr.Hemant Singh, learned counsel, assisted by Ms.Mamtha R Jha, Mr.Arun C.Mohan and Mr.Keerthi Kiran Murali, learned counsel; and on behalf of the defendant by Mr.Satish Parasaran, learned senior counsel, assisted by Mr.Sathish Kumar and Ms.V.Priya, learned counsel.
13. Mr.Hemant Singh opened his submissions by drawing reference to the Plaintiffs' Suit Products and the corresponding impugned products of the defendant (collectively, the Defendant's Suit Products). With reference to the Plaintiffs' Suit Products, he pointed out that the brand name of Tupperware is understated and inconspicuous. He contended that this is typical of Tupperware products because the distinctive features of the products are the principal source identifier.
14. He first dealt with the plea of laches and acquiescence on the basis of the advertisement of 2011. By pointing out that the casseroles were the focus of the said advertisement, he stated that the thumbnail sketches of the Defendant's Suit Products are wholly inadequate for purposes of initiating an action. Before initiating the present action, the plaintiffs carefully inspected the Defendant's Suit Products, compared the same with the Plaintiffs' Suit Products and initiated proceedings only upon being _____________ https://www.mhc.tn.gov.in/judis Page No.10 of 52 C.S.No.828 of 2015 satisfied that the defendant had slavishly copied the unique combination of features of each of the three products. He pointed out that the distinctiveness of the trade dress and get up does not lie in any one element but in the combination of shape, colour combination, configuration, texture of material, etc.
15. By drawing reference to the evidence of PW1, he submitted that the defendant had alternative design choices. Once it is clear that the defendant had alternative design choices, he contended that the plaintiffs are entitled to the relief prayed for and cannot be denied on the ground of functionality. On the sales turnover of the Plaintiffs' Suit Products, he referred to the evidence of PW2. In order to establish that the sale of the impugned products by the defendant caused actual loss, he referred to the evidence of PW3 and PW4.
16. In order to substantiate the contention that the entire product may qualify for trade dress protection, he relied upon the following judgments:
(1) Faber Castell v. Cello Pens (Faber Castell), 2016 (65) PTC 76 (Bom), particularly paragraphs 10, 12, 15, 17, 20 and 26 thereof.
_____________ https://www.mhc.tn.gov.in/judis Page No.11 of 52 C.S.No.828 of 2015 (2) Whirlpool of India v. Videocon (Whirlpool), 2014 (60) PTC 155 (Bom), particularly paragraphs 30, 34, 35, 39, 50, 54 and 57 thereof.
(3) M.R.F. Limited v. Metro Tyres (MRF), 1990 (10) PTC 101 (Mad), particularly paragraphs 26 to 32, 43, 44, 78, 91, 103 to 105 and 108 thereof.
(4) Apollo Tyres v. Pioneer Trading(Apollo Tyres), 2017 (72) PTC 253 (Del), particularly paragraphs 75 to 79, 81, 82, 87 to 93 thereof.
17. By pointing out that he is relying upon the sales turnover only of the Plaintiffs' Suit Products, learned counsel submitted that the get up and trade dress are inextricably linked to the products and, therefore, the turnover represents the value of the trade dress and get up. With regard to turnover, he referred to the cross-examination of PW1, at pages 174, 176 and 180 of the typed set of pleadings, and the cross-examination of PW2 at pages 191 and 192. By referring to the cross-examination of PW1, he pointed out that PW1 had confirmed that the plaintiffs undertake direct sales but that their sellers also sell through retail outlets and also through e-tail. By referring to the judgment in Baker Hughes v. Hiroo Khushalani of the Delhi High Court and Supreme Court, respectively, which were reported in _____________ https://www.mhc.tn.gov.in/judis Page No.12 of 52 C.S.No.828 of 2015 1998 (18) PTC 580 and 2004 (29) PTC 153, respectively, he relied upon the principle of initial interest confusion.
18. In order to establish that the defendant had copied the plaintiffs' design, he referred to the cross-examination of DW1 on 03.09.2019 at pages 218 to 220 and 227 to 228 of the pleadings typed set and contended that DW1 admitted that no efforts were undertaken to design the Defendant's Suit Products, and that this established that the defendant had fraudulently imitated the plaintiffs' trade dress.
19. In order to refute the contention that the plaintiffs are not entitled to protection on the ground of publici juris, he relied upon the following judgments:
(1) National Bell v. Metal Goods Mfg. Co., AIR 1971 SC 898, particularly paragraph 17.
(2) Himalaya Drug Co. v. SBL (53) PTC 1 (Del.) (DB), particularly paragraph 49.
(3) Pankaj Goel v. Dabur India Ltd. 2008 (38) PTC 49, particularly paragraphs 22 and 23.
20. Learned counsel concluded his submissions by referring to and relying upon the following judgments for the proposition that an injunction must follow if the Court finds that the defendant acted _____________ https://www.mhc.tn.gov.in/judis Page No.13 of 52 C.S.No.828 of 2015 dishonestly: (1) Ishi Khosla v. Anil Aggarwal, 2007 (34) PTC 370; (2) Midas Hygiene v. Sudhir Bhatia (2004) 3 SCC 90; and (3) T.V.Venugopal v. Ushodaya Enterprises (2011) 4 SCC 85.
21. Mr.Satish Parasaran, learned senior counsel, commenced his submissions by stating that the law sets a high threshold for the protection of the entire product as trade dress and that the plaintiffs failed to meet such threshold. For such purpose, he submitted that there should be strong evidence of secondary significance attached to such trade dress. In this case, he submitted that no evidence of such secondary significance was adduced. He further submitted that there is no common thread running across the Plaintiffs' Suit Products and that in the absence thereof, the plaintiffs cannot claim distinctiveness.
22. The next contention of learned senior counsel was that the defendant's product is sold with packaging and that the defendant's trade mark 'Signoraware' is conspicuously depicted on the products and packaging. This helps in distinguishing the defendant's products from those of the plaintiffs. He also pointed out by referring to the proof affidavit of PW1, particularly paragraph-32 thereof, that there is substantial difference _____________ https://www.mhc.tn.gov.in/judis Page No.14 of 52 C.S.No.828 of 2015 in the prices of the plaintiffs' and defendant's products. His next contention was that the trade channels are completely different because the plaintiffs' products are sold through direct sale to customers, without using wholesale or retail channels, which is also referred to as D2C. By contrast, he pointed out that the defendant's products are sold through traditional wholesale and retail channels. The last submission was that the plaintiffs' alleged advertising material is in the form of a catalogue dealing with all the plaintiffs' products. The said catalogue is targeted at particular households through the direct sales team of the plaintiffs. Since it does not reach a sizable or wide audience, he submitted that it cannot be construed as advertising material for purposes of establishing reputation.
23. In support of these contentions, he relied upon the judgment of the House of Lords in London Taxi Corporation Ltd v. Frazer-Nash Research Ltd.(London Taxi), (2016) EWHC 52 (Ch), wherein trademark protection was declined in respect of the claim made by the makers of London Taxi. With reference to the judgment in Reckitt & Colman Products Limited v. Borden Inc. & Others (Jiff Lemon),[1990] R.P.C. 341, he pointed out that the claim for shape protection was in respect of the lemon shaped container and that this was distinct from the goods (lemon juice). He also _____________ https://www.mhc.tn.gov.in/judis Page No.15 of 52 C.S.No.828 of 2015 relied on the following judgments with regard to the scope of trade dress protection:
(1) Societe Des Produits Nestle SA v. Cadbury UK Ltd.(Kitkat
1), Court of Appeal (2016) EWHC 50 (Ch); (2) Societe Des Produits Nestle SA v. Petra Foods Limited (Kitcat 2)(2016) SGCA 64;
(3) Turtle Wax, Inc. v. First Brand Corporation (Turtle Wax), 781 F. Supp. 1314 (N.D.III. 1991);
(4) Spex Inc. v. Joy of Spex Inc., 847 F. Supp.567 (1994) (N.D.Illinois) ;
(5) Hodgkinson Corby Ltd. v. Wards Mobility Services Ltd. (Roho)[1994] Weekly Law Reports 1564;
(6) Payton & Co. v. Snelling Lampard & Co. (Payton)(1901) A.C.308;
(7) Saxlehner v. Wagner (Saxlehner), 2016 US 375 (1910); (8) George East Housewares Ltd. v. Fackelmann Gmbh & Co., (2016) EWHC 2476 (IPEC);
(9) Duraco Products v. Joy Plastic Enterprises(Duraco), 32 USPQ 2d. 1724
24. By way of rejoinder, Mr.Hemant Singh submitted that the defendant proceeded on the misconception that the plaintiffs were claiming shape mark registration. Learned counsel reiterated that the plaintiffs claimed protection for the get up and trade dress and not for a shape mark. _____________ https://www.mhc.tn.gov.in/judis Page No.16 of 52 C.S.No.828 of 2015 By referring to the judgments that were cited by learned senior counsel for the defendant, learned counsel for the plaintiffs pointed out that all the judgments are distinguishable. By drawing reference to Payton, he pointed out that the Court entered a finding that the features are common to trade. Similarly, in Saxlehner, he pointed out that the Court recorded that Hunyadi water is distinguishable. As regards the Kitkat cases, he pointed out that the cases pertained to the registration of the shape of the Kitkat chocolate as a trademark. With regard to London Taxi, he pointed out that the Court entered findings that taxis in London are required to conform to a particular design and appearance. Moreover, the Court noticed that taxis are identified by conventional trademarks such as the badges of the company in the front and at the rear, whereas, in the present case, the trademark is subdued. As regards Turtle Wax, he submitted that the case pertained to trademark infringement of the trade dress of the plaintiff's super-premium automobile polishes. The Court declined interim relief on the ground that the features claimed to be trade dress were common to trade.
25. After distinguishing the judgments on which the defendant relied, learned counsel for the plaintiffs placed reliance on additional judgments. By referring to paragraphs 31.1, 31.2 and 32.1 of the judgment _____________ https://www.mhc.tn.gov.in/judis Page No.17 of 52 C.S.No.828 of 2015 of the Hon'ble Supreme Court in S.Syed Mohideen v. P.Sulochana Bai, (2016) SCC 683, he submitted that it was held therein that passing off can be claimed even in respect of an unregistrable mark. By relying on the judgment of the Full Bench of the Delhi High Court in Mohan Lal v. Sona Paints (FB) (Mohan Lal), 2013 (55) PTC 61, particularly paragraphs 20.2, 22, 22.1, 22.3, 22.4, 22.8, 32.1 & 34 thereof, he submitted that the conclusion of the Full Bench that protection may be granted both under design law and the common law of passing off was upheld by the subsequent larger Bench in Carlsberg Breweries v. Som Distilleries(Carlsberg), 2019 (77) PTC 1 Del FB. He also relied on the judgment of the Supreme Court in Ruston & Hornby Ltd. v. Z Engineering, AIR 1970 SC 1649, on the law of passing off. The judgment of the Bombay High Court in Gorbatschow Wodka v. John Distilleries Ltd.(Gorbatschow Wodka), 2011 (47) PTC 100, was placed for consideration. He also relied upon the judgments in Eicher Goodearth v. Krishna Mehta, 2015 (63) PTC 444 (Del); and Skechers Inc. & Ors. v. Pure Play Sports (2016) 67 PTC 324 and concluded by reiterating that a case is made out to restrain the defendant from unjustly capitalizing on the plaintiffs' goodwill and reputation by slavishly copying the plaintiffs products.
_____________ https://www.mhc.tn.gov.in/judis Page No.18 of 52 C.S.No.828 of 2015 Discussion, analysis and findings
26. Out of the eight issues framed by the Court, the first issue pertains to jurisdiction. Therefore, the said issue is considered first. The defendant had referred to the two earlier suits filed before the Delhi High Court by the plaintiffs as the basis to assert that the suit is not maintainable before this Court. The said suits pertain to different products and do not arise out of the same cause of action. The evidence on record, especially Exs.P8, P9 and D6 series, reveal that the products of the plaintiffs and defendants are sold within the territorial limits of this Court. In course of cross-examination, DW1 admitted that the impugned products are sold in Chennai. Therefore, it is clear that the cause of action has arisen at least partly within the jurisdiction of this Court. In addition, the plaintiffs filed an application, A.No.6708 of 2015, and obtained leave to sue under order dated 06.10.2015. The defendant did not seek to revoke leave. On this issue, the plaintiffs relied upon the judgment of a Division Bench of this Court in Smithline Fresh Laboratories & Others v. Indoco Remedies 2001 (21) PTC 557 and the said judgment also supports the claim of the plaintiffs. Therefore, Issue No.1 is decided in favour of the plaintiffs and against the defendant.
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27. Issue No.6 pertains to alleged suppression of material facts. This issue was framed in view of the allegation by the defendant that the facts pertaining to the earlier suits were not disclosed. However, in paragraph 31 of the plaint, the plaintiffs disclosed the earlier suits. In fact, the products in respect of which C.S. (O.S.) No.589 of 2005 was filed were exhibited as Ex.P12 and the relevant products in C.S.(O.S.) No.2457 of 2011 were exhibited as Ex.P13. In the face of the above pleadings and evidence, the allegation of suppression is unfounded. Therefore, Issue No.6 is also decided in favour of the plaintiffs.
28. Issue No.8 pertains to delay, laches and acquiescence. The above issue was framed on account of the defendant's assertion that the plaintiffs became aware of the impugned products in 2011. The relevant advertisement dated 29.05.2011 was marked as Ex.D4. The said advertisement contains the images of the impugned products in thumbnails. The plaintiffs contended that the advertisement was focused on a different product, namely, a casserole, which forms the subject of C.S.(O.S).No.2457 of 2011. They also relied upon the judgments in Bharath Glass Tube Limited v. Gopal Glass Works, 2008 (37) PTC 1 (SC) and Vikas Jain v. Aftab Ahmad, 2008 (37) PTC 288 (Del), to contend that it is not possible to _____________ https://www.mhc.tn.gov.in/judis Page No.20 of 52 C.S.No.828 of 2015 draw any meaningful conclusion with regard to passing off without physically examining the impugned products. After stating in paragraph 35 of the plaint that the impugned products were purchased from the market at Chennai, the suit was instituted. There is absolutely no evidence of acquiescence on the part of the plaintiffs. The defendant is also unable to place any evidence that the plaintiffs had noticed the products of the defendant other than in the form of the advertisement issued on 29.05.2011. The plaintiffs cannot be non-suited on the ground of delay when the alleged delay is entirely based on the plaintiffs' knowledge of the impugned products from thumbnails sketches in the advertisement of 29.05.2022. Therefore, Issue No.7 is decided in favour of the plaintiffs and against the defendant.
29. Issue No.2 pertains to whether the plaintiffs are the proprietors of the trade dress and get up in relation to the Plaintiffs' Suit Products. Issue No.7 pertains to whether any other manufacturers of similar products use the same trade dress. The facts are not in dispute. The plaintiffs do not claim design registrations in respect of any of the three products. They do not claim that the trade dresses of these three products are registered as trade marks either. Instead, the plaintiffs assert that the products and the trade _____________ https://www.mhc.tn.gov.in/judis Page No.21 of 52 C.S.No.828 of 2015 dress cannot be separated and that the combination of features in each product is distinctive and entitled to protection under the law of passing off. Trade dresses fall into two broad categories: product/service packaging trade dress, where the product/service and trade dress are distinct and capable of demarcation; and product configuration trade dress, where the product and trade dress cannot be demarcated. This case deals with the latter category of trade dress. Therefore, Issue Nos.2 and 7 should be combined and re-framed as: whether the plaintiffs are entitled to protect the product configuration trade dress of the Plaintiffs' Suit Products? Issue No.3 relates to whether the defendant is guilty of passing off. These three issues are dealt with jointly. In order to deal with these issues, the nature and breadth of protection under the Trade Marks Act 1999 (the Trade Marks Act) and under common law should be examined from the perspective of deciding whether the entire product can be construed as trade dress and, if so, under what circumstances would the entire product be protected as trade dress under common law.
30. The Trade Marks Act defines 'mark' widely and inclusively in Section 2(1)(m) thereof. The definition includes a device, brand, heading, label, shape of goods, combination of colours, etc. A trade mark is defined _____________ https://www.mhc.tn.gov.in/judis Page No.22 of 52 C.S.No.828 of 2015 separately under Section 2(1)(zb) as a mark capable of being represented graphically and, more importantly, capable of distinguishing the goods or services of the holder of the trade mark from those of others. Thus, unless a mark can perform the function of a source identifier, the mark cannot be protected as a trade mark. The general rule regarding distinctiveness is clear. A mark is distinctive and capable of being protected if it is either inherently distinctive or has acquired distinctiveness. As regards shape marks, Section 9(3) of the Trade Marks Act bars registration of: (a) the shape of goods which results from the nature of goods themselves; or (b) the shape of goods which is necessary to obtain a technical result ; or (c) the shape of goods which gives substantial value to the goods. The object and purpose of Section 9(3) is to ensure that no one claims proprietorship over the basic shapes of goods, which should be available for use by the public. Subject to establishing that the mark is distinctive and the above caveat in the context of shape marks, there is nothing in the Trade Marks Act that indicates that product configuration trade dress cannot be protected under statute or common law. Another distinction should also be borne in mind: the plaintiffs are not claiming proprietorship in these trade dresses inasmuch as it is not an action for infringement. Instead, the plaintiffs assert that they _____________ https://www.mhc.tn.gov.in/judis Page No.23 of 52 C.S.No.828 of 2015 satisfy the classical trinity: goodwill and reputation in relation to these product configuration trade dresses; misrepresentation by the defendant in respect thereof; and loss as a result thereof. Examining the definition of trade dress or get up and judgments in which trade dress of a product was protected may illuminate the discussion.
31. In Kerly's Law of Trade Marks and Trade Names (14th Ed.) the “get-up” of goods is defined as follows:
“What is compendiously called the “get-up” of goods – the dress in which they are presented to the buyer comprises, in particular, the size and shape of the packages, where the goods have no definite outline, or none which is shown to the buyer, the material, colour and decoration of their wrappers, and the lettering and arrangement of their labels. Where what the buyer sees are the goods themselves, not the packaging, get-up may consist in some capricious or fanciful addition to the goods themselves: paintwork, for instance or colouring, or fanciful shaping of the goods. Possibly, even purely functional features may give a distinctive get-up that will support an action for passing off....” A caveat of some significance is in order before proceeding further. As is evident from the above extract, while referring to trade dress, typically, the reference is to the packaging even if such packaging is integrated with the product. In cases wherein the claim for trade dress protection is asserted in respect of the entire product, the Court should tread cautiously. The _____________ https://www.mhc.tn.gov.in/judis Page No.24 of 52 C.S.No.828 of 2015 plaintiffs, in this case, did not apply for design protection. If design protection had been successfully applied for and obtained, the plaintiffs could have enjoyed a monopoly over the design for a limited period of time.
In exchange, the products would have been made available to the public subject to payment of royalty. Without applying for and obtaining design registration, which has a limited life, the question that arises for consideration is whether the plaintiffs should be permitted to receive protection under common law in perpetuity. If so, under what circumstances should such protection be granted.
32. Learned counsel for the plaintiffs placed several judgments before me. Mohan Lal, which dealt with a passing off action as regards mirror frames and door handles, was cited for the proposition that the remedy of passing off is available in relation to product design. The affirmation of this proposition in Carlsberg was also relied on. In order to bolster the contention that trade dress protection may be extended to the entire product, Faber Castell was relied upon as an illustration thereof in the context of crayons. Likewise, the extension of trade dress and get up protection to a washing machine in Whirlpool; and the protection provided to tread patterns of tyres both in MRF and Apollo Tyres were relied on. _____________ https://www.mhc.tn.gov.in/judis Page No.25 of 52 C.S.No.828 of 2015 With regard to the two cases relating to tyres, a distinction may be drawn between the product [tyres] and treads to which protection was extended. The same holds good as regards the washing machine inasmuch as a washing machine also contains electrical equipment, and there is a measure of separation between the product and the trade dress. In Gorbatschow Wodka, protection was extended to the onion-shaped bulbous structure of the vodka bottle on the ground that the shape is unique and unusual. In that case also, the bottle was clearly distinguishable from the product sold in such bottle. The closest parallels are Mohan Lal and Faber Castell. These judgments indicate that not only product packaging but product configuration also may be protected as trade dress under Indian law. In order to claim such protection, the classical trinity, including the distinctiveness of the trade dress and the consequent reputation and goodwill of the plaintiffs in relation thereto should be established.
Inherent distinctiveness of trade dress
33. In the context of packaging as trade dress, it is easier to establish inherent distinctiveness if the trade dress has arbitrary or capricious features. In fact, in Two Pesos, Inc. v. Taco Cabana, Inc., 1992 SCC OnLine US SC 97, in relation to the trade dress of a restaurant (a _____________ https://www.mhc.tn.gov.in/judis Page No.26 of 52 C.S.No.828 of 2015 service packaging trade dress action), the Supreme Court of the United States of America (the US Supreme Court) held that secondary significance need not be established if such trade dress is inherently distinctive. By contrast, in Duraco, which was relied upon by the defendant, in the factual context of planters shaped like a Grecian urn (a product configuration trade dress action), the US Court of Appeals for the Third Circuit held, in relevant part, as under at page 1738 of the report:
“....In particular, we think that, to be inherently distinctive, a product configuration – comprising a product feature or some particular combination or arrangement of product features – for which Lanham Act protection is sought must be (i) unusual and memorable; (ii)conceptually separable from the product; and (iii) likely to serve primarily as a designator of the origin of the product.”
34. Later, while dealing with a claim for protection of garments/product design as unregistered trade dress under Section 43(a) of the Lanham Act, the US Supreme Court concluded, in Wal-Mart Stores, Inc. v. Samara Brothers Inc.(Walmart Stores), 2000 SCC OnLine US SC 27, that “a product design cannot be protected under Section 43(a) without a showing of secondary meaning” effectively holding that it is near- _____________ https://www.mhc.tn.gov.in/judis Page No.27 of 52 C.S.No.828 of 2015 impossible to establish inherent distinctiveness of product design or product configuration as trade dress. These judgments illustrate that product configuration trade dress typically serves purposes other than source signalling or identification and, consequently, establishing inherent distinctiveness is a Herculean, if not Sisyphean, task. These principles should be applied to the Plaintiffs' Suit Products to understand whether they are inherently distinctive.
35. “MM Square” is a square shaped dry storage space saving container with colour coordinated, see-through windows, easy-to- grasp air- tight lids which are typically used in Indian houses to store pulses or other groceries. The “Best Lunch Bag” is a smart and spacious, colour coordinated lunch kit that can carry a square box of a convenient size, two cups, a spoon, napkin and any other item to pack a wholesome meal of the kind often used by students and office going people to carry their lunch. The “Spice Shakers” are for spice storage, and are sleek, space saving containers with a double hinged dispensing system used in the kitchen or dining table for pouring or sprinkling. Upon examining the products, it cannot be concluded that any individual feature of the Plaintiffs' Suit Products, such as the shape of the container(s) or bag, the material or _____________ https://www.mhc.tn.gov.in/judis Page No.28 of 52 C.S.No.828 of 2015 texture, or the lid is unusual or memorable. Learned counsel for the plaintiffs contended that, even if not individually distinctive, in combination, the features are distinctive. Even when considered in combination, the features are not unusual or memorable. Are these features conceptually separable from the respective product? Unlikely. Even if these two hurdles are crossed, the final hurdle looms large: whether the trade dress, by its nature, is designed to or performs the function of source signifier? On examining the Plaintiffs' Suit Products, I am unable to conclude that even the combination of features is intended to or performs the function of identifying source. Consequently, the product configuration trade dresses of the Plaintiffs' Suit Products are not inherently distinctive. Acquired distinctiveness of trade dress
36. Therefore, in order to establish the right to trade dress protection for the Plaintiffs' Suit Products, the plaintiffs should establish acquired distinctiveness of the trade dress. In particular, it must be shown that goodwill and reputation lies in the get-up and not in the trade mark, which also appears on the goods. As evidence of reputation and goodwill, the plaintiffs placed before the Court the turnover from the sale of these three products. The said turnover is set out in the rejoinder of the plaintiffs _____________ https://www.mhc.tn.gov.in/judis Page No.29 of 52 C.S.No.828 of 2015 and in the proof affidavit of PW1. From the details contained therein, it is evident that the MM Square Box and Spice Shakers were placed in the market in the financial year 2004-2005 and the Best Lunch Bag in the financial year 2006-2007. In the last year for which data is produced, the turnover from the three products were: Rs.7.9 crore from the MM Square Box; Rs.3.49 crore from the Best Lunch Bag; and Rs.1.08 crore from the Spice Shakers. As regards advertising, it is in the form of catalogues pertaining to all the products of the plaintiffs. In a passing off action, the reputation and goodwill of the plaintiffs should be tested as of the date when the defendant entered the market. The defendant pleaded that it entered the market with products corresponding to Plaintiffs' Suit Product 1, 2 and 3 in the years 2005, 2007 and 2011, respectively, and the said plea was not refuted. The turnover of the plaintiffs in 2005 was Rs.42 lakhs as regards MM Square. In 2006-2007, it was only Rs.40,000/- as regards the Best Lunch Bag, and, in 2011, it was Rs.52 lakhs as regards the Spice Shakers.
37. Apart from the sales invoices and the advertising catalogues, the plaintiffs relied on the oral evidence of PW1-PW4. In course of the cross-examination of PW1, on 13.08.2019, PW1 was questioned on the trade dress and get up. The following questions and answers are relevant:
_____________ https://www.mhc.tn.gov.in/judis Page No.30 of 52 C.S.No.828 of 2015 Q: See originals of Ex.P3 (catalog dated July 2001). Can you please identify the 2 Products involved in the Suit?
A: The said catalog does not have the 3 products in question but the earlier design variation of the same which was voluntarily corrected in the replication with the correct year of launch.
Q: I put it to you that as of 2001 neither of the products involved in the present suit have been marketed by the plaintiffs?
A: I deny. The MM Square has been on same since the year 1997 in India as mentioned in the plaint and the replication. For the other 2 products namely spice shakers and best lunch bag, earlier design variations were on sale.
Q: Therefore I put it to you that this catalog does not contain any of the 3 products mentioned in the suit?
A: Yes, since this catalog was part of the documents filed with the plaint where on account of design variation in the year of launch was wrong and this was subsequently amended in the replication with correct years.
_____________ https://www.mhc.tn.gov.in/judis Page No.31 of 52 C.S.No.828 of 2015 Q: Please see the April 2012 catalog featuring the best lunch bag. Is it the same as the subject matter of the suit?
A:Yes.
Q: Please tell me if any of the features mentioned in the plaint of the above product are communicated to your customers when the purchase is made?
A: No. The consumer relies on the combination of distinctive features and aesthetics and more on the visual appeal of the product.
Q. Similarly please see the catalog dated 6th May-2nd June 2012 as a part of Ex.P3 series. Here again the features as mentioned in the plaint are not present in the catalog for the consumer?
A: No. The features mentioned in the plaint are our unique aesthetics and design features, the consumer relies more on how in combination these products can create a beautiful kitchen and aspires to build the same. The sellers or the channel helps demonstrate the value to the consumer.
Q: Similarly in the catalog dated January 2011, none of the features mentioned in _____________ https://www.mhc.tn.gov.in/judis Page No.32 of 52 C.S.No.828 of 2015 the plaint, with regard to the product namely spice shakers are available to the consumer to peruse?
A: The features are not mentioned in the catalog. Also since the consumer started to identify and have a subconscious recall of the unique get up and trade dress. In the selling system of how Tupperware products are sold, the sellers though demonstrate the value and uniqueness of these products.
38. PW2 also deposed on the distinctive trade dress. In cross examination, he was questioned on the trade dress, on whether any survey was conducted in respect of the allegedly distinctive trade dress and get up and on the catalogues. The significant questions and answers from the cross- examination on 20.08.2019 are set out below:
“Q: I put it to you that the invoices can only prove sales of the products and cannot be used to prove reputation with regard to the distinctive get up or trade dress?
A: I deny. Witness adds: Distinctive trade dress and get up of our products are the main focus point for our sales force when they demonstrate products to _____________ https://www.mhc.tn.gov.in/judis Page No.33 of 52 C.S.No.828 of 2015 consumers which has been liked by the consumers and helped us to garner voluminous sales. To support the same, we have submitted the specimen of invoices of these products.
Q: Have you filed any document like a survey report to show that the customers have identified the products by their distinctive get up or trade dress?
A: No. I am not aware of it.
Q: I put it to you that even in your catalogs, the plaintiffs do not draw attention to their distinctive getup or trade dress?
A. I deny. Witness adds: In our catalogs we have product images to highlight our distinctive getup or trade dress.
Q. My previous question was whether the catalogs of the plaintiffs draw specific attention to the distinctive getup or trade dress?
A: Yes, witness adds: The above catalogs are used by the distributors and sales force during home _____________ https://www.mhc.tn.gov.in/judis Page No.34 of 52 C.S.No.828 of 2015 parties and demonstrate unique trade dress, getup and features of the product. These catalogs are the look book used by sales force.”
39. PW3, an authorised distributor for Tupperware products, deposed in her proof affidavit that consumers identify Tupperware products by their distinctive get up. She also deposed that villagers visiting the city specifically ask for the products based on the get up and appearance as remembered by them. She further deposed that many customers tried to exchange lids and bases by relying on the life-time warranty of Tupperware and that such lids and bases sometimes turned out to be from Signoraware products. In cross examination, she admitted that she had not provided details of the customers or the date of occurrence of such incidents. PW4, another authorised distributor of Tupperware products, deposed that she had visited homes of customers to remodel their kitchens and found them using Signoraware products under the mistaken impression that they were Tupperware products.
40. Thus, the evidence on record leads to the conclusion that the plaintiffs' products were advertised through catalogues and promoted and marketed by distributors and consultants in their network. The catalogues on _____________ https://www.mhc.tn.gov.in/judis Page No.35 of 52 C.S.No.828 of 2015 record and the answers of PW1 in relation thereto lead to the conclusion that the allegedly distinctive features of the Plaintiffs' Suit Products were not communicated therein. PW1 stated that the distinctive features are conveyed by the sales personnel of the plaintiffs in course of marketing and selling the products. PW2 stated that the catalogues are look books and contain images which graphically represent the features. PW3 has also spoken of distinctiveness from the perspective of non-English speaking customers. Both PW3 and PW4 also spoke of instances of actual deception but did not provide much detail. With this, I turn to and examine the charge of copying and its impact.
Impact of copying on passing off
41. There is another significant dimension to this case. The plaintiffs asserted that the defendant copied the Plaintiffs' Suit Products. At paragraphs 22-23 of the proof affidavit of PW1, the witness set out the features of the Plaintiffs' Suit Products and stated that the defendant deliberately imitated all the features. I examined the Plaintiffs' Suit Products, which were exhibited as MO1 series, and the Defendant's Suit Products, which were exhibited as MO2 series. On comparison, the only reasonable inference that may be drawn is that the Defendant's Suit Products _____________ https://www.mhc.tn.gov.in/judis Page No.36 of 52 C.S.No.828 of 2015 appear to be copy of the combined features of the Plaintiffs' Suit Products. The photographs of the products were exhibited as Ex.P10 and P11. These images are set out below:
The images also lead to the same conclusion. The chronology as regards prior user is undisputed in this case as between the plaintiffs and the defendant. A defence of common to the trade or publici juris was set up but _____________ https://www.mhc.tn.gov.in/judis Page No.37 of 52 C.S.No.828 of 2015 not established by the defendant. Therefore, the question that remains, in this regard, is whether this conclusion was rebutted by the defendant by establishing that the copying is coincidental and not deliberate.
42. DW1 was asked about the designing of the defendant's products and his answers, in cross examination, on 03.09.2019, throw light on this issue:
“Q. Who created the designs for the above articles?
A. We generally go abroad and we tour pan India regularly. From other countries we take sample of the products in different categories and we do our R&D work according to the necessity of Indian customers. Such designs of articles were created by me and our Engineers team.
Q. Which countries did you visit in the year 2000-2001 from where you picked up the designs for the above products?
A. Witness says I deny the question and I cannot name the countries.
Q. Can you tell the names of the Engineers who helped you in creating the designs based on the samples that you obtained from abroad for the above products?
_____________ https://www.mhc.tn.gov.in/judis Page No.38 of 52 C.S.No.828 of 2015 A. Witness says I deny this question and I cannot answer.” These answers are clearly evasive and confirm the impression that the defendant copied the plaintiffs' trade dresses. Indeed, in course of arguments, learned senior counsel for the defendant contended that such copying is immaterial because there is no tort of copying. For this proposition, Roho was relied on.
43. In Roho, dealing with an action in relation to a cushion for the prevention and treatment of pressure sores, the Chancery Division reiterated that there is no tort of copying but recognised that copying with intent to deceive or with knowledge of the likelihood of deception amounts to passing off. Since there was much argument on whether the features of the Plaintiffs' Suit Products are functional, this case is pertinent from that perspective also. The Court accepted the contention of plaintiff's counsel therein that the functionality of the plaintiff's trade dress was immaterial. The Court also held that a no-longer patented functional article may be copied by any person but “what he may not do is to deceive the public and he must do enough to avoid that.” Eventually, on the ground that the plaintiffs therein failed to prove secondary meaning, i.e. that customers _____________ https://www.mhc.tn.gov.in/judis Page No.39 of 52 C.S.No.828 of 2015 relied on the shape of the cushions to buy the product, and because they were purchased on the recommendation of health care professionals, relief was declined.
44. For trade dress passing off purposes, functionality is relevant only to the extent that it may be used as evidence that the trade dress is not distinctive but dictated entirely by functionality. In this respect, judgments interpreting Section 43(a) of the Lanham Act, such as Walmart Stores, may be distinguished because Section 43(a)(3) thereof imposes on the plaintiff the burden of establishing that the matter in respect of which trade dress protection is asserted is not functional. This position may be contrasted with cases such as Roho where the court agreed that functionality may not be particularly material for passing off purposes. Viewed from the passing off perspective and given that no proprietary right is asserted in the trade dress, I agree with learned counsel for the plaintiffs that the combination of features constituting the trade dress is not dictated entirely by functionality. Therefore, it may be protected if secondary meaning is established. Whether copying supports an inference of secondary meaning is examined next.
45. In Blau Plumbing, Inc. v. S.O.S. Fix-it, Inc. MANU/FEVT/0242/1986, in the context of an action in relation to the trade _____________ https://www.mhc.tn.gov.in/judis Page No.40 of 52 C.S.No.828 of 2015 dress of a location box in an advertisement, the US Court of Appeals for the Seventh Circuit held that “copying is not passing off per se” but agreed that copying by the defendant may be an indication that the trade dress had acquired secondary meaning. In Brooks Shoe Manufacturing Co. Inc. v. Suave Shoe Company, MANU/FEEE/0592/1983, the US Court of Appeals for the Eleventh Circuit held that intentional copying alone does not eliminate the need for proof of secondary meaning while accepting that intentional copying is probative evidence on the secondary meaning issue. In Audio Fidelity, Inc. v. High Fidelity Recordings Corporation, MANU/FENT/0274/1960, albeit in the context of evidence of intentional copying of the jacket of a phonograph record, the US Court of Appeals for the Ninth Circuit held that “there is no logical reason for the precise copying save an attempt to realize upon a secondary meaning that is in existence.”
46. One more element should be thrown into the mix: the copying of all the features of the Plaintiffs' Suit Products in combination. In Lever v. Goodwin, 19 RPC 494, the UK Court of Appeals held as follows in the context of copying of a combination of features:
“There may be no monopoly at all in the individual things separated, but if the whole are so joined together as to attempt to pass off and to have _____________ https://www.mhc.tn.gov.in/judis Page No.41 of 52 C.S.No.828 of 2015 the effect of passing off the Defendant's soap as that of the plaintiff's, then, although the Plaintiffs have no monopoly either in “self-washing” or “self-washer” or in the parchment paper, or in the spaced printing, yet if those things in which they have no sole right, are so combined by the Defendants as to pass off the Defendants' goods as the Plaintiffs', then the Defendants have brought themselves within the old common law doctrine in respect of which equity will give to the aggrieved party an injunction in order to restrain the Defendant from passing off his goods as those of the Plaintiff.”
47. As stated earlier, the evidence on record establishes copying by the defendant. While the defendant is correct in asserting that there is no tort of copying, the close copying in this case indicates that the defendant believed that the trade dresses of the Plaintiffs' Suit Products were distinctive and that, on seeing the copied trade dresses, customers would believe that each of the Defendant's Suit Products is at least a look-alike of the corresponding Plaintiffs' Suit Product. Otherwise, no benefit would accrue from copying. Given that there is no tort of copying, the defendant is at liberty to copy and make a look-alike provided the trade origin of the Defendant's Suit Products was depicted clearly enough to enable customers _____________ https://www.mhc.tn.gov.in/judis Page No.42 of 52 C.S.No.828 of 2015 to easily distinguish the products. If so, there would be no misrepresentation and copying without misrepresentation does not qualify as passing off. On the contrary, if the defendant did not do enough to signal the trade origin of its products, the evidence adduced by the plaintiffs of: sales turnover, advertising, distinctiveness in the combination of features and close copying thereof constitutes sufficient evidence of secondary meaning for passing off purposes, i.e., as investing the plaintiffs with reputation and goodwill qua the trade dresses. Put differently, the trade dresses may not have been intended to and may not have originally played the role of a source signifier but were nurtured to play that role not only by the plaintiffs but also by the defendant. Whether the defendant sufficiently signalled the trade origin of its products to successfully meet the charge of misrepresentation is examined next.
48. The defendant pointed to the use of the brand name “Signoraware” on its products and “Tupperware” on those of the plaintiffs' as an indicator of trade origin. On examining the products, I find that the contention of learned counsel for the plaintiffs that the brand name “Tupperware” is understated and inconspicuous is liable to be accepted as regards the MM Square Box and the Spice Shakers. Significantly, the brand _____________ https://www.mhc.tn.gov.in/judis Page No.43 of 52 C.S.No.828 of 2015 name “Signoraware” is also equally understated and inconspicuous as regards the corresponding products of the defendant. With regard to the Best Lunch Bag and the corresponding product of the defendant, the branding is relatively more noticeable but finds place on only one side. As regards all three products, it is noticeable that the placement of the brand name by the defendant on the product and the style thereof is identical to that on the corresponding product of the plaintiffs. Learned senior counsel for the defendant submitted that the defendant's packaging is a differentiator. The packaging of the defendant's products was not exhibited in evidence and, in any case, may not serve as an adequate differentiator because the products are likely to be displayed on shop shelves without packaging. In course of cross examination on 14.08.2019, PW1 stated as follows:
“Q. Are you aware that the defendant's products are always sold with an external packaging?
A. I have experienced them being sold without packaging. Further when they are displayed in shelves in retail shop they are typically devoid of packaging which may confuse the consumer.” _____________ https://www.mhc.tn.gov.in/judis Page No.44 of 52 C.S.No.828 of 2015 Therefore, I conclude that there is close copying unaccompanied by adequate notice of trade origin. Whether the different sales channels would eliminate the risk of deception remains to be considered.
49. The plaintiffs admittedly undertake direct sale, and this is in contrast to the traditional sales channels used by the defendant. The following questions and answers thereto of PW1, in cross-examination, on 07.08.2019, are relevant:
Q: Can you please explain what do you mean by direct selling company?
A: A direct selling company in India typically operates through an association with the Indian Direct Selling Association and engages in selling of products through a network of independent sales force in case of Tupperware Women who sell Tupperware products by conducting home parties and demonstrations of the product ranges.
Q: What would be the percentage of sales carried out through direct selling method in India?
A: In the current situation, almost 100% of sales is done through the authorised sellers of the company. However, the Tupperware products _____________ https://www.mhc.tn.gov.in/judis Page No.45 of 52 C.S.No.828 of 2015 are also sold in retail outlets and also through e- tail (e-commerce) through a lot of non-authorized sellers which the company has no control and is also a subject matter of a recent judgment.
PW1 admitted that the plaintiffs undertake 100% direct sales but that indirect sale is done without the authorization of the plaintiffs. The fact that the Plaintiffs' Suit Products were not ordinarily available in retail outlets then (although currently available) would mean that it is unlikely that the products would be available for side-by-side comparison by being available for sale at the same shop. It does not, however, preclude the likelihood of deception because customers will still carry the imperfect recollection in their minds with less scope for cross verification. Although the evidence of actual deception is bereft of details, such deception is certainly likely to injure the reputation and goodwill of the plaintiffs. The interest of a non-
participating stakeholder in intellectual property matters, i.e. the customer, should also not be lost sight of. Such interest is likely to be prejudiced if there is close copying without adequate disclosure of trade origin.
Therefore, Issue Nos.2, 3 and 7 are decided in favour of the plaintiffs.
50. Issue Nos.4-5 relate to the reliefs that the plaintiffs are entitled to. The plaintiffs are clearly entitled to a permanent injunction restraining _____________ https://www.mhc.tn.gov.in/judis Page No.46 of 52 C.S.No.828 of 2015 sale of the Defendant's Suit Products without sufficiently indicating trade origin. Since the order of interim injunction was discharged about five years ago, only with regard to products already in the sales channels, in order not to cause severe disruption, the order of permanent injunction shall come into force two months from today. As regards sales of the impugned products, the plaintiffs are entitled to rendition of accounts with the consequential right to apply for a decree of profits. The plaintiffs are also entitled to delivery-up of impugned goods. On the loser pays principle, the plaintiffs are entitled to a sum of Rs.10 lakhs as costs to cover court fees, reasonable lawyer's fees and expenses.
51. In the result, the suit is decreed as follows:
(i) There shall be a permanent injunction restraining the defendant from, directly or indirectly, adopting the impugned trade dresses for the manufacture, sale or advertisement of the Defendant's Suit Products without clearly and distinctly indicating trade origin. The permanent injunction shall come into force immediately except with regard to impugned products, if any, which are already in the sales channel. As regards such products, subject to the obligation to provide an account _____________ https://www.mhc.tn.gov.in/judis Page No.47 of 52 C.S.No.828 of 2015 of profits, the permanent injunction shall come into operation two months from today.
(ii) Subject to the above carve-out, the defendant shall deliver the impugned products, promotional and other material, and all tools and devices used for making the impugned products, in its current form, to an authorised representative of the plaintiffs.
(iii)The defendant shall provide an account of profits to the defendant in respect of all sales of the impugned products, including sales made after the date of this judgment based on the relaxation provided herein. The plaintiffs shall be entitled to apply for a decree for damages on such basis.
(iv)The defendant shall pay a sum of Rs.10 lakhs to the plaintiffs as costs.
23.11.2022 Speaking Order Index : Yes Internet : Yes kal Plaintiffs' witnesses:
1.Mr.Nitin Malhotra - PW1 _____________ https://www.mhc.tn.gov.in/judis Page No.48 of 52 C.S.No.828 of 2015
2.Mr.Nimit Jain - PW2
3.Selvi Jyothi Kumar - PW3
4.Sankareswari - PW4 Defendants' witness:
Mr.Vijay Kumar Bansal - DW1
Documents exhibited by the Plaintiffs:
Sl.No Exhibits Date Particulars of Documents
1. Ex.P1 28.08.2015 The original power of attorney in favour of
Ms.Kimberly Weate issued by the 1st plaintiffs. (marked after comparing and verifying with the original)
2. Ex.P2 06.02.2015 The true copy board resolution authorizing Ms.Vandita Batta on behalf of the 2nd plaintiff. (marked after comparing and verifying with the original)
3. Ex.P3 - Series are the original specimen extract from catelogues and copies of catelog promoting the plaintiffs; products from 2000-2009 and 2011-2014 (marked after comparing and verifying with the original)
4. Ex.P4 - Series (92 pages) are the computer generated print out copy of specimen extract from catalogues and copies of catelog promoting the plaintiff's products from 2000, 2003, 2004 and 2011,
5. Ex.P5 - Series are the computer generated print out of the plaintiff's products promotional materials and website extract of plaintiff's product.
6. Ex.P6 - The original affidavit of Mr.Nitin Malhotra under Section 65 Indian Evidence Act 1872.
7. Ex.P7 - Series are the original affidavits (4) from plaintiff's distributors.
8. Ex.P8 - Series are the original invoices and original purchase invoices along with the affidavit of Mr.S.Saranathan for the purchase of defendant's products.
9. Ex.P9 - Series are the original purchase invoices for the purchase of the defendant's products sold in Chennai.
10. Ex.P10 - Photographs of the plaintiffs products (original _____________ https://www.mhc.tn.gov.in/judis Page No.49 of 52 C.S.No.828 of 2015 Sl.No Exhibits Date Particulars of Documents products are available for comparison and plaintiff undertakes to produce the original product at the time of final hearing).
11. Ex.P11 - Photographs of the defendant's products (original products are available for comparison and plaintiff undertakes to produce the original product at the time of final hearing)
12. Ex.P12 - Series are the photographs of competing products which is the subject matter of civil suit being CS (OS) No.589/2005 filed before the Hon'ble High Court of Delhi.
13. Ex.P13 - The photographs of competing products which is the subject matter of civil suit being CS (OS) No.2457/2011 filed before the Hon'ble High Court of Delhi.
14. Ex.P14 - Ex.P14 (series) 1107 pages is the printouts of Specimen invoices pertaining to sale of the plaintiffs products for the period 1999-2015. (Original copies of the said invoices have been compared and returned). The plaintiff's undertake to produce the same at the time of final hearing.
15. Ex.P15 - The section 65 B affidavit under the Indian Evidence Act 1872 along with printouts 1107 pages mentioned in my affidavit.
16. MO1 Plaintiffs' Suit Products series
17. MO2 Defendant's Suit Products series Documents exhibited by the Defendant:
Sl.No. Exhibits Date Particulars of Documents
1. Ex.D1 The original authorization on behalf of the deponent.
2. Ex.D2 - The Attested photo copy of the Order passed in interm applications in C.S.No.589/2005 filed by the applicants against Techno Plast by the Hon'ble Delhi Court as _____________ https://www.mhc.tn.gov.in/judis Page No.50 of 52 C.S.No.828 of 2015 Sl.No. Exhibits Date Particulars of Documents reported in 2007(35) PTC 129.
3. Ex.D3 - The Attested photo copy of the Plaint filed by the applicants in CS No.2457/2011.
4. Ex.D4 29.05.2011 The Original of the document filed by the applicant before the Delhi High Court as document No.16 being advertisement of the respondent herein in The Tribune Life date 29.05.2011 and the complete page showing all the products impugned in the present suit.
5. Ex.D5 - The Attested Photocopy of the Invoices/bills for sale of 3 impugned products in and around DELHI areas.(Counsel for Plaintiff raised Objection on the ground of admissibility and mode of proof, since the documents are photocopies and the original are not produced.)
6. Ex.D6 - The Invoices for the products sold by the respondents.
(Counsel for Plaintiff raised Objection on the ground of admissibility and mode of proof, since the documents are photocopies and the original are not produced)
7. Ex.D7 - The Advertisement filed by the respondents in various magazines, newspapers. (marked after comparing and verifying with the original). (Counsel for Plaintiff raised Objection on the ground of admissibility and mode of proof, since the documents are photocopies and the original are not produced) for internal page Nos.3,4,13,14,45 to 50)
8. Ex.D8 - The Promotional Materials of the respondent. (marked after comparing and verifying with the original).
9. Ex.D9 - The Products of other manufacturers. (Counsel for Plaintiff raised Objection on mode of proof since the documents are 3rd party documents.
10. Ex.D0 - The Promotional materials of the other manufacturers having similar products. (marked after comparing and verifying with the original). (Counsel for Plaintiff raised Objection on the mode of proof, since the documents are 3rd party documents) SKRJ _____________ https://www.mhc.tn.gov.in/judis Page No.51 of 52 C.S.No.828 of 2015 SENTHILKUMAR RAMAMOORTHY, J kal/rrg Pre-Delivery Judgment in C.S.No.828 of 2015 23.11.2022 _____________ https://www.mhc.tn.gov.in/judis Page No.52 of 52