Gujarat High Court
Group Seb (India) Private Limited vs M/S Symphony Limited on 26 July, 2018
Bench: M.R. Shah, A.Y. Kogje
C/AO/273/2017 CAV JUDGMENT
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 273 of 2017
With
CIVIL APPLICATION NO. 1 of 2017
FOR APPROVAL AND SIGNATURE:
HONOURABLE MR.JUSTICE M.R. SHAH Sd/
and
HONOURABLE MR.JUSTICE A.Y. KOGJE Sd/
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1 Whether Reporters of Local Papers may be allowed to see No
the judgment ?
2 To be referred to the Reporter or not ? No
3 Whether their Lordships wish to see the fair copy of the No
judgment ?
4 Whether this case involves a substantial question of law as No
to the interpretation of the Constitution of India or any
order made thereunder ?
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GROUP SEB (INDIA) PRIVATE LIMITED
Versus
M/S SYMPHONY LIMITED
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Appearance:
MR SHALIN MEHTA, SENIOR ADVOCATE with MR. TANVISH U BHATT, MR JAY KANSARA
and MS GEETANJALI VISHVANATHA for M/S WADIAGHANDY AND CO(5679) for the
PETITIONER(s) No. 1
MR KAMAL TRIVEDI, SENIOR ADVOCATE with MR SUDHIR NANAVATI, SENIOR ADVOCATE,
MS PRACHITI SHAH and MS ANUJA S NANAVATI(5229) for the RESPONDENT(s) No. 1
NOTICE NOT RECD BACK(3) for the RESPONDENT(s) No. 2
NOTICE SERVED(4) for the RESPONDENT(s) No. 2
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CORAM: HONOURABLE MR.JUSTICE M.R. SHAH
and
HONOURABLE MR.JUSTICE A.Y. KOGJE
Date : 26/07/2018
CAV JUDGMENT
(PER : HONOURABLE MR.JUSTICE M.R. SHAH) [1.0] Feeling aggrieved and dissatisfied with the impugned order dated Page 1 of 30 C/AO/273/2017 CAV JUDGMENT 08.08.2017 passed by the learned Judge, Commercial Court, City Civil Court, Ahmedabad below Exhs.67 in Commercial Trade Mark Suit No.8/2017 by which the learned Commercial Court has partly allowed the said applications - notice of motion and has granted the temporary injunction against the appellants herein - original defendant No.1 in terms of para 38A of the application for interim injunction, the original defendant No.1 has preferred the present Appeal From Order.
[2.0] The facts leading to the present Appeal From Order in nutshell are as under:
[2.1] That the respondent herein - original plaintiff has instituted Commercial Trade Mark Suit No.8/2017 against the appellant herein - original defendant in the Commercial Court, Ahmedabad for passing off, seeking permanent injunction and relief of damages. That in the said suit the plaintiff submitted an interim injunction application - took out a Notice of Motion seeking interim injunction restraining the defendants, their agents, partners, proprietors, servants etc. from in any manner using the impugned design including the shape, getup, layout, which is identical with or colourably / deceptively similar to the plaintiff's product and from passing off their goods viz. Maharaja Whiteline Blizzard 50 and Blizzard 50 DLX as also Blizzard 20 and Blizzard 20 DLX as those of the plaintiff.
[2.2] It is the case on behalf of the plaintiff so pleaded in the plaint that earlier the plaintiff Company was incorporated in the name of Sanskrut Comfort Systems Pvt. Ltd. which subsequently came to be converted into a Public Limited Company by passing a special resolution and thereafter the name of the company was changed from Sanskrut Comfort Systems Pvt. Ltd. to Symphony Comfort Systems Ltd. It is the case on behalf of the plaintiff Company that plaintiff Company is in the business of Page 2 of 30 C/AO/273/2017 CAV JUDGMENT marketing, selling, trading and exporting of a range of air coolers under the name of "SYMPHONY" nationally and internationally for high quality products with excellent performance, aesthetic outlook and unique design wherein in the year ending 201516, the total turnover of the plaintiff exceeded approximately Rs.523.98 crores. 7. It was also averred in the plaint that considering the worldwide business of the plaintif with warehouses servicing almost all states, dealers, retailers and distributors in almost all towns, cities and villages are established and on the basis of the well orchestered effort at constant innovation and consistent performance, the plaintiff company has been honoured with the award by the Ministry of Commerce and Industry, Government of India by granting a Certificate of Recognition as an Export House in 2009 which came to be upgraded to a Star Export House. It was also averred that the plaintiff is also having a wellestablished Research & Development Division (RDD) comprising of highly qualified and experienced engineers so as to develop better and more efficient products as well as unique and eye catching designs for their air coolers and other consumer products.
[2.3] It was further averred and submitted that apart from various models of air coolers sold by the plaintiff, the plaintiff is also selling the "Diet" model which has a unique design. It was further averred that the plaintiff Company and the Founder / M.D. Shri Achal Bakeri is the holder of the design registration certificate for the said designs of "Diet" model under the Designs Act, 2000 whereby the Registrar has duly registered the unique designs of various models for sole and exclusive use of the proprietor and the models in question are "Diet 50T" which has been registered on 04.02.2009 under Classification 2304 (Air Cooler) under Design Registration No.221068; that "Diet 22T" is also registered on 05.02.2009 under Classification 2304 (Air Cooler) under Design Registration No.221084 "Diet 8T" has been registered on Page 3 of 30 C/AO/273/2017 CAV JUDGMENT 29.01.2009 under Classification 2304 (Air Cooler) under Design Registration No.220948. It is further averred that pursuant to the Assignment Deed of Design, the same have been assigned in favour of the plaintiff Company so as to enable the plaintiff Company to market the said products under the registered designs. It was further averred that the plaintiff Company has been selling and marketing the air coolers in different shapes and models and in order to make the air coolers attractive, eye catching, novel and impressionable to the customers, the plaintiff developed a novel shape, configuration and pattern for the air coolers and the said shape, configuration, ornament, composition of lines and pattern have been registered as per the registration details. It was further averred and the case on behalf of the plaintiff that as the plaintiff came to know that the defendant No.1 is illegally and without any permission or authority manufacturing, selling and marketing air coolers that are the unauthorised replicas and imitations of the air coolers of the plaintiff viz. "Diet" (variants 50T and 22T as also 50i and 22i), through its respective manufacturing units and retail outlet and thereby passing off its goods i.e. air coolers viz. "Maharaja Whiteline Blizzard 50, Maharaja Whiteline Blizzard 20" as well as "Maharaja Whiteline Blizzard 50 DLX and Maharaja Whiteline Blizzard 20 DLX", stating and contending that the air coolers manufactured and marketed by defendant No.1 are so strikingly similar to the air coolers of the plaintiff i.e. Diet 50T and Diet 22T as well as Diet 50i and Diet 22i which may entail the purchaser / consumer to believe the products of defendant No.1 to be the products of the plaintiff.
[2.4] It was further averred in the plaint and it was submitted on behalf of the plaintiff Company that defendant No.1 has recently launched the aforesaid models as reflects from the model features in February 2017 catalogue and the defendant No.1 has been extensively advertising and Page 4 of 30 C/AO/273/2017 CAV JUDGMENT offering for sale the impugned air coolers through its website www.maharajawhiteline.com. Therefore, it was the case on behalf of the plaintiff that since the plaintiff has established a unique and wellknown design which has acquired a secondary meaning by virtue of its use and goodwill generated in the course of trade or business and therefore, the same can be considered as "Trade Marks" under the Shape of Goods category and the same is required to be protected by an action in the nature of passing off as the overall visual impression which creates in the minds of customers as to the source and origin of the goods is from the shape/aesthetic appearance of the goods and consequently an unwary or a gullible customer may easily get confused between the product of the plaintiff and defendant No.1 due to striking similarity in its shape, pattern and overall getup. Therefore, with above particular averments and contentions the plaintiff has instituted the suit for passing off damages, permanent injunction etc. As observed hereinabove in the said suit the plaintiff has taken out the Notice of Motion vide Exhs.67 restraining the defendants, their agents, servants etc. by way of interim injunction restraining them from in any manner using the impugned design including the shape, getup, layout, which is identical with or colourably / deceptively similar to the plaintiff's product and from passing off their goods viz. Maharaja Whiteline Blizzard 50 and Blizzard 50 DLX as also Blizzard 20 and Blizzard 20 DLX as those of the plaintiff.
[2.5] That on being served with the process the defendants appeared before the learned Commercial Court. The original defendant No.1 filed its written statement and reply to interim injunction application vide Exh.19. It was submitted on behalf of the defendant No.1 that the entire suit and application for interim injunction suffers from suppression of material fact which disentitles the plaintiff to claim any discretionary relief. It was also submitted on behalf of the defendant No.1 that the Page 5 of 30 C/AO/273/2017 CAV JUDGMENT plaintiff has miserably failed to establish similarities between its products and the products of the defendant No.1 so as to maintain an action of passing off.
[2.6] It was further submitted on behalf of the defendant No.1 that the defendant No.1 was earlier known as Maharaja Whiteline Industries Pvt. Ltd., which was subsequently taken over by a Group SEB, France in the year 2014 and accordingly wholly owned subsidiary of Group SEB which is one of world's leading small domestic appliances company having global turnover of 5000 Million Euro (approximately Rs.35,000 crores) in the year 2016 which launches more than 300 products and sell over 200 million products every year across the globe with operations spreading out to 150 countries. It was further submitted on behalf of the defendant No.1 that the defendant No.1 has created a distinct and unmistakable image on the basis of its innovative products in home appliance industries and is also having goodwill and reputation in the market. It was further averred on behalf of the defendant No.1 that for having the aesthetic look, new, novel and creative design to the products in question, the work of conceptualizing and developing the design, shape, etc. as entrusted to a specialized design firm viz. "Story Design"
and the responsibility for the design front panel and deco control panel for the air coolers and the adoption thereof have been raised by the defendant No.1. It was further submitted that the defendant No.1 has incurred considerable expenditure in developing, designing, manufacturing, selling and marketing the product in question. It was submitted that therefore the defendant No.1 cannot be said to have merely copied / imitated the design of the plaintiff's products (Diet Model in the case on hand).
[2.7] It was further submitted on behalf of the defendant No.1 that even Page 6 of 30 C/AO/273/2017 CAV JUDGMENT prior to the filing of the suit, the plaintiff was aware of the shape as well as design of the products in question developed by defendant No.1 way back in January 2016 and no grievances whatsoever have been ventilated by the plaintiff against the defendant No.1 with regard to the products in question. It was further submitted that even the Controller General of Patent, Design and Trademark (Authority) was pleased to register the design developed by defendant No.1 under the Designs Act, 2000 and the certificate to that effect has been issued in favour of the defendant No.1 which is nothing but a prima facie proof of the defendant No.1's originality, uniqueness and distinctiveness and the very fact as to the registration of defendant No.1's design has been suppressed by the plaintif. It was further submitted on behalf of the defendant No.1 that even the cancelation proceedings initiated by the plaintiff for cancellation of the registered design of defendant No.1 under Section 19 of the Designs Act, 2000 (vice versa) have not been disclosed. It is submitted that therefore, nondisclosure of the aforesaid fact amounts to suppression and concealment of the material fact and therefore, the plaintiff is not entitled to the discretionary relief of interim injunction / injunction. In context of the case of the plaintiff as to the misrepresentation was created in the minds of the purchasers / customers, it was submitted on behalf of the original defendant No.1 that the products in question are materially distinct from each other. It was submitted that there is no true comparison of the competing products. Relying upon the chart prepared by the defendant No.1 and produced with the list appended with the written statement, it was submitted that there is no question of any misrepresentation by the defendant No.1. It was submitted that even a look at the competing products through an ordinary purchaser's eye would make it abundantly clear that there is no chance of any confusion or deceit in the minds of general public regarding the origin of the product. Referring to the Page 7 of 30 C/AO/273/2017 CAV JUDGMENT products in question and showing the patterns and the distinctiveness of the products in question, it was submitted on behalf of the defendant No.1 that there is no possibility of misrepresentation on the part of the defendant No.1 as the defendant No.1 is selling its products in the brand name and trade name "MAHARAJA WHITELINE" which is distinctively visible on each of its products. It was submitted that the brand name is otherwise wellknown in the home appliance industry and having a distinct reputation and goodwill among the general public.
[2.8] With regard to the issue as to shape and configuration of the products in question, it was submitted on behalf of the defendant No.1 that both the products in question are materially distinct and different from each other as is evident from the height, width, length and overall structure of the products and therefore the same rules out the possibility of the defendant No.1 having indulged in passing off its goods as those of the plaintiff. Therefore, it was requested to reject the interim injunction application / Notice of Motion.
[2.9] The interim injunction application was also opposed by the original defendant No.2 by filing detailed reply at Exh.30. The defendant No.2 supported the case of the defendant No.1 and made same submissions which were made on behalf of the defendant No.1.
[2.10] That thereafter by impugned order the learned Commercial Court has partly allowed the Notice of Motion application Exhs.67 and has granted the temporary injunction in terms of para 38A of the application for interim injunction. Clause 38A of the Notice of Motion Exhs.67 which has been granted by the learned Judge by impugned order as temporary injunction reads as under:
"38A. Pending the hearing and final disposal of the present Page 8 of 30 C/AO/273/2017 CAV JUDGMENT Civil Suit, THIS HON'BLE COURT be pleased to restrain each of the Defendants by themselves, its Directors, servants, representatives, agents, stockists, distributors, retailers etc. from in any manner manufacturing, marketing, selling or advertising for sales thereby passing of the goods viz. Maharaja Whiteline Blizzard 50 and Maharaja Whiteline Blizzard 20 and Maharaja Whiteline Blizzard 50 DLX and Maharaja Whiteline Blizzard 20 DLX;"
That while allowing the Notice of Motion and granting the injunction in terms of Para 38(A) of the Notice of Motion, the learned Judge has observed as under:
"1. That the plaintiff is not only a prior user, but the first who introduced into the market a completely distinct shape which had not been introduced earlier and it is this novelty that has been the engine and cause for numerous sales and the popularity that the plaintif has earned;
2. That the plaintiff has created a good reputation nationally and internationally;
3. That the sales turnover of the plaintiff for the Diet Model for the year 2009 till 2016 is Rs.73,197 lakh in total and that the plaintiff has averred to have spent huge amount on promotion of its business for the year 201415 by spending more than Rs.3134.23 lakh;
4. That the Diet model in question appears to have been registered way back in the year 2009 and therefore, admittedly the plaintiff seems to be a prior user with the goodwill and reputation with respect not only to the other products in question but also with regard to the Diet Model in question;
5. That as the design registration of the plaintiff and the Page 9 of 30 C/AO/273/2017 CAV JUDGMENT novelty thereof rests and confined to the surface pattern of the products in question and not to the shape and configuration as submitted by the defendant No.1 cannot be a sole ground to deprive the plaintiff to subserve its legitimate right;
6. That the defendant No.1 appears to have recently launched the product in question in the market as per the invoices issued by the defendant No.1 in favour of the defendant No.2 dated 28.03.2017. Even assumed to have launched its product in 2016, then also the product so introduced by the plaintiff is of the year 2009;
7. A comparison of both the products show a striking similarity considering overall structure, phonetic similarity and idea thereto, visual test of products in question."
Making above broad findings / observations the learned Commercial Court has granted the interim injunction in terms of para 38(A) of the Notice of Motion Exhs.67.
[2.11] Feeling aggrieved and dissatisfied with the impugned order passed by the learned Commercial Court, below Notice of Motion Exhs.67, original defendant No.1 has preferred the present Appeal From Order.
[3.0] Shri Shalin Mehta, learned Senior Advocate has appeared on behalf of the appellant herein - original defendant No.1 and Shri Kamal Trivedi, learned Senior Advocate has appeared on behalf of the respondent No.1 herein - original plaintiff.
[4.0] Shri Mehta, learned Counsel appearing on behalf of the appellant herein - original defendant No.1 has vehemently submitted that in the Page 10 of 30 C/AO/273/2017 CAV JUDGMENT facts and circumstances of the case the learned Commercial Court has materially erred in allowing the Notice of Motion Exh.67 and granting the temporary injunction against the appellant herein - original defendant No.1 in terms of para 38(A) of the application for interim injunction.
[4.1] It is vehemently submitted by Shri Mehta, learned Counsel appearing on behalf of the appellant herein - original defendant No.1 that as such while granting interim injunction application, the learned Commercial Court has not properly appreciated and considered the fact that as such the plaintiff had not approached the Court with clean hands and as such suppressed the material fact more particularly with respect to the date of knowledge of the appellant herein - original defendant No.1 in the market with its products in question viz. Maharaja Whiteline Blizzard 50 and Blizzard 50 DLX as also Blizzard 20 and Blizzard 20 DLX. It is vehemently submitted by Shri Mehta, learned Counsel appearing on behalf of the appellant herein - original defendant No.1 that as such the plaintiff made a false statement in the plaint and interim injunction application to the extent of its knowledge visavis shape and configuration of the appellant's Maharaja Whiteline Blizzard series of air coolers. It is submitted that the planitiff made a false statement that he become aware of the shape and configuration of the appellant's Maharaja Blizzard series of air coolers in February 2017. It is submitted that the learned Commercial Court has failed to appreciate that infact in the cancelation petition filed by the original plaintiff against the original defendant No.1's registered design No.269833, it was admitted by the plaintiff about the knowledge of the appellant's products in question and in the plaint misrepresented its date of knowledge with respect to the said products as February 2017. It is submitted that therefore the learned Commercial Court ought to have rejected the interim injunction Page 11 of 30 C/AO/273/2017 CAV JUDGMENT application on the said ground alone as it is a settled proposition of law that a party who conceals and suppress facts from the Court is not entitled to any relief, much less any equitable relief.
[4.2] It is further submitted by Shri Mehta, learned Counsel appearing on behalf of the appellant herein - original defendant No.1 that even otherwise the learned Commercial Court ought to have appreciated that the delay in bringing an action of passing off also disentitles the plaintiff from the equitable relief of injunction.
[4.3] It is further submitted by Shri Mehta, learned Counsel appearing on behalf of the appellant herein - original defendant No.1 that even otherwise on merits also the learned Commercial Court has materially erred in granting the interim injunction in terms of para 38(A) of the interim injunction.
[4.4] It is further submitted by Shri Mehta, learned Counsel appearing on behalf of the appellant herein - original defendant No.1 that to be successful in an action of passing off, the claimant has to establish classic trinity i.e. (1) reputation and goodwill attached to the goods or services that the claimant supplies - goodwill being attached to the badge of origin, (ii) misrepresentation (whether or not intentional) by the defendant to the public leading or likely to lead public to believe that the goods or services offered by the defendant are the goods or services of the claimant and (iii) consquent damage to the goodwill of the claimant. It is further submitted by Shri Mehta, learned Counsel appearing on behalf of the appellant herein - original defendant No.1 that it is a settled principle of law that the absence of even one element of passing off disentitles the claimant from any relief. It is submitted that in the present case the plaintiff has infact failed to establish any element of Page 12 of 30 C/AO/273/2017 CAV JUDGMENT passing off. It is submitted that therefore the plaintiff has no even prima facie case establishing any of the test of passing off and therefore, the impugned order ought not to have been passed by the learned Commercial Court.
[4.5] It is further submitted by Shri Mehta, learned Counsel appearing on behalf of the appellant herein - original defendant No.1 that the learned Commercial Court has failed to appreciate that the plaintiff had miserably failed to establish that the shape of its 'Diet 50T', 'Diet 22T', 'Diet 50i' and 'Diet 22i' air coolers has acquired distinctiveness in the minds of the relevant pubilc as being indicative of the source denoting plaintiff's products and no one else.
[4.6] It is further submitted by Shri Mehta, learned Counsel appearing on behalf of the appellant herein - original defendant No.1 that the learned Commercial Court has failed to appreciate that the plaintiff has miserably failed to even prima facie establish goodwill in the shape of its 'Diet 50T', 'Diet 22T', 'Diet 50i' and 'Diet 22i' air coolers much less that the said that the said shape of the air coolers has become a source indicator of the plaintiff's products and no one else.
[4.7] It is further submitted by Shri Mehta, learned Counsel appearing on behalf of the appellant herein - original defendant No.1 that the learned Commercial Court has materially erred in observing and holding that the plaintiff is a prior user of the shape of the air coolers - Diet series air coolers. It is further submitted by Shri Mehta, learned Counsel appearing on behalf of the appellant herein - original defendant No.1 that even the plaintiff has failed to establish and prove the goodwill in their favour emanating from the shape of the 'Diet series' of air coolers in India. It is submitted that whatever the documents of sale and goodwill Page 13 of 30 C/AO/273/2017 CAV JUDGMENT are produced are that of foreign countries and not in India. It is submitted that therefore the finding recorded by the learned Commercial Court that the plaintiff has earned the goodwill with respect to 'Diet series' of air coolers and therefore, the learned Commercial Court has materially erred in granting the injunction in favour of the plaintiff and against the defendants.
[4.8] It is further submitted by Shri Mehta, learned Counsel appearing on behalf of the appellant herein - original defendant No.1 that the learned Commercial Court has erred in not appreciating that the registration of design of the plaintiff in relation to its air coolers is admittedly in the "surface pattern", whereas, the registration of design of the defendant No.1 in relation to its air coolers is in the "shape and configuration". It is submitted that therefore the entire action of the plaintiff is completely misplaced and therefore, no injunction could have been granted in favour of the plaintiff.
[4.9] It is further submitted by Shri Mehta, learned Counsel appearing on behalf of the appellant herein - original defendant No.1 that the learned Commercial Court has materially erred by wrongly placing reliance on the advertisements placed by the plaintiff for appointing distributors and dealers in India. It is submitted that apart from the fact that the said advertisement was not produced alongwith the plaint even the said advertisements are with respect to the air coolers of all the shapes, dimensions and sizes. It is submitted that therefore these advertisements would have no bearing on the mind of the purchasing public qua the shape of the 'Diet series' of air coolers as being a source indicated by the plaintiff. It is submitted that similarly the brochure placed on record by the plaintiff contains air coolers of all shapes, dimensions and sizes and therefore, cannot be considered as indicative Page 14 of 30 C/AO/273/2017 CAV JUDGMENT of the goodwill of the shape of the 'Diet series' of air coolers. It is further submitted by Shri Mehta, learned Counsel appearing on behalf of the appellant herein - original defendant No.1 that as such the learned Commercial Court has materially erred in equating the goodwill and reputation knowledge by the plaintiff with the goodwill and reputation associated with the shape of 'Diet series' air coolers. It is submitted that the same cannot be equated or considered on the same footing. It is further submitted that as such the learned Commercial Court has not properly appreciated the distinction and difference between the goodwill and reputation. It is submitted that goodwill and reputation are both distinct and separate. It is submitted that in a given case the plaintiff might have got the reputation but may not have acquired / got the goodwill with respect to particular goods with respect to the passing off action.
[4.10] It is further submitted by Shri Mehta, learned Counsel appearing on behalf of the appellant herein - original defendant No.1 that even otherwise the learned Commercial Court has materially erred in not properly appreciating the fact that the there can be no misrepresentation or confusion in the mind of purchaser when they go to purchase the air coolers, as the appellant herein - original defendant No.1 is selling its products which are subject matter of the many order under its own distinct trade mark / name "Maharaja Whiteline" and the distinct name of the product "Blizzard" is also prominently displayed on the product. It is submitted that trade mark / name which has been in use by the appellant herein - original defendant No.1 since the year 1976 and the defendant No.1 has an annual turnover of approximately 231 Crores for the year 201516 itself and therefore, the defendant No.1 is a wellknown brand with a huge reputation and goodwill amongst the public. It is submitted that thus when the appellant - original defendant Page 15 of 30 C/AO/273/2017 CAV JUDGMENT No.1's goodwill is itself immense, the likelihood of public confusing the defendant No.1's good as those of the plaintiff or being associated with the plaintiff is negligible.
[4.11] It is further submitted by Shri Mehta, learned Counsel appearing on behalf of the appellant herein - original defendant No.1 that even otherwise there can be no misrepresentation or confusion in the minds of the purchasing public as the competing products of the defendant No.1 "Maharaja Whiteline" the air coolers are visually and aesthetically different. It is submitted that the impugned products of the defendant No.1 bear no resemblance whatsoever in the shape and configuration, pattern, ornamentation or overall appearance with the products of the plaintiff. It is submitted that in the present case despite the learned Judge observing that these similarities exist between competing products which are the subject matter of the present dispute, the learned Commercial Court has wrongly concluded that the shape, configuration and overall appearance of the products in question of the defendant No.1 - Maharaja Whiteline Blizzard series of air coolers are strikingly similar. It is submitted that considering the aforesaid facts and circumstances, the learned Commercial Court has wrongly concluded that the plaintiff has a prima facie case, the balance of convenience favours the plaintiff and that irreparable harm or injury would be caused to the plaintiff if the appellant herein - original defendant No.1 is not restrained by an order of injunction.
Making above submissions and relying upon following decisions, it is requested to allow the present appeal and quash and set aside the impugned order of interim injunction passed by the learned Commercial Court.
1. Torrent Pharmaceuticals Ltd. vs. Wockhardt Ltd. 2017 SCC Online Bom 318 Page 16 of 30 C/AO/273/2017 CAV JUDGMENT
2. Britannia Industries Ltd. V/s. ITC Limited 2017 SCC Online Del 7391
3. Techno Plastic Industries vs. Dart Industries Inc. & Anr. 2017 SCC Online Madras 1447
4. M/s. Smithkline Beecham Plc. and Ors. vs. M/s. Hindustan Lever Limited and Ors.
2000 (52) DRJ
5. Toyota Jidosha Kabushiki Kaisha vs. Prius Auto Industries Limited and Ors.
(2018) 2 SCC 1
6. BDA Pvt. Ltd. V/s. Paul P. John & another (2008) 152 DLT 405 Delhi High Court [5.0] Present appeal is vehemently opposed by Shri Kamal Trivedi, learned Counsel appearing on behalf of the original plaintiff.
[5.1] Shri Trivedi, learned Counsel appearing on behalf of the original plaintiff has vehemently submitted that in the facts and circumstances of the case the learned Commercial Court has rightly granted the interim injunction against the defendant No.1 and the same is granted considering the material on record and having prima facie observed in favour of the plaintiff that plaintiff has made out a case against the defendant with respect to passing off its "Maharaja Whiteline Blizzard 50, Maharaja Whiteline Blizzard 20" as well as "Maharaja Whiteline Blizzard 50 DLX and Maharaja Whiteline Blizzard 20 DLX" air coolers in question. It is further submitted by Shri Trivedi, learned Counsel appearing on behalf of the original plaintiff that as such the plaintiff is Page 17 of 30 C/AO/273/2017 CAV JUDGMENT the pioneer in the business of coolers. It is submitted that the plaintiff came out with a specially designed Tower Coolers in the year 2009 and their products - Diet Series air coolers are in market since 2009 which looking to its special design and shape has acquired a unique identity in the market in the field of air coolers.
[5.2] It is further submitted by Shri Trivedi, learned Counsel appearing on behalf of the original plaintiff that as such the plaintiff has been successful in establishing and proving all the three conditions required for the purpose of getting the injunction with respect to passing off its goods, 1) prior user; 2) having acquired goodwill and reputation. It is submitted that therefore the learned Commercial Court has rightly granted the injunction.
[5.3] It is further submitted by Shri Trivedi, learned Counsel appearing on behalf of the original plaintiff that as such goodwill signifies the value of business in terms of turnover. It is submitted that reputation follows the goodwill. It is submitted that the plaintiff has both, goodwill and also reputation and therefore, the learned Commercial Court has rightly granted the injunction against the defendant No.1 with respect to the products in question.
[5.4] Shri Trivedi, learned Counsel appearing on behalf of the original plaintiff has taken us to findings recorded by the learned Commercial Court on prior user, on the plaintiff's acqiuring goodwill and reputation and also the goodwill with respect to their Diet Series air coolers more particularly with respect to the shape - unique shape and tower coolers and the relevant documents / material on record which should have been considered by the learned Commercial Court.
Page 18 of 30 C/AO/273/2017 CAV JUDGMENT[5.5] It is further submitted by Shri Trivedi, learned Counsel appearing on behalf of the original plaintiff that as such the suit is for passing off action and the injunction is against the defendants for passing off their goods in question. It is submitted that while considering the case for passing off only, as per catena of decisions of the Hon'ble Supreme Court as well as this Court only the particular similarities are to be looked at and the microscopic dissimilarities are not required to be considered. It is submitted that by and large overall similarities are to be considered. It is submitted that on considering both the products in question the learned Commercial Court has specifically given a finding that both the products - products in question of the plaintiff as well as products in question of the defendant No.1 are by and large having overall similarities. It is submitted that therefore when there are by and large overall similarities there are all chances of confusion amongst the people purchasing air coolers and therefore, the learned Commercial Court has rightly granted the injunction.
[5.6] It is further submitted by Shri Trivedi, learned Counsel appearing on behalf of the original plaintiff that as such there are no suppression of material facts more particularly with respect to the date of knowledge of goods in question of the defendant No.1 as alleged on behalf of the defendant No.1. For the aforesaid he has taken us to the relevant documents / material on record namely cancelation petition as well as the averments in the plaint as well as the rejoinder before the learned Commercial Court on the allegation of suppression. It is submitted that therefore it can be said that defendant No.1 is not right in submitting that the plaintiff is not entitled for grant of relief on the ground of suppression of material facts. It is submitted that as such the design of the air coolers by the defendant No.1 was converted into Blizzard model only in the month of February 2017. It is submitted that even otherwise Page 19 of 30 C/AO/273/2017 CAV JUDGMENT it makes no difference whether the defendant No.1 is in market since 2016 and/or in 2017 as such the plaintiff is in the market of selling the Diet series air coolers since 2009. It is submitted that as such in the year 2009 the defendant No.1 was not even born.
[5.7] It is further submitted by Shri Trivedi, learned Counsel appearing on behalf of the original plaintiff that as such the plaintiff has been successful in proving prima facie at this stage their goodwill and repuation and even with respect to the Diet coolers.
[5.8] It is further submitted by Shri Trivedi, learned Counsel appearing on behalf of the original planitiff that while considering the action for passing off and grant of injunction on the allegation of passing off, mere representation is enough and the intention is not required to be proved.
[5.9] It is further submitted by Shri Trivedi, learned Counsel appearing on behalf of the original plaintiff that as such the defendant No.1 has not explained why the defendant No.1 has chosen the tower wall design of the air cooler and why not other shape. It is submitted that they should have adopted other shape. It is submitted that aforesaid shows the intention on the part of the defendant No.1 in passing off of their goods deceptively with that of the plaintiff's goods.
[5.10] It is further submitted that in case of passing off and grant of injunction likelihood of damages itself is sufficient. It is submitted that mere likelihood is more than sufficient while granting the injunction.
[5.11] It is further submitted by Shri Trivedi, learned Counsel appearing on behalf of the original plaintiff that the findings recorded by the learned Commercial Court while granting injunction more Page 20 of 30 C/AO/273/2017 CAV JUDGMENT particularly the findings recorded in para 81 onwards are on appreciation of evidence / material on record which are neither perverse nor contrary to the evidence on record and therefore, the impugned order of grant of injunction is not required to be interfered with by this Court.
Making above submissions and relying upon the following decisions, it is requested to dismiss the present appeal.
1. Toyota Jidosha Kabushiki Kaisha vs. Prius Auto Industries Limited and Ors.
(2018) 2 SCC 1 (Para 37)
2. Gorbatschow Wodka KG vs. John Distilleries Ltd. 2011 (4) Mah. L.J. 842
3. Mohan Lal, Proprietor of Mourya Industries vs. Sona Paint and Hardware AIR 2013 Delhi 143
4. Nirma Chemical Works Pvt. Ltd. vs. Nirman High School 2010 (0) GLHEL HC 223620
5. Selvel Industries and Ors. vs. Om Plast (India) Manu/MH/1120/2016
6. Troikaa Pharmaceuticals Ltd. vs. Pro Laboratories (P.) Ltd. 2008 (3) GLR 2635 (Para 29) [6.0] Heard learned Counsel appearing for respective parties at length.
At the outset it is required to be noted that by the impugned order the learned Commercial Court, City Civil Court, Ahmedabad has partly Page 21 of 30 C/AO/273/2017 CAV JUDGMENT allowed the Notice of Motion Exhs.67 and has granted the interim injunction in favour of the original plaintiff restraining the appellants herein - original defendants by themselves, its Directors, servants etc. from in any manner using the impugned design including the shape, get up, layout, which is identical with or colourably / deceptively similar to the plaintiff's product and from passing off their goods viz. Maharaja Whiteline Blizzard 50, Maharaja Whiteline Blizzard 20, Maharaja Blizzard 50DLX and Maharaja Whiteline Blizzard 20 DLX which being a similar design - tower design specially created and designed by the plaintiffs which is deceptively similar to that of plaintiff's product - air coolers "Diet" models. The plaintiffs have instituted the suit against the defendants for passing off action alleging passing off their products - produce designs, configurations, including "Diet" models, designs etc. of the plaintiffs.
[6.1] Having found prima facie case and balance of convenience etc. and having found prima facie case that the aircoolers manufactured and being sold by the defendants Maharaja Whiteline Blizzard 50, Maharaja Whiteline Blizzard 20, Maharaja Blizzard 50DLX and Maharaja Whiteline Blizzard 20 DLX are deceptively similar to that of the design / tower models - Diet models designed, manufactured and sold by the plaintiffs, by impugned order the learned Commercial Court has granted the injunction against the defendants.
[6.2] That while considering the impugned order the findings recorded by the learned Commercial Court are required to be referred to and considered, which are as under:
(1) That the plaintiff company is in the business of marketing, selling, trading and exporting a range of air coolers and pioneer in Page 22 of 30 C/AO/273/2017 CAV JUDGMENT establishing or marketing or producing or manufacturing the plastic body air coolers;
(2) That the definition of "mark" under section 2(z) of the Trade Marks Act include shape of goods;
(3) That the plaintiff is operating under the trade name of "Symphony" and the company's total turn over exceeded approximately Rs.523.98 crores;
(4) That the plaintiffs, its Directors got design of the questioned product registered under the provisions of the Design Act, 2000; (5) That the plaintiff is pioneer in manufacturing of aircoolers etc. and the plaintiff has been given ISO certification;
(6) That design of each model has been registered;
(7) That the defendant has got the design of the aircooler in
question registered in the year 2015, whereas the plaintiff have got registration of the design in the year 2009 and since then the plaintiff has been selling and manufacturing and exporting the products in question;
(8) That the plaintiff is prior user and the first who introduced into the market a completely distinct shape which has not been introduced earlier;
(9) That the plaintiff had received an award being a Quality Marks Award - 2014 for his "Diet" model 22T and thereby has created good reputation nationally and internationally.
[6.3] It is also further observed by the learned Commercial Court in paras 99 to 103 as under:
"99. It is pertinent to note here that since the issue on hand is for consideration of action of passing of and therefore the said action can be said to be a recurring action and based on Common Law rights. However, the entire issue rests on the Page 23 of 30 C/AO/273/2017 CAV JUDGMENT overall shape, configuration, getup and appearance of the products in question and the possibility of deceit and confusion in the minds of purchasers. Thus, admittedly considering the issue on hand which pertains to passing of action, the plaintif is required to prove that the plaintif is a prior user, adopter, prior registered proprietor of the design in question who admittedly appears to have sold the products in question in the market and its sales turnover runs into crores of rupees and sales promotional expenses also in lacs of rupees whereas the defendant No.1 though appears to have been 60 engaged in the manufacturing and selling the products of home appliances, however considering the products in question - disputed products, the defendants appear to have launched the products as acquainted by the plaintif since September 2016 (or January 2016). Thus, the defendants, so far as the products in question are concerned, seems to be new comer who appears to harp over and to take the advantage of the reputation and association of the plaintif's products which amounts to an act of passing of.
COMPARISON OF BOTH THE PRODUCTS VISUALLY:
100. To meet with the issue as raised by the defendants pertains to the products in question manufactured and developed by the defendant No.1, a completely distinct, both visually and aesthetically from that of the plaintif and no case for any confusion, much less deceit and also on account of the shape, configuration on the ground that the product of the plaintif have attained a secondary meaning and pattern of the product and resemblance thereof with the shape, configuration, pattern of the plaintif's products and the issue Page 24 of 30 C/AO/273/2017 CAV JUDGMENT as to the product, if placed side by side as well as on independent comparison of both the products, it cannot be said that the product of the defendant No.1 is leading and/or likely to lead general public to believe that the goods ofered by defendant No.1 are of the plaintif. 61 Thus, the aforesaid issues in the form of submissions, are required to be dealt with in compass of the entire material placed for consideration on record.
101. It is not in dispute that the whole case of the plaintif rests on the shape, configuration, pattern, etc. as to the product in question as disputed by the defendant No.1. At the outset, it is to state that at the joint request made by the learned Senior Advocates appearing for the respective parties seeking permission to produce their respective products before the Court vide Exh.27 and therefore this Court while conceding the request, has had an occasion to see both the products in question which were brought before this Court during the course of hearing and therefore the question whether the two are deceptively similar or not, the test, as held by several High Courts is, what appeals to the eye of the Judge on the first impression and therefore, the first impression has to be of a person with average intelligence and/or imperfect recollection.
102. Even during the course of hearing, the learned Senior Advocate appearing for the defendant No.1 has tried to distinguish and show the dissimilarities between the products in question while referring the front view, rear view, upper view and lower view. However, the said test is to be applied Page 25 of 30 C/AO/273/2017 CAV JUDGMENT and pertains to the infringement of the design under Section 22 of the Designs Act, 2000 which at the most may fall under the category and issue of 62 fraudulent or obvious imitation thereof which amounts to an act of piracy and/or infringement. Therefore, this Court in the preamble of this order has made it categorically clear that several contentions raised by the learned Senior Advocates appearing for the respective parties which pertains to the infringement of the design would not be entertained as the entire gamut of the case on hand is dispute as to passing of which only rests on the shape, configuration and overall appearance of the products in question. In nutshell, a comparison of both the products show a striking similarity, however eforts seems to have been made by the learned Senior Advocate appearing for the defendant No.1 to show dissimilarities, but considering the test requires to be adopted is to see the salient features, overall similarity, is the touchstone, mark or product must be viewed by observing overall structure, phonetic similarity and idea thereto, visual test of products in question. In short mark must be compared as a whole instead of microscopic examination as the products are placed side by side only to find out diference as overall similarity as appearing in case on hand, is sufficient.
103. Apart from the goodwill and turnover of the products in question and in furtherance thereof as to the substantial goodwill and reputation inheres in the plaintif's products in question which seems to have been launched way back in the year 2009 and the 63 very fact has not been disputed by the defendants. Not only that, at the relevant time, no other Page 26 of 30 C/AO/273/2017 CAV JUDGMENT product as launched by the plaintif and with the similar comparable shape/appearance existed in the market prior to the introduction thereof by the plaintif. Thus, the product in question so launched by the plaintif at the relevant time acquired a distinctive shape and/or getup and/or colour scheme and/or overall appearance (surface pattern) cannot be disputed."
It is further observed in paras 105 to 107 as under:
"105. In furtherance of the aforesaid aspect, even the product in question introduced by the plaintif at the relevant time wherein prior thereto, no such product or similar thereof or comparable shape and overall appeals existed and the gestures of the plaintif while launching such product completely amounts to a revolutionary and of distinct shape which had not been introduced earlier and therefore, the same can be termed as a novelty itself of the product in question which generated a huge sale and popularity.
106. Though the eforts seems to have been made by the defendant No.1 by placing forward the ground as to the product in question being commonly known / design having overall similar appearance as that of the impugned design of the plaintif having been so granted in favour of Lesko Holdings by the USPTO in 2006. However, while perusing the material in support of its contention, it prima facie appears that the said image, the xerox copy of which has been produced by the defendant No.1, is a body for a vertical fan whereas the impugned product in question is an air cooler.Page 27 of 30 C/AO/273/2017 CAV JUDGMENT
107. Not only that, the overall appearance of the said product, comparing with the impugned product, stands on a diferent footing. Thus, the protest so lodged by the defendant No.1 while placing forward the aforesaid product to disentitle the claim of the plaintif with regard to the impugned product, would not come to the rescue of the contention of the defendant No.1 as the defendant No.1 seems to have launched its product admittedly in January 2016 whereas the product of the plaintif in question, as discussed hereinabove, was launched in 2009 and at that time, no other product with the similar or comparable shape and/or overall appearance existed in the market prior to the introduction thereof by the plaintif and the very existence amounts to goodwill and/or reputation in the shape and/or overall appearance of the product in question."
[6.4] Considering the findings recorded which are prima facie on appreciation of evidence / material on record and thereafter having opined / observed that the case for passing off is made out and thereafter the learned Commercial Judge has granted the interim injunction as prayed for in terms of para 38A, we are of the opinion that it cannot be said that the learned Judge has committed any error. The findings recorded by the learned Commercial Court are on appreciation of evidence and having found prima facie case, balance of convenience etc. Once having found the deceptive similarity between the products in question of the plaintiffs and the products in question of the defendants and having found that the plaintiffs introduced the design first time of a tower model - Diet model which had earned a reputation, goodwill etc. and the plaintiff is in prior use of the said design / models and having given the aforesaid findings, we are of the opinion that the case of Page 28 of 30 C/AO/273/2017 CAV JUDGMENT passing off has been made out and therefore, the learned Commercial Court has rightly granted the injunction referred to hereinabove.
[6.5] Number of decisions have been cited by the learned Counsel appearing on behalf of the respective parties referred to hereinabove. However, all the decisions are required to be considered in the facts and circumstances of the case and a prima facie case being made out, considering the principles to be considered while granting the case of passing off. Therefore, we are of the opinion that though we agree with the proposition of law laid down in the cited decisions relied upon by the learned Counsel appearing on behalf of the appellant, same shall not be applicable to the facts of the case on hand more particularly with respect to the findings arrived at by the learned Commercial Court referred to hereinabove.
[6.6] We are in complete agreement with the view taken by the learned Commercial Court. No interference of this Court is called for against the impugned interim injunction granted by the learned Commercial Court.
[7.0] In view of the above and for the reasons stated above, we see no reason to interfere with the impugned order passed by the learned Commercial Court. Under the circumstances, present Appeal From Order deserves to be dismissed and is, accordingly, dismissed.
Being a commercial dispute arising out of the Commercial Courts Act, the learned Judge, Commercial Court is directed to decide and dispose of the suit at the earliest. All concerned are directed to cooperate the learned Commercial Court in early disposal of the suit being a commercial dispute. It is observed that findings recorded by the learned Commercial Court and confirmed by this Court are to be treated and considered as prima facie while deciding applications Exh.67 and Page 29 of 30 C/AO/273/2017 CAV JUDGMENT the learned Commercial Court to decide and dispose of the suit in accordance with law and on its own merits.
With this, present Appeal from Order stands dismissed.
CIVIL APPLICATION NO.1 OF 2017 In view of dismissal of main Appeal from Order, present Civil Application also stands dismissed.
Sd/ (M.R. SHAH, J.) Sd/ (A.Y. KOGJE, J.) FURTHER ORDER After the pronouncement of the judgment, learned Counsel appearing on behalf of the appellant - original defendant requests to extend the interim relief granted earlier.
In the facts and circumstances of the case, interim relief granted earlier to continue till 20.08.2018.
Sd/ (M.R. SHAH, J.) Sd/ (A.Y. KOGJE, J.) Ajay** Page 30 of 30