Calcutta High Court
Hindustan Unilever Limited vs Sushilkumar Sitaldas Dhirani on 20 April, 2016
Author: Harish Tandon
Bench: Harish Tandon
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IN THE HIGH COURT AT CALCUTTA
ORDINARY ORIGINAL CIVIL JURISDICTION
ORIGINAL SIDE
G.A. 1036 of 2016
With
C.S. 100 of 2016
Hindustan Unilever Limited
-Vs-
Sushilkumar Sitaldas Dhirani
Before: Hon'ble Justice Harish Tandon
Date: 20.04.2016
Appearance:
S. Mitra, Sr. Adv.,
Ratnanko Banerjee, Adv.,
Arunabha Deb, Adv.
.... For the Petitioner.
The Court:
The Petitioner has acquired recognition and good reputation in
manufacturing, marketing and sale of the various consumer products including
cosmetics, toiletries, toilet soaps, washing soaps and detergent in the Fast
Moving Consumer Goods Sector in the country. The Petitioner's product has
acquired household name in such sector and are widely sold and distributed
through out the country including the remote villages in the distinct corners of
the country. The disinfectant soap is marketed under the brand name "Lifebuoy"
and have been proven in the laboratories to provide cent percent effective germ
protection than any other ordinary soaps. The disinfectant soap is a product of
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high quality and can be differentiated from the other common soap with
distinctive and unique colour combination of white and red used on the wrapper.
In the year 2004, the wrapper was redesigned and contains a happy
smiling family of father, mother, daughter and son in the ring indicating the
coverage of the family from the attack of germs. The trade brand "Lifebuoy" is put
on the said wrapper within the oval shape design surrounded by a silver lining.
The aforesaid artistic presentation with the colour combination of white and red
with a happy smiling family achieved great recognition in FMCG (Fast Moving
Consumer Goods) Sector and such artistic level and the work though created by
an agency was specifically assigned in favour of the Petitioner and thus the
Petitioner has acquired a right to use the wrapper for the said product. The
distinctive colour combination of red and white particularly white letters on the
background with the happy, smiling family augments the voluminous sales of the
soap with its wide publicity both in urban as well as the rural areas of the
country. Not only because of the quality but also the get up and trade dress
distinguishes the product of the Petitioner from the other common soap. It is
stated that the level / wrapper conveys an aura of pre-eminent excellence and
qualifies for its distinction.
It is alleged that the Respondent is manufacturing, marketing and selling
his product which is also a soap under the mark "Renee" in packets having trade design, graphics and colour scheme similar to the label and trade mark of the 3 Petitioner's product. The infringing goods on mere comparison both of the label / packets and the soap bar inside the wrapper would indicate an identical colour scheme and the artistic work. The mark "Renee" is printed in white colour within the oval shape over the base red colour surrounded by a silver colour lining.
In this backdrop it is alleged that the Respondents are not only infringing the trade mark but also the copyright by imitating the label / wrapper but also passing off the goods to common people who are mostly illiterate as if it is a goods of the Petitioner.
The adoption of the similar and identical 'trade dress' and the 'get up' may create a confusion in the mind of unwary consumers and have received recognition in Indian law as a case of passing off. The Division Bench judgment of this Court in case of Euro-Solo Energy Systems Limited -Vs- Eveready Industries India Limited reported in (2009) 4 CHN 162 may be relied upon for the following observations:-
"The extract of pleadings reproduced above would indicate that the respondent ahs made the necessary averments that the batteries are sold to all segments of the Indian population in towns and villages even in the remotest corners of the country. The respondent has also claimed that the colour combination and the 'get-up' of the appellant for its betteries is deceptively similar to the colour scheme and 'get up' used by the respondents for packaging of its batteries and other products. As to whether the respondents are able to prove the case pleaded, would have seen at a subsequent stage, when the parties have exchanged the necessary pleadings. At the ad interim stage, the Court has to form a prima facie opinion on the uncontroverted pleadings of the plaintiff.4
Therefore, the prima facie view expressed by the learned Single Judge on the basis aforesaid cannot be said to be unjustified.
We are also unable to accept the submission of the learned counsel for the appellant that any irreparable loss would be caused to the appellant. Prima facie it appears that the appellant has changed the 'trade dress' and the 'get-up' since 2007. The present 'get-up' and 'trade dress' is deceptively similar to the 'get-up' and 'trade dress' of the respondent. We also do not find any merit in the submission of the learned counsel that the respondent is seeking monopoly on the use of colour red. The grievance of the respondent is with regard to the 'trade dress' and 'get-up' of the batteries of the appellant, which according to the respondent is likely to confuse unwary purchasers.
Even otherwise, we are of the opinion that at this stage the Appellate Court would not be justified in vacating the interim injunction. In our opinion the view taken by the Learned Single Judge is just and reasonable. It is a settled proposition of law that the Appellate Court would not interfere with the prima facie view taken by the Trial Court merely because the Appellate Court on the same material would reach a different conclusion. The Appellate Court is not permitted to re-assess the material and seek to reach a conclusion different from the one reached by the Court below, if the discretion has been expressed by the Trial Court reasonably and in a judicial manner. The fact that the Appellate Court would have taken a different view may not justify interference with Trial Court's exercise of discretion.
We find support for this view of ours from the judgments of the Supreme Court in the cases of Wander Ltd. v. Antox India Ltd. (1990 Supp SCC 727) and N.R. Dongre v. Whirlpool ((1996) 5 SCC 714). In our opinion, the submissions made by the learned counsel for the appellant based on decisions of the English Courts would not be relevant in the context of Indian customers, who may be urbanite, literate and discerning or illiterate and rustic villagers. For this view of ours, we seek suppoet from the observations of the Supreme Court in the case of Cadila Health Care (supra) which are as follows:
"33. The decisions of English courts would be relevant in a country where literacy is high and the marks used are in the language which the purchaser can understand. While English cases may be relevant in understanding the essential features of trade mark law but when we are dealing with the sale of consumer items in India, you have to see and bear in mind the difference in situation between England and India. Can English principles apply in their entirety in India with no regard to Indian conditions? We think not.5
In a country like India where there is no single common language, a large percentage of population is illiterate and a small fraction of people know English, then to apply the principles of English law regarding dissimilarity of the marks or the customer knowing about the distinguishing characteristics of the plaintiff's goods seems to overlook the ground realities in India. While examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same. While dealing with cases relating to passing off, one of the important tests which has to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors. What is likely to cause confusion would vary from case to case........"
There shall be an order in terms of prayer (d) to the notice of motion which shall be made operative for a period of 10 (ten) weeks from date.
The Petitioner is directed to serve the copy of the application upon the Respondent by speed post and shall file the affidavit-in-service on the next date.
The Respondents are at liberty to apply for vacation, variation and / or modification of the interim order upon notice to the Petitioner.
The application is made returnable after 4 (four) weeks as 'New Motion' in the supplementary list.
(Harish Tandon, J.)