Calcutta High Court
Marico Limited vs J.K. Enterprises & Others on 23 August, 2010
Author: Sanjib Banerjee
Bench: Sanjib Banerjee
1 GA No. 1823 of 2004 GA No. 2250 of 2010 CS No. 128 of 2004 IN THE HIGH COURT AT CALCUTTA ORDINARY ORIGINAL CIVIL JURISDICTION MARICO LIMITED
-Versus-
J.K. ENTERPRISES & OTHERS
For the Plaintiff: Mr Jayanta Mitra, Sr. Adv.,
Mr S.N. Mookherjee, Sr. Adv.,
Mr Tilok Bose, Sr. Adv.,
Mr Ranjan Bachawat, Adv.,
Mr Rudraman Bhattacharya, Adv.,
Mr Dipayan Choudhury, Adv.,
Mr Suvradal Choudhury, Adv.,
For the Defendant No. 1: Mr Surajit Nath Mitra, Sr. Adv.,
Ms Jayeeta Sinha, Adv.,
Mr Bhagwandas Verma, Adv.
Hearing concluded on: August 20, 2010.
BEFORE
The Hon'ble Justice
SANJIB BANERJEE
Date: August 23, 2010.
SANJIB BANERJEE, J. : -
The original claim that the then plaintiffs carried to court was that the first defendant was passing off its coconut oil sold in pouches as that of the plaintiffs. The original plaintiffs were Hindusthan Lever Limited and one of its subsidiaries. During the pendency of the action, the original plaintiffs assigned their rights in respect of the relevant marks in favour of the present plaintiff for valuable consideration. The original plaintiffs obtained an ex parte ad-interim order on GA 2 No. 1823 of 2004. Such order was reversed in appeal on June 11, 2004 on the ground that no reasons had been assigned in support of the order. GA No. 1823 of 2004 is the first of the two applications under consideration now.
According to the petition in GA No. 1823 of 2004, the plaintiff sold and marketed coconut oil both of the edible quality and for application as hair oil in packages where the word mark "Nihar" was the leading feature. The plaintiff's pouches were light green in colour with "Nihar" written in white in capital letters at the top of the pouch on its front side. There was a drawing prominently displayed in the middle of the front side with the sketch of two coconut trees against a bright backdrop which, presumably, implied the sun. There was a full coconut shown next to the coconut trees with another broken, half coconut to its right. Each letter of the word "Nihar" had a black outline and the letter "i" had a flourish of two leafs immediately above it. On the top left of the front of the pouch there was an inverted triangle announcing that it was an economy pack with a spherical blob of red towards the lower end of the inverted triangle indicating the price of Rs.10/-. Below the central picture on the front side of the pouch the words "coconut oil" were written in black print in capital letters. The complaint in the earlier petition was that in the first defendant's use of a similar green coloured pouch for coconut oil, the essential features of the plaintiff's package had been substantially reproduced. The first defendant's pouch prominently bears the name "Nihal", also in white capital letters with a black outline of each letter. There is different form of flourish above the letter "i" of Nihal but one has to compare the two packets to tell the difference. Below "Nihal", the word "Uttam" written in yellow and smaller size appears on the first defendant's pouch just above the words "coconut oil" in black capital letters. Towards the bottom middle on the front side of the first defendant's pouch, there is a circular patch of yellow depicted with a dark yellowish centre, presumably signifying the sun. There are two well-defined coconut trees which appear against the backdrop of the yellow and orange band. The front side of the first defendant's pouch carries an announcement on the top left corner within a ribbon-like figure in yellow that it 3 is a pouch pack. There is a triangle announcing the price of Rs.10/-. The words "pouch pack" and the "price" are written in red.
Sometime in early 2006, the original plaintiffs transferred their rights in respect of the "Nihar" marks in favour of the present plaintiff. The present plaintiff has substantial presence in the market and is the owner of several valuable marks including the Parachute brand of hair oil. The present plaintiff applied for amendment of the plaint consequent upon the assignment of the marks in its favour. Such amendment was allowed. In 2008 the word mark "Nihar" was registered in favour of Hindusthan Lever Limited in class 3. The present plaintiff applied for recording its name as the owner of the mark in the register. Another word mark registration in respect of "Nihar" in class 42 was granted in favour of Hindusthan Lever Limited and the present plaintiff has applied for its name to be recorded in the register against such mark.
The present plaintiff filed GA No. 2180 of 2010 for amendment of the plaint to incorporate the additional cause of action of infringement. Such amendment application has been allowed by an order of August 19, 2010.
GA No. 2250 of 2010 is the plaintiff's second application seeking interlocutory orders in view of the registration of the mark. The plaintiff says that though it has discontinued the use of the pouch that was the subject matter of the earlier interlocutory application, it is still entitled to an order of injunction since there is substantial recall value in the market of the plaintiff's product being sold in such pouches and the first defendant's use of such pouches would result in deception and confusion and the plaintiff suffering damage as its prospective customers are likely to buy the first defendant's product under the mistaken impression that the pouches containing the first defendant's product were of the plaintiff's manufacture.
The plaintiff asserts that notwithstanding the plaintiff no longer selling its products in pouches that had been referred to in its earlier application, in view of 4 the registration of the mark "Nihar" to which the plaintiff is exclusively entitled, the "Nihal" mark may not be used by the first defendant since it is, visually and phonetically, deceptively similar to the plaintiff's "Nihar" mark and amounts to infringement. The plaintiff says that the first defendant's use of the mark "Nihal" is dishonest since it is evident from the conduct of the first defendant that it has attempted to trade on the goodwill and reputation of the plaintiff, first by using a get-up and trade dress which was a colourable imitation of the plaintiff's and next by selling its product in green plastic containers which bear a close resemblance to the shape and get-up of the plastic containers in which the plaintiff's products are sold. The plaintiff says that in both the first defendant's pouches and plastic containers, it is the word "Nihal" that stands out. The plaintiff complains that the similarity of the get-up of the first defendant's pouches to the plaintiff's pouches and the shape and get-up of the plastic containers of the first defendant's product nearly resembling the plastic containers in which the plaintiff's coconut oil is sold, would warrant an injunction as claimed.
The plaintiff has claimed user of the "Nihar" mark and the pouches from or about the year 1994 and says that the first defendant has produced nothing to show that its use of the pouches were prior to 2002. The plaintiff claims that the first defendant's use of the plastic containers complained of are even more recent.
The first defendant seeks to establish the features in the first defendant's pouch that sets it apart from the plaintiff's. The first defendant submits that the name of its product is "Nihal Uttam" and not merely "Nihal". The first defendant labours to demonstrate that the writing style in its pouch is different and suggests that the plaintiff cannot claim exclusivity in the green colour. The first defendant shows that on a comparison of the two pouches several distinguishing features would be evident.
5On the plaintiff's first application, the first defendant says that the sales figures furnished are without particulars and despite the first defendant's challenge in its affidavit, the plaintiff has not attempted to show that its "Nihar" product sold in pouches had wide acceptability in the market. The first defendant says that since the plaintiff has discontinued the use of its pouch, there is no longer any likelihood of any prospective customer being deceived or confused. The first defendant claims that it sells its products only in Bihar and has been doing so for several years now. The first defendant suggests that since no interim interlocutory injunction had been obtained for six years by the plaintiff, no order should be made now.
It is the first defendant's submission that the word mark used in its pouches is "Nihal Uttam" and the word mark used in its plastic containers is "Fresh Nihal." The first defendant says that the two additional words have been deliberately ignored by the plaintiff to create a false impression. The first defendant has also relied on a judgment reported at (2007) 6 SCC 1 (Heinz Italia v. Dabur India Ltd.). The first defendant relies on paragraph 15 of the report where the tests as to passing-off have been recognised. The first defendant says that since its word marks, both in respect of its pouches and in respect of its plastic containers, are sufficiently distinct and contain additional words, no case of infringement has been made out. The first defendant argues that the case of passing-off should be disregarded as there is neither any misrepresentation made in course of the trade by the first defendant nor would prospective customers of the plaintiff mistake the first defendant's product to be that of the plaintiff. The first defendant has also questioned the present action being instituted in this Court, though there is no application for revocation of the leave granted under clause 12 of the Letters Patent. Finally, the first defendant submits that since the original plaintiffs had valued the suit at Rs.11 lakh, the plaintiff would suffer no irreparable loss if the injunction is refused.
6The first defendant has not questioned the plaintiff's right to the word mark "Nihar." By way of justification, the first defendant has averred that it hit upon the "Nihal" mark since the person in control of the first defendant practices Sikhism and the word "Nihal" has a special meaning in the Guru Granth Saheb.
Since the first defendant has not questioned the plaintiff's rights as the owner of the registered mark "Nihar", it has to be assessed as to whether in the use of the mark "Nihal" in conjunction with other words by the first defendant, there is infringement of the registered mark. There is no dispute that the two marks are used in respect of coconut oil, though the first defendant claims that its coconut oil is only of edible grade. At the highest, the products may not be identical in nature but in both being coconut oil, whether of the edible kind or the hair oil variety, they are certainly similar in nature. Infringement or passing- off is decided on the basis of both the visual and the phonetic appreciation of the rival marks. If the first defendant's word mark on its pouch is "Nihal Uttam", as it claims, it does not appear to be so in the manner of the writing thereof. "Nihal" is written in similar style as "Nihar" and "Uttam" is written in different colour and smaller size below "Nihal" on the first defendant's pouch. Even if, technically, the first defendant's word mark is "Nihal Uttam" it is the "Nihal" aspect which is emphasised on in the manner in which the word mark is represented on its pouch. "Nihal" is deceptively similar to the plaintiff's mark "Nihar" within the meaning of Section 2(h) of the Trade Marks Act, 1999 and the manner of presentation of the mark by the first defendant would, prima facie, entitles the plaintiff to an order of injunction against the first defendant both on account of infringement and passing-off. In the first defendant's plastic containers, the word "Fresh" appears to be more a description of the product than a part of its mark. Again, it is "Nihal" which stands out as the prominent feature of the mark. The visual depiction of the defendant's mark is such that the product will be recognised as "Nihal" and not as "Fresh Nihal" and despite the first defendant's insistence that its mark is "Fresh Nihal," "Nihal" is so prominently featured and "Fresh" is so indistinct in its plastic containers that it is likely to deceive or cause 7 confusion within the meaning of the expression "deceptively similar" in Section 2(h) of the Act. Prima facie, there is very little to tell between the plaintiff's discontinued pouch and the first defendant's pouch; there is hardly any dissimilarity between the rival plastic containers. The test is not by placing the two products side by side and counting the minor differences; the test is as to whether the offending package is such that it reminds a casual viewer of the original package or gives an impression that it may be associated with the original package. The matter has to be assessed from the point of view of the prospective customer who, more often than not, will not have the benefit of having the two packages side by side or even the time or interest to compare the two; but who will go by pure impression and his indistinct memory.
In any event, the get-up of the first defendant's pouch is so similar to the plaintiff's discontinued pouch that an unwary customer with imperfect recollection of the plaintiff's discontinued pouch would associate the first defendant's pouch with the plaintiff's and thereby be prompted to purchase it in the mistaken impression that it is of the plaintiff's manufacture.
When such a clear prima facie case is made out by the plaintiff, the fact that the suit had been originally valued at Rs.11 lakh pales into insignificance, though the plaintiff has undertaken to deposit the balance amount on account of court fees to meet the highest amount payable thereon.
There will, therefore, be an order of injunction restraining the first defendant whether by itself or by its servants or agents or assigns or otherwise howsoever from using the word "Nihal", or any other mark deceptively similar thereto, in connection with its coconut oil product in any manner whatsoever. Since "Nihal" is the most striking feature of the first defendant's get-up and packaging in both its pouches and its plastic containers, the deletion of the word "Nihal" and an injunction restraining the first defendant from using any other word mark deceptively similar to the plaintiff's "Nihar" will suffice for the 8 interlocutory stage. GA No. 1823 of 2004 and GA No. 2250 of 2010 are disposed of on the above basis without any order as to costs.
Urgent certified photocopies of this judgment, if applied for, be supplied to the parties subject to compliance with all requisite formalities.
(Sanjib Banerjee, J.) Later:
The first defendant seeks a stay of the operation of the order, which is declined in view of the strong prima facie case made out by the plaintiff.
(Sanjib Banerjee, J.)