Bombay High Court
Samex India Pvt Ltd vs Mohammed Adams Sole Proprietor Of Ms ... on 1 August, 2024
Author: R.I. Chagla
Bench: R.I. Chagla
9-ial-15350-2023.doc
jsn
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
Digitally
JITENDRA
signed by
JITENDRA
SHANKAR
ORDINARY ORIGINAL CIVIL JURISDICTION
SHANKAR NIJASURE
NIJASURE Date:
2024.08.16
18:25:53
+0530
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO.15350 OF 2023
IN
COM IPR SUIT NO.352 OF 2023
Samex India Pvt. Ltd. ...Applicant /
Plaintiff
Versus
Mohammed Adams Sole Proprietor of Ms. Lail ...Defendant
Spices
----------
Akshay Patil and Shirley Mody, i/b. K. Ashar and Co. for the
Applicant / Plaintiff.
Subhradeep Banerjee with Sudhakar Pandaram for Defendant.
----------
CORAM : R.I. CHAGLA J.
DATE : 1ST AUGUST, 2024.
ORDER :
1. The pleadings are complete in the above Interim Application and by consent of parties, the Interim Application is heard finally.
2. By this Interim Application, the Applicant / Original 1/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc Plaintiff has sought order of injunction restraining Defendant from infringing and passing off the Plaintiff's registered trade marks and passing off other unregistered trade marks / labels. Apart from the infringement and / or passing off the trade marks, the Plaintiff is also claiming relief of infringement of copyright in its original artistic work "Emperor Akbar Green Cardamom" lables / packaging in distinct packaging described as "Emperor Akbar Cardamom Red Grade", "Emperor Akbar Cardamom Orange Grade", "Emperor Akbar Cardamom Green Grade" and "Emperor Akbar Cardamom Pink Grade".
3. The Plaintiff was originally incorporated as a partnership firm "Samex Agency" in the year 1981 and was converted into a private limited company sometime in 2016. The Plaintiff is in the business of supplying, marketing, exporting and distributing wide ranges of products, including spices. The present suit concerns the Plaintiff's business of sale of spices particularly "Packaged Cardamom" and the registered trade mark in relation to packaged Cardamom brand "Emperor Akbar Green Cardamom" label / trade dress and other unregistered trade marks/labels. 2/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 :::
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4. The Plaintiff's predecessor in title, Samex Agency, applied under Section 23(2) of the Trade Mark Act, 1999 for registration of various trademarks including trademark No. 3121337 dated 9th December 2015 being (Exhibit B at page 120 of the Plaint) being "Emperor Akbar Green Cardamom" label / trade dress. The trade mark "Emperor Akbar Green Cardamom" label / trade dress is also an original artistic work. Samex Agency upon its conversion had assigned and transferred the trade marks including trade mark no. 3121337 dated 9th December 2015 to the Plaintiff. The Plaintiff has also registered or applied for registration of its trade marks in various countries. In addition to registration of trade mark "Emperor Akbar Green Cardamom" label / trade dress, the Plaintiff as the owner of the original artistic work depicted as a trade mark registered as trade mark no. 3121337 is also a copyright holder of the same within the meaning of Section 14 of the Copyright Act, 1957.
5. In view of registrations of Trade Mark at Exhibit - "B" of the Plaint more particularly trade mark no. 3121337 in respect of trade mark "Emperor Akbar Green Cardamom" label / trade dress, the Plaintiff has exclusive right to the said trademark and is entitled to the rights conferred under Section 28 of Trade Marks Act. 3/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 :::
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6. Apart from the registered trade mark no. 3121337 which is combination of colours purple, white and gold and other non function design elements, the Plaintiff also uses other labels/packing for its packaged cardamom brand "Emperor Akbar Green Cardamom"
in different colour combination which are as under:-
(a) "Emperor Akbar Cardamom Red grade" which is combination of red, white and gold and other non function design elements.
(b) "Emperor Akbar Cardamom Orange grade" which is combination of Orange , white and gold and other non function design elements.
(c) "Emperor Akbar Cardamom Green grade" which is combination of Green, white and gold and other non function design elements.
(d) "Emperor Akbar Cardamom Pink grade" which is combination of pink, white and gold and other non function design elements.
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9-ial-15350-2023.doc The unique packaging of the goods of the Plaintiff, combination of colours, distinct shape, size, texture and graphics of the packaging has given the Plaintiff's trade marks "Emperor Akbar Green Cardamom" labels or trade dress a unique identity and exclusive association with the Plaintiff. The Plaintiff's product sold with the said labels/ trade dress have become a flagship brand of the Plaintiff.
7. The Plaintiff uses distinct packaging for its packaged cardamom brand depending on the size/diameter of cardamom. The Plaintiff's packaging although have a common design elements, the predominant colour of packaging is changed to denote the size and quality of cardamom. For example, instead of predominant colour purple, the Plaintiff uses colour red or orange or green or pink on its packages. Although the other packages described above are not registered as a trade mark, they constitute a distinct label mark and an original artistic work and enjoy protection under the Copyright Act, 1957. The Plaintiff claims ownership of copyright in the distinct artistic work in the other packaging as described above.
8. The Plaintiff claims to have become a market leader in 5/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc packaged branded Indian green cardamom. The packaged branded green cardamom of the Plaintiff sold with the registered trade mark as well as un-registered mark "Emperor Akbar Green Cardamom" and various labels/ trade dress in different colour combination are extremely popular in India and world over. The products of the Plaintiff are exported all over the world, particularly North American and Middle Eastern countries such as the USA, U.A.E., Saudi Arabia, Oman etc.
9. The Plaintiff's product sold under the trade marks/brand name "Emperor Akbar Green Cardamom" with distinct labels/ trade dress is also registered with the Spice Board, constituted by Ministry of Commerce & Industry, Government of India for promotion particularly export of Indian Spices. The Spice Board encourages Indian Spice Traders to promote their brands in India as well as abroad. The Spice Board undertakes various promotional programs for promotion of Indian Brands of Spices and the Plaintiff has participated in various promotion events organised by the Spice Board. The Plaintiff registered its Brand "Emperor Akbar" and its unique packaging/label with Spice Board in the year 2008. The registration granted to the Plaintiff by the Spice Board dated 17 th 6/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc December 2008 is annexed as Exhibit-D to the Plaint. The Spice Board has also awarded the Plaintiff the award of topmost exporter of cardamom from India for the years 2018-19 and 2019-20. The Plaintiff has been issued with various certifications including ISO 220000:2018 for food safety management systems.
10. The Plaintiff has been promoting its trademarks and the labels on various platforms such as print, social media etc. The Plaintiff in order to protect its trade mark has also issued public notices in the newspapers to create awareness about its trademarks/labels. The Plaintiff promotes its trade marks/labels on video streaming platforms such as YouTube and social media website/applications such as Facebook, Instagram, etc. the details of which are given in paragraphs 10 & 11 of the Plaint.
11. The Plaintiff heavily promotes its packaged cardamom with the trade marks/labels by participating in various national and international exhibitions and events for promoting and marketing of the goods. The Plaintiff has produced photographs of events in which the Plaintiff participated for the purposes of promoting and marketing its packaged cardamom and its brand name "Emperor 7/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc Akbar Green Cardamom" with the labels and the trade dress.
12. The Plaintiff's turnover of the sales of Emperor Akbar Natural Green Cardamom under various trademarks/labels sold F.Y. 2021-22 was Rs.294.46 crores. The sales turnover from the Financial Year 2017-18 to F.Y. 2021-22 ranges between Rs.94 crores to Rs.294 crores. The Plaintiff also spent substantial amounts towards advertisement, marketing, sale, promotion expenses. The Plaintiff claims that they have spent Rs.1.20 crores (approx.) for F.Y. 2019-20, Rs.0.63 crores (approx.) for F.Y. 2020-21 and 0.55 crores (approx.) for F.Y. 2021-22.
13. The Plaintiff states that the Defendant was associated with the Plaintiff from May 2021 upto February 2023. The Defendant supplied cardamom to the Plaintiff in huge quantities. The Defendant regularly visited the Plaintiff's warehouses and facilities. The Defendant was well acquainted and familiar with the trade marks of the Plaintiff and packaging of the Plaintiff's products including the labels/ trade dress registered as trade mark no. 3121337 and other labels/trade dress. The Defendant was also aware of the colour coding used by the Plaintiff for grading of the product by the size and 8/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc shape of cardamom pods.
14. The Plaintiff states that sometime towards the end of February 2023, the Plaintiff was informed that the Defendant had adopted a deceptively similar label / trade dress for packing of its products under the brand name "Mubarak Green Cardamom". As the Plaintiff and the Defendant had association, the Plaintiff confronted the Defendant and called upon the Defendant to cease and desist and refrain from using deceptively similar labels / trade dress/packing which also constituted infringement and passing off of its trade mark bearing trade mark No. 3121337 and other unregistered labels / trade dress/packing. Despite the overwhelming similarity between the Plaintiff's trade marks, labels, trade dress and the Defendant's labels, more particularly packaging of its products sold under the brand name "Mubarak Green Cardamom", the Plaintiff claims that the Defendant brazenly continued to sell its products. The Plaintiff also issued a cease and desist Notice dated 26 th March 2023 to the Defendant. The Defendant replied to the Notice dated 26 th March 2023 through his Advocate's letter dated 13th April 2023 and denied the allegations.
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15. The Plaintiff submits that the overall similarity between the Plaintiff's trademark No. 3121337 and other unregistered labels / trade dress/packing and Defendant's packaging of its product with the brand name Mubarak Green Cardamom is quite stark. If the Plaintiff's product with the brand name "Emperor Akbar Green Cardamom" and the Defendant's product "Mubarak Green Cardamom" are placed side by side, it is extremely difficult to distinguish between them. An ordinary customer is bound to get confused as to the source of the product on account of similarity between the packaging of Plaintiff's product and the Defendant's product having regard to particular colour combination, design, texture and shape of the packaging. Apart from imitating the registered trademark No. 3121337, the Defendant has also imitated the other labels of the Plaintiff. The Defendant has slavishly adopted identical/deceptively similar packaging and is packaging its cardamom in green, red, pink colours with similar or identical design and colour combination.
16. The Plaintiff has submitted that the actions of the Defendant more particularly adopting deceptively similar colour combination, packaging, design elements in the similar order on 10/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc packaging clearly show the malafides on part of the Defendant. Considering the association of the Defendant with the Plaintiff, the adoption of the near and deceptively similar trade dress and/or packaging by the Defendant clearly indicate that the adoption by the Defendant is not honest and has been done with a view to ride on the goodwill and reputation of the Plaintiff and/or cause confusion amongst the purchasers as to the source of the goods. The Plaintiff being an establish market leader not only in India but world over for packets Indian Green Cardamom has build market reputation. It is apparent that the packages of the Defendant are inspired by the packages of the Plaintiff and are nothing but slavish imitation of the Plaintiff's registered marks, labels and the packaging.
17. It is submitted on behalf of the Plaintiff that although the brand names of the products of the Plaintiff and the Defendant i.e. "Emperor Akbar Green Cardamom" and "Mubarak Green Cardamom"
bear no similarity, the adoption of trade dress, get up, with three bock design and photo of cardamom in the circle, the golden design round circle, colour combination, transparent element on sides of the packing, over all layout of the Defendant's packaging makes the product of the Defendant deceptively similar to the Plaintiff's trade 11/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc mark. The trade dress and label adopted by the Defendant is nothing but a slavish copy of the Plaintiff's registered trademark No. 3121337 and the other unregistered labels. A bare comparison of the products of the Plaintiff and the products of the Defendant gives a distinct impression that the products of the Defendant is associated with the Plaintiff or is a product of the Plaintiff or creates confusion over the source of the products. There is overall visual similarity between the labels / trade dress of Plaintiff's product and that of the Defendant.
18. Mr. Akshay Patil, the learned Counsel appearing for the Applicant / Plaintiff has submitted that in determining the similarity between labels / trade dress of the Plaintiff's product and that of the Defendant this Court has laid down the principles for such comparison and relevant decision to be noted is, Sopariwalla Exports & Ors. Vs. Kuber Khaini Pvt. Ltd.1. In that case, the Plaintiff had alleged that the Defendants were infringing Plaintiff's registered trademark 'Afzal' by using a label deceptively similar to that of the Plaintiff although the trade mark of the Defendant was 'Kuber'. The Plaintiff had submitted that the trade mark / label which was used by the Defendants was deceptively similar to the registered trade mark / 1 2012 (15) PTC 348.
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9-ial-15350-2023.doc label of the Plaintiff. A similar contention has been raised by the Defendants in that case as in the present case viz. that since the Plaintiffs trade mark features the word 'Kuber', there is no question of infringement of the Plaintiff's trade mark. This Court upon comparing the rival trade mark came to the conclusion that the Defendant was infringing the trade mark of the Plaintiff. He has placed specific reliance upon paragraphs 15, 17 and 18 of the said decision.
19. Mr. Patil has also placed reliance upon the decision of the Delhi High Court in Colgate Palmolive Co. and Anr. Vs. Anchor Health and Beauty Care Pvt. Ltd. 2 at paragraphs 53 to 63, He has also placed reliance upon the decision of this Court in Sanjay Soya Private Ltd. Vs. Narayan Trading Company3, paragraphs 2, 62 and 63. He has submitted that the Plaintiff's case is on a stronger footing as one of the trade dress / label of the Plaintiff is registered as a trade mark and all that the Plaintiff had to point out is that the mark / product of the Defendant is deceptively similar to the Plaintiff's registered trade mark.
2 2003 SCC OnLine Del 1005/2003(27) PTC 478.
3 2021 SCC OnLine Bom 407.
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20. Mr. Patil has submitted that it is absolutely just and necessary that an interim order be passed restraining the Defendant from infringing Plaintiff's registered trade mark 'Emperor Akbar Green Cardamom' label / trade dress. He has submitted that the Defendants dishonest conduct and fraudulent motive behind adoption of the trade dress, more particularly, the past association between the Plaintiff and Defendant, the Plaintiff apprehends that the Defendant would remove the existing stocks of impugned goods bearing impugned trade mark / labels from its factory / premises / go downs etc. and dump or flood the market with the impugned goods bearing impugned trade marks in the market with a view to cause further losses to the Plaintiff. He has accordingly sought for relief in the Interim Application to be granted.
21. Mr. Subhradeep Banerjee, the learned Counsel for the Defendant has submitted that the Defendant's father's name is Mubarak and therefore the Defendant adopted the name "Mubarak Green Cardamom".
22. Mr. Banerjee has submitted that the color combination adopted by the Defendant is a grading mechanism to filter the 14/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc cardamom as per the size and industry standard. He has submitted that a colour combination is functional aspect and no person can claim exclusivity over the same. The trade dress will survive with the trade mark and the trademark and the color combination must go hand in hand to establish a case of infringement and / or passing off. Without the tradename the colour combination will not survive.
23. Mr. Banerjee has submitted that the Defendant has been in the spice business for the past three generations. The Defendant's business model was to sell the spices in loose packaging to the vendors at wholesale prices, primarily in Tamil Nadu and in different states in India. From 2019 and 2000, the Defendant started the business by supplying cardamom and black pepper to various retail shop owners in and around Tamil Nadu.
24. Mr. Banerjee has placed reliance upon the permissions / licenses obtained by the Defendant to run its business operations. He has submitted that on 15th July, 2021, the Defendant obtained a valid dealer license bearing No. C.S./12976/663/2020 from the Spices Board (Ministry of Commerce and Industries). The license was valid till 31st August, 2023. The Defendant has applied for renewal 15/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc of the said license on 18th July, 2023. He has also placed reliance upon the Goods and Services Tax Identification No. (GSTIN) Certificate bearing No.33CVPM1330DIZK issued under the GST Act, 2017 on 14th February, 2022. He has also placed reliance upon valid license bearing No.12422022000514 obtained by the Defendant under the FSSAI Act, 2006. The license is valid upto 13th October, 2027. He has further placed reliance upon the valid trade license bearing No.122/2021/009/000062 obtained by the Defendant from the Office of CUMBUM Municipality on 28th February, 2023. This license is valid until 31st March, 2024.
25. Mr. Banerjee has submitted that the Defendant commenced business operations and applied for a trademark by the name and style of 'Mubarak Green Cardamom' bearing trademark application No.580 0146 and claims to have been using this trademark since 21st October, 2019.
26. Mr. Banerjee has submitted that the documents on record unequivocally demonstrate that the Plaintiff has been purchasing materials from the Defendant since 2021. The Defendant had commenced the first commercial use of the trade name Mubarak 16/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc packaging in 2023. Since the Plaintiff and Defendant are engaged in similar business, it is impossible that the Plaintiff was unaware of the Defendant's presence.
27. Mr. Banerjee has submitted that the Defendant's business was a family business and was named after his father, Mubarak. The Defendant has been engaged in this business for the last three generations and has broad customer base throughout Tamil Nadu and other states in India. The Defendant has a good clientele because of the quality of their goods.
28. Mr. Banerjee has submitted that the Defendant's mark is entirely different and does not infringe the Plaintiff trademark. He has submitted that there is no monopoly over a colour combination. He has drawn comparison between the 'Emperor Akbar' and 'Mubarak Green Cardamom', in order to show the difference between two marks which is as follows:-
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1. Logo Mubarak is Emperor Akbar is accompanied by accompanied by green green Alleppey cardamom.
cardamom; logos in
golden letters are the
trademark.
2. Package Cut to open Ziplock packaging
3. Flower A picture of a flower A stylish grey vine with gold leaves
below the word on a white background where Akbar
Mubarak appears in the center, and the
emperor is shown in small font
above the word Akbar.
4. Slogan The slogan for the The slogan used his enriching life
picture of cardamom is goodness.
taste and smell of
luxury
5. Embossing The slogan is encircled The slogan is encircled with the
with a device of device cardamom with a golden
cardamom with an ribbon.
artistic work of golden
stripe lines, and the
word premium quality
is imposed on the top of
the golden ribbon.
6. Logo Below the word Below the phrase Akbar, there is a
Mubarak, there is a golden logo of an emperor sitting on
golden logo of a sea a horse surrounded by soldiers.
trader
7. Background The logo, the mark, and The whole mark is on a white
the packaging are background bordering purple on
printed on a white both sides.
background caricatured
as a mosque dome.
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29. Mr. Banerjee has distinguished the judgments of the Plaintiff on the ground that it is a settled position of law that a trademark has to be looked at as a whole and not under a microscope. He has submitted that the Plaintiff has relied upon the judgments to show that only similarity between the Plaintiff's goods is that of colour (which is incorrect). He has submitted that the Plaintiff's trade mark is not phonetically, visually or in any manner similar to that of the Defendant's mark.
30. Mr. Banerjee has placed reliance upon the decisions of the Delhi High Court in Colgate Palmolive Company Ltd. and Anr. Vs. Patel and Anr.4 and decision of the Privy Council in Cadbury Schweppes Pty Ltd. and Ors. Vs. Pub Squash Co. Pty Ltd.5.
31. Mr. Banerjee has submitted that in Colgate Palmolive Vs. Patel and Anr. (Supra), the Court determined the colour combination alone, such as the red and white used by Colgate, could not be monopolised, and exclusive rights granted. He has submitted that in that case while a registered trade mark like 'Colgate' explicitly written on a coloured background is protected, the colours are 4 2005 SCC OnLine Del.1439 equivalent (2005) 31 PTC 583. 5 (1981) 1 ALL ER 213 19/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc considered generic and shared in the toothpaste industry. He has submitted that this decision supports the Defendant's argument that using the colour scheme is not infringement, as it is a functional industry standard for grading cardamom. He has in particular placed reliance upon paragraph 50 and 51 of the said decision.
32. Mr. Banerjee has also referred to the facts of the case in Cadbury Schweppes (Supra) where the focus was on advertising campaigns and their potential to cause confusion or deception in the market. He has submitted that the Court emphasised that while a company can build goodwill through advertising, it does not automatically grant exclusive rights to descriptive elements like slogans or visual images. The Plaintiff must prove that the explanatory material has become uniquely associated with the product and that the Defendant's actions have caused confusion or deception among consumers. He has submitted that this is relevant to the current case as the Defendant argues that Plaintiff's claims of exclusivity over a colour combination are unfounded and that there is no evidence of consumer confusion between the two products. He has placed reliance upon paragraphs 222 and 223 of the Cadbury Schweppes (Supra).
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33. Mr. Banerjee has accordingly submitted that the Defendant's trade mark is valid, predating the alleged infringement and the colour combination serves a functional purpose in the industry. He has submitted that the Plaintiff's delay in action and prior knowledge of the Defendant's product weaken their claims of exclusivity. He has submitted that trademarks' visual and phonetic dissimilarity and the colour combination's functional nature suggest that consumer confusion is unlikely. He has submitted that the Interim Application filed by the Plaintiff be dismissed with costs and allow the Defendant to continue his legitimate business operations without hindrance.
34. Having considered the submissions, in my view the Plaintiff has established that it has a secured registration in respect of 'Emperor Akbar Green Cardamom' label vide trademark No.3121337 dated 9th December, 2015. The Plaintiff has produced several documents annexed to the Plaint, which prima facie establishes that the Plaintiff's registered trade mark / label / trade dress has gained immense goodwill and reputation and exclusivity and deserves protection from infringement. The Plaintiff has also other similar labels "Emperor Akbar Cardamom Red grade", "Emperor Akbar 21/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc Cardamom Orange grade", "Emperor Akbar Cardamom Green grade"
and "Emperor Akbar Cardamom Pink grade" which are in the market for many years and enjoy substantial goodwill and reputation. The aforementioned labels also constitute original artistic work and enjoy protection under the Copyright Act, 1957.
35. The Defendant claims to have been in the spice business for the last three generations. However, it is necessary to note that the Defendant adopted the impugned trademark and packaging sometime in February, 2023. The Defendant has itself admitted that it had applied for registration of the device mark "Mubarak Green Cardamom" on 9th February, 2023. The licenses which have been relied upon by the Defendant are FSSAI license and GST registrations which are of recent origin i.e. in the year 2022. The Defendants registration with the Spice Board is of year 2021 i.e. 15th July, 2021 that is after the Defendant's association with the Plaintiff. What is relevant to note is that the Defendant had an association with the Plaintiff from May, 2021 upto February, 2023 as the Defendant supplied Cardamom to the Plaintiff in huge quantities. During that period there were regular visits by the Defendant to the Plaintiff's warehouse and facilities. Thus, the Defendant was well acquainted 22/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc and familiar with the trade marks of the Plaintiff and packaging of the Plaintiff's products including labels / trade dress registered as trade mark No.3121337 and other labels / trade dress. The Defendant is also aware of the colour coding used by the Plaintiff for grading of the product by size and shape of cardamom pods.
36. The Defendant in its Affidavit in Reply claims that the total sales of products with impugned packaging referred as 'Premium New Packing namely 'Mubarak Green Cardamom' from 15th May, 2023 to 22nd May, 2023 was approximately 37.50 kgs of Rs.68,907/-. The Defendant had been issued a cease and desist notice and thereafter was not selling the products with the impugned packing from June 2023. It is relevant to note that though the Defendants have claimed substantial turnover, the turnover is not of the goods sold by the Defendant through the impugned packaging. This is borne out from the invoices produced by the Defendants for the year 2019 - 2020 at Exhibit 'F' of the Affidavit in Reply. Thus, it is evident that the Defendant has adopted impugned packaging some time after February, 2023.
37. It is relevant to consider in the present case as to 23/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc whether the impugned trade mark of the Defendant's Mubarak Green Cardamom and other packing are deceptively similar to that of the Plaintiff's registered mark, other labels and the artistic work in the other labels of the Plaintiff. A comparison of the Plaintiff's product with its trademark and the Defendants product with its label / trade dress is reproduced as below:-
Plaintiff's Trade Mark Defendant's impugned product/Trade Mark 24/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc 25/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc
38. I prima facie find from such comparison of the rival marks that the trade marks of the Defendant are conceptually similar to the trade marks of the Plaintiff. The broad and salient features of the both marks are three block design use of three colours. The colour combination in both sets of trade marks are similar. The artwork in both sets of trade marks is in gold colour and bears 26/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc similarity. The Defendant has used the colour combination with cardamom in a circle at centre of the package in the impugned trade marks which is also identical with that of the Plaintiff's trade mark. Further, the Plaintiff's use of the words "Natural Green Indian Cardomom" which has been adopted by the Defendant in its impugned trademark. Further, I prima facie find that even the side view of the packages is similar as it consists of clear transparent material through which cardamom can be seen. However, in the middle of the sides of the packages there is a white colour design in which the brand name of the Plaintiff and the brand name of the Defendant are written.
39. The decision relied upon by the Plaintiff viz. Sopariwalla Exports & Ors. (Supra) is factually similar to that of the present case. The Plaintiff in that case had a registered trade mark 'Afzal' which was held to be infringed by the Defendants trade mark 'Kuber' as the trade mark / label used by the Defendant was held to be deceptively similar to the Plaintiff's registered trade mark / label. This Court had arrived at the decision after comparing the trade marks and had found that the Defendant was infringing the trade mark of the Plaintiff. I further find that the other cases relied upon by the Plaintiff 27/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc viz. Colgate Palmolive Co. and Anr. (Supra) and Sanjay Soya Pvt. Ltd. (Supra) assist the Plaintiff. Infact the Plaintiff case is on stronger footing as the Plaintiff's trade dress / label is registered as a trade mark and all that the Plaintiff has to point out is that the mark / product of the Defendant is deceptively similar to the Plaintiffs registered trade mark.
40. The decision of the Delhi High Court in Colgate Palmolive Co. Vs. Patel & Anr. (Supra) and Privy Council in Cadbury Schweppes Pty Ltd. & Ors. (Supra) on which reliance has been placed by the Defendant are clearly distinguishable on facts. In the case of Cadbury Schweppes Pty Ltd. (Supra) the Privy Council after comparing the rival trade marks came to the conclusion that Respondent had sufficiently distinguished its goods from those of the Appellants, although the Respondent had deliberately taken advantage of the Appellant's advertisement campaign. In Colgate Palmolive Co. (Supra), the Delhi High Court has held that no one could claim monopoly over colours or colour scheme. This is not the contention of the Plaintiff in the present case as they are not claiming monopoly on colour or colours schemes. It is infact the trade dress which the Plaintiff has claimed has been infringed by the Defendants' 28/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc impugned trade dress / label as can be seen from a comparison which is reproduced above. Further, there is similarity between the packing of the products of the Plaintiff and that of the Defendants.
41. It is well settled that in comparing rival trade marks, a microscopic examination is not permissible and what is relevant are broad and salient features. I do not find merit in the contention on behalf of the Defendant that colour coding packing as adopted by them is a grading mechanism to filter the cardamom as per size and is an industry standard which is sought to be prevented. In the present case the Plaintiff is not preventing the Defendant from adopting colour code packing as long as the packaging is not deceptively similar to the registered trade mark and or does not constitute passing off.
42. I prima facie find that the Defendants' adoption of the impugned mark is dishonest, considering that the Defendant was supplier of the Plaintiff from March, 2021 to February, 2023 and fully aware of the Plaintiff's registered mark. Thus, the similarity between the rival marks cannot be termed as coincidence and prima facie I find there to be a fraudulent motive of the Defendant in adopting the 29/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc impugned mark / trade dress / label.
43. I thus find that the Plaintiff has made out strong prima facie case for grant of interim relief sought for in the Application, particularly in view of protection of the Plaintiffs' statutory right to exclusivity of its registered trade mark. The balance of convenience is also in favour of the Plaintiff and that the Plaintiff is likely to suffer irreparable injury in the event the relief sought for in the Interim Application is not granted.
44. Interim relief is granted in terms of prayer Clauses (a) and (b) of the Interim Application, which read thus:-
(a) that pending the hearing and final disposal of the suit, the Defendant by himself and/or his subsidiaries/sister concerns, distributors, dealers, affiliates, agents, stockists, dealers, franchisees, licensees, assigns, predecessors and all persons claiming through or acting on his behalf be restrained by a temporary order and injunction from this Hon'ble Court from infringing the said Trade Marks of the Plaintiff's by using the impugned Trade Mark which is identical with and/or deceptively similar and/or closely similar to the said Trade Marks of the Plaintiff;
(b) that pending the hearing and final disposal of the present suit, the Defendant be ordered and directed to 30/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 ::: 9-ial-15350-2023.doc disclose on an affidavit the quantity of goods/ quantum of sales made by the Defendant of the impugned goods bearing the impugned Trade Mark and deposit the same in the Court and also disclose the details of the whole-
sellers, traders, distributors, stockists of the impugned goods, the sale and purchase data, books of accounts, ledgers, sales bill, invoices, purchase orders;"
45. The Interim Application is accordingly disposed of. There shall be no order as to costs.
[ R.I. CHAGLA J. ] 31/31 ::: Uploaded on - 16/08/2024 ::: Downloaded on - 20/08/2024 11:25:12 :::