Calcutta High Court
Hakimuddin Bhemat vs Mahaveer Prasad Agarwal & Anr on 3 November, 2022
1
OD-6
IA NO. GA/1/2019
(Old No: GA/2637/2019)
In CS/252/2019
IN THE HIGH COURT AT CALCUTTA
ORDINARY ORIGINAL CIVIL JURISDICTION
ORIGINAL SIDE
HAKIMUDDIN BHEMAT
Vs.
MAHAVEER PRASAD AGARWAL & ANR.
BEFORE :
The Hon'ble JUSTICE KRISHNA RAO
Heard On: 29.08.2022
Order On: 03.11.2022
Appearance:
Mr. Sayantan Basu Adv.
Mr. Anand Farmania, Adv.
....for the plaintiff
Mr. Sayantan Basu, Adv.
Mr. Anirban Das, Adv.
.....For the defendant
Ms. Ananya Chakraborty, Adv.
.....For the receiver
ORDER
The plaintiff is carrying on business dealing with sprayers of all kinds of agricultural use, water fertilizer, herbicides, pesticides and also used for 2 cleaning detergent or solvent free preservative, treatments through petrol and kerosene pumps for agricultural centrifugal pump and monoblock- pump. The plaintiff had conceived and adopted the mark of 'Bharat Shakti' in the year 2012 for the purpose of trading and selling of his products.
The plaintiff has designed an attractive eye catching label for selling his aforesaid products under the mark 'Bharat Shakti', the said get up label of the plaintiff is predominantly red and gray in colour. The mark of 'Bharat Shakti' is written in white colour, a red background on the label under which the product 'Bharat Shakti' is sold. The plaintiff has gained goodwill and reputation for the sale of the product ''Bharat Shakti' since the year, 2012. The plaintiff to promote the sell of his product under the mark of 'Bharat Shakti' has caused excessive advertisement of its product to acquire statutory protection of the artistic work 'Bharat Shakti', the plaintiff has duly applied for registration of the same under the Copyright Act, 1957 and had got the copyright registration in the year 2012. The plaintiff had also applied for registration of the label mark 'Bharat Shakti' vide application no. 2288897 in Class 7 and word 'Bharat Shakti'.
In the month of July, 2019, the plaintiff came to know that the defendant no. 1 is manufacturing and selling identical goods and/or products as that of the plaintiffs under the mark "RAINOLEX - BHARAT SHAKTI". The products of the defendant no. 1 are sold having the label which is identical to the artistic work Bharat Shakti of the plaintiff by adding the word Rainolex before the word 3 Bharat Shakti. The defendant no. 1 is passing of his goods as that of the plaintiff in the market. The colour of the defendant no. 1's product is blue but the artistic work of the defendant no. 1 is an obvious and slavish imitation of the plaintiff's artistic work. The defendant's mark 'Rainolex - Bharat Shakti' is identical which are deceptively similar to the plaintiff's mark 'Bharat Shaki' and is being used in relation to the identical product namely agricultural battery sprayer pump. The mark 'Rainolex - Bharat Shakti' has been adopted by the defendants in an attempt to pass of their goods as that of the plaintiff in an attempt to trade upon the extra ordinary goodwill and reputation of the plaintiffs.
Initially, only the defendant no. 2 had appeared and had filed affidavit- in-opposition to the instant application wherein the defendant no. 2 has taken the plea that the defendant no. 2 is the proprietorship firm and is carrying on business since 2003 under the name and style of Global International and is marketing under the brand namely, 'Rainolex' which is the trademark of the defendant no. 2. The defendant no. 2 further contended that 'Bharat Shakti' is mere title of the alleged artistic work of the plaintiff and Bharat Shakti cannot be an artistic work per se as claimed by the plaintiff. The defendant no. 2 further contended that the brand name used by the defendant no. 2 on his various products including the product in question is Rainolex which is the registered trade mark of the defendant no. 2 and 'Rainolex - Bharat Shakti' is one of the product name among other products like Rainolex Anchor, Rainolex Kisan Shakti, Rainolex Ultra, Rainolex Dura etc. 4 Subsequently, the defendant no. 1 had filed affidavit-in-opposition wherein it is stated that the defendant no. 2 is the proprietor of Global International and is marketing under the initial brand name Rainolex which is the registered trade mark of the respondent no. 1. He is further stated that initially the brand name used by the defendant no. 2 on his various products including the product in question is Rainolex which is the registered trade mark of the defendant no. 1 and Rainolex - Bharat Shakti is one of the product name amongt other products. The defendant no. 1 further submitted that at present, the defendant no. 2 is the registered owner of the trade mark Rainolex
- Bharat Shakti in Class 7 under No. 4749318.
The defendant no. 1 further submitted that he is no manner involved in any kind of business similar to the plaintiff either for manufacturing or marketing.
Considered the rival submissions of the respective parties and the documents available on record, it is find from record vide order dt. 08.09.2021, it is recorded that the Counsel for the plaintiff on instruction submitted that the plaintiff may not proceed against the respondent no. 2. Subsequently, vide order dt. 10.09.2021, this Court had passed an interim order in terms of prayer (b) of the petition from using the word Bharat Shakti inconsonance with other words including Rainolex on their packages, label and trade dress which are a colourable imitation of those of the plaintiffs. In the said order, it is also 5 recorded that the injunction order passed by this Court shall only be operative against the respondent no. 1.
One completion of the pleadings of the instant application when the matter was taken for final hearing, the Counsel for the plaintiffs submits that as the respondent no. 1 has taken a contrary view stating that the defendant no. 1 is no way involved in any kind of business similar to the petitioner either for manufacturing or marketing and the respondent no. 2 who is the proprietor of the Global international is marketing under the initial brand name Rainolex and using the product name as Rainolex Bharat Shakti and in view of the same, the Counsel for the plaintiffs submits that he will proceed with the instant application against both of the defendants. After going through the materials on record including the affidavit-in-opposition is filed by both the defendants, it appears that the plaintiff is admittedly the copyright holder of the artistic work comprised of the packaging of the product. The plaintiff has obtained the copyright of the artistic work in the year 2012. The plaintiff holds trade mark registration of the device from 24.02.2012 consisting of the packaging of the product. The invoices enclosed by the plaintiff shows that the plaintiff is using the label in respect of their fertilizers sprays from 2012 onwards.
The defendant had admitted that they have got the registered trade mark of Rainolex and they are using the word Bharat Shakti along with the word Rainolex as the name of the product. The product described as 'Rainolex - 6 Bharat Shakti' not only consists of word 'Bharat Shakti' but also adopts an identical packaging and trade dress of the product. Both the products are of bright blue and reflect the word 'Bharat Shakti'. The word Rainolex has been depicted in the manner on the defendant's product which is almost invisible.
The plaintiff has got its copyright as well as trade mark registration in respect of the word 'Bharat Shakti' together with distinctive packaging and trade dress reflected in the Copyright and Registration Certificate. The defendants used the words Bharat Shakti together with the virtually identical getup would amount to deceiving the public, particularly the products and their use are also identical.
In the case reported in (2001) 5 SCC 73 (Cadila Health Care Limited vs. Cadila Pharmaceutical Ltd.), the Hon'ble Supreme Court has laid down the following decisive tests for checking deceptive similarity :-
"35. Broadly stated, in an action for passing -off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered :
(a) The nature of mark i.e. whether the mark are word marks or label marks or composite marks i.e. both word and label works.
(b) The degree of resemblances between the marks, phonetically similar and hence similar in idea.
(c) The nature of goods in respect of which they are used as trade mark.
(d) The similarity in the nature, character and performance of goods of the rival traders.
(e) The class of purchaser who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care, they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods of placing order for the goods.7
(g) Any other surrounding circumstances which may be relevant in the event of this similarity between the competing marks.
In the present case applying the aforesaid tests, I am of the view that the defendants have tried to dupe the general public by portraying their products in a manner that they originate from the plaintiff. It is not the out of place to mention here that both the instruments are being used for the agricultural purpose and similar in nature.
In view of the above, prayer in terms of (a), (b) and (c) is allowed in favour of the plaintiff against the defendants. Receiver appointed by this Court is discharged from this case.
GA 1 of 2019 is disposed of.
(KRISHNA RAO, J.)