Calcutta High Court
Itc Limited vs Crescendo Tobacco Agency & Another on 4 March, 2011
Author: Sanjib Banerjee
Bench: Sanjib Banerjee
GA No. 36 of 2011 CS No. 3 of 2011 IN THE HIGH COURT AT CALCUTTA ORDINARY ORIGINAL CIVIL JURISDICTION ITC LIMITED
-Versus-
CRESCENDO TOBACCO AGENCY & ANOTHER
For the Plaintiff: Mr S.N. Mookerjee, Sr Adv.,
Mr Ratnanko Banerji, Adv.,
Mr Sarvapriya Mukherjee, Adv.,
Mr Shaunak Mitra, Adv.,
Mr Soumya Sen, Adv.,
Mr Debamitra Adhikari, Adv.
For the Defendant No. 2: Mr Pratap Chatterjee, Sr Adv.,
Mr Ranjan Bachhawat, Adv.,
Mr Paritosh Sinha, Adv.,
Mr Debnath Ghosh, Adv.,
Mr K. K. Pandey, Adv.
For the Defendant No. 1: Mr Tilok Bose, Sr Adv.,
Mr Sayantan Basu, Adv.
Hearing concluded on: March 2, 2011.
BEFORE
The Hon'ble Justice
SANJIB BANERJEE
Date: March 4, 2011.
SANJIB BANERJEE, J. : -
The test is in the eye and, usually, it is over in a matter of moments. The charade that follows is to ensure adherence to form and propriety. When the test is in the eye, the evaluation is one by impression. The many words that may then be expended in support of the assessment are often the excuse for the impression; imperfect as language is to capture how the eye instructs the mind. An impression once formed is difficult to dislodge unless the legal basis for forming such impression is shown to be erroneous. Interlocutory injunctions in claims of passing-off are generally made or declined within a minute or so of the two products being presented, particularly when the claim is founded on a similarity in the get-up or trade dress.
Both the plaintiff and the second defendant are big in the cigarette industry; in fact, they are huge. The claim is not one that a fly-by-night operator has come to ride piggy-back on the goodwill and reputation of an established commercial giant in the field. The plaintiff maybe the bigger of the two and may have the wider range of products, even cigarettes, but the second defendant is no johnny-come-lately. Between these two parties they have seduced, charmed and thrown many a life up in smoke. The immediate theatre of conflict arises upon the plaintiff's perception that the second defendant has altered the get-up and packaging of its "Special" brand of cigarettes to mimic the metallic red and flaming gold packet of the plaintiff's "Gold Flake" brand of the same class of poison. The plaintiff suggests that in the second defendant's recent adoption of the pattern of colour combination and writing in respect of the packaging of its "Special" brand, there is apparent dishonesty in trying to creep up to the appearance of the plaintiff's hallowed brand and appropriate the goodwill that is exclusively the plaintiff's. The plaintiff concedes that the names of the products are not identical, that the pricing of the two products are in different bands and that there are other features suggesting dissimilarity; but insists that a would-be customer of the plaintiff's "Gold Flake" brand has every likelihood of being confused at the sight of the second defendant's "Special" packet and be deceived into settling for that on the mistaken impression that it was the plaintiff's product.
Both packets are predominantly red and gold of nearly identical shades. That the plaintiff's packet is slightly longer than the second defendant's is apparent only when they are placed next to each other. Both are hinge packets with the entirety of roughly the top third of the packets being red all around. The middle third of either packet is largely golden in the front. The bottom third of the front of both packets is taken up by the statutory warning that both parties depict in such manner that the intent of the warning is substantially diluted. The front of both packets appears to be somewhat similar because of the similar colour combination and the prominent statutory warning. If the statutory warnings on both packets are ignored, then notwithstanding the similar colour combination of the two packets the dissimilarities stand out.
If the packets are turned around and viewed from the back then it is impossible to mistake the one for the other. The plaintiff's packet has a straight- line division of the top red and the balance gold with the name of its brand in a horizontal strip running across the middle of a spherical red patch which has other writings within it. The second defendant's packet has a larger proportion of red at the back than the plaintiff's and the edge of the red and gold on the front and the reverse of its packet have more of a wavy flourish than the non-descript straight-line demarcation of the colours in the plaintiff's packet. The plaintiff's red bands on the front and the back carry the writing "Filter Tipped" with an eight-pronged star-like depiction between the two words, which the plaintiff says is an instruction that the empty packet should not be strewn around. The reverse of the second defendant's packet carries a mnemonic towards the bottom.
The thin sides of the two packets appear similar primarily because of the colour combination, but the brand names appear prominently. The bottom of both the packets can hardly be distinguished from each other particularly from a distance. The top of the two packets are altogether different since the plaintiff's is coloured red with its distinctive logo carrying its name; and the second defendant's is golden with its brand name prominently featured.
The plaintiff says that the test is not from the perspective of the habitual smoker alone who may be addicted to a particular brand. The plaintiff contends that it is the first-time smoker or a casual smoker who has to be kept in mind while assessing the claim of passing-off since it may be assumed that the hardcore addict would seek a particular brand or, by long habit, be more discerning. The plaintiff exhorts that the test must not be through the eyes of an educated urban consumer but from the point of view of an unsuspecting rustic who may intend to reach out for the plaintiff's product but end up getting the second defendant's and be none the wiser. The plaintiff conjures up images of a dimly-lit countryside stall with little aid to tell the one packet from the other and suggests that if there is likelihood of confusion then, the plaintiff ought to obtain the injunction that it seeks.
The plaintiff relies on a judgment reported at 2009 (39) PTC 208 (Ardath Tobacco Company Ltd v. Munna Bhai). At the trial of the passing-off action, the Court was satisfied in that case that the cigarettes marketed by the defendants had "copied the trade dress of the same goods of the plaintiff." The Court was also impressed that despite the plaintiff's mark not being used on the defendant's packet, the other features adopted were identical. The Court then proceeded to observe that since single cigarette sticks were sold more in this country than full packets, an action for infringement of trade mark in relation to cigarette packets had to be viewed in such light. The Court reasoned that since a casual purchaser may be misled into thinking a certain packet was something that it actually was not, there would be a possibility of confusion or deceit.
The judgment should be read in the context that the Court found the two rival packets to so nearly resemble each other that there was likelihood of confusion. The other part of the judgment, which refers to vendors of individual cigarette sticks mistaking one packet for another, covers only one possible situation. It is not as if cigarettes are only sold by the stick or from dark roadside stalls. In any event, the mistake on the vendor's part would arise if the two packets look deceptively similar.
It is possible that the two packets in the present case would appear almost identical if viewed from the thin sides or the bottom, particularly where the light is insufficient to allow the brand names to be read. But such a test maybe risky to apply to grant any injunction since it is more likely than not that the front or the reverse of the two packets would be displayed and the difference noticed.
The plaintiff has also placed a judgment reported at 2005 (31) PTC 583 (Colgate Palmolive Company Ltd v. Patel) where the predominantly red and white colour combination of "Colgate" toothpaste was cited to seek an injunction against the similar red and white features in the defendant's "Ajanta" brand of toothpaste. Paragraph 52 of the report speaks of the resemblance between the two products. The defendant was found to have adopted a red coloured background to the similar extent as that of the plaintiff on the front panel of the carton; the white inscription of the name of the defendant's product was found similar to the white writing of "Colgate"; and, the sizes of the two brand names and the placement thereof in the front panels were seen to be identical. In the present case there is substantial difference in the appearance of the two packets notwithstanding the similar colour combination thereof.
The plaintiff has next placed a Division Bench judgment of this Court reported at 2009 (4) CHN 162 (Euro-Solo Energy Systems Ltd v. Eveready Industries India Ltd) where the defendant was restrained from selling dry cells, batteries and allied products in any label or packaging bearing the plaintiff's trade dress. The plaintiff relies on the Division Bench's observation that certain English cases referred to therein have no relevance in this country since an overwhelming majority of the population here is illiterate and rustic. But the decision, rendered on an appeal from an ad-interim order, was based on the Court's acceptance that the plaintiff's colour scheme and trade dress had attained exclusivity and because the prima facie view of the trial court was found to be based on the uncontroverted pleadings of the plaintiff.
The second defendant has suggested that the case run by the plaintiff in its plaint and petition has to be discredited since the plaintiff markets its "Gold Flake" brand in packets of other hues. The second defendant has produced some of such packets and has relied on photographs thereof in its affidavit. The second defendant says that the plaintiff has made no distinction in its pleadings between the sales figures of its "Gold Flake" brand marketed in red and gold packets and those sold in other packets. More importantly, the second defendant argues, the plaintiff has sought to give an impression in its plaint and petition that its "Gold Flake" brand is sold only in red and gold packets and that such packet has come to be exclusively associated with the brand.
The second defendant has also relied on a market survey conducted on its behalf before the present trade dress of its "Special" brand was adopted. The plaintiff has questioned the rationale of the market survey and the sample size of 450 persons. The plaintiff has also referred to details from the research papers prepared by the market survey organisation engaged by the second defendant to suggest that it was an apology of an exercise tailor-made to justify the obvious dishonest attempt to copy the "Gold Flake" get-up.
The test, at the end of the day, is still in the eye. As to whether the get-up of one product is a copy of another cannot be told by placing the two products side by side and counting either the similarities or the differences. The more trustworthy assessment would be to remember the plaintiff's product and view the defendant's. If the eye reminds one of the plaintiff's product upon looking at the defendant's, not only because of a similar colour combination but also on the impression of the other distinctive features, an injunction may issue. If a fleeting glance at the defendant's product throws up images of the plaintiff's product, the test is met. If the eye does not recall the plaintiff's product upon a look at the defendant's, the injunction has ordinarily to be refused.
The plaintiff's case is based on the similar colour combination of the two packets and the plaintiff's claim to exclusivity is founded on the plaintiff's assertion that it hit upon such combination and developed a lasting association therewith ahead of the second defendant. Rather than just the identity of the colour scheme, the plaintiff has emphasised on the identical pattern of the colour combination. But the identity in the pattern appears merely to be in the colour red taking up the top third and the rest of the packets being primarily golden. That is hardly the kind of distinctiveness in pattern that would be of any significance; particularly since the red at the top on either side of the second defendant's packet melts into colour gold riding, as it seems, the crest of a wave. An unusual colour combination with exceptional features may by itself give the most alluring and enduring impression of the product. But a combination of bland metallic red and flashy gold, despite the underlying suggestion of regalia, would hardly be a ticket to exclusivity, especially in the wake of the other features of distinction that the packets bear. Even without considering the second defendant's suggestion that the action is inspired by the plaintiff's endeavour to ward off the inroads that "Special" may be making into the plaintiff's "Wills Flake" market in the same price band, the eye does not say that the second defendant's packet is capable of the confusion that the plaintiff imputes.
The interlocutory application fails. GA No. 36 of 2011 is dismissed without any order as to costs.
Both the defendants have waived the service of the writs of summons and seek leave to file their written statements. Written statements may be filed within four weeks from date. Documents should be discovered within 12 weeks from date, inspection forthwith thereupon and the plaintiff will have liberty to seek an early listing of the suit in the month of August, 2011.
Urgent certified photocopies of this judgment, if applied for, be supplied to the parties subject to compliance with all requisite formalities.
(Sanjib Banerjee, J.)