Calcutta High Court
Itc Limited vs Whole Leaf Tobacco Venture Pvt. Ltd. & ... on 19 December, 2018
Author: Soumen Sen
Bench: Soumen Sen
ORDER
GA No. 3437 of 2018
CS No. 261 of 2018
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction
ITC LIMITED
Versus
WHOLE LEAF TOBACCO VENTURE PVT. LTD. & ORS.
BEFORE:
The Hon'ble JUSTICE SOUMEN SEN
Date : 19th December, 2018.
Appearance:
Mr. Pratap Chatterjee, Sr. Advocate
Mr. Phiroze Edulji, Advocate.
Mr. Rudraman Bhattacharya, Advocate.
Mr. Sayan Roychowdhury, Advocate.
Mr. S. Dutta, Advocate.
Ms. Mrinalini Majumder, Advocate.
Mr. Sourajit Dasgupta, Advocate.
...for the petitioner.
The petitioner is one of the largest fast moving consumer
goods companies in the country with its cigarette business dating
back to 1910. The petitioner has acquired immense reputation in
relation to its high quality cigarettes and tobacco products
marketed under well-known trademarks, some of which are "FLAKE",
"GOLD FLAKE", "CLASSIC", "INDIA KINGS", "INSIGNIA", "BRISTOL",
"SCISSORS", "CAPSTAN", "NAVY CUT" etc. The petitioner filed the
suit against the defendants, who are mostly identifiable save and
except the defendant No. 13, for various wrongful dishonest acts
indicated in paragraph 4 of the petition. The petitioner has
disclosed the infringing marks and wrappers which are deceptively
similar and/or slavish or colourable imitation of the petitioner's
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product; to illustrate, adoption and use of the names "FLANE" and
"GOLD FLANE" and "NEXY CUT" which are identical and/or deceptively
similar to the petitioner's trademarks "WILLS FLAKE", "FLAKE" and
"GOLD FLAKE" and "NAVY CUT"in packaging/labels/trade dresses.
Similar is the case with the other brands of which infringement
has been complained.
The petitioner has stated that the petitioner adopted and
started using the trademark "FLAKE" sometime in 1970s and
thereafter conceived and adopted numerous variants over the years
comprising the distinctive trademark "FLAKE" as the leading and
identifying feature. "FLAKE" has been used in conjunction with
other words and/or trademarks to create and variants inter alia,
"WILLS FLAKE", "FLAKE EXCEL", "FLAKE SPECIAL FILTER", "FLAKE
REFINED TASTE", "FLAKE LIBERTY", "FLAKE GOLD CREST", "FLAKE
PREMIUM FILTER", "FLAKE BLUE", "FLAKE PREMIUM BLUE" etc. The
petitioner states that "FLAKE" is one of the most well known and
reputed brands of cigarettes manufactured and sold by the
petitioner. The petitioner is a registered proprietor of "WILLS
FLAKE" being trademark No. 560095. The petitioner contends that
by virtue of long, continuous and extensive use, the trademark
"FLAKE" has become distinctive of the petitioner's cigarettes and
has come to be associated with the petitioner and none else. The
petitioner has disclosed a chartered accountant's certificate
certifying the total sales turn over of the petitioner's cigarette
under the mark "FLAKE" for the last 26 years, to demonstrate that
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the mark "FLAKE" has acquired secondary meaning in connection with
the business of the petitioner and is entitled to protection as a
well-known trademark in accordance with Section 2(1)(zg) of the
Trademarks Act. The petitioner has stated that it has adopted
various trade dresses/labels/packaging in respect of cigarettes
sold under the trademark "FLAKE". The petitioner has adopted a
new packaging/trade dress for its "FLAKE" Special Filter variant
in the year 2012 and subsequently in the year 2014 the petitioner
developed another variant of "FLAKE" namely, "FLAKE" Premium. The
dominant theme of such "FLAKE" trade dress is the white back
ground of the pack, with the word "FLAKE" written in black within
a golden coloured parallelogram with a boomerang shaped device of
deep red colour and having thin black border bordering
parallelogram on one side. The petitioner claims that the colour
combination, get up including the distinctive boomerang device
appearing on the petitioner's "FLAKE" pack are original artistic
works within the meaning of the Copyright Act, 1957. The
petitioner caused such artistic work to be created for the purpose
of marketing and selling cigarettes under the mark "FLAKE". The
petitioner has disclosed a letter from one Nidhi Harlalka to show
that Nidhi is the author of the artistic work and the said
original artistic work was developed on behalf of ITC Limited and
author had no objection if registration is granted in favour of
ITC Limited. On the basis of such communication the petitioner is
using the artistic work titled "FLAKE Premium" in the manner as
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disclosed at page 297 of the petition. The petitioner contends
that the petitioner is the exclusive owner of the copyright in the
artistic work comprising the "FLAKE" labels/trade dresses
including the petitioner's pack all of which are original artistic
works within the meaning of Copyright Act, 1957. The trademark
registration shows that the products of the petitioner have been
registered in Class-34. The petitioner alleged that on or about
October, 2018 the trademark attorneys of the petitioner were
informed that the respondent No. 1 has applied for registration of
the words "FLANE" and "GOLD FLANE" claiming use since 17th November, 2017. The said application is opposed by the petitioner. Notwithstanding such opposition, the respondent No. 1 had commenced such use of cigarette packages bearing the words "FLANE" and/or "GOLD FLANE". The petitioner has contended that recently they have received complaints from the trade channels that cigarettes were being sold under the name "FLANE" and "GOLD FLANE" bearing the packaging/label which are identical and/or deceptively similar to the get up/trade dress/label/packaging of the petitioner. The petitioner has further contended that the petitioner has different variants of "FLAKE" and "GOLD FLAKE"
which may differ from variant to variant. It is alleged that the respondents have deliberately chosen to sell products which are likely to be of an inferior quality, at a lower price in order to take advantage of unwary customers.5
The respondent No. 1 appears to have applied for registration of the word mark "FLANE", "GOLD FLANE" and "NEXY CUT". The said word marks were published in the trademark journal on 4th June 2018, 12th June, 2018 and 28th May, 2018 respectively. The petitioner has filed its opposition to the grant of registration of the said marks. The said respondent No. 1 has in fact also applied for registration in Class-34 and the same is pending.
The petitioner has produced the packets and the packaging materials of its products as well as the infringing packets and/or materials of the respondents before this Court. It appears that the infringing packets in which the products of the respondents are sold are slavish imitation of that of the petitioner. The products placed next to each other on a first look cannot be distinguished. It is bound to create confusion in the mind of unwary consumer of imperfect recollection. The petitioner is able to make out a prima facie case that adoption of the said marks, trade dress and get up of the packets of the respondents have been dishonest and fraudulent. On the basis of such prima facie satisfaction, in my view, a protective order is required to be passed, otherwise the infringing packets may be removed out of the reach of the Court. The infringing trade dress of the product of the respondent No. 1 is deceptively similar to that of the petitioner. It is the entire trade dress that is required to be taken into consideration in order to find out whether the essential elements of the registered marks have been copied or 6 not. The petitioner has been able to make out a strong prima facie case and the balance of convenience lies in passing an ex parte ad interim order against the respondents.
In view thereof, there shall be an order in terms of prayers
(a) to (f) of the notice of motion.
(1) Mr. Prasanta Naskar, Advocate, (2) Mr. Robi Prasad Mookherjee, Advocate, (3) Ms. Pallavi Gogoi, Advocate, (4) Mr. Meghnad Dutta, Advocate, (5) Mr. Aritra Basu, Advocate (6) Ms. Piyali Sengupta, Advocate, (7) Ms. Nilanjana Adhya, Advocate and (8) Ms. Amrin Khatoon, Advocate are appointed Special Officers who shall immediately visit the godowns and the outlets of the respondents simultaneously and inventorise the infringing goods, if required, with police assistance. The Officer-in-Charge of the concerned police station, on a written request by the Special Officers along with a copy of this order, shall render all possible assistance to such Special Officer(s) in implementing this order. The Special Officers, after inventorising the goods, shall seize the materials keep the inventorized goods and/or articles and/or products at a place to be provided by the petitioner until further orders. Needless to mention, the infringing materials shall, for the time being, remain under the custody of the Special Officers. The Special Officers shall be at liberty to break open the padlock, if required, in presence of the police authorities, in the event the respondents or the godown owners are unable to provide the key(s) to the Special Officers. 7
The godowns shall be re-sealed and the key(s) shall be retained by the Special Officers until further orders. Each of the Special Officers shall be entitled to an initial remuneration of 3000 GMs. All arrangements for the Special Officers' travel, accommodation and the expenses therefor like shall be made by the petitioner. The Special Officers shall file reports on the returnable date.
Let this application appear on 14th January 2019. The petitioner is directed to serve a copy of this application along with a copy of this order upon the respondents by speed post and shall file affidavit of service on the adjourned date.
In the event the respondents get prior notice of this application, there is every likelihood that the respondents would remove such materials and on such consideration the ex parte ad interim order is passed.
(SOUMEN SEN, J.) S. Kumar