Delhi District Court
Also At vs Mittal Footcare India on 29 January, 2022
In the Court of Shri Sanjiv Jain,
District Judge (Commercial Court)03, Patiala House Courts
New Delhi
CS (COMM) No. 534/2021
Bata India Limited
27-B, Camac Street, 1st Floor
Kolkata-700016, West Bengal
Also at:
Bata House 418/02,
Sector-17, MG Road
Gurugram-122001, Haryana ... Plaintiff
versus
1. Mittal Footcare India
1490 MIE Part B,
Bahadurgarh, Jhajjar-124507,
Haryana ... Defendant no.1
2. Globe Shoe Co
22-8283, Nayapul,
Hyderabad- 500002 .... Defendant no.2
3. Akshay Enterprises
22-8283, Nayapul,
Hyderabad-500002 .... Defendant no.3
Date of institution : 26.11.2021
Date of order : 29.01.2022
CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors
1/39
29.01.2022
ORDER
1. This order shall dispose of the application under Order 39 Rule 1 and 2 CPC read with Section 151 CPC moved on behalf of the plaintiff and the application under Order 39 Rule 4 read with Section 151 CPC moved on behalf of defendant no.1.
2. The case of the plaintiff, in brief is that the plaintiff, which was originally incorporated in India as Bata Shoe Company Private limited in 1931, became the Private Limited Company namely, Bata Shoe Company Limited in 1973. It is the largest retailer and leading manufacturer of Footwears in India having factories/manufacturing units in India having ISO-9001 certification. It has retail outlets which serve more than one million consumers everyday. It also manages retail presence in over 120 countries. Its brands have attained recognition in the markets being associated with the source of Bata.
3. It is stated that the plaintiff has been continuously using the trademark/tradename 'Bata' as an essential part of its corporate in relation to sale of goods being footwears and accessories. It has been promoting its wide range of 'Bata' products through its website www.bata.in, an interactive website which is also accessible to the consumers at Delhi. It is stated that by virtue CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 2/39 of immense promotion, its mark 'Bata' has become distinctive in the name of the plaintiff and synonymous with the plaintiff company.
4. It is stated that since the adoption of trademark 'Bata', it has spent tremendous time, efforts and money in its promotion. Now, the consuming public and the members of the trade identify and appraise the goods under the said trademark to be the quality products of the plaintiff's source. It has acquired unimpeachable reputation/ goodwill which has been growing day by day. Its mark 'BATA' has been registered in various classes as detailed in para 12 of the plaint which are valid and subsisting. By virtue of the above registrations, it has exclusive rights to use the said trademark(s) under the provisions of Section 28 of the Trademarks Act, 1999. It has been a recipient of various prestigious awards as detailed in para 13. Its sales figure in the financial year 2020-21 was Rs. 18013.34 millions with publicity expenses as Rs. 339.31 millions. Its trademark 'Bata' has been declared as a well known trademark by the High Court of Judicature at Allahabad within the meaning of Section 2 (1) (zg) of the Trademarks Act and it is entitled to protection against infringement, passing off and dilution.
5. It is stated that on 06.03.2017, it had launched 'ALFRED' CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 3/39 range of slippers as detailed in para 16 of the plaint. The overall trade dress, get up, lay out and placement of distinctive features of 'ALFRED' slippers are visually distinguishable from other slippers in the market. They have acquired tremendous goodwill and reputation among the traders and customers. Any use of the said trade dress, get up, layout and placement of distinguished features of 'ALFRED' slippers by any other party without the express permission of the plaintiff would tentamount to misrepresentation and confusion in the eyes of gullible customers and would also amount to violation of its intellectual proprietory rights as well as common law rights.
6. It is stated that the defendant no.1 is engaged in the business of manufacturing footwears including slippers. It has been manufacturing, selling and supplying identical products like slippers under the impugned mark which is deceptively similar and identical to the plaintiff's mark which it has been supplying to defendant no.2 and 3 without the authorization/approval of the plaintiff. It is stated that the plaintiff came to know of this fact in first week of September, 2021 through its representative/field force. It noticed that the defendant has been CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 4/39 selling and supplying the footwears under the impugned device mark/logo on the third party websites www.flipkart.com, www.indiamart.com through out India including to the consumers within the territorial jurisdiction of this court through e-commerce websites. It is stated that it made further enquiries and its representative visited the premises of defendant no.1 at Bahadurgarh and found it carrying on the impugned activities from the said premises. Its representative collected the products from the defendant and also visited defendant no.2 and 3 as detailed in para 23 and 24. It is stated that on examination, it noticed that the defendants have copied/imitated each and every feature including the trade dress, get up, lay out including the sole design, the upper sole, the front flap, the side views, the color scheme and placement of distinctive features of plaintiff 'ALFRED' slippers being sold under mark 'Bata' as well as the writing style of Bata, red color shoe box, packaging etc. It is alleged that by copying distinctive features, the defendants have committed an act of infringement which they have done with a malafide intent and it cannot be a matter of coincidence and it is their calculated move for making illegal profits by associating themselves with the plaintiff without any plausible explanation. It is stated that the plaintiff is nowhere associated with the defendants nor has CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 5/39 authorized them to use its branded elements and the defendant's use of the same is completely unjustifiable and dishonest. The purchasing public or members of trade would assume that defendants are somehow related to or have the approval/ license of the plaintiff to use the same which would lead to confusion and deception amongst the public and members of the trade. It is alleged that it has been aimed for passing off the goods as those of the plaintiff to take advantage of popularity of the plaintiff's goods.
7. The plaintiff has therefore prayed for permanent injunction restraining the defendants, their proprietor or partners, servants, agents, affiliates, associates, stockiest, distributors from manufacturing, supplying, selling, marketing in any manner including online sale or dealing in any other way, any products including slippers or footwear of any description bearing the mark including lettering/writing style, represented in a manner that amounts to infringement of plaintiff's registered rights in the mark and BATA as mentioned in paragraph 12, passing off, delivery up, damages etc.
8. This court vide order dated 26.11.2021 granted an ex-parte CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 6/39 adinterim injunction interalia as under:
"13. From the material available on record, I find that the plaintiff has prima facie in its favour. The balance of convenience also lies in favour of plaintiff and if ad-interim injunction is not granted in favour of the plaintiff, and against the defendants, it will suffer irreparable loss and injury and damage in its business.
14. As a result, ad-interim injunction is granted in favour of the plaintiff and against the defendants, their proprietor or partners, servants, agents, affiliates, associates, stockiest, distributors from manufacturing, supplying, selling, marketing in any manner including online sale or dealing in any other way, any products including including slippers or footwear of any description bearing the mark including lettering/writing style, represented in a manner that amounts to infringement of plaintiff's registered rights in the mark and BATA as mentioned in paragraph 12 of the plaint till 17.01.2022."
9. Local Commissioners were also appointed on an application of the plaintiff under Order 26 Rule 9 vide order dated 26.11.2021.
10. On an application of the plaintiff under Section 152 r/w 151 CPC, vide dated 01.12.21, it was interalia ordered:
CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 7/39 " An ex parte ad interim injunction is also granted in favour of the plaintiff and against the defendants from imitating the trade dress, get up, lay out and placement of distinctive features of plaintiff's Alfred range of sleepers including the sole design, the upper sole, the front flap, the side views and the colour scheme amounting to passing off etc. It is ordered that this order shall form part of the order dated 26.11.2021."
11. On getting summons of the suit and notice of the application under Order 39 Rule 1 and 2, the defendant no.1 moved an application under Order 39 Rule 4 r/w 151 CPC pleading interalia as under:
a) That the plaintiff's line of slippers, titled 'Alfred' are generic slippers with a design that is common to trade and there are no distinctive features of the products beyond the brand 'Bata' which would constitute misrepresentation for the hypothetical consumer. The plaintiff has not met the test of distinctiveness with sufficient particularity which term does not coincide with the ordinary use of the term. In the context of get up, it is distinctive if it denotes the goods of the claimant to the exclusion of others. The public does not think of Bata slippers as distinctive beyond the name 'Bata', which is not being used by the defendant. The plaintiff did not prefer any composite analysis of similarities and differences. The comparison has been made with only one type of slippers though there are CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 8/39 other slippers also which are even more materially similar.
b) That the design and the plaintiff's product is common in trade which can be seen from a simple google search. In the disguise of allegations of infringement of trademark, the plaintiff has obtained the injunction for the design of the product which is registrable under the Designs Act and not the Trademarks Act. Design is something which forms the part of the good and does not include a trademark. A trademark is something which is extra, which is added to the goods for the purpose of denoting the origin of the goods, description of the goods etc.
c) That the plaintiff has obtained ex-parte injunction orders on the sole design, upper sole, front flap, side views and color scheme of the products which is covered under the Designs Act and not under the Trademarks Act. The trademark used by the defendant is a registered trademark 'Boat' under the category of wordmark under certificate no.
4597704 which is neither phonetically or visually similar to the trademark of the plaintiff 'Bata'. The font and style used by the defendant in 'Boat' is nowhere in match with that of the plaintiff's mark 'Bata'. It is stated that the main function of a trademark is to distinguish the goods of one enterprise from those of another. From a bare look of the alleged CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 9/39 trademarks, it would be apparent that the mark 'Boat' and 'Bata' are two different and distinct marks. Even the spellings of both the words are different. They sound different as well. There is no possibility of confusion even to a layman or a gullible human being to distinguish the trademark 'Boat' from 'Bata'. It is stated that literacy rate in India is over 75%. The people here are intelligent enough to distinguish the trademark 'Boat' from 'Bata'. It is stated that the plaintiff is trying to curb healthy competition in the shell of a trademark dispute. The plaintiff in the garb of trademark dispute intends to restrict circulation of competitor products by creating false grounds. It is a basic law that a person cannot claim exclusivity in design of a shape of a product if the same is not registered under the Designs Act but the plaintiff, despite failing to do so, has created the false grounds for trademark infringement and passing off.
d) That from a bare look of both the products, it is apparent that the trade dress, get up, lay out of the plaintiff's mark is different from the mark in question. The graphic representation i.e. size/colours red and white on the boxes are different. The mark 'Boat' is stated in big fonts. It is stated that all the aforesaid, make the marks easily distinguishable from each other even from a distance. The boxes are also of different shapes and style of plaintiff's mark 'Bata' prints on CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 10/39 their boxes and the boxes of the defendant mark 'Boat' which prove that the graphic representation i.e. size of the colors red and white combination on the boxes is different as shown in para (o) of the application. It is stated that plaintiff has not provided any unique distinguishing feature of its product except that the slippers are grey in colour. It is stated that the remaining features attribute to the functions of the product and not distinctive in nature. It is a basic rule that brand name must be given a greater weight in comparison to the get up. Simple search on google lens would depict that there are over 50 similar/same slippers which are in the market and common in trade. Even the logos of defendant and plaintiff are dissimilar.
e) That defendant has been in the business for several years and has gained substantial brand goodwill. The public at large recognizes the brand 'Boat' with the defendant. A comparison of the two trademarks in para (e) of the application has been given stating that the Alfred range of slippers of the plaintiff and the slippers produced by the defendants are absolutely dissimilar.
f) That the trademarks cannot create monopolies. In this case, the plaintiff wants to create monopoly for slippers and footwears in its favour by seeking restriction on the design of CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 11/39 the product in the garb of alleged trademark violation. It is for the customer to evaluate a product on various levels like cost, quality and the brand. It is stated that the competing rapper must be evaluated as a whole if there are four similarities and seven dissimilarities. It is stated that the present suit is a clear abuse of process of the court.
12. It is stated that grave prejudice, injustice and irreparable loss and injury shall be caused to the defendants in case the relief as prayed for is not granted in the application under Order 39 Rule 4 CPC.
13. The plaintiff filed the reply to the application under Order 39 Rule 4 CPC alleging that the defendant no.1 has unauthorizedly adopted and started using a deceptively similar device mark which has been copied in entirety including lettering/writing style, manner of representation on the product, which is identical to the plaintiff's well known mark 'Bata'. It is stated that the manner of use of the impugned mark by the defendant is deceptive in nature to the plaintiff's mark which amounts to trademark infringement and passing off. Defendant no.1 apart from copying the writing style/manner of representation of the plaintiff's mark has further copied and started using the same red colour packaging/carton/box and the manner of representation of the mark 'Boat' on the product, packaging, red CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 12/39 box, tags etc which amount to passing off. It is stated that defendant has copied the trade dress, get up, lay out and placement of distinctive features of plaintiff's Alfred range of slippers which was launched on 06.03.2017 including the sole design, upper sole, front flap, side views and the colour scheme, all of which are distinctive elements of plaintiff's products and serve as source origin. It is stated that this adoption of defendant no.1 is deliberate and intentional to trade upon the reputation and goodwill of the plaintiff. It is stated that defendant's act of copying the writing style and representation of the mark on the product and on the box in the same stylized manner in white colour and over a red colour box is unauthorized and illegal. It is stated that the defendant in order to take advantage of the popularity of the plaintiff's shoes/box/carton/packaging and the mark and logo represented in white has copied the essential features and placement to make unjust monetary gain with an intention to pass off its products as those of the plaintiff's products.
14. It is stated that defendant is not the proprietor of the impugned mark 'Boat'. It is registered in the name of one Subhash Mittal, trading as R.S Mittal Footcare India. The defendant in the application did not highlight the mark 'Boat' which is printed on the slipper as mentioned in para 2 (d) of the plaint.
CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 13/39
15. I have heard ld. Counsel Sh. Avi Singh for the defendant no.1 and Sh. Ranjan Narula, ld. counsel for the plaintiff.
16. Possibility of some amicable settlement/solution was also explored. Some changes were proposed by defendant no.1 in its product i.e. slipper including font and writing style of mark 'Boat'. Technical experts of the parties were also joined along with the products to discuss the changes proposed/suggested. The plaintiff also filed the sale figure of Alfred slippers for the year 2020-21 which was 14,55,00,257/-.
17. Ld. Counsel for the defendant reiterated what has been stated in the application under Order 39 Rule 4 r/w 151 CPC. Ld. Counsel stated that the plaintiff did not explain the distinctive features of its product except the trademark registration. Ld. Counsel stated that the plaintiff does not have any registration under the Designs Act. It has sought the injunction under the garb of common law rights. Ld. Counsel highlighted the sole design, functionality and pattern of the slipper and submitted that the defendant has no objection to change the style of the name 'Boat'. Ld. Counsel referred the case of Crocs Inc v/s Bata India, 2019 SCC Online Del 6808, ITC Ltd v/s CG Food (India) Pvt Ltd, Commercial Appeal no. 105/21, decided on 28.09.2021, Morrocanoil v/s Aldi, (2014) EWHC 1686 (IPEC) and Redbull GMBH v/s Mean Fiddler, (2004) EWHC 991 to CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 14/39 contend that the plaint does not disclose what is distinctive in the product of the plaintiff. Ld. Counsel stated that the goodwill of the plaintiff is the brand name, the plaintiff has its own stores, and its business comes from the Bata stores. Ld. Counsel stated that there is no uniqueness in the product of the plaintiff and if Bata is removed from the product, the consumer cannot distinguish the product of the plaintiff nor can say that the product originate from the source of the plaintiff. Ld. Counsel stated that the impugned slipper consists of an accupressure sole with valcro flap. Ld. Counsel referred the case of Mittal Electronics v/s Sujata Home Appliances, CS (Comm)-60/2020, decided on 09.09.2020, Triumphant Institute of Management Education Pvt ltd v/s Aspiring Mind Assessment Pvt Ltd, 2014 SCC Online Del 3008, Gorbatschow Wodka v/s John Distilleries Ltd, 2011 SCC Online Bom 557 to contend the plaintiff did not mention as to when it adopted the design of this kind of slipper. Ld. Counsel stated that possibility of copying the product by the plaintiff from google search cannot be ruled out. Ld. Counsel stated that the plaintiff has sought injunction under the Trademarks Act without any registration under the Designs Act though it is a case under the Designs Act. Ld. Counsel stated that Sh. Subhash Mittal has authorized the defendant no.1 to use the tradename. Ld. Counsel stated that product is generic with no distinctive CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 15/39 features and that the basic features depend on the functionality of the product.
18. Ld. Counsel for the plaintiff per contra reiterated what has been stated in the plaint, application under Order 39 Rule 1 and 2 and the reply to the application under Order 39 Rule 4. He stated that the suit of the plaintiff even under common law rights is maintainable. Ld. Counsel stated that the sales figures of Alfred range of slippers of the plaintiff in the year 2019, 2020 and 2021 were Rs. 4,88,38,353/-, Rs. 5,66,14,530/- and Rs. 14,55,00,257/- respectively. Ld. Counsel stated that defendant has unauthorizedly adopted a deceptively similar device mark by copying in entirety including lettering, writing style, manner of representation on the product which is identical to the plaintiff's well known mark 'Bata'. This adoption is deceptive in nature and amounts to trademark infringement and passing off. Ld. Counsel stated that the defendant has copied the trade dress, get up, lay out and placement of distinctive features of plaintiff's product i.e. Alfred range of slippers which was launched on 06.03.2017 including the sole design, upper sole, front flap, side views and the colour scheme to ride upon the reputation and goodwill of the plaintiff to make the customers believe that the said products originate from the source of the plaintiff. Ld. Counsel stated that the customers are the same, trade channels are the CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 16/39 same and there are likely chances of deceivement of the customers. In support of his contentions, ld. Counsel placed reliance on the case, Skechers v/s Pure Play, 2016 (67) PTC 324 (Del), Puma v/s Campus, CS (Comm)-8/2020, Relaxo v/s Aqulite, 2021 (88) PTC 161 (Del), Bacardi v/s Baheti Overseas, CS (Comm)-464/21, Apollo Tyres Ltd v/s Pioneer Trading Corporation and Ors, 2017 (72) PTC 253 (Del), Pankaj Goel v/s Dabur India, 2008 (38) PTC 49 (Del) and Raj Kumar v/s Abbott Healthcare, 2014 (60) PTC 151 (Del).
19. I have given my thoughtful consideration to the rival contentions and perused the case laws and the documents. I also tried to make the visual comparison of the two products and have also considered the changes proposed by the defendant no.1 in its products.
20. A trademark is a symbol consisting in general, of a picture, label, word or words, which is applied or attached to the goods of a trader so as to distinguish them as his, from the similar goods of the other traders and to identify them as his goods in the business in which they are produced or put forward for sale. Section 2(1) (zb) of the Trademarks Act, 1999 defines as:
(zb) "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 17/39 may include shape of goods, their packaging and combination of colours; and................"
21. Trademark is thus a property right and law protects that right. A trademark is a visual representation attached to the goods for the purpose of indicating their trade origin. Section 2 (1) (m) of the Act defines a mark as a mark which includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. The trademark identifies the product and its origin. It guarantees its quality. It advertises the product. It creates an image of the product in the minds of public particularly the customers or the prospective consumers of such goods. The mark associated with goods comes to acquire a reputation and goodwill around them.
22. It is not in dispute that the plaintiff is the leading manufacturer and retailer of footwears in India having ISO-9001 certification. It has retail outlets which serve sizeable amount of customers. It has its interactive website www.bata.in which is accessible to the customers. It spends huge amount on the promotion of its products including its mark 'Bata'. Its mark 'Bata' has been registered in various classes including class 35 which are valid and subsisting. Its mark 'Bata' has also been declared a well known trademark by the High Court of CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 18/39 Judicature, Allahabad within the meaning of Section 2 (1) (zg) of the Trademarks Act,1999. The plaintiff has given the sales figures as per which, in the financial year 2020-21, it did the business of Rs. 18013.34 millions. It spent 339.31 millions on the publicity of its products.
23. The averments and the documents show that Alfred range of slippers as detailed in para 16 launched by the plaintiff have unique trade dress, get up, lay out and placement of distinctive features including the sole design, upper sole, front flap, side views and colour scheme. Although defendant no.1 has alleged that the possibility of the plaintiff copying the said design from google search cannot be ruled out but it failed to give any specific instance/design which the plaintiff has allegedly copied from the google search. Admittedly, Alfred range of slippers of the plaintiff are generic but it cannot be said that this design of slipper is common to trade and there are no distinctive features of the product beyond the brand 'Bata' which would constitute misrepresentation for the hypothetical consumer. On a general comparison of two products i.e. Alfred range of slippers of plaintiff and the slippers being manufactured by defendant no.1, one can notice that if the mark 'Bata' or 'Boat' is removed from the slippers, it would be difficult to distinguish the two products. Admittedly, 'Bata' and 'Boat' have phonetic dissimilarity but the writing style including lettering, colour CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 19/39 scheme, manner of representation on the product adopted by the defendant is deceptively similar which amounts to trademark infringement and passing off. Further, defendant no.1 has used the same red colour packaging/carton/box which cannot be distinguished by an ordinary customer/consumer.
24. The plaintiff had launched the Alfred range of slippers on 06.03.2017, while the defendant's range of slippers are very recent. The sales figures of Alfred slippers given by the plaintiff show that the plaintiff had been doing a good business. In the year 2019, the sales were Rs. 4,88,38,353/- while the sales in year 2021 were Rs. 14,55,00,257/-. Admittedly, the 'Bata' has retail outlets but Alfred range of slippers are also available in the other stores. It cannot be said that the customers/consumers purchase the 'Bata' products only from the 'Bata' stores. They also purchase the bata products from other outlets/stores where other brands/varieties are also kept.
25. It is true that the plaintiff's Alfred range of slippers are not registered under the Designs Act but this product has acquired immense popularity and goodwill. People have started recognizing this range of slipper as originating from the source of the plaintiff. Admittedly, the said product is generic and the plaintiff cannot claim exclusivity in this range of product but the defendant has failed to explain why it launched the similar CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 20/39 shape of slipper. As observed earlier, if the tradename is removed from the two products, it would be difficult to distinguish which product is manufactured by whom. I am not in agreement with the contention of the defendant that there are no distinctive features of products beyond the brand 'Bata' which would constitute misrepresentation for the hypothetical consumer or that plaintiff has not met the test of distinctiveness with sufficient particularity which term does not coincide with the ordinary use of the term.
26. As regards contention that plaintiff has been trying to curb the healthy competition in the shell of a trademark dispute, I failed to understand what made the defendant no.1 copy the same design, colour, font including writing style, sole design, upper sole, front flap, side views etc. The very act of the defendant no.1 prima facie amounts to infringement of common law rights and trademark of the plaintiff which appears to have been done to make unjust monetary gain with an intention to pass off its products as those of the plaintiff's products. The High Court of Delhi in the case of Skechers USA Inc and Ors v/s Pure Play Sports, I.A No. 6279/2016 in CS (Comm) 573/2016 referring the case of Colgate Palmolive Company & Anr. V. Anchor Health and Beauty Care Pvt. Ltd., MANU/DE/1000/2003: 2003 (27) PTC 478 (Del) and Gorbatschow Wodka KG V. John Distillers Limited, MANU/MH/0630/2011 : 2011 CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 21/39 (47) PTC 100 Bom has held:
"11. In Colgate (supra), the Court after referring the detailed submissions of the parties and taking note of the decisions relied upon on other side observed as follows:
"52. It is the overall impression that customer gets as to the source and origin of the goods from visual impression of color combination, the container, packaging etc. If illiterate, unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for longer period by way of getting the goods in a container having particular shape, color combination words if the first glance of the article without going into the minute details of the colour and getup, it amounts to passing off. In other combination, getup or lay out appearing on the container and packaging gives the impression as to deceptive or near similarities in respect of these ingredients, it is a case of confusion and amounts to passing off one's own goods as those of the other with a view to encash upon the goodwill and reputation of the latter".
12. In Gorbatschow (supra), it was the shape of the vodka bottle which gave rise to the controversy in the proceedings. The plaintiff brought a quia timet action to restrain the defendant from launching its product in a bottle having the shape similar to that of the plaintiffs for vodka. The plaintiffs alleged that the defendant had adopted a deceptive variation of the shape of the bottles of the plaintiffs. The word mark of the defendant was, however, markedly different from that of the plaintiff. Salute in respect of its vodka. The Court found that the shape of the defendants bottle for vodka was similar to that of the plaintiffs. The Court reiterated the well-settled legal position of law as follows:
"18. Now, it is a well settled principle of law that in considering as to whether the mark of the Defendant bears a distinctive similarity to the mark of the Plaintiff, the Court CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 22/39 must have due regard to the overall impact of the rival marks. In Hiralal Prabhudas v. Ganesh Trading Co., AIR 1984 Bom 218 a Division Bench of this Court, after citing precedents formulated the test that must be applied thus:
"What emerges from these authorities is (a) what is the main idea or salient features, (b) marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole, (c) over similarity is the touchstone, (d) marks must be looked at from the view that first impression of a person of average intelligence and imperfect recollection, (e) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (f) the purchaser must not be put in a state of wonderment, (g) marks must be compared as a whole, microscopic examination being impermissible, the broad and salient features must be considered for which the marks must not be placed side by side to find out difference in design and (i) overall similarity is sufficient. In addition, must also be taken into consideration the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances.
Consequently, what the Court must consider, prima facie, at this stage, are the broad and salient features of the two rival shapes. A meticulous attempt to find differences in the two shapes on a comparison side by side is impermissible.
.. The Defendant has no explanation whatsoever for adopting that design. The fact that the defendant made enquiries prior to the registration of the mark can provide no answer in the facts of this case. The Defendant is engaged in the same trade and it is impossible to accept that the Defendant would not have been conscious of the shape which was used by the Plaintiff for its bottles of Vodka both internationally and in India.
The adoption of the shape by the Defendant is prima facie not honest ..."
CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 23/39 13: The Court relied upon John Hai and Company Limited v. Forth Blending Company Limited, 70 RPC 259, wherein it had been, inter alia, observed:
"If the goods of a trader have, from the peculiar mark or get-up which he has used, become known in the market by a particular name, the adoption by a rival or second trader of any mark or get- up which will cause his goods to bear the same name in the market is a violation of the rights of the first trader The action of a trader who copies a rival's established get-up need not be fraudulent, and he need have no intention of obtaining any benefit from his rival's goodwill and reputation -indeed he may be ignorant of his existence but if the result of his innocent action are that the public are likely to be misled, he will be interdicted, per Halsbury, L.C., in Cellular Clothing Coy, Ltd. V. Maxton & Murray (supra) at p. 31. If, however, the Court is satisfied that the trader who is sued intended to obtain some benefit from his rival's established get-up and was thus fraudulent, the Court will be more ready to grant interdict, "Kerly", p.576. The same principle was applied by the House of Lords in Reckitt & Colman Products Limited v. Borden Inc., 1990 (13) R.P.C. 341. In a judgment of the Hiah Court of Ontario in Jay-Zee Food Products Inc. v. Home Juice Co. Ltd., 32 C.P.R. (2d) 265, a similar principle was applied while granting an interlocutory injunction.
"In my view, there is really no doubt that the use of the two bottles in the same area for the same business must cause confusion between the wares and business of the two companies. The combination of the ears, the shape of the bottle and the circle with the leaves would lead any but the most sophisticated observer to the conclusion that the products in either bottle emanated from the same source."
CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 24/39
14. Reliance was also placed on Kemp and Company V. Prima Plastics Ltd., MANU/MH/0027/1999 : 2000 PTC 20 96 (Bom). In this decision, the learned Judge observed:
"If the Plaintiff has to succeed on the ground of passing off, he must show something more than mere similarity between the goods. Exceptions apart, where an article is shaped in an unusual way not primarily for giving same benefit in use or for any other practical purpose, but capricious in order purely to give an article a distinctive appearance, characteristic of that particular manufacturer's goods, a case may be made out by the Plaintiff that he has reputation and goodwill in the distinctive appearance of the article itself which could provide him a cause of action in passing off if his goods were copied."
27. The High Court after seeing the shoes of the plaintiff and comparing the same with those of the defendants, gathered the impression that trade dress of the plaintiff's product is substantially copied by the defendants which is likely to result in confusion. It was held that no doubt, the trademarks of the plaintiff i.e. 'Skechers' is inscribed on the inner sole of the plaintiff's shoes and the defendant's mark 'Pure Play' is similarly inscribed on the inner sole of the defendant's shoes and there is no similarity in the two word marks but it does not appear to be sufficient to dispel the possibility of confusion in the mind of an unwary customer since the several aspects of CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 25/39 trade dress are strikingly similar and the overall get up is also markly similar. The onus would lie heavily on the defendants to explain as to why the defendants have adopted the strikingly similar get up and trade dress in respect of their shoes as that of the plaintiff. At this stage, it can be said that defendant's shoes are a result of a conscious and substantial imitation of the colour combination, textures, style, cut and stitching of the plaintiff's shoes. It was held that the continued impugned activity of the defendants would cause prejudice to the plaintiff on a day to day basis.
28. In the present case, the registration of the mark 'BOAT' vide TM Application no. 4597704 under class 25 on 05.08.2020 was 'on proposed to be used basis' and the mark was registered by the Trademarks Registry vide certificate dated 23.02.2021 w.e.f. 05.08.2020, but on the product, the defendant no.1 has has used the mark 'Boat' in style and not the registered mark 'BOAT'. It has tried to follow the writing style being used in the product under the mark 'Bata' including the colour scheme.
29. In the case of Bacardi and Company Limited (supra), the plaintiff manufactures and sells rum based beverages under the name 'BREEZER'. The defendants also manufacture fruit based beverages which are however non alcoholic under the mark 'FREEZ Mix'. The plaintiff possesses registration for the word CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 26/39 mark 'BREEZER' in classes 32 and 33. The word mark and the shape mark, both are registered under the Trademark Rules, 2017. The shape of the bottle in which the plaintiff manufactures and sells its product has also been granted registration as a trademark. The plaintiff claims user since 27.02.2013. The defendants applied for registration on 19.06.15 in class 32 and 33 which was however refused. The defendants again applied for registration of the word mark FREEZE Mix and it was registered on 22.04.2011 under Class 32. The plaintiff sought an injunction against the infringement and passing off. The Court referred Section 29, Section 28, Section 38, Section 31 (1) of the Trademarks Act and held that the shape mark relating to the plaintiff's bottle as well as its Breezer word mark being registered Section 31 (1) deems it, prima facie, to be valid and the plaintiff is entitled to exclusivity in respect of use of both these marks. Section 29 (2) applies where the similarity is likely to cause confusion on the public. The court called for the samples of the bottles as sold in the market and at a bare glance, it observed that shape of defendant's bottle is identical to that of the plaintiff, both the bottles have an identical shampoint style based, defendant had used colours on its label, cap and bottle identical to those used on the plaintiff's bottles. It was held that defendants have prima facie consciously attempted and adopted a trade dress so CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 27/39 similar to that of the plaintiff as would lead an unwary customer to justifiably presume an association between the two marks and thereafter, restrained the defendants. In that case also, the plaintiff did not have any registration under the Designs Act and had sought injunction under the Trademarks Act since there was a trade dress similarity between the products of the plaintiff and the defendants.
30. In the case of Crocs Inc v/s Bata India (supra) referred by the ld. Counsel for the defendant, aspect of novelty was discussed. It was noticed that footwear generally and sandals, in particular have a design constraint; unlike other objects of use, footwear have to necessarily cater to the somewhat irregular foot shape for comfort and the basic design remains unchanged. A design for an article that simulates a well known or naturally occurring object or person is unprotectable. Thus, a mere trade variation of an existing design does not entitle the originator of the design to protection through registration.
In the present case, the defendant no.1 has almost copied the basic design of slipper including the features, colour, pattern etc. It cannot be said to be a mere trade variation of an existing design. If the two products are placed together, in the absence of the trademark/tradename, it would be very difficult to distinguish the two products originating from which source.
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31. In the case of ITC Limited v/s CG Food (India) Pvt Ltd. (supra) referred by ld. Counsel for the defendant, passing off has been defined. It includes distinctiveness of the plaintiff's mark and the deceptive similarity. The features of the plaintiff's wrapper were analyzed. It was contended that the orange red colour scheme found on the plaintiff's wrapper is unique and no other competitor has adopted a similar color scheme except the defendants. The sun 'emoji' found in Sunfeast brand products has been copied without any explanation by the defendant. It was held that this proposition of the counsel would result in conflating the concept of distinctiveness in fact and distinctiveness in law. The question ought not to depend merely on whether the certain feature of the plaintiff's wrapper is novel, original or striking. It must go further and ask whether such a feature is relied upon to identify the source of the goods. It was held that it cannot be disputed that the plaintiff cannot claim copyright in the entire get up (artistic work) of its noodles (even without registration) but it cannot be said that defendant has copied the essential features of the plaintiff's works. In order to make it convenient for courts to deal with injunction applications in a pending suit seeking relief against passing off, the principle which guide the courts to see whether the protection is available to the plaintiff against the material representation of its goods. Similarity in essential features is CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 29/39 what amounts to misrepresentation as it deceives or likely to deceive the buyer into thinking he has purchased what he wanted, when in reality, he has purchased a different product.
In the present case, the trade dress of the plaintiff is unique which leads to its distinctiveness. The defendant has tried to copy the essential features of the plaintiff's work. Substantial features of the plaintiff's get up have been reproduced in the defendant's get up and there are likely chances of deceivement and material misrepresentations to the unwary customers.
32. In the case Morrokanoil v/s ALDI (supra), it was observed that the product cannot be identified by its get up irrespective of what name appears on the packaging.
There is no denial of this proposition but in this case, the slipper of the plaintiff has unique features which the defendant has tried to copy. Defendant has also tried to use the style of writing the mark 'Boat' and the colour scheme to confuse the unwary customers.
33. In the case of Red Bull GMBH (supra), it was claimed that the packaging apart from the brand name has been used by Red Bull to promote its product. It was held that it is a brand name that is of most importance to consumers. Admittedly, brand name is of most importance to consumers but it cannot be lost sight of the fact that the products of the plaintiff are available in CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 30/39 the other stores besides the Bata stores and on the basis of design, font style, packaging and colour combination, there are likely chances of confusion and deceivement.
34. In the case of Gorbatschow (supra), the plaintiff has an established trans-border reputation and it lies in a shape of the bottle in which vodka is sold. It was held that prima facie, a comparison of shape of the bottle which has been adopted by the defendant would show a striking similarity. The expression 'trademark' includes the shape of goods. A manufacturer who markets a product may assert the distinctive nature of the goods sold in terms of the unique shape. Section 27 (2) of the Trademarks Act, 1999 provides that nothing in the Act shall be deemed to affect the right of action against any person for passing off goods or services. Section 27 (2) is a statutory recognition of the principle that the remedy of passing off lies and is founded in common law. The law has not restricted the remedy only in relation to goods of a particular nature or quality but across the spectrum of trade and business. The protection of the remedy in passing off is as much available to a manufacturer who invests capital, time and ingenuity in producing premium goods or services or those styled as fast moving consumer goods. The Court will not readily assume that because consumers of premium goods and services have higher disposable incomes or, are educated, that the likelihood CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 31/39 of deception is minimal. If the law were to accept such a position, it would only open a pathway for deceit. Less than honest competitors in business would carefully grind away at the features of an existing mark with an established reputation so that, eventually nothing will be left of the uniqueness of the mark. It was held that defendant has absolutely no plausible or bonafide explanation for adopting a shape which is strikingly similar. The plaintiff has, in these circumstances made out a strong prima facie case for the grant of injunction. The balance of convenience must necessarily weigh in favour of the plaintiff which has an established reputation. Irreparable injury would be caused to the established reputation and goodwill of the plaintiff if the defendant is allowed to proceed ahead.
35. In the present case, the plaintiff has not claimed monopoly over Alfred range of slippers nor is the intention of the plaintiff to discourage healthy competition as alleged. It has only claimed that the overall trade dress, get up, layout and placement of distinctive features of Alfred slippers are unique which the defendant no.1 has tried to copy/imitate. In the instant case, the defendant has tried to copy each and every feature including the sole design, the upper sole, the front flap, side views, the colour scheme and placement of distinctive features of plaintiff's Alfred slippers as well as the writing style, CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 32/39 red colour box, packaging etc which clearly amounts to violation of common law rights of the plaintiff and passing off which the plaintiff is entitled to protection under Section 27 (2) of the Trademarks Act,1999.
36. Material placed on record shows that the plaintiff has been manufacturing and marketing 'Alfred' range of slippers since 06.03.2017. The defendant has launched the 'Boat' brand slipper very recently i.e. on 05.08.2020. Although the trademark of the defendant is registered but the plaintiff is within its right to seek protection against the defendant for passing off goods which right has been statutory recognized under Section 27 (2) of the Act. Admittedly, under Section 28 (1) of the Act, registration of a trademark gives to the registered proprietor exclusive right to use the same in relation to the goods in respect of which it has been registered but Section 27 (2) of the Act provides that nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof. Similarly, Section 33 of the Act also save the vested right of a prior user when it lays down that "nothing in the Act shall entitle the proprietor or a registered user of a registered trademark to interfere with or restrain the use by any person of a trademark identical with or nearly CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 33/39 resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trademark from a prior date." A prior user of a trademark is entitled to maintain an action against a subsequent user of identical trademark including registered user thereof. It was held in the case of N.R Dongre v/s Whirlpool Corporation, 1996 PTC (16) that the action against registered owner of trademark at the instance of prior user of the same or similar mark is maintainable and the injunction can be granted even against an owner of the trademark in an appropriate case. In the case of Laxmikant V. Patel v. Chetenbhat Shah & anr, (2002) 3 SCC 65, the Supreme Court while considering a plea of passing off and grant of ad interim injunction held in no uncertain terms that a person may sell his goods or deliver his services under a trading name or style which, with the passage of time, may acquire a reputation or goodwill and may become a property to be protected by the courts. It was held that a competitor initiating sale of goods or services in the same name or by imitating that name causes injury to the business of one who has the property in that name. It was held that honesty and fair play are and ought to be the basic policy in the world of business and when a person adopts or intends to adopt a name which already belongs to someone else, it results in confusion, has the propensity of diverting the customers and clients of CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 34/39 someone else to himself and thereby resulting in injury. It was also held that the principles which apply to trademark are applicable to trade name also. The Supreme Court further observed that where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.
37. I may mention that the plaintiff's trademark 'Bata' has been declared as the well known trademark under Section 2 (1) (zg) of the Trademarks Act, 1999 by the High Court of Judicature at Allahabad and it is well settled law that a well known trademark is entitled to highest degree of protection across all the classes including disparate product. The plaintiff has made huge investments and built up its business step by step which has grown manifold. It has spent heavily on R & D and promotion of its products. Due to the impugned action of defendant no.1 in making similar type of slippers, the common law rights of the plaintiff have been affected. This adoption appears to have been made by the defendant no.1 with an intention to encash the goodwill and reputation of the plaintiff by passing off its slippers as originating from the source of the plaintiff. The defendant no.1 has absolutely no plausible or bonafide explanation for adopting a shape which is strikingly similar.
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38. It is true that the plaintiff's slippers titled 'Alfred' range of slippers are generic but the design/trade dress which has been adopted by the plaintiff is not common to trade. There are many distinctive features of the product beyond the brand 'Bata'.
39. In the instant case, defendant no.1 apart from copying the writing style, manner of representation of the plaintiff's mark has further copied and started using the same red colour packaging/carton/box and the manner of representation of the mark 'Boat' on the product, packaging, tags etc which amounts to passing off. This adoption appears to be deliberate and intentional to trade upon the reputation and goodwill of the plaintiff. Admittedly, word 'Bata' and 'Boat' do not have phonetic similarity and they convey different meanings but a comparison of the shape of the slipper which has been adopted by the defendant no.1 with the slipper of the plaintiff would show a striking similarity. The Court at this stage has to consider the broad and salient features of the two rival shapes. A meticulous attempt to find differences in the two shapes on a comparison side by side is impermissible. The test is whether the shape that has been adopted by the defendant is one that is adopted capriciously, purely to give an article a distinctive appearance or characterstics of the goods of the manufacturer/plaintiff. If that be so, the manufacturer may be CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 36/39 able to establish that he has reputation and goodwill in the distinctive appearance of the article itself which would furnish a cause of action in passing off.
40. As regards the contention that defendant is not registered proprietor of the trademark 'Boat', the defendant no.1 has submitted an authorization dated 15.09.2020 in favour of Deepak Mittal, Proprietor of Mittal Footcare India (defendant no.1) by the registered proprietor of the trademark. By virtue of the said letter, I am of the view that the defendant is entitled to use the trademark 'BOAT' in respect of the products under class 25.
41. The plaintiff, has therefore, in these circumstances, made out a strong prima facie case for the grant of injunction in its favour and against the defendants. The balance of convenience also weighs in favour of the plaintiff which has an established reputation. Irreparable injury would be caused to the established reputation and goodwill of the plaintiff if defendants are allowed to manufacture and market the impugned slipper.
42. The application of the plaintiff under Order 39 Rule 1 and 2 is accordingly allowed. The application of the defendant no.1 under Order 39 Rule 4 CPC is dismissed. It is interalia ordered CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 37/39 as under:
" The defendants, their proprietor or partners as the case may be, servants, agents, affiliates, associates, stockiest, distributors are restrained from manufacturing, supplying, selling, marketing, in any manner including online sale, dealing in any other way, Alfred range of slippers, bearing the mark including lettering/writing style, represented in a manner that amounts to infringement of plaintiff's registered rights in the mark and BATA etc till the final disposal of the suit. An ex parte ad interim injunction is also granted in favour of the plaintiff and against the defendants from imitating the trade dress, get up, lay out and placement of distinctive features of plaintiff's Alfred range of slippers including the sole design, the upper sole, the front flap, the side views and the colour scheme amounting to passing off etc till the final disposal of the suit."
43. In the instant case, during arguments, the defendant has stated that it is willing to make changes qua the writing style of the trademark 'Boat' as depicted on the slipper and other products by using the words in capital i.e. 'BOAT' changing the colour scheme in respect of the other products.
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44. In view of the willingness expressed by the defendant no.1, "Defendant no.1 is permitted to continue manufacturing, supplying, selling, marketing, in any manner including online sale, dealing in any other product of any description excluding the slipper, bearing the mark 'BOAT' changing the lettering/writing style/colour scheme, till the final disposal of the suit."
45. Nothing mentioned herein above shall tentamount to be an expression of opinion on the merits of the case.
Announced through video conferencing on 29.01.2022.
(Sanjiv Jain) District Judge (Commercial Court)03/New Delhi CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 39/39 CS (COMM) No. 534/2021 Bata India Ltd v/s Mittal Footcare India & Ors 40/39