Bombay High Court
Bisleri International Pvt.Ltd vs Laxmikanta Nayak on 10 December, 2020
Author: Madhav J. Jamdar
Bench: Madhav J. Jamdar
Digitally signed
by Hemant C.
Hemant Shiv
Date:
C. Shiv 2020.12.10
20:13:22
+0530 1/14 11. ial.7309.20 in comipl.7305.20.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION (L) NO. 7309 OF 2020
IN
COMMERCIAL INTELLECTUAL PROPERTY RIGHTS SUIT
(L) NO.7305 OF 2020
Bisleri International Pvt. Ltd. ... Plaintiff
V/s.
Laxmikanta Nayak ... Defendant
......
Mr. Vinod Bhagat a/w. Ms. Laher Shah, Ms. Ruchi Agarwal and Ms.
Radhika Mehta i/b. G. S. Hegde and V. A. Bhagat for
Plaintiff/Applicant.
None for Defendant.
......
CORAM : MADHAV J. JAMDAR, J.
DATE: :10th DECEMBER, 2020.
(THROUGH VIDEO CONFERENCING)
P.C:-
1. Heard Mr. Bhagat for Plaintiff. He states that the Defendant has been served initially on 23rd November, 2020 alongwith all the papers of the Interim Application, Suit as well as the Leave Petition. He further states that subsequently also on 2 nd December, 2020, 7th December, 2020 and 9th December, 2020 the Defendant was served and also sent video conference link for the hearing to be conducted on 4th December, 2020, 8th December, 2020 and 10th December, 2020 Sonali 2/14 11. ial.7309.20 in comipl.7305.20.doc respectively. Mr. Bhagat has filed two affidavit of service dated 3 rd December, 2020 of Nitin Ingale working as Clerk in the office of Advocates of Plaintiff and Kashmira Sawant, Assistant Manager- Legal of the Plaintiff. He produced hard copy of email dated 9 th December, 2020 sent to the Defendant informing that the matter is listed today i.e. on 10th December, 2020 at Serial No. 11 and link for video conferencing was also forwarded.
3. He states that on 4th December, 2020, Hon'ble Shri Justice K. R. Shriram was not available and on 8 th December, 2020 the matter did not reach. Today, the matter was taken at about 1.30 p.m. and as nobody appeared for the Defendant, the matter was kept at 4.00 p.m. by asking the learned Advocate for the Plaintiff to give additional notice by email to the Defendant dated 10 th December, 2020 informing that the matter would be taken up at 4.00 p.m. today. The learned Advocate of the Plaintiff has complied with the same. Inspite of these notices, none appears at 4.00 p.m. today for the Defendant. Mr. Bhagat agrees to file further affidavit of service evidencing the manner in which the Defendant was served subsequent to 03.12.2020. Such affidavit of service be filed within three working days.
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4. Although the Plaintiff has moved the matter after serving the Defendant, Mr. Bhagat has presently pressed reliefs in terms of prayer clauses (a) and (d) as Leave Petition is pending.
5. I have heard Mr. Bhagat Advocate for the Plaintiff and also gone through the contents of the plaints and the exhibits annexed to the same and the contents of the Interim Application. At this stage only it is to be noted that inspite of several notices the Defendant has failed to appear and failed to file reply and therefore, the contents of the plaint have remained uncontroverted.
6. It is to be noted that the Plaintiff is one of the leading companies in bottling, processing, packaging, marketing and selling packaged drinking water and other like goods. The Plaintiff has a market share of over 50% of packaged drinking water sold in India. The Plaintiff has 24 franchisees and 13 owned plants all across India. It is stated in the plaint that Plaintiff is the market leader and is one of the most reputed Indian companies engaged in bottling, processing, packaging, marketing and selling the aforementioned goods for last more than three and a half decades. The Plaintiff's through its predecessor has been using trade mark "BISLERI" prior to year 1969. In and around the year 1969. The said company viz. Sonali 4/14 11. ial.7309.20 in comipl.7305.20.doc Bisleri(India) Private Limited obtained registration of the trade mark BISLERI under No. 260716 dated 20 th November, 1969 in class 32, which registration is valid subsisting and in force. The Plaintiff acquired rights under the said trade mark in the year 1987 when Plaintiff was known as Acqua Minerals Pvt. Ltd., which name was changed in the year 2002 to Bisleri International Private Limited. The Plaintiff has stated that since inception the Plaintiff is using the said trade mark-BISLERI openly and extensively all over India and the said trade mark has been widely publicized by the Plaintiff through various media of publicity. The trade mark BISLERI appears on all of the Plaintiff's goods and is in fact the House Mark of the Plaintiff. The said trade mark BISLERI has, by virtue of such long association of about fifty years with the Plaintiff's goods, lost its primary meaning and significance and has acquired and assumed a secondary meaning relating to the goods of the Plaintiff and none else. The Plaintiff submits that its trade mark BISLERI is highly distinctive of the Plaintiff's goods, both in the minds of the purchasing public and the people involved in the said trade across India. On account of such long, continuous, wide use and publicity undertaken by the Plaintiff using its trade mark BISLERI for around fifty years, the said trade mark has become distinctive of the Sonali 5/14 11. ial.7309.20 in comipl.7305.20.doc Plaintiff's goods and valuable common law rights have come to vest therein. It is stated that in addition to the valuable common law rights acquired therein, the Plaintiff is the registered proprietor of the trade mark BISLERI, both word and label, as also of various trade mark labels containing BISLERI as an essential feature, under the provisions of Trade Marks Act, 1999. The Plaintiff has produced at Exhibit-B list of registered trade marks regarding registration for BISLERI. The Plaintiff has also produced at Exhibit-C (Page Nos. 49 and 50) colour representations of the said Bisleri labels as designed by its author. It is stated that the said artistic works was created, developed and designed by the author, acting for his company, under a contract of service from the Plaintiff, the Plaintiff is thus the lawful owner and the rightful proprietor of the said original artistic works vesting in its said BISLERI labels. The Plaintiff has registered the said original artistic work vesting in its BISLERI labels, under the provisions of the Copyright Act, 1957, vide registration No. A- 85011/2009 dated 02.03.2009 and A-85015/2009 dated 02.03.2009. The Plaintiff has annexed copy of said Copyright Registration Certificate granted in favour of the Plaintiff for its BISLERI original artistic labels.
7. It is contended that by virtue of the said copyright Sonali 6/14 11. ial.7309.20 in comipl.7305.20.doc registrations, the Plaintiff is entitled to reproduce, make copies, publish, communicate to the public and use the said artistic works in any manner whatsoever including restrain others who are found using the same unathorisedly. It is further stated that in addition of using its trade mark BISLERI in stylized labels bearing original artistic works, the Plaintiff has been bottling and packaging its BISLERI packaged drinking water in bottles bearing and packaging its BISLERI packaged drinking water in bottles bearing a new and original shape, design, outer structure, surface pattern, configuration and ornamentation. It is submitted that on account of such use, in addition to the trade mark and artistic work of BISLERI, even the bottle designs of its BISLERI packaged drinking water amongst other goods have become distinctive and have come to be identified with the Plaintiff. It is submitted that the Plaintiff has in the year 2006 created, designed and developed a new bottle design for use in relation to its BISLERI packaged drinking water (Exhibit-E). The said design is produced at Exhibit-E. The said bottle is transparent with green colored cap and bears a conical shape on its top portion easing into a cylindrical shape on the bottom portion of the said Bottle. It also features a distinct wave like surface pattern which runs in parallel manner over the entire outer surface and circumference of Sonali 7/14 11. ial.7309.20 in comipl.7305.20.doc the said Bottle. It is further stated that Plaintiff is selling its BISLERI packaged drinking water in bottles bearing the unique design in different sizes viz. 250 ml, 500 ml, 1 ltr and 2 ltrs etc. It is submitted that the Plaintiff is continuously using its said bottle design appended since the year 2006 in respect of its BISLERI packaged drinking water. The said bottle design has on account of such continuous use come to be exclusively associated with the Plaintiff and its BISLERI packaged drinking water. It is submitted that on account of continuous use for more than one decade, valuable common law rights have come to vest in the said unique design, shape, configuration, surface pattern and ornamentation of the bottle manufactured by the Plaintiff using the artistic work and trade dress of BISLERI, which is distinctive of, is synonymous and identified exclusively with the Plaintiff and none else.
8. It is submitted that total sales turnover of the Plaintiff under its artistic work of BISLERI sold in the said distinct bottle design, for the financial year 2019-2020 is to the tune of Rs.1435.24 crores and the Plaintiff has spent huge sums on advertisements, publicity and sales promotion expenses in respect of its artistic work of BISLERI sold in distinctive bottle design, which amount for the financial year 2019-2020 was to the tune of Rs. 55.45 crores. A perusal of the Sonali 8/14 11. ial.7309.20 in comipl.7305.20.doc statement of turnover certified by the Chartered Accountant of the Plaintiff (Exhibit G/Page 62) shows that in the year 2009-2010, the turnover was Rs. 206.27 crores and the same has increased tremendously upto year 2019-2020 and for the year 2019-2020 the turn over is of Rs. 1435.24 crores. The advertising expenses in the year 2009-2010 were Rs.15.50 Crores and the same were increased to Rs.55.45 crores in the financial year 2019-2020.
9. It is submitted that for the period from 10/07/2014 to 09.07.2019, the Defendant was permitted to use Plaintiff's trade mark BISLERI in relation to packaged drinking water bottle and processed by the said Defendant using the Plaintiff's moulds, vide a Trade Mark User's Agreement dated 10.07.2014. The duration of the said agreement expired on 09.07.2019. Thereafter, Plaintiff had executed a fresh agreement dated 09.07.2019 and which was valid until 09.07.2024. However, certain dispute took place and the Plaintiff by their communication dated 4th September, 2020 terminated the said Trade Mark User's Agreement w.e.f. 4 th September, 2020.
10. It is further stated in the plaint that in and around of 3rd week of October-2020, the Plaintiff's marketing personnel were shocked to Sonali 9/14 11. ial.7309.20 in comipl.7305.20.doc find certain retailers in Khorda, Odisha, selling the Defendant's packaged drinking water bearing the impugned mark NATURAL AQUA under a pirated artwork, substantially similar to the Plaintiff's original artwork of BISLERI, packed in bottles bearing an identical design to that of the Plaintiff's bottle.
11. It is stated that on 21st October, 2020, the Plaintiff caused a FIR to be filed with the Chandaka Police Station, Bhubaneshwar, District -Khordha, Odisha and a raid was conducted on the Defendant's factory located at Khorda and warehouse located at Puri. During the raid the Defendant was found to be in possession of :(a) the Plaintiff's BISLERI moulds, (b) Plaintiff's BISLERI empty and/or filled bottles and (c) NATURAL AQUA bottles depicted under a pirated artwork packed in bottles bearing an identical design. The seizure memo/panchnama lists out the inventory of the material seizd from the Defendant's premises.
12. The Plaintiff has explained in paragraph No. 35 that this Court will have jurisdiction. The Plaintiff has produced for inspection of the Court the Plaintiff's BISLERI packaged drinking water and Defendant's NATURAL AQUA packaged drinking water bottle. The photographs of Plaintiff's bottle alongwith label is at page 57 and Sonali 10/14 11. ial.7309.20 in comipl.7305.20.doc the Defendant's bottle label is at page 134. The said photographs are reproduced hereinbelow for the purpose of comparison.
Plaintiff's bottle Defendant's bottle
Sonali
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13. It is clear that the artistic depiction on the Defendant's packaged drinking water bottle bearing the impugned mark NATURAL AQUA is almost identical and/or is substantially similar to the original artistic work depicted on the Plaintiff's BISLERI packaged drinking water bottle. It is significant to note that the Defendant was a permitted user licensee who was duly permitted to use Plaintiff's trade mark BISLERI in relation to BISLERI artistic work and bottle design for the period from 10th July, 2014 to 9th July, 2019 and thereafter from 9 th July, 2019 till the cancellation of the agreement on 4th September, 2020. Therefore, it is clear that after termination of the contract, the Defendant has copied the Plaintiff's Sonali 12/14 11. ial.7309.20 in comipl.7305.20.doc trade dress, art work and bottle design.
14. In this circumstances, I am satisfied that Plaintiff has established strong prima facie case, balance of convenience is also in favour of the Plaintiff. It is clear that the Plaintiff will suffer irreparable harm, loss and damage if the ad-interim relief is not granted.
15. It is also significant to note that inspite of several notices, the Defendant has failed to appear.
16. In view of this, ad-interim reliefs in terms of prayer clause (a) and (d) is granted. The same are reproduced hereinbelow for ready reference:-
"(a) pending the hearing and final disposal of the suit, the Defendant by himself, his proprietor/partners, servants, agents, distributors, stockists, dealers, assignees, transferees and all those connected with the Defendant in his business be restrained by an order and temporary injunction of this Hon'ble Court from bottling, processing, packaging, marketing, selling and/or using in any manner whatsoever in relation to his packaged drinking water and/or any other like goods, the impugned pirated artwork of NATURAL AQUA (appended at Exhibit P to the plaint) bearing a colour scheme, get-up, layout, representation, style, trade dress and artwork or any other artwork which is identical with and/or is substantially/strikingly similar to the Plaintiff's original artistic Sonali 13/14 11. ial.7309.20 in comipl.7305.20.doc label of BISLERI (appended at C to the plaint), so as to infringe upon the Plaintiff's registered copyrights in the original artistic works of its BISLERI labels registered under Nos. A-85011/2009 and A-85015/2009 both dated 02.03.2009;
(d) pending the hearing and final disposal of this suit, the Court Receiver, High Court, Bombay or such other fit and proper person/s as this Hon'ble Court thinks fit, be appointed Receiver/s with all powers under Order XL Rule 1 and Order XXXIX Rule 7 of the Code of Civil Procedure, 1908, to attend and search the premises, offices, factories, godowns, warehouses of the Defendant and other premises wherever the impugned products bearing the impugned pirated artwork and impugned pirated bottle design of NATURAL AQUA and any other like goods as may be found, stocked, sealed or are lying and to break open locks of such premises with the help of police protection (if needed), including de-sealing of the infringing goods seized by Chandaka Police Station, Bhubaneshwar, District -Khordha, Odisha, in F.I.R. No. 0182 dated 21.10.2020 and take possession of such infringing goods, make an inventory, seize and take possession/custody thereof by sealing the said goods at the Defendant's premises under lock and key and also of all related items such as labels, stationery, production registers, invoices, printing and packaging materials, screens, cylinders, blocks, moulds, machinery and master plates used to manufacture the impugned goods and to print the infringing packaging materials lying at the premises, offices or factories, manufacturing units, godowns, warehouses of the Defendant or agents or at any other place/s and the Defendant by themselves, servants, agents, distributors, dealers, assignees, stockists and all those connected with the Defendant, representatives be ordered to deliver up all the aforesaid to the Court Receiver or to such other fit and proper person as Hon'ble Court thinks fit and the Court Receiver must carry out such search and seizure with local police assistance, if necessary, at no costs;"
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17. The Court Receiver is permitted to seek protection of local police for executing the order. The local police shall render assistance to the Court Receiver.
18. Liberty is granted to the Defendant to apply for variation of this order with 72 hours prior notice to the Advocates for Plaintiff.
19. Stand over to 11th January, 2021 for further ad-interim reliefs.
[MADHAV J. JAMDAR, J.] Sonali