Delhi High Court
Glossy Color & Paints Pvt Ltd & Anr. vs Mona Aggarwal & Ors on 9 September, 2015
Author: Manmohan Singh
Bench: Manmohan Singh
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment pronounced on: 9th September, 2015
+ I.A. No.14572/2014 in CS (OS) 2335/2014
GLOSSY COLOR & PAINTS PVT LTD & ANR . .... Plaintiffs
Through Mr. Sagar Chandra, Adv. with
Ms. Surabhi Iyer, Ms. Ishani
Chandra and Mr. Ankit Rastogi,
Adv.
versus
MONA AGGARWAL & ORS ..... Defendants
Through Mr. Mohan Vidhani, Adv. with
Mr. Rahul Vidhani, Mr. Ashish
Singh and Ms.Purva Chugh, Adv.
for D-1 and 2.
Ms. Vidhya Gudwani, Adv. with
Ms. Sadhna Singh, Adv. for D-3.
CORAM:
HON'BLE MR.JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J.
1. The plaintiffs have filed the present suit for permanent injunction restraining infringement of trademark, copyright, passing off, dilution, delivery up, rendition of accounts of profits, damages, etc. against the defendants.
2. The plaintiff No.1 is a private limited company engaged in the manufacture and sale of paints, varnishes, polishes and other similar products. Plaintiff No. 2 is the Licensee and sister concern of plaintiff No. 1 operating in the same business.
CS (OS) No.2335/2014 Page 1 of 293. The plaintiffs for the past 65 years are in the field of their business. They provide paints that are tailor-made to the customer's requirement. They have a distribution network of over 400 dealers in Delhi itself and about 60-70 dealers outside Delhi to reach every nook and corner of the Indian market. They and their sister concerns are ISO: 9001:2000 and ISO: 1400: 2008 certified and many of the plaintiffs' products are ISI Marked. The plaintiffs' main commitment is quality products and manufacturing excellence.
4. The plaintiffs' business grew over the time and many brands have been introduced by plaintiff No. 1 namely "1001" Zinc Paint, "1001" Acrylic Emulsion, "1001" Rakshak, Weathergold, Tuff Wood, Home Care Luxury Sheen Emulsion, "1001" Acrylic Washable Distemper, "1001" Clear Varnish, Weatherite Acrylic Exterior Paint, "1001" Exterior Enamel, "1001" Epoxy Paint etc. Many other brands have also been introduced by the sister concern of plaintiff No. 1, i.e. plaintiff No. 2 namely Auto King, Infinity, Lotus, Shehnai.
5. It is claimed by the plaintiffs that the trademark "1001" was first used and registered in the year 1946. All the rights in the "1001" family of marks along with the goodwill and reputation were transferred to the plaintiffs pursuant to a consent award passed by an Arbitrator in a family settlement through which the trademark bearing registration including all variants of the said trademarks were transferred to the plaintiffs. The above-mentioned award was validated by this Court vide order dated 3rd April, 1995 pursuant to which the said trademarks were transmitted and awarded to the CS (OS) No.2335/2014 Page 2 of 29 plaintiffs along with all reputation and goodwill accruing thereto and thus the plaintiffs are the proprietor of the said trademarks.
6. The plaintiff is the statutory owner of rights in the trademarks provided below:
MARK REGN. NO. CLASS STATUS
1001 124357 2 Registered
1001 Superior 307527 2 Registered
Label
1001 423202 2 Registered
1001 Superior 512980 2 Registered
1001 Acrylic 1106468 2 Registered
Washable
Distemper
1001 340853 2 Registered
10001 1319467 2 Registered
7. It is submitted by the plaintiffs that from the date of the said transfer, the plaintiffs have been using the "1001" family of marks continuously, extensively and uninterruptedly for almost two decades and hence by virtue of such use, enormous goodwill and reputation has accrued to the "1001" family of marks. It is further submitted that due to such long, continuous and uninterrupted use, the consuming public associates the marks solely and exclusively with the plaintiffs and with no other party.
8. In view of the priority in adoption and extensive, uninterrupted and continuous use of the trademark "1001" by the predecessor in interest of the plaintiffs prior to 1995 and by the plaintiffs themselves thereafter, has resulted in a secondary significance/meaning accruing to the trademark "1001" in favor of the plaintiffs entitling the plaintiffs CS (OS) No.2335/2014 Page 3 of 29 to common law rights apart from the statutory rights in the "1001" family of marks.
9. It is further submitted that the plaintiffs have also been using a unique and distinctive label for the "1001" family of marks on their products. The label for "1001" has unique features which uses the color combination of red, white and yellow in which the words "1001" ACRYLIC are written in white and the words "washable distemper"
are written in yellow on a red background. Further, the packing material used an eye design in the middle of 0 to depict "1001" in an artistic manner. Further, the label also uses a speech bubble with pointed edges (also called as "scream speech bubble") in which the words "with latex satin silk" are written. The said "1001" Label is a subject of trademark registration bearing No. 1106468. They have been using a unique and distinctive eye device incorporated in the "1001" label wherein the shape of an eye is drawn inside each of the numeric 0 along with the distinct shape of a pupil drawn inside the eye (hereinafter referred to the "eye device").
10. It is alleged that the entire label of the plaintiffs including the eye device (hereinafter referred to as "1001" label) comprising of the color combination, lay out, get up and artistic manner of writing "1001" is also a trademark which is being used by the plaintiffs continuously, extensively and without any interruption for a long time at least since 1st July, 2001. In view of such long and extensive use, a substantial amount of goodwill and reputation has also accrued to the "1001" label of the plaintiffs. The scanned copy of the plaintiffs' CS (OS) No.2335/2014 Page 4 of 29 products using the trademark "1001" and the "1001" label have been filed.
11. It is stated later on that at the time of filing the suit, the earliest document of use available with the plaintiff was of the year 2001. Therefore, the plaintiff averred in the plaint that it has been using the "1001" label along with the eye device and the color combination of red, white and yellow at least since 2001, however, during the course of the proceedings, the plaintiffs were able to obtain an advertisement of the plaintiffs' products in the Mayapuri Magazine in the year 1998 using the color combination of red, white and yellow and the same was taken on the record. The counsel has referred the case of M/s Anglo-Dutch Paint, Colour and Varnish Works Pvt. Ltd. v. M/s India Trading House, AIR 1977 DELHI 41 who was assignor of the numeral 1001.
12. It is submitted that the plaintiffs trademarks are inherently distinctive, due to being an arbitrary combination of numbers, colors, lay out and getup. Due to its prior and extensive use, an enormous amount of goodwill accrues to the plaintiffs. Thus, these trademarks have acquired a secondary meaning and the consuming public and the trade channels associate the plaintiffs trademarks including the "1001" family of marks and the "1001" label and the eye device solely and exclusively with the plaintiffs.
13. The defendant No. 1 is the proprietor of Multi Group of Suppliers being defendant No.2. Defendant Nos.1 and 2 are carrying out their business using the name "6004" (Label) which is deceptively CS (OS) No.2335/2014 Page 5 of 29 similar and a substantial reproduction of the "1001" label of the plaintiffs. The defendant No. 3 is K K Komponents, who is engaged in the manufacture of labels/printed containers/plastic buckets of the defendant Nos. 1 and 2.
14. It is the case of the plaintiffs that the defendants have adopted the trademark "6004" along with the "6004" Label which is identical to the "1001" Label of the plaintiff including the eye device and the color combination of red, white and yellow for identical products.
Defendants' Case
15. It is the case of the defendants that the colour combination is being used by the defendant No.1 since long in her business under the name and style of M/s. S.S. Traders in respect of her wax polish business under the trademark AXEL since 1976. Even the suit was filed against her being CS (OS) No. 80/1992 in this Court wherein the colour scheme has been mentioned. Besides the husband of the defendant No.1 was also using the similar colour scheme for wax polish. He was also party to the said suit being CS (OS) No. 80/1992 and he used the trademark AXO.
16. The present business regarding distemper, paints etc. is being conducted by the defendant since 1999 and for this she has been using the trademarks MULTY, MULTY PLUS, MULTY STAR, CAPITAL STAR and the said colour scheme is part of the judicial record from the year 2006 in various judicial proceedings. The CS (OS) No.2335/2014 Page 6 of 29 defendant has also filed the application for the registration of the trademark (label) with the same colour scheme under No. 1662017 claiming user since 1st January, 1999. The defendant has been advertising the products with the colour scheme.
17. So far as the present impugned label is concerned which has been impugned by the plaintiffs, the trademark 6004 is being used by the defendant since the year 2011 and defendant adopted the similar colour scheme which the defendant has been using in the production/packaging of MULTI, MULTY PLUS, MULTY STAR, CAPITAL STAR.
18. The defendants adopted the numerals 6004 by taking same from ISI Licenses. It is submitted that reason of the said adoption has also been explained in a suit filed by the defendants against a third party namely Ms. Sandhya Gupta who was using the trademark 4006. The trademarks 1001 and 6004 are entirely different. The same cannot cause any confusion and deception in the minds of the public.
19. The eye device used by the defendant has been deleted for which the statement was made in the Court and the fresh label without eye has been filed by the defendant.
20. The defendants relied upon the judgment in the case of Bhole Baba Milk Food Industries Ltd. Vs. Parul Food Specialties (P) Ltd., 2011 (45) PTC 217 (Del.) wherein also the defendant therein had changed the label during the pendency of the suit and even CS (OS) No.2335/2014 Page 7 of 29 when the ex-parte interim injunction order was granted, the Court had compared the new label.
21. Both parties have made their submissions from time to time. Earlier also they tried to resolve their disputes by amicable settlement however the settlement did not arrive. Though the defendants agreeable to give up all similar colour scheme, lay out arrangement of feature in toto as well as the device of eyes but they are not prepared to change mark/numeral 6004. Learned counsel for the plaintiffs on the other hand gave many suggestions that his client is ready to give up the relief for damages, costs and is also prepared to give some time if the numeral is slightly changed from 6004 to 6884 or 6084 or with any other combination except the two numeral be not used by the defendants together in order to avoid confusion and deception. Counsel says that the defendants if agreeable to give up one zero by adding any other numeral, the plaintiffs would not press for the other relief. The defendants are however not agreeable and are insisting that the dispute about numeral be then decided by the court on merit.
22. Left with no option but to decide the dispute on merit.
23. The same print of two products are reproduced herein below :
CS (OS) No.2335/2014 Page 8 of 2924. During the arguments it was admitted by the defendants that they have adopted and have been using the mark "6004" and the CS (OS) No.2335/2014 Page 9 of 29 "6004" Label since 1st April, 2011 but they and sister concerned earlier using the similar color combination of red, white and yellow in relation to product Oil Bond Distemper sold under the mark "MULTY" since 1999. The defendants have also averred that they have been using the color scheme of red, white and yellow since 1981, through the husband of defendant No. 1, in respect of polish under the mark "AXEL". The same was under litigation. The defendants have further submitted that the color combination has also been used by defendant No. 1 for floor polish since 1997. It is pertinent to mention that the earliest document showing the use of the said color combination filed by the defendants pertains to the mark "MULTY" and is an advertisement of the year 2008 and is available at page 120 of the defendants' documents. The earliest document showing use of the mark "6004" along with the color combination is of the year 2013 and is available at page 248 and 249 of the defendants' documents. The defendants have given no reason as why they have adopted eye device except for simply stating that they are willing to remove the same.
25. In support of their averments, the defendants have relied on various cases which have been filed by the defendants against third parties. The defendants filed various documents in support of their reply including documents of judicial records of suits filed by the defendants against third parties. The defendants have claimed that the said suits have been filed in relation to the color combination of red, white and yellow. However, a bare perusal of the documents CS (OS) No.2335/2014 Page 10 of 29 filed by the defendants would show that the said documents only pertain to the trademark "MULTY". In the suit filed by the defendants in titled as 'Mona Aggarwal vs. Srasti Paints' being Suit No. 307 of 2006 pertaining to the color combination, the earliest use could be of the year 2006.
26. The defendants have filed an order dated 10th June, 2011 passed by the Additional District Judge in TM No. 09/10 being 'Mona Aggarwal vs. Vasco Paints and Chemicals & Anr'. Paragraph 3 of the said order has been reproduced here as under:-
"In August 2006, plaintiff learnt that one Mr. Gupta of M/s. Srasti paints had printed the trademark MULTI for their products. When he did not refrain from using it in being objected and rather started selling his goods under the trade mark SUPER MULTY PLUS in respect of paints and distempers in October 2006, plaintiff had filed an injunction suit, M/s. Srasti Paints filed counter claim therein claiming to have obtained registration of trade mark SUPER MULTI PLUS. The plaintiff has already filed a rectification petition in respect of trade mark SUPER MULTI PLUS. The matter with Trade Mark authority and in the court is sub judice. Since the plaintiff was suffering in business and her reputation attached to the buckets under trade mark MULTY PLUS due to marketing of inferior and sub standard products by M/s. Srasti Paints and due to decline of temporary relief by the Court, plaintiff changes the color combination, layout and arrangement of buckets of her products from those of M/s. Srasti Paints besides modifying the trade mark from MULTY PLUS to MULTY STAR. It is to be noted that MULTY is the essential and distinctive character of Plaintiffs trademark. The color scheme of bucket of OBD (washable distemper) under trade mark MULTY STAR of the plaintiff is an original artistic work having attractive color combination and arrangement comprising red background with two big stars, 12 small starts CS (OS) No.2335/2014 Page 11 of 29 in yellow color, ISI written in white, trade mark MULTY STAR written in English and hindi in white with blue outline, "direction for use" written in black on yellow ground, name of products and manufacturer address in blue."
27. Therefore, it is evident that by the defendants' own admission that the said color combination of red, white and yellow has been adopted by the defendants, at best, in August, 2006.
28. The judicial records relied on by the defendants to evidence their rights over the color combination of red, white and yellow do not pertain to the color combination at all but only to the mark "MULTY" and are therefore irrelevant to the present proceedings. The said colour combination if used by the defendants or by its sister concerned, the same are in relation to different goods i.e. polish under different brand name.
29. It has come on record that apart from the plaintiffs, there is no other party selling the goods in question, being acrylic distemper, under a numeral mark. The plaintiffs through their predecessors, adopted the mark "1001" in the year 1946 and has been using the same continuously ever since. A mere glance at the marks "6004" and "1001" and the respective labels is sufficient to know that the defendants' had the product of the plaintiffs in front of their eyes and designed and created their own mark and label in such a way that a consumer of average intelligence and imperfect recollection may be duped and confused as to the origination of the products.
CS (OS) No.2335/2014 Page 12 of 2930. It is settled law that when the adoption itself is tainted with such malafides, the defendants must not be allowed to escape liability under law by comparing each element of the mark separately, rather the mark should be compared as a whole keeping in mind the real motives of the defendants to adopt the mark/label in question which was to create confusion in the minds of consumer of average intelligence and imperfect recollection and gain an unfair and undue advantage.
31. The first issue to be decided by this Court at this stage is as to whether the colour scheme, get up, lay out and arrangement of feature used by the defendants are bonafide or the defendants are the owner/author of the same. In case the defendants are guilty of infringement of the rights of the plaintiffs, the interim order already passed has to be continued during the pendency of the suit. At this the learned counsel for the defendants has made the statement that in case the numeral 6004 is allowed, the defendants are prepared to give an undertaking in this regard. However the plaintiffs are not agreeable for the suggestion as mentioned earlier.
32. Even otherwise, with regard to colour combination, get-up and layout, there are numbers of decisions in which the law has been laid down that if a party intentionally tries to copy the design on the commercial articles, the rightful owner may obtain an interim order by filing a suit for passing off or infringement of copyright.
(i) In the case of Vicco Laboratories v. Hindustan Rimmer, Delhi, reported at AIR 1979 Delhi 114 the case of the plaintiff CS (OS) No.2335/2014 Page 13 of 29 before Court was that the plaintiffs have been marketing the cream in a collapsable tube of 3 different sizes which has the distinctive get up etc. The collapsable tube has red background with floral design in yellow colour under the trade mark 'Vicco Turmeric Vanishing Cream' in the carton as well as tube in yellow strip in the bottom. The case against the defendant was that they have been marketing the vanishing cream in the carton and tube which are a colourable immitation of the plaintiff's carton and tube under the trade mark 'Cosmo'. This court granted the injunction against the defendant and held at para 13 as under:-
"The plaintiffs claim passing off by the defendants of their product as and for the product of the plaintiff's on the basis of copy of the distinctive get up and colour scheme of the collapsible tubes and the cartons by them. The defendants are not entitled to represent their goods as being the goods of the plaintiffs. The two marks "Vicco"
and "Cosmo" used by the plaintiffs and defendants respectively are no doubt different and the mark "Cosmo" by itself is not likely to deceive but the entire get up and the colour scheme of the tube and the carton adopted by the plaintiffs and the defendants are identical in every detail and are likely to confuse and deceive the customer easily. The get up and the colour scheme of the plaintiff'' adopted in every detail by the defendants for their tube and carton cannot be said to have been adopted by the defendants unintentionally."
(ii) In the case of Nova Ball Bearing Industries vs. Mico Ball Bearing, 19(1981) DLT 20, it has been held at para 7 as under:-
CS (OS) No.2335/2014 Page 14 of 29"A comparison of the two cartons "NOVA" and "JANI"
would reveal that two cartons are exactly similar in size, colour scheme and get up, the only difference that the trade mark of the defendants is written at 5 places and that of the plaintiff at 3 places. The two cartons bear such a close resemblance that they can easily confuse and deceive a customer."
(iii) In Cases and Material on Trade Mark and Allied Laws, Vol.I at Page No.969, Muller & Phipps International Corporation & another v. Anita Cosmetics & another, following observations are made at para 5 page No.971:-
"It is true that the use of the mark COUNTESS by itself is not likely to deceive the customers. But if the two containers CUTICURA and COUNTESS are put side by side, it becomes apparent that in the get up, colour scheme and the similarity the containers are so similar that they easily confuse and deceive the customers. The defendant No.1 has adopted the get up and colour scheme of the container to the plaintiffs' in every detail and they are identical in appearance."
(iv) In the case of Sodastream v. Thorn Cascade Co Ltd., reported at 1982 RPC 459, the plaintiffs were marketing the gas cylinders of grey colour under their trade mark 'Sodastream' and the defendants having also been marketing their black colour cylinders under their own trade mark 'Thorn Cascade', the proposals of the defendants to refill the grey colour gas cylinders of the plaintiff, even with their own trade mark amounts to passing off as the grey colour cylinder is distinctive of the plaintiffs in respect of which the reputation accrued in favour of the plaintiffs. Interlocutory injunction granted.
(v) In Hoffmann-La Roche & Co. A.G. v. D.D.S.A. Pharmaceuticals Limited, 1972 RPC 1 the plaintiffs manufactured and marketed chlordiazepoxide in distinctive black and green capsules bearing the word "Roche" on each capsule, CS (OS) No.2335/2014 Page 15 of 29 the defendants also marked and advertised the drug chlordiazepoxide in black and green 10mg capsules which were identical to those of the plaintiffs except that they bore the letters "DDSA" instead of the plaintiffs' name. The plaintiffs were granted interlocutory injunction to restrain the defendants from passing off capsules of the patented drug as the goods of the plaintiffs. It was held that marketing of the capsules by the defendants is almost identical to those of the plaintiffs was calculated to cause damage to the plaintiffs. It was further held that there was a likelihood of confusion as both the capsules contained the same drug. The public were not concerned with the identity of the manufacturing of the capsules as long as the capsules contained the same substance and had the same effect.
33. The second issue to be considered by this Court is as to whether two set of numerals 6004 having eye device, distinctive colour combination is similar to plaintiffs products having numeral 1001 having eyes device with almost similar combination, get up and lay out.
34. In the case of Anglo- Dutch (supra) this Court pertaining to same numeral 1001 and similar colour combination has been extensively discussed for the zinc paints wherein the numeral adopted by the defendants was 9001. It is a matter of fact that the plaintiff No.1 is the assignee of the same very mark which was earlier belonged to Anglo-Dutch. The relevant paras 9-12 are reproduced herein below :-
"9. Having noticed the principles which have to be borne in mind, the application thereof is not difficult in the present case. It is true that there is a phonetic difference between the numerals '1001' and '9001' but taking into CS (OS) No.2335/2014 Page 16 of 29 account the entire get-up, the combination of colours it will be noted that the essential features of plaintiff's containers have been absolutely copied- The entire scheme of the containers is also the same. There is a common large circle, with the same colour-scheme and with the same background. There is the same description of Superior White on top and Zinc paint on the bottom in the circle. Again, the white circle with grey lettering is identically super-imposed on violet background. The only difference is that instead of white parallelogram shapes on top and base borders there are white triangles and on the white parallelograms instead of numeral 1001' in grey lettering, the numeral on the defendant's container is '9001' but the overall effect is just the same. The commodity is such that it is likely to be purchased by customers from all strata of Society including the petty 'Karkhandars' and contractors.
10. It was argued by Shri J. R. Goel on behalf of the defendant that there is nothing distinctive in the colour combination of the plaintiff's container and the plaintiff could not have a trademark in colour combination. I am afraid I cannot agree with this submission. The colour combination is not descriptive but is distinctive. The definition of the 'mark' as contained in clause (j) of Section 2 of the Trade and Merchandise Marks Act, 1958 is not exhaustive and the definition is such that there is practically no limit to the combination of various types of marks. A dealer can, Therefore, have a trade-mark in combination of colours though not on an individual colour. In the present case, the combination of violet background and a large circle with white background and grey lettering is distinct combination of colours, and there is no legal bar to a person acquiring a trade-mark in such combination of colours for his containers.CS (OS) No.2335/2014 Page 17 of 29
11. As to the extent and scope of the work ''mark" as defined in Section 2(j) of the Trade and Merchandise Marks Act, 1958, the observations of Graham, J. in Smith, Kline & French Laboratories Limited's Trade Mark : (1974) R.P.C. 91 may be seen :
"The upshot of all these cases is to my mind to establish that a scheme of coloring applied to goods may be a mark within the definition in Section 68. That definition, as was pointed out in contrast to other definitions in the Act, starts with the word "includes" showing that the definition is purposely not limited to the precise words which follow. The combination of colour giving a speckled effect in the present case is, in my judgment, no less a mark than the red lines in Reddaway's hose case or the "heading" in the cotton cases and in the Winter- bottom tracing cloth case. It is of course exactly parallel to the get-up in the Hoffmann-La Roche chlordiazepoxide case."
Again, in the later part of the judgment on page 96, learned Judge goes on to observe:
"The truth of the matter is I think as follows. In some cases the colour is an essential part of the article as an article whilst in others it is something which is not essential and has been added for some other reason. If it has been added so as to denote the origin of the goods, and the evidence shows that in practice it does so, it can properly be said that it is being used as a mark in the trade mark sense. The answer is no doubt one of degree and will depend on the evidence. It would be highly unlikely that colour in a lipstick could ever become distinctive of one CS (OS) No.2335/2014 Page 18 of 29 manufacturer because in such a case colour is an essential element in and part of the article itself. It is for that reason that the customer buys it. Colour in a passenger motor car would normally be in a similar but not so conclusive a position, but I see no reason why a trader, as some do, should not paint his delivery vans or racing cars in specific distinct colours to indicate the origin of the car or of the goods it normally carries as emanating from him. With drugs, on the other hand, the position is the opposite of the lipstick. Colour is of no importance to the article as a drug and it may, if sufficiently distinctive, be an exceedingly effective indication of origin. It was so in the Hoffmann-La Roche Chlordiazepoxide case (1972) R.P.C. 1. As has been said the less descriptive a trade mark is, the easier it is for it to be distinctive." Later on, at page 99 of the same judgment it was observed by Grahami J. as under:
"I cannot see why other manufacturers should want to adopt the applicants' colour arrangements here except for the improper motive of trying to benefit from the latter's established goodwill." In this judgment, Garham, J. relied on the observations of Harman Lord Justice in the Court of Appeal in the case of F. Hoffmann-La Roche & Company A. G. and Another v. D.D.S.A. Pharmaceuticals Limited : (1972) R.P.C. 1. It is worthwhile to quote the words of Harman Lord Justice at page 20:CS (OS) No.2335/2014 Page 19 of 29
"Goods of a particular get-up just as much proclaim their origin as if they had a particular name attached to them, and it is well known that when goods are sold with a particular get-up for long enough to be recognised by the public as goods of a particular manufacturer it does not matter whether you know who the manufacturer is."
12. As stated earlier, instead of receiving any satisfactory answer, I received no answer from the defendants to the plain question as to why they wished to mark their goods in violet grey and white. The only answer which I could suggest to myself was that they have adopted the colour-scheme in order to attract to themselves some part of plaintiff's good-will and trade on their reputation and in fact to represent to public that their goods are the goods of the plaintiff. This is exactly a classic case of 'passing off'."
13. In Tata Oil Mills Co. Ltd. vs. Reward Soap Works, 1984 PTC (4) 19, judgement delivered by Late Hon'ble Mr. Justice H.L.Anand, the plaintiff had been producing and marketing half bar washing soap under the trademark 501 since over 40 years. The plaintiff had duly registered numerals 501 and the 507 wrappers as trademarks and the aforesaid wrapper was also registered under the Copyright Act and the washing soap was recognized not only by the numeral mark 501 but also by the distinctive wrappers in relation thereto. The defendant started the manufacture and marketing of half bar washing soap with the deceptively similar mark 507 and in wrappers- which was colourable imitation of 501 half bar washing soap wrappers of CS (OS) No.2335/2014 Page 20 of 29 the plaintiff. It was held that the colour and arrangement of letters in the two competing wrappers including the numerals gives an overall effect of deceptive similarity which constitutes an infringement of the trademark of the plaintiff in the numerals and wrappers and thus, injunction was granted. Relevant para has been reproduced here as under:-
"5. I have heard learned Counsel for the parties and it appears to me to be reasonable that the defendant is restrained in the terms in which the restraint order is sought by the plaintiff. True, it is doubtful if the numerals 507 per se could be said to be identical with or deceptively similar to the numerals 501, the use of the numerals 507 by the defendant on its wrapper in relation to washing soap of its manufacture in a manner which, having regard to the deceptive similarity between the get-up, the scheme, the colour and the arrangement of lettering in the two competing wrappers gives the wrapper, including the numerals, an over-all effect of deceptive similarity which would prima facie constitute an infringement of the trademarks of the plaintiff in the numerals and the wrapper as also of the Copyright in the wrapper. The comparative description of the wrappers set out in the plaint, which is amply reflected on a visual examination of the competing wrappers, leaves absolutely no manner of doubt that the wrapper is deceptively similar to the wrapper admittedly being extensively used by the plaintiff during the last many years. This deceptive similarity is likely to cause confusion in the course of trade, particularly, having regard to the cause to people who constitute the buying public in relation to washing soap. The admitted extensive popularity of the plaintiff's soap bearing the aforesaid mark and wrapper is a further aggravating factor. Prima facie, therefore, the plaintiff would be entitled to the protection sought by it."CS (OS) No.2335/2014 Page 21 of 29
14. In Samrat Bidi Works & Ors. vs. Dayalal Meghji, 1999 PTC (19) 610 an appeal against an interim order directing the defendant not to manufacture any labels bearing No. 645 or bearing deceptively similar makes as used by the plaintiffs for their Badshari Pharmaishi special bidi No. 345. The plaintiffs had their trademarks about the wrappers, colour, design and the numbers registered since 1958 and a composite wrapper trademark registered since 1975 whereas the defendant did not have registration of its trademark about the wrappers of their bidis or about their colour, design or pictorial effect and started the manufacture and marketing of bidi with the deceptively similar mark 645 and in wrappers- which was colourable imitation of 345 bidi wrappers of the plaintiffs. It was held as under:-
"Taking into account the colour scheme, and design of the two wrappers there is great likelihood of purchasers being misled about the one being the other in his day to day purchasing of the bidis. The bidi customers are generally people of economically weaker status of society and majority of them even may not be literate. It is not expected at the time of purchase that they should purchase after reading the labels. If reading the labels is the criterion then certainly there is vast difference. But the deciding factor is not content of the label but the design and colour scheme and the effect created by them on an unsuspecting mind. In this case the result follows when we compare the colour scheme and the design of the two wrappers."
15. In Vrajlal Manilal vs. Adarsh Bidi 1995 PTC (15) 88 passed by this Court the plaintiffs were registered owners of the trademark '22' for carrying on manufacturing and marketing bidis for more than 5 decades whereas the defendants were manufacturing and selling CS (OS) No.2335/2014 Page 22 of 29 their bidis under the trademark 122. It was held that numericals can be used as trademark and rights acquired by such use. Since, the said goods were consumed by illiterates and semi literates thus there was likelihood of confusion and deception to the average persons. Injunction was granted. It was observed as under:-
"10. It is common knowledge that bidis are consumed by illiterates or semi-literates. The numericals 22 and 122, as used by the parties on their labels are in English writing- style. As the labels and the wrapping paper are used on the bundles which are conical and round in shape the possibility of the unwary consumers being led away in purchasing defendants bidis as that of the plaintiffs cannot be ruled out. This is sufficient to give a cause of action to the plaintiffs."
16. In the case of B.K. Engineering Co. vs. Ubhi Enterprises & Anr., AIR 1985 Delhi 210 (DB), wherein the facts were that the plaintiff filed the suit for passing off against the defendants pertaining to the mark BK which is being used from time to time with the combination of main trademark 'Crown' in respect of cycle bells. The suit was filed on the basis of distinctiveness of mark BK and prior user against the defendants who were using the mark BK-81 for the same goods i.e. cycle bells. The case of the defendants was that the mark B.K. was non-distinctive; 'Crown' was the main trademark of the plaintiff; BK was used by them in non-distinctive manner and it was not used regularly. The adoption of the mark BK-81 is bonafide as the name of the mother of the Managing Partner was Baljit Kaur and she died in 1981, thus the mark adopted is bonafide. It is the abbreviation of the name of the mother Baljit Kaur. The plaintiff is CS (OS) No.2335/2014 Page 23 of 29 hence not entitled for injunction. The learned Single Judge did not grant the injunction mainly on the reason that B.K. was not used as brand name. It was used with the main brand 'Crown'. The confusion and deception does not arise. The appeal filed by the plaintiff before the Division Bench was allowed and injunction was granted. The SLP filed by the defendants was dismissed. After recording the evidence the suit of the plaintiff was decreed. No further appeal was filed by the defendant. The above referred case is the closest case in hand. Even otherwise, law is pretty settled with regard to comparison of letter marks of the parties. Relevant paras 51 and 52 are as under :
"51. The modernisation of the tort of passing off lies in this that what was previously a misrepresentation of goods has now become a misappropriation of another man's property in the business or goodwill, or misappropriation of another's personality. You cannot make use of the plaintiff's expensive labour and effort. You cannot deliberately reap where you have not sown. You cannot filch a rival's trade. Passing off is thus a remedy for injury to goodwill.
52. .......The modern character of the,tort of passing off was clearly brought out in Cadbury (supra). At p. 218 Lord Searman said :
"THE tort is no longer anchored, as in its early nineteenth century formulation, to the name or trade- mark of a product or business. It is wide enough to encompass other descriptive material, such as slogans or visual images which radio, television or newspaper advertising campaigns can lead the market to associate with the plaintiff's product, provided always such descriptive material has become part of the CS (OS) No.2335/2014 Page 24 of 29 goodwill of the product. And the test is whether the product has derived from the advertising a distinctive character which the market recognises."
17. The issue of delay in an action of passing off has been discussed by the Supreme Court in the case of M/s. Bengal Waterproof Ltd. Vs. M/s. Bombay Waterproof Manufacturing Co., AIR 1997 SC 1398 wherein it was held as under :
"20.........It is now well settled that an action for passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach or infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. It is difficult to agree how in such a case when in historical past earlier suit was disposed of as technically not maintainable in absence of proper relief, for all times to come in future defendant of such a suit should be armed with a license to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts."
The ratio of the aforesaid decisions is squarely applicable to the facts of the present case. Thus, injunction cannot be refused on account of delay if the plaintiff has made a strong case on merit.
18. Even otherwise the defendants have no case of delay as the adoption was tainted and dishonest.
CS (OS) No.2335/2014 Page 25 of 2919. In the present case, the products of both parties are being purchased by illiterate and semi-literates persons. Most of the time, the painters and whitewash men when visit the market, they purchase the product mainly by identifying with colour combination, particular device and some combination of numeral. Many times they get confused and purchase different products of other parties. The most important factor in the present case is that except the plaintiffs, the other companies who are selling their products under the numeral also in the trademarks are Asian Paints, Narolac etc. It appears to the Court prima facie that the defendants have adopted the similar numeral eye device and colour combination in order to make easy amount which would create confusion and deception if the defendants are allowed to do so. The Court cannot give the license to the party to filch the goodwill and reputation of the party which has been using the numeral for the last more than 69 years.
20. It is settled law that competition must remain free, it is true. It is the life blood of free enterprise system. Yet it is essential that "trading must not only be honest but must not even unintentionally be unfair". If it is shown that a business of a trader has acquired a distinctive character, the law will restrain a competitor from using the same and prohibition order can be passed by Courts for unlawful activities. A line must be drawn somewhere between honest and dishonest trading, between fair and unfair competition. One cannot make use of the plaintiff's expensive labour and effort. One cannot CS (OS) No.2335/2014 Page 26 of 29 deliberately reap where one has not sown and cannot be allowed to filch a rival trades. Passing off is thus a remedy for injury to goodwill.
21. The defendants have failed to assign any valid reason to copy the colour-scheme, get up, lay out and eyes device. The use of numeral along with would show that the adoption was tainted, deliberate and dishonest. In case the principles of B.K (supra) case are applied in the present case, the numeral used by the defendants are held to be similar and they are not entitled to use the same as the defendants have taken distinguishing and essential features of the registered mark/label of the plaintiffs. The product of the defendants conveys the same idea. The real question is as to how a purchaser must be looked upon as an average man of ordinary intelligence. When a party deceives a consumer, he is telling a lie, he makes a false representation to him, he is tempting him to believe a thing to be true which is false, though he may not be doing it knowingly but indirectly or by implication, he is doing it in the normal course of business, he should indeed tell the truth. Stolen property can never become rightful property in any manner either by law or by cleverness and smartness of a party. The Courts should not allow him to become Hero, it is better for the society if he remains as 'Villain'.
22. In the present case, the plaintiff No.1 is the subsequent registered owner of the mark/numeral 1001 which was registered for more than five decades. They have prima facie case. The balance of convenience also lies in favour of the plaintiffs and against the CS (OS) No.2335/2014 Page 27 of 29 defendants who have infringed the multiple rights of the plaintiffs. In case the interim orders are not pressed, the plaintiffs would suffer irreparable loss and injury.
23. Thus, for the aforesaid reasons, the plaintiffs are entitled to injunction orders as prayed for. During the pendency of the suit, the defendants, its partners, if any, officers, servants, agents, distributors, stockists and representatives and all those acting for and on behalf of them are restrained from manufacturing, selling and/or offering for sale, advertising, directly or indirectly dealing in paints, varnishes and/or similar goods bearing the name "6004" and/or "6004" label or any mark/name/label which is identical or deceptively similar to the plaintiffs "1001" family of marks and "1001" label and/or the eye device.
24. The defendants are granted one month's time to dispose of the existing stocks bearing the mark 6004. It is clarified that the finding arrived by the Court in the orders are tentative and shall have no bearing when the matter is decided at the final stage after trial.
25. The application is disposed of.
I.A. No.6405/2015The plaintiffs are directed to produce the original complete Magazine entitled as 'MAYAPURI' issue No.1221 dated 15th February, 1998 if the same is in power and possession of the plaintiffs. The photocopy of the same be proved by the plaintiffs as secondary evidence. The application is disposed of accordingly.
CS (OS) No.2335/2014 Page 28 of 29 CS (OS) No. 2335/2014List before the Joint Registrar on 15th October, 2015 for the same purpose.
(MANMOHAN SINGH) JUDGE SEPTEMBER 9, 2015 CS (OS) No.2335/2014 Page 29 of 29