Delhi High Court - Orders
Dabur India Limited vs Marico Ltd on 31 August, 2022
Author: Navin Chawla
Bench: Navin Chawla
$~5
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 253/2020
DABUR INDIA LIMITED
..... Plaintiff
Through: Mr.Rajiv Nayar, Sr. Adv. with
Mr.Manish Kumar Mishra,
Mr.Anirudh Bakhru, Ms.Akansha
Singh, Mr.Srinivas Venka,
Ms.Tejaswini Chandrashekhar &
Mr.Umang Tyagi, Advs.
versus
MARICO LTD.
..... Defendant
Through: Mr.Sandeep Sethi, Sr. Adv. with
Ms.Anuradha Salhotra, Mr.Sumit
Wadhwa & Ms.Sharika Vijh, Advs.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
ORDER
% 31.08.2022 I.A. 6356/2020, 11095/2020, 8286/2021 & 8287/2021 (Exemption)
1. Allowed, subject to all just exceptions.
2. The applications are disposed of.
I.A. 6884/20213. This is an application filed under Order XXXIX Rule 2A of the Code of Civil Procedure, 1908 (in short, the 'CPC') by the plaintiff complaining that the defendant, as recorded in the order of this Court dated 26.11.2020, had represented to this Court that it would be making certain changes to its bottle. The same was reiterated in the order of this Court dated 07.12.2020, and based on such statement, vide order of this Court dated 16.04.2021, this Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:02.09.2022 13:22:15 Court was pleased to dispose of the application filed by the plaintiff under Order XXXIX Rule 1 and 2 read with Section 151 of the CPC, being IA No. 5565 of 2020.
4. The learned senior counsel for the plaintiff has also drawn my attention to the affidavit of Mr Aashish Agarwal (the authorized representative of the defendant) dated 14.01.2021, filed on behalf of the defendant, wherein Mr. Agarwal states that the following changes shall be made in the trade dress:-
"3. The premiumized packaging consists of the following changes vis-à-vis is the Defendant's impugned trade dress, namely, (a) a golden colour cap with the Defendant's SAFFOLA Heart Device embossed on the top; (b) the Defendant's SAFFOLA Heart Device embossed on the bottle; and (c) a heart- shaped cut out to border the Defendant's SAFFOLA Heart Device ON THE LABEL. Images of the premiumized packaging of the Defendant's product, along with the cap, are set out below.
The Defendant's Premiumized SAFFOLA Honey bottle The Defendant's Premiumized SAFFOLA Honey bottle cap Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:02.09.2022 13:22:15 (Emphasis supplied)
5. The learned senior counsel for the plaintiff submits that in spite of the above statement made before this Court, on the basis of which this Court was pleased to dispose of the interim application of the plaintiff vide order dated 16.04.2021, the defendant in few of its products is not following the said trade dress inasmuch as the defendant's 'SAFFOLA Heart Device' is not embossed on the bottle or on the top of the cap. He submits that even the shape of the bottle, which was represented in the pictorial representation reproduced hereinabove, is not the one being used by the defendant.
6. On the other hand, the learned senior counsel for the defendant submits that as far as the PET bottles are concerned, except the 100gm bottle, the defendant is fully complying with the trade dress that was represented before this Court in the affidavit dated 14.01.2021 as also recorded in the orders of this Court referred hereinabove. He submits that the 100gm bottle of the defendant was introduced later, and due to its size, the defendant's 'SAFFOLA Heart Device' cannot be embossed on the bottle and/or on the cap.
7. He submits that it is only with respect to the glass bottles, which the defendant gets manufactured by a third party, that the defendant is unable to get the said 'SAFFOLA Heart Device' embossed on the bottle. Similarly, Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:02.09.2022 13:22:15 such embossing cannot be done on the metal cap which is being used for such glass bottle.
8. I have considered the submissions made by the learned counsels for the parties. The order dated 26.11.2020 of this Court reads as under:-
"1. Mr. Sudhir Chandra, learned Senior Counsel appearing for the defendant states that the defendant proposes to change the bottle wherein the colour of the cap has been changed wherein the heart shape design of the defendant's trade mark has been imposed, which is imposed even on the bottle and now the two bottles cannot be said to be deceptively similar at any stretch.
2. Learned Senior Counsel for the plaintiff prays for some time to take instructions.
3 At request, renotify on 7th December, 2020.
4. Order be uploaded on the website of this Court."
9. The relevant extract of the affidavit filed on behalf of the defendant has already been extracted hereinabove.
10. A reading of the order as also the said affidavit would clearly indicate that the defendant had represented the following three major changes in its trade dress:
"(a) a golden colour cap with the Defendant's SAFFOLA Heart Device embossed on the top;
(b) the Defendant's SAFFOLA Heart Device embossed on the bottle; and
(c) a heart-shaped cut to border the Defendant's SAFFOLA Heart Device ON THE LABEL."
11. It is based on the above representation that this Court vide order dated 16.04.2021 disposed of the interim application of the plaintiff, being IA No. 5565 of 2020. The said order is reproduced hereinabove:
"I.A. 5565/2020 under Order XXXIX Rule 1 and 2 Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:02.09.2022 13:22:15 CPC)
1. By this application the plaintiff had sought an interim injunction against the defendant in respect of its two packaging which this Court noted illustratively in paragraph No.7 of the order dated 14th July, 2020 and granted an ad-interim injunction in favour of the plaintiff and against the defendant in terms of prayer as mentioned in para-21 of I.A.5565/2020.
2. The order dated 14th July, 2020 passed by this Court was challenged by the defendant before the Division Bench of this Court which without expressing any opinion on merits of the parties, kept the impugned order in abeyance since the interim application preferred by the plaintiff was still pending consideration and not disposed of. The appeal was disposed of by the Division Bench on consent of the parties vide order dated 17th July, 2020.
3. During the course of hearing in the application learned Senior Counsel appearing on behalf of the defendant on 26th November, 2020 stated that the defendant proposes to change the bottle wherein the colour of the cap has been changed with heart shape design of the defendant's trademark imposed thereon with similar imposition on the bottle and thus the two bottles cannot be deceptively similar.
4. Since the defendant has changed the packaging of its product which was challenged by the plaintiff in the present suit and an interim injunction sought thereon, the present application seeking interim injunction is disposed of as infructuous.
5. Learned counsel for the plaintiff states that in case the plaintiff has any objection to the future packaging, he would move a fresh application."
12. If the defendant, for any reason, was unable to comply with the above representation of change to its trade dress, the defendant should have ideally informed this Court of the difficulty faced by it. It could not have unilaterally decided not to follow the representation made by it to this Court.
13. As far as whether the defendant is to be permitted to market its product in the glass bottle and/or the 110gm PET bottle without embossing Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:02.09.2022 13:22:15 the defendant's 'SAFFOLA Heart Device' on the saidbottle as also on the cap, is now to be considered by this Court by reviving the application of the plaintiff, being IA No. 5565 of 2020, and in the new application filed by the plaintiff under Order XXXIX Rule 1 and 2 read with Section 151 of CPC, being IA No. 6182 of 2021.
14. The present application is disposed of on the statement made by the learned senior counsel for the defendant that the defendant, for not informing this Court about its inability to follow the representation made for the glass bottle and for the 100gm PET bottle, shall pay a cost of Rs. 5,00,000/- (Rupees Five Lakh only) to the Delhi High Court Legal Services Committee. This deposit, however, shall be without prejudice to the rights and contentions of the defendant in IA Nos. 5565 of 2020 and 6182 of 2021.
15. The application is disposed of in the above terms.
I.A. 8346/202116. By this application, the defendant prays for dismissal of the instant suit. The learned senior counsel for the defendant points out that the application has been necessitated as the plaintiff has clearly abused the process of this Court and the orders passed.
17. He submits that the counsel for the defendant for bona fide reasons had missed the listing of the matter before this Court and could not appear before this Court on 31.05.2021 when IA No. 6884/2021, filed by the plaintiff under Order XXXIX Rule 2A read with Section 151 of the CPC, was listed before this Court. Immediately, on coming to know of the order of this Court dated 31.05.2021, the learned counsel for the defendant had sent an e-mail dated 02.06.2021, informing the learned counsel for the plaintiff that the defendant and the other parties had already been informed of the Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:02.09.2022 13:22:15 order of this Court dated 31.05.2021 and that there was no need to serve additional copies. In spite of the said communication, the learned counsel for the plaintiff not only sent an e-mail to the defendant in the suit, but also to all its directors, thereby creating an atmosphere of fear in the said directors. This was followed by another e-mail dated 07.06.2021, and thereafter, by various publications made in the media on 10.06.2021 about the filing of the application by the plaintiff against the defendant. He submits that this is a clear abuse of the process of the Court, for which the present suit is liable to be dismissed.
18. The learned senior counsel for the plaintiff, on the other hand, submits that the communication to the directors of the defendant was sent inadvertently and expresses regret on the same.
19. In view of the statement made by the learned senior counsel for the plaintiff, the learned senior counsel for the defendant does not press this application. The same is disposed of.
CS(COMM) 253/2020 & I.A. 6355/2020, 6357/2020, 11094/2020, 6182/2021, 6183/2021 & 1697/2022
20. List for hearing of the pending applications on 14th November, 2022.
21. The order passed today shall not be reported or publicized in the media by either party.
NAVIN CHAWLA, J AUGUST 31, 2022/rv Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:02.09.2022 13:22:15