Document Fragment View

Matching Fragments

63. Learned Senior Advocate Shri Kamal Trivedi for the Respondents / Original Plaintiffs have placed reliance on the following judgments, which are very much similar to the one on hand and submitted that the Courts have made such overall comparison as discussed herein above, while granting injunction against the usage of objectionable device mark / label. He has relied upon the following judgments which are as under:

       Sr.                Name           Citation          Pg.             Original mark           Copied mark
       No.                                                No. (1st
(1st Compilation                                       Compilation of
of Judgments of                                        Judgments of
 Respondents)                                          Respondents)


      1.           Parle Products   (1972) 1 SCC         1-6         A wrapper / label     A wrapper / label of
                   (P) Ltd. vs. J.A.       818                          of partly yellow      partly yellow and
                   & Co. Mysore                                         and partly white in   partly white in
                                                                        colour, having a      colour, having a
                                                                        picture with a girl   picture of a girl and
                                                                        in centre, carrying   birds in the center,
                                                                        a pot of water on     with hay-bundle on
                                                                        her head with two     her head supported
                                                                        calves around her     with one hand and
                                                                        and hens in the       carrying a stick and
                                                                        foreground and a      bundle of food in







                                                               farm house with a      the other hand with
                                                               fence      in      a   cows and hens
                                                               background with        around.
                                                               words,      "Parle's
                                                               Gluco      Biscuits"
                                                               printed thereon.

2.        Dabur      India      2012 SCC             7 - 21
          Limited      Vs.   Online Del. 3332
          Shree Baidyanath
          Ayurved Bhawan
          Pvt. Ltd.



3.        Marico Ltd. Vs.       2014 SCC            22 - 40
          Pratik Goyal       Online Del. 1786




5.        Mother     Dairy     2015 SCC             66 - 75
          Fruit         &      Online Del.
          Vegetable   Pvt.       10637
          Ltd    Vs.   Sri
          Vinayaka Milk
          Products
7. Parle Agro Pvt     Judgment dated         91 - 95
          Ltd. vs. Gulam     28.03.2018
          Moinuddin Khan     rendered    by
          and Anr.           Hon'ble Bombay
                             High Court



8.        Parle Products   MANU/MH/149            96 - 101
          Pvt. Ltd. V/s.       2/ 2020
          Future Consumer
          Ltd.









            9.         Gujarat      Tea   Order      dated       102 - 123
                       depot. Co. Vs.     04.08.2015
                       Bagharam           passed by this
                       Krupaji Ganchi     Hon'ble Court




            10.        Taw                (1951) RPC 271     124 - 129
                       Manufacturing
                       Coy Ld. Vs.
                       Notex
                       Engineering Coy.
                       Ld




(G)   Case Law Discussion:

(v) Parle Products Ltd. vs. Bakeman Industries Ltd.

reported in MANU / TN / 1824 / 1998 ;

This is also not a good law in view of the Apex Court's judgment in case of Parle Products (P) Ltd. vs. J. P. & Co., Mysore.

(vi) Britannia Industries Ltd Vs ITC Limited reported in MANU / DE / 0626 / 2017;

This judgment is for passing off action of Britannia and not for infringement of trade mark or copyright, as it is there in the present case. Secondly, in this case, Britannia was there in the business of biscuits since many years, whereas in the present case, the Appellant- Defendant is yet to enter in tea business. Hence, the said judgment cannot be applied to the present case.

138. The reliance placed by learned Advocate Mr. Shah in case of Parle Products Limited v. Bakemans Industries Limited (supra) is also not applicable to the facts of the present case. The said judgment is not a good law in view of the judgment of the Hon'ble Apex Court in case of Parle Products (P) Ltd. vs. J.A. & Co. Mysore (supra).

139. Learned Advocate Mr. Shah has also placed reliance upon the discussion of the Hon'ble Apex Court in case of Cadila Healthcare v. Cadila Pharmaceutical (supra) wherein the Hon'ble Apex Court has rejected the adoption of the English principles regarding the weightage to be given to the dissimilarities, however, Hon'ble Apex Court has not stated that the principles concerning the colour combination as laid down in various English judgment would not be relevant for the Indian Jurisdiction. In paragraph 33 of the said judgment, the Hon'ble Apex Court has observed that the English cases would be relevant in understanding essential feature and therefore considering the long line of English as well as American judgments as narrated in the commentary of Kerly's Law of Trade Marks and Trade Names and narrated by various Hon'ble High Court (i.e. Britania Industries v. ITC Ltd.), it is clear that it would be very difficult for anyone to claim passing off solely on the basis of colour combination as essential feature. Learned Advocate Mr. Shah has submitted that In such circumstances, learned Trial Court out to have appreciated that the Respondents / Original Plaintiffs have no prima facie case of passing off and therefore injunction ought not to have been granted.

           Sr.            Name              Citation            Pg.      Original mark           Copied mark
           No.                                                  No.
           (1st                                                 (1st
      Compilation                                          Compilation
      of Judgments                                         of Judgments
            of                                                   of
      Respondents)                                         Respondents)
            1.     Parle Products (P)     (1972) 1 SCC         1-6      A wrapper / label     A wrapper / label of
                   Ltd. vs. J.A. & Co.        818                       of partly yellow      partly yellow and
                   Mysore                                               and partly white      partly white in
                                                                        in colour, having     colour, having a
                                                                        a picture with a      picture of a girl and
                                                                        girl in centre,       birds in the center,
                                                                        carrying a pot of     with hay-bundle on
                                                                        water on her head     her head supported
                                                                        with two calves       with one hand and
                                                                        around her and        carrying a stick and
                                                                        hens     in    the    bundle of food in
                                                                        foreground and a      the other hand with
                                                                        farm house with a     cows and hens
                                                                        fence      in    a    around.
                                                                        background with
                                                                        words, "Parle's
                                                                        Gluco Biscuits"
                                                                        printed thereon.

           2.        Dabur       India   2012 SCC Online       7 - 21
                     Limited Vs. Shree      Del. 3332
                     Baidyanath
                     Ayurved Bhawan
                     Pvt. Ltd.









3.         Marico Ltd.    Vs.    2014 SCC Online       22 - 40
           Pratik Goyal             Del. 1786




5.         Mother Dairy Fruit    2015 SCC Online       66 - 75
           & Vegetable Pvt.         Del. 10637
           Ltd     Vs.    Sri
           Vinayaka     Milk
           Products

7. Parle Agro Pvt Ltd.   Judgment dated        91 - 95
           vs.         Gulam     28.03.2018
           Moinuddin Khan        rendered    by
           and Anr.              Hon'ble Bombay
                                 High Court




8.         Parle Products Pvt.   MANU/MH/149          96 - 101
           Ltd. V/s. Future        2/ 2020
           Consumer Ltd.




9.         Gujarat Tea depot.    Order      dated     102 - 123
           Co. Vs. Bagharam      04.08.2015
           Krupaji Ganchi        passed by this
                                 Hon'ble Court




10.        Taw Manufacturing     (1951) RPC 271       124 - 129
           Coy Ld. Vs. Notex
           Engineering Coy.
           Ld