La Opala R.G. Ltd vs Cello Plast & Ors

For the Plaintiffs/Petitioners : Mr. Pratap Chatterjee, Sr. Adv., Mr. Sayantan Basu, Adv., Mr. Prithwiraj Sinha, Adv., Mr. Tanmoy Roy, Adv., Mr. Manoj Gupta, Adv., Mr. Abhiroop Dhar, Adv.

For the Defendant/Respondent : Mr. Jayanta Kr. Mitra, Sr. Adv.,

Mr. Debnath Ghosh, Adv., Mr. Sayan Roychowdhury, Adv., Mr. Gautam Kr. Roy, Adv., Mr. Sourav Jana, Adv., Mr. Gopal Das, Adv.

Hearing concluded on : 06.09.2018

Judgment on : 11.10.2018

Soumen Sen, J.:- "Opal ware" has led to "Opal war" between two rival

manufacturers; of which the petitioner is senior being in the trade since 1980s as

compared to the respondent No. 1 who have entered the business of opal ware

only recently in July, 2017. It is a fight between an established reputed opal

ware manufacturer and a reputed manufacturer of Insulated Thermo-ware and

writing instruments.

In this proceeding, an attempt by 'Thermo-ware' to enter 'Opal-ware' in

relation to four marks with its trade dress and get up; and this is resisted by the

petitioner. The petitioner complains of passing off.

In an action essentially for passing off, the plaintiff/petitioner have filed the

application for injunction restraining the respondents from passing off their

goods by using the trade dress and/or mark of the petitioner as shown in

annexures "E" to "H" as that of their own trade dress and/or mark imprinted on

their product as shown in annexures "M" to "P".

I have advisedly used the word "essentially" as the petitioner in its

affidavit-in-reply has disclosed two registration certificates by which two designs,

out of the four designs of which the petitioner complains of passing off, have been

registered during the pendency of this proceeding.

The petitioner claims to be a well-known and well-reputed manufacturer of

Opel Glass Tableware since 1987.

The petitioner is in the business of manufacturing, marketing and selling

opal glass tableware, crockery, cup, saucer, dinner set and also crystal ware

based wares. The petitioner's initial journey started with the manufacture of

hurricane lamps and glass chimneys from recycled glass in 1980s. One Sri

Sushil Jhunjhunwala whose family used to run the said business was smitten by

opal glass products from France. He visited Korea in 1987 and used contacts to

source the technology from Hosan glass and thereafter establish his first plaint in

Madhupur. The petitioner from time to time expanded its manufacturing units to

various places and has been exporting its crystal-ware and its crockery and tableware to various countries like USA, UK, France, Turkey, Middle East and

South East Asian countries. The petitioner claims that from its initial days of

manufacturing and marketing various types of tableware product, the petitioner

has been experimenting and revolutionizing the market with its innovative

shapes and configuration, surface patters, artistic getup of its product. The

petitioner maintains full-fledged designing and art department which is involved

in conceptualizing various artistic getup, innovative shapes and designs and

surface patterns of its product through various modern technologies to give

products a lasting and aesthetic look. The products having these aesthetic

shapes and configurations and surface patterns are imprinted with artistic work

conceptualized by the petitioner and the products with their distinctive shape,

configuration, surface pattern and artistic work on it form a distinctive identity of

their own, originating from the petitioner and as a whole forms a trade dress of

the product. The said product having the trade dress is displayed on the

packaging on the product. The distinctive trade dress originating from the

petitioner has attained the character of a mark as a whole and the said mark is

distinctive of the shape, configuration, surface pattern and the artistic work on

the product of the petitioner. The products of the petitioner having these various

trade dresses are also christened with brand names and/or marks such as DIVA

CLASSIQUE - JUNIPER BLUE, LAVENDER DEW, FLUTED GREEN, TWILIGHT

BOUQUET, MYSTRIO BLACK; DAZZLE PURPLE, CRIMSON BLOOM; DIVA IVORY

- GOLDEN FALL, AUTUMN SHADOW, AMBER WILLOW; SOVRANA - REGENT

RED, EMPRESS GREEN, ANASSA BLUE; QUADRA - SUNSHINE BLOSSOM, SNOWDROP, AUTUMNAL, etc. The petitioner has referred to the certain trade

dresses and marks sold under the "DIVA", "CLASSIQUE" and "IVORY" mark and

claims that the said shape, surface pattern, artistic getup on the products of four

products constituted trade dresses and has acquired status of a mark within the

meaning of Section 2(m) of the Trade Marks Act, 1999.

The products of the petitioner bearing such trade dresses and/or marks

and the packaging have come to be known in the trade as designer collection and

have transcended the previous reputation that the petitioner had as an opal

glassware manufacturing company only. The petitioner in the course of

innovating trade dresses and artistic getup of its products conceived four

separate trade dresses in its range of collection of products, namely, "DAZZLE

PURPLE", "MYSTRIO BLACK", "GOLDEN FALL" and "CRIMSON BLOOM". The

shape, surface pattern, artistic getup on the products of all the four brands

constitutes a trade dress and/or has acquired the status of a mark. The

petitioner has been selling products with a device and/or etchings and/or artistic

work and/or motifs and/or graphical representation on it which identifies the

product of the petitioner. The devices being the "DAZZLE PURPLE" was adopted

in 2009, "MYSTRIO BLACK" was adopted in 2010, "GOLDEN FALL" was adopted

in 2012 and "CRIMSON BLOOM" was adopted in 2014. The products having

such trade dresses are identified as a mark by the people common to the trade

and public at large as originating from the petitioner.

The petitioner claims that the shape, motif, art work, pattern, design and

packaging of the product of the petitioner have been created and/or conceptualized and/or invented by the petitioner. The petitioner has been using

the same since the date of conception of the said designs and all the brands as

mentioned above, in commercial manner continuously and extensively since the

said date of conception and there was no prior use of the same by any third party

prior to that of the conception and/or the use of the said motif, art work, design,

packaging and/or pattern and/or shape of the product of the petitioner. The

said motif or work, shape, pattern and design and/or the trade dress is a mark of

the product of the petitioner and identifies the petitioner as the source of the said

goods supplied or services offered. The petitioner is the owner of the said mark

which is associated by the public and the same has unique goodwill and

reputation.

In order to protect and acquire statutory right on the said trade dress, the

petitioner has applied for registration of the said dress by filing four separate

applications for registration of the aforesaid four designs before the trademark

registry. It is stated that the said trade dress and/or the mark are a distinctive

feature of the product of the petitioner. During the pendency of this proceeding,

two marks have been registered on 3rd May, 2018 and 24th June, 2018

respectively after journal publication in connection with two applications Nos.

3670916 and 3670858 both dated November, 2017. The registrations are in

respect of two device marks "CRIMSON BLOOM" and "GOLDEN FALL". The

petitioner claims that the said aesthetic design, motif, art work is a trade dress

and is a unique creation of the petitioner and of no one else and the same was

recognized by the people common to the trade and public at large as that originating from the petitioner only. The petitioner has disclosed that the

products of the plaintiff/petitioner bearing the said mark, design, etching, artistic

getup, motifs, graphical representation, device etc, are sold loose in single pieces

and also in sets.

Due to immense popularity of the said mark, etching, artistic getup, motifs,

graphical representation, device, drawing etc., of the plaintiff/petitioner, the

profits accrued on the said etching, artistic getup, motifs, graphical

representation, device, drawing etc., of the plaintiff/petitioner increased by leaps

and bounds.

Apart from long continuous and exclusive use of the said marks, etching,

artistic getup, motifs, graphical representation, device, drawing, of the

plaintiff/petitioner, the said devices have also been advertised through all the

publicity media, in various exhibitions and other journals and magazines

throughout the trade channel and the general public. The plaintiff/petitioner has

spent considerable amount of money for advertisement of its products, design,

etching, artistic getup, motifs, graphical representation, device, drawing etc.

The petitioner has stated that due to immense popularity of the said trade

dress and/or mark, sale of the goods bearing the said trade dress and/or mark

has increased by lips and bounds. The petitioner has disclosed turnover of the

said four goods bearing the trade dress of "MYSTRIO BLACK", "CRIMSON

BLOOM", "GOLDEN FALL" and "DAZZLE PURPLE" along with invoices - which

show substantial sale. The petitioner further claims that the said trade dress

and the mark of the petitioner is a well-known trade dress and/or mark and has gained recognition from amongst the members of the public, inasmuch as the

petitioner is having all India sales extensive advertisements and wide publicity.

The aforesaid trade marks have attained distinctiveness and have acquired

secondary meanings in respect of the said products and are, accordingly, entitled

to protection as a well-known trade mark within the meaning of Trade Marks Act,

1999 (hereinafter referred to as "the Act"). The petitioner has also disclosed the

annual advertisements and promotional expenses of the petitioner in respect of

the products in question. Sometimes in July, 2017, the petitioner came across

infringing materials while visiting one of its distributors and/or sellers of their

goods in the locality of the respondent Nos. 2 and 3. The petitioner alleged that

the products bearing the motif, art work, design, pattern and comprising a trade

dress and/or mark on their products of the defendant are similar and/or

deceptively similar to that of the trade dress of the petitioner. The said trade

dresses and/or marks of the respondent No.1 are represented in the same

stylized manner along with the same artistic work and/or motif and/or

colourable combination and/or the trade dress and/or the mark as a whole. The

said respondent No. 1 is trying to misrepresent the people common to the trade

and public at large that the said goods of the respondent No.1 are that of the

petitioner and, is thereby passing off the product of the respondent No.1 bearing

the identical and/or deceptively similar to the trade dress and/or marks

"MYSTRIO BLACK", "CRIMSON BLOOM", "GOLDEN FALL", "DAZZLE PURPLE".

Such act on the part of the respondent is dishonest and mala fide. The

respondent No.1 has branded the trade dress and/or the mark with an identical and deceptively similar brand name as that of the petitioner being "ORNATE

BLACK", "MANDARIN ORANGE", "GOLDEN PINE" and "PURPLE HUES". The

said products being identified by the said trade dress as the mark by people

common to the trade and public at large would create every chance of confusion

and/or deception amongst the public between the products of the respondent

bearing the said trade dress and/or marks and that of the petitioner. The

petitioners alleged that the said products were launched by the respondent in

July, 2017 and are also sold in pieces and loosely. The petitioners have disclosed

bills and invoices and sale of single piece from some shops to show that sale of

the goods of the defendants in single piece or loose and not always in sets. The

user of the trade dress and/or mark represented on the products of the

respondent is easily visible so as to catch the eye of any person intending to buy

the said products. The shape, configuration, surface pattern of the materials on

which the said motif and artistic work are imprinted of the respondent are

identical and deceptively similar to that of the petitioner. The goods of the

respondent, however, have no connection of the petitioner whose trade dress or

the mark and their brand is being used dishonestly and passed off by the

respondents as if the said mark is that of the petitioner. The petitioner contended

that adoption of the said trade dress is mala fide to trade brand as the

petitioner's said trade dress and/or mark has attained reputation and goodwill in

the mark and amongst the consumer at large since last several years.

On the aforesaid basis, the petitioner has filed the suit in which this

application has been filed praying for an injunction restraining the respondent No. 1, its retailers or franchises from passing off or attempting to pass off their

goods by using the petitioner's trade dress in respect of the four marks

"MYSTRIO BLACK", "CRIMSON BLOOM", "GOLDEN FALL" and "DAZZLE

PURPLE".

The respondent has filed an affidavit in opposition.

In the affidavit-in-opposition the respondent has stated that in or about

2017, the respondent No.1 decided to expand its business and venture into opal

ware range of products and accordingly set up a huge plant at Daman specifically

for manufacturing opal ware products using German technology. The opal ware

products of the respondent No.1 is the finest in the industry and go through

rigorous quality checks like chemical analysis, ball drop test, chip test and

thermal resistant tests which ensure quality opal ware. The respondent No.1 has

closed to 1700 moulds manufacturing capacity including Complex Split Moulds

in their said plant. The opal products of the respondent no.1 are stronger,

recyclable and easier to clean, cheap resistant, scratch resistant and light weight.

The products manufactured by the respondent No.1 under the house mark Cello

have become instantly popular and the turnover of the respondent no.1 in

respect of its opal ware products for the last year has been Rs.47,28,36,363.21/-

(Rupees forty seven crore twenty eight lac thirty six thousand three hundred sixty

three and twenty one paisa only). Since the beginning the respondent No.1 has

been openly, extensively and regularly selling its opal ware products with the

house mark Cello. The respondent No. 1 has spent considerable amount of

money for advertisement and sales promotion of its product. Such expenses for the period 2017-18 according to the respondent are Rs.64,85,259.22/. It is

stated that it is an established practice and custom in the crockery industry

including the opal ware industry to use some kind of design, artistic work,

ornamentation, pattern etc. on the surface portion of the actual products to make

the products aesthetically appealing and visually attractive. Considering the size

of the visual display area that is available on the crockery including the opal ware

products, the designs pertaining to flowers, trees, leaves twigs, branches, roots

etc. fit perfectly and look visually attractive. According to the established

practice of the crockery and opal ware trade and industry, the respondent no.1

also adopted different designs of flowers, trees, leaves, twigs, branches, roots etc

for printing the same on its opal ware products. It is stated that the use of the

petitioner's artistic work does not amount to use as a trade mark. Considering

the very nature of the alleged artistic works; the nature of the products on which

the alleged artistic works are printed i.e. opal ware crockery and the manner in

which the said opal ware products are generally sold in the market, it would be

evident that the alleged artistic works are inherently non-distinctive and are

incapable of acquiring distinctiveness.

It is stated by the respondent No.1 that the Petitioners are not using the

alleged artistic works as a trade mark but as a Design. The alleged artistic works

neither distinguish nor are capable of distinguishing the products of the

Petitioners inter se let alone those of the others. The alleged artistic works of the

Petitioners when used in respect of their products neither indicate nor are

capable of indicating a connection in the course of the trade. The marks "Golden Fall", "Mystrio Black", "Crimson Bloom" and "Dazzle Purple" can be considered to

be trademarks of the plaintiff and not the alleged designs.

The respondent No. 1 contends that even if it is assumed that the artistic

works of the petitioner have been used by the respondent no. 1, it does not

amount to passing off, since those artistic depiction/designs have never been

used by the petitioner as its trade mark in course of trade. The said

designs/artistic works of the petitioner have not acquired goodwill, reputation

and distinctiveness. The respondent no.1 is not trying to trade upon the goodwill

and reputation of the petitioner trade mark and making unlawful gain. It is

contended that in view of use of the said marks by the respondent no.1, there is

no likelihood of causing confusion and deception amongst the members of the

trade or purchasing public and consequently, the petitioner has not suffered any

loss and damage for any acts of the respondent no.1. The respondent no.1

further contended that the alleged artistic works of the petitioner when used in

respect of their products neither indicate nor are capable of indicting a

connection in the course of trade. The said artistic depiction on the products of

the petitioner is defined as designs and cannot be said to be the trade dress of

the petitioner. On comparison of the trade dress of the respondent no.1 it is clear

that there is no similarity between the two far from the deceptive similarity. The

petitioner had never used the four designs imprinted on their products as trade

dress. The four artistic works imprinted on the products of the petitioner are

merely designs and are common to trade and pre-disclosed.

The products of the petitioner are sold under the trade mark "La Opala"

prominently written on its packaging whereas the products are sold under the

trade mark "Cello". The trade dress of the petitioner in which the petitioner's

products having four designs are sold contains its trade mark "La Opala"

prominently written on it. The artistic representations of the petitioner are

incapable of being protected under the Trade Marks Act, 1999. The same are

designs and do not indicate between the petitioner and its products. The

customers indentify and demand the petitioner's products containing the trade

mark "La Opala" whereas the products of the respondent no.1 are distinguished

and identified by the house mark "Cello". Accordingly the respondent no.1 is

neither using the impugned designs as trademarks or trade dress nor has any

intention of using the same as its trade mark. The leading, essential and

prominent features of the two packaging are also different on which the trade

mark of the respective parties are prominently depicted. Moreover, the rival

products would be identified and demanded by their respective house marks i.e.

"La-Opala" and "Cello" or product identification marks and not on the basis of

the artistic works. The use of the designs, artistic works, ornamentations,

patterns etc. pertaining to flowers, trees, leaves, twigs, branches, roots etc, more

particularly the alleged artistic works on the surface area of the opal ware

products is extremely common to the trade and no manufacturer can claim a

monopoly in respect of the same. The respondents have referred to copies of

catalogues and photographs of various products to show that the use of designs,

artistic works, ornamentations, patterns etc. pertaining to flowers, trees, leaves, twigs, branches, roots etc. on the surface area of the opal ware products is

extremely common to the trade.

It was on the aforesaid basis the respondent has prayed for dismissal of

the petition.

Mr. Pratap Chatterjee, the learned Senior Counsel appearing on behalf of

the petitioner has submitted that the device and/or etchings and motifs are the

mark of the products of the petitioner. Mr. Chatterjee has referred to Section

2(m) of the Trade Marks Act, 1999 and two decisions, namely, Mehboob Khan

vs. Firoz Qureshi reported at (2016 (67) PTC 654) and Three-N-Products

Private Limited vs. Emami Limited reported at (2009 (41) PTC 689) and

submits that since this mark clearly identify the products of the petitioner, this

valuable right is required to be protected.

Mr. Chatterjee submits that the respondent no.1 realised that at least in

respect of four marks, the respondent no.1 might be accused of dishonest

adoption of the mark, design, etching, artistic get up, motifs, graphical

representation, device, drawing etc. despite no cease and desist notice in

apprehension of a legal proceeding for passing off, the defendant lodged a caveat

sometimes in the end of July or early August, 2017 which clearly shows that the

respondent no.1 was aware that such adoption could be held to be dishonest.

Mr. Chatterjee submits that prior to registration of the two device marks

"Crimson Bloom" and "Golden Fall", they were published in the trade mark

journal on 18th December, 2017 and 5th February, 2018 respectively. The

respondent in spite of notice of the said publications did not file any opposition, which clearly shows acquiescence. Mr. Chatterjee in this context has relied upon

the decision in Amar Nath Chakroborty vs. Dutta Bucket Industries and Ors.

reported at (2005 (30) PTC 496) (paragraph 21).

Mr. Chatterjee submits that it is a settled law that till the mark is cancelled

the petitioner remains the proprietor of the etching, artistic getup, motifs,

graphical representation, device, drawing etc. and an injunction must follow. In

this context Mr. Chatterjee has relied upon three decisions namely:

i) R.R. Proteins and Agro Limited vs. Hari Shankar Singhania

and Anr. reported at (2010 (44) PTC 448);

ii) Three-N-Products Private Limited vs. Emami Limited reported at

(2009 (41) PTC 689);

iii) Three-N-Products Private Limited vs. Emami Limited reported at

(2010 (2) CHN (CAL) 217).

Mr. Chatterjee submits that the onus lies on the defendant to justify

adoption of said four marks. It is an admitted position that the said four designs

and/or trade dresses were available in the market much prior to the use of

infringing marks by the respondents and unless the defendant is able to explain

or furnish sufficient reasons for adopting such infringing marks the plaintiff is

entitled to an order of injunction. Mr. Chatterjee in this context has relied upon

the Single Bench decision in ITC Limited vs. Green India Rice Millers and

Exporters Private Limited & Ors. reported at 2017 SCC Online Cal 5859.

It is submitted that the defendants/respondents launched their products

at a much later date and only recently bearing the said device, etching, artistic getup, motifs, graphical representation, drawing etc., as shown in annexure 'M',

'N', 'O' and 'P' of the petition in July 2017.

The products of the respondents bear identical and/or deceptively similar

marks, design, etching, artistic getup, motifs, graphical representation, device,

drawing etc., as that of the product of the plaintiff/ petitioner.

The products are chosen by the pictorial representation and the said

pictorial representations as shown in Annexure 'E', 'F', 'G' and 'H' have become

the marks of the petitioner as the petitioner had adopted the same and has been

continuing to use the four marks, namely "DAZZLE PURPLE", "MYSTRIO

BLACK", "GOLDEN FALL", "CRIMSON BLOOM", since at least 2009. No one else

has been using the same in the market. The other person to use it in 2017 is the

respondent no. 1. Anyone seeing the goods bearing the devices identifies the

product with the petitioner.

The defendants/respondent no. 1 have several design, etching, artistic

getup, motifs, graphical representation, device, drawing etc., which are different

from that of the plaintiff/petitioner but have dishonestly copied four artistic

works, design, etching, artistic getup, motifs, graphical representation, device,

drawing etc., identical to that of the plaintiff/petitioner which are one of the most

popular in the market as is evident from the sales figure of the petitioner's

products to encash on the goodwill and ride piggyback on the same and pass off

their goods as that of the plaintiff/petitioner. The defendants/respondent no.1 by

their conduct attempted to ride piggyback on the goodwill and reputation of the

marks and devices of the petition.

The petitioner contends that no sufficient explanation has been offered in

the affidavit-in-opposition as to the adoption of the said four marks, designs,

etchings, artistic getups, motifs, graphical representations, devices, drawing etc.,

of the plaintiff/petitioner.

It is submitted that the products of the respondent no.1 are also sold

loosely. Bills and/or invoices and sale in single pieces from shops as annexed in

the petition would show sale of the goods of the respondent no.1 in single piece

or loose and not in sets.

Per contra, Mr. Jayanta Kumar Mitra, the learned Senior Counsel

appearing on behalf of the respondent no.1 submits that the petitioner's case is

based upon a single cause of action, namely, passing off and not infringement.

The question of passing off would have arisen, only if, in the first place, the use of

the petitioner's artistic works shown at Exhibits 'E', 'F', 'G' and 'H' to the petition

would have amounted to use as a 'trade mark'.

The Petitioners are using the alleged artistic works on their products in

order to make their products aesthetically appealing and visually

attractive/decorative. It is the case of the petitioner that people buy these

products because of the visual and aesthetic appeal created by the alleged

artistic work. Thus, the only role played by the alleged artistic works is to give an

aesthetic/decorative and visual appeal to the products and nothing else. It does

not automatically qualify such alleged artistic works as 'trade mark'. The alleged

artistic works are nothing but decorative features of the petitioner's products and

would necessarily fall within the ambit of a Design. The alleged artistic works used by the Petitioners do not denote the source of the products. The petitioner's

alleged artistic works may come within the definition of "mark" under the Trade

Marks Act, 1999 but they do not come within the purview of a "trade mark". A

mark when used in the course of trade identifies the source/origin of the

product, it becomes a trade mark. It is a settled principle of law that if the only

impact of the product feature is decorative or aesthetic with no source identifying

role, it will not be given exclusive rights under the trade dress law.

A passing off action is based on the premise that the accused is passing

off its product as that of the plaintiff and it is an action in deceit. The plaintiff in

such an action has to establish that there is a likelihood of confusion in the event

the products of the plaintiff are sold in the same trade dress as represented in

Annexures 'M', 'N', 'O' and 'P'. The Court is required to see the total and overall

impression of the image in order to find out as to whether there is a trade dress

passing off. Mr. Mitra submits that the plaintiff is required to establish how the

trade dress of the plaintiff is significantly different from the trade dress of the

defendant and how far such trade dress of defendant has caused confusion

and/or is likely to create confusion so much so that people in general and the

traders in particular would be confused in the event the defendants' alleged trade

dress are available in the market.

It is submitted that the purchasers of such products usually confine their

attention to the aesthetics of the plate i.e. its design and painting on the plate

and thereafter may look at the reverse of the plate to find out the name of the

manufacturer. It is submitted that it is common to the trade that these kinds of plate have floral and other similar motifs on the side of such plates and the

middle portion of the plate is kept blank without any decoration or paintings

where the food is usually served. It is easier to accommodate plants, flowers

and/or floral designs on the sides of the plates keeping the middle portion of the

plate without any decoration or white. These types of plates are common to the

trade and there is no uniqueness attached to it. Mr. Mitra has referred to

Sections 2(m), 2(z) and 2(z)(b) and 9(a) of the Trade Marks Act, 1999 and submits

that there is nothing unique in the features and such designs are devoid of any

distinctive character and quite common to the trade.

Mr. Mitra has referred to Section 30(1)(a) of the Trade Marks Act, 1999 and

submits that it has been an established practice and custom in the Crockery

industry including the Opal Ware industry to use some kind of designs, artistic

work, ornamentation, pattern etc. on the surface area of the actual products to

make the products aesthetically appealing and visually attractive. The Petitioners

have admitted the said practice. Further, it has always been an established

practice to use the designs, artistic works, ornamentations, patterns etc.

pertaining to flowers, trees, leaves, twigs, branches, roots etc. on the surface area

of inter alia the Opal Ware products. Considering the size of the visual display

area that is available on the crockery including the Opal Ware products, the

designs pertaining to flowers, trees, leaves, twigs, branches, roots etc. fit perfectly

and look visually attractive and that is the reason for most of the manufacturers

for adopting such artistic work to be printed on their Opal Ware products.

Mr. Mitra has also referred to Annexure 'E' of the petition and submits that

the said annexures would show that these combinations are common to the

trade.

It is submitted that the documents disclosed in the affidavit-in-opposition

would show that there are other major manufacturers and traders who are using

the alleged artistic works or similar works in respect of their opal ware/crockery

products. It is submitted that "GOLDEN FALL", "MYSTRIO BLACK", "CRIMSON

BLOOM", "DAZZLE PURPLE" being Annexures 'E', 'F', 'G' and 'H' of the Petition

are similar to the designs of other reputed manufacturers like Earlz Impex,

Milton, Borosil etc. It is therefore evident that the alleged artistic works in

respect of which the petitioner is trying to claim monopoly have been used

openly, continuously and extensively by other manufacturers of crockery and/or

opal ware in respect of their products and as such, the petitioner cannot claim

any exclusive right over the alleged artistic works.

The petitioner in order to claim distinctiveness in the alleged artistic works,

is required to prove that the alleged artistic works have acquired secondary

meaning and despite the established practice in the industry, the moment

anyone comes across the alleged artistic works, they associate the same with the

Petitioners and no one else which the Petitioner has failed to do. In this regard,

reliance is placed on Dart Industries Inc. & Anr. Vs. Techno Plast & Ors.

reported at (2016) 233 DLT 1 (paragrah 44).

It is argued that for any artistic work to come within a purview of a "trade

mark", as defined in section 2(zb) of the Trade Marks Act 1999, it is necessary that the said artistic work is either inherently distinctive or has acquired

secondary significance so as to distinguish one's products from those of the

others. Admittedly, the alleged artistic works are not something which are

completely original or novel or that no similar works have even been used in

respect of opal ware products by anyone else in the industry. Hence, the alleged

artistic works are not inherently distinctive. The petitioner has admitted that it is

the established practice and custom in the crockery industry including opal ware

industry to use some kind of design, artistic work, ornamentation, pattern etc. on

the surface portion of the products to make the products aesthetically appealing

and visually attractive. For the Petitioners to claim passing off in respect of the

alleged artistic works, they ought to have shown that the alleged artistic work

has achieved such reputation and goodwill that they have in fact acquired

secondary meaning and any person who would come across the alleged artistic

works would immediately associate the same with the Petitioners and no one

else.

The claim of a trade mark having acquired a secondary meaning or high

level of distinctiveness can generally be proved by a party on the basis of inter

alia the sales figures and cogent documentary evidence showing the volume of

sales of the specific products. The Petitioner has provided the annual sales

figures to show the alleged reputation and goodwill of the alleged artistic works.

The said annual sales figures provided by the Petitioner are completely bogus,

fabricated and false. It is submitted that such falsity of the claim would be

evident from the annual accounts of the petitioner. It is argued that in the financial year 2013-2014, as per the Petitioner, the number of "GOLDEN FALL"

pieces sold by the Petitioners increased by whooping 18,468 pieces and

consequently the increase in sales value was of Rs.12 Lakhs (approx.). However,

in the financial year 2014-2015, when the number of same "GOLDEN FALL"

pieces sold by the Petitioners increased by merely 3995 pieces, the sales value

increased by a whooping sum of Rs. 56.24 Lakhs. Similarly, in the financial year

2015-2016, when the number of same "GOLDEN FALL" pieces sold increased by

whooping 22,763 pieces, the sales value increased by mere Rs. 8.6 Lakhs.

Similarly, as per the Petitioner, in the financial year 2014-2015 the

number of "MYSTRIO BLACK" pieces sold by the Petitioners increased by 31,576

pieces, and consequently the sales value increased by Rs.19 Lakhs. However, in

the financial year 2015-2016, when the number of same "MYSTRIO BLACK"

pieces sold decreased by 16,613 pieces, the sales value still continued to increase

by Rs.19 Lakh (approx.)

The sales figures provided by the Petitioner are not even certified by an

Auditor/Chartered Accountant. Hence, the sales figures relied upon by the

petitioners are of no assistance and cannot be relied upon by the petitioners.

Moreover, the invoices filed by the Petitioners at Annexure L to the Petition

to show the alleged sales of the products bearing the alleged artistic works are of

no assistance to the Petitioner. Few of the invoices do not bear any trademark/

brand at all and a large number of such invoices annexed to the petition do not

bear either the mark DIVA or CLASSIQUE or IVORY which are the alleged

marks/range under which the four alleged artistic works are sold by the Petitioners. Assuming while denying that the remaining invoices are in respect of

products sold under the mark/range "DIVA" or "CLASSIQUE" or "IVORY", the

same do not prove that the said invoices are in respect of the four alleged artistic

works only. As per Petitioners themselves, the three (out of the four) alleged

artistic works viz. "MYSTRIO BLACK", "DAZZLE PURPLE", "CRIMSON BLUE"

form a part of their range of products sold under the mark "DIVA CLASSIQUE"

and the fourth alleged artistic work viz. "GOLDEN FALL" forms a part of the

range of products sold under the mark "DIVA IVORY". Further, as per petitioner

themselves, there are various other products which are also sold under the

marks "DIVA CLASSIQUE" or "DIVA IVORY" such as "JUNIPER BLUE",

"LAVENDER DEW", "FLUTED GREEN", "TWILIGHT BOUQUE", "AUTUMN

SHADOW", "AMBER WILLOW", etc. Hence, the invoices filed by the Petitioners

bearing the marks "DIVA CLASSIQUE" or "DIVA IVORY" cannot ever be said to be

pertaining to the four alleged artistic works only. In this context, reliance is

placed on Marico Ltd. Vs. Agro Tech Foods Ltd. reported at (2010) 169 DLT

325 (Paragraph 17).

There is no similarity whatsoever in the Petitioners' packaging and the

Respondent no. 1's packaging. The leading, essential and prominent features of

the rival packaging are also different. Mr. Mitra in referring to the rival packages

has submitted that there is neither any visual nor structural nor phonetic

similarity between the two packaging.

It is submitted that the rival products would be identified and demanded

by their respective house marks or product identification marks and not by the alleged artistic works or subject designs and hence the question of confusion or

deception or likelihood thereof does not arise. Further, the house marks such as

CELLO or LA OPALA along with the trade marks DIVA or IVORY and further with

identification marks such as "MYSTRIO BLACK" or "ORNATE BLACK" would

make it impossible for any customer to get confused between the rival products.

Reliance is placed on Kellogg Company Vs. Pravin Kumar Bhadabhai and

another reported at 1996 (16) PTC 187 (DEL) (DB) (paragraphs 9 to 16).

Further, the approximate cost of one box of the rival product is

approximately Rs.2500/- These are not products such as tea or sugar which are

purchased by each and every household. The class of purchasers who would

purchase these rival products are certainly discerning customers and they would

purchase the products only after deliberating and after ascertaining the brand on

the products.

Mr. Mitra submits that the question is whether the trade marks of the

petitioner in "CRIMSON BLOOM", "GOLDEN FALL", "MYSTERIO BLACK" AND

"DAZZLE PURPLE" have become so distinctive that the petitioner can claim

exclusive right and monopoly in the same. Distinctive means such use of the

trade mark on the goods of a person that the public will immediately and

unmistakably co-relate the mark with the source or a particular manufacturer

thereof. A mark acquires distinctive character by reason of user over a long

person. Such long period of time has to be for many years so that even a

descriptive mark is unmistakeably and only relatable to one and the only source.

In Heinz Italia v. Dabur reported at (2007) 6 SCC 1, a period of 60 years was held to be a long period. Therefore, when the descriptive trade mark is used only

by one person undisturbed for a very long period of time, without anyone else

attempting to use the trade mark during this long period of time, a case can be

made out of a descriptive word or mark having achieved distinctiveness and a

secondary meaning. In this case, a period of 7 years since 2001 was held to be

not such a user as to claim distinctiveness. Ultimately, everything will turn on

the facts of each individual case. Unless facts are wholly clear, a decision on

distinctiveness can only be made after evidence has been led by the parties.

Distinctiveness is an issue to be established in the facts of each particular case

after evidence of the respective parties have been properly evaluated. Reliance in

this context is place on Marico (supra).

It is a settled principle of law that in an action for passing off, in order to

establish goodwill and distinctiveness in a particular get up/trade dress, there

must be something more than mere similarity between the goods themselves.

Mere copying is not to pass off. If a person copies shape or configuration or get

up of other persons' goods or article, by itself it cannot be said that he has made

false representation. No one is prevented from copying and selling an article in

the market provided he does not make a false representation suggesting that the

article which he is selling is in fact that of Petitioner. Monopoly in the property is

only preserved in favour of registered design holder. If the Petitioners have to

succeed on the ground of passing off, he must show something more than mere

similarity between the goods. In this connection, reliance is placed on M/S. Kemp & Company & Another vs M/S. Prima Plastics Ltd. reported at 1999 (1) Bom

CR 239 (paragraphs 16 to 19).

Further, it is argued that it is a settled principle of law that a case of

passing off is founded on the twin planks of distinctiveness and resemblance.

The mere resemblance, if any, of the Respondent no. 1's artistic works without

the Petitioner's mark being distinctive or the lack of resemblance of the

Respondent no. 1's mark despite the Petitioner's mark being distinctive would

not meet a case of passing off. In this regard, reliance is placed on Three-N-

Products Private Limited (supra).

It is submitted and it is customary and established trade practice in the

crockery industry/Opal ware industry to use designs, artistic work,

ornamentation, pattern etc., on the surface portion of the products to make the

products aesthetically appealing and visually attractive. It has been customary

and a bona fide and established practice of the trade to use designs, artistic work

and ornamentation and the image of flowers, twigs, leaves, branches, roots etc.

on the visual display area on the crockery. This is an established practice of the

crockery and opal ware trade. This is admitted by the petitioners in Affidavit-in-

reply. The learned Senior Counsel has placed reliance on Gillette India Ltd. vs.

Harbans Lal Malhotra reported at (2009) 41 PTC 378 (Paragraphs 7, 14 and

15).

Furthermore, this being a suit for passing off, it is the plaintiff's burden to

prove deceit on the part of the respondent. "La Opala" and "Cello" are written

boldly on the respective packages and trade dress, both are boldly proclaiming their respective manufactured products. Therefore, no case of deceit can be

made out to found a cause of action for passing off and not to impute fraud or

fraudulent intent without proof. In this context, reliance is placed on Kellog

(supra) and Three-N-Products (supra-DB).

It is argued that it is a well-settled principle of trade mark law that in order

to maintain an action for passing off, the Petitioners should prove three essential

requirements viz. goodwill and reputation, confusion and deception or likelihood

thereof and actual damage and loss or likelihood thereof. The Petitioners have

failed on all the three requirements. Firstly, the Petitioners have not been able to

show that the alleged artistic works have acquired goodwill or reputation in India

leave alone that the alleged artistic works have acquired secondary meaning

connoting and denoting to public the goods of the Petitioners and none else.

Secondly, there has not been a single instance of confusion or deception till date

nor there is any likelihood thereof. Lastly, the Petitioners have failed to show any

damage or likelihood thereof. The learned Senior Counsel in this context has

placed reliance on Dart Industries Inc. (supra), wherein it is stated:-

"This court finds considerable merit in the approach of the single judge. Undoubtedly, the Full Bench, in its majority ruling in Micro lubes declared that regardless of subsistence of design right - or its exhaustion, a passing off action can lie, in given cases. In so concluding, the court did take into account changes to the Trademark Act, which now extends trademark registration protection even to shapes. However, what is essential in such cases is not merely the existence of the remedy of infringement (of a trademark through a permanent or temporary injunction) or the remedy against passing off, but the proof of essential elements that are necessary. The plaintiff must plead and prove the distinctiveness of the mark. In the present case, the distinctiveness averred in the suit relates to the mark "Tupperware". There is no assertion-except a general and vague assertion with respect to passing off of trade dress-as to how the shape mark which the plaintiffs seek protection of are distinctive for trademark purposes.

In the context of passing off, undoubtedly trade dress and the get up of the packaging, presentation of the product through label, etc. constitute essential components of the goodwill and reputation of a commercial enterprise (Ref. Laxmikant Patel). William Grant & Sons Ltd. v. McDowell & Co Ltd. also supports such a proposition. Yet, for seeking even prima facie protection in the nature of interim injunction there should be material disclosing that the general public associates the shape in question (which is asserted by the plaintiff as their distinctive mark or get up) only with the plaintiff. Whilst in the case of trade dress in the form of label or mark, distinctiveness is easily discernable, in the case of shape based trade dress, the plaintiff has to necessarily show that the get up of the product or article (over which certain exclusivity or distinctiveness is claimed) has an integral association only with it. Unless this requirement is pleaded and established, (and for interim injunction purposes, at least prima facie) every product with a commonplace shape would "ride" on the reputation of an exclusive trademark, based on a distinctive name, label or colour combination of the packaging or label, etc. In this case, the distinctiveness of the shape of the product-asserted to be unique or solely associated with the plaintiff has not been so pleaded and established."

Just like the Petitioners and all other players in the opal ware/crockery

industry, even the respondent no. 1 are using their designs merely to make their

products aesthetically appealing and visually attractive/decorative. All the

products of the Respondent no. 1 are sold under their house mark CELLO. The

use of the subject designs by the Respondents on its products cannot be termed

as use of a trade mark. The Respondent has never reproduced the subject

designs prominently on the front/back side of any packaging till date. A bare

perusal of the packaging of the boxes of the respondent No.1 would reveal that

the Respondent no. 1 is neither using the subject designs as a trade mark nor

the use of the subject design is likely to be taken as use of a trade mark. The

customers identify and demand the Respondents' products with the subject

design by the house mark CELLO and the identification marks thereof. In this

regard reliance is placed on Gillette India Limited (supra).

It is the practice amongst the major players in the crockery/opal ware

industry to use only limited designs on the packaging and selling all their

products in those packaging with only a sticker containing the image of the

actual products that is inside the packaging. The said practice is followed even by

the Petitioners.

Mr. Mitra submits that in the petition as well as the plaint it is alleged that

the trade dress of the petitioner includes packaging of the product. Mr. Mitra has

referred to paragraphs 5 and 8 of the petition and submitted that the petitioner

in those paragraphs has stated that their products having aesthetic shape,

configuration and surface patterns are imprinted with artistic work on it form a distinct identity of their own and a whole forms a trade dress of the product.

Attention has been drawn to paragraph 8 in which it is specifically states: "The

said trade dresses and/or the shape, art work of the products and packaging of

the products constitute as an art and trade dress which is a distinctive and

original of the Petitioner. People common to the trade and public at large

associate the trade dress and/or mark along with the packaging of the product

with that of the Petitioners only".

Since the packaging of the petitioner's products and respondent's products

is admittedly dissimilar, no interim order could be passed in favour of the

petitioner. However, in direct contrast to its case in the plaint and petition, in

paragraph 3(i) of the Affidavit-in-Reply it is now contended that the products are

identified and/or the distinctiveness of the products is marked by the etchings,

art work, motifs on such products which constitute the marks of the products

and not the packaging in which the products are kept. This inconsistency in

the pleading itself is sufficient to deny any order.

Mr. Mitra has submitted that in an appropriate case the court can go

behind registration in order to find out whether the registration is prima facie

valid. In this context, the learned Senior Counsel has relied upon a Full Bench

decision of the Bombay High Court in Lupin Ltd. v. Johnson and Johnson

reported at AIR 2015 Bom 50 (FB) (Paragraphs 34, 35 and 55) which reads:-

"34. .......... we do not find any express or implied bar in the Trade Marks Act to completely take away the jurisdiction and power of the Civil Court to consider the challenge to the validity of registration of the trade mark at the interlocutory stage by way of a prima facie finding on such issue.

35. The words "if valid" in section 28 and "prima facie evidence of title" in section 31 support the Defendant's case that the defence of invalidity of registration of the Plaintiff's trade mark can be considered at the interlocutory stage.

55. We are, therefore, of the view that while the registered proprietor of a trade mark would ordinarily be entitled to finding of the Civil Court in its favour that the trade mark registered in its name is prima facie valid, the jurisdiction of the Court is not barred for considering the plea of the Defendant at the interlocutory stage that the registration in the Plaintiffs favour is so fraudulent or is so apparently invalid that the Court should not grant an injunction in favour of the Plaintiff. Of course, a very heavy burden lies on the Defendant to rebut the strong presumption in favour of the Plaintiff at the interlocutory stage.

A further reliance is placed on Marico Ltd (supra) (paragraph 14) which

reads:-

"14. In view of Section 124(5) of the Act, this Court is competent to adjudicate and decide the interlocutory application for injunction. While deciding the interlocutory application in view of language of Sections 28 and 124 of the Act, the Court is competent to take prima facie view on the question of validity of registration of the mark in favour of either side. Merely because the mark is registered, injunction will not automatically follow, when validity of registration is questioned in the written statement/pleadings. While deciding whether injunction should be granted or not, a tentative view is required to be taken on the question of validity of registration and principles for grant of injunction applied. However, final decision on validity of registration is to be taken by the authorities and not by the civil Court. Registration is prima facie regarded as valid but mere registration alone is not conclusive and is not binding on the civil Court when the application for injunction is considered and decided. Onus, however, will be on the party which questions validity of registration to show that the registration is prima facie and tentatively bad or invalid."

With regard to the registration of the mark "Crimson Bloom" and "Golden

Fall" it is submitted that the plaintiffs' suit is for passing off only and the cause

of action is not based on infringement of registered trade mark and accordingly

no order can be passed on grounds outside the pleading. (Manoharlal vs.

Ugrasen reported at (2010) 11 SCC 557 (Paragraphs 30-34), Three-N-

Products (DB) (supra) and Kalyan Singh Chouhan vs. C.P. Joshi reported at

(2011) 11 SCC 786 (Paragraphs 19-22).

On such considerations, the respondents have prayed for dismissal of the

petition.

In reply, Mr. Pratap Chatterjee, the learned Senior Counsel has submitted

that the trademark registry has accepted two of the etchings, artistic getup,

motifs, graphical representation, device, drawing etc., of the plaintiff/petitioner to

be a mark and/or device by registering them and the other two motifs and/or

artistic work are proceeding for registration. The said registration certificates are

given by the petitioner as additional evidence to show that the motifs and/or

artistic getup etched on the plates and/or products are capable of being

registered as a mark and/or the accepted and/or taken as a mark.

The learned Senior Counsel has argued that the products selected by the

people are on the basis of marks and/or design and/or etching and/or artistic

getup and/or motifs and/or graphical representation and/or device and/or

drawing etc., which is the identifying character of the marks. The boxes of the

respondent no. 1 though packed in a different box having a different get up of a

different etching or device of another product has the sticker of the device or the

etching of the product as shown in Annexure M, N, O and P of the petition which

is packed in the box.

The petitioner has categorically used the words motifs and/or etchings

and/or devices and/or artistic works to describe the mark and/or device on the

plate and/or the products of the petitioner. The petitioner has chosen the words

carefully to describe the said mark as the said mark being a device as involved in

the instant case is difficult to describe. The said words used by the petitioner are

in the disjunctive manner and motifs and devices and artistic work also forms

part of the descriptive language used by the plaintiff to describe the said mark.

Mr. Chatterjee has contended that though the boxes may be different, the

identifying feature of the products of the respondents is the device of the sticker

on the box. Therefore the identifying feature of the product is the device and not

the trade dress of the box and thus the device is a mark. The box is redundant as

it contains a product having a different etching or device than that shown on the

exterior of the box. The same has been the mark of the respondent also. In this

regard Mr. Chatterjee has relied upon an order dated 6th March, 2015 passed in Khadim India Ltd. v. Lifestyle International Private Ltd. reported at 2015

SCC Online Cal 3866, in which it is stated:-

"A trade mark is undoubtedly a visual device; but it is well established law that the ascertainment of an essential feature is not to be by ocular test alone."

Mr. Chatterjee submits that the products with the pictorial representation

inside the box are identified by the sticker bearing the device/mark of the

product on the box, as a result rendering the packaging on the box redundant.

People identify the product by the device and/or the pictorial representation as

provided on the catalogues, websites selling the products or the shops in which

the products are displayed and/or sold. The products are chosen by the pictorial

representation as shown in Annexure 'E', 'F', 'G' and 'H' and 'M' to 'P' as shown

on the website and shops. That is why the plates are shown bearing the devices

and the artistic work and not the boxes. The boxes are not shown. The same is in

the brochure of the defendant.

The case of the petitioner is on the marks and/or design and/or etching

and/or artistic getup and/or motifs and/or graphical representation and/or

device and/or drawing etc., on the products which is a mark and the dress or the

get up of the products when sold in single pieces forms a dress of the product

which is also the trade dress. Mr. Chatterjee illustrated his submission by

referring to Cadbury Celebrations. Cadbury Celebrations have various

chocolates in it like 5 star, gems, Dairy Milk - each having a separate trade dress

or get up or etchings or designs or a device mark by which trade dress or device mark they are identified by people. The same when sold in Celebrations boxes

though have their own trade dress are identified by the Celebrations trade dress

but when sold in pieces they are identified by their individual trade dress. In the

instant case too, the products when sold in single pieces and in shops or on the

web sites are identified by the trade dress or devices of their individual get up or

pictorial representation rather than the get up of the box.

Mr. Chatterjee has referred to paragraph 3(viii) of the affidavit in opposition

and submits that the defendants have admitted in the affidavit that the products

are being identified by the etchings, get up, artistic work, device and the pictorial

device on the products which the defendants say it to be a design. Even if it is a

design the products then admittedly by the defendants are being identified by the

etchings, get up, artistic work, device and the pictorial device on the products

which the defendants say it to be a design. The design which also includes

devices or pictorial representations can also be a mark as per the new definition

of the Trademark Act, 1999. Mr. Chatterjee has referred to paragraph 24 of

Eicher Goodearth Pvt. Ltd. v. Krishna Mehta and Ors. reported at (2015) 63

PTC 444 and submits that it has been held in the said decision that "an action

for passing off of a design requires firstly that the design "be used as a mark",

and such design/mark "identified the Plaintiff as the source of goods supplied or

services offered". These twin tests have been established. The petitioner has

unique goodwill and reputation.

Mr. Chatterjee has submitted that the customers intending to buy the said

products often purchase them loose or as displayed on the brochures and pamphlets of the defendants, websites and/or in the shops, where no boxes are

displayed and/or showed and the same is evident from the catalogues of the

defendants/respondents as shown in the affidavit-in-opposition. The goods are

kept separately and loose and are chosen by the customers on the basis of the

devices and/or the etchings and/or the artistic get up. The devices of the plaintiff

on the products identify the goods of the plaintiff. The devices of the respondent

are the same as that of the plaintiff. There is a high chance of confusion amongst

customers who may intend to buy the goods of the plaintiff but due to the

identical devices used by the defendant, the customer may actually end up

purchasing the goods of the defendant, thereby leading to passing off.

It is submitted that most of the time and often the products are sold loose

in the shapes and even if the set is purchased, the customer chooses the set by

single plate as displayed in the shops and/or brochures or on the websites. The

defendants/respondents state 'CELLO' is written on the back of the product; it is

enough to distinguish their products on that basis. Potential customer of such a

product will also include persons who have visited homes of others and have

seen or heard reports about the plaintiff/petitioner's products. These persons will

more often than not only have had a fleeting glance or distinct views of the

plaintiff/petitioner's pictorial devices and devices and the artistic get up on the

product in another household and may have received very positive reports about

the product of the plaintiff from the purchasers, such persons may have also

seen the plaintiff/petitioner's product in advertisement or photographs and with

the passage of time may have fleeting recollection thereof, which are highly based on its distinctive design, etching, artistic getup, motifs, graphical representation,

device, drawing etc. If such persons were to come across, the

defendants/respondents' product, such a person would immediately believe that

this is exactly the product that he or she saw either at the residence of somebody

else or in the photographs. Such a person would purchase the

defendant/respondents' product on the belief that it was the plaintiff/petitioner's

product or was associated with the plaintiff/petitioner. This clearly constitutes

passing off. In this context, reliance is placed on Whirlpool of India Ltd. Vs.

Videocon Industries Ltd. reported at (2014 (60) PTC 155 (Paragraphs 53 and

54).

In refuting the submission made on behalf of the respondent no. 1 that the

mark and device are common to the trade it is submitted that it is the pictorial

representation and/or the arrangement of such common feature that makes the

device distinctive. There may be several manners of representing and/or

arranging such common features but copying a pictorial representation and/or

arrangement imitating the colour combination and/or the arrangement of a

flower, twigs, branches etc. in an identical or flagrant manner as that of the

plaintiff is dishonesty which the defendants/respondents have done. Such

copying is dishonesty and amounts to a wrong and is passing off. The

arrangements of the elements used by the plaintiff are not used by any other

manufacturers. All the photographs as produced by the defendants/respondents

in affidavit-in-opposition are different from that of the plaintiff/petitioner. Such

photographs depict products also sold by Ali Baba which are Chinese and are cheap products copied from other well known art works and/or designs and/or

devices. Further, the petitioner is not required to go against all those who

infringes. The petitioner may not be aware of such copying. One or two stray

copying does not mean common to the trade, there has to be hundreds to make it

common to the public. In this context, Mr. Chatterjee has relied upon the

following observation in Khadim India Ltd. (supra):-

"The judgment of a Single Bench of the Delhi High Court in Walter Bushnell Pvt. Ltd. & Ors. Vs. Miracle Life Sciences & Anr. reported at 2014 (59) PTC 339 (Del) is cited for the proposition that where there is no allegation that the defendant has challenged the registered trade mark of the plaintiff and there is no materials on record to show that it is a generic name, the Court must recognize that a registered trade mark holder is enjoying an exclusive and statutory rights which should be adequately protected. In the instant case, no application has been filed by the defendant before the Registrar for cancellation of the trade mark "PRO" adopted by the plaintiff. It was held in Walter (supra) that unless the trade mark challenged by the defendant is cancelled or ratified it is not the practice to infringe the same in an action for infringement of the trade mark. The learned senior Counsel has also referred to the Paragraphs 35 and 36 of the said report in answer to the argument of Mr. Mukherjee, Senior Advocate that large number of parties are using the same trade marks. It was held in Paragraphs 35 and 36 that the defendants are required to establish that such third parties are actually using similar trade marks. The learned single Judge has quoted with approval the views expressed in Express Bottlers Service Pvt. Ltd. that to establish the plea of common use, the use by the other persons should be shown to be substantial. The mere use of the name is irrelevant because a registered proprietor is not expected to act on filing suits or proceedings against infringers who are of no consequence. Moreover, mere delay in taking action against infringers is not sufficient to hold that the registered proprietor has lost the mark intentionally unless it is positively proved that delay was due to intentional abandonment of the right over the registered mark."

It is submitted that the plaintiff/petitioner need not go against all such

pirates pirating the marks and/or device of the plaintiff/petitioner and it is not

possible to be aware of them all at the same time. The petitioner in paragraph 8

of the affidavit in reply have nowhere admitted that the arrangement and/or the

artistic representation of the branches, flowers, twigs as used by the plaintiff on

their products are common to the trade. In fact the petitioner has stated in the

paragraph that in order to differentiate the designs existing in the market the

petitioner conducted surveys and thereafter makes motifs and/or arrangements

which are wholly different from that of the existing arrangement of flowers,

branches, twigs existing in the market and creates its own original motifs and/or

arrangements on which the plaintiff has a proprietary right. The said

arrangements of the said elements are the one on which the plaintiff has claimed

a proprietary right. The said arrangements of the said elements are not common

to the trade.

Mr. Chatterjee submits that passing off is nothing but the false

representation by the defendants/respondents that his goods are those of the

plaintiff/petitioner by copying the devices and/or the identifying character of the

petitioner's product so that consumers are confused or there is a chance of being

confused to think that the devices of the defendant is that of the plaintiff. It is

submitted that the essential and/or ingredients of passing off are the "Classic

Trinity" namely (i) goodwill of the plaintiff/petitioner, (ii) misrepresentation by the defendants/respondents, (iii) consequent damage. In this context, reliance was

placed on paragraph 18 of Eicher Goodearth Pvt. Ltd. (supra).

Mr. Chatterjee has also submitted that Kellog case (supra) is not

applicable as in the instant case packaging is not relevant since the goods are

sold loose and in pieces as well as in boxes with a pictorial representation of the

plates with etchings bearing different artistic works unlike the product of the

defendant. "Cello" is not prominently displayed on the goods and is only

displayed under the plates. The products of corn flakes is identified by mark

"Kellog" while the product of the plaintiff herein is identified by the etching and

motifs. Moreover, as stated in paragraph 46 in Seven Towns Ltd. & Anr. Vs.

Kiddiland & Anr. reported at (2016) 68 PTC 308, S.M. Dyechem Ltd. Vs.

Cadbury (India) Ltd. reported at (2000) 5 SCC 573 and Kellogg (supra) are not

approved by the Hon'ble Supreme Court in Cadilla Health Care Ltd. v. Cadila

Pharmaceuticals Ltd. reported at (2001) 5 SCC 73.

The learned Senior Counsel has submitted that the respondent no. 1 had

relied upon the Kemp (supra) for the proposition that mere copying is no passing

off as the etchings/motifs of the petitioner are common to the trade. Mr.

Chatterjee relies on paragraphs 17 to 20 of Kemp (supra) and points out that (i)

passing off can be established if design is unusual in order to give distinctive

appearance, (ii) No one is prevented from copying unless the design is distinctive,

and (iii) Prior publication is only applicable to the Designs Act, 2000 and no

provision of such defence exists in Trade Marks Act, 1999. It is contended that in

the instant case, though the twigs, branches, flowers, etc. are a part of the petitioner's motif but the arrangement of these are new and original and the

same has an original distinctive arrangement to give distinctive appearance. It is

submitted that the alleged motifs used by the respondents in their goods are

identical to that of the plaintiff's.

Mr. Chatterjee, submits that the Court is not precluded from taking

subsequent events in order to mould the relief. It is submitted that the

registration of the two marks have taken place during the pendency of the

proceeding and after filing of the plaint. In respect of the two pending

applications, no opposition has been filed. In the event the respondent no. 1

raises any objection with regard to the validity of the trademarks as registered,

the remedy is to apply before the statutory authority for cancellation. In this

proceeding, the invalidity of the registered trade mark cannot be questioned. In

this context, Mr. Chatterjee has placed reliance upon a fairly recent decision of

the Hon'ble Supreme Court in Patel Field Marshal Agencies & Anr. Vs. P.M.

Diesels Ltd. & Ors. reported at (2018) 2 SCC 112 (Paragraphs 31 and 34).

Mr. Chatterjee submits that the respondent no. 1 has failed to offer any

explanation for adoption of the mark of the petitioner, the aesthetic get-up of the

petitioner's products is self-evident. Even if it is assumed for the sake of

argument that the designs pertaining to flowers, trees, leaves twigs, branches,

roots etc. are common to the trade - what is unique is the manner in which such

matters and designs have been placed on the plate. Mr. Chatterjee submits that

a visual comparison of the two plates would unmistakably show that all the

distinctive feature of the designs of the plates mentioning in Annexures E, F, G, H and similar to the infringing products as depicted in Annexures M, N, O, P.

Mr. Chatterjee submits that the respondent no. 1 has copied the entire trade

dress and get-up including the marks which are distinctive of the plaintiff and

have been in use for a considerable length of time.

It is submitted that, in any event, the petitioner is a long user and has

been using the get up since 2009 and therefore, can claim distinctiveness; and

no case of prior use by other parties of the etchings of the plaintiff. The

petitioner has, accordingly prayed for confirmation of the interim order passed on

16th May, 2018.

The petitioner has initiated an action in passing off. The petitioner claims

proprietary right over motifs and/or arrangement of flowers, branches, twigs

which according to the petitioner are wholly different from that of the existing

arrangement of flowers, branches, twigs, existing in the market. The petitioner

claims that it has created its own original motifs and/or arrangements. The said

arrangement of the said elements is not common to the trade.

The petitioner has defined its trade dress to mean the shape, surface

pattern, artistic get up and motifs on the products of all the four brands. The

products of the petitioner are identified by the etchings, get up, artistic work,

device and the pictorial device on the products. The devices of the petitioner on

the products identify the goods of the petitioner.

In order to appreciate as to whether the impugned designs are slavish

imitations of the trade dress, get-up and design of the petitioner, the visual effect of the said marks needs to be examined. The comparison showing the designs of

the petitioner and the allegedly infringing designs and/or marks of the

respondent no. 1 are indicated below:-

Pic 1: DAZZLE PURPLE (Petitioner) and PURPLE HUES (Respondent No. 1) Pic 2: MYSTRIO BLACK (Petitioner) and ORNATE BLACK (Respondent No. 1)

Pic 3: GOLDEN FALL (Petitioner) and GOLDEN PINE (Respondent No. 1)

Pic 4: CRIMSON BLOOM (Petitioner) and MANDARIN ORANGE (Respondent No. 1) A trade mark generally is a visual symbol in the form of a word, a device, or

a label applied to articles of commerce with a view to indicate to the purchasing

public that is a good manufactured or otherwise dealt in by a particular person

as distinguished from similar goods dealt or manufacture by other persons. The

Indian Trademark Act of 1999 describes a trademark as -

"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 may include shape of goods, their packaging and combination of colours: and--

(i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark: and

(ii) in relation to other provision of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark."

The main purpose of a trademark is to prevent unfair competition between

companies that use consumer confusion to get more business. For example, if an

independent diner used a golden, arched "M" as its logo, it could confuse

customers who think the establishment is a McDonald's. Causing this type of

confusion is against trademark law.

The purpose of trademark law is twofold, namely:-

i) A trademark helps customers distinguish between products.

ii) A trademark protects the owner's investment and reputation.

As a "first-to-use" country, unregistered trademarks with prior use can be

protected under common law in India. The passing off of trademarks is a tort

actionable under common law and is mainly used to protect the goodwill

attached to unregistered trademarks. It is founded on the basic tenet of law that

one party should not benefit from the labour of another. Various judicial

decisions have established that a passing-off action is a misrepresentation made

by a person in the course of trade to prospective customers of the manufacturer

or the ultimate consumers of the goods or services that it supplies:

i) which is calculated to injure the business or goodwill of another party;

and

ii) which causes actual damage to the business or goodwill of the party which has brought or is likely to bring the action.

Section 27 of the Trade Marks Act, 1999 provides that no infringement

action will lie in respect of an unregistered trademark but recognises the

common law rights of the trademark owner to take action against any person for

passing off their goods and services as the good of another person or as services

provided by another person. It has been settled in catena of authorities like

Cadila Healthcare (supra) and Erwen Warnik BV v. J Townend & Sons

reported at (1979) 2 All ER 927 that essential characteristics of a passing off

action are as follows:

i) Misrepresentation;

ii) Made by a person in the course of trademark;

iii) To prospective customers of his ultimate consumers of good or services supplied by him;

iv) Which causes actual damages to a business or goodwill of the trade by whom, the action is brought or well probably do so;

v) Which is calculated to injure the business of another trade.

In a typical passing-off suit, as held in Eicher Goodearth Pvt. Ltd.

(supra), the courts will generally consider the following issues for deciding

whether they can allow an interlocutory injunction:

i) whether the plaintiff is a prior user of the mark;

ii) whether the plaintiff's goods have acquired distinctiveness and are associated in the minds of the general public with the plaintiff's mark;

iii) whether there is a misrepresentation by the defendant with regard to its goods and such misrepresentation is likely to lead to confusion in the minds of consumers, with the result that they may treat the defendant's goods as those of the plaintiff; and

iv) The defendants actions must have caused damage.

In Kellogg Company (supra), the appellant sought a temporary injunction

against the respondents, who according to the appellant, was using a carton for

their cornflakes which was deceptively similar to that of the appellants, and

hence, they were infringing on the trade-dress of the appellant. The Single Judge

Bench refused this prayer, and hence it appeared before the division bench. The

court went into the law surrounding a "trade-dress", where they held that:

"The law relating to 'trade dress' is very clear. Kerly in 'Law of Trade Marks' (12th Ed. 1986, para 16.67) says that it is usually true in some degree that a trader's goods are recognised by their general appearance, or "get-up". Accordingly, resemblance or 'get-up' is not uncommonly an ingredient in passing-off, and it is possible for imitation of get-up alone to amount to passing-off. Such cases are rare, since few traders rely on get- up alone to distinguish their goods, so that trade names and word trade marks are ordinarily present too, and the author says, "and in these days, in this country, a difference in names is enough to warn the public that they are getting one trader's goods and not the others" (Sapers v. Specters ((1953) 70 RPC 173)".

The court also goes into discussing the aspect of the short-term memory of

the customer as an important factor for determining if there is a legitimate case

for passing off. They say that a trade-dress should be looked at in its entirety and

not in isolation. They say that:

"The argument is that customers have short memory and that if the trade dress is similar, the customers are likely to get con fused.

16. It has now been held that there are limitations to the theory of imperfect memory. Halsbury's Laws of England (4th Ed.) (Vol. 48, para 139) says that this principle of imperfect recollection must not be pressed too far. It says :

"The Tribunal must bear in mind that the marks will not normally be seen side by side and guard against the danger that a person seeing the new mark may think that it is the same as one he has seen before, or even that it is a new or associated mark of the proprietor of the formal mark. However, the doctrine of imperfect recollection must not been pressed too far Chappie Ltd. v. Spratt's Patent Ltd. ((1954) 71 RPC 455 at 457). Marks are often remembered by general impressions of by same essential feature (Decordova Vick Chemical Co. ((1951) 68 RPC 106 (PC) 289), (on appeal 71 RPC 348. (CA)"

This brings us to the issue as to what "trade dress" or get up means and

how far it protects a claim based on "trade dress".

The oldest and most traditional definition of trade dress was limited to the

overall appearance of labels, wrappers, and containers used in packaging a

product. Many cases brought today concern this type of traditional "trade dress", with the plaintiff defining a list of discrete elements which make up the

appearance of a container or package in which the product goes to market. (See.

Storck USA, L.P. v. Farley Candy Co. 14 F 3d 311, 29 U.S.P.Q 2d 1431)

A plaintiff asserting a claim for infringement of trade dress must plead and

prove three basic elements:

(1) Plaintiff owns a protectable trade dress in a clearly articulated design or

combination of elements that is either inherently distinctive or has

acquired distinctiveness through secondary meaning.

(2) The accused mark or trade dress creates a likelihood of confusion as to

source, or as to sponsorship, affiliation or connection.

(3) If the trade dress is not registered, the plaintiff must prove that the

trade dress is not functional. If the trade dress is registered, the

registration is presumptive evidence of non-functionality and the burden of

showing functionality is on the accused defendant.

While trade dress is most often defined as a totality of elements, there is no

reason why the plaintiff cannot define a list of elements consisting of less than

the totality of features appearing on a package or container. Beyond packages

and containers it often includes a combination of any elements in which a

product or service is presented to the buyer those elements combined to create a

visual image presented to customers that combination of elements is capable of

acquiring exclusive rights as a type of identifying symbol of origin: trade dress,

namely cover of a book, display of products in a retail store etc. This has now

further expanded to encompass a third type of trade dress: the shape and design of the product itself. In all these types of trade dress, it is essential that the

courts and parties coherently define a list of what the exact elements are that

make up the alleged trade dress.

The other essential element of trade dress is to indicate the source. The

elements making up the alleged trade dress must have been used in such a

manner as to denote products source. A product feature whose only impact is

decorative and aesthetic with no source identifying role cannot be given exclusive

rights under trade dress law.

The emphasis and thrust of a claim of trademark infringement is in

deciding whether a discrete symbol, such as a word, number or picture in fact

functions as a mark and whether defendant's mark is likely to cause confusion.

On the other hand, trade dress protection is generally focused more broadly (E.g.

Reynolds Consumer Products, Inc. v. Handi-Foil Corp., 112 U.S.P.Q 2d

1111, 2014 WL 3615853 (E.D. Va. 2014)). To determine trade dress

infringement, if the plaintiff has defined the trade dress as the total image or

overall impression of plaintiff's product, package and advertising, then it is this

composite that is compared with the corresponding image or impression of

defendant's product. If defendant's trade dress is likely to cause confusion with

plaintiff's trade dress, then a finding of unfair competition is warranted. The

ultimate protection desired - prevention of a likelihood of confusion of buyers- is

just as important when a junior user presents a package which in toto is

confusingly similar to plaintiff's, as when a mere part of the package (such as a

word mark) is simulated. [Paragraph quoted with approval in Schwinn Bicycle Co. v. Ross Bicycles, Inc., 870 F.2d 1176, n.12, 10 U.S.P.Q. 2d 1001, n.12

(7th Cir. 1989)].

Even if it cannot be said that defendant has infringed a specific

"trademark" of the plaintiff, this does not control the separate issue of liability

under the broader rules of unfair competition through the infringement of trade

dress:

Trade dress protection exists only if it can be proven that the trade dress

identifies and distinguishes the plaintiff as source.

A defendant cannot avoid liability for infringement a trade dress by

segregating out individual elements of the trade dress as defined by plaintiff and

arguing that no one of these is valid and protectable in and of itself. It is the

total combination of elements of the trade dress as defined by the plaintiff that is

at issue. This has been the rule for close to a century.

It will not do for a subsequent maker of a product to segregate the details

of the earlier trade packages and dress and then, on the theory that the first user

does not possess an exclusive right to them separately appropriate them in whole

or substantial part by piecemeal.

Similarly, it is the likelihood of confusion with the total overall trade dress

that is the test.

Simulation amounting to unfair competition does not reside in identity of

single features of dress or markings or in indistinguishability when the articles

are set side by side, but is to be tested by the general impression made by the

offending article upon the eye of the ordinary purchaser or user. (See McCarthy on Trademarks and Unfair Competition, J. Thomas McCarthy, 4th Edition,

Thomson Reuters)

Trade dress protection is broader in scope than trade mark protection,

both because it protects aspects of packaging and product design that cannot be

registered for trade mark protection and because evaluation of trade dress

infringement claims requires the court to focus on the plaintiff's entire selling

image, rather than the narrower single facet of trade mark. (Vision Sports Inc.

v. Melvile Corp. 12 USPQ 2d 1740)

The get-up of goods comprises the size and shape of the package or

container, labels and wrappers, the dress in which the goods are offered to the

public (see John Haig v Forth Blending; (1953) 70 RPC 259 at 261), or the

style of writing (Spicer v. Spalding; (1915) 32 RPC 52). Get-up is now-a-days

referred to as trade dress also. There is no rule of law that get-up cannot form

part of the article itself as opposed to the way or the wrapping in which it is

marketed. (Reckitt & Colman v. Borden; [1990] RPC 341 at 426 (HL).

In Roche v. D.D.S.A. [1972] RPC 1 at page 20, following Edge v. Niccols

(1911) AC 693 at pages 703, 704, it is stated:-

"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 recognized by the public as goods of a particular manufacturer it does not matter whether you know who the manufacturer is."

Unless the get-up of the first trader's goods has become so associated in

the minds of the public with the first trader's goods as to be distinctive of the goods of the first trader and of no other can it be protected; as observed in John

Haig v. Forth (1953) 70 RPC 259 at 261 and Saper v. Specters (1953) 70

RPC 173. No trader by adopting and using a particular style of get-up thereby

acquires a right to prevent a rival or second trader using the same or a similar

get-up. In an action for passing off based on the imitation of get-up the plaintiff

must establish first, that the particular get-up which he has been using has

become associated exclusively with his goods, that is, he must establish

reputation and, secondly, that the defendant's get-up is likely to deceive or cause

confusion. (Adcock-Ingram v. Beecham (1978) RPC 232)

In White Hudson v. Asian Organisation (1965) RPC 45 at 59 (PC) it is

stated that it is not necessary that the plaintiff's design should be novel, provided

the get-up is distinctive of the plaintiff's goods and has been identified with them.

Where the features of resemblances between the plaintiff's goods and defendant's

goods are common to the trade, the plaintiff must make out that the defendant's

goods are like his by reason of something peculiar to him, and by reason of the

defendant having adopted some mark, or device, or label, or something of that

kind, which distinguishes the plaintiff's goods from other goods which have, like

his, the features common to the trade. Imitation of the appearance of the actual

article sold is not a case of passing off as regards get-up since it is not a question

of getting up, but a question of the appearance of the actual articles sold,

however, where there is proof that the plaintiffs' goods had acquired reputation in

connection with goods of a distinctive shape, injunction may be granted (See

British American Glass v. Winton [1962] RPC 230 at 232, Benchairs v. Chair Centre [1974] RPC 429, Elliott v. Hodgson (1902) 19 RPC 518 and Camlin v.

National Pencils AIR 1988 Del 393).

In Camlin (supra), in a case involving pencils of similar appearance, colour

scheme and get-up, an interim injunction was granted.

The gist of a passing off action is that defendant is not entitled to represent

his goods as the goods of plaintiff but it is not necessary for plaintiff to prove that

defendant did this knowingly or with any intent to deceive. It is enough that the

get up of plaintiff's goods has become distinctive of them and there is probability

of confusion between them and the goods of defendant. No case of actual

deception or any actual damage need be proved (Ruston and Horby Ltd. v.

Zamindara Engineering Co. AIR 1970 SC 1649 at 1650-51).

The court is not required to find out whether there is confusion or

deceptiveness. The test is whether there is likelihood of confusion or

deceptiveness in the minds of unwary customers irrespective of dissimilarities in

the trade name.

Section 2(1) (zb) of the Trade Marks Act, 1999 under which trademark is

now expressly defined to mean 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 includes the shape of goods, their packaging and

combination of colours.

In Taylor v Taylor (1854) 23 L.J. Ch. 255 it was observed by Wood, V.C.,

"Resemblance is a circumstance which is of primary importance for the Court to

consider, because if the Court finds, as it almost invariably does find in such cases as this, it will infer that the resemblance is adopted for the purpose of

misleading". Where the plaintiff's trade mark has been in use for a long time and

the defendant adopts a closely similar mark, and is unable to explain

satisfactorily such similarity between the two marks, the Court will presume an

intention to deceive on the part of the defendant.

In Express Bottler Services Pvt Ltd. v. Pepsi Inc. (1989) 7 PTC 14, it

was observed that "to establish the plea of common use, the use by other persons

should be shown to be substantial". The Court also held that a "registered

proprietor is not expected to go on filing suits or proceedings against infringers,

who are of con consequence" (See also Dr. Reddy Laboratories v. Reddy

Pharmaceuticals (2004) 29 PTC 435).

The distinctive and essential feature of the plaintiff's mark is the deciding

and distinguishing factor. If it appears that there is a flagrant and blatant

attempt on the part of the defendant to imitate the plaintiff's design work and

colour scheme etc., for the same products with a view to deceive the purchasers,

the courts have always restrained such defendant from using such design work

and the mark of the plaintiff.

It is a well settled principle of trade mark law that in deciding the deceptive

similarity, the Court would have due regard to the overall impact of the rival

marks. In Hiralal Prabhudas vs. Ganesh Trading Co. 1984 (4) PTC 155 (DB),

a Division Bench of Bombay High 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, (h) 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 in 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." (emphasis supplied)

The defendant has taken pains to structure his affairs in a dishonest

manner in selection of design and overall get-up of the four opal ware products

forming the subject matter of the suit.

At this stage, the Court needs to consider the broad and salient features of

the two rival shapes, configurations, surface pattern and the artistic get up. A

meticulous attempt to find differences in the two shapes, configurations, surface

pattern and the artistic get up side by side is impermissible.

In John Haig And Company Ltd. vs. Forth Blending Company Ltd., 70

RPC 259 wherein a claim for passing off to protect its 'Dimple' bottle of whisky

which had come to be associated with the product of the plaintiff was upheld by

the Court observing:

"A container such as a bottle may be part of the get-up of goods of a trade if it is of a peculiar shape which catches the eye and is retained in the memory of the ordinary purchaser, and is associated in the mind of the purchasing public with the goods of that particular trader alone and of no other.... 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. vs. 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 vs. Borden Inc., reported at 1990 (13) RPC 341. In

a judgment of the High Court of Ontario in Jay-Zee Food Products Inc. vs.

Home Juice Co. Ltd., reported at 32 CPR (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."

This view was also relied upon in Gorbatschow Wodka Kg vs. John

Distilleries Ltd., reported at 2011 (47) PTC 100.

An appealing shape of an article is a feature of design but a distinctive

shape is a feature of trade mark. The Bombay High Court relied on a Single

Judge decision in Kemp and Company vs. Prima Plastics Ltd., 2000 PTC (20)

96 (Bom) where the following extract from Copinger and Skone James on

Copyright was cited:

"There may, indeed, be cases where an article itself is shaped in an unusual way, not primarily for the purpose of giving some benefit in use or for any other practical purpose but capriciously in order purely to give the article a distinctive appearance characteristic of that particular manufacturer's goods. In such a case the manufacturer might be able, in the course of time, to establish that he has a reputation and goodwill in the distinctive appearance of the article itself which will give him a cause of action in passing off if his goods were copied. In those circumstances, the putting of a copy on to the market with the distinctive feature or combination of features in question would amount to a misrepresentation that it emanated from the plaintiff."

Under the 1999 Act, the shape of goods and their packaging was statutorily

as a constituent element of a trade mark as distinguishing the goods or services

of a person with those of others. The defendant did not have any plausible or

bona fide explanation for adopting a shape which is strikingly similar. The

defendant if allowed would result in diluting the distinctiveness and exclusivity of the mark of the plaintiff which had as an essential ingredient, the distinctive

shape, configuration, surface pattern, motif and artistic get-up in which the opal

ware of the plaintiff are sold. If the defendant is not restrained it would

encourage the other infringers to invade upon the proprietary right of the plaintiff

and would ultimately result in a destruction of the goodwill associated with the

mark of the plaintiff.

In case of an apparent dishonest adoption, no amount of user makes the

adoption honest.

Likelihood of confusion in the context of trade dress is evaluated by

reference to similar factors as used in the ordinary trade mark context. The

factors as evolved from the authorities and decided cases are:

i) strength of the trade dress,

ii) similarity between plaintiff's and defendant's trade dress,

iii) evidence of actual confusion,

iv) marketing channels used,

v) type of goods and likely degree of purchaser care, and

vi) the defendant's intent in selecting its trade dress,

Determination of the likelihood of confusion in trade dress cases must be

made in the light of 'the total effect of the defendant's product and package on

the eye of the ordinary purchaser. (See N. Ranga Rao vs. Anil Garg, 2006 (32)

PTC 15 (Del) In Cadila Health Care Ltd. (supra), in Paragraph 35 the factors to be

taken into consideration in an action for passing on the basis of unregistered

trademark has been stated thus:-

"(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.

(b) The degree of resemblances between the marks, phonetically similar and hence similar in idea.

(c) The nature of the goods in respect of which they are used as trade marks.

(d) The similarity in the nature, character and performance of the goods of the rival traders.

(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.

(f) The mode of purchasing the goods or placing orders for the goods.

(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

Weightage to be given to each of the aforesaid factors depending upon facts of each and the same weightage cannot be given to each factor in every case."

As rightly pointed out by Mr. Chatterjee, the principle in Dyechem case

(supra) was disapproved in Cadila (supra) where the observation of Lord

Halsbury in Schweppes case [1905 (22) RPC 601] was quoted and not approved

in Cadila (supra). The observations of the Hon'ble Supreme in this regard are:-

"20. Lastly, in Dyechem case (supra), it was observed in para 54 as under:

"54. As to scope of a buyer being deceived, in a passing-off action, the following principles have to be borne in mind. Lord Romer, L.J. has said in Payton & Co. Vs. Snelling, Lampard & Co. (1900) 17 RPC 48 that it is a misconception to refer to the confusion that can be created upon an ignorant customer that the courts ought to think of in these cases is the customer who knows the distinguishing characteristics of the plaintiffs goods, those characteristics which distinguish his goods from other goods in the market so far as relates to general characteristics. If he does not know that, he is not a customer whose views can properly be regarded by the Court. (See the cases quoted in N.S. Thread & Co. Vs. Chadwick & Bros. AIR 1948 Mad 481 which was a passing-off action.) In Schweppes Case (1905) 22 RPC 601 (HL) Lord Halsbury said, if a person is so careless that he does not look and does not treat the label fairly but takes the bottle without sufficient consideration and without reading what is written very plainly indeed up the face of the label, you cannot say he is deceived."

These observations appear to us to be contrary to the decision of this Court in Amritdhara case (supra) where it was observed that the products will be purchased by both villagers and townfolk, literate as well as illiterate and the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. A trade may relate to goods largely sold to illiterate or badly educated persons. The purchaser in India cannot be equated with a purchaser of goods in England. While we agree that in trade mark matters, it is necessary to go into the question of comparable strength, the decision on merits in Dyechem case (supra) does not, in our opinion, lay down correct law and we hold accordingly." In Mehboob Khan (supra), the court referred to Three-N-Products Pvt.

Ltd. (supra) where it is stated that the right the owner of a device or a label

mark obtains is, loosely speaking, similar to that of a copyright. It is as much the

writing or the etching in a device or a label, and the device, and the design and colour combination thereof, over which the registered proprietor gains right as

the manner of depiction thereof. In Three-N-Products Pvt. Ltd. (supra) the court

further said that, "If the two marks are identical and the goods and services

covered by either mark are also identical, there is a presumption that arises in

favour of the proprietor of the registered mark and, for interlocutory purposes, it

may be enough to earn the plaintiff its injunction. If the two marks are identical

and the goods and services are similar or if the two marks are similar and the

goods and services are identical, the court has to weigh the likelihood of confusion

or assess whether the defendant's mark is likely to have an association with the

plaintiff's registered mark".

Therefore, it is established that for determination of the essential features

of the two marks and the main idea, if any, underlying the two marks which a

purchaser of average intelligence and imperfect memory would retain in his mind

after seeing the marks, have to be noticed. It has then to be seen whether they

are broadly the same or there is an overall similarity or resemblance, and

whether the resemblance or similarity is such that there is a reasonable

probability of deception or confusion. In doing so, the approach has to be from

the point of view of purchaser of average intelligence and imperfect memory or

recollection, and not an ignorant, thoughtless and incautious purchaser.

The Trademark Act, 1999 under Section 27 provides for the remedy of

passing off for misuse of an unregistered trademark by the Defendant. It

enumerates that no person shall be entitled to institute any proceeding to

prevent infringement of an unregistered trademark. The law further entails that the provision shall not affect the rights of action against any person for passing

off goods or services as the goods of another person or as services provided by

another person, or the remedies in respect thereof.

The similarity between two trademarks in dispute in Amar Nath

Chakraborty (supra) where the shape, colour combination and other artistic

design of the two rival marks were considered, the Court reiterated that

possibility of deception among common people is a relevant consideration. It is

stated thus:

"18. We are of the opinion that the commodity used on the basis of such trade mark being bucket which is used by common people who are ignorant of details of the writing, there is every possibility of deception of the common people. In our view, any common people who are not efficient in English can be misled by the trade mark of defendants as that of plaintiff. If "Lakhshmandhara" is held to be deceptively similar to "Amritdhara" (see Amritadhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449), in our view, MAJ must be held to be deceptively similar to TAJ in the eyes of purchasers of average intelligence and imperfect recollection if we also take into consideration the colour combination, shape and other artistic design of the two labels.

19. We, thus, find that the findings of the learned Trial Judge that there are so many differences in the trade mark of defendants from that of plaintiff and those can be detected by naked eye is not the decisive factor in considering a case of injunction alleging "Passing off. It is now settled law that dissimilarities in the two labels should not be given more importance than the similarities in considering a case of passing off. (See Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., reported in AIR 2001 SC 1952). In the aforesaid circumstances, we are left with no other alternative but to hold that the finding of the learned Trial Judge to that effect is a perverse finding of fact.

20. Once it is established that the label of the defendant is deceptively similar to that of plaintiff and the plaintiff has been using the label from the earlier point of time, the Court has no other alternative but to grant injunction restraining the defendant from using the said trade mark unless the defendant can show positive act of the plaintiff consenting to use of the trade mark of the defendant.

An unwary purchaser with imperfect recollection still holds good in a

passing off action. There cannot be any presumption that the products of the

plaintiff and the defendant No.1 are only purchased by sophisticated persons

with discernible minds. Even a careful eye would not be able to find any

difference between the three products of the plaintiff and the three infringing

products of the defendant when placed side by side without the names of the

respective parties displayed on the products. It is a common human reaction to

get attracted with the design and get up of a product and then to enquire about

the manufacturer. At this prima facie stage, it cannot be said that the products

of the parties are not available loosely or in pieces. The three infringing products

of the respondents are slavish imitation of the designs of the plaintiff - even the

arrangements of the motifs, twigs and flowers are arranged similar to that of the

petitioner. The overall impression that one gets from the two marks with its

artistic get up and other distinctive features are same and not distinguishable.

That the designs are common to the trade is no answer to copy a design when

there are sufficient materials to show that the products of the plaintiffs have

acquired a distinctive character by long, uninterrupted and continuous use and has gained popularity and goodwill in the market. Even the cartons and/or boxes

produced for visual examination although prominently displayed the name of the

respective manufacturers but in the product identification the design adopted by

the respondent No.1 are the same three designs forming the subject matter of the

present suit. The trade dress and get up without portraying the respective plates

with the infringing devices and marks are permissible. It is not in dispute that all

the four designs and/or devices which formed the trade mark of the plaintiff were

and are in the market prior to that of the defendant No.1. The immense

popularity and goodwill of the plaintiff is established when one assess the

turnover of the plaintiff. The increase in sales over a short span of time is an

indication of the quality and goodwill of the plaintiff in the market.

In the case that we have here, at least three of the designs/marks by Cello

excepting MYSTRIO BLACK have an eerily similar look to that of designs in

question by La Opala.

In Lupin (supra), the court held that when a prima facie case of non-

existence of trademark is established, the court may comment on the whether a

trademark exists or not, in the case of Passing-off, however, in this case, the

defendant has not been able to establish a prima-facie case for lack of trademark.

Not only that, they have instead said that if the Plaintiffs have a right of design

over it, if not a trademark. Either way, if does not give the defendant/respondent

the right to copy the design/mark.

In Amar Nath Chakroborty (supra), the plaintiff was using the word TAJ

in relation to Buckets and the defendant started using MAJ with similar size, shape, colour combination and artistic design. The Calcutta High Court found it

deceptively similar in the eyes of purchasers of average intelligence and imperfect

recollection. The differences found by trial judge in comparison of marks were not

the decisive factor. It was held:-

"The mere fact of trade mark registration will not extinguish the common law right of the plaintiff to obtain an injunction restraining passing off"

"Delay is immaterial unless it is shown that there is definite proof of acquiescence of the plaintiff"

"Once it is established that the label of the defendant is deceptively similar to that of the plaintiff and the plaintiff has been using the label from an earlier point of time, the Court has no alternative but to grant injunction restraining the defendant from using the said trade mark unless the defendant can show positive act of the plaintiff consenting to use of the mark of the defendant"

In Gillette India Limited (supra), the Calcutta High Court vacated the

interim injunction issued by the trial judge in respect of the use of plaintiff's

trade mark 'Champion' as a prefix with Gillette's own trade mark 'Mach 3 Turbo'.

The defendant was not using the expression 'Champion' as a trade mark. Like

other members of the trade, the defendant was using 'Champion' for brand

imagery and as a bona fide trade description to laud the quality of its safety

razors. It was found that defendant had shown in its written objection that the

impugned mark is commonly used by the trade for brand imagery and as a

laudatory epithet. There was no likelihood of confusion or deception between the

two marks of the parties. The defendant had invested a large sum of money in

advertising as well as in promotional campaigns involving the product in dispute.

The defendant had also made an application for the removal/rectification

of the registration of 'Champion' trade mark of the plaintiff before the IPAB. The

High Court was of the view that if the appellant was restrained and the plaintiff

was not successful in the main suit, then the appellant cannot be remedied.

However, the plaintiff could be compensated by damages if the case went in

favour of the plaintiff on merits and ends of justice shall be met if the appellant

was directed to keep the accounts.

The defendant directed to keep accounts during the pendency of the suit.

Temporary injunction refused.

In Three-N-Products Private Limited (supra), it is stated that the

plaintiffs had registration of the word AYU and AYUR in class 5 for medicinal

products. The plaintiff's complaint is about the defendant's infringement and

passing off by use of the mark AYUCARE...

It was held that "it is possible that a registered trade mark is made up of

several components which are distinctive and notwithstanding separate

registration in respect of such distinctive parts not having been obtained by the

owner of the registered mark, such proprietor is entitled to cite one distinctive

part as being inseparable from the registered whole or such distinctive part being

the most outstanding attribute and thus assert the right over the distinctive part.

But in view of section 17(2)(a) of the 1999 Act, such assertion has to be in

passing off and may not be made in aid of a case of infringement... even if it is

assumed for argument sake that section 17(2)(a) of the 1999 Act altogether

precludes a claim of exclusivity over a part of a registered mark, such part has to be registrable under the Act to qualify for protection. The mark AYUR prima facie

does not appear to be capable of distinguishing the goods and services of a

person from those of another, as it seems to consist exclusively of an indication

which may serve in trade to designate the nature of goods. The plaintiff's claim of

infringement based on its AYUR mark as part of its device mark is found to be

unacceptable at the interlocutory stage."

In Marico Ltd. (supra), the expression "if valid" has been inserted in

section 28 came up for consideration for the purpose that post registration an

aggrieved person is entitled to apply for cancellation under section 57 of the Act

even if no suit is filed alleging infringement of the registered trade mark. For the

purpose of deciding the interlocutory application for grant or refusal of

injunction, the Court is entitled to look into the validity of registration of the

trade mark. Prima facie validity of registration is only a rebuttable presumption.

The right conferred by registration for exclusive use of the trade mark in relation

to the goods as if the registration is valid. This flows from the expression "if valid"

occurring in section 28. Registration would become conclusive evidence of

validity if the rectification/cancellation proceedings do not finally succeed.

In Marico (supra), the contention that, in view of the pendency of the

rectification application, the Court ought to have stayed the suit in the first

instance, before considering the application for grant of interim relief was

rejected. It was held that on a bare perusal of section 124 of the Act, there is no

such mandate requiring the Court to first stay the suit, and then proceed to

consider the interlocutory application for grant of ad interim injunction.

In other words, despite registration, "the court is entitled to pass any

interlocutory order as it deems fit, including but not limited to, granting the

injunction or dismissing the prayer for injunction. If no cancellation proceedings

are pending as on the date of filing of a suit for infringement, if the court is

satisfied with regard to the plea of invalidity of registration, then the court may

raise an issue in the suit and adjourn the case for three months.

In Kellogs & Co. (supra), the defendant was selling his cornflakes under

the title AMIS ARISTO. The words were prominently written at the place where

plaintiff wrote Kellog's Cornflakes. The Court had concluded that the 'trade dress

or rather the whole thing must be seen in its entirety and not in parts in

isolation. Thus viewed, as a whole the words 'Kellogs' and 'AMIS' were

prominently displayed on each and therefore there could be no confusion prima

facie.

In Lupin Ltd. (supra) the question arose whether the Court can go into the

question of validity of the registration of the plaintiff's trade mark at an

interlocutory stage when the defendant takes up the defence of invalidity of the

registration of the plaintiff's trade mark in an infringement suit?

The Bench in a nutshell answered the question thus: "In cases where the

registration of trade mark is ex facie illegal, fraudulent or shocks the conscience

of the court, the Court is not powerless to refuse to grant an injunction, but for

establishing these grounds, a very high threshold of prima facie proof is required.

It is, therefore, open to the Court to go into the question of validity of registration

of plaintiff's mark for this limited purpose, to arrive at a prima facie finding."

The reasons given are as follows:

1. The expression "if valid" in Section 28 and the words 'prima facie evidence

of validity of trade mark' in Section 31 of the Trade Marks Act, 1999 must

be given their plain and natural meaning. The plain and natural meaning

is given to these phrases by various High Courts.

2. Though the object of providing registration of trade mark is to obviate the

difficulty in proving each and every case the plaintiff's title to the trade

mark, the object is achieved by raising a strong presumption in law to the

validity of the registration of the trade mark and heavy burden is cast on

the defendant to question the validity of the trade mark.

3. A challenge to the validity of the registration of the trade mark can finally

succeed only in rectification proceedings before the IPAB. However, there is

no express or implied bar taking away the jurisdiction and power of the

Civil Court to consider the challenge to the validity of the trade mark at the

interlocutory stage by way of prima facie finding.

4. There is nothing in the Act to suggest that any different parameters for

grant of injunction are required to be applied when a plaintiff seeks

injunction on the basis of registered trade mark. The relief of injunction

being a relief of equity, when the Court is convinced that the grant of

interim injunction would lead to highly inequitable results, Court is not

powerless to refuse such relief.

5. However, a very heavy burden lies on the defendants to rebut the strong

presumption in favour of the plaintiff on the basis of the registration at the

interlocutory stage. The plaintiff is not required to prove that the

registration of a trade mark is not invalid, but only in the cases where the

factum of registration is ex facie totally illegal or fraudulent or shocks the

conscience of the Court that the Court may decline to grant relief in favour

of the plaintiff.

6. It is not sufficient for the defendant to show that the defendant has an

arguable case for showing invalidity. The prima facie satisfaction of the

Court to stay the trial under Section 124 of the Act is not enough to refuse

grant of interim injunction. It is only in exceptional circumstances, such

as, the registration being ex facie illegal or fraudulent or which shocks the

conscience of the court that Court will refuse interim injunction in favour

of the registered proprietor of the trade mark.

7. The Division Bench in Maxheal Pharmaceutical considered it as the

"practice of the Court" to grant injunction to the holder of the registered

trade mark. However, there was no sound footing for the Division Bench to

recognize it as a longstanding practice of the Court.

8. Though it is considered as a practice of the Court in granting injunction in

favour of the plaintiff having a registered trade mark, the same cannot be

considered as a total embargo on the power of the court to refuse grant of

interim injunction. In exceptional cases, like that in cases of ex facie illegality, the Court would be justified in refusing to grant interim

injunction.

9. As regards the controversy at hand. The provisions of the Trade Marks Act

1999 are not comparable with the provision of the Designs Act 2000 and

the Patents Act 1970.

In Whirlpool of India Ltd. (supra), the court held that "the fact that

substantial goodwill and reputation inheres in the plaintiff's machines distinctive

shape and get up and/or colour, scheme and/or overall appearance cannot be

disputed. In the period of two years since the plaintiff launched the machine, till

the date of filing of the suit, the plaintiff sold more than 308152 pieces and

enjoyed aggregate sales in excess of 308 crores. Consequently, this is sufficient to

constitute actionable goodwill and/or reputation in so far as the plaintiff's

product is concerned". Accordingly the Court held that the defendants were also

guilty of passing off their goods/products as that of the plaintiff's. Notice of

motion allowed.

In Kemp and Company (supra) it was held that copying of the shape or

design of an article by itself does not amount to passing off. Plaintiff will have to

establish misrepresentation by the defendant suggesting that the goods he is

selling are those of the plaintiff.

In Whirlpool of India Ltd. (supra), the court had held with regard to the

law concerning passing off, that it is not disputed that an action for passing off

will lie to protect the reputation stemming from the shape of good. What is the most important aspect that needs to be considered is if a person who purchases

the defendant's product is likely to be misled into believing that he was

purchasing the plaintiff's product.

In Khemraj Shrikrishandas v. M/s Garg & Co. and Anr. reported at AIR

1975 Del 130, the defendant manufactured underwear which had a similar get

up, layout, design and colour scheme as that of the plaintiff. The court in

granting an interim injunction relied on Rustom and Hornby Ltd. v Zamindara

Engineering reported at (1969) 2 SCC 727 in which it is stated thus :"an action

for infringement is a statutory right and it is dependent upon the validity of

registration and other statutory conditions. On the other hand, the gist of passing

off action is that A is not: entitled to represent his goods as the goods of B. It is

enough that the get up of B's goods has become distinctive of them and there is a

probability of confusion between them and the goods of A. It is not necessary to

prove actual deception, or actual damage, nor to prove the knowledge or intention

to deceive. The court laid down that issue in an action for passing off is "whether

the defendant is selling the goods so marked as to be designed or calculated to

lead the purchaser to believe that they are the plaintiff's goods". On the other

hand, the issue in, infringement action is "whether the defendant is using a mark

which is the same or which is a colourable imitation of the plaintiffs registered

mark."

The Bombay High Court in the case of Thomas Bear And Sons (India) v.

Prayag Narain reported at (1940) 42 Bom LR 734 held that in judging the

probability of deception, the test is not whether the ignorant the thoughtless, or the incautious purchaser is likely to be misled, but we have to consider the

average purchaser buying with ordinary caution.

If the mark of the defendant is not identical, it has to be seen whether the

mark of the defendant is deceptively similar in the sense that it is likely to

deceive or cause confusion in relation to goods in respect of which the plaintiff

got his mark registered. For that purpose, the two marks have to be compared.

In James Chadwick & Bros. Ltd. v. The National Sewing Thread Co.

Ltd. reported at AIR 1953 SC 357, the Supreme Court held that to ascertain

deception between two marks the mark need not be placed side by side, but by

asking itself whether having due regard to relevant surrounding circumstances,

the defendant's mark as used is similar to the plaintiff's mark as it would be

remembered by persons possessed of an average memory with its usual

imperfections, and it has then to be determined whether the defendant's mark is

likely to deceive or cause confusion.

There is no doubt that the etchings or drawings on the rival plates look

similar. The copying of the design is self-evident. All the essential elements of the

trade dress, get up and design of the three plates of the petitioner have been

copied by the respondent no. 1. It is quite apparent that the arrangements of the

twigs, flowers, etc. are the same. The colour combinations are also, to a large

extent, similar.

The shape, get up and overall appearance of the defendant's three products

when compared with the three products of the plaintiff are likely to cause

confusion. Confusion is likely to occur when the goods are sold in pieces and not in boxes. Moreover, publicity materials of the defendant No.1 bears a close

resemblance to the device and overall appearance of the products of the plaintiff

in respect of three marks. However MYSTRIO BLACK of the petitioner is not

similar to ORNATE BLACK of the respondent. The overall getup of the ORNATE

BLACK is significantly different from MYSTRIO BLACK.

If the two items of both brand when placed next to each other, and

compared holistically, excepting ORNATO BLACK, they would appear identical, if

not similar. To a person with average intellect and memory, provided they have

not turned the plate and really tried to find which brand it belonged to which

seems unusual, it would have been difficult for them to associate the plates with

Cello's brand. Cello's newly launched plates have the potential to be deceptively

similar to that of La Opala, and hence prima facie case of Trademark

infringement can be made. Considering that they are so similar, especially

belonging to the same industry, with the mode of purchasing/placing orders also

being the same trade channel common, there is no doubt that there is potential

passing off.

There is another aspect of the matter. It is curious to note that the

defendant filed caveat although no cease and desist notice have been issued by

the plaintiff. It is expected that the plaintiff must have studied the designs

available in the market and found that adoption of the said four designs might

lead to litigation. The adoption of the said marks have been consciously made

knowing fully well that the said four marks have acquired goodwill and

reputation in the market and are prior published designs. The uniqueness and novelty of the design is not a consideration in deciding an action in passing off as

in such an action the plaintiff upon establishing distinctiveness of its product

and establishing a connection of the product with the plaintiff can thwart an

attempt by a rival trader to infringe the said marks, even if the said marks are

registered in favour of a rival trader. The prior user of the said mark together

with distinctiveness of the product coupled with the trinity tests permit a prior

user of the trade mark to jealously protect its mark. Lupin Ltd. (supra) and

other cases cited to show that invalidity of the trade mark even if registered can

be raised in this proceeding would not be available on the ground of

acquiescence. The respondent did not raise any objection after the designs were

published in the journal. The respondents did not file any opposition in the trade

mark registry. It is not being alleged in the affidavit that such registration was

obtained fraudulently. Moreover, as recently held in Patel Field Marshal

Agencies & Anr. (supra), the respondent would have to apply to the appellate

board for rectification. All issues relating to and connected with the validity of

registration have to be dealt with by the tribunal not by the civil court. However,

in all fairness to Mr. Mitra, I must say that the argument of Mr. Mitra is primarily

on the ground that no passing off action lies on the basis of unregistered marks

and in absence of any amendment to the plaint, the plaintiff cannot rely upon

registration of its two device marks in this proceeding.

Therefore, in my opinion, a protection should be granted to the three

marks which have acquired distinctiveness.

On 16th May, 2018, an interim order was passed in terms of prayer (b) of

the notice of motion, which reads:

"An order of injunction be passed restraining the respondents and/or their directors, men, servants, assigns, dealers and/or retailers or franchises from using and/or distributing and/or marketing and/or selling and/or dealing with in the course of trade any products bearing the said trade dress and/or mark as shown in Annexures "M", "N", "O" and "P" respectively, similar and/or identical to that of the trade dress and/or mark of the petitioner as shown in Annexures "E", "F", "G" and "H" respectively or in association with any other packaging in any manner whatsoever."

Accordingly, the interim order passed by the order dated 16th May, 2018

stands confirmed excepting "ORNATE BLACK".

In view thereof, the application being G.A. No.490 of 2018 is allowed.

However, there shall be no order as to costs.

Urgent Photostat certified copy of this judgment, if applied for, be given to

the parties on usual undertaking.

(Soumen Sen, J.)