Tarlok Singh Chauhan, J.@mdashThe plaintiff has filed this suit for permanent injunction against passing off, infringement of copyright, unfair competition, misrepresentation, dilution, delivery-up, damages and rendition of accounts. The contest is primarily between the applicant and the respondent No. 2.
Pleadings of Applicant:
2. The suit is pending trial and along with the suit, the present application has been preferred by the plaintiff-applicant under Order 39 Rules 1 and 2 read with Section 151 of the CPC claiming therein the following reliefs:-
a) Grant ad interim injunction against respondents, their directors, licensees, franchisees, subsidiary/affiliate/group companies, representatives, distributors, agents, contract manufacturers, employees, etc. restraining them from using the GEMCAL product/capsules and packaging thereof, identical/deceptively similar to the above-referred GEMCAL produced and packaging of the Applicant and/or any other mark/representation identical or deceptively similar thereto, as a product/packaging or in any other manner like advertising, website, promotional material, business papers, etc., on or in relation to their goods or business;
b) Grant ad interim injunction against Respondents, their directors, licensees, franchisees, subsidiary/affiliate/group companies, representatives, distributors, agents, contract manufacturers, employees, etc., restraining them from using the slogan "PEARL OF CALCIUM" or any slogan similar to the one used by Applicant viz. "GEM OF A CALCIUM" on or in relation to their GEMCAL or any other product or packaging;
c) Any other such order as the Court may deem fit or appropriate in the facts and circumstances of the case.
2.1. It has been averred that the applicant is aggrieved by the recent launch of respondents'' GEMCAL product whereby they adopted and used the applicant''s renowned and longstanding GEMCAL product and their packaging which has been in use since July, 2000. Such conduct of the applicant constitutes passing off, unfair competition and amounts to infringement of applicant''s copyright. It is claimed that the respondents'' new GEMCAL packaging introduced recently is a complete rip-off of the applicant''s GEMCAL packaging which has been in use since 2000. According to the applicant, the said change in packaging introduced by the respondents has been done with the sole intent to deceive the public at large, ride piggy back on the reputation and goodwill earned by the applicant and is thereby earning illegal profits therefrom. It is claimed that since its inception in 1974, the applicant has evolved to become a pioneer in the formulation segment of the Indian Pharmaceutical Industry covering both the acute and chronic therapeutic segment with a diverse product portfolio in every possible segment in the pharmaceutical industry. The products of the applicant currently are marketed in 35 countries worldwide and its sale, marketing strengths and expertise in brand building are widely recognized as amongst the very best with 14 brands amongst 300 pharmaceutical brands of the country. It is claimed that the world class in-house manufacturing capabilities of the applicant are spread across seven manufacturing facilities in the country with its proficient research and development teams backed by state of the art infrastructure and technology and group of over 300 Research and Development Scientists with exceptional credentials in all fields.
2.2. That the GEMCAL which is primarily for Calcium formulation is being sold in unique prolate spheroidical shaped softgel capsules bearing a distinctive red and yellow colour combination, is the subject matter of the present suit. The applicant conceived and adopted a unique packaging and artwork admittedly comprised of a distinctive red and yellow colour combination and various other artistic features which over the years has become solely identifiable with applicant''s GEMCAL products. All the elements (collectively referred to at several places herein as "GEMCAL trade dress") form the essential features of GEMCAL packaging and have been constantly and consistently used on and/or in relation to GEMCAL products since their launch in July, 2000. As per the applicant, the trade dress of the applicant''s GEMCAL capsules at the time of its launch and the trade dress currently in use in respect of applicant''s GEMCAL capsules have been filed as documents with the plaint and the above trade dress/packaging has been designed by the applicant in-house or around June 2000 prior to the launch of its GEMCAL product in July, 2000. Minor altercations have taken place in the said packaging since the launch of GEMCAL products by applicant in July, 2000 but the main essential features have remained consistent over the years. Accordingly, the applicant is the absolute owner of all rights, title and interest in the copyright in the said artistic work(s). Therefore, the above depicted works i.e. trade dress of applicant are entitled to protection individually and collectively as artistic works and applicant is entitled to take action for infringement of its copyright therein and obtain relief(s) as provided under the Copyright Act, 1957.
2.3. GEMCAL products of the applicant sold under the above-depicted distinctive packaging have achieved continuous and phenomenal growth, reliability, recognition and revenue over the years. Applicant''s commercial success is manifest from its net sales figures for products under the trade mark GEMCAL from 2000 to 2012:-
Filed as documents with the plaint are (i) a list of the above mentioned sales figures duly certified by a certified public accountant and (ii) an illustrative assortment of invoices dating back to the year of launch of the applicant''s GEMCAL product i.e. 2000 till date depicting sales/supply of applicant''s GEMCAL products.
2.4. The applicant''s advertising, promotional and sales strategies constitute a key element in the success of its overall strategy based on innovation, brand recognition and market leadership. Applicant has invested enormous amount of money and efforts in building the brand identity and has aggressively promoted its GEMCAL products through every possible media. As per the applicant, substantial resources have been directed at and the applicant has been successful in reaching out to the members of trade and public with respect to its GEMCAL products. The applicant has a whole range of products selling under the umbrella brand GEMCAL employing similar packaging consisting of all the essential and distinctive features of the above depicted packaging. As per applicant, on account of extensive advertising/publicity, applicant and its products under the trade mark GEMCAL have gained exceptional visibility and recognition globally and in India. The annual promotional expenses incurred by the applicant in respect of its GEMCAL product for the period ranging from its launch in July, 2000, till date duly certified by a chartered account are set out as under:-
Representative material including advertisement for applicant''s GEMCAL products in diverse reputed publications and catalogs, brochures etc. have also been filed as documents with the plaint.
2.5. An earlier suit filed by the applicant claiming permanent injunction to restrain the respondents from using trade mark GEMCAL in relation to the medicinal preparations and passing off its goods was dismissed by the learned Single Bench of the Delhi High Court which decision was reaffirmed by the Division Bench of that Court and the matter is currently pending before the Hon''ble Supreme Court by way of SLP (C) No. 1936 of 2010.
2.6. The respondents had admittedly been manufacturing and marketing its GEMCAL product since November, 2000 in the packaging. The disc shaped chewable tablets not only had a different composition but were also different and distinct in their packaging and get up from the applicant''s GEMCAL capsules available in a distinctive colour combination of red and yellow. As per the applicant, the respondent''s total alleged sales for the product GEMCAL amount to INR 45,691 ranging over the years 2000 to 2003 and the invoices filed by the respondent No. 2 in CS(OS) No. 1926 of 2003 to substantiate the use of the trade mark GEMCAL do not demonstrate any sale of the above depicted GEMCAL tablets beyond January, 2003.
2.7. That in February, 2012, the applicant learnt that the respondents had introduced its GEMCAL product under a completely different packaging or get-up which was a complete rip-off of the applicant''s packaging in respect of its GEMCAL products widely used and available in the market in its present form since October, 2009, with the sole intent of sailing as close as possible to the applicant''s GEMCAL product and making illegal gains therefrom. Samples of the impugned packaging including the outer cartons thereof have been filed as documents with the plaint. The applicant has given the following details with respect to the packaging of the products adopted by the parties from time to time:-
2.8. That the GEMCAL product recently launched by the respondents in the impugned packaging creates huge barriers to the applicant''s ability to legitimately conduct, expand and capitalize on their business and adversely affects and impacts their business as also underscores and has an adverse and negative impact on their promotional activities. As per the applicant, respondents'' GEMCAL packaging is almost identical to and/or substantial representation of the well established packaging and trade dress of applicant''s GEMCAL products and the said packaging has been introduced by the respondents with the sole intent to ride piggy back on the goodwill and reputation built by the applicant in respect of its GEMCAL product. A bare glace at applicant''s and respondents'' GEMCAL products, depicted above, clearly establishes the stark identity between the two. It is further claimed that the representations above clearly show that the respondents have brazenly copied the applicant''s trade dress in its entirety including but not limited to the signature red and yellow colour combination of the capsules and the packaging. The composition of the respondents'' earlier tablets was different and now has been changed to make the same identical to applicant''s capsules i.e. it has included Calcitriol and Zinc in the composition and changed the nature of its medicines from tablets to prolate spheroidical shaped capsules. As per the applicant, dishonesty of the respondents is further established by the fact that the nature of respondents'' strip is identical with trade mark GEMCAL embossed twice on the silver foil bearing 15 capsules as opposed to the earlier strip which had only 10 tablets. In order to sail as close to the applicant''s products, the respondents have re-priced their medicines which were earlier selling at Rs. 14/- and now are marked for sale at the same price as the applicant''s capsules i.e. Rs. 160/-. The applicant has claimed that the earlier packaging of respondents'' GEMCAL product had none of the corresponding features/colours and respondents have completely changed its earlier medicine composition and the packaging in respect thereof to render it a slavish imitation of applicant''s GEMCAL packaging thereby infringing upon applicant''s common law rights as well as copyright in the artistic work(s) and indulging in acts of passing off.
2.9. The cartons of applicant''s and respondents'' GEMCAL products which bear the strips are identical having the same colour combination of red, yellow, blue and white with GEMCAL appearing in lower case in red and blue. Even the slogan appearing just above the trade mark GEMCAL on respondents'' outer carton "THE PEARL OF CALCIUM" is a slavish imitation of the applicant''s slogan viz. "THE GEM OF A CALCIUM" done with the sole intent to deceive. Lastly, it is claimed that the applicant''s marks/logos/trade dress/colour scheme/layout are exclusively identifiable with the applicant, apart from being well known marks and use of the same deceptively by any other party in respect of any class of goods whatsoever without the permission or authorization of the applicant constitutes passing off of such goods or business or services as that of the applicant.
Reply by Respondent No. 2:
3. The respondent No. 2, on the other hand, contested this application by filing reply wherein it raised preliminary objections regarding territorial jurisdiction of this Court to try and entertain the present suit as well as application, no cause of action (fresh cause of action not being there in favour of the applicant), concealment of material facts, maintainability of suit, constructive resjudicata etc. On merits, it has been claimed that when the defendants/respondents expanded its range of products in February, 2012, the plaintiff-applicant has already withdrawn and apologized to the defendants-respondents for having indulged in illegal acts of misleading the public and trade and that no cause of action survives for filing the present suit. It has denied that the packaging and the overall appearance is identical. In fact, it is claimed that the defendant No. 2 has complete rights in the word "GEMCAL" as it is the prior adopter and prior user of the same. It has further been denied that the acts of the defendants/respondents constitute passing off, unfair competition or infringement of copyright and that that the defendant''s product packaging is a rip-off. There are no motives that can be attributed for the change in the packaging and the packaging of the tablets is not under question. The defendant claims that it is selling tablets under the mark GEMCAL also and the expansion of the range of products under the mark GEMCAL is a natural expansion. The defendant further claims that it has adopted its own mark and its own unique packaging for the same and the applicant cleverly concealed that the entire market uses the same colour combination, trade dress and colour.
3.1. The respondents denied that the red and yellow is distinctive of the applicant and that the softgel capsules are distinctive of the applicant, almost all the manufacturers use the same colour combination especially for softgel capsules. It is further denied that the packaging and art work is unique, no original art work has been produced by the applicant to claim copyright and even the owner''s name who has created this art work is not mentioned. As per respondents, in absence of name of author of the original art work, assignment of the author in favour of the applicant and name of agency, if any, which created this art work, no plea of copyright is maintainable. It is also denied that there is any trade dress which can be called as GEMCAL trade dress. The trade dress, if any, is common to the formulation of Calcitriol, Calcium Carbonate, Zinc and the same is not unique to the applicant''s products and packaging. It is denied that the said trade dress was launched in July, 2000.
3.2. The respondents have further denied that the trade dress has been in use by the applicant and further no documentary evidence has been filed in support of the same and it is also denied that the packaging designed in June, 2000 prior to the launch in July, 2000. The defendant No. 2 is the prior user of GEMCAL in the year 1999 itself. It is denied that though minor altercations have taken place but the main features remained the same. It is also denied that the applicant has all rights in the copyright of the artistic work and it is stated that first owner of the copyright is the author. In the absence of the name of author or any particulars thereof, even the plea of copyright, according to the respondents, is not liable to be accepted. It is also denied that the defendant/respondent is liable for any infringement of copyright as there is no evidence placed on record of any author.
3.3. The packaging of the applicant is neither distinctive nor it is associated only with the applicant. The sale figures of the applicant and the amount invested by the applicant are also denied. It is stated that all of the products sold under the name are not softgel capsules and the applicant has concealed the material facts from the Court. As per the respondent, the applicant has a range of products under the trade mark GEMCAL including tablets, capsules, growth suspension, nasal sprays, syrups etc. and the sales do not relate only to softgel capsules and the sales and advertising expenses are misleading in nature. The defendants/respondents denied making any false representation of having any affiliation/nexus with the applicant. The defendant/respondent has its own network of dealers and distributors and does not need any affiliation with the applicant and the defendant/respondent reserves its right to take appropriate action against the applicant against any illegal acts.
Arguments of Applicant:
4. The learned Senior counsel for the applicant argued that for grant of temporary injunction three factors are essential namely prima facie case, balance of convenience and irreparable loss and injury which all have been established by the applicant. He also contended that the respondents have completely changed their earlier medicine composition and packaging to render it an imitation of the applicant''s GEMCAL packaging thereby infringing upon applicant''s common law rights as well as copyright in the artistic works and indulging in acts of passing off. Not only this, the cartons of applicant''s and the respondents'' GEMCAL products which bear the strips are identical having the same colour combination of red, yellow, blue and white with GEMCAL appearing in lower case in red and blue. Even the slogan appearing just above the trade mark GEMCAL on respondents'' outer carton "THE PEARL OF CALCIUM" is a slavish imitation of the applicant''s slogan firstly "THE GEM OF A CALCIUM" which has been done with sole intent to deceive. He has claimed that the applicant''s marks/logos/trade dress/colour scheme/layout are exclusively identifiable with the applicant''s product GEMCAL.
5. It is contended that the trade dress in its entirety has been copied by the respondents and, therefore, the respondents deserve to be injuncted and in support of his plea, he has placed reliance upon
1. This is an application under 0.39, Rr. 1 and 2 of the Civil P.C. in a suit for injunction restraining defendants from using in relation to their product ''carton'' and ''tube'' pertaining to Cosmo Turmeric Vanishing Cream'' and/or any other ''carton'' or ''tube'' which is deceptively similar to plaintiffs'' carton and tube pertaining to "Vicco Turmeric Vanishing Cream" so as to pass off their goods a, the goods of the plaintiffs, for recovery of rupees one lakh as damages and also to deliver tip for ''destruction all designs, blocks, tubes, cartons etc. used in the manufacture of carton and tube deceptively similar to the carton and tube of the plaintiffs.
6. The, plaintiffs allege that they have been manufacturing and marketing since 1965 vanishing cream containing turmeric and sandal-wood, an ayurvedic preparation, under the name of Vicco Turmeric Vanishing Cream'' which improves natural health of the skin, adding luster to the complexion, for men, an ideal after shave cream, and effective in boils and pimples that the products of the plaintiffs including said cream have become popular all over the country. The plaintiffs have been marketing said cream in collapsible tubes of three different sizes namely small, medium, and economy packed in appropriate cartons. The ''carton'' has an attractive, distinctive get up and colour scheme, i.e., red background with yellow floral design and printing in white letters. On two sides of the carton there are floral designs with the words ''Vicco Turmeric'' in first line, words ''Vanishing Cream'' in the second line, and words ''An Ayurvedic Preparator in the third line. On the third side of the carton there is floral design with the words ''manufactured in India by'' printed in the first line and the plaintiffs'' name and address in the second and third line. On the fourth side of the carton the uses of the said cream are mentioned. As regards the ''tube'' containing the said turmeric Vanishing cream, the plaintiffs, allege that it has also a distinctive get-up. The collapsible tube has red background with floral design in yellow colour. On one side of the tube the words ''Vicco Turmeric'' are written and below that appear the words ''Vanishing Cream'' in yellow colour letters. On the reverse side of the tube the material similar to the material on the fourth side-of the carton is printed in dark yellow colour. The cap of the tube is yellow and the tube has a Yellow strip in the bottom. A specimen of The carton and the tube is marked as annexures A and A-1, which they allege have been used by them since April, 1975 for selling their turmeric vanishing cream, and the total sales since April, 1975 up to Dee, 1977 are of Rs. 1,77,31,377/-. The plaintiffs allege that by reason of sales and publicity their product has become popular in the market and by reason of distinctive get-up and colour scheme, the tube and the carton have come to be associated by the trade and the members of the public as the product of the plaintiffs exclusively, that they have spent an aggregate sum of Rs. 55,53,069.00 towards the publicity expenses from 1st April, 1975 to 1st Dec. 1977, in advertising through the media of radio, television and film.
7. In Nov. 1977, the plaintiffs learnt that the defendants had begun marketing a vanishing cream in cartons and tubes which are a colourable imitation of the plaintiffs'' cartons and tubes, that Shri S.L. Jain proprietor of the defendant firm having factory and office at Community Centre, Phase-II, Ashok Vihar, Delhi has fraudulently flooded the markets including Delhi with imitation cartons and tubes with a view to trade upon the reputation of the Plaintiffs product. The defendants'' carton has also a red background and has floral design in yellow colour identical with the plaintiffs'' floral design. On two sides of the carton the words "Cosmo Turmeric'' are printed in white and below them ''Vanishing Cream'' is printed. The letters used in white printing are also similar. On the third side of the carton the defendant''s name and details regarding manufacturing license and price are printed in white. On the fourth side of the carton the words "Cosmo Turmeric Vanishing Cream improves the natural health of the skin, adding luster to the complexion. For men, an ideal after shave cream" are printed in white. The defendants" tube has also the get-up and colour scheme identical with that of the plaintiffs. The tube has a red/orange background with a yellow floral de sign. On one side of the tube the words ''Cosmo-Turmeric'' are printed in yellow colour and below them appear the words ''Vanishing. Cream'' also in yellow colour. On the reverse side of the tube the material appearing on the fourth side of the carton is printed 1-4 the same colour scheme and in the same manner as that of the plaintiffs. The cap of the defendants" tube is also yellow and there is a strip in yellow colour at the-bottom of the defendants'' tube. A specimen of the defendants carton and the tube are marked as Exs. C and C-1.
8. The plaintiffs allege that the defendants have fraudulently adopted the tube ''and carton which are identical with or are a colourable imitation of the plaintiffs tube and carton, that they are deceptively similar and they have adopted the said carton and the tube with a view to pass off their goods as and for the goods of the plaintiffs, that by reason of the acts of passing off already committed by the defendants they have caused loss and damage to the plaintiffs both in business as well as reputation in trade and that the loss to the plaintiffs'' reputation cannot be easily calculated in terms of money, that the defendants have imitated the get-up, colour combination and the description of the plaintiffs'' product in order to cause confusion and deception and to cam profits in an illegal manner. The plaintiffs further state that the defendant impugned product is of a recent origin, and if the defendants are not restrained from-carrying on their illegal trade active. Ties the plaintiffs would suffer a great hard ship.
13. The plaintiffs claim passing off by the defendants of their product as and for the product of the plaintiffs on the basis of copy of the distinctive get-up and colour scheme of the collapsible tubes and the cartons by them. The defendants are not entitled to represent their goods as being the goods of the plaintiffs. The two marks ''Vicco'' and ''Cosmo'' used by the plaintiffs and defendants, respectively are no doubt different and the mark ''Cosmo'', by itself is not likely to deceive but the entire get-up and the colour scheme of the tube and the carton adopted by the plaintiffs and the defendants are identical in every detail and are likely to confuse and deceive the customer easily The get-up and the colour scheme of the plaintiffs adopted in every detail by the defendants for their tube and carton cannot be said to have been adopted by the defendants unintentionally. Further the defendants allege that they started selling their product in the carton and tube in question from Nov, 1977 while the Plaintiffs have been selling their product in the said carton and the tube since April, 1975. The suit was originally filed in Feb. 1978 at Bombay and ex parte injunction was granted on 29th Aug. 1978. The plaintiffs are prior users of their product in the carton and the tube.
14. For the grant of a temporary injunction three facts are essential, namely, to Prove prima facie case, the balance of convenience between the parties and the irreparable injury likely to he caused in case the injunction is not granted. The plaintiffs have prima facie proved the case that they have been selling their product in the carton and the tube in question with distinctive get-up and colour scheme since April, 1975, while the defendants started selling their product in Nov. 1977 in the tube and the carton which prima facie appear to be copies of the entire getup and the colour scheme adopted by the plaintiffs. The tube and the carton with the get-up and colour scheme have come to be associated by the trade and members of the public as the product of the plaintiffs the plaintiffs have also sold their product of the value of Rs. 1,77,31,377/- during the period April 1975 to Dec. 1977. The plaintiffs are the reputed ''Manufacturers of the turmeric cream since 1975. The defendants have put their product in the market only from Nov. 1977 and they have not disclosed the value of their sales, meaning thereby that the sales of the defendants are negligible. It appears that it would be proper if the defendants at this stage are restrained from passing off their product in the tube and the carton which are deceptively similar to the tube and the carton-adopted by the plaintiffs since April, 1975. It would be in the interest of the defendants also to adopt their own get-up for tube and the carton for the sale of their product. The plaintiffs are likely to suffer irreparable injury if the defendants are allowed to use to similar carton and the tube identical with get-up and colour scheme adopted by the plaintiffs. The injunction will not result in any hardship to the defendants if they at this stage can adopt any other carton and the tube with different get-up and colour scheme. The balance of convenience is in favor of the plaintiffs.
6. To the similar effect is the judgment of the Hon''ble Madras High Court in Castrol Limited & Another versus O. Murali Dhar Reddy and others 2001(21) PTC 134 (Mad), wherein it has been held as under:-
11. It is pertinent to state that the logo and colour scheme of the two containers are identical in all respects. A cursory look of the containers/cartons of the two companies are almost similar and, as such, there is every possibility for an unwary purchaser to mistake one product as the product of another. No doubt, the respondents have taken a stand that they have completely changed the logo as well as the colour scheme and instead of tins, only plastic containers are used. These plastic containers are also produced before the Court for the purpose of comparison and a look at the same indicates that they are completely different from the containers of the applicants. However, this has been done either immediately prior to the filing of the suit or after filing of the suit. Whatever said and done, the containers produced by the applicants relating to the respondents are identical in colour scheme and get up and, as such, there is prima facie material to come to the conclusion that the respondents have infringed the copyright of the artistic work of the applicants and they have also passed off their goods as that of the applicants. Simply because the logo and the colour scheme have been now changed or modified, it cannot be concluded that the applicants have no prima facie case and the balance of convenience is not in their favour. It is quite probable that the respondents have come forward with a change, only to avoid passing off the goods. It is always possible for the party to change the colour scheme and get up for the time being and after disposal of the case, there is every possibility that the same party may use the same colour scheme and get up. By this act, it would only lead to multiplicity of proceedings and, as such, in order to avoid the same, I am of the view that it is just and necessary that an order has to be passed in favour of the applicants. Further, more, when the applicants have produced their containers and also the containers of the respondents prior to the filing of the suit, it is crystal clear that they are identical in colour scheme and get up and, hence, I am of the view that the respondents have to be restrained from infringing the same. Hence, this point is answered accordingly.
7. Reliance is also placed on the following observations from the judgment in
(9) Having noticed the principles which have to be borne in mind, the application thereof is not difficult in the present case. It is true that there is a phonetic difference between the numerals ''1001'' and ''9001'' but taking into account the entire get-up, the combination of colours it will be noted that the essential features of plaintiff''s containers have been absolutely copied-The entire scheme of the containers is also the same. There is a common large circle, with the same colour-scheme and with the same background. There is the same description of Superior White on top and Zinc paint on the bottom in the circle. Again, the white circle with grey lettering is identically super-imposed on violet background. The only difference is that instead of white parallelogram shapes on top and base borders there are white triangles and on the white parallelograms instead of numeral 1001'' in grey lettering, the numeral on the defendant''s container is ''9001'' but the overall effect is just the same. The commodity is such that it is likely to be purchased by customers from all strata of Society including the petty ''Karkhandars'' and contractors.
(13) As stated earlier, instead of receiving any satisfactory answer, I received no answer from the defendants to the plain question as to why they wished to mark their goods in violet grey and white. The only answer which I could suggest to myself was that they have adopted the colour-scheme in order to attract to themselves some part of plaintiff''s good-will and trade on their reputation and in fact to represent to public that their goods are the goods of the plaintiff. This is exactly a classic case of ''passing off''.
8. It has further been contended that it is the overall impression which customers would get which would determine the action of passing off. According to him, if unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for a longer period by way of getting the goods in a container having particular shape, colour combination and get up, it would amount to passing off. For this purpose, the learned counsel for the applicant has placed reliance upon
52. It is the overall impression that customer gets as to the source and origin of the goods from visual impression of colour combination, shape of the container, packaging etc. If illiterate, unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for longer period by way of getting the goods in a container having particular shape, colour combination and getup, it amounts to passing off. In other words if the first glance of the article without going into the minute details of the colour combination, getup or lay out appearing on the container and packaging gives the impression as to deceptive or near similarities in respect of these ingredients, it is a case of confusion and amounts to passing off one''s own goods as those of the other with a view to encash upon the goodwill and reputation of the latter.
53. The plaintiffs have succeeded prima facie in showing from the look of trade dress of the two articles, one manufactured by the plaintiff and another by the defendant from the point of view of not only unwary, illiterate customer/servants of the household but semi-literate also as the trademarks "Colgate" and "Anchor" are written in English language cannot be distinguished by ordinary customer of a country where bare literacy level is abysmally low. There is every likelihood of confusion as to the source on account of the similarity of substantial portion of the container having particular colour combination and also shape of the container which alone helps in determining the allegations of passing off despite stripes in the same colour or in different colour. The criteria is the overall impression from the look of packaging/container containing the goods and articles that can legitimately injunct its rival. Such an action on the part of infringing party also has an element of unfair competition.
54. May be, no party can have monopoly over a particular colour but if there is substantial reproduction of the colour combination in the similar order either on the container or packing which over a period has been imprinted upon the minds of customers it certainly is liable to cause not only confusion but also dilution of distinctiveness of colour combination. Colour combination, get up, lay out and size of container is sort of trade dress which involves overall image of the product''s features. There is a wide protection against imitation or deceptive similarities of trade dress as trade dress is the soul for identification of the goods as to its source and origin and as such is liable to cause confusion in the minds of unwary customers particularly those who have been using the product over a long period.
59. Conscious imitation or substantial imitation of colour combination or get up or lay out of container again bares the design of the defendant in causing confusion in the minds of customers. 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.
9. It is further argued that the overall visual impression forms the colour scheme, the arrangement of the mark, the style of writing of the mark, the general get up and trade dress leads to the conclusion that there is clear attempt on the part of the respondents to pass off their goods as that of the applicant''s goods and thus the test of passing off is clearly satisfied. For this purpose, the learned counsel for the applicant placed reliance upon
77. The overall visual impression from the colour scheme, the arrangement of the mark, the style of writing of the mark, the general get-up and trade dress leads to the conclusion that there is a clear attempt on the part of the defendants to pass off their goods as that of the plaintiff and, thus, the test laid in Parle Products (P) Ltd.''s case (supra) is clearly satisfied. The ingredients of a passing off action have been very succinctly set out in Yves St Laurent Parfums''s case (supra), which sets out that a misrepresentation need not to be crass, but may involve a complex mechanism of misrepresentation. Thus, the representation may operate in a number of ways, no single one of which may be compelling but a combination of which is effective. This is the position in the present case. One only needs to look at two products side by side to see the striking similarity in various combination of factors. It is the overall impression that a customer gets to the source and origin of the goods from visual impression of colour combination, packaging and the get-up, which is of relevance and if an unwary and gullible customer gets confused, it amounts to a passing off as set out in Colgate Palmolive Co. Ltd.''s case (supra). No doubt, there is no monopoly in colour combinations, but what is relevant in the present case is that there is substantial reproduction of the colour combination in a similar pattern in each packet and there are similar six series of packets. The defendants being the second comers owed a duty to name and dress their product in such a manner as to avoid all likelihood of consumers confusing it with the product of the first comer [Harold F. Ritchie, Inc.''s case (supra)].
78. A result of the comparison of six containers shows that there is similarity in colour pattern, phonetic similarity in the trade-name, the use of colours in a particular pattern-whiteness towards the centre and again darker colour at the base and the top, writing on Devnagri and other scripts in a similar fashion, which leaves little doubt about the motive of the defendants. The packaging is identical and so is the pricing. If all these factors are taken into account, I have no doubt that the clear object of the defendants was to deceive the unsuspecting customers, who come from various stratas of society and are not a discerning customers.
10. The learned counsel for the applicant contends that its products had a distinctive spheroidical shape which was distinctive to the respondents'' product and has been capriciously adopted by the respondents which makes the discerning a difficult task which is likely to lead to the possibility of a deception. For this purpose, the learned counsel for the applicant has relied upon
22. The test is whether the shape that has been adopted by the Plaintiff is one that is adopted capriciously, purely to give the article a distinctive appearance or characteristic of the goods of the manufacturer. If that be so, the manufacturer may be able to establish that he has a reputation and goodwill in the distinctive appearance of the article itself which would furnish a cause of action in passing off. In a judgment of the Division Bench of this Court in
24. The submission of the Defendant is that because the purchasers of the Plaintiff''s product are educated and affluent, they have within them a discerning capacity which renders the possibility of a deception unlikely. The submission involves a basic fallacy. The fallacy lies in assuming that while those who are educated or affluent have the ability to discern, since they have higher disposable incomes, persons who do not belong to that category are more likely to be deceived. Gullibility as a trait of human character does not necessarily possess social or economic attributes. The ability of a consumer to discern is not necessarily relatable to social class or economic status and to make such an assumption would lead the Court to an unwitting stereotype. At least the Court must not accept such stereotypes. An ordinary consumer with a lower disposable income may well be concerned, as much as a consumer of high end products is, about the quality of what she consumes. But the point which has been urged before the Court is that an unwary consumer of low priced, fast moving consumer goods is more likely to be deceived than a purchaser of a premium commodity. The inference sought to be drawn is that passing off is more likely in the former and improbable in the case of the latter. Stretched to its logical conclusion, the submission of the Defendant would lead to a result where the remedy in passing off becomes available only in respect of goods which the average consumer purchases for the daily necessities of life. For, it is the submission of the Defendant that it is in the case of such goods that the consumer makes a decision to purchase without a careful and discerning mind. The remedy in passing off would be rendered illusory if such an argument were to be accepted. The law has not restricted the remedy only in relation to goods of a particular nature or quality but across the spectrum of trade and business. As contemporary experience shows goods and services across the spectrum are subject to imitation and piracy. The protection of the remedy in passing off is as much available to a manufacturer who invests capital, time and ingenuity in producing premium goods or services or those styled as fast moving consumer goods. The Court will not readily assume that because consumers of premium goods and services have higher disposable incomes or, as the Defendant states are educated, that the likelihood of deception is minimal. If the law were to accept such a position, it would only open a pathway for deceit. Less than honest competitors in business would carefully grind away at the features of an existing mark with an established reputation so that eventually nothing will be left of the uniqueness of the mark. The protection of intellectual property will be a writ in sand if such a submission is accepted. The class of purchasers is undoubtedly a relevant consideration, but the Court must have due regard to all the relevant circumstances including that.
11. The learned counsel for the applicant has strenuously argued that with the lapse of time the applicant has acquired reputation and goodwill which has become its property and, therefore, deserves to be protected by this Court. The respondents, therefore, cannot be permitted to imitate its product and thereby cause injury to its business. He further argued that the law does not permit anyone to carry on his business in such a way to persuade the clients and customers in believing services and goods belonging to someone else or associated therewith. In fact, he contended that it does not matter whether the latter person does so fraudulently or otherwise. In support of such arguments, he placed reliance upon
10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.
11. Salmond & Heuston in Law of Torts (Twentieth Edition, at p.395) call this form of injury as injurious falsehood and observe the same having been awkwardly termed as passing off and state:-
The legal and economic basis of this tort is to provide protection for the right of property which exists not in a particular name, mark or style but in an established business, commercial or professional reputation or goodwill. So to sell merchandise or carry on business under such a name, mark, description, or otherwise in such a manner as to mislead the public into believing that the merchandise or business is that of another person is a wrong actionable at the suit of that other person. This form of injury is commonly, though awkwardly, termed that of passing off ones goods or business as the goods or business of another and is the most important example of the wrong of injurious falsehood. The gist of the conception of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about themselves which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders.
12. In Oertli Vs. Bowman (1957) RPC 388, (at page 397) the gist of passing off action was defined by stating that it was essential to the success of any claim to passing off based on the use of given mark or get-up that the plaintiff should be able to show that the disputed mark or get-up has become by user in the country distinctive of the plaintiffs goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get up will be understood by the trade and the public in that country as meaning that the goods are the plaintiffs goods. It is in the nature of acquisition of a quasi-proprietary right to the exclusive use of the mark or get-up in relation to goods of that kind because of the plaintiff having used or made it known that the mark or get-up has relation to his goods. Such right is invaded by anyone using the same or some deceptively similar mark, get-up or name in relation to goods not of plaintiff. The three elements of passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff. In our opinion, the same principle, which applies to trade mark, is applicable to trade name.
13. In an action for passing off it is usual, rather essential, to seek an injunction temporary or ad-interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para 16.16) passing off cases are often cases of deliberate and intentional misrepresentation, but it is well-settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing Off (1995 Edition, at p.3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendants state of mind is wholly irrelevant to the existence of the cause of action for passing off (ibid, paras 4.20 and 7.15). As to how the injunction granted by the Court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiffs distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name. (Kerly, ibid, para 16.97).
14. In the present case the plaintiff claims to have been running his business in the name and style of Muktajivan Colour Lab and Studio since 1982. He has produced material enabling a finding being arrived at in that regard. However, the trial court has found him using Muktajivan as part of his business name at least since 1995. The plaintiff is expanding his business and exploiting the reputation and goodwill associated with Muktajivan in the business of Colour Lab and Photo by expanding the business through his wife and brother-in-law. On or about the date of the institution of the suit the defendant was about to commence or had just commenced an identical business by adopting word Muktajivan as a part of his business name although till then his business was being run in the name and style of Gokul Studio. The intention of the defendant to make use of business name of the plaintiff so as to divert his business or customers to himself is apparent. It is not the case of the defendant that he was not aware of the word Muktajivan being the property of the plaintiff or the plaintiff running his business in that name though such a plea could only have indicated the innocence of the defendant and yet no difference would have resulted in the matter of grant of relief to the plaintiff because the likelihood of injury to the plaintiff was writ large. It is difficult to subscribe to the logic adopted by the Trial Court, as also the High Court, behind reasoning that the defendants business was situated at a distance of 4 or 5 Kms. from the plaintiffs business and therefore the plaintiff could not have sought for an injunction. In a city a difference of 4 or 5 Kms. does not matter much. In the event of the plaintiff having acquired a goodwill as to the quality of services being rendered by him a resident of Ahmedabad city would not mind travelling a distance of a few kilometers for the purpose of availing a better quality of services. Once a case of passing off is made out the practice is generally to grant a prompt ex-parte injunction followed by appointment of local Commissioner, if necessary. In our opinion the trial court was fully justified in granting the ex-parte injunction to the plaintiff based on the material made available by him to the court. The Trial Court fell in error in vacating the injunction and similar error has crept in the order of the High Court. The reasons assigned by the Trial Court as also by the High Court for refusing the relief of injunction to the plaintiff are wholly unsustainable.
12. It has further been submitted that there may be many infringes of its product. The applicant is not required to hunt for the infringers and go on filing suits at different places throughout the country and the mere fact that the applicant has not instituted suits again, these insignificant infringes are no ground to deny injunction, particularly, when it stands established on record that the respondent is a whole time infringer. For this purpose, he has relied upon
22. As far as the Appellant''s argument that the word MOLA is common to the trade and that variants of MOLA are available in the market, we find that the Appellant has not been able to prima facie prove that the said ''infringers'' had significant business turnover or they posed a threat to Plaintiff''s distinctiveness. In fact, we are of the view that the Respondent/Plaintiff is not expected to sue all small type infringers who may not be affecting Respondent/Plaintiff business. The Supreme Court in
...To establish the plea of common use, the use by other persons should be shown to be substantial. In the present case, there is no evidence regarding the extent of the trade carried on by the alleged infringers or their respective position in the trade. If the proprietor of the FAO (OS) No. 82/2008 Page 13 of 17 mark is expected to pursue each and every insignificant infringer to save his mark, the business will come to a standstill. Because there may be occasion when the malicious persons, just to harass the proprietor may use his mark by way of pinpricks.... The mere use of the name is irrelevant because a registered proprietor is not expected to go on filing suits or proceedings against infringers who are of no consequence.... Mere delay in taking action against the 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. This Court is inclined to accept the submissions of the respondent No. 1 on this point....The respondent No. 1 did not lose its mark by not proceeding against insignificant infringers...
In fact, in
... the owners of trade marks or copy rights are not expected to run after every infringer and thereby remain involved in litigation at the cost of their business time. If the impugned infringement is too trivial or insignificant and is not capable of harming their business interests, they may overlook and ignore petty violations till they assume alarming proportions. If a road side Dhaba puts up a board of "Taj Hotel", the owners of Taj Group are not expected to swing into action and raise objections forthwith. They can wait till the time the user of their name starts harming their business interest and starts misleading and confusing their customers.
13. It is next contended that the respondents deliberately and knowingly have copied the packaging and trade dress of the applicant and, therefore, are required to restrain by way of injunction and in support of such submission, he has relied upon
5. The law on the subject is well settled. In cases of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest.
6. In this case it is an admitted position that the Respondents used to work with the Appellants. The advertisements which had been issued by the Appellants in the year 1991 show that at least from that year they were using the Mark LAXMAN REKHA on their products. Not only that but the Appellants have had a Copyright in the Marks KRAZY LINES and LAXMAN REKHA with effect from 19th of November, 1991. The copyright had been renewed on 23rd of April, 1999. A glance at the cartons used by both the parties shows that in 1992 when the Respondent first started he used the mark LAXMAN REKHA in cartons containing colours red, white and blue. No explanation could be given as to why that carton had to be changed to look almost identical to that of the Appellant at a subsequent stage. This prima facie indicates the dishonest intention to pass off his goods as those of the appellants.
14. Lastly, it is contended that the decisions of the English Courts would be relevant only in a country having high literacy rate and the marks used are in the language which the purchaser can understand. The said decisions cannot apply in India where literacy rate is very low and the people generally do not have any knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same. Therefore, while dealing with the case relating to passing off, one of the important tests which has to be applied in each case would be whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors. In support of such submission, the learned counsel for the applicant has relied upon
33. The decisions of English Courts would be relevant in a country where literacy is high and the marks used are in the language which the purchaser can understand. While English cases may be relevant in understanding the essential features of trade mark law but when we are dealing with the sale of consumer items in India, you have to see and bear in mind the difference in situation between England and India. Can English principles apply in their entirety in India with no regard to Indian conditions? We think not. In a country like India where there is no single common language, a large percentage of population is illiterate and a small fraction of people know English, then to apply the principles of English law regarding dissimilarity of the marks or the customer knowing about the distinguishing characteristics of the plaintiffs goods seems to over look the ground realities in India. While examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same. While dealing with cases relating to passing off, one of the important tests which has to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors. What is likely to cause confusion would vary from case to case. However, the appellants are right in contending that where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law may not be at par with cases involving non-medicinal products. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases life itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health.
Arguments of the Respondent No. 2:
15. On the other hand, learned Senior counsel for respondent No. 2 has contended that the mere fact whether the respondent was allegedly copying the colour of the tablets, shape of the tablets and the packaging which according to the applicant was causing confusion in the minds of the consumers and the medicine of the respondent could be passing off as the medicine of the applicant would not simpliciter entitle the plaintiff-applicant for an injunction. It is next contended that similar colour, shape and packaging of the tablets containing calcitriol calcium carbonate zinc prolate spheroid capsule in red and yellow are available throughout the length and breadth of the country and is being sold by the reputed companies and in support of such contentions proofs of samples have also been annexed by the respondent. It is the specific claim of respondent No. 2 that the applicant can have no monopoly over a particular form of the packaging, colour or shape in medicinal tablets and merely because the applicant had started using particular colour for its tablets, it does not get monopoly over the colour, so that no-one-else can use that colour. She argues that the medicines are not bought by the colours by the customers. There are thousands types of tablets available with chemists for different ailments and no-one goes to the chemist and asks for red, blue, orange, peach or white colour of tablets. All the medicines are purchased on the advise of the doctors and are sold on prescription. Even those tablets readily available without prescription are also known by the names like Crocin, Anacin, Coldarin etc. She further contends that the manufacturers of the medicines do not advertise their products and their tablets by the shape, colour or packaging of the tablets. No person goes to a chemist and asks to give him a tablet of a particular colour for a particular ailment. Neither colour nor shape of a tablet can be associated with any brand much less the brand of the applicant.
16. In support of her submissions, she relies upon
3. It is not the case of the plaintiff that the defendant has copied the trade mark of the plaintiff and was marketing its tablets under the trade mark "NORFLOX 400". It is undisputed that defendant was using generic name of medicine and was within its right to do so. The contention of the plaintiff is that copying of colour of the tablets, shape of the tablets and blister packaging was causing confusion in the minds of the consumers and the medicine of the plaintiff can be passed off as medicine of the defendant.
4. There is no dispute about the fact that the packing shape and colour of the tablets of the plaintiff as well as that of the defendant is similar. The question arises whether plaintiff is entitled to an injunction restraining defendant from marketing its medicine in oval shape orange colour tablets or packing in blister form of packagings. Blister form of packagings of tablets is common and prevalent packaging. It is used in almost for 50% of tablets in the market. Plaintiff can have no monopoly over the particular form of packaging and cannot pray that no one else should pack its medicinal tablets in blister form of packaging.
5. The next issue arises whether defendant can copy the colour of the plaintiff''s tablets and shape of the plaintiff''s tablets. It is settled law that there can be no monopoly over colours. The plaintiff is in the field of manufacturing a wide range of medicines. Plaintiff may colour its tables in any colour starting from violet to red. Merely because plaintiff has started using a particular colour for its tablets plaintiff does not get monopoly over colour so that no one else can use that colour. The medicines are not bought by colours by the customers. There are thousand types of tablets available with Chemist for different ailments. No one goes to a chemist and asks for red, blue, orange, peach or white colour of tablets. All medicines are purchased at the advise of Doctors and they are sold on prescription. Even those tablets readily available without prescription, are known by their names. You will not find any manufacturer advertising his tablets by colour or shape. Even the common brands Crocin, Anacin, Disprin, Coldarin etc. are sold by name and not by shape or colour of the tablets. It is preposterous to believe that a person would go to the Chemist and ask the Chemist to give him tablets of such and such colour for such and such ailments. Neither colour of the tablet can be associated with any brand. Similar is the case of the shape. Shape of the tablets is not associated either with the quality of the tablets or with the nature of medicine. Most of the tablets are made round, oval or cylindrical shape so that they are easy to swallow. It would be very hard to get tablets in the rectangular or square shape in the market unless they are chewing tablets or sucking tablets. It cannot be said that because the shape of the plaintiff tablets and defendant''s tablets being oval, it was going to create confusion in the minds of the customers. The distinctiveness of the medicines is in the name and not in the colour and shape. Even if there has been deliberate copying of similar colour and shape of the plaintiff''s tablets that would not amount to passing off, since colour and shape are not indicative of the drugs neither they are associated with the trade mark. There may be several other tablets of the similar shape and colour available in the market. I am supported in my above view by Rizla Limited v. Bryant and May Limited 1986 RPC 389; Smith, Kline and French Laboratories Ltd''s Cinetidine Trade Mark (1991) RPC 17 Ch. D. Surya Roshni Limited v. Metalman Industries Limited 2001 PTC 777 (Del.);
17. It is further claimed that the patients do not provide only a prescription which they have in their minds not only from the composition of the tablets but also from their source which is known to them and do not purchase medicines by looking at the colour, shape, size, nature of packaging etc. In support of her submission, she relies upon Roche Products Limited and another versus Berk Pharmaceuticals Limited (1973) R.P.C. 473, wherein it has been held as under:-
Dillon, Q.C.-The plaintiffs have a patent for the manufacture of a drug diazepam, a tranquillizer which they sell under the tradename VALIUM. In the year 1972 the plaintiffs sold 246 million little round white tablets with the figure 2 and the word ROCHE in small letters and 286 million round yellow tablets of the same size with the figure 5 and the word ROCHE in small letters containing 2 milligrams and 5 milligrams of the drug respectively. Both tablets have on one side a diametrical score. A similar blue tablet of higher dosage was also sold but in smaller quantities. In October 1971 the defendants obtained a compulsory licence under the patent and proceeded to sell diazepam under the name ATENSINE using identical colours, markings and tablet shapes and sizes except that for the word ROCHE the defendants used BERK.
The second submission. The features are common to the trade. [Russell, L.J. The plaintiffs claim the sole prerogative to use the white round pill in the diazepam field and that field only. In the field of medicine these features are open to the trade. The head note of Payton & Co. Ltd. v. Shelling, Lampard & Co. Ltd. (1899) 17 R.P.C. 48 and Payton & Co. Ltd. v. Titus Ward & Co. Ltd. (1899) 17 R.P.C. 58 at 67. Things common to the trade cannot be distinctive of source, see J.B. Williams Co. v. H. Bronnley & Co. Ltd. (1909) 26 R.P.C. 765 [Russell, L.J.-If the tablets are compounded in layers say half yellow, half green--(not legible)--extrinsic to trade.] The D.D.S.A. case indicates that two colours could be--(not legible)--whereas one was not.
As a matter of policy a trader is not entitled to make part of his property part of the great common of the English language, so here the common ordinary shapes of life cannot be made part of any one person''s property. Yorkshire Copper Works'' Application (1954) 71 R.P.C. 150 (H.L.) referred to in which the Perfection case (1909) R.P.C. 837 was cited.
In this judgment, Whitford, J. made a number of points. He said that it was beside the point that a patient accustomed to receiving DZP the product of the plaintiffs would, on receiving the defendants'' product, think that he was receiving DZP. The first, question in cases of passing off was, he said, whether by reason of the adoption of some particular get-up by the plaintiff the plaintiff has, because of the intrinsic distinctiveness of the get-up adopted, or by reason of use, succeeded in establishing that the particular get-up is a mark of origin of his goods. The question in the present case was whether the plaintiffs are in a position to establish distinctiveness in their particular form of presentation of the tablets in the sense that the appearance of them gave an indication of a source. He remarked that the plaintiffs'' colours were a code to dosage, and that there was no evidence of any conscious effort by the plaintiffs to impress on either professionals or patients the appearance of their three DZP tablets as being the badge of their products. He commented that there was no evidence from any patient that to him the appearance of the plaintiffs'' tablets indicated or suggested one trade source for the medicine, and considered that reported references to requests for the "same again" could not be taken as references to source of the medicine or to more than the nature of the medicament. He stated that small white or yellow pills in the general field of medicaments were quite common.
It was argued for the appellants that the conclusion--(not legible)--, because in the years when the plaintiffs were the sole source of DZP then tablets were the only tablets of this appearance in the tranquillizer field which they said was the only relevant field, and the only relevant consumers, patients with anxiety or stress symptoms in need of tranquillizer treatment. The fact that small white or yellow tablets were a common form of dispensing drugs generally was, they asserted, irrelevant. I consider that that is too simple an approach. It does not by itself answer the question whether the correct conclusion is that the consumer will have formed the opinion that the article has only one provenance. He would not know that there was, because of the patent, only one source of the medicament before the defendants began to manufacture.
It was of course much stressed in argument that there was no ground upon which the defendants could avoid the application to this case of the reasons which particularly led me in the D.D.S.A. case to conclude that the consumer would have attributed a single source to the green and black capsule in that case. There, as here, the defendants indicated that they had chosen the particular appearance to avoid patients raising queries when the same medicament was dispensed (the product of the defendants) with an appearance different from that in which it had previously been dispensed (the product of the plaintiffs). I took the view that there was nothing to suggest that patients would continue to query the matter if it was explained to them that the difference indicated only a difference in source, unless they attached importance to source, and that the defendants'' insistence on the green/black capsule therefore was itself a pointer towards source-identification in patients'' minds of the green and black appearance. But the appearance of the capsule in Hoffmann-La Roche v. D.D.S.A. [1972] R.P.C. 1 case was unique in the field of medicaments (see Dr. Marks'' evidence referred to above and striking, and as such of its nature far more likely to convey to a patient''s mind an impression of one source than the commonplace tablets in the present case. It may seem a narrow distinction, but in the present case it might well be that if the plaintiffs'' tablets had, for example, each been layered in two colours, the result would have been different. On the whole, I conclude that the evidence does not sufficiently establish that the very ordinary appearance of the plaintiffs'' white and yellow DZP tablets has led consuming patients to attribute them--(not legible)--manufacturing trade source of provenance; and unless there be such an attribution, the defendants'' substantial copying of that very ordinary appearance cannot be a representation that their product is the product of the plaintiffs'' or more than a representation that it contains the medicament DZP.
The validity of the defendants'' contention that the get-up is open and common to the trade depends upon whether " the trade" is for this purpose the field of drugs in medicine or the narrow field of tranquillizers. In the wider field, white is the most common colour for tablets, and yellow a fairly common colour. In the narrower field of tranquillizers, until the introduction of ATENSINE, the only small white and yellow tablets were diazepam. For my part, I consider that the proper approach is to have regard only to the field of tranquillizers. It is the mind of the public who are patients wanting a tranquillizer which is of relevance. On that basis, the get-up alleged is not one which is common and open to numbers of persons, it is one peculiar to the plaintiffs."
In the present case Mr. Dillon argues that the evidence establishes (i) that patients who have had little white or yellow tablets as tranquillizers return for the same tablets as they previously had, and (ii) that the plaintiffs alone had produced tablets of that description. Therefore, it is argued, it is shown that patients, in asking for the same tablets, were asking for goods of a particular class or type, and that that class or type is constituted by the plaintiffs'' goods.
The fallacy of the argument, to my mind, is that it assumes from the fact that the patient provides a description that the patient has in mind not only the composition of the tablets but also their source. No doubt patients-particularly patients in need of tranquillizers which have proved to be beneficial-want exactly the same treatment as they had before without change of any sort. It does not necessarily follow, however, that the patients have in mind from the get-up that the tablets emanate from a particular source, albeit not known to them.
18. In furtherance of her such submissions, reliance is placed upon John Wyeth & Brother Ltd. versus M & A Pharmachem Ltd. (1988) F.S.R. 26, wherein it has been held as under:-
This was an interlocutory application for injunctive relief in a passing off action based on get-up. The plaintiffs had for some time sold a tranquillizer, Lorazepam, under the trade mark ATIVAN or latterly, Wyeth''s Lorazepam in two dosage forms: 1 mg (blue) and 2.5 mg (yellow). Both forms were presented as pills of equal size in the shape of small torpedoes. The plaintiffs relief upon a reputation which resided in the ''format'' of their products viz. a combination of colours and shape as giving rise to a distinctive get-up characteristic of their product and of none other. The product was available by prescription only and was sold either in the form of ''blister packs'' or loose, when dispensed by doctors or hospital pharmacists.
19. Further placed reliance upon Parke, Davis & Company versus Empire Laboratories Limited (1964) S.C.R. 351, wherein it has been held as under:-
The plaintiff, a pharmaceutical company, claimed damages from the defendant, also a pharmaceutical company, for infringement of two of its registered trade marks consisting of a grey band encircling a capsule containing "chloramphenicol", and a green band encircling a capsule containing "digitalis". An injunction was also sought to restrain the defendant from selling any pharmaceutical preparations in association with any of the plaintiff''s ten trade marks consisting of different coloured bands for encircling capsules, including the grey and green bands, all of which have been registered in Canada in 1950. The capsule is a small cylindrical gelatine container made up of two halves intended to contain a measured quantity of medicament. The coloured band is placed around the centre of the capsule at the point where the two halves are joined. It is made of the same substance as the capsule itself which it seals. The trial judge dismissed the action. The plaintiff appealed to this Court.
20. It is thereafter argued that even if colour scheme of the two medicines are taken to be the same, it would not entitle the applicant for an injunction as this cannot be held to be a distinctive feature of the applicant''s mark so as to be monopolized exclusively built by the applicant. In support of her submissions, she has relied upon the following observations of the Delhi High Court in
18. This certificate clearly shows that the registration vide trademark registration No. 190279 u/s 10 of the old Act pertains to the word COLGATE in white on a red background. The effect of such a certificate of registration and the averred infringement of that registered mark by the defendants are being considered in this judgment. The mark was limited to the colours red and white as shown in the representation annexed which representation clearly included the word/mark ''COLGATE''. This contradicts the plea of the plaintiff that the registration No. 190279 was limited only to colours red & white. The above registration shows that the word mark shown in the representation annexed was COLGATE. Thus the sentence in Annexure D "The mark is limited to the colours Red & White as shown in the representation annexed hereto" means the mark "COLGATE" limited to Red & White colours and not registration of red & white colour scheme on its own.
Registration of the mark limited to colours ''Red and White'' Along with the mark ''COLGATE'' does give the plaintiff company exclusive rights to such a registered mark but does not necessarily make the red and white colour scheme simpliciter an essential feature thereof. In fact the word ''COLGATE'' inscribed on a Red & White background together with the red and white colour conjointly constitute the essential features of the plaintiff''s trademark. Even the wording of Section 17(1) of the New Act though not applicable directly are instructive and furnish an indication of the current legislative intent. Section 17(1) of the New Act stipulates that when a trade mark consists of several matters, its registration shall confer on the proprietor exclusive rights to use the trade mark taken as a whole. This indicates the legislative intention as expressed in the New Act. In the present case the trade mark as a whole comprises of red and white colour scheme with the word ''COLGATE'' inscribed in a particular white font on a red Page 1655 background. The trade mark in order to avail of the benefit of the effect of registration u/s 17(1) of the New Act must comply with the mandate of the said sub-section and the protection against the infringement of the registered mark is only available to the composite mark. In fact what was sought to be registered and indeed secured protection was the word ''COLGATE'' written in white in a particular font and manner on a red background and not the colour combination of Red & White alone. The red and white colour combination is a widely used colour combination in the dental cream market and cannot be held to be a distinctive feature of the plaintiff mark, so as to be monopolized exclusively by the plaintiffs. In
In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant''s mark is likely to deceive, but where the similarity between the plaintiff''s and the defendant''s mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff''s rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
(underlining and italics supplied)
Relying on the above extracted italicized portion of Durga Dutt''s case beginning from "if the essential feature and ending at would be immaterial", the plaintiff counsel Shri Chandra contended that once any essential feature of the mark was copied/adopted, the other differences in get up, packing, writing of the mark or trade origin would be immaterial in a case of infringement. Thus since red and white colour scheme was an essential feature of the registered mark of the plaintiffs'', its adoption tantamounted to infringement of the plaintiff''s mark by the defendants'' mark irrespective of the other differences.
21. It is next contended that in an action of passing off, the burden of proof lies upon the applicant. She placed reliance upon Oxford Pendaflex Canada Ltd. versus Korr Marketing Ltd. (1982) 1 S.C.R. 494, wherein it has been held as under:-
Tort-Passing off-"Get-up" for product to acquire secondary meaning-Burden of plaintiff-appellant in a passing-off action-Facts not establishing secondary meaning.
Appellant manufactured and sold trays under the name Starmark after acquisition of the Starmark company. The trays have been marketed under several changing names by different companies. On agreement respondent Mitchell Plastics manufactured identical trays for the other respondents who sold them to the public. Appellant having unsuccessfully taken action in tort of passing-off against the respondents in the courts below sought an injunction and accounting in this Court on the grounds that (1) the trial court was misled by confusing the names under which the product was sold with the get-up and design of appellant''s product and (2) the courts required it to prove that " the purchaser of the product associated the get-up of this product with the appellant as its source.
22. In
1. This is an appeal against an interim order passed by the learned Additional District Judge on 23rd March, 2004. By that order, an application u/s 135(2) of the Trade Marks Act, 1999 read with Order 39 Rules 1 and 2 and Section 151 of the Code of Civil Procedure, 1908 filed by the respondent-M/s. Cipla Limited, has been allowed and the defendant, who is the appellant before this Court, has been restrained from manufacturing, selling, offering for sale, advertising or directly or indirectly dealing in "Enflox 400" manufactured in Orange coloured, oval shaped tablets that are packed in blister packs, till the disposal of the respondent''s suit by that court.
2. The case of the respondent/plaintiff before the learned Additional District Judge was that for over 16 years, it has been using the trade mark "Norflox" continuously and exclusively throughout the country on a very large scale and that it had started manufacturing and marketing "Norflox 400" in distinctive, orange coloured, oval shaped tablets since the year 1987. It was claimed that this blister packaging of the plaintiff/respondent containing the distinctive orange coloured, oval shaped tablet constitutes a trade mark, the exclusive right of use of which is reserved to the plaintiff/respondent alone. The plaintiff claimed sales worth hundreds of crores and also claimed to have spent many crores in advertising and promoting this product. The plaintiff contended that on 12th February, 2004, it discovered that the defendant/appellant has launched a similar product with identical oval, orange coloured tablets in blister packs, and that this constitutes passing off. The plaintiff contended that the shape and colour of the tablets produced by the defendant are deceptively similar to its own product and is likely to lead to confusion amongst the purchasing public and the trade, and that it constitutes an unfair attempt on the part of the defendant/appellant to take advantage of the business and goodwill generated by the plaintiff/respondent with regard to sale of this product. On these grounds, the plaintiff had prayed that the defendant be restrained from manufacturing, offering for sale or advertising or directly or indirectly dealing in pharmaceutical preparations FAO 123 of 2004 Page 2 of 7 with orange coloured oval shaped tablets of "Enflox " packed in blister packs till the disposal of the suit by the trial court. Before that court, it was admitted that the drug in question is a schedule "H" drug, meaning thereby, that the preparation cannot be sold except on prescription of Registered Medical Practitioner. The plaintiff however contended that despite this, such drugs are commonly sold without any doctor''s prescription and, therefore, in view of the likelihood of deception due to similar colour, shape and packaging of the tablets, the plaintiff is entitled to interim relief. Before the trial court, it was conceded that there is no challenge to the name adopted by the defendant/appellant and that the same is visually and phonetically different from the name adopted by the plaintiff/respondent. Plaintiff''s case was confined to the fact that the defendant/appellant was selling the drug in a colour, shape and packaging similar to that adopted earlier by the plaintiff/respondent. The plaintiff claimed that since the matter involves a medicinal preparation, therefore, similarity and likelihood of the one being mistaken for the other must be more readily inferred in the interest of the consuming public. Agreeing with the plaintiff, the learned Additional District Judge has taken the view that even though the law requires that this product can only be sold under the prescription of a Registered Medical Practitioner, however, ".... this fact alone is not sufficient to prevent confusion which is otherwise likely to occur". According to learned Additional District Judge, since a large percentage of the population is illiterate, confusion between the two products is possible, and keeping in mind that medicinal products are involved, even a lesser possibility of confusion is enough to grant an injunction. The learned trial court has concluded that this is a case of passing off and even if no confusion or deception may be caused to the dealer or the stockists, unwary purchasers might still be deceived. The contention of the defendant/appellant that various other manufacturers are also using similar orange coloured oval shaped tablets in blister packs for their drugs was not considered worthy of any merit by the learned ADJ in deciding the issue.
4. The aforesaid case of CIPLA Ltd. (supra) is directly on the point and squarely covers the issue that has arisen for decision in this appeal. The said suit was instituted by M/s. Cipla Ltd. who happens to be the respondent in this appeal. There, M/s. Cipla Ltd. had moved an application under Order 39 Rules 1 and 2 CPC seeking an interim injunction to restrain one M/s. M.K. Pharmaceuticals from marketing and selling "Norfloxacin" under its generic name because the tablets offered for sale by M/s. M.K. Pharmaceuticals happened to have the same colour, shape and packaging as that of "Norflox" sold by M/s. Cipla. In the instant case also, M/s. Cipla have mounted the same challenge on the same grounds against M/s. Ranbaxy Laboratories Ltd. i.e. the appellant before this Court. In the case brought by M/s. Cipla against M/s. M.K. Pharmaceuticals, this Court concluded that although undisputedly the packaging, shape and colour of the tablets of the plaintiff as well as the defendant is similar, however, in view of the fact that blister form of packaging of tablets is a common and prevalent type of packaging used for 50% of the tablets in the market, the plaintiffs can have no monopoly over a particular form of packaging and cannot pray that no one else should offer its medicine in that fashion. With regard to the colour and shape of the tablets, this Court had stated as follows:-
5. The next issue arises whether defendant can copy the colour of the plaintiff''s tablets and shape of the plaintiff''s tablets. It is settled law that there can be no monopoly over colours. The plaintiff is in the field of manufacturing a wide range of medicines. Plaintiff may colour its tablets in any colour starting from violet to red. Merely because plaintiff has started using a particular colour for its tablets plaintiff does not get monopoly over colour so that no one else can use that colour.
The medicines are not bought by colours by the customers. There are thousand types of tablets available with Chemist for different ailments. No one goes to a chemist and asks for red, blue, orange, peach or white colour of tablets. All medicines are purchased at the advise of Doctors and they are sold on prescription. Even those tablets readily available without prescription, are known by their names. You will not find any manufacturer advertising his tablets by colour or shape. Even the common brands Crocin, Anacin, Disprin, Coldarin etc. are sold by name and not by shape or colour of the tablets. It is preposterous to believe that a person would go to the Chemist and ask the Chemist to give him tablets of such and such colour for such and such ailments. Neither colour of the tablet can be associated with any brand. Similar is the case of the shape. Shape of the tablets is not associated either with the quality of the tablets or with the nature of medicine. Most of the tablets are made round, oval or cylindrical shape so that they are easy to swallow. It would be very hard to get tablets in the rectangular or square shape in the market unless they are chewing tablets or sucking tablets. It cannot be said that because the shape of the plaintiff tablets and defendant''s tablets being oval, it was going to create confusion in the minds of the customers.
The distinctiveness of the medicines is in the name and not in the colour and shape. Even if there has been deliberate copying of similar colour and shape of the plaintiff''s tablets that would not amount to passing off, since colour and shape are not indicative of the drugs neither they are associated with the trade mark. There may be several other tablets of the similar shape and colour available in the market. I am supported in my above view by Rizla Limited v. Bryant and May Limited 1986 RPC 389; Smith, Kline and French Laboratories Ltd''s Cinetidine Trade Mark (1991) RPC 17 Ch. D. Surya Roshni Limited v. Metalman Industries Limited 2001 PTC 777 (Del.);
5. The above decision deals with the same product of the plaintiff/respondent. It also deals with an identical grievance, albeit regarding another manufacturer. There, the manufacturer was M/s. M.K. Pharmaceuticals. Here, the manufacturer is the appellant-M/s. Ranbaxy Laboratories Ltd. There is no other difference. The issue in this appeal is thus squarely covered by the ratio of the decision in the aforesaid judgment of M/s. Cipla Limited (supra). Consequently, the interim order passed by this Court on 21st April, 2004 is made absolute and the impugned order dated 23rd March, 2004 passed by the learned Additional District Judge is set aside. The appeal is accordingly allowed.
23. Reliance has also been placed on the judgment of Bombay High Court to contend that it has not been shown by the applicant that it is the originator of the design, colour, name of the medicine nor it can claim any exclusiveness regarding packaging thereof. If that be so, the applicant itself has imitated, copied or adopted the name, colour scheme, design, pattern of label, packaging etc. and, therefore, is not entitled to an injunction and has relied upon the following passages from
2. The appellant filed suit against the present respondent stating that it is carrying on business of manufacturing and sale of country liquor since 1975 and since then it is using Tiger head as its monogram. It is the case of the appellant that the said monogram is printed not only on its product but on its stationery, printing material, calendars etc. In 1992 appellant manufactured country liquor under the name "Santra 5000". On the label thereon, above monogram of Tiger Head and in the middle of the label there is design of Goblet with brand name ''Santra 5000'' printed in yellow colour. Rest of the label is in red colour with emphatic black border. Except brand name ''Santra 5000'' other words are in black while brand name is printed on the goblet is in red colour. It is stated that appellant was granted requisite permission by Commissioner of State Excise on 25-3-1992 to use this label. It is further mentioned that sometime in the month of August, 2000 the appellant learnt about the product of respondent which is styled as "Santra Deluxe 5000". This product of respondent is introduced in the month of May, 2002. There appears to be some mistakes while narrating the facts in this connection as the knowledge is of August, 2000. It is further stated that the respondent have copied label of the appellant. It is alleged that the colour scheme style and design of their label are almost similar and also imitating the brand name of the product of the appellant. It is stated that instead of Tiger Head they are using Panther and it is mentioned that it is Panther Brand. It is the case of the appellant that the said label is deceptively similar and customers are misled by it. The appellants have filed their labels and also disputed labels on record along with appeal memo.
5. As against this learned counsel Mr. Shah appearing for respondent has stated that label used by the present respondent is totally different and there is no imitation. He contends that appellant has failed to show any deceptive similarity. It is contended that the appellants have not proved any goodwill or reputation insofar as their label is concerned. It is the contention of respondent that the matter between M/s. Royal Drinks and present appellant is totally separate and different one and it was only an interlocutory order and hence, reference to the said proceedings in present matter is not relevant and proper. The grounds raised by the appellant are all denied by the respondent and it is stated that the respondent is also a company with reputation and is manufacturing country liquor with due licence from the department. It is stated that trade mark being used by it is also legal and duly approved by the Commissioner of State Excise vide order dated 30th January, 2002 and the order is still valid. It is further stated that the respondent is using Panther Head and has distinctively mention his product as Panther Brand and these words are printed in Marathi around the picture of encircled Panther Head. It is further mentioned that white colour has been used in circle around the Tiger Head by the appellant while in the label of respondent around Panther Head there is no such white colour. It is further stated that shades of white yellow and black colours used in the labels of respondent are brighter than those of the appellant''s. It is further mentioned that appellant''s product is known as ''Santra 5000'' while respondent''s product is known as ''Santra Deluxe 5000'' and these words are printed in Marathi in red ink. It is further mentioned that size of goblet and thickness of stem between the mouth and base of goblet is also different. The name of manufacturer is also mentioned at the bottom of both the labels which is different. It is further mentioned that flavour and taste of the product of the respondent is altogether different and distinct from others. It is further alleged that the colour scheme and pattern of labels is common in the area and one more industry M/s. Kopargaon Shetkari Sahakari Sakhar Karkhana, Gautam Nagar, District: Ahmednagar which manufactures country liquor by brand name ''Bhingri Santra'' also used similar label and the said label is also approved by the Commissioner of State Excise. It is alleged that the appellant has pirated and imitated the design/layout and colour scheme and general get up of its label from this label of ''Bhingri Santra'' and appellant is not originator of this label. It is further mentioned that Nagpur Distilleries, Kamptee Road, Nagpur, Somras Distilleries, Nagpur, M/s. Kokan Agro Marine Industries Pvt. Ltd. and M/s. Royal Drinks (P) Ltd., Nagpur who also manufacture country liquor used similar type of labels with same design layout and colour scheme of red, black and yellow. It is further mentioned that Nagpur Distilleries is using picture of encircled Tiger head on its label of "Lavani Santra" and ''Firki Santra''. It is mentioned that M/s. Kokan Agro Marine Industries Pvt. Ltd. is using encircled Lion head with words ''Sher Brand'' on its Santra 5000 brand of country liquor. The respondent have also produced some such labels along with its affidavit before this Court. In this background respondents have contended that orders passed by the trial Court are just and proper and in view of the said fact it is not open for this Court to take any other of the view in the matter.
7. Perusal of the impugned order dated 27th January, 2003 reveals that the learned trial Court has relied upon the judgment reported at 1957(2) Mad. L.A. 573 to analyse principles governing grant of temporary injunction in such matters. It has also made reference to the judgment of the Hon''ble Apex Court reported at AIR 2001 SCW 4989 and thereafter judgment of Hon''ble Apex Court reported at AIR 2001 SCW 4679, also to AIR SCW 141. Thereafter in para 5 of its order it has found that it was incumbent upon the plaintiff before it to show that it was using its trade mark for quite a long period and continuously, whereas the defendant has entered into the said field recently, that there has not been much delay in filing of the suit for injunction, that the goods of plaintiff have acquired distinctiveness and are accepted in the mind of general public as the goods of the plaintiff, that nature, of the activity of the plaintiff and defendant is same or similar, that the goods of the parties to which trade mark of the plaintiff is associated are same or similar, that user of the said trademark or trade name by the defendant is likely to deceive and cause confusion in the mind of public and injury the business and reputation of the plaintiff that this sphere of activity and the market of goods of both the parties is same and that customers of the plaintiff include uneducated, illiterate and unwary customers who are capable of being deceived or confused or misled by the defendant. Thus, the trial Court has tried to find out whether name of brand ''Panther'' or use of identical colour scheme by the defendant on its label by defendant can be assailed by the plaintiff before it in this background. In paragraph No. 7 the learned trial Court has considered characteristics of the label of the plaintiff with label of the defendant. It has found that label of the plaintiff is orange and saffron with imprint of Tiger Head on top. It has found that lettering, wording, design, colour, complexion and placement of slogan as also M.R.P. all have their own distinguishing features on the label. It has found that label of the defendant is orange and red with imprint of Panther on the top and material printed on it (on the goblet) is also different. It has also found that litigating parties used the labels with these distinguishing features. It has further found that Sugar Factory of Kopargaon, Nagpur Distilleries, M/s. Kokan Agro Marine Industries and Somras Distilleries also used similar type of labels. It has found that it appears common in the trade to use such type of labels and therefore, it cannot be said that defendant before it is doing so as intention to deceive the customers or to injure the business of the plaintiff. The trial Court has also considered in paragraph No. 9 the grievance of the plaintiff before it and has recorded the findings that authenticated and credible material is placed on record go to establish the element of fraud or dishonesty on the part of the defendant. It has further found that if similar type of labels are used by so many manufacturers in the market, the person of common prudence would not be misled or confused and will correctly go for the brand needed by him. It is on account of this reason that the learned trial Court has refused the prayer for grant of temporary injunction, The present appeal, as already stated above, has been filed thereafter on 20th March, 2003. Admittedly, no interim orders are passed in it. The suit filed is of the year 2002. Thus, for almost period of more than two years and six months no temporary injunction is operating in favour of the appellant/plaintiff.
8. In this case it is not shown that the appellant is originator of design and infact, it is on record that on one point of time there were several manufacturers of country liquor using more or less similar type of labels. If the plaintiff himself is not originator of the said design and he has adopted or imitated the colour pattern of label as it was prevailing in the market, the plaintiff would definitely would not be entitled to relief, as held by Delhi High Court in judgment reported at
Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered:
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 resembleness 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 and
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 depends upon facts of each case and the same weightage cannot be given to each factor in every case.
The learned trial Court has also mentioned these tests in its impugned order. It will be apparent that there is no phonetical similarity between the products of present appellant and respondent. It is to be further seen that other rival traders in the market have been using mostly similar type of labels with their distinctive marks and as such, it cannot be said that the respondent had any dishonest intention in the matter. In judgment reported at
24. It is then contended that for initiating a passing off action, the applicant is required to prove that its product has:-
(i) distinctive feature;
(ii) substantial user; and
(iii) wide reputation.
It is an element of deceit which is required to be seen though the actual deception is not required to be proved. Reliance is placed upon the judgment dated 02.07.2012 delivered by Hon''ble Delhi High Court in I.A. No. 6010/2012 (u/o 39 R 1 & 2 r/w Sec. 151 CPC) in CS(OS) No. 865/2012, titled Godfrey Phillips India Ltd. versus Dharampal Satyapal Ltd. & another, wherein it has been held as under:-
19. For initiating a passing off action, plaintiff has to prove that its slogan has acquired such a reputation sufficient enough to connect the product of the plaintiff with the slogan by the consumers. It has to be shown that slogan has become so distinctive of a product that it has acquired secondary meaning. It has further to be shown that the use of such slogan or deceptively similar slogan by the defendant would be sufficient to deceive the customers into thinking that defendant''s goods are that of the plaintiff. Passing off is an action in deceit. In Khemraj (Supra) a Single Judge of this Court held, thus "that the action for infringement of a trade mark or copyright is a statutory remedy and in pursuing it, the plaintiff must prove his title and exclusive right to use the trade mark (or work) in question and further establish that the defendant has infringed the same by identical or deceptively similar or colourable imitation of it. In such a case, if otherwise established, it is no valid defense on the part of the defendant that it has been sufficiently indicated on the infringing goods that they are not of the plaintiff, but of the defendant. On the other hand, action for passing off is a common law remedy and its gist is deceit and not infringement of a right to exclusive user. In such an action, the plaintiff may, if so advised, prove his title to the exclusive use of the trade mark (or copyright) but he need not do so. What is however essential for the plaintiff to establish are: (1) distinctive features: (2) substantial user and (3) wide reputation. The law casts an obligation on the defendant not to pass off his own goods (or work) as if they had been produced by the plaintiff and the court will enforce this obligation. In such a case, the defendant can escape the liability by showing that his goods (or work), though similar, distinctly indicate that they do not originate from the plaintiff but have been produced by the defendant. Element of deceit may exist in both kinds of action but it is of the essence of the passing off action. Actual deception is not required to be proved, but reasonable ground for apprehending deception must exist. In
20. Defendants have not adopted the slogan of the plaintiff as it is. Both the slogans convey different meaning. "Shauq Badi Cheez Hai" of the plaintiff conveys passion of a person for good things in life be it clothing, housing, mode of commutation etc; whereas defendants'' slogan "Swad Badi Cheez Hai" denotes only to the taste in respect of eatables/food products. Both these slogans convey different meanings making less chances of confusion in the mind of consumers of the products including persons living in the remote areas. The difference of meaning of "Shauq Badi Cheez Hai" and "Swad Badi Cheez Hai" is known to everyone. That apart, a perusal of both the advertisements makes it clear that defendants have neither copied the whole or substantial part of the plaintiff''s advertisement nor the idea and/or theme of the advertisement, inasmuch as, the products have been named. Both the advertisements as well as slogans are distinct making no possibility of confusion in the minds of the consumers to accept the product of the defendant as that of the plaintiff. In the facts of this case, I do not find that there is any chance of any confusion or the consumers getting deceived by the slogans. All other judgments relied upon by the plaintiff are in the context of different facts and are of no help to the plaintiff.
Arguments in Rebuttal:
25. In rebuttal, the learned counsel for the applicant would contend that the plaintiff-applicant was not claiming monopoly/exclusivity over a particular colour or a colour combination. He further clarified that he was not disputing that any person has a right to use any colour combination that appeals to that person. However, his emphasis is that no person can use a particular colour or a colour combination in such a way that impression is given that those goods of the defendants-respondents are the goods of the plaintiff-applicant. A right to use a particular colour or a colour combination of a person does not extend to a right to pass off its goods as that of another person. The same colour combination can be used by the respondents for different products to which the applicant has no objection. Even if, the said colour combination is used for the same product, the same can only be used by such distinguishing feature that will not cause confusion in the minds of the purchasing public, i.e. the product of the respondents should not be made to look deceptively similar to that of the applicant. He would further submit that it is the duty of the subsequent entrant in the market to add such distinguishing feature into the packaging of its product that does not cause confusion in the minds of the public at large.
Examination of rival submissions and conclusion:
26. I have given my deep and thoughtful consideration to the rival contentions of the parties. The application is required to be decided on the basis of the limited claim made by the applicant in its arguments in rebuttal to the fact that the applicant was not claiming monopoly/exclusivity over a particular colour or a colour combination and was not disputing that any person has a right to use any colour combination. The limited prayer of the applicant is to the effect that no person can be permitted to use a particular colour or a colour combination in such a way that impression is given that those goods of the respondents are the goods of the applicant.
27. What is now referred to as to the trade dress was earlier termed as "get-up". 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 and includes the style of writing. It also includes the colour or colours of the label, its decoration and the manner of arrangement of the various features in the label. At the same time, it is to be remembered that no trader by adopting and using a particular style of get-up acquires a right to prevent a rival or second trader using the same or similar get-up, unless the get-up of the first trader 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. There is nothing to stop one trader simply copying the design or get-up of another, in the absence of protection afforded by copyright or a registered trade mark. Merely, being first in the field does not confer any right. But, then it is not to suggest that a competitor is permitted to use or imitate that design, so that it "represents its goods as the goods of somebody else". What the law seeks to protect is the goodwill of the latter''s business and not simply the proprietor''s right to use the design or mark. Therefore, the basis question is whether, directly or indirectly the manner in which the goods of the respondents are presented to the relevant consumer are such as to convey to the minds of the latter of impression that they are the goods of the applicant. In an " appearance" or get-up case it is not enough simply to say that the former are very like the latter. It must be established that the consumers have, by reason of the appearance of the goods of the applicant, come to regard them as having the same trade source or provenance, whether are manufacturing or marketing, though it matters that they have no idea at all of the identity of the trade source or provenance. It is not necessary that the applicant''s design should be novel, provided that the get-up is distinctive of the applicant''s goods and has been identified with them.
28. Undisputedly, the respondent is a subsequent entrant in the market insofar as it relates to the GEMCAL product consisting of Calcitriol, Calcium Carbonate, Zinc etc. It was introduced by the respondent in February, 2012 while the applicant had already entered the market in the year 2000. Therefore, in this background, it is required to be seen is that the duty of distinguishing the products is even more vital in the present case because both the products are by the same name i.e. GEMCAL. In such a situation, the ultimate test of passing off is that the goods of the respondents must not be deceptively similar to the goods of the applicant. Insofar as the distinctiveness of the product of the applicant is concerned, it can be safely concluded that the same had been established by long user of the trade dress/get-up, shape, colour combination, packaging which had remained substantially the same since 2000 and was exactly the same since then. Insofar as the same name GEMCAL is concerned, that is admittedly a subject-matter of litigation pending before the Hon''ble Apex Court after the applicant having lost before the learned Single Judge and also before the learned Division Bench of the Delhi High Court.
29. Now what appears from the record is that it is only after the judgment and decree of the learned Division Bench of Delhi High Court on 14.09.2009 whereby the appeal preferred by the applicant was dismissed, that the respondents introduced their present GEMCAL product in a so called completely different packing. The similarity whereof has already been set out in detail in Para 2.7 (supra). It is not disputed that earlier products of the respondents though of the same name were entirely different insofar as its composition, shape, packaging are concerned. While, on the other hand, the composition, the shape, the colour, embossing of the trade mark, representation of the GEMCAL on the carton and the accompanying slogan with the trade mark on the carton of a particular type were already being used by the applicant since 2000. This clearly establishes beyond any doubt that the applicant is the "prior user" of the trade dress and, therefore, has the right to use the trade dress to the exclusion of the others.
30. The respondent No. 2 has sought to justify its action regarding the composition, the shape, the colour, packaging, embossing of the trade mark etc. on the ground that in February, 2012, it had started a whole range of products including Softgel GEMCAL Capsules and further claimed that the colour combination of red and yellow is the common trade feature of such drugs and there cannot be any monopoly by any single entity. The examples of identical colour combination, trade dress, get-up, packaging etc., according to the respondent No. 2, was being used by a large number of other manufacturers/marketers. It was submitted that all the formulations of Calcitriol, Calcium Carbonate, Zinc etc. are also being manufactured in an identical manner by various other drug companies such as Intas, Grandcure, Medley, Ambala, Cadila and Morepen. It was also tried to justify that there were certain standardized colour combinations being used with regard to drugs by different companies like colour pink being used by drug companies for selling Brufen, the colour orange for Ranitidine, white for Paracetamol and colour yellow for Nimesulide. But, the question still remains as to what compelled or necessitated the respondent No. 2 to adopt identical/similar packaging, trade dress etc. for its product similar to those of the applicant. Can the respondents on the basis of the allegations that similar colour combinations are being used by the other players in the market and, therefore, it is also entitled to do so, be sustained?
31. To my mind, the defence of the respondent No. 2 has to be seen with all other attending facts and circumstances of the case. No doubt, the respondent No. 2 has every right to introduce their product but then what necessitated the respondent to virtually copy the product of the applicant because the test in such a case is that are the two products so similar that it is different to distinct the products of the applicant with those of the respondent No. 2. Therefore, in this background, it is not essential for the applicant to prove long user to establish reputation in passing off as it would depend upon the volume of sales and extent of advertisement.
32. The mere fact that the other market players are indulging in similar practice can be no defence in the eyes of law since the applicant is not expected to run-after every infringer and thereby remain in litigation at the cost of its business time. If the impugned infringement is too trivial or insignificant or is not capable of harming its business interests, it may overlook and ignore such violations till such time they assume alarming proportions. (Refer:
33. In the given facts and circumstances, the onus of proving extensive use of such products would always lie on the respondents, who claim a particular element as common to the trade and this onus has not been discharged by the respondents. The applicant has set out in detail its sales figures along with the amount spent on the promotion of its product which clearly establishes beyond any doubt that the applicant is a reputed name in the pharmaceutical world. The applicant has further demonstrated that it in fact had been incurring a negative growth since February, 2012 on account of respondents'' product, while the sales of the respondent No. 2 had shot up drastically since 2012 from Rs. 42,036/- for the period February, 2012 to Rs. 2,45,27,526/- (for the period ending July, 2012) which is evident from the documents appended by the respondent No. 2 at Page No. 129 of the written statement and subsequent certificate issued pursuant to the order dated 23.05.2012. It is also proved on record that the respondent No. 2 has not been selling other range of products allegedly launched in February, 2012, as is clear from the certificates of the Chartered Accountants of the respondent No. 2 supplied to the applicant in compliance of the aforesaid order dated 23.05.2012. Not only this, there is no document annexed by the respondent No. 2 to show as to how much amount it has spent on R & D, advertising etc. and yet its sales from Rs. 42,036/- since February, 2012 (for the period between November, 2000 to January, 2012) i.e. a period of 15 months, have shot up to Rs. 2,45,27,526/- for the period ending July, 2012 i.e. six months after alleged launch of a variety of products by the respondents. This leaves no manner of doubt that the sale figures are nothing short of a miracle and are direct results of the respondent No. 2 riding piggy back on the goodwill and reputation of the applicant and is, therefore, illegal earning therefrom.
34. The Courts have repeatedly restrained the parties, who have attempted to use colour combinations deceptively to those, who have approached the Court by claiming "prior user" in order to prevent passing off and reference can conveniently be made to
35. Even under the common law, the law does not permit anyone to carry on its business in such a way as to persuade the clients/customers in believing that the goods/services belonging to someone-else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons for this are two-fold. Firstly, honesty, fair play are and ought to be the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a particular composition, shape, colour, embossing, trade slogan etc. which has already been used by someone-else, it is bound to result in confusion and has propensity of diverting the customers and clients of someone-else to himself and thereby resulting in injury. Therefore, the allegations of passing off an action are the reputation of goods, possibility of deception and likelihood of damages to the applicant.
36. This Court is required to bear in mind that it is dealing with medicinal product where a stricter approached is required to be adopted while applying the test to judge the possibility of confusion of one medicinal product for the other by the consumers. This Court is also required to bear in mind the judgment of the Hon''ble Supreme Court in the case of Cadila Health Care Ltd. (supra) wherein it was observed that "a stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for the another by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases life itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health."
[Emphasis supplied].
37. Notably, though the respondent No. 2 filed written arguments, but then it did not seriously deny the allegations of the applicant that it had adopted an identical colour combination, trade dress, get-up or packaging, but only claimed that the same gave no cause of action to the applicant since it only followed what the other large number of commercial entities were doing in the market. Thus, the allegation of the applicant that the respondents have imitated and copied its product virtually goes unrebutted. The respondent under the garb of expanding its business cannot be permitted to exploit the reputation and goodwill associated with the applicant so as to divert its business and customers to itself which is apparent in this case where as noted above, the sales of respondent No. 2 drastically shot-up after February, 2012 from a meager amount of Rs. 42,036/- (registered over 15 months to a miraculous hike of Rs. 2,45,27,526/-) registered for a sale of less than of six months from February, 2012 to July, 2012.
38. The law with regard to grant or refusal of interim injunctions is well settled. This Court in CMPMO No. 4250 of 2013 dated 25.04.2014 has held as under:-
6. It is settled law that power to grant injunction is not only discretionary but is equitable. A temporary injunction cannot be claimed by a party as a matter of right nor would a court grant such injunction as a matter of course. The power to grant injunction has also been considered to be extraordinary in nature and therefore, has to be exercised cautiously and with circumspection. The court can grant such relief ex-debito-justitiae i.e. to meet the ends of justice. Being equitable relief, before deciding an application for an interim injunction, the court is required to keep in mind several aspects. The court of equity would exercise discretionary power in granting temporary injunction only when justice, equity, good conscience require to issue such orders and the court is satisfied that:
(i) the plaintiff has made out a prima facie case;
(ii) that balance of convenience lies in his favour and
(iii) in case injunction is not granted, he shall suffer irreparable loss and injury, which cannot be compensated in any terms.
7. In
9. Generally, however, the interlocutory remedy by way of a grant of an order of injunction is intended to preserve and maintain in status quo the rights of the parties and to protect the plaintiff, being the initiator, of the action against incursion of his rights and for which there is no appropriate compensation being quantified in terms of damages. The basic principle of the grant of an order of injunction is to assess the right and need of the plaintiff as against that of the defendant and it is a duty incumbent on to the law courts to determine as to where the balance lies.
10. Another redeeming feature in the matter of grant of interlocutory injunction is that, in the event of a grant of injunction in regard to a party defendant where the latter''s enterprise has commenced and in that event the consideration may be somewhat different from that where the defendant is yet to commence its enterprise.
24. We, however, think it fit to note herein below certain specific considerations in the matter of grant of interlocutory injunction, the basic being-non-expression of opinion as to the merits of the matter by the Court, since the issue of grant of injunction usually, is at the earliest possible stage so far as the time frame is concerned. The other considerations which ought to weigh with the Court hearing the application or petition for the grant of injunctions are as below:-
(i) Extent of damages being an adequate remedy;
(ii) Protect the plaintiff''s interest for violation of his rights though however having regard to the injury that may be suffered by the defendants by reason therefor;
(iii) The court while dealing with the matter ought not to ignore the factum of strength of one party''s case being stronger than the others;
(iv) No fixed rules or notions ought to be had in the matter of grant of injunction but on the facts and circumstances of each case-the relief being kept flexible;
(v) The issue is to be looked at from the point of view as to whether on refusal of the injunction the plaintiff would suffer irreparable loss and injury keeping in view the strength of the parties'' case;
(vi) Balance of convenience or inconvenience ought to be considered as an important requirement even if there is a serious question or prima facie case in support of the grant;
(vii) Whether the grant or refusal of injunction will adversely affect the interest of the general public which can or cannot be compensated otherwise.
39. In view of the aforesaid discussion and based upon the pleadings, documents and the arguments of both the parties, I find that the applicant has established a prima-facie case in its favour whereby the applicant has proved the malafide intention of the respondent No. 2 to ride piggy back on the goodwill or reputation of the applicant and pass-off its goods as that of the applicant. This is apparent from the fact the respondents have admittedly not spent any money on its sales/promotional expenses till date and its sales have gone up miraculously after February, 2012, while, on the other hand, the sales of the applicant have gone down. Therefore, in these circumstances, it cannot be disputed that the applicant is suffering grave irreparable loss, prejudice and harm on account of action of the respondents in manufacturing or selling a product similar (having identical to that of the applicant) which is causing loss of goodwill/reputation of the applicant and, therefore, cannot be compensated by way of damages. The balance of convenience also lies in favour of the applicant as the applicant has established that it has been selling its product since July, 2000 (with minor change in the packaging over a period of time) while the respondents have been manufacturing and selling their product in question only since February, 2012.
40. Insofar as the claim of the applicant regarding use of its slogan ''GEM OF A CALCIUM'' and restraining the respondents from using their slogan ''PEARL OF CALCIUM'', I do not find any merit or substance in such allegation. Both the slogans convey a different meaning making less chances of confusion in the minds of consumers of the product. Both the slogans are at distinct making no possibility of confusion in the minds of the consumers to adopt the product of the respondent No. 2 as that of the applicant. I do not find that there is any chance of any confusion or the consumers getting deceived by this slogan.
41. Consequently, the application is partly allowed and the respondents, their directors, licensees, franchisees, subsidiary/affiliated group companies, representatives, distributors, agents, contract manufacturers, employees, are restrained from using ''GEMCAL'' product and packaging similar to that of the applicant.
42. Insofar as the prayer No. 2 regarding grant of interim injunction for restraining the respondents, their directors, licensees, franchisees, subsidiary/affiliated group companies, representatives, distributors, agents, contract manufacturers, employees, from using the slogan "PEARL OF CALCIUM", the same is dismissed.
43. Application is accordingly disposed of in the aforesaid terms.
