w w w . L a w y e r S e r v i c e s . i n



Hindustan Unilever Limited v/s Rahul Shaw


Company & Directors' Information:- HINDUSTAN UNILEVER LIMITED [Active] CIN = L15140MH1933PLC002030

Company & Directors' Information:- UNILEVER INDIA LIMITED [Active] CIN = U36999MH2020PLC340390

Company & Directors' Information:- D. E. SHAW INDIA PRIVATE LIMITED [Active] CIN = U72200TG1996PTC025388

Company & Directors' Information:- RAHUL INDIA LIMITED [Active] CIN = U74899DL1985PLC019883

Company & Directors' Information:- RAHUL INDIA LIMITED [Active] CIN = U65100DL1985PLC019883

Company & Directors' Information:- RAHUL & COMPANY LTD [Amalgamated] CIN = U67120WB1995PLC067980

Company & Directors' Information:- M C SHAW PVT LTD. [Active] CIN = U51228WB1989PTC046980

Company & Directors' Information:- W C SHAW PVT LTD [Active] CIN = U51909WB1942PTC010901

Company & Directors' Information:- M L SHAW PVT LTD [Active] CIN = U51909WB1934PTC008071

Company & Directors' Information:- G & H SHAW PVT LTD [Strike Off] CIN = U27310WB1962PTC025389

Company & Directors' Information:- SHAW & CO. PVT LTD. [Strike Off] CIN = U51909WB1953PTC021086

Company & Directors' Information:- HINDUSTAN CORPORATION PRIVATE LIMITED [Dissolved] CIN = U74900KL1901PTC000424

Company & Directors' Information:- HINDUSTAN LTD. [Active] CIN = U99999MH1917PTC000472

Company & Directors' Information:- R SHAW AND CO. LTD. [Dissolved] CIN = U99999MH1922PTC001006

Company & Directors' Information:- HINDUSTAN CORPORATION LIMITED [Dissolved] CIN = U99999MH1949PLC007790

    GA. No. 2330 of 2019 with CS. No. 222 of 2019

    Decided On, 30 October 2019

    At, High Court of Judicature at Calcutta

    By, THE HONOURABLE MR. JUSTICE ASHIS KUMAR CHAKRABORTY

    For the Appearing Parties: Ratnanko Banerji, Sr. Advocate, Debnath Ghosh, Arunabha Deb, Ayush Jain, Advocates.



Judgment Text

The Court: The petitioner, being the plaintiff in a suit for infringement of trademark and copyright has filed the present application praying for, various interim reliefs against the respondent.

The petitioner company is a part of the Unilever Group and carries on the business, inter alia, of manufacturing, marketing and sale of various kinds of washing soaps, including detergent. It is claimed that since 1959, the petitioner company adopted and commenced use of detergent products under the trade name "SURF". The petitioner company has continued to use the said trade mark consisting of the word "SURF" openly, extensively and continuously in the course of trade in respect of the detergent products manufactured by them. In the year 1996, the petitioner company started use of the trade mark "SURF EXCEL" with respect to its premium range of detergent powder products with superior quality and technology. It has subsequently introduced detergent bars, detergents liquids and 'matic' (machine wash) powders and liquids specifically for modern washing machine usage, under the same trademark "SURF EXCEL". By virtue of long, extensive and continuous use of the trademark "SURF"/ "SURF EXCEL" upon and in respect of the said goods, the trademark "SURF/SURF EXCEL" has acquired a secondary meaning as indicating to the goods originating from the petitioner company and from none else.

In order to distinguish their said product under the brand name "SURF EXCEL" from the detergents of the other manufactures, the petitioner has bona fide adopted a unique, artistic and distinctive logo (hereinafter referred to as "the said logo") for use upon and in relation to their detergents and like goods under brand "SURF EXCEL". The said logo portrays a device of a 'Splat' created by a drop of liquid on a hard surface with five appendages stemming out from its core, spreading towards different directions. The said appendages are wider at the periphery and narrower towards the core of the said splat. The appendage at the centre left position of the said splat is of the smallest in size, while the appendage at the bottom right of the said splat is the biggest in size. The other three appendages are of almost equal size. The said logo is predominately used by the petitioner company in the combination of either orange and green or pink and orange, upon and in relation to their "SURF EXCEL" range of goods packed and/or sold, inter alia, in artistic packaging/under artistic trade dresses. A representation of the petitioner's said logo shown in the combination of orange and pink is disclosed as Annexure "A" to the petition. The petitioner company has secured registration of all the said logos under the Trade Marks Act, 1999 and copies of the relevant registration certificates bearing nos. 1486109, 1780462, 1486108 and 1486107 (all in class 03) reflecting the respective logo have been disclosed in the petition as Annexures "B", "C", "D" and "E" to the petition, respectively. The petitioner is also the registered proprietor of the word "Excel" with respect to all goods in Class 3. A copy of the certificate of registration of the said Trade Mark issued in favour of the petitioner has been annexed as Annexure "F" to the petition. The subject matter of the present proceedings, inter alia, is also one of the petitioner's flagship product variant 'Easy Wash' sold under the trade mark "SURF/ SURF EXCEL". The petitioner company has been using the said splat device along with a blue background for "Surf Excel Easy Wash", formerly known as "Surf Excel Blue", since the adoption of the new logo in 2005.

The petitioner company is also the assignee of the copyright in the painting and art work displayed in the labels and wrappers for packaging of their said products "SURF"/ "SURF EXCEL". In this regard, the petitioner has disclosed a copy of the deed of assignment of copyright dated August 23, 2016 between themselves and the firm of artists who created the art work annexed as Annexure "G" to the petition.

The petitioner states that apart from the said detergent sold under the trademark "SURF"/ "SURF EXCEL", in or about the year 1955 they have been manufacturing and selling detergent powder in India by adopting the trade mark "WHEEL". Apart from "WHEEL", the petitioner company also manufactures and sells another premium version of the said "WHEEL" brand known as "ACTIVE WHEEL". The petitioner designed a unique trade mark label/sachet bearing original artistic work, get up and lay out to market their detergent bearing the trade name "ACTIVE WHEEL" containing swirl device and prominent display of lemons along with white jasmine flower covering the border of the label with the trademark "ACTIVE WHEEL" appearing on the centre of the label and the device of "WHEEL" on the lower right hand end of the label. By virtue of the Deed of Assignment of Copyright dated September 20, 2012 disclosed as Annexure "H" to the petition, executed by the firm of commercial artists who created the painting and the artistic work, get up and lay out of the labels/ packages of said product "ACTIVE WHEEL", the petitioner has become the owner of the copyright in the painting and artistic work used in the labels/wrappers for packaging of the detergent powder "ACTIVE WHEEL".

The petitioner is also the registered proprietor of several trademarks with respect of their products "WHEEL" and "ACTIVE WHEEL". The petitioner company has secured registration of all the said logos and copies of the relevant registration certificates bearing nos. 87160, 895095 and 1686844 all in class 03 reflecting the respective logo have been disclosed as Annexures "I", "J" and "K", to the petition respectively. It is further claimed by the petitioner that the detergent powder sold by the petitioner under the trademark "ACTIVE WHEEL" in the labels/packets have a distinctive style, get up and colour scheme and the said detergent "ACTIVE WHEEL" has acquired substantial reputation and goodwill in the entire country and the said labels/packets with its unique feature have become distinctive product of the petitioner.

Apart from the said detergent sold under the trade name "SURF"/ "SURF EXCEL"/ "WHEEL"/"ACTIVE WHEEL", the petitioner also introduced another detergent powder under the trade mark "SUNLIGHT". The petitioner company has secured registration of the said logos and copies of the relevant registration certificates bearing nos. 87099, 87107 and 345203 all in class 03 reflecting the respective logo have been disclosed as Annexures "L", "M" and "N" to the petition, respectively. The petitioner further states that in addition to the valuable common law rights acquired therein as aforementioned, it has secured registration/s of the said trade mark "SUNLIGHT" under the provisions of the Act and the earliest registrations for Sunlight were obtained by the petitioner in 1943.

Apart from the said trade mark registrations, the petitioner is also the owner of copyright subsisting in various other artistic labels/packaging/trade dresses bearing the said trade mark which have been evolved by the petitioner company over the period of time. However, it is pertinent to note that a yellow background with uniquely depicted lines forming unique shape has always been an essential feature in relation to various artistic labels/packaging/trade dresses bearing the said trade mark that have been adopted/evolved by the petitioner over the period of time to market their detergent bearing the trade name "SUNLIGHT". The copyright subsisting in the above referred artistic label/ packaging/ trade dress was assigned to the petitioner company vide Deed of Assignment dated December 29, 2006 disclosed as Annexure "O" to the petition.

In or about 2016, a variant of the earlier label/ packaging/ trade dress bearing the said trade mark "SUNLIGHT" was created for and adopted by the petitioner. The petitioner says and submits that the copyright subsisting in the said artistic label/packaging/trade dress came to be assigned to the petitioner vide Deed of Assignment dated April 3 2018, disclosed as Annexure "P" to the petition.

The petitioner company also claim to have advertised the trademarks "SURF"/ "SURF EXCEL", "WHEEL" and "ACTIVE WHEEL" as well as "SUNLIGHT" labels through diverse media, including magazine, television and radio, sponsoring events etc. etc. The petitioner claims that their said goods bearing the trademarks "ACTIVE WHEEL", "SURF"/ "SURF EXCEL" and "SUNLIGHT" with the respective labels/packaging have acquired a substantial reputation and goodwill in the market and the said labels with the unique textures have become distinctive of the products of the petitioner. The petitioner has also disclosed the net proceeds of sales and the advertisement expenses incurred in respect of their products, including labels/packaging of their product "SURF"/ "SURF EXCEL", "WHEEL"/ "ACTIVE WHEEL" as well as that of "SUNLIGHT".

It is claimed that detergent powders of the petitioner, sold under the trademarks "SURF EXCEL", "ACTIVE WHEEL" and "SUNLIGHT" have acquired substantial reputation and goodwill in the market and the said labels/packets with their unique features have become distinctive of the products of the petitioner. The said mark and/or labels along with the idiosyncratic features of the packets have become and part of the goodwill of the petitioner and have become associated in the mind of the consuming public with the products of the petitioner.

According to the petitioner, in or about the month of September 2019, in the course of market survey and investigation carried out by the petitioner at Bhadreswar, Hooghly, it was found that the respondent was manufacturing, selling and distributing detergent powders in counterfeit packaging under the marks "SURF EXCEL EASY WASH" (hereinafter referred to as "the first impugned product"), "ACTIVE WHEEL" (hereinafter referred to as "the second impugned product") and "SUNLIGHT" (hereinafter referred to as "the third impugned product").

According to the petitioner, a mere comparison of the labels/packets of the petitioner's product "SURF EXCEL" with those of the first impugned product would indicate that the said first impugned product infringes the copyright in the artistic work comprised in the label/packaging in which the Petitioner sells its "SURF EXCEL Easy Wash" product and also infringes registered trademarks of the Petitioner. In fact, the impugned product is a counterfeit of the Petitioner's "SURF EXCEL Easy Wash" product as the respondent is selling and distributing the said product in the name of the petitioner. A copy of the label/packaging in which the respondent is selling its "SURF EXCEL EASY WASH" is disclosed with the letter "T" to the petition and the packaging of the petitioner's "SURF EXCEL Easy Wash" is annexed and marked with the letter "U" in the petition.

It is asserted that on comparison of the labels/packets of the petitioner's product "ACTIVE WHEEL" with those of the second impugned product, would indicate that the label/ packaging of the second impugned product infringes the petitioner's copyright in the artistic work comprised in the label/packaging in which the Petitioner earlier sold its "ACTIVE WHEEL" products and also infringes registered trademarks of the petitioner. It is claimed that in fact, the second impugned product is a counterfeit of the petitioner's "ACTIVE WHEEL" product as the respondent is selling and distributing the said product in the name of the petitioner. A copy of the label/packaging in which the respondent is selling its "ACTIVE WHEEL" is disclosed as Annexure-"V" to the petition and the packaging of the petitioner's "ACTIVE WHEEL" is annexed as Annexure-"W" to the petition.

It is emphasised that on a comparison of the labels/packets of the petitioner's product "SUNLIGHT" with those of the third impugned product, would indicate that the label/ packaging of the third impugned product infringes the petitioner's copyright in the artistic work comprised in the label/packaging in which the petitioner sells its "SUNLIGHT" product and also infringes registered trademarks of the petitioner. In fact, the second impugned product is a counterfeit of the petitioner's "SUNLIGHT" product as the Respondent is selling and distributing the said product in the name of the Petitioner. A copy of the label/packaging in which the Respondent is selling its "SUNLIGHT" is annexed and marked with the letter "X" and the packaging of the petitioner's "SUNLIGHT" is annexed and marked with the letter "Y" in the petition.

The petitioner submitted that the respondent has adopted all the leading and essential features of the petitioner's said product packaging label including the said logo, layout, get up, colour combination and trade dress of the "SURF EXCEL", "ACTIVE WHEEL" AND "SUNLIGHT" products and has deliberately copied the petitioner's said logo and artistic works. The petitioner asserts that even a cursory look at the respondent's first, second and third impugned products reveals that the said products are the counterfeit of the petitioner's product. The petitioner has no connection with the respondent nor has the petitioner in any way authorised the respondent to use the petitioner's aforesaid intellectual properties and that the impugned labels/ packaging are counterfeit.

On the basis of the aforementioned allegations the petitioner has filed the suit against the respondent for infringement of the registered trade marks being Annexures 'B', 'C', 'D', 'E', 'F', 'I', 'J', 'K', 'L', 'M' and 'N', as well as for infringement of their copyrights in the artistic work comprised in the label/packaging/trade dress and the overall get up and style similar to that in which the products "SURF EXCEL", "WHEEL"/"ACTIVE WHEEL" and "SUNLIGHT" are sold at market. In the present application, the petitioner has also prayed for an ex- parte at interim order of injunction restraining the respondents from infringing their said trade marks and copyrights.

On the basis of the above allegations, the petitioner company prays for ex-parte ad interim order of injunction against the defendant from infringing its said trademarks and the said copyrights.

Considering the averments of the application and the documents on record, I am prima facie satisfied that the packets in which the detergent powder of the respondent is sold under the brand name, "SURF"/ "SURF EXCEL", "WHEEL" and "ACTIVE WHEEL" as well as "SUNLIGHT" are prima facie colourable and deceptive imitation of the petitioner's logo registered under the Trade Marks Act, in class 03. The petitioner has prima facie substantiated infringement of its said trademarks by the respondent. Further, the packets in which the detergent powder of respondent is sold prima facie appears to be in infringement of the petitioner's copyright in the artistic work comprised in the label/packaging of its "SURF"/ "SURF EXCEL", "WHEEL" and "ACTIVE WHEEL" as well as "SUNLIGHT" range of products. The balance of convenience also lies in favour of the petitioner for obtaining ex-parte ad interim order of protection. Accordingly, there shall be an ex-parte ad interim order in terms of prayers (a) and (b) of the Notice of Motion dated September 03, 2019. The respondent is also retrained from selling or offering for sale or marketing the detergent "SURF"/ "SURF EXCEL", "WHEEL" and "ACTIVE WHEEL" as well as "SUNLIGHT" or any other detergent in packets/labels being similar to or colourable imitation of packets/labels in which the plaintiff's product "SURF"/ "SURF EXCEL", "WHEEL" and "ACTIVE WHEEL" as well

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as "SUNLIGHT" are sold. Further, Abhijit Basu, Advocate of Bar Association (Room No.4) is appointed as the Special Officer who shall visit the place of business of the defendant at Chapdani, District- Hooghly, in the State of West Bengal and also other the godown(s) of the defendant where the infringing products may be stored and inventorise the infringing products, if required, with police assistance. The Special Officer may, at the instance of the petitioner company, remove the infringing articles and packets to a safe place to be provided by the petitioner. The Officer-in- Charge of the concerned Police Station, if approached by the Special Officer, shall extend all assistance in implementing this Order. The Special Officer shall be entitled to an initial remuneration of 3000 GMs to be paid by the petitioner. The Special Officer shall be accompanied by a competent officer of the petitioner company who shall serve a copy of the petition and a copy of this order on the respondent. All arrangements for the visit of the Receiver in the district of Hooghly, in the State of West Bengal shall be made by the petitioner company. The ad interim order passed today shall be valid till November 22, 2019 or until further order whichever is earlier. The application will appear on November 18, 2019. The plaintiff shall file an affidavit of service on the next date. The Special Officer shall file his report on the next date. The respondent shall be at liberty to apply for vacating and/or variation of this order upon notice to the petitioner. The parties and all concerned, including the Special Officer and Police Authorities shall act on copies of the certified website copies of the order.
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