The Court: This is an interlocutory application, in aid of a suit alleging infringement and passing off.
Both the petitioner and the respondent are engaged in the business of manufacture and sale of biscuits. Before entering into the disputes between the parties, I propose to compare the packets and its wrappers within which the biscuits of these two biscuit manufacturers are contained.
First, let me describe the packet and wrapper of the petitioner's product. The mark or name "NASTA" is prominently written in green and white on the top, bottom and on the two longer of the four sides of the packet. The packet is more or less in the shape of a rectangle. The predominant colour on the packet and wrapper is red or a variant of red with a picture of the well-known actor Monmoon Sen on the top. Some biscuits and the name or mark of "Calcutta Biscuits" are also printed. Now I will describe the respondent's packet and wrapper. A good part of it is red, but a substantial part of it is a mixture of other colours, white, green, orange and so on. On the top of the packet and wrapper "Shakaler Nasta" is written in Bengali. This packet is also more or less rectangular in shape. The mark or name "Shakaler Nasta" in Bengali is also written on one of the two longer sides of the packet and on the other side of the two longer sides "Shakaler Nasta" is written in English. The packet/wrapper also bears the names "Raja" biscuits and "Good Morning" and a picture of a few biscuits.
According to the petitioner they are using the above trade mark, name, label etc. from 1990.
On 27th January, 2005 the petitioner obtained registration of the copyright in the mark, name and label as shown at page 107 of the petition. In 2000, the petitioner obtained registration of the label as shown at page 108 of the petition, having applied for it on 15th July, 1993. On 6th July, 2001 they applied for registration of the mark "NASTA" which is still pending.
Mr. Pratap Chatterjee and Mr. Bachawat learned Counsel for the petitioner stated that they had also obtained registration of the design but such registration is no longer valid now. They argued that on or about March 2011, the petitioner discovered that the respondent was selling the above product in infringement of their about mark and/or by passing off their goods as those of the petitioner.
As is usual in this kind of matters a table showing year wise sale of the above product of the petitioner from 1988-89 till 2010-11 is inserted in paragraph 10 of the petition. In 1992-93 the sale of "NASTA" was Rs.2,06,592/-. In 2010-11 it was Rs.1,33,72,660/-. Increasing advertisement expenses of the product are also shown in paragraph 12 of the petition. In 2010-11 such expense is shown to be Rs.25,30,093/-. It is submitted that the petitioner's above product has substantial reputation in the market and that I should pass an order of injunction restraining the respondent from selling their above product. 4
Mr. Bachawat assisted by Mr. Debnath Ghosh, learned Advocate took me through the principles enunciated by the Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories reported in AIR 1965 Supreme Court 980 and the case of Cadila Health Care Ltd. -vs- Cadila Pharmaceuticals Ltd. reported in 2001 (5) SCC 73 to submit that the Court should look at the predominant feature of a mark or label and come to its own conclusion as to whether the mark or label of the defendant is similar enough to deceive an ordinary and prudent person to believe that the product marketed by the defendant is that of the plaintiff or the defendant's goods are the plaintiff's goods.
Anticipating the argument of the respondent that the mark or name "NASTA" is generic, that is to say it is very common place and that such mark is part of the many marks or names used by the petitioner in the label and that by virtue of Section 17 of the Trade Marks Act 1999 they cannot claim any right in this mark, it was argued by their said learned Counsel that the mark or name of the petitioner "NASTA" had become very special and identifiable with the petitioner. That was an exception to Section 17 and the petitioner was entitled to protection of that mark, relying on T.V. Venugopal versus Ushodaya Enterprises Ltd. & Anr. reported in 2011 (45) PTC 433 (SC). On the other hand Mr. Samit Talukdar learned Senior Advocate for the respondent showed me the mark in which the petitioner had obtained copy right at page 107 of the petition. He also argued that the mark for which the petitioner had obtained registration was a label mark at page 108 of the petition. The petitioner had applied for registration of the word mark only on 26th November, 2011. It is this word mark in which the petitioner is now claiming trademark rights. They are not entitled to the reliefs as claimed for.
He relies on Section 17 of the Trade Marks Act, 1999 to submit that since this mark "NASTA" is one of the many marks shown in the label and since there is no specific registration of this mark, the petitioner cannot claim any trade mark right in this mark, as the word "NASTA" is generic or very common place. He cites Parle Products (P) Ltd. -vs- J.P & Co. Mysore, reported in AIR, 1972 SC 1359 to submit that to get benefit of the exception under Section 17, a mark, although generic has to be distinctly associated with a particular manufacturer or product.
Furthermore, Mr. Talukdar showed me the sales records of "NASTA" from 2008-09 onwards from the table disclosed by the petitioner to submit that sale had dwindled from Rs.2,24,28,360/- in 2007-08 to Rs.1,33,72,660/- in 2010-11.
Now I come to my prima facie conclusions.
I am able to hold on the above evidence that the petitioner is selling the above product using the mark "NASTA" from 1991 till date in West Bengal. There is no evidence of the respondent selling any product with the above mark or name before March, 2011. The petitioner has had substantial sale from that time till date. After consideration of the entire packaging material of the petitioner's product, I am of the opinion that "NASTA" is a predominant part of the name or the mark or label used by the petitioner and other marks or names or pictorial representations in the packet/wrapper are ancillary to it.
I do not accept the contention of Mr. Talukdar that since the application for registration of the word mark, made by the petitioner, is pending they are not entitled to the reliefs claimed. In my judgment the label depicts "NASTA", with sufficient prominence so as to make me believe that "NASTA" is the predominant part of the petitioner's mark or word or label according to the ratio in the judgment of Kaviraj Pandit Durga Dutt Sharma versus Navaratna Pharmaceutical Laboratories and Cadila supra. No doubt "NASTA" is one of the many words in the label. But Section 17 of the Trademarks Act 1999 will not apply because "NASTA" is the predominant feature and has been identified by the customers as such, in my prima facie opinion, to be distinctive of the petitioner's product.
Having considered the packaging material of the respondent I do not think that the top part of the packaging material, where "Shakaler Nasta" is written in Bengali and Raja written in English with pictures of biscuits and sunrise in different colour settings, is similar to the petitioner's packaging or infringes their trademark or name or label. Neither do other parts of the packaging, except one side of it where the word "NASTA" appears in English. The use of this word "NASTA" in English, in my opinion, is infringement of the petitioner's trademark or name or label. It is similar in all respects. It tends to project the respondent's goods as those of the petitioner so as to mislead the customers. It is always not the case that a customer will turn a packet around on its side to see the brand of the go
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ods, but nevertheless there is considerable likelihood of deception by use of this word. There is no problem with the use of the word "Sakaler". Therefore, if this word "NASTA" in English is removed or obliterated from the packet/wrapper of the respondent there is no infringement in my judgment. But at the moment there is. Therefore, I pass an order in terms of prayer [a] of the Notice of Motion. This will not prevent the respondent from changing the packet/wrapper in the way indicated by me in the judgment above. All the relevant facts and materials were available before this Court, in my opinion, for the purpose of consideration of this application. Therefore, affidavits are not called for. This application is allowed by the above order. All parties concerned are to act on a signed photocopy of this order on the usual undertakings.