Manmohan Singh, J.
1. The present suit for permanent injunction restraining infringement of copyright, passing off, rendition of accounts, delivery up etc. has been filed by the plaintiff against the defendant. Alongwith the suit, plaintiff also filed an application under Order 39 Rule 1 and 2 read with Section 151 CPC being I.A. 10669/2014.
2. Summons were issued in the suit and notice in the application to the defendant on 29th May, 2014. After hearing, detailed exparte order was passed against the defendants restraining them from manufacturing, marketing, supplying, using, selling, soliciting, exporting, displaying, advertising or by any other mode or manner dealing with the impugned artistic work/packaging/ label/trade dress/colour combination POSH Label or any other artistic work/packaging/label identical with or deceptively similar to the plaintiff’s said label/packaging/colour combination/artistic work XPERT Label in relation to the impugned goods, viz., all kinds of dish-wash bars and liquids, soaps and cleaning material and other allied and cognate goods or from doing any other acts or deeds amounting to infringement of plaintiff’s trademark XPERT and/or XPERT Label; passing off or otherwise violation by way of passing off the plaintiff’s trademark, label, trade dress XPERT and/or XPERT LABEL and infringement of plaintiff’s copyrights in the said XPERT artistic work/label or trade dress.
3. Upon service of interim order, defendant filed a written statement and an application bearing I.A. No 12699/2014 under Order 39 Rule 4 CPC for vacation of the interim order passed on 29th May, 2014. By this order, I propose to decide two pending applications i.e. I.A. 10669/2014 and I.A. No 12699/2014.
4. Brief facts of the case as stated in the plaint are that the plaintiff, engaged in the business of manufacturing and selling washing soaps, washing powder, detergent cakes, and toiletries, bleaching preparations and substances for laundry use, cleaning, polishing, perfumery, hair lotions and other related goods, under the trademark XPERT. The said trademark is stated to have been conceived, coined and adopted by the predecessors of the plaintiff in the year 1993.
5. The plaintiff claims to be the owner and proprietor of the copyright of the XPERT and/or XPERT LABEL under the provisions of Copyright Act, 1957. The labels bearing the mark XPERT along with other features are stated to have a unique get up, make up, color scheme, lettering style, arrangement etc. The plaintiff also claims to be the owner of the punch lines ‘Pehle Istemal Karen Phir Vishwas Karen’ in relation to its goods.
6. Plaintiff and its predecessors have a number of trademark registrations in India for the trademark XPERT. While some of the applications for registration are pending. The details of the said applications are mentioned in a list in Para 8 of the plaint. The plaintiff holds copyright in the XPERT label as well as the punch lines.
7. It is averred by the plaintiff that the plaintiff’s goods bearing the said trademark/label are of excellent quality and high standard and are highly demanded in the markets. The said goods are distributed and sold across the country and have resulted in handsome sales and value trade.
8. Further it is averred that the plaintiff has been advertising and promoting its said trademark/label and said punch lines through different means and modes by way of extensive advertisements in national newspapers, magazines, hoardings, and various prominent national TV channels etc. The plaintiff has spent substantial amount of money thereof.
9. The plaintiff claims that the plaintiff’s trademark/label and said punch lines have become distinctive of the plaintiff. The public and trade associate, identify and distinguish the said trademark/label and the said punch lines with the plaintiff and plaintiff’s goods and business and the same have become well-known within the meaning of Section 2(1)(zg) and Section 11 of the Trade Marks Act, 1999 (hereinafter referred to as “the Act”).
10. The plaintiff’s goods and business under the said trademark are global in character and has acquired reputation and goodwill due to its excellent quality and high standards. The plaintiff’s goods are commercially available in many countries of the world.
11. The plaintiff has been vigilant in protecting its right in the said trademark/label by taking appropriate legal actions against third parties and has obtained orders in its favour.
12. The defendant is stated to be also engaged in the business of manufacturing and marketing all kinds of soaps, dish-wash bars and liquids and other cleaning materials under the trademark/label POSH in relation to the impugned goods and business.
13. It is the case of the plaintiff that in or about fourth week of March, 2014, the plaintiff came across the goods of the defendant under the impugned packaging/label. Plaintiff noticed that the defendant has substantially copied the XPERT label of the plaintiff with all its features and artistic work, layout design, lettering style, get up, make up, colour combination and idea thereof. The overall look of the two labels is same. The two labels are deceptively similar in each and every aspect including visually, structurally, in its basic idea and essential features.
14. It is averred that the defendant aims to mislead consumers and members of the trade into believing that the products bearing impugned trademark POSH emanate from or are connected with the plaintiff and thereby causing confusion or deception in the course of trade as to the source or origin of the products. The sub-standard quality of the defendant’s products is also bound to cause irreparable harm to the goodwill and reputation to the plaintiff.
15. The goods of the defendant with the impugned label and the business of the defendant are identical to that of the plaintiff. The goods of the defendant as well of the plaintiff are sold at the same shops. The class of purchasers of the goods of both the plaintiff and the defendant are the same. The confusion and deception is bound to happen in such a case.
16. It is averred that the defendant has adopted and is using the impugned packaging/label fraudulently and with ulterior motives to take advantage and to trade upon the reputation of the plaintiff thereby passing off its goods and business as that of the plaintiff.
17. Plaintiff is stated to have been suffering huge losses both in business and in reputation due to the defendant and has so filed the present suit against the defendant.
18. On the other hand, the defendant has taken a stand that the present suit is not maintainable for the want of jurisdiction. The defendant has commercial presence and supplies its dish-wash bars under the mark POSH only in Maharashtra. Accordingly this Court has no jurisdiction to try the present suit. Further the suit has not been properly valued for the purpose of jurisdiction, and also does not disclose any cause of action for filing it thereof.
19. The suit is bad for non-joinder of parties as the trademark POSH is registered trademark of M/s Darshan Detergents Pvt. Ltd. and the defendant is a licensee thereof.
20. The defendant averred that the plaintiff cannot claim any monopolistic proprietary right on the colour pink used as a trade practice and as a get-up in several similarly placed goods like Surf Excel detergent powder, member’s mark air freshener, Vanish Detergent powder, TIDE detergent powder, HENKO detergent powder & bar etc.
21. It is contended that the suit does not make out a case of passing off as the plaintiff is claiming proprietary right in the mark X-PERT and not POSH which is the registered trademark used by the defendant. The two trademarks are phonetically and structurally different from each other and there cannot be any deception or confusion as alleged by the plaintiff. The colour combination of pink due to usage has become common to the detergent trade and cannot be owned by any particular business concern.
22. The present suit has been filed by the plaintiff for avoiding healthy competition offered by the defendant who by indigenous efforts are making available standard quality of goods at affordable price. The colour pink is feminine. In color psychology, pink is a sign of hope. It is a positive color inspiring warm and comforting feelings. It is associated with the detergent industry and its use is common to trade.
23. Defendant’s products sold under the trademark POSH enjoy reputation and goodwill all over the state of Maharashtra and there cannot be any deception.
24. The get-up and look of packaging of the defendant’s products under POSH is different from plaintiff’s packaging of XPERT. The name and style of representing the trade names are completely different, with the text placing and font and colour of the same not being similar. POSH is a value for money product and has a different image in the minds of purchasers and has its famous punch line ‘ab aap bhi ban sakti hai Miss Chamko’. POSH has a clear and distinct brand name in the market, whereas XPERT has a different market strategy and the plaintiff’s punch line is ‘Pehle Istemal Karen Phir Vishwas Karen’. The artistic work and colour combination of trade dress is very different in the sense the POSH label shows a traditionally dressed Indian women instead of celebrities on the label. Any commonly seen dish-wash bar label in the market will show a lady and some utensils. There is no similarity in the literary work on the back side as all the statutory requirements of Weights & Measures in POSH label are printed only in Black Color whereas in label of the plaintiff’s XPERT, they are written in Red and Blue color and a different font and font size.
25. It is the trend of the dish-wash/detergent industry that the manufacturers prefer to use pink colour in their wrapping. Besides other brands, NIRMA is an instance of the brand that was using the colour yellow for almost 30 years but now has switched to pink colour since last two years seeing the shift towards new colour trends in the market.
26. The defendant has promoted the trade POSH by advertising it through different modes like printing the mark on T-shirts, notepads, bags etc. and has spent substantial amount on such marketing and has not used the goodwill of the plaintiff.
27. It is averred that the present suit is merely an outcome of a business rivalry whereby the plaintiff is trying to injure the reputation and cause loss to the business of the defendant. The trademark POSH was registered in class 3 in the year 2005 without any objections. Yet the plaintiff waited all this while to evaluate the business of the defendant and then came forward to file the present suit in the year 2014. There is delay in filing the present case which disentitles the plaintiff from getting the discretionary relief of injunction.
28. Before I proceed to decide the application, it is imperative to examine the representations of the labels/packaging of products of both the parties simultaneously. The representations are as under:
29. On perusal of the two labels/packaging, it appears to the Court that the layout design, colour scheme, get up, arrangement of artistic features, lettering style in the two labels/packaging are almost similar except the brand names of the parties which are different.
30. The following cases are relevant in this regard:
(i) In Anglo-Dutch Paint, Colour and Varnish Works Pvt. Ltd v. India Trading House, AIR 1977 Delhi 41, the plaintiff claimed the relief on the basis of get up, layout and arrangement of violet grey and white colour combination of the plaintiffs’ container. It was alleged that the defendant has very recently adopted identical container in respect of white paints as mentioned in Para 3 and 4 of the judgment. In Para 9 of the said judgment, it is observed as under:
“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 plaintiffs' 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.”
(ii) In the case of Burroughs Wellcome (India) Ltd v. Uni-Sole Pvt. Ltd. (1999) 19 PTC 188 , it was observed as under:
“Copyright is a form of intellectual property. With advancement in technology it is very easy to copy. The basic test in actions based on the infringement of the copyright is that if a thing fetches a price, it can always be copied and therefore, it needs adequate protection. It is well settled that although under the Copyright Act, 1957, there is a provision of registration, under Section 44 of the Act. It is not in doubt that the said procedure is an enabling provision and registration is not compulsory for the purpose of enforcing copyright. Section 44 of the Act provides for registration of work in which copyright exists but in order to claim copyright registration is not necessary. This is because registration is only to raise a presumption that the person shown in the certificate of registration is the author. This presumption is not conclusive, but no further proof is necessary unless there is a proof rebutting the contents of the said certificate. Under Section 48 of the Registration Act, therefore, the act of registration is ex-facie prima facie evidence of the particulars incorporated in the certificate. There is no provision under the Act which deprives the author of the rights on account of non registration of the copyright. There is nothing in the Act to suggest that the registration is condition precedent to the subsistent of the copyright or acquisition of copyrights or ownership thereof or for relief of infringement of copyright. The sine-qua non of existence of a copyright is expenditure of skill, labour and capital on any work expanded by a person/author and unless the original work is produced in court to prima facie show that the work has originated from author, no relief can be granted. In other words, copyright exists even without it being registered for the purpose of its enforcement. The nature of copyright is also meant to be borne in mind. It subsists in any material form in which ideas are translated. Copyright is a incorporeal right. It does not lie in any idea, but it lies in the expression in which the idea is expressed. The work of an author therefore, becomes the subject matter of the copyright. In essence the copyright is a negative right of preventing copying of physical material in the field of art, literature etc. Once an idea is written down, the writing becomes the subject matter of copyright. With globalisation and advancement of technology, even computer programmes come within the copyright. Any work conveying a particular information comes within the subject matter of a copyright and it needs protection”.
(iii) In the case of Vicco Laboratories Bombay v. Hindustan Rimmer, Delhi, reported at AIR 1979 Delhi 114, the case of the plaintiffs before Court was that the plaintiffs have been marketing the cream in a collapsible tubes of 3 different sizes which has the distinctive get up etc. The collapsible tube has red background with floral design in yellow colour under the trademark 'Vicco Turmeric Vanishing Cream’, in the carton as well as tube in yellow strip in the bottom. The case against the defendant was that they have been marketing the vanishing cream in the carton and tube which are a colourable imitation of the plaintiff’s carton and tube under the trademark ‘Cosmo’. This Court granted the injunction against the defendant and held as under:
“The plaintiffs claim passing off by the defendants of their product as and for the product of the plaintiff’s 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 plaintiff'. adopted in every detail by the defendants for their tube and carton cannot be said to have been adopted by the defendants unintentionally.”
(iv) In the case of Nova Ball Bearing Industries v. Mico Ball Bearing, (1981) 19 DLT 20, it has been held as under:
“A comparison of the two cartons “NOVA” and “JANI” would reveal that two cartons are exactly similar in size, colour scheme and get up, the only difference that the trade mark of the defendants is written at 5 places and that of the plaintiff at 3 places. The two cartons bear such a close resemblance that they can easily confuse and deceive a customer.”
It was further observed:-
“……The plaintiffs are actually using the artistic carton entitled `NOVA' since 1971. They got their copyright in the said carton registered in 1978. The plaintiffs are clearly the prior user of the impugned carton. The defendants, it appears, got the copyright in the impugned carton registered in their same by suppressing the fact of its earlier registration in the name of the plaintiffs. It may be noticed here that the counsel for the plaintiffs stated that the plaintiffs have already moved for the rectification of the register of copyright.”
“Prima facie, the defendants seem to be guilty both of infringement of the copyright and passing off.”
(v) In Cases and Material on Trade Mark and Allied Laws, Vol.I at Page No.969 Muller and Phipps International Corporation and Anr. v. Anita Cosmetics and Anr., the following observations are made at para 5 page No. 971:
“It is true that the use of the mark COUNTESS by itself is not likely to deceive the customers. But if the two containers CUTICURA and COUNTESS are put side by side, it becomes apparent that in the get up, colour scheme and the similarity the containers are so similar that they easily confuse and deceive the customers. The defendant No.1 has adopted the get up and colour scheme of the container to the plaintiffs. in every detail and they are identical in appearance.”
(vi) In the case of Sodastream Ltd. v. Thorn Cascade Co Ltd. reported at 1982 RPC 459, the plaintiffs were marketing the gas cylinders of grey colour under their trademark ‘Sodastream’ and the defendants having also been marketing their black colour cylinders under their own trademark ‘Thorn Cascade’, the proposals of the defendants to refill the grey colour gas cylinders of the plaintiff, even with their own trademark amounts to passing off as the grey colour cylinder is distinctive of the plaintiffs in respect of which the reputation accrued in favour of the plaintiffs. Interlocutory injunction granted.
(vii) In another case Hoffmann-La Roche and Co. A.G. v. D.D.S.A. Pharmaceuticals Limited, reported in 1972 RPC 1, the plaintiffs manufactured and marketed chlordiazepoxide in distinctive black and green capsules bearing the word “Roche” on each capsule, the defendants also marked and advertised the drug chlordiazepoxide in black and green 10mg capsules which were identical to those of the plaintiffs except that they bore the letters “DDSA” instead of the plaintiffs’ name. The plaintiffs were granted interlocutory injunction to restrain the defendants from passing off capsules of the patented drug as the goods of the plaintiffs. It was held that marketing of the capsules by the defendants in almost identical form to those of the plaintiffs was calculated to cause damage to the plaintiffs. It was further held that there was a likelihood of confusion as both the capsules contained the same drug. The public were not concerned with the identity of the manufacturing of the capsules as long as the capsules contained the same substance and had the same effect.
(viii) In case of Smith Kline and French Laboratories Limited. vs Trade Mark Applications, reported at 1974 RPC 91 , it was observed as under:
“The upshot of all these cases is to my mind to establish that a scheme of colouring applied to goods may be a mark within the definition in Section 68. That definition as was pointed out in contrast to other definitions in the Act, starts with the word “includes” showing that the definition is purposely not limited to the precise words which follow. The combination of colour giving a speckled effect in the present case is, in my judgement, no less a mark than the red lines in Redduway's hose case of the “heading” in the cotton cases and in the Winter-Hoffmann-La Roche chlordiazepoxide case.”
It was further observed:
“The truth of the matter is I think as follows. In some cases the colour is an essential part of the article as an article whilst in others it is something which is not essential and has been added for some other reason. If it has been added so as to denote the origin of the goods, and the evidence shows that in practice it does so, it can properly be said that it is being used as a mark in the trade mark sense. The answer is no doubt one of degree and will depend on the evidence. It would be highly unlikely that colour in a lipstick could ever become distinctive of one manufacturer because in such a case colour is an essential element in and part of the article itself. It is for that reason that the customer buys it. Colour in a passenger motor car would normally be in a similar but not so conclusive a position, but I see no reason why a trader, as some do, should not paint his delivery vans or racing cars in specific distinct colours to indicate the origin of the car or of the goods it normally carries as emanating from him. With drugs, on the other hand, the position is the opposite of the lipstick. Colour is of no importance to the article as a drug and it may, if sufficiently, distinctive, be an exceedingly effective indication of origin.
It was further observed: I cannot see why other manufacturers should want to adopt the applicants. colour arrangements here except for the improper motive of trying to benefit from the latter's established goodwill.”
(ix) In the case of Tavener Rutledge Ld. v. Specters Ld. 1959 RPC 83, it was observed as under:
“It seems to me that one has to take into consideration people who have what is called imperfect recollection, as was pointed out in the case of Saville Perfumery Ld. v. June Perfect Ld. (1941) 58 RPC 147 and one has to allow for cases where the person who has not got the two tins side by side perhaps does not remember the plaintiffs name accurately, or does not know that there are two different traders in the same line of business, or many others for that matter, and takes a casual glance at the tin and imagines that it is the kind of fruit drops that he wants, not entirely casually, but looking at it in the ordinary way that such a customer would go into a shop and see a pile of tins or something of that sort. Afterwards of course raise objection, but it seems to me that it is a case of confusion if customers are induced to buy by a recollection of the general get up of the plaintiffs. tin so that they purchase a tin of the defendants. sweets by mistake and I am bound to say that I have come to the conclusion that such confusion is not only possible but is likely.”
31. During the course of arguments, it has not been denied on behalf of the defendant in the present case that the label/packaging material is not dis-similar. It is evident that the label/packaging used by the defendant is deceptively similar to that of the plaintiff. The colour combination, get-up and arrangement of features must have been designed by the defendant while placing the label and packaging of the plaintiff. Thus, the defendant is not the owner or the author of the impugned artistic work.
32. Admittedly, both the parties are engaged in the same business. They deal in the goods of similar nature. The said goods would be sold at the same shops and cater to the same class of purchasers. The chances of likelihood of confusion cannot be ruled out in such a case, the same being very high. The Supreme Court in the case of Parle Products (P) Ltd. Vs. J.P. and Co., Mysore AIR 1972 SC 1359 has referred to Karly's Law of Trade Marks and Trade (9th edition paragraph 838), which observed as
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under: “Two marks, when placed side by side, may exhibit many and various differences vet the main idea left on the mind by both may be the Ssame. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade-marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own.” 33. As far the issue of delay is concerned, the defendant has alleged that there is delay on part of the plaintiff to file the suit since the trademark POSH was registered in class 3 in the year 2005 without any objections. On perusal of the said trademark registration of the defendant dated 21st March, 2005, it is apparent that the same is granted for the label in yellow colour and is different from the impugned label. Even otherwise the defendant in Para 13 of its written statement has admitted that the defendant’s have only recently switched to pink colour get up while its product is in existence since the year 1999. No evidence has been produced by the defendant in respect of use of the impugned pink label as to since when has the same been used. In view thereof, the question of delay does not arise. The said contention of the defendant is rejected. 34. So far as the issue of jurisdiction is concerned, since the plaintiff has presence in Delhi, by virtue of Section 62(2) of the Act, this Court has the jurisdiction to entertain and try the present suit. 35. Thus, no grounds have been made by the defendant for vacation of the ex-parte order. On the other hand, the plaintiff has made a strong prima facie case for confirmation of the interim orders. All the conditions of granting the injunction in the present case are satisfied. Under these circumstances, the interim order passed on 29th May, 2014 is confirmed. Applications, being I.A. 10669/2014 and I.A. No 12699/2014, are disposed of accordingly. CS (OS) No.1660/2014 List before the Joint Registrar on 2nd December, 2014, the date already fixed.