JUDGMENT
D.G. Karnik, J.
1. Heard the learned Counsel for the parties.
2. This motion is taken out by the plaintiff in a suit filed by it for various reliefs including relief of injunctions restraining the defendants from infringing its trade marks “Society” and “Society Tea” and passing of its goods as that of plaintiff and in particular for preventing the defendant from using the word mark “Soyalty” or “Soyalty Tea” and also for restraining the defendants from infringing the plaintiffs copyright in the design of the packagings under which it markets its product “Society Tea”.
3. The plaintiff is the registered owner of the trademarks “Society” and “Society Tea” which are registered s word marks in relation to class of goods falling under Class 30 of the Trade Marks Rules. Copies of the registration certificates are annexed to the plaint as Exhibit-B and Bl. The plaintiff markets it’s product viz. tea leaves in a distinct tricolour packaging which has different shades of black and grey with distinct designs. The distinctive work in the design of the packaging is also registered as a work of arts in the register of copyrights on 20th January 1994.
4. In February 2005, plaintiff came to know that the defendants are also marketing tea leaves under the brand name “Soyalty Tea” in packagings which are deceptively similar to the plaintiffs packaging. The plaintiff came to know that the defendants are not only infringing its trade mark “Society” and “Society Tea” but are also passing of their goods in a deceptively similar packaging and also infringing their copyright in the design of the packaging. The plaintiff has produced on record copies of the packagings used by the plaintiff as also the copy of the packagings used by the defendant for its product. At the time of hearing, the learned Counsel for the parties have handed in the actual packets in which the plaintiffs product and defendants’ product are sold. The packets are returned to the respective Advocates after their perusal.
5. Learned Counsel for the defendant firstly submits that the plaintiffs suit is barred by limitation. He submits that so far as the infringement of the copyright is concerned, suit falls under Article 88 and so far as action for infringement of trademark is concerned, the suit falls under Article 113 of the Limitation Act. Under Article 88, the period of limitation for filing of a suit for infringement of a suit is three years from the date of infringement and under Article 113, the period of limitation for filing of a suit is three years to be completed from the date when the right to sue accrues. The plaintiff in paragraph Nos. 20 to 22 of the plaint clearly mentions that the plaintiff came to know of the infringement of the trade mark and passing of in February 2005. Suit has been filed on 18th March 2005 i.e. within a period of three years of the knowledge of the infringement. Learned Counsel for the defendants submit that the defendants have been marketing its product in the brand name “Soyalty Tea” and in the same packaging and since the year 1999. This fact is disputed and denied by the plaintiff. However, assuming that the defendant had been marketing its product since the year 1999 the every act of marketing a product by identical or by deceptively similar name or by using a deceptively similar packaging would amount to an act of infringement as passing of. usnder Section 22 of the Limitation Act, every continuing breach of contract or continuing tort gives rise to a fresh period of limitation. In my view, the infringement is a continuing tort and each continuing act of infringement gives rise to a fresh period of limitation from the date of each infringement. Therefore, there is no substance in the contention that the suit is barred by limitation.
6. Learned Counsel for the defendants secondly contends that though the present surname of defendant No. 2 is “Choudhary” the ancestral family name of defendant No. 2 who, is the proprietor of the defendant No. 1 was “Soyal” and, therefore, the defendants have adopted the name “Soyalty” to denote that it is a tea manufactured by the Soyal family. The defendant submits learned Counsel, has a right to use the name “Soyalty”. In Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietory Ltd., , this Court has held that even the defendant who had a surname “Kirloskar” could be restrained by an order of injunction from using the word “Kirloskar” in the corporate name of company formed by him as the word mark “Kirloskar” was registered as a trademark by the plaintiff. In the circumstances, the defence of the defendant that their brand name “Soyalty” represents the family name “Soyal” and, therefore, the defendants have a right to use it despite it being similar to the plaintiffs registered trade mark, has no merit. Even assuming otherwise if the defendants have not used the brand name “Soyal” for their product but have used the word “Soyalty” for the branding of their product and that brand name is deceptively similar to the plaintiffs trademark.
7. Learned Counsel for the defendant lastly contends that the word “Soyalty” is not similar much less deceptively similar to the plaintiffs registered word mark “Society” and the packaging is also not similar much less deceptively similar. In my view, there is a clear phonetic similarity between the words “Society” and “Soyalty”, and there is also visual similarity both in the packaging as well as manner and mode of writing of the brand name “Soyalty”. The two packagings are deceptively similar. Firstly, colour scheme of the defendants packaging is almost identical with the plaintiffs except for some un-noticeable change in the shades of the colours. The difference between two shades would only be noticed if two packagings are placed side by side and observed very minutely. If the two packagings are seen independently, it is difficult to notice any difference in the shades of colour or the colour scheme of the two packagings. The word “Society” is written vertically on the left hand side in silver colour on the plaintiffs packaging. The word “Soyalty” is similarly written vertically again in a silver colour on the left hand side of the defendants’ packaging. On the right hand side of the planitiff s packaging are shown four cups with saucers, while on of the defendants’ packaging, there are five mugs without saucers. Saucers is not the distinctive part of the packagings and what strikes one is visual similarity of the placing of the mugs in the same fashion as that of the plaintiffs cups and saucers. On the reverse side of the packaging, there are photographs, one of a cup and saucer with the tea in the cup which is common in both the packagings, the other is a photograph of a woman drinking tea in a sup which is also common in both the packagings. Perhaps the only difference is the difference in the age of the woman shown in two photographs. There is an overall similarity between the two packaging. In my view, a person of average intelligence and imperfect recollection is likely to believe that the defendants’ product is the product of the plaintiff.
8. The plaintiff has made out a strong prima facie case for grant of injunction and the appointment of a receiver with the my view, it is also necessary to appoint a receiver in terms of prayer Clause (d) of the motion with the modification that the receiver shall only taken the infringing materials in his custody but shall preserve them during the pendency of the motion without destroying them.
9. In the circumstances, there shall be ad-interim relief in terms of prayer Clauses (a), (b) and (c) of the motion. Receiver is also appointed in terms of prayer Clause (d) with the modification that the Receiver shall only take the infringing material and goods in his custody but shall not destroy them pending the final disposal of the motion.
10. Motion is made returnable early.