JUDGMENT
Ashim Kumar Banerjee, J.
1. The instant suit was filed by the plaintiff against the defendants inter alia alleging infringement of trademark and copyright. The present application was made inter alia praying for injunction restraining the respondents from using the design of the labels being Annexures-A1 and A2 of the petition. When the application was initially moved this Court passed an order in terms of prayers (a) and (b) of the petition. Such order was passed on February 4, 2002 and is still subsisting. Now the matter came up for hearing before me and was heard by me on the abovementioned date.
2. The plaintiff’s the registered trademark and copyright holder of trademark and copyright of Pataka Biri as would appear from the certificate of registration annexed to the petition. The defendants were also the manufacturer of biri which was being sold at all material times with the mark Sahensha biri. Of late in 2001 the defendants started manufacturing and sale of biri in the name of Sagar Special Biri which was being sold with the rapper designed similarly with the registered mark of the plaintiff. Both the marks as appearing in the different labels were annexed to the pleadings, I have compared those labels and I am of the view that the label of the defendants were designed in such a way that an illiterate person who does not know how to read might be deceived by the label of the defendants that is to say an illiterate person might purchase the product of the defendants thinking it to be the products of the plaintiff. It is however made clear that there is an little chance for a literate person to mix up the labels at the time of purchase.
3. Mr. Ranjan Bachawat, learned Counsel appearing in support of this application, contended that class of user of the product are mostly illiterate and half literate persons. According to Mr. Bachawat that there is every likelihood for confusion being raised in the mind of the consumers while purchasing the product of the plaintiff or the defendants. Mr. Bachawat also, contended that while considering the fact whether there had been any infringement or attempt of infringement of the design one would have to consider the class of persons consuming that particular product as well as whether there was any attempt made by the defendant to copy the mark of the plaintiff without having any sufficient explanation for the same. In support of his contention Mr. Bachawat cited the following cases :
(i) , Kabiraj Pandit Durgadutta Sharma v. Nabaratna Pharmaceuticals Laboratories; (ii) , Anglo Dutch Paint, Colour and Varnish Works Pvt. Ltd. v. Indian Trading House; - (iii) AIR 1987 Delhi, page 312, Vrajlal Madanlal v. N. S. Biri; (iv) 1990 RPC, page 341, Reckitt & Colman Products Ltd. v. Borden Inc. and Ors.; (v) , Prem Singh v. Ceeam Auto Industries; (vi) 1998 PTC, page 47, Aktiebolaget Volvo v. Volvo Steels Ltd.; (vii) 1999 PTC, page 757, Rotomac Pens Ltd. v. Milap Chand & Co.; (viii) 2001 PTC, page 300 (SC), Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.
4. Mr. Utpal Bose, learned Counsel appearing for the defendants contended that the marks were not at all identical and as such there was no question of the consumer being deceived by the product of the defendants. Mr. Bose also contended that if a person while purchasing the goods carelessly purchased the goods of the defendants thinking it to be of the plaintiff that could not be a ground to support the allegation of infringement. In support of his contention Mr. Bose relied upon the decision of Delhi High Court in the case of Kellogg Company v. Pravin Kumar, reported in 1996 PTC, page 187.
5. To decide the instant issue may I first deal with the cases cited by the parties.
(i) Kabiraj Pandit Durgadutta Sharma v. Nabaratna Pharmaceuticals Laboratories : While dealing with an identical issue the Apex Court framed a guideline to determine similar nature of disputes (i) that there was the intention on the part of the proprietor of the mark to indicate by its use the origin of the goods on which it was used and (ii) that there is undoubtably evidence regarding the recommendation of that mark as indicating origin on the part of that section of the public who buy these goods in the course of trade or for consumption.
(ii) , Anglo Dutch Paint, Colour and Varnish Works Pvt. Ltd. v. Indian Trading House: In this Single Bench decision the Delhi High Court observed that the combination of colour is also relevant factor in the case of a registered mark. Paragraph 10 of the said judgment being relied upon is quoted below :
“It was argued by Shri J.R. Goel on behalf of the defendant that there is nothing distinctive in the colour combination of the plaintiff’s container and the plaintiff could not have a trade mark in colour combination. I am afraid I cannot agree with this submission. The colour combination is not descriptive but is distinctive. The definition of the ‘mark’ as contained in Clause (j) of Section 2 of the Trade and Merchandise Marks Act, 1958 is not exhaustive and the definition is such that there is practically no limit to the combination of various types of marks. A dealer can therefore have a trademark in combination of colours though not on an individual colour. In the present case, the combination of violet background and a large circle with white background and grey lettering is distinct combination of colours and there is no legal bar to a person acquiring a trademark in such combination of colours for his containers”.
(iii) AIR 1987 Delhi, page 312, Vrajlal Madanlal v. N. S. Biri: Paragraphs 7 and 9 of this judgment were relied upon. Here two labels of different manufacturers of biri came up for consideration before the Single Bench of the Delhi High Court. Upon comparing the labels the learned Judge came to conclusion that the resemblance between the two labels were extremely close. The learned Judge also observed that biri is consumed by illiterate and unwary purchasers and it would be impossible for them to decipher an imperceptible difference when would not have been even found by a reasonable intelligent buyer.
(iv) , Prem Singh v. Ceeam Auto Industries : Paragraph 34 of this judgment was relied upon. In this case the learned Single Judge of the Delhi High Court observed that in order to succeed in an infringement of copyright or passing of action, a party has to show that he is originator in the sense that the concept emanated from him and further that the given design or get up or style has become distinctive of his goods to the extent that the trading public associates his goods exclusively with the given design or get up. The moment that is established even prima facie, the Courts have never hesitated in stopping the opposite party, shown to have adopted by imitation or other disputation means the design or get up of the first party, from continuing with the mischief, because that is treated to be a rank instance of dishonesty by the second party.
(v) 1996, PTC, page 187, Kellogg & Company v. Pravin Kumar : In this case two parties were manufacturer and seller of corn flakes. The plaintiff/petitioner alleged that they copied the design and label of the Kellogg Corn Flakes and as such there had been a case of infringement. The Division Bench of the Delhi High Court rejected such plea on the ground that even though the get up was similar but different names Kellogg and Aims Aristo displayed, make all the difference and as such that was not a fit case for interference.
(vi) 1998 PTC, Vol-18, page 47, Aktiebolaget Volvo v. Volvo Steels Ltd. : In this case the Division Bench of the Bombay High Court held that the absolute identity of the two marks or there close resembles is only one of the tests for determining the question of likelihood of deception or confusion. The Division, Bench held as follows :
“The curx of the passing off action lies in actual or possible or probable deception. The plaintiffs necessarily has to establish reputation and goodwill.
In quia timet action he must also show the probability of the plaintiffs suffering damage either in trade or to his goodwill and reputation deception may be of several kinds i.e. that the public may think that the goods manufactured by the defendants are in fact manufactured by the plaintiffs or that there is some trade connection or association of the defendants with the plaintiffs. It is also clear that the transborder reputation has been recognized by the Indian Courts and as a matter of law it is not necessary to prove the actual sale, if by other material presence of the plaintiffs in India and goodwill and reputation in India is demonstrated. It is also clear to us that as a matter of law the ‘common field of activity’ is not required to be established. However, as the crux of passing off action lies in possible deception, the existence of common field of activity is always a relevant consideration. If there is common field of activity, possibility of deception is very high and if there is no common field of activity possibility may be less, but it cannot be laid down as a rule of laws that there can be no possibility at all”.
(vii) 1999 PTC, Vol-19, page 757, Rotomac Pens Ltd. v. Milap Chand & Co. : In this case the names of two products were different. Even then the Division Bench held that the registered design gives some amount of protection and there cannot be any denial with regard thereto and the statute is clear and categoric on the score. The Division Bench found that the designs of the respondents were imitations of the appellant’s registered design and as such constituted infringement of copyright and as a consequence granted order of injunction.
(viii) 2001 PTC, page 300 (SC), Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. : In this case the Apex Court considering the earlier decisions of the Apex Court and other High Courts made out a guideline to consider the similar problems. Such guidelines are quoted supra :–
“(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 marks.
(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”.
(ix) 2002 PTC, Vol-24, page 577, Glaxo India Limited v. Akay Pharma Private Limited : The Single Bench of the Delhi High Court in this case held that any colour scheme or get up or layout or arrangement of any alphabets or feature is undoubtedly an aritistic work. It is needless to say that such identity as to the distinct features comprising of colour scheme get up layout or arrangement of features involves huge expenses and over the period identifies the manufacturers with their product so much that even the unwary or illiterate customers using the said products identify the product from the colour scheme get up and layout and arrangement of features of alphabets imprinted either upon the containers or the packing.
6. Considering the aforesaid principles of law in my view the labels of the defendants are undoubtedly similar to that of the plaintiff. The colour combination and the get up are very close to each other. I am fully in agreement with the decision of the Delhi High Court in the case of Vrajlal Madanlal v. N. S. Biri, that the biri consumers are mostly illiterate persons and as such it would not be possible for them to decipher the product of the defendants from the products of the plaintiff. Hence, Mr. Bose’s contention that the names of the two products are different and as such there is no question of any similarity cannot be accepted. In this connection. Mr. Bose also put emphasis on the fact that the picture appearing in the plaintiff’s product is of an adult whereas the defendant products contain a child’s picture. On a comparison of two labels it would appear that the picture of a male person was given in a circle and at a place identical to each other. The colour combination used in both the labels are almost identical. Hence, it would not be possible for a common man to decipher these two products. In any event unless and until the suit is tried on proper evidence it would not be appropriate for me to allow the defendants to use those labels which would create immense prejudice to the plaintiff if they succeed ultimately.
7. Plaintiffs, in my view, have established a strong prima facie case in support of their prayer for interim injunction. The balance of convenience is also in favour of the plaintiff in passing an order of injunction.
8. In the result the application succeeds. The ad interim order passed on 4th February, 2002 is confirmed and would continue till the disposal of the application.
9. Since both the defendants are represented by their advocates I expedite the hearing of the suit. Written statement be filed within four (4) weeks from date. Cross order for Discovery within four (4) weeks thereafter, inspection forthwith. Let the suit appear in the monthly list of July, 2004 before the regular Bench for hearing.
10. Urgent xerox certified copy would be given to the parties, if applied for.