Defendants have infringed Registered Trade mark of Plaintiff ‘NIHAR’ thereby deceiving unwary customers of knowledge, intelligence and imperfect recollection; products of Defendants are deceptively similar to that of Plaintiff and are similar to trade dress of Plaintiff

MIPR 2018 (1) 0104 = MANU/WB/0844/2017

 

IN THE HIGH COURT OF CALCUTTA

Marico Limited

vs

G.P.L. Oil Company and Anr.

CS 69 OF 2011 DECIDED ON: 02.11.2017

Judge

Sahidullah Munshi, J.

Counsel

For Appellant/Petitioner/Plaintiff: Tilak Bose, Sr. Adv., Subhasish Sengupta, Suvradal Choudhury, Souma Bhattacharya and Srija Banerjee, Advs.

Cases referred

Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. MANU/SC/0199/2001: (2001)
5 SCC 73: AIR 2001 SC 1952: 2001 GLH (2) 53: (2001) 2 GLR 491: JT 2001 (4) SC
243:2001 (2) RCR (Civil) 579:2001 (3) SCALE 98: (2001) 2 SCR 743: 2001 (1) UJ 669
(Relied on)

Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories MANU/SC/0197/1964: A\R 1965 SC 980:1965 KLJ 690: (1965) 1 SCR 737 (Relied on)

Marico Limited v. ].K. Enterprises & Ors. MANU/WB/0431/2010:2010 (44) PTC 443
(Cal) (Relied on)

  Indian Evidence Act, 1872

Section 65B                                                                                            

 

 

Trade marks Act, 1999

Section 2(h)                  .

Section 9

Section 27

Section 27(2)

Section 28

Section 29

Section 31

Section 57

HEAD NOTE

Trade mark – Infringement – Passing off – Section 27(2) of Trade marks Act, 1999 –

HELD, unchallenged testimony of Plaintiff based on exhibits of case clearly establishes case made out in plaint. It establishes that, Defendants have infringed Registered Trade mark of Plaintiff ‘NIHAR’ thereby deceiving unwary customers of knowledge, intelligence and imperfect recollection; products of Defendants are deceptively similar to that of Plaintiff and are similar to trade dress of Plaintiff; Defendants are using mark ‘NIKHAR’ in continuation with trade dress including design, layout, colour scheme and get up which are deceptively similar to trade dress of Plaintiff bearing mark ‘NIHAR’. Further mala fide object of Defendants is to deceive and confuse consumers and to pass off product of Defendants as those of Plaintiff. Mark ‘NIKHAR’ is deceivably similar to that of Plaintiff’s well-known mark ‘NIHAR’. Plaintiff has been able to prove that mark ‘NIHAR’ is of well-known mark. Defendant is trying to pass off its products as that of Plaintiffs and has been established by acceptable evidence. Section 27(2) of Act, supports action of Plaintiff. Plaintiff is a prior user of Trade mark ‘NIHAR’ and is entitled to exclusive use of same to exclusion of others. Defendants have wrongfully and illegally adopted Trade mark ‘NIKHAR’ particularly added an alphabet to create confusion and deception in course of trade and thereby consumers, dealers in market may have a confusion or likelihood of confusion. By adopting impugned Trade mark, Defendants have passed off its goods in market as that of Plaintiff’s goods and/or product and customers of average intelligence would be confused in ordinary course of trade. Defendants are liable for passing off coconut oil bearing Trade mark ‘NIHAR’ and/or trade dress ‘NIHAR’ of Plaintiff by substantial reproduction or colourable imitation thereof and they are also liable for infringing Trade mark ‘NIHAR’ by substantial reproduction or colourable imitation thereof. Plaintiffs are entitled to perpetual injunction as sought for in plaint. Hence Plaintiffs are entitled to decree as prayed for. Therefore, suit is decreed.

JUDGMENT

Sahidullah Munshi, J.

  1. The present Suit Being C.S. No. 69 of 2011 filed by Marico Limited, is for injunction against infringement of Trade mark, passing off and infringement of Copyright. The

 

Defendants entered appearance at the interlocutory stage but did not file any written statement to contest the suit. Record reveals that on 24th November, 2016 Hon’ble Justice Shivakant Prasad passed an order directing the matter to appear under the heading ‘undefended suit’. After 24th November, 2016 matter appeared in the list on 5′h December, 2016, 20th December, 2016, 17* January, 2017, 13th February, 2017, 3rd April, 2017, 11th May, 2017 and 20lh June, 2017. But no attempt was made by any Advocate to represent the Defendants.

  1. The fact of the case in a nutshell is as follows:-
  • That the Plaintiff is well-known manufacturer and trader of coconut oil,
    hair oil, perfumed hair oil and/or allied products. Its products are being sold
    in market under various reputed Trade names like NIHAR, SAFFOLA,
    MEDIKAR, PARACHUTE as more fully and particularly described in
    paragraph 5 of the plaint.
  • Plaintiff has sought to make out a case that on or about 17th February, 2006,
    M/s. Hindustan Lever Limited, the predecessor-in-interest of the Plaintiff,
    pursuant to the execution of a Deed of Assignment (Ext. A and B), transferred,
    assigned and conveyed all its right, title and interest and property whatsoever
    in the Trade mark ‘NIHAR’, for valuable consideration to the Plaintiff.
  • The said Deed of Assignment would reveal that prior to Hindustan Lever
    Limited, the mark ‘NIHAR’ belonged to the TATA Group (formerly known as
    TOMCO) at least since 1994. Since 1994, Hindustan Lever Limited had been
    manufacturing and marketing coconut oil, inter alia, under the brand name
    ‘NIHAR’. The Plaintiff became the owner of the Trade mark ‘NIHAR’ with
    its goodwill in India by virtue  of the  aforesaid  assignment  dated
    17th February, 2006.

(d)     Prior    to    such    assignment,    Hindustan   Lever   Limited,    the
predecessor-in-interest of the Plaintiff, obtained the registration of the Trade
mark ‘NIHAR’ (both word and label) in class 42 in order to protect its interest
over the said Trade mark ‘NIHAR’ under the provisions of the Trade marks
Act, 1999. The Plaintiff had also obtained the registration of the label ‘NIHAR’
in class 29 under the provisions of the Trade marks Act, 1999 (Ext. C) collectively
being the registration certificates.

  • It has been claimed by the Plaintiff that by virtue of the said Deeds of
    Assignments Plaintiff became the proprietor and owner of the Trade mark
    ‘NIHAR’ and the Copyright in the artistic work in connection therewith.
    However, Plaintiff filed applications for change of name in respect of Registered
    Trade mark ‘NIHAR’ under class 42 bearing Registration No. 1241348 dated
    5lh October, 2007 and 636900 dated 24th June, 2009 respectively in Form TM- 24
    before the Trade mark registry (Ext. C) collectively being the Form TM- 24.
  • According to the Plaintiff, it has advertised extensively in the Television
    channels about its products and the same has become a household name in
    The Plaintiff has commissioned several leading advertising agencies to
    release the Plaintiff’s product commercially and advertised in the Television
    as well as print media.
  • The said brand of coconut oil is of the highest quality and the colour scheme
    and get up being the substantial features of the packets, cartons, labels, bottles

 

and jars, have become distinctive and have been exclusively associated with the products of the Plaintiff and no one else.

(h) Pursuant to distinctiveness of the label which has been exclusively designed and adopted by the Plaintiff, it has a right to protect the trade dress as against unauthorized use.

(i) Pursuant to distinctiveness of the bottles and labels which are exclusively designed and adopted by the Plaintiff, it has right to protect the mark and trade dress against unauthorized users. The label used by the Plaintiff has been shown at Annexure ‘B’ to the plaint.

(j) According to the Plaintiff, due to extensive use, advertisement and sales in the market, the product of the Plaintiff under the Trade mark ‘NIHAR’, has acquired goodwill and reputation in the market and the Trade mark ‘NIHAR’ has become a ‘well-known Trade mark’.

(k) In or about second week of March, 2011, Plaintiff came to learn for the first time that the Defendant No. 1 was making and selling coconut oil in bottles of various shapes and sizes, inter alia, in 40 ml, 45 ml and 100 ml bottles having its own get up and colour scheme which is “deceptively similar” to the trade dress of the Plaintiff in respect of ‘NIHAR’ coconut oil and/or a colourable imitation therewith. On enquiry, the Plaintiff came to learn that Defendant \To. 1 is a firm and the Defendant N’o. 2 is the person-in-charge of the affairs of the said firm and/or is an alter-ego of the said firm.

(1) Defendant No. 2 described himself to be a manufacturer of coconut oil and was claiming that Defendant No. 1 was his concern. From the information available to the Plaintiff, all business decisions in respect of Defendant No. 1 firm, were taken by the Defendant No. 2. Defendant Nos. 1 and 2 were processing, packaging, marketing and selling coconut oil under the mark ‘NIHAR’. Plaintiff came to learn that the Defendants were making and selling coconut oil with the mark ‘NIKHAR’ in various parts of Bihar, Jharkhand and West Bengal, both within and outside the ordinary original civil jurisdiction of this Court. In some of the bottles bearing the mark ‘NIKHAR’, the product is alleged to be processed by the Defendant No. 1 and in some bottles the product is alleged to have been packed by the Defendant No. 1.

(m) From the enquiry made by the Plaintiff it was found that the products were also manufactured by Defendant No. 1 within the aforesaid jurisdiction. It is also the claim of the Plaintiff that the name and address of the manufacturer and other requisite various details of the product are not being displayed by the Defendant in the bottles in violation of various statutory regulations.

(n) The bottles in which coconut oil is being sold by the Defendant, bearing word ‘NIKHAR’, are identical in shape, size and colour with the bottle in which the products of the Plaintiff are also sold bearing the mark ‘NIHAR’.

(o) The bottles of the Defendant bearing the word ‘NIKHAR’ are of transparent bottles with slight curvature in the middle and have a green cap (except the 50 ml bottle of the Defendant having a flip top cap instead of screw cap). The word ‘NIKHAR’ is also printed in deep green with a golden border and the said word is written in a particular font which is similar to the way ‘NIHAR’ is written and in an elliptical background.

 

 

 

 

 

 

 

(p) In the label of the Defendants, below the word ‘NIKHAR’ the word ‘Naturals’ is printed in deep green and in italics and below the said word ‘Naturals’, there is a golden line segment with two leaves in deep green across such line. As the case of the Plaintiff’s label, the Defendants’ impugned label also has got a prominent stroke of green colour from left hand side top towards the bottom right side. There are Jasmine flowers printed in white scattered in the said label of the Defendants. A picture of a woman appears in the said label and the word ‘JASMINE’ is printed in white against a coloured background.

(q) The predominant colour of the label of the Defendants is two shades of green, one light and the other dark. On the reverse of the bottle various particulars of the product are printed in green with the word ‘NIKHAR’ appearing at the top.

(r) The impugned label of the Defendants would appear from Annexure ‘G’ to the plaint.

  1. In such circumstances the Plaintiff filed the suit praying necessary reliefs.
  2. Plaintiff also filed an interlocutory application being G.A. No. 999 of 2011 before
    this Hon’ble Court which passed an interim order on 4th April, 2011 to the following
    effect:-

 

  • injunction restraining the Respondents and each one of them whether by
    themselves or of their servants, agents and assigns or otherwise howsoever
    from infringing or caused to infringe or enabling others to infringe the Trade
    mark ‘NIHAR’ of the Petitioner for any other mark which is of substantial
    reputation or colourable imitation therewith;
  • injunction restraining the Respondents and each one of them whether by
    themselves or by their servants, agents or assigns or otherwise howsoever
    from selling or offering for sale or marketing ‘NIKHAR’ coconut oil in any
    manner whatsoever or in any way using the impugned label contained in
    Annexure ‘}’ herein or any colourable imitation therewith;”
  1. At the interlocutory stage this Hon’ble Court also appointed a Receiver in terms of
    Prayer ‘A’ of the petition with Authority to enter into the business premises of the
    Defendants, take custody of the infringed goods and make an inventory. The said
    order dated 4th April, 2011 appears at page 153 and 154 of the Judges Brief of
    Documents. While passing the aforesaid order dated 4th April, 2011, this Hon’ble
    Court observed that the Plaintiff is the Registered proprietor of the mark ‘NIHAR’ in
    respect of hair oil. The design of the Plaintiff’s plastic bottles and the get up appears
    to have been substantially copied by the First Defendant, ‘NIKHAR’ brand of light
    perfumed oil. Although, the Defendants appeared at the interlocutory stage, but
    such observation appeared not to have been challenged in appeal. By a subsequent
    order dated 12th July, 2011, the said order dated 4th April, 2011 (ex parte) was
    confirmed holding, inter alia, “the Defendants have also agreed that the Defendants
    will not use the labels that have been impugned in the present proceedings. The
    Defendants have filed an affidavit disclosing a new label that the Defendants
    proposed to use and the Defendants seek approval of the Court in such regard. The
    Plaintiff asserts that since the suit relates to the impugned labels of the Defendants
    and their resemblance to the Plaintiff’s label, the Court should refrain from going
    beyond the scope of the suits to specifically approve of label and the Defendants
    said that they will now use.”

 

 

  1. In support of the plaint case Ms. Ekta Sarin, legal Manager of the Plaintiff Company,
    has deposed on behalf of the Plaintiff on 21st July, 2017. In order to prove the plaint
    case the witness has produced the following documents those have been marked as
    Exhibits:

Ext. A- this is a Deed of Assignment for Trade mark by and between Hindustan Lever Limited (Assignor) and Marico Limited, the Plaintiff (Assignee).

Ext. B Deed of Assignment for Copyrights for India by and between Hindustan Lever Limited (Assignor No. 1) and Unilever India Exports Limited (Assignor No. 2) and Marico Limited (Assignee – the Plaintiff).

Ext. C – collectively- Trade mark registration and renewal certificate (three certificates in all) with photocopy of Form TM- 24 and Deed of Assignment for Trade mark.

Ext. D – collectively being Notarized certificate under Section 65B of the Indian Evidence Act, 1872 together with print out invoice.

Ext. E – collectively Notarized certificate under Section 65B of the Indian Evidence Act, 1872 together with photocopies of advertisements.

Ext. F – collectively certificates of Chartered Accountants.

  1. The witness has confirmed in the box that Trade mark ‘NIHAR’ is a Registered
    one. She has also proved the Trade mark registration and renewal certificates on
    DOC (Ext. C collectively). In answer to question No. 103, the witness has identified
    the photograph of the product as ‘NIHAR Naturals’ being the photograph at
    Annexure ‘B’ to the plaint which is the trade dress of the Plaintiff. In answer to
    question No. 104, the witness has also deposed that the said photograph being
    Annexure ‘B’ to the plaint, is of 2011. She has further deposed that she has used that
    particular label in ‘NIHAR NATURALS’ product. The witness in the box confirmed
    in answer to Question No. 118 that identical mark ‘NIKHAR’ appears in the label of
    the Defendants in place of ‘NIHAR’. In Question No. 119, she deposed-

The Defendants’ label also has a green cap. Nikhar is written in a similar manner on the top portion of the label like Nihar. The flowers are on this as well. The colour combination is green and white. The picture of the lady lies in a similar position on the bottle.

  1. The unchallenged testimony of the Plaintiff based on the exhibits of this case
    clearly establishes the case made out in the plaint. It establishes that the Defendants
    have infringed the registered Trade mark of the Plaintiff ‘NIHAR’ thereby deceiving
    unwary customers of knowledge, intelligence and imperfect recollection; the products
    of the Defendants are deceptively similar to that of the Plaintiff and are similar to the
    trade dress of the Plaintiff; the Defendants are using the mark ‘NIKHAR’ in
    continuation with the trade dress including the design, layout, colour scheme and
    get up which are deceptively similar to the trade dress of the Plaintiff bearing the
    mark ‘NIHAR’. The mala fide object of the Defendants is to deceive and confuse the
    consumers and to pass off the product of the Defendants as those of the Plaintiff.
  2. The mark ‘NIHAR’ is Registered in class 29 in favour of the Plaintiff. Said mark is
    also Registered in favour of Hindustan Lever Limited under class 42. Application
    for change of name in TM- 24 form appears to be pending and thus, there is no doubt
    that the present action of the Plaintiff with regard to infringement is maintainable.

 

  1. Sections 27, 28, 29 and 31 of the Trade marks Act, 1999 are relevant for the present purpose and the same are set out below:
  2. No action for infringement of unregistered Trade mark.-(l) No person shall
    be entitled to institute any proceeding to prevent, or to recover damages for, the
    infringement of an unregistered Trade mark.

(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.

  1. Rights conferred by registration.-(1) Subject to the other provisions of this
    Act, the registration of a Trade mark shall, if valid, give to the Registered
    proprietor of the Trade mark the exclusive right to the use of the Trade mark in
    relation to the goods or services in respect of which the Trade mark is registered
    and to obtain relief in respect of infringement of the Trade mark in the manner
    provided by this Act.
  • The exclusive right to the use of a Trade mark given under Sub-section (1)
    shall be subject to any conditions and limitations to which the registration is
  • Where two or more persons are registered proprietors of Trade marks, which
    are identical with or nearly resemble each other, the exclusive right to the use
    of any of those Trade marks shall not (except so far as their respective rights are
    subject to any conditions or limitations entered on the Register) be deemed to
    have been acquired by any one of those persons as against any other of those
    persons merely by registration of the Trade marks but each of those persons
    has otherwise the same rights as against other persons (not being Registered
    users using by way of permitted use) as he would have if he were the sole
    Registered proprietor.
  1. Infringement of registered Trade marks.-(1) A registered Trade mark is
    infringed by a person who, not being a Registered proprietor or a person using
    by way of permitted use, uses in the course of trade, a mark which is identical
    with, or deceptively similar to, the Trade mark in relation to goods or services
    in respect of which the Trade mark is registered and in such manner as to
    render the use of the mark likely to be taken as being used as a Trade mark.

(2) A Registered Trade mark is infringed by a person who, not being a Registered
proprietor or a person using by way of permitted use, uses in the course of
trade, a mark which because of-

  • its identity with the registered Trade mark and the similarity of the
    goods or services covered by such Registered Trade mark; or
  • its similarity to the registered Trade mark and the identity or similarity
    of the goods or services covered by such Registered Trade mark; or
  • its identity with the registered Trade mark and the identity of the
    goods or services covered by such registered Trade mark, is likely to
    cause confusion on the part of the public, or which is likely to have an
    association with the registered Trade mark.

(3)   In any case falling under Clause (c) of Sub-section (2), the Court shall
presume that it is likely to cause confusion on the part of the public.

 

(4)  A registered Trade mark is infringed by a person who, not being a Registered
proprietor or a person using by way of permitted use, uses in the course of
trade, a mark which-

  • is identical with or similar to the registered Trade mark; and
  • is used in relation to goods or services which are not similar to those
    for which the Trade mark is Registered; and
  • the registered Trade mark has a reputation in India and the use of the
    mark without due cause takes unfair advantage of or is detrimental to,
    the distinctive character or repute of the registered Trade mark.

(5)  A registered Trade mark is infringed by a person if he uses such registered
Trade mark, as his Trade name or part of his Trade name, or name of his
business concern or part of the name, of his business concern dealing in goods
or services in respect of which the Trade mark is registered.

(6)  For the purposes of this section, a person uses a Registered mark, if, in

particular, he-la) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered Trade mark, or offers or supplies services under the registered Trade mark;

(c) imports or exports goods under the mark; or (d) uses the Registered Trade mark on business papers or in advertising.

  • A registered Trade mark is infringed by a person who applies such registered
    Trade mark to a material intended to be used for labeling or packaging goods,
    as a business paper, or for advertising goods or services, provided such person,
    when he applied the mark, knew or had reason to believe that the application
    of the mark was not duly authorised by the proprietor or a licensee.
  • A registered Trade mark is infringed by any advertising of that Trade mark

if such advertising-fa) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

  • is detrimental to its distinctive character; or
  • is against the reputation of the Trade mark.

(9)  Where the distinctive elements of a registered Trade mark consist of or
include words, the Trade mark may be infringed by the spoken use of those
words as well as by their visual representation and reference in this section to
the use of a mark shall be construed accordingly.

  1. Registration to be prima facie evidence of validity.-(l) In all legal proceedings relating to a Trade mark Registered under this Act (including applications under Section 57), the original registration of the Trade mark and of all subsequent assignments and transmissions of the Trade mark shall be prima facie evidence of the validity thereof.

(2) In all legal proceedings as aforesaid a registered Trade mark shall not be held to be invalid on the ground that it was not a registrable Trade mark under

 

Section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the Trade mark had been so used by the Registered proprietor or his predecessor in title as to have become distinctive at the date of registration.

  1. In the present case, apart from the above it is evident that the mark ‘NIKHAR’ is
    deceivably similar to that of the Plaintiff’s well-known mark ‘NIHAR’. The Plaintiff
    has been able to prove that the mark ‘NIHAR’ is of well-known mark. The Defendant
    is trying to pass off its products as that of the Plaintiffs and has been established by
    acceptable evidence. Sub-Section (2) of Section 27 supports the action of the Plaintiff.
  2. Evidence further establishes that-

(i) Trade dress including the get up, layout, colour scheme and colour combination of the Defendants’ products is identical, deceivably similar and/or colourable imitation of the Plaintiff’s label;

(ii) Plaintiff is a prior user of the Trade mark ‘NIHAR’ and is entitled to exclusive use of the same to the exclusion of others;

(iii) Defendants have wrongfully and illegally adopted the Trade mark ‘NIKHAR’ particularly added an alphabet to create confusion and deception in the course of trade and thereby the consumers, dealers in the market may have a confusion or likelihood of confusion;

(iv) By adopting the impugned Trade mark the Defendants have passed off its goods in the market as that of Plaintiff’s goods and/or product and the customers of average intelligence would be confused in the ordinary course of trade.”

  1. In support of his case learned Senior Counsel appearing for the Plaintiff, relied
    upon the following decisions in the case of Durga Dutt Sharma v. Navaratna
    Pharmaceutical Laboratories1, reported in AIR 1965 SC 980 =  MANU/ SC/ 0197 /1964 : 1965 KLJ 690: (1965) 1 SCR 737

Mr. Bose has relied on paragraph 28 of the said judgment and the same is set out below:

  1. The other ground of objection that the findings are inconsistent really proceeds on an error in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered Trade mark and in equating the essentials of a passing off action with those in respect of an action complaining of an infringement of a Registered Trade mark. We have already pointed out that the suit by the Respondent complained both of an invasion of a statutory right under Section 21 in respect of a registered Trade mark and also of a passing off by the use of the same mark. The finding in favour of the Appellant to which the learned Counsel drew our attention was based upon dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in their colour and other features and their general get-up together with the circumstance that the name and address of the manufacture of the Appellant was prominently displayed on his packets and these features were all set out for negativing the Respondent’s claim that the Appellant had passed off his goods as those of the Respondent. These matters which are of the essence of the cause of action for relief on the ground

 

of passing off play but a limited role in an action for infringement of a registered Trade mark by the Registered proprietor who has a statutory right to that mark and who has a statutory remedy in the event of the use by another of that mark or a colourable imitation thereof. While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered Trade mark for the vindication of the exclusive right to the use of the Trade mark in relation to those goods (Vide Section 21 of the Act). The use by the Defendant of the Trade mark of the Plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered Trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a Trade mark in a passing off action would also be such in an action for infringement of the same Trade mark. But there the correspondence between the two ceases. In an action for infringement, the Plaintiff must, no doubt, make out that the use of the Defendant’s mark is likely to deceive, but where the similarity between the Plaintiff’s and the Defendants mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the Plaintiff’s rights are violated. Expressed in another way, if the essential features of the Trade mark of the Plaintiff have been adopted by the Defendant, the fact that the get – up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the Registered proprietor of the mark would be immaterial; whereas in the case of passing off, the Defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the Plaintiff.

  1. In the said judgment, the Hon’ble Apex Court has clearly pointed out the
    distinctive features in an action for infringement. It has been held that in an action
    for infringement, the Plaintiff must, no doubt, make out that the use of the Defendant’s
    mark is likely to deceive, but where the similarity between the Plaintiff’s and the
    Defendant’s mark is so close either visually, phonetically or otherwise and the Court
    reaches the conclusion that there is an imitation, no further evidence is required to
    establish that the Plaintiff’s rights are violated.
  2. The ratio decided in the said case squarely covers the fact situations of the
    present case and, therefore, the same is applicable here and undoubtedly it can be
    held that the Defendants have deceived the Plaintiff by adopting the Trade mark of
    the Plaintiff.
  3. Bose relied upon another decision in the case of Cadila Health Care Ltd. v.
    Cadila Pharmaceuticals Ltd.2, reported in (2001) 5 SCC 73. Mr. Bose has relied on
    paragraph 35 of the said decision which is set out below:

 

 

  1. Broadly stated in an action for passing off on the basis of unregistered Trade mark generally for deciding the question of deceptive similarity the following factors to be considered:
  • 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 works.
  • The degree of resembleness between the marks, phonetically similar
    and hence similar in idea.
  • The nature of the goods in respect of which they are used as Trade
  • The similarity in the nature, character and performance of the goods
    of the rival traders.
  • 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.
  • 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.

  1. The Hon’ble Apex Court in this case has described various factors required to be
    considered in an action for passing off for deciding the question of deceptive
    similarity, namely,
  • Nature of mark;
  • Degree of resemblance between the marks phonetically similar and similar
    in idea;
  • Nature of goods;

 

  • Similarity in nature, character and performance of the goods of the rival
    traders;
  • Class of purchasers;
  • Mode of purchasing of goods and

(g)   Any other surrounding circumstances.

  1. The distinctive features pointed out by the Hon’ble Apex Court in the said
    decision is similar to the features established by the Plaintiff through its evidence, is
    identical and, therefore, beyond any doubt it can be held that there has been
    infringement of passing off and the Plaintiff is entitled to the remedy in its action for
    passing off on the basis of the claim made in the plaint.
  2. The next decision Mr. Bose has relied on is in the case of Marico Limited J.K.
    Enterprises & Ors.3
    reported in 2010 (44) PTC 443 (Cal). Mr. Bose has relied on paragraph
    12 of the said decision which is set out below:
  3. Since the First Defendant has not questioned the Plaintiff’s rights as the owner of the Registered mark “Nihar”, it has to be assessed as to whether in the use of the mark “Nihal” in conjunction with other words by the First

 

 

Defendant, there is infringement of the Registered mark. There is no dispute that the two marks are used in respect of coconut oil, though the First Defendant claims that its coconut oil is only of edible grade. At the highest, the products may not be identical in nature but in both being coconut oil, whether of the edible kind or the hair oil variety, they are certainly similar in nature. Infringement or passing off is decided on the basis of both the visual and the phonetic appreciation of the rival marks. If the First Defendant’s word mark on its pouch is “Nihal Uttam”, as it claims, it does not appear to be so in the manner of the writing thereof. “Nihal” is written in similar style as “Nihar” and “Uttam” is written in different colour and smaller size below “Nihal” on the First Defendant’s pouch. Even if, technically, the First Defendant’s word mark is “Nihal Uttam” it is the “Nihal” aspect which is emphasised on in the manner in which the word mark is represented on its pouch. “Nihal” is deceptively similar to the Plaintiff’s mark “Nihar” within the meaning of Section 2(h) of the Trade marks Act, 1999 and the manner of presentation of the mark by the First Defendant would, prima facie, entitles the Plaintiff to an order of injunction against the First Defendant both on account of infringement and passing-off. In the First Defendant’s plastic containers, the word “Fresh” appears to be more a description of the product than a part of its mark. Again, it is “Xihal” which stands out as the prominent feature of the mark. The visual depiction of the Defendant’s mark is such that the product will be recognised as “Xihal” and not as “Fresh Nihal” and despite the First Defendant’s insistence that its mark is “Fresh Nihal,” “Nihal” is so prominently featured and “Fresh” is so indistinct in its plastic containers that it is likely to deceive or cause confusion within the meaning of the expression “deceptively similar” in Section 2(h) of the Act. Prima facie, there is very little to tell between the Plaintiff’s discontinued pouch and the First Defendant’s pouch; there is hardly any dissimilarity between the rival plastic containers. The test is not by placing the two products side by side and counting the minor differences; the test is as to whether the offending package is such that it reminds a casual viewer of the original package or gives an impression that it may be associated with the original package. The matter has to be assessed from the point of view of the prospective customer who, more often than not, will not have the benefit of having the two packages side by side or even the time or interest to compare the two; but who will go by pure impression and his indistinct memory.

  1. The principles laid down in the said decision are clearly applicable in the present
    The real test is as to whether the offending package is such that it reminds a
    casual viewer of the original package or gives an impression that it may be associated
    with the original package. The matter has to be assessed from the point of view of the
    prospective customer who, more often than not, will not have the benefit of having
    the two packages side by side or even the time or interest to compare the two; but
    who will go by pure impression and indistinct memory.
  2. Although, the said decision has been passed in the interlocutory stage of the
    matter but the principle enunciated in the decision is applicable in the present case
    and, therefore, I do not find any reason not to apply such well established principle
    in the present case.
  3. In view of the ratio decided by the Hon’ble Apex Court and what has been
    established by the Plaintiff through his evidence, this Court is of the view that the

 

Defendants are liable for passing off coconut oil bearing the Trade mark ‘NIHAR’ and / or trade dress ‘NIHAR’ of the Plaintiff by substantial reproduction or colourable imitation thereof and they are also liable for infringing the Trade mark ‘NIHAR’ by substantial reproduction or colourable imitation thereof.

  1. That being so the Plaintiffs are entitled to perpetual injunction as sought for in
    the plaint. The Plaintiffs are entitled to the decree as prayed for. Therefore, the suit is
    decreed in terms of Prayer ‘a’, ‘b’, ‘c’, ‘d’, ‘e’, ‘f, ‘g’, ‘h’ and ‘i’. :
  2. Department is directed to draw up and complete the decree as expeditiously as
  3. Urgent Photostat certified copy of this judgment, if applied for, be delivered to the
    learned Counsel for the parties, upon compliance of all usual formalities.

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