Full Judgment Text
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on : February19, 2014
Judgment Pronounced on: March 05, 2014
+ FAO(OS) 163/2010 and CM Appl.18319/2010 (cross-objections)
REAL HOUSE DISTILLERY PVT LTD & ANR ..... Appellants
Represented by: Mr.P.N.Mishra, Senior
Advocate instructed by
Ms.Mahima Sinha and
Mr.Arunav Patnaik, Advocates.
versus
PERNOD RICARD S.A. & ANR ..... Respondents
Represented by: Mr.Hemant Singh, Mr.Sachin
Gupta and Ms.Shashi Ojha,
Advocates.
CORAM:
HON'BLE MR. JUSTICE PRADEEP NANDRAJOG
HON'BLE MR. JUSTICE JAYANT NATH
JAYANT NATH, J.
1. The present appeal is filed under Order XLIII Rule 1 Code of Civil
Procedure read with Section 10 of the Delhi High Court Act against order
dated December 15, 2009 passed by the learned Single Judge in IA
No.12700/2008 filed by the respondent under Order XXXIX Rules 1 and 2
read with Section 151 CPC and IA filed by the appellant being IA
No.16299/2009 under Order VII Rule 11 CPC for dismissal of the plaint on
ground of lack of territorial jurisdiction of this court.
2. The respondents have filed a suit seeking a decree of permanent
injunction to restrain the defendants/appellants from manufacturing, selling,
FAO(OS) 163/2010 Page 1 of 13
etc.alcoholic beverages or any other allied goods under the impugned trade
mark comprising of „REAL‟ logo and label or any trade mark/label
deceptively similar to the plaintiffs‟ trade mark comprising „RICARD‟ logo
and label which amounts to infringement of registered trade mark of the
respondents/plaintiffs and other connected reliefs.
3. Respondent No.2 is a wholly owned subsidiary of respondent No.1.
Respondent No.1 claims to have been formed in 1974 and claims to be
world No.2 in wines and spirits market having strong international presence
having a turn over to the tune of Euro 6.4 billion in the year 2006-07. It is
stated that its products are sold under internationally renowned and
acclaimed brands in 110 countries. „RICARD‟ is stated to be a light, natural
refreshing beverage which was formulated in 1932. It‟s an anise flavoured
aperitif marketed under a distinctive „RICARD‟ logo/label. The logo/label
is stated to comprise several distinctive features which constitute a unique,
distinctive and impressionable trade mark. It is stated that „RICARD‟ and
its anise flavoured aperitif is bottled and marketed under the said label
which comprises following features which together constitute a distinctive,
impressionable and unique trade mark.
The logo comprises of the following features:-
i. the logo comprises of stylized acanthus leaves with silver
background and blue leafy outline;
ii. a circular device having red background and blue border
with the numeral “45” in white colour is depicted upon the
central section of the shield device;
iii. a set of swirling scrolls of silver ribbons with blue
borders unfold outwardly from either side of the red circular
device with “APERITIS” and “ANISE” printed thereon in blue
bold letterings.”
The essential features of the RICARD label are as follows:-
FAO(OS) 163/2010 Page 2 of 13
i. The vertically elongated label comprises a colour
combination of white, blue, silver and red;
ii. The label has an overall white background with two
broad blue bands appearing upon the upper and lower sections,
each having a silver and blue thick border;
iii. The trade mark RICARD appears in thick & bold white
letterings against blue background upon the upper blue band
whereas “FRANCE” appears in interspersed white bold
letterings upon the lower blue band;
iv. The central section of the label has a white background
with thin silver vertical pin stripes, upon which the RICARD
logo as described hereinabove is depicted;
v. The lower section below the blue band contains
descriptive matters in blue and red letterings against white
background.”
4. The said „RICARD‟ logo and label which is also pictorially depicted
in the plaint is stated to be a registered trade mark in several countries in
favour of respondent No.1. It is also said to be registered in India in the
name of respondent No.1.
5. It is further stated that the copyright in the original artistic work is
also protected in India since FRANCE is a signatory and member of Berne
Convention.
6. The plaint gives a detailed description of the turnover, goodwill,
reputation, investment made in the brand etc. For the purpose of the present
order it may not be necessary to reproduce the said details.
7. It is stated that in the first week of September 2008, the respondents
came to know that the appellants were selling and offering for sale their
whisky under the trade mark “REAL‟s” contained in bottles having
same/similar trade mark as „RICARD‟ aperitif. The alcoholic beverage is
stated to bear labels and logo which are deceptively similar and a colorable
imitation of the respondents‟ „RICARD‟ and of the logo and label. Hence
FAO(OS) 163/2010 Page 3 of 13
the present suit was filed where it was urged that the said use of deceptively
similar label or logo by the appellants would inevitably lead to a
confusion/deception among consumers. It was urged that the adoption and
unauthorized use by the appellants of the impugned trade mark constitutes
(a) infringement of trade mark (b) passing off (c) infringement of copyright
(d) dilution and (e) unfair competition.
8. The appellant entered appearance and denied the averments of the
respondents. It is stated that the appellants are part of „Real Group of
Companies‟ which was established in 1947 by setting up a vegetarian
restaurant at Panaji, Goa by the name „Cafe Real‟. The business expanded
and in 1961 the business of manufacturing aerated waters under the brand
name „Real Drink‟ and other trading was commenced. The word „Real‟ has
been pre-fixed in each and every company so incorporated to give it a
distinctive trade mark of the Real Group of Companies. The logo „R‟ is
which is also used is stated to have developed in the year 1974. The
manufacture of IMFL and county liquor is stated to have commenced in
1974. It is stated that the Real Group of Companies is making Palm Feni,
Cashew Feni under the brand name „Real‟ and IMFL such as whisky,
brandy, rum using its label of „Real‟ with a logo „R‟ with a crown on it. The
products are stated to be sold and consumed only in the State of Goa. It is
further stated that the appellants do not manufacture or offer for sale or
distribute any anise flavoured aperitif of flavor akin or similar to the
respondents‟ product. It is further stated that the label of the appellants and
respondents are not similar.
9. On December 16, 2008 the learned Single Judge directed that the
appellants are permitted to use the earlier labels till December 31, 2008.
After the said date the appellants were permitted to market their products
FAO(OS) 163/2010 Page 4 of 13
under a new label which was shown in the court on that day which is purple
and white in colour (this new label produced in court by the appellant on
December 12, 2008 is hereinafter referred to as „New label‟).This order was
passed clarifying that the said order did not mean that the court accepted the
stand of the appellants regarding the new label produced in court on that
day.
10. On September 24, 2009 a statement was made by the learned counsel
for the plaintiffs that he does not press the present suit in relation to passing
off and infringement of copyright. On that date arguments were heard and
judgment was reserved. Later vide order dated March 19, 2010 it was
clarified that the respondent does not press the relief of passing off only.
11. The learned Single Judge vide judgment dated December 15, 2009
concluded that the old label which was used by the appellants was prima
facie identical to the label of the respondents and restrained the appellants
from using the old label which was subject matter of the present suit during
the pendency of the said suit. Regarding the New label produced in Court
on December 16, 2008, the learned Single Judge directed that the New label
still contains some essential features similar to the respondents‟ label and in
order to avoid any confusion or deception, the appellants were allowed to
use the New label subject to the condition of change of the Navy Blue
colour. It was clarified that the appellants could use the said strip in any
other colour except Dark Navy Blue Colour. Further application of the
appellants under Order VII Rule 11 CPC being IA No.16299/2009 was
dismissed holding that this Court had prima facie jurisdiction to try the
present suit under Section 134(2) of the Trade Marks Act and the issue
raised by the appellants was mixed question of law and facts and could not
be dealt with in an application under Order VII Rule 11 CPC.
FAO(OS) 163/2010 Page 5 of 13
12. Hence the present appeal has been filed challenging the said order
dated December 15, 2009.
13. The respondents have also filed cross-objections under Order XLI
Rule 22 read with Order XLIII Rule 1 CPC challenging the directions of the
learned Single Judge permitting the appellants to use the modified „Real‟
label (New label) in any other colour other than Navy Blue.
14. This Court on April 15, 2010 passed the following order regarding the
New label:-
“On a visual appearance of the two labels, we do not find
any similarity between them. However, the learned Single
Judge has injuncted the Appellants from using the navy blue
colour on its label.
We are of the opinion that if there is no similarity
between the two labels, an injunction on the use of navy blue
colour cannot be allowed as a matter of course. It is difficult to
imagine that the respondents have a copyright over the use of
navy blue colour on the labels of all alcoholic beverages.
We, therefore, stay the operation of the impugned
judgment and order until the disposal of the appeal.”
15. The matter was heard on February 19, 2014 and judgment was
reserved. Parties were given an opportunity to file written submissions.
Needful has been done.
16. Learned counsel for the appellants at the outset submitted that they do
not intend to use the original label on the basis of which the suit was filed
and to that extent, the injunction order passed by the learned Single Judge
dated December 15, 2009 is not challenged. However, stress is laid that the
second part of the injunction order permitting the appellants to use the New
label subject to the condition of change of the Navy Blue colour strips is
materially erroneous and needs to be set aside.
17. Learned counsel for the appellants has strenuously urged in Court and
FAO(OS) 163/2010 Page 6 of 13
in the written submissions that the blue label which is being used by the
appellants on its IMFL whisky is an intrinsic part of its trade mark and over
a period of time the consumers of „Real Blue Whisky‟ have come to
associate with the blue colour in the label of the whisky of the appellants.
18. It is further urged that the respondents‟ registered trade mark does not
have any colour and hence to that extent, the impugned order is misplaced as
it has injuncted the appellants from using the colour Navy Blue. It is further
urged that the get up of the label of the appellants is common to the trade
and numerable labels of alcoholic and other beverages have blue colour with
white. It is urged that the respondents cannot claim any exclusivity over the
use of such features. It is further urged that the product of the respondents
aperitif is priced at more than ` 2,000/- per bottle whereas the whisky of the
appellants is priced at ` 60/- per bottle and therefore is only manufactured
and consumed by the lower income bracket in the State of Goa only. It is
urged that it is highly improbable and unlikely that the respondents‟ high
class consumers intending to buy aperitif will be deceived by the Real
House Whisky of the appellants. It is also highly improbable that a
consumer who has an intention to buy an aperitif would end up buying a
whisky.
19. Learned counsel for the respondents has stated in the Court and in the
Written submissions that the appellants‟ have slavishly copied the
label/mark of the respondents with dishonest intention which tentamounts to
infringement of the registered trade mark of the respondents. With regard to
the old label of the appellants it is stated that it is a blatant imitation which
proves dishonest intention with ulterior and unethical motive to trade upon
the goodwill and reputation of the respondents‟ products. It is further urged
that even the New label which was produced before the learned Single Judge
FAO(OS) 163/2010 Page 7 of 13
has retained combination of features that were originally copied by the
appellants from the registered label/mark of the respondents. It is urged that
the New label has been rightly injuncted by the learned Single Judge. It is
further urged that the label, mark, registration of respondents‟ is without any
colour limitation. Hence, in view of Section 10 of the Trade Marks Act it
therefore, extends to all colours. Hence the infringement would be there in
case of imitation in any colour combination and to that extent, it is urged
that the learned Single Judge erred inasmuch as he permitted the appellants
to use the modified label in colours other than Navy Blue. Hence, it is urged
that the present appeal be dismissed and the cross-objections may be
allowed and the permission granted by the impugned order to the appellants
permitting the appellants to use the New label under a colour other than
Navy Blue be modified and the appellants be restrained from using the New
label in any colour.
20. Learned counsel for the respondents relies upon judgment of the
Hon‟ble Supreme Court in the case of (2011) 4 SCC 85 T.V.Venugopal vs.
Ushodaya Enterprises Ltd. & Anr. where the Hon‟ble Supreme Court held
that the adoption of the word “Eenadu” is ex facie fraudulent and a mala fide
attempt from the inception inasmuch as the appellant in that case is stated to
have wanted to ride on the reputation and goodwill of the respondent
company. The Hon‟ble Supreme Court held that permitting the appellant to
carry on its business would in fact be putting a seal of approval of the court
on the dishonest, illegal and clandestine conduct of the appellant. The Court
further held that honesty and fair play ought to be the basis of policies in the
world of trade and business. Reliance is also placed on the judgment of the
Hon‟ble Supreme Court in the case of (2007) 6 SCC 1 Heinz Italia & Anr.
vs. Dabur India Ltd. where the court reiterated that principles of similarity
FAO(OS) 163/2010 Page 8 of 13
could not be very rigidly applied and that if it could be prima facie shown
that there was a dishonest intention on the part of the defendant in passing
off the goods, an injunction should ordinarily follow.
Learned counsel for the appellants also relies upon the judgment of
the Hon‟ble Supreme Court in the case of AIR 1965 SC 980 Kaviraj Pandit
Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories where the
court held that where there is an imitation, no evidence is required to
establish that the plaintiff‟s rights are violated. Reliance is also placed on the
judgment of the Hon‟ble Supreme Court in the case of AIR 1978 SC 1613
R.G.Anand vs. M/s.Delux Films& Ors. where the Court held that one of the
surest and safest test to determine whether or not there has been a violation
of copyright is to see if the reader, spectator or the viewer after having read
or seen both the works is clearly of the opinion and gets an unmistakable
impression that the subsequent work appears to be a copy of the original.
21. In the present case as far as the first label that was subject matter of
the suit filed by the respondents is concerned, there is no controversy
surviving inasmuch as learned counsel for the appellants has clearly stated
that the appellants have stopped using the said label. Hence to that extent the
injunction order passed by the learned Single Judge would need no
interference.
22. We now come to the New label which was filed in court by the
appellants. The impugned order permits the appellants to use the said New
label provided the colour scheme of the said label is changed from Navy
Blue to some to other colour. We may have a look at the two labels which
are now subject matter of the present dispute.
FAO(OS) 163/2010 Page 9 of 13
23. The learned Single Judge has relied upon observations of the Court in
the case of (1951) 68 Reports of Patent Cases 271(2) Taw Manufacturing
Coy. Ltd. vs. Notek Engineering Coy.Ltd. & Anr. relevant portion of which
reads as follows:-
“A trademark is infringed if a person other than the registered
proprietor or authorised user uses, in relation to goods
covered by the registration, one or more of the trademark‟s
essential particulars. The identification of an essential feature
depends partly upon the Court‟s own judgment and partly upon
the burden of the evidence that is placed before the Court.”
24. Similarly, the learned Single Judge also places reliance on the
judgment of this court in the case of (1973) ILR Delhi 393 M/s. Atlas Cycle
Industries Ltd. v. Hind Cycles Limited , were this Court held as under:-
"In an action for an alleged infringement of a registered trade
mark, it has first to be seen whether the impugned mark of the
defendant is identical with the registered mark of the plaintiff. If
the mark is found to be identical, no further question arises,
and it has to be held that there was infringement. If the mark of
the defendant is not identical, it has to be seen whether the
mark of the defendant is deceptively similar in the sense it is
likely to deceive or cause confusion in relation to goods in
respect of which the plaintiff got his mark registered. For that
purpose, the two marks have to be compared, 'not by placing
FAO(OS) 163/2010 Page 10 of 13
them side by side. but by asking itself whether having due
regard to relevant surrounding circumstances, the defendant's
mark as used is similar to the plaintiff's mark as it would be
remembered by persons possessed of an average memory with
its usual imperfections', and it has then to be determined
whether the defendant's mark is likely to deceive or cause
confusion".
25. A look at the mark/label in question would show that it cannot be said
that the New label which is presently being used by the appellants is
identical to the mark/label of the respondents.
The next step that would arise is as to whether the mark is deceptively
similar with the mark of the respondents in the sense that it is likely to
deceive or cause confusion in relation to goods in respect of which
respondents have got their mark registered. If we compare the two marks, it
is clear that the essential features of the two marks are different. Apart from
blue bands used at the top and bottom of the label, there is no other
similarity in the two marks. The essential feature of the brand of the
respondents is the circle shaded in red with the number „45‟ which is fused
with a set of swirling scrolls/arms on either side. None of these essential
features are reproduced in the New brand/mark being used by the appellants.
26. In the above context, reference may also be had to the observations of
a Division Bench of this High Court in the case of 62 (1996) DLT 79 (DB),
Kellogg Company vs. Pravin Kumar Bhadabhai & Anr. where in paragraph
22 the Court held as follows:-
“Having dealt with the contention of imperfect memory of the
customer, we shall now deal with the class of purchasers, which
is also an important factor. Who are the persons who go to
purchase „Kelloggs‟ Corn flakes? Prima facie, in our opinion,
these people belong to a middle-class or upper middle class
FAO(OS) 163/2010 Page 11 of 13
and above who are fairly educated in English and are able to
distinguish „Kelloggs‟ and what is not “Kelloggs”. In
American Jurisprudence (2d) (Trade Marks) (Supp) para 19
(page 178) it is said that it is necessary to note the fact:
“that customers for fasteners are sophisticated and discerning,
that defendant acted with good faith.”
27. Similarly, reference may also be had to the observations made in
paragraph 28 of the said judgment which reads as under:-
“ In the result, on our prima facie conclusions, we reject the
plea of similarity or likelihood of confusion, we reject the plea
of fraud as well as the one based on imperfect memory. We are
of the view, prima facie that even though the get up is similar,
the different names Kellogg‟s and AIMS ARISTO prominently
displayed, make all the difference and this Is not a fit case for
interference with the order of the learned Single Judge refusing
injunction.”
28. In the present case also the product of the respondent is anise aperitif
which is priced at more than ` 2,000/- per bottle. The class of customers
purchasing the same would be entirely different from the class who would
purchase the IMFL whisky of appellant which is priced around 60/- per
`
bottle.
29. In the present case also the New brand uses the trade mark/trade logo
of the appellant‟s REAL very distinctively and clearly.
30. Prima facie, it is not possible to say that the New label which was for
the first time filed in Court by the appellants on 16.12.2008 infringes the
trademark of the respondents.
31. We, hence modify the order of the learned Single Judge to the said
extent. We permit the appellants to use the New mark/label as filed by the
FAO(OS) 163/2010 Page 12 of 13
appellants in Court on 16.12.2008 using the Navy Blue colour. The cross-
objections of the respondents are dismissed.
32. As no arguments have been addressed on the impugned order
dismissing the IA No.16299/2009 under Order 7 Rule 11, CPC, the
judgment of the learned Single Judge dismissing the said application is
upheld.
JAYANT NATH
(JUDGE)
PRADEEP NANDRAJOG
(JUDGE)
MARCH 05, 2014
rb
FAO(OS) 163/2010 Page 13 of 13
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on : February19, 2014
Judgment Pronounced on: March 05, 2014
+ FAO(OS) 163/2010 and CM Appl.18319/2010 (cross-objections)
REAL HOUSE DISTILLERY PVT LTD & ANR ..... Appellants
Represented by: Mr.P.N.Mishra, Senior
Advocate instructed by
Ms.Mahima Sinha and
Mr.Arunav Patnaik, Advocates.
versus
PERNOD RICARD S.A. & ANR ..... Respondents
Represented by: Mr.Hemant Singh, Mr.Sachin
Gupta and Ms.Shashi Ojha,
Advocates.
CORAM:
HON'BLE MR. JUSTICE PRADEEP NANDRAJOG
HON'BLE MR. JUSTICE JAYANT NATH
JAYANT NATH, J.
1. The present appeal is filed under Order XLIII Rule 1 Code of Civil
Procedure read with Section 10 of the Delhi High Court Act against order
dated December 15, 2009 passed by the learned Single Judge in IA
No.12700/2008 filed by the respondent under Order XXXIX Rules 1 and 2
read with Section 151 CPC and IA filed by the appellant being IA
No.16299/2009 under Order VII Rule 11 CPC for dismissal of the plaint on
ground of lack of territorial jurisdiction of this court.
2. The respondents have filed a suit seeking a decree of permanent
injunction to restrain the defendants/appellants from manufacturing, selling,
FAO(OS) 163/2010 Page 1 of 13
etc.alcoholic beverages or any other allied goods under the impugned trade
mark comprising of „REAL‟ logo and label or any trade mark/label
deceptively similar to the plaintiffs‟ trade mark comprising „RICARD‟ logo
and label which amounts to infringement of registered trade mark of the
respondents/plaintiffs and other connected reliefs.
3. Respondent No.2 is a wholly owned subsidiary of respondent No.1.
Respondent No.1 claims to have been formed in 1974 and claims to be
world No.2 in wines and spirits market having strong international presence
having a turn over to the tune of Euro 6.4 billion in the year 2006-07. It is
stated that its products are sold under internationally renowned and
acclaimed brands in 110 countries. „RICARD‟ is stated to be a light, natural
refreshing beverage which was formulated in 1932. It‟s an anise flavoured
aperitif marketed under a distinctive „RICARD‟ logo/label. The logo/label
is stated to comprise several distinctive features which constitute a unique,
distinctive and impressionable trade mark. It is stated that „RICARD‟ and
its anise flavoured aperitif is bottled and marketed under the said label
which comprises following features which together constitute a distinctive,
impressionable and unique trade mark.
The logo comprises of the following features:-
i. the logo comprises of stylized acanthus leaves with silver
background and blue leafy outline;
ii. a circular device having red background and blue border
with the numeral “45” in white colour is depicted upon the
central section of the shield device;
iii. a set of swirling scrolls of silver ribbons with blue
borders unfold outwardly from either side of the red circular
device with “APERITIS” and “ANISE” printed thereon in blue
bold letterings.”
The essential features of the RICARD label are as follows:-
FAO(OS) 163/2010 Page 2 of 13
i. The vertically elongated label comprises a colour
combination of white, blue, silver and red;
ii. The label has an overall white background with two
broad blue bands appearing upon the upper and lower sections,
each having a silver and blue thick border;
iii. The trade mark RICARD appears in thick & bold white
letterings against blue background upon the upper blue band
whereas “FRANCE” appears in interspersed white bold
letterings upon the lower blue band;
iv. The central section of the label has a white background
with thin silver vertical pin stripes, upon which the RICARD
logo as described hereinabove is depicted;
v. The lower section below the blue band contains
descriptive matters in blue and red letterings against white
background.”
4. The said „RICARD‟ logo and label which is also pictorially depicted
in the plaint is stated to be a registered trade mark in several countries in
favour of respondent No.1. It is also said to be registered in India in the
name of respondent No.1.
5. It is further stated that the copyright in the original artistic work is
also protected in India since FRANCE is a signatory and member of Berne
Convention.
6. The plaint gives a detailed description of the turnover, goodwill,
reputation, investment made in the brand etc. For the purpose of the present
order it may not be necessary to reproduce the said details.
7. It is stated that in the first week of September 2008, the respondents
came to know that the appellants were selling and offering for sale their
whisky under the trade mark “REAL‟s” contained in bottles having
same/similar trade mark as „RICARD‟ aperitif. The alcoholic beverage is
stated to bear labels and logo which are deceptively similar and a colorable
imitation of the respondents‟ „RICARD‟ and of the logo and label. Hence
FAO(OS) 163/2010 Page 3 of 13
the present suit was filed where it was urged that the said use of deceptively
similar label or logo by the appellants would inevitably lead to a
confusion/deception among consumers. It was urged that the adoption and
unauthorized use by the appellants of the impugned trade mark constitutes
(a) infringement of trade mark (b) passing off (c) infringement of copyright
(d) dilution and (e) unfair competition.
8. The appellant entered appearance and denied the averments of the
respondents. It is stated that the appellants are part of „Real Group of
Companies‟ which was established in 1947 by setting up a vegetarian
restaurant at Panaji, Goa by the name „Cafe Real‟. The business expanded
and in 1961 the business of manufacturing aerated waters under the brand
name „Real Drink‟ and other trading was commenced. The word „Real‟ has
been pre-fixed in each and every company so incorporated to give it a
distinctive trade mark of the Real Group of Companies. The logo „R‟ is
which is also used is stated to have developed in the year 1974. The
manufacture of IMFL and county liquor is stated to have commenced in
1974. It is stated that the Real Group of Companies is making Palm Feni,
Cashew Feni under the brand name „Real‟ and IMFL such as whisky,
brandy, rum using its label of „Real‟ with a logo „R‟ with a crown on it. The
products are stated to be sold and consumed only in the State of Goa. It is
further stated that the appellants do not manufacture or offer for sale or
distribute any anise flavoured aperitif of flavor akin or similar to the
respondents‟ product. It is further stated that the label of the appellants and
respondents are not similar.
9. On December 16, 2008 the learned Single Judge directed that the
appellants are permitted to use the earlier labels till December 31, 2008.
After the said date the appellants were permitted to market their products
FAO(OS) 163/2010 Page 4 of 13
under a new label which was shown in the court on that day which is purple
and white in colour (this new label produced in court by the appellant on
December 12, 2008 is hereinafter referred to as „New label‟).This order was
passed clarifying that the said order did not mean that the court accepted the
stand of the appellants regarding the new label produced in court on that
day.
10. On September 24, 2009 a statement was made by the learned counsel
for the plaintiffs that he does not press the present suit in relation to passing
off and infringement of copyright. On that date arguments were heard and
judgment was reserved. Later vide order dated March 19, 2010 it was
clarified that the respondent does not press the relief of passing off only.
11. The learned Single Judge vide judgment dated December 15, 2009
concluded that the old label which was used by the appellants was prima
facie identical to the label of the respondents and restrained the appellants
from using the old label which was subject matter of the present suit during
the pendency of the said suit. Regarding the New label produced in Court
on December 16, 2008, the learned Single Judge directed that the New label
still contains some essential features similar to the respondents‟ label and in
order to avoid any confusion or deception, the appellants were allowed to
use the New label subject to the condition of change of the Navy Blue
colour. It was clarified that the appellants could use the said strip in any
other colour except Dark Navy Blue Colour. Further application of the
appellants under Order VII Rule 11 CPC being IA No.16299/2009 was
dismissed holding that this Court had prima facie jurisdiction to try the
present suit under Section 134(2) of the Trade Marks Act and the issue
raised by the appellants was mixed question of law and facts and could not
be dealt with in an application under Order VII Rule 11 CPC.
FAO(OS) 163/2010 Page 5 of 13
12. Hence the present appeal has been filed challenging the said order
dated December 15, 2009.
13. The respondents have also filed cross-objections under Order XLI
Rule 22 read with Order XLIII Rule 1 CPC challenging the directions of the
learned Single Judge permitting the appellants to use the modified „Real‟
label (New label) in any other colour other than Navy Blue.
14. This Court on April 15, 2010 passed the following order regarding the
New label:-
“On a visual appearance of the two labels, we do not find
any similarity between them. However, the learned Single
Judge has injuncted the Appellants from using the navy blue
colour on its label.
We are of the opinion that if there is no similarity
between the two labels, an injunction on the use of navy blue
colour cannot be allowed as a matter of course. It is difficult to
imagine that the respondents have a copyright over the use of
navy blue colour on the labels of all alcoholic beverages.
We, therefore, stay the operation of the impugned
judgment and order until the disposal of the appeal.”
15. The matter was heard on February 19, 2014 and judgment was
reserved. Parties were given an opportunity to file written submissions.
Needful has been done.
16. Learned counsel for the appellants at the outset submitted that they do
not intend to use the original label on the basis of which the suit was filed
and to that extent, the injunction order passed by the learned Single Judge
dated December 15, 2009 is not challenged. However, stress is laid that the
second part of the injunction order permitting the appellants to use the New
label subject to the condition of change of the Navy Blue colour strips is
materially erroneous and needs to be set aside.
17. Learned counsel for the appellants has strenuously urged in Court and
FAO(OS) 163/2010 Page 6 of 13
in the written submissions that the blue label which is being used by the
appellants on its IMFL whisky is an intrinsic part of its trade mark and over
a period of time the consumers of „Real Blue Whisky‟ have come to
associate with the blue colour in the label of the whisky of the appellants.
18. It is further urged that the respondents‟ registered trade mark does not
have any colour and hence to that extent, the impugned order is misplaced as
it has injuncted the appellants from using the colour Navy Blue. It is further
urged that the get up of the label of the appellants is common to the trade
and numerable labels of alcoholic and other beverages have blue colour with
white. It is urged that the respondents cannot claim any exclusivity over the
use of such features. It is further urged that the product of the respondents
aperitif is priced at more than ` 2,000/- per bottle whereas the whisky of the
appellants is priced at ` 60/- per bottle and therefore is only manufactured
and consumed by the lower income bracket in the State of Goa only. It is
urged that it is highly improbable and unlikely that the respondents‟ high
class consumers intending to buy aperitif will be deceived by the Real
House Whisky of the appellants. It is also highly improbable that a
consumer who has an intention to buy an aperitif would end up buying a
whisky.
19. Learned counsel for the respondents has stated in the Court and in the
Written submissions that the appellants‟ have slavishly copied the
label/mark of the respondents with dishonest intention which tentamounts to
infringement of the registered trade mark of the respondents. With regard to
the old label of the appellants it is stated that it is a blatant imitation which
proves dishonest intention with ulterior and unethical motive to trade upon
the goodwill and reputation of the respondents‟ products. It is further urged
that even the New label which was produced before the learned Single Judge
FAO(OS) 163/2010 Page 7 of 13
has retained combination of features that were originally copied by the
appellants from the registered label/mark of the respondents. It is urged that
the New label has been rightly injuncted by the learned Single Judge. It is
further urged that the label, mark, registration of respondents‟ is without any
colour limitation. Hence, in view of Section 10 of the Trade Marks Act it
therefore, extends to all colours. Hence the infringement would be there in
case of imitation in any colour combination and to that extent, it is urged
that the learned Single Judge erred inasmuch as he permitted the appellants
to use the modified label in colours other than Navy Blue. Hence, it is urged
that the present appeal be dismissed and the cross-objections may be
allowed and the permission granted by the impugned order to the appellants
permitting the appellants to use the New label under a colour other than
Navy Blue be modified and the appellants be restrained from using the New
label in any colour.
20. Learned counsel for the respondents relies upon judgment of the
Hon‟ble Supreme Court in the case of (2011) 4 SCC 85 T.V.Venugopal vs.
Ushodaya Enterprises Ltd. & Anr. where the Hon‟ble Supreme Court held
that the adoption of the word “Eenadu” is ex facie fraudulent and a mala fide
attempt from the inception inasmuch as the appellant in that case is stated to
have wanted to ride on the reputation and goodwill of the respondent
company. The Hon‟ble Supreme Court held that permitting the appellant to
carry on its business would in fact be putting a seal of approval of the court
on the dishonest, illegal and clandestine conduct of the appellant. The Court
further held that honesty and fair play ought to be the basis of policies in the
world of trade and business. Reliance is also placed on the judgment of the
Hon‟ble Supreme Court in the case of (2007) 6 SCC 1 Heinz Italia & Anr.
vs. Dabur India Ltd. where the court reiterated that principles of similarity
FAO(OS) 163/2010 Page 8 of 13
could not be very rigidly applied and that if it could be prima facie shown
that there was a dishonest intention on the part of the defendant in passing
off the goods, an injunction should ordinarily follow.
Learned counsel for the appellants also relies upon the judgment of
the Hon‟ble Supreme Court in the case of AIR 1965 SC 980 Kaviraj Pandit
Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories where the
court held that where there is an imitation, no evidence is required to
establish that the plaintiff‟s rights are violated. Reliance is also placed on the
judgment of the Hon‟ble Supreme Court in the case of AIR 1978 SC 1613
R.G.Anand vs. M/s.Delux Films& Ors. where the Court held that one of the
surest and safest test to determine whether or not there has been a violation
of copyright is to see if the reader, spectator or the viewer after having read
or seen both the works is clearly of the opinion and gets an unmistakable
impression that the subsequent work appears to be a copy of the original.
21. In the present case as far as the first label that was subject matter of
the suit filed by the respondents is concerned, there is no controversy
surviving inasmuch as learned counsel for the appellants has clearly stated
that the appellants have stopped using the said label. Hence to that extent the
injunction order passed by the learned Single Judge would need no
interference.
22. We now come to the New label which was filed in court by the
appellants. The impugned order permits the appellants to use the said New
label provided the colour scheme of the said label is changed from Navy
Blue to some to other colour. We may have a look at the two labels which
are now subject matter of the present dispute.
FAO(OS) 163/2010 Page 9 of 13
23. The learned Single Judge has relied upon observations of the Court in
the case of (1951) 68 Reports of Patent Cases 271(2) Taw Manufacturing
Coy. Ltd. vs. Notek Engineering Coy.Ltd. & Anr. relevant portion of which
reads as follows:-
“A trademark is infringed if a person other than the registered
proprietor or authorised user uses, in relation to goods
covered by the registration, one or more of the trademark‟s
essential particulars. The identification of an essential feature
depends partly upon the Court‟s own judgment and partly upon
the burden of the evidence that is placed before the Court.”
24. Similarly, the learned Single Judge also places reliance on the
judgment of this court in the case of (1973) ILR Delhi 393 M/s. Atlas Cycle
Industries Ltd. v. Hind Cycles Limited , were this Court held as under:-
"In an action for an alleged infringement of a registered trade
mark, it has first to be seen whether the impugned mark of the
defendant is identical with the registered mark of the plaintiff. If
the mark is found to be identical, no further question arises,
and it has to be held that there was infringement. If the mark of
the defendant is not identical, it has to be seen whether the
mark of the defendant is deceptively similar in the sense it is
likely to deceive or cause confusion in relation to goods in
respect of which the plaintiff got his mark registered. For that
purpose, the two marks have to be compared, 'not by placing
FAO(OS) 163/2010 Page 10 of 13
them side by side. but by asking itself whether having due
regard to relevant surrounding circumstances, the defendant's
mark as used is similar to the plaintiff's mark as it would be
remembered by persons possessed of an average memory with
its usual imperfections', and it has then to be determined
whether the defendant's mark is likely to deceive or cause
confusion".
25. A look at the mark/label in question would show that it cannot be said
that the New label which is presently being used by the appellants is
identical to the mark/label of the respondents.
The next step that would arise is as to whether the mark is deceptively
similar with the mark of the respondents in the sense that it is likely to
deceive or cause confusion in relation to goods in respect of which
respondents have got their mark registered. If we compare the two marks, it
is clear that the essential features of the two marks are different. Apart from
blue bands used at the top and bottom of the label, there is no other
similarity in the two marks. The essential feature of the brand of the
respondents is the circle shaded in red with the number „45‟ which is fused
with a set of swirling scrolls/arms on either side. None of these essential
features are reproduced in the New brand/mark being used by the appellants.
26. In the above context, reference may also be had to the observations of
a Division Bench of this High Court in the case of 62 (1996) DLT 79 (DB),
Kellogg Company vs. Pravin Kumar Bhadabhai & Anr. where in paragraph
22 the Court held as follows:-
“Having dealt with the contention of imperfect memory of the
customer, we shall now deal with the class of purchasers, which
is also an important factor. Who are the persons who go to
purchase „Kelloggs‟ Corn flakes? Prima facie, in our opinion,
these people belong to a middle-class or upper middle class
FAO(OS) 163/2010 Page 11 of 13
and above who are fairly educated in English and are able to
distinguish „Kelloggs‟ and what is not “Kelloggs”. In
American Jurisprudence (2d) (Trade Marks) (Supp) para 19
(page 178) it is said that it is necessary to note the fact:
“that customers for fasteners are sophisticated and discerning,
that defendant acted with good faith.”
27. Similarly, reference may also be had to the observations made in
paragraph 28 of the said judgment which reads as under:-
“ In the result, on our prima facie conclusions, we reject the
plea of similarity or likelihood of confusion, we reject the plea
of fraud as well as the one based on imperfect memory. We are
of the view, prima facie that even though the get up is similar,
the different names Kellogg‟s and AIMS ARISTO prominently
displayed, make all the difference and this Is not a fit case for
interference with the order of the learned Single Judge refusing
injunction.”
28. In the present case also the product of the respondent is anise aperitif
which is priced at more than ` 2,000/- per bottle. The class of customers
purchasing the same would be entirely different from the class who would
purchase the IMFL whisky of appellant which is priced around 60/- per
`
bottle.
29. In the present case also the New brand uses the trade mark/trade logo
of the appellant‟s REAL very distinctively and clearly.
30. Prima facie, it is not possible to say that the New label which was for
the first time filed in Court by the appellants on 16.12.2008 infringes the
trademark of the respondents.
31. We, hence modify the order of the learned Single Judge to the said
extent. We permit the appellants to use the New mark/label as filed by the
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appellants in Court on 16.12.2008 using the Navy Blue colour. The cross-
objections of the respondents are dismissed.
32. As no arguments have been addressed on the impugned order
dismissing the IA No.16299/2009 under Order 7 Rule 11, CPC, the
judgment of the learned Single Judge dismissing the said application is
upheld.
JAYANT NATH
(JUDGE)
PRADEEP NANDRAJOG
(JUDGE)
MARCH 05, 2014
rb
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