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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
G.S. Patel, J.
Sanjay Soya Private Limited - Appellant
Versus
Narayani Trading Company - Respondent
Interim Application (L) No. 5011 of 2020; Commercial Ip Suit No. 2 of 2021
Decided On : 09-03-2021
TRADE MARK - COPYRIGHT - INFRINGEMENT - PASSING OFF - SUIT FOR INJUNCTION - INTERIM APPLICATION - COPYRIGHT ACT, 1957 - SECTIONS 17, 19, 21, 44, 45, 47, 48, 50-A, 51, 62(1), 63, 63-B, 64 - TRADE MARKS ACT, 1999 - SECTIONS 27, 134 - COMMERCIAL COURTS ACT, 2015 - SECTION 35 - Held, (i) Registration of copyright is not mandatory. (ii) The decision in Dhiraj Dharamdas Dewani v Sonal Info Systems Pvt Ltd And Others, (2012) 3 MhLJ 888 is rendered per incuriam and consequently not good law. (iii) The artistic work is the label, and the label is the artistic work. (iv) The plaintiff has a panoply of jurisdictional choices, including one that is available only to him (and not to an ordinary plaintiff in a regular civil suit). (v) The test of deception or its likelihood is that of the common person. (vi) The conduct of the defendant warrants an order of costs.
Fact of the Case:
Plaintiff, Sanjay Soya Private Limited, claimed copyright in the artistic work comprised in the label of its edible oil product. Defendant, Narayani Trading Company, used a rival trade dress and label for similar soyabean edible oil products. Plaintiff filed an Interim Application in a suit for trade mark and copyright infringement, passing off and for the appointment of a Court Receiver to seize and seal Defendant's products under the offending or rival label mark and artistic work.
Finding of the Court:
The Court held that registration of copyright is not mandatory. The decision in Dhiraj Dharamdas Dewani v Sonal Info Systems Pvt Ltd And Others, (2012) 3 MhLJ 888 is rendered per incuriam and consequently not good law. The artistic work is the label, and the label is the artistic work. The plaintiff has a panoply of jurisdictional choices, including one that is available only to him (and not to an ordinary plaintiff in a regular civil suit). The test of deception or its likelihood is that of the common person. The conduct of the defendant warrants an order of costs.
Issues: Whether registration of copyright is mandatory. Whether the decision in Dhiraj Dharamdas Dewani v Sonal Info Systems Pvt Ltd And Others, (2012) 3 MhLJ 888 is good law. Whether the artistic work is the label, and the label is the artistic work. Whether the plaintiff has a panoply of jurisdictional choices, including one that is available only to him (and not to an ordinary plaintiff in a regular civil suit). Whether the test of deception or its likelihood is that of the common person. Whether the conduct of the defendant warrants an order of costs.
Ratio Decidendi: The Court held that registration of copyright is not mandatory. The decision in Dhiraj Dharamdas Dewani v Sonal Info Systems Pvt Ltd And Others, (2012) 3 MhLJ 888 is rendered per incuriam and consequently not good law. The artistic work is the label, and the label is the artistic work. The plaintiff has a panoply of jurisdictional choices, including one that is available only to him (and not to an ordinary plaintiff in a regular civil suit). The test of deception or its likelihood is that of the common person. The conduct of the defendant warrants an order of costs.
Final Decision: The Court made absolute the Interim Application in terms of prayer clauses (b), (c) and (d). The Court also awarded costs of Rs.4,00,230/- against the Defendant and in favour of the Plaintiff.
JUDGMENT
G. S. Patel, J. - This order will dispose of the present Interim Application in this suit for trade mark and copyright infringement.
2. The trade mark in question is a label mark, not a word or a device mark. Apart from trade mark registration, the Plaintiff, Sanjay Soya Private Limited ("Sanjay Soya"), also claims copyright in the artistic work comprised in the label. On the footing that an image is more eloquent than a thousand words, I begin by reproducing images of the two rival marks and artistic works, taken from paragraph 21 of the Plaint. On the left is the packing used by Sanjay Soya. On the right is what is used by the Defendant, Narayani Trading Company ("Narayani Trading").
3. The predominant colour of Sanjay Soya's label/artwork is yellow. This is a colour associated with gold, oils or lemons. The package itself is rectangular. Across roughly the middle of the packing is a broad band in red. Across this are the words "SOYA DROP". These are rendered in white block letters with a drop-shadow effect and in a somewhat cinematic curvilinear fashion so that the beginning and ending letters are larger in size than the ones in the middle. In straight white lettering below this in all capitals are the words "SOYABEAN REFINED OIL". At the centre of the red band is a green oval device, inset in which we find the words 'Naturally Healthy'. Above this oval device is an image of a family of four, a husband, wife and two children, a boy and a girl. Below the red band are depictions of scattered soybeans, and overlaid on them is a shiny yellow teardrop device supposed to resemble or evoke a drop of oil. There are other marks at the top and bottom. At the top right corner is a small red rectangle with a green oval device at its top centre, also inset with the words 'Naturally healthy'.
4. Narayani Trading's label uses very nearly - or indistinguishably the same - principal background colour. It also has a central red band. On this are the words "SOYA AMRUT". There is again a slightly oval green device at the top centre of the red band. Inset in this are the words 'Refined Soyabean Oil'. An image of a family of four, differently positioned from the one in the Sajany Soya label, but still a family of four with two children, one male, one female, is positioned above the green oval device. Below the red band are also soybeans, slightly differently shown, and a teardrop oil device.
5. Mr Burad for Narayani Trading says, first, that the two labels are entirely distinct; no one will mistake one for the other. The points of distinction are many and are easily discernible. That argument is only to be stated to be rejected. The key features, integers or elements that I have described in Sanjay Soya's label all find place in Narayani Trading's label with only minor variations. These variations are too irrelevant to warrant consideration. From a look at these products, it would be possible to tell one from the other. That is indeed the only test when it comes to trade mark infringement, passing off or copyright infringement. So far as copyright infringement is concerned, it is sufficient to note that a very substantial part of Sanjay Soya's label has been taken up by Narayani Trading and used in its product.
6. With this, I now turn to the factual background. On 26th October 2020, Mr Justice KR Shriram made an ad-interim order. The matter was then adjourned periodically after Mr Burad entered appearance. There are several affidavits now filed in the Interim Application. I have considered these with the assistance of Mr Khandekar for Sanjay Soya and Mr Burad for Narayani Trading.
7. The factual narrative in the Plaint runs, briefly, like this. Sanjay Soya has been manufacturing and selling edible oils of various kinds, including soyabean oil, for many years. Narayani Trading is a sole proprietorship. Sanjay Soya was incorporated on 17th February 2004. It claims to have the necessary ISO certifications for quality and other certifications. S
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