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High Court Of Calcutta
PINAKI CHANDRA GHOSH
KUBER KHAINI PVT.LTD. - Appellant
Versus
PRABHOOLAL RAMRATAN DAS PVT.LTD. - Respondent
C. S. 373 Of 2000
Decided On : 12/13/2000
TRADEMARK - INFRINGEMENT - SECTION 29(4) OF THE TRADE AND MERCHANDISE MARKS ACT, 1958 - COPYRIGHT ACT, 1957 - PASSING OFF - SIMILARITY IN COLOR COMBINATION, SIZE, AND DESIGN OF POUCHES - NO INFRINGEMENT FOUND - INJUNCTION DENIED.
Fact of the Case:
The petitioner, a manufacturer and marketer of khaini, chewing tobacco, pan masalas, and gutkhas, alleged that the respondents were infringing its registered trademark, copyright, and design by using a similar color combination, size, and design on their pouches. The petitioner claimed that the respondents' actions constituted passing off and were damaging its reputation and market.
Finding of the Court:
The court found that the pouches used by the respondents had some similarities to those used by the petitioner, such as the color combination, size, and design. However, the court also found that there were significant dissimilarities between the two pouches, such as the name of the product, the words used on the label, and the photograph on the pouch. The court held that these dissimilarities were enough to prevent any confusion or deception on the part of consumers and that there was no infringement of the petitioner's trademark, copyright, or design.
Issues: 1. Whether the respondents' use of a similar color combination, size, and design on their pouches infringed the petitioner's registered trademark. 2. Whether the respondents' actions constituted passing off. 3. Whether the respondents infringed the petitioner's copyright in the design of its pouches.
Ratio Decidendi: The court applied the principles of trademark infringement, passing off, and copyright infringement to the facts of the case. The court held that the respondents' use of a similar color combination, size, and design on their pouches did not infringe the petitioner's registered trademark because the dissimilarities between the two pouches were enough to prevent any confusion or deception on the part of consumers. The court also held that the respondents' actions did not constitute passing off because the name of the product, the words used on the label, and the photograph on the pouch were different from those used by the petitioner. Finally, the court held that the respondents did not infringe the petitioner's copyright in the design of its pouches because the dissimilarities between the two pouches were enough to prevent any substantial similarity.
Final Decision: The court denied the petitioner's application for an injunction to restrain the respondents from using the impugned packaging design. However, the court directed the respondents to maintain statements of accounts in respect of their sale and to furnish the same to the petitioner till the disposal of the suit.
( 1 ) THIS is an application filed by the petitioner inter alia for infringement of the petitioner's Registered Trade Mark by using a trade mark and/or label which resembles that of the petitioner and further from infringing the petitioner's copyright registered under No. A-55610/99 and further from passing off or attempting to pass or intending to pass off the design of the petitioner including the copyright and colour scheme as of the respondents.
( 2 ) THE facts of the case are as follows :"the petitioner is a private limited company which duly took over the proprietorship concern of M/s. Kuber International (India) with all its assets and liabilities. By virtue of such taking over of the said company the petitioner is now carrying on business of manufacturer and marketing of khaini, chewing tobacco, pan masatas, gutkhas etc. and the said proprietorship concern merged with the petitioner in or about June, 1999. The petitioner's case is that the petitioner has a distinctive design, colour scheme and get up which is an artistic word under the meaning of Copyright Act, 1957 and the said design is duly registered under the provisions of Trade and Merchandise Marks Act, 1958 on June 22, 1989 in respect of khaini. The said registration is still valid and subsisting. "
( 3 ) THE petitioner after acquiring the business of the said Kuber International (India) is presently the proprietor of the said trade mark and entitled to use the same to the exclusion of others. The petitioner since 1984 is using the said design of pouches and in fact the petitioner's turnover increased since then from Rs. 7,77,861. 07 p. in 1989-90 to Rs. 3,77,11,468 in 1999-2000. The petitioner also spent huge amount in respect of promotional expenses by way of advertisement.
( 4 ) ACCORDING to the petitioner, the products of the petitioner are purchased by ordinary class of people mostly illiterate and the wrapper design including its colour scheme and get up have become wholly identified with the petitioner. According to the petitioner, the respondent No. 2 is distributing khaini and gutkhas of various manufacturers all in pouches and/or sachets having design, get up, colour scheme and dimension deceptively similar to the petitioner's said distinctive pouch design. The product of the respondents bearing the trade mark "chakor" instead of the word "kuber" has represented in the petitioner's pouches.
( 5 ) THE respondent No. 2 is getting products of the respondent No. 1 from outside Calcutta and are selling the same in Calcutta and at various Districts of West Bengal and thereby damaging the market and reputation of the petitioner in Calcutta and in West Bengal. The acts of the respondents are nothing but an action of passing off of the respondents' said products as and for those of the petitioner sold under the trade mark "kuber".
( 6 ) THE further case of the petitioner that the unauthorised use of the impugned packaging design by the respondents which is similar to that of the petitioner and constitutes an infringement of copyright and trade mark besides passing off by the respondents.
( 7 ) MR. Chatterjee appearing on behalf of the petitioner submitted that the colour combination, size and the design of the pouch which are used by the petitioner in respect of its product with a trade mark "kuber" and which also contains the photograph in the middle of the said pouch, a copy of the said pouch is also annexed to the petition. He further drew my attention to the pouch which has been used by the respondents which also contains the same colour combinations save and except the photograph is different which is being used in English as well as in Hindi. It is specifically stated on the said pouch "ready scented" and thereafter kuber in hold word and photograph appears on the said pouch with the same colour combination and excepting the name 'chakor' and the photograph are different on the pouch that of the respondents which is nothing
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