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1992 Supreme(Cal) 82
High Court of Calcutta
U.C. Banerjee, J.
Brooke Bond India Ltd – Appellant
Versus
C. Patel And Company – Respondent
Decided On : Feb 19, 1992
The use of a deceptively similar trademark, even in a different market, can constitute infringement if it is likely to deceive or cause confusion among consumers.
Headnote:
TRADEMARK - INTERLOCUTORY INJUNCTION - GRANT - FACTORS - LIKELIHOOD OF DECEPTION - ESSENTIAL FEATURES OF MARK - LOCALITY OF INFRINGEMENT - USE OF PART OF MARK - CHANGE OF COLOR.
Fact of the Case:
Brooke Bond India Limited, a well-known tea manufacturer, sued the defendants for trademark infringement. Brooke Bond alleged that the defendants' 'Taj Tea' brand, meant for export to Middle Eastern countries, infringed its registered trademark 'Taj Mahal Tea.' The defendants argued that there was no likelihood of deception as the products were sold in different markets and the essential features of the marks were different.
Finding of the Court:
The court held that the grant of an interlocutory injunction depends on the strength of the claim, the strength of the defense, the balance of convenience, and the risk of irreparable injury to the applicant. The court found that Brooke Bond had a strong case, as the defendants' mark was deceptively similar to its own and there was a likelihood of confusion among consumers. The court also found that the balance of convenience favored Brooke Bond, as the defendants could easily change their packaging, while Brooke Bond would suffer irreparable harm if the infringement continued.
Issues: 1. Whether the defendants' 'Taj Tea' brand infringed Brooke Bond's 'Taj Mahal Tea' trademark? 2. Whether the likelihood of deception existed despite the different markets in which the products were sold? 3. Whether the essential features of the marks were different?
Ratio Decidendi: 1. The court held that the defendants' mark was deceptively similar to Brooke Bond's mark, as it contained the essential feature of 'Taj Mahal' and used a similar color scheme and packaging design. The court relied on the definition of 'deceptively similar' in the Trade and Merchandise Marks Act, which includes marks that are likely to deceive or cause confusion. 2. The court held that the likelihood of deception existed even though the products were sold in different markets. The court reasoned that the Trade and Merchandise Marks Act applies to the use of marks in relation to goods to be exported from India, and that the unauthorized printing of the plaintiff's label constitutes an infringement. The court also noted that the reputation of Brooke Bond in India may have an impact on unwary purchasers outside the country. 3. The court held that the essential features of the marks were not different, as the defendants' mark contained the essential feature of 'Taj Mahal.' The court relied on the decision in De Cordova and Others vs. Vick Chemical Co.'s case, which held that a mark is infringed if another trader uses one or more of its essential features.
Final Decision: The court granted an interlocutory injunction restraining the defendants from using the 'Taj Tea' brand. The court also directed the defendants to change the color of their packaging to red and yellow.
1. THE law in regard to the grant of interlocutory injunction in an infringement action is now well-settled both in this country and in England.
2. LORD Denning in Hubbard vs. Vesper; [1972 (2) WLR 3891 observed :
"In considering whether to grant an interlocutory injunction, the right course for a Judge is to look at the whole case. He must have regard not only to the strength of the claim but also to the strength of the defence, and then decide what is best to be done. Sometimes it is best to grant an injunction so as to maintain the status quo until the trial. At other times it is best not to impose a restraint upon the defendant but leave him free to go ahead."
In Granda Group Limited vs. Ford Motor Company Limited, (1973j RPC; 49, the House of Lords also quoted the above-noted observations with approval. The Delhi High Court in Malhotra Industries vs. Ropa Industries [ilr 1976; (1), Delhi 278j also followed the same.
3. CONSIDERING the above it is seen, therefore, that no rigid or strict rules can be made applicable in the matter of grant of interlocutory injunction but the matter is to be considered in a broader perspective, considering the entirety of the facts of the case, based on judicial discretion having in view certain basic factors viz. , a) Prima facie case; b) a difficult question to be agitated at the trial, c) balance of convenience and d) if the grant is refused it may lead to an irreparable injury to an applicant. .
4. INCIDENTALLY it is to be noted that it is to mitigate the risk of injustice to the plaintiff this grant is effected but that does not, however, mean and imply non-consideration of the defendants rights. The basis is one of fairness, equity and justice in relation to all relevant facts. The speech of Lord Diplock in american Cynamid's case (American Cynamid Company vs. Ethicon Limited; 1975 RPC 513) lend support to the view expressed. Having discussed the law on the subject it will thus be convenient to briefly advert to the factual aspect of the matter under consideration at this juncture.
5. BROOKE Bond India Limited is a well known manufacturer of tea in the country enjoying a very wide reputation in the tea industry throughout the globe. Various brands of tea under various trade names are being sold and marketed by Brooke Bond India Limited both within the country and abroad. One such brand name is Taj Mahal Tea in packets and cartons having distinctive colour scheme and combination of blue and orange in a distinctive design and pattern. In respect of Taj Mahal Tea various marks have been registered in favour of Brooke Bond Limited in Class 30. It appears that the packets and cartons of Taj Mahal Tea bear a picture of Taj Mahal and immediately above the picture it is mentioned Brooke Bond. On two sides of the carton the name of Taj Mahal Tea appears.
6. BROOKE Bond India Limited has also introduced Taj tea bags' though with a different picture. Admittedly, the word Taj Mahal forms part of the registered mark and there exists an indisputable fact that the word Taj Mahal is an essential part of the registration. Taj Mahal tea has also acquired a substantial goodwill and reputation. It is not out of place to mention that the historical Monument at Agra is commonly referred to as Taj being an abbreviation of Taj Mahal. The defendants, also being in the tea industry, introduced a brand of tea under the brand name 'taj Tea' in packets and cartons having a colour scheme of blue and orange. It to be noted at this juncture, admittedly; the defendants products in packets and cartons are however, meant for exportation only though mainly to the Middle Eastern Countries, and. the name Taj Tea appears on two sides of the carton in English and on the other two sides, in arabic script.
7. THE issue in this interlocutory application for injunction and appointment of Receiver, therefore, arises for consideration as to whether this export of tea in blue and orange packets and cartons is likely to cause a
