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2017 Supreme(Cal) 515
IN THE HIGH COURT OF JUDICATURE AT CALCUTTA
SAHIDULLAH MUNSHI, J.
Marico Limited - Plaintiff
Versus
G.P.L. Oil Company & Anr - Defendants
CS 69 of 2011
Decided On : 02-11-2017
For the Plaintiff : Mr. Tilak Bose, Sr. Adv., Mr. Subhasish Sengupta, Mr. Suvradal Choudhury, Mr. Souma Bhattacharya, Ms. Srija Banerjee.
The main legal point established in the judgment is the protection of trademarks under the Trademarks Act, 1999, emphasizing the exclusive rights of the trademark owner and the prohibition of deceptive similarity in marks used in relation to similar goods or services.
Headnote:
Trademark Infringement - Coconut Oil - Trademarks Act, 1999, Sections 27, 28, 29, 31
Fact of the Case:
The plaintiff, a well-known manufacturer of coconut oil products, filed a suit against the defendants for trademark infringement, passing off, and copyright infringement. The defendants did not contest the suit and were found to have infringed the plaintiff's trademark 'NIHAR' by using the deceptively similar mark 'NIKHAR' on their coconut oil products.
Finding of the Court:
The court found that the defendants' products were deceptively similar to the plaintiff's, causing confusion among consumers. The court also noted that the plaintiff had exclusive rights to the trademark 'NIHAR' and that the defendants had wrongfully adopted the 'NIKHAR' mark to deceive consumers.
Issues: The issues involved trademark infringement, passing off, and copyright infringement, with the main focus on the deceptive similarity between the plaintiff's 'NIHAR' mark and the defendants' 'NIKHAR' mark.
Ratio Decidendi: The court applied the legal principles established in previous cases, emphasizing the deceptive similarity between the marks, the nature of the goods, and the likelihood of confusion among consumers. The court also highlighted the exclusive rights of the plaintiff to the 'NIHAR' trademark and the defendants' wrongful adoption of the 'NIKHAR' mark.
Final Decision: The court decreed in favor of the plaintiff, granting perpetual injunction and entitling the plaintiff to the requested reliefs.
1. The present suit being C.S. No.69 of 2011 filed by Marico Limited, is for injunction against infringement of Trademark, 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 5th December, 2016, 20th December, 2016, 17th January, 2017, 13th February, 2017, 3rd April, 2017, 11th May, 2017 and 20th June, 2017. But no attempt was made by any Advocate to represent the defendants. The fact of the case in a nutshell is as follows :
(a) 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.
(b) 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 Trademark ‘NIHAR’, for valuable consideration to the plaintiff.
(c) 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 Trademark ‘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 Trademark ‘NIHAR’ (both word and label) in class 42 in order to protect its interest over the said Trademark ‘NIHAR’ under the provisions of the Trademarks Act, 1999. The plaintiff had also obtained the registration of the label ‘NIHAR’ in class 29 under the provisions of the Trademarks Act, 1999 (Ext. C) collectively being the registration certificates.
(e) It has been claimed by the plaintiff that by virtue of the said Deeds of Assignments plaintiff became the proprietor and owner of the Trademark ‘NIHAR’ and the copyright in the artistic work in connection therewith. However, plaintiff filed applications for change of name in respect of registered Trademark ‘NIHAR’ under class 42 bearing Registration No.1241348 dated 5th October, 2007 and 636900 dated 24th June, 2009 respectively in Form TM – 24 before the Trademark registry (Ext. C) collectively being the Form TM – 24.
(f) According to the plaintiff, it has advertised extensively in the Television channels about its products and the same has become a household name in India. 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.
(g) 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 p
