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2018 Supreme(Cal) 476
IN THE HIGH COURT OF JUDICATURE AT CALCUTTA
SOUMEN SEN, J.
Unilever PLC & Anr. - Petitioners
Versus
Anoy Paul & Ors. - Respondents
GA No. 2218 of 2018 With CS No. 167 of 2018
Decided On : 10-08-2018
Advocate Appeared:
Mr. Ratnanko Banerji, Mr. Arunabha Deb, Mr. Tanmoy Chakravarty
The judgment establishes the legal principle of prima facie satisfaction of trademark infringement and deceptive similarity as grounds for issuing a protective order and appointing special officers for enforcement.
Headnote:
Trademark Infringement - Frozen Desserts - Trade Marks Act, 1999 - Section 29, Section 134 - Section 135 - Section 136
Fact of the Case:
The petitioner, a registered proprietor of the trademark 'CORNETTO', alleged infringement by 20 identified entities and sought a 'John Doe' order against fictitious persons. The respondents were found manufacturing, selling, and distributing frozen desserts under marks 'CORNETTO' and/or 'CONATTO', deceptively similar to the petitioner's trademark.
Finding of the Court:
The court found the respondents' products to be prima facie infringing the petitioner's registered trademark 'CORNETTO' and deceptively similar to the petitioner's products. A protective order was passed to prevent the removal of infringing packets, and special officers were appointed to inventory the infringing goods with police assistance.
Issues: Trademark infringement, deceptive similarity, protective order, appointment of special officers, enforcement of interim order
Ratio Decidendi: The court's decision was based on the prima facie satisfaction of trademark infringement and deceptive similarity, leading to the issuance of a protective order and the appointment of special officers to enforce the order.
Final Decision: The interim order was continued for a period of ten weeks from the date of the judgment or until further orders, whichever is earlier. The respondents were given the liberty to apply for vacation, variation, and/or modification of the interim order upon notice to the petitioners.
This is an action for infringement of trademark of the Petitioner No. 1 by twenty entities who are disclosed and identifiable and against the rest who are fictitious persons. As against them a “John Doe” order has been prayed for.
2. The plaintiff No. 1 is the registered proprietor of the trade mark “CORNETTO”. It is stated that a large quantity of frozen desserts/ice cream has been sold in India under the said trade mark “CORNETTO” by reason whereof the said mark has become very well-known and has become distinctive of the products of the petitioners. The frozen desserts/ice cream of the petitioners sold under the trade mark “CORNETTO” have acquired a substantial reputation and goodwill in the market. The petitioners have also given the figures of the All India annual sale of products of the petitioner companies under the “Kwality Walls” brand including “CORNETTO” and expenses incurred in advertising of these frozen desserts/ice creams.
3. Mr. Ratnanko Banerji, learned Senior Counsel appearing on behalf of the petitioners submits that in the months of June and July, 2018 in course of market surveys and investigations carried out by the petitioners across Southern, Eastern and North Eastern India, it was found that the respondent nos. 1 to 20 were manufacturing, selling and distributing frozen desserts/ice creams under the marks “CORNETTO” and/or “CONATTO” which are identical and/or deceptively similar to the Trade Mark under which the Petitioners' product “CORNETTO” is sold and distributed in India. Mr. Banerji further submits that subsequent to coming across the aforesaid information, the Petitioners, upon making further enquiries and analyzing the packaging material being used by such persons/entities, have come to learn that although the said persons/entities are operating in different locations, the packaging materials are being supplied to them by common sources. The outer wrappers or top covers/lids or a combination thereof being used by the said persons/entities to sell impugned goods indicate that there is a link between all the said persons/entities and they have a common interest in riding on the goodwill and reputation of the Petitioner No. 1’s “Cornetto” trademark. Mr. Banerji submits that the persons/ entities whose identities the Petitioners have been able to ascertain have been arrayed as Respondent Nos. 1 to 20. The Petitioners as yet have not been able to ascertain the identities of the common printers and/or manufactures and/or suppliers of the packaging material being used by Respondent Nos. 1 to 20 and such persons are being impleaded as Respondent nos. 21 to 24 by the name ‘Ashok Kumar’. It is submitted that upon the identities of such Respondents being known, the name ‘Ashok Kumar’ will be substituted by the real name of the Respondent and such Respondent will be impleaded through his/her real name.
4. The packet of the product “CORNETTO” of the petitioners and the infringing wrappers of the defendants are produced before this Court.
5. It appears that the infringing packets in which the products of the respondents are sold are a colourable and deceptive imitation of the trade mark of the petitioner No 1's “CORNETTO” which is a well-known trademark and of which the petitioner No. 1 is the registered proprietor.
6. This Court is, prima facie, satisfied that the products sold by the defendants are in infringement of the petitioner No. 1's registered trade mark “CORNETTO” and are deceptively similar to those in which the petitioners' product “CORNETTO” is sold.
7. On the aforesaid prima facie satisfaction, in my view, a protective order is required to be passed, otherwise the infringing packets may be removed out of reach of the Court. In view thereof, there shall be an order in terms of prayers (a) and (b) of the application.
8. (1) Madhu Priya Advocate of Bar Library Club (2) Ovik Sengupta (Mob: 9830158038) (3) Siddhanta Chatterjee, Advocate of Bar Library Club (4) Kumkum Mukherjee of Bar Association
