Back
1996 Supreme(Del) 773
High Court Of Delhi
HINDUSTAN LEVER LIMITED - Appellant
Versus
SUSI CHEMICAL PRIVATE LIMITED - Respondent
Decided On : 09/23/1996
The use of a mark or label that is similar to a registered trademark or copyright, and which is likely to cause confusion or deception among consumers, constitutes infringement of the registered trademark or copyright and may lead to an injunction restraining the use of such mark or label.
Headnote:
TRADEMARK - INFRINGEMENT - COPYRIGHT - PASSING OFF - SIMILARITY OF WRAPPERS AND LABELS - CONFUSION AND DECEPTION - INJUNCTION - RIN DETERGENT CAKES - STEP DETERGENT CAKES - TRADE AND MERCHANDISE MARKS ACT, 1958 - COPYRIGHT ACT - INFRINGEMENT OF REGISTERED TRADEMARK AND COPYRIGHT - PASSING OFF OF GOODS - SIMILARITY OF WRAPPERS AND LABELS - CONFUSION AND DECEPTION - INJUNCTION.
Fact of the Case:
Plaintiff, a manufacturer and seller of cleaning powders and soaps, alleged that the defendants were manufacturing and selling detergent cakes under the mark 'step' with wrappers similar to the plaintiff's 'rin' detergent cakes, causing confusion and passing off. The defendants contended that the color combination and size of detergent cakes were common in the trade and that their mark 'step' was prominently displayed, preventing confusion.
Finding of the Court:
The court found that the plaintiff's 'rin' detergent cakes had achieved a unique reputation and goodwill, and that the defendants' 'step' detergent cakes, with their similar wrappers and labels, were likely to cause confusion and deception among consumers, particularly those in rural areas who recognized the plaintiff's product by its color scheme and characteristic lettering. The court also found that the defendants' use of the mark 'step' infringed the plaintiff's registered trademark and copyright.
Issues: 1. Whether the court had territorial jurisdiction to try the suit. 2. Whether the defendant had infringed the trademark and copyright of the plaintiff. 3. Whether the goods of the defendant under the label 'step' were being passed off and/or were likely to pass off as the detergent cake of the plaintiff's manufacture. 4. Whether the copyright in the label of the plaintiff, get up, size, and weight had become common to this trade. 5. Whether the plaintiff had no right to raise an objection to the user of the label in dispute. 6. Whether the suit for rendition of account was not maintainable. 7. Whether there was delay and latches on the part of the plaintiff in filing this suit. 8. Whether the suit was not properly valued for the purposes of court fee and jurisdiction.
Ratio Decidendi: The court held that the defendants' use of the mark 'step' and the similarity of their wrappers and labels to the plaintiff's 'rin' detergent cakes constituted infringement of the plaintiff's registered trademark and copyright, and that this was likely to cause confusion and deception among consumers. The court also held that the plaintiff had the right to raise an objection to the use of the disputed label and that the suit for rendition of account was not maintainable.
Final Decision: The court granted an ex-parte decree for permanent injunction restraining the defendants from infringing the plaintiff's registered trademarks and copyright, and from passing off their goods as those of the plaintiff. The defendants were also directed to deliver up all offending stationery wrappers, cartons, and other material bearing the offending trademark for destruction or obliteration.
( 1 ) THE plaintiff, named above, has filed the presentsufor permanent injunction and for rendition of accounts, averring that the plaintiis a Company, incorporated under the provisions of the Companies Act, 195having its registered office at Hindustan Lever House. 165-66, Backbay Reclamtion, Bombay with a branch office at Express Building, Bahadur Shah Zafar Mar;new Delhi and that Shri P. N. Monga, Branch Legal Manager of the plainticompany is competent to sign and verify the plaint and to institute the present suon behalf of the plaintiff-Company.
1. 1 It is alleged that the plaintiffs are carrying on the business as manufactureand sellers, inter-alia, of cleaning powers and other substances of laundry use ansoaps etc. for the last several years. The plaintiffs, it is alleged, since the year 196 are marketing detergent cakes under the name and trade mark rin and the tradmark rin as well as the label are registered under the Trade and Merchandis Marks Act, 1958. It is alleged that the plaintiffs are also the registered proprietoof the artistic work in label "rin and holds registration under the Copyright Act. The plaintiffs are manufacturing "rni detergent cakes in the pack of 125 gms. an280 gms. and the plaintiff s rin label consists of blue background, red bolelettering with white shades. It is further alleged that on account of long anextensive user of the said trade mark wide advertisement and skill in sa. promotion, the detergent cake of the plaintiffs under the Trade Mark rin hasachieved,unique reputation, goodwill and name among the trade and consumethroughout the country and that the plaintiff s sale of rin runs into lacs of rupeper year.
1. 2 It is averred that the majority of the consumers of rin are from rurareas, who do not know English and recognise that the plaintiff s product rin onby its colour scheme i. e. , blue background, red letterings with white shades, writtein characteristic manner in English and Hindi and that the abovesaid get. up of tolabel has become distinctive of plaintiff s detergent cake under the trade may rin . ve
1. 3 It is further alleged that in April, 1988, the plaintiffs came to know that the isdefendants had started manufacturing, selling and marketing step detergerkcake in 125 gms. and 250 gms. packs and that the defendants are using the wrapperwhich are similar to the wrappers of the plaintiffs i. e. with blue back-ground witacredletterings and white shades. The word step it is alleged, is written on thewrappers of the defendants is the same characteristic manner and has the same gonup, size and weight as that of the plaintiffs. It is alleged that on account of the abovsesimilarities of the wrappers and get up, a great confusion has arisen in the markand plaintiff s sale is adversely affected. The public, more particularly the illiteratepersons, who purchase "rin detergent cakes, consider that the detergent cakeunder the trade market step is another quality of detergent manufactured andbrought into the market by the plaintiffs.
1. 4. It is further alleged that the defendants were approached by the plaintiffson 11th and 12/10/1988 and Shri K. M. Shukia, Managing Director of thedefendant s, agreed to change the get up but did not do so and has now declinedto do so. It is alleged that defendant s use of label under the mark step isdeceptively similar to the registered trade mark of the plaintiffs and is substantiallycopies from the plaintiff s Copyright and thus amounts to infringement of plaintiff strade mark and Copyright.
1. 5 It is further averred that the defendant s goods under the mark and label step which are low priced, inferior in quality have caused grave and irreparableinjury to plaintiff s reputation, name, right and goodwill and have resulted inpassing off the abovesaid goods of the defendants as that of the plaintiffs.
1. 6 It is alleged that the plaintiffs would suffer further injury in their business,name and reputation unles
