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1989 Supreme(Del) 147
High Court Of Delhi
PESHAWAR SOAP AND CHEMICALS PRIVATE LIMITED - Appellant
Versus
ANIL SOAP AND CHEMICAL WORKS - Respondent
.
Decided On : 03/28/1989
ANUP SINGH, H.P.SINGH, M.L.MANGALA, MANMOHAN SINGH
The use of a deceptively similar trademark and carton design, along with the likelihood of confusion among consumers, constitutes infringement of a registered trademark and copyright.
Headnote:
TRADEMARK - COPYRIGHT - INFRINGEMENT - PASSING OFF - SIMILARITY - DECEPTIVE SIMILARITY - KESH NIKHAR SOAP - BAL NIKHAR SOAP - CARTONS - DEVICE OF A WOMAN - LIKELIHOOD OF CONFUSION - INJUNCTION.
Fact of the Case:
Plaintiffs, proprietors of the trademark KESH NIKHAR and copyright for the carton design of their soap, filed a suit against defendants for infringement of trademark, copyright, and passing off. Defendants had started manufacturing and selling soap under the trademark BAL NIKHAR with a similar carton design, including the device of a woman.
Finding of the Court:
The court compared the trademarks, cartons, and soap cakes of both parties and found that defendants' use of the mark BAL NIKHAR and the impugned carton was deceptively similar to plaintiffs' registered trademark and copyright. The court held that defendants' actions were likely to deceive or confuse purchasers and amounted to infringement of plaintiffs' trademark and copyright.
Issues: 1. Whether defendants have infringed plaintiffs' trademark and copyright? 2. Are defendants selling goods so marked as to be designed or likely to lead purchasers to believe that they are plaintiffs' goods?
Ratio Decidendi: The court relied on Sections 2(d) and 29 of the Trade and Merchandise Marks Act, 1958, which define deceptive similarity and infringement of a trademark. The court also considered various case laws dealing with trademark infringement and passing off. The court held that the essential features of plaintiffs' trademark and copyright had been adopted by defendants, and that the overall similarity between the two products was likely to mislead consumers.
Final Decision: The court granted a decree in favor of plaintiffs, restraining defendants from using the mark BAL NIKHAR, the impugned carton, and from passing off their soap as that of plaintiffs. The court also ordered defendants to deliver all impugned cartons, blocks, dies, printed and advertising material bearing the mark BAL NIKHAR for destruction or obliteration.
( 1 ) PLAINTIFFS have filed the present suit for prepetualinjunction, infringement of trade mark and copyright, passing off and rendition of accnts, against defendants.
( 2 ) BRIEFLY, the facts of the case are as under :plaintiff No. 1 is the proprietor of the trade mark kesh NIKHAR with a device of a woman under No. 216597 as of 17/07/1963, inclass 3 in respect of soap with the following disclaimer ;
"registration of this trade mark shall give no right to theexclusive use of device of woman except substantially shown in therepresentation annexed herewith. "
( 3 ) THE trade mark has been renewed from time to time and is stillsubsisting on the register of trade marks. Plaintiff No. 1 is also the proprietor of copyright No. A-30760/50 in respect of art work as depicted onthe carton/box in which plaintiffs have been packing and selling their KESHNIKHAR soap. Plaintiff No. 2 was the original proprietor of the aforesaidtrade mark and copyright. However, same were assigned along with othertrade marks to plaintiff No. 1 vide assignment deed dated 6/12/1983. TM-24 in respect of change of name of proprietorship and recording of theassignment is under process.
( 4 ) PLAINTIFF No. 1 appointed plaintiff No. 2 as registered users andapplication for registration of registered users agreement is pending in thetrade marks Registry. Copy of the legal proceedings certificate obtainedearlier to the assignment, was also filed.
( 5 ) PLAINTIFFS have been continuously and extensively using the afore-said trade mark KESH NIKHAR, in respect of soap since the year 1935. Plaintiffs sale under the trade mark KESH NIKHAR runs into a crore ofrupees annually. Plaintiffs have also advertised their trade mark extensivelyby various medias of advertisement. On account of long, continuous andextensive user, the trade mark KESH NIKHAR and the carton, plaintiffs soap in a distinctive carton, has achieved unique reputation and is associatedin the minds of the public and the purchasers with soap manufactured byplaintiffs. It denotes and connotes the goods of plaintiffs and no one else.
( 6 ) THE purchasers and the intending purchasers of the KESHNIKHAR soap of plaintiffs include illiterate persons, including women andchildren who recognise and ask for the plaintiffs soap by the trade markkesh NIKHAR.
( 7 ) IN September, 1983, it came to the notice of plaintiffs that defendant no. 2, who is the proprietor of defendant No. 1, brought into themarket soap under the trade mark BAL NIKHAR with the device of womanin carton like Annexure x . Then, plaintiffs filed a criminal complaintagainst defendants and their distributors, who were selling the soap inpatiala. It has further come to the notice of plaintiffs from the advertisement,appearing in Punjab Kesri, that defendants 1 and 2 had appointed defendant no. 3 as their distributor.
( 8 ) ACCORDING to plaintiffs, defendants have fraudulently and intentionally adopted the trade mark BAL NIKHAR in respect of their soap. Defendants have adopted carton and wrapper, like annexure x , which is adeceptive and fraudulent copy of plaintiffs carton, registered under thecopyright Act Defendants have even copied the plaintiffs wrapper andleaflet in all respects. Defendants soap cake has the same size, get up andcolour. Defendants have been selling their soap with malafide intention tomislead the persons to believe that defendants soap is that of plaintiffs. It isfurther alleged in the plaint that the trade mark BAL NIKHAR with thedevice, is an infringement of plaintiffs trade mark. The adoption of cartonfor soap by defendants is also infringement of plaintiffs copyright. Accord-ing to plaintiffs their soap is superior in quality than that of defendants.
( 9 ) IN their written statement, defendants have alleged that their trademark is entirely different from the trade mark of plaintiffs. The words KESHNIKHAR in respect of bathing soap is purely descriptive and there isnothing distinctive in the trade mark. The w
