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High Court Of Delhi
VICCO LABS - Appellant
Versus
HINDUSTAN RIMMER - Respondent
Suit 878 of 1978
Decided On : 01/31/1979
PASSING OFF - INJUNCTION - TRADE MARKS ACT, 1958 - SECTION 29(4) - SIMILARITY OF PACKAGING AND LABELLING - INFRINGEMENT - BALANCE OF CONVENIENCE - IRREPARABLE INJURY - PRIMA FACIE CASE - SUMMARY JUDGMENT.
Fact of the Case:
Plaintiffs, manufacturers of 'Vicco Turmeric Vanishing Cream,' sued defendants for passing off their product as that of the plaintiffs by using deceptively similar packaging and labeling. The plaintiffs had been using their distinctive packaging and labeling since April 1975, while the defendants started selling their product in November 1977 using packaging and labeling that was nearly identical to that of the plaintiffs.
Finding of the Court:
The court found that the plaintiffs had established a prima facie case of passing off, as they had been using their distinctive packaging and labeling for a longer period than the defendants and had a reputation in the market. The court also found that the balance of convenience was in favor of the plaintiffs, as they were likely to suffer irreparable injury if the defendants were allowed to continue using the similar packaging and labeling, while the defendants could easily adopt a different packaging and labeling for their product.
Issues: 1. Whether the defendants' packaging and labeling were deceptively similar to that of the plaintiffs, constituting passing off. 2. Whether the plaintiffs had established a prima facie case of passing off. 3. Whether the balance of convenience was in favor of the plaintiffs.
Ratio Decidendi: The court held that the defendants' packaging and labeling were deceptively similar to that of the plaintiffs, as they were nearly identical in terms of design, color scheme, and overall appearance. The court also held that the plaintiffs had established a prima facie case of passing off, as they had been using their distinctive packaging and labeling for a longer period than the defendants and had a reputation in the market. Finally, the court held that the balance of convenience was in favor of the plaintiffs, as they were likely to suffer irreparable injury if the defendants were allowed to continue using the similar packaging and labeling, while the defendants could easily adopt a different packaging and labeling for their product.
Final Decision: The court granted a temporary injunction restraining the defendants from using the packaging and labeling that was deceptively similar to that of the plaintiffs.
( 1 ) THIS is an application under 0. 39 R. 1 and 2 Civil Procedure Code in a suit for injunction restraining defendants from using in relation to their product carton tube pertaining to cosmo Turmeric Vanishing Cream and/or any other carton or tube which is deceptively similar to plaintiffs carton and tube pertaining to "vicco Turmeric Vanishing Cream" so as to pass off their goods as the goods of the plaintiffs, for recovery of rupees one lakh as damages and also to deliver up for destruction all designs, blocks, tubes, carton and tube used in manufacture of these deceptively similar to the carton and tube of the plaintiffs.
( 2 ) THE suit was originally filed in the High Court at Bombay 8. 2. 78. Bharucha, J. passed the following order on 27. 7. 1978 : "i am not satified that this Court has Jurisdiction. Therefore, Notice of Motion dismissed. Costs of the notice of Motion to be costs in the cause. "
( 3 ) THE plantiffs then applied for leave to withdraw the suit on the ground of lack of jurisdiction and the following order was passed on 8. 8. 78. "plaint returned for presentation to proper Court. The Plaintiffs to pay to the Defendants the costs fixed at Rs 200. 00.
( 4 ) THE plaint returned on 10. 8. 78. was filed in this Court on 288. 78 An application (I. A 3212/78) was also filed under 0. 6,r,17 CPC to amend the plaint pleading facts showing that this Court has jurisdiction, besides other formal amendments, on account of return of plaint which was allowed on 29. 8. 78
( 5 ) AN ex parte Injunction order was passed on 29. 8. 78 restraining defendants from using in relation to their product, the carton and the tube pertaining to cosmo Turmeric Vanishing Cream" and/or any other carton or tube which is deceptively ; similar to the plaintiffs carton and tube . . pertaining to vicco Turmeric Vanishing Cream" till further orders.
( 6 ) THE plaintiffs allege that they have been manufacturing and marketing since 1965 vanishing cream containing turmeric and sandal-wood, an ayurvedic preparation, . under the name of vicco Turmeric Vanishing Cream which improves natural health of the skin, adding lustre to the cornplexion, for man, an ideal after shave cream, and effective in boils and pimples, that the products of the plaintiffs including said cream have become popular all over the country. The plaintiffs have been marketing said cream in collapsible tubes of three different sizes namely small, medium, and economy packed in appropriate cartons.
( 7 ) THE carton has an attractive, distinctive get up and colour scheme, i. e. , red background with yellow floral design and printing in white letters. On two sides of the carton there are floral designs, with the words vicco Turmeric in first line, words vanishing Cream in the second line, and words an Aurvedic Preparation in the third line. On the third side of the carton there is floral design with the words manufactured in India by printed in the first line and the plaintiffs name and address in the second and third line. On the fourth side of the carton the uses of the said cream are mentioned. As regards the tube containing the said turmeric vanishing cream, the plaintiffs, allege that it has also a distinctive get-up. The collapsible tube has red background with floral design in yellow colour. On one side of the tube the words "vicco Turmeric are written and below that appear the words vanishing Cream in yellow colour letters. On the reverse side of the tube the material similar to the material on the fourth side of the carton is printed in dark yellow colour. The cap of the tube is yellow and the tube has a yellow strip in the bottom. A specimen of the carton and the tube is marked as annexure A and A-1, which they allege have been used by them since April, 1975 for selling their turmeric vanishing cream, and the total sales since April, 975 upto December, 1977 are of Rs. 1,77,31,377. 00. The plaintiffs allege that by reason of sale
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