The judgment establishes the principles of infringement and passing off under the Trade Marks Act and Copyright Act, emphasizing the necessity of injunction in cases of infringement and the similarity of trade marks leading to infringement.

MANMOHAN SINGH, J.

1. The plaintiff has filed the present suit under Section 134 and 135 of the Trade Marks Act, 1999 as well as under Section 55 of the Copyright Act, 1957 for permanent injunction restraining infringement, passing off, rendition of accounts, damages etc.

2. As per the case of the plaintiff, the plaintiff is a company organized and established under the laws of United States of America. The plaintiff is engaged in the business of manufacturing and marketing of chemical products for industrial use, lubricating and penetrating oils and agent; cleaning, polishing and scouring preparations; and allied/related goods (hereinafter referred to as “the said goods”).

3. In the year 1957 the plaintiff conceived, coined, adopted and started commercially using the Trade Mark WD-40 (both word per se as well as in label form in distinctive colours) (hereinafter referred to as the “said trade mark”) in United States of America in relation to the said goods. Specimen of plaintiff’s said trade marks are marked as Ex. PW 1/1 and Ex. PW 1/2.

4. Since the beginning (at least since the year 1963) the plaintiff is using a distinctive design of the Can for the purposes of marketing its said goods and is also using distinctive trade dress and colour scheme i.e. combination of Red, Blue and Yellow colours on its Cans/Labels.

5. The plaintiff is the owner and proprietor of the said trade marks, Can Design, trade dress and colour scheme.

6. It is the case of the plaintiff that the artistic work involved in the said trade marks, Can Design, trade dress are original in charcter within the meaning of the Copyright Act 1957 and the plaintiff is the proprietor thereof. Since the beginning the plaintiff is commercially using and reproducing its aforesaid copyrights, within the meaning of Section 14 of the Copyright Act, 1957. By virtue of Berne Convention, to which India is a signatory, plaintiff’s copyrights are further protected and enforceable in India.

7. Gradually due to the excellent quality of the plaintiff’s products demand for plaintiff’s said goods grew in other countries of the world and today plaintiff’s said goods under the said trade marks and Can Design are in demand and sold in large quantities in the major countries of the world including India. The list containing the details of the plaintiff’s world wide Trade Registration are placed on record.

8. The plaintiff has obtained registrations of its said trade marks and Can Design in various countries of the world, details whereof is on record. Copies of plaintiff’s few trade marks registration certificates issued by the concerned authorities of different countries viz. Australia, Canada, China, CTM, Cyprus, Hong Kong, Korea, New Zealand, Northern Cyprus, united States of America are also placed on record.

9. The said trade marks and Can Design are also registered under the provisions of Indian Trade Mark Act, 1999 in favour of the plaintiff. The details of the plaintiff’s Indian Trade Mark Registrations and pending applications are given in the list placed on record and the same are marked as Mark-D.

10. The plaintiff has inter alia, filed the following documents :

(a) Copy of registration certificate with respect to trade mark No.536881 in Class 4.

(b) Copy of registration certificate with respect to trade mark No.473835B in Class 3.

(c) Copy of relevant extract from the relevant trade mark journal where plaintiff’s trade mark No. 473834B was published.

(d) Copy of relevant extract from the relevant trade mark journal where plaintiff’s trade mark No.462435B was published.

(e) Copy of relevant extract from the relevant trade mark journal where plaintiff’s trade mark No.462536B was published.

(f) Copy of relevant extract from the relevant trade mark journal where plaintiff’s trade mark No.473835B was published.

(g) Copy of relevant extract from the relevant trade mark journal where plaintiff’s trade mark No.536881 was publish