Back
2012 Supreme(Del) 1635
High Court of Delhi
THE HONOURABLE MR. JUSTICE A.K. PATHAK
Godfrey Phillips India Ltd.
Versus
Dharampal Satyapal Ltd. & Another
I.A.No.6010 of 2012 in CS(OS) 865/2012
Decided on : 02-07-2012
For the Plaintiff :Rajiv Nayar, Sr. Adv. with Ms. Prathiba M. Singh, Sudeep Chatterjee, Ms. Anusuya Mehrotra, Advocates.
For the Respondents:Sudhir Chandra, Sr. Adv., with Gaurav Barathi, Anuj Gupta, Piyush Joshi, Nidhish, Advocates.
Slogans and phrases may not be copyrightable and must demonstrate distinctiveness and acquired secondary meaning to succeed in a passing off action.
Headnote:
Copyright Infringement - Pan Masala - Code of Civil Procedure, 1908, Section 151 - Copyright Act, 1957, Section 44, 48 - Passing Off - Unfair Competition - Dilution
Fact of the Case:
Plaintiff sought injunction against defendants for infringement of copyright, passing off, unfair competition, and dilution of their advertising slogan and campaign 'Shauq Badi Cheez Hai' used for 'Pan Vilas Pan Masala'. Defendants marketed 'Tulsi Saada Pan Masala' with the slogan 'Swad Badi Cheez Hai', alleged to be an imitation of plaintiff's campaign.
Finding of the Court:
The court found that the slogans 'Shauq Badi Cheez Hai' and 'Swad Badi Cheez Hai' were not copyrightable and did not amount to infringement. It held that the advertisements and slogans were distinct, ruling out confusion among consumers. The plaintiff failed to establish a prima facie case for passing off action, and the application for injunction was dismissed.
Issues: The issues involved copyright infringement, passing off, unfair competition, and dilution of the advertising slogan and campaign.
Ratio Decidendi: The court emphasized that the slogans were not copyrightable as they were common phrases, and the advertisements and slogans were distinct, ruling out confusion among consumers. It held that the plaintiff failed to establish a prima facie case for passing off action.
Final Decision: The application for injunction was dismissed.
A.K. PATHAK, J.
1. By this order I shall dispose of an application under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 ("Code", for short) whereby plaintiff has prayed that the defendants be restrained from manufacturing, marketing, selling or offering for sale "Tulsi Saada Pan Masala" or any other product using the advertising slogan and campaign "Swad Badi Cheez Hai" or any other slogan or campaign which may be complete imitation of the slogan and campaign of the plaintiff, that is, "Shauq Badi CS (OS) No. 865/2012 Page 1 of 19 Cheez Hai" so as to result in acts of infringement of copyright, passing off, unfair competition and dilution.
2. Plaintiff has filed this suit for permanent injunction regarding acts of infringement of copyright, passing off, unfair competition, dilution, rendition of accounts/damages, delivery up etc., against the defendants.
3. Plaintiff as well as defendants are engaged in the similar trade. Plaintiff is engaged in manufacturing, marketing, distribution and sale of, inter alia, "Pan Masala". Plaintiff launched its product "Pan Vilas Pan Masala" sometime in the beginning of the year 2010. Defendants are also engaged in the manufacturing, marketing, distribution and sale of "Pan Masala" under the mark "Tulsi Sada".
1. 4. Plaintiff has alleged that it had engaged an advertisement agency "M/s Meridian Communication Pvt. Ltd.", Mumbai for its brand development, brand launch strategy and conceptualizing and creating the advertisement campaign in the year 2008. The said agency created an advertisement campaign in respect of "Pan Vilas Pan Masala". The slogan "Shauq Badi Cheez Hai" was created as a punch-line in the advertisement. The slogan forms a key element of the plaintiff's promotional activities and advertising campaign and has been displayed at positions of prominence through extensive CS (OS) No. 865/2012 Page 2 of 19 advertisements in the print media, radio and on television. The slogan is the punch-line of the advertisement of the plaintiff on television which also forms a sizable part of the voice over in advertisements on radio channels as well. Campaign is designed in a manner that it embodies the spirit of connoisseurs who will go to any lengths to fulfill their quest for the best. The campaign features a well known bollywood actor Manoj Bajpai in the character of a "Nawab" who is extremely particular about the finer things in life such as ironing creases out of newspapers before reading, using German binoculars, attending events with foreign ambassadors and riding antique Victorian bicycles; eventually the advertisements go on to show how his quest for the elusive perfect taste ends with "Pan Vilas Pan Masala" with a voice over of the slogan "Shauq Badi Cheez Hai". The slogan forms the theme of the entire campaign. The advertisements have struck a chord with the consumers and they relate the slogan exclusively to the product of the plaintiff.
2. 5. Plaintiff has invested more than `25 crores in the advertisements during a short span of two years. The product of the plaintiff has received enormous recognition from the consumers and its sale during the financial year 2010-11 was `2456.7 lacs and during the year 2011-12 is `10562.7 lacs. Plaintiff has applied for CS (OS) No. 865/2012 Page 3 of 19 registration of the slogan with the Trade Mark Registry, in respect of the slogan "Shauq Badi Cheez Hai", in Hindi as well as English language.
6. Plaintiff alleges that it is the proprietor of the copyright in respect of the slogan
"Shauq Badi Cheez Hai", which is original literary work of the plaintiff created through an advertisement agency, thus, plaintiff is entitled to copyright protection and no third party has a right to use the same. Plaintiff also enjoys the statutory trade mark rights as well as the common law rights in the slogan "Shauq Badi Cheez Hai".
3. 7. Defendants are the competitors of the plaintiff. Defendants have imitated the vari
