2012 Supreme(Del) 1611

High Court of Delhi
THE HONOURABLE MR. JUSTICE MANMOHAN SINGH
Dabur India Limited
Versus
Shree Baidyanath Ayurved Bhawan Pvt. Ltd.
I.A. No.6255 of 2012 in CS(OS) No.906/2012
Decided on : 02-07-2012

Headnote:

DABUR SHILAJIT GOLD - COPYRIGHT INFRINGEMENT AND PASSING OFF - SECTION 51, 55 OF COPYRIGHT ACT, 1957 - SECTION 39, RULES 1 AND 2 OF CPC - INFRINGEMENT OF COPYRIGHT AND PASSING OFF - INTERIM INJUNCTION - SIMILARITY OF PACKAGING - MALA FIDE ADOPTION - BALANCE OF CONVENIENCE - COPYRIGHT OWNERSHIP - ASSIGNMENT - NO OBJECTION CERTIFICATE - VALIDITY - INFRINGEMENT OF COPYRIGHT - LIKELIHOOD OF CONFUSION - DECEPTIVE SIMILARITY - INJUNCTION GRANTED.

Fact of the Case:

Plaintiff alleged infringement of copyright and passing off in respect of Defendant's product, "Shilajit Gold". Plaintiff claimed that the packaging, color combination, get-up, layout, and features of Defendant's product were substantially similar to Plaintiff's packaging, which had acquired distinctiveness through extensive use and promotion. Plaintiff also submitted evidence of promotional expenses and sales figures to establish the distinctiveness of their packaging. Defendant challenged the validity of the assignment of copyright in favor of Plaintiff, arguing that there was no strict compliance with the provisions of Sections 17 to 19 of the Copyright Act, 1957. Defendant also contended that there was no case of infringement of copyright or passing off, as they had used different descriptive elements and the channels of trade were different.

Finding of the Court:

The Court held that, at the prima facie stage, Plaintiff had established a case of infringement of copyright and passing off. The Court found that the Defendant's packaging was deceptively similar to Plaintiff's packaging, and that there was a likelihood of confusion among consumers. The Court also held that the Plaintiff had acquired copyright in the packaging through an assignment from the artist who created the work, and that the assignment was valid. The Court further held that the Defendant's explanation for adopting the similar packaging was mala fide, as they had previously used different packagings and had no reason to suddenly adopt a packaging that was so similar to Plaintiff's.

Issues: 1. Whether the Plaintiff had established a prima facie case of infringement of copyright and passing off? 2. Whether the Defendant's packaging was deceptively similar to Plaintiff's packaging? 3. Whether there was a likelihood of confusion among consumers? 4. Whether the Plaintiff had acquired copyright in the packaging? 5. Whether the assignment of copyright in favor of Plaintiff was valid? 6. Whether the Defendant's explanation for adopting the similar packaging was mala fide?

Ratio Decidendi: 1. The Court held that the Plaintiff had established a prima facie case of infringement of copyright and passing off based on the following factors: (a) the substantial similarity between the Plaintiff's and Defendant's packaging; (b) the likelihood of confusion among consumers; (c) the Plaintiff's acquisition of copyright in the packaging through an assignment from the artist; and (d) the mala fide adoption of the similar packaging by the Defendant. 2. The Court found that the Defendant's packaging was deceptively similar to Plaintiff's packaging based on the following factors: (a) the use of similar color combination, get-up, layout, and features; (b) the placement of the SHILAJIT GOLD lettering and the fire device; and (c) the overall appearance of the packaging. 3. The Court held that there was a likelihood of confusion among consumers based on the following factors: (a) the similarity of the packaging; (b) the use of the same trade dress; and (c) the fact that the products were purchased by a wide spectrum of consumers, including semi-literate or illiterate consumers. 4. The Court held that the Plaintiff had acquired copyright in the packaging through an assignment from the artist who created the work. The Court found that the assignment was valid based on the following factors: (a) the artist was the author of the work; (b) the assignment was in writing and signed by the artist; and (c) the assignment was made for consideration. 5. The Court held that the Defendant's explanation for adopting the similar packaging was mala fide based on the following factors: (a) the Defendant had previously used different packagings; (b) the Defendant had no reason to suddenly adopt a packaging that was so similar to Plaintiff's; and (c) the Defendant's explanation was not credible.

Final Decision: The Court granted an interim injunction restraining the Defendant from using the impugned packaging. The Defendant was also granted two weeks to alter its packaging and four weeks to dispose of the pending stock lying with them. The Defendant was also burdened with costs of Rs.20,000/- to be deposited within four weeks with High Court Mediation Centre, New Delhi.