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DELHI HIGH COURT
Manmohan Singh, J.
Marico Limited - Appellant
Versus
Pratik Goyal & Anr. - Resopndent
IA Nos. 13880/2012, 18643/2012, 22186/2012 and CS(OS) 2304 of 2012
Decided On : 26-09-2014
PARACHUTE - TRADE MARK - PARALITE - INFRINGEMENT - PASSING OFF - COPYRIGHT - INJUNCTION - DELAY - DISCLAIMER - SUMMARY - The plaintiff, a manufacturer of coconut oil and other edible oils, filed a suit against the defendants for infringement of its registered trademark PARACHUTE, passing off, and infringement of copyright in the artistic work of the shape of part of the articles. The plaintiff claimed that the defendants' use of the trademark PARALITE and the similar packaging and get-up of their products was deceptively similar to its own, and was likely to cause confusion and deception among consumers. The defendants denied the allegations and claimed that the word 'PARA' was common to the trade and publici juris, and that the disclaimer imposed by the Trademark Registry on certain features of the plaintiff's trademarks rendered those features non-exclusive. The court held that the defendants' trademark PARALITE was deceptively similar to the plaintiff's trademark PARACHUTE, and that the use of the trademark PARALITE by the defendants would likely cause confusion and deception. The court also held that the word 'PARA' was not common to the trade and publici juris, and that the disclaimer imposed by the Trademark Registry did not render the disclaimed features non-exclusive. The court further held that the defendants had infringed the plaintiff's copyright in the artistic work of the shape of part of the articles, and that the defendants were guilty of passing off their goods as the goods of the plaintiff. The court granted an injunction restraining the defendants from using the trademark PARALITE or any other trademark deceptively similar to the plaintiff's trademark PARACHUTE, from infringing the plaintiff's copyright, and from passing off their goods as the goods of the plaintiff.
Fact of the Case:
The plaintiff, a manufacturer of coconut oil and other edible oils, filed a suit against the defendants for infringement of its registered trademark PARACHUTE, passing off, and infringement of copyright in the artistic work of the shape of part of the articles. The plaintiff claimed that the defendants' use of the trademark PARALITE and the similar packaging and get-up of their products was deceptively similar to its own, and was likely to cause confusion and deception among consumers. The defendants denied the allegations and claimed that the word 'PARA' was common to the trade and publici juris, and that the disclaimer imposed by the Trademark Registry on certain features of the plaintiff's trademarks rendered those features non-exclusive.
Finding of the Court:
The court held that the defendants' trademark PARALITE was deceptively similar to the plaintiff's trademark PARACHUTE, and that the use of the trademark PARALITE by the defendants would likely cause confusion and deception. The court also held that the word 'PARA' was not common to the trade and publici juris, and that the disclaimer imposed by the Trademark Registry did not render the disclaimed features non-exclusive. The court further held that the defendants had infringed the plaintiff's copyright in the artistic work of the shape of part of the articles, and that the defendants were guilty of passing off their goods as the goods of the plaintiff.
Issues: Whether the defendants' trademark PARALITE was deceptively similar to the plaintiff's trademark PARACHUTE;Whether the word 'PARA' was common to the trade and publici juris;Whether the disclaimer imposed by the Trademark Registry on certain features of the plaintiff's trademarks rendered those features non-exclusive;Whether the defendants had infringed the plaintiff's copyright in the artistic work of the shape of part of the articles;Whether the defendants were guilty of passing off their goods as the goods of the plaintiff.
Ratio Decidendi: The court held that the defendants' trademark PARALITE was deceptively similar to the plaintiff's trademark PARACHUTE, and that the use of the trademark PARALITE by the defendants would likely cause confusion and deception. The court also held that the word 'PARA' was not common to the trade and publici juris, and that the disclaimer imposed by the Trademark Registry did not render the disclaimed features non-exclusive. The court further held that the defendants had infringed the plaintiff's copyright in the artistic work of the shape of part of the articles, and that the defendants were guilty of passing off their goods as the goods of the plaintiff.
Final Decision: The court granted an injunction restraining the defendants from using the trademark PARALITE or any other trademark deceptively similar to the plaintiff's trademark PARACHUTE, from infringing the plaintiff's copyright, and from passing off their goods as the goods of the plaintiff.
1. By this order I propose to decide the pending applications bearing I.A. No. 13880/2012 (under Order 39 Rules 1 & 2 CPC), I.A. No. 18643/2012 (under Order 39 Rule 4 CPC) and I.A. No. 22186/2012 (under Order 39 Rule 2A CPC).
2. The plaintiff has filed the present suit seeking a permanent injunction against the defendants on their use of the trade mark PARALITE claiming the same to be infringing the mark PARACHUTE of the plaintiff, so as the colour-scheme, get up, lay-out and arrangement of features and similar logos used by the defendants as that of the plaintiff amounting to passing off their goods and infringement of copyright and design with regard to similar shape of part of the articles.
3. Alongwith the suit, plaintiff filed an application being I.A. No. 13880/2012 under Order 39 Rules 1 & 2 CPC. The suit as well as the interim application were listed before Court on 1st August, 2012 when an ex-parte order was passed restraining the defendants from using the trademark, PARALITE or any other trademark deceptively similar to the plaintiff’s trademark, PARACHUTE and PARACHUTE LITE in relation to edible coconut oil and also restraining defendants from using packaging that is deceptively similar to that of the plaintiff’s packaging in respect of edible coconut oil sold under the trademark, PARACHUTE.
4. The interim order was passed on 1st August, 2012 i.e. two years ago. The matter is at the stage of evidence. Learned counsel for the defendants is insisting for hearing of the applications though suggestion was given to expedite the evidence and hearing of the main suit itself. As he is not agreeable, the Court is left with no option but to hear the interim applications.
5. The plaintiff is seeking an injunction against the defendants --
from using the trade mark PARALITE or any other trade mark deceptively similar to the trade mark PARACHUTE and PARACHUTE LITE;
from infringing the design registrations of the plaintiff for its 1 litre container and mouth cap of its product sold under the mark PARACHUTE; and
from infringing the registered copyright A64997/2003 by copying the artistic work.
6. The plaintiff claims that the plaintiff became the owner inter alia of the trade mark PARACHUTE in respect of coconut oils, edible oils etc. in the year 2000 when it bought the same vide a Deed of Assignment dated 31st May, 2000 from Bombay Oil Industrial Pvt. Ltd. The mark PARACHUTE had been adopted in the year 1948 and was extensively and uninterruptedly in use in respect of coconut oil and an undisputed market leader in this segment in the year of the assignment.
7. The trade mark PARACHUTE of the plaintiff was first registered on 31st July, 1978 as part of a composite mark under number 339152 in Class 3 in respect of hair oil. The same is represented herein under:
8. The plaintiff is the registered proprietor of following marks consisting of the mark PARACHUTE including the mark
PARACHUTE LITE:
S. No.Trade MarksRegistration No.Class
1.PARACHUTE39959329
2.Logo103384429
3.Logo111144029
4.Logo73789429
5.Logo36323529
6.PARACHUTE3995923
7.Logo7992763
8.Logo8882453
9.Logo10338423
10.Logo11112453
9. The plaintiff is also the owner of registered copyright No. A- 64997/2003 in the following:
“Logo omitted”
10. The plaintiff states to have gotten the design registration for 1 litre container registered under number 176588 that expired on 4th June, 2013. The second design registration No. 180785 of the plaintiff for the mouth cap of the container is valid upto 15th November, 2014.
11. The plaintiff has detailed the sales and promotional figures for the mark PARACHUTE for the years 2001-2011in its plaint.
12. It is averred in the plaint that the plaintiff became aware of use of the mark PARALITE from the Trade Mark Journal 1424 of 16th September, 2009, where application No. 1479090 of the defendants for registration of the mark PARALITE was advertised. The plaintiff opposed the said application of the defendants on 8th December, 2009. The opposition fi
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