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2006 Supreme(Del) 2413
IN THE HIGH COURT OF DELHI
A.K. SIKRI, J.
Hindustan Pencils Ltd - Appellant
Versus
Bangalore Cottage Industries Gaya - Respondent
CS (OS) No. 2107 of 2002
Decided on : 08-03-2006
Advocate Appeared:
Manmohan Singh, Advocate
Infringement of trademark and copyright, and the grant of permanent injunction as a remedy
Headnote:
Infringement of Copyright - Stationery - Copyright Act, 1957 - Trade Marks Act, 1999 - [NATARAJ] - [Infringement of Copyright and Trade Mark] - [Copyright Act, 1957, Trade Marks Act, 1999] - The court found that the defendant had infringed the plaintiff's trademark and copyright in the product by using the trademark NATARAJ and a similar carton design. The court held that the defendant's actions were dishonest and mala fide, and granted a permanent injunction restraining the defendant from using the trademark and packing material similar to that of the plaintiff.
Fact of the Case:
The plaintiff, a manufacturer of stationery, filed a suit for permanent injunction, infringement of copyright, passing off, damages, and rendition of accounts against the defendant. The plaintiff claimed to be the registered proprietor of the trademark NATARAJ and the copyright for the carton design of NATARAJ black lead pencils.
Finding of the Court:
The court found that the defendant had infringed the plaintiff's trademark and copyright in the product by using the trademark NATARAJ and a similar carton design. The court held that the defendant's actions were dishonest and mala fide, and granted a permanent injunction restraining the defendant from using the trademark and packing material similar to that of the plaintiff.
Issues: Infringement of trademark and copyright, passing off, damages, rendition of accounts
Ratio Decidendi: The defendant's use of the trademark NATARAJ and a similar carton design constituted infringement of the plaintiff's trademark and copyright. The court held that the defendant's actions were aimed at making illegal use of the goodwill enjoyed by the plaintiff in respect of its product, and therefore, granted a permanent injunction in favor of the plaintiff.
Final Decision: The court granted a permanent injunction restraining the defendant from using the trademark NATARAJ and the packing material/cartons similar to that of the plaintiff. The plaintiff was also awarded costs.
JUDGMENT :
A.K. Sikri, J.
This is a suit for permanent injunction, infringement of copyright, passing off, damages and rendition of accounts etc. against the defendant. Plaintiff is the manufacturer of pencils and other items of stationery and is carrying on business since the year 1957. The plaintiff in the year 1961 adopted the trade mark NATARAJ with the device of NATARAJ in respect of pencils and since then they have been using the trade mark NATARAJ with the device of NATARAJ in a particular designed label having red background and the word NATARAJ written in a particular characteristic style.
2. The plaintiff is the registered proprietor of the following trade marks:
(a) Trace Mark NATARAJ with the device of NATARAJ under No. 225923 as of 14.12.1964 claiming user since 22.7.1961 in respect of writing pencils.
(b) Trade Mark NATARAJ with the device of NATARAJ under No. 260466 dated 6.11.69 claiming user since 22.7.1961 in respect of pencils refills for propelling pens, and pencils, sharpeners, pens, fountain pens, erasers and pins, clips and staples included in class-16.
(c) Trade Mark NATARAJ Black lead label along with the device of Nataraj registered under No. 352478 as of 17th August, 1979 in respect of Black lead pencils included in class-16.
All the above Trade Marks are old trade marks and their registration is valid and subsisting on the Registry of Trade Marks. Copies of the Registration Certificates are submitted herewith as Annexure B.
3. The plaintiffs are also the registered proprietor of the copyright under No. A-25427/79 in respect of carton of NATARAJ black lead pencils along with the various other registrations under the Copyright Act, 1957. Copies of some relevant Copyright Certificates are submitted as Annexure C.
4. The case set up by the plaintiff is that its sale of stationery good under the trade mark NATARAJ with the device of NATARAJ inclusive of NATARAJ pencil sharpeners with its distinctive colour scheme and get up is substantial and their goods are sold in every nook and corner of India. Along with the plaint statement is filed as Annexure D giving sales figure and Annexure E giving details of the amount spend on sale promotion as well as advertisement through various media of advertisement. The goods are sold by the plaintiff in a carton and the said carton is filed as Annexure F. This carton is designed by using a combination of red and black colour and contained the following essential and distinctive features:
"the main front side of the carton has on the top the word NATARAJ written in a characteristic style in red colour with the matter written over with white and black ink. The background of the carton is in red colour with thin black stripes drawn predominantly over the Front and Back portion of the Carton. On the main front side of the carton on the left corner device of NATARAJ is depicted and on the right corner word NATARAJ is written in a characteristic style in White with Black outline, below which words BONDED LEAD-HB are written.
5. The side panels of the said carton are in black colour with the words written with white colour one side and detail of the price of the product and name and address of the manufacturer along with a logo of a reading child on the other side. The said logo is also registered as a Trade mark and Copyright. The said colour scheme, get-up and lay out has been protected by the Court in various cases decided in favour of the plaintiff.
6. The grievance of the plaintiff is that the defendant has copied the getup and colour combination of the plaintiffs cartons. Although defendants are selling the scented sticks (agarbatti). the defendant has adopted mark NATARAJ and is using the identical carton as that of the plaintiff. The case of the plaintiff is that defendant has slavishly copied the plaintiffs carton and the consumers would be having an impression that the goods of the defendant are that of the plaintiff because of the aforesaid similarities. It is thus, content
