The main legal point established in the judgment is that the descriptive nature of a term and the distinctiveness of the trademarks are crucial factors in determining trademark infringement and passing off claims.

JUDGMENT :

Badar Durrez Ahmed, J.

This is an application under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 (hereinafter referred to as the "CPC") whereby the plaintiffs seeking an interim injunction restraining the defendant from using the impugned trade mark WHIP TOPPING which, according to the plaintiffs, is deceptively similar to their registered trade mark RICH'S WHIP TOPPING or any other deceptive variations thereof upon or in relation to their goods or business. The plaintiffs have also sought an interim injunction restraining the defendant from passing off and infringement of copyright by restraining the defendant from using the identical trade dress, similar packaging, colour scheme, instructions etc in respect of its WHIP TOPPING product.

2. It has been contended that the plaintiff No. 1 is one of the world's premium food companies with more than 2300 products sold in over 75 countries. The plaintiff No. 2 is a company incorporated in India under the Companies Act, 1956 and is a joint venture concern for making the plaintiff No. 1's products, including non-dairy products, available in the Indian market. According to the plaintiffs, the plaintiff No. 1 is a family owned business founded in 1945 by Robert E Rich, Sr., founder and chairman of the Board. The said Mr. Robert E Rich Sr., directed a laboratory team to search for a vegetable based replacement for whipped cream derived from a new source - the soya bean. While still in the development stage, Rich discovered that the soya bean substance could be frozen, thawed and whipped. According to the plaintiffs, the new product was immediately hailed as the miracle cream from soya bean and it revolutionised food processing and opened up a new world of non-dairy products to the growing frozen food industry. The miracle cream was called Rich's Whip Topping (non-dairy topping) and later served as the springboard for a series of other non-dairy products including Rich's Bettercreme Icing and Filling, Rich's On Top non-dairy dessert topping. According to the plaintiffs the mark RICH'S WHIP TOPPING and WHIP TOPPING are registered and/or pending registration in several countries of the world. Insofar as India is concerned, RICH'S WHIP TOPPING is a duly registered trade mark of the plaintiffs under No. 561884 from November 13, 1991 in Class 30 for "non-dairy toppings, icings, fillings and other goods in Class 30".

3. The plaintiffs have also indicated that in India itself there has been substantial sale of its products - RICH'S WHIP TOPPING. In 1978-79 the sales were to the extent of Rs. 2,17,71,722/-. In 1998-99 the sales were Rs. 3,97,68,704. The sales have continued to grow and for the year 2002-2003 the figure was Rs. 15,67,06,584/-.

4. It is alleged by the plaintiffs that sometime in April, 2003, it came to the attention of the plaintiffs that the defendant was selling a product which had various similarities with the product of the plaintiffs. The defendant was using the trademark WHIP TOPPING even though it had been marked as having a trademark significance in the plaintiffs' product. The plaintiffs also contended that the defendant used an identical red, blue and white colour scheme so as to render both, the plaintiffs' products and the defendant's products, identical. Even the instructions given on the plaintiffs' packaging has allegedly been copied verbatim by the defendant. According to the plaintiffs, the similarities of the packaging is obvious to the naked eye. The case of the plaintiffs is that as the product looked similar to each other, it was obvious that the defendant was not only infringing the trademark of the plaintiff but also trying to pass off its product as that of the plaintiffs. According to the plaintiffs, the defendant was fully aware of the plaintiff's' worldwide goodwill and reputation with regard to RICH'S WHIP TOPPING for over 50 years and wanted to derive unjust benefit there from. The defendant product is marketed under the trademark