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1990 Supreme(Mad) 1135
High Court of Judicature at Madras
THE HONOURABLE MR. JUSTICE VENKATASWAMI, THE HONOURABLE MR. JUSTICE ABDUL HADI & THE HONOURABLE MR. JUSTICE P K SETHURAMAN
Brooke Bond (India) Limited - Appellant
Versus
Sona Spices Private Limited - Respondents
O.S.A. No. 212 of 1990
Decided On : 11 December 1990
A copyright registration does not create any rights in law and may exist even for a counterfeit product or a copied label.
Headnote:
COPYRIGHT - INFRINGEMENT - INTERIM INJUNCTION - Artistic work in the label which is claimed to be registered is no longer in use and admittedly these labels have been altered. The alteration is substantial as a bare perusal would show and the claim that there is only slight modification is not correct. By reason of the substantial alteration the applicant company can claim no right and cannot complain of infringement of any copyright.
Fact of the Case:
The plaintiff, a multi-national trading in Tea, started business in spices only in 1980 and they would appear to have applied for trade mark registration for 5 of their labels containing the words "BROOKE BOND SONA" in December, 1981 and another label in July, 1982 and these trademark applications are admittedly pending. In view of the oppositions raised, the applicant company would appear to have surreptitiously obtained copyright registration for 9 labels on 14.2.1983. Copyright registration does not create any rights in law since it is a mere recordal of a claim made before the Registrar of Copyrights and so a copyright registration may exist even for a counterfeit product or a copied label.
Finding of the Court:
The Court found that the defendant had infringed the plaintiff's copyright by using labels that were similar to the plaintiff's registered copyright. The Court also found that the defendant had engaged in passing off by using labels that were deceptively similar to the plaintiff's labels.
Issues: Whether the defendant had infringed the plaintiff's copyright by using labels that were similar to the plaintiff's registered copyright.
Ratio Decidendi: The Court held that the plaintiff had made out a prima facie case for the grant of a temporary injunction. The Court found that the plaintiff had a valid copyright in the artistic work in the labels and that the defendant had infringed that copyright by using labels that were similar to the plaintiff's registered copyright. The Court also found that the defendant had engaged in passing off by using labels that were deceptively similar to the plaintiff's labels.
Final Decision: The Court allowed the plaintiff's application for a temporary injunction, restraining the defendant from using the impugned labels.
P. K. SETHURAMAN, J.
This is an application filed under Order XIV Rule 8 of O.S. Rules and Order 39 Rules 1 and 2 C.P.C. praying for an interim injunction restraining the respondent, their servants, agents heirs, successors and assigns, printers and distributors, wholesalers and stockists of any of them from using the impugned packets/pouches being Documents Nos. 44 to 51 or any other packets or pouches or artistic works which are similar or which are a colourable imitation of the artistic work in the plaintiff's registered copyright as found in Document Nos. 28 to 36 pending disposal of the suit.
2. In the affidavit filed in support of the application by the legal Manager of the applicant/plaintiff company, it has been stated that the suit has been filed by the plaintiff complaining of the acts of infringements committed by the respondent in which the impugned labels are identical to and/or deceptively similar to and a colourable imitation of the artistic work subsisting in the plaintiff's registered copyright. The plaintiff is also complaining against the acts of passing-off committed by the defendant by using labels which are deceptively and or confusingly similar to the labels used by the plaintiff in respect of their "BROOKE BOND SONA SPICES." The defendant has dishonestly copied the plaintiff's labels and has adopted the colour scheme, lay-out, and get-up in order to trade upon the reputation and goodwill acquired by the plaintiff in respect of the labels used by the plaintiff for sale of the plaintiff's Brooke Bond Sona Spices.
3. A scrutiny of the defendant's impugned labels will show that the defendants has deliberately and intentionally copied the essential features of the artistic of work in the registered copyrights of the plaintiff's and also has adopted in identical colour scheme and background, lay-out, get up and pictorial representation with absolute mala fide and wrongful motives corresponding to the labels of the respective products of the plaintiff. The defendant's impugned labels are further calculated to pass off or enable other to pass-off their inferior goods of spices as and for the reputed products of the plaintiff.
4. The illegal acts of the defendant are grossly prejudicial to the interest of the consumers and the general public and apart from giving rise to civil liability due to the said wrongful activities committed by the defendant, the defendant has also committed a criminal offence under section 63 of the Copyright Act.
5. The respondent has introduced its packets in the market with the altered pouches very recently. The conduct of the respondents amounts to fraud as the defendant is consciously copying the plaintiff's packets. As the respondent is a recent entrant in the field the balance of convenience is in favour of the plaintiff. The applicant has no objection to the respondents using the name Sona but to the get up and the colour scheme of the labels. Hence the application for injunction.
6. The respondent in the counter filed through the Managing Director of the company has contended that the allegations made in the affidavit filed in support of the application are misleading in material particulars and no case been made out for granting the relief prayed for. The suit is filed by the applicant-company complaining of infringement of their registered copyright in their labels, which have since been discontinued and not in actual use even as per the averments in the plaint and for passing off against the registered proprietor of the trade mark suppressing the fact that the defendant-company are the registered proprietors of the trade mark SONA SPICES. The suit for infringement and passing-off is not maintainable and the suit has been filed by the plaintiff only as a counter-blast to their suit for injunction in respect of trade mark filed against it in the District Counter, Chandigarh with a view to harass.
7. Sona Spices suppliers was stated by the brother of the deponent as Sole Pr
