Back
High Court of Judicature at Madras
THE HONOURABLE MR. JUSTICE SRINIVASAN
Brooke Bond India Limited - Appellant
Versus
Balaji Tea (India) Private Limited - Respondents
C.S. No. 79 of 1989/Application Nos. 502 to 505 of 1989
Decided On : 18 July 1989
COPYRIGHT - JURISDICTION - INFRINGEMENT - PASSING OFF - TRADE MARK - INJUNCTION - BALANCE OF CONVENIENCE - ABUSE OF PROCESS - COPYRIGHT ACT, 1957, S. 62(2) - LETTERS PATENT, CL. 14.
Fact of the Case:
The plaintiff, a tea manufacturer, filed a suit in the Madras High Court alleging infringement of its copyright, trade mark, and passing off by the defendant, a small tea trader from Raipur. The plaintiff claimed jurisdiction under Section 62(2) of the Copyright Act, 1957, which allows a suit for infringement of copyright to be instituted in the district court where the plaintiff resides or carries on business. The defendant contended that the court lacked jurisdiction since the cause of action arose in Nagpur and Visakapatnam, and that the plaintiff was abusing the process of the court by dragging him to Madras.
Finding of the Court:
The court held that the plaintiff was guilty of misuse and abuse of process of the court in approaching the Madras High Court, even though the institution of the suit was permitted by Section 62(2) of the Copyright Act. The court found that the plaintiff had not made out a prima facie case of infringement of copyright, and that the plaintiff was not entitled to combine the three causes of action in the suit. The court also held that it lacked jurisdiction to entertain the suit with reference to infringement of trade marks and passing off, as the cause of action on those two counts had arisen only in Nagpur and Visakapatnam.
Issues: 1. Whether the Madras High Court had jurisdiction to entertain the suit for infringement of copyright, trade mark, and passing off. 2. Whether the plaintiff was entitled to combine the three causes of action in the suit. 3. Whether the plaintiff had made out a prima facie case of infringement of copyright. 4. Whether the plaintiff was entitled to an injunction against infringement of trade mark and passing off.
Ratio Decidendi: 1. The court held that Section 62(2) of the Copyright Act, 1957, which allows a suit for infringement of copyright to be instituted in the district court where the plaintiff resides or carries on business, is an exception to the general rule that a suit should be instituted at the place where the defendant resides or carries on business. The court found that the plaintiff was abusing the process of the court by invoking the exception provided in the section, as it had the convenience and facility to approach the court prescribed by the general law. 2. The court held that the plaintiff was not entitled to combine the three causes of action in the suit, as the two causes of action for infringement of trade mark and passing off had admittedly arisen elsewhere. The court found that the plaintiff had not provided any explanation or justification for making a departure from the general law and invoking the special provision under Section 62(2) of the Copyright Act. 3. The court held that the plaintiff had not made out a prima facie case of infringement of copyright. The court found that the plaintiff's plaint did not contain the required particulars on the ownership of copyright, and that a comparison of the plaintiff's label with that of the defendant showed that a prima facie case of infringement of copyright had not been made out. 4. The court held that it lacked jurisdiction to entertain the suit with reference to infringement of trade marks and passing off, as the cause of action on those two counts had arisen only in Nagpur and Visakapatnam.
Final Decision: The court dismissed all of the plaintiff's applications for injunctions, with costs.
Srinivasan, J.
These applications are filed by the plaintiff who has prayed for the reliefs of injunction restraining the defendants from committing infringement of the Copyright and trademark and from passing of its goods as that of the plaintiff besides a decree to the defendant to render accounts of the profits earned by it and to surrender to the plaintiff all the cartons, labels packets and any other printed matters containing or consisting of the offending artistic work of trade mark together with blocks used for purposes of printing the same for destruction. The case of the plaintiff as set out in the plaint is as follows : The plaintiff carries on business as manufacturers, marketers and exporters of Tea and other consumer goods on a large scale with an annual sales turnover of about Rs. 400 crores. The plaintiff business having been established in the year 1912, has gained very valuable reputation and goodwill especially in the tea trade. One of the popular brands of tea which the plaintiff sells is "Super Dust Tea", which is being sold since 1968 in various sizes of packets. The marketing of the tea with the banner "Super Dust Tea" was being done under four registered trade marks and two other trade marks for which applications have been filed for registration. The essential features of the series of trade marks are the unique colour combination of green background the word's "Super Dust Tea" in white and the floral get up in different shades of red and pink. Slight variations in the get up have been designed to suit the size of the packet carrying different quantities of tea. In January, 1987, the plaintiff introduced a yellow circle in which the words "Super Dust Tea" are printed is red and green. The trade mark of the plaintiff has acquired considerable reputation and goodwill in the market. The plaintiff has spent about 1.6 crores of rupees on publicity and advertisements. The essential features of the artistic creation are : "Brooke Bond"(i) The words "Super Dust Tea" written in red and green letters in a distinctive manner in yellow circular background.
(ii) Green background of the entire label;
(iii) A distinctive colour combination of green, white, pink, red etc., and
(iv) Floral get-up consisting of two roses. One red and another pink with stems and few other flowers in a row.
"Since three months prior to the filing of the suit, the plaintiff noticed in markets in the region of Nagpur and Visakapatnam tea packets marketed by the defendant in cartons having the substantial features of the plaintiff's carton. The defendant's carton is deceptively similar to the plaintiff's carton and reproduces substantially all the essential features of the plaintiff's artistic work. The plaintiff's "Super Dust" in red and 'Tea' in green are reproduced by the defendant's "Super Star" in red and "Tea" in green. Just as the plaintiff's banner is encircled in a yellow circle, the defendant's banner is surrounded by a yellow star of similar dimension. Below the banner, the plaintiff's flowers in different shades of red with green leaves are copies by the defendant. The plaintiff's yellow piping on the left hand top with the word "New" in red is reproduced by the defendant with the similar piping containing in red letter "Fresh Assam Tea." The plaintiff's colour scheme of green background and employing yellow, pink and green for its artistic work have been copied. Above all, the concept of flowers and leaves associated with tea, has been captured by the defendant. The defendant has adopted the impugned label with the sole view of drawing upon the immense reputation and goodwill acquired by the plaintiff in respect of its tea sold in packets containing its wrapper used since 1968. The sale of tea packet with the impugned label has given rise simultaneously to three causes of action, infringement of plaintiff's registered trade mark, passing off and infringement of the plaintiff copyright. The suit is based on all the three
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
