The plaintiff must satisfy the trinity tests of reputation, deception, and damage for passing off, and failure to do so may result in the dismissal of the suit. Additionally, the court may consider the concept of acquiescence and the bar of limitation in trademark infringement and passing off cases.

JUDGMENT

(Prayer: Plaint filed under Order IV Rule 1 of the Original Side Rules and Order VII Rule 1 of the C.P.C. read with Sections 27, 134 and 135 of the Trademarks Act, 1999, Sections 51, 54, 55 and 62 of the Copyright Act, 1957 and Proviso 1 to Section 7 of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015:

a) a permanent injunction restraining the defendant, themselves, their partners, successors-in-business, servants, agents, distributors, dealers, stockists, wholesalers, retailers, shop keepers, representatives, assigns and all other persons claiming through them from manufacturing, selling and distributing, advertising bitumen emulsion using the MUTHOOS label which is almost identical/deceptively similar to the plaintiff's HINCOL label amounting to infringement of the plaintiff's copyright in the HINCOL label, in any manner whatsoever;

b) a permanent injunction restraining the defendants by themselves, their directors, legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers, advertisers or any one claiming through or under them from committing acts of passing off and enabling others to pass off by manufacturing, distributing, marketing selling, offering for sale, advertising or in any other manner dealing in bitumen emulsion or any other product bearing the deceptively similar mark/label MUTHOOS which is confusingly similar to plaintiffs mark/label HINCOL, or by using any other similar label, get -up, or packaging, which in any manner whatsoever would be considered to be similar to the plaintiff's label, get up or packaging;

c) the defendant be ordered to pay to the plaintiff a sum of Rs.10,00,000/- as damages for committing acts of infringement of copyright and passing off;

d) the defendant be ordered to surrender to the plaintiff for destruction all goods advertisement materials, packing materials, cartons, wrappers, labels in respect of bitumen emulsion and other allied / cognate goods containing the offending MUTHOOS mark/label or any other mark/label similar to plaintiff's trademark/label HINCOL;

e) a preliminary decree he passed in favour of the plaintiff directing the defendant to render true and faithful account of profits earned by them by use of offending MUTHOOS label/trademark for bitumen emulsion or other allied and cognate goods and a final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant after the latter have rendered accounts;

f) for entire costs of the suit.)

1. The suit has been filed for infringement of copyright and for passing off and for the consequential relief of damages.

2. According to the plaintiff, they have adopted the mark of "Hincol" along with its distinct logo / label as early as in the year 1996 for the purpose of its flagship product, "bitumen emulsion". The packaging of the plaintiff's barrels that contain the plaintiff's bitumen emulsion are black in colour with the "Hincol" logo emblazoned in the centre along with a diamond shape in yellow surrounding the "Hincol" logo. According to the plaintiff, their colour scheme of black and yellow on a barrel is identified with that of the plaintiff's for the last 27 years.

3. According to the plaintiff, the defendant adopted the mark "Muthoos" for packaging of a similar product i.e., "bitumen emulsion". However, according to the plaintiff, the defendant has copied the colour scheme of black and yellow, get up containing the yellow in diamond shape and layout thereof bearing an overall similarity to the plaintiff's label. Under those circumstances, this suit has been filed for infringement of