In the High Court of Delhi 142 (2007) Dlt 724, MIPR 2007 (2) 269, 2007 (35) PTC 95 Del Petitioner Cadbury India ltd. and ors. Respondent Neeraj Food Products Date of Judgement 25 May 2007 Bench Justice G Mittal
The uniqueness of a commodity is recognized with the help of a Trademark sign which becomes an eye-catching attraction for the customers. A customer speculates the quality and genuineness of that product with such a Trademark affixed on it. In this competitive world, there are many companies, they try to capitalize on a large market share by introducing unified products and commodities. At the same time, some companies malignly stab to tarnish their uniqueness of well pre-dominant established products by creating such illusive concoctions to deceit customers and to jeopardize their goodwill of an established company. Trademark is a lifeline of the company which manifests the identity from other products for eg a coffee powder named NESCAFE COFFEE or BRU COFFEE their product line is the same i.e serving coffee powder but they both possess different attributes in their quality in their packaging and trademark which makes them different from each other. The veracity to recognize a product is a comprehensive task even for the companies and for the courts. The study of the Trademark Act is vast and the amplitude varies as shallow as we go deep down, though the Trademark Act safeguards plaintiffs’ rights one has to closely elaborate the technical points which are probably involved in it. In the case of Imperial Tobacco v. Registrar, Trade Marks,1the Court emphasized the word “Distinctiveness” which makes distinct attributes from other products in shape size and quality. This case involves blend contents of various technical aspects where the Court tried to scale-out issues most proficiently.
Background of the study:
The plaintiff company named Cadbury India Limited who is plaintiff 1 began their venture and operations in the year 1947 before this the company was known as Hindustan Cocoa Products Limited by which the name was granted by Cadbury is plaintiff 2 after the registration of the trademark. The plaintiff 2 through an agreement licensed certain trademarks in the year 1994 Both the plaintiff are the subsidiaries of the U.K based company named Cadbury Schweppes, who is the core manufacturer of confectionery and beverages product. The plaintiff has a huge market share in the field confectionery and chocolate products in India under several brands, the plaintiff stated some of the brands named Cadbury Dairy Milk, Cadbury Gems, Cadbury Five Star, Cadbury Bournvita, Cadbury Perk and for the same, the registration was granted and licensed with disclaimer of having the exclusive rights for the stated chocolate product.
The plaintiff before the Court in the suit produced a copy of dossiers marking the registration No.582896 of the word mark affixed ‘Cadbury Gems’ on the label which was acknowledged on 14th October 1992 up to the validation till 14th October 2006 in accord with sugar chocolate, milk chocolate, fruits, caramel, etc. with the exclusive disclaimer rights vested to use the word ‘GEMS’ The artistic work of the label was registered with registrar of copyright which was titled “GEMS BOND”
Constitution and Statutory Provisions:
- Order 21 Rule 1 & 2 of Civil procedure Code 1908 – Interlocutory Injunction
- Section 29(2) in the Trade Marks Act, 1999 – Infringement of Trademark
The plaintiff 1 previously known as Hindustan Cocoa Products Limited by obtaining license and certificate of the trademark they proclaimed that they have procured and sold sugar-coated milk chocolate buttons for the last several decades which has the large market share capitalization in India under the Trade Mark of ‘GEMS’. The plaintiff even stated in their factum that the product has been consumed by all the age groups of people, literates, illiterates, semi-literates through various distribution channels. The product is popular amongst the children. They had a unique and unusual pillow packing which made an eye-rolling get up for the attraction of the consumers. The plaintiff observed in the market that the defendant of this suit introduced chocolate where the size, shape and set up of that product was an emulation of that Plaintiff product and even the pillow pack which was used by the plaintiff was correspondingly same, under the trademark sign “JAMES BOND” phonetically it was pronounced as “JAMES BOND” which was not dissimilar of the plaintiff product “GEMS”. The plaintiff alleged that the respondent tried to degrade the value of the plaintiff company by introducing such deceptive nature product into the market and to confuse the customers
The contravention of Trade Mark of the plaintiff set up commodity led into agitation which further resulted in filing a suit of Interlocutory injunction before the Delhi High Court with Ordinary Suit to restrict the defendant to produce or to procure such product/good/commodity which replicates with the product of the plaintiff.
Issues which are in Challenge:-
1). Whether such injunction orders under Order 39 Rule 1 & Rule 2 shall be ordered in favor of Plaintiff to restrain the defendant from passing off goods by procuring or reproducing or manufacturing into any material form?
Contentions on behalf of Plaintiff:
- The learned counsel contended that the dereliction created by the defendant act does so created a huge impact on the label and the brand of the plaintiff product it shall not be seen in a minor violation activity and showed unscrupulous behavior causing deception and confusion in the minds of the public.
- Secondly, the counsel contended that the word affixed in the Plaintiff product is “GEMS” and the word affixed in the defendant/s product is “JAMES” both words originate from the scriptures of English Language and the pronouncement of these both words by the Englishmen or any literate person would be same and distinct thus the pronunciation of these words may vary from region to region and even the shopkeeper/s who store these two parties products maybe illiterate may not be versed with such in dictation or pronunciation as the Englishmen and literate would speak. So the vowels used in reference with “JAMES” A” and in “GEMS” “E”, quite a slight change in variance but shall not be overlooked
- The learned counsel accepted the fact set up by the Defendant purporting the period of validation of usage of the trademark but it doesn’t restrain to obtain an injunction in favor of Plaintiff in violation of Trade Mark Act and Copyright Act in reliance of the case Midas Hygiene Industries P. Ltd. and Anr. v. Sudhir Bhatia and Ors. 2
Contentions on behalf of Defendant/s:
- The contentions put forth by the counsel defendant that the packaging and mark affixed on the product of the defendant is quite dissimilar from that of the plaintiff.
- Learned counsel submitted that the defendant has not registered Trade Mark word as” GEMS” and the defendant uses the word “JAMES BOND” which shows dissimilarities that can be easily noticed.
- The packaging of the related two products doesn’t distinguish in determining the claim of the injunction by the Plaintiff contended by the learned counsel on behalf of the defendant in reliance with the case of Johnsons & Johnsons v. Cripteen Hoden.3 The learned counsel further submits that the pillow pack and label of the plaintiffs/s product doesn’t have registration under the Copyright Act 1957.
In the light of the requisites of the Injunction, the Delhi High Court observed the facts that were covered under the sphere of Interim Relief, they are
- Strong Prima Facie case in favor of the plaintiff
- May cause irreparable damage to the plaintiff
- Clear evidence that the defendants have in their possession
- The High Court found that registered Trade Mark of the plaintiff’s product and the product Defendant is identical and can be noticed with the naked eye and therefore no question arises and held that infringement has occurred on the part of Defendant.
- The court even resembled the phonetic similarity between “GEMS” and “JAMES” which satisfied the High Court that the defendant kept a mal fade intention to degrade the value of the plaintiff’s goodwill and so the imitated.
- It was concluded that the defendant had used the pillow pack which is almost replica of the plaintiff product even the structural set-up was of identical nature that would easily conquer the mind of the consumer.
- There is a crystal clear evidence that the defendant/s tried to infringe the right placed under section 29 of The Trade Mark Act 1999 which suggests identical name identical size, shape and verbal phonetic use of words was similar which ultimately allows the interim relief or injunction to be granted and shall to put in accord of O 39 R 1 & 2 of CPC 1908.
To the issue of passing off goods, the court invoked with various principles and citations in one of the cases Hindustan Radiators Co. v Hindustan Radiators Ltd, 4in this case, the court relied on eight points i.e 1). use of trademark and trade cycle used for a longer time and continuously 2). Suit for an injunction has been filed before limitation 3). The expression and impression of the distinctiveness of that product are in the mind of consumer 4). The nature of the activity of the plaintiff and defendant is similar 5). Similar trademarks of the parties. 6). Trademarks used by the defendant are likely to deceive the general public 7). The sphere of the activity and market of consumption of goods of parties is the same 8). The customers of the plaintiff are likely to be illiterate, uneducated and unwary who are capable of being deceived, With these points, the High Court has no hesitation that the plaintiff’s evidence is of prima facie evidence restricting the defendant for the passing off goods and to cease to procure or produce such setup of products of the identical marks.
With this, the High Court of Delhi allowed the application of the plaintiff/s and ordered an interlocutory injunction in favor of plaintiff/s which restrains the defendant from the passing off their good/commodity of the same identical brand name and substantially reproducing any material of the artistic work of the pillow packet.
The judgment of the High Court of Delhi in the above case is in the interest of justice and justifies the issues which were contended. The technical aspects such as packaging, size, shape, the brand were the key concern in this trademark case even the pronunciation of words is also taken into the accord.
Though for granting injunction it is very important that evidence what produced should be of prima facie one, considered as conclusive evidence. But what we see from the naked eye doesn’t propound to be clear as always. The court should not only rely upon the primary evidence whether it is conclusive or prima facie. The components and elements include in the IPR subject are of Marketing nature, therefore, the expert’s opinion such as design analyst or trademark analyst would play a core role in deciding the technical aspects of the case. The reports from the marketing advisor or analyst may also play a crucial role in propounding the judgment by elevating such evidence in accord of the case.
“The views of the authors are personal“
1Imperial Tobacco v. Registrar, Trade Marks, AIR 1977 Cal 41.
2 Midas Hygiene Industries P. Ltd.and Anr. v. Sudhir Bhatia and Ors 2004 (28) PTC 121 SC.
3 Johnsons & Johnsons v. Cripteen Hoden (1988) PTC 39.
4 Hindustan Radiators Co. v Hindustan Radiators Ltd AIR 1987 Delhi 353.