gopi 1 app-lodg.525-11 IN THE HIGH COURT OF JUDICATURE AT BOMBAY. ORDINARY ORIGINAL CIVIL JURISDICTION APPEAL LODGING NO.525 OF 2011 IN NOTICE OF MOTION NO.83 OF 2011 IN SUIT NO.91 OF 2011 Hindustan Unilever Limited. ... Appellant. V/s. VVF Limited .... Respondents. Mr. Virag Tulzapurkar, Senior Advocate with Mr. Himanshu Kane and Hiren Kamod and Ms. Musharaf Bukhari for the appellant. Mr. I.M. Chagla, Senior Advocate and Mr. Venkatesh Dhond, Sr. Advocate with Mr. Aresh Kayser and Ms. Tanuja Liman for respondents. CORAM: MOHIT S. SHAH, C.J. AND MRS.ROSHAN DALVI, J. DATED : 21 September 2011 P.C. This appeal is directed against the order dated 28 June 2011 of the learned trial Judge of this Court dismissing the appellant-plaintiff’s Notice of Motion in a Suit for infringement of the plaintiff’s trade mark and copyright in its artistic labels/wrappers and for passing off. 2. The plaintiff manufactures and sells soap called “Lifebuoy” and the defendant manufactures and sells soap called “Bacter Shield”. The learned trial Judge has given a finding that the defendant’s wrappers/work contained therein are not deceptively similar to the plaintiff’s wrapper/work contained therein The learned Judge has also given reasons in support of the finding. gopi 2 app-lodg.525-11 3. Mr. Tulzapurkar, learned Counsel for the appellant-plaintiff has made the following submissions:- (i) The learned Judge has erred in comparing the two wrappers by placing them side by side which is not the correct way of examining such matters. (ii) Relying on the decision of a Division Bench of this Court in M/s.Hiralal Parbhudas v. M/s.Ganesh Trading Company & Ors., AIR 1984 Bom.218, it is submitted that the two marks in question must be compared as a whole and microscopic examination is not permissible. The broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design. Overall similarity is sufficient. (iii) It is submitted that the happy family, red and white colour, cross and silver lining in the form of shield are the prominent features of the plaintiff’s trade mark which is registered on 1 March 2006. It is submitted that the defendant’s wrapper has a happy family, red and white colour combination and cross mark on the right-hand corner and a silver arch around the family. Hence the defendant’s mark is deceptively similar to the plaintiff’s. Hence a consumer may be misled by considering the defendant’s product as plaintiff’s product because of the aforesaid similarities. gopi 3 app-lodg.525-11 (iv) Strong reliance is also placed on the decision of a learned Single Judge in Tata Tea Limited v. Suruchi Tea Company & Anr., 2003 Vol.105 (3) Bom. L.R. 341 in support of the contention that even where brand names are different, similarity in the wrapper or package may be sufficient to hold that the defendant’s product is deceptively similar to the plaintiff’s product. 4. On the other hand Mr. Iqbal Chagla, learned Counsel for the respondent-defendant has opposed the appeal and submitted that the learned trial Judge has, after examining the material on record, come to a prima facie conclusion that the defendant’s wrapper is not deceptively similar to the plaintiff’s wrapper. He submitted that the Appellate Court would not interfere with the discretionary order passed by the trial Court. It is further submitted that there are number of other products with similar wrappers with families and red and white colour combination and plus sign and, therefore, there is nothing unique about such signs in the plaintiff’s wrapper. It is further contended that in any view of the matter, the balance of convenience is in favour of the defendant. The defendant has been manufacturing and selling its product since February, 2010 and that as per the Chartered Accountant’s certificate at Exhibit “1” (page 68 of the paper book) before the plaintiff gave notice to the defendant in January, 2011 the sales figures of the defendant’s product till December 2010 were in the region of 12.39 crores and the defendant had already spent Rs.3.57 crores as advertising expenditure for the product till December 2010. gopi 4 app-lodg.525-11 Lastly, it also submitted that there is delay of one year in seeking interim injunction against the defendant’s product. 5. In rejoinder, learned Counsel for the appellant-plaintiff has submitted that since the learned trial Judge has based his order only on the basis of the finding that the defendant’s wrapper is not deceptively similar, the other submissions made on behalf of the defendant cannot be considered at this stage without admitting the appeal. Reliance is placed on the decisions of M/s.Hiralal Parbhudas (supra) and M/s.National Chemicals and Colour Co. and Ors. v. Reckitt and Colman of India Ltd. & Anr., AIR 1991 Bom.76 in support of the submission that when the order of the learned trial Judge declining to grant injunction is based on the finding that the defendant’s wrapper is not deceptively similar to the plaintiff’s wrapper there is no question of any discretion having been exercised by the learned trial Judge. It is submitted that it is adjudication and, therefore, there is no bar to this Court re-examining the entire matter at this stage. It is further submitted that the so-called delay of 10 months or one year in filing the suit cannot be fatal to the plaintiff’s prayer for injunction. 6. As regards the question whether the defendant’s mark is deceptively similar to the plaintiff’s, it is true that the two marks are not to be placed side by side to find similarities, but the well established principles, as summarised in the Division Bench judgment of this Court in M/s. Hiralal Parbhudas v. M/s. Ganesh Trading Company, AIR 1984 Bombay 218 are as under:- gopi 5 app-lodg.525-11 “5. What emerges from these authorities is (a) what is the main idea aor salient features, (b) marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole, (c) overall similarity is the touchstone, (d) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, (e) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (f) the purchaser must not be put in a state of wonderment, (g) marks must be compared as a whole, microscopic examination being impermissible, (h) the broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design and (i) overall similarity is sufficient. In addition, indisputably must also be taken into consideration the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances.” 7. Applying the aforesaid principles, we are unable to accept the submission made on behalf of the plaintiff that the defendant’s wrapper is deceptively similar to the plaintiff’s. The product in question is an anti-germ bath soap for the use of the family. Hence, the picture of the family of 2,3 or 4 persons is not an unusual feature peculiar only to the plaintiff’s mark on a similar soap called Lifebuoy. The words, “Bacter Shield” on the defendant’s wrapper are quite conspicuous and prominent. There is no question of overall structural, quality or visual similarity between the two names and the purchaser would not be put in a state of wonderment while looking at the defendant’s wrapper whether he is purchasing “Lifebuoy” soap. Since in our view, the defendant’s wrapper is not deceptively similar to the plaintiff’s for the aforesaid reasons, it is not necessary to examine the other submissions including gopi 6 app-lodg.525-11 the submission based on the observations contained in para 15 of the decision of the Supreme Court in Corn Products v. Shangrila Food Products, AIR 1960 SC 142, made on behalf of the plaintiff. 8. We do, however, take note of the submission made on behalf of the defendant, as supported by the documentary evidence in the form of Chartered Accountant’s certificate at Exhibit `I’ that during the period between February 2010 and December 2010, the sales of defendant’s product were to the tune of Rs.12.39 crores and the defendant had already spent Rs.3.57 crores as advertising expenses on its product till December, 2010, even before the plaintiff sent the cease and desist notice in January 2011. The balance of convenience is, therefore, in favour of the defendant. 9. Having carefully considered the rival submissions, we are of the view that for the reasons indicated hereinabove, the order of the learned trial Judge declining to grant interim relief during pendency of the suit does not call for any interference. Hence, the Appeal is dismissed. However, the defendant shall maintain and submit accounts at quarterly intervals in sealed envelopes which shall be furnished to the Prothonotary and Senior Master of this Court. (CHIEF JUSTICE) (ROSHAN DALVI, J.)