1 s4201-00 vai IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION SUIT NO.4201 OF 2000 Hasmukhrai & Company ....Plaintiffs V/s. M/s.Shree Ashapura Tea Centre Hasmukh Tea ....Defendants Mr.Darius Dalal with Mr.T.N. Daruwalla i/b J.G. & Billimoria & Daruwalla for the Plaintiffs. None for the Defendants. CORAM : S.J. VAZIFDAR, J. DATE : 22ND JUNE, 2011. P.C. :- 1. This is an action for infringement and passing off. The action of infringement is in respect of the plaintiffs’ trade mark and copyright. The prayer for damages is not pressed. 2. The plaintiffs carry on business as traders and dealers and exporters in tea. According to the plaintiffs, their predecessor-in-title had been using the words “Hasmukhrai & Co.” and/or “Hasmukh Tea” as their trade marks and trading style and trade name since 1933. According to the plaintiffs, they have been selling their tea under the trade mark and trading style”Hasmukhrai & Co.’s Hasmukh Tea” and/or “Hasmukh Tea” with the device of three leaves. They also claim to be the registered proprietors of the label marks bearing the words ”Hasmukhrai & Co.’s Hasmukh Tea” with the device of three leaves. They obtained a registration under class 30 2 s4201-00 on 24.9.1986. The plaintiffs are also the registered proprietors of the trade mark for their carrier bags bearing the same mark/words. The plaintiffs introduced tea pouches/packets bearing a distinctive get up, colour scheme and arrangement which is described in paragraph 5 of the plaint. The plaintiffs have also listed their various trade marks a dominant part whereof contains the words ”Hasmukhrai & Co.’s Hasmukh Tea” They are the owners of the original artistic work contained in the label and logos which are also registered. The extracts from the Registrar of Copyright are also produced. 3. The plaintiffs carry on their trade using the said marks and bearing the said work at various branches in the city. They have furnished the sales figures of their products sold under the said marks. They have also furnished the advertisement and promotional expenses. 4. I was informed that there were some disputes between the erstwhile partners and the plaintiffs regarding the entitlement t the said marks. The same are however not relevant for the purpose of this suit, as the defendants have not challenged the plaintiffs’ right in respect thereof. Needless to add that this order will not affect the rights of any third parties. 5. In July, 1988, the plaintiffs noticed that the defendants had started their business under the trade name which including the word “Hasmukh”.They had introduced their tea in packets and pouches bearing an identical get up and colour scheme. They put up various boards bearing the words “Shree Ashapura Tea Centre” and “Hasmukh Chai”. The suit was therefore filed. 6. The following issues are framed. 3 s4201-00 ISSUES 1) Does the plaintiff prove that the Plaintiff is the Registered Proprietor in India of the trade mark “Hasmukhrai & Co’s HASMUKH TEA” bearing No.460604 in relation to the specification of goods “Tea and Coffee falling in Class-30” and which is dated as of the 24th September, 1986 ? 2) Does the Plaintiff prove that the Defendants are using the marks, namely “HASMUKH” and/or “HASMUKH TEA CENTRE” and/or “HASMUKH CHAHA CENTRE” and/or “HASMUKH TEA” and/or “HASMUKH CHAI” and/or “HASMUKH CHAHA” in relation to their goods which is identical with and/or deceptively similar to the Plaintiffs registered trade mark “Hasmukhrai & Co.’s HASMUKH TEA” bearing No.460604 in Class-30 dated as of 24th September, 1986 and thereby committing an infringement of the said registered trade mark of the 1st Plaintiffs under Section 29 of the Trade and Merchandise Marks Act, 1958 now Section 29 of the Trade Marks Act, 1999 ? 3) Does the Plaintiff prove that Defendant is using in relation to tea or coffee or in relation to their business and/or the board/boards of their shop and/or on their invoices and/or tea packets and pouches, the words or names “HASMUKH” and/or “HASMUKH TEA” and/or “HASMUKH CHAI “ and/or “HASMUKH CHAHA” which are deceptively similar to or deceptive variations of the Plaintiff’s trading style “Hasmukhrai & Co.” and /or “Hasmukhrai & Co.’s HASMUKH TEA” so as to pass off and/or likely to pass of and/or enable others to pass off their goods and business as and for the goods or business of the Plaintiffs or in any way connected with the Plaintiff ? 4) Does the Plaintiff prove that the Defendant is using, selling, offering for sale and/or dealing in tea under the trade mark “HASMUKH” and/or “HASMUKH TEA CENTRE” and/or “HASMUKH CHAI” and/or “HASMUKH CHAHA” as word marks or label marks with the get-up and colour scheme and scheme of arrangement which is deceptively similar to or a look alike of the Plaintiff’s devices and labels as 4 s4201-00 shown in Exhibits “I-2”, “J-2”, “K”, “L”, “M-1” & “M-2” so as to pass off or likely to pass of and/or enable others to pass off their preparations under the trade marks “HASMUKH” and/or “HASMUKH TEA CENTRE” and/or “HASMUKH CHAI” and/or “HASMUKH CHAHA” and the get-up complained of as and for the Plaintiffs preparations sold under their trade mark “Hasmukhrai & Co.’s HASMUKH TEA”. 5) Does the Plaintiff prove that Defendant is reproducing the original artistic works of the Plaintiff as depicted in Exhibits “I-2”, “J-2”, “K”, “L”, “M-1” & “M-2” of the Plaint in any material form and/or communicating the work to the public and/or issuing copies of the work to the public and/or substantially reproducing the artistic works depicted in Exhibits “I-2”, “J-2”, “K”, “L”, “M-1” & “M-2” of the Plaint and thereby infringing the Copyright the Plaintiffs have in the said original artistic works ? 6) Does the Defendant prove that there is delay in taking action against the Defendant and hence Plaintiff is not entitled to any relief ? 7) For costs of the suit. 7. Although the defendants used the words “Hasmukh Tea” on the same board which contain the expression “Shree Ashapura Tea Centre”, there can be little doubt that the use of the plaintiffs’ work also thereon would amount to passing off. This requires no oral evidence. This is especially in view of the fact that the claim for damages was not pressed. The Court has to compare the marks. The marks are virtually identical. Even the artistic work adopted by the defendants is deceptively similar to the plaintiffs’ work - a red band with two horizontal white line at the top and bottom to just inside red band and the device of a yellow semi circle above the red band with prisms on the circumference. The addition of the device of three tea leaves in the semi circle by the defendants makes 5 s4201-00 no difference. A mere glance at the two works establishes that the defendants have slavishly imitated the plaintiffs’ work. 8. The written statement discloses no defence. It in fact contains mere denials. The question of deceptive similarity is to be judged by the Court 9. In the circumstances, I did not permit the plaintiffs time to lead the evidence of a witness. 10. The suit is therefore, decreed in terms of prayers (a), (b), (c), (d) and (i). Costs to be quantified as per rules.