:1: IN THE HIGH COURT OF JUDICATURE AT BOMBAY O.O.C.J. NOTICE OF MOTION NO. 2685 OF 2003 IN SUIT NO. 2898 OF 2003 Bharati Cellular Ltd and anr. ....Plaintiffs. vs. Jai Distillers P.Ltd ....Defendants. Virag Tulzapurkar with Amit Jamsandekar, Sindhu Shrivastav and Ms. Neha Phatak i/by. D.H. Law and Associates for the plaintiffs. in support of Notice of Motion. Salil Shah with Hemang Engineer and Ms. Avani Shah i/by. Gordhandas and Fozdar for the defendants. CORAM: S.U.KAMDAR, J. CORAM: S.U.KAMDAR, J. CORAM: S.U.KAMDAR, J. DATED: 21ST MARCH,2006. DATED: 21ST MARCH,2006. DATED: 21ST MARCH,2006. JUDGMENT : JUDGMENT : JUDGMENT : 1. The present notice of Motion has been taken out interalia seeking relief of injunction :2: of infringement of the plaintiffs artistic work being Exhibit-D to the plaint and also for an injunction from in any manner manufacturing, marketing, exhibiting and selling any goods bearing the trade mark ‘AirTel’ as mentioned in Exhibit-A and B to the plaint or any other deceptively similar mark on the ground of passing off. Prayer (c) and (d) of the motion are for appointment of the court Receiver with a power to take possession of the goods and destruct all the labels, cartons and advertising material. 2. Some of the material facts of the present case are as under : 3. The plaintiffs are a company inter-alia carrying on business in telecommunication services. The plaintiffs are also providing mobile services to various people in India and is a well known company in the name of ‘AirTel’. The plaintiffs are carrying on business in various states of India and are having a large turnover and are owner of well known popular brand name :3: ‘AirTel’. Sometime in or about 1994 the plaintiffs conceived and invented the word mark ‘AirTel’. The plaintiff have also simultaneously adopted a distinctive label mark consisting the word ‘AirTel’ written in a particular manner with a particular colour combination. Plaintiffs are also contending that they are a group of companies who are using the said mark ‘AirTel’ essentially in relation to business of telecommunication services. The plaintiffs have also contended that they have acquired a super reputation in their mark ‘AirTel’ thus the said brand should be either treated as super brand or a universal brand. They have further contended that by virtue of such a status of super brand they are entitled to protection vice-a-versa all kind of goods using such a word mark ‘AirTel’. Plaintiffs have stated in the plaint that sometime in or about 2002 the plaintiffs commissioned the services of M/s. Ray and Keshvan Designer for the purpose of creating an artistic work with the label mark using the word ‘AirTel’. It is their further case that Ms. Sujata Keshavan and Ms. Meeta Malhotra, the :4: Creative Controller employed by the creative agency were entrusted with the work of creating the artistic work and they have created the design and artistic work for the plaintiff with the use of the word ‘AirTel’. The said artistic work is set out at Exhibit-D to the plaint which indicates use of the word in a particular manner with a different colour combination of Red, White and Black. According to the plaintiffs they also started using the said artistic work on the carton and/or on the label on the packs for the purpose of distributing, marketing and selling their services since 2002. They have contended that they have sold their products and services with the said label on a extensive basis all over India and thus they are the sole proprietor of the said artistic design. Plaintiffs have also filed an application for the registration of their word mark ‘AirTel’ under the Trade and Merchandise Marks Act, 1958. The application is also filed for label mark and the same is also pending since 2002. Application for label mark with artistic work has been filed under the Copy Rights Act. :5: The plaintiffs have stated in the plaint that they are using the said mark ‘AirTel’ and the artistic work covered by the said label all over the country extensively and in support of the same the plaintiff have relied upon the sales figures and the figures of advertisement expenses indicating extensive sale of their products and the huge amount of money spent towards the advertisement. Therefore the plaintiffs company claim to be known by the word ‘AirTel’ in the market and thus plaintiffs are require to protect their business and goodwill in the market. Plaintiffs claims to have as of today 30.71 million subscribers in almost 16 states and a customer base of 24% of the cellular subscribers in India i.e. the biggest and largest market in the cellular phone services. Plaintiffs also claims to be engaged in prepaid and post-paid mobile cards for the purpose of mobile sales services and recently the plaintiffs have also entered into land-line telephone services. Plaintiffs have also claimed to have diversified their business and services such as in the field of V-SAT services, submarine cable :6: projects manufacturing of telecommunication equipment and health care. 4. It is the case of the plaintiffs that sometime in or about 2.9.2003 the plaintiffs came to know that the defendants are using the said mark ‘AirTel’ which is identical and deceptively similar to the mark of the plaintiff. Apart from using the said word mark ‘AirTel’ the defendants are also using the label alongwith words ‘AirTel’ with the identical colour scheme and almost similar writing on their products which is alcoholic beverages. Thus the plaintiffs contend that the defendants by dishonestly copying the label as well as the word mark and are trying to pass off their business as that of the business of the plaintiff and thus the plaintiffs goodwill, business and reputation has been seriously suffered and affected. It is on the aforesaid contention the plaintiffs have filed the present suit for passing off action in the trade mark as well as for protection of copy right in their artistic work and passing off action of their :7: proprietary artistic work. 5. Thus essentially the plaintiff are pressing the prayer clause (b) in the nature of passing off action. The prayer (a) of the motion is not pressed since the plaintiffs are neither having their mark registered under the provisions of the Trade and Merchandise Marks Act nor their mark is registered under the Copy Right Act. 6. In response to the claim of the plaintiffs the defendant no.1 has filed an affidavit in reply. In the affidavit of the defendant no.1 it is contended that the goods which are in the market of the plaintiff are distinctively different to the goods of the defendant herein therefore the user of a similar mark or similar get up in respect of different products altogether cannot result in any confusion among the consumers in the market. It has been further contended that the goods are polls apart i.e. the plaintiff goods/business being telecommunication services and the goods of the defendant being selling of :8: liquor and alcohol beverages, the question of any likelihood of any confusion or actual confusion would not arise between the goods of the plaintiffs and the goods of the defendant herein in the minds of consumers. It has been further contented that there are various other parties who are also using the word ‘AirTel’ in relation to various products and thus the plaintiff has no exclusive right to use the said mark ‘AirTel’. In para-8 of the affidavit in reply an explanation has been furnished by the defendants for using the mark ‘AirTel’ which reads as under : ". The said word "AirTel" was adopted by the owner of the said mark to suggest that the person who will use the said products, will enjoy it so well that he will feel like flying in air talking to the people." 7. It has been further contended by the defendant no.1 in their reply that the defendant no.2 Pooja Keshavan is the proprietor of the said mark and it is she who has conceived the said mark ‘AirTel’. However it is not disputed that the word mark is identical as well as the nature of fonts used by the defendants are also identical to :9: that of the plaintiffs mark. It has been contended that it is the defendant no.2 who is the proprietor of the said mark and she has assigned the same to the defendant no.1 for the user thereof. It has been contended that the defendant no.2 has submitted an application for registration of the said mark ‘AirTel’ and thus the use of the mark by the defendant is bonafide and cannot be considered as dishonest user of the mark. It has been further contended that in view of the fact that the goods being totally different the question of passing off of the defendants business as that of the plaintiff cannot and does not arise. No consumer would believe that the goods of the alcoholic beverages are manufactured by the plaintiff who are solely and essentially in the business of telecommunication services. It has been thus contended in reply that the defendant is not entitled to relief of any nature whatsoever. 8. Learned counsel Mr. Tulzapurkar for the plaintiffs has contended that since 1994 the plaintiffs are using the word mark ‘AirTel’ and :10: that the label is also created by them in 2002 and therefore they are the owners of a design and entitled to the copy rights in the said label mark as well in the word mark ‘AirTel’. He has further contended that by virtue of the sale and advertisement expenses incurred by the plaintiffs and the extensive use of the word mark the plaintiffs word mark has acquired a status of super brand and/or universal brand and thus the plaintiff is entitled to protect their brand as against the world at large inrespect of all the goods and business. It is contended that the explanation inrespect of adoption of mark by the defendant of the word mark ‘AirTel’ is totally dishonest, bogus and without any substance. Apart from the same it has also been contended that the get up of the mark which has been copied by the defendant alongwith the word mark ‘AirTel, and the label is almost similar and identical and it is direct infringement of the plaintiffs artistic work and word mark ‘AirTel’. It has been further contended that though it is claimed that the defendant no.2 is the owner of the mark but :11: neither the defendant no.2 has filed any affidavit in reply opposing the present notice of Motion nor any case has been made out of the user of the mark. In so far as the user of the mark of the defendant no.1 is concerned it is only from June 2003 on their own showing and thus it is evident that the plaintiffs are prior user of the mark ‘AirTel’ with the artistic label mark which has been created by the plaintiffs and their design and labels have been first published in 2002. It has been contended that in so far as the question of infringement of copy right in the label is concerned the contention that the goods are different is totally an irrelevant factor and it is not necessary that the goods need to be identical or similar or from the common field of activities or an allied or cognet products when a question of passing of any artisitic work under the Copy Right Act arises. It has been contended that a copy right is in label, and in design and get up of the said label and thus needs to be protected irrespective of any relation or not to any product or goods. In support of the aforesaid :12: contention learned counsel for the plaintiffs have relied upon the provisions of S.14, 51 and 55 of the Copy Right Act. The said provisions are reproduced hereunder: "14. MEANING OF COPYRIGHT : For 14. MEANING OF COPYRIGHT : For 14. MEANING OF COPYRIGHT : For the purposes of this Act, "copyright means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:- (a) in the case of a literary, dramatic or musical work, not being a computer programme,- (i) to reproduce the work in any material from including the storing of it in any medium by electronic means ; (ii) to issue copies of the work to the public not being copies already in circulation. (iii) to perform the work in public, or communication it to the public; (iv) to make any cinematograph film or sound recording inrespect of the work; (v) to make any translation of the work; (vi) to make any adaptation of the work (vii) to do, in relation to a translation or an adaptation of the work any of the acts specified in relation to :13: the work in sub-clauses (i) to (vi) (b) in the case of a computer programme,- (i) to do any of the acts specified in clause (a); (ii) to sell or give on hire, or offer for sale or hire, any copy of the computer programme, regardless of whether such copy has been sold or given on hire on earlier occasions; (c) in the case of an artistic work- (i) to reproduce the work in any material form including depiction in three dimensions of a two dimensional work or in two dimensional of a three dimensional work; (ii) to communicate the work to the public; (iii) to issue copies of the work to the public not being copies already in circulation; (iv) to include the work in any cinematograph film; (v) to make any adaptation of the work; (vi) to do in relation to an adaptation of the work any of the acts specified in relation to the work in sub-clause (i) to (iv). (d) in the case of a cinematograph film,- (i) to make a copy of the film :14: including a photograph of any image forming part thereof; (ii) to sell or give on hire, or offer for sale or hire, any copy of the film regardless of whether such copy has been sold or given on hire on earlier occasions; (iii) to communicate the film to the public; (e) in the case of a sound recording,- (i) to make any other sound recording embodying it : (ii) to sell or given on hire, or offer for sale or hire, any copy of the sound recording regardless of whether such copy has been sold or given on hire on earlier occasions; (iii) to communicate the sound recording to the public. Explanation- For the purposes of this section, a copy which has been sold once shall be deemed to be a copy already in circulation.] "51. WHEN COPYRIGHT INFRINGED- "51. WHEN COPYRIGHT INFRINGED- "51. WHEN COPYRIGHT INFRINGED- Copyright in a work shall be deemed to be infringed- (a) when any person, without a licence granted by the owner of the Copyright or the registrar of Copyrights under this Act or in contravention of the conditions of a licence so granted or any condition imposed by a competent authority under this Act- (i) does anything, the exclusive right :15: to do which is by this Act conferred upon the owner of the copyright, or (ii- permits for profit, any place to be used for the communication of the work to the public where such communication constitutes an infringement of the copyright in the work, unless he was not aware and had no reasonable ground for believing that such communication to the public would be an infringement of copyright; or] (b) when any person- (i) makes for sale or hire, or sells or lets for hire, or by way of traded displays or offers for sale or hire, or (ii) distributes either for the purpose of trade or to such an extent as to affect prejudicially the owner of the copyright, or (iii) by way of trade exhibits in public, or (iv) imports into India, any infringing copies of the work : [Provided that nothing in sub-clause (iv) shall apply to the import of one copy of any work for the private and domestic use of the importer.] Explanation-for the purposes of this section, the reproduction of a literary, dramatic, musical or artistic work in the form of a cinematograph film shall be deemed to be an "infringing copy". "55. CIVIL REMEDIES FOR INFRINGEMENT OF "55. CIVIL REMEDIES FOR INFRINGEMENT OF "55. CIVIL REMEDIES FOR INFRINGEMENT OF COPYRIGHT- COPYRIGHT- COPYRIGHT- (1) Where copyright in any work has been infringed, the owner of the copyright shall, except as otherwise :16: provided by this Act, be entitled to all such remedies by way of injunction, damages, accounts and otherwise as are or may be conferred by law for the infringement of a right : Provided that if the defendant proves that at the date of the infringement he was not aware and had no reasonable ground for believing that copyright subsisted in the work, the plaintiff shall not be entitled to any remedy other than an injunction inrespect of the infringement and a decree for the whole part of the profits made by the defendant by the sale of the infringing copies as the court may in the circumstances deem reasonable. (2) Where in the case of a literary, dramatic, musical or artistic work, a name purporting to be that of the author or the publisher, as the case may be, appears on copies of the work as published, or in the case of an artistic work, appeared on the work when it was made the person whose name so appears or appeared shall in any proceeding inrespect of infringement of copyright in such work, be presumed unless the contrary is provided, to be the author or the publisher of the work, as the case may be. (3) The costs of all parties in any proceedings inrespect of the infringement of copyright, shall be in the discretion of the court. 9. Learned counsel has also contended that even for protection of the trade mark ‘AirTel’ it is not necessary that the goods must be similar or :17: identical or from the common field of activities He has further contended that once a brand has achieved a status of super brand or of universal brand then the said brand needs to be protected against all kinds of goods, products, services and business. It is thus contended that it is not necessary that the goods should be similar or allied products. In support of his aforesaid contention he has relied upon the judgment of this court in the case of Kirloskar Diesel Recon P.Ltd Kirloskar Diesel Recon P.Ltd Kirloskar Diesel Recon P.Ltd and anr. vs. Kirloskar Proprietary Ltd and Ors. and anr. vs. Kirloskar Proprietary Ltd and Ors. and anr. vs. Kirloskar Proprietary Ltd and Ors. reported in AIR 1996 Bom.149 reported in AIR 1996 Bom.149 reported in AIR 1996 Bom.149 of which para 12 to 15 and 18 reads as under : "13. The expression ‘common filed of activity’ was coined by Wynne_parry J, in McCulloch v. Levis A, May (Product Distributors Ltd) popularly known as ‘Uncle Maccase reported in 65 RPC 58 in which he held that its presence or absence was conclusive in determining whether or not there was passing off. However, the requirement that a ‘common filed of activity’ is conclusive in determining whether there can be passing off has been extensively criticised by Manning J. in the case of Henderson v. Radio Corp. Pty reported in (1969) RPC 218 holding that it would be unsafe to adopt the view expressed in McCulloch v. Mary that what has been called a common filed of activity :18: must be established in every case to entitle the plaintiff to succeed. He further held that it is going too far to say that the absence of this so-called common field of activity necessarily bars a plaintiff from relief. With the passage of time, law on requirement of common field of activity in a passing off action has radically changed. There is no requirement for a common field of activity to found a claim in passing off. In Marage Studies v. Counter Feat Clothing Co.Ltd reported In (1991) FSR 145, Browne Wilkison V-C said that the so-called requirement of the law that there should be a common field of activity is discredited. The real question in each case whether there is as a result of misrepresentation a real likelihood of confusion or deception of the public and consequent damage to the plaintiff. The focus is shifted from the external objective test of making comparison of activities of parties to the state confused. With the passage of time and reputation acquired, the trade mark ‘Kiroloskar’ has acquired the secondary meaning and has become almost a household word. The judgments relied upon by Mr. Kane pertain to the cases of one type of business and not where variety of businesses have been carried by the plaintiff and defendant as in the instant case. The business activities of the Respondents vary from pin to piano as borne out from the object clauses of the Memorandums of Association of the Respondents. The appellants have still to commence their business activities but as mentioned in the Memorandums of Association of 1st appellant in each appeal, some of the object clauses therein over lap with the activities of Respondents and more particularly of Respondents nos.6 and 7". :19: 15. The law of passing off protects goodwill against its erasing or mark. the exclusive reputation of trading name is protected and prevented from being debased. The Delhi High Court in the case of Dainler Benz Aktregesellschaft v. Hybo Hindustan (AIR 1994 Delhi 239) (supra) relied on by Mr. Tulzapurkar, has correctly held that the trade mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else reputation withe reference to goods, especially so when the reputation extends world wide. It is further held that there are names and marks which have become household word ‘Benz’ as name of a car would be known to every family that has ever used a quality car. The name ‘Benz’ as applied to a car, has a unique place in the world. Thus the boxes in which the defendant sells undergarments for men, the representation therein is of man with his legs separated and hands joined together above his shoulder, all within a circle indicate, he strong suggestion of a link between the tree pointed star of ‘Mercedes Benz’ car and the undergarments sold by the defendant. This cannot be considered to be a ‘honest concurrent user’ by the defendant of the said symbol and hence the defendant could be restrained from using the word ‘benz’ with reference to any underwear which is manufactured by the defendant." 10. Thereafter he has relied upon the judgment of the Division Bench of this court in the case of :20: Aktiebolaget Volvo vs. Volvo Steels Limited in Aktiebolaget Volvo vs. Volvo Steels Limited in Aktiebolaget Volvo vs. Volvo Steels Limited in Appeal No. 570 of 1995 in Notice of Motion no. Appeal No. 570 of 1995 in Notice of Motion no. Appeal No. 570 of 1995 in Notice of Motion no. 950 of 1995 decided on 16-10.1997 950 of 1995 decided on 16-10.1997 950 of 1995 decided on 16-10.1997 particularly the following para : "33. In the matter of Daimler Benz Aktiegesellschaft and anr. vs. Hybo Hindustan reported in AIR 1994 Delhi 239, the plaintiffs Benz sought injunction against the defendants using the name "Benz" for the production like undergarments. It was held as under : "There are names and marks which have become household words. "Benz" as name of a car would be known to every family that has ever used a quality car. The name