IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 11.11.2011 CORAM THE HON'BLE MR. JUSTICE VINOD K.SHARMA O.A.Nos.682, 683 & 684 of 2011 in C.S.No.541 of 2011 ORDER COMMON ORDER O.A.No.682 of 2011: This application under Order XIV Rule 8 of O.S. Rules read with Order 39 Rule 1 & 2 of C.P.C. has been filed to grant ad-inteim injunction restraining the respondents, their distributors, stockist, servants, agents, retailers, representatives of any other person claiming under/through them from in any manner infringing the applicant's copyright as contained in their "Medimix" pouches/labels/ packing materials in respect of the trademark 'Medimix and/or the device/ logo/artistic as contained in plaint document No.2 and/or plaint Doc.No.4 and/or plaint Doc.No.6 by manufacturing, selling, offering for sale, stocking, advertising, either directly and/or indirectly any goods and in particular any soaps and/or costmetic products employing the said mark/device/logo/artistic work as contained in plaint Doc. No.7 or either independently or in part or otherwise and/or by using any other mark/device/logo/artistic work identical with and/or deceptively similar to applicant's artistic work as contained in plaint doc.No.2 and/or plaint doc.No.4 and/or plaint Doc. No.6 or in any other manner whatsoever, pending disposal of the suit. O.A.No.683 of 2011: This application under Order XIV Rule 8 of O.S. Rules read with Order 39 Rule 1 & 2 of C.P.C. has been filed to grant ad-inteim injunction restraining the respondents, its distributors, stockist, servants, agents, retailers, representatives of any other person claiming under/through them from in any manner infringing the applicant's registered trademark "Medimix" and/or the device/ logo/label/artistic work by manufacturing, selling, offering for sale, stocking, advertising, either directly and/or indirectly any goods and in particular any soaps and/or costmetic products under the trademark and/or the label as contained in plaint Doc.No.6 or either independently or in part or otherwise and/or under any other mark/device/logo/artistic work identical with and/or deceptively similar to applicant's registered trademark or in any other manner whatsoever, pending disposal of the suit. O.A.No.684 of 2011: This application under Order XIV Rule 8 of O.S. Rules read with Order 39 Rule 1 & 2 of C.P.C. has been filed to grant ad-inteim injunction restraining the respondents, their distributors, stockist, servants, agents, retailers, representatives of any other person claiming under/through them from in any manner manufacturing, selling, offering for sale, stocking, advertising, either directly and/or indirectly any goods and in particular any soaps and/or costmetic products employing the mark/device/logo/artistic work in respect of their goods as contained in Plaint Doc.No.7 and/or any other mark/device/logo/artistic work which is identical with or deceptively similar to applicant's trademark, device/logo/artistic work as contained in plaint doc.No.2 and/or plaint doc.No.4 and/or plaint Doc. No.6 so as to pass off the respondents' products as and for the products of the applicant's or in any other manner whatsoever, connected with the applicant. 2 M/s.Cholayil Private Limited, a company registered under Companies Act has filed the suit under Order IV Rule 1 of O.S.Rules, read with Sec.27, 134 and 135 of Trade Marks Act, 1999 and Sec.51, 55, 58 and 62 of the Copyright Act, 1957 for perpectual prohibitory injunction, as also mandatory injnction for directing the defendants to surrender to the plaintiff for destruction all packed soaps, goods, labels, dyes, blocks, moulds, screen prints packing materials, advertisements, and other materials and to render accounts of pofits made by sale of soaps, under the label deceptively similar to that of the plaintiff. 3 The plaintiff has also prayed for to grant damages to the tune of Rs.25,01,000/- (Rupees twenty five lakhs and one thousand only) for the act of passing off, and infringement of trademark and copyright. 4 The plaintiff submits to be the most famous and respected Ayurvedic families of Kerala, and practicing Ayurveda and holistic healthcare system for several generations. Dr.V.P.Sidhan, developed a unique soap, Medimix, the flagship brand of the plaintiff. 5 The company is engaged in manufacture and marketing for soaps, talcom powders, Pharma products and Consumer Health products under the brand name such as Medimix, Cuticura, Rituta, Yakrita, Grahi, DQR, Dasamoolakaduthrayam, Rumacide-G, Smilak Plus, Suseeta, Posna, Tejaswini,Oaril, Hapy Morning,Bubhush and Vitaking and earned goodwill and reputation for its quality products over the years. 6 The Ayurvedic soap manufactured by the plaintiff, is sold under the brand name "Medimix" which was adopted by the plaintiff as early as in the year 1969. ( However, the certificate of incorporation of the plaintiff attached with the plaint is dated 27.12.2005). The plaintiff for the reasons best known, has failed to file the original certificate of Incorporation. 7 The plaintiff has also placed on record the assignment of interest by Ms.Sujatha Keshavan, in favour of the plaintiff company by deed of assignment dated 19.8.2008. This document shows the assigned work, which is printed on the wrapper of Medimix which was assigned to the plaintiff on 19.8.2008. 8 The plaintiff in the pleading, has submitted that the trademark "Medimix" has been used by the plaintiff for over 42 years which is now marketed in pouches/labels with trademark along with a distinctive artistic work, which was assigned to the plaintiff on 19.8.2008. 9 The plaintiff/applicant is using the trademark along with artistic work openly, continuously and extensively to market its Ayurvedic soaps. The "Medimix" soap is marketed through Dorcas Market Makers Private Limited, a subsidiary company of the plaintiff. 10 The Medimix labels have been placed on record. The artistic work is said to be the creation of Ms.Sujatha Keshavan which as already noticed above, stands assigned to the plaintiff. The plaintiff, therefore, claims to be the absolute owner of trademark "Medimix" since 1969, and the owner of copyright in the original artistic work since 2005. 11 The case of the plaintiff, is that the use of similar trademark or artistic work by anyone without the consent of the plaintiff/applicant constitutes an infringement of the plaintiff's right under the Trademarks Act and Copyright Act and further amounts to a tort of passing off. 12 The plaintiff has placed on record the Chartered Accountant's certificate, showing sales and promotional expenses by M/s.Dorcas Market Makers Pvt. Ltd. The public/consumers recognise the Trademark and label which is a registered trademark to be that of the plaintiff alone. The soap is marketed throughout the country. The Trademark stands registered in the name of the plaintiff/ applicant vide registration No.1394556. 13 It is pleaded by the plaintiff, that in June 2011, the plaintiff discovered that the defendant was fraudulently and dishonestly indulging in manufacture and sale of Soap under the trademark "Herbal" employing a label identical to that of the plaintiff's "Medimix" label, which is not permissible as it is the plaintiff who is alone entitled to use the trademark "Medimix" in view of its registration, and for the goodwill achieved by its marketing, for number of years. 14 The Trademark of the defendant is claimed to be deceptively similar to the plaintiff's "Medimix" label. The defendants thus deliberately adopted a visually similar label to that of the plaintiff, and employed an identical deceptively similar device and label for its soaps, with the dishonest intention, to encash upon the mammoth reputation of the plaintiff's "Medimix". 15 The colour combination, getup and appearance of the defendants label is identical with that of the plaintiff. The identical/deceptively similar label, is thus causing confusion in the minds of consumers and traders at large with regard to the origin of the products, and thereby results in deceiving them and inducing them to buy the defendants' goods, believing it to be that of the plaintiff or associated with the plaintiff. 16 The plaintiff being the Proprietor of the trademark "Medimix" and the owner of its artistic work is entitled to exclusively use and no other person can use trademark/label either identical or deceptively similar to that of the plaintiff. 17 It is the case of the plaintiff, that due to defendant's infringing the trademark and copyright, has resulted in adversely affecting its sales and reputation of the plaintiff/applicant. 18 For the purpose of Court fee, the plaintiff tentatively estimated damages at Rs.25,01,000/- (Rupees twenty five lakhs and one thousand only). For bringing the suit, within the pecuniary jurisdiction of this Court, whereas no basis or details of the damages has been pleaded or shown in the suit. It is a commercial transaction, and the necessary facts and details of damages suffered could safely be pleaded, as in absence of necessary pleadings no evidence can be led. 19 Along with the suit, the plaintiff has filed three interim applications, referred to above for grant of interim injunction. 20 The first defendant has filed counter affidavit wherein the averments made in the applications are denied. The case set up by the defendant/respondent, is that "Green colour" is associated with herbal products. Similarly, the depiction of herbs, nuts, spices and certain fruits like citrus, gooseberry, papaya are also associated with herbs. The aurvedic medicinal preparations invariably depict mortar and pestle, and it is only the manner of depiction which differs in each product. Therefore, nobody can claim monopoly over the above depictions unless, it is identical to the other. 21 It is also the stand of the defendant that the plaintiff has not produced any proof for alleged user of the artistic works of trademark depicted in the plaint in the year 2005, as the assignment deed is dated 19.8.2008. It was not possible for the plaintiff to use the artistic work and label Mark since 2005, as pleaded in the suit/ applications. 22 It is also pleaded that no documentary evidence have been placed to show the user of the specific label; The defendant/ non applicant has not used the label or published artistic work, as claimed by the plaintiff. 23 It is also the case of the defendant/non applicant that plaintiff appears to have commenced the use of subject label only recently and is not entitled to claim reputation or goodwill in respect of the impugned cases. 24 The defendant/non applicant was incorporated in the year 1984 in ayurvedic medical research and development and has developed many herbal based and other personal care products like the tooth paste, tooth powder, tooth brush, soap, hair oils, baby oil, hygiene product, conditioner, shampoo, body wash, etc. for market in India and export market. The products of the defendants/non applicants are exported to U.S.A., Canada, France, U.K. and other countries under the trademark "AMAR" which is a registered trademark of the respondent/defendant. 25 The defendant/respondent introduced the "Amar Herbal Soap" consisting of 18 herbs in the year 2010, and due to the goodwill and reputation enjoyed by the defendant/non applicant, this products was well received. The distinctive label used for the product had depiction of a heap of fruits, leaves and herbs in a metal bowl. The vertical border of the label bear greenery. The words "Amar Herbal" is written prominently in colour combination of red, black, white and green. 26 The distinctive artwork used by the defendant/non applicant is the creation of its Managing Director in the course of employment. The trademark "Amar" is registered vide registration No.1318089 in Class 3, which is valid and subsisting. 27 The defendant/non applicant have pointed out the following differences in primary label design Plaintiff's Medimix Label Defendants' Amar Herbal Label 1 Mortar and Pestle device is depicted Wide mouthed Metal Bowl is depicted 2 Mortar is empty with pestle alone partially visible Metal Bowl is filled with fruits, nuts, herbs and leaves 3 Leaves and flowers are depicted outside the Mortar Fruits, nuts, herbs and leaves are heaped into the Metal bowl 4 Background colour combination is yellow and olive green Background colour is white and pale green 5 Leaves and flowers spread around the mortar Fruits and leaves do not spread/spill outside the bowl 6 Dark green band along border Pale green vegetation is used 28 The stand of the defendant/non applicant, therefore is that there is not even remote similarity between the labels of the plaintiff and that of the defendant's. The defendant/non applicant has also produced monthly sales turnover and pleaded that trademark "Amar" is being used for more than three decades in Indian and foreign markets. 29 The defendant/non applicant denied use of trademark "Medimix" by the plaintiff/applicant for over 42 years, on the ground that plaintiff company was initially incorporated in the year 1994. The averments in the plaint/ applications are denied in view of assignment of artistic work in the year 2008. 30 The defendants/non applicant has also denied the allegation of fraud and dishonesty. The averments made in the rest of the pararagraphs of applications are also denied, and it is prayed that the applications be dismissed with exemplary cost. 31 The learned counsel for the plaintiff/applicant in support of the applications, referred to Sec.2(m) of the Trademark Act 1999, which defines the mark to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof, to contend, that the shape of packing and colour combination used by the plaintiff/applicant will be covered under the definition of mark and the use of deceptively similar packing, with similar colour combination amounts to breach of trademark. 32 The learned counsel for the plaintiff/applicant thereafter referred to Sec.10 of the Trademark Act, which stipulates that a trademark may be limited wholly or in part to any combination of colours, and any such limitation is to be taken into consideration by the tribunal called upon to decide the distinctive character of the trademark, where the trademark is registered without limitation of colour, it shall be deemed to be registered for all colours and finally reference was made to Sec.29 of Trademark Act which reads as under: "29. Infringement of registered trade marks (1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of- (a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person. using by way of permitted use, uses in the course of trade, a mark which- (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. (6) For the purposes of this section, a person uses a registered mark, if, in particu1ar, he- (a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under. the registered trade mark, or offers or supplies services under the registered trade mark; (c) imports or exports goods under the mark; or (d) uses the registered trade mark on business papers or in advertising. (7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee. (8) A registered trade mark is infringed by any advertising of that trade mark if such advertising- (a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or (b) is detrimental to its distinctive character; or (c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly." 33 By referring to provisions of the Act, the contention of the learned counsel for the plaintiff/applicant, was that the packing used by the defendants is deceptively similar especially the colour design adopted by the defendant which is identical and similar, which can lead to deception to the customer. 34 At the time of arguments, the learned counsel for the plaintiff/applicant, contended that though the word "Medimix" and "Herbal" is not phonetically similar, but the colour combination used in packing materials amounts to infringement of the registerd trade mark of the plaintiff/applicant as the plaintiff/applicant has got Trademark registered as per packing. 35 In support of the contention, that colour alone can serve as a trademark, the reliance was placed on the judgment of the U.S. Supreme Court in the case of Qualitex Co. v. Jacobson Products Co. [U.S. (1995), 1] wherein the Hon'ble U.S. Supreme Court was pleased to lay down as under: "The question in this case is whether the Lanham Trademark Act of 1946 (Lanham Act), 15 U.S.C. 1051-1127(1988 ed.and Supp. V), permits the registration of a trademark that consists, purely and simply, of a colour. We conclude that, sometimes, a color will meet ordinary legal trademark requirements. And, when it does so, no special legal rule prevents color alone from serving as a trademark." This proposition cannot be disputed, as Sec.10 of the Trademark Act also permits registration of colour combination as a trademark, but in the present case, registration of trademark of the plaintiff/applicant is not with regard to colour combination, but trademark "Medimix" as packed. 36 The learned counsel for the plaintiff/applicant thereafter referred to judgment in the case of Baker et. al. v. The Master Printers, Union of New Jersy (47 USPQ 69) wherein it was laid down as under: "UNFAIR COMPETITION: General Principles Men seeking symbol to identify themselves and product of their labor should select trade mark different from trade marks or symbols of others already established in competitive field, object being to have mark and good will which stand apart from all others; most successful form of copying is to employ enough pints of similarity to confuse public with enough points of difference to confuse courts, but instant court enjoins defendants." This is a judgment of District Court, D.New Jersy, U.S.A. which cannot be quoted as precedent. However, the principle laid down therein cannot be disputed, as it is well settled law that it is not similarity or dissimilarity, but as to whether a product of the party can be passed on by deceptively similar product of another. 37 The learned counsel for the plaintiff/applicant also placed reliance on the judgment in the case of Fort James Operating Co. v. Royal Paper Converting Inc. (1983 USPQ2D 1624) wherein it has been held as under: "The new factor we consider is the similarity or dissimilarity of the marks. Indoing so, we are mindful of the proposition that when marks appear on virtually identical or closely related goods, the degree of similarity of the marks necessary to support a finding of likely confusion is not as great as when the goods are different. See Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992). Further, in the case of design marks, the question of likelihood of confusion must be decided on the basis of the visual similarity of the marks. See In re ATV Network Limited, 552F.2d 925, 193 USPQ 331 (CCPA 1977). By definition, this is a subjective determination and must take into account the overall commercial impressions created by the marks rather than any detained analysis thereof. In re Joseph Lieberman and Sons, Inc. 156 USPQ 700 (TTAB 1968); and Hupp Corporation v. AFR Corporation 157 USPQ 537 (TTAB 1968)." This judgment again lays down general principle of law, which are well recognised by the Courts in India. 38 The reliance was thereafter placed on the judgment of the Hon'ble Mumbai High Court in the case of Burroughs Welcome (India) Ltd. vs. Uni-Sole Pvt. Ltd. And another [1999 PTC (19) 188] wherein the Hon'ble Mumbai High Court, was pleased to lay down that in case of infringement of artistic work, the substantial similarity, colour combination and nature of getup is sufficient for grant of interim injunction, as actual reputation of artistic work is not test and manner and dissimilarity in two products can be of no consequences. 39 The learned counsel for the plaintiff/applicant also placed reliance on the judgment of the Hon'ble Delhi High Court in the case of Microfibres Inc. vs. Girdhar & Co. & another [2009(40) PTC 519 (Del.) (DB) 519] wherein the Hon'ble Division Bench of Delhi High Court was pleased to lay down as under: "46. We thus summarize our findings as follows: - (a) The definition of 'artistic work' has a very wide connotation as it is not circumscribed by any limitation of the work possessing any artistic quality. Even an abstract work, such as a few lines or curves arbitrarily drawn would qualify as an artistic work. It may be two dimensional or three dimensional. The artistic work may or may not have visual appeal. (b) The rights to which a holder of an original artistic work is entitled are enumerated in Section 14(c) of the Copyright act. (c) It is the exclusive right of the holder of a Copyright in an original artistic work to reproduce the work in any material form. For example, a drawing of an imaginary futuristic automobile, which is an original artistic work, may be reproduced in the three- dimensional material form using an element, such as a metal sheet. (d) The design protection in case of registered works under the Designs Act cannot be extended to include the copyright protection to the works which were industrially produced. (e) A perusal of the Copyright Act and the Designs Act and indeed the Preamble and the Statement of Objects and Reasons of the Designs Act makes it clear that the legislative intent was to grant a higher protection to pure original artistic works such as paintings, sculptures etc and lesser protection to design activity which is commercial in nature. The legislative intent is, thus, clear that the protection accorded to a work which is commercial in nature is lesser than and not to be equated with the protection granted to a work of pure art.