Hindustan Unilever Limited vs Atul Tiwari

Ashis Kumar Chakraborty, J

The Court: The petitioner, as the plaintiff in a suit for infringement of trademark and copyright has  filed the present application praying for, various interim reliefs against the respondent herein.

The petitioner company is a part of the Unilever Group and carries on the business, inter alia, of manufacturing, marketing and sale of various kinds of washing soaps, including detergent.

The petitioner  company claims that since 1955, they have been manufacturing and selling detergent powder in India by adopting the trade mark "WHEEL". Apart from "WHEEL", the petitioner company also manufactures and sells another premium version of the said "WHEEL" brand known as "ACTIVE WHEEL". The petitioner designed a unique trade mark label/sachet bearing original artistic work, get up and lay out to market their detergent bearing the trade name "ACTIVE WHEEL" containing swirl device and prominent display of lemons along with white jasmine flower covering the border of the label with the trademark "ACTIVE WHEEL" appearing on the centre of the label and the device of "WHEEL" on the lower right hand end of the label. By virtue of the Deed of Assignment of Copyright dated September 20, 2012 executed by the firm of commercial artists who created the painting and the artistic work, get up and lay out of the labels/ packages of said product "ACTIVE WHEEL", the petitioner has become the owner of the copyright in the painting and artistic work used in the labels/wrappers for packaging of the detergent powder "ACTIVE WHEEL". The flowers and lemons and the placement thereof and the white burst at the centre of the label/packaging are the essential features of the artistic work comprised in the said label/packaging and are distinctive to the petitioner's "ACTIVE WHEEL" product. The petitioner is also the registered proprietor of several trademarks with respect of their products "WHEEL" and "ACTIVE WHEEL". It is further claimed that the detergent powder sold by the petitioner under the trademark "ACTIVE WHEEL" in the labels/packets have a distinctive style, get up and colour scheme and the said detergent "ACTIVE WHEEL" has acquired substantial reputation and goodwill in the entire country and the said labels/packets with its unique feature have become distinctive product of the petitioner.

Apart from the said detergent sold under the trade name "ACTIVE WHEEL", the petitioner company also manufactures and markets another kind of detergent in the form of detergent bars, detergent liquids and matic (machine wash) powder and liquids used for washing machine under the trade names "SURF" and "SURF EXCEL". By virtue of long, extensive and continuous use of the trademark "SURF"/ "SURF EXCEL" upon and in respect of the said goods, the trademark "SURF/SURF EXCEL" has acquired a secondary meaning as indicating to the goods originating from the petitioner and from none else.

In order to distinguish their said product under the brand name "SURF EXCEL" from the detergents of the other manufactures the petitioner has bona fide adopted a unique, artistic and distinctive logo (hereinafter referred to as "the said logo") for use upon and in relation to their detergents and like goods under brand "SURF EXCEL". The said logo portrays a device of a 'Splat' created by a drop of liquid on a hard surface with five appendages stemming out from its core, spreading towards different directions. The said appendages are wider at the periphery and narrower towards the core of the said splat. The appendage at the centre left position of the said splat is of the smallest in size, while the appendage at the bottom right of the said splat is the biggest in size. The other three appendages are of almost equal size. The said logo is predominately used by the petitioner company in the combination of either orange and green or pink and orange, upon and in relation to their "SURF EXCEL" range of goods packed and/or sold, inter alia, in artistic packaging/under artistic trade dresses. A representation of the petitioner's said logo shown in the combination of orange and pink has been disclosed as Annexure in "A" to the petition. The petitioner company has secured registration of all the said logo under the Trade Marks Act, 1999 and copies of the relevant registration certificates bearing nos. 1486109, 1780462, 1486108 and 1486107 all in class 03 reflecting the respective logo have been disclosed in the petition as Annexures "B", "C", "D" and "E", to the petition respectively. The petitioner company is also the assignee of the copyright in the painting and art work displayed in the labels and wrappers for packaging of their said products "SURF"/ "SURF EXCEL". In this regard the petitioner has disclosed copies of the deed of assignment of copyright dated August 17, 2015 between themselves and the firm of artists who created the art work.

The petitioner company also claims to have advertised the trademarks "WHEEL" and "ACTIVE WHEEL" as well as "SURF"/ "SURF EXCEL" labels through diverse media, including magazine, television and radio, sponsoring events etc. etc. The petitioner claims that their said goods bearing the trade marks "ACTIVE WHEEL" and "SURF"/ "SURF EXCEL" with the respective labels/packaging have acquired a substantial reputation and goodwill in the market and the said labels with the unique textures have become distinctive of the products of the petitioner. The petitioner has also disclosed the net proceeds of sales and the advertisement expenses incurred in respect of their products, including labels/packaging of their product "WHEEL"/ "ACTIVE WHEEL" as well as that "SURF"/ "SURF EXCEL".

The detergent powders of the petitioner, sold under the trademarks "SURF EXCEL" and "ACTIVE WHEEL" have acquired substantial reputation and goodwill in the market and the said labels/packets with their unique features have become distinctive of the products of the petitioner. The said mark and/or labels along with the idiosyncratic features of the packets have become and part of the goodwill of the petitioner and have become associated in the mind of the consuming public with the products of the petitioner.

In or about the month of August 2019, in the course of market survey and investigation carried out by the petitioner at Faizabad, Uttar Pradesh, it was found that the respondent was manufacturing, selling and distributing detergent powder and the marks "EKO PLUS DETERGENT POWDER"(hereinafter referred to as "the first impugned product"), "DHRA DETERGENT POWDER" (hereinafter referred to as "the second impugned product"), "ANANYA DETERGENT POWDER" (hereinafter referred to as "the third impugned product") and "TRETA DETERGENT POWDER" (hereinafter referred to as "the fourth impugned product").

According to the petitioner, a mere comparison of the labels/packets of the petitioner's product "SURF EXCEL" with those of the first impugned product would indicate an identical use of the petitioner's said registered logo, that is, the 'Splat' device by the respondent in which the petitioner owns the trademark. The impugned logo portrays the device of a splat created by a drop of liquid on a hard surface with five appendages stemming out from its core, spreading towards different directions identical to that of the petitioner's registered splat logo. This apart, the first impugned product is also a copies imitation of the petitioner's said packaging/labels of the products "SURF EXCEL" containing the said artistic work in which the petitioner owns the copyright. It is alleged that the respondent has adopted all the leading and essential features of the petitioner's said product packaging label of "SURF EXCEL" including the said, layout, get up, colour combination, trade dress and the registered logo. A copy of the label/packaging in which the respondent is selling his first impugned product has been disclosed as Annexure "J" to the petition. The variants of the packaging of the petitioner's product "SURF EXCEL" have also been disclosed as Annexure "K" to the petition.

It is asserted that comparison of the labels/packets of the petitioner's product "ACTIVE WHEEL" with those of the second impugned product, third impugned product and fourth impugned product would indicate deceptive imitation of the artistic work, get up and layout containing the prominent white burst at the centre, display of lemons along with flowers placed in manner identical to the placement of lemons and flowers in the artistic work comprised in the labels/packaging in which the petitioner's product "ACTIVE WHEEL" is sold and in which the petitioner owns the copyright. It is the case of the petitioner that the Respondent has adopted all the leading and essential features of the Petitioner's said product packaging label including the said, layout, get up, colour combination and trade dress and is infringing the copyright of the Petitioner. Copies of the label/packaging in which the respondent is selling its detergent under the marks "DHRA DETERGENT POWDER", "ANANYA DETERGENT POWDER" and "TRETA DETERGENT POWDER" are annexed hereto and marked with the letters 'L', 'M' and 'N' respectively. The packaging of the Petitioner's "ACTIVE WHEEL" is annexed hereto and marked with the letter 'O'.

The petitioner complains that the labels/packagings of respondent's first and second impugned products are slavish and flagrant imitations of the their products "SURF EXCEL" and "ACTIVE WHEEL", respectively.

According to the petitioner, the respondent's impugned logo in its first impugned product is structurally, visually identical and deceptively similar to the petitioner's registered trade mark bearing registration no. 1486109 and 1780462 in the label/packaging in which the petitioner's "SURF EXCEL" product is sold. It is further alleged that the respondent has also infringed and is continuing to infringe the petitioner's copyrights in the artistic work comprised in the label/packaging in which the petitioner's "ACTIVE WHEEL" and "SURF EXCEL" product are sold.

On the basis of the aforementioned allegations the petitioner has filed the suit against the respondent for infringement of the registered trade mark bearing registration nos. 1486109, 1486107, 1780462 and 1486108, as well as for infringement of their copyrights in the artistic work comprised in the label/packaging/trade dress and the overall get up and style similar to that in which the products "WHEEL"/"ACTIVE WHEEL" and "SURF EXCEL" are sold at market. In the present application, the petitioner has also prayed for an ex-parte at interim order of injunction restraining the respondents from infringing their said trade marks and copyrights.

Considering the materials on record, I am prima facie satisfied that by using the impugned logo and artistic work in his first and second impugned products the respondent have infringed and is continuing to infringe the petitioner's registered trade mark bearing nos. 1486109 and 1780462 in which the labels/packaging the petitioner's "SURF EXCEL" products is sold. It further appears that the respondent has infringed and is continuing to infringe the petitioner's copyrights in the artistic works comprised in the label/packaging in which the petitioner's "ACTIVE WHEEL" and "SURF EXCEL" products are sold. The balance of convenience also lies in favour of the petitioner for obtaining ex-parte ad interim order of protection. Accordingly, there shall be ad interim order of injunction in terms of prayers (a), (b) and (c) of the Notice of Motion dated September 09, 2019.

Further, Mr. Ranjan Kumar Sinha, Advocate of Bar Library Club (First Floor) is appointed as a Special Officer who shall visit the place of business of the respondent at Faizabad, in the State of Uttar Pradesh and also other godown(s) of the respondent where the infringing products may be stored and inventorise the infringing products, if required, with police assistance. The Officer-in-Charge of the concerned Police Station, if approached by the Special Officer, shall extend all assistance in implementing this order. The Special Officer shall be entitled to an initial remuneration of 3000 Gms to be paid by the petitioner. The Special Officer shall be accompanied by the competent officer of the petitioner who shall serve a copy of the petition and a copy of this order on the respondent.

The ad interim order passed today shall be valid till October 1, 2019 or until further order, whichever is earlier.

Let this application appear on September 30, 2019. The petitioner shall file an affidavit of service on the next date. The Special Officer shall also file his report on the next date.

The respondent shall be at liberty to apply for vacating and/or variation of this order upon notice of the petitioner.

The parties and all concerned, including the Special Officer and Police Authorities shall act on copies of the certified website copies of the order.