Hindustan Unilever Limited vs Avadh Kishor Saha

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 detergents.

The petitioner company claims that in or around 1963 the Petitioner honestly and independently adopted a trade mark "RIN" for use upon and in relation to its soaps and other substances for laundry use in India. The petitioner Company secured registration of the word trademark and label mark "RIN" under the Trade and Merchandise Marks Act 1958. Copies of the relevant registration certificates bearing nos. 214094,409377 and 409378all in class 3 have been disclosed in the Petition as Annexures "A", "B", "C", "D" and "E", respectively.

Apart from the said detergent "RIN" sold by the petitioner, the petitioner company also manufactures and markets another variant of detergent powders under the trade name "WHEEL". The petitioner company also manufactures and sells another premium version of the said "WHEEL" brand known as "ACTIVE WHEEL". The petitioner has got 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 said Deed of Assignment of Copyright dated September 20, 2012 has been disclosed in the Petition as Annexure "G". 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. It is claimed that the petitioner is the registered proprietor of several trade marks with respect to its "WHEEL" and "ACTIVE WHEEL" products.

The petitioner company also claim to have advertised the trademarks "RIN" as well as "WHEEL" and "ACTIVE WHEEL" through diverse media, including magazine, television and radio, sponsoring events etc. etc. The petitioner claims that their said goods bearing the trade marks "RIN" and "ACTIVE WHEEL" 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 "RIN" as well as that of "WHEEL"/ "ACTIVE WHEEL".

The detergent powders of the petitioner, sold under the trademarks "RIN" as well as that of "WHEEL"/ "ACTIVE WHEEL" have acquired substantial reputation and goodwill in the market and the said labels/packets with their super quality, high efficacy and 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 Bhagalpur, Bihar, it was found that the respondent was manufacturing, selling and distributing detergent under the mark "SUPER ULTRA RIN" (hereinafter referred to as "the impugned product"). According to the petitioner, by use of the word "RIN" in connection with the impugned product, the respondent is infringing the registered trademarks of the petitioner. Further, it is asserted by the petitioner that a mere comparison of the labels/packets of the petitioner's product "ACTIVE WHEEL" with those of the impugned product would indicate that the respondent is selling the impugned product in packets having artistic work, trade design, graphics and a colour scheme, similar if not identical to the label and packaging in which the petitioner's product "ACTIVE WHEEL" is sold, in which the petitioner owns the copyright.

It is the case of the petitioner that the packaging of the impugned product is deceptively similar to the petitioner's well known, prior used and registered trade mark "RIN" and the artistic work comprised in the packaging in which the petitioner sells its product "ACTIVE WHEEL". The goods in respect of which the impugned packaging is used are identical to those of the petitioner. The petitioner further assert that the adoption of the impugned packaging by the respondent is dishonest and appears to have been undertaken in bad faith. A copy of the label/packaging in which the respondent is selling the impugned goods "SUPER ULTRA RIN", as well the copies the packagings in which the petitioner's products "RIN" and "ACTIVE WHEEL" are sold have been disclosed as Annexures "I", "J" and "K" to the petition, respectively.

According to the petitioner, the use of the word "RIN" by the respondent in connection with the impugned product infringes the trademarks of the petitioner "RIN" and "RIN ACTIVE" registered under numbers 214094, 1065244, 1325307, 409377 and 409378 in Class 3. The said packets, labels and/or cartons in which the respondent's detergent powder is sold are also a colourable and deceptive imitation of the well-known label and artistic work and graphics comprised in the label of the petitioner's product "ACTIVE WHEEL" of which the Petitioner is the owner of the copyright. The use by imitating the trade dress, artistic creativity by the respondent of the said labels in connection with detergent powder is an infringement of the petitioner's copyright subsisting in the label.

On the basis of the aforementioned allegations the Petitioner has filed the suit against the respondent for infringement of the registered trademark "RIN" bearing registration numbers 214094, 1065244, 1325307, 409377 and 409378 in Class 3, as well as for infringement of their copyright in the artistic work comprised in the label/packaging/ trade dress and the overall getup and style similar to that in which the products "WHEEL/ ACTIVE WHEEL" are sold at market. In the present application, the petitioner has also prayed for an ex-parte ad interim order of injunction restraining respondents from infringing the said trademarks and copyrights.

Considering the materials on record, I am prima facie satisfied that by using the word "RIN" by the respondent in connection with his impugned goods, he infringes the trade marks of the petitioner registered under numbers 214094, 1065244, 1325307, 409377 and 409378 in Class 3. 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" product is 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. Rabindra Nath Basak, Advocate of Bar Library Club (First Floor) is appointed as a Special Officer who shall visit the place of business of the respondent at Bhagalpur in the State of Bihar 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.