Hindustan Unilever Limited vs Rohit Singh

Ashis Kumar Chakraborty, J

The Court : In an action for infringement of trademark and copyright the plaintiff has filed the present application seeking for various interim relief against the defendant.

The plaintiff company carries on the business of manufacturing, marketing and sale of various kinds of washing soaps, including detergent. The plaintiffs claims to be the registered proprietor of the trademarks "SURF" and "SURF EXCEL" both in class 3.

The plaintiff has in a bona fide manner adopted a unique, artistic and distinctive logo (hereinafter referred to as "the said logo") for use upon and in relation to its detergents and like goods under brand "SURF EXCEL" with a view to distinguish the said goods from those of others as well as inter-se. The said logo potrays 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. 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 plaintiff in the combination of either orange and green or pink and orange, upon and in relation to its "SURF EXCEL" range of goods packed and/or sold inter alia in artistic packaging/under artistic trade dresses. A representation of the plaintiff's said logo shown in the combination of orange and pink is disclosed as Annexure "A" to the petition. The plaintiff has secured registration of all the said logo under the Trade Marks Act, 1999 and the relevant registration certificates have also been disclosed in the petition as Annexures "B", "C", "D" and "E", respectively. The registration of the first trademark, bearing registration no.1486109 is limited to colours orange and pink and registration of the fourth trademark, bearing registration no.1486107 is limited to colours green and orange.

However, the second trademark is registered without any disclaimer or condition.

Apart from the trademark "SURF/SURF EXCEL" and the said logo the plaintiff has also been using the various registered trademarks labels/packaging containing the trademark "SURF/SURF EXCEL" and/or the said logo for sale of its product wherein "EASY WASH" sold under the trademark "SURF/SURF EXCEL". The plaintiff has been using the aforementioned splat devices along with a blue background for "SURF EXCEL EASY WASH" formerly known as "SURF EXCEL BLUE". The plaintiff has disclosed a copy of the packaging in which it sells the product "SURF EXCEL" with the said logo and trade dress having the said splat devices registered under the Trade Marks Act.

By virtue of the Deed of Assignment of Copyright dated August 23, 2016 entered into between the plaintiff and the Artist who created the painting and art work, the plaintiff has become the assignee of the copyright in the artistic work used in the labels/wrappers for packaging of the detergent powder "SURF EXCEL". The said logo and the label/wrapper have been predominantly used by the plaintiff as a part of its "SURF EXCEL" range of goods, including its product sold with the trade name "SURF EXCEL EASY WASH". The plaintiff has also disclosed the relevant statements containing "All India Annual Sale", as well as the Advertisement Expenses incurred on account of the products of "SURF/SURF EXCEL" range between the years 2009 and 2017. According to the plaintiff, due to superior quality and high efficacy of its said goods bearing the said logo and label/wrapper and wide publicity given to the plaintiff's said goods bearing the said logo and label/wrapper the same has become extremely popular. The plaintiff claims to have acquired immense reputation and goodwill in its said goods bearing the said logo and label/wrapper and the said logo and label/wrapper have consequently come to be exclusively identified with and connotes to the member of the trade and public, the plaintiff's said goods and of none else.

In or about the month of August, 2019 in course of a market survey and investigation carried out at Gorakhpur, Uttar Pradesh, the representatives of the plaintiff found that the defendant was manufacturing, selling and distributing the detergent powder under the mark "SHINE PLUS EASY WASH" (hereinafter referred to as "impugned goods" in packets having trade dress, graphics, and a colour scheme deceptively similar to the label and trademark in which the plaintiff's product "SURF EXCEL" is sold and distributed in India. Copies of the label/packaging in which the plaintiff and the defendant are selling their respective products, have been disclosed in the petition as Annexures 'H' and 'I' respectively.

According to the plaintiff, a mere comparison of the labels/packets of the plaintiff with those of the defendant would indicate an identical colour scheme and art work, including the plaintiff's registered said logo i.e., 'splat' device. It is asserted that the impugned logo portrays the device of a colourful 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 plaintiff's registered trademarks. The said appendages are wider at the periphery and narrower towards the core and the impugned splat logo is identical to that of the plaintiff's said logo. It is urged that the impugned logo of the defendant is a complete imitation of the said logo of the plaintiff and evinces bad faith adoption.

According to the plaintiff, even a cursory look at the rival logos would reveal that the defendant's impugned logo is an obvious copy/imitation of the plaintiff's said logo. The defendant has adopted all the leading and essential features of the plaintiff's said product packaging label including the said logo, layout, get up, colour combination and trade dress. It is claimed that the defendant's impugned product is a slavish and flagrant imitation of the plaintiff's product "SURF EXCEL".

The plaintiff submits that the defendant's impugned logo is structurally, visually identical and deceptively similar to the plaintiff's aforesaid logo registered under Registration Nos.1486109 and 1780462, both in class 03. The impugned logo is also closely and deceptively similar to the plaintiff's registered trademarks in class 03, containing the said logo as its leading, essential and memorable feature. The goods in respect of which the impugned logo is being used by the defendant are also identical with/similar to the goods in respect of which the plaintiff has secured aforesaid registrations of its said logo.

The plaintiff further claims that the defendant has also infringed and is continuing the infringe the plaintiff's copyright in the artistic work comprised in the label/packaging in which the plaintiff's "SURF EXCEL" product is sold.

On the basis of the above allegations, the plaintiff has filed the instant suit against the defendant and prays for ex-parte ad interim order of injunction against the defendant from infringing its said trademarks and the said copyright.

Considering the averments of the application and the documents on record, I am prima facie satisfied that the packets in which the detergent powder of the defendant is sold under the brand name, "SHINE PLUS EASY WASH" are prima facie colourable and deceptive imitation of the plaintiff's logo registered under the Trade Marks Act, in class 03. The plaintiff has prima facie substantiated infringement of its said trademarks by the defendant. Further, the packets in which the detergent powder of defendant is sold prima facie appears to be in infringement of the plaintiff's copyright in the artistic work comprised in the label/packaging of its "SUFR EXCEL" product. The balance of convenience also lies in favour of the plaintiff for obtaining ex-parte ad interim order of protection. Accordingly, there shall be an ex-parte ad interim order in terms of prayer (a) of the Notice of Motion dated July 30, 2019. The defendant is also retrained from selling or offering for sale or marketing the detergent "SHINE PLUS EASY WASH" or any other detergent in packets/labels being similar to or colourable imitation of packets/labels in which the plaintiff's product "SURF EXCEL" is sold.

Further, Mr. Ranjan Sinha, Advocate of Bar Library Club (First Floor) is appointed as the Special Officer who shall visit the place of business of the defendant at Gorakhpur in the State of Uttar pradesh and also other the godown(s) of the defendant 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 plaintiff. The Special Officer shall be accompanied by a competent officer of the plaintiff who shall serve a copy of the petition and a copy of this order on the defendant. All arrangements for the visit of the Receiver at Gorakhpur shall be made by the plaintiff at its own cost.

The ad interim order passed today shall be valid till September 13, 2019 or until further order whichever is earlier.

Let this application appear on September 11, 2019. The plaintiff shall file an affidavit of service on the next date. The Special Officer shall file his report on the next date.

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

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