ITC Limited vs Ganesh Flour Mills and Others

R.S. Ramanathan, J.

OA No. 299 of 2013:--

Original Application praying that this Hon''ble Court be pleased to grant an order of ad-interim injunction restraining the Respondents/Defendants, their directors, employees, officers, servants, agents and all others acting for and on their behalf from making, selling, distributing, advertising, exporting, offering for sale, and in any other manner, directly or indirectly, dealing in any product, including Atta product packaging carrying the impugned labels 1 and 2 and/or packaging, including packets, sachets, labels and containers, as a colourable limitation and substantial reproduction amounting to an infringement of the applicant/Plaintiff''s trade mark registered under No. 1106809 in Class 30.

O.A. No. 300 of 2013:--

Original Application praying that this Hon''ble Court be pleased to grant an order of ad-interim injunction restraining the Defendants/Respondents its officers, employees, servants and agents from manufacturing, selling, offering for sale, advertising and directly or indirectly dealing in any product including Atta in the impugned label 1 or impugned label 2 and/or in packaging, including packets, sachets, labels and containers, as are a colourable imitation and substantial reproduction of the packaging/label of the Plaintiff''s AASHIRVAAD shudh Chakki Atta, AASHIRVAAD superior MP Atta and AASHIRVAAD Select Superior Sharbati Atta which amounts to an infringement of the Plaintiff''s copyright therein.

O.A. No. 301 of 2013:--

Original Application praying that this Hon''ble Court be pleased to grant an order of ad-interim injunction restraining the Defendants/respondents its officers, employees servants and agents, from manufacturing, selling, offering for sale, advertising and directly or indirectly dealing in any product including Atta in the impugned label 1 or impugned label 2 and/or in packaging, including packets, sachets, labels and containers, as are a colourable imitation and substantial reproduction of the packaging/label of the Plaintiffs'' AASHIRVAAD shudh Chakki Atta, AASHIRVAAD superior MP Atta and AASHIRVAAD Select superior Sharbati Atta as is likely to lead to passing off the product(s) of the Defendants as and for that of the Plaintiff''s.

A. Nos. 2414 to 2416 of 2015:--

Ganesh Flour Mills 88, Burtolls Street, Kolkata -700 007. 2. Ganesh Grains Limited 174, Cittraranjan Avenue, Kolkata -700 007 ... Applicants/Defendants Vs. ITC Limited ITC Centre, 4th Floor, 760, Anna Salai, Chennai -600 002, Represented by its Constituted Attorney Mr. S. Satyanathan ... Respondent/Plaintiff A. No. 2414 of 2013:--

Application praying that this Hon''ble Court be pleased to pass an order vacating the ad-interim injunction order dated 22nd April, 2013 passed by this Hon''ble Court in O.A. No. 299 of 2013 in C.S. No. 285 of 2013.

A. No. 2415 of 2013:--

Application praying that this Hon''ble Court be pleased to pass an order vacating the ad-interim injunction order dated 22nd April, 2013 passed by this Hon''ble Court in O.A. No. 300 of 2013 in C.S. No. 285 of 2013.

A. No. 2416 of 2013:--

Application praying that this Hon''ble Court be pleased to pass an order vacating the ad-interim injunction order dated 22nd April, 2013 passed by this Hon''ble Court in O.A. No. 301 of 2013 in C.S. No. 285 of 2013.

These Application coming on this day before this court for bearing the court made the following order:

"The defendants, viz., (i) Ganesh Flour Mills and (ii) Ganesh Grains Limited, in C.S. No. 28 of 2013, on he file of original side of this court are the applicants herein and the plaintiff, who filled the said Suit is the respondent herein-"

The respondent/plaintiff filed the suit for the following reliefs:--

"(i) Permanent injunction, restraining the defendants from making selling, distributing, advertising, exporting, offering for sale, or in any other manner, directly or indirectly, dealing in any product, including Atta in the impugned labels 1 and 2, or packaging, as a colourable imitation and substantial reproduction, amounting to an infringement of the plaintiff''s trademark, registered under No. 1106809 in class 30; (ii) For permanent injunction against the infringement of the plaintiff''s copyright; and (iii) For injunction, restraining the defendants from passing off the plaintiffs products as their products, and for other reliefs."

Pending the suit, the plaintiff filled original Application Nos. 299 to 301 of 2013, for ad interim injunction, restraining the defendants from infringing the trademark of the plaintiff and from passing off their goods as that of the plaintiff.

This Court, by order, dated 22.04.2013, granted ad interim injunction in the said Original Applications. Now, the present Applications, viz., Application Nos. 2414 to 2416 of 2013, are filed by the applicants/defendants, to vacate the said injunction order.

The case of the plaintiff/respondent, as stated in the plaint, in gist and kernel is as follows:--

"(i) The plaintiff-Company is one of the India''s foremost Private Sector Companies, with a market capitalization of the INR 1,80,000 crores, and a turnover of INR 36,000 crores (as of 2011-12). The plaintiff-Company is a well established business house with a history of more than 100 years and it is carrying on business in diverse fields, such as Fast Moving Consumer Goods (FMCG), Hotels, Paperboards and Specialty Papers, Packaging, Agri-Business, Information Technology etc. The plaintiffs branded packaged Foods business is one of the fastest growing Goods business in India, driven by the market standing and consumer franchise of its popular brands, Aashirvaad, sunfeast, singo, kitchens of India, Mint-O, Candyman, Yippee! etc.,

(ii) The plaintiff commenced its Foods Business in the year, 2001 with the launch of its product, called "Kitchens of India", ready-to-eat Indian gourmet dishes. In the year 2002, the plaintiff launched its confectionery products under the brand names, "Minto-O" and "Candyman" and atta product, under the brand name, "Aashirvaad". In just over a decade, the Foods Business of the plaintiff has grown to significant size under many distinctive brand names like Aashirvaad, Sunfeast, Bingo, Kitchens of India, Mint-O, Candyman and Yippee! with enviable strong distribution reach, a rapidly growing market share and a solid market standing.

(iii) The plaintiff adopted the distinctive trademark, "Aashirvaad" in the year 2001, and as mentioned above, the plaintiff entered the branded Atta market in India with the launch of Aashirvaad Atta, sometime in May, 2002, and it is available all over India, and is also exported to United States of America, Australia, Singapore and Canada. As per Nielsen, an independent and reputed market Research Agency, the plaintiffs product, Aashirvaad Atta is India''s leading branded Atta with a market share of approximately 41% by value sales and 35.1% volume sales, as of 2012. As on date, the plaintiff sells its product, Aashirvaad Atta in four different variants, as given below:--

(a) Aahirvaad Shudh Chakki Atta,

(b) Aashirvaad Superior MP Atta,

(c) Aashirvaad Select Superior Sharbati Atta and

(d) Aashirvaad Atta with multi grains.

(iv) The plaintiff had launched its product, Aashirvaad Shudh Chakki Atta (know as Aashirvaad Whole Wheat Atta till 2012). Aashirvaad Superior MP Atta (know as Aashirvaad Whole Wheat Atta till 2010 and Aashirvaad Whole Wheat Atta Superior MP Wheat till 2012) and Aashirvaad Select Superior Sharbati Atta in the year 2002 and Aashirvaad Atta with multigrains in the year 2010, in a unique packaging/labels with distinctive trade dress. The trade dress of Aashirvaad Shudh Chakki Atta, Aashirvaad Select Superior Sharbati Atta and Aashirvaad Superior MP Atta underwent minor changes in the years 2010 and 2012, during which period, the position of variant names was changed and certain additional devices were added. In spite of these changes, the leading, prominent and identifying features of the plaintiff''s Aashirvaad Atta package remained the same.

(v) The plaintiff has launched its Atta products, under various brand names, viz., (i) Aashirvaad Whole Wheat Atta, (ii) Aashirvaad Whole Wheat Superior MP Wheat, (iii) Aashirvaad Shudh Chakki Atta, (iv) Aashirvaad Superior MP Atta and (v) Aashirvaad Select Superior Sharbati Atta, in various distinctive features and trade dresses.

For instance, in Aashirvaad Shudh Chakki Atta, Aashirvaad Superior MP Atta and Aashirvaad Select Superior sharbati Atta packages, the following distinctive features with unique trade dress are found:--

(a) The packages are rectangular in shape.

(b) The packages carries an artistic rendering of a field with a shining sun in the background, farmers tilling the soil with bulls, sowing the seeds, reaping the grains, which covers approximately 12% of the Aashirvaad packages. The said feature is to be found at the top of the packaging as well as at the bottom below the rectangular portion in the packages of Aashirvaad Shudh Chakki Atta and Aashirvaad Select Superior Sharbati Atta. And, in Aashirvaad Superior MP Atta package, the said feature is found only at the top and not at the bottom.

(c) Beneath the artistic rendering of the field, as described above, there is a design of a mesh appearing on an ordinary gunny bag or a jute bag on all 4 sides of the package in all three packages.

(d) Surrounded by the design of a mesh, which was described above, and occupying approximately 40% of the package, there is a red colored rectangular portion in the middle of the packages of Aashirvaad Shudh Chakki Atta and Aashirvaad Superior MP Atta. Insofar as Aashirvaad Select Superior Sharbati Atta package is concerned, it also has the design of a mesh, but in the middle, a orange coloured rectangular portion, occupying 40% of the package is found, which forms the prominent, leading and identifying feature of the Aashirvaad package.

(e) On the top left-hand corner of the rectangular portion in all three packages, the plaintiff''s corporate logo "ITC" is found. Beneath the said logo, the words "100 inspiring years" is written. In respect of Aashirvaad Shudh Chakki Atta and Aashirvaad Superior MP Atta, the logo is written in white color font, and in Aashirvaad Select Superior Sharbati Atta package, the logo is written in black color font.

(f) Just beneath the plaintiff''s corporate logo and above the centre of the red colored rectangular portion, there is a semi-circular device, containing design of leaves in all three packages. Beneath this semi-circular device, the brand name Aashirvaad is written in a stylized manner.

(g) In Aashirvaad Shudh Chakki Atta package, beneath the brand name "Aashirvaad", there is a circular device, which contains the device called quern, and below the circular device, the words "0% Atta are written".

(h) In Aashirvaad Superior Mp Atta package also, beneath the brand name "Aashirvaad", there is a circular device in golden colour, within which, the words "100% Pure and Natural" are written in black colour font and underneath the golden circle, there is a pictorial depiction of grains, from which the plaintiff''s Atta is made and on the top of the grains, Roti is depicted, and

(i) In Aashirvaad Select Superior Sharbathi Atta package, beneath the brand name "Aashirvaad", there is a circular device, which consists of two sets of hands with one tipping out grains to the other with the words "Kushiyan Chun Chun Ke - Aashirvaad", encircling this circular device.

(vi) It is further stated that most of the essential features of Aashirvaad Atta labels have remained unchanged since the launch of plaintiff''s product Aashirvaad in 2002, and the consumers and the trade exclusively associate the aforesaid labels with the plaintiff and no one else and the unique distinctive features of Aashirvaad Atta packages, which have remained unchanged since 2002 and are common to all Aashirvaad Atta variants are as follows:--

�(a) The rectangular shape of the package.

�(b) The artistic rendering of a field with a shining sun in the background and farmers tilling the soil with bulls and reaping the grains.

�(c) The red coloured rectangular portion in the middle of the Aashirvaad package and the orange colored rectangular portion in the middle of the Aashirvaad Select Superior Sharbati Atta package, which forms the prominent, leading and identifying feature of this package.

�(d) The design of a mesh, as appearing on an ordinary gunny bag and/or a jute bag on all four sides of the Aashirvaad package surrounding the red or orange (as the case may be) coloured rectangular portion in the middle.

�(e) A semi-circular device, containing design of leaves is situated towards the centre of the package, i.e., above the red coloured rectangular portion.

�(f) The placement of the brand name Aashirvaad written in a stylized manner below the semi-circular device.

�(g) The placement of the variant names beneath the brand name Aashirvaad, and

�(h) The circular device towards the red rectangular portion below the variant names.

(vii) The features, as bulleted above, have been entrenched in the minds of the consuming public, especially, the gunny bag, colored rectangular portion in the middle, the artistic rendering of the field, so much that, when the said features found together, even in the absence of the brand "Aashirvaad", would be construed as a product emanating from the plaintiff. The Aashirvaad Atta''s distinctive labels with its unique and artistic features are well know amongst the trade and public, and the same are identified only with the plaintiff. Entire packaging contains a combination of colors, arrangement of features, layout, get up and other artistic works that are unique in respect of their Atta products, manufactured and marketed under the brand name "Aashirvaad".

(viii) The plaintiff is the owner of the copyright under the copyright Act, 1957 in respect of the artistic works found in the packages of Aashirvaad Shudh Chakki Atta, Aashirvaad Superior MP Atta and Aashirvaad Select Superior Sharbathi Atta. The aid artistic works have been continuously used in the packages of plaintiff''s products under the brand name Aashirvaad since 2002, with some minor modifications, as already stated above. The said artistic works, comprising the trade dress of Aashirvaad Shudh Chakki Atta, Aashirvaad Superior MP Atta and Aashirvaad Select Superior Sharbathi Atta, enjoy tremendous goodwill and reputation amongst the public and since the adoption of the trademark "Aashirvaad" in the year 2001, the plaintiff has been continuously and consistently using the unique and distinctive trade dresses with respect to aforesaid variant products in India as well as in countries such as Australia, Singapore, Canada and United States of America.

(ix) The trademark "Aashirvaad" and the unique and distinctive trade dress with respect to variant products, like Aashirvaad Shudh Chakki Atta package, Aashirvaad Superior MP Atta package and Aashirvaad Select Superior Sharbathi Atta package have been used by the plaintiff in their advertisements and promotional materials, inter alia, including television commercials, print advertisements, hoardings, so much so, that the public associates the said unique and distinctive trade dresses to be emanating from the business of the plaintiff alone.

(x) The details of the sales turnover of the plaintiff''s Atta, i.e. wheat flour sold under the unique and distinctive trade dress of Aashirvaad Shudh Chakki Atta Package, Aashirvaad Superior MP Atta Package and Aashirvaad Select Superior Sharbathi Atta Package from the year 2002 is given hereunder:--

(xi) The plaintiff is the proprietor of the trademark "Aashirvaad" and original trade dresses, by virtue of priority in adoption, long, continuous and extensive use and advertising, and the reputation consequently accruing thereto, in the course of trade. The plaintiff has exclusively used and promoted Atta products in unique labels, with inherently distinctive trade dresses on such a large scale, that it is uniformly perceived as indicative of the source and trademark of the plaintiff''s product alone. The plaintiff, being the proprietor of the trademark "Aashirvaad" and corresponding trade dresses, enjoys exclusive rights over the same, and it entitled to take action against the unauthorized use thereof, by third parties for any goods or services.

(xii) In addition to the common law rights, that have accrued to the plaintiff, they are also the registered proprietor of trade dress of Aashirvaad Atta''s labels/packaging and other distinctive features of Aashirvaad Atta''s labels/packaging for goods falling under class 30 of the IV schedule of the Trademarks Rules, 2002, made under the Trade Marks Act, 1999. By virtue of such trademark registrations, the plaintiff has exclusive right to use the trade dress/labels/packaging with respect to Aashirvaad Shudh Chakki Atta Package, Aashirvaad Superior MP Atta Package and Aashirvaad Select Superior Sharbathi Atta Package relating to the goods covered thereunder, and to obtain relief in respect of infringement of the registered trademark, by any other parties, including the defendants herein.

(xiii) It is further stated that the first defendant/first applicant is selling Atta under the brand name "Ganesh" for the past several years in many labels, and those labels are not similar to the trade dress of the plaintiff''s product. However, with mala fide intention to infringe the trademark of the plaintiff and to pass off their goods, as that of the plaintiff''s, in March 2013, the defendants, which has been described as impugned label No. 1 in the plaint schedule, is similar and identical to that of the trade dress, get up style, layout, design and colour scheme used by the plaintiff in packaging of Aashirvaad Atta products.

(xiv) The similarities between the plaintiff''s trade dress/label/packaging of Aashirvaad Shudh Chakki Atta, Aashirvaad Superior MP Atta and the defendants impugned Label No. 1 are as follows:--

(a) The look and effect of the background of the packaging, which has the effect of woven natural gunny/fiber bag in brown colour.

(b) A red/orange rectangular box placed in the centre of the aforesaid background with similar essential features and vital details.

(c) The colour combination of and red and brown, and

(d) The artistic elements of farmers, farmland and a village setting, which features are not to be to found in any of the other Atta in the market before or even many years after the plaintiff introduced the same and until the defendant''s copied it.

(xv) The defendant has brought out packages with features, as described above, without plaintiff''s permission, consent of license and in violation of the plaintiff''s copyright with respect thereto. The use of the impugned label No. 1 by the defendants with features, as mentioned above, amounts to misrepresentation made in the course of trade to prospective customers, and defendants adopted impugned label No. with a Mala fide intention to deceive the consuming public and to pass off their products as that of the plaintiff''s, and it also creates an impression of nexus with the plaintiff''s products under the brand name "Aashirvaad" by visual/external indicia like the packaging/label of Aashirvaad Select Superior Sharbati Atta. The Atta manufactured and marketed by the defendants is different in quality from Atta marketed by the plaintiff''s as Aashirvaad Shudh Chakki Atta and Aashirvaad Superior MP Atta. (xvi) The defendants appear to have sales and distribution of their goods under the impugned label No. 1 across India, and also appears to have tied up with numerous distributors, including at least one within the state of Tamil Nadu both, through retails stores and on online. It appears that the defendants'' goods, including the ones sold under the impugned label No. 1, can be accessed through online, including www.ebest.in Chennai. As per the defendants'' website, the defendants have a flourmill in Hyderabad, and it has come to the knowledge of the plaintiff that the defendants have distributors for their products within the State of Tamil Nadu, and they may start selling their goods under the impugned label No. 1 in stores and markets in Chennai, which are located within the jurisdiction of this Court.

(xvii) The Mala fide intention on the part of defendants is clearly evident from the following factors:--

(a) Trade dress, get up and layout of the impugned label No. 1 used by defendants is identical and confusingly similar in all respects to that of the plaintiff''s trade dresses in respect of packages of Aashirvaad Shudh Chakki Atta and Aashirvaad Superior MP Atta, details of which have been described in para No. 5, point xiv of this order.

(b) The defendants use of the impugned label No. 1 clearly evidences the dishonest intention on their part to ride upon the vast., impeccable reputation of the plaintiff in respect of the label, trade dress, get up, layout and colour combination used in the packages of Aashirvaad Shudh Chakki Atta and Aashirvaad Superior MP Atta. This act is obviously 111 motivated to pass off the defendants business and goods as that of the plaintiff''s.

(c) The defendants'' goods, i.e. Atta (wheat flour) have the same trade channels and relevant consuming public, as that of the plaintiff, apart from commencing their activities in geographical areas, where, the plaintiff-company have been operating for several years, and thus, the defendants ought to have been aware of the plaintiff''s presence in the field of marketing Atta.

(d) Further, the fact that the plaintiff''s sale of their goods using the trade dress "Aashirvaad Select Superior Sharbati Atta" dating to 2002, and the earliest registered trademark dating back to 14 March, 2002, which forms part of public records, the information thereon, is deemed to have constituted constructive notice to the defendants. A simple search of the trademark office records would have revealed the numerous registrations granted in favour of the plaintiff. This clearly shows that the defendants have willfully and deliberately adopted the impugned label No. 1 to pass off their goods as that of the plaintiffs.

(e) Given the public image, which the plaintiff goods sold under the trade dress, Aashirvaad Select Superior Sharbati Atta command due to their immense popularity and widespread presence through print and electronic media, including the internet, and the defendant being in the same line of business, ought to have been aware of the plaintiff''s prior adoption and use of the said label, trade dress, lay out, get up and colour combination.

(f) Further, the very fact that the labels used by the defendants prior to the impugned label No. 2 introduced in the recent past were distinct, dissimilar to that of package/label used by the plaintiff in respect of variant product, viz., "Aashirvaad Select Superior Sharbati Atta" and not of a concern to the plaintiff, further goes to show that the defendants have made shrewd attempt in adopting the Impugned Label No. 2 to ride upon the plaintiff''s reputation and deceive the consuming public to facilitate passing off the goods under the Impugned Label No. 2 as that of the plaintiff''s goods.

(xviii) The defendants also introduced another variant product under the brand name "Ganesh Sharbati Atta", which is identical to the trade dress, get up style, layout design and colour scheme used by the plaintiff in the label/packaging of Aashirvaad Select Superior Sharbathi Atta and the similarities are as described below:--

(a) The look and effect of the background of the packaging, which has the effect of woven natural gunny/fiber bag in brown colour.

(b) A orange rectangular box placed in the centre of the aforesaid background with similar essential features and vital details.

(c) The colour combination of orange and brown, and

(d) The artistic elements of farmers, farmland and a village setting, which features are not to be to found in any of the other Atta in the market before of even many years after the plaintiff introduced the same and until the defendants copied it.

(xix) The defendants use of Impugned Label No. 2 is a colourable imitation and substantial reproduction of the trade dress/packaging/label used by the plaintiff''s in respect of their variant product, called "Aashirvaad Select Superior Sharbathi Atta", which is without the plaintiffs permission consent, of license, and in violation of the plaintiff''s copyright with respect thereto.

(xx) The use of the impugned label No. 2 by the defendants with the features, as mentioned above, amounts to misrepresentation made in the course of trade to prospective customers, which is likely to cause deception and confusion, resulting in irreparable damage to the hard earned reputation and goodwill of the plaintiff. Hence, the defendants'' product or business is likely to be aware of the plaintiff''s presence, and their unique label/packging/trade dress used in respect of their variant product, Aashirvaad Select Superior Sharbathi Atta. The defendants also slavishly adopted the impugned label No. 2 with a mala fide intention to deceive the consuming public and to pass off their products as that of the plaintiff''s.

(xxi) The use of the impugned label No. 2 by the defendants creates an impression of nexus with the plaintiff''s products under the brand name Aashirvaad by visual/external Indicia, like the packaging/label of plaintiff''s Aashirvaad Select Superior Sharbathi Atta. The Atta manufactured and marketed by the defendants is different in quality from the Atta marketed by the plaintiff''s as Aashirvaad Select Superior Sharbathi Atta.

(xxii) As stated supra, the plaintiff is the registered proprietor of the trademark, "Aashirvaad" comprising the trade dresses in the packages of Aashirvaad Shudh Chakki Atta, Aashirvaad Superior MP Atta and Aashirvaad Select Superior Sharbathi Atta package in class 30 and has the exclusive right to use such trade dress. The defendants activities, especially, manufacturing, marketing and selling their Atta products under the impugned Label Nos. 1 and 2, which are almost identical to the plaintiff''s registered trademark, Dearing Registration No. 1106809 and registered in class 30 products, amounts to an infringement of the plaintiff''s registered trademark, as per Section 29 of the Trademarks Act, 1999. Furthermore, the plaintiff''s trademark has been registered in black and white without limitation over any colour in accordance with Section 10 of the Trademarks Act, 1999, which implies that the registered trademark of the plaintiff is deemed to be registered for all colours.

(xxiii) Similarly, the plaintiff is the original owner of the artistic works found in the packages of Aashirvaad Shudh Chakki Atta, Aashirvaad Superior MP Atta and Aashirvaad Select Superior Sharbathi Atta. The lay out design and get up found in the aforesaid three packages are original works of the plaintiff, and the plaintiff alone has exclusive rights to use the copyright in those labels. The plaintiff''s had commissioned an External Agency to develop and design the aforesaid labels for valuable consideration, which was duly paid, the receipt of which was acknowledge. The defendants'' illegal and infringing activities, especially, manufacturing, marketing and selling goods falling under class 30 under the impugned Label Nos. 1 and 2 is a direct violation of the copyright of the plaintiff, and amounts to infringement of the plaintiff''s copyright.

(xxiv) A comparison of the prior packages of the defendants with the present packages, impugned as Label Nos. 1 and 2 in the plaint, clearly shows that there was no bona fide of justifiable reason for the defendants to adopt the impugned Label Nos. 1 and 2 for marketing their atta products. The comparison also shows that the defendants could not have designed impugned Label No. 1, without having the trade dress used by the plaintiff''s in the packages of Aashirvaad Shudh Chakki Atta and Aashirvaad Superior MP Atta, in mind. Likewise, the defendants could not have designed the impugned Label No. 2, without having the trade dress used by the plaintiff''s in the package of Aashirvaad Select Superior Sharbathi Atta, in mind."

The case of the applicants/defendants, as stated in the affidavits, filled in support of Applications for vacating the injunction orders, are as follows:--

"(i) The defendants are the largest manufactures and suppliers in the sector of marketing wheat product, i.e. atta, in Eastern India with a turnover, well in excess of sales made by the plaintiff in Eastern India, particularly, in the State of West Bengal. The applicants products, particularly its Atta products, are the largest selling products in the State of West Bengal, an are available at all grocery stores as well as large format retail stores across 44,098 outlets, including the outlets of the following chain stores in West Bengal:--

(ii) In view of the immense popularity, goodwill and reputation attached to the applicants'' products sold under the brand name "Ganesh" its, freshness and quality, their products are stacked and displayed separately by all general stores and the products are heavily sought and has very quick turnover. The applicants'' products, particularly, their variant products of Atta are always fresh as compared to other brands of Atta. The applicants have also given the sale figures of their Atta products so as to make it clear that the sales figures of their products in West Bengal are higher than that of the sales figures of the respondent''s products in the said State.

(iii) The respondent/plaintiff is also a Kolkata based Company, and it was not able to break the applicants'' virtual monopoly in the marketing filed of Atta, despite spending large amounts in incentives and other inducements to influence the dealers and distributors of the applicants. The respondent has been unable to make inroads into the applicants market share in Eastern India, and knowing fully well of the applicants limited business outside Eastern India, filed the suit before this Court, where, the applicants were not actively selling of marketing their products as on date. The products of the applicants sold in the packagings, impugned as label Nos. 1 and 2 herein, have not been released in the State of Tamil Nadu, or within the jurisdiction of this Court, or elsewhere, and therefore, the respondent has no cause of action to sue against the applicants.

(iv) Prior to 2009, the products of the applicants were sold in simple packaging, and they were displaying the trademark "Ganesh" prominently thereon. The packaging also contained a device with the figure of Hindu God, "Ganesh". In 2009, the applicants took advantage of modern packaging techniques, and introduced new range of packaging with a traditional outlook. The get up and lay out of the packaging used in respect of applicants variant products remained similar, only different colours were used so as to make the variant products distinguishable. Later, the applicants received request from large section of consumers that the applicants should not use religious symbol, as logo on their packets. Therefore, with a view to respect religious sentiments of consumers, the applicants decided to remove the said logo with the figure of the God Ganesh from the packaging and engaged Experts for the purpose of designing a new logo on their packaging.

(v) In or around the year, 2012, the applicants approached one Blue Stockings, which is a reputed Organization, well-known for its creative designs, and engaged them for the purpose of designing a new packaging scheme for their products, with a view to give the same contemporary look, while retaining the flavor of rural India. After several meetings with the representatives of said Organization, and after considering various suggestions and different packaging proposed by the said Organization, a packaging with the following leading features was frozen:--

(vi) The following features are found in the packaging of the applicants products:--

(a) The applicants trademark "Ganesh" was enclosed in a green and white device, inter alia, with a graphic representation in green and yellow colour.

(b) The entire packaging contains a picture of a surface pattern of woven mats, in which, grains are traditionally stored in rural households.

(c) The central panel covering 40% of the font with the representation of a rural India household with the said Ganesh device at the top of the said label.

(d) yellow and green device with graphic designs represented with a green and golden representation of a healthy heart with the description of wholesome goodness thereon.

(e) The tag-line, Swad Desh Ka Pyar Ganesh Ka, is displayed prominently on the labels.

(f) The entire packaging was to have a glossy, shiny and bright appearance with eye catching colours.

(g) For the purpose of identification of different products, different coloured central panels would be used for different products, i.e., (i) Red for Whole Wheat/Premium Chakki Atta, (ii) Orange for Bakery Maida, (iii) Brown for Wheat Dalia (iv) Blue for Sattu, (v) Red for Sooji, (vi) Green for Premium Maida, (vii) Orange for Matar Besan (viii) Mustard Oil colour for Chana Besan (ix) Green for Rumali Atta (x) Violet for Tandoori Atta and (xi) Yellow for Desi Atta, and

(h) In addition thereto there are various descriptive features in different portions of the packets, apart from portions of the panel reserved for statutory and other dietary information, and a portion of the red panel describing other products of the applicants.

(vii) The packaging with the aforesaid features was designed, prepared and finalized by the Blue Stockings, and the applicants placed orders for such packaging on various well-known label manufacturers in or around May, 2012, and the applicants introduced their products under the new packaging in or around June, 2012. The products under the said new packaging have been made available extensively throughout Eastern India since June, 2012, and have been prominently displayed in all leading stores including stationers. The said products with new- packaging are stacked prominently in stores, where, the plaintiff''s product ITC Ashirvad Atta is also available.

(viii) The respondent/Plaintiff is fully aware of the applicants introduction of such packaging since then, but has deliberately suppressed knowledge of the same. It is also evident that the respondent has sought to suppress such facts and with an intention of avoiding action for perjury, had filed a common affidavit verified by a resident of Chennai, where, the applicants products are not sold. After the introduction of aforesaid packaging by the applicants in June 2012, which has been suppressed by the respondent, some changes were proposed by introduction of the Chakki device and the description called, Premium Chakki Atta.

(ix) The applicants have been using the description "Premium Chakki Atta.", in relation to their products since 2006 and the said description had been used even in its earlier packaging. The applicants have not yet commenced user of the packaging, shown as impugned Label-1 and Label-2 in the plaint, but are using the packaging in relation to the whole wheat Atta. In order to emphasize the fact that the applicants produce only chakki Atta and do not sell any roller mill manufactured Atta, the applicants also decided to introduce the device of Chakki on the packaging in or around October, 2012.

(x) The applicants started advertising the products in such new packaging since 17th March, 2013 to familiarize customers with the new packaging, but had not released any products in such packaging in the market till the time of ex parte order of injunction. However, orders had been placed for over 11,36,66,667 numbers of 5 kg bags and 1,49,500 numbers of 10 kg bags, out of which, 1,36,66,667 numbers of 5 kg bags and 49,500 numbers of 10 kg bags with the changed packaging had already been received and now, by reason of the order of injunction passed in favour of the plaintiff, the applicants have been prevented from using such packaging, though huge stocks of such bags are lying and ready for use. The plaintiff has no right, whatsoever, over the trade dress of Whole Wheat Atta, Premium Chakki Atta or the device of chakki.

(xi) The device/word of the hand-chakki/chakki is used by several other manufacturers, including inter alia, (i) Mahender Flour Mills, Delhi, (ii) M/s. Shri Shyam Agro Biotech Pvt. Ltd., (iii) Sita Shree Food products Limited, (iv) Avent Agro Pvt. Ltd., (v) Modern Flour Mills, (vi) Eoxy Roller Flour Mills Ginni Agro products Pvt. Ltd., (vii) Arti Roller Flour Industries Pvt. Ltd.

(xii) The applicants description of the product, "Premium Chakki Atta" is also used by numerous other manufactures, including, inter alia, (i) M/s. Shri Shyam Agro Biotech Pvt. Ltd., (ii) Sita Shree Food Products Ltd., and (iii) B.P. Food Products Private Ltd.,

(xiii) The colour red, which is the predominant part of the packaging of the applicants product is used by several manufactures, including, (i) M/s. Shree Shyam Agro Biotech Pvt. Ltd., (ii) Sita Shree Food Products Ltd., (iii) B.P. Food Products Private Ltd., (iv) Avent Agro Pvt. Ltd., (v) Chamillie Devi Flour Mills Pvt. Ltd., (vi) Pitambar Flour mils Pvt. Ltd., (vii) Premium Harvest Ltd., (viii) Shakti Bhog Foods Ltd., (ix) Amrit Bhog etc.

(xiv) A representation of rural India with a flagrant background is used by several manufacturers, including (i) Balaji Food products (Mayur) (ii) KRBL Ltd., (India Gate) and (iii) Veetee Fine Foods Ltd., (Ashoka).

(xv) The background of Hessian or jute or woven packaging is used by various manufacturers, including Premium Harvest Ltd., (Agri Pure Sampoorna) (ii) Avente Agro Pvt. Ltd., (iii) Chamillie Devi Flour Mills Pvt. Ltd., (iv) Pitambar Flour Mills Pvt. Ltd., (v) Sita Shree Food products Ltd., (vi) Shagun Bhog Atta, Abhinandan Atta.

(xvi) The applicants are not fly by night operators. They have extensive sales and incurred huge expenses on publicity, advertisement to promote their products. The sales of products of the applicants are well in excess than that of the respondent/plaintiff in Eastern India. The respondent, with a Mala fide intention to make a dent on the applicants'' sales, have sought to adopt unfair tactics to cause loss and damage and also to affect the sales of the applicants products, knowing fully well that more than 34,305 bags of Atta products are distributed on a daily basis and lying in stock at any given point of time.

(xvii) The respondent/plaintiff has no cause of action to sue against the applicants, and there is neither prima facie case, nor, balance of convenience in favour of the respondent, as the entire get up and packaging of the parties hereto are completely different, and, by coincident use of the colour combination red and orange on the packaging of applicants products, the respondent cannot restrain the applicants from using the said packaging.

(xviii) Similarly, the respondent/plaintiff cannot Claim any monopoly over the colour red or orange, having regard to the limited range of bright colour available, and the use of the colour red and orange is necessary for a company having range of products. The respondent do not have any registration over the colour of the said packaging of descriptive words or device. Likewise, the respondent cannot claim monopoly over the background picture of jute, or hessian packaging, or of a descriptive theme, or picture of food grain, or its traditional use.

(xix) Therefore, there is no possibility of any deception or confusion in the minds of the purchasers while purchasing the products of the rival parties. The consumers of such products purchase the same only by the brand name of the product given by its manufacture, and not by colour on the packaging. The applicants have also given pictorial description of substantial difference between their packaging, impugned as Label No. 1/Label No. 2 in the plaint and that of the plaintiff''s packaging in Para No. 37 of the affidavits filed in support of the vacate stay applications.

(xx) The respondent/plaintiff suppressed the fact that the applicants are top manufacturer of their flour products in India, and their sales and turnover is well in excess of flour products of the respondent in Eastern India. Moreover, the applicants are in the field of trade long, prior to the respondent using similar packaging, which was introduced in June, 2012, and selling openly, continuously and extensively with full publicity to the knowledge of the respondent, and the applicants do not have at present, any large scale activities in South India, and no part of the cause of action has arisen within the jurisdiction of this Court, as the applicants'' Companies are Kolkatta based Companies and they have not marketed their products in any part of this State.

(xxi) Hence, there is no question of passing off the goods of the applicants as that of the respondent''s and the applicants have not infringed the trademark of the respondent, and there is no violation of the provisions the copyright Act. Therefore, the interim injunction granted in favour of the respondent/plaintiff is liable to be vacated."

Mr. P.S. Raman, the learned Senior Counsel for the respondent/plaintiff submitted that the respondent started marketing their products, i.e. Whole Wheat Flour, under the brand name "Aashirvaad" from 2002, and it has been sold in distinctive packages/trade dresses. The learned Senior Counsel, by pointing out the images found in the different packages of Atta marketed by the respondent using the brand name "Aashirvaad", submitted that the respondent has designed the packages using unique colour combination of red and brown with pictorial depiction of farmers tilling the soil, sowing the seeds reaping the wheat, winnowing the grains in the package and the background is shown to be of jute material. The learned Senior Counsel, therefore, submitted that from 2002 to 2012, the respondent is maintaining the same design and trade dress for their variant products, viz., (i) Aashirvaad Whole Wheat Atta, (ii) Aashirvaad Whole Wheat Atta-superior MP Wheat, (iii) Aashirvaad Shudh Chakki Atta (iv) Aashirvaad Superior MP Atta and (v) Aashirvaad Select Superior Sharbati Atta.

The learned Senior Counsel for the respondent/plaintiff further submitted that, even according to the sworn statement of the applicants/defendants, the applicants had been selling their product Atta under the brand name "Ganesh" with picture of lord Ganesh on the package, and as even per their own admission, their packaging and trade dress in respect of their products before 2012 were entirely different from that of the plaintiff''s packaging and trade dress. The learned Senior Counsel also demonstrated the various texts of applicants'' products prior to 2012, and emphasized his contention that prior to 2012, the trade dress or package design of the applicants was entirely different and it has no semblance to their present packaging.

The learned Senior Counsel for the respondent/plaintiff further submitted that, even according to the admission made by applicants in the affidavits filed in support of the applications to vacate the order of injunction, their sales were confined only to West Bengal, and they were concentrating their business only in West Bengal, and only from the year 2012 onwards, they started expanding their business in other parts of India. The applicants also admitted that they have not started their business in Tamil Nadu. However, with the Mala Fide intention of selling their products, as that of the respondent''s products, which are being sold all over India, from 2010, the applicants designed the package for their products using the trade dresses, which are similar or deceptively similar to that of the respondent''s package. The applicants also purposely copied the colour combination of red and brown in the packaging of their product, named "Ganesh Premium Chakki Atta, and the colour combination of orange and brown in the package in respect of variant product named, "Ganesh Sharbathi Atta".

The learned Senior Counsel for the respondent/plaintiff further submitted that, the use of impugned labels by the applicants/defendants amounts to infringement of the respondent''s trademark, bearing No. 1106809 registered as per the provisions of Section 29 (1) of the Trademarks Act, 1999. The learned Senior counsel submitted that the respondent registered the trademark "Aashirvaad", in black and white colours without limitation of any colour, or colour combination, in accordance with Section 10 of the Trademarks Act, and by reason of that registration, the respondent''s trademark is protected against infringers, who may try to imitate the unique and distinctive features in any colour combination.

The learned Senior Counsel for the respondent/plaintiff also submitted that the respondent has not changed any of their unique and distinctive features used on their packaging since the lunch of the product in May, 2002, and only certain minor additions and alterations have been done, which has not affected the identity of the respondent''s registered trademark. The learned Senior Counsel submitted that, as per Section 56 of the Trademarks Act, the use of the trademark with alterations or additions not substantially affecting its identity, is equivalent to the use of the registered trademark. In support of the said contention, he relied upon the judgment reported in G.T.C. Industries Ltd., Bombay Vs. I.T.C. Limited, Madras, AIR 1992 Mad 253 , wherein, this Court held that slight variation in the actual use of the trademark than the registered trademark is perfectly lawful, and, it does not prevent the owner of the registered trademark from proceeding against the infringers.

The learned Senior Counsel for the respondent/plaintiff, in support of his contention submitted that, when the trademark is registered without limitation of colour, it shall be deemed to be registered for all colours, relied upon the judgment reported in R. Gopalakrishnan Vs. M/s. Venkateshwara Camphor Works, AIR 2001 Mad 92 : (2000) 4 CTC 222 . The learned Senior Counsel further submitted that, as per Section 29(1) of the Trademarks Act, a trademark is said to be infringed, when the defendant''s mark is identical with, or deceptively similar to that of the plaintiff''s registered trademark, and use the said mark in respect of goods or services covered by registered trademark of the plaintiff, and use of the defendant in such a manner, as to render the use of the mark likely to be taken has being used as trademark.

The learned Senior Counsel for the respondent/plaintiff submitted that, in this case, the trademark of the applicants may not be identical as that of the respondent''s trademark, but it is deceptively similar to the trademark in relation to goods or services in respect of which, the trademark is registered by the respondent.

The learned Senior Counsel for the respondent/plaintiff also submitted that, as per Section 29 (2) of the Trademarks Act, a registered trademark is infringed by a person, who, in the course of trade, users a mark, which because of its similarity to the registered trademark and similarity of the goods or services covered by such registered trademark, it likely to cause confusion on the part of the public, or, which is likely to have an association with the registered trademark. The learned Senior Counsel, therefore, submitted that, though Section 29 gave various examples of infringement of trademark under various sub-sections, the case of the respondent/plaintiff is covered by Section 29(1) and Section 29(2)(b) of the Trademarks Act.

The learned Senior Counsel for the respondent/plaintiff further submitted that the applicants/defendants have not given any reason as to why, they adopted the packaging for sale of their Atta products, which is almost similar and bears resemblance to the respondent''s packaging. Learned Senior counsel also relied upon the judgment of the Hon''ble supreme Court reported in Midas Hygiene Industries P. Ltd. and Another Vs. Sudhir Bhatia and Others, (2004) 28 PTC 121 : (2004) 2 SCALE 231 : (2004) 3 SCC 90 , wherein, it is held that, where the adoption of the mark by the defendant is dishonest, injunction must follow. The learned Senior Counsel, by relying upon the judgments reported in (i) (1994) FSR 690 (Del) in re (William Grant v. McDowell) and (ii) Colgate Palmolive Company and Another Vs. Anchor Health and Beauty Care Pvt. Ltd., (2003) 8 AD 228 : (2003) 108 DLT 51 : (2003) 27 PTC 478 : (2004) 1 RAJ 214 contended that, there can be passing off in labels, even when the word marks or trade names are dissimilar but the packaging/trade dress is similar.

The learned Senior Counsel for the respondent/plaintiff further submitted that, while considering the submissions of the parties that passing off packaging of the applicant''s product is deceptively similar to the registered trademark of the respondent, two packages should be compared as a whole, and it should be seen, whether the essential features of the respondent''s Aashirvaad Atta, package have been copied by applicants/defendants in their Atta package. The learned Senior Counsel relied upon the judgment of the Hon''ble Supreme Court reported in Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 : (1965) 1 SCR 737 , wherein, it is held that, identification of the essential features of the mark is, in essence, a question of fact, and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry, in ultimate analysis is, whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.

The learned Senior Counsel for the respondent/plaintiff submitted that, to find out whether the applicants/defendants packaging is deceptively similar to the respondent''s packaging, the packaging of both the parties should not be placed side by side for counting the differences, and contended that, only similarities should be counted rather than the dissimilarities, and in support of the said contention, he relied upon the judgments reported in (i) Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952 : (2001) 4 JT 243 : (2001) 3 SCALE 98 : (2001) 3 SCALE 392 : (2001) 5 SCC 73 : (2001) 2 SCR 743 : (2001) 1 UJ 669 : (2001) AIRSCW 4805 : (2001) AIRSCW 1411 : (2001) 3 Supreme 1 : (2001) 8 Supreme 279 and (ii) Heinz Italia and Another Vs. Dabur India Ltd., (2007) 104 CLT 719 : (2007) 4 CTC 810 : (2007) 35 PTC 1 : (2007) 7 SCALE 608 : (2007) 6 SCC 1 .

The learned Senior Counsel for the respondent/plaintiff further submitted that, in an action for trademark infringement, wherein, two competing labels are not identical, but are similar and in order to determine whether the use of the defendant''s labels is likely to cause confusion or is likely to deceive, the test to be applied is the same both in an infringement and a passing off action, and in support of this contention, he relied upon the judgment reported in Ruston and Hornsby Ltd. Vs. The Zamindara Engineering Co., AIR 1970 SC 1649 : (1969) 2 SCC 727 : (1970) 2 SCR 222 .

The learned Senior Counsel for the respondent/plaintiff, therefore, submitted that the applicants/defendants purposely designed the package for their products, which is deceptively similar to that of the respondent''s packaging, with mala fide intention of passing off their goods or to make a dent or inroad into the business of the respondent in various other parts of the Countries, where, the applicants have not marketed their products earlier. Thus, as per Section 29 (1) and (2) of the Trademarks Act, the applicants have infringed the registered trademark of the respondent, and therefore, the applicants are guilty of passing off action and prima facie case has been made out by the respondent, as evident from the labels, impugned as Label 1 and Label 2 in the plaint as well as in the documents filed in support of the present Applications.

The learned Senior Counsel for the respondent/plaintiff further submitted that the applicants/defendants are also guilty of infringement of the copyright of the respondent. The learned Senior Counsel submitted that the respondent was the first in India to start the business of Atta with unique features and in distinctive colours. The respondent is also the owner of the copyright in Atta packages used since 2002, in accordance with Sections 17 and 19 of the Copyright Act, 1957, as evident from page No. 173 of the typed set of documents filed in support of Civil Suit, marked as Document No. 13. The learned Senior Counsel, therefore submitted the respondent''s packages are protected under the Copyright Act, 1957.

The learned Senior Counsel for the respondent/plaintiff further submitted that, the test to determine, whether or not, there has been a violation of copyright, is to see, if the person seeing the defendant''s Atta label gets the impression that the defendant''s Atta label is imitation of the plaintiff''s Atta label. According to the learned Senior Counsel, the consuming public and trade will obviously form this impression, because the applicants Atta label is a substantial reproduction of the respondent''s Atta label, and in order to determine the act of infringement under the copyright Law, exact reproduction is not necessary and in support of this contention, the learned Senior Counsel relied upon the reported judgments, as mentioned infra:--

"(i) The Daily Calendar Supplying Bureau, Sivakasi Vs. The United Concern, AIR 1967 Mad 381 : (1964) ILR (Mad) 666 .

(ii) C. Cunniah and Co. and Others Vs. Balraj and Co. and Another, AIR 1961 Mad 111 .

(iii) R.G. Anand Vs. Delux Films and Others, AIR 1978 SC 1613 : (1978) 4 SCC 118 : (1979) 1 SCR 218 ."

The learned Senior Counsel for the respondent/plaintiff further submitted that, this Court has got jurisdiction to try this Suit, as the respondent Company has its Marketing Office, which falls within the original jurisdiction of this Court. The learned Senior Counsel submitted mat, though it was contended by the applicants/defendants that they were not selling their products within the City of Chennai, and hence, this Court has no jurisdiction to try the cause of action for passing off having regard to Clause 14 of the Letters Patent of this court, dealing with joinder of several Clauses, the respondent has filed the Application No. 1957 of 2013, along with O.A. Nos. 299, 300 and 301, which were duly considered by this Court, while admitting and numbering the plaint.

The learned Senior Counsel for the respondent/plaintiff also relied upon the judgment reported in Arvind Laboratories Vs. Hahnemann Laboratory Pvt. Ltd., (2007) 35 PTC 244 which judgment was upheld by the Hon''ble Division Bench judgment of this Court in its judgment reported in Wipro Limited, Thiru Vi Ka Industrial Estate and Wipro Chandrika Limited Vs. Oushadha Chandrika Ayurvedic India (P) Limited, Oushadha Chandrika Research Centre and Narayana Stores, AIR 2008 Mad 165 : (2008) 3 CTC 724 : (2008) 2 LW 430 : (2008) 3 MLJ 1 : (2008) 37 PTC 269 . In the case of Arvind Laboratories v. Hahnemann Laboratory, the learned Judge of this Court held that, for the purpose of deciding an application under Clauses (a) and (b) of Order VII, Rule 11 CPC, when the averments made in the plaint are germane, the plea taken by the defendant in the written statement would be wholly irrelevant at that stage. The learned Judge further held that when the plaintiff is carrying on business within the jurisdiction of this Court and complains of infringement of its registered trademark, the Case has to be instituted only in a Court not inferior to a District Court, having jurisdiction to try the case. Admittedly, in the case on hand, the respondent/plaintiff is having its Office in Chennai, hence this Court has got jurisdiction to deal with the suit proceedings initiated by the respondent.

The learned Senior Counsel, therefore, submitted that considering all these aspects, the learned Single Judge of this Court has granted interim injunction in O.A. Nos. 299 to 301 of 2013, and the same may be made absolute.

Mr. S.K. Kapur, the learned Senior Counsel for the applicants/defendants, while reiterating the averments made in the applications filed to vacate injunction, submitted that, no case has been made out by the respondent/plaintiff for infringement of its trademark, or passing off goods, or infringement of copyright. The learned Senior Counsel submitted that, applicants were initially selling their goods under the trademark "Ganesh", which was prominently displayed on such packaging and were marketing and selling various food products, since 2001. They have been in the business of processing, manufacturing and marketing different varieties of food grains, staples and powders since 1935, and they are the highest manufactures in this Sector in Eastern India with a turnover well in excess of sales made by the respondent in Eastern India, particularly, in the State of West Bengal. The learned Senior Counsel also pointed out the sale figures of the applicants'' products from 2000 to 2013, and submitted that the sale figures in West Bengal of the applicants are higher than that of the sales figures of the respondent.

The learned Senior Counsel for the applicants/defendants submitted that there is no question of infringement of the respondent''s trademark by the applicants, nor the applicants are guilty of passing off action and the respondent/plaintiff obtained injunction order by suppressing the fact and also by misrepresenting the material facts. The learned Senior Counsel further submitted that there is no similarity in the trade dress of the respondent''s packaging with that of the applicants, and, it cannot be contended that the packaging of the applicants'' product is deceptively similar to that of the respondent''s packaging.

The learned Senior Counsel for the applicants/defendants also submitted that the packaging of the applicants product is entirely different from that of the respondent''s product, and, they have not infringed the registered trademark of the respondent. Similarly, the applicants have not copied any essential features of the packaging of the respondent''s, and even according to the respondent, the applicants have adopted the same colour combination in their packaging. The learned Senior Counsel submitted that the colours, viz., orange and brown are basic colours, which are available, and just because, the applicants have used the said colour combination, it cannot be stated that the applicants have infringed the trademark of the entire product of the respondent, when especially, there are other featured, which diverges from each other.

The learned Senior Counsel for the applicants/defendants submitted that, even according to the respondent''s trademark on the top of the package, an artistic rendering of a field with a shining Sun in the background, and the agricultural activities, like farmers tilling the soil with bulls, sowing the seeds, reaping the grains are depicted, and the same artistic works are depicted below the rectangular portion at the bottom of the package. According to the respondent, the said artistic works and the colour combination of red and brown, or orange and brown are essential features of their product, which has been copied by the applicants. The learned Senior Counsel submitted that the comparative logo of the applicants'' product would make it clear that, it does not have any such essential features, as claimed by the respondent/plaintiff in their package registered by them.

The learned Senior Counsel for the applicants/defendants submitted that, in the applicant''s package, admittedly, there is no artistic features, either at the top nor at the bottom, as found in the respondent''s package. Only the applicants'' brand name "Ganesh" is found conspicuously in the top of the package, and at the bottom of the said Ganesh device, in the red or orange coloured square portion, jubilation of the people after harvest is depicted. The learned Senior Counsel, therefore, submitted that, except the colour combination of red and brown or orange and brown, there is no similar features found in both packages/labels. Therefore, it cannot be stated that applicants have designed the package, which is deceptively similar to that of the respondent''s package, and thereby, infringed the trademark of the respondent''s.

The learned Senior Counsel for the applicants/defendants further submitted that the colour red, which is the predominant part of the applicants packaging, is not only used by the applicants, but also by several other manufacturers, (i) M/s. Shri Shyam Agro Biotech Pvt. Ltd., (ii) Sita Shree Food Products Ltd., (iii) B.P. Food Products Private Ltd. (iv) Avent Agro Pvt. Ltd., (v) Chamillie Devi Flour Mills Pvt. Ltd., (vi) Pitambar Flourmills Pvt. Ltd., (vii) Premium Harvest Ltd., (viii) Shakti Bhog Foods Ltd., and (ix) Amit Bhog Etc. The learned Senior Counsel also submitted that the representation of rural India with a flagrant background is also used by several manufacturers, including Balaji Food products (Mayur) (ii) KRBL Ltd., (India Gate) and (iii) Veetee Fine Foods Ltd., (Ashoka).

The learned Senior Counsel for the applicants/defendants further submitted that the background of Hessian, or jute, or woven packaging, is used by various manufacturers, including (i) Premium Harvest Ltd., (Agri Pure Sampoorna) (ii) Avente Agro Pvt. Ltd., (iii) Chamillie Devi Flour Mills Pvt. Ltd., (iv) (Pitambar Flourmills Pvt. Ltd., (v) Sita Shree Food products Ltd., and (vi) Shagun Bhog Atta, Abhinandan Atta, and hence, the respondent/plaintiff cannot claim any monopoly over the background picture of jute, or hessian packaging, or of a descriptive theme, or picture of food grain, or its traditional use. Similarly, the respondent/plaintiff cannot claim any monopoly over the colour red or orange, having regard to the limited range of bright colours available, and use of the colour red and orange is necessary for a company having large range of products, when the respondent do not have any registration over the colour, and by the use of colour red or orange, without any other similarities, it cannot be stated that the applicants have violated the trademarks of the respondent.

The learned Senior Counsel for the applicants/defendants also pointed out various dissimilarities/differences between the package of the applicants and respondent, by stating that, in the applicants'' packaging, there is no white area with any artistic works, like farmers ploughing the field in the top of the package, and the picture, viz., the jubilation of people after harvest is depicted only in the centre of the square portion, unlike respondent''s picture. Likewise, the background of the applicant'' label is shown to be of woven mat, whereas, the background of the respondent''s label is that of jute bag. the learned Senior Counsel submitted that the applicants'' product is having brand name "Ganesh", with specific design in green colour, which is conspicuously absent in the respondent''s packaging, and the respondent''s trademark ITC is written on the left hand side top of the package in a triangular portion, and a semicircular device, containing the designs of leaves is shown in the centre and above the rectangular portion, and below the semi-circular device, the brand name of the respondent''s product "Aashirvaad" is boldly written.

The learned Senior Counsel, therefore, contended that merely because, the applicants'' packaging is having some pictures in the bottom of the red or orange square portion, it cannot be stated that the applicants had copied the essential features of the respondent''s product.

The learned Senior Counsel for the applicants also submitted that the various other dissimilarities on the lower side of rival packages would also make it clear that there was no infringement of the respondent''s trademark and the applicants never tried to pass off their goods as that of the respondent''s goods. The applicants'' packaging is distinctive in nature, having its brand name "Ganesh", and therefore, it cannot be stated that the applicants have copied the essential features of the respondent''s label, and thereby, they have infringed the respondent''s trademark and are also attempting to pass off their goods as that of the respondent''s.

The learned Senior Counsel for the applicants/defendants also submitted that the respondent/plaintiff cannot claim monopoly over the background picture of jute, or hessian packaging, or of a descriptive theme, or picture of food grain, or its traditional use. Even assuming that the respondent''s label has artistic works on the top and bottom of the package, which has been registered, having regard to overall look, layout and design of the applicants'' packaging/label, it cannot be stated that the essential features of the respondent''s trademark has been imitated by the applicants.

The learned Senior Counsel for the applicants/defendants also submitted that there is no question of any infringement of the trademark, as claimed by the respondent. The learned Senior Counsel submitted that, in a passing off action, the whole thing has to be taken into consideration to find out whether in an ordinary course of things, a person with reasonable comprehension and with proper insight would be deceived. The learned Senior Counsel also relied upon the Hallbury''s Trademarks 4th Edition, 1984 Vol. 48, wherein, it has been held that in a passing off action, the degree of similarity of the name, mark or other features concerned is important but not necessarily decisive so that an action for infringement of a registered trademark may succeed on the same facts, where a passing off action fails, or vice versa.

The learned Senior Counsel for the applicants/defendants further submitted that trademark "Ganesh" in green background show in horizontal square shape in applicants'' packaging would make all the differences between the applicants packaging and respondent''s packaging and the presence of the applicants brand name on the goods is an indication of there being no case of passing off, even assuming that the trade dress of the both parties are similar. The learned Senior Counsel also relied upon the judgments reported in 34 22 RFC 327 in re King and Co. Ltd. v. Gillard and Co. Ltd.) and (1981) RPC 429 : 1 All ER 213 in Re (Cadbury Schweppes Pvt. Ltd. v. Pub Squash Ltd.), wherein, it is held that the defendant''s name on his goods was an indication that there was no passing off, even if the trade-dress was similar. He also relied upon the judgment reported in (1900) 17 RPC 48 in re (Payton and Co. v. Snelling Lampard and Co.), wherein, it is held that misconception to refer to the confusion that can be created upon an ignorant customer.

The learned Senior Counsel for the applicant/defendants, therefore, submitted that, having regard to the inclusion of the applicants brand name "Ganesh" in the background of the package, and at the bottom in orange or red coloured square portion, jubilation of the people after harvest was depicted, it is clear that the applicants'' trade-dress or packaging is entirely different from that of the respondent''s, trade-dress or packaging, and therefore, there is no question of infringement of the trademark of the respondent, and there is no question of passing off the applicants'' goods as that of the respondent. The learned Senior Counsel also relied upon the following reported judgments in support of his contention:--

"(1) (1934) 39 LW 755 PC (Malayan Tabacco Distributors Ltd. v. The United Kingdom Tabacco Co.

(2) Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 : (1965) 1 SCR 737

(3) R.G. Anand Vs. Delux Films and Others, AIR 1978 SC 1613 : (1978) 4 SCC 118 : (1979) 1 SCR 218

(4) Premier Distilleries Pvt. Ltd. Vs. Sushi Distilleries, (2001) 3 LW 585

(5) Austin Reed Limited Vs. Suntex Garments, (2007) 35 PTC 774

(6) K. Narayanan and Another Vs. S. Murali, AIR 2008 SC 3216 : (2008) 9 JT 26 : (2008) 38 PTC 22 : (2008) 11 SCALE 175 : (2008) 10 SCC 479 : (2008) 2 UJ 1018 : (2008) AIRSCW 5518 : (2008) 6 Supreme 144

(7) Duroflex Pvt. Ltd. Vs. R.P. Home Private Limited, (2008) 36 PTC 600

(8) Shabbir Medical Hall Vs. Mohammed Naseer, (2010) 3 LW 150 , and

(9) P. Venkat Rao @ Sakthi Dass Editor Chandrabala Publications Pvt. Ltd. and Chandrabala Publications Pvt. Ltd. Vs. Chandamama India Limited, (2011) 7 MLJ 209

The learned Senior Counsel, therefore, submitted that, having regard to the dissimilarities in the appearance and the presence of the applicants brand name "Ganesh", which is conspicuously found in the packaging, It cannot be stated that the applicants have infringed the trademark of the respondent/plaintiff and also attempting to pass off their goods as that of the respondent, and there is no question of infringement of copyright.

The learned Senior Counsel for the applicants/defendant also submitted that" the respondent/plaintiff has no cause of action to sue against the applicants/defendants and this Court has no jurisdiction, as the applicants have not started marketing their products in the City of Chennai or any part within the State of Tamil Nadu. Therefore, there cannot be injunction on the ground of passing off goods against the applicants. Hence, the learned Senior Counsel submitted that the Application filed to vacate the injunction order are to be allowed.

In view of the submissions made by the learned Senior Counsel for both sides, the following points arise for consideration in these Applications:--

"(i) Whether the respondent/plaintiff has made out prima facie case that the applicants/defendants have infringed their trademark?

(ii) Whether the applicants/defendants are attempting to pass off their goods, as that of the respondent/plaintiff, by adopting similar trade dress in their packaging? and

(iii) Whether the applicants/defendants have infringed the copyright of the respondent/plaintiff?"

Points Nos. i and ii

To appreciate the contentions of both parties, it is advisable to have a look at Section 29(1) and (2) of the Trademarks Act, 1999, which is extracted hereunder:--

"(1) A registered trademark 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 trademark in relation to goods or services in respect of which the trademark is registered, and, in such manner, as to render the use of the mark likely to be taken as being used as a trademark.

(2) A registered trademark 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 trademark and the similarity of the goods or services covered by such registered trademark and the identity or similarity of the goods or services covered by such registered trademark;

(b) its similarity to the registered trademark and the identity or similarity of the goods or services covered by such registered trademark;

(c) its identity with the registered trademark and the identity of the goods or services covered by such registered trademark;

is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trademark."

A reading of Section 29(1) and (2) of Trademarks Act, brings about the following features, having regard to the facts of the case.

In this case, it is not claimed by the respondent/Plaintiff that the applicants have adopted their identical mark, and therefore, they infringed the respondent''s trademark. The case of the respondent is that the applicants have designed the trade dress, in such a manner, which is deceptively similar to the trade dress of the respondent, and the trade dress of the applicants is likely to the taken as being used as trademark of the respondent. Therefore, considering these aspects, we will have to see the nature of infringement as per Section 29 (1) and (2) of the Trademarks Act.

As per Section 29(1) of the Trademarks Act, a registered trademark is infringed by a person, who, in the course of trade, uses a mark which is deceptively similar to the trademark in relation to goods or services in respect of which, the trademark is registered, and in such manner, as to render the use of the mark likely to be taken as being used as a trademark.

As per Section 29(2), a registered trademark is infringed by a person, who uses in the course of trade, a mark, which because of its similarity to the registered trademark and similarity of the goods or service is covered by such registered trademark.

In this case, it is an admitted fact that both the parties are marketing the same goods, viz, Atta. Therefore, in order to find out whether there is infringement of the respondent''s trademark, onus is on the respondent to prove that the applicants/defendants are using the trademark, which is deceptively similar to their trademark.

In the judgment rendered in (Ruston and Hornsby Ltd., v. The Zamindara Engineering Company, (supra), the Hon''ble Supreme Court pointed out the distinction between the infringement action and passing off action and held as follows:--

"Para 5... The issue is, "is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe they are the plaintiff''s goods. The Apex Court has also pointed out that in an infringement action the issue is, "is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiff''s registered trademark. When same mark is used, the public is deceived into purchasing the defendants goods in the belief that they are the plaintiff''s goods. So a registered trademark is a causality. It is the duty of the Court to protect the trademark. In such a case, no further question would arise. In case of similar mark, a duty is cast upon the Court to compare both the marks to find out if the offending marks are deceptively similar to the appellant''s mark and to ask the question whether there is likelihood of deception or confusion. In deciding the question, the Judge is the final authority. The Judge must approach the question from the point of view of a man of average intelligence and imperfect recollection."

In the judgment reported in Amritdhara Pharmacy Vs. Satyadeo Gupta, AIR 1963 SC 449 : (1963) 2 SCR 484 , the Hon''ble Supreme Court held as follows:--

"... For deceptive resemblance two important questions are (1) who are the persons whom the resemblance must be likely to deceive or confuse and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer, who, on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection."

In the judgment reported in (Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmacy), the Hon''ble Supreme Court held as follows:--

"Para 28. When once the use by the defendant of mark, which is claimed to infringe the plaintiff''s mark is shown to be "in the course of trade" the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff''s registered trademark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered. A point has sometimes been raised as to whether the words" or cause confusion" introduce any element which is not already covered by the words "likely to deceive" and it has sometimes been answered by saying that is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trademark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks - the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff''s mark. The purpose of the comparison is for determining whether the essential features of the plaintiff''s trademark are to be found in that used by the defendant. The identification of the essential features to the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before is as regards the usage of the trade. It should however, be born in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff."

In the judgment reported in F. Hoffmann-la Roche and Co. Ltd. Vs. Geoffrey Manner and Co. Pvt. Ltd., AIR 1970 SC 2062 : (1969) 2 SCC 716 : (1970) 2 SCR 213 , the Hon''ble Supreme Court held as follows:--

"You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which, they are to be applied. You must consider the nature and kind of customer, who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances, and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trademark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion, that is to say, not necessarily, that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods then you may refuse the registration, or rather you must refuse the registration in that case."

In the judgment reported in Cadila Health Care Ltd., v. Cadila Pharmaceuticals Ltd.) (supra), the Hon''ble Supreme Court considered the judgments reported in (i) Amritdhara Pharmacy Vs. Satyadeo Gupta, AIR 1963 SC 449 : (1963) 2 SCR 484 , (ii) Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 : (1965) 1 SCR 737 and F. Hoffmann-la Roche and Co. Ltd. Vs. Geoffrey Manner and Co. Pvt. Ltd., AIR 1970 SC 2062 : (1969) 2 SCC 716 : (1970) 2 SCR 213 and distinguished its intra court judgment reported in M/S S. M. Dyechem Ltd. Vs. M/S Cadbury (India) Ltd., (2000) ECR 1 : (2000) 7 JT 151 : (2000) 4 SCALE 713 : (2000) 5 SCC 573 : (2000) 1 SCR 86 Supp : (2001) 1 UJ 181 and held that in a passing off action on the basis of the unregistered trademark, the following factors have to be considered for deciding the question of deceptive similarity:--

"(a) The nature of the marks, i.e., whether the marks are work marks or label marks or composite marks, i.e. both words and label works.

(b) The degree of resembleness between the marks, phonetically similar and hence, similar in idea.

(c) The nature of the goods in respect of which, they are used as trademarks.

(d) the similarity in the nature, character and performance of the goods of the rival traders.

(e) The class of purchasers, who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.

(f) The mode of purchasing the goods or placing orders for the goods, and

(g) Any other surrounding circumstances, which may be relevant in the extent of dissimilarity between the competing marks."

In the judgment reported in Colgate Palmolive Company and Another Vs. Anchor Health and Beauty Care Pvt. Ltd., (2003) 8 AD 228 : (2003) 108 DLT 51 : (2003) 27 PTC 478 : (2004) 1 RAJ 214 , it is held as follows:--

"That is why the ingredients of trade dress, get up, colour combination, layout of the container or packing acquire significance and relevance for determining the offence of passing off. This criteria flows from the concept of action of passing off developed over the years that it is similarities and not the dissimilarities which go to determine whether the action for passing off is required or not. That is why in trademark case, even the deceptive similarities are considered sufficient for infringement of trademark. If similarities of trade dress are substantial from the look of the two goods, it comes within the mischief of passing of."

In the judgment reported in Parle Products (P) Ltd. Vs. J.P. and Co., Mysore, AIR 1972 SC 1359 : (1972) 1 SCC 618 : (1972) 3 SCR 289 , the Hon''ble Supreme Court held as follows:--

"Para 8. Two marks, when placed side by side, may exhibit many and various differences vet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark, into a belief that he was dealing with goods which bore the same mark as the with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of foot ball. It would be too much to expect that persons dealing with trade- marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trademark they are already acquainted with for reasons of their own."

Para 9. It is therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any difference in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough, if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one, to accept the other if offered to him..."

In the judgment reported in R. Gopalakrishnan Vs. M/s. Venkateshwara Camphor Works, AIR 2001 Mad 92 : (2000) 4 CTC 222 , the learned Judge of this Court considered various texts and judgments of Foreign Countries and held as follows:--

"Para 10. The nature of deception of confusion may arise in several ways. In the book Law of Trademarks and Passing off by Narayanan (4th Edition) at page 258, it is stated that the deception or confusion may arise in three ways., deception or confusion as to goods or it might be deception or confusion as to trade origin or it might be deception or confusion as to trade connection. Whether the person buying the goods seeing one mark thinking it as one brand which it is not or if he thinks it is coming from the same source as some other goods bearing a similar mark, which he is familiar with or whether he believes that the two are in some way or other connected with each other there is the deception or confusion.

Para 11. In Parker-Knoll Case, 1962 RPC 265 Lord Denning observed,

"Looking to the natural meaning of the words, I would make two observations first, the offending mark must so nearly resemble the registered mark as to be ''likely'' to deceive or cause confusion. It is not necessary that it should be intended to deceive or intended to cause confusion. You do not have to look into the mind of the user to see what he intended. It is its probable effect on ordinary people which you have to consider. No doubt, it you find that he did intend to deceive or cause confusion, you will give his credit for success in his intentions. You will not hesitate to hold that his use of it is likely to deceive or cause confusion. But if he had no such intention, and was completely honest, then you will look carefully to see whether it is likely to deceive or cause confusion before you find him guilty of infringement;"

In the very same judgment, the learned Judge considered the decision reported in National Match Works, Sivakasi Vs. S.T. Karuppanna Nadar (Died) and Others, AIR 1979 Mad 157 wherein, the test and proof of deceptive similarity was considered and held as follows:--

"Para 15...

"In order to come to the conclusion whether one mark is deceptively similar to another the broad and essential features of he two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such a character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered trademark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. Proof of actual deception is not necessary."

That was a case whether National Match Works, who had a registered trademarks for his matches was aggrieved by the deceptively similar mark used by S.T. Karuppanna Nadar for his matches."

In the judgment reported in Hiralal Parbhudas Vs. Ganesh Trading Company and Others, AIR 1984 Bom 218 , the Division Bench of the Bombay High Court held that the test to be applied is what a first impression of a person of average intelligence and imperfect recollection would be, and if such a person is likely to be confused, then, there would be deceptive similarity.

In the judgment reported in P.L. Anwar Basha Vs. M. Natarajan, AIR 1980 Mad 56 also, the learned Judge followed the same principle as held in the case of National Match Works v. S.T. Karuppanna Nadar (died) and others) (supra) which reads as follows:

"In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such a character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered trademark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. The question has to be approached from the point of view of a man of average intelligence and imperfect recollection. When the two marks are held to be deceptively similar even an intention to deceive need not be proved."

In the judgment reported in Kellogg Company Vs. Pravin Kumar Bhadabhai and another, (1996) 36 DRJ 509 , it is held as follows:--

"Pare 10. The law relating to ''trade dress'' is very clear. Kerly in Law of Trade Marks (12th Edition, 1986, Para 16.67) says that it is usually true in some degree that a trader''s goods are recognized by their general appearance or get up. Accordingly, resemblance or get up is not uncommonly an ingredient in passing off, and it is possible for imitation of get up alone to amount to passing off. Such cases are rare, since few traders rely on get-up alone to distinguish their goods, so that trade names and word trademarks are ordinarily present too, and the author says:--

"and in these days, in this Country, a difference in names is enough to warn the public that they are getting one trader''s goods and not the others."

In the said Kellogg''s case, it was found that the word Kellogg''s is displayed very prominently in fairly big letters, above the words "Corn Flakes'' in the square on the left hand top and it was held that, "a difference in names is enough to warn the public that they are getting one trader''s goods and not the others."

Bearing these principles in mind, we will have to see whether the respondent/plaintiff has made out a prima facie case that the applicants/defendants have infringed their trademark by adopting their trade dress and also attempting to pass off their goods as that of the respondent.

It is an admitted fact that the respondent/plaintiff registered the trade dress for their products and the trademark Registration No. is 1106809 and it is in black and white colour. As per Section 10 of the Trademarks Act, when the trademark is registered without limitation of colour, it shall be deemed to be registered for all colours. Therefore, the arguments of the learned Senior Counsel for the applicants/defendants that the respondent/plaintiff cannot claim any monopoly over the colour red or orange, as they have not registered the trademark with colours, is untenable.

The case of the respondent is that the applicants have made out trade dress, get up style, layout, design and the colour scheme as that of the respondent in the trade dress packaging of Premium Chakki Atta/impugned Label No. 1 in the plaint, and Sharbati Atta/impugned Label No. 2.

It is the specific case of the respondent/plaintiff that in adopting the similar trade dress, the applicants have infringed their trademark. Though, as per the trademark registered by the respondent, bearing Registration No. 1106809, it is restricted to "Aashirvaad Whole Wheat Atta", having regard to the different products manufactured by rival companies, it is to be find out whether the applicants/defendants have infringed the trademark of the respondent''s, and whether the respondent has made out prima facie case of infringement on deceptive similarity in the trade dress or packaging of the applicants'' goods.

As per the decisions of the Hon''ble Supreme Court in Heinz Italia and Another Vs. Dabur India Ltd., (2007) 104 CLT 719 : (2007) 4 CTC 810 : (2007) 35 PTC 1 : (2007) 7 SCALE 608 : (2007) 6 SCC 1 in (Heinz Italia v. Dabur India), referred to above, to determine whether two marks of rival companies are deceptively similar to each other, two products should not be kept side by side to find out the deceptive similarity and the Court has to find out whether the essential features of the registered trademark has been copied into the impugned trademark used by the defendant.

According to Mr. P.S. Raman, the learned Senior Counsel for the respondent/plaintiff, the essential features of the respondent''s registered trademark are (i) woven natural gunny/fiber bag; (ii) A red rectangular box in the center of the packaging with essential features and vital details and (iii) The colour combination of red and brown. The artistic features, like farmers, farmland, and a village set up are features, which are not to be found in any of the other Atta product in the market before or even many years after respondent introduced the same. The learned Senior Counsel submitted that in the impugned label Nos. 1 and 2, the very same colour combination of red and brown is present, i.e., red square portion is placed in the centre of the package, and the background is shown to be as natural gunny/fiber bag in brown colour. The learned Senior Counsel, therefore, submitted that these essential features are found in the impugned labels used by the applicants, which are deceptively similar, and while considering whether the applicants packaging is deceptively similar to that of the respondent, the Court has to look into the similarities and not the dissimilarities, and considering these vital similarities, it is clear that the applicants have infringed the trademark of the respondent''s.

On the other hand, the learned Senior Counsel, Mr. S.K. Kapur, for the applicants pointed out various dissimilarities in the packaging and trade dress of the applicants ad the respondent, and contended that ordinary person will not think that he would be purchasing the respondent''s product, when he purchase the applicants'' product. The learned Senior Counsel submitted that the brand name "Ganesh" is prominently mentioned in the top of the packet with green background in horizontal square, and different design, look, and the leaf in the yellow colour would all give an idea that to an ordinary purchaser that the product he is going to purchase, is the product of the applicants, and he would not think that he was purchasing the product of the respondent''s.

The learned Senior Counsel for the applicants further submitted that, in the respondent''s trademark, the word "Aashirvaad" is prominently written, and above the same, there is semi-circle in orange colour, which consists of a design of eight leaves, of which, two are green in colour and remaining six leaves are white in colour. That apart, on the left-hand side top of the packet, the logo of the respondent''s ''ITC'' is prominently displayed in the triangle shape, above the red rectangular portion and also above the brown colour gunny bag, the artistic works depicting the agricultural activities, like farmers ploughing the soil, sowing the seeds, winnowing, i.e., the act of removing the grains from husks are shown and similar features are displayed in the bottom of the package, and these are not found in the applicants/defendants'' package, as the applicants/defendants packaging has red square portion, where, the family members celebrating the harvest is found, and therefore, considering the presence of the brand name "Ganesh" in the applicants'' package and the absence of agricultural operations, one can arrive at a conclusion that an ordinary person would not be deceived while purchasing the applicants'' product thinking that it was the product of the respondent.

The learned Senior Counsel for the applicants also pointed out various dissimilarities, as seen in Para No. 32 of this order, and also relied upon certain judgments, referred to above, particularly, the judgment rendered in Kellogg''s case and contended that having regard to the various dissimilarities found in the rival packages/labels, it cannot be stated that the applicants'' products are deceptively similar to the respondents'' products.

I am unable to accept the contentions of the learned Senior Counsel for the applicants. According to me, to find out whether the applicants trademark or trade dress is deceptively similar to that of the respondent''s trademark or trade dress, in addition to the essential features to be found in both the marks, the motive and intention of the both parties are to be taken into consideration so as to arrive at a fine conclusion.

It is the specific case of the applicants that they got outlets in West Bengal. As per the sale figures given in the applications to vacate the injunction orders, those sales figures are given only in the Territory of West Bengal. It is also admitted by the applicants that they have not stated their business operations in other parts of State, and they are centered only in West Bengal and only from 2012, they started expanding then business all over India.

It is also admitted that the respondent/plaintiff is in the market in respect of Atta products from 2000 onwards and the trademark was registered on 24.05.2002. Therefore, from 2002, it is proved that the respondent/Company is selling its products in the packaging, as registered in the Registry of Trademark. It is also admitted by the applicants/defendants that prior to 2012, they were selling their products in a packaging, which contains the picture of Lord Ganesh and the name Ganesh is printed below the picture Ganesh, and the trade dress is entirely different and it has nothing to do with the present packaging or trade dress now used by them, which is impugned in these applications. As a matter of fact, there is no similarity in the packaging adopted by the applicants prior to 2012, and when they wanted to expand the business outside West Bengal, they have adopted a new trade dress, which is impugned in these applications.

According to me, when the applicants/defendants changed the packaging in the year, 2012, when they expanded business activities outside the State of West Bengal, and in doing so, they adopted the trade dress, which is similar to the trade dress of the respondent''s, the dishonest intention of the applicants is clearly made out. In other words, there is no need for the applicants to come out with new trade dress, which is similar to that of the plaintiff when they expanded business operation beyond West Bengal by giving a go-by to the earlier trade dress, which they adopted earlier, while having business operation only in West Bengal.

Therefore, even before going into the aspect of finding out whether they are similarities in the two packaging, the fact that the applicants/defendants have introduced a new packaging, which is different from that of their old packaging, which appears to have semblance of the respondent''s/plaintiff''s packaging, would only lead to the conclusion that the applicants wanted to exploit business prospects of the respondent and thereby, attempted to infringe the trademark of the respondent.

Now, we will have to see whether the applicants/defendants copied essential features that are found in the packaging/label of the respondent''s in their impugned labels. To appreciate the contention of both parties, the trade dress of the respondent/plaintiff and the impugned trade dress of the applicants/defendants, mentioned as Label 1 and 2 and the trade dress of applicants/defendants product, prior to 2009 are shown below, of:--

Packages I and II are the packages of the respondent/plaintiff and packages III and IV are the impugned Label Nos. 1 and 2 of the applicants/defendants, and V is the trade dress of the applicants/defendants, prior to 2009.

The respondent''s trademark is having red rectangular portion in the middle and yellow border around the red portion and the yellow colour, bordering the red portion, appears to be made out of jute. Above the red rectangular portion, the farming operations are found and in the bottom of the red rectangular portion also the same features are depicted. In the applicants'' packaging, the same red square portion is found in the similar surrounding by dark yellow that finish and inside the red square portion, picture of people celebrating the harvest was found.

It has been held by the Hon''ble Supreme Court in the judgment rendered in Cadila Health Care Ltd.''s, referred to supra, that in case of passing of action, similarities between the competing marks) are to be considered to determine whether there is likelihood of deception or causing confusion, further, it is a trite law in trademarks, case that competitive marks must be compared as a whole and it is not right to have the portion of the word and say that because of that portion of the word, it is different from each other and there is no likelihood of any deception or confusion.

In the case, both parties are dealing in Atta products and the class of purchasers are ordinary people and the commodity being used is an essential commodity for daily sustenance, the customers will buy the product in 5 kg or 10 kg packages and considering the class of purchasers, who are likely to buy the goods, in my opinion, despite the presence of the word Ganesh in the horizontal square with green background in the applicant''s packaging, considering the over all features, viz., the dark yellow background and the red coloured square portion in the middle of the packaging, which are the essential features of the respondent''s trademark, there is likelihood of deception or confusion in the mind of the ordinary purchasers, and therefore, I am of the view that the respondent/plaintiff has made out prima facie case of infringement and passing off action.

In the connection, it is pertinent to refer to the judgment reported in (1990) Supp 727 in re (Rampal Singh v. Rias Ahmed Ansari), which was relied upon by the Hon''ble Supreme Court in the judgment reported in Power Control Appliances and Others Vs. Sumeet Machines Pvt. Ltd., (1994) 2 JT 70 : (1994) 1 SCALE 446 : (1994) 2 SCC 448 : (1994) 1 SCR 708 , wherein, it is held as follows:--

"Para No. 38

Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy, which is both temporary and discretionary. The object of the interlocutory injunction, it is stated "... is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the act if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting form his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the "balance of convenience" lies.

The interlocutory remedy is intended to preserve in status quo, the rights of parties, which may appear on a prima facie case. The court also, in restraining from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration, whether the defendant has yet to commence his enterprise or whether he had already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted."

(Emphasis supplied)

It is admitted by the applicants/defendants that they have not marketed their products in the trade dress as impugned in these applications and therefore, the learned Senior Counsel for the applicants contended that there was no cause of action for the respondent/plaintiff to file the suit. In these circumstances, having regard to the above observation of the Hon''ble Supreme Court that when the defendant has not started using the impugned labels while deciding the Interlocutory Application, it is advisable to preserve the status-quo and on that ground also, the respondent/plaintiff is entitled to the relief of temporary injunction. Hence, the and interim injunction granted/in O.A. Nos. 299 and 300 of 2013 in made absolute, and the present Applications filed to vacate the same, viz., Application Nos. 2414 and 2415 of 2013 are dismissed and Point Nos. (i) and (ii) are answered accordingly.

Point No. iii

The learned Senior Counsel for the respondent/plaintiff in support of his contention that to determine the act of infringement under the Copyright Law, exact reproduction is not necessary, placed reliance the judgments rendered in (i) The Daily Calendar Supplying Bureau, Sivakasi v. The United Concern) and (ii) (Cunniah and Co. v. Balraj and Co.), and having regard to those judgments, I am of the view that the applicants have infringed the copy right of the respondent, though the learned Senior Counsel for the applicants relied upon the judgment rendered in (R.G. Anand v. M/s. deluxe Films and others) and contended that there is no question of infringement of copyright of the plaintiff.

As per Section 51 of the Copyright Act, when any person makes for sale or hire, or sells or lets for hire, or by way of trade displays or offers for or hire, or distributes either for the purpose of trade or to such as extent as to affect prejudicially the owner of the copyright, or by way of trade, exhibits in public, any infringing copies of the work, is said to have infringed the copyright of a person.

As stated supra, I have held that the essential features of the respondent''s trademark have been copied by the applicants and the according to the respondent, they are the owner of the copyright in respect of Atta packages in accordance with Sections 17 and 19 of the copyright Act, and to fortify the same, they also filed Deed of Assignment, wherein, it is seen that the respondent owner of the copyright in its Atta packages used since 2002, and having held that the essential features of the respondent''s package are found in the impugned packages of the applicants, I am of the view that the Copyright of the respondent''s has also been infringed by the applicants and Point No. iii is also answered in favour of the respondent/plaintiff and against the applicants/defendants. Hence order of injunction granted in O.A. No. 301 of 2013 is confirmed and A. No. 2416 of 2013 filed to vacate the injunction is dismissed. In the result, the injunction granted in O.A. Nos. 299 to 301 of 2013 is made absolute, and the present Applications filed to vacate the injunction, viz., Application Nos. 2414 to 2416 of 2013, are dismissed.