La Opala R.G. Ltd. vs Cello Plast & Ors.

The Court : This is an action in passing off. The plaintiff is well-known and well-reputed manufacturer of opal glass tableware and is in business since

1980s. The petitioner has significant presence in the market. The products of the petitioner have innovative shapes, configuration, surface patterns

with artistic get up. The products having this artistic shapes and configurations and surface patterns are imprinted with artistic work conceptualised by

the petitioner and the products with their distinctive shape, configuration, surface pattern and artistic work on it form a distinctive identify of their own,

originating from the petitioner and as a whole forms a trade dress of the product.

The petitioner has referred to various trade dresses and/or marks sold under Diva Classique and Ivory mark. The four separate trade dresses have

their brands namely as Mystrio Black, Crimson Bloom, Golden Fall and Dazzle Purple. The shape, surface pattern, artistic getup on the products of all

the four brands constitute a trade dress and/or has acquired the status of a mark. The products bearing the said trade dresses are identified as a mark

by people common to the trade and public at large and it is the said trade dresses by which the people identify the products.

The petitioner conceived the said trade dresses and/or the marks, namely, the Dazzle Purple in 2009, the Mystrio Black in 2010, Golden Fall in 2012

and the Crimson Bloom in 2014. The shape, motif, art work, pattern, design and packaging of the product of the petitioner have been created and/or

conceptualised and/or invented by the petitioner. The petitioner has been using the same since the date of conception of the said designs and all the

brands in commercial manner continuously and extensively since the date of conception and there was no prior use of the same by any third party to

that of the conception and/or the use of the said motif, art work, design, packaging and/or pattern and/or shape of the product of the petitioner.

The petitioner has applied for registration of the said trade dress as shown in Annexure-E, F, G and H of the petition respectively for registration of

the same before the Trade mark Registry in order to acquire statutory right of the said dress and/or the mark. The said trade dress and/or the mark

are distinctive feature of the product of the petitioner. The said applications for registrations of the said trade dress and/or the said mark as shown in

Annexures-E, F, G and H of the petition respectively are pending before the Trade Mark Registry. The said aesthetic design, motif, ark work is a

trade dress and is an unique creation of the petitioner and of no one else and the same are recognized by the people common to the trade and public at

large as that originating from the petitioner only.

The petitioner has disclosed the annual sales figures of the products of the petitioner for the said four products since 2013 which runs into crores. The

petitioner has also disclosed documents to show that the trade dress and/or mark as shown in Annexures-E, F, G and H respectively have also been

advertised through all the publicity media, in various exhibitions and other journals throughout the trade channel and the general public both within and

outside the jurisdiction of this Court. The annual advertisement and promotional expenses of the petitioner have also been disclosed in this application.

The petitioner contends that in July, 2017 the representative of the petitioner while visiting one of its distributors and/or sellers of their goods in the

locality of the respondent nos.2 and 3 came across the products of the respondent no.1 at the business premises of the respondent nos.2 and 3. The

petitioner contends that the respondent no.1 along with the respondent nos.2 and 3 are surreptitiously seeking to represent the trade dress and/or the

shape, pattern, artistic getup, motif and/or the design on their products as a mark for their product which is also identical and/or deceptively similar to

that of the trade dress and/or the mark and/or the motif and/or the pattern and/or the artistic getup and/or the design of the product as shown in

Annexures-E, F, G and H respectively of the product of the petitioner. The petitioner has produced before this Court documents to show that the

infringing products were lying on 5th July, 2017.

Mr. Pratap Chatterjee, learned Senior Counsel appearing for the petitioner has produced before this Court the products of the petitioner as well as that

of the respondent no.1 to show that an unwary customer with imperfect recollection would identify the product of the respondent as that of the

petitioner.

That the petitioner’s products were in market prior to the infringing materials possibly could not be disputed at this stage. Both the products on

visual examination appear to be deceptively similar, if not identical. The infringing products are slavish imitation of that of the petitioner and cannot be

said to be common to trade. Mr. Siddhartha Mitra, learned Senior Counsel representing the respondents has relied upon a Division Bench judgement

of the Delhi High Court in Kellogg Company vs. Pravin Kumar Bhadabhai & Anr. reported in 1996(16)PTC 187(Del) to submit that when these kinds

of products are sold in a carton, the goods are identified with the name of the manufacturer prominently displayed in the carton and not the product

individually. It is submitted that the customers would buy such products on the basis of the name of the manufacturer and not of the product. These

kind of goods are not purchased by ordinary people. The purchasers are aware of the brand. Mr. Mitra has produced the carton to show that the

products are not sold in pieces.

There cannot be any doubt that the cartons produced by the defendants prominently displays the name of the defendant in relation to the product but

the fact remains that the products can also be sold as in pieces and separately. The documents disclosed in this proceedings show that the petitioner

has purchased such products separately. All the products are not sold in carton. In any event it is no defence that since the infringing articles are sold

in cartons there is no infringement. In an action for passing off the Court is regarded to protect the ‘trade mark’ which is an intellectual property

developed by the plaintiff by its own skill and popularised it over a period of time.

Since this Court is of the prima facie view that there are lot of similarity in the trade dress between the two products if not absolute identity and the

petitioner is able to make out a prima facie case showing that the infringing products are slavish imitation of that of the plaintiffs, there shall be an

order in terms of prayer (b) of the application. The interim order shall remain valid for a period of twelve weeks from date.

Let affidavit-in-opposition be filed on or before 15th June, 2018; reply thereto, if any, be filed 22nd June, 2018. The matter will appear as ‘adjourned

motion’ fairly at the top on 25th June, 2018. The infringing materials produced before this Court shall be kept in a carton duly sealed with the

Registrar, Original Side to be produced at the time of hearing. The defendant shall communicate this order to all its stockists and franchises by Friday

i.e., 18th May, 2018. Mr. Mitra, learned Advocate for the respondent prays for stay of operation of the order. The same is considered and rejected.