Marico Limited vs Mr. Mukesh Kumar & Ors

,,,,

MANMOHAN, J.",,,,

I.A. No.14758/2016,,,,

The case at hand illustrates what is well known amongst the intellectual property rights fraternity, ""The most successful form of copying is to",,,,

employ enough points of similarity to confuse the public with enough points of difference to confuse the courts. Few would be stupid enough to make,,,,

exact copies of anotherâ€​s mark or symbol.â€​[(See: Baker V. Master Printers Union of New Jersey, 47 USPQ 69 at 72 (D.N.J.1940)]",,,,

It is pertinent to mention that the present suit has been filed for permanent injunction restraining infringement of trade mark, rendition of accounts,",,,,

etc. With consent of the parties, I.A. No.14758/2016 was taken up for hearing and disposal. The prayer clause in the application is reproduced",,,,

hereinbelow:-,,,,

A. An ex parte and ad interim and interim injunction against the Defendants, their partners, principals, directors, officers, employees, agents,",,,,

distributors, suppliers, affiliates, subsidiaries, franchisees, licensees, representatives, group companies and assigns restraining them from:",,,,

i. Manufacturing, or authorizing the manufacture distributing, exporting, selling, offering for sale, advertising, promoting, displaying and/or using, in any",,,,

manner whatsoever, the impugned products namely EVEREST COCONUT OIL and/or EVEREST JASMINE HAIR OIL as represented in the",,,,

foregoing paragraph Nos. 3 & 38, of the plaint and/or any other product bearing any other mark/label/trade dress/packaging deceptively and/or",,,,

confusingly similar to the Plaintiffâ€s registered trade marks/labels namely PARACHUTE (labels), FLAG DEVICE and/or PARACHUTE",,,,

ADVANSED JASMINE (label) as tabulated under paragraph Nos 11, 14 and 25 of the plaint as a trade mark/label or part of a trade mark/label,",,,,

trade name or a part of trade name, domain name or a part of domain name or in any other manner whatsoever, which would amount to infringement",,,,

of the registered trade marks/labels of the Plaintiffs.,,,,

ii. Manufacturing, or authorizing the manufacture distributing, exporting, selling, offering for sale, advertising, promoting, displaying and/or using, in any",,,,

manner whatsoever, the impugned products namely EVEREST COCONUT OIL and/or EVEREST JASMINE HAIR OIL and/or any other product",,,,

bearing any other mark/label/trade dress/ packaging/bottle shapes/shape of jars deceptively and/or confusingly similar to the Plaintiffâ€s trade,,,,

dress/labels/packaging/bottle shapes for the brands PARACHUTE (labels), FLAG DEVICE, BROKEN COCUNUT DEVICE, PARACHUTE",,,,

BOTTLE, PARACHUTE JAR and/or PARACHUTE ADVANSED JASMINE (labels) as tabulated under paragraph Nos. 11, 12, 14, 18, 20, 25 and",,,,

26 of the plaint and/or variants and the unique/distinctive trade dress/bottle shapes/shape of jars relating thereto, thereby passing off their products as",,,,

that of the Plaintiff.,,,,

iii. Reproducing, printing, publishing and/or using the labels/packaging as mentioned in paragraph Nos. 3 and 38 of the plaint and/or from imitating in",,,,

material form the Plaintiffs labels/packaging, as represented in Paragraph Nos. 17, 18 and 26 of the plaint, the copyrights of which vest with the",,,,

Plaintiff, thereby amounting to the infringement of the Plaintiffâ€​s copyrights in the said works.",,,,

B. The Defendants including principals, proprietor, partners, officers,  employees,  agents,  distributors,  suppliers, affiliates,",,,,

subsidiaries, franchisees, licensees, representatives, group companies and assigns be ordered by an ad interim mandatory injunction directing that they",,,,

at their own expense:,,,,

i. Recall all the impugned products and/or any marketing, promotional and advertising materials that bear or incorporate the impugned",,,,

mark/labels/packaging/trade dress/bottle shape, or any other mark/labels/packaging/trade dress/bottle shape deceptively and confusingly similar to the",,,,

Plaintiff's mark/labels/packaging/trade dress/bottle shape, which has been manufactured and/or sold, distributed in the market, including online retail;",,,,

ii. Deliver to the Plaintiff for destruction of all the material including all packaging, bottle/jars moulds, brochures, business envelopes, letterheads, labels,",,,,

cartons, publicity material such as pamphlets, hoardings, signboards, stationery etc. that bear or incorporate the impugned mark/labels/packaging/trade",,,,

dress/bottle shape, or any other mark/labels/packaging/trade dress/bottle shape deceptively and confusingly similar to the Plaintiffâ€s",,,,

mark/labels/packaging/trade dress/ bottle shape;,,,,

iii. Immediately remove all references of the impugned products from their websites www.everestcoconutoil.com and and/or any other website where,,,,

the Defendants impugned products are sold, offered for sale, promoted and/or advertised;",,,,

iv. Disclose to the Plaintiff any other trade mark and/or copyright applications/registrations for the impugned label/mark/trade dress/packaging/ bottle,,,,

shape or any other label/mark/trade dress/ packaging/bottle shape which is deceptively or confusingly similar to the Plaintiffâ€s trade marks/,,,,

label/trade dress/packaging/bottle shape;,,,,

C. Costs of the present application be awarded to the Plaintiff; and,,,,

D. Pass such further order/s which this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case and oblige.â€​,,,,

RELEVANT FACTS,,,,

The relevant facts of the present case are that the plaintiff is a company engaged in the business of manufacture, distribution and sale of a wide",,,,

range of products including oils, edible coconut oils, hair oils, beauty products and other personal care products.",,,,

It is stated in the plaint that the plaintiffâ€s predecessor in interest being Bombay Oil Industries Limited adopted the trademark PARACHUTE in,,,,

1948 as well as the blue colour PARACHUTE label in 1974 and got the same registered on 27th June, 1980. The said label is reproduced",,,,

hereinbelow:-,,,,

On 03rd January, 1983, the plaintiff became the registered owner of the aforesaid trade mark PARACHUTE (word) vide cerftificates bearing",,,,

numbers 399592 & 399593 in Classes 3 and 29 of the Trade Marks Act, 1999, respectively.",,,,

In 1996-97, the plaintiff adopted the PARACHUTE flag device and has been continuously using the same since then. On 20th March, 1997, the",,,,

plaintiff became the registered owner of the aforesaid PARACHUTE label with the flag and tree device in Class 29 bearing numbers 737894 &,,,,

737893. The same is reproduced hereinbelow:-,,,,

The aforesaid registrations are valid and subsisting.,,,,

Plaintiff,Defendant,,,

ThePlaintiff markets its

CoconutÂ

PARACHUTE Oil in","TheÂ

Defendant had adopted the

similar  Â

bottle sizes   for its",,,

400  ML, 500 ML andÂ

1Â Litre

(See para 20 of the plaint)",,,,

The Plaintiff uses theÂ

Pantone

shade 285 C for its

PARACHUTE Coconut Oil

bottle","The Defendant uses exactlyÂ

the

same shade of blue being 285 C for

its EVEREST Coconut Oil bottle.",,,

Indentations on the bottleÂ

cap

with a particular cap shape.","Exact sameÂ

indentations. When

cap left open, the capÂ

shape is

identical from all angles.",,,

The round nozzle from where the

oil is discharged has a particular

shape and the same blue colour

as the rest of the bottle.","The nozzle used isÂ

identical in

dimensions, colour and every other

feature.",,,

Stylized “Mâ€​ embossed on top

of

the bottle cap.","A device almostÂ

identical to the

“Mâ€​ device embossed on top of

the

bottle cap.",,,

Drop shaped indentation on the

bottle just above the flag device.","Tick sign indentation at the exact

same spot on the bottle.",,,

A flag device in aÂ

particular

shade of blue pantoneÂ

and a

particular shade of green pantone

as a border.","A flag device in the exact shade of

blue with the exact shade of green

border. Exactly the same pantones

have been used.",,,

Flag device is unevenÂ

and has

wavy  sides  in  a Â

broadly

rectangular shape.","Flag device is uneven andÂ

wavy,

though the waves have aÂ

slightly

deeper indentation.",,,

,,,,

representation Â

An artistic of

coconut tree device with 6 large

leaves in the same  shadeÂ

of

green as the borderÂ

mentioned

above.","An almost identical coconutÂ

tree

device with 7 large leaves in the

exact same shade of green as the

border mentioned above.",,,

The coconut tree device

protrudes out of the borders of

the flag","The coconut tree device protrudes

out of the borders of the flag at an

almost identical location toÂ

the

label of the Plaintiff.",,,

The trunk of the tree device cuts

through the brand PARACHUTE","The trunk of the tree device cuts

through the brand EVEREST",,,

The brand is written inÂ

white

against a blue background","The  brand is written inÂ

white

against a blue background.",,,

Below the flag deviceÂ

there is

the device of a broken coconut

with coconut water splashing out

upwards.","Below the flag device there is the

device of a brokenÂ

coconut with

coconut water splashing out

downwards.",,,

The white square with aÂ

green

border   and   a  Â

green   dot

portraying that the productÂ

is

vegetarian is represented on the

right bottom side of theÂ

flag

1

device .","The Defendant has represented this

notification at an almostÂ

identical

place on the bottle.",,,

“A premium quality 100% Pure

Edible Oil made from the finest

coconutsâ€​, is written on the back

of the bottle in white color.","“A premium qualityÂ

100%Â Pure

Edible Oil made from the finest and

fresh  coconutsâ €​ is written Â

on the

back of the bottle also

 in white

color.",,,

written on the back,"Oilâ€​writtenontheback

(underlined portion addedÂ

by the

Defendant).",,,

There  bar  of Â

is  a code a","There a code ofÂ

is bar the exact",,,

particular  size  in Â

a  white

background.","same size, orientation andÂ

at the

exact same location in aÂ

white

background.",,,

Above the bar codeÂ

there are

certain tables withÂ

descriptive

matter with the edges ofÂ

the

tables rounded.","The tables exist, albeit differently

arrayed, but with roundedÂ

edges,

giving a very similar visual appeal.",,,

MRP of a 100 ml bottle Rs.30/-

MRP of a 175 ml bottle Rs.56/-

MRP of a 250 ml bottle Rs.77/-","MRP of a 100 ml bottle Rs.33/-

MRP of a 175 ml bottle Rs.52/-

MRP of a 250 ml bottle Rs.72/-",,,

,"Defendant has also adoptedÂ

the

Wella label being the image of a

lady with flying hair ofÂ

a third

party on its product.",,,

nearby markets, from which it was clear that no part of cause of action had arisen in Delhi.",,,,

Mr. Rajat Aneja further submitted that the present suit was barred by delay, laches and acquiescence. He stated that the plaintiff had been aware",,,,

of the defendants†use of the mark/label SHRI LAXMI BRAND since 2001, which included all the features such as dark blue and green colour",,,,

combination; SHRI LAXMI BRAND written in white font within a flag with green border, picture of coconut tree etc. He emphasised that the",,,,

defendants had been using various elements of SHRI LAXMI BRAND label/packaging/trade dress continuously and uninterruptedly since 1999, as",,,,

shown below:-,,,,

Mr. Aneja pointed out that in response to the plaintiffâ€s cease and desist notice dated 21st January, 2002, alleging copyright infringement and",,,,

passing off, the defendants had sent a reply on 05th February, 2002 and had also filed a suit against the plaintiff before the Court of PRL, Junior Civil",,,,

Judge, Hyderabad being Suit No.221 of 2002. He stated that no action was taken by the plaintiff and the defendants continued to use all the elements",,,,

of SHRI LAXMI BRAND trademark/label uninterruptedly. He stated that subsequently, the defendants adopted the EVEREST trademark/label in",,,,

2006 and had spent a huge amount of money in its marketing and promotion.,,,,

He pointed that in 2013, the plaintiff again initiated a criminal proceeding against the defendants on account of use of the EVEREST LABEL;",,,,

however, the same was unsuccessful as it was found that the defendants had a copyright registration in the said label.",,,,

Consequently, according to him, the plaintiff had waited for fourteen years to file the present suit against the defendants after being fully aware",,,,

about the aforesaid mark/label of the defendants. He contended that the plaintiff had knowingly allowed the defendants to proceed and to expend,,,,

money on their mark/label which was inconsistent with the plaintiffâ€s claim of exclusivity and as such, the plaintiff had acquiesced to the",,,,

defendantsâ€​ use of the aforesaid marks/labels including its various elements.,,,,

Mr. Rajat Aneja also stated that the defendants were honest and concurrent users inasmuch as the defendants had been using SHRI LAXMI,,,,

BRAND label with its various elements i.e. blue colour bottles, dark blue colour inside the green border window, with the green coconut tree and",,,,

white alphabets for its trademark since 1999. He stated that the defendants had also applied for trademark registration of the said label, vide",,,,

Application No.1018670 dated 20th June, 2001, claiming user since 1st January, 1999.",,,,

He stated that though the plaintiff claimed to have filed applications for trademark registrations in the year 1997, yet its earliest applications being",,,,

Application Nos. 737894 and 737893 for PARACHUTE label had been filed on “proposed to be used†basis. He pointed out that the plaintiff had,,,,

not filed any documents on record to show that they had been using the mark/label PARACHUTE in the course of trade since the year 1997. He,,,,

stated that the invoices filed by the plaintiff were from 2001 onwards and they also did not show that the plaintiff was using the PARACHUTE label,",,,,

which was the subject matter of the present suit. The advertisement material filed by the plaintiff did not relate to the PARACHUTE label. He,,,,

contended the plaintiffâ€s claim of use or having acquired distinctiveness for its trademark/label or any element thereof from the year 1997 was,,,,

doubtful. He submitted that the plaintiff was required to establish its case first, by supporting documents.",,,,

Mr. Rajat Aneja submitted that there was no monopoly over single colour trademarks. He pointed out that Section 2(1)(m) of the Trade Marks,,,,

Act, 1999 defines a “mark†as including a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging",,,,

or “combination of colours†or any combination thereof. He stated that Section 2(1)(zb) of the Trade Marks Act, 1999 defines a trademark as",,,,

“a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others,,,,

and may include shape of goods, their packaging and combination of colours...†Therefore according to him under the Trade Marks Act, 1999, a",,,,

single colour trademark had not been recognized as a source identifier. He pointed out that the Bombay High Court, in the plaintiff's case itself being",,,,

Marico Industries Ltd. & Anr. Vs. Sarfraj Trading Co. & Ors., 2002 (25) PTC 348, had held, ""... in so far as colour of the bottle, coconut tree, there",,,,

can be no monopoly and have been dealt with in earlier proceedings filed by the Plaintiff against some others.""",,,,

He submitted that the plaintiff cannot claim exclusivity over a colour combination unless it prima facie established that the said colour combination,,,,

had become distinctive of the plaintiffâ€s product. In support of his submission, he relied upon a judgment of the Division Bench of this Court in",,,,

Britannia Industries Ltd. Vs. ITC Limited, 240(2017) DLT 156.",,,,

Mr. Aneja, pointed out that blue colour was common to the trade and coconut oil was being sold by a number of suppliers in similar blue colour",,,,

bottles. He emphasised that no legal action had been initiated by the plaintiff against such third party manufacturer/suppliers.,,,,

Learned counsel for defendants submitted that in view of Section 17 of the Trade Marks Act, 1999, the plaintiff being the registered owner of the",,,,

whole of its PARACHUTE label, could not file a suit for infringement of trade mark against the defendants for using a part of the plaintiff's registered",,,,

label. In support of his submission, he relied upon the judgment of this Court in Godfrey Phillips India Limited v. P.T.I Private Limited & Ors., 2018",,,,

SCCOnLine Del 8278.,,,,

Mr. Rajat Aneja, lastly stated that during the course of several hearings in the present matter, the defendants had given various proposals to the",,,,

plaintiff in order to amicably settle the dispute between the parties. He stated that the defendants were still willing to carry out some minor,,,,

modifications.,,,,

COURT'S REASONING,,,,

ELEMENTS OF PASSING OFF ACTION ARE PRIMA FACIE ESTABLISHED IN THE PRESENT CASE. THIS COURT IS FURTHER OF,,,,

THE PRIMA FACIE VIEW THAT THE ADOPTION BY THE DEFENDANTS WAS IN BAD FAITH. ACCORDINGLY, THE",,,,

CONTENTION OF THE DEFENDANTS THAT THEY WERE HONEST CONCURRENT USERS IS CONTRARY TO FACTS.,,,,

This Court is of the view that it is first essential to compare the products of the plaintiff and the defendants. A comparative photograph of both the,,,,

plaintiff and the defendantsâ€​ product is reproduced hereinbelow:-,,,,

Upon comparison of the aforesaid two bottles, it is evident that the background colour (same shade of blue Pantone 285C), bottle size, cap shape,",,,,

nozzle, flag device, coconut tree, broken coconut device, indentation, print as well as description in white font, are very similar if not identical. This",,,,

Court is of the prima facie opinion that if the two products are placed next to each other, it would be apparent that each and every important feature",,,,

of the plaintiffâ€s PARACHUTE Coconut Oil product had been copied by the defendants for their EVEREST Coconut Oil product. In the present,,,,

case, the resemblance in get up and trade dress between the two products is so close that it can hardly occur except by deliberate imitation. In fact,",,,,

this Court is of the prima facie view that if the two rival products were kept on a display shelf, it may be well-nigh impossible for a reasonable",,,,

consumer to tell which product belongs to whom. Consequently, this Court is of the prima facie opinion that the defendants have copied the most",,,,

relevant, material and essential features of the plaintiffâ€​s product in an attempt to pass off its products as that of the plaintiff's.",,,,

S.No.,Year,Product,Trade Dress,Market Share

1.,1992-93,"Parachute

Coconut

Oil",,50%

2.,"1999-

2000","Parachute

Coconut

Oil and

Flag

Device",,53%

3.,2003-04,"Parachute

Coconut

Oil, Flag

Device,

Broken

coconut

device",,57%

blue colour as a stand alone factor, but in a combination of factors, which includes the blue colour.",,,,

In the present case, the get-up is not only novel, but distinctive and acts as a source identifier, even though it consists of a combination of",,,,

commonly used parts. From the huge turnover certified by the Chartered Accountant in Annual Accounts as well as due to continuous use over a long,,,,

period of time, it seems prima facie that plaintiffâ€s packaging is exclusively associated with the plaintiff and the productsÂ",,,,

bearing the plaintiffâ€​s trade dress are recognized by the public as being sourced from the plaintiff and from no one else.,,,,

As far as the defendants†argument that the colour blue is common to the trade and/or the plaintiff has not taken legal action against such similar,,,,

infringers, this Court is of the view that the defendants have not been able to prima facie prove that the said “infringers†had significant business",,,,

turnover or they posed a threat to plaintiffâ€s distinctiveness. No sale figures of third parties using the blue colour bottles have been placed on record,,,,

by the defendant. Consequently, this Court at this stage cannot presume extensive use of the blue colour by third parties.",,,,

This Court is of the view that the plaintiff is not expected to sue all small type infringers who may not be affecting the plaintiffâ€​s business.,,,,

The Supreme Court in National Bell Vs. Metal Goods reported in AIR 1971 SC 898 has held that a proprietor of a trademark need not take action,,,,

against an infringer who does not cause prejudice to its distinctiveness. In Express Bottlers Services Pvt. Ltd. Vs. Pepsi Inc. & Others reported in,,,,

1989 (7) PTC 14 it has been held as under:-,,,,

“….To establish the plea of common use, the use by other persons should be shown to be substantial. In the present case, there is no evidence",,,,

regarding the extent of the trade carried on by the alleged infringers or their respective position in the trade. If the proprietor of the mark is expected,,,,

to pursue each and every insignificant infringer to save his mark, the business will come to a standstill. Because there may be occasion when the",,,,

malicious persons, just to harass the proprietor may use his mark by way of pinpricks…. The mere use of the name is irrelevant because a registered",,,,

proprietor is not expected to go on filing suits or proceedings against infringers who are of no consequence…. Mere delay in taking action against the,,,,

infringers is not sufficient to hold that the registered proprietor has lost the mark intentionally unless it is positively proved that delay was due to,,,,

intentional abandonment of the right over the registered mark. This Court is inclined to accept the submissions of the respondent No. 1 on this,,,,

point….The respondent No. 1 did not lose its mark by not proceeding against insignificant infringers…â€​,,,,

In Dr. Reddy Laboratories Vs. Reddy Pharmaceuticals reported in 2004 (29) PTC 435 a coordinate Bench of this Court has held as under :-,,,,

“…, the owners of trade marks or copy rights are not expected to run after every infringer and thereby remain involved in litigation at the cost of",,,,

their business time. If the impugned infringement is too trivial or insignificant and is not capable of harming their business interests, they may overlook",,,,

and ignore petty violations till they assume alarming proportions. If a road side Dhaba puts up a board of “Taj Hotelâ€​, the owners of Taj Group are",,,,

not expected to swing into action and raise objections forthwith. They can wait till the time the user of their name starts harming their business interest,,,,

and starts misleading and confusing their customers.â€​,,,,

In any event, in Colgate Palmolive Company and Anr. Vs. Anchor Health and Beauty Care Pvt. Ltd., 2003 SCC OnLine Del 1005 another",,,,

Coordinate Bench of this Court has held that colour in a trade dress can be so significant that in some cases even single colour can be taken to be a,,,,

trademark to be protected in passing off action. The relevant portion of the said judgment reads as under:-,,,,

“60. In the case of passing off and for that purpose infringement of trademark which are already in existence, the second or for that purpose the",,,,

subsequent comer has certain obligation to avoid unfair competition and become unjustly rich by encashing on the goodwill or reputation of the prior,,,,

comer. They have to establish and bank upon on their own trade dress or distinctive features so as to establish their own merit and reputation and,,,,

attract the attention of the purchasing public and if there are no substantial dissimilarities of marks, colour combination, getup or layout on the container",,,,

or packing or covering of the goods of the prior comer these are likely to create confusion in the minds of customers between his goods and the goods,,,,

of the prior comer in the market as underlying and hidden intention of the second comer is to encash upon the successful rival.,,,,

xxxx xxxx xxxx xxxx,,,,

Significance of trade dress and colour combination is so immense that in some cases even single colour has been taken to be a trademark to be,,,,

protected from passing off action. Colour combination is a trademark within the definition of the TMM Act as there is no exclusion in the definition.,,,,

Even a single colour has been held to be a trade mark. There may be exception also. Exception is that where the colour cannot be protected as the,,,,

blue colour is for the ink and red colour is for the lipstick. Red and white has nothing to do with the pink. Teeth as white line and gum as pink colour,,,,

alone at least sometimes can meet the basic requirements as a trademark. Colour depletion theory is unpursuasive only in cases where a blanket,,,,

prohibition is being sought.â€​,,,,

In fact, the blue bottle has been held to be a source identifier of plaintiffâ€s product in Annamalayar Agencies Vs. VVS & Sons Pvt. Ltd. & Ors.,",,,,

2008 (38) PTC 37 (Mad.). In the said case, it was held that the showing of the blue coloured bottle in an advertisement disparaged the plaintiffâ€s",,,,

product PARACHUTE coconut oil. The relevant portion of the said judgment is reproduced hereinbelow:-,,,,

“33. Insofar as advertisements 2 and 3 are concerned. they definitely refer to a plain unnamed blue bottle and drives home a message that the blue,,,,

bottle does not contain 100% pure and natural coconut oil whereas the 1st defendant's product alone contain 100% pure and natural coconut oil. It is,,,,

one thing to say that the 1st defendant's product alone is 100% pure which is not actionable and it is another thing to say that the plaintiff's product is,,,,

not 100% pure which is actionable.,,,,

Even though it was denied by the 1st defendant that they did not mean to run down the product of the plaintiff, it was admitted by them that it was",,,,

aimed at all the blue bottles including that of the plaintiff. It is also not in dispute that only the plaintiff and the 1st defendant are holding the majority,,,,

market share in the State of Tamil Nadu and in such circumstances it cannot be said that no attempt was made by the 1st defendant to disparage the,,,,

product of the plaintiff namely Parachute.,,,,

xxxx xxxx xxxx xxxx,,,,

If it is an innocuous advertisement without any intent to malign, defame and disparage the product of the plaintiff, then there was no necessity of",,,,

showing a blue bottle and comparing its purity by more than one in action.,,,,

The 3rd advertisement also goes to show that the general public not picking the blue bottles stacked in the shelf whereas the 1st defendant's,,,,

product are being grabbed with enthusiasm and swiftness. This definitely would send a wrong message to television viewers and the buyer of the,,,,

coconut oil that the blue bottle products are inferior to that of green bottle products of the 1st defendant, which is nothing but openly disparaging the",,,,

product of the plaintiff.â€​,,,,

Consequently, the judgment of the Bombay High Court in Marico Industries Ltd. & Anr. (Supra) offers no assistance to the defendants.",,,,

FOR ACQUIESCENCE, THERE SHOULD NOT ONLY BE A TACIT OR AN EXPRESS ASSENT BY THE PLAINTIFF TO THE",,,,

DEFENDANTâ€​S USE OF THE MARK, BUT ALSO ENCOURAGEMENT OF THE DEFENDANT TO CONTINUE WITH THE BUSINESS.",,,,

ACQUIESCENCE CANNOT BE INFERRED MERELY ON ACCOUNT OF THE FACT THAT THE PLAINTIFF HAD NOT TAKEN ANY,,,,

ACTION FOR INFRINGEMENT OF ITS RIGHTS.,,,,

Acquiescence means an encouragement by the plaintiff to the defendant to use the infringing mark. It implies positive acts; not merely silence or,,,,

inaction. For acquiescence, there should not only be a tacit or an express assent by the plaintiff to the defendantâ€s use of the mark, but also",,,,

encouragement of the defendant to continue with the business. Acquiescence may be a good defence even to the grant of a permanent injunction,,,,

because the defendant may legitimately contend that the encouragement of the plaintiff to the defendantâ€s use of the mark in effect amounted to the,,,,

abandonment by the plaintiff of his right in favour of the defendant and, over a period of time, the general public had accepted the goods of the",,,,

defendant. However, acquiescence cannot be inferred merely on account of the fact that the plaintiff had not taken any action for infringement of its",,,,

rights. [See: Messrs Hindustan Pencils Pvt. Ltd. Vs. Messrs India Stationery Product Co. & Anr., (1989 SCCOnLine Del 34)].",,,,

In the present case, at no point of time did the plaintiff permit the defendant to use the impugned mark or trade dress and/or promote the",,,,

defendants' mark or trade dress.,,,,

In 2002, the plaintiff objected to the use of the earlier packaging of defendants under the brand SHRI LAXMI. Further, in 2013 plaintiff filed a",,,,

criminal complaint against defendants for the use of the impugned trade dress. In 2016, the plaintiff sent a cease and desist notice against the use of",,,,

the impugned trade dress and in November, 2016, the plaintiff initiated the present proceedings against the defendants for use of the impugned trade",,,,

dress.,,,,

Consequently, in the present case, the defence of delay and acquiescence is contrary to facts and untenable in law.",,,,

IN CASES OF INFRINGEMENT EITHER OF TRADE MARK OR OF COPYRIGHT NORMALLY AN INJUNCTION MUST FOLLOW.,,,,

MERE DELAY IN BRINGING ACTION IS NOT SUFFICIENT TO DEFEAT GRANT OF INJUNCTION IN SUCH CASES.,,,,

The defence of laches or inordinate delay is a defence in equity. Such a defence cannot be put up by a party who has acted unfairly and,,,,

dishonestly. Further, if the Court is of the view that prejudice is likely to be caused to the general public who may be misled into buying the goods",,,,

manufactured by the defendants thinking them to be the goods of the plaintiff, then an injunction must be issued.",,,,

In any event, it is settled law that in cases of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in",,,,

bringing action is not sufficient to defeat grant of injunction in such cases. [See: Midas Hygiene Industries Pvt. Ltd Vs. Sudhir Bhatia, 2004 (28) PTC",,,,

(121) SC].,,,,

PRIMA FACIE THIS COURT HAS THE TERRITORIAL JURISDICTION TO ENTERTAIN AND DECIDE THE PRESENT SUIT.,,,,

This Court finds that the plaintiff has positively asserted in its plaint that the defendants are selling their products within the jurisdiction of this Court,,,,

through the departmental store “Big Bazarâ€. The plaintiff has also placed on record a printout of the defendants†website, which specifically",,,,

states that the defendants†products are available on various e-commerce websites including “Big Bazarâ€. It is an admitted position that “Big,,,,

Bazar†has outlets in Delhi. The Supreme Court in Saleem Bhai and Others Vs. State of Maharashtra and Others, AIR 2003 SC 759 and Kamala",,,,

and Others Vs. K.T. Eshwara SA and Others, (2008) 12 SCC 661 has held that averments in the plaint have to be believed at this stage.",,,,

The plaintiff has further asserted in its plaint that the defendants are indulging in online sale of the impugned product in Delhi through another,,,,

website “Indiamartâ€. Printouts of the “Indiamart†website showing the defendants products range have been filed. A perusal of the,,,,

“Indiamart†website prima facie shows that it is an interactive website inasmuch as it permits the viewers to ask for price and specifically states,,,,

“before dispatching the product, they are firmly tested and checked by the team of quality controllersâ€. Accordingly, in the present case the",,,,

“purposeful availment†as well as “sliding scale†and “effects†tests as stipulated in Banyan Tree Holding (P) Limited Vs. A. Murali,,,,

Krishna Reddy and Anr., 2010 (42) PTC 361 (Del) are satisfied.",,,,

Even defendant no.2 in its own affidavit dated August, 2008 filed before the Trademark Registry, has admitted that it is selling its goods",,,,

“through the entire length and breadth of the countryâ€​.,,,,

A perusal of the order sheets reveals that on 29th November, 2016, the counsel for the defendants had even admitted before the learned",,,,

predecessor of this Court that they were previously selling their goods in Delhi. Though subsequently on 08th December, 2016, the counsel for the",,,,

defendants had tried to withdraw the said statement by stating that he had never told the Court on 29th November, 2016 that the defendants had ever",,,,

sold the impugned products in Delhi, yet the learned predecessor of this Court had reiterated that what was recorded in the order sheet on 29th",,,,

November, 2016 was correct. The Supreme Court has repeatedly held that the superior Courts in India are the Courts of Record and what is recorded",,,,

in the Courtâ€s order is correct and cannot be contradicted by the counsel for the parties (See: State of Maharashtra Vs. Ramdas Shrinivas Nayak,,,,

and Another, (1982) 2 SCC463 and Apar (P) Ltd. and Another Vs. Union of India and Others, 1992 Suppl. (1) SCC 1). In view of the aforesaid, this",,,,

Court is of the prima facie opinion that it has the territorial jurisdiction to entertain and decide the present suit.,,,,

DEFENDANTS' OFFER TO MAKE CHANGES WHILE RETAINING THE KEY ELEMENTS OF THE TRADE DRESS IS NOTHING BUT,,,,

'AN ATTEMPT TO SAIL NEAR THE WIND'.,,,,

As far as the defendants' contention that it has made some changes in its packaging/trade dress and is willing to modify its get up/trade dress, this",,,,

Court is of the prima facie view that the defendants have time and again made minor changes in their packaging in an attempt to continue to mislead,,,,

the purchasers and make it more difficult for the plaintiff to protect its mark/trade dress. It is pertinent to mention that throughout these proceedings,,,,

the defendants persisted in retaining the following elements:-,,,,

a) Blue colour similar to that of plaintiff.,,,,

b) Bottle shape identical to plaintiff with almost identical indentations.,,,,

c) A flag device with the brand EVEREST written in a script almost identical to the plaintiffâ€s PARACHUTE. In most suggestions, the Flag Device",,,,

has a green outline and a dark blue interior, though in two of the proposals the defendant did agree to change to the colour Orange/Red.",,,,

d) Almost identical device of broken coconut with a splash of coconut water.,,,,

e) Almost identical coconut tree.,,,,

f) All descriptive and other written material in white on the blue background.,,,,

In a similar situation, the Bombay High Court in R.R. Oomerbhoy",,,,

Private Limited Vs. Court Receiver, High Court, Bombay and Anr., 2003 (27) PTC 580 had aptly referred to the following observations of the Master",,,,

of the Rolls, Lord Greene in Wright, Layman & Umney Ltd. Vs. Wright, 1949 (46) RPC 149:-",,,,

“It has been said many times that it is no part of the function of this Court to examine imaginary cases of what the defendant could or could not do,,,,

under this form of injunction. The best guide, if he is an honest man, is his own conscience; and it is certainly not the business of this Court to give him",,,,

instructions or hints as to how near the wind he can sail. Honest men do not attempt to sail near the wind.â€​,,,,

DEFENDANTS HAVE NOT EVEN DEFENDED THE USE OF SIMILAR MARK FOR THEIR EVERSTAR JASMINE HAIR OIL,,,,

It is pertinent to mention that the defendants have not defended the use of similar mark for their EVERSTAR JASMINE Hair Oil. The said act,,,,

prima facie shows that the intent of the defendants has always been to deceive the public and to pass of its goods as that of the plaintiff. It has been,,,,

wisely said that “what is worth copying is worth protectingâ€​.,,,,

TRADING BY THE DEFENDANTS IN THE PRESENT CASE IS NEITHER HONEST NOR FAIR.,,,,

To conclude, this Court refers to the statement of law laid down by the Division Bench in B.K. Engineering Co. Vs. UBHI Enterprises (Regd.) &",,,,

Anr., AIR 1985 Delhi 210 that “it is essential that trading must not only be honest but must not even unintentionally be unfair. If it is shown that a",,,,

product or a business of a trade has acquired a distinctive character the law will restrain a competitor from using that other's name. A line must be,,,,

drawn somewhere between honest and dishonest trading, between fair and unfair competition.""",,,,

In this case there can be no doubt that the defendants intend to trade upon the plaintiff's reputation as well as goodwill and wants to bring its,,,,

bottles, trade dress, label and shape as close to the plaintiff as possible.",,,,

RELIEF,,,,

Consequently, the defendants, their partners, principals, directors, officers, employees, agents, distributors, suppliers, affiliates, subsidiaries,",,,,

franchisees, licensees, representatives, group companies and assigns are restrained from manufacturing, distributing, exporting, selling, offering for",,,,

sale, advertising, promoting, displaying and/or using, in any manner whatsoever, the impugned products namely EVEREST COCONUT OIL and/or",,,,

EVEREST JASMINE HAIR OIL and/or any other product bearing any other label/trade dress/packaging/mark/bottle shapes/shape of jars,,,,

deceptively and/or confusingly similar to the plaintiffâ€​s trade marks/labels/packaging/bottle shapes for the PARACHUTE (labels),",,,,

FLAG DEVICE,  BROKEN COCONUT DEVICE, PARACHUTE BOTTLE, PARACHUTE JAR and/or PARACHUTE",,,,

ADVANSED JASMINE (labels) and/or variants and the unique/distinctive trade dress/bottle shapes/shape of jars relating thereto as a trade,,,,

mark/label or part of a trade mark/label, trade name or a part of trade name, domain name or a part of domain name or in any other manner",,,,

whatsoever.,,,,

Accordingly, I.A. No.14758/2016 stands disposed of.",,,,

CS(COMM) 1569/2016,,,,

List the matter before the Joint Registrar for admission/denial of documents on 10th October, 2018.",,,,