Pinaki Chandra Ghose, J.:— This is an application filed by the petitioner inter alia for infringement of the petitioner's Registered Trade-Mark by using a trade-mark and/or label which resembles that of the petitioner and further from infringing the petitioner's copy-right registered under No. A-55610/99 and farther from passing off or attempting to pass or intending to pass off the design of the petitioner including the copy-right and colour scheme as of the respondents.
2. The facts of the case are as follows:—
The petitioner is a private limited company which duly took over the proprietorship concern of Kuber International (India) with all its assets and liabilities. By virtue of such taking over of the said company the petitioner is now carrying on business of manufacturer and marketing of khaini, chewing tobacco, pan masalas, gutkhas etc. and the said proprietorship concern merged with the petitioner in or about June, 1999. The petitioner's case is that the petitioner has a distinctive design, colour scheme and get up which is an artistic work under the meaning of Copyright Act, 1957 and the said design is duly registered under the provisions of Trade and Merchandise Marks Act, 1958 on June 22, 1989 in respect of khaini. The said registration is still valid and subsisting.
3. The petitioner after acquiring the business of the said Kuber International (India) is presently the proprietor of the said trade-mark and entitled to use the same to the exclusion of others. The petitioner since 1984 is using the said design of pouches and in fact the petitioner's turnover increased since then from Rs. 7,77,861.07 p. in 1989-1990 to Rs. 3,77,11,468 in 1999-2000. The petitioner also spent huge amount in respect of promotional expenses by way of advertisement.
4. According to the petitioner, the products of the petitioner are purchased by ordinary class of people mostly illiterate and the wrapper design including its colour scheme and get up have become wholly identified with the petitioner. According to the petitioner, the respondent No. 2 is distributing khaini and gutkhas of various manufacturers all in pouches and/or sachets having design, get up, colour scheme and dimension deceptively similar to the petitioner's said distinctive pouch design. The product of the respondents bearing the trade-mark “CHAKOR” instead of the word “KUBER” has represented in the petitioner's pouches.
5. The respondent No. 2 is getting products of the respondent No. 1 from outside Calcutta and are selling the same in Calcutta and at various Districts of West Bengal and thereby damaging the market and reputation of the petitioner in Calcutta and in West Bengal. The acts of the respondents are nothing but an action of passing off of the respondents' said products as and for those of the petitioner sold under the trade-mark “kuber”.
6. The further case of the petitioner that the unauthorised use of the impugned packaging design by the respondents which is similar to that of the petitioner and constitutes an infringement of copy-right and trade-mark besides passing off by the respondents.
7. Mr. Chatterjee appearing on behalf of the petitioner submitted that the colour combination, size and the design of the pouch which are used by the petitioner in respect of its product with a trade-mark “Kuber” and which also contains the photograph in the middle of the said pouch, a copy of the said pouch is also annexed to the petition. He further drew my attention to the pouch which has been used by the respondents which also contains the same colour combinations save and except the photograph is different which is being used in English as well as in Hindi. It is specifically stated on the said pouch “Ready scented” and thereafter kuber in bold word and photograph appears on the said pouch with the same colour combination and excepting the name “chakor” and the photograph are different on the pouch that of the respondents which is nothing but a passing off of the petitioner's design and further he submitted that khaini is normally purchased by ordinary and illiterate persons in a casual manner and there excepts a strong livelihood of confusion and deception in the course of trade. According to him, the purchaser would not be able to read the name “Chakor” in the pouch and will be guided by the get up of the same. The adoption and use of packaging design apart from the passing off and infringement of the trade-mark is also an intention of the respondents and trading upon the reputation of the petitioner's kuber khaini and he submitted that this Court should pass an injunction restraining them from using the said design and further injunction restraining them from using the said packed design including the get up and colour scheme as annexed to the petition and further trade-mark of the petitioner which is so resembles that of the petitioner's trade-mark and further restraining them from infringing from the petitioner's registered copy-right by using the design of pouches as shown in Annexure-F to the petition and in this circumstances, he further submitted that the sale of the petitioner, the respondents have not been able to produce any sale figured even before the Court. Accordingly, he submitted that the market of the petitioner is much more than the defendant and the petitioner is a buyer user of the said trade-mark and is in the business long before the respondents started their business. He further drew my attention to AIR 2000 SC 2114, [S.M Dyechem Ltd. v. Cadbury (India) Ltd.], and submitted that it is well settled that if it is apparent from the facts of the case that the essential features of the registered mark of the petition have been copied. He further submitted that a mark is said to be infringed by another trader if, even without using the whole of it, the latter uses one or more of its “essential features”. The identification of an essential features depends upon partly on the Court's own judgment and partly on the burden of the evidence that is placed before it. According to him, the colour combination, the size and the pouch including the word appearing on the pouch save and except the word “Kuber” and the photograph which have been used by the respondents and the petitioner are different and the putting of the word “Kuber” is used by the petitioner by curving the said word whereas “Chakor” has been used by the respondents “Chakor khaini” in top of the photograph, whereas the petitioner has used “Kuber” on the top of the photograph in a curved way and “Khaini” has been used after the photograph. According to him, this is enough to confuse the buyer of the khaini and further according to him the dis-similarities are such which cannot strike the person who will purchase the same. Accordingly, he submitted that the case which has been made out by the petitioner for infringement of trade-mark has been proved by the petitioner and he further/submitted that the infringement action by way of this petition has been proved by the petitioner.
8. He also submitted that the get-up of the pouch is such that can deceive a person in our country and further the user of such khaini is by a class of illiterate person and there is every possibility of being deceived if the respondents are allowed to use the said pouch in the present form. He further submitted that the petitioner has also a copy-right in the matter in respect of such artistic combination of colour and the photograph and the words used by them and further it is a registered copy-right and therefore, the respondents' act to use such copy-right of the petitioner is nothing but infringement of copy-right that of the petitioner. He further contended that since the size, colour combination and the get-up are almost same, there is every likely to pass off the petitioner's product by the respondents.
9. Accordingly, he submitted that in this case injunction should be passed in favour of the petitioner restraining them from dealing with and disposing of the said mark and/or using from the said get-up, colour combination, size on their pouch.
10. Mr. Mukherjee appearing on behalf of the respondents submitted that it is not necessary further to file any affidavit since they do not wish to file any affidavit and the matter can be disposed of on the basis of the petition itself.
11. He further submitted that it the Court passes an order of injunction, the Court shall also examine the differences and dissimilarities in respect of the mark used by the respondents. He submitted that there is no question of being deceived inasmuch as the photograph on the pouch is different. Using of the words on the pouch is totally different and further the name is also different. Therefore, the first question is whether there is any common feature which has been copied by the respondents. According to him, the only common feature in the pouch is nothing but the colour assuming is almost nearby, but even then there more uncommon elements on the said pouches and accordingly he submitted that there is no question of any copying being made by the defendants and further according to him, dissimilarities on the said pouch are such which can be easily found by the buyers.
12. He further took a point that the petitioner is not the registered trademark owner as has been submitted by Mr. Chatterjee. There is no annexure in the documents to show that he is the owner of the trade mark. He further submitted that the defendants' wrapper containing his own name, therefore, there cannot be any scope for purchaser being mislead by the same. Accordingly, he submitted that no injunction can be passed in this matter. He further relied upon a judgment cited by Mr. Chatterjee (AIR 2000 SC 2114).
13. He further drew my attention to the points considered by the Hon'ble Supreme Court for grant of temporary injunction and he submitted that the Supreme Court has held that broad principles applicable to infringement actions and in particular two devices, labels and composite mark. According to him, there is no question of essential features of the petitioner have been copied by the respondents. The name of the product is different, the using of the words on the lable is different. Therefore, there is no question of any deception of the customer in purchasing the said product.
14. He further submitted that it has already been held that dissimilarities in essential features marks more important than some similarities. At this stage it would be proper for me to quote from the said judgment cited by Mr. Mukherjee which is as follows:—
“When the question arises whether a mark applied for bears such resemblance to another mark as to be likely to deceive, it should be determined by considering what is the leading character of each. The one might contain many, even most, of the same elements as the other, and yet the leading, or it may be the only, important left on the mind might be very different. On the other hand, a critical comparison of the two marks might disclose numerous points of difference, and yet the idea which would remain with any person seeing them apart at different times might be the same. Thus, it is clear that a mark is infringed if the essential features, or essential particulars of it, are copied. In cases of device marks, especially, it is helpful before comparing the marks, to consider what are the essentials of the plaintiffs device. The trade mark is the whole thing-the whole picture on each has to be considered. There may be differences in the parts of each mark, but it is important to consider the mode in which the parts are put together and to judge whether the dissimilarity of the part or parts is enough to make the whole dissimilar. It has been said that if the only resemblances between two marks are in parts which are common, so that the owner of the one has taken nothing which is peculiar to the other, then there are at all enents in infringement, at any rate unless the plaintiff had a distinctive arrangement of the common elements.”
15. He further submitted that to deceive is one thing and to cause confusion is another. According to him, there is no question of any deception inasmuch as the mark “Kuber” is totally different that of the “Chakor”. Therefore, there is no question of deceive can arise in this matter. Further, he submitted that the scope of a buyer being deceived, in a passing of action, the principles laid down by Lord Romer LJ. in “Payton & Company v. Snelling Lampard & Company”, (1900) 17 RPC 48, which is approved by the Hon'ble Supreme Court in AIR 2000 SC 2114 (supra), which may be reproduced hereunder:—
“As to scope of a buyer being deceived, in a passing off action, the following principles have to be borne in mind Lord Romer, LJ has said in Payton & Co. v. Snelling Lampard & Co., (1900) 17 RPC 48, that it is a misconception to refer to the confusion that can be created upon an ignorant customer. The kind of customer that the Courts ought to think of in these cases is the customer who knows the distinguishing characteristics of the plaintiff's goods, those characteristics which distinguish his goods form other goods in the market so far as relates to general characteristics. If he does not know that, he is not a customer whose views can properly be regarded by the Court. In Schweppes' case, Lord Halsbury said, if a person is so careless that he does not look and does not treat the label fairly but takes the bottle without sufficient consideration and without reading what is written very plainly indeed up the face of the label, you cannot say he is deceived.”
and he submitted on the basis of such approval that no case has been made out by the plaintiff to get an injunction in the matter.
16. Mr. Chatterjee appearing on behalf of the respondents in reply produced a “Form TM-24” requesting the Registrar to enter the name of the petitioner on the Register of Trade Marks as proprietor of Trade Mark No. 512295 in clause 34 as from April 1, 1997. It appears that the said request was made only on 22nd February, 1999 for change of registered proprietor in respect of trade mark.
17. After considering all these facts and the get-up produced before me for such ‘Kuber Khaini’ as well as ‘Chakor Khaini’ in my opinion save and except the colour combination, the name and the get-up are different altogether and further I do not have any hesitation to hold that there are dissimilarities appearing on the face of those pouches/wrappers and in my opinion, there is no scope for purchaser being misled. If a purchaser wants to purchase his goods, he must know the goods he is purchasing. The different name is a piece of evidence that the buyer will go by the name as well and therefore, there is no question of being deceived. The marks, names and get-up must always be considered as a whole thing as the true test is whether the totality of the impression given both orally and visually is such that it is likely to cause mistake, deception or confusion. In my opinion, such test is absent in this matter and furthermore a buyer must know his product for which he has a choice. He certainly has a right to find out the same whether he is literate or illiterate. Therefore, following the principles expressed by Lord Romer, LJ. in “Payton & Co. v. Snelling Lampard & Co.” (supra), I do not have any hesitation to hold that this is not a fit case for granting any injunction in favour of the petitioner. However, I direct the respondents to maintain statements of accounts in respect of their sale and to furnish the same to the petitioner till the disposal of this suit.
18. For the reasons stated hereiabove this application is thus disposed of.
Application dismissed.
S.K.P