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Asian Paints (I) Ltd. v. Ved Prakash Srivastava
Factual and Procedural Background
The plaintiff, engaged in the manufacture and marketing of paints, varnishes, enamels, and related products for over 50 years, filed a suit for permanent injunction, copyright infringement, passing off, damages, and delivery up against the defendants. The plaintiff is the registered proprietor of the trademark APCOLITE and the label of APCOLITE with the device of GATTU, as well as the copyright owner of the artistic work GATTU and related artistic works registered under the Copyright Act. The plaintiff claimed exclusive rights over the distinctive colour scheme, getup, and layout of its APCOLITE synthetic enamel containers, which incorporate the GATTU device and the name ASIAN PAINTS.
The plaintiff alleged that the defendants were manufacturing and marketing synthetic enamel products using the device of GATTU and adopting a similar colour scheme and container design, thereby infringing the plaintiff's registered trademark and copyright. An ex parte ad interim injunction was granted restraining the defendants from manufacturing, marketing, or selling products bearing the infringing marks and colour schemes. A Local Commissioner was appointed to inventory the infringing goods at the defendant’s premises. Despite being served and appearing through counsel, the defendants failed to file a written statement and were proceeded against ex parte. The plaintiff led evidence by way of affidavits and proved trademark and copyright registrations along with photographs of the plaintiff’s packing materials.
Legal Issues Presented
- Whether the defendants' use of the device of GATTU and the colour scheme and design of the containers infringes the plaintiff's registered trademark and copyright.
- Whether the defendants' use of the marks ARSIAN/NECOLITE amounts to passing off and infringement of the plaintiff’s corporate name and trademark rights.
- Whether the plaintiff is entitled to a permanent injunction, delivery up of infringing goods, damages, and costs.
Arguments of the Parties
The opinion does not contain a detailed account of the parties' legal arguments.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Tata Iron and Steel Co. Ltd. v. Mahavir Steels, 47 (1992) DLT 412 | Phonetic similarity of trademarks can mislead consumers; protection of consumer interest; aping of trademark not allowed. | The court relied on this precedent to hold that the defendants' use of a deceptively similar trademark infringed the plaintiff's registered trademark and misled consumers. |
| Pidilite Industries Pvt. Ltd. v. Mittees Corporation, 1989 PTC 151 | Even with different prefixes, marks can be deceptively similar in sound and appearance, leading to likelihood of deception among average customers. | The court applied this principle to find that the defendants' similar colour scheme and getup created a likelihood of deception, justifying injunction against their use of the mark. |
| Adidas Salomon Ag & Ors. v. A. Dhawan, 118 (2005) DLT 560 | Principles supporting grant of damages in trademark infringement cases. | The court referred to this precedent in awarding punitive damages despite lack of evidence on actual damages. |
| Microsoft Corporation v. Yogesh Papat & Anr., 118 (2005) DLT 580 | Support for awarding damages and protection of intellectual property rights. | Used by the court to justify punitive damages granted to the plaintiff. |
| Times Incorporated v. Lokesh Srivastava, 2005 (30) PTC 3 (Del.) | Grant of punitive damages in intellectual property infringement cases. | Supported the court's decision to award Rs. 2 lakhs as punitive damages to the plaintiff. |
Court's Reasoning and Analysis
The court analyzed the plaintiff's unrebutted evidence, including trademark and copyright registrations and the photographs of the plaintiff's packing materials. Upon comparison, the court found that the defendants had copied the plaintiff's distinctive colour scheme, getup, layout, and the GATTU device, which are protected artistic works and trademarks. The defendants' use of marks such as NECOLITE and ARSIAN was found to be deceptively similar to the plaintiff's registered marks APCOLITE and ASIAN PAINTS, creating a likelihood of consumer confusion and amounting to dishonest conduct. The court relied on established principles from precedent cases emphasizing protection against trademark aping and the need to safeguard consumer interests. The defendants’ failure to contest the suit substantively further supported the plaintiff’s claims. Consequently, the court concluded that the defendants infringed the plaintiff’s trademark and copyright rights and engaged in passing off.
Holding and Implications
DISPOSED OF in favour of the plaintiff.
The court granted a permanent injunction restraining the defendants from manufacturing, marketing, distributing, or selling any synthetic enamels or related products bearing the infringing marks, devices, colour schemes, and designs. The defendants were ordered to deliver up the infringing goods seized by the Local Commissioner, with the plaintiff entitled to destroy those goods after taking delivery. Punitive damages of Rs. 2 lakhs were awarded to the plaintiff despite the absence of evidence on actual damages, and costs were also granted to the plaintiff. No new precedent was set; rather, the decision applied well-established legal principles to protect the plaintiff’s intellectual property rights and prevent consumer deception.
A.K Sikri, J.—The plaintiff has filed this suit for permanent injunction, infringement of copyright, passing off, damages and delivery up, etc. against the defendants. The plaintiff is engaged in the business of manufacturing and marketing of paint, varnishes, enamels and other like products and colour concentrates for the last more than 50 years. It is the registered proprietor of the mark APCOLITE bearing No. 211175 and the label of APCOLITE with the device of GATTU under number 226466, particulars whereof are given in para 8 of the plaint. The plaintiff is also the owner of the picture of GATTU registered under the Copyright Act bearing No. A-51167/91 first published in India in the year 1959. The artistic work GATTU with ASIANT PAINTS (I) LTD. is also registered under the Copyright Act bearing No. A-51166/91 which the plaintiff claims was first published in the year 1959. Case of the plaintiff is that it has been using the trademark APCOLITE in respect of paints and synthetic enamel in a specially designed container having yellow and red colour background. In the middle of the container there is a dark green colour ribbon. The said background of red and yellow colour are used in an arrow style distinctive manner. The picture of GATTU which is the subject matter of the trademark and copyright has also been depicted. The name ASIAN PAINTS has been mentioned in the said packing material in a particular manner. In the middle side of the container there is a roundish device where the directions for use are mentioned. All the above said features of the APCOLITE containers are the original artistic work of the plaintiff who has designed the said artistic features having unique and distinctive colour scheme, getup and layout of the APCOLITE synthetic enamel which is being used for the last more than 50 years. The plaintiff is, therefore, entitled to reproduce the same. Any other person other than the plaintiff without any licence or authority in case uses the same it would amount to infringement of copyright under Section 51 of the Copyright Act, 1956. It is also claimed by the plaintiff that the said artistic work along with the trademark APCOLITE and the name ASIANT PAINTS is exclusively associated with the plaintiff and no one else. Being the corporate name ASIANT PAINTS of the plaintiff it has got various registrations, particulars whereof are given in the plaint.
2. The grievance of the plaintiff is against the defendants' manufacturing and marketing synthetic enamel by adopting the device of GATTU and it is the case of the plaintiff that by doing so the defendants are infringing the plaintiff's registered trademark as well as registered copyright in the device of GATTU. The defendants have also adopted almost similar designs of the container having yellow and red background. Along with the suit, the plaintiff had filed IA No. 9817/2001 and on 17th October, 2001 ex parte ad interim was granted restraining the defendants, their agents, representatives or any person acting on behalf of the defendants from manufacturing, marketing, distributing or selling products that is Arsian Paints or NECOLITE synthetic enamel with the same colour scheme as has been used by the plaintiff with the device of GATTU. The defendants were also restrained from using the words Arsian NECOLITE with the synthetic enamel and manufacture or market the same. A Local Commissioner was also directed to go to the business premises of the defendant No. 3 where the infringing goods were lying and prepare an inventory of the said goods in finished or unfinished condition.
3. Though the defendants were duly served and appeared through Counsel, no written statement was filed. On 8th April, 2002 nobody even appeared on behalf of the defendants and the defendants were proceeded against ex parte. The plaintiff was permitted to lead the evidence in the form of affidavits. The plaintiff had filed affidavit dated 7th May, 2002 of Sh. Nirupam Sahay, Divisional Manager and thereafter on 11th November, 2002 affidavit of Mr. Rajesh Joshi, Divisional Manager was also filed. However, due to some infirmity in these affidavits, the plaintiff, thereafter, filed another one dated 4th November, 2004 of Sh. Rajesh Joshi, Divisional Manager (North) of the plaintiff company and it is this affidavit which is taken into consideration and is treated as evidence led by the plaintiff. In his affidavit, apart from affirming those facts, stated in the plaint on oath and taken note of above, the deponent has proved different registration of trademark as well as copyright as Ex. P1 to P4. Packing material used by the plaintiff for APCOLITE synthetic enamel, the photograph of which is filed along with the plaint, is Ex. P5.
4. From the aforesaid unrebutted testimony of the plaintiff, after going through the records, particularly the registration of trademark and copyright in favour of the plaintiff and comparing the infringing containers of the defendant with that of the plaintiff s, I am of the view that the defendants have copied the same background with colour scheme, getup and layout of the plaintiff's registered trademark APCOLITE. The use of the trademark in NECOLITE synthetic enamel by the defendants is also deceptively similar with that of the plaintiff's distinctive trademark APCOLITE registered under No. 211175 as of 10th September, 1962 in relation to same goods. Likewise, manufacturing of enamel paints by the defendants under the trademark ASIAN/ARSIAN amounts to infringement of the plaintiff's corporate name. The defendants have copied the entire background of the plaintiff's feature by feature including all he descriptive matters, pictures of the animals, colour scheme, getup and layout and colour combinations. It is clearly a dishonest conduct of the defendants who have tried to ride on the goodwill enjoyed by the plaintiff in respect of its products.
5. In Tata Iron and Steel Co. Ltd. v. Mahavir Steels, 47 (1992) DLT 412, it was held that as it is self-evidence, there is a very small difference between the trademark FISCO and TISCO in the dispute like the present one although the Court is primarily concerned with the rights and obligations of the parties but nevertheless the Court is also required to protect the interest of the nameless and faceless consumers. The Court has to view the effect of a trademark on the buyer. The purchaser can be easily misled by phonetical similarity of the trademarks. Aping of trademark cannot be allowed as it confuses and deceive the customers. It seems to me that the use of the trademark FISCO by the defendants has infringed the registered trademark of the plaintiff.
6. In Pidilite Industries Pvt. Ltd. v. Mittees Corporation, 1989 PTC 151, it was held that even when the prefix in both the marks are different but while pronouncing the two marks taken as a whole, sound quite similar and even on the containers, the colour scheme and the getup is almost identical, there was likelihood of deception keeping in view the class of average customers. The application was allowed, restraining the defendants, their agents, servants, dealers, etc. from using the trademark TREVICOL or any other trademark similar to plaintiff's trademark FEVICOL till the decision of the suit.
7. The plaintiff is, therefore, entitled to the decree of permanent injunction. Following decree is passed:
(a) Decree of permanent injunction in favour of the plaintiff and against the defendants thereby restraining the defendants, their servants, agents, distributors, shopkeepers, stockists, etc. from manufacturing, marketing, distributing or selling any products i.e synthetic enamels, paints bearing the mark NECOLITE and picture of GATTU as well as colour combination and design which is the subject matter of the registered trademark No. 226466. They are also restrained from manufacturing, marketing, distributing or selling any product i.e synthetic enamel paints or any other allied and cognate goods bearing the mark ARSIAN/NECOLITE, picture of GATTU as well as similar getup, layout and arrangement of features amounting to passing off their goods as that of the plaintiff's aforesaid products, particularly packing material like B and C which infringes the plaintiff's container Annexure A.
(b) The order of delivery up of the goods seized by the Local Commissioner and given to the defendants on Superdari as per the Local Commissioner's report is also passed. The plaintiff shall also be entitled to destroy those goods after taking delivery thereof. Though no evidence in respect of the actual damages suffered is given by the plaintiff, having regard to the law laid down in the judgments of this Court in the cases of Adidas Salomon Ag & Ors.…Plaintiffs; v. A. Dhawan…Defendant., 118 (2005) DLT 560; Microsoft Corporation…Plaintiff; v. Yogesh Papat & Anr.…, 118 (2005) DLT 580 and Times Incorporated v. Lokesh Srivastava, 2005 (30) PTC 3 (Del.), punitive damages in the sum of Rs. 2 lacs are also granted to the plaintiff. The plaintiff shall also be entitled to costs. Decree be drawn accordingly.
Suit decreed.
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