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2001 DAILYLAW 978 (DEL)

GODREJ SOAPS PRIVATE LIMITED v. DORA COSMETICS CO

2001-04-23

Mukul Mudgal

body2001
Mukul Mudgal ( 1 ) THIS suit is filed by the plaintiff praying for a permanent injunction restraining the defendants from manufacturing, selling or dealing with in any manner under the trade mark GLORY or any other mark similar to the trade mark GLORY or any im- itation of the plaintiffs CROWING GLORY soap cartons or from using the GLORY logo as set out in paragraph 6 of the plaint. The plaintiff further seeks rendition of ac- counts of profits earned by the defendants through the infringement averred. ( 2 ) INTERIM orders were passed on 6/02/1987 and after hearing counsel the following issues were framed on 12/08/1992: 1. Whether the plaintiffs mark GLORY and the related carton have ac- quired a reputation amongst the purchasing public and the trade. 2. Whether the plaintiffs are the owners of the copyright in the Crowning Glory carton including the Glory logo? 3. Whether the use by the defendant of the mark Glory and the related car- ton in respect of vanishing cream is likely to cause confusion and deception resulting in passing off? 4. Whether the defendant has infringed the copyrights of the plaintiffs in the crowning Glory carton and the Glory logo? 5. Relief. ( 3 ) THE interim order dated 6/2/1997 was confirmed by this Court on 2/02/1994. The plaintiffs evidence was recorded on 14/08/1997. The defendant s witness were not present on that date and the defendant s evidence was therefore closed and the matter was thereafter fixed for arguments. ( 4 ) THERE was no appearance on behalf of the defendants on other dates including 2/12/1999. Accordingly the defendants were proceeded ex parte, arguments heard and order reserved. ( 5 ) THE plaintiff s case, as averred in the plaint, is as under: (a) The plaintiffs manufactures and sells toilet soaps under the trade mark crowning GLORY, The trade mark is registered under the registration No, 428126 which is valid and subsisting and is part A registration as it is more than 7 years old and is thus conclusively valid under Section 32 of the Trade and Merchandise Marks Act 1958 (hereinafter referred to as the act ). M/s Chaitra Advertising Private Ltd. created the carton for the plain- tiffs and the copyright and-the carton so created was assigned to the plain- tiffs by virtue of a Deed of Assignment dated 19/12/1986 for a , consideration of Rs. M/s Chaitra Advertising Private Ltd. created the carton for the plain- tiffs and the copyright and-the carton so created was assigned to the plain- tiffs by virtue of a Deed of Assignment dated 19/12/1986 for a , consideration of Rs. 20,000. 00. Consequently the plaintiff is the owner of the copyright in the said carton and has the exclusive right to use and reproduce the same. The defendant wrongfully adopted the trade mark GLORY and a Visually identical carton in respect of identical product leading to violation of plaintiffs rights and filing of the present suit. ( 6 ) THE sum and substance of the defendant s case as set out in the written state ment, apart from being a case of bare denial, is as follows: (A) The plaintiff is not the owner of copyright in respect of the carton and logo. (b) The carton of Crowning Glory is not distinctive in character. , (c) It is denied that the word GLORY appears in a unique logo script and by using the same the purchasing public and the trade identifies the mark glory with the products of the plaintiffs. (d) The mark glory has been used and is being used by the defendants since prior to 1976. It is denied that the defendants are using GLORY mark in respect of the Vanishing cream tubes and cartons which is deceptively similar to the Crowning Glory soap carton of the plaintiff and is thus pass- ing of these goods or business as business and goods of the plaintiff. (e) Glory is being used by the defendants with respect to vanishing cream since 1976 and prior to that this mark was being used by M/s Gopalji and Co. The colour combination used by the defendants has been there since 1976 on the tubes and cartons. The receipt of the notice dated 22/5/1986 is also denied. The defendants have further submitted in the additional pleas that various trade marks such as Dora, Sharmila, Glory and Shimmar were being used by them since 1976 in respect of cosmetic goods including vanishing cream. In June 1976 M/s Gopaiji and Co. transferred the user of trade mark GLORY in favour of the defendants and accordingly an ap- plication dated 10/6/1976 was submitted before the Drugs Controller for transfer of the aforesaid licence in favour of M/s Dora Cosmetic Co. In June 1976 M/s Gopaiji and Co. transferred the user of trade mark GLORY in favour of the defendants and accordingly an ap- plication dated 10/6/1976 was submitted before the Drugs Controller for transfer of the aforesaid licence in favour of M/s Dora Cosmetic Co. and pursuance to the aforesaid drug licence the defendant has been manufac- turing the impugned goods. No copyright subsists in respect of the mark glory in favour of the plaintiff. There is no similarity in both the cartons. The defendants accordingly prayed for the dismissal of the suit. ( 7 ) AS noticed above, the defendants did not appear to lead any evidence and the evidence was closed. No one appeared for defendants even at the time of final hearing of the case. The following documents were proved by the plaintiff. A) Carton bearing the trade mark Crowning Glory, Ex. Civil Procedure Code 1/1 b) Photostat copies of the invoices issued by the plaintiff company during the period 1961 to 1975, EX. Civil Procedure Code 1/3 to EX. Civil Procedure Code 1/10. c) Copies of the orders received by the plaintiff company during the course of its business, EX. Civil Procedure Code 1/11 to EX. Civil Procedure Code 1/14 d) Advertisements on behalf of the plaintiff company JEx. Civil Procedure Codev15toex. Civil Procedure Code 1/29 e) Copy of the defendant s carton bearing the trade mark GLORY, EX. Civil Procedure Code 1/30 f) Correspondence between the plaintiff and the defendant, Ex. P 1 to P 5. ( 8 ) THE plaintiff has annexed trade mark Crowning Glory. By virtue of the decep- tive carton mark Ex. Civil Procedure Code 1/1 a statement of advertising and sale expenses have been prepared and are marked as Ex. Civil Procedure Code 1/15 tocivil Procedure Code 1/29 and the sale invoices of the plaintiff are Ex. Civil Procedure Code 1/11 to Ex. Civil Procedure Code 1/14. These documents prove that the mark crowning Glory and the distinctive carton have acquired substantial reputation and goodwill among the consumers. Due to the efforts of the plaintiff both the members of the trade and the consumers identify the plaintiffs product by each of the distinctive features of the soap carton including the colour combination, the Crowning Glory mark and its logo script and the get up particularly the profile of the lady and the cliche. Due to the efforts of the plaintiff both the members of the trade and the consumers identify the plaintiffs product by each of the distinctive features of the soap carton including the colour combination, the Crowning Glory mark and its logo script and the get up particularly the profile of the lady and the cliche. The legal notice from the plaintiff dated 17/6/1986 is Ex. P 1 and its reply is Ex. P 2. The defendant did not disclose any particulars in support of his defence nor filed any copy of the trade mark or copyright registration. In view of the above discus- sion I am, therefore, satisfied that the defendant has copied the mark Glory as well as the script of the plaintiff and the colour scheme of Chocolate, brown and pink and profile of a lady. Thus issue No. 1 is held in favour of the plaintiff. ( 9 ) ISSUE No. 2. The copyright in the Crowning Glory including the Glory logo is held by the plaintiff which consists of: (A) a unique colour combination of chocolate, brown and pink with choco- late as the background colour. (b) the trade mark Crowning Glory appears on the front and back panels and on all the sides of the cartons depicted in a particular stylised manner. On the front and the back panels, the word Glory appears in a pink and -characteristic logo script, (c) also on the front panel the profile of the lady is depicted in a particular stylized manner; (d) on the front panel the cliche appears "for the silky hair and complexion care"( 10 ) THE Crowning Glory carton was designed for valuable consideration by Mr. Dayal Patkar who produced the said work in the course of his employment with chaitra Advertising Private Limited under a contract of service for and on behalf of the plaintiff. By the reason of the circumstances in which the said artistic work was produced, the plaintiff is the owner of the legal and equitable title in the artistic work. As a matter of abundant caution the copyright in the carton was assigned to the plain- tiff by virtue of an assignment dated 19/12/1986 for Rs. 20,000. 00. The deed of assignment is Exhibit marked as EX. Civil Procedure Code 1/2. As a matter of abundant caution the copyright in the carton was assigned to the plain- tiff by virtue of an assignment dated 19/12/1986 for Rs. 20,000. 00. The deed of assignment is Exhibit marked as EX. Civil Procedure Code 1/2. Thus I find that the plaintiff has proved that it is the assignee of the copyright in the carton for crowning Glory. ( 11 ) THE defendant has not filed any details nor led any evidence. This issue is also held in favour of the plaintiff and accordingly it is held that the plaintiff is the owner of copyright in Crowning Glory carton including the Glory logo. ( 12 ) ISSUE No. 3. The plaintiff has shown that the carton of the-plaintiff and the glory mark to identify the plaintiffs product as Glory is depicted more conspicuously and prominently than the word Crowning. By using the same idea and similar images as in the plaintiff s carton the overall image of the defendant s product is similar and mis- leading as found from the comparison of the plaintiff s carton as EX. Civil Procedure Code 1/1 and the defendant s carton Ex. Civil Procedure Code 1/30. Upon considering the unrebutted evidence of the plaintiff I am satisfied that the plaintiff has proved its averment that the defendant is passing of its goods and business as the goods and business of the plaintiff. Hence issue No. 3 is also held in favour of the plaintiff. Issue No. 4. The plaintiff has shown that it is the sole and exclusive owner of copyright in the carton of Crowning Glory. The plaintiff has also shown the substantial similarity in the defendant s carton to that of the plaintiff. As discussed above, I am therefore satisfied that the defendant has infringed the copyright of the plaintiff in the Crowning Glory carton and the-Glory logo. In view of the fact that the plaintiffs evidence in support of the aforesaid issues remains unrebutted by the defendants, the plaintiff is entitled to succeed and the suit is decreed accordingly.