M/S. N. RANGA RAO & SONS v. ANIL GARG & Ors.

It may be noticed that the details in respect of the partnership firm have also been set out with relevant supporting documents as also the authority of Mr. V. Ganesh, the constituted attorney of the plaintiff vide Power of Attorney dated 06.03.2004 to institute the suit. The issue is, thus, answered in favour of the plaintiff. ISSUE NO. 2 ISSUE NO. 3 Whether the plaintiff is the proprietor both under the statutory and common law of the alleged trademarks copyrights LIA and artistic works / copyright relation to its alleged products being incense sticks / agarbathies? bearing features impugned Whether the defendant and its trademark 'LOTUS DIA' artistic identical with or deceptivelysimilar to the trademark / copyrights of the plaintiff sued upon amounting to infringementand passing off and to what effect? labels 31)IssuesNo. 2and 3have to be dealtwith togetheras they relateto the proprietorshiprightof the plaintiffas also the allegationof the defendantsinfringingthe right.

The plaintiffhas claimedthat the mark LIA is completelydistinctivemark, which is arbitrary in CS (OS) No. 860of2004 Page No. 25 of 86 nature and has no meaning. The name LIA is also stated to be extremely uncommon in the agarbathi market. The packaging is stated to have distinctive features and the general colour scheme and lay-out of the package is alleged to have an inalienable association with the plaintiff firm's LIA brand. 32)The composite effect of the shades used for each fragrance, the labeling, design lay-out as well as the unique price range is claimed to leave an indelible association with the plaintiffs firm's J \ LIA brand. The plaintiffs claim is of ownershipand of copyright in the LIA brand as also the ownership and the copyright in the entire get-up, the lay-out and trade dress. The applicationof the plaintiffbefore the TrademarkRegistry is stated to be pending and the plaintiff claims to have acquired goodwill in the mark based on sales figures.

In this behalf, the annual turn over figures have been given, which is in the range of Rs.413.17 Lakhs for the financial year of 2003-2004. 33)The plaintiff has emphasized the fact that the name DIA is similar to LIA and the word 'DIA' has been chosen with dishonest intentionof trading on the goodwillof the plaintiffsLIA. In this behalf, the crucial question would be whether the trade-name under which the defendants are marketing is actually DIA or LOTUS DIA as claimed by the defendant? CS (OS) No. 860 of2004 PageNo. 26of86 34)Learned counsel for the plaintiff sought to emphasize that the defendants could better have kept the word DIVYA which is the name of the company and the motive behind the name DIA was that phonetically and visually, it was similar to the word LIA. Not much can be made out from the plea of the plaintiff that the defendants have been selling agarbathies under different brand- names since even the plaintiff has admittedly been selling agarbathies under different brand-names. ) 35)Learnedcounsel for the plaintiff contended that the defendants had copied almostall the essentialfeaturesof the plaintiffsget-up includingthe colourscheme, logo, text, picture/ motifand the use of vernacularscripts on the side of the carton.

The details of this as alleged by the plaintiff have already been set out herein-above in the tabular form. 36)A further plea raised by the plaintiff is based on the allegation against the defendants of attempting to mislead the customers as to the source/ originof the goods. This arises from the allegation made in the plaint as well as in the report of the Local Commissioner, who visited Bangalore, to show that while the business of the defendants was being carried on at U.P. and NOIDA, the use of the scripts of Devnagri, Tamil, Kannada and Teluguwas only to give an impressionas if the productwas ofthe CS (OS) No. 860 of2004 PageNo. 27 of86 plaintiff. The address given was also stated to be incorrect. 37)The allegation of the plaintiff is of identical get-up to confuse the customer in order to ride piggy back on the reputation of the plaintiff. In this behalf, a lot of emphasishas been laid on the fact that the product packaging is an extremely important factor in the consumers' purchase decision as it indicates to the customer not >N. - I. only the factualinformationabout the product, but also an overall brand image.

An allegationhas also been made of the fact that J the defendant has used 'TM' next to its name, which is normally used for referenceto pending trademarkregistration, even though the defendants did not have a pending application for the name DIA at the time of filing of the suit. The significance of the addition of word 'LOTUS' is sought to be diluted in terms of the submissions made by leamed counsel for the plaintiff on account \ \ of two factors - firstly, the defendants admittedly attempted to file an application for registration of the mark DIA in Class 3 and the applicationwas not for LOTUS DIA and secondly, the primary ingredients of the defendants' mark is DIA and the word 'LOTUS' is an extremelyinsignificantpart of the defendants'logo, get-up and packaging. Thus, merely by adding a prefix, the defendants cannot claim that the essentialfeature is different. In this behalf, it is also statedthat the word 'LOTUS'being a name of the flower C5 (OS) No.

860 of2004 Page No. 28of86 Ml is naturally associated with fragrance and is, therefore, descriptive and laudatory in respect of agarbathies and cannot serve as a trademark in relation to agarbathies as its use in this respect is descriptive of character and quality of goods. Thus, the word LOTUS even when used on conjunction with the word DIA, it is : the word DIA which remains the essential feature of the mark. 38)The written synopsis of the plaintiff contain an elaborate list of judgments, but ultimately learned counsel the plaintiff confined the reference to only some of the judgments on each of the propositions of law, which was arising for adjudication. 39)The first aspect to be considered, as noticed above, is the impact of the use of the word 'LOTUS' as a prefix to the word 'DIA'. Learned counsel for the plaintiff contended that when two marks have an overall similarity(whetherphoneticor visually) and are J used in relation to the goods of the same description, then the mere additionof a prefix or suffix is not of much significanceas the test is of unwary purchaser of average intelligence and imperfectrecollection, who would not split the words into their component parts, but would be deceived by their overall similarity.

In this behalf, learnedcounselreferredto judgmentof the Supreme Court in Ruston & Hornsbv Ltd. v. The Zammdara EngineeringCo., AIR 1970SC 1649 = 1970 (2) SCR 222 wherein CS (OS)No. 860of2004 PageNo. 29 of86 it was held that in an action of this kind, the test as to the likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions. Where the mark is identical, in an infringement action, the Court will not enquire whether the infringementis such as is likely to deceive or cause confusion. However, where the alleged infringementconsistsof using not the exact mark on the register, but somethingsimilar to it, the test of infringementis the same as an action for passing off. The Supreme Court was dealing with two words 'RUSTON' and 'RUSTAM'. It was held that trademarkis deceptivelysimilar and the mere fact that the word 'INDIA'is addedto the respondent'strademarkof 'RUSTAM'is of no consequenceand the appellantwould be entitled to succeedin the action of infringement of the trademark.

40)Learned counsel for the plaintiff next referred to judgment of the Supreme Court in Parle Products ("P) Ltd. v. J.P. & Co., Mvsore. PTC (Suppl) (1) 346 (SC) to advance the proposition that if the overall visual impression from the colour scheme, arrangement of lettering, shape of container, packaging, get-up, trade dress leads to confusionin the minds of the consumeras to the source/ origin of the goods and renders the two goods deceptively similar, especially in the case of unwary and gullible customers, it would CS (OS) No. 860 of2004 Page No. 30 of 86 amount to passing off as well as infringement of the copyright the packaging and there would be sufficient justification for restraining the defendant. In such cases, proof of actual confusion was not required. It was observed by the Supreme Court as under:- "

The word 'Glucose is one and 'Gluco Biscuits' on the Biscuits' other occupy a prominentplace at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs'goods, he might easily mistake the defendants'wrapperfor the plaintiffs'if shown to him some time after he had seen the CS (OS)No. 860of2004 p^gg 57 J O plaintiffs. After all, an ordinary purchaser is not gifted with the powers of observation of a the defendants' wrapper Sherlock Holmes. We have therefore no doubt is deceptively similar to the plaintiffs' which was registered. We do not think it necessary to refer to the decisions referred to at the bar as in our view each case will have to be judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it.

" (emphasis supplied) 41)Learned counsel for the plaintiff also referred to judgment of Yves St Laurent Parfums & Anr. v. Louden Cosmetics Ltd., 39 IPR 11, which is a judgment of the High Court of New Zealand. Both the parties to the suit were manufacturers of different perfumes and the issue related to the infringementof trademark and passing off of the brand-names of different perfumes. It was observed as under i 4 "The plaintiffs allege that the defendant has used similar trade marks, get-up or packaging, smell or attributes individually or together or in any combination and have thereby caused the defendant's products to be passed off as and for products of or associated with or originating from or having the endorsement or approval of the plaintiffs. They also allege that the defendant has deceived or caused confusion of the public and by reason and will of all continue to cause loss to the plaintiffs. such conduct caused The law of and goodwill reputation misappropriation misrepresentation. passing protects another's The proscribed activity bv proscribing CS (OS) No.

860 of2004 Page No. 32 of 86 trader's services, involves a misrepresentation made by a person in the course of trade to prospective consumers misrepresentation being reasonably foreseeable to the business or goodwill of as injurious trader and in fact damaging to the another goodwill of the trader who sues. The nature of a relevant misrepresentation can vary. Often it takes the form of a representation that goods t being sold by the defendant are a plaintiffs goods. There may, however, be a representation that the goods being sold by the plaintiff calculated damage being the appropriation by the defendant of customs which would have gone to the plaintiff. An example is found in the case of Bristol Conservatories v. Conservatories Custom Built Ltd. (1989) RFC 455. As the essence of the tort is damage to a another's the form of in which It is to be misrepresentation, functions, may vary and yet be actionable. not necessary business . competitor's misrepresentation, a misrepresentation defendant's the way goodwill goods, Ltd. a bv invoking of misrepresentation.

It may be acute and involve a complex A a crass. of mechanisms representation may operate intellectual plaintiffs recollection and in a number of ways, no single property, one of which may be compelling combination In the of which is effective. contemporary market, where products are advertised and promoted in ways which effectively use the qualities of electronic media, and plainly exploit modern knowledge sociology, misrepresentations may relate to distinctive mental images and connotations in which a plaintiffhas acquireda proprietaryinterest. psychology the tort is no longer anchored, as in its early nineteenth century formulation, to the name or mark of a product or business. It is wide enough to encompass other CS (OS) No. 860of2004 PageNo. 33 of86 V V. visual images, which descriptive material, such as slogans radio, television, or newspaper advertising campaigns can lead the market associate with a plaintiffs product, provided always that such descriptive material has become part of goodwill of the product.

Cadbury Schweepes v. Pub Squash Co. (1981) 1 All ER 213 at 218g; (1980) 32 ALR 387. deception A relevant not be intentional, but where it is logic may result in a the premeditated conduct has finding that succeeded: Cadbury Schweppes v. Pub Squash Co, supra, at All ER 221c; Slazenger & Sons v. In the Feltham & Co (1889) 6 RFC 531 at 538. present case, there was a deliberate policy of emulation of the names and get-up of designer fragrances and this policy has been practised for many years. That the policy has generally been successful conclusion. it is not by mere coincidence but a Further, foreseeable consequence of the design policy that retailers should apprehend and exploit the Carroll's correlation perfumes and the fragrances of the great designer houses. is an inevitable Constance between / I turn now to consider the second cause of action specifically in relation to the respective goods of the plaintiffs and the defendant.

I do not think it necessary to add much to the comparisons of names and appearances judgment. considered earlier Paris / Paradise One need onlv look from one product to the other to be struckbv the similaritvwhich is the product of the nature of the goods (female perfumes), the names, and the combination of duskv pink, black and gold. In my opinionthe CS (OS)No. 860of2004 p^gg 34 "•'K . J 7

" (emphasis supplied). 43)Learned counsel for the plaintiff further submitted that even if the defendants are not enjoined from using specific colours, they ^ can be enjoined from using them in particulargraphic display, which is confusingly similar to the logo format implied by the plaintiff. This plea really arises from the stand of the learned counsel for the defendants that the plaintiff cannot have copyright in specific colours, especially taking into consideration the nature of the product, e.g., incense with fragrance of sandalwood will be required to have a trade dress of sandalwood. In this behalf, learned counsel referred to judgment of the Court of Appeals, Ninth Circuit of U.S. in Vision Sports Inc. v. MelvilleCorp.. 12' USPQ 2d 1740. In the said case, a judgment of the Court of Appeals, Fifth Circuit in Cf. Chevron Chem. Co. v. Voluntary PurchasinRGroups, Tnc . 21 USPQ 904 was quoted with approval where it was observed as under ... "protect '(2) combination of particular hues of these colors, arranged in certain geometric designs, presented in conjunctionwith a particularstyle of printing, CS (OS)No.

860of2004 PageNo. 39of86 in such fashion that, taken together, ..." a distinctive visual impression. they create 44)Another interesting observation made in the said judgment of Vision Sports Inc.'s case (supra) relates to the finding that a conscious imitation supports presumption that similarity will cause customer confusion. Likelihood of confusion in the trade dress context is evaluated by reference to the same factors used in the ordinary trademark context; strength of the trade dress, /• similarity between plaintiffs and defendant'strade dress, evidence of actual confusion, marketing channels used, type of goods and likely degree of purchaser care, and the defendant's intent in selecting its trade dress. The likelihood of confusion determination in trade dress cases must be made in the light of 'the total effect of the defendant's product and package on the eye •7 of the ordinary purchaser'.

45)Learned counsel also advanced the proposition that while second comer will not be barred from making and selling the same product as the first comer, the second comer is under an obligationto name and dress his product in such a manner as to avoid all likely confusion. In this behalf, learned counsel referred to judgmentof the Court of Appeals, Second Circuitin Harold F. Ritchie, Inc. v. Chesebrough-Pond's.Inc.. 126 USPQ 310 where it was specifically observed that as under C5 {OS)No. 860 of2004 PageNo. 40 of86 / J "Second comer has duty to so name and dress his product as to avoid all likelihood of consumers confusing it with product of first comer: although second comer may endeavour to capture first comer's market, he must do this by giving his product a name and dress descriptive and fanciful in its own right and selling it on its own merit, not by confusing public into mistakenly purchasing his product for competitor's; second comer must create reputation of his own and not trade on goodwill another product already established considerable risk: important determining whether second comer's entrance into market creates possible confusion is any evidence of conscious imitation of first comer's product. should whether determining similarity, products In consider confusing conjunction with similarity of presentation of products with respect to their design and general appearance, tubes, price, size, smell and other containers, nonfunctional nothing to prevent second comer from selling identical product of the first comer, providing secondcomer so names and dresses its product test has not as to avoid all likely confusion; been met where not only was there conscious imitation, but also actual confusion resulted from similarity of name and dress.

" admittedly aspects; (emphasis supplied) 46)The aforesaid judgment was referred to with approval in the judgment of Court of Appeals, Second Circuit in Perfect Fit Industries, Inc. v. Aeme QuiltingCo.. Inc.. 205 USPQ 287. 47)Learned counsel for the defendants, on the other hand, has referred to the fact the mark of the plaintiff is still CS(OS)No. 860 of2004 unregistered. It is, thus, contended that the action can only be one of passing off. In this behalf, learned counsel has referred to judgment of the Apex Court in American Home Products Corporation v. Mac Laboratories Pvt. Ltd. & Anr., AIR 1986 SC 137 where in 36, it was observed that the proprietor of an unregistered trademark whose mark is unauthorisedly used by another cannot sue for infringement of such trademark and his remedy only lies in bringing up of passing off action even though the same is an inconvenient remedy as compared to infringement action.

This is so since in a passing off action, the plaintiff will have to prove that his mark has by user acquired such reputation as to become distinctive of the plaintiffs goods so that if it is used in relation to any goods of the kind dealt with by the plaintiff, it will be understood by the trade and public as meaning that the goods are the plaintiffs goods. 48)It was, thus, contended by learned counsel for the defendants that once the parameters of a passing off action are considered, the defendantsin any case are entitledto escape liabilityif they can show that the added matter is sufficientto distinguishtheir goods from those of the plaintiff. In this behalf, learned counsel has referred to judgmentof the Apex Court in Kavirai Pandit Diirga Putt Sharma v. Navaratna Pharmaceutical Laboratories AIR CS (OS)No. 860 of2004 PageNo. 42 of86 1965 SC 980 where it was observed in para 28 as under The other ground of objection that the "28. findings are inconsistent really proceeds on an in appreciating the basic differences between the causes of action and right to relief in suits for passing off and for infringement of a registered trade mark and in equating the essentials of a passing off action with those in respect infringement of a registered trade mark.

We have already pointed out that the suit by the respondent complained both of an invasion of a statutory right under Section 21 in respect of a registered trade mark and also of a passing off by the use of the same mark. The finding in to which the learned favour of the appellant an action complaining Counsel drew our attention was based upon dissimilaritv of the packing in which the goods the difference in of the two t)arties were vended, the phvsical appearance of the two packets bv reason of the variation in their colour and other features and their general getup together with the circumstances that the name and address of the manufactorv appellant a limited for negativing prominentlv displaved on his packets and these features were also set out respondent's claim that the appellant had passed off his goods as those of the respondent. These matters which are of the essence of the cause of action for relief on the ground of passing off in an action for play but infringementof a registeredtrade mark by the registeredproprietorwho has a statutoryright to that mark and who has a statutoryremedyin the event of the use by another of that mark or a colourable imitation thereof.

While an action for passing off is a Common Law remedv being in substance an action for deceit, is. a passing off bv a person of his own goods as those of another, that is not the gist of an action for infringement. The actionfor infringementis a statutory remedy conferred on the registered proprietor of a registered trade mark for the CS (OS) No. 860 of2004 PageNo. 43 of86 Qiy the Act). vindication of the exclusive right'to the use of the trade mark in relation to those goods" (Vide Section 21 of The use by the defendant of the trade mark of the plaintiff is to essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in rest)ect off consists merely of passing y colourable use of a registered trade mark, essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for the plaintiffs there is an imitation, rights are violated. likely to deceive, but where between infringement of the same trade mark.

But there In the correspondence between the two cases. an action for infringement, the plaintiff must, no the use of the defendant's doubt, make out that mark is similarity and the defendant's mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion further evidence is required to establish that the Expressed in plaintiffs another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up packing and other writing or marks on the goods or on the packets in which he offers his goods for sales show marked differences, or indicate clearly a trade origin differentfrom that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the, added matter to distinguish his is sufficient from those of the plaintiff.

" (emphasis supplied) 49)The DivisionBench of this Court in M/s. Johnson & Johnson fc Anr. V. Christine Hoden India (PI Ltd. & Anr.. 1988 PTC 39 observedthat the main questionis not the intentionof defendant CS (OS) No. 860of2004 PageNo. 44 of86 in using certain words, but the probable effect of such action on minds of the customer. Thus, colour scheme, lettering style, etc. become of significance. 50)Learned counsel for the defendants also strongly relied on the fact that the mark of the defendants is a composite mark LOTUS DIA and not merely DIA and, thus, the passing off action should be totally ruled out. In this behalf, learned counsel relied upon the judgment of learned Single Judge of this Court in Bharat Hotels Limited v. Unison Hotels Limited, 2004 (28) PTC 404 (Del). The matter in issue related to the use of the word 'GRAND' in respect of the hotel industry. 51)A reference was also made to the judgment of a learned Single Judge of this Court in Sunstar Lubricants Limited v.

Federal Chemicals Industries, 1996 V AD (Delhi) 594 where an interim injunctionwas declinedon the groundthat there was no deceptive similarity between the trademark GOLDEN CRUISER 1200 and SUPER SUN CRUISER2001. It may be noticedthat the finding was arrived at on the basis that the two trademarks were phoneticallydifferent and the get-up and colour scheme of the boxes were entirely different. 52)Similarly, in Fitchetts Ltd. v. Loubet & Co. Ltd.. (1919) 36 R.P.C. 296 Ch.D. in respectof soap and soap powder, the action CS (OS) No. 860 of2004 PageNo. 45 of86 A v'- for infringement and passing off was rejected in respect of the two trademarks LITO and Y-TO as compared to RITO. 53)In Thomas A. Smith Ltd.'s Appln., (1913) 30 R.P.C. 363 Ch.D., the application for registration was allowed for collars and shirts under the trademark LIMIT and it was held not to be similar with SUMMIT. 54)Learned counsel the defendants submitted that establishing confusion and deception, overall impact has to be seen in entirety and not parts have to be picked up in isolation.

Learned counsel referred to the judgment of Division Bench of this Court in Kellogg Companv v. Pravin Kumar Bhadabhai, 1996 PTC (16) 187. The contention of similar get-up or trade dress was held not to be tenable. The dispute related to the plaintiffs sale of cornflake with cartons having the description inscribed as VU KELLOGG'S CORNFLAKE. The respondent was selling cornflake using a carton more or less similar in size, but with the title AMIS ARISTO CORN FLAKES written just at the place appellant's display KELLOG'S CORNFLAKE. The important aspect was in relation to the principles to be kept in mind in respect of confusion deception. The Division Bench came to the conclusion that the principal of fading memory or imperfect recollection should not CS (OS)No. 860 of2004 Page No. 46 of 86 be pressed too far and the goods in question sold to people belonging to middle class or upper middle class, who are fairly educated, has to be tested accordingly.

It was held that there was no chance of deception. The Division Bench in para 10 while dealing with the aspect of trade dress observed as under degree trader's "10. The law relating to 'trade dress' is very clear. Kerly in 'Law of Trade Marks' (12th Ed., 1986, para 16.67) says that it is usually true in a recognised by their general appearance, or 'get- up'. Accordinglv, resemblance or 'get-up' is not uncommonlv an ingredient in passing off and it imitation of get-up alone to is possible amount Such cases are rare, since few traders rely on get-up alone to distinguish their goods, so that trade names and word trade marks are ordinary present too; " and the author says: to passing off. " and in these days, in this country, a difference in names is enough to warn they are getting one the public that others" trader's (Sapers v. Specters (1953)70 RFC 173)." (emphasis supplied) 55)In paras 15 to 23 of the judgment, the Division Bench referred to the judgment of the House of Lords in Schweppes Ld. v.

Gibbens. (1905) 22 R.P.C. 601 as under:- v' :4 , "15. In Schewappers Ltd. V5. Gibbens (1905) 22 RFC, the appellant was selling Soda Water in bottles, with a neck label around then, the body of the label bring of chocolate colour with a white border and a red medallion in the centre respondents, subsequently, sold soda water in bottles with a, similar neck lable round them in somewhat label. The CS (OS)No. 860 of2004 Page No. 47 of 86 (p ^ labels appellants' red medallion. some colour and with a central However, showed 'Scheweppe's soda water' printed on them in white characters while respondents' contained the name 'Gibbens Soda Water'. Action by plaintiffs failed. It was held by the House of Lords cannot be presumed in spite of the similarities in the labels colour and medallion because the bottles, distinguishing feature of name adopted by defendants showed that they had no intention to deceive purchasers.

Lord Halsbury LC said : that a fraudulent intent "I should have thought if vou looked at the two bottles together no human being could have mistaken one for If 'Royal' and 'Flag' were the other. sufficiently distinctive in the case to which the learned counsel called our attention (Payton & Co. vs. Snelling (17 RFC 628), I Lampard & Co. should have thought 'Gibbens' and 'Schwappes' are equally impossible to be confounded with each other. " Lord Halsbury said it was 'ridiculous' 16. apply the principle of similarity in trade-dress in such a situation. He said : case, introduced colourably although "I can quite understand a case in which, a his own defendant name, yet the nautre of the wrapping the nature of the package itself, up, the share of the in this or, bottle, mav all have been so closelv imitated that the mere introduction of some distinctive mark to which no ordinarv applied his mind, will not get rid of to pass one intention the obvious goods off as the other: but to apply the propositionto this case appearsto me to be a little short of ridiculous. observer CS (OS) No. 860 of2004 PageNo. 48of86 It was held that

This controversy has arisen on account of the fact that the principles laid down in Kellogg Company's case (supra) were based on the dictum of Lord Halsbury in Schweppes Ld.'s case (supra) where in para 23 a reference was made to a customer who was so careless that he does not look and treats the label fairly, but takes the bottle CS (OS) No. 860 of2004 Page No. 51 of 86 without sufficient consideration and without reading what written very plainly. Such a customer was held not a person who would form the basis of a test for passing off. Learned counsel for the plaintiff submitted that this dictum was a departure from the settled law of the Apex Court in relation to passing off matters that the case of passing off has to be decided on the comparison of broad similarities and the test is always from the point of view of an unwary purchaser. Learned counsel contends that judgment was impliedly overruled in view of the subsequent judgments of the Supreme Court.

58)In M/s. S.M. Dvechem Ltd. v. M/s. Cadburv (India) Ltd., AIR 2000 SC 2114, the dictum of Lord Halsbury was relied upon and it was laid down that in case of an infringement of passing off, the broad dissimilarities need to be compared. The comparing marks were of the plaintiff PICNIK and defendant PICNIC. Injunction was declined. It was observed in para 54 as under "53. As to scope of a buyer being deceived, in a passing off action, the following principles have to be bome in mind. Lord Romer, LJ has (1990) said in Pavton & Co. v. Snelling Lampard & Co., a 17 RPC 48 misconception to refer to the confusion that can The be created upon an ignorant customer. kind of customer that the Courts ought to think of in these cases is the customer who knows the of the plaintiffs distinguishing characteristics goods, those characteristics which distinguish his goods from other goods in the market so far CS (OS) No.

860of2004 PageNo. 52 of86 ^1 as relates to general characteristics. If he does not know that, he is not a customer whose action). views can properly be regarded by the Court. (See the cases quoted in N.S. Thread & Co. y. Ghadwick & Bros., AIR 1948 Madras 481, In a passing which was Schweppes's case. Lord Halsbury said, if a person is so careless that he does not look and takes the does not bottle without consideration without reading what is written very plainly indeed up the face of the label, you cannot say he is deceived. " the label sufficient fairly but J 59)The aforesaid judgment of the Supreme Court in M/s. S.M. (emphasis supplied) Dvechem Ltd.'s case (supra) was reviewed by the Apex Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952. In the said judgment, it was observed as under "17. Our attention was drawn to a recent judgment of this Court in S.M. Dvechem Ltd.

(2000) 5 SCC 573 : V. Cadbury (India) Ltd. 2000 AIR sew 2172 : AIR 2000 SC 2114 : 2000 CLC 1338 where in a passing off action, the plaintiff, which was carrying on the business under the mark of 'Prknik', filed a suit for injunction against the defendant which was some other using the mark of 'Picnic" chocolates sold by it. On the allegation that the defendant's mark was deceptively similar, the trial Court had issued an injunetion which was reversed by the High Court. On appeal, the decision of the High Court was affirmed. On appeal, the decision of the High Court was affirmed. One of the questions, which this Court temporary injunction, should the Court go by the principle of prima facie case, apart from balance comparative strength of the case of either parties or by considered, was convenience, CS (OS)No. 860 of2004 Page No. 53 of 86 finding out if the plaintiff has raised a 'triable issue'.

While considering various decisions on the point in issue, this Court rightly concluded at page 591 (of SCC): at p. 2181 of AIR SCW; 2121 of AIR and 1348 of CLC (para 21) as follows : "Broadly, above, under our law as it can be said that stress laid down on common features rather features, reference case. " differences except to a limited extent a essential passing in one f the aforesaid observations Notwithstanding this Court in Dyechem's case (200 AIR SCW 2172 : AIR 2000 SC 2144 : 2000 CLC 1338) (supra) proceeded to observe as (para 35) follows "It appears to us that this Court did not have occasion to decide, as far as we are able to see, an issue where there were differences essential features nor to consider to which the differences are to extent importance similarities. Such a question has arisen in the present case and that is why we principles of English Law relating to differences features which principles, in our opinion, are equally applicable in our country.

" referred essential unable observation agree with in Dvechem's 18. We aforesaid (supra). As far as this Court is concerned, in the last four decades have clearlv decisions laid down that what has to be seen in the case of passing off action is the similaritv between the competing marks and to determine whether likelihood of deception or causing confusion. from the decisions of this Court in the cases of National Sewing This is evident CS (OS) No. 860 of2004 Page No. 54 of 86 / to the and 'Picnic'. this Court conclusion, Thread Co. Ltd.'s case (AIR 1953 SC 357) (supra), Com Products Refining Company's case (AIR 1960 SC 142) (supra), Amritdhara Pharmacy's case (AIR 1963 SC 449) (supra). Durga Dutt Sharma's case (AIR 1965 SC 980) (supra), Hoffmann-La Roche and Co. Ltd's case (AIR 1970 SC 2062) (Supra). Having in our opinion the difference in essential incorrectly, features is relevant, in Dyechem's case (supra) sought to examine the difference It 'Piknlk' in the two marks applied three tests, they being 1) is there any special aspect of the common feature which has been copied?

2) mode in which the parts are put together differently i.e. whether dissimilarity of the part or parts is enough to and 3) whether when there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding In examining the marks, keeping the aforesaid it came to the conclusion, three tests in mind, seeing the manner in which the two words were written and the peculiarity of the script dissimilarities given more importance than the phonetic similarity or the similarity in the use of the word PICNIC for PIKNIK. the whole "the dissimilar common concluded parts?

The Registrar overruled the objection and ordered registration. On appeal, Justice Parker said that having regard to the kind of customers for such goods and the distinction in the names, there was not likely to be any confusion and dismissed the appeal. If that was so between the case of Kellogg's and AIMS, 27. 'Pianole', our prima facie view, presents no difficulty for in fact distinct identification. 'Neole' Parker J. observed in the above case: one knows "Of course, . persons who buy these articles are persons generally education, ... my opinion is, having regard to the nature of the customer, the article in question and the price at which it is likely to be sold, and the surrounding circumstances, no man of ordinary intelligence is likely to be deceived...." We are, on the facts of the case before 28. us, prima facie of the same opinion in regard to Kelloggs and AIMs." 63)1 have given a deep thought to these rival contentions.

64)It would be appropriate to first consider the parameters on which the alleged deception has to be. In this behalf, the judgmentin Kellogg Companv's case (supra) is extremely relevant. There has been referencemade to SchweppesLd.'s case (supra) to come to the conclusion that if a person is so careless that he does not look CS(OS) No. 860 of2004 Page No. 59 of 86 and does not treat the label fairly, then he is not the person who would form the basis of the test. There is force in the contention of learned counsel for the plaintiff that the dictum in Kellogg Company's case (supra) to the extent it relied upon Schweppes Ld.'s case (supra) would not hold good in view of the subsequent developmentof law in M/s. S.M. Dvechem Ltd.'scase (supra)and the review thereof in Cadila Health Care Ltd.'s case (supra), the Apex Court while relying upon the observationsin Schweppes Ld.'s case (supra) observed that the customer does not distinguishthe characteristicsof the two packings, then he is not a customer whose view can properly be regarded by the Court.

However in Cadila Health Care Ltd.'s case (supra), this very aspect was specifically considered. The Apex Court took note of the earlier judgments in this behalf and came to the conclusion ^ that the decisions of the Apex Court in the last four decades preceding clearly laid down that what had to be seen in the case of a passing off action between the competing marks and the likelihood of deceptionor confusion. The Apex Court found that the principle of phonetic similaritycannot be jettisoned and in determiningthe test vis-a-vis the person who has to be kept in mind as a customer, the views expressed in Schweppes Ld.'s case (supra) were found to be contrary to the decision of the Apex CS (OS)No. 860 of2004 Page No. 60 of 86 Court in Amritdhara Pharmacy v. Satva Gupta, AIR 1963 SC 449. 65)In Amritdhara Pharmacy's case (supra), the product was examined from the prospect of it being purchased by villagers and townfolk, literate as well as illiterate and, thus, the question has to be approached from the point of view of a man of average intelligence and imperfect recollection.

A trade may be related to goods largely sold to illiterate or badly educated persons and the purchaserin India cannot be equated with a purchaserof goods in England. 66)The aspect, which is important, is the nature of the product. To this extent, apparently the views expressed in Kellogg Companv's case (supra) were also based on this nature of product. As noticed above, the class of purchaser purchasing Kellog's Cornflakes were stated to be people belonging to the middle class or the upper middleclass who are fairly educatedin English. Such categoryof customerswere categorisedas sophisticatedand discerning. The question remains whether the product in question in the present case being the agarbathiescan be categorisedas such. In my consideredview, the answer would be an emphaticno. The very nature of product is such that it is bought not only by a sophisticateand discerningcustomer, but peoplefrom all walks of life.

The use of such fragrancesticks is largelyfor the purposes CS (OS) No. 860 of2004 . PageNo. 61 of86 of pooja, but it is also used for other purposes of fragrance in the rooms, etc. The average customer is not one who will make a detailed scrutiny colour by colour, mark by mark to find out whether the product is of the plaintiff or the defendants. The profile of the customerwill vary from the rich to the poor. It has also to be kept in mind that, in fact, the more discerning and rich customer may not even go to buy such a product himself, but A y would possibly dispatch the house-helpto obtain the same. Thus, the factors which weighed in Kellogg Companv's case (supra) would hardly apply to the present case. 67)It is in view of the aforesaid position that the two products have to be compared. There is some substance in the plea of learned counsel the defendants that the plaintiff cannot have a monopoly on colours.

This is so as in case of an agarbathi with I sandal incense, naturally the colour of sandal or the pieces of sandal being shown on the container found form an essential ingredient. Similar position would be with rainbow. Of course, the stand of the plaintiff is that LAVENDER of the defendants is similar to RAINBOW of the plaintiff, while the defendants contend that LAVENDER itself would have a purple tinge of the colour. The NATURE'S GIFT of the plaintiff has a shade of green with a whitish mogra on it. The MOGRA of the defendants CS (OS) No. 860 of2004 Page No. 62 of 86 is also green with larger number of mogras on it. In this behalf, the contention of the plaintiff is that if mogra is whitish, there was no reason to necessarily adopt the green colour. Similarly, in respect of ROSE, which is of different colours, there was no reason why the defendants should have taken the same pink colour as of the plaintiff.

68)The parameters laid down for such comparison have been set out in judgment of the Apex Court in Parle Products (P) Ltd.'s case (supra) for deciding whether one mark is deceptively similar to another, the broad and essential features of the two have to be considered. They are not to be placed side by side to find out differences in the designs and it would suffice if the mark bears an overall similarity to the mark. As pithily observed, an ordinary purchaser is not gifted with the powers of observation of Sherlock It Holmes. However, this principle would not apply to mere colours. Colours are after all only certain hues. 69)The aspect of copyright in colours have been examined in a recent judgment of learned Single Judge of this Court in lA Nos.3412/2002 & 4489/2003 IN CS (OS) No. 672/2003 titled 'Colgate Palmolive Co. Limited & Anr. v. Mr. Patel & Anr.' decided on 06.10.2005. The colours in question were red and white colours of COLGATE. It was held that essential features of CS (OS) No.

860 of2004 Page No. 63 of 86 $y the plaintiffs' mark were the word 'COLGATE' and red and white colour scheme taken together. In the said case, a reference was made to judgment of the Apex Court in Kavirai Pandit Durga Putt Sharma's case (supra) to emphasize that in case of passing off action, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his case from those of the plaintiff. This would be different from the parameters and action ^ for infringement of trademark. An interesting plea raised in Colgate Palmolive Co. Ltd.'s case (supra) was that the judgment in Ruston & Homsbv Ltd.'s case (supra) was per incuriam since the Court did not note its earlier judgment in Kavirai Pandit Durga Putt Sharma's case (supra). This plea was negated. Learned Single Judge referred to some judgments of the U.S. Courts in this behalf. It would be useful to refer to the 7^ observations made in Colgate Palmolive Co.

Ltd.'s case (supra) in some detail. It was observed in the relevant paragraphs as law laid down in other While "33. such as the U.K. and common law jurisdictions U.S.A. it can is not binding on this Court but nevertheless furnish a useful guide for this Court. At following position of law laid down in Campbell Soup Co. Vs. Armor & Co. (81 USPQ 430):- is profitable to set out this stage it at para 6 page 432, it was observed that "... It is worth the space involved to call attention to just what it is the plaintiffs CS (OS) No. 860 of2004 Page No. 64 of 86 claim. Their suit here is based solely upon their claimed exclusive right to the use of red and white in packaging their food products. While their registration describes a rect£mgular design, when the colours appear on their packages they appear in the form of an endless band which runs red over white ^ entire red is not The container. around the same as the Campbell Carnation red. the Camation Indeed, red is not the same on all of its products, according to the sample labels offered in the plaintiffs exhibits.

The red used by Armour is a speciallyblendedcolor. is white over The usual Armour Label as the red instead of red over white, in some plaintiffs use the colour, but cases Armour uses red and white bands vertically. What the plaintiffs are reallv asking for, then, is a right to the exclusive use ,of labels which are half red and half white food products. If thev mav thus monopolize red in all of its shades the next manufacturer mav monopolize orange in all its shades and the next vellow in the same wav. Obviously, list of colors will soon run out..." (underlining supplied) At para [8], it was observed "That a man cannot acquire a trade mark by color alone has been stated a good many times textbooks in decisions " "... When we sav that plaintiffs cannot have exclusive right to a trade mark of a red and white label, we are bv no means denying their right to acquire a trade mark when the color is combined with other things in a distinctive design.

CS (OS)No. 860 of2004 Page No. 65 of 86 the distinctiveness As a matter of fact, of plaintiffs packages does not depend upon colour alone, although each has been granted registration of a trade mark described in terms of color. Each has its name in one of the color bands in a uniform and specified type of Each has a very distinctive script. Carnation has a design on its label. small bouquet of carnation flowers. Campbell has a medallion of individual too, does not depend design. Armour, upon color alone. It uses different colors with different products and each ' has the Armour name in an individual type of script accompanied by the star which it says has been the mark of its goods over many years. "In denving the plaintiffs the exclusive use of color alone we are not passing upon the question whether thev have acquired trade marks entitled protection in the sum total of combinations which make respective labels for their goods.

" (underlining supplied) f*' • In order to counter the position of law 34. laid down in Campbell Soup's case (supra) the plaintiff had relied on the judgment in the case of Master Distributors vs. Pako Corp., 25 USPQ2d 1794, wherein the following position of law was laid down:- traditional arguments "We are not persuaded by the against protection - the color depletion theory, shade confusion, and the functionality doctrine. Nor are we impressed by the argument predictability" require prohibition against trademark protection for color alone. We believe that not "consistency a CS (OS) No. 860 of2004 Page No. 66 of 86 p f allowing manufacturers to protect color traditional been met will requirements , have actually promote confusion. inconsistency colors shades" will a manufacturer Proponents of the color depletion theory assert that there are only a few possible choose for a product, and allowing one manufacturer to monopolize one color inhibit all of "in competition.

Campbell Soup Co. v. Armour & Co... 175 F.2d 795, 798 [81 USPQ 430] (3'" Cir.), cert. Denied, 338 U.S. 847 [83 USPQ 543] (1949). We agree that allowing a manufacturer monopolize red "in all of its shades" choices available to other market participants. Allowing a manufacturer who has met obtaining a protect color, is another matter however, requirements protection " normal trademark specific deplete In my view, this judgmentagrees with 35. the Campbell Soup's case (supra) and in fact relates to shades of colours and not a particular colour. Even if this decision is held to take a view contrary to that in Campbell's soup's case (supra),I would preferthe reasoninglaid down in Campbells soup's case as it is more logical and appeals to this Court as it inhibits a chromatic monopoly. In Life Savers Corp. v. Ciirtiss Candv Co., 85 USPQ 440, it was held as follows:-

Unchallenged, it assigns "reserved" to blue, "active" to red, and so on. Regardless of the absolute accuracy of these designations, that moods can be CS (OS)No. 860of2004 p^ggMo. 70 of86 evoked and manipulated by our historical and cultural associations with color Some 1950s, combinations certain. immediately military, the Federal period, and a feeling of the baroque. Generally, color can produce an appropriate setting, tone or mood for the subject at hand. This sort of color use is nowhere more powerful than in the theater, opera and ballet. On stage, shifting constantly combinations of color and are carefully modulated and controlled can benefit an entire production. As in the print media, the trained and deliberate placement on seldom static; layered -,X stage of small areas of color contributes to the emotional impact of the larger piece. " (underlining supplied) "Variations on Red colors, to ward off sharks; About 4000 years ago in the Orient people dabbed red clay on their lips to ward off unwanted spirits, and even in recent have worn red loin some Asian fishermen cloths red has endowed with specialcharms.

In fact, along with black and white red mav be one of humankind's bv some anthropologists and ethnologists. White and red are associated with life activities; black usually indicates death, misfortune or evil, or simply opposition to white's yielding and clearly in acceptance and purity. opposition as are black and white to North American eyes are red and white to people in other quarters of the world, and dichotomous red generally assumes the most active and overt role. " defined As "Although it is an alternativeway of getting your message across, you need more than just a broad swathe of colour. Malboro's brand is indicated by the red & CS (OS) No. 860of2004 PageNo. 71 of86 chevrons, but without I am not sure how effective shape. it could be. There is a stage when colour ceases (Jez. Frampton, Chief Executive of brand Interbrand consulting Http://ad- ) rag.com/114708.php to be ownable. " The Color Wheel A color circle, based on red, yellow and blue, is traditional in the field of art.

Sir Isaac Newton developed the first circular diagram of colors in and artists have 1666. Since then scientists studied and designed numerous variations of this concept. Differences of opinion about the validity of one format over another continue to provoke debate. In reality, any color circle or color wheel which presents a logicallyarranged sequence of pure hues has merit. 1 PRIMARY COLORS Red, yellow and blue (Underlining supplied) In traditional color these are the 3 pigment colors that can not be mixed or formed by any combination of other colors. All other theory, CS (OS) No. 860 of2004 Page No. 72 of 88 colors are derived from these 3 hues. II [Source:http://www.colormatters.com/colorthe ory.html] Primarv colors Primary Colors - red, blue and yellow. These colorscan not be mbced from any other colors and are the starting point for every other color. Primary Colors: The primary colors consist of 3 red-yellow-blue.

When mixing unique colors, these 3 colors hues, at least in theory, all the other hues of the color wheel, including black can be created. A Co/or Associations: Primaries red, blue, yellow. The ultimate contrast luminosity. Primaries of hue and the greatest art, express embroidery, costumes, etc. They are exuberant, decorative, tonic, vigorous, decisive. fundamental qualities, [Source: http://www.artsparx.com/color_basicprinc.asp] (Underlining Supplied) Our color wheel starts with the 3 primary colors, placed in an equilateral triangle. [Source:http://www.artsparx.com/colorwheel.asp] CS (OS) No. 860 of2004 Page No. 73 of 88 *" • and other combination

The get-up and the colour scheme of the plaintiffs adopted in every detail by the defendants for their tube and carton cannot be said to have been adopted by the defendants unintentionally. Further the defendants allege that they started selling their product in the carton and tube in question from No. 1977 while the plaintiffs have been selling their product in the said carton and the tube since April, 1975. the suit was ongmallyfiled in Feb., 1978 at Bombay defendants j cs (OS) No. 860of2004 Page No. 76of86 I and ex-parte injunction was granted on 29^ August, 1978. The plaintiffs are in the prior users of their carton and the tube. " product It was also held by this Court as under 46. in Colgate Palmolive Co. vs. Anchor Health and Beauty Care [2003(27) PTC 478 (Del)] : Colour the minds similar "54. May be, no party can have monopoly over a particular colour, substantial colour reproduction combination in the either on the container or packing has been which over a period imprinted it certainly is liable to customers cause not only confusion but also dilution of distinctiveness of colour combination, combination. lay out and size of get up, is sort of trade dress which container overall involves product's features.

There is a wide protection deceptive similarities of trade dress identification of the goods as to its source and origin and as such is liable to cause confusion in the mind of the unwary customersparticularly, those who have been using the productover a long period. " imitation against 71)The judgments of the U.S. Courts referred to above including Yves St LaurentParfums'scase (supra). Vision Snorts Inc.'s case (supra),Cf. ChevronChem. Co.'s case (supra),HaroldF. Ritrhie Inc.s case (supra) and PerfectFit Industries. Tnc.'s case (supra) also succinctly deal with the aspect of trademark, get-up and CS (OS)No. 860of2004 PageNo. 77of86 f<. % packaging. It is the whole combination which has to be seen to come to the conclusion whether the same would liable to cause confusion to the average customer. Thus, though there may not be any right in any single colour, there can be use of combination of colours coupled with the mark and the manner of arrangement on the box / container, which would be of significance.

Thus, in Harold F. Ritchie, Inc.'s case (supra), it was held that the second comer has a duty to so name and dress his product as to avoid all likelihood of confusion amongst the consumers. The important test is whether there is any evidence of conscious imitation of the first comer's product. The plaintiff is certainly the first comer, though there is some dispute about the date/year from which the sales have proceeded. This Court, thus, has to consider the names of the products in conjunctionwith similarity of presentationof products with respect to the design and general appearance, container, tubes, price, etc. Thus, what is not importantis the exclusive use of a particularcolour, but the use of colour in a particular graphic display in a logo format, which may cause confusion. 72)It is in the aforesaidcontext that a mere prefix or suffix would certainlynot suffice, but the mark has to be seen as a whole.

The judgments of the Apex Court in Ruston & Homsbv Ltd.'s case. C5 No. 860of2004 75 ^ 17 (supra) and Parle Products (P) Ltd.'s case (supra) may be usefully referred to for this purpose. 73)There is no doubt that the word LOTUS is used as a prefix by the defendants. However, what is of significance is the manner of placement of LOTUS. The font is smaller and less significant. The significance is on the word 'DIA'. The font used for writing DIA is similar to the one used in writing LIA. It is similarly underlined in the same style of a curve-line underneath. As stated above, though the word 'LIA' has two dots below the line, it is not that each feature has to be seen with the magnifying glass. It is the overall impact which has to be considered. 74)Interestingly, defendants have admittedly applied subsequently for registration of the mark DIA and not LOTUS DIA. The essential ingredient feature of the mark is DIA and not LOTUS DIA. It is not just a case of phonetic similarity, a prefix being r added, a similar colour scheme, similar packaging with certain endorsement, but all these aspects taken collectivelyto see the import of the trade dress used by the plaintiffand the defendants.

Ifeach individualfeatureis taken into consideration, maybe there would be some minor differences. However, that is not material. 75)A perusalof the boxes show that the colourschemehas apattern, though the colours in its hues may vary slightly. They have a CS (OS) No. 860 of2004 PageNo. 79 of86 pastel base with softeningto whitishtowards the centre of the box and again going up to a darker colour. The NATURE'S GIFT LIA has a mogra flower. The defendants have adopted mogra flower to sell the MOGRA incense sticks. Mogra is of a whitish colour and if the object is to give an indication of the nature of incense, it was certainly not necessarily to use only green colour. Similarly, for the rose, it is the pink colour. It is not only an aspect of imitation of one particular colour scheme or fragrance, it is the series of such six packages which has been adopted. In such a case, the object of the defendants itself appears to be to mislead the customer into believing that the product is of the plaintiff or at least has some connection with the product of the plaintiff.

76)The defendants are primarily based in the North, yet they have \ f chosen to inscribe on the side of the box with vernacular scripts of Devnagri, Tamil, Kannadaand Teluguin the same pattern. At the cost of repetition, it may be emphasizedthat this factor alone is not relevant, but is coupled with the other factors discussed above. Even the address indicatedof the defendantswas not found to be correct, but was given of the person who was doing work for the defendantson job-workbasis. The address of the plaintiffwas at Mysorewhile that of the defendantswas givenat Bangalore. CS (OS) No. 860of2004 PageNo. 80 of86 t 77)The overall visual impression from the colour scheme, arrangement of the mark, the style of writing of the mark, the general get-up and trade dress leads to the conclusion that there is a clear attempt on the part of the defendants to pass off their goods as that of the plaintiff and, thus, the test laid in Parle Products (P) Ltd.'s case (supra) is clearly satisfied.

The ingredients of a passing off action have been very succinctly set k^ out in Yves St LaurentParfums'scase (supra),which sets out that a misrepresentation need not to be crass, but may involve a complex mechanism of misrepresentation. Thus, representation may operate in a number of ways, no single one of which may be compelling but a combination of which is effective. This is the position in the present case. One only needs to look at two products side by side to see the striking similarity in various combination of factors. It is the overall impression that a customer gets to the source and origin of the goods from visual impression of colour combination, packaging and the get-up, which is ofrelevanceand if an unwary and gulliblecustomergets confused, it amounts to a passing off as set out in Colgate Palmolive Co. Ltd.'s case (supra). No doubt, there is no monopoly in colour combinations, but what is relevant in the presentcase is that there is substantialreproductionof the colour CS (OS) No.

860 of2004 PageNo. 81 of86 ^0 combination in a similar pattern in each packet and there are similar six series of packets. The defendants being the second comers owed a duty to name and dress their product in such a manner as to avoid all likelihood of consumers confusing it with the product of the first comer [Harold F. Ritchie, Inc.'s case (supra)]. 78)A result of the comparison of six containers shows that there is similarity in colour pattern, phonetic similarity in the trade-name, the use of colours in a particular pattern - whiteness towards the centre and again darker colour at the base and the top, writing on Devnagri and other scripts in a similar fashion, which leaves little doubt about the motive of the defendants. The packaging is identical and so is the pricing. If all these factors are taken into account, I have no doubt that the clear object of the defendants was to deceive the unsuspecting customers, who come from variousstratasof societyand are not a discerningcustomers.

79)The plaintiff has given detailed figures of its sales under this particularbrand-nameand colour scheme. The artistic work of the plaintiff was registered. The turnover for the range of products for the financialyear of 2002-2003 is Rs.243.67Lakhs and for the financialyear of 2003-2004is Rs.413.7Lakhs. This is duly supportedby the CharteredAccounts'certificate. As against CS (OS)No. 860 of2004 §2 of86 \o\ this, the defendants claim sales for the financial year of 2003- 2004 of Rs.5.75 Lakhs and for the first five months of the financial year of 2004-2005 of Rs.10.15 Lakhs. 80)For all aforesaid reasons, Issues No. 2 and 3 are answered in favour of the plaintiff and against the defendants. 81)The aforesaid findings, thus, show that the defendants' packaging is identical or deceptively similar to that of the plaintiff and the defendants are attempting to pass off their product as that of the plaintiff.

ISSUE N0.4 : Whether the plaintiff suppressing material making false statements and to what effect? is guilty 82)Issue No. 4 relates to the claim of the defendants that the plaintiff is guilty of suppression of material facts in respect of the date from which its sales started. No sales figure of 2001 onwards have been given and before the Registering Authority, the application shows sales from 2002. Thus, the claim of user since 2001 has been falsely made. I am of the considered view that nothingmuch turns on this since the plaintiffis the prior user and figures have been given from 2003-2004onwards. The plaintiff may have begun the process in 2001 and applied for registration in 2004. Thus, the issueis answeredin favourof the plaintiff. CS(OS)No. 860 of2004 Page No. 83 of 86 ISSUE NO. 5 Whether honestly adopted and used his subject matter defendants trademark .since 2003 relation (agarbathies) and to what effect? incense sticks ISSUE NO. 6 Whether alternative, defendants, are entitled to benefit of honest and concurrent users and to what effect?

83)Issues No. 5 and 6 are linked since they arise from the claim of V defendants having honestly adopted and used his subject matter trademark since 2003 or at least be entitled to benefit of honest concurrent user. The findings arrived at in respect of Issues No. 2 and 3 show that the defendants have, in fact, deliberately attempted to pass off their goods as that of the plaintiff and if all the features are taken together, it is a clear case of deception. Thus, the defence of honest concurrent use can hardly be said to be available to the defendants. Thus, Issues No. 5 and 6 are answered against the defendants. ISSUE NO. 7 Whether the suit is barred by delay, acquiescence, laches, estoppel and waiver? 84)IssueNo. 7 relates to the bar on accountof delay, acquiescence, laches, estoppeland waiver. The defendantshave reallynot even advancedany submissionson this aspect. The writtensynopsisof defendants, in fact, does not even refer to this aspect and even on CS(OS)No.

860 of2004 Page No. 84 of 86 the facts, such a ease can hardly be made out. Thus, the issue is answered against the defendants. ISSUE NO. 8 Relief. 85)The question now arises as to what is the relief to which the plaintiff would be entitled to in view of the fact that the relief of damages has already been given up. It has to be kept in mind that the defendants are not to be precluded from using a particular colour or a mark, but the total get-up and trade dress of the \ plaintiff and the defendants being similar, the defendants cannot be permitted to manufacture and sell agarbathies / incense sticks in the packaging as is being done at present. 86)The plaintiff is, thus, entitled to a decree of permanent injunction against the defendants or anyone acting under the defendants or its retailers, stockists, agents, etc. from in any manner manufacturing or selling agarbathies / incense sticks in the offending packaging under the trade-name DIA and the colour scheme of the packagingor in any manner in packaging, which are substantialreproductionof the packagingofthe plaintiff.

The decree would, thus, operatein respectof the offendingpackaging in question or any deceptivelysimilar packaging to that of the plaintiffsold under the trade-nameLIA and the manner of the representationof colourschemesin the range of the products. CS (OS) No. 860of2004 p^gg^Vo. 85 of86 "i Hc? 87)The plaintiff shall also be entitled to costs. 88)Decree-sheet be drawn up accordingly. December 02, 2005 SANJAY KISHAN KAUL, J. CS (OS) No. 860 of2004 Page No. 86 of 86