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Bombay Oil Industries Ltd. And

vs Raj Oil Mills And Ors. on 28 June, 1991

Bombay High Court Bombay High Court Bombay Oil Industries Ltd. And

Equivalent citations: 1992 (2) BomCR 68 Author: S Jhunjhunuwala Bench: S Jhunjhunuwala JUDGMENT

vs Raj Oil Mills And Ors. on 28 June, 1991

S.M. Jhunjhunuwala, J.

1. This Notice of Motion has been taken out by the plaintiffs for an order of injunction to restrain the

defendants by themselves, their servants and agents, pending the hearing and final disposal of the suit, from in any manner---

(i) using and/or offering for sale and/or exposing for sale and/or publishing without the plaintiff's licence the

impugned label as shown in Exhibits 'F-1' and 'F-2' to the plaint so as to infringe the plaintiffs' copyright of

the original artistic work as shown in Exhibits 'B' and 'C' to the plaint;

(ii) using in relation to any coconut oil or any oil the impugned label as shown in Exhibits 'F-1' and 'F-2' to the plaint or any other deceptively similar label so as to infringe the plaintiffs' registered trade mark No. 363235, and

(iii) using in relation to the coconut oil or any oil in impugned label as shown in Exhibits 'F-1' and 'F-2' to the Plaint or any other deceptively similar label so as to pass off or enable others to pass off the defendants' goods as and for the goods of the plaintiffs.

2. The plaintiffs case is as under :

(i) The 1st plaintiffs had applied for and obtained registration of a label mark under No. 224112 as of

September 1, 1964 which consisted of the words 'Parachute Brand', the device of a coconut tree and the device of a parachute. The said trade mark was extensively used by the 1st plaintiffs till about 1974. In or about the year 1974, the 1st plaintiffs device a label mark having a blue colour background with the device of a coconut tree in green on two opposite panels. Super imposed on the device of a coconut tree is the expression 'Parachute Coconut Oil' in bold white letters in English in one panel and in Devnagri on the opposite panel. Under the said expression appears the device of a parachute in a circle with white border. The said label mark is an original artistic work and the same was prepared by one Ishwarlal M. Bhawsar, an artist for the 1st plaintiffs, for a valuable consideration. The 1st plaintiffs are the authors and owners of the copyright in the said original artistic work. The said artistic work has been used as a label by the 1st plaintiffs in respect of coconut oil sold by the 1st plaintiffs since 1974-75. Upto the year 1979, the 1st plaintiffs were selling their coconut oil in tin containers bearing the said label. Since, 1979, the 1st plaintiffs have been selling coconut oil in blue plastic bottles printed with the said label. Exhibits 'B' and 'C' to the Plaint are photographs of the plaintiffs' product showing the said label. The 1st plaintiffs had applied for and obtained registration of the said label mark under No. 363235 which is valid and subsisting. The said label mark is registered under the provisions of the Trade and Merchandise Marks Act, 1958 (hereinafter for brevity's sake referred to as "the said Act") with a disclaimer under which the 1st plaintiffs do not have exclusive right in respect of the device of the coconut tree and the expression "Shudhdata Ka Pratik" and the words "Guaranteed for Purity". A certified copy of the entry in respect of the said trade mark is annexed as Exhibit "E" to the Plaint. Under a registered user agreement dated September 26, 1990, the 1st plaintiffs have granted a licence and/or registered user to the 2nd plaintiffs to use various trade marks mentioned in the Schedule thereunder including the mark No. 363235 belonging to the 1st plaintiffs. Under the said registered user-agreement, the 2nd plaintiffs have been manufacturing coconut oil as per the drawings and according to the specifications prescribed in that behalf by the 1st plaintiffs and have been using the said label mark.

Bombay Oil Industries Ltd. And

vs Raj Oil Mills And Ors. on 28 June, 1991

ii) The plaintiffs have sold goods under the said label mark extensively and have spent considerable amount

by way of publicity expenses for popularising the said label mark. The plaintiffs claim to have exclusive right to use the said label mark. The plaintiffs being owners of the copyright in the said artistic work, also claim exclusive right to reproduce the said artistic work in any material form with all its features including colour combination, get up, lay out and arrangement of features.

iii) The defendants have till the year 1988 been selling coconut oil under a label mark consisting of the word

"Cocoraj' and an emblem representing a coat of arms and the device of a coconut tree on their packs viz. tins. The said tins had yellow background with a green rectangle. A photograph of the defendants' said product is annexed and marked as Exhibit 'F' to the Plaint.

iv) In or about the year 1988-89, the defendants with a view to come closure with the plaintiffs' said label

mark, adapted a label with the blue background and the device of a coconut tree, which has been used by the defendants in respect of tin as well as plastic containers. According to the plaintiffs, plaintiffs' plastic container was original artistic design and was registered as an original design under the Designs Act under Registration No. 148381, which registration has, however, lapsed as the same has not been renewed. The defendants have adopted a similar design and similar label mark. By using the impugned label, the defendants have infringed the plaintiffs' copyright in their original artistic work and have also infringed the plaintiffs' registered trade mark and have been trying to pass off their goods as and for the goods of the plaintiffs.

v) The said label mark has a distinctive get up, colour scheme and layout. The said label mark of the plaintiffs

has been associated by the traders and members of the public exclusively with the plaintiffs. The plaintiffs product is asked for with reference to the colour combination. The goods are stored side by side in the grocery shops. The defendants have copied the colour scheme, lay out and get up as also the device of the coconut tree. The impugned labels of the defendants are deceptively similar to the plaintiffs' said label mark.

vi) The defendants are not using the marks which are registered or which are pending registration. The

defendants are the registered proprietors of a trade mark bearing No. 328202 which is totally different from the plaintiffs' said label mark. Considering the over all identity of the marks, the identity of the products and the identity of purchasers, the confusion and description are inevitable.

vii) By their Advocates' letter dated August 14, 1990, addressed to the defendants, the plaintiffs did call upon the defendants to forthwith discontinue the use of the said impugned label. Since the defendants have not complied with the requisition of the said notice, the plaintiffs have filed the present suit against the defendants and have taken out this Notice of Motion for the aforesaid reliefs prayed for therein.

The defendants' case is as under :

(i) In the year 1948, the 1st defendants started a business of manufacture of coconut oil and commenced marketing the same under the trade mark 'Cocoraj'. The 1st defendants thereafter procured registration of the said trade mark 'Cocoraj' under the provisions of the said Act under Nos. 138917, 148300 and 328202. The said trade marks were removed from the Register of the Trade marks since the renewal fee in respect thereof was not paid by the 1st defendants. However, the 1st defendants continued to manufacture and sale their said product under the trade mark 'Cocoraj'. The 1st defendants made fresh applications and applied for the said trade mark 'Cocoraj'. The 1st defendants made fresh applications and applied for the said trade mark 'Cocoraj' under Nos. 427211 and 427214. The said applications are still pending in the office of the Registrar of Trade marks.

(ii) The said product of the defendants under the said trade mark 'Cocoraj' acquired reputation in the market and people in general and those in oil trade and oil users associated the said trade mark with that of the 1st defendants firm only.

Bombay Oil Industries Ltd. And

vs Raj Oil Mills And Ors. on 28 June, 1991

(iii) The 1st defendants are registered proprietors of several other trade marks like Guinea Brand, Raj Brand,

etc., which are associated with their business. It is the practice of the trade of oil industries that a colour is normally designated for each product and generally, mustard oil is packed in yellow containers or labels with yellow back ground to match with the colour of original product, Tin oil in red containers or red label packings and coconut oil in blue or green colour packings. Containers and packings with blue colour background are also used for several other consumer products marketed and sold in provision stores as the blue colour has become very common and popular and as such, none can have or claim monopoly in the same.

(iv) It is the trend of the market that the labels and receptacles of coconut oil are changed from time to time by

all the manufacturers. The plaintiffs have themselves changed their packings and receptacles many times in popularity with the said practice.

(vi) The goods marketed by the 1st defendants under the trade mark 'Cocoraj' have become very popular and

in order to popularise the products under the said trade mark 'Cocoraj', the 1st defendants have availed of and used various media of publicity by way of newspapers, magazines, calendars, cinema slides and TV Spots and have spent huge amounts on publicity for promotion of their said product 'Cocoraj'. The product 'Cocoraj' manufactured and marketed by the 1st defendants in blue coloured bottles is also advertised on large scales in the railway carriages of the Western and Central Railways and through the medium of the MST Buses.

(v) In or about Diwali of the year 1988, the 1st defendants introduced a blue bottle containers for marketing their goods under the said trade mark 'Cocoraj' only in smaller packings. The defendants had instructed their artist to prepare a layout to make the same absolutely distinct from the layout used by other oil millers and accordingly the artist had prepared layouts which are highly distinctive and bear no resemblance with any packings in which other oil manufacturers sell their products. The layout of the 1st defendants is totally distinct and bear no resemebalance to the scheme of the containers in which the plaintiffs sell their products. Since October 1988, the 1st defendants have openly and continuously used their labels and/or containers and/or receptacles to sell and market their products as shown in Exhibits 'F-1' and 'F-2' to the plaint to the full knowledge of the plaintiffs and have advertised their products with the blue background colour through all the available media of publicity including Television. The 1st defendants have not received any complaint from any quarter and there has not been any proof offered by the plaintiffs of the alleged mistaken identity or passing off of the products of the 1st defendants as that of the plaintiffs. The use of said trade mark of the 1st defendants with colour scheme as per Exhibits 'F-1', 'F-2' and 'F-3' to the plaint coexisted in the market with the other products from about the month of October 1988. The present suit having been filed after lapse of about two years, is indicative of the fact that the plaintiffs became apprehensive about the fair and honest competition offered by the 1st defendants in respect of their products. The grievances made by the plaintiffs are based on mala fide intentions of the plaintiffs.

(vii) The 1st defendants have been advertising their blue coloured bottles through hoardings in Bombay, Goa and elsewhere. The plaintiffs did not consider the blue colour background as offending against the goods offered by them under the trade mark 'Parachute'. The plaintiffs have acquired the use of the blue colour scheme adopted by the 1st defendants to their products. It is the trade mark which is the governing factor and not the colour of the background of the containers.

(viii) The plaintiffs are not owners of the copyright in the artistic work as alleged by the 1st plaintiffs or otherwise. The plaintiffs have no exclusive right to reproduce the artistic work, the ownership in respect whereof is claimed by the 1st plaintiffs in any material form with all its features including colour combination, get up, lay out and arrangement of features as alleged or otherwise.

(ix) The 1st defendants started the use of blue packings since the manufacturer of such packings informed the

defendants that technically other dark colours could not be printed. The defendants have denied that in or about 1988-89 or at any other time, the 1st defendants with a view to come close to the plaintiffs' label mark adopted a label with blue colour background and the device of coconut tree. The defendants have denied that

Bombay Oil Industries Ltd. And

vs Raj Oil Mills And Ors. on 28 June, 1991

the 1st defendants have adopted a similar design or similar label mark as that of the plaintiffs. Containers of the plaintiffs and of the 1st defendants are absolutely distinct and one can be recognised from the other effortlessly. All the extraneous features appearing on the containers are absolutely different. The defendants have denied that the defendants have infringed the plaintiffs' copyright in the original artistic work of the 1st plaintiffs or have infringed the plaintiffs registered trade mark or have tried to pass of their goods as for the goods of the plaintiffs as alleged or otherwise.

4. Mr. Tulzapurkar, the learned Counsel appearing for the plaintiffs, has submitted that the fact that the 1st

plaintiffs have been the owners of the copyright in the original artistic work has been established. The 1st plaintiffs have obtained registration of the said label mark which is valid and subsisting. He has further submitted that merely because the said mark is registered with a disclaimer, it does not make any differences so far as the ownership thereof and other rights of the plaintiffs therein are concerned. Since under a registered user agreement dated September 26, 1990, the 1st plaintiffs have granted licence and/or registered user of the said mark to the 2nd plaintiffs, the 2nd plaintiffs are entitled to the user thereof. Mr. Tulzapurkar has further submitted that as the 1st plaintiffs are owners of the copyright of the said artistic work any colourable imitation thereof amounts to infringement of 1st plaintiffs copyright therein. Mr. Tulzapurkar has further submitted that the 1st defendants' said label mark adopted as from October 1988 is colourable imitation of 1st plaintiffs' said label mark and hence it amounts to infringement of 1st plaintiffs' copyright therein. He has further submitted that the 1st defendant's said label mark Exhibits 'F-1' and 'F-2' to the Plaint are deceptively similar to the 1st plaintiffs said label mark Exhibits 'B' and 'C' to the Plaint and as such the 1st defendants have committed an act of infringement of the said label mark of the 1st plaintiffs. Mr. Tulzapurkar has further submitted that by using the impugned label the defendants have passed off and are trying to pass of and/or are enabling others to pass off the defendants' goods as and for the goods of the plaintiffs. In the circumstances, Mr. Tulzapurkar has submitted that the plaintiffs are entitled for the reliefs prayed for in this Notice of Motion.

5. In support of the aforesaid submissions, reliance has been placed on behalf of the plaintiffs upon the

affidavit of one Ishwarlal H. Bhavasar, an artist by profession, affirmed on October 16, 1990 and annexed as Exhibit 'A' to the Plaint. The said Bhavasar was employed by one Clarion Advertising Services Limited having their registered office at Merchants Chambers, New Marine Lines, Bombay - 400 020 as chief art director between the years 1961 to 1988. In the year 1974 the said Bhavasar was informed by his said employers that his said employers were commissioned by the 1st plaintiffs to device for valuable consideration a label mark having a device of a coconut tree to be used on a pack of coconut oil manufactured by the 1st plaintiffs. The task of devising the said label on behalf of the said employers of the said Bhavsar was entrusted to the said Bhavsar. The said Bhavsar deviced the said label being Exhibits B and C to the Plaint and had given the same to his said employers who in their turn handed over the same to the 1st plaintiffs for valuable consideration. The said Bhavsar has affirmed on oath that whatever rights in the said artistic work are, they always belong to the 1st plaintiffs and neither he nor his said employers have any right in the said artistic work. The said artistic work is an original work of art deviced by the said Bhavsar in the circumstances narrated hereinabove. According to the defendants, in or about Diwali of 1988 the 1st defendants introduced blue bottle containers for marketing their goods under their trade mark 'Cocoraj' is smaller packings, the layout whereof was got prepared by the 1st defendants from their artist which, according to the defendants, is absolutely distinct from the layout used by other oil millers.

6. The 1st defendants have, however, not given any cogent explanation as to why since October 1988, the 1st

defendants have adopted the impugned label mark for their product coconut oil. Although, according to the 1st defendants the 1st defendants had given instructions to their artist to prepare a layout distinctive from the layout used by the other oil millers for marketing their product under the trade mark 'Cocoraj' in smaller packings, it is difficult to hold that the artist who prepared the layout of the 1st defendants in respect of the impugned label mark did not have before him the said registered label mark of the 1st plaintiffs. The 1st defendants who have been selling their product coconut oil under a label mark consisting of the word 'Cocoraj' and an emblem representing a coat of arms and a device of the coconut tree on their tin packs having yellow

Bombay Oil Industries Ltd. And

vs Raj Oil Mills And Ors. on 28 June, 1991

background with a green rectangle suddenly with effect from the month of October 1988 introduced blue bottle containers of a design similar to that of the 1st plaintiffs for marketing their product coconut oil under the trade mark 'Cocoraj' in a smaller packings. The 1st plaintiffs' plastic container which was an original artistic design, was at that time even registered as original design under the Designs Act under Registration No. 148381. The said registration has however lapsed as the same has not been renewed. The 1st defendants have adopted a similar design and similar label mark with intent to come closure to the 1st plaintiffs. I have no reason to disbelieve the affidavit of artist, Bhavsar and since the said device prepared by the said Bhavsar for the 1st plaintiffs is original artistic work, in my view, the 1st plaintiffs are the owners of the copyright therein. Since under the said registered user agreement, the 1st plaintiffs, have granted licence and/or registered user of the said label mark to the 2nd plaintiffs, the 2nd plaintiffs have acquired right to use the same.

7. From the statement of annual sales of the plaintiffs' product for the last-five years annexed and marked as

Exhibit D to the Plaint, it is crystal clear that the 1st plaintiffs have extensively sold their goods under the said label mark. From the statement of expenses incurred by the 1st plaintiffs in popularising the said label mark which is annexed and marked as Exhibit 'D-1' to the Plaint, it is also crystal clear that the 1st plaintiffs have spent considerable amount by way of publicity expenses for popularising the said label mark. From the certified copy of the entry in respect of the said mark under the said Act, a copy whereof has been annexed as Exhibit 'E' to the Plaint, it is further crystal clear that the said label mark has been registered in favour of the 1st plaintiffs under No. 363235. The registration of the said mark is valid and subsisting.

8. Mr. Tulzapurkar has submitted that the impugned label mark of the 1st defendants' being deceptively

similar to the plaintiffs' and label mark Exhibits 'B' and 'C' to the Plaint, the defendants are guilty of infringing 1st plaintiffs' said mark and as such, the plaintiffs are entitled to the reliefs prayed for in this Notice of Motion. In this connection, Mr. Tulzapurkar has strongly put reliance upon the case of M/s. Hiralal Parbhudas v. M/s. Ganesh Trading Company & others, . In that case, Division Bench of our

Court after considering the various authorities cited before it, has held as under :

"5. What emerges from these authorities is (a) what is the main idea or salient features, (b) marks are remembers by general impressions or by some significant detail rather than by a photographic recollection of the whole, (c) overall similarity is the touchstone, (d) marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection, (e) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (f) the purchaser must not be put in a stage of wonderment, (g) marks must be compared as a whole, microscopic examination being impermissible, (h) the broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design and (i) overall similarity is sufficient. In addition, indisputably must also be taken into consideration the nature of the commodity, the class of purchasers, the mode of purchase, and other surrounding circumstances."

9. Mr. Tulzapurkar has then relied upon the case of Parle Products (P) Ltd. v. VPJ & Co., Mysore, reported in

A.I.R. 1978 S.C. 1359 in support of his submission that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. In that case, the essential features of both the marks were that there was a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there was a farm house with a fence. The words 'Gluco Biscuits' in one and "Glucose Biscuits' on the other occupy a prominent place at the top with a good deal of similarity between the two writings. In the circumstances, the Supreme Court concluded as under :

"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. It one was not careful enough to note the peculiar features of the wrapper on the 'plaintiffs' goods, he might easily mistake the defendants' wrapper for the plaintiffs' if shown to him some time after he had seen the plaintiffs'. After all, an ordinary purchaser is not

Bombay Oil Industries Ltd. And

vs Raj Oil Mills And Ors. on 28 June, 1991

gifted with the powers of observation of a Sherlook Holmes. We have therefore, no doubt that the defendants' wrapper is deceptively similar to the plaintiffs' which was registered :---

In that case, the Supreme Court held as under :---

"It is therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him."

In the instant case, in my opinion, the plastic packs are practically of the same shape and size, the colour

scheme of the two bottles is almost the same and the design of both the bottles is almost identical bearing such

a close resemblance that one can easily be mistaken for the other.

10. Mr. Tulzapurkar has adopted the conclusions arrived by the Trademark Registry in the case of Mahesh

Soap Works v. Hindustan Lever Ltd., reported in 1977 IPLR 1955 as his arguments in support of his submission that the impugned mark of the 1st defendant is deceptively similar to the said registered mark of the 1st plaintiffs. In that case, an application to register a trade mark consisting of a coloured label containing the word "CHETAK" and a device of a horse in respect of washing soap for sale in the State of Madhya Pradesh was opposed by the registered proprietors of trade marks consisting of labels bearing the word "SUNLIGHT" two of which were registered with limitation as to colours in respect of goods including soap. Hindustan Lever Ltd. who opposed the said application contended that the mark applied for was deceptively similar to its registered trade mark inasmuch as its colour scheme and get up were identical with those of its registered trade marks, that having regard to the use of its "SUNLIGHT" label, the use of Mahesh Soap Works' mark would cause confusion and deception as it has the same colour scheme and get up. The Registry held as under :---

"The question now is whether the use of the Applicants' mark in a fair and normal manner will be reasonably likely to cause deception and confusion having regard to the established use of the opponents' mark. For this purpose, I must compare the Applicants' Mark with that of the Opponents' aforesaid mark. The Opponents mark consists of a label with the word SUNLIGHT thereon and it is to be noted that it has been registered with a limitation as to colours red, blue, yellow and white. The Applicants' mark as applied for consists of a label with the word CHETAK and a small device of a horse, the panelling and colour scheme being the same as that in the Opponents' mark. The Applicants' Counsel argued that it was the word 'CHETAK' that constituted the essential and distinguishing feature of the Applicant's label and as such it was not deceptively

similar to the Opponents' trade mark. In this connection, it is to be borne in mind that it is a settled rule that marks should be compared as whole and that the mere fact that the essential feature in the two competing trade marks show sufficient dissimilarity is not conclusive, see Christiasen's T.M. (1886)3 R.P.C. 54 at page

61. Indeed, in Madhavbhai Mangalbhai Patel v. Mangalore Ganesh Beedi Works, (Misc. Petition No. 387 of

1960) the Hon'ble High Court of Bombay laid down that the rival marks should be examined as a whole and their general effect assessed. In the instant case, the goods of the Applicants and of the Opponents are the

same viz. washing soaps. Looking at the labels as a whole, which have the identical colour scheme and get up,

I am of opinion that the simultaneous use of these labels is bound to cause confusion amongst the public. Washing soaps are common consumer items of daily necessity purchased by all kinds of persons including

illiterate persons, children, servants and dhobies. I am convinced that such purchasers would largely be guided by the colour scheme of the Opponents; label, and that they would be confused or deceived on seeing the

important point to be borne in mind is that the

Applicants' goods packed in the label applied for

general similarity of the two labels are such that it would enable unscrupulous dealers to offer the goods of the Applicants even where the customers asked for the goods of the Opponents by describing them as SUNLIGHT soap See Madhavbhai Mangalbhai Patel v. Monglore Ganesh Beedi Works, Misc. Petition 387 of

Another

Bombay Oil Industries Ltd. And

vs Raj Oil Mills And Ors. on 28 June, 1991

1960 Bombay High Court). In the circumstances, I find that by reason of the use of the Opponents' labels, the use of the Applicants' mark in a normal and fair manner is likely to cause confusion and deception and as such section 11(a) of the Act constitutes a bar to the registration of the Applicants mark."

11. Adopting the above referred conclusions of the Registry as his arguments, Mr. Tulzapurkar has rightly

submitted that in the instant case, looking at both the labels as a whole, which have the identical colour scheme and get up, the simultaneous use of these labels is bound to cause confusion amongst the public and more so when coconut oil is common consumer item of daily necessity purchased by all kinds of persons including illiterate persons who would largely be guided by the colour scheme.

12. In support of his submission that in deciding whether the impugned mark is deceptively similar or not, one

cannot compare two marks by putting them side by side and by trying to find out similarities and differences in them and what one has to see is overall impression given by mark in mind of members of general public. Mr. Tulzapurkar has also relied upon the case of M/s. National Chemical & Colour Co., v. M/s. Reckit and Coleman of India Ltd. and another, where the trade mark sought to be registered consisted of a picture of two birds sitting on a twig. One bird was partially hidden by the other bird. The words 'Bul were written on either side of the two birds. 'Bul' on one side and 'Bul' on the other side. As against this, the registered trade mark of the respondents consisted of the picture of a single bird sitting on a twig with the words 'Robin Ultra Marine Blue'. The two birds of the proposed trade mark were very similar in appearance to the bird in the registered trade mark. Both the trade marks covered goods of the same description and of the same class. The Division Bench of this Court held as under :

"10. In the first place, the picture of a bird sitting on a twig which is registered trade mark of the 1st respondents is very similar to the picture of two birds sitting on a twig which is proposed to be registered as a trade mark by the appellants. It is true that while the picture mark of the appellants consists of two birds, the picture mark of the respondents consists of only one bird. Nevertheless both the devices bear a close resemblance. One cannot compare two trade marks by putting them side by side by trying to find out similarities and differences in the two marks. What one has to see in the overall impression which the trade mark gives. Because this is what the members of the public carry in their minds."

Reliance has also been placed on Kerly's Law of Trade Marks and Trade Names, 12th Edition, paragraph 17-08 which read as under :---

"The marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which have the same mark as that with which he was acquainted."

13. On the facts of that case, and following the principles of broad similarity or general impression which the

trade marks give, this Court concluded that both the said trade marks appeal to be very similar. Although the Deputy Registrar and made a point of distinction in that case since one trade mark had the word 'Robin' as a part of it, the other trade mark would have the words 'Bul Bul' as a part of it, this Court held that this makes no difference to the overall impression which the two trade marks give. The Court further held that whether the picture carries the legend 'Bul' 'Bul' or 'Robin' does not make much difference to the overall similarly of the two marks. In the instant case also the words 'Parachute' or 'Cocoraj' do not make much difference to the overall similarity of the two marks.

14. I do not think it necessary to refer to other authorities referred to at the Bar on this point as in my 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 other there was absence of it.

Bombay Oil Industries Ltd. And

vs Raj Oil Mills And Ors. on 28 June, 1991

15. Mr. Cooper, the learned Counsel appearing for the defendants has submitted that 'blue colour' was never

registered in favour of the 1st plaintiffs under the provisions of the said Act and as such, the plaintiffs can not claim any monopoly in the 'blue colour'. In this connection Mr. Cooper has placed reliance upon section 10 of the said Act, which reads as under :

"10.(1) A trade mark may be limited wholly or in part to one or more specified colours, and any such limitation shall be taken into consideration by the Tribunal having to decide on the distinctive character of the trade mark.

(2) So far as a trade mark is registered without limitation of colour, it shall be deemed to be registered for all colours."

16. Mr. Tulzapurkar has submitted that the plaintiffs are not claiming any monopoly in 'blue colour'.

According to Mr. Tulzapurkar, the salient feature of the 1st plaintiffs' said registered mark is colour combination of blue background with green and white together with placement of materials viz. the word 'Parachute' and 'device of coconut tree'. It is the combination of all these which is an essential feature of the plaintiffs' said registered mark. In my opinion, Mr. Tulzapurkar is right in his submission. When a trade mark is registered without limitation of colour, it is deemed to be registered for all colours including blue one and as such, there is no question of plaintiffs claiming any monopoly in 'blue colour'.

17. Mr. Cooper has next submitted that the colour scheme of blue plastic packs is common not only in respect

of oil products but even in respect of other products. He has further submitted that containers and packings with blue colour background are also used for several other consumer products marketed and sold in provision stores as blue colour has become very common and popular. He has further submitted that blue colour is not distinctive with any particular product but is commonly and rampantly used by the consumer product industries and none can claim or have monopoly in the same. Mr. Cooper has further submitted that since the year 1939, the 1st defendants have marketed their product under the trade mark "Cocoraj" which has become very popular and in support of his said submission, Mr. Cooper has relied upon the sales figures of the 1st defendants' product marketed under the trade mark 'Cocoraj' from the year 1979 onwards. Reliance has also been placed on the certificate of the Chartered Accountants of the 1st defendants as also on sample copies of invoices to show that the 1st defendants' product has been sold and marketed extensively under the said trade mark 'Cocoraj' in blue colour HDPE bottles. Mr. Cooper has also submitted that to popularise the products of the 1st defendants under the said trade mark 'Cocoraj', the 1st defendants availed of and used various media publicity by way of newspapers, magazines, calendars, cinema slides and TV spots. Huge amount has been spent by the 1st defendant on the publicity for promotion of their said product 'Cocoraj'. It is also submitted that the product 'Cocoraj' manufactured and marketed by the 1st defendants in blue colour bottles is also advertised on large scales in railway carriages of Western and Central Railways and also through the medium of Maharashtra State Transport Buses as also through hoardings in Bombay, Goa and elsewhere.

18. In my opinion, the defendants have failed to establish that the blue colour adopted for use in packings is

common to the trade of coconut oil. The question whether a particular colour adopted for packs to be used for packing of products is common to the trade, is to be assessed and answered by taking into consideration the alleged common use thereof in a particular trade and not any trade in general. In the instant case 'common to trade' should be construed as common to trade of coconut oil. Exhibits 3(8) to 3(14) to the affidavit of S.S. Jamal, partner in the firm of the 1st defendants, affirmed on December 17, 1990 relied upon by Mr. Cooper in support of his submission that the blue colour is common in the packs, do not pertain to packings of coconut oil but the same relate to packings of other merchandise goods which is totally irrelevant for consideration of the issues involved in the instant case. Further, it is evident from Exhibit 'A' to the affidavit of Harsh C. Mariwala, affirmed in rejoinder on February 21, 1991, that reputed companies such as Shalimar Chemicals, Tata Oil Mills, VVD, Ahmed Mills, Kamanis, etc. sell coconut oil in packs having different colour schemes. It is, therefore, not possible to hold that the blue colour scheme is common to the trade or that the coconut oil is associated with blue colour or that blue colour is used in such manner as to show that it has become common

Bombay Oil Industries Ltd. And

vs Raj Oil Mills And Ors. on 28 June, 1991

to trade as far as the coconut oil is concerned. From the photographs Ex. B to the said affidavit filed in rejoinder, it is further evident that in respect of mustard oil, Ahmed Mills, Shree Hari Industries and Delhi Kanodia Oil Mills are using the colours red, and yellow and blue, and yellow respectively whereas in respect of tin oil, Ahmed Mills, VVV and Sons and Bhora Mills are using the colours orange, white and a combination of blue, green and red respectively. Accordingly , in my opinion, blue colour only is not used in respect of packs for coconut oil and there is a no practice of the trade of oil industry to the effect that colour is normally designated for each product.

19. Mr. Cooper has next submitted that coconut oil is not purchased merely by looking at the background and

the colour scheme of the labels or receptacles but with reference to the trade mark. In support of his this submission, he has placed reliance on an advertisement issued by the plaintiffs in daily English newspaper 'Times of India' on November 15, 1990, according to which people are accustomed to buy the goods of the plaintiffs on the basis of plaintiffs' trade mark 'Parachute' rather then having any emphasis on the colour scheme of the label mark. In view of any above observations more particularly as regards the visual similarity of the two marks and keeping in mind class of purchasers, manner of storage and mode of purchase of the said goods, I am not correct to say that the said goods are not purchased by looking at the background or colour scheme. Interpretation given to the said advertisement by Mr. Cooper is not correct. As justifiably contended on behalf of the plaintiffs, the purport of the said advertisement which was a process of image building for the newly incorporated and plaintiffs, was to bring home to the literate public that by virtue of the plaintiffs' dominance in the field of coconut oil, coconut oil is now identified with 'Parachute'.

20. Mr. Cooper has next submitted that as is evident from the certified copy of the entry in respect of the 1st

plaintiffs said trade mark, the same has been registered under No. 363235 with the following disclaimer :

"Registration of this Trade Mark shall give no right to the exclusive use of the device of coconut tree and the expression "Suddata Ka Pratik" and the words "Guaranteed for purity".

Hence the plaintiffs have no right to the exclusive use of the device of coconut tree and the expressions "Suddata Ka Pratik" and "Guaranteed for purity". According to Mr. Cooper, the device of coconut tree being common to trade and of a non-distinctive character, it has been disclaimed by the plaintiffs under the provisions of section 17(b) of the said Act and consequently, the plaintiffs cannot prevent the defendants from using the disclaimed feature by virtue of registration of their mark. In the submission of Mr. Cooper, essence of plaintiffs' trade mark is 'Parachute Coconut oil' and essence of defendants' trade mark is 'Cocoraj' . The defendant have thus neither infringed nor have any intention to infringe the said trade mark of the plaintiff. Mr. Cooper is not right in his submission. As observed hereinabove, in or about the year 1974, the 1st plaintiffs had deviced the said label mark having a blue colour background with the device of a coconut tree in green on two opposite pansels. The said label mark is an original artistic work. The plaintiffs are the authors and owners of the copyright therein. The 1st plaintiffs have been using the said original artistic work as a label in respect of coconut oil sold and marketed by them since 1974-75. Superimposed on the device of a coconut tree is expression 'Parachute Coconut Oil' in bold white letters in English on one panel and in Devnagri on the opposite panel. Under the said expression appears the device of a parachute in a circle with while border. The 1st plaintiffs have obtained registration of the said label mark under No. 363235 which is valid and subsisting. Merely because the said label mark has been registered with a disclaimer as aforesaid the defendants cannot initiate the said label mark and come so close and so nearer to it that the same becomes deceptively similar to the said registered mark of the 1st plaintiffs. Merely because of the said disclaimer, the defendants can no infringe 1st plaintiffs' copyright in the said label mark, the 1st plaintiffs' said trade mark and pass of their goods as that of the plaintiffs. The disclaimer does not affect the rights of the proprietor of a mark except such as arise out of registration, i.e. the special advantages which the said Act gives to the proprietor by reason of the registration of his trade mark do not extent to the parts or matters which he disclaim. In the instant case, the said disclaimer does not in any way affect the rights of the plaintiffs acquired in the said label mark excepting in the dismissed portion thereof. Moreover, when the said mark is not registered with limitation as to colour, it is deemed to be registered for all colours including the blue one.

Bombay Oil Industries Ltd. And

vs Raj Oil Mills And Ors. on 28 June, 1991

21. Mr. Cooper has next submitted that the 1st defendants have spent considerable amount on publicity and

that the 1st defendants have large sales large sales and that they have acquired their own reputation and that the label mark used by the 1st defendants is associated with the 1st defendants and that no case for infringement or passing off has been made out by the plaintiffs. In this connection, it is pertinent to note that the volume and value of the sales of the 1st defendants product-coconut oil-disclosed by the 1st defendants are in respect.

22. Mr. Cooper has next submitted that the 1st defendants have spent considerable amount on publicity and

that the 1st defendants have large sales and that they have acquired their own reputation and that the label mark used by the 1st defendants is associated with the 1st defendants and that no case for infringement or passing off has been made out by the plaintiffs. In this connection, it is pertinent to note that the volume and value of the sales of the 1st defendants product-coconut oil-disclosed by the 1st defendants are in respect of their entire sales, i.e., bulk packs and consumer packs. As against that the sales figures given by the 1st plaintiffs are only in respect of the consumer packs. The plaintiffs have placed reliance on the report of the Operation Research Group for the period June 1950 November 1990, according to which, the All India Market sale of the plaintiffs in respect of the coconut oil is 41.50% while the market sale of the 1st defendants in merely at 3.95%, the other two manufacturers having substantial market sale being Shalimar Chemicals at 16.08% and Tata Oil Mills at 13.25%, neither of whom is marketing its coconut oil in blue containers. From the affidavits on record, it is obvious that the 1st defendants have been selling bulk oil to Hindustan Lever Ltd. and Godrej Ltd. for Industrial use, i.e., for manufacture of soaps. The said sale or the extent of such sale is totally irrelevant and cannot give any indication of the reputation alleged to have been acquired by the 1st defendants. As per the said report, an extract whereof has been annexed as Exhibit 'C' to the said affidavit in rejoinder, it appears that after the impugned label mark was adopted by the 1st defendants, the volume of their sales has increased which indicates that the 1st defendants are encashing on plaintiffs' reputation. It does appear from the figures of expenditure incurred by the 1st defendants that in the last two years, the 1st defendants have spent substantial amount on publicity. However, the grievance of the plaintiffs in this regard is that the 1st defendants have indulged in unfair and unethical advertising campaign, in consequence where of unethical advertising campaign are given by the plaintiffs in sub-paragraphs (a) and (b) of paragraph 8 of the said affidavit in rejoinder. In the circumstances, in my opinion, it is not possible to hold that the 1st defendants have acquired their own reputation or that the impugned label mark used by the 1st defendants is associated with the 1st defendants or that no prima facie case for infringement or passing off by the 1st defendants has been made out.

23. Mr. Cooper has next submitted that the 1st defendants have been using their said label mark since the year

1988 and that there is acquiescence on the part of the plaintiffs and, therefore, the plaintiffs are not entitled to any relief in the present Notice of Motion. There is no merit in this submission of Mr. Cooper. The plaintiffs have neither encouraged the 1st defendants in the use of the impugned label mark nor slept over their rights to protect their label mark. There has been no delay on the part of the plaintiffs amounting to acquiescence. As per the defendants themselves, the impugned label mark of the 1st defendant was introduced late in the year 1988. When the effect of 1st defendant's copying plaintiffs mark was noticed, the plaintiffs decided to take an action and did serve upon the 1st defendants a notice dated August 14, 1990. Despite correspondence, since no convincing reply was received by the plaintiffs, the present suit was filed on October 26, 1990. There is no acquiescence on the part of the plaintiffs. There is no inordinate delay on the part of the plaintiffs in taking action against the defendants. Moreover, as observed by Stamp J., in the case of Cavendish House (Cheltenham) Ltd. v. Cavendish Woodhouse Ltd., reported in 1968 RPC 448, the question of delay has to be balanced against likelihood of the plaintiffs ultimately succeeding in the action, and where the strength of the plaintiffs prima facie case is very strong, the plaintiffs delay in filing the action would not disentitle him to relief and it would be right to grant rather than withhold the interlocutory injunction prayed for. In the instant case, in my opinion, the plaintiffs have made out a very strong prima facie case and, under the circumstances, agreeing with the view taken in Cavendish House case, it hold that the delay, if any, on the part of the plaintiffs in filing this suit does not disentitle them to interlocutory relief on this Notice of Motion. In the view which I have taken, I am also supported by the decision of the Delhi High Court in the case of Hindustan

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vs Raj Oil Mills And Ors. on 28 June, 1991

Pencils Pvt. Ltd. v. M/s India Stationery Products Co. and another, , wherein it has been held as under:

"If the defendant acts fraudulently with the knowledge that he is violating the plaintiffs rights then in that case, even if there is an inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction is not denied. Where there is an honest concurrent user by the defendant then inordinate delay or laches may defeat the claim of damages or rendition of accounts but the relief of injunction should not be refused. This is so because it is the interest of the general public, which is the third party in such cases, which has to be kept in mind."

24. Mr. Cooper has next submitted that as the defendants have neither infringed plaintiffs trade mark nor have passed off or intend to pass off their product- coconut oil- as that of the plaintiffs, the plaintiffs are not entitled to any relief as against the defendants in this Notice of Motion. Mr. Cooper has relied upon the case of J.B. William Company v. H. Bronnley & Co. Ltd., reported in 1909(26) RPC

765. In support of his submission that the 1st defendants said label mark is not calculated to deceive. In that case on the merit thereof, it was held that the shapes and colour of the boxes was common to trade, and that the plaintiffs therein had established no monopoly in regard to them. Mr. Cooper has also relied upon the case of M. Saper Ltd. v. Specter's Ltd. and Boxes Ltd., reported in 1953(70) RPC 173, wherein on merits of that case it was held that the two boxes were not shown to be deceptively similar. Facts of both these cases are different than the facts of the instant case and as such, these authorities cited by Mr. Cooper do not support the 1st defendants. In the instant case, the impugned label mark of the 1st defendants is deceptively similar to the 1st plaintiffs said label mark as the 1st defendants have copied all the essential features thereof. The tremendous and enviable reputation of the 1st plaintiffs said mark has been established by extensive sales and publicity expenses. As aforesaid, the 1st plaintiffs said label mark has a blue colour background upon which appears the devices of a coconut tree in green on two opposite panels. Superimposed on the device of a coconut tree is the expression 'Parachute Coconut Oil' in bold white letters in English on one panel and in Devanagri on the opposite panel. The 1st defendants have adopted a label mark with blue background and the device of a coconut tree. The essential features of the 1st plaintiffs said label mark being colour combination of blue background with green and white placement of materials viz, name and device of coconut tree and combination of all these factors are identical with 1st defendants said impugned label mark with the difference of 'Cocoraj' being mentioned in place of 'Parachute'. From the visual comparison of the two marks as a whole, in my view, the essential features of the 1st plaintiffs said registered label mark are copied by the 1st defendants in the said impugned label mark. Also applying the test the marks must be looked at from the first impression of a person of average intelligence and imperfect recollection, in my opinion, the defendants impugned label mark is prima facie deceptively similar to the 1st plaintiffs said registered label mark and is likely to deceive and cause confusion. The great deal of similarity in the get up of the offending label with the 1st plaintiffs said registered label mark would undoubtedly confuse an ordinary purchaser of average intelligence and imperfect recollection and who may even be illiterate. It is not correct to say that the goods are ordered by reference to word mark or the brand name alone. The coconut oil is distinguished and identified with reference to the label mark i.e., the distinctive layout, get up with colour scheme; that label mark is fixed in the minds of the customers and when an unwary purchaser with average intelligence and imperfect recollection sees the pack of the 1st defendants he would naturally think that it is the same pack which he has purchased or used before. The entire label mark is remembered in general while effecting purchases. As is evident from various affidavits annexed to the plaint, the goods in question are available across the counter in small shops, stored together and are purchased by semi literate and illiterate people and actual deception and confusion had taken place in purchasing the same. Even the defendants have admitted while putting reliance on the affidavit of one ask the Laxmiben N. Shinde of Bhandup affirmed on December 18, 1990, that the consumers even do ask the servants to go and buy the said products. Although in the said affidavit filed in reply to the Notice of Motion, the defendants have denied that the said goods of the plaintiffs and of the defendants are sold side by side in provision stores, the defendants have relied upon photographs at Exhibits 13, 13(a), 13(B), 13(C), 13(D), 13(E), 13(F), 13(G), 14, 15, 15(A) and 15(B) to the said affidavit which shows that the said goods of the plaintiffs and of the defendants are stored side by side on the same

Bombay Oil Industries Ltd. And

vs Raj Oil Mills And Ors. on 28 June, 1991

shelf in provision stores. Moreover, the nature of the product of the plaintiffs and that of the 1st defendants is same and the user thereof is for identical purposes.

25. There is one more fact of this case which requires consideration at this stage. Prior to later part of the year 1988, the 1st defendants were using a different colour scheme, layout and get-up. There is no explanation forthcoming for the 1st defendants changing the said label mark to the impugned label mark. Moreover, the marks applied and obtained registration by the 1st defendants in respect of their said product are, in fact, not used by the 1st defendants and the impugned mark which is not yet registered in favour of the 1st defendants and which is deceptively similar to the 1st plaintiffs said registered mark is deliberately used by the 1st defendants. On September 17, 1984 a mark under No. 427210 has been registered in favour of the 1st defendants under the said Act. The said mark registered under No. 427210 is totally different from the impugned label mark as is evident from the certificate of registration of trademark issued under section 23(2), Rule 65(1) dated September 20, 1990, a xerox copy whereof has been produced in these proceedings before me. A xerox copy of a papersheet bearing Nos. 1509 and 1510 from the Trade Marks Journal dated March 16, 1991 has also been produced in these proceedings before me. From this sheet, it is evident that an application under No. 4272113 has been made by the 1st defendants under the said Act for registration of impugned mark, which is still pending. It is interesting to note that the date of application mentioned in the said sheet is same as that of September 17, 1984 in respect of the said registered mark of the 1st defendants under No. 427210. As per the notice published through this Journal, the 1st defendants have claimed user of the impugned mark in respect whereof the said application has been made since December 16, 1968. This is ex facie contrary to the affidavit of one Mr. N.M. Sayed, an artist of the 1st defendants affirmed on December 19, 1990 which inter alia states as under:

"1. By profession I am a commercial artist since 1974. I have been attending to the assignments given by M/s. Raj Oil Mills since 1986. I have designed various types of labels, lay outs etc. for and on behalf of M/s Raj Oil Mills.

2. To understand the requirements and needs of M/s. Raj Oil Mills I generally go to their office on their

request.

3. In or about August 1988, I was called by Mr. Iqbal Ahmed to the office of Raj Oil Mills where he

expressed his desire to prepare a lay out for their Cocoraj coconut hair oil which was to be packed in HDPE bottles.

4. Mr. Iqbal Ahmed told me that the lay out should be such that it should be well represented on various sizes

of the HDPE bottles. He wanted the same lay out to be repeated on all types of HDPE bottles. I was instructed to give prominence to the word COCORAJ and place palm tree on the lay out as the same designated the goods contained in COCORAJ hair oil.

5. I prepared various rough lay outs but they were rejected by M/s Raj Oil Mills. In the beginning of

September, 1988, I gave to them two/three more lay outs of which they accepted the lay out which is in use by them presently. Mr. Iqbal Ahmed after accepting my lay out told me to make a short story for T.V. Film where HDPE bottle with the agreed lay out will enjoy prominence. For the consideration received by me I handed over the lay out and the other paraphernalia for exhibiting COCORAJ in HDPE blue bottle by way of T.V. film, cinema slides and hoardings.

6. I say that at the time of preparing the lay out I had not seen bottle of PARACHUTE nor was the same

referred to in any of the meetings with the said Mr. Iqbal Ahmed.

7. The lay out of the label of blue colour bottle was my brainchild which has been made without any reference

to Parachute Coconut hair oil or any other hair oil is available in the market at that particular time."

Bombay Oil Industries Ltd. And

vs Raj Oil Mills And Ors. on 28 June, 1991

26. The file of Registry under the said Act produced before me at the hearing of this Notice of Motion pertains

to mark under No. 427411A. No explanation has been tendered for substitution of the number as 427411B. Application originally placed under No. 42711A is for totally different mark. It appears that the impugned mark has been substituted in the said application after the plaintiffs filing the present suit. On March 25, 1991, the Registry has passed the order not permitting the said substitution/alteration and for cancellation of the said advertisement. This conduct of the 1st defendant by itself speaks voluminous about lack of bona fide and otherwise intentions of the 1st defendants. In my opinion, the 1st defendants have acted in this indiscreet manner to infringe the said registered mark of the 1st plaintiffs and to pass off their goods as that of the plaintiffs.

27. In the circumstances aforesaid, even the balance of, convenience is in favour of the plaintiffs.

28. Since under a registered user agreement dated September 26, 1990, the 1st plaintiffs have granted licence

and/or registered user to the 2nd plaintiffs to use various trade marks mentioned in the schedule thereunder including the said Mark Under No. 363233 belonging to the 1st plaintiffs, the 2nd plaintiffs are exclusively entitled to use the same subject to the terms of the said agreement and as such the 2nd plaintiffs are also entitled to the reliefs prayed for in this Notice of Motion.

29. In the circumstances, the Notice of Motion is made absolute in terms of prayers (a), (b) and (c) thereof.

The defendants are ordered to pay the costs of the Notice of Motion to the plaintiffs.