J.D. Kapoor, J.
1. Through this application under Order 39 Rule 1 & 2 CPC the plaintiff seeks ad interim injunction against the use of trade dress and colour combination of one third red and two third white, in that order, on the container of its product viz. Tooth Powder as by adopting the similar trade-dress particularly the colour combination of 'red and white' thedefendant has committed offence of 'passing off' goods of plaintiff as its own. There is no dispute as to the trade names as these are distinct and have no kind of similarity whatsoever. Plaintiff's trade name is 'Colgate' and that of defendant is 'Anchor'. Relevant facts need to be capitulated in brief.
2. Plaintiff No. 1 is a company incorporated under the laws of United States of America having its principal office at Newyork. Plaintiff No. 2 is a public limited company having its registered office at Mumbai. Plaintiff No. 1 is the proprietor of the trademark 'Colgate' whereas plaintiff No. 2 is the registered or licensed user and has been manufacturing and marketing dental products in India under the trademark 'Colgate'.
3. The defendant, Anchor Health, is a company incorporated under the Indian companies Act, 1956 and carries on the business as manufacturers and marketersof dental products under the trademark 'Anchor'. The defendant is in the said business since 1996. The plaintiffs have been chasing the defendant since then as according to them the defendants have been trespassing the plaintiff's intellectual property right and have filed as many as three suits against the defendants pertaining to different products.
4. The product which is subject matter of the instant proceedings is a 'Tooth Powder' under the trademark 'Colgate' sold in Cans bearing the distinctive get up and colour scheme or combination of colour comprising pre-dominantly of red and white background. They have been selling this product in India since 1951. Distinct feature of this combination is that around 1/3rd of the background of the upper part of the Can Along with cap is in red colour and 2/3rd is in white colour and in that order. The trademark 'Colgate' appears in white against red.
5. Some time in August, 2002 the plaintiffs improved the get up by introducing swearand a yellow representation in the red coloured portion of the Can. It is claimed that it is because of the distinctive shape of the container and the red and white colour scheme and the overall get up that has helped the plaintiffs in attaining immense reputation and goodwill verging on acquisition of a secondary significance as indicative of the trade of the plaintiff's dental products. It is further claimed that it has become so familiar with the customers at large that they identify the article with the plaintiffs merely by the get up and the red and white colour scheme and for the purpose of the instant product i.e the 'tooth powder' from the shape of the container also.
6. In order to demonstrate the dishonest intention of the defendants in appropriating or adopting prominently similar trade dress in terms of layout, get up and colour combination with obvious intention to encash upon the reputation and goodwill of the plaintiffs, the plaintiffs have referred to the past history of the defendants in keeping track of the plaintiffs products in the market by way of illustrative instances of comparative charts of various products having substantial reproduction of the colour combination of the colour red and white not only in respect of packaging but also otherwise. It all began some time in the year 1996 and the first action taken by the plaintiffs in this regard was in a suit filed in 1996 before the Bombay High Court. However the plaintiff did not succeed in getting ad interim injunction from adopting the same colour scheme and layout mainly for the reason that the trademarks used by the parties were not the same. This action arose from the cartons of dental cream. Though the Appeal against the said order of learned Single Judge of the Bombay High Court has been admitted and pending disposal but no interim relief has been granted.
7. The second suit was instituted against the defendants in Delhi High Court in relation to the copying of the line drawings, layout drawings and artistic work comprising the red and white colour scheme adopted by the defendants in relation to the plaintiffs tooth brush hanger display tray. The instant action is third in the row.
8. The plaintiffs seek ad interim protection to the limited extent of restraining the defendants from using the red and white colour scheme as well as the shape of the container of the tooth powder as according to the plaintiffs they have originated, developed, promoted, protected and also nurtured the distinctive red and white trade dress for all these products which has acquired the meaning as a trademark and, thereforee, has earned exclusive ownership of the said trade dress because of its distinctiveness as well as use over a long period of time across wide geographical area.
9. The comparative charts of various products of the plaintiffs and that of the defendants as well as of few others in the trade like Pepsodent and Dabur have also been placed for the purpose of comparative study as none of the other rivals in the trade has adopted the same colour scheme, combination or get up and the shape of the container and, thereforee, the act of the defendants is against the norms of fair and accepted trade practices which act will inevitably lead to dilution and erosion of the uniqueness and distinctiveness of the trade dress of the plaintiff's goods. Statement has also been filed to show the rise in the sale of the products of the defendants after the colour combination, the trade dress as well as the shape of the container was copied by the defendants in selling the same goods. Thus according to the plaintiffs this amounts to infringement of trade mark and passing off its products. It is pertinent to mention here that the colour scheme red and white has been registered in respect of tooth paste.
10. The defendants have resisted the ad interim injunction mainly and briefly on the following premises:-
(i) That the shape of the container cannot be monopolized by the plaintiff unless and until it is registered under the Designs Act.
(ii) That the shape of packaging or any combination thereof do not fall within the ambit of mark or trademark as envisaged in the TMM Act, 1958.
(iii) That the use of red and white colour combination is neither distinctive nor capable of identifying the goods with the plaintiff nor business of the plaintiff nor capable of secondary significance.
(iv) That the plaintiffs have abandoned the colour combination of red and white and have used various other colour combinations in respect of different ranges of products and, thereforee, the claim of the distinctiveness or uniqueness of the colour combination is unfounded.
(v) That the essential features of the label marks is the word mark and not the colour combination or overall get up and since the two trade marks are entirely different the plaintiffs cannot seek protection under the garb of colour combination of the label.
(vi) That the colour combination red and white in respect of dental care products is descriptive in nature and has a direct reference to the character or quality of the goods, gum and teeth. This combination is common to the trade and is being used by large number of manufactureRs.
(vii) That the plaintiff No. 2 is falsely claiming to be the registered user or a licensed user of the marks of plaintiff No. 1 in India and the plaintiff No. 2 has no right to use the said marks or to restrain otheRs.
(viii) That the use of trademark 'Colgate' by plaintiff No. 2 in India is itself illegal and fraudulent and is in violation of bye-laws.
(ix) The claim of the plaintiff with regard to the colour combination and get up of the label being original artistic work or to the ownership thereof is absolutely false as the plaintiffs claim the ownership of the copyright on the basis of certain averments and in the present suit they have taken a different stand inasmuch as that they have not pleaded the basic requisites for the subsistence of the copy right or for acquiring ownership therein.
(x) That similar pleas were raised by the plaintiff in the earlier suits, one filed in Mumbai High Court and another in this court and claimed that colour combination of red and while is distinctive qua the plaintiff and the use of red and white colour combination by the defendant constitutes an act of passing off. The said plea of the plaintiff has been rejected by the Mumbai High Court as well as in Appeal by the Division Bench of Mumbai High Court and the court has specifically held that because of difference between the trademarks COLGAGE and ANCHOR of respective parties, there is no likelihood of confusion and deception.
(xi) The plaintiffs are not entitled to any order of interim injunction because of delay, laches and acquiescence inasmuch as notice was served upon the defendants in July, 1998 and the action was brought in 2003.
(xii) Plaintiffs have suppressed and concealed the material documents and facts from this court as have been detailed in para 9 of reply namely:-
(a) They are using various colour combinations in respect of their products and not Red and White alone;
(b) Plaintiff is the registered user which is a false claim.
(c.) Plaintiffs have falsely claimed colour combination of Red and White as an essential feature of their label mark. The essential feature is the word `COLGATE' which has been admitted in the rejoinder by the plaintiff.
11. The main gravamen of contention of Mr. R.K.Anand, learned senior counsel for the defendant is that in order to avail protection by way of ad interim injunction the plaintiff has to prima facie establish the following ingredients:-
(a) That he has been in prior, long and continuous use of the mark.
(b) That the defendant has entered the market much later than him.
(c) That there has been no delay in filing of the suit for grant of the ex parte injunction.
(d) That the trademark of the plaintiff has become so distinctive and identical with the goods of the plaintiff that it has imprinted upon the minds of the public at large that the goods belong to the plaintiff.
(e) That there is an element of dishonesty on the part of the defendant to pass off his goods as that of the plaintiff on the premise of deceptive similarities.
12. In support of aforesaid principles Mr. Anand has relied upon the following judgments:-
(i) A.V. Rajadurai Nadar v. Ayya Nadar and another : AIR1977Mad237 wherein it was held that the expression 'deceptively similar' as defined in S.2(d) means that the similarity or resemblance must be such as it would be likely to deceive or cause confusion. Any conclusion reasonable and proper can be arrived at by a meticulous examination of each detail and then making a comparison. At the same time what mainly strikes the eye must also be conducive. But, when one looks at it, especially from the standpoint of a person who is most likely to use a particular brand of matches, if it appears that the distinction is prominent and it cannot lead to any similarity or a deceptive similarity or confusion then there could be no objection to the two different trade marks.
(ii) J. and P. Coats Ltd. v. Chadha & Company(India) PTC Supp(1) 295 Del, where colour of rival boxes was similar, the following view was taken:-'Marks, it must never be forgotten, are remembered rather by general impression or by some significant details than by any photographic recollection of the whole. Keeping in view the main idea, the essential feature or the leading characteristic represented by each one of the two rival marks, we feel that those who use the thread may well be expected to distinguish between the two figures of 'dog' and 'anchor' and if they happen to be literate, they can easily distinguish one from the other. It is no doubt true that the colour of the boxes is very much similar, but then that is not conclusive nor is that the domination or the leading characteristic.'
13. It was further contended by Mr. Anand that even if the colour combination is same on the packing or the container the offence of passing off is not made out once there is an added material showing permanently the source and in the instant case the added material when taken into account would show that on the label of the goods of the defendant there is sufficient indication as to the manufacture of the source or origin of the material besides many other qualities of the goods of the defendant and on account of other ingredients of added material the sting of passing off on account of colour combination vanishes.
14. The packaging of large number of manufacturers of tooth paste and tooth brush has been produced on the record by the defendant. All these packaging are on the red colour background with the trade name written in white colour having little stripes of blue and yellow colour printed thereon. In order to show that the plaintiff has no monopoly over the colour red or white, Mr. Anand has produced few packaging of Colgate tooth paste with different colours having the base of red colour interspersed with blue or yellow colour and, thereforee, to say the colour combination of red and white is its exclusive right is to bellyits own claim.
15. While canvassing the aforesaid proposition of law, Mr. Anand has placed reliance upon a decision of Division Bench of this Court in Kellogg Company v. Pravin Kumar Bhadabhai 1996 PTC (16). In this case the appellant was selling Corn Flakes with carton which described the cartons as Kellogg's CORN FLAKES(the original and the best). The respondent was also selling corn flakes using a carton more or less similar in size but with the title 'AIMS ARISTO CORN FLAKES' written just at the place where appellant displayed the words 'Kellogg's CORN FLAKES. The grievance of the appellant was that carton of the respondent was having substantial deceptive similarities and that these goods are bound to cause confusion amongst the customeRs. Some of the similarities pointed out by the appellant as well as dissimilaritiespointed out by the court were as under:-
(i)That the size and shape of the carton was similar being rectangular.
(ii)In the word 'FLAKES' in the appellan's carton the letters L and A were joined together closely or rather touch each other.
(iii)That both contain a picture of the corn flakes and that there was a small square on the left hand top where the words 'Kellogg's CORN FLAKES' were written inside the square and that the respondent had also put a square on the left hand top with the words 'AIMS ARISTO CORN FLAKES'.
(iv)There was a red band at the top which took off from the square on the left top and ran horizontally across on the front top into the right and to the other sides and respondent also used a similar red band taking off horizontally from the square on the left top.
(v)That even in regard to the square on the left side top, Kellogg's used an inner red border then a white gap and then an outer green border running all along the sides of the square while respondent was also using the same red and green borders for the square on the left top.
Dissimilarities observed by the court were:-
i)The word Kellogg's is displayed very prominently in fairly big letters above the words 'CORN FLAKES' in the square on the left hand top and then to the right of the words `Kellogg's CORNFLAKES there is the picture of the face of a hen, up to its neck.
ii) There is a bowl containing corn flakes and a cherry therein with a big spoon. Pouring of milk is shown into the plate. On the right side of the carton, it is stated prominently that the flakes are 99% fat free whereas in the respondent's carton in the left hand top rectangle the words `AIMS ARISTO' corn flakes prominently written. There is an ISI in a smaller rectangular bracketbut shown quite prominently below the rectangle on the left top, a plate blue in colour with corn flakes and cashew etc. There is no picture of milk pouring into the plate. In other words while in the rectangle on the left hand top the words Kellog's corn flakes are prominent for the appellant, the words `AIMS ARISTO' corn flakes appear very prominently for the respondent at the same place.
The view taken by the court was as under:-
'It is true that the appellant has referred to certain similarities in the size and shape of the carton, there being a square on the left top with word 'KELLOGG'S CORNFLAKE's, the words L&A; being joined, border being red and green and a red band running round in the top horizontally. It is true that these similarities were not set out in the order. But in our prima facie view, the prominent display of the words 'Kellogg's' in bold red letters in white background inside the square on the left-top appellant's carton cannot go unnoticed by any buyer. We have to understand the learned Judge's words 'trade dress of the plaintiff is entirely different', in that light, prima facie.
The law relating to 'trade dress' is very clear. Kerly in 'Law of Trade Marks' (12 Ed, 1986 16.67 says that it is usually true in some degree that a trader's goods are recognised by their general appearance, or 'get-up'. Accordingly, resemblance or 'get-up' is not uncommonly an ingredient in passing off. 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 ordinarily present too' and the author says:'and in these days, in this country, a difference in names is enough to warn the public that they are getting one trader's goods and not the others'(Sapers v. Specters(1953) 70 RPC 173.'
16. Mr. Anand also tried to draw support from Kuber Khaini Pvt. Ltd. v. Prabhoolal Ramratan Das Pvt. Ltd and another wherein the product manufactured by both the parties were purchased by ordinary class of people mostly illiterate. The petitioner's case was that the petitioner has a distinctive design, colour scheme and get up which is an artistic work under the meaning of Copyright Act 1957 and his design was duly registered. Its grievance was that respondent No. 2 was distributing khaini and gutkhasof various manufacturers all in pouches and/or sachets having design, get up, colour scheme and dimension similar to the petitioner's distinctive pouch design. However, the trade name of the petitioner was KUBER whereas trade name adopted by the respondent was CHAKOR. It was averred that the purchaser would not be able to read the name 'CHAKOR' in the pouch and will be guided by the get up of the same. The adoption and use of packaging design apart from the passing off and infringement of the trade mark is also an intention of the respondents and trading upon the reputation of the petitioner's kuber khaini. The emphasis was laid on the difference and dissimilaritiesin respect of the mark used by the respondent. It was submitted that there is no question of being deceived inasmuch as the photograph on the pouch is different. The other dissimilarity is the name. It was held that except the colour combination the name and the get-up are different altogether and further that there are dissimilarities appearing on the face of those pouches/wrappers and, thereforee, there is no scope for purchaser being misled. If a purchaser wants to purchase his goods, he must know the goods he is purchasing. The different name is a piece of evidence that the buyer will go by the name as well and thereforee, there is no question of being deceived.
17. Another judgment relied upon by Mr. Anand is M/s. Amrit Banaspati Co. Ltd v. M/s Suraj Industries Ltd 1996 PTC (16) wherein following view was taken:-
'Normally in an action for passing off the relief of injunction is not to be granted at the interim stage because still there has to be a trial but again in exceptional cases such an interim relief can definitely be made available to the aggrieved party in case prima facie it is established on record that the two products are so similar in appearance that there was absolutely no way of avoiding the grant of interim injunction.'
18. It is contended by Mr. Anand that if the trade name of the product is prominently mentioned on the container and the trade name happens to be altogether different, the colour combination, get up, colour scheme have no relevance and similarities in the colour combination and get up are no ground for injunction as difference in the trade name is sufficient to distinguish the goods of the plaintiff from those of the defendants.
19. On other ancillary points, Mr. Anand has also argued at great length. Attempt needs to be made to precise them. At first instance, Mr. Anand has relied heavily upon the judgment of Bombay High Court. Relevant extracts need to be reproduced. These are:-
'Leave under Rules 147 and 148 of the High Court of Judicature at Bombay(Original Side) Rules, 1980 granted to the plaintiffs to take out notice of motion in terms of the draft notice of motion handed in. Notice of motion is made returnable on 23rd December, 1996. Mr. Dwarkadas waives service for the defendants.
I have heard the learned counsel for the parties at considerable length and having compared the two marks on the two sets of cartons. One of the plaintiffs and the other of the defendants, I do not think any case for ad-interim relief is made out. Ordered accordingly.'
20. Aforesaid order was passed when ex parte ad interim injunction was sought. However the application for interim injunction was decided on merits with the following observations:-
'The plaintiffs filed a suit for infringement of trade mark. By the instant Notice of Motion, plaintiffs is seeking injunction against the defendants from using label mark. Learned counsel for the plaintiffs urged that the colour scheme(colour combination) red and white, is a part of registered trade mark. The defendants for their product of dental cream using the similar colour combination to misguidethe customers and thus it has caused prejudice to the marketing of the Colgate dental cream.
With the assistance of the learned counsel, I perused both the label marks. No doubt, the colour combination, to some extent, is identical. However, the defendant has prominently exposed the brand name 'Anchor' on the label mark. As a result, according to me, even for a ordinary customer, though the colour combination is similar, could not get idea that they are otherwise purchasing Anchor in place of Colgate. The trade mark being so prominent, as pointed out, has a definite distinctive mark of the consumer product. As such, I do not find a fit case for grant of injunction in favor of the plaintiff.
With this direction Notice of Motion is disposed of.'
21. According to Mr. Anand, the judgment of the Bombay High Court is binding upon both the parties for following reasons:-
i)That the ground for seeking injunction propounded by the plaintiff in respect of label mark as well as container of tooth paste is under the trade name of COLGATE.
ii)The plea of the plaintiff was that colour combination or colour scheme of red and white is the part of registered trademark and the defendants by using the same colour combination in respect of dental cream is with an intention to misguide the customeRs.
iii)That the court though observed that the colour combination to some extent is identical yet found that the brand name ANCHOR on the label mark was so prominent than the brand name COLGATE that even an ordinary customer could get an idea in respect of similarity of colour combination that they are otherwise purchasing ANCHOR in place of COLGATE.
22. Mr. Anand contends that the trademark being prominently distinctive does not entitle the plaintiff to injunction merely on the ground of similarity of colour combination on the label.
23. Mr. Anand has relied upon Arjun Singh v. Mohindra Kumar and others : [1964]5SCR946 in support of his contention that once the decision has been given on the question of interim injunction in a suit between the same parties and in respect of same pleas which the plaintiff might have raised in the subsequent suits the principle of rest judicata is invoked. On the concept of rest judicata the Supreme Court made the following observations:-
'Scope of the principle of rest judicata is not confined to what is contained in S.11 but is of more general application. Again, rest judicata could be as much applicable to different stages of the same suit as to findings on issues in different suits. If the court which rendered the first decision was competent to entertain the suit or other proceeding, and had thereforee competency to decide the issue or matter, the circumstance that it is a tribunal of exclusive jurisdiction or one from whose decision no appeal lay would not by themselves negative the finding on the issue by it being rest judicata in later proceedings. Where the principle of rest judicata is invoked in the case of the different stages of proceedings in the same suit, the nature of the proceedings, the scope of the enquiry which the adjectival law provides for the decision being reached, as well as the specific provisions made on matters touching such decision are some of the material and relevant factors to be considered before the principle is held applicable.'
24. Thus Mr. Anand has questioned the maintainability of the suit in view of the provisions of Section 10 of the CPC inasmuch as that direct and substantial question of the use of red and white colour by the defendant is pending before the Bombay High Court and Section 10 prohibits a subsequent suit involving the same dispute or issue or question.
25. Mr. Anand also tried to assail the maintainability of the suit by the provisions of Order 2 Rule 2 CPC as the kernel of the pleadings of the plaintiffs is the colour scheme of red and white on its container and before the Bombay High Court also identical plea was taken in respect of tooth paste and since the cause of action in respect of tooth powder was available to the plaintiff at the time of the filing of the suit against the defendant in the Bombay High Court and after having failed to obtain an injunction the instant suit is nothing but an attempt to indulge in hit and trial method and taking chances.
26. Order 2 Rule 2 CPC provides as under:-
'decree' means the formal expression of an adjudication which, so far as regards the Court expressing it, conclusively determines the rights of the parties with regard to all or any of the matters in controversy in the suit and may be either preliminary or final. It shall be deemed to include the rejection of a plaint and the determination of any question within section 144, but shall not include---
(a) any adjudication from which an appeal lies as an appeal from an order, or
(b) any order of dismissal for default.'
27. Next contention of Mr. Anand is that Plaintiff No. 2 cannot claim to be the registered or licensed user of the trademark Colgate and plaintiff No. 1, the proprietor unless and until it is registered as a registered user under Section 48(1) of the Trade Mark Act, 1995 and in the instant case plaintiff No. 2 is neither registered as a registered user nor as a licensed user as required under Section 48 and as such there is no user of any trademark of plaintiff No. 1 in India. Section 48 provides as under:-
'48. Registered users-(1) Subject to the provisions of section 49, a person other than the registered proprietor of a trade mark may be registered as a registered user thereof in respect of any or all of the goods or services in respect of which the trademark is registered.
(2)The permitted use of a trade mark shall be deemed to be used by the proprietor thereof, and shall be deemed not to be used by a person other than the proprietor, for the purposes of section 47 or for any other purpose for which such use is material under this Act or any other law.'
28. Mr. Anand further contended that plaintiff No. 1 has only applied for the registration of the trademark Colgate in respect of tooth powder Can and tooth powder and it neither manufactures such a product in India nor sells such a product in India. It only claims to hold trademark registrations for the plaintiff No. 2 who can derive its right as a registered user of the trademark of plaintiff No. 1 and, thereforee, cannot be deemed as either a registered user or a licensed user of trademark of plaintiff No. 1 as envisaged in sub-section(2) of Section 48. In other words unless and until the proprietor under the Trade Mark Act is registered it can neither permit the use of trademark and if the proprietor of a trademark happens to be a registered proprietor there is also a requirement of law under Section 48(1) of the Act to seek protection as a permitted or licensed user.
29. The emphasis has been laid by Mr. Anand on the word 'registered user' appearing in sub clause (1) which in his perception means that the registered user has to be necessarily registered as such in case it seeks the protection of the trademark of its registered owner or proprietor.
30. In support of this proposition of law Mr. Anand has relied upon K.R.Beri & Co. l v. The Metal Goods Mfg. Co. Pvt. Ltd. : AIR1980Delhi299 wherein the Division Bench repelled the contention that even without the use by a registered user of the trademark use by any person can be equated as a use by the proprietor if it is with the latters consent. While arriving at this conclusion their Lordships observed as under:-
' when the legislature is creating a fiction by means of Section 48(2) to equate the use by a registered user only as that of proprietor, the court cannot ignore this mandate of the legislature and hold that the use of trade mark by an unregistered user can be equated to the user by the proprietor.'
31. Put briefly the ratio of the aforesaid authority is that use of the trademark by an unregistered user cannot be equated to the user by the proprietor.
32. To cap it all Mr. Anand also contended that neither plaintiff No. 1 nor plaintiff No. 2 has filed a single document showing the sale of tooth powder Can of the trademark Colgate with the get up and the red and white colour scheme in India and in the opinion of Mr. Anand the effect is that there is no evidence on the record to show that there is a user of either of get up or red and white colour scheme by any of the plaintiffs in India and, thereforee, the question of passing off of the goods of the plaintiffs does not arise nor does the element of confusion or deception exist whereas on the contrary the defendant proved documents in support of its use of not only of user of its trademark but also of get up and red and white colour scheme of the container in respect of 'tooth powder' showing the huge sales figures as well as the expenses spent upon the advertisements in the newspapers and in the electronic media.
33. Mr. Anand has relied upon the judgment in Cycle Corporation of India Limited v. T.I.Raleigh Industries Pvt. Ltd. And others : AIR1996SC3295 wherein the interpretation of provisions of Section 46(1)(b) read with Section 48 was involved and the following view was taken:-
'The expression 'by an registered proprietor' in Section 46(1)(b) should not be restricted to user by proprietor or registered user who should also include bona fide or authorised user. The legislature did not intend to register proprietor to be deprived of their property at the instance of user whose use is unregistered. The expression, thereforee, should not be restricted to user by the proprietor himself or any registered user but should also take into account bona fide authorised user.'
34. Mr. R.K.Anand has further contended that as the plaintiffs have relied upon two trademarks registered as 290361 and 434311 in respect of Colgate tooth powder and the documents placed on record by the plaintiff are the marks other than the said two marks and this shows that the plaintiffs are not the registered users of the aforesaid trademark and, thereforee, the user by plaintiff No. 2 is not the user by plaintiff No. 1.
35. In nutshell unless and until the plaintiffs file the documents in respect of aforesaid two marks they cannot claim to be registered user of the trademarks of the plaintiff No. 1.
36. Last but not the least, Mr. Anand contended that on account of unexplained delay in taking action the plaintiff has dis-entitled itself to the relief of interim injunction. According to Mr. Anand the plaintiff sent notice to the defendant in the year 1998 calling upon the defendant to stop using the colour combination of red and white on the packaging of their goods and thereforee according to the plaintiff, the cause of action arose in July, 1998 when the notice was sent but the averments made by the plaintiff are that the defendant keeps on changing the colour combination and pattern and whenever the plaintiff changes his pattern he always introduces an element of deceptive similarity. But on the contrary there is no evidence to that effect. May be that the plaintiff may be using the same from time to time as and when the defendant changes as the defendant has the registered copy right in respect of his colour combination and the packing style as the registered copy right is not in respect of tooth powder and is in respect of logo.
37. Mr. Anand stated that first notice in respect of tooth powder was given on 13.7.1998 whereby the plaintiff called upon the defendant to restrain from manufacturing, distributing or selling the goods packed in cans having the similar get up and colour scheme of red and white but for five years they did not take any action till the suit was filed. Such an inordinate delay is not only fatal but sufficient to oust the plaintiff. In support of this contention Mr. Anand has drawn strength from the following:-
In Sudhir Bhatia and others v. Midas Hygiene Industries(P) Ltd. 2992(24) PTC 94 Delhi (DB) observations of Eve, J in Codes v. Addis & Sons 1923(40)RPC 130 were cited. The observations of Eve, J. are as under:-'For the purpose of determining this issue I must assume that the plaintiffs are traders who have started in this more or less small way in this country, and have been continuously carrying on this business. But I must assume also that they have not, during that period, been adopting a sort of Rip Winkle Policy of going to sleep and not watching what their rivals and competitors in the same line of business were doing. I accept the evidence of any gentleman who comes into the box and gives his evidence in a way which satisfies me that he is speaking the truth when he says that he individually did not know of the existence of a particular element or a particular factor in the goods marketing by his opponents. But the question is a wider question than that : ought not he to have known is he entitled to shut his eyes to everything that is going on around him, and then when his rivals have perhaps built a very important trade by the user of indicia which he might have prevented their using had he moved in time, come to the court and say : 'Now stop them from doing it further, because a moment of time has arrived when I have awakened to the fact that this is calculated to infringe my rights.' Certainly not. He is bound, like everybody else who wishes to stop that which he says is an invasion of his rights, to adopt a position of aggression at once, and insist, as soon as the matter is brought to court, it ought to have come to his attention, to take steps to prevent its continuance; it would be an insufferable injustice were the court to allow a man to lie by while his competitors are building up an important industry and then to come forward, so soon as the importance of the industry has been brought home to his mind, and endeavor to take from them that of which they had legitimately made use every day when they used it satisfying them more and more that there was no one who either could or would complain of their so doing. The position might be altogether altered had the user of the factor or the element in question been of a secretive or surreptitious nature; but when a man is openly using, as part of his business, names and phrases, or other elements, which persons in the same trade would be entitled, if they took steps, to stop him from using, he gets in time a right to sue them which prevents those who could have stopped him at one time from asserting at a later stage their right to an injunction.'
38. Pitted against such a long strip of pleas against injuncting the defendant which according to Mr. Anand is difficult to cross, Mr. Kapil Sibal has the following to offer.
39. Mr. Sibal has contended that the definition of the mark under Section 2-J takes the colour combination within its fold and has placed reliance upon Anglo-Dutch P C & V Works Pvt. Ltd. v. India Trading House : AIR1977Delhi41 wherein the container of the plaintiff had following distinctive features:-
'(i) a large circle with the numeral 1001 appearing in gray on white background,
(ii)this large circle is super-imposed on violet background,
(iii)the top and bottom figures in gray on white portions and
(iv) on the back-side the trading style in the white circle with gray lettering and a small monogram in the centre.'
40. The container of the defendant, to the eye, was practically identical to that of the plaintiff except for the difference that instead of numeral 1001 the defendant had changed the numeral 9001. There were other imperceptible differences also. It was held that the confusion of violet background and grey lettering was distinguished combination of colour and, thereforee, could be acquired as a trademark for plaintiff's container.
41. Mr. Sibal went to the extent that even a single colour can achieve the status of a trademark and has taken support from an American decision Qualitex v. Jacobson 514 US 159 wherein the following view was taken:-
'We cannot find in the basic objectives of trademark law any obvious theoretical objection to the use of colour alone as a trademark, where that colour has attained 'secondary meaning' and thereforee identifies and distinguishes a particular brand (and thus indicates its 'source'). In principle, trademark law, by preventing others from copying a source-identifying mark, 'reduce(s) the customer's costs of shopping and making purchasing decisions'.
42. In the same vein Mr. Sibal also contended that the containers or goods of particular get up with distinctiveness also acquire the protection like that of a trade mark and in support of this relied upon Hoffmann-La Roche & Co. v. DDSA Pharmaceuticals Limited 1972 RPC 1. Views of Lord Justice Harman are as under:-
'Goods of a particular get-up just as much proclaim their origin as if they had a particular name attached to them, and it is well known that when goods are sold with a particular get-up for long enough to be recognized by the public as goods of a particular manufacturer it does not matter whether you know who the manufacturer is.'
43. On the concept that if there is an overall confusing similarity in the design, colour scheme between the conflicting labels inspire of there being no conflict with the trademark it is a case of passing off Mr. Sibal equipped himself with foreign decisions besides two Indian decisions (i) Camlin Pvt. Ltd. v. National Pencil Industries 1989 IPLR 215; and (ii) Vicco Laboratories Bombay v. Hindustan Rimmer, Delhi : AIR1979Delhi114 . In Camlin's case a prima facie view of passing off was taken where the get up, colour combination and overall arrangement of the pencils of the plaintiff had become associated exclusively with their goods as understood by the trade and public as well as the reputation of the plaintiff in respect of those pencils.
44. In Vicco Laboratories case also the plaintiffs were selling their goods with descriptive get up and colour scheme for long in 1995 while the defendants started selling their products in 1997 in the cartons which appeared to be copies of the entire get up and the colour scheme adopted by the plaintiff. It was held to be a case of passing off and fit for injuncting the defendants. The foreign decisions relied upon by Mr. Sibal on the concept of trade dress encompassing colour combination, get up and lay out inspire of there being no similarity in the trade name are as under:-
(i)White Hudson & Company Limited v. Asian Organization Limited 1965 RPC 144. In this case the plaintiffs sold their cough sweets in Singapore since 1953. The sweets were sold loose in orange colored cellophane wrappers on which was printed the word 'Hacks' in Roman characters only. In March, 1958 the defendants entered the same market with cough sweets in a white cellophane wrapper. But in May of that year they went over to using an orange wrapper similar to the plaintiffs' but bearing the word 'Pecto'. The plaintiffs brought an action to restrain passing off. The trial judge found that no other wrapper cough sweets had been sold loose, that the sweets were called by the local population 'red paper cough sweets', that the plaintiffs' get-up had become distinctive of their goods, that the get-up of the defendants' sweets resembled the plaintiffs' to such an extent as to lead to confusion, that the difference in the names printed on the wrappers was not sufficient to distinguish the goods in the eyes of a purchasing public largely unable to read English, and that passing-off had thereforee been established.
(ii)Tavener Rutledge Ld. v. Specters Ld. 1959 RPC 83
It was also a case of Colgate tooth paste pertaining to its label. The defendant introduced and had taken to sale in the local market fluoride treated tooth paste. It was held that the act of the defendant constituted an infringement of their said trade marks as it was calculated to deceive and had in fact led to deception and the belief that his toothpaste was the goods of the appellants or either of them; and was calculated to cause and must have caused sale of toothpaste which was not manufactured or marketed by the appellants to be passed off as their goods.
45. While emphasizing the significance of trade dress Mr. Sibal vehemently contended that trade dress involves the total image of a product and includes features such as size, shape and graphics and needs to be protected like trade mark. Such a doctrine was enunciated in Vision Sports, Inc. v. Melville Corp. 12 USPQ 1740 like this-
'In contrast, trade dress involves the total image of a product and 'may include features such as size, shape, colour combinations, texture, or graphics. Trade dress protection is broader in scope than trademark protection, both because it protects aspects of packaging and product design that cannot be registered for trademark protection and because evaluation of trade dress infringement claims requires the court to focus on the plaintiff's entire selling image, rather than the narrower single facet of trademark.
46. While meeting the challenge of the defendant that the plaintiff is ousted from instituting the suit on account of delay, laches and acquiescence Mr. Sibal has contended that the plaintiff had issued a notice in July, 1998 and, thereforee, any use is at the defendants risk and peril. In support of this contention Mr. Sibal has placed reliance upon the following:-
(i)My-T Fine Corporation v. Gertrude Samuels & Others 21 USPQ 94 where delay of two years before beginning suit was held to be of no importance. It was held that were it not for the intent to trade unfairly, we might hesitate but advantages built upon a deliberately plagiarized make-up do not seem to us to give the borrower any standing to complain that his vested interests will be disturbed.
(ii)Hindustan Pencils Pvt. Ltd. v. India Stationery Products : AIR1990Delhi19 where this court held that in defense of laches in equity both the parties must come to the court with clean hands and present who is guilty.
(iii) Alfred Dunhill Limited v. Kartar Singh Makkar 1999 (19) PTC 294 where there was a delay of 11 years and arguments were advanced that delay is fatal to the plaintiff's application for temporary injunction as in that case plaintiff refrained from instituting common law suit presumably with the belief that the matter would be resolved in the proceedings initiated by it against the defendant company, it was held that it cannot be said that plaintiff company had been sleeping over on its rights while on the other hand, defendant company acted on its own peril by continuing to use the mark and in such eventuality delay of 11 years was excusable.
(iv) In Massdak Hossain v. State of West Bengal and others : AIR1998Cal270 it was held that where the respondents are put on notice no surprise can be caused by filing of the suit. In other words if the sales are insignificant or have not affected the plaintiff, to expect the plaintiff to institute a suit immediately after service of notices is not a valid expectation.
47. Mr. Sibal referred to the conduct of the defendant in following the shape and the size of the containers of the plaintiffs whenever plaintiffs come out with new container also shows or demonstrates its intention to encash upon the reputation and goodwill of the plaintiff. Whenever the plaintiffs come out with the same product but in different sizes of containers, the defendant does not lag behind and immediately comes out with the same size of containers nevertheless to say with the same colour combination and get up.
48. While expounding the doctrine of confusion arising from the deceptive similarities as to the trade dress that may fail the unwary customer to distinguish between the rival goods Mr. Sibal placed strong reliance upon Harold F.Ritchie, Inc. v. Chesebrough-Pond's Inc, 26 USPQ 310 wherein it was held that while entering a field of endeavor already occupied by another the second comer should, in the selection of a trade name or trade mark, keep far enough away to avoid all possible confusion and the leading case on this concept is Florence Mfg. Co. v. J.C.Dowd & CO. 2 Cir. 178 F.73 which again was an American case. The law laid down in this respect is as under:-
'It is so easy for the honest business man, who wishes to sell his goods upon their merits, to select from the entire material universe, which is before him, symbols, marks and covering which by no possibility can cause confusion between his goods and those of his competitors, that the courts look with suspicion upon one who, in dressing his goods for the market, approaches so near to his successful rival that the public may fail to distinguish between them'.
49. As regards the objection that the benefit of use claimed by plaintiff No. 1 in respect of the use alleged to have been made by the plaintiff No. 2 cannot accrue to plaintiff No. 1 unless and until the license used is duly registered under the provisions of Section 48 of the Act, Mr. Sibal contended that this may be relevant in context of a suit for infringement as the defendant can claim that the registration is invalid since the trademark to which it pertains has not been in use.
50. As regards the previous proceedings between the parties in Mumbai and the injunction refused by the Mumbai High Court Mr. Sibal has contended that the previous proceedings have no relevance as these related to 'tooth paste' while the present proceedings relate to 'tooth powder' whichhas not only a distinctive container but distinctive colour combination and get up on the container.
51. I have accorded my careful and cautious consideration to the rival contentions for the purpose of ad interim injunction and have come to the following conclusions:-
52. It is the overall impression that customer gets as to the source and origin of the goods from visual impression of colour combination, shape of the container, packaging etc. If illiterate, unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for longer period by way of getting the goods in a container having particular shape, colour combination and getup, it amounts to passing off. In other words if the first glance of the article without going into the minute details of the colour combination, getup or lay out appearing on the container and packaging gives the impression as to deceptive or near similarities in respect of these ingredients, it is a case of confusion and amounts to passing off one's own goods as those of the other with a view to encash upon the goodwill and reputation of the latter.
53. The plaintiffs have succeeded prima facie in showing from the look of trade dress of the two articles, one manufactured by the plaintiff and another by the defendant from the point of view of not only unwary, illiterate customer/servants of the household but semi-literate also as the trademarks 'Colgate' and 'Anchor' are written in English language cannot be distinguished by ordinary customer of a country where bare literacy level is abysmally low. There is every likelihood of confusion as to the source on account of the similarity of substantial portion of the container having particular colour combination and also shape of the container which alone helps in determining the allegations of passing off despite stripes in the same colour or in different colour. The criteria is the overall impression from the look of packaging/container containing the goods and articles that can legitimately injunct its rival. Such an action on the part of infringing party also has an element of unfair competition.
54. May be, no party can have monopoly over a particular colour but if there is substantial reproduction of the colour combination in the similar order either on the container or packing which over a period has been imprinted upon the minds of customers it certainly is liable to cause not only confusion but also dilution of distinctiveness of colour combination. Colour combination, get up, lay out and size of container is sort of trade dress which involves overall image of the product's features. There is a wide protection against imitation or deceptive similarities of trade dress as trade dress is the soul for identification of the goods as to its source and origin and as such is liable to cause confusion in the minds of unwary customers particularly those who have been using the product over a long period.
55. The difference in the style of the words appearing on the container or packing identifying its manufacturers by way of style, colour combination or textures or graphics is certainly significant or relevant for determining the overall imitation of the container but if a product having distinctive colour combination, style, shape and texture has been in the market for decades as in this case it is in the market since 1951 it leads to ineluctable inference of having acquired secondary meaning on account of its reputation and goodwill earned at huge cost.
56. It is not the diligent or literate or conscious customer who always remain conscious to the quality of goods he has been purchasing which determines an offence of passing off. It is the unwary, illiterate and gullible persons who determine by arriving at a conclusion whether the infringed goods are confusingly similar in colour combination, get up, lay-out printed over the container or packing. If it is not so then the offence of passing off will cease to have its existence once the guilty party chooses a different trade name.
57. Words 'Colgate' and 'Anchor' are distinct and have not an iota of similarities either in look or in sound. That is why the ingredients of trade dress, get up, colour combination, lay out of the container or packing acquire significance and relevance for determining the offence of passing off. This criteria flows from the concept of action of passing off developed over the years that it is the similarities and not the dissimilarities which go to determine whether the action for passing off is required or not. That is why in trademark cases even the deceptive similarities are considered sufficient for infringement of trademark. If similarities of trade dress are substantial from the look of the two goods, it comes within the mischief of passing off.
58. As in Hudson's case, for non-speaking English, purchasers get up was held to be all important. In the instant case for unwary, illiterate and gullible customer, who is as good as non-English knowing purchaser, trade dress in the form of colour combination of Red and White in that order and proportion is all pertinent and relevant and nothing else. Distinctive differences in name is of no significance. Reason is simple. If an illiterate servant or village folk goes to the shop with the instruction to bring Colgate Tooth Power having a container of particular shop with trade dress of colour combination of Red and White in 1/3 and 2/3 proportion he will not be in position to distinguish if he is handed over 'Anchor' Tooth Powder contained in a container having the identical trade dress and colour combination of 'Red and White' inthat order and proportion. Confusion is writ large as to source and origin as the difference in name will not make any difference to such a customer and the goods of the defendant can easily be passed off as goods of the plaintiff.
59. Conscious imitation or substantial imitation of colour combination or get up or lay out of container again bares the design of the defendant in causing confusion in the minds of customeRs. The court is not required to find out whether there is confusion or deceptiveness. The test is whether there is likelihood of confusion or deceptiveness in the minds of unwary customers irrespective of dissimilarities in the trade name.
60. In the case of passing off and for that purpose infringement of trade mark which are already in existence, the second or for that purpose the subsequent comer has certain obligation to avoid unfair competition and become unjustly rich by encashing on the goodwill or reputation of the prior comer. They have to establish and bank upon on their own trade dress or distinctive features so as to establish their own merit and reputation and attract the attention of the purchasing public and if there are no substantial dissimilarities of marks, colour combination, get up or lay out on the container or packing or covering of the goods of the prior comer these are likely to create confusion in the minds of customers between his goods and the goods of the prior comer in the market as underlying and hidden intention of the second comer is to encash upon the successful rival.
61. Though in Harold F.Ritchie's case observations emanate from the competitiveness of American economy and thereforee the second comer in an already occupied field has always endeavor to capture as much of the first comer market as he can.
62. Significance of trade dress and colour combination is so immense that in some cases even single colour has been taken to be a trademark to be protected from passing off action. Colour combination is a trade mark within the definition of the TMM Act as there is no exclusion in the definition. Even a single colour has been held to be a trade mark. There may be exception also. Exception is that where the colour cannot be protected as the blue colour is for the Ink and red colour is for the lipstick. Red and white has nothing to do with the pink. Teeth as white line and Gum as Pink colour alone at least sometimes can meet the basic requirements as a trade mark. Colour depletion theory is unpersuasiveonly in cases where a blanket prohibition is being sought.
63. As to the element of deceit and confusion it varies from product to product, customer to customer. As regards the objection that the court should not interfere that this case pertains to two separate products that namely tooth powder and tooth paste the facts are different, the containers are different and the packaging is different. As regards the defense that the red and white colour is common to the trade fact remains that no manufacturer is using colour combination of red and white in respect of tooth powder nor has any other manufacturer used colour combination of red and white colour in respect of tooth powder.
64. Even in changing competitive commercial complexion of Indian economy, the second comer is also required 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 the public into mistakenly purchasing his product for his competitor's and the second comer must create a reputation of its own and not trade on the goodwill of another product already established at considerable cost and risks.
65. As regards the plea of the defendant that plaintiff are not entitled to interim injunction because of delay, laches and acquiescence inasmuch as notice was issued in July, 1998 and action was brought in 2003, such a defense is not available as it is well settled principle of law that if use is found to be dishonest, delay or acquiescence has no relevance. The very fact that notice was served upon the defendant, the bringing of the action after two or three years becomes insignificant and irrelevant.
66. Further, though notice was given to the defendant on 13/7/98 against the old product but when the defendant discontinued with the old product and brought out a new product in 2002 the instant action was taken within three months and thereforee the question of delay does not arise. The notice was given against the use of red and white colour combination with blue line in between. Admittedly the plaintiff did not take any action as the sales were insignificant but when they modified the product with red and white colour combination alone in October, 2002 and the sales of the defendants goods have suddenly went up the instant action was taken.
67. As regards defense of delay, it is well settled that delay implicate is not a defense. Delay is relevant so far as damages are concerned. This cannot stand in the way of injunction. If the original use is dishonest where the notice has been issued inordinate delay or laches may at the most defeat the claim of rendition of accounts. Party is not supposed or expected to rush to the Court immediately.
68. As regards the objection that use made by plaintiff No. 2 cannot accrue to the plaintiff No. 1, there is no substance as this is not the scope of the instant suit as the present case is essentially a case of passing off and there is no registration of the plaintiff which has been put into attack on the ground of non-use.
69. Upshot of aforesaid discussion leads to the most ineluctable conclusion that the plaintiffs have successfully established a prima facie case for injuncting the defendant from using the colour combination of red and white in that order as trade dress on the container and packaging. As a consequence the application is allowed and defendants are, by way of ad interim injunction, restrained from using the colour combination of red and white in that order on the container/packaging of its goods viz. the 'Tooth Powder'.