GUJARAT NATIONAL LAW UNIVERSITY, GANDHINAGAR, GUJARAT, INDIA

SUBJECT: TRADEMARK AND GEOGRAPHICAL INDICATIONS

CASE ANALYSIS ON PASSING OFF CASES

SUBMITTED TO:

Dr. Nidhi Hriday Buch

Assistant Professor of Law

SUBMITTED BY:

NAIKA SALARIA- 19LLM19

Gujarat National Law University

Attalika Avenue,

Knowledge Corridor Koba,

Gandhinagar– 380007 www.gnlu.ac.in

1
Introduction to passing off

Passing off is a common law tort, which can be used to enforce unregistered trademark rights.
The law of passing off prevents one person from misrepresenting his goods or services as that
of another. 1 The tort of passing off is a common law remedy. It is a facet of Unfair
Competition. As the term denotes it is a false representation about the source or quality of
goods, service or business. Passing off could result from use of similar mark, shapes, get up
or even generic terms. There is a falsehood which the goods or service is telling about itself.2

Passing off is a form of tort, and its substantive part is founded upon the common law
principles. The general principle of passing-off states that no man can have any right to
represent his goods as the goods of another person. As stated above, the Trade Marks Act,
1999 does not define “Passing Off”, however, the Act denies the registration of any
trademark if the use of the mark is prevented in India by virtue of the law of passing off and
enables an individual to claim his rights under the Act, even if the mark is unregistered.
Therefore, an action for passing off can also be filed by a person who does not have a
registered trademark in India.

The object of law of passing off is to protect some form of property – usually the goodwill of
the plaintiff in the business or the goods or the services. The law of passing off provides a
remedy against a false representation tending to deceive customers into believing that the
goods which the other party is selling or the services which the other party is providing are
really the first party’s goods/services.3

There are certain characteristics for categorizing an act as passing-off, and the same were
identified by Lord Diplock in the case of- Ervin Warnik B. V. v. J. Townend & Sons (Hull)
Ltd. The five characteristics recognized are:

 Misrepresentation
 The act must be made by the defendant in course of trade
 The prospective or ultimate customers of the plaintiff’s goods and services have been
misrepresented,
 Such an act of misrepresentation is calculated to injure the business or goodwill of the
plaintiff, and
 Such act causes actual damage to the business or goodwill of the plaintiff.

Further, for the success of claim against passing-off, the plaintiff has to pass the Classical
Trinity test, used in case of- Perry v. Truefitt and was later upheld in the landmark case of
Reckitt & Colman Products Ltd. v. Bordan Incorporation. The test requires the plaintiff to
prove the presence of the following three elements:
1
Legal Service India. (n.d.). Passing off under trademark. Legal Services India.
<https://www.legalservicesindia.com/article/1254/Passing-off-under-trademark.html>
2
Is prior use the knock out punch in passing off cases - Intellectual property - India. (2017, June 1). Welcome to
Mondaq. <https://www.mondaq.com/india/Intellectual-Property/598964/Is-Prior-Use-The-Knock-Out-Punch-
In-Passing-Off-Cases>
3
Law of passing off in India | Why passing off necessary - KPS legal. (2016, December 17). <Learning Center -
Setindiabiz. https://www.setindiabiz.com/learning/law-of-passing-off-in-india/>
 1. that the plaintiff had acquired a reputation or goodwill in his goods, name or mark,
2. there was a misrepresentation, whether intentional or unintentional, which was done
by the defendants by the use of mark of the plaintiff or by any other means (which
includes use of similar marks) and which led the purchasers/consumers to believe that
the goods and services which were being offered by the defendants are goods and
services of the plaintiff or were associated with the plaintiff’s goods and services,
3. that the plaintiff has already suffered damage or is likely to suffer damage due to such
misrepresentation.

Passing off is not defined in the act. It is defined in section 27 (2), 134 (1) (c) and Section 135
of Trademarks Act. Section 134 (1) (c) refers to jurisdiction/power of District courts to try the
suit and even issue injunction in matter pertaining to Passing off suits. The plaintiff is
supposed to establish its case and satisfy the court concerned the irreparable loss/injury
caused to them.

Jurisdiction for instituting a suit for infringement:

The jurisdiction to try the matters of passing-off has been given to every court which is not
inferior to a District Court.

Remedies for Infringement of a Trademark:

Similar to trademark infringement, the relief which the plaintiff can get in any suit for passing
off includes injunction and, at the option of the plaintiff, either damages or an account of
profits, together with or without any order for the delivery-up of the infringing labels and
marks for destruction or erasure.4

“The legal and economic basis of this tort is to provide protection for the right of property
which exists not in a particular name, mark or style but in an established business,
commercial or professional reputation or goodwill. So to sell merchandise or carry on
business under such name, mark, description, or otherwise in such a manner as to misled the
public into believing that the merchandise or business is that of another person is a wrong
actionable at the suit of that other person. This form of injury is commonly, though
awkwardly, termed that of Passing-off one’s goods or business as the goods or business of
another and is the most important example of the wrong of injurious falsehood. The gist of
the conception of passing off is that the goods are in effect telling a falsehood about
themselves, are saying something about themselves which are calculated to misled. The law
on this matter is designed to protect traders against that form of unfair competition which
consists in acquiring for oneself, by means of false or misleading devices, the benefit of the
reputation already achieved by rival traders.”5

The Trademark Act, 1999 under Section 27 provides for the remedy of passing off for misuse
of an unregistered trademark by the Defendant. It enumerates that no person shall be entitled
to institute any proceeding to prevent infringement of an unregistered trademark. The law
4
Passing off - Trademark infringement in India | Selvam & Selvam. (2017, August 28).< Selvam & Selvam.
https://selvams.com/kb/in/trademarks/passing-off-action/>
5
Salmond and Heuston; law of Torts (20th Ed, Pg.395)
further entails that the provision shall not affect the rights of action against any person for
passing off goods or services as the goods of another person or as services provided by
another person, or the remedies in respect thereof.6

Judiciary’s understanding for concept of passing off/ understanding of passing off from
the judiciary’s view

6
Trademark infringement and passing off- Law and important judgments. (2018, January 17). Vakilno1.com.
<https://www.vakilno1.com/legal-news/trademark-infringement-passing-off.html>
Passing off is a foreign concept and India has adopted this concept by pronouncing various
landmark judgements and providing guidelines as of parameters to make the concept of
Passing off easily identifiable. Many dignified judges had also explained the distinction
between Infringement and Passing off in detail in the cases. The following cases are
milestone judgment derived by Indian Judiciary for better understanding of Passing off and
its implications through Indian Trademark Act, 1999.

I. Reckitt & Colman Products Ltd. V/S Borden Inc.7

Plaintiff Reckitt & colman Products

Trade name: Lemon Jif
Status: Unregistered
Defendant Borden
Trade name: ReaLemon
Status: Unregistered
Trial Court Ordered in Favour of plaintiff
Court of Appeals Ordered in favour of plaintiff
House of Lords Permanent injunction imposed on defendant
in lieu of Passing off

Facts:

Plaintiff, sold lemon juice under the name "Jif Lemon" which came in plastic yellow
container that was shaped like a lemon. Borden, a competitor, started to produce lemon juice
in a similar lemon-shaped plastic container with name “ReaLemon” that was only slightly
larger with a flattened side. Reckitt sued Borden for passing off their product as Jif Lemon
juice as the plaintiff was in market since 40 years.

7
(1990) 1 All.ER 873
At trial the Court found in favour of Reckitt, which was subsequently upheld at the Court of
Appeal. now the appeal is in house of lords.8

Court’s Observations:

The passing off action is arise when there is misrepresentation, when it is harm the existence
plaintiff’s goodwill, when it is made by a trader in the course of trade, which is injure the
business of another trader and which cause actual damage to the business or goodwill of the
trader by the whom action is brought.

But these requirements were reduced to three in Reckitt & Colman Products Ltd. V. Borden
Inc. now there are three essential requirements for the passing off action:

1. The Claimant’s Goodwill: Although damage is the gist of an action for passing
off, but the plaintiff must show that there is a reasonable reason of his being
injured by the defendant’s action, even if the conduct of the defendant might be
calculated to deceive the public. A private individual cannot institute a suit for
passing off even if the defendant practices deception upon the public, unless it is
proved that the defendant’s action is likely to cause damage to the individual.

2. Misrepresentation: Misrepresentation in the simplest form of passing off. If A

says falsely these goods I am selling are B’s goods. It is a clear case of passing
off. In simple way we can say that misrepresentation should lead. Or be likely to
lead confusion on the part of consumers. In case of Khemraj v. Garg9, in this case
the defendants had copied the get up, layout, design and colour scheme, etc. and
the name “manavpanchang, mani ram panchang” and “shri vallabh Mani Ram
panchang” of the plaintiff’s panchang. The court held that it is similar to the
plaintiff’s product and Interim injunction was granted.

3. Damage: Damages are available in a passing off action. And remedy is available
in both cases whether the infringement suit or passing off action in both the cases
remedy is given.10

II. Laxmikant Patel V/S Chetan shah11

8
Trademark case brief- Reckitt & Colman V Borden. (2018, January 23). Notes For Free.
<https://notesforfree.com/2018/01/23/trademark-case-brief-reckitt-colman-v-borden/>
9
AIR 1975 Delhi 130
10
Legal Service India. (n.d.). Passing off under trademark. Legal Services India.
<https://www.legalservicesindia.com/article/1254/Passing-off-under-trademark.html>
11
2002 (24) PTC 1 (SC)
 Plaintiff Laxmikant Patel
Trade name: Muktajivan Colour lab
Status: Unregistered
Using year: 1982
Defendant Chetan Shah
Trade name: Muktajivan Colour Studio
Status: Unregistered
Using year: 1997
District Court Rejected the Plaintiff’s application and case
of Passing off
High Court The appeal was directed to be dismissed.
Supreme Court The appeal was accepted and interlocutory
injunction on respondent was also imposed
on emergency basis

Facts:

The plaintiff started the business of colour lab and studio in the year 1982 in Ahmedabad, in
the name and style of Muktajivan Colour Lab and Studio and is using the name since 1982
openly, extensively and to the knowledge of everyone concerned. The high quality of
services rendered by the plaintiff to his customers has earned a reputation and developed a
goodwill associated with the trade name Mukhtajivan Colour Lab. In order to develop his
business the plaintiff has promoted his wife Radhaben to open a new colour lab in the name
and style of Muktajivan Colour Studio at two other localities of Ahmedabad - one, at H. J.
House, next to Maninagar, and two, at Nandanbaug Shopping Centre, Nava Vadaj. At the
latter place the business is being run in the partnership of Radhaben, the wife of the plaintiff
and her brother, Karsan Manji Bhutia. The plaintiff has expanded his business by incurring
substantial expenditure on advertisement and by incorporating the word 'Muktajivan' in all
stationery materials, letter-heads, invoices, albums, hoardings, sign-boards etc. The defendant
No. 1 who was carrying on similar business in the name and style of 'Gokul Studio' is
intending to commence business through his wife, the defendant No. 2 by adopting the name
and style of Muktajivan Colour Lab and Studio. On 12.5.1997 the passing off action was
initiated by the plaintiff by filing a suit in the District Court of Ahmedabad seeking issuance
of permanent preventive injunction against the defendants restraining them from passing off
their business, services and goods as of and for the business, services and goods of the
plaintiff. An application seeking an ad-interim injunction, on identical facts, was also filed.12

Trial Court observed that the defendants studios name was somewhat identical with the
trade name of the plaintiff. In spite of these findings the learned Trial Judge refused the
prayer for the grant of injunction mainly on the ground that although the businesses of the
plaintiff and the defendants were situated in Ahmedabad but the business of the defendants
was in the outer periphery of the city of Ahmedabad, at a distance of about 4 to 5 kms. from
the place where the plaintiff was carrying on his business which was mainly in the city area,

12
Laxmikant V.Patel vs Chetanbhat Shah & Anr on 4 December, 2001. (n.d.). Indian Kanoon - Search engine
for Indian Law. https://indiankanoon.org/doc/1299452/
and therefore, a case for restraining the defendants from doing the business in the name and
style of Muktajivan Colour Lab and Studio did not arise.13

The High Court observed that there were no pleadings to suggest that the other two
businesses using Muktajivan as part of their trade names were so using the name under the
authority and licence of the plaintiff and therefore the plaintiff was not entitled to the grant of
an injunction restraining only the defendant from using Muktajivan. The appeal was therefore
directed to be dismissed. An interim order of injunction which was granted earlier by the
High Court was also directed to be vacated.14

Supreme Court opined that a refusal to grant an injunction in spite of the availability of
facts, which are prima facie established by overwhelming evidence and material available on
record justifying the grant thereof, occasion a failure of justice and such injury to the plaintiff
as would not be capable of being undone at a latter stage. The discretion exercised by the
Trial Court and the High Court against the plaintiff, is neither reasonable nor judicious. The
grant of interlocutory injunction to the plaintiff could not have been refused, therefore, it
becomes obligatory on the part of this Court to interfere.15

III. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd16

Plaintiff Cadila health care

Trade name: FALCIGO
Status: Registered
Using year: August 20, 1996
Defendant Cadila Pharmaeceuticals Ltd.
Trade name: FALCITAB
Status: Unregistered
Using year: 1997
District Court Rejected the Plaintiff’s application and case
of Passing off
High Court The appeal was directed to be dismissed.
Supreme Court Sent for review to district court.

13
Laxmikant V.Patel vs Chetanbhat Shah & Anr on 4 December, 2001. (n.d.). Indian Kanoon - Search engine
for Indian Law. https://indiankanoon.org/doc/1299452/
14
ibid
15
inid
16
2001 PTC 541 (SC)
Facts:

Appellant and Respondent were Pharmaceutical companies who had taken over the assets and
business of erstwhile Cadila Group after its restructuring under Section 391 & 394 of the
Companies Act. One of the conditions in the scheme of restructuring of the Cadila Group was
that both the Appellant and the Respondent got the right to use the name “Cadila” as a
corporate name. The Appellant manufactured a drug under the brand name “FALCIGO”
which contained Artesunate for the treatment of cerebral malaria, commonly known as
Falcipharum.

On August 20, 1996 the Appellant applied to the Trade Marks Registry, Ahmedabad for
registration of the mark “FALCIGO” in Part-A, Class-5 of the Trade and Merchandise Marks
Act. On October 7, 1996, the Drugs Controller General (India) granted permission to the
Appellant to market the said drug under the trade mark of “FALCIGO” all over India.

The Appellant then filed a suit in the District Court at Vododra, Gujarat seeking injunction
against the Respondent from using the trade mark “FALCITAB”.

The interim injunction application made by the Appellant was dismissed.

Subsequently, an appeal was filed by the Appellant in the. Hon’bl High Court reached the
conclusion that it could not be said that there was a likelihood of confusion cause to an
unwary customer in respect of the disputed marks.

The Appellant then approached the Hon’ble Supreme Court against the order of the Hon’ble
High Court.17

17
Cadila healthcare limited vs Cadila pharmaceuticals limited on 26 march, 2001. (n.d.). Indian Kanoon
<https://indiankanoon.org/doc/1114158/>
Arguments from the appellants:

• It was claimed by the Appellant that the drug manufactured by the Respondent Company
would be passed off as Appellant’s drug “FALCIGO” for the treatment of the same disease in
view of confusing similarity and deception in the names

• It was submitted on behalf of the Appellant that although the possibility of confusion in a
drug being sold across the counter may be higher but the fact that a drug is sold under
prescription or only to physicians cannot by itself be considered a sufficient protection
against confusion. The physicians and pharmacists are trained people yet they are not
infallible and in medicines, there can be no provisions for mistake since even a possibility of
mistake may prove to be fatal.18

Arguments from the Respondents:

• Word “Falci”, which is the prefix of the mark was taken from the name of the disease
Falcipharum Malaria. It is a common practice in pharmaceutical trade to use part of the word
of the disease as a trade mark to indicate to the doctors and chemists that a particular
product/drug is meant for a particular disease.

• It was also the case of the Respondent that admittedly the two products in question were
Schedule L drugs which can be sold only to the hospitals and clinics with the result that there
could not even be a remote chance of confusion and deception.19

Court’s Observations

The Hon’ble Supreme Court in its judgement refused to interfere with the order appealed
against and examined the principles that are to be kept in mind while dealing with an action
for infringement or passing off especially in cases of medicinal products.

The well-settled principles of law applicable to such cases are:

• The real question to decide in such cases is to see as to how a purchaser, who must be
looked upon as an average man of ordinary intelligence, would react to a particular trade
mark, what association he would form by looking at the trade mark, and in what respect he
would connect the trade mark with the goods which he would be purchasing.

• It is apparent that confusion or mistake in filling a prescription for either product could
produce harmful effects. Under such circumstances, it is necessary for obvious reasons, to
avoid confusion or mistake in the dispensing of the pharmaceuticals.

• Physicians are not immune from confusion or mistake. Furthermore it is common

knowledge that many prescriptions are telephoned to the pharmacists and others are
handwritten, and frequently handwriting is not unmistakably legible. These facts enhance the

18
Cadila health care Ltd. v. Cadila pharmaceuticals Ltd. (2016, February 21).
<https://indiancaselaws.wordpress.com/2015/08/18/cadila-health-care-ltd-v-cadila-pharmaceuticals-ltd/>
19
ibid
chances of confusion or mistake by the pharmacists in filling the prescription if the marks
appear too much alike when handwritten or sound too much alike when pronounced.”

• The drugs have a marked difference in the compositions with completely different side
effect. The test should be applied strictly as the possibility of harm resulting from any kind of
confusion by the consumer can have unpleasant if not disastrous results.

• The courts need to be particularly vigilant where the defendants drug, of which passing off
is alleged, is meant for curing the same ailment as the plaintiffs medicine but the
compositions are different. The confusion is more likely in such cases and the incorrect
intake of medicine may even result in loss of life or other serious health problems.20

• As far as present case is concerned, although both the drugs are sold under prescription but
this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In
view of the varying infrastructure for supervision of physicians and pharmacists of medical
profession in our country due to linguistic, urban, semi-urban and rural divide across the
country and with high degree of possibility of even accidental negligence, strict measures to
prevent any confusion arising from similarity of marks among medicines are required to be
taken.

• Keeping in view the provisions of Section 17-B of the Drugs and Cosmetics Act, 1940
which inter alia indicates that an imitation or resemblance of another drug in a manner likely
to deceive being regarded as a spurious drug it is but proper that before granting permission
to manufacture a drug under a brand name the authority under that Act is satisfied that there
will be no confusion or deception in the market. The authorities should consider requiring
such an applicant to submit an official search report from the Trade Mark office pertaining to
the trade mark in question which will enable the drug authority to arrive at a correct
conclusion.

Moreover in deciding whether a particular trade mark is likely to deceive or cause confusion
that duty is not discharged by arriving at the result by merely comparing it with the trade
mark which is already registered and whose proprietor is offering opposition to the
registration of the mark.21

The Hon’ble Supreme Court also laid down some factors for deciding the question of
deceptive similarity. However, it suggested that weightage to be given to each of these factors
should depend upon the facts and circumstances of each case. The factors are enumerated
below:

a) The nature of the marks i.e. whether the marks are word marks or label marks or composite
marks, i.e. both words and label works.

20
Cadila healthcare limited vs Cadila pharmaceuticals limited on 26 march, 2001. (n.d.). Indian Kanoon
<https://indiankanoon.org/doc/1114158/>
21
ibid
b) The degree of resembleness between the marks, phonetically similar and hence similar in
idea.

c) The nature of the goods in respect of which they are used as trade marks.

d) The similarity in the nature, character and performance of the goods of the rival traders.

e) The class of purchasers who are likely to buy the goods bearing the marks they require, on
their education and intelligence and a degree of care they are likely to exercise in purchasing
and/or using the goods.

f) The mode of purchasing the goods or placing orders for the goods; and

g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity
between the competing marks.22

Judgment:

The matter was remitted to the trial court to try the suit keeping the above factors in mind.

IV. ITC Limited v. Nestle India Ltd23

Plaintiff ITC Ltd

Trade name: Magic Masala

Defendant Nestle India Ltd.

Trade name: Magical masala

District Court Rejected the Plaintiff’s application and case

of Passing off
High Court The appeal was directed to be dismissed.
Supreme Court Sent for review to district court.

22
Cadila healthcare limited vs Cadila pharmaceuticals limited on 26 march, 2001. (n.d.). Indian Kanoon
<https://indiankanoon.org/doc/1114158/>
23
LAWS(MAD)-2015-4-112
Facts:

ITC is among India’s foremost private sector companies, entered Indian instant noodles
market with Sunfeast Yippee in two variants (1) Yippee! Magic masala and (2) Classic
masala. In march 2013 the plaintiff came to know that defendant – Nestle India, another huge
private sector company producing Maggie has launched their noodles under a similar mark
being “Magical Masala”.

Plaintiff filed a suit for passing off against the defendant alleging that the use of mark
“Magical masala” by defendant amounts to passing off of the plaintiff’s goods traded as
“Magic masala”.24

Plaintiff’s contentions:

• Owing to it’s excellent quality, geographical reach and reputation, ‘MAGIC MASALA’ has
attained distinctiveness and is associated with Plaintiff alone.

• Retailers in the trade and public ask for applicant’s noodles by the mark ‘Magic Masala’.

• Defendant has been losing market share to Plaintiff’s noodles and has therefore resorted to
unfair competition by using ‘MAGICAL MASALA’.

• Defendant has many variants of it’s noodles and therefore there is no need of the
Respondent to use the mark ‘MAGICAL MASALA’.25

Defendant’s Contentions:

• The use of ‘MAGICAL MASALA’ by the Defendant falls within permitted use as per
provisions of Section 30(2)(a) of the Trade Marks Act, 1999.

• Defendant is using ‘MAGICAL MASALA’ as a flavor descriptor. ‘MAGICAL MASALA’

conveys flavor and not origin.

• ‘MAGICAL MASALA’ is a laudatory and descriptive epithet lauding the spicy

characteristics and quality of Masala, which is sold along with the product in a sachet by the
name of ‘tastemaker magical masala’.

• Law of Trade Marks or common law of passing off does not permit any interference in use
of expressions, marks or terms, marks, which are an apt description of character, quality, kind
of product, and not used as indication of source, or original of the product, and the use of the
product descriptor in terms of its characteristic such as flavour, ingredients, benefits, quality,
etc, cannot be considered as trade mark or mark.

• Defendant’s product is sold under the mark ‘MAGGI’, having 80% market share.
24
M/S. Itc limited, it... v. Nestlé India limited... (n.d.). The Most Granular Mapping of US Case Law |
CaseMine. <https://www.casemine.com/judgement/in/5ac5e3964a93261a1a76c824>
25
ITC limited v. Nestlé India Ltd. – Curious case of ‘The magic noodles’. (2015, June 14).
<https://indiancaselaws.wordpress.com/2015/05/22/itc-limited-v-nestle-india-ltd-curious-case-of-the-magic-
noodles/>
• ‘MAGICAL MASALA’ or ‘MAGIC MASALA’ are common expressions which cannot be
a subject matter of any proprietary rights.

• Defendant is using the word ‘MAGIC’ prior to Plaintiff for it’s products and as far as
‘MASALA’ is concerned, the same is common word to describe spices. Therefore, combined
use of ‘MAGIC’ and ‘MASALA’ by the Plaintiff is not proprietable.

• Both the parties are selling their noodles under their respective brands namely, ‘Sunfeast
ITC Yippee’ and ‘Maggi’ which appear very prominently on the labels. Therefore, there
cannot be any confusion. This is more so in the light of the fact that the products are sold in
an entirely different packaging.

• The words ‘MAGIC MASALA’ is widely used not only by the Defendant, but also by other
manufacturers, like i) Lay’s Magic Masala, ii) Balaji Magic Masala, iii) Hello Just 2 Good!
Magic Masala iv) Samrudhni Kitchen Magic Masala, v) SDS Magic Masala, vi) Bindass
Masala Magic.26

Issues:

1. Whether the Plaintiff’s mark ‘MAGIC MASALA’ is inherently distinctive or is descriptive

but has acquired secondary meaning ?

2. Whether the Plaintiff has made out a prima facie case for grant of injunction?27

Observations of the Court:

The Hon’ble Court relied on McCarthy on Trademarks and Unfair Competition (3rd Edition),
to hold that the mark ‘MAGIC MASALA’ is a ‘suggestive trade mark’ as imagination is
required on the part of the customers to get some direct description of the product from the
term.

The Court observed that “descriptive term directly and clearly conveys information about the
ingredients, qualities, or characteristics of the product or service, the ‘suggestive term only
indirectly suggests these things.”

The Court further observed that word/mark ‘MAGIC MASALA’ indirectly suggests magical
change by consuming the Plaintiff’s product and therefore, the word/mark ‘Magic’ or
‘Magical’ cannot be considered as descriptive and it is only distinctive word or mark, having
secondary meaning.

The Court also observed that having regard to the fact that the word ‘MAGIC MASALA’ is
distinctive, the Plaintiff is entitled to the relief of injunction even accepting the case of the
Defendant that the trade dress of the two products are entirely different.
26
ITC limited v. Nestlé India Ltd. – Curious case of ‘The magic noodles’. (2015, June 14).
<https://indiancaselaws.wordpress.com/2015/05/22/itc-limited-v-nestle-india-ltd-curious-case-of-the-magic-
noodles/>
27
M/S. Itc limited, it... v. Nestlé India limited... (n.d.). The Most Granular Mapping of US Case Law |
CaseMine. <https://www.casemine.com/judgement/in/5ac5e3964a93261a1a76c824>
Issue 2:

On the second issue, the Court observed that the Plaintiff’s product is popularly known as
‘MAGIC MASALA’, though it is marketed under the brand Sunfeast Yippee, admittedly,
Plaintiff is the prior user of the word ‘MAGIC MASALA’, and Plaintiff has proved it’s
market share, and considering all these aspects, a prima facie case has been made out by the
Plaintiff.

The Defendant was restrained from using the mark ‘MAGICAL MASALA’ or any other
deceptively similar mark to Plaintiff’s mark ‘MAGIC MASALA’ till the pending disposal of
the suit.

Judgment:

Based on the findings the bench was of opinion that a prima facie case has been made out by
the applicant that they were entitled to relief for the use of trade word/ mark i.e. ‘Magic
Masala” which is distinctive in nature and mark used by the respondent was deceptively
similar to plaintiff’s mark. Therefore, the respondent is not permitted to any protection under
section 30 and 35 of Trademarks Act.28

V. Bikanervala v. New Bikanerwala29

Plaintiff Bikanervala
Trade name: Bikanervala
Status: Unregistered
User : 1992
Defendant New Bikanervala
Trade name: New Bikanervala
Status: Unregistered
User: 2004
High Court The Plaintiff’s application was allowed and
the Defendant was restrained by means of an
ad interim injunction.

28
Nestlé India limited vs M/S.Itc limited on 7 December, 2016. (n.d.). Indian Kanoon
<https://indiankanoon.org/doc/45789833/>
29
2005 (30) PTC 113 (Del)
Facts:

The Plaintiff is a partnership firm involved in manufacturing and marketing ethnic food
including sweets and namkeens since 100 years. In 1981, they opened an outlet in Karol
Bagh under the trade mark “Bikanervala”. In 1992, Plaintiff also adopted an artistic label
titled “Bikanervala” duly registered under The Copyright Act, 1957.

In 2004, Plaintiff found that the Defendant is running a shop and restaurant in Janakpuri
under the trade mark “New Bikanervala”. In view of this, the Plaintiff has filed a suit for
perpetual injunction restraining the Defendant from using the aforesaid trademark. The
Plaintiff has also sought an order for rendition of account of profits illegally earned by the
Defendant and also an order directing the Defendant to destroy all impugned items which
used the disputed trademark. The Plaintiff also filed an application for grant of ad interim
injunction during pendency of the suit. The present decision is on that interim application.30

Plaintiff’s Contentions:

• Once the word “Bikaner” is suffixed with “Vala”, the combined word becomes a coined and
innovative word and the Plaintiff has an exclusive right to use it.

The Plaintiff’s trade has been a runaway success for more than two decades having goodwill
and reputation. The trademark is so famous that it has acquired secondary significance and is
highly distinctive.

There is a definite likelihood of confusion and deception among the trade and public.

• The Plaintiff contends that although the trade mark is a geographical name of a city, under
the common law of passing off there are no exceptions by way of any geographical and/or
descriptive names, which may constitute disqualification for statutory registration.

• In the case of Bharat Tiles and Marble Private Ltd. v. Bharat Tiles Manufacturing
Company, 1978 GLR 518, Court laid down a principle of law that mere fact that geographical
descriptive name adopted is not always a defense in a ‘passing off’ action. The Court also
reiterated the settled position that name of the business can also be a trade name.

• The trade mark ‘BIKANERVALA’ has to be considered as a whole and it is not correct to
split up the trade mark into its constituent parts and, therefore, the use of the trade mark
‘NEW BIKANERWALA’ results in passing off.

30
Bikanervala v. New Bikanerwala. (2015, August 29).
<https://indiancaselaws.wordpress.com/2015/08/29/bikanervala-v-new-bikanerwala/>
• The Plaintiff cited numerous cases in which the Court held that a generic or descriptive
name which indicates the origin of the product could receive the protection against passing
off.31

Defendant’s contentions:

• Plaintiff’s suit for the relief of passing off is not maintainable. “Bikaner” is a geographical
city in Rajasthan and it does not qualify as a trade mark. The expression ‘Bikanervala’
conveys definite and specific meaning in ordinary language so as to indicate the origin of the
person or the product from Bikaner.

• The expression “Bikanervala” is neither innovative nor original.

• The word “Bikanervala” for Bikaneri sweets, namkeens, etc is common as a generic
expression and cannot acquire any degree of distinctiveness.

• No person is entitled to claim an exclusive right to the use of the word either ‘BIKANER’
or ‘WALA’ either independently or in conjunction. In this connection, provisions of Section
9 of the Trade marks Act, 1999 are relied upon which prescribe registration of the trade mark
in the nature of geographical names or which have direct reference to the character and
quality of the goods.32

Court’s Observations:

• Court is required to take only a prima facie view of the matter so as to see if the Plaintiff has
been able to make out a good case in its favour for grant of such an ad interim injunction.

• A perusal of the documents submitted by the Plaintiff proving the fact that they have been
using the trade mark “Bikanervala” since 1981 and that the artistic label has been registered
since 2000, along with the undisputed fact that the Defendant started using “New
Bikanervala” only in 2004, leads to prima facie conclusion that the Plaintiff was in fact long,
prior and extensive user of the trade mark.

• Plaintiff’s trademark, ‘BIKANERVALA’ is entitled to protection. The Plaintiff is using the

mark since more than 20 years; its turnover being more than Rs. 300 crores in the past few
years. Plaintiff has made out a prima facie case in his favour. On the other hand, the
Defendant has only prefixed “New”. The balance of convenience also lies in the Plaintiff’s
favour.

• It was established that the trademarks/tradenames like ‘Kabuliwala’, ‘Rohtakwala’ et .

despite being referable to geographical terms are good trademarks and have, in fact, been
registered with the Registrar of Trademarks.33
31
Ms Bikanervala v. Ms Aggarwal Bikanerwala. (n.d.). Scribd.
<https://www.scribd.com/document/339733890/Ms-Bikanervala-v-Ms-Aggarwal-Bikanerwala>
32
ibid
33
M/S Bikanervala v. M/S new Bikaner Wala. (n.d.). Case Mine.
<https://www.casemine.com/judgement/in/56ea9170607dba371ebcaa66>
Judgement:

The Plaintiff’s application was allowed and the Defendant was restrained by means of an ad
interim injunction.

VI. Goel Pocket Books v. Raja Pocket Books34

Plaintiff Goel pocket books

Trade name: NAGRAJ
Status: Unregistered
User : 1986
Defendant Raja Pocket books
Trade name: NAGPUTRA
Status: Unregistered
User: 1991
District Court Restrained defendant to use trade word.
High Court (Delhi) The appeal by defendant to dismiss the
orders given by district court, and the
application was dismissed.was directed to be
dismissed.

Facts:

Respondent (plaintiff in the initial suit) was the proprietor of the mark ‘NAGRAJ’ and was
using the same for comic books as a lead character. Appellant (Defendant in the initial suit)
also launched it’s comic books with the character and mark ‘NAGPUTRA’. Respondent filed

34
1997(17) PTC 573 (Del)
a suit against the Appellant before the Court of District Judge, Delhi for passing off against
the Appellant on the ground that the two marks are deceptively similar.35

Appellant’s Case:
• The trade mark ‘NAGRAJ’ consists of two descriptive words ‘Nag’ and ‘Raj’. They are of
common use. Hence the Respondent cannot claim any monopoly on the use of the said
words.

• The trade mark ‘NAGPUTRA’ is distinct and different from mark ‘NAGRAJ’.

• They are written in different style and colour and are as such different from each other in
every respect.

• The Appellant has been publishing their comic series since June, 1991 under the trade mark
‘NAGPUTRA’.

• The comic series cater to the taste of the affluent and literate class of children who are quite
intelligent and are capable of making distinction in the two marks. Thus, there is absolutely
no reason, as to how and why comic series under the name and style of ‘NAGPUTRA’ would
be taken as comic series from the source of the Respondent.36

Respondent’s Case:
• The words ‘NAGRAJ’ and ‘NAGPUTRA’ are almost the same. They convey the same
meaning. Whereas the word ‘NAGRAJ’ means a king of snakes, the word ‘NAGPUTRA’ on
the other hand, which is the combination of two Hindi words i.e. ‘Nag’ and ‘putra’ means the
son of a snake.

• The main word which is being relied upon by the Respondent to sell his comics is the word
‘Nag’. Thus if the same is allowed to be used by the Appellant to sell his comics then the
unwary purchasers of the said comics would buy the comics sold under the mark
‘NAGPUTRA’ to be that of the Respondent.

• This is more so in the instant case, as purchasers of the comics are none else but the
children of tender age.37

Court’s Observations:
• Respondent have been using the said trade mark since the year 1986.

35
Goel pocket books vs Raja pocket books on 29 July, 1997. (n.d.). Indian Kanoon
<https://indiankanoon.org/doc/507170/>
36
Goel pocket books v. Raja pocket books. (2015, May 5).
<https://indiancaselaws.wordpress.com/2015/05/05/goel-pocket-books-v-raja-pocket-books/>
37
Goel pocket books v. Raja pocket books. (2015, May 5).
<https://indiancaselaws.wordpress.com/2015/05/05/goel-pocket-books-v-raja-pocket-books/>
• It has thus become distinctive and has acquired a secondary meaning on account of the
continuous user and people have come to associate the publication of the Respondent with the
said trade mark.

• The sales of the Respondent under the said trade mark are to the tune of Rs. 50 lacs.

• Appellant adopted the impugned trade mark ‘NAGPUTRA’ since the year 1991.

• It is thus prima fade established that the Respondent is a prior user.

• There is a common word ‘Nag’ in the two trade names, the word ‘NAGRAJ’ means the
king of snakes whereas the word ‘NAGPUTRA’, on the other hand, means the son of a
snake. The common word in between the two is ‘Nag’ which is likely to convey the
impression that the books belonging to the Appellant are coming from the same source i.e. of
the Respondent.

• This is more likely to happen in the instant case inasmuch as the purchasers of the said
comics are none else but the unwary and credulous children of tender age. It is well known
that the judgments of the children are immature. They are not patient as a grown-up man to
analyse and scrutinise the goods before opting for the product.38

Judgment:

The Appellant’s application was dismissed.

VII. Britannia Industries Ltd. v. ITC Ltd.39

Appellant Britannia Industries Ltd.

Trade name: Nutri choice Digestive
Status: Registered
Respondent ITC Ltd.
Trade name: Farmlite Digestive- ALL
GOOD
Status: Registered
Single Bench Admitted the plea of plaintiff, respondent
now for interim injunction.
Division Bench (Delhi) Set aside the interim injunction order.

38
ibid
39
2017 (70) PTC 66 (Del)
Facts:

The Respondent, ITC Ltd. filed a civil suit against the Appellant, Britannia Industries Ltd. for
passing off and infringement of Copyright of the trade dress of Respondent’s product
‘Sunfeast Farmlite All Good’ which is a No Added Sugar and No Maida digestive biscuit.

The single judgebench of High court delhi admitted the plaintiff, respondent now plea for
interim injunction. The findings of single judge bench :

• When a new product with a distinctive packaging is introduced, it is not necessary for the
Plaintiff to show that it has established a formidable reputation in that product for a number
of years.

• The factum of sales of 5 crores was a significant factor in examining the question of
reputation of the product, as also the factum of Rs 14 crores spent on advertising.

• Britannia had been late in introducing its “Digestive Zero” variant till after six months after
ITC introduced its product and this was a factor which weighed in favour of ITC.

• Sales of Rs 5 crores of the said biscuits in a short span of five months was indicative of the
growing reputation of ITC‟s product which deserved protection.

• Even if it were to be accepted that yellow as a colour was integral to Britannia’s packaging
scheme for Digestive biscuits, Britannia’s purpose could well be served by adopting a colour
other than blue, to combine with the yellow colour of its packaging.

The defendant, now appellant filed an appeal to division bench to reconsider the order passed
by single judge bench40

Appellant’s Contentions

Britannia Digestive biscuits are being sold under three different variants.

1. “Nutri Choice Hi Fibre Digestive” biscuit.

40
KM, A. (2017, March 13). Britannia vs ITC: Injunction for ‘Passing off’ only if colour combination is
distinctive of plaintiff’s product, says Delhi HC [Read judgment]. Live Law -
 2. “Nutri Choice Digestive 5 Grain” biscuit
3. the one in issue, that is, the “Nutri Choice Digestive Zero” biscuit.

 First invoice of ITC is of May 2016.

 Colour blue was being used worldwide in relation to sugarless or zero sugar products.
 Britannia was using similar packaging for its Digestive Hi Fibre and Digestive 5
Grain biscuits, which all had the features of stacked biscuits, ears of wheat and other
grains. The Digestive Hi Fibre packaging, which was also a pillow packing, had a
yellow-red combination. The Digestive 5 Grains packing employed the yellow – green
combination. In this context, it was suggested on behalf of Britannia that the packing
for “Nutri Choice Digestive Zero” biscuits employed the yellow – blue combination to
distinguish its other products.
 All three variants of Appellant’s Digestive biscuits had the same genre of package
design and the similar colour concepts. Yellow was the primary colour with a
combination of red for Digestive Hi Fibre and a combination with green for the
Digestive 5 Grain biscuits and now with a combination of blue for its Digestive Zero
biscuits.
 5 crores sales of ITC’s product is not substantiated by any Chartered Accountant’s
Certificate.

 14 crores spent on advertising is not only in respect of the get-up, but more so for the
trade marks and other features of the product.41

Division Bench’s observations:

• Britannia has been restrained from using the colour blue. It has been permitted to retain the
colour – yellow. In other words, the entire controversy in the present appeal centers around
the use of blue and / or its variants in the packaging. It is, therefore, clear that in case the
appellant / Britannia uses the same packaging, but substitutes the blue with any other colour,
which is not a variant of blue, then there would be no case for passing off42.

• It is evident that a passing off action has to be examined from the standpoint of three
factors: (1) goodwill and reputation; (2) misrepresentation / possibility of deception; and (3)
likelihood of damage. 43

• In a passing off case, it is the goodwill which is sought to be misappropriated. It is this

misappropriation which provides a cause of action at common law.

• ITC, in order to succeed at this stage, must establish, at least prima facie, that the
combination of yellow and blue that is used in its packaging for its “Sunfeast Farmlite
Digestive – All Good” biscuit has become distinctive specifically of its goods. 44

41
Britannia industries Ltd. v. ITC Ltd. (2019, January 2).
https://indiancaselaws.wordpress.com/2017/03/11/britannia-industries-ltd-v-itc-ltd/
42
Britannia industries Ltd vs Itc limited on 10 march, 2017. (n.d.). Indian Kanoon P.8
<https://indiankanoon.org/doc/6566544/>
43
Ibid. p.10
44
Ibid. p15
 • The issue here, in this case of passing off, is not that a new biscuit or a new product has
acquired popularity in a short span of time, but whether the get-up and, in particular, the
colour combination of yellow and blue has become exclusively identifiable with the
plaintiff‟s product ? 45

• We are of the view that the focus ought to be on the question whether the get-up (the
yellow-blue combination of the package) was exclusively and distinctively associated with
ITC.

• We do not think that in the short span of time and, particularly when Britannia has alleged
that the first invoice of ITC is of May 2016, the yellow-blue combination in the packaging of
ITC‟s biscuits had become so identified with ITC so as to enable ITC to prevent its use by
competitors. 46

• There are a good number of products which use the colour blue for sugarless, zero sugar or
sugar free products. 47

• Britannia has been using yellow as the primary colour in combination with red and green
for its earlier products and, therefore, its natural evolution into a combination of yellow and
blue for the Digestive Zero product was quite understandable.

• The appropriation of and exclusivity claimed vis-à-vis a get-up and particularly a colour
combination stands on a different footing from a trade mark or a trade name because colours
and colour combinations are not inherently distinctive. It should, therefore, not be easy for a
person to claim exclusivity over a colour combination particularly when the same has been in
use only for a short while. It is only when it is established, may be even prima facie, that the
colour combination has become distinctive of a person’s product that an order may be made
in his favour. We feel that the present is not such a case. When the first element of passing
off, in our view, is not established, we need not examine the other elements of
misrepresentation and likelihood of damage48.

Judgement

The Division Bench observed that ITC was not entitled to an interim injunction and therefore
the impugned order of the Learned Single Judge was set aside.

VIII. Glaxosmithkline Consumer Healthcare Ltd. Vs. Abbott Healthcare Pvt. Ltd. and
Ors.49

Plaintiff Glaxosmithkline consumer healthcare Ltd.

Trade name: Horlicks

45
Ibid. p16
46
Ibid. p19
47
Ibid p.21
48
Ibid. p23
49
2009(40) PTC 437 (Cal)
 Status: Registered
Defendant Abbott Healthcare Pvt. Ltd
Trade name: Pediasure
Status: Registered
District Court Dismissed the plea of plaintiff
Facts:

Plaintiff, the manufacturers of Horlicks had a tagline “”Taller, stronger, sharper” for it’s
health food drink powder . Defendant was using the line “sabse tallest, strongest, brightest”
as a prominent feature of a commercial for a similar product called Pediasure. Plaintiff filed a
suit for passing off against the Defendant50.

Plaintiff Defendant

Plaintiff’s Contentions:

The slogan being the most prominent feature of its commercial, it has come to be so
exclusively associated with the plaintiffs product that any form of imitation thereof by any
other person would amount to deceit and trading upon the goodwill of the plaintiff.

Defendant’s Contentions:

In the promotion of a nutritional drink, it is only natural that the manufacturer would harp on
the efficacy of the product in honing physical and mental attributes. One manufacturer of a
nutritional drink cannot claim a monopoly over an idea that is generic to the product and is
directly connected to the alleged efficacy of the product.51

Issues:

Whether the three words have, or even the theme conveyed by the three words has, come to
be so exclusively associated with the plaintiff or the plaintiffs product and the recall value

50
Glaxosmithkline consumer healthcare Ltd. vs. Abbott healthcare Pvt. Ltd. and Ors. (2014, December 4).

51
Glaxosmithkline consumer healthcare Ltd. vs. Abbott healthcare Pvt. Ltd. and Ors. (2014, December 4).
thereof is so overwhelming that it leads to confusion and deceit that are the twin planks in
establishing passing off; and

Whether the plaintiff can, in law, claim any exclusivity over the concept and the manner of
depiction thereof.

Court’s Observations:

Laudatory epithets may be used by a manufacturer but to claim exclusivity a higher element
of distinctiveness has to be demonstrated. The more descriptive the epithets, the closer the
resemblance of the epithets to the efficacy of the product, the more remote will be the
presumption as to the exclusivity of the combined effect of the epithets.

The manufacturer of a nutritional drink would seek to impress on the healthy values of the
drink. The target users in case of these rival products are children. Every nutritional drink has
to be allowed the freedom to puff and emphasise on the features of growth that will result in
its user gaining height, weight and mental sharpness for these are but attributes of growth that
a nutritional drink would seek to profess.

The nature of the right that is sought to be asserted would make it irrelevant as to whether a
part or the entirety of the slogan is copied. That the three key words used by the first
defendant in its exit line vary in form, or in one case in the use of the word, matters little if it
is appreciated that it is the theme over which a manufacturer can claim exclusivity. It is, thus,
irrelevant that the plaintiff and the first defendant use different grammatical variations of the
words “tall” and “strong” and that “sharp” and “bright” are distinct, albeit bearing the same
sense that is sought to be projected. The essence of a right that the plaintiff here canvasses is
as much dependent on the resemblance of the words as on the identity of its thematic content.

If in puffing its product, the plaintiff and the first defendant hit upon features that are generic
to the nature of the product, the earlier user or the bigger player or the large spender cannot
claim exclusivity on the epithets. If it is the idea of taller, stronger and sharper that the
plaintiff seeks to make as its very own, it may not have it. If it is a much lesser case of
confusion arising out of the verisimilitude of the manner of depiction thereof of the same idea
by another trader, the complaining trader may get the consolation of the defendant being
required not to copy the form of expression of the idea. The exclusivity in such a case will
not be in the words or the theme used by way of puff, but in how they are said or shown or
depicted. The first defendant does not copy the stylised form in which the plaintiff presents
its slogan in the commercial.52

Judgement

The Application of the Plaintiff was dismissed.

52
Glaxosmithkline Consumber healthcare Ltd V Abbott healthcare Pvt. Ltd on 31 July 2008 - Judgement -
LawyerServices. (n.d.). <https://www.lawyerservices.in/Glaxosmithkline-Consumber-Healthcare-Ltd-Versus-
Abbott-Healthcare-Pvt-Ltd-2008-07-31>
IX. Vicco Laboratories, Bombay v. Hindustan Rimmer, Delhi53

Plaintiff Vicco Laboratories.

Trade name: Vicco
Status: Registered
Defendant Hindustan Rimmer
Trade name: Cosmo
Status: Registered
District Court Accepted the plea and injuncted the
defendant to market products in similar
packaging as of Plaintiff

Facts:

Plaintiff was manufacturing and marketing since 1965 vanishing cream containing turmeric
and sandal wood under the name of Vicco Turmeric Vanishing Cream. Plaintiff had been
marketing the said cream in tubes in cartons. The carton and tubes had a distinctive get up
and colour scheme, i.e., red background with yellow floral design and printing in white
letters. On two sides of the carton there were floral designs with the words ‘Vicco Turmeric’
in first line, words ‘Vanishing Cream’ in the second line and words ‘An Ayurvedic
Preparation’ in the third line. On the third side of the carton there was floral design with the
words ‘manufactured in India by’ printed in the first line and the Plaintiff’s ‘name and
address in the second and third line. On the fourth side of the carton the uses of the said
cream were mentioned. The get-up, colour scheme, arrangement of features on the tube was
also similar except that the writings on the tube were yellow. The cap of the tube was yellow
and the tube had a Yellow strip in the bottom. The total sales of the said product since April,
1975 up to December, 1977 are of Rs. 1,77,31,377/-.

The Defendant’s launched an identical product called ‘Cosmo’ and the colour scheme, get-
up, layout and arrangement of features of the same were identical to Plaintiff’s product
‘Vicco’.54

53
AIR 1979 Delhi 114

54
Vicco laboratories, Bombay v. Hindustan Rimmer, Delhi. (2014, November 24).
https://indiancaselaws.wordpress.com/2014/11/24/vicco-laboratories-bombay-v-hindustan-rimmer-delhi/
Plaintiff’s Contentions:

• By reason of sales and publicity their product has become popular in the market and by
reason of distinctive get-up and colour scheme, the tube and the carton have come to be
associated by the trade and the members of the public as the product of the Plaintiff
exclusively.

• In November, 1977, the Plaintiff learnt that the Defendant had begun marketing a vanishing
cream in cartons and tubes which are a colourable imitation of the Plaintiff cartons and tubes
which is a malafide act of passing off of the Defendant’s cream as those of the Plaintiff.

Defendant’s Contentions:

• Defendant started selling ‘Cosmo Turmeric Vanishing Cream’ in Nov. 1977, that they are
using their own descriptive words as well as floral design giving their address on the carton
and tube along with manufacturing license and excise license number and also the retail price

• Trade marks ‘VICC0’ and ‘COSMO’ are different visually as well as phonetically and no
mistake is possible while purchasing the vanishing cream either of the Plaintiff or of the
Defendant.55

Court’s Observations:

Plaintiff’s claim passing off by the Defendant of it’s product as and for the product of the
Plaintiff on the basis of copy of the distinctive get-up and colour scheme of the tubes and the
cartons by them. The Defendant is not entitled to represent it’s goods as being the goods of
the Plaintiff. The two marks ‘Vicco’ and ‘Cosmo’ used by the Plaintiff and Defendant,
respectively are no doubt different and the mark ‘Cosmo’, by itself is not likely to deceive but
the entire get-up and the colour scheme of the tube and the carton adopted by the Plaintiff and
the Defendant are identical in every detail and are likely to confuse and deceive the customer
easily. The get-up and the colour scheme of the Plaintiff adopted in every detail by the
Defendant for their tube and carton cannot be said to have been adopted by the Defendant
unintentionally.56

Judgement:

The Defendant was injuncted from using a deceptively similar colour packaging as that of the
Plaintiff.

X. Sanjay Kapur & Anr. v. Dev Agri Farms Pvt. Ltd.57

55
ibid
56
Vicco laboratories, Bombay vs Hindustan Rimmer, Delhi on 31 January, 1979. (n.d.). Indian Kanoon
<https://indiankanoon.org/doc/1927958/>
57
2014 (59) PTC 93 (Del)
 Plaintiff Sanjay Kapur.
Trade name: Aap Ki Pasand
Status: Unregistered
Defendant Hindustan Rimmer
Trade name: BAGAN Fresh Tea
Status: Unregistered
District Court Accepted the plea and the defendant is
restrained from selling or dealing with tea
products

Facts:

Plaintiff was selling tea pouches in a particular packaging since 1981. As per the Plaintiff the
packaging was distinctive. It comprised a soft paper packet shaped in rectangular sided
cuboid. This packet was shipped in a fabric sleeve and was closed at top by a
dory/drawstring. The said pack is then decorated with ribbon and the label tied around the
fabric bag. Plaintiff filed a suit for infringement of Copyright and passing off against the
Defendant. As per the Plaintiff, the Defendant was using a similar packaging.58

Defendant’s Contentions:

 Defendant contested the suit on the ground of delay as the Defendant claimed use
since 2008 and packaging being non-distinctive and common to trade.
 Defendant also urged that the competing products are gift pack aromatic organic teas
and hence very expensive and the buyer is an informed, sophisticated buyer, who will
not be confused.
 Alternatively, the Defendant argued, that even if the trade dress is considered similar,
the trade marks are different.59

58
Sanjay Kapur & Anr. v. Dev Agri farms Pvt. Ltd.;. (2015, February 2).
<https://indiancaselaws.wordpress.com/2015/02/02/sanjay-kapur-anr-v-dev-agri-farms-pvt-ltd/>
59
Ibid.
Court’s Observation:

The Hon’ble Court relied on Section 2(zb) of the Trade Marks Act, 1999 which defines
“Trade Mark” to recognize protection of shapes as trade marks.

The Hon’ble Court further relied on long user of the Plaintiff, extensive sales of the Plaintiff,
advertisements in newspapers since 1992 and turn over of the Plaintiff to come to a
conclusion towards distinctiveness in the packaging.

The Hon’ble Court found the cuboidal/rectangular shape with unique stand-up pack with
Indian look fabric with the traditional dori on top used with a glossy packing to be distinctive.

The argument of the Defendant of being inn the trade since 2008 was also rejected as the
same appeared to be doctored.

Lastly, the Court relied on Laxmikant V. Patel v. Chetanbhai Shah & Anr60. to hold that fraud
is not necessary in passing off, neither the proof of actual damage is necessary and only a
likelihood of damage is sufficient.

The Defendant was restrained from using an identical or deceptively similar packaging as
Plaintiff’s Packaging61

60
2002 (24) PTC 1 (SC)
61
Sanjay Kapur & Anr. vs Dev Agri farms Pvt Ltd on 28 February, 2014. (n.d.). Indian Kanoon
<https://indiankanoon.org/doc/20352166/>