IN THE COURT OF SH.

SANDEEP YADAV, DISTRICT JUDGE

(COMMERCIAL COURT)-03 (SOUTH) SAKET COURTS, NEW
DELHI

CS (DJ) 276/2021
CNR NO. DLST010050432021

Amar Tulsiyan
Proprietor, Wizard Fragrances
402, Gallant Landmark
Vijay Chowk, Bank Road
Gorakhpur, Uttar Pradesh-273001
…. Plaintiff
Vs.

Leeford Healthcare Ltd.

Leo House
Shaheed Bhagat Singh Nagar
Dugri Dhandra Road
Ludhiana-141116
Punjab …. Defendant

Date of Arguments

: 01.08.2023

Date of Order : 28.08.2023

ORDER

1. The application filed by plaintiff Amar Tulsiyan u/s. 39 rule 1 & 2

CPC r/w Section 151 CPC is being taken up for disposal.

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2. Plaintiff in the application has prayed for grant of interim injunction
to restrain the defendant, its partners, proprietor, etc. from manufacturing,
marketing, selling, using, supplying, soliciting, displaying, advertising,
importing/exporting or by any other mode or manner dealing with the
trademark/label/tradedress/packaging/combination of colors or any other
trademark/label/tradedress/packaging/combination of colors identical with
or deceptively similar to plaintiff’s trademark/label/tradedress
/packaging/combination of colors

in relation to sanitary pads and related/allied/cognate goods or services of

allied/ cognate nature or from doing any other acts or deeds amounting to
passing off and enabling others to pass off their goods and business as that
of the plaintiff, infringing plaintiff's copyright in the artwork of said
trademark/label/trade dress/packaging/combination of colors, indulging in
falsification, unfair and unethical trade practices and restraining the
defendant from disposing off or dealing with their assets, etc.

3. From bare reading of the application it transpired that plaintiff has

not prayed for interim injunction till disposal of suit. However, Mr. Rishi
Bansal, ld. counsel for plaintiff, during the course of arguments submitted
that prayer in the application is for interim injunction till disposal of suit.

Factual Matrix

4. Plaintiff in the suit for permanent injunction, passing off, damages,

rendition of account and delivery up averred that plaintiff in the year 2017
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and 2018 adopted trademarks NIINE, NINE and 9 for expansion of its
business in relation to certain food products and personal hygiene products
and applied for registration thereof under the provisions of Trade Marks
Act, 1999 on 07.07.2017 in relation to goods and services falling in
different class. Plaintiff uses its said trademarks NIINE, NINE and 9 in
different artistic label form/trade dress/packaging/combination of colors
such as

for the said goods/services falling in class 5 and 39. The plaintiff has
applied for the registration of the said trademark/label/trade
dress/packaging/combination of colors and details thereof are given in para
6 of the plaint. Plaintiff claimed that artistic work involved in the said
trademark/label/trade dress/packaging/combination of colors is original art
work within the meaning of the Copyright Act, 1957 and plaintiff has been
using the same in the course of trade and is the owner and proprietor
thereof. Plaintiff has been granted copyright registration as per details
given in para 7 of the plaint. Since May 2018, the Plaintiff has been

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honestly, bona fidely and in the course of trade using the said
trademark/label/trade dress/packaging/combination colors continuously,
commercially, openly and exclusively in the course of business as
proprietor thereof. Plaintiff has built up a valuable trade goodwill and
reputation therein. Plaintiff has presence on internet. Plaintiff is promoting
and advertising it's said goods and services under his said
trademark/label/trade dress/packaging/combination of colors through his
domain name http://www.niine.com. Plaintiff has been continuously
advertising and promoting his said trademark/label/trade
dress/packaging/combination of colors through different means and modes
including print and electronic media and has been advertising its said
trademark/label/trade dress/packaging/combination of colors through
various other means like hoardings, display boards, distribution of trade
literature, trade Novelties, wall paintings, press media, electronic media,
stationary, etc. The said trademark/label/trade dress/packaging/combination
of colors of plaintiff is inherently distinctive and has become distinctive
indicium of the plaintiff.

5. Defendant recently in the course of its business dishonestly and

malafidely adopted and started using trademark/label/trade dress/packaging
/combination of colors represented as

in relation to sanitary pads and related goods and services. The impugned
trademark/label/trade dress/packaging/combination of colors adopted and

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being used by the defendant is identical/deceptively similar to the Plaintiff's
said trademark/label/trade dress/packaging/combination of colors.
Defendant has substantially copied plaintiff's said well known
trademark/label/trade dress/packaging/combination of colors with all its
features and artistic work, layout design, get up, make up, colour
combination and idea thereof. By adoption and use of impugned
trademark/label/trade dress/packaging/combination of colors, defendant is
infringing and passing off plaintiff's proprietary rights in the said
trademark/label/trade dress/packaging/combination of colors. The goods
and services of the defendant is also same/similar as that of the plaintiff.
Defendant is not the proprietor of the impugned trademark/trade
dress/packaging and has no right, authority or liberty to use the impugned
trademark/label/trade dress/packaging/combination of colors in relation to
their impugned goods and business. In the second week of March, 2021,
plaintiff came across the goods of the defendant under impugned
trademark/label/trade dress/packaging/combination of colors in the markets
of South Delhi Area. Inquiries conducted by plaintiff revealed that
defendant has recently adopted and started using the impugned
trademark/label/trade dress/packaging/combination of colors.

6. Defendant filed written statement alongwith reply to the application

u/o. 39 rule 1 and 2 CPC and vehemently opposed the prayer of plaintiff for
interim injunction. In the written statement, defendant contended that there
is no similarity whatsoever in the trademark/label/trade dress/packaging
/combination of colors of plaintiff and trademark/label/trade
dress/packaging/combination of colors of defendant. The product is being

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sold under its mark Dryvel. It is stated in the written statement that there is
striking difference between two competitor’s mark, tradedress and there is
no likelihood that customer of plaintiff being deceived or confused between
plaintiff’s and defendant’s goods under the impression that defendant is
associated with plaintiff. Besides, name of defendant company to show the
source of defendant is also prominently mentioned on the packaging.
Defendant has prominently and boldly mentioned its registered trademark
Dryvel on the packaging and even getup, layout and colour combination of
two competing packagings is totally different. There is sufficient added
material on the packagings of defendant including totally different
trademark, different getup and layout, clear manufacturing source and as
such there is no likelihood or confusion or deception and no case of passing
off is made out as claimed by plaintiff. Packaging of defendant cannot be
claimed to be substantially reproduction or plaintiff's packaging in any
manner. Defendant has been using its packaging much prior to the alleged
claimed date of adoption of its packaging by plaintiff and as such the
plaintiff cannot claim any rights against defendant. Art works of plaintiff
are not original and do not deserve any protection under the law. There are
several manufacturers who have been using such packagings with the same
color scheme and layout for same goods much prior in point of time than
the plaintiff. Defendant has been using same color combination for its
packaging for sanitary pads under the mark Dryvel even since in the year
2015-16 by adopting and started to use its mark Dryvel. The mark Dryvel is
a registered trademark under the provisions of Trade Marks Act, 1999
under no. 2975114 as of 30.05.2015.

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7. Arguments address at length by Mr. Rishi Bansal, ld. counsel for
plaintiff as well as Mr. Neeraj Grover, ld. counsel for defendant, have been
considered.

8. During course of arguments, ld. counsel for plaintiff relied upon

following judgments :

(i) Devagiri Farms Pvt. Ltd. v. Sanjay Kapur & Anr. -

MANU/DE/0657/2016.
(ii) Parle Products (P) Ltd v. J.P and Co., Mysore - (1972) 1 Supreme
Court Cases 618.
(iii) RSPL Health Private Limited v. M/s Deep Industry - CS (OS) No.
1660/2014, DHC.
(iv) Anshul Industries vs. Shiva Tobacco Company - 2007(34) PTC 392
(Del).
(v) Rajesh Masrani v. Tahiliani Design Pvt. Ltd. -
MANU/DE/1683/2008, DHC.
(vi) Pankaj Goel v. Dabur India Ltd.- (2008) 38 PTC 49 (DB).
(vii) Laxmikant V. Patel v. Chetanbhat Shah and Anr. - AIR 2002 SC
275.
(viii) R.G Anand v. M/s Deluxe Films & Ors. - (1978) 4 SCC 118.
(ix) Midas Hygiene Industries P. Ltd. & Anr. v. Sudhir Bhatia - 2004
(73) DRJ 647 (SC).

9. During the course of arguments, ld. counsel for defendant relied

upon following judgments:

(i) Britannia Industries Ltd. Vs. ITC decided by Hon’ble Delhi High
Court on 05.04.2021.
(ii) Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical
Laboratories – AIR 1965 SC 980.

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(iii) Dalpat Kumar & Ors. Vs. Prahlad Singh & Ors. - AIR 1993 SC
276.
(iv) Shri Gopal Engg. & Chemical Works Vs. M/s. POMX Laboratory
– DRJ 1992 (22).
(v) Wander Ltd. & Anr. Vs. Antox India P. Ltd. - 1990 (Supp) Supreme
Court Cases 727.
(vi) F.Hoffmann-LA Roche & Co. Ltd. Vs. Geoffrey Manners & Co.
Pvt. Ltd. - (1969) 2 SCC 716.
(vii) Kellogg Company Vs. Pravin Kumar Bhadabhai & Anr. - 1996
SCC Online Del 170.
(viii) Parle Products Ltd. Vs. Bakemans Industries Ltd. - 1998 (2)
ARBLR 583.
(ix) Intex Tehnologies (India) Ltd. & Ors. Vs. AZ Tech (India) & Ors.

Submissions

10. Mr. Rishi Bansal, ld. counsel for plaintiff, pressed into service the
rule of first impression, average intelligence and imperfect recollection. Ld.
counsel for plaintiff submitted that plaintiff has no problem with the word
mark of defendant but plaintiff has problem only with color combination of
defendant’s product. Ld. counsel for plaintiff referred to relevant
documents filed with plaint to emphasize that plaintiff’s trademarks and
copy rights in the art work are registered and plaintiff is the owner and
proprietor thereof. It was submitted that plaintiff’s reliefs in order of
preference are (a) passing off, (b) copyright infringement and (c) registered
trademark infringement. It was further submitted that for an action of
passing off, it is the element of confusion and prior user that has to be
considered, submission being that plaintiff is prior user of color
combination in respect of which interim protection is sought for.

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11. Mr. Neeraj Grover, ld. counsel for defendant argued that there is no
specific prayer in the suit for infringement of trademark. Ld. counsel for
defendant also invoked Section 29 (4)(a) of Trademarks Act to contend that
there is no allegations that defendant’s trademark is identical with
plaintiff’s trademark. It was further argued that plaintiff has five products
with number 9. It was argued that not every feature of plaintiff's trademark
has been copied by defendant and there is no similarity in two products
except orange color, Nine and Dryvel written in white. Ld. counsel for
defendant argued that copyright infringement requires substantial
reproduction and there is no substantial reproduction in the present case.
Ld. counsel for defendant sought to highlight the contradictions in facts
stated in para 9 of the plaint and data given in table in para 6 of plaint,
submission being that different dates are mentioned in the plaint but none
of them is true.

Analysis of rival submissions and Findings.

12. When the products of plaintiff and defendant are compared, one finds
striking similarities between the two in color combination, design, getup
and packaging. In the product of plaintiff the word niine is written in white
color in front top and front left side with orange color background on the
packaging while in the product of defendant the word Dryvel is written in
white color in front top and front left side with orange color background on
the packaging. Picture of product i.e. nepkin, is depicted in white color on
front side in the product of plaintiff while same picture with white and blue
color on front site is depicted on the product of defendant. The word ‘Rs.

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40’ is written in green color square box on front side of plaintiff’s product
while the word ‘8 pads’ in green color rectangle box is written on the front
side of the product of defendant. Further, the words ‘06 pads/XL/275 mm’
mentioned in green color cylindrical box are depicted on the front side of
plaintiff's product while the words ‘Ultra Relief XXL with Wide Wings’
mentioned in green color cylindrical box are depicted on the front side of
defendant’s product. There is an arrow mark near opening of both the
products. Likewise there are similarities in color combination, design, etc.
on the back side of products of plaintiff and defendant. The words niine and
Dryvel are written in white color. It is overall getup and similarities which
has to be seen and any minor variations because it is similarity which
strikes and not the dissimilarities which distinguish when an ordinary
person recollects an object seen in the past as was held in Devagiri Farms
Pvt. Ltd. (supra).

13. In K.R. Venugopalan Sarma Vs. Sangu Ganeshan 1972 Cr. L. J

1098 it was held that an infringement of the copyright was complete even
though the reproduction was not exact, but the effect on the mind by
study of the two pictures was that the respondent's picture was nothing
but a copy of the plaintiff's picture. The Court while applying the various
tests Observed as follows:-
"Applying this test, the degree of resemblance between the two
pictures, which is to be judged by the eye, must be such that the person
looking at the respondents' pictures must get the suggestion that It is the
appellant's picture........ One picture can be said to be a copy of another

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picture only if a substantial part of the former picture finds place in the
reproduction".

14. It has to be borne in mind that the customers purchasing the product
of plaintiff and defendant belongs to same strata of society. Any customer
of ordinary prudence and average intelligence will be mistaken by the
product of defendant thinking it to be the product of plaintiff. In-fact, the
product of defendant is substantially the reproduction of product of plaintiff
in design, color combination, layout, get up, etc.

15. For this reason the judgment relied upon by ld. Counsel for
defendant in Kellogg Company (supra) wherein it was held that persons
who go to purchase 'Kellogg's' Corn Flakes belong to a middle-class or
upper middle class and above who are fairly educated in English and are
able to distinguish "Kellogg's" and what is not "Keloggs", is clearly
distinguishable on facts.

16. In Parle Products (P) Ltd (supra) it was held that it is therefore clear
that in order to come to the conclusion whether one mark is deceptively
similar to another, the broad and essential features of the two are to be
considered. They should not be placed side by side to find out if there are
any differences in the design and if so, whether they are of such
character as to prevent one design from being mistaken for the other. It
would be enough if the impugned mark bears such an overall similarity
to the registered mark as would be likely to mislead a person usually
dealing with one to accept the other if offered to him. In this case we find
that the packets are practically of the same size, the color scheme of the

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two wrappers is almost the same; the design on both though not identical
bears such a close resemblance that one can easily be mistaken for the
other. The essential features of both are that there is a girl with one arm
raised and carrying something in the other with a cow or cows near her
and hens or chickens in the foreground. In the background there is a
farm house with a fence. The word "Gluco Biscuits" in one and
"Glucose Biscuits" on the other occupy a prominent place at the top with
a good deal of similarity between the two writings. Anyone in, our
opinion who has a look at one of the packets to-day may easily mistake
the other if shown on another day as being the same article which he had
seen before. If one was not careful enough to note the peculiar features
of the wrapper on the plaintiffs goods, he might easily mistake the
defendants' wrapper for the plaintiffs if shown to. him some time after he
had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with
the powers of observation of a Sherlock Holmes. We have therefore no
doubt that the defendants' wrapper is deceptively similar to the plaintiffs'
which was registered. We do not think it necessary to refer to the
decisions referred to at the Bar as in our view each case will have to be,
judged on its own features and it would be of no use to note on how
many points there was similarity and in how many others there was
absence of it.

17. Ld. counsel for defendant submitted that various packaging with
orange color background are available in the market and plaintiff cannot
claim originality of his product. In this regard, it was held in Pankaj Goel
(supra) as under :

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 “As far as the Appellant's argument that the word MOLA is
common to the trade and that variants of MOLA are available in the
market, we find that the Appellant has not been able to prima facie prove
that the said 'infringers' had significant business turnover or they posed
a threat to Plaintiff's distinctiveness. In fact, we are of the view that the
Respondent/Plaintiff is not expected to sue all small type infringers who
may not be affecting Respondent/Plaintiff business. The Supreme Court
in NATIONAL BELL VS. METAL GOODS reported in AIR 1971 SC 898
has held that a proprietor of a trademark need not take action against
infringement which do not cause prejudice to its distinctiveness.”

18. In Laxmikant V. Patel (supra) it was held as under :

“ In an action for passing off it is usual, rather essential, to seek an
injunction temporary or ad-interim. The principles for the grant of such
injunction are the same as in the case of any other action against injury
complained of. The plaintiff must prove a prima facie case, availability of
balance of convenience in his favour and his suffering an irreparable
injury in the absence of grant of injunction. According to Kerly (ibid,
para 16.16) passing off cases are often cases of deliberate and intentional
misrepresentation, but it is well-settled that fraud is not a necessary
element of the right of action, and the absence of an intention to deceive
is not a defence though proof of fraudulent intention may materially
assist a plaintiff in establishing probability of deception.”

19. In Britannia Industries Ltd. (supra) relied upon by ld. counsel for
defendant, the product of plaintiff and product of defendant are depicted on

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page 3 of the judgment. There are striking dissimilarity in two products and
hence, the said judgment will not advance the case of defendant. Therefore,
the contention of ld. counsel for defendant that there is no similarity in two
products except orange color background cannot be accepted.

20. When one looks at the prayer clause of plaint, it cannot be said that
there is no prayer for infringement of trademark in the suit. The
contradictions highlighted by Mr. Neeraj Grover, ld. counsel for defendant,
during the course of arguments in various paragraphs of plaint were
explained by Mr. Rishi Bansal, ld. counsel for defendant in rebuttal
arguments.

21. As per the averments of plaint, plaintiff is using its registered

trademark since May 2018. Plaintiff has further averred that plaintiff has
been granted copyright registration as per details given in para 7 of the
plaint. Defendant in the written statement stated that defendant has been
using same color combination for its packaging for sanitary pads under the
mark Dryvel ever since the year 2015-16. It is further averred that the mark
Dryvel is a registered trademark under the provisions of Trademark Act.

22. Defendant has not filed any document or material on record to

establish that defendant has been using same combination of colors under
the mark Dryvel even since the year 2015-16. Similarly, defendant has not
placed on record any document to prove that the mark Dryvel is a
registered trade mark. Thus, plaintiff is not only the owner and proprietor
of registered trademark but is also the prior user.

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23. In Midas Hygiene Industries P. Ltd. & Anr. (supra) it was held that
the law on the subject is well settled. In cases of infringement either of
Trade Mark or of Copyright normally an injunction must follow. Mere
delay in bringing action is not sufficient to defeat grant of injunction in
such cases. The grant of injunction also becomes necessary if it prima
facie appears that the adoption of the Mark was itself dishonest.

24. The obvious conclusion is that plaintiff has made out a prima facie
case in its favour. It may not be possible to compensate the plaintiff for
losses suffered due to infringement of its trademark and copyright by
defendant, if injunction is not granted and plaintiff ultimately succeeds in
the suit. Therefore, balance of convenience also lies in favour of plaintiff.
Plaintiff will suffer irreparable loss and injury if injunction in respect of
infringement is not granted which cannot be compensated in terms of
money. In Wander Ltd. & Anr. (supra) relied upon by ld. Counsel for
defendant, it was held as under :

“ Usually, the prayer for grant of an interlocutory injunction is at a

stage when the existence of the legal right asserted by the plaintiff and its
alleged violation are both contested and uncertain and remain uncertain
till they are established at the trial on evidence. The court, at this stage,
acts on certain well settled principles of administration of this form of
interlocutory remedy which is both temporary and discretionary. The
object of the interlocutory injunction, it is stated

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 ‘ …. is to protect the plaintiff against injury by violation of his
rights for which he could not adequately be compensated in damages
recoverable in the action if the uncertainty were resolved in his favour at
the trial. The need for such protection must be weighed against the
corresponding need of the defendant to be protected against injury
resulting from his having been prevented from exercising his own legal
rights for which he could not be adequately compensated. The court must
weigh one need against another and determine where the "balance of
convenience lies ’ ".

Conclusion

25. Accordingly, the application filed by plaintiff u/o. 39 rule 1 and 2

CPC is allowed. Defendant, its partners/ proprietors, directors, agents,
representatives, etc. is restrained from manufacturing, marketing, selling,
using, supplying, soliciting, displaying, advertising, importing/exporting or
by any other mode or manner dealing with the impugned
trademark/label/trade dress/packaging/combination of colors as :

or any other trade mark/label(s)/ trade dress/packaging/ combination of

colors identical with or deceptively similar to the Plaintiff's
trademark/label/trade dress/packaging/combination of colors-

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 in relation to sanitary pads and
related/allied/cognate goods or services of allied/ cognate nature, passing
off its goods and business as that of plaintiff, infringing plaintiff’s
copyright in the artwork of said trade mark/label(s)/ trade dress/packaging/
combination of colors, till disposal of the suit.

(Sandeep Yadav)
District Judge (Commercial Court)-03
South/28.08.2023

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