This article has been written by Oishika Banerji of Amity Law School, Kolkata. This article is a case analysis of Cadbury India Limited and others v. Neeraj Food Products in which the Delhi High Court clarified the difference between a passing-off action and trademark infringement.

Introduction 

In the well-known case of Cadbury India Limited and others v. Neeraj Food Products (142 (2007) Dlt 724, MIPR 2007 (2) 269, 2007 (35) PTC 95 Del), a single bench judge of the Delhi High Court, Justice G Mittal explained the difference between passing off action and an action for trademark infringement. While Section 29 of the Trademark Act, 1999 indicates several features of infringement as stated in Section 29(1), the Trademark Act, 1999 lacks an express clause that precisely defines passing off, but there are a number of common law judgments that allow the courts to interpret it. The tort of passing off is based on the premise that “a man must not sell his products under the pretence that they are the property of another man.” The present article provides a case analysis of the aforementioned landmark decision at length. 

Facts of the case

The plaintiff company, Cadbury India Limited (plaintiff 1), was founded and began operations in 1947. Prior to that, the company was known as Hindustan Cocoa Products Limited, a name that was provided by Cadbury (plaintiff 2), after the trademark was registered. Plaintiff 2 licenced some trademarks in 1994 through an arrangement. Both plaintiffs are subsidiaries of Cadbury Schweppes, a leading candy and beverage corporation located in the United Kingdom. The plaintiff has a large market share in India for confectionery and chocolate products under several brands, including Cadbury Dairy Milk, Cadbury Gems, Cadbury Five Star, Cadbury Bournvita, and Cadbury Perk, for which registration and licencing was granted with the disclaimer of having exclusive rights for the stated chocolate products.

Cadbury Bytes, Cadbury Chocki, Cadbury Delite, and Cadbury Temptations are some of the newer brands the company produces. On the 20th of May, 1968, plaintiff 1 got its first registration for the word ‘Gems’ as ‘Cadbury Milk Chocolate Gems’ under registration No. 249360 in Class 30. Plaintiff 1 was awarded trademark registration with the caveat that the same shall give no right to the exclusive use of the word ‘Gems’ and the device of tablets. It has been stated that this registration has been renewed till August 20, 2010. On the 13th of June, 1968, plaintiff 1 was also awarded registration of the device ‘Gems’ by registration certificate No. 249841 in Class 30. This registration was also issued with the caveat that it did not grant the holder the sole right to use the term “Gems” or the device. This certificate was valid till June 13, 2010.

The plaintiff had put a heavy reliance on the third registration of its label Cadbury Gems, which was given by the registration certificate bearing No. 291026 in class 30 on September 21, 1973, and is valid until September 21, 2008, in respect of milk chocolate. The Delhi High Court had been served with the labels for which this registration was granted. Because this label’s registration was not subject to any disclaimers, the plaintiff claimed exclusive rights to it under Section 31 of the Trademark Act, 1999. The plaintiff has also said that as part of his sales marketing operations for the goods, he developed a trademark under the style of ‘Gems Bond’ in the year 1988. The plaintiff’s product is sold over the counter to literate, semi-literate, and utterly illiterate persons and children, and the product is sold through general merchants and stores of all types. It is highly well-liked by children.

The plaintiff filed this suit on August 24, 2005, claiming that it had recently learned that the defendants (Neeraj Food Products) had introduced into the market chocolate products with a shape, size, and appearance that was identical to that of the plaintiff, using pillow packs that were a substantial imitation of the plaintiff’s pillow packs, under the trademark ‘James Bond.’ The trademark ‘James Bond’ was physically and phonetically similar to the plaintiff’s registered brand ‘Gems Bond,’ causing confusion and deceit in the minds of the unsuspecting customer, resulting in infringement of the plaintiff’s registered trademark ‘Gems.’ It had also been argued that the defendant can pass off his products as the plaintiff’s by using the term ‘James Bond.’ The use of the plaintiff’s trademark to create a commodity sparked outrage, leading to the filing of an interlocutory injunction suit in the Delhi High Court with an ordinary suit to prevent the defendant from producing or procuring any product, good, or commodity that is similar to the plaintiff’s product, by the plaintiff.

Issue raised

Whether injunction orders under Order 39 Rule 1 and Rule 2 of the Civil Procedure Code, 1908, should be issued in the plaintiff’s favour to prevent the defendant from passing off the former’s products by acquiring, replicating, or making them in any material form?

Contentions of the parties 

The arguments advanced by both the parties to the case have been provided hereunder. 

Arguments advanced by the petitioners 

1. The experienced counsel of the petitioners had argued that the defendant’s dereliction had such a significant influence on the plaintiff’s label and brand that it should not be considered as a small infraction activity but rather as unethical behaviour that caused deception and confusion in the public’s mind.
2. Secondly, the counsel argued that the plaintiff’s product has the word “Gems” and the defendant’s product has the word “James,” both of which come from the English language’s scriptures and that the pronunciation of these words by Englishmen or any literate person would be the same and distinct, so the pronunciation of these words may vary from region to region, and even shopkeepers who sell these two parties’ products may or may not be illiterate. So the vowels used in “JAMES” (i.e. A and E) and “GEMS” (i.e. E) have a tiny difference in pronunciation that should not be missed.
3. In reliance on the case Midas Hygiene Industries P. Ltd. and Another. v. Sudhir Bhatia and Others (2015), the learned counsel accepted the fact set up by the defendant purporting the period of validation of trademark usage, but it did not restrain from obtaining an injunction in favour of the plaintiff in violation of the Trademark Act, 1999 and Copyright Act, 1957.

Arguments advanced by the defendant

1. The defendant’s main argument has been that the plaintiff neglected to reveal the disclaimers supplied on its registration certificate by the Registrar of Trademarks in its plaint, which would disqualify the plaintiff from receiving an injunction on its own. It was also claimed that the plaintiff doesn’t have a wordmark registration for the word “Gems,” but does have a composite registration for “Cadbury Gems.” As a result, the plaintiff would not have an exclusive right in a part of a registered trademark under Section 17 of the Trademark Act, 1999.
2. Mr. Bansal, counsel for the defendant further claimed that the defendant was utilising the trademark ‘James Bond,’ which is dissimilar to the plaintiff’s brand. The plaintiff, it was said, had not met the legal criterion of establishing commerce and reputation for its products under the trademark ‘Gems.’ It was further argued that the plaintiff’s records showed that the plaintiff’s goods were sold as ‘Cadbury Gems’, and that as a result, the plaintiff was not entitled to any remedy in this case.
3. It was also argued that, in deciding the claim of injunction in the passing off action, the High Court must consider whether the matter added to the defendant’s packaging is sufficient to distinguish the defendant’s goods from those of the plaintiff. With the extra content supplied by the defendant on its label, learned counsel for the defendant argued that there were sufficient differentiating elements from the plaintiff’s label to disentitle the plaintiff to an injunction against the defendant.
4. Mr. Bansal had further claimed that the plaintiff did not have a copyright registration for the pillow pack and label under the Copyright Act of 1957. It had not posted any advertisements or invoices in connection with this copyright. It is also argued that if the basic aspects of the package and labelling are considered as a whole, the plaintiff was not entitled to the injunction.

Judgment

The judgement delivered by the Delhi High Court in light of the present case has been discussed with the help of both ratio decidendi and obiter dicta. A discussion concerning the same has been provided hereunder. 

Ratio decidendi 

In a case involving the alleged infringement of a registered trademark, the court must first determine whether the defendant’s impugned mark is similar to the plaintiff’s registered mark. If the mark is deemed to be identical, no more questions arise, and infringement must be determined. If the defendant’s mark is not identical to the plaintiff’s, it must be determined whether the defendant’s mark is deceptively similar in the sense that it is likely to confuse or cause confusion in connection to the products for which the plaintiff’s mark was registered.

The two marks must be compared “not by placing them side by side, but by asking itself whether, having due regard for relevant surrounding circumstances, the defendant’s mark as used is similar to the plaintiff’s mark as it would be remembered by persons possessed of an average memory with its usual imperfections”. And it must then be determined whether the defendant’s mark is likely to deceive or cause confusion among the general public or not.

Then it’s a matter of determining if they are generally similar or have an overall similarity or resemblance and whether the similarity or resemblance is such that there’s a realistic chance of deception or confusion. In order to do so, the approach must be from the perspective of a buyer with average intellect and a shaky recall or recollection, rather than a naive, unthinking, and careless buyer. The standard for deceptive likeness, that is, the possibility of confusion or deception deriving from the similarity of the markings of the get-up, packaging, and so on, is basically the same in an action for passing off as it is in an action for infringement.

Obiter dicta

It is not sufficient to compare a trademark to one that is already registered and whose proprietor is opposing the registration of the former trademark in order to determine whether it is likely to mislead or cause confusion. What matters is to determine what the distinguishing or essential feature of the trademark already registered is, as well as what the main feature of the main idea underlying that trademark is. If the trademark whose registration is sought contains the same distinguishing or essential feature or conveys the same idea as a previously registered trademark, then the Registrar would be correct in concluding that the trademark should not be registered.

With this, the High Court of Delhi granted the plaintiffs’ application and issued an interlocutory injunction prohibiting the defendant from passing off the former’s goods/commodity under the same exact brand name and essentially duplicating any portion of the pillow packet’s creative work.

Landmark cases mentioned in the judgment

The precedent judgments that the Delhi High Court had referred to while deciding on the present case of Cadbury India Limited and Others v. Neeraj Food Products (2007) have been discussed hereunder. In this case, the High Court has inclined towards various judgments delivered by itself as well as other courts in similar kinds of cases. The significant ones have received a discussion under this header. 

American Home Products Corporation v. Mac Laboratories Pvt. Ltd. and Another (1985)

Facts

While deciding on the case of American Home Products Corporation v. Mac Laboratories Pvt. Ltd. and Another (1985), the Supreme Court of India had observed that trafficking in a trademark occurs when a trademark is registered without any intention of using it in connection with any goods, but just to gain money by selling the right to use it to others. There is room to conclude that the issuance of the licence is trafficking in the mark if there is no true commercial connection between the proprietor of the mark and the licensee or his products. 

Observation of the Apex Court 

1. In every situation, whether a sufficient commerce link exists is an issue of fact and degree. The intention to use a trademark sought to be registered must be true and legitimate, and the fact that the mark was regarded to be something that may be helpful in the future would not amount to any definite or specific intent to use that trademark at the time of registration. 
2. The intention to use the mark must be present at the time of the registration application. In this matter, the appellant’s intention to utilise the trademark ‘Dristan’ through the Indian Company, which was later registered as a registered user of the said trademark, could not be described as anything but be characterised as bona fide.

Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1964)

Facts and ratio decidendi

The Supreme Court of India while deciding on the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1964), had observed that even if a mark fails to meet the criteria set forth in Section 6(1) of the Trademarks Act, 1999, it may still be eligible for registration under the proviso to Section 6(3), which requires proof of acquired distinctiveness. Under the proviso, the Registrar must not deny registration just because the trademark is not suited to differentiate, and may accept proof of acquired distinctiveness as entitling the trademark to registration for marks in use prior to February 25, 1937. The term “distinctiveness” cannot imply “suited to differentiate,” since if it did, the proviso would contribute nothing to the section and make no difference in the old law and the new.

Court’s observation 

The Apex Court had further opined that it is impossible to accept a structure that would put old and new marks on the same footing and subject them to the same registration criteria. However, even if a mark has been in use prior to the designated date, it may not qualify for registration under the proviso because it lacks the degree of factual uniqueness that the Registrar believes necessary to qualify for registration. As a result, if the Registrar records a decision that the mark filed for registration is “not fitted to differentiate as stated,” he is authorized to allow evidence of “acquired distinctiveness” to be presented.

Kellogg Co. v. Praveen Kumar Bhadabhai (1996)

Facts of the case 

The case of Kellogg Co. v. Praveen Kumar Bhadabhai (1996) that appeared before the Delhi High Court concerned the plaintiff, Kellogg Company, who had filed an appeal against the learned single Judge’s decision dismissing the appellant’s motion for a temporary injunction against the respondent (Praveen Kumar Bhadabhai) under Order 39 Rule 1 Code of Civil Procedure, 1908. The dispute pertained to trademark infringement with the emphasis being on trade dress. With the additional matter introduced by the defendant on its label, learned counsel for the defendant argued that there are sufficient differentiating elements from the plaintiff’s label to disentitle the plaintiff to an injunction against the defendant.

Observation by the Delhi High Court

The Court dismissed the claims of resemblance or probability of confusion, as well as the claims of fraud and poor memory. The Court reasoned that, while the outfits appear to be identical, the separate names Kellogg’s and AIMS ARISTO conspicuously displayed make all the difference, and that this is not a suitable case for interfering with the learned Single Judge’s refusal to grant an injunction.

Colgate Palmolive v. Mr. Patel and Another (2005)

Facts of the case 

The well-known case of Colgate Palmolive v. Mr. Patel and Another (2005) that appeared before the Delhi High Court concerned the issue of unfair competition and trademark infringement. The plaintiff used the trademark ‘Colgate’ to sell toothpaste, whereas the defendant used the trademark ‘Fringate’. The plaintiff utilised red, white, and dark blue packaging, whereas the respondent likewise used red, white, and blue. In this case, it was determined that the defendant copied characteristics from the plaintiff’s packaging, tubes, and labels and that an average customer with normal memory could not be expected to inspect the side of the item by side, thereby resulting in confusion.  

Observations by the court of law

1. The Hon’ble High Court had observed that as the plaintiffs’, Colgate Dental Cream, trade dress has a high degree of inherent distinctiveness as a result of its extensive use over a long period of time and across a wide geographical area, the plaintiffs are entitled to protection against the defendants’ adoption of the impugned trade dress, which will diminish the plaintiff’s trade dress’s reputation and goodwill, as well as its strong identification value. 
2. The Delhi High Court has also ruled that a considerable copy of an existing product’s packaging not only causes confusion but also dilutes the individuality of the earlier established product. The plaintiffs’ product, being a prior product as a result of the attributes listed above, would be entitled to protection against passing off by the defendants’ goods.

Samsonite Corporation v. Vijay Sales (1998)

Facts of the case 

In the case of Samsonite Corporation v. Vijay Sales (1998), the plaintiffs, who claim to be in the business of selling suitcases all over the world, have filed suit against the defendants, alleging that the defendants have infringed the plaintiff’s copyright in drawings, that the defendants are passing off their goods, and that they are imitating the trade dress in order to sell their products.

Delhi High Court’s observation

In this case, the Delhi High Court found that the plaintiffs had failed to show any distinctive trade dress, and that the colour, form, and other elements mentioned by the plaintiff are relatively common. It was also found that just glancing at the plaintiff’s and defendant’s items could clearly identify them, and that colour alone could not be the primary reason in reaching a determination of passing off in the plaintiff’s favour. The Court had denied the injunction request based on the circumstances of the case.

Metropol India (P) Ltd. v. Praveen Industries India (Regd.) (1997)

While deciding on the case of Metropol India (P) Ltd. v. Praveen Industries India (Regd.) (1997), the Delhi High Court was of the opinion that the statutory remedy granted to the registered proprietor of a registered trademark for the vindication of the exclusive right to use the trademark in connection to certain products is an action for infringement. 

Facts of the case 

The plaintiff, who owned the trademark ‘Cleanzo,’ claimed that the defendant had deceptively introduced a similar product into the market under the name ‘Cleanjo,’ and that the product was being sold in tins with the same size, background, colour scheme, layout, and get-up, but in a different arrangement and order. The defendant was granted permission to manufacture and sell its products under the name, style, and trademark ‘Praveen Raveen Cleanjo,’ with the proviso that they would not write the term ‘Cleanjo’ in an owl form or any other shape that would be confusingly similar to the plaintiff’s brand. The order had been challenged by both parties. 

Observations by the court of law

1. The Division Bench noted that the learned Single Judge had correctly said that it was for the defendant to prove how and in what manner the same photographer and the term ‘Cleanjo’, which is there in the dictionary, were utilised for his goods. The word “Cleanzo” does not appear in the dictionary as well. 
2. The plaintiff was a past user of the mark, according to the evidence, and the defendant began using the same match later. Due to the defendant’s failure to respond to these inquiries, the defendant was barred from using the trademark ‘Cleanzo’ in any form on its products. 
3. In this instance, the Division Bench found that the categorization of the commodity had no bearing on the claim of passing off.

Atlas Cycle Industries Ltd. v. Hind Cycles Limited (1973)

In its ruling in the matter of Atlas Cycle Industries Limited v. Hind Cycles Limited (1973), the Division Bench of the Delhi High Court spelled out the requirements that the plaintiff must meet in order to establish a case of trademark infringement by the defendant.

Facts of the case 

The current issue revolves around the Trade and Merchandise Act, 1958, and seeks to decide whether the respondent’s use of phrases like “Royal Star” for his cycles constitutes an infringement of the Appellant’s registered trademark “Eastern Star.” When evaluating whether the respondent infringed on the appellant’s trademark, the phonetic similarity between the two was taken into account. It has been discovered that a person of average prudence and intelligence with a poor memory is likely to recall the final word “Star,” which may deceive and confuse the customer. The appearance of both marks was examined further, and it was discovered that the most important characteristic in the mark is the location and portrayal of the star, which will remain in the minds of the public.

Delhi High Court’s observation

The respondent’s mark “Royal Star” was found to be an infringement of petitioner’s mark “Eastern Star.” The appellant’s appeal was upheld, and the appellant’s claim that the respondents were passing off the appellant’s bikes was dismissed. Because there were no objections to the relief, no damages were awarded.

Hindustan Radiators Co. v. Hindustan Radiators Ltd. (1987)

The case of Hindustan Radiators Co. v. Hindustan Radiators Ltd. (1987) that appeared before the Delhi High Court was a landmark decision laying down eight probanda guidance surrounding claims for injunction on the ground of passing off on the strength of trade dress. They are provided hereunder: 

1. That the plaintiff has been utilising its trading style and trademark for a long time and in a consistent manner, whereas the defendant has just recently joined the field;
2. There has been little delay in the plaintiff’s filing of the injunction lawsuit;
3. That the plaintiff’s products have gained uniqueness and are connected with the plaintiff’s goods in the opinion of the general public;
4. That the plaintiff’s and defendant’s activities are same or similar in character;
5. That the parties’ goods, with which the plaintiff’s trademark is affiliated, are the same or similar;
6. That the defendant’s use of the identical trademark or trade name is likely to mislead and cause confusion in the public mind, as well as harm the plaintiff’s commercial image;
7. That the parties’ spheres of activity and markets for the consumption of commodities are the same;
8. That the plaintiff’s consumers include, among other things, ignorant, illiterate, and naïve customers who might be fooled, confused, or misled.

Parle Products (P). Ltd. v. J.P. and Co., Mysore (1972)

Facts of the case 

The case of Parle Products (P). Ltd. v. J.P. and Co, Mysore appeared before the Supreme Court of India in the year 1972 and involved a plaintiff, a biscuit, and confectionery business with a number of registered trademarks. The name “Gluco” on their half-pound biscuit packaging was one of them. The wrapper, with its colour scheme, overall set up, and whole collocation of text was another registered trademark of theirs under the Trademarks Act of 1940. They had brought an action against the defendant for infringement of their registered trademark, alleging that in March of 1961, they found the defendants were making, distributing, and offering for sale, biscuits, in a wrapper that was deceptively similar to their registered brand. 

Observation by the court of law

The trial and the appellate court held against the plaintiff. In the appeal before the Apex Court, the Court placed reliance on the fact that in order to determine whether one mark is deceptively similar to another, the broad and important aspects of the two should be reviewed. They should not be placed side by side to see whether there are any design differences and, if so, whether they are of such character that one design cannot be mistaken for the other. It would suffice if the contested mark bore such a striking resemblance to the registered mark that a person who is used to dealing with one would mistakenly accept the other if it were provided to him.

Thomas Bear and Sons (India) Ltd. v. Pravag Narain (1940)

While deciding on the case of Thomas Bear and Sons (India) Ltd. v. Pravag Narain (1940), the Bombay High Court stated that the criteria for determining the likelihood of deception is not whether the uneducated, careless, or incautious customer is likely to be deceived, but rather whether the average purchaser buying with ordinary prudence is likely to be misled. The Court went ahead to state that it is important to remember that injunctions have been given in cases of trademark infringement in pharmaceutical items based on the likelihood of misunderstanding.

Corn Products Refining Co. v. Shangrila Food Products Ltd

In Corn Products Refining Co. v. Shangrila Food Products Ltd (1959) the Supreme Court of India held that the overall similarity of the two composite words must be considered, that the question must be approached from the perspective of a man of average intelligence and imperfect recollection and that the overall structural and phonetic similarity of the two names “Amritdhara” and “Lakshmandhara” were likely to deceive or cause confusion to such a man. The question must be considered from the perspective of a man with average intelligence and faulty memory. The overall structural and phonetic resemblance of the two names “Amritdhara” and “Lakshmandhara” is likely to confuse or cause confusion to such a man, according to the Court. 

K.R. Chinna Krishna Chettiar v. Sri Ambal and Co. and Another (1969)

Facts of the case 

In K.R. Chinna Krishna Chettiar v. Sri Ambal and Co. and Another (1969), the plaintiff claimed that the defendant’s trademark ‘Sri Andal’ was deceptively similar to the plaintiff’s trademark ‘Sri Ambal,’ and sought an injunction. The Apex Court found a significant likeness and sound affinity between the terms ‘Andal’ and ‘Ambal.’ Although there was no visible likeness between the two marks, the Court decided that ocular comparison is not usually the deciding factor. The similarity between the two markings must be analyzed in terms of both the ear and the eye. Because it is employed in combination with a graphic element, the name Andal retains its deceiving similarity.

Observation of the Apex Court 

The Court considered the realities of the fact that, while ‘Sri Andal’ and ‘Sri Ambal’ were two divinities, and the pictorial devices on the respondent’s goods were different, the plaintiff’s customers were people of religious denominations other than Hindus, and the plaintiff’s business was not limited to the south of India, where people might know the difference between the two divinities. Customers would remember just the key aspects because the trademarks had no direct relation to the flavour and quality of the snuff. As a result, the Court was convinced to award an injunction in favour of the plaintiff against the defendant’s use of the trademark.

Devi Pesticides Pvt. Ltd. v. Shiv Agro Chemicals Industries (2006)

Facts of the case

In the case of Devi Pesticides Pvt. Ltd. v. Shiv Agro Chemicals Industries (2006), the plaintiff claimed exclusive ownership of the trademarks ‘Boomplus’ and ‘Boom Flower’ and sought an injunction against the defendant for using the name ‘Superboom’ to market its goods. Superboom was an unregistered trademark owned by the defendant. It was also noted that phonetic similarity would constitute trademark infringement and that because the users of the parties’ products were illiterate farmers and common men, it was determined that an ordinary average person would be unable to distinguish between the plaintiff’s and defendant’s goods.

Ruling of the Madras High Court 

The Madras High Court had ruled on the basis of Section 29(5) of the Trademark Act, 1999, that the legislative requirements make it apparent that infringement occurs even if a portion of the registered trademark is utilized by the defendant. Boom was an important feature of the plaintiff’s registered trademark, which was integrated into the defendant’s trademark.

Shaw Wallace and Co. Ltd. and Another v. Superior Industries Ltd (2003)

Facts of the case 

The plaintiff had claimed that the defendant’s trademark ‘HAYWARDS 5000’ was an unlawful violation of its registered trademark ‘HAYAWARDS 5000 SUPER STRONG BEER’ in Shaw Wallace and Co. Ltd. and Another v. Superior Industries Ltd (2003). It was largely argued that the defendant’s use of the number 5000 was done with the aim of earning profit from the plaintiff’s reputation in the business that it was operating under its registered trademark, of which 5000 was an integral component. The Delhi High Court had emphasised the poor recall of an average consumer apart from having respect for the relevant circumstances involved in this case, in order to determine if the defendant’s mark is comparable to the plaintiff’s.

Observation by the court of law

It was argued in this case that the plaintiff does not have to establish that the entirety of his registered trademark has been copied in order to succeed in an infringement action. He can also win if he can establish that the defendant’s mark is comparable to his mark as it would be recalled by people with ordinary memories, with all of its flaws, or that its fundamental details or distinguishing or important characteristics have been copied. The Hon’ble High Court had observed that it is widely established that in an action for claimed infringement of a registered trademark if the impugned mark used by the defendant is similar to the plaintiffs’ registered mark, no more questions need to be asked, and the infringement must be found. If the marks are not identical, the case must be reviewed further to see if the defendant’s mark is deceptively similar to the plaintiff’s or not. 

Ruston and Hornbi Limited v. Zamindara Engineering Co (1969)

The Supreme Court of India while deciding on the case of Ruston and Hornbi Limited v. Zamindara Engineering Co. (1969) had observed that for both infringement and passing off actions, the standard of the probability of confusion or deception deriving from the resemblance of marks is the same. The Apex Court had stated that there is no hard and fast rule about the degree of likeness that must exist to create deception, and it is impossible to establish or set criteria or objective standards for what would constitute deception in order for a plaintiff to be entitled to an injunction in an infringement case. The likeness might be phonetic, visual, or in the plaintiff’s mark’s underlying idea.

The Apex Court concluded that courts will compare the plaintiff’s and defendant’s trademarks to see if the fundamental elements of the plaintiff’s trademark are present in the defendant’s trademark. It is generally established that determining the essential elements of a mark or label is essentially a matter of fact that is decided by the court based on the information presented to it regarding the use of the trade. In the end, the question is whether the mark utilised by the defendant as a whole is deceptively similar to the plaintiff’s registered mark or not.

Midas Hygiene Industries P. Ltd. and Another v. Sudhir Bhatia and Others. (2004)

While hearing the case of Midas Hygiene Industries P. Ltd. and Another v. Sudhir Bhatia and Others. (2004), the Supreme Court of India had observed that the legislation on the subject matter of trademark infringement is well-established. In most situations of trademark or copyright infringement, an injunction must be issued. In such instances, mere delay in filing the action is insufficient to prevent an injunction from being granted. If it seems that the adoption of the mark was dishonest in the first place, an injunction may be warranted.

Facts of the case

In this instance, the respondents (Sudhir Bhatia and Others) formerly collaborated with the appellants (Midas Hygiene Industries P. Ltd). The appellants’ advertising from 1991 reveals that they began utilising the mark LAXMAN REKHA on their products from that year. Furthermore, the appellants hold a copyright in the marks KRAZY LINES and LAXMAN REKHA, which they have possessed since November 19, 1991. On April 23rd, 1999, the copyright was renewed. When the respondent initially started in 1992, he utilised the mark LAXMAN REKHA in boxes with the colours red, white, and blue, according to the cartons used by both parties. There was no explanation offered as to why, at a later time, that carton had to be modified to appear practically identical to the appellants. This suggests that he had the dishonest aim of passing off his items as the appellants’.

Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co. and Another (1989)

The Delhi High Court while deciding the case of Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co. and Another (1989), was of the opinion that it is difficult to agree that interim injunctive relief should not be given due to the plaintiff’s delay, even if the court believes that permanent injunction would be necessary at some point in the future. Although there is some debate as to whether laches or acquiescence can bar a permanent injunction, judicial opinion has consistently held that if the defendant acts fraudulently with the knowledge that he is infringing on the plaintiff’s rights, the relief of an injunction is not denied, even if the plaintiff takes an inordinate amount of time to take action against the defendant.

Observations of the Delhi High Court

The observations made by the Delhi High Court in light of the present case have been detailed hereunder:

1. The Delhi High Court had observed that in circumstances of violation of a registered trademark or copyright, it is widely established that an injunction must be issued. The plaintiff is entitled to an injunction under Section 29 of the Trademark Act of 1999 if the plaintiff’s name and product identification are identical. The Court came to the conclusion that the defendant’s use of the mark ‘James Bond’ was deceptive in and of itself, and that the defendant had infringed on the plaintiff’s trademark by adopting it. By means of its packaging, the defendant has also infringed on the plaintiff’s copyright. As a result, this is an appropriate case for an interim injunction to be issued.
2. The Court went further to observe that the packaging used by the defendant is so similar to that used by the plaintiff that it is quite likely that unwary customers would believe that the items they are acquiring are those of the plaintiff. In light of this debate, the Court had no trouble in concluding that the plaintiff has shown a prima facie case of dishonest passing off by the defendant of the former’s goods, entitling it to an interlocutory injunction.
3. The Court had observed that the defendants, their proprietors, partners, directors, servants, agents, distributors, franchisees, representatives, and assigns are prohibited from using the trademarks ‘James’ and/or ‘James Bond’ and/or any other trademark deceptively or confusingly similar to the plaintiffs’ registered trademark ‘Gems’ or in any other way infringing the plaintiffs’ registered trademark ‘Gems’, and from using pillow-packs or any other packaging whatsoever that is deceptively or confusingly similar to that of the plaintiff.
4. The Court had also observed that the defendants, as well as their owners, partners, directors, servants, agents, distributors, franchisees, representatives, and assigns, are prohibited from passing off the plaintiff’s goods and from substantially duplicating any content from the copyright in the pillow packs artistic work.

Analysis

In the landmark decision of Cadbury India Limited and Others. v. Neeraj Food Products (2007), the Delhi High Court clarified the difference between a passing-off action and trademark infringement as follows: 

1. While an action of passing off is a common law remedy, action for trademark infringement is a statutory remedy.
2. In the event of an infringement action, the defendant’s use of the plaintiff’s trademark is a requirement, but it is not required in the case of a passing off action.
3. To prove infringement of a registered trademark, all that is necessary is to show that the infringing mark is identical or deceptively similar to the registered mark, with no more proof required. Only establishing that the markings are identical or deceptively similar is insufficient in a passing-off case.
4. In a passing off claim, it is required to show that the defendant’s use of the trademark is likely to harm or damage the plaintiff’s goodwill, but in an infringement complaint, the defendant’s use of the mark must not harm the plaintiff.
5. When a trademark is registered, it is exclusively for a certain category of goods. In an infringement case, protection is offered solely to certain items, but in a passing off action, the defendant’s goods do not have to be the same, they might be different.

In the present case, a customer would remember the plaintiff’s wrapper and the visual of chocolate tablets erupting from the centre of the multi-colored chocolate tablets, exploding from the centre of the blue-colored pack, some of which had the centres visible. The defendant’s packaging is a pillow pack that is similar in size, shape, colour, and appearance and conveys the same message. The defendant’s aim in reproducing the same is plainly dishonest, as it is meant to profit from the plaintiff’s goodwill, reputation, and popularity, entitling the plaintiff to maintain its passing off case against the defendant. The defendant is also allegedly infringing on the plaintiff’s copyright in the plaintiff’s packaging’s artistic work. Thus, the case allowed the Indian courts to look into those circumstances which involved the trademark of a party to be deceptively similar to that of another. 

Conclusion 

A trademark sign, which becomes an eye-catching appeal for consumers, is used to indicate the originality of a good. With such a trademark applied to it, a buyer speculates on the product’s quality and originality. Many firms aim to earn a profit on a significant market share by providing unified items and commodities in this competitive globe. At the same time, other corporations are attempting to damage the distinctiveness of well-established items by concocting such deceptive mixtures in order to deceive clients and risk the company’s goodwill. The present case is a well-known one in trademark jurisprudence of India the Delhi High Court is in the interest of justice has justified the concern at hand. In this trademark dispute, technical elements such as packaging, size, form, and the brand were the main concerns, and even the pronunciation of words was taken into consideration.

References 

1. https://lawtimesjournal.in/cadbury-india-ltd-and-ors-vs-neeraj-food-products/.
2. https://www.stalawfirm.com/en/blogs/view/trademark-infringements-in-india.html.
3. https://mehtadixit.com/2021/03/17/when-it-was-gems-vs-james-bond/.
4. https://legumvox.in/critical-analysis-of-trademark-law-in-india-special-emphasis-on-the-landmark-case-of-amul-anul/.