In a notice of motion for interim injunctions in a copyright and passing off suit, the single judge dismissed the application. The court held the plaintiff failed to establish a strong prima facie case as there was no cogent evidence of actual market use of the mark.
Notice of Motion for injunction and Receiver dismissed with no order as to costs.
This page shows the compact analysis of this judgement. The full analysis — procedural history, issue-by-issue holdings with ratio and obiter, advocates, and paragraph-level evidence for every claim — is being added to the record in batches and will appear here when this judgement has been through it.
218-NMS678-13.DOC
Atul
IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO. 678 OF 2013
IN
SUIT NO. 219 OF 2013
…Plaintiff
Prime Spirits…Plaintiff
Versus
Master Blender Private Limited…Defendant
Dr. Veerendra Tulzapurkar, Senior Advocate, with Mr. Sandip
Parikh & Mr. Hemang Engineer, i/b M/s. Gordhandas &
Fozdar, for the Plaintiff.
Mr. Rashmin Khandekar, with Ms. Gitika Khanchandani, i/b Mr.
A.Z. Mookhtiar, for the Defendant.
CORAM: G.S. PATEL, J DATED: 29th March 2016
PC:-
1.This order will dispose of the Plaintiff’s Notice of Motion
for injunctions and a Receiver. The suit is an action in copyright
infringement combined with a cause of action in passing off in
relation to an unregistered mark.
2.The trial in the suit has commenced. I understand that the
Plaintiff’s first witness has already been cross-examined. A further
witness on behalf of the Plaintiff is yet to file his evidence. Dr.
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Tulzapurkar for the Plaintiff fairly states that as regards the relief in
copyright infringement, this can and must necessarily be deferred
to the trial. He confines himself, therefore, at this stage to the relief
in passing off.
3.It is perhaps appropriate to begin with a comparison of the
two rival marks. Both are labels said to have been used on whisky
bottles, though the Defendant contests the Plaintiff’s claim of any
user at all. The Plaintiff’s mark is shown at Exhibit “A”.1 This has
the words “Prestige Club” in a cursive font set at an angle on a
black background. The label’s top and bottom borders are of a dull
gold colour. Below the words ‘Prestige Club’ are the words
‘SUPERIOR GRAIN’, shown in capitals. Below those, in yet
another cursive font, is the word ‘Whisky’. All these words, i.e.,
the ‘Prestige Club’, ‘SUPERIOR GRAIN’ and ‘Whisky’ are in
white. The words ‘Prestige Club’ seem to have a gold border or
outline. Across the middle of this label is a photograph of a horse
race: two galloping steeds with jockeys astride. There is other text
in dull gold on a black background toward the bottom third of the
label, but the font here is too small to be decipherable.
4.The Defendant’s label is at Exhibit ‘B’.2 It uses the words
‘Prestige Life’. These are also in a cursive font. They too are in
white with a gold border or outline. Below we find the word
‘DELUXE’ in capitals in white, and beneath that, the word
‘Whisky’ in yet another cursive font in white. This label is
bordered in gold on all four sides. It, too, has a pictorial image of a
1Plaint,p.22
2Plaint,p.37
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horse race across the middle, but this image is somewhat different
from the one used by the Plaintiff: it shows many more horses, for
one thing. The font used in ‘Prestige Life’ is slightly, but not
immediately obviously, different from the one used by the Plaintiff.
The other possible point of distinction in the Defendant’s label is
that it has a small green-dot sticker to the left. This is presumably
meant to indicate that the extolled beverage is ‘vegetarian’. It is
perhaps prudent to let that pass.
5.Dr. Tulzapurkar’s case for the Plaintiff runs thus: he says
that the Plaintiff conceived its mark and had its label designed in
April 2009. Within a month, the Plaintiff obtained excise
permissions and began using the mark. In order to evidence this, he
refers first to an Affidavit of one Mr. Sunil Shamlal Nanwani,3
supposedly the person who developed the label’s artwork for the
Plaintiff. Nanwani says that he rendered these artworks with and for
the ‘Prestige Club’ label, and that he is the proprietor of M/s.
Point Graphics. Whether this is sufficient to establish copyright is a
separate matter that must await trial. What is of relevance, however,
is that Nanwani says that he prepared this label on 11th December
2008.
6.That the Plaintiff began use of its label in 2009 cannot, Dr.
Tulzapurkar says, be controverted because not only is there
sufficient material in the form of sales registers annexed to the
plaint from pages 26 to 36 with dates that range between 19th
November 2009 to 30th November 2012,4 but there is also evidence
3Motion paperbook,p.214
4Plaint,pp.26-36.
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that the Plaintiff received its own excise permissions in respect of
its label as far back as on 29th May 2009.5 Relying on the elaborate
and erudite decision of Shah J (as he then was) in Consolidated
Foods Corporation v Brandon and Co., Private Limited,6 Dr.
Tulzapurkar submits that it is settled law that a trader acquires a
right of property in a distinctive mark merely by using it upon or in
connection with his goods irrespective of the longevity of such user
or the extent of his trade. The trader who adopts the mark is
entitled to protection as soon as the article, having assumed ‘a
vendible character’, is launched in the market. Dr. Tulzapurkar
submits that the excise licenses gave the Plaintiff’s products the
necessary vendible character; and the moment the Plaintiff began
using the label in connection with its products, the Plaintiff
acquired sufficient common law rights to afford it protection from
an illicit competitor in a passing off action.
7.As to actual use, Dr. Tulzapurkar says the Plaintiff has a
bottling agreement with one Ambar Distilleries of 16th April 2009.7
This was renewed subsequently in April 2011.8 On the other hand,
the Defendant, Dr. Tulzapurkar submits, cannot prove any use at all
prior to or even around this date. All that the Defendant has
produced is a bill dated 16th April 2009 from one Sevenart Design
Studio.9 This bill is supposed to show that this studio had
developed the Defendant’s ‘Prestige Life’ Whisky labels. The bill
is supported by an Affidavit of one Milind Hegishte, the proprietor
5Motion paperbook,pp.242-246.
6AIR 1965 Bom 35.
7Motion paperbook,pp.219-228.
8Motion paperbook,pp.229-241.
9Motion paperbook,p.51.
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of Sevenart Design Studio, stating that in April 2009 the label was
created for the Defendant.10 Dr. Tulzapurkar assails this as being
inconclusive. In itself, he submits, this does not establish any use as
of that date, or of the Defendant’s products having acquired any
vendible character; for, from these documents, it is unclear which
particular label is being spoken of. This assumes significance, Dr.
Tulzapurkar says, because admittedly and demonstrably the
Defendant’s excise permissions were not applied for or obtained till
at least July 2012. The Defendant’s excise application and
permission is dated 7th July 2012.11 There is another approval
granted on 24th September 2012.12 Consequently, Dr. Tulzapurkar
submits that whatever be the value of the Defendant’s artist’s bill
and Affidavit, there is no evidence of the Defendant’s use of its
label at any point before September 2012. Even the sales figures
certified by the Defendant’s Accountants are only from September
2012 onwards.13 Similarly, the invoices produced by the Defendant
are all from September 2012 onward.14
8.As to the similarity, structural, visual and phonetic between
the two labels, Dr. Tulzapurkar submits that there can be no doubt.
There is not only a likelihood of confusion and deception but there
is active misrepresentation involved in the manner, get up and lay
out of the Defendant’s marks. It cannot be accident, Dr.
Tulzapurkar submits, that three years after the Plaintiff entered the
market, the Defendant began using a label so very closely
10Motion paperbook,pp.52-53A.
11Motion paperbook,pp.53-55.
12Motion paperbook,pp.56-58.
13Motion paperbook,p.59.
14Motion paperbook,pp.60-85.
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resembling to that of the Plaintiff. The substitution of ‘Life’ for
‘Club’ is irrelevant; very nearly the same expression is used as the
prominent feature, and no person would readily be able to tell
‘Prestige Club’ from ‘Prestige Life’, particularly when the rest of
the label’s artwork, colour scheme and get up is so similar to that of
the Plaintiff: more or less the same fonts, a very similar image, the
same position of the ‘Prestige’ phrase and so on. The goodwill in
the Plaintiff’s mark is also, in his submission, sufficiently
established by the sales registers.
9.All this is very nice, Mr. Khandekar for the Defendant says in
response, and it might have actually meant something but for two
critical and fatal flaws in the Plaintiff’s case: it has no copyright;
and, despite multiple opportunities, it has produced no evidence
sufficient even for a prima facie case let alone such as might
withstand a cross-examination, of ever having used the label. The
argument regarding copyright needs only to be noted, though it is
not strictly necessary to enter into this controversy given Dr.
Tulzapurkar’s previous statement. What Mr. Khandekar says that
even from the limited cross-examination that has already taken
place, it is not at all clear that the Plaintiff is in fact the first owner
of copyright as it claims in the Plaint.15 Nanwani’s Affidavit does
not show which label was made. In any case, the Plaint itself says
that an artist (presumably Nanwani) was ‘appointed’ to design a
label. There is no mention of any assignment from Nanwani to the
Plaintiff, and since the Plaintiff does not fall within provisos (a), (b)
or (c) to Section 17 of the Copyright Act, 1957, without a written
assignment as required by Sections 18 and 19, the Plaintiff cannot
15Plaint, paragraph 5,p.3.
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be said to have acquired any copyright in the label at all. It may yet
seek to establish this at the trial, Mr. Khandekar says, and I think he
is right, but at this stage there is nothing at all to show any
subsisting copyright.
10.On the issue of passing off, Mr. Khandekar submits that
there is nothing at all to evidence the Plaintiff’s presence in the
market from 2009. The only material produced, he points out, are
the sales registers. These are only numbers. They do not describe
any particular label or any particular product. What they do
mention is the name of a customer or a set of customers. The fact
that one of the principal customers seems to have the name Prestige
is no evidence at all of the use of the ‘Prestige Club’ label. It is
impossible to conclude from these figures that what was in use was
the label at Exhibit “A” over which protection is sought.
11.There is also, in his submission, a very considerable doubt
about the bottling agreement that is produced by the Plaintiff. This
is put forward only very late in the day. These documents have not
yet passed scrutiny in cross-examination. The renewed agreement
of 1st April 2011 is shrouded in doubt: there are additions and
alterations to it and it is not at all clear from these documents that
the Plaintiff is in fact a manufacturer or distiller or used these very
labels over which protection is now sought.
12.As to the question of the competing excise licenses, Mr.
Khandekar does not dispute that his client’s licenses are indeed of
2012. He says that the Defendant began use in 2012. But he says
that there is no material to show that by that time the Plaintiff was
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already in the market. He points, for example, to the Plaintiff’s own
excise permissions, to which I have already referred. The earliest of
this, he points out, is of 29th May 2009,16 but this at best might
show the acquisition of a vendible character, not actual vending.
The Plaintiff seems to have obtained labels a month in advance,
apparently in anticipation of receiving the excise license. Therefore,
reliance is placed on invoices of April 2009 and one of August
200917 for delivery of some labels from a printer.18 Even these, Mr.
Khandekar submits, has not yet passed the test of scrutiny in trial.
They are among the documents that will require to be proved by the
Plaintiff. There is no direct correlation between these bills and the
Plaintiff’s label.
13.When Mr. Khandekar says that the Plaintiff’s case is like
some ‘official’ statistic – what it discloses is merely interesting,
but what is conceals is vital – I think he may have a point. There is
absolutely no evidence, he says, in the form of invoices for goods
sold under the Plaintiff’s allegedly protected label. This is
inconceivable. If the Plaintiff did have the kind of sales it claims, it
would surely be able to marshall material to show those sales. The
Defendant has raised this squarely in its Written Statement and in
its various Affidavits. In response, though it has filed several
Affidavits, the Plaintiff has not placed any cogent material. All that
is shows is unverified sales registers; Nanwani’s Affidavit, one that
raises more questions than it answers; excise licenses that do not
per se establish sales; and two bottling agreements of the most
dubious character. At least one of these agreements, the one
16Motion paperbook,pp.242-245.
17Motion paperbook,pp.216-217.
18Motion paperbook,p.218.
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allegedly in renewal, has the most inexplicable features:19 it has a
white ink effacing for the date, and a handwritten insertion of an
effective date of 1st April 2011; but it is on stamp paper of 13th
March 2012. Yet it says it was executed on the date, month and year
‘first hereinabove written’. If that is supposed to mean 1st April
2011, then the entire agreement is suspect. If some other date is
intended, then the agreement requires an explanation that is
nowhere to be found.20
14.Given this material, Mr. Khandekar commends caution. The
suit is, he says, already under trial. Some progress has been made.
There is no call today to disturb the status quo and to grant an
injunction. Not having obtained any order to this date, the burden
on the Plaintiff must be that much greater to establish that there is
today so emergent a situation that unless reliefs are immediately
granted, irreparable and irreversible prejudice will be caused to the
Plaintiff. Nothing on record, Mr. Khandekar says and I think
correctly, points in that direction. There is no material placed
before me to show any such “clear and present danger”.
15.Mr. Khandekar relies on the decision of the Supreme Court
in Uniply Industries Limited v Unicorn Plywood Private Limited &
Others.21 Here too, the Court was concerned with the evidentiary
19Motion paperbook,pp.229-241.
20I propose to ignore Ex. “G” at page 248 of the Motion paperbook. This is supposedly an affidavit from Amber Distilleries, but the copy produced is unverified and unsigned and obviously incomplete. It is also no earlier than 2013, and was clearly obtained to establish the nonexclusivity of some arrangement between the Plaintiff and Amber, and nothing further. The state of the Affidavit, however, is such as to make it most unreliable.
212001 (21) PTC 417 (SC)
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material required to be assessed while considering an application for
an injunction. In paragraphs 8 and 9, the Supreme Court said:
“8. So far as the invoices are concerned, it is not very clear from the same that they were in relation to goods containing the trade marks in question because there is no mention of any particular trade mark in the same and may be they pertain to such goods, but this is a fact which is yet to be established by placing proper material before the court. So far as the declarations made before the excise authorities are concerned, the High Court itself found the material to be dubious. The letters issued by the dealers are both in favour of the Appellant and the Respondents. In this state of materials the courts below should have been wary and cautious in granting an injunction which would affect the trade and business of another person using an identical trade mark. Both the Appellant and the Respondents have applied for registration of their respective trade marks before the Registrar under the Trade and Merchandise marks Act, 1958 and the respective rights of the parties will have to be investigated by the Registrar and appropriate registration granted to either of them or both of them, as the case may be, bearing in mind the provisions of Section 12(3) of the Trade and Merchandise Marks Act, 1958. There are many precedents to the effect that for inherently distinctive marks ownership is governed by
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the priority of use of such marks. The first user in the sale of goods or service is the owner and senior user. These marks are given legal protection against infringement immediately upon adoption and use in trade if two companies make use of the same trade mark and the gist of passing off in relation to goodwill and reputation to goods.
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matter. Therefore, we think, the appropriate order to be made is that injunction either in the favour of the Appellant or against them or vice-versa is not appropriate and the proceedings in the suit shall be conducted as expeditiously as possible or the Registrar under the Trade and Merchandise Marks Act, 1958 may decide the matter which may govern the rights of the parties.”
16.Mr. Khandekar also relies on the decision of this Court in
eXEGESIS Infotech (India) Private Limited & Anr. v Medimanage
Insurance Broking Private Limited22 in which S.C. Gupte J. inter alia
held that where there is a debatable case of copyright ownership, an
injunction is not always readily granted for the asking. Some of
these matters will undoubtedly have to wait trial.
17.Mr. Khandekar is also correct in relying on the decision of
Gujarat Bottling Company Limited & Others v Coca Cola Company
& Ors.23 to say that he who approaches Court for an equitable relief
must come with clean hands. There can be no disputing that
principle. However, Gujarat Bottling is also important from another
perspective, and this is its pronouncement on the various probanda
required in determining whether an injunction should or should not
be granted. Where a Court’s equitable discretion is invited, the first
test is to see whether a sufficiently strong prima facie case is made
out. In this case, I do not think it is fair on this material to conclude
that it has. One must then assess the balance of convenience, and
here again I do not find in the papers before me such weight of
222015 (63) PTC 612 [Bom]
23(1995) 5 SCC 545
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material as would persuade me to hold for the Plaintiff. Questions
of possible prejudice and, equally possible reparations at the final
hearing of the Suit must also be weighed. For the third of these, the
question of irreparable injury means, necessarily, that unless the
injunction is granted the damage likely to ensue to the Plaintiff is so
considerable that even a final award of monetary damages may not
be sufficient restitution. This could, for instance, be an assessment
of likely damage to reputation or goodwill for, in any such case, an
award of monetary damages is always only an estimate. That these
three tests are essential is now well settled.24
18.In my view, Mr. Khandekar is fully justified in his
submissions. I have the greatest difficulty at this stage in accepting
straight away as an established fact that the Plaintiff had entered the
market. It is true that the Plaintiff had an excise license. It is
perhaps also true that it got printed some labels. But if it had in fact
used these labels on products I expected, if not in the plaint, then at
least in the papers in Notice of Motion which already has Affidavits
running to nearly 250 pages, some more cogent and solid evidence
by way of invoices, statements from stockists, dealers and so on. Of
this, I find none. I am also mindful of the fact that the trial in this
matter has progressed and that the Plaintiff’s first witness has
already been cross-examined. It is, of course, too early at this stage
to pronounce on the quality of that evidence. Yet, granting an
injunction at this stage would, in my view, so alter the balance of
this suit and of the trial, that the final outcome might considerably
be prejudiced. I must hold against the Plaintiff both on all three
24Hindustan Petroleum Corporation Limited v Sri Sriman Narayan & Anr, AIR 2002 SC 598;Gujarat Bottling(supra);Dorab Cawasji Warden v Coomi Sorab Warden & Ors, AIR 1990 SC 867
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questions: a prima facie case, the balance of convenience and the
likelihood of irreparable injury.
19.The Notice of Motion is therefore dismissed. There will be
no order as to costs.
(G. S. PATEL, J.)
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2 issues framed by the court
whether an interim injunction for passing off and copyright infringement is granted despite lack of cogent evidence of mark use
whether the plaintiff established a prima facie case, balance of convenience and irreparable injury for granting injunction
Colour shows how this judgement treated each authority
Consolidated Foods Corporation v Brandon and Co., Private Limited, AIR 1965 Bom 35.Referred¶30
Uniply Industries Limited v Unicorn Plywood Private Limited & Others, 2001 (21) PTC 417 (SC)Relied on¶68
eXEGESIS Infotech (India) Private Limited & Anr. v Medimanage Insurance Broking Private Limited, 2015 (63) PTC 612 [Bom]Relied on¶83
Gujarat Bottling Company Limited & Others v Coca Cola Company & Ors., (1995) 5 SCC 545Relied on¶84
Hindustan Petroleum Corporation Limited v Sri Sriman Narayan & Anr, AIR 2002 SC 598; Gujarat Bottling (supra); Dorab Cawasji Warden v Coomi Sorab Warden & Ors, Applied¶89
Atul
Prime Spirits
Master Blender Private Limited
G.S. PATEL
As recorded by the court registry
Judgements on the same questions, provisions and authorities, from every court