In a recent decision by the Delhi High Court, Hon’ble
Justice Manmohan granted an injunction against the defendant who was also the
registered proprietor of the impugned trademark for persistent conduct of
selling products bearing the mark AMIR’S, and more importantly, for wrongly
obtaining a registration of their mark AMIR in Class 3.
Brief Facts:
M/S
Ishar Dass Amir Chand (hereinafter referred to as the ‘Plaintiff’) claimed to
be the prior adopter and registered proprietor of the trademark AMIR’S in Class
3 and is stated to be engaged in the business of cultivating Henna and in
manufacturing and exporting the same as natural Henna powder under the said
mark. The Plaintiff is stated to be continuously and uninterruptedly using the
mark AMIR’S for its products since 1996.
Claims of the Plaintiff
The
Plaintiff also claims to be the registered proprietor of the product label, and
contended that the color combination, trade dress and get-up of the
label/packaging of their product constituted an 'original artistic work' under
Section 2 (c) of the Copyright Act, 1957. Their trade mark AMIR'S along with
its label had acquired a heightened degree of distinctiveness owing to the
exclusive, extensive and continuous use of the same since 1996. In support of this
contention, the Plaintiff proved its original sale invoices showing sales and
exports for the period 1996 to 2014.
The
Plaintiff further claimed that, Mr. Jagdish Babu Sharma (hereinafter referred
to as ‘Defendant’) who is the Director of Defendants No. 2 and 3 companies, are
engaged in manufacturing, selling and exporting henna and henna based dyes
under the mark AMIR'S with identical trade dress/get-up as that of the Plaintiff's
product. Plaintiff exhibited the Defendant no. 2's certificate of incorporation
which shows that it was incorporated on May 17, 2001. Further, the Defendants
had wrongly obtained a registration of the impugned mark AMIR in Class 3 for
which the Plaintiff had filed rectification and cancellation applications. In
second week of August, 2015, it came to the knowledge of the Plaintiff that
despite the orders passed by the Food and Drugs Administration cancelling the
license of the Defendants, pursuant to complaints made by the Plaintiff, the Defendants
continued to illegally manufacture, sell and export their products under the
impugned trade mark as well as trade dress/get-up deceptively similar to that
of the Plaintiff.
Aggrieved
by the conduct of the Defendants, the Plaintiff had prayed for an ex parte ad interim injunction before
the Delhi High Court and the Court had granted the said injunction in favor of
the Plaintiff and against the Defendants on September 21, 2015 restraining the
Defendants and it’s agents from manufacturing, selling, offering for sale or
exporting Henna/Henna based products under the mark, "AMIR's/AMIR" or
any other mark that is identical/deceptively similar to the Plaintiff's
trademark, "AMIR'S", which was registered prior in time.
The
Court had further observed that as on date, the Defendants enjoy a registration
in the mark, "AMIR" and "AMIR (Device of Lady)" and even as
per the Plaintiff, they have remained in the market for some time, hence, it is
deemed appropriate to grant the Defendants a period of two months to make
compliances of the aforesaid order.
However,
as the Defendants entered appearance only on two occasions and did not file
their written statement within the stipulated time granted, their right to file
written statement was closed vide order dated August 12, 2016. Thus, the Defendants
were proceeded ex-parte by this Court
vide order dated October 27, 2016 and the interim injunction was made absolute.
Decision of the Court
Having
perused the papers and having heard the Learned Counsel for the Plaintiff,
Hon’ble Mr. Justice Manmohan of the Delhi High Court was of the view that,
since the averments in the plaint have not been rebutted by the Defendants as
they did not bother to put forth their stand, in spite of ample opportunities
given to them, they are deemed to be admitted.
Further,
the Court was of the view that color combination, trade dress and get-up of the
label/packaging of the Plaintiff's product constitutes an 'original artistic
work' under Section 2 (c) of the Copyright Act and the Plaintiff has the
exclusive right to use and produce the same under Section 14 of the Copyright
Act. The use of the impugned AMIR'S Henna label by the Defendants which is a
colorable imitation and substantial reproduction of the Plaintiff's AMIR'S
Henna Label/logo in respect of its overall color combination, lay out and
arrangement of features and get up constitutes infringement of copyright of Plaintiff's
product under Section 51 of the Copyright Act and is liable to be injuncted
under Section 55 of the Copyright Act.
Additionally,
the Defendants' impugned marks AMIR'S and AMIR are identical to the Plaintiff's
mark. Even though both the Plaintiff's and Defendants' marks are registered,
yet from the evidence on record, it is apparent that the Plaintiff is the prior
adopter of the trade mark AMIR'S along with its label and has been using the
same extensively since the year 1996. From the Plaintiff's sales figures it is
also apparent that the product of the Plaintiff under the trade mark AMIR'S along
with its label and get up, in particular the color combination of green and
white has acquired distinctiveness and is identified as originating from the Plaintiff.
The use of the impugned trade mark/trade dress/label comprising of box design,
label including the overall color combination of golden and white by the Defendants
for domestic and export sales is likely to cause confusion and/or deception in
the minds of the consumers on account of imperfect recollection and the overall
similarity and idea conveyed by the trade dress and packaging of both the
parties. In fact, the adoption of the impugned trade mark AMIR'S and its
packaging by the Defendants would invariably cause confusion and deception on
account of being visually, structurally, phonetically and deceptively identical
to the Plaintiff's mark and its packaging. The use and export of the impugned
trade mark AMIR'S and its packaging by the Defendants constitute acts of
misrepresentation, misappropriation and passing off.
Keeping in mind the aforesaid facts and
contentions, the mandate of the law and the persistent conduct of the
Defendants in selling products bearing the mark AMIR’S/AMIR, the suit is
decreed in favour of the Plaintiff and the Plaintiff shall be entitled to costs
including monies spent on Court-Fees, Local Commissioner’s Fees and other
expenses, etc.
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