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ssp comipl 1465 of 2018.doc IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL

comipl 1465 of 2018.doc

IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION IN ITS COMMERCIAL DIVISION COMMERCIAL IP (L) NO. 1465 OF 2018 WITH COMM. NOTICE OF MOTION (L) NO.2593 OF 2018

ITC Ltd.

Plaintiff

versus Rani Sati Foods Pvt. Ltd.

Defendant

Mr. Ravi Kadam, Senior Advocate with Ms. Tanmayi Rajyadhaksha, Ms. Smriti Yadav, Mr. Dhiren Karania I/by M/s. Khaitan and Co., for Plaintiff. Ms. Bhagwati Trivedi I/by M/s. Bhagwati and Co., for Defendant. Mr. Mahesh Gupta with Mr. Shubham Gupta, Directors of the Defendant, present.

CORAM:

S.J. KATHAWALLA, J.

DATE:

3 rd DECEMBER, 2018

P.C.:

 

1.

The Plaintiff is an old and established company having a diversified presence

in

packaged

food

and

confectionery,

hotels,

paperboards

and

specialty

papers,

packaging, agri-business, branded apparel, personal care products and other FMCG

businesses. It is one of India’s foremost private sector companies and has been rated

amongst India’s 50 biggest Non-Financial Companies by Business World in 2013 and

is amongst the top 5 of India’s Most Valuable Companies as ranked by Business Today

in 2013, 2014, 2015, 2016 and 2017.

2. The present case is of copyright infringement, trade mark infringement

combined with the cause of action in passing off relating to the Plaintiff’s Aashirvaad

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ssp comipl 1465 of 2018.doc trade dress used for its Atta / Flour products. It is

comipl 1465 of 2018.doc

trade dress used for its Atta / Flour products. It is the Plaintiff’s case, that in about

2001,

it

honestly

and

independently

conceived

and

adopted

the

trade

mark

“AASHIRVAAD” for using the same in relation to its Atta/Flour products. Around

the

same

time,

the

Plaintiff

commissioned

McCann-Erickson

India

Limited

(“McCann”) to create and develop original artistic works for its “AASHIRVAAD”

atta packaging, for a valuable consideration. McCann in turn commissioned one Mr

Anil Thomas, an artist, to create and develop original artistic works for the Plaintiff’s

“AASHIRVAAD” atta packaging. Accordingly, the original artistic works annexed at

Exhibts A-1, A-2 amd A-3 were created for the Plaintiff over the years and the same

have been assigned to it under the Deed of Assignment dated 4 April 2013.

3. It is stated that in order to secure statutory protection over the trade mark

“AASHIRVAAD” and the Plaintiff’s various “AASHIRVAAD” atta packaging, the

Plaintiff has applied /obtained registrations of the same in various classes viz. 29 and

30 under the Trade Marks Act, 1999. The Plaintiff is also the owner of the copyrights

subsisting in the artistic works of the Aashirvaad Trade Dress which are annexed at

Exhibit A-1, A-2 and A-3 to the Plaint.

4. It is stated that the Plaintiff has been continuously, extensively and un-

interruptedly using the Aashirvaad Trade Dress at Exhibit A-1 to the Plaint since 2002

and at Exhibits A-2 and A-3 to the Plaint since 2013, in respect of its Atta products. It

is further stated that on account of continuous, extensive and un-interrupted use of the

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ssp comipl 1465 of 2018.doc Aashirvaad Trade Dress, the Plaintiff is the common law owner/proprietor of

comipl 1465 of 2018.doc

Aashirvaad Trade Dress, the Plaintiff is the common law owner/proprietor of the

same.

It

is

stated

that

the

members

of

trade

and

general

public

associate

the

Aashirvaad Trade Dress exclusively with the Plaintiff.

5. It is stated that on account of the high, stringent and un-compromising

standards of quality as applied by the Plaintiff in relation to its Atta products bearing

Aashirvaad Trade Dress, the same are known for their superior quality and efficacy

and are extremely popular and highly demanded in India and in several countries

world over such as Australia, Singapore, Canada and United States of America. It is

stated that the Aashirvaad Trade Dress has been entrenched in the minds of the

consuming

public

especially

the

gunny

bag

background

and

the

red

coloured

rectangular portion in the middle, so much so that, when the said features are found

together, even in the absence of the brand name “Aashirvaad”, they are construed as a

product emanating from the Plaintiff. It is further stated that due to long and sustained

presence in the market coupled with substantial and uninterrupted investments made

in the marketing and promotion, the Plaintiff’s trade mark “AASHIRVAAD” and the

Plaintiff’s various “AASHIRVAAD” atta packaging including Aashirvaad Trade Dress

have become a well-known trade mark. The revenues from the Plaintiff’s trade mark

“AASHIRVAAD” in the year 2017 – 2018 alone is more than Rs 3265 Crores and the

marketing spends is more than Rs 97 Crores. The Plaintiff has also mentioned the

figures since 2013 – 2014 till 2017 – 2018 in paragraph 8 of the Plaint.

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6.

It

is

ssp 6. It is the Plaintiff’s case that it’s trade mark comipl 1465 of 2018.doc “AASHIRVAAD”

the

Plaintiff’s

case

that

it’s

trade

mark

comipl 1465 of 2018.doc

“AASHIRVAAD”

and

Aashirvaad Trade Dress have acquired tremendous goodwill and reputation due to

aforesaid and is exclusively associated with the Plaintiff. It is stated that the trade mark

“AASHIRVAAD” and Aashirvaad Trade Dress have become distinctive indicia of the

Plaintiff in relation to its Atta/Flour products and the same is well-known.

7. At paragraph 11 of the Plaint, the Plaintiff has stated that it has been

vigilantly protecting its statutory and common law rights subsisting in the Aashirvaad

trade marks including the Aashirvaad Trade Dress. The Plaintiff has relied upon

orders obtained by it from various Courts in respect of its Aashirvaad Trade Dress

against infringers. The Plaintiff has annexed at Exhibits G & G-1 and H & H-1 to the

Plaint, copies of few orders (along with colour copies of the infringing packs) passed by

the Calcutta High Court and the Madras High Court in its favour. It is stated that the

Plaintiff

has

also

addressed

several

cease

and

desist

notices

to

various

persons/companies to protect its unique and distinctive Aashirvaad Trade Dress and

Aashirvaad trade marks. It is stated that several traders who received such notices

have changed their labels and have given undertakings/undertaken to the Plaintiff that

they will not use labels that are identical or deceptively similar to the Plaintiff’s

Aashirvaad trade mark/ Trade Dress.

8. On 25 October 2018, I passed an ex-parte ad interim order in terms of prayer

clauses (a), (b), (c) and (d) of the Notice of Motion. Pursuant to this order, the Court

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ssp comipl 1465 of 2018.doc Receiver executed the order on 30 October 2018. Thereafter, the Defendant

comipl 1465 of 2018.doc

Receiver executed the order on 30 October 2018. Thereafter, the Defendant has

appeared through Advocates and they have agreed to discontinue use of the impugned

labels.

9.

From the documents annexed to the plaint, the Plaintiff has applied /

obtained registrations over the trade mark “AASHIRVAAD” and “Aashirvaad” Trade

Dress. The Plaintiff is also the owner of the copyrights subsisting in the artistic works

of the Aashirvaad Trade Dress which are annexed at Exhibit A-1, A-2 and A-3 to the

Plaint.

10.

I have heard the Learned Advocates for the parties. The Plaintiff’s trade

mark “AASHIRVAAD” and its Aashirvaad Trade Dress has gained knowledge and

recognition as a result of its sales and promotion in India and abroad. It annual sales in

the year 2017-2018 alone are Rs. 3265 Crores. The Plaintiff has also zealously

protected its trade marks and successfully enforced its rights in the trade mark

“AASHIRVAAD” and Aashirvaad Trade Dress over the years. In 2015, the Madras

High Court granted a temporary injunction restraining the Defendant therein from

using the distinctive Aashirvaad trade dress and the Aashirvaad trade mark. In 2016,

the Calcutta High Court has also granted a temporary injunction restraining the

Defendants therein from infringing the Plaintiff’s exclusive rights in the Aashirvaad

Trade

The Plaintiff has also addressed cease and desist notices to several

traders who have changed their labels and given undertakings to the Plaintiff. The

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ssp comipl 1465 of 2018.doc Plaintiff’s trade mark “AASHIRVAAD” and its Aashirvaad Trade Dress have thus

comipl 1465 of 2018.doc

Plaintiff’s trade mark “AASHIRVAAD” and its Aashirvaad Trade Dress have thus

become well known trade marks within the meaning of Section 2(1) (z)(g) of the Trade

Mark Act, 1999.

11. In light of the above and since the Defendant has agreed to discontinue use

of the impugned labels, I pass the following order :

(i) The suit is decreed in terms of prayers (a), (b), (c) and (e) of the Plaint,

which prayers are reproduced hereunder:

“a) that the Defendant by itself, its directors, servants, distributors,

stockists, agents and dealers be restrained by a permanent order and

injunction

of

this

Hon’ble

Court

from

infringing

the

Plaintiff’s

copyright in their artistic work comprised in the Aashirvaad Trade

Dress shown in Exhibits A-1 to A-3 to the plaint, by reproducing,

publishing or using the impugned packaging / trade dress as shown in

Exhibit I to the plaint or any other label/s which is a colourable

imitation or a reproduction of the Plaintiff’s said artistic work or

substantial part thereof or in any other manner whatsoever;

b) that the Defendant by itself, its directors, servants, distributors,

stockists, agents and dealers be restrained by a permanent order and

injunction of this Hon’ble Court from using in relation to its impugned

product, labels or Atta / Flour bags or in any manner whatsoever the

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ssp comipl 1465 of 2018.doc impugned packaging / trade dress as shown at Exhibit I to

comipl 1465 of 2018.doc

impugned packaging / trade dress as shown at Exhibit I to the plaint or

using labels containing the impugned packaging / trade dress or any

other deceptively similar mark/words so as to infringe the Plaintiff’s

registered trade mark as shown in Exhibit C-1, C-2 and C-3 to the

plaint;

c) that

the

Defendant

itself,

its

directors,

servants,

distributors,

stockists, agents and dealers be restrained by a permanent order and

injunction of this Hon’ble Court from using in relation to its impugned

product, labels or Atta / Flour bags or in any manner whatsoever the

impugned packaging / trade dress as shown in Exhibit I to the plaint or

any other deceptively similar words / marks so as to pass-off or enable

others to pass-off the Defendant’s goods as and for the goods of the

Plaintiff;

e) that the Defendant be ordered and decreed to deliver up to the

Plaintiff for destruction the impugned packaging / trade dress, labels,

Atta / Flour bags, cartons, dies, literature, blocks and packing material,

etc. bearing the impugned packaging / trade dress as shown in Exhibit I

to the plaint and / or any other infringing artistic works or in any other

manner whatsoever;”

(ii) Mr Mahesh Gupta and Mr Shubham Gupta, Directors of the Defendant

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ssp comipl 1465 of 2018.doc are present in Court. They undertake to deposit an amount of

comipl 1465 of 2018.doc

are present in Court. They undertake to deposit an amount of Rs.10,00,000/-

towards costs/damages. The Defendant shall accordingly deposit by way of

demand draft drawn in the name “Tata Memorial Hospital” for an amount of

Rs.10,00,000/- . The undertaking is accepted.

(iii) The Prothonotary and Senior Master upon receipt of the demand draft,

shall encash the same and await further directions from this Court.

(iv) The inventory of the atta packets and the gunny bags made by the Court

Receiver on 30 October 2018, shall be opened by the parties in the presence of

their

legal

representatives

and

the

atta

therein

shall

be

returned

to

the

Defendant and the packets/gunny bags along with the empty packets/rolls of

the impugned packaging shall be destroyed. The above act of destruction be

undertaken within a period of two weeks from today.

(v) The Court Receiver stands discharged without passing accounts but

subject to payment of his cost, charges and expenses within a period of two

weeks from today by the Plaintiff.

(vi) In view of this order, the above Suit as well as Notice of Motion stands

disposed of. Refund of court fees as per rules.

(vi) Place the above matter on 18 th December, 2018 for compliance of

paragraph 11 (ii).

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(S. J. KATHAWALLA, J.)

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