Hawkins Cooker Wins Infringement Suit Against Khaitan Pressure Cooker

C.S. No. 448 of 1990
IN THE HIGH COURT AT CALCUTTA
Ordinary Original Civil Jurisdiction

Hawkins Cookers Limited
Vs.
Khaitan Pressure Cooker Pvt. Ltd.

For the Plaintiff : Mr. Ranjan Bachawat, Sr. Advocate
Mr. Debnath Ghosh, Advocate
Mr. Prabhakar Choudhury, Advocate
Ms. Bithika Mondal, Advocate

For the Defendant : Mr. Abhrajit Mitra, Sr. Advocate
Mr. Jishnu Chowdhury, Advocate
Mr. Sourav Gupta, Advocate
Mr. Sudhakar Prasad, Advocate
Mr. Partha Basu, Advocate

Hearing concluded on : January 13, 2015

Judgment on : April 10, 2015


DEBANGSU BASAK, J.
The plaintiff has filed the instant suit seeking permanent injunction restraining the defendant from infringing the registered copyright of the plaintiff and for damages.

The plaintiff claims to be using a distinctive logo. The plaintiff claims it to be an original artistic word. The plaintiff has been using such logo with its trade mark. The plaintiff alleges that, the defendant is selling pressure cookers bearing an identical and/or deceptively similar label as that of the plaintiff. The plaintiff had 2 issued a cease and desist notice to the defendant. The defendant not doing so, the plaintiff has filed the instant suit.

The defendant has filed a written statement. In the written statement the defendant contends that, the mark is not an original work of art. The label used by the defendant is neither similar nor deceptively similar. There are a number of differences between the plaintiff's label and the label used by the defendant. The defendant contends that the plaintiff has abandoned its label and has instead adopted a dissimilar label.

......

Applying the tests laid down in M/s. Anglo-Dutch Paint (supra) and on comparison of the two labels used by the parties, it must be said that the two red semi-circles with a white patch in between and white highlight all round, is an attractive get-up. In place of "Hawkins" the defendant is using "Shyam". The defendant has added one more feature on the top semi-circle, that is, the picture of Lord Sree Krishna. In the bottom semi-circle instead of the word "Universal" used by the plaintiff, the word "Pressure Cooker" is used by the defendant. As noted herein, the pressure cookers of both the parties are sold from the same shop and are placed in the display side by side. The plaintiff is the prior manufacturer of pressure cooker and has been in the market prior to that of the 14 defendant's pressure cooker. The witness of the defendant has admitted to have seen the pressure cooker of the plaintiff in the market bearing the logo as that of Exhibit 'B' and Exhibit 'D'. Comparing Exhibit 'B' and Exhibit 'D' with Exhibit 'C' I find that the two logos are deceptively similar. The colour combination, get-up and layout of the two labels are sufficiently similar from the stand point of a man of average intelligence having imperfect recollection to allow Exhibit 'C' to be passed off as a product of the manufacturer of Exhibits 'B' and 'D'. The two pressure cookers bearing Exhibit 'D' and Exhibit 'C' when displayed side by side in a shop would look similar by reason of the colour combination, get-up and layout of the two logos. There is every likelihood of a person of average intelligence having an imperfect recollection looking at the logos of the two pressure cookers misunderstanding the defendant's pressure cooker to be the one manufactured of the plaintiff.

The contention of the defendant with regard to mechanical reproduction of the logo for more than fifty times by industrial process prevents the owner of a copyright claiming exclusivity of the artistic work at label as laid down in National Pencil Industries (supra) has been overruled on appeal in Camlin Private Limited (supra). In Camlin Private Limited (supra) it has been held as follows:-

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"13. Section 14 of the Act as it stands today was substituted by Copyright (Amendment) Act 38 of 1994, which amendment came into force with effect from 10.05.1995. The case is governed prior to amendment in relation to an artistic work reproduction of the work in any material form was one of the rights recognized as the exclusive copyright under Section 14 of the Act as it stood when the learned Single Judge passed the impugned order. Therefore, the premise on which the learned Single Judge proceeded to reject the plaint was erroneous in law.
The view held by learned Single Judge that a mechanically reproduced carton by printing process was not capable of being subject matter of copyright was not correct, which was the sole basis in having come to the conclusion that the plaint do not disclose the cause of action."

Citing a judgment which has been overruled is not a healthy practice.

Learned Counsel for the defendant submits that the plaintiff cannot claim infringement as regards a mechanically produced label and relies upon 2009 Volume 40 Patents and Trade Marks Cases page 519 (Del.) (Microfibres Inc. V. Girdhar & Co. & Ors.) and 16 2010 Volume 43 Patents and Trade Marks Cases page 193 (V. Pichandi Sole Proprietor and Trading as Shri Ambikamatch Works, Gudiyattam (Tamilnadu) v. Chakrapani Ilango trading as M/s. Chakrapani Match Works, Gudiyattam (Tamilnadu)).

In Microfibres Inc. (supra) the appellant therein was a manufacturer and seller of upholstery fabrics with designs derived from the original and unique artistic works either conceptualized or drawn by employees. The copyright in such artistic works remained with the appellant. In such context it was held that, if the artistic work such as a painting has been used as the basis for designing an industrial produced object, such as the furnishing in that case, although the original painting would enjoy full copyright protection, the result of the industrial application of such painting, namely, the design used in the industrial production of the ultimate product shall enjoy lesser period of protection as stipulated under the Designs Act, 2000 provided it is registered as a design under the Designs Act, 2000.

In V. Pinchandi (Supra) the claim was in respect of trade mark registration and copyright mark Plus 2 for safety matches. The application was for rectification of copyright before the Copyright Board.

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The contention of the defendant of Section 15 of the Copyright Act, 1957 is not available to the defendant in the facts of this case. Section 15 of the Copyright Act, 1957 relates to an article reproduced more than fifty times by industrial process. As rightly contended on behalf of the plaintiff, Section 15 of the Copyright Act, 1957 does not prevent the owner of copyright from claiming protection for the artistic work or the label even if the same may have been used more than fifty times.

The contention of the defendant that similar logos are used by the manufacturers of other products is met with the submission that the contents of the exhibits relied upon in support of such contention have not been proved. Reliance is placed on All India Reporter 1971 Supreme Court page 1865 (Sait Tarajee Khimchand & Ors. v. Yelamarti Satyam & Ors.) for the proposition that the contents of the documents marked as exhibits should also be proved.

In Sait Tarajee Khimchand & Ors. (supra) the Supreme Court has held that the contents of the documents must also be established by evidence. In the instant case, the computer prints out of logos of other manufacturers allegedly using similar labels have been marked as exhibits. The contents of these documents have not been established. In any event, the existence of other users 18 manufacturing different products than the plaintiff, alleged to have similar label as that of the plaintiff, such fact by itself does not disentitle the plaintiff from seeking the relief against the defendant as sought for in the plaint.

Reliance is placed on 2004 Volume 6 Supreme Court Cases page 145 (Satyam Infoway Ltd. v. Sifynet Solutions (P) Ltd.) on behalf of the plaintiff for the proposition that, an injunction order should not be denied to the plaintiff on the ground that the same may disrupt the business of the defendant.

Satyam Infoway Ltd. (supra) has considered on application for grant of an interim order of injunction. It has been held that, there are three elements in an action for passing off. The first element is that the plaintiff seeks to restrain the defendant from passing off his goods and services to the public as that of the plaintiff in order to preserve and protect the reputation of the plaintiff and to safeguard the public. The second element required to be established by the plaintiff that that the defendant had made a misrepresentation to the public. The third element is loss or the likelihood of it.

In view of the discussions above the second issue is answered in favour of the plaintiff.

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By reason of the failure of the challenge to the cancellation of the trade mark launched by the defendant the third issue is also required to be answered in favour of the plaintiff.

In view of the discussions above, the fourth and the fifth issues are answered in the affirmative and in favour of the plaintiff.

The sixth issue relates to damages. It is submitted on behalf of the plaintiff that, the plaintiff need not prove actual damages. In support of such contention reliance is placed on 2006 Volume 2 Calcutta High Court Notes page 555 (Prakash Glass and Rubber Works & Anr. v. Hindusthan Safety Glass Works Private Limited & Anr.). It is pointed out that, the label of the plaintiff has been protected by the Hon'ble Court in All India Reporter 2003 Delhi 191 (Hawkins Cookers Ltd. v. Magicook Appliances Co.). It is contended on behalf of the plaintiff that, since the defendant has been using and applying the logo of the plaintiff wrongfully and illegally the plaintiff is entitled to damages. Reliance is placed on 2010 Volume 43 Patents and Trade Marks Cases page 496 (Del.) (John Wiley & Sons Inc. & Ors. v. International Book Store & Anr.). The plaintiff also seeks punitive damages apart from compensatory and nominal damages and in support of such contention reliance is placed on 2009 Volume 41 Patents and Trade Marks Cases page 416 (Del.) (Dabur India Ltd. v. Ashok 20 Aushadhi Udyog). On behalf of the defendant it is submitted that, the plaintiff has not adduced any evidence in support of its claim for loss and damages. Reference is made to an Order dated June 7, 1990 where the defendant was directed to submit monthly accounts to the plaintiff. It is pointed out that the plaintiff has not called upon the defendant to produce such accounts.

In Prakash Glass and Rubber Works & Anr. (supra) it has been held as follows:-

"It is also well-settled that the plaintiff in passing off action does not have to prove that he has actually suffered damage by loss of business or in any other way. A probability of damage is enough but the actual or probable damage must be damage to him in this trade or business i.e., damage to his goodwill in respect of that trade or business. What is required to be established is the likelihood of deception or confusion in the minds of the public at large. Such likelihood or probability of deception depends on a number of factors, which varies from one case to the other depending upon the facts."

In John Wiley & Sons Inc. & Ors. (supra) the Delhi High Court on the question of damages has held that, bald assertion of loss of business without any evidence would not entitle the plaintiff 21 to damages. In such circumstances, the plaintiff would not be allowed to claim anything more than reasonable damages. The Court had proceeded to quantify damages of Rs.3,50,000/- in that case.

In Dabur India Ltd. (supra) it has been held as follows:-

"26. In the case of Time Incorporated v. Lokesh Srivastava, 2005 (30) PTC 3 (Del), this Court has expressly recognized a third type of damages as punitive damages, apart from compensatory and nominal damages. The Court has made some relevant observations discussion the aspect of punitive damages. It was observed:-

"The award of compensatory damages to a plaintiff is aimed at compensating him for the loss suffered by him whereas punitive damages are aimed at deterring a wrong doer and the like minded from indulging in such unlawful activities......"

"This Court has no hesitation in saying that the time has come when the Courts dealing actins for infringement of trademark, copy rights, patents etc. should not only grant compensatory damages but award punitive damages also with a view to discourage and dishearten law breakers who indulge in violations with impunity out 22 of lust for money so that they realize that in case they are caught, they would liable not only to reimburse the aggrieved party but would be liable to pay punitive damages also, which may spell financial disaster for them."

The plaintiff therefore is entitled to three types of damages, namely, compensatory damages, nominal damages and punitive damages.

The defendant having used a logo deceptively similar to that of the plaintiff has benefited out of the sales made. The defendant therefore must compensate the plaintiff with the profits earned by the defendant during the period of the sale. The defendant has stated in its evidence that it has changed its logo subsequent to the filing of the suit. The defendant therefore must make over the profits earned during 1989 till it changed its logo, as damages to the plaintiff. In addition thereto, the plaintiff is also entitled to punitive damages so as to prevent the defendant from any further act of infringement in the future and also to compensate the plaintiff for the infringement of the logo. Although the defendant claims not to use the same logo any further, in order to deter the defendant from infringing the logo of the plaintiff again, punitive damages are called 23 for in the facts of this case. The plaintiff will be entitled to punitive damages assessed at Rs.10,00,000/-.

The plaintiff has made out a case for grant of permanent injunction in terms of prayers (b) and (c) of the plaint. There will be a decree in terms of prayers (b) and (c) of the plaint. The plaintiff has sought for an inquiry into the loss and damages suffered by it and for a decree in respect thereof. The defendant has been submitting its accounts with its Advocate on record pursuant to the Order dated June 7, 1990. Mr. Kumar Gupta, Advocate is appointed as the Special Referee who will inquire into the accounts submitted by the defendant with its Advocate on record pursuant to the Order dated June 7, 1990 and will quantify the profits shown by the plaintiff in such accounts. The Special Referee will consider the accounts for the period from April 1, 1990 till the end of the financial year in which the defendant changed its logo. The Special Referee will be entitled to a remuneration of Rs.30,000/- to be payable by the plaintiff at the first instance. In the event, accounts have not been submitted by the defendant in terms of the Order dated June 7, 1990, the plaintiff will lead evidence in support of its claim for damages before the Special Referee who will consider the same in accordance with law. The Special Referee will endeavour to complete the entire adjudication within a period of four weeks from the date of 24 communication of this order on him. The parties are directed to cooperate with the Special Referee. The plaintiff will render all assistance including secretarial assistance to the Special Referee for discharging his duties.

The plaintiff has put in court-fees of Rs.2,500/-. The plaintiff is required to pay a remuneration of Rs.30,000/- to the Special Referee. The plaintiff will, therefore, be entitled to costs assessed at Rs.75,000/- in the suit.

C.S. No. 448 of 1990 is decreed in part accordingly. The department is directed to draw up and complete the decree as expeditiously as possible.

C.S. No. 448 of 1990 will appear in the monthly list of June 2015 for the purpose of consideration of the Report of the Special Referee.

[DEBANGSU BASAK, J.] Later:-

Stay prayed for is considered and refused.
[DEBANGSU BASAK, J.]