TMI Blog2004 (2) TMI 358X X X X Extracts X X X X X X X X Extracts X X X X ..... rescent colours. The plaintiff No. 2 manufactures and sells textmarkers under the brand name "Faber-Castell" world wide and in India for the last many years. The defendant introduced a product having similar characteristics of highlighting typewritten text and fax text under a brand name "KOLORPIK". The plaintiffs thereafter filed a suit No. 285/03 in this Court stating that the plaintiffs product has a distinctive design and which is registered under registration No. 1/4429 on 4th August, 1997 with the Controller of Patents and Designs under the Designs Act, 1911 and alleging that the Defendant had copied the design of the plaintiffs. The plaintiff also alleged that the defendant used copies and using the plaintiff s mark "TEXTLINER" on its product and was passing off its textmarkers as that of the plaintiff s by producing them with an overall get up deceptively similar to that of the plaintiff s textmarkers. By the order dated April 30 and May 2, 2003, this Court granted an interim injunction in terms of prayer clause ( c ) in the motion. According to the plaintiffs, after the order of injunction, the Defendant made some cos-metic alterations in its product which were immaterial ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... titution of India, in case of a breach of its order of injunction passed in its original jurisdiction in a suit, the High Court should not resort to Order 39, Rule 2A of the Code of Civil Procedure. ( iv )The Defendant had made bona fide changes in the design and get up of its textmarkers "KOLORPIK". For the purpose of taking an action under Order 39 of Rule 2A of the Code of Civil Procedure, the plaintiff must prove that the defendant has deliberately and wilfully violated the order of injunction. Assuming that the court comes to the conclusion that selling of altered textmarkers also amounts to passing off, and also amounts to breach of an order of injunction, the defendant has not committed "wilful" breach and therefore action under Order 39, Rule 2A of the Code of Civil Procedure is uncalled for. Regarding Ground (I) : 4. Before any action under Order 39, Rule 2A of the Code of Civil Procedure can be taken, it would have to be first proved by the plaintiff that the defendant has committed a breach of the order of injunction. The order of injunction restrained the defendant from selling his textmarkers by using any trade dress or colour scheme which was identical wit ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hanges as enumerated by the defendant in his affidavit in paragraph No. 5 are only cosmetic, as alleged by the plaintiffs, or whether they are substantial or real so as to make the defendants altered textmarkers differentiable from the plaintiffs. 7. In the clarificatory order dated 4th July, 2003, this court has clarified that the use of the word "TEXTLINER" per se is not prohibited and that the plaintiff has not established exclusive right to use the word "TEXTLINER", which was found to be descriptive. The court had not held that the use of the word "TEXTLINER" was deceptive and had not prohibited the use of the word "TEXTLINER" by the defendant on its product. Therefore, the change made by the defendant, by deletion of the word "TEXTLINER" is inconsequential. 8. No doubt some changes have been made by the defendant in the lay out of the text written on the barrel of its textmarkers. However, applying the test of the purchaser, being a man of "average intelligence and imperfect memory" one would have to see whether the changes are real and substantial or merely cosmetic and the overall get up of even the altered product is deceptively similar to that of the plaintiffs. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y of general appearance or get-up of goods, or the premises in which business is conducted, or the advertising materials and other documents used in connection with the defendant s goods or services. The similarity of get up may be such that passing off is likely to occur even though the trade marks or names are wholly different, especially where the goods are likely to be brought by illiterate or uneducated persons but similarity or dissimilarity of get up is only one of the factors to be taken into account in deciding whether in all the circumstances there is a likelihood of deception, and a dissimilar name or mark, if given prominence, may negate the similarity of get-up. A competing trader may adopt a get-up similar to that of the plaintiff s product, not in order to pass off his goods as the plaintiff s but in order impliedly to represent to the public that his goods are similar to or a substitute for the plaintiffs, thus, competing in and taking advantage of a market created by the plaintiff s efforts, this is legitimate so long as he does not thereby represent his product as the plaintiff s." 10. He submitted that similarity or dissimilarity of get up is only one of th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... have successfully brought an action against the manufacturer of altered product as passing off that product is of the defendants. If two products look so similar as to enable the defendant to get an injunction against the manufacturer of the altered product (except perhaps for the same name if the original name of the defendant s product was not held to be similar) then the alterations made by the defendant would ordinarily be regarded as cosmetic and not real or substantial. If the original textmarker of the defendant and the altered textmarker is compared, there can be no doubt in anybody s mind that they are very similar and the defendant would have been able to get the injunction against the person selling the altered product, if it was of a different manufacturer. If plaintiff s product A and the defendant s original product B are held to be deceptively similar and if the defendant s altered product C is deceptively similar to the product B then the product C would ordinarily be regarded as deceptively similar to product A . 13. Even the visual inspection of the plaintiff s original product and defendant s original product and the altered product leave no doubt ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e defendant was injuncted only from selling the impugned goods. He invited my attention to the various averments made in the plaint to contend that the phrase "impugned goods" as used by the plaintiff in the plaint and in the previous notice of motion, denote only the original textmarkers as shown in Exhibits "H" "I" to the plaint. Learned counsel submitted that once the defendant made any changes in the textmarkers, the new goods came into existence and the new goods were not the "impugned goods" as shown in Exhibits "H" "I" to the plaint. Learned counsel submitted that as the injunction order was only against the sale of "impugned goods" and not against the sale of any other goods which may also be deceptively similar to the plaintiff s textmarkers. If the altered textmarkers of the defendant were also similar to the plaintiff s product, the plaintiff ought to have taken out a fresh motion for injunction in respect of the altered textmarkers. There was no injunction against the defendant not to sell the altered textmarkers and the injunction was limited to the impugned goods and therefore no action under Order 39, Rule 2A of the Code of Civil Procedure can be taken. The argum ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f Civil Procedure. Learned counsel for plaintiff invited my attention to the decision of the Supreme Court in High Court of Judicature at Allahabad through its Registrar v. Raj Kishore Yadav [1997] 311 ( sic. ). In para 14 of the judgment the Court observed : "Reliance placed on Order 39, Rule 2A of the Code of Civil Procedure, 1908 ("CPC" for short) by the learned Judges in the impugned judgment is also uncalled for. The said Rule on its express language enables the presiding Judge of the court that passed injunction order to entertain complaint regarding breach of his order. In such a case the presiding Judge of the court or his successor-in-office is enabled to entertain such a complaint. The aforesaid Rule is mainly pressed into service before subordinate courts which at most of the centres consist of sole presiding Judges of the courts. In such cases where the subordinate courts working at these centres consist of only one presiding Judge the applications under Order 39, Rule 2A CPC will have to be filed in the very same court and would go to the same Judge or his successor-in-office. Such is not the case with the High Court functioning as a superior court of record unde ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... No attachment made under this rule shall remain in force for more than one year, at the end of which time, if the disobedience or breach continues, the property attached may be sold and out of the proceeds, the Court may award such compensation as it thinks fit to the injured party and shall be the balance, if any, to the party entitled thereto." It is seen that the word "wilful" is not inserted in Rule 2A. The legislature deliberately used only the word "disobedience" and did not qualify it will the word "wilful" as is done in section 2( d ) of the Contempt of Courts Act. While for punishing a person for contempt, it would be necessary to prove that the person has wilfully disobeyed the order of the Court, it is not necessary to prove wilful disobedience for taking action under Rule 2A of Order 39. Whether the breach is wilful or otherwise, may be the relevant circumstance for determining what action should be taken under Rule 2A; the severity and the extent of action. But the power to take action under Rule 2A of Order 39 is not dependant upon the wilfulness of the breach. 18. Under Order 39, Rule 2A, two actions can be taken for a breach of Order of Injunction. One is att ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... at an opportunity is given to the party committing the breach to mend his ways and so, in my opinion, the order of attachment is curative in nature. As against this, the order of detaining a person in civil prison appears to be punitive though the object of either of the actions is to ensure that the order of injunction is obeyed. In the first case, a person is given an opportunity of rectifying the breach without being punished. While in the case of latter, a person is detained in civil prison also by way of a punishment. 20. Keeping in mind the above, it would be necessary to examine the facts of this case for considering what action should be taken. The Defendant No. 1 is a company and therefore, cannot be detained in civil prison. However, Mr. Rajiv Sawhney, Defendant No. 2 has been joined as a party respondent to this motion. In paragraph Nos. 4 and 8 of the affidavit of the support of the notice of motion dated 12th December, 2003, it is alleged that Mr. Rajiv Sawhney is the Director in-charge of the affairs of defendant No. 1 and that he was aware of the injunction and is responsible for the breach. It is, therefore, prayed that the order of detaining Mr. Rajiv Sawhney i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... airly in the market. The defendant and Director of the defendant, Mr. Rajiv Sawhney who present in the court, through their counsel undertake that after the expiry of period of one week from today, the defendant would not produce textmarkers nor sell textmarkers using golden lettering but would change the lettering to silver. This undertaking of course does not apply to the stocks which have already been sold in the market. The learned counsel further says that this undertaking would be subject to any order which may be passed in an appeal against this order. In view of this undertaking, it is not necessary to pass an order of immediate attachment of the dyes as requested by the plaintiffs. The plaintiffs have not mentioned in the motion any specific property to be attached. But only an oral prayer is made for attachment of the dyes by which the defendant s textmarkers are produced. As stated earlier, object of an order of attachment is curative, to prevent a person from continuing to commit a breach. As an undertaking in the aforesaid form has been given, I am inclined to pass only a conditional order of attachment. 22. Accordingly, the motion is allowed in following terms : ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
