Surya Food and Agro Limited v. Om Traders & Anr

RAJIV SAHAI ENDLAW, J. MARCH 26, 2019 ‗bs/pp/gsr' (corrected & released on 25th April, 2019)

* IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 26th March, 2019 + CS(COMM) 10/2019 & IA No.259/2019 (u/O XXXIX R-1&2 CPC) SURYA FOOD AND AGRO LIMITED .... Plaintiff Through: Mr. N. Mahabir and Mr. P.C. Arya, Advs. Versus OM TRADERS & ANR. …...Defendants Through: Mr. Hemant Sharma, Adv. for D-2. CORAM: HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW 1. The plaintiff has instituted this suit against the two defendants namely (i) Om Traders; and, (ii) Raja Udyog Private Limited (RUPL), for permanent injunction restraining selling, offering for sale any goods, advertising or promoting any product under the packaging, get up, trade dress of the defendants' product ‗BUTTER KRUNCH' or any packaging, get up, trade dress which is similar to that of plaintiff's product ‗BUTTER DELITE' and likely to cause passing off and for ancillary reliefs. 2. The suit came up first before this Court on 10th January, 2019, when though not finding any case of passing off to have been made out but observing that the suit could not be dismissed at that stage, summons of the suit and notice of the application for interim relief issued and the application for issuance of commission dismissed. 3. The defendant No.1 has failed to appear despite service on 17th February, 2019 and none has appeared for the defendant No.1. The defendant No.1 is proceeded against ex-parte. The defendant No.2 has filed written statement and to which a replication has been filed by the plaintiff. 4. The counsel for the parties have been heard yesterday as well as today, clarifying that unless in the hearing any factor requiring evidence to be led is found, the suit will be disposed of on the basis of pleadings and admitted documents. 5. The plaintiff has instituted the suit, pleading (i) that the plaintiff is well-known in the market since the year 1994 for its ‗PRIYAGOLD' Biscuits; (ii) that ‗BUTTER DELITE' brand of the plaintiff's biscuits with a distinctive packaging has huge sells in India since December, 2015; (iii) that the plaintiff is owner of several other brand names like Butter Bite, Italiano, Classic Creme, Bourbon Creme, CNC, Snacks Zig Zag, Puff Crème etc.; (iv) that the goodwill associated with the mark ‗PRIYAGOLD' rubs on to the plaintiff's other trade marks which plaintiff uses on various products and get associated with substantial recall and attention; (v) that the plaintiff has exclusive common law and proprietary interest in the packaging, get up and trade dress of the products sold under the mark ‗BUTTER DELITE'; (vi) that the product with distinctive packaging sold under the mark ‗BUTTER DELITE' has been advertised by the plaintiff in various print media and the packaging, get up and trade dress of the products sold under the mark ‗BUTTER DELITE' is exclusively identified with the plaintiff; (vii) that adoption of packaging with similar get up and trade dress as that of ‗BUTTER DELITE' especially in relation to biscuits, will create confusion and deception; (viii) that the packaging of the plaintiff's product ‗BUTTER DELITE' is also an artistic work under the Copyright Act, 1957 and was created/authored by Mr. Sachin More, Designer at Oberoi IBC India Pvt. Ltd. in August, 2015 under instructions from the plaintiff and he has assigned all rights in the artwork to the plaintiff; the plaintiff thus is the owner of copyright; (ix) that the plaintiff has also applied for registration of the trade mark ‗BUTTER DELITE' in Class 30 of the 4th Schedule to the Trade Mark Rules, 2002; however in the application for registration, it has been inadvertently stated ―proposed to be used as the mark has been in use since December, 2015‖; (x) that in December, 2018, the plaintiffs came across the defendants' product under the trade mark ‗BUTTER KRUNCH' with substantially similar packaging as that of plaintiff's ‗BUTTER DELITE'; (xi) that the defendants, in their product ‗BUTTER KRUNCH' has copied the artwork, printed and written contents of the packaging of ‗BUTTER DELI