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Delhi High Court

Godrej Soaps (P) Ltd. vs Dora Cosmetics Co. on 23 April, 2001
Equivalent citations: 2001 VAD Delhi 177, 91 (2001) DLT 504, 2002 (1)
RAJ 371
Author: M Mudgal
Bench: M Mudgal

JUDGMENT Mukul Mudgal, J.

1. This suit is filed by the plaintiff praying for a permanent injunction

restraining the defendants from manufacturing, selling or dealing with in any
manner under the trade mark GLORY or any other mark similar to the trade
mark GLORY or any imitation of the plaintiff's CROWNING GLORY soap
cartons or from using the GLORY logo as set out in paragraph 6 of the plaint.
The plaintiff further seeks rendition of accounts of profits earned by the
defendants through the infringement averred.

2. Interim orders were passed on 6th February, 1987 and after hearing
Counsel the following issues were framed on 12th August, 1992:

(1) Whether the plaintiff's mark GLORY and the related carton have
acquired a reputation amongst the purchasing public and the trade?

(2) Whether the plaintiffs are the owners of the copyright in the Crowning
Glory carton including the Glory logo?

(3) Whether the use by the defendant of the mark Glory and the related
carton in respect of vanishing cream is likely to cause confusion and
deception resulting in passing off?

(4) Whether the defendant has infringed the copyrights of the plaintiffs in
the Crowning Glory carton and the Glory logo?

(5) Relief.
3. The interim order dated 6th February, 1997 was confirmed by this Court
on 2nd February, 1994. The plaintiffs' evidence was recorded on 14th
August, 1997. The defendant's witness were not present on that date and the
defendant's evidence was therefore, closed and the matter was thereafter
fixed for arguments.

4. There was no appearance on behalf of the defendants on other dates

including 2nd December, 1999. Accordingly the defendants were proceeded
ex-parte, arguments heard and order reserved.

5. The plaintiff's case, as averred in the plaint, is as under:

(a) The plaintiffs manufactures and sells toilet soaps under the trade mark
'CROWNING GLORY'. The trade mark is registered under the Registration
No. 428126 which is valid and subsisting and is part A registration as it is
more than 7 years old and is thus conclusively valid under Section 32 of the
Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act).
M/s. Chaitra Advertising Private Ltd. created the carton for the plaintiffs and
the copyright and the carton so created was assigned to the plaintiffs by
virtue of a Deed of Assignment dated 19th December, 1986 for a
consideration of Rs. 20,000/-. Consequently the plaintiff is the owner of the
copyright in the said carton and has the exclusive right to use and reproduce
the same. The defendant wrongfully adopted the trade mark GLORY and a
visually identical carton in respect of identical product leading to violation
of plaintiff's rights and filing of the present suit.

6. The sum and substance of the defendant's case as set out in the written
statement, apart from being a case of bare denial, is as follows:

(a) The plaintiff is not the owner of copyright in respect of the carton and
logo.

(b) The carton of Crowning Glory is not distinctive in character.

(c) It is denied that the word GLORY appears in a unique logo script and by
using the same the purchasing public and the trade identifies the mark
'GLORY' with the products of the plaintiffs.
(d) The mark 'GLORY' has been used and is being used by the defendants
since prior to 1976. It is denied that the defendants are using GLORY mark
in respect of the vanishing cream tubes and cartons which is deceptively
similar to the Crowning Glory soap carton of the plaintiff and is thus passing
off these goods or business as business and goods of the plaintiff.

(e) Glory is being used by the defendants with respect to vanishing cream
since 1976 and prior to that this mark was being used by M/s. Gopalji & Co.
The colour combination used by the defendants has been there since 1976
on the tubes and cartons. The receipt of the notice dated 22nd May, 1986 is
also denied. The defendants have further submitted in the additional pleas
that various trade marks such as Dora, Sharmila, Glory and Shimmar were
being used by them since 1976 in respect of cosmetic goods including
vanishing cream. In June, 1976 M/s. Gopalji & Co. transferred the user of
trade mark GLORY in favor of the defendants and accordingly an
application dated 10th June, 1976 was submitted before the Drugs Controller
for transfer of the aforesaid license in favor of M/s. Dora Cosmetic Co. and
pursuance to the aforesaid drug license the defendant has been
manufacturing the impugned goods. No copyright subsists in respect of the
mark GLORY in favor of the plaintiff. There is no similarity in both the
cartons. The defendants accordingly prayed for the dismissal of the suit.

7. As noticed above, the defendants did not appear to lead any evidence and
the evidence was closed. No one appeared for defendants even att eh time
of final hearing of the case. The following documents were proved by the
plaintiff.

(a) Carton bearing the trade mark Crowning Glory, Ex. PW 1/1.

(b) Photostat copies of the invoices issued by the plaintiff company during
the period 1961 to 1975, Ex. PW 1/3 to Ex. PW 1/10.

(c) Copies of the orders received by the plaintiff company during the course
of its business, Ex. PW 1/11 to Ex. PW 1/14.

(d) Advertisements on behalf of the plaintiff company, Ex. PW 1/15 to Ex.

PW 1/29.
(e) Copy of the defendant's carton bearing the trade mark GLORY, Ex. PW
1/30.

(f) Correspondence between the plaintiff and the defendant, Exs. P1 to P5.

8. The plaintiff has annexed trade mark Crowning Glory. By virtue of the
deceptive carton mark Ex. PW 1/1, a statement of advertising and sale
expenses have been prepared and are marked as Exs. PW 1/15 to PW 1/29
and the sale invoices of the plaintiff are Ex. PW 1/11 to Ex. PW 1/14. These
documents prove that the mark Crowning Glory and the distinctive carton
have acquired substantial reputation and goodwill among the consumers.
Due to the efforts of the plaintiff both the members of the trade and the
consumers identify the plaintiff's product by each of the distinctive features
of the soap carton including the colour combination, the Crowning Glory
mark and its logo script and the get-up particularly the profile of the lady
and the cliche. The legal notice from the plaintiff dated 17th June, 1986 in
Ex. P1 and its reply is Ex. P2. The defendant did not disclose any particulars
in support of his defense nor filed any copy of the trade mark or copyright
registration. In view of the above discussion I am, therefore, satisfied that
the defendant has copied the mark Glory as well as the script of the plaintiff
and the colours scheme of Chocolate, brown and pink and profile of a lady.
Thus issue No. 1 is held in favor of the plaintiff.

Issue No. 2:

9. The copyright in the Crowning Glory including the Glory logo is held by
the plaintiff which consists of:

(a) a unique colour combination of chocolate, brown and pink with chocolate
as the background colour;

(b) the trade mark Crowning Glory appears on the front and back panels and
on all the sides of the cartons depicted in a particular stylised manner. On
the front and the back panels, the word Glory appears in a pink and
characteristic logo script;
(c) also on the front panel the profile of the lady is depicted in a particular
stylized manner;

(d) on the front panel the cliche appears "for the silky hair and complexion
care."

10. The Crowning Glory carton was designed for valuable consideration by
Mr. Dayal Patkar who produced the said work in the course of his
employment with Chaitra Advertising Private Limited under a contract of
service for and on behalf of the plaintiff. By the reason of the circumstances
in which the said artistic work was produced, the plaintiff is the owner of
the legal and equitable title in the artistic work. As a matter of abundant
caution the copyright in the carton was assigned to the plaintiff by virtue of
an assignment dated 19th December, 1986 for Rs. 20,000/-. The deed of
assignment is exhibit marked as Ex. PW 1/2. Thus I find that the plaintiff
has proved that it is the assignee of the copyright in the carton for 'Crowning
Glory'.

11. The defendant has not filed any details nor led any evidence. This issue
is also held in favor of the plaintiff and accordingly it is held that the plaintiff
is the owner of copyright in Crowning Glory carton including the Glory
logo.

Issue No. 3:

12. The plaintiff has shown that the carton of the plaintiff and the Glory
mark to identify the plaintiff's product as Glory is depicted more
conspicuously and prominently than the word Crowning. By using the same
idea and similar images as in the plaintiff's carton the overall image of the
defendant's product is similar and misleading as found from the comparison
of the plaintiff's carton as Ex. PW 1/1 and the defendant's carton Ex. PW
1/30. Upon considering the unrebutted evidence of the plaintiff I am satisfied
that the plaintiff has proved its averment that the defendant is passing of its
goods and business as the goods and business of the plaintiff. Hence issue
No. 3 is also held in favor of the plaintiff.

Issue No. 4:
13. The plaintiff has shown that it is the sole and exclusive owner of
copyright in the carton of Crowning Glory. The plaintiff has also shown the
substantial similarity in the defendant's carton to that of the plaintiff. As
discussed above, I am therefore, satisfied that the defendant has infringed
the copyright of the plaintiff in the Crowning Glory carton and the Glory
logo.

14. In view of the fact that the plaintiff's evidence in support of the aforesaid
issues remains unrebutted by the defendants, the plaintiff is entitled to
succeed and the suit is decreed accordingly.

15. Suit decreed.