Case Note & Summary
The appeal arose from an order of a single judge granting interlocutory reliefs in a suit for trademark infringement and passing off. The respondents, M/s. Parksons Games & Sports, claimed to be proprietors of the trade mark '555' written in a stylized manner, along with other marks like 'MERELANE', and alleged that the appellants, M/s. J.K. Sons, were infringing their marks and passing off their playing cards as those of the respondents. The single judge restrained the appellants from infringing the word mark 'MERELANE', from passing off their goods, and from infringing copyright in several labels including the '555' label. The appellants appealed. During the hearing, the appellants' counsel did not press the appeal regarding the word mark 'MERELANE' and conceded that the mark '555' was identical or deceptively similar. The appeal was confined to two submissions: first, that the respondents themselves were not the proprietors of the mark because their labels were slavish imitations of the globally renowned cigarette mark 'State Express 555', and second, that the respondents' cartons and labels were not original artistic works and thus not entitled to copyright protection. The court examined the respondents' labels and found them to be flagrant imitations of the 'State Express 555' cigarette carton, lacking originality. Consequently, the court held that the respondents were not entitled to copyright protection in those labels. However, the court upheld the grant of interlocutory reliefs for trademark infringement and passing off, as those claims were not challenged. The appeal was partly allowed, setting aside the injunction regarding copyright infringement while maintaining the injunction for trademark infringement and passing off.
Headnote
A) Copyright Law - Originality - Requirement of Original Artistic Work - Copyright Act, 1957, Section 13 - The court held that a slavish imitation of another's work does not qualify as an original artistic work and is not entitled to copyright protection. The respondents' labels, being imitations of the globally renowned cigarette mark 'State Express 555', lacked originality. (Paras 5-7) B) Trademark Law - Passing Off - Interlocutory Injunction - Trade Marks Act, 1999, Section 27 - The court upheld the grant of interlocutory injunction for passing off and trademark infringement in respect of the word mark 'MERELANE' and the mark '555', as the appellants did not press the appeal on those grounds. The respondents had established goodwill and deceptive similarity. (Paras 1-4) C) Equitable Relief - Unclean Hands - Doctrine of Clean Hands - The court noted that the respondents' claim for copyright protection was tainted by unclean hands as they had imitated another's mark, disentitling them to equitable relief. However, the trademark and passing off claims were not similarly affected. (Paras 5-7)
Issue of Consideration
Whether the respondents are entitled to copyright protection in labels that are alleged to be slavish imitations of a pre-existing mark, and whether the grant of interlocutory reliefs for copyright infringement was justified.
Final Decision
The appeal is partly allowed. The order of the learned single Judge granting interlocutory reliefs in respect of copyright in the labels is set aside. The rest of the order granting reliefs for trademark infringement and passing off is upheld.
Law Points
- Copyright protection requires originality
- slavish imitation of another's work is not original
- unclean hands disentitle equitable relief
- interlocutory injunction for trademark infringement and passing off can be granted despite copyright claim failing
