Case Note & Summary
The petitioner, Pidilite Industries Ltd., filed a contempt petition against the respondents, Premier Stationery Industries Pvt. Ltd. and others, alleging willful disobedience of a consent decree dated 13 July 2017. The original suit was for infringement of the petitioner's FEVICOL MR artistic work, copyright, design, and passing off. The consent decree restrained the respondents from using labels, bottles, and glue pens that were identical or similar to the petitioner's products. The petitioner claimed that in August 2020, the respondents re-commenced use of an impugned label/trade dress, bottles, and glue pens that continued to imitate the petitioner's products. The court examined the photographs of the impugned products and compared them with the petitioner's products and the agreed labels in the consent terms. The court found that the new label had a different color scheme, layout, and overall appearance, and the bottles and glue pens were also distinct. The court held that there was no willful disobedience of the consent decree, as the respondents had made changes to their products to comply with the decree. The contempt petition was dismissed.
Headnote
A) Contempt of Court - Willful Disobedience - Consent Decree - The court examined whether the respondents' new label/trade dress, bottles, and glue pens violated the consent decree dated 13 July 2017. The court held that the new products were not identical or deceptively similar to the petitioner's FEVICOL MR artistic work, bottle, and glue pens, and thus there was no willful disobedience. The contempt petition was dismissed. (Paras 1-38)
B) Intellectual Property - Trade Dress - Color Scheme - The court compared the impugned products with the petitioner's products and the agreed labels in the consent terms. It found that the new label had a different color scheme, layout, and overall appearance, and the bottles and glue pens were also distinct. Therefore, there was no violation of the petitioner's rights. (Paras 6-38)
Issue of Consideration
Whether the respondents' use of a new label/trade dress, bottles, and glue pens constitutes willful and deliberate disobedience of the consent decree and undertakings given to the court, thereby amounting to contempt of court.
Final Decision
The contempt petition is dismissed. The court found no willful disobedience of the consent decree.
Law Points
- Contempt of court
- willful disobedience
- consent decree
- intellectual property rights
- trademark infringement
- copyright infringement
- design infringement
- passing off
- trade dress
- color scheme
- substantial reproduction
- deceptively similar
Case Details
2024 LawText (BOM) (08) 2819
Contempt Petition (L) No.28560 of 2021 in COM SUIT NO.520 OF 2017
Hiren Kamod, Nishad Nadkarni, Aasif Navodia, Khushboo Jhunjhunwala, Jaanvi Chopra, Rakshita Singh i/b. Khaitan and Co. for the Petitioner; Aseem Naphade, Pooja Yadav, Sonali Bhosale, J.V. Bhosale, Akshay Dunde for Respondent Nos.1 to 4.
Premier Stationery Industries Pvt. Ltd. & Ors.
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Nature of Litigation
Contempt petition alleging willful disobedience of a consent decree in an intellectual property infringement suit.
Remedy Sought
The petitioner sought to punish the respondents for contempt of court for violating the consent decree and undertakings.
Filing Reason
The petitioner alleged that the respondents re-commenced use of impugned labels, bottles, and glue pens that violated the consent decree.
Previous Decisions
The original suit was decreed by consent on 13 July 2017, with the respondents submitting to a permanent injunction and providing undertakings.
Issues
Whether the respondents' new label/trade dress, bottles, and glue pens violate the consent decree and undertakings.
Whether the respondents' actions constitute willful and deliberate disobedience of the court's order.
Submissions/Arguments
The petitioner argued that the respondents' new products are deceptively similar to the petitioner's FEVICOL MR artistic work, bottle, and glue pens, and thus violate the consent decree.
The respondents argued that they have made changes to their products to comply with the consent decree, and the new products are not identical or deceptively similar.
Ratio Decidendi
For a finding of contempt, there must be willful and deliberate disobedience of a court order. In this case, the respondents' new label/trade dress, bottles, and glue pens were not identical or deceptively similar to the petitioner's products, and thus did not violate the consent decree. The respondents had made changes to comply with the decree, and there was no evidence of willful disobedience.
Judgment Excerpts
The present Contempt Petition has been filed by the Petitioner against Respondent Nos. 1 and 2 (original Defendants in Commercial Suit No. 520 of 2017) as well as Respondent Nos. 3 and 4, for wilful and deliberate disregard, disobedience, disrespect, non-compliance and violation of the order dated 13 July 2017 passed in the above matter by this Hon’ble Court in the above Suit (“Final Order”) in terms of consent terms dated 13 July 2017 (“Consent Terms”) and undertakings contained therein (which were accepted as undertakings to the Hon’ble Court).
The Petitioner claims that the Respondents, in blatant breach of the Final Order and Consent Terms, are using the impugned label/trade dress including impugned bottles and glue pens (as set out at Exhibit D-1, page 295 of the Petition), that continue to be in violation of the rights of the Petitioner including its rights in the FEVICOL MR Artistic Work, Distinctive FEVICOL MR Bottle and the FEVICOL MR Glue Pens, as more particularly set out in the Contempt Petition.
Procedural History
The original suit was filed on 21 April 2017. An ex-parte ad-interim order was passed on 28 April 2017. The suit was decreed by consent on 13 July 2017. The contempt petition was filed in 2021 and heard on 13 August 2024.
Acts & Sections
- Contempt of Courts Act, 1971:
- Trade Marks Act, 1999:
- Copyright Act, 1957:
- Designs Act, 2000:
