Case Note & Summary
The appeal arose from an interlocutory injunction granted by a Single Judge of the Bombay High Court in a suit filed by Sopariwala Exports (the first respondent) against Kuber Khaini Private Limited (the appellant) and another defendant. The first respondent, a registered proprietor of the mark 'AFZAL' for tobacco products (Class 34) since 1995, alleged that the appellant's use of a label for its chewing tobacco product 'KUBER' was deceptively similar to its own label, constituting infringement of its registered trademark, passing off, and infringement of copyright in the artistic work of the label. The first respondent had used its mark since 1977 and had built substantial goodwill. The appellant had its own registration for the mark 'KUBER', but the first respondent did not object to the use of that word per se; the dispute centered on the trade dress. The Single Judge, after comparing the labels, found that the appellant had adopted a label almost identical to that of the first respondent without any explanation, and granted an interim injunction on all three grounds. On appeal, the Division Bench examined the packages produced in court and applied the settled test of deceptive similarity of essential features. The court noted that while the word marks differed, the overall get-up, colour scheme, and arrangement of elements were strikingly similar, leading to a likelihood of confusion among consumers. The court held that the first respondent had made out a strong prima facie case, the balance of convenience was in its favour, and irreparable injury would be caused if the injunction were not granted. The appeal was dismissed, and the interim injunction was confirmed.
Headnote
A) Trademark Law - Infringement - Deceptive Similarity - Trade Dress - Section 29(2) of the Trade Marks Act, 1999 - The court compared the essential features of the appellant's and respondent's labels and held that despite different word marks ('Kuber' vs 'Afzal'), the overall trade dress was deceptively similar, justifying an injunction. (Paras 6-7) B) Passing Off - Goodwill and Reputation - Interlocutory Injunction - The respondent had used its mark since 1977 and acquired substantial goodwill; the appellant adopted a nearly identical label without explanation, leading to a likelihood of confusion. (Paras 5, 7) C) Copyright Infringement - Artistic Work - Section 51 of the Copyright Act, 1957 - The respondent's label was an original artistic work; the appellant's reproduction of the same trade dress constituted infringement. (Paras 2, 7)
Issue of Consideration
Whether the appellant's label/trade dress is deceptively similar to the respondent's registered trademark and artistic work, warranting an interlocutory injunction on grounds of infringement of trademark, passing off, and copyright infringement.
Final Decision
The appeal was dismissed. The interim injunction granted by the Single Judge was confirmed.
Law Points
- Trademark infringement
- passing off
- copyright infringement
- deceptive similarity
- trade dress
- interlocutory injunction
- essential features test
