High Court of Karnataka Considers Appeal Against Discretionary Order Refusing Interim Injunction in Passing Off Suit — Visual Wrapper Similarity and Ordinary Purchaser Test Examined. Court Examines Whether Emphasis on Dissimilarities Rather Than Similarities Amounted to Error of Principle.

Suit for passing off and copyright infringement relating to the wrapper design of instant noodle products.

Plaintiff sought temporary injunction to restrain defendant from passing off its goods and infringing copyright in the wrapper design, and for vacation of ex-parte interim order.

Plaintiff alleged that defendant's wrapper for its noodle product 'Wai Wai Xpress Noodles Majedar Masala' was deceptively similar to plaintiff's wrapper for 'Sunfeast Yippee Magic Masala', causing confusion and damage to plaintiff's goodwill.

Ex-parte interim injunction was initially granted in favor of plaintiff, but later vacated by the trial court, which also refused to grant temporary injunction on the plaintiff's applications, leading to the present appeal.

Whether the trial court erred in refusing interim injunction in a suit for passing off and copyright infringement based on the assessment of deceptive similarity of the noodle wrappers. Whether the trial court committed an error of principle by emphasizing dissimilarities rather than similarities and the overall effect on the ordinary purchaser. Whether the plaintiff established a prima facie case of passing off and copyright infringement to warrant interim relief.

Plaintiff contended that the ordinary purchaser of noodles, a low-involvement product, would be misled by the overall visual appearance of the competing wrappers, as the similarities in get-up were sufficient to deceive. The trial court erred by focusing on dissimilarities instead of the net impression of similarity. Plaintiff argued that the class of consumers included persons of all age groups, and the test should be that of an unwary buyer of average intelligence and imperfect recollection. Defendant contended that the brand name was the primary distinguishing feature, and since the brand names 'YiPPee!' and 'Wai Wai' were entirely different, there was no likelihood of confusion, despite any similarities in colour scheme or get-up. Defendant argued that the plaintiff could not claim monopoly over common trade features such as the noodle bowl image or the orange-red colour scheme, which were descriptive and did not acquire distinctiveness. Defendant submitted that the competing wrappers, taken as a whole, contained prominent dissimilarities that offset any similarities, and the trial court's evaluation was correct.

The plaintiff alleges that the wrapper adopted by the defendant for packaging, one of its white-noodles product, ‘WAI WAI Xpress Noodles Majedar Masala” is deceptively similar or nearly identical to its (plaintiff's) wrapper used for packaging ‘Sunfeast Yippee Magic Masala’ brand of noodles. His principal contention is that, an ordinary purchaser would be misled into purchasing a pack of ‘Wai Wai X-Press Majedar Masala’ noodles instead of their own ‘Sunfeast Yippee Magic Masala’ brand of noodles on account of the similarity in the general appearance of the competing wrappers. He contends that the test for estimating the likelihood of deception, is a combination of different factors. Each of the factors must be put to scale for arriving at a nearly accurate estimate of the ‘likelihood of deception’. He would contend that the most important feature in a product of this kind, containing a ‘composite mark’ (includes get up, visual marks, labels, symbols, logos, devices and verbal marks) is the ‘brand name’ or generally speaking, the ‘verbal mark’.

The plaintiff filed Commercial O.S. No. 177/2021 before the LXXXIV Additional City Civil and Sessions Judge, Commercial Court, Bengaluru, along with I.A. Nos. I and II under Order XXXIX Rules 1 and 2 CPC seeking temporary injunction for passing off and copyright infringement respectively. An ex-parte interim order was granted. The defendant filed I.A. No. III under Order XXXIX Rule 4 CPC to vacate the ex-parte order. By common order dated 22.06.2021, the trial court allowed I.A. III and dismissed I.A. I and I.A. II, thereby vacating the interim relief. The plaintiff then filed the present Commercial Appeal under Section 13(1A) of the Commercial Courts Act, 2015 read with Order XLIII Rule 1(r) CPC.

• Commercial Courts Act, 2015: Section 13(1A)
• Code of Civil Procedure, 1908: Section 104, Order XLIII Rule 1(r), Order XXXIX Rules 1 and 2, Order XXXIX Rule 4, Section 151
• Companies Act, 2013: Not specified