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ITC LIMITED,
a company under the Companies Act, 2013
and having its office at 1st floor, Indian
Mercantile Chamber, R. Kamani Marg,
Ballard Estate, Mumbai 400 001, India.
Plaintiff
Defendant
versus
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A PPEARANCES
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NMS-662-14-ITC V NTC-F2.DOC
: G.S.Patel, J.
JUDGMENT RESERVED ON
JUDGMENT PRONOUNCED ON
JUDGMENT:
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since, and I somehow lost sight of this case. That is no excuse, nor
do I seek to make it one. I can only request parties and their
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leave under Clause XIV of the Letters Patent only thereafter. This
was opposed. For reasons not immediately germane, the ad-interim
order was, by consent, vacated on 17th July 2014. The present
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have been infringed by NTC inter alia by using rival marks GOLD
FLAKE and HONEY DROP. All of this is of course in the
context of cigarettes and tobacco products.
I heard Mr. Kadam for ITC and Mr. Dwarkadas for NTC
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marks of others, not just ITC, and that shows that NTC has done
this not once, which might have been merely happenstance, but far
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B.
MARKS
5.
ITC itself has been in the tobacco business for over a century.
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using the mark HONEY DEW since about that time. ITC says
its earliest registration of the GOLD FLAKE mark dates back to
11th November 1942.4 It is not only the mark but also other essential
features to which ITC lays claim: the device of a star in red; the
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gold, black and red colour scheme and so on. 5 The Plaintiff is also
the registered proprietor of the trade marks HONEY DEW and
HONEY DEW SMOOTH. Both are word marks. The former is
registered since 10th October 1991;6 the latter since 2nd July 2010.7
4
5
6
7
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6.
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started using the trade mark label and trade dress in which this
oval or roundel, a star device, the device of a dew drop, the words
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8
9
For example, the 1999-2003 changes at pages 182 to 191 of the plaint.
Plaint, p. 220.
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(c)
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(b)
(d)
NTC sites the dew (or honey) drop device close to the
word, and all of this features on the lower half of the
(e)
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(f )
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(h)
9.
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that NTCs mark is duly registered. That, Mr. Kadam says, is not
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10.
reason I address this first is, of course, because of the nature of the
defences taken. The question of infringement of both trade mark
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(c)
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Company,
NTCs
more
immediate
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(e)
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(g)
12
13
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(h)
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ITC has admitted the flow or devolution of title in the rival mark
claimed by NTC. That burden lies on NTC, the Defendant. 14 In any
case, as we have seen, the statement in paragraph 35 of the Plaint
that when ITC took search in the registry, as it was bound to do, it
found that the Defendant (or their predecessors) had made
attempts in 1989 and 1994 to register the trade mark NATIONAL
GOLD FLAKE by filing two applications for registration can
hardly constitute a sufficient admission for these purposes. After
all, those two applications were abandoned. This also does not mean
14
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that ITC has accepted the validity of the old registration number
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NTCS CAVEATS
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January 2014, and that ITC knew of this, and its representatives
threatened NTCs; and that this prompted NTC to file those
caveats. All this is narrated in debilitating detail to contend only that
there was no urgency when ITC first moved this Court in May
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out that there was nothing in those caveats to indicate that they
related to these marks. ITC in fact assumed that the caveats related
to another infringement, relating to its mark CAPSTAN, also said
to have been infringed by NTC by introducing a rival mark
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REGENT
in
near-identical
get-up.15
NTC
claims
related to the present marks. If this be so, then I should imagine that
the very filing of the caveats works to NTCs detriment rather than
the non-disclosure operating against ITC. The two labels for
CAPSTAN and REGENT bear an undeniable deceptive
similarity. There is no explanation for this at all. With considerable
justification, Mr. Kadam points to NTC being something of a
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In any case, caveats have a limited shelf-life of 90 days. The suit was
brought only a few days short of the expiry of that term. In itself,
this lends credence to Mr. Kadams submission. I also do not see
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how ITC could possibly have connected those caveats to this or that
dispute, given that the present one is not the only dispute between
the parties. A caveat needs some precision and details so that the
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ITC because it has come with unclean hands. This is on the basis
Pp. 225-229
Motion paperbook, p. 215
See: H. G. Shanker Narayan v State of Rajasthan, AIR 1985 Raj 186
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that if not the suit at least this Notice of Motion must fail. 19 I
disagree. The issue of the caveats is something of distraction and
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little more; and, as for the ad-interim order, that has been vacated by
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E.
ITC has acquiesced in the registration of the mark 141437 and the
use of the mark NATIONAL GOLD FLAKE.
First, Section 33 of the Act:
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19
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trade mark.
17.
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20
21
22
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emphasis added:
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26. Acquiescence
is
sitting
by,
when
another is invading the rights and spending
money on it. It is a course of conduct
inconsistent with the claim for exclusive
rights in a trade mark, trade name etc. It
implies positive acts; not merely silence
or inaction such as is involved in laches.
In Harcourt v. White 28 Beav 303 Sr. John
Romilly
said:
It
is
important
to
om
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distinguish
mere
negligence
and
acquiescence. Therefore, acquiescence is
one facet of delay. If the plaintiff stood
by knowingly and let the defendants build
up an important trade until it had become
necessary to crush it, then the plaintiffs
would be stopped by their acquiescence. If
the
acquiescence
in
the
infringement
amounts to consent, it will be a complete
defence as was laid down in Mouson & Co.
v.
Boehm
(1884)
26
Ch
D
406.
The
acquiescence must be such as to lead to the
inference of a licence sufficient to create
a new right in the defendant as was laid
down in Rodgers v. Nowill (1847) 2 De GM &
G 614 : 22 LJ kCh 404.
18.
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indolent and idle, aware of the invasion of his rights by another, and
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20.
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21.
(1992) 12 PTC 73
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22.
one that NTC claims is the one in consideration, Mr. Kadam says
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using this mark. Two applications for registration were filed and
abandoned, in 1989 and 1994. These seem to be the only
applications it abandoned: with others, NTC was diligent in seeing
them through to registration. If indeed there was a transfer on the
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Builders Pvt Ltd (later RDB Industries Ltd; later, the present
Defendant). The list of marks transferred includes the mark applied
for in 1989 (and later abandoned). In 1994, New Tobacco Company,
through its lessee, again applied for registration of this mark. This
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Tobacco claimed rights over certain marks and these were excluded
from the sale. This convoluted history hardly demonstrates use.
23.
What of the actual use of the mark? It is settled law that for a
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sales. The form maintained under the Central Excise Act 31 shows no
sales either: the opening and balance stocks are the same. The
invoices produced32 are stock transfers, not sales. The Chartered
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crucially unexplained.
28
29
30
31
32
33
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24.
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lakhs, i.e., roughly a sixth of the total sales. Yet the impugned mark
25.
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deemed to have had either notice or knowledge or both, and that its
consequent failure to act on that notice constitues acquiescence 37 is
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F.
27.
be little doubt. The usual tests apply: the probable view of the
prospective purchaser, and his inability to readily tell one from the
other. The words GOLD FLAKE and HONEY DEW seem
to me to typify ITCs products, and having regard to the various
elements in the label mark, and to the manner in which the GOLD
FLAKE mark is subsumed in NTCs NATIONAL GOLD
FLAKE, I have no manner of doubt as to the deceptive similarity
38
Ruston & Hornsby Ltd v The Zamindara Engg. Co., (1969) 2 SCC 727
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open rack, often selling paan, boiled sweets and other such items as
well. The typical purchaser is more than apt to ask for, simply, Gold
Flake, and I doubt that his vendor will trouble himself to enquire
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with its marks. The standard tests are all satisfied.39 The essential
features of ITCs marks are all lifted in essence into NTCs marks. 40
The adoption is dishonest, and I am inclined and, I think, entitled in
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29.
the need to take ITCs mark, its essential features, its get-up and
placement and to adopt as its own one that so closely resembles it?
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Was this just a lucky strike (so to speak)? There is no answer at all
and I think that lack of answer is, as so often happens, more
eloquent than anything articulated: it speaks, prima facie, to an initial
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dishonesty in adoption.43
39
40
41
42
43
De Cordova & Ors. v Vick Chemical Coy, 1951 (58) RPC 103; Taw
Manufacturing Coy Ltd v Notek Engineering Coy Ld. & Anr., 1951 (58)
RPC 271.
Shaw Wallace & Co v Mohan Rocky Spring Water, 2006 (3) Bom.C.R.
252; Spillers Ltd. & Anr. v Quaker Oats Ltd., (1969) FSR 510.
Munday v Carey, 1905 (22) RPC 273.
Parle Products v JP & Co., (1972) 1 SCC 618
Midas Hygiene Industries P. Ltd. & Anr. v Sudhir Bhatia & Ors., (2004) 3
SCC 90; N. R. Dongre & Ors. v Whirlpool Corporation & Anr., (1996) 5
SCC 714
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30.
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not within the ambit of the common law defence, I do not see from
where else it can spring. The 1951 mark is no longer on the Register.
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As we have seen, it is not. With the 1951 mark removed from the
Register, no matter for what reason, the Section 28(3) defence is
simply unavailable.
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31.
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32.
On the face of it, and with just one look at the rival marks, it is
apparent that this is not so.45
COPYRIGHT INFRINGEMENT
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design the label. The work was registered to ITC under Registration
No.A-99121/2013. NTCs pack is shown at Exhibit K to the Plaint. 48
Both are gold in colour; both have the same colour combination of
gold, red and black. The words GOLD FLAKE are prominent
on each, and are centred on the pack face. Where ITC says
44
45
46
47
48
[2004] RPC 40
Newton Chambers v Neptune Waterproof Paper Co Ltd., 1935 (52) RPC 339
Plaint, Ex.G, pp. 192-193.
Plaint, Ex. J, p. 221; as part of the Additional Representations to its trade
marks at Ex. C-92, p. 178.
Plaint, p. 222.
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KINGS at the top, NTC shows a royal crest or coat of arms with
two rampant leonine creatures (for some reason they seem to be
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NGF. But both packs show a red star, NTCs being considerably
cruder than ITCs. At the bottom quarter of each pack face appear,
respectively,
the
words HONEYDEW
SMOOTH
and
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itself.49 The test is still substantial similarity, 50 not whether the copy
is exact in every microscopic detail,51 and whether to the lay
observer the rival appears to be a reproduction of the other work. 52
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35.
50
51
52
Tavener Rutledge v Specters Ltd., 1959 RPC 83; The Daily Calendar
Supplying Bureau v the United Concern, AIR 1967 Mad 381; King Features
Syndicate Inc & Anr. v O & M. Kleeman Ltd., (LVIII) RPC 207.
Burroughs Wellcome (India) Ltd v Uni-Sole Pvt Ltd., 1999 (19) PTC 188
C. Cunniah & Co v Balraj & Co., AIR 1961 Mad 111
Associated Electronics & Electrical Industries v M/s Sharp Tools, AIR 1991
Kant 406
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one, alas, without a difference. One can hardly expect ITC to tout
can appear is on the packet face. The fact that it there assumes a
trade dress is entirely immaterial.
CONCLUSION & ORDER
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CERTIFICATE
Certified to be a true and correct copy of the original signed Judgment/Order.
53
William Grant & Sons Ltd. v McDowell & Company Ltd., 1997 PTC (17)
134 (Del)
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