HINDUSTAN PENCILS LTD Vs. PARAG WRITING AIDS

JUDGEMENT

(1.) The plaintiff is a company registered under the Companies Act, 1956 having its Registered Office at 510, Himalaya House, 79, Palton Road, Mumbai. Mr. P.N. Thanawala is the Constituted Attorney of the Company and is duly authorised to sign, verify and institute the present suit on behalf of the plaintiff company. Plaintiff claims to be the proprietor of various well known trademarks i.e. NATARAJ, APSARA. NONDUST. PLASTO, SPEED BIRD, NATTY, APSARA PLATINUM, etc. According to the plaintiff the carton used in respect of trademark 'SPEED BIRD' pencils as given in Annexure A is distinctive/artistic carton having special colour scheme, getup, arrangement and layout and constitute original artistic work under Section 2(c) of the Copyright Act, 1957, which has been designed and drawn by the plaintiff for the first time in India in the year 1998 and since then they have been using the same. The said carton has been designed by using a combination of yellow and blue colour with the matter written over with white and black ink. The background of the carton is in yellow colour with thin white stripes drawn predominantly over the front and back portion of the carton, with picture of a bird in front depicted in black colour. The plaintiff has designed the carton in a specific manner, having transparent space for showing the pencil inside the box.

(2.) The plaintiff has used the trademark 'SPEED BIRD' and has acquired great reputation of its own in the market. The plaintiff-company has a huge turnover. It has incurred huge expenditure on advertisements through various media such as radio, television, newspapers, magazines, etc. This all has resulted in establishment of its trademark 'SPEED BIRD' and particularly in relation to the pencils and the cartons used for that purpose with a defined colour scheme all over the country. The plaintiff has further stated that in November, 2004, it came to know that the defendants had introduced into the market pencils under the trade mark EAGLE in a carton like Annexure X attached to the plaint which was similar in colour, design, shape to the carton used by the plaintiff and was, thus, infringing the rights of the plaintiff. The adoption and/or use of the carton like Annexure X on the part of the defendant is dishonest, mala fide, tainted and solely with a view to trade upon the goodwill and reputation of the plaintiff. The defendants in the suit [CS (OS) No. 148/2004] has introduced in the market pencils under the trademark 'EAGLE' in a similar carton, and which is a deceptive copy of the carton of the plaintiff.

(3.) The defendants were ordered to be served by affixation at the last known address and they had been served and vide order dated 11th April, 2005 the Joint Registrar had put up the matter before the Court. It may also be noticed that defendants were also served by publication in the 'statement' on 31st March, 2005, and vide order dated 19th May, 2005 passed by the Court, the defendants were ordered to be proceeded against ex parte. Liberty was granted to the plaintiff to file ex parte evidence and the suit was then ordered to be listed for final hearing. Ex parte evidence was filed by the plaintiff by way of affidavit. In the affidavit filed on behalf of the plaintiff, besides reiterating the averments made in the plaint, the documents on record have been exhibited as Ex. PW 1/2 to Ex. PW 1/4. The plaintiff has also filed on record, the carton used by the plaintiff being Ex. P3 which has been deceptively copied by the defendant, and Ex. P4 is the carton of pencils being sold under the trade name of 'Eagle' by the defendant. Both of them at first instance looked alike in colour scheme and design. Of course, expression used 'Eagle' is different than the expression 'Speed Bird'. Even the bird copied by the defendant has been shown on a globe. The affidavit of the witness Ex. PW 1/A fully supports the case of the plaintiff and clearly makes out a case for infringement and copyright of the design of the plaintiff and that of passing off as the defendant is selling its goods as if they were the goods of the plaintiff