The prevailing intellectual property scenario is infused with
litigation hovering around the well-established tenets of deceptive
similarity and passing off. While the principles remain cited and
stated, parties do not hesitate to vouch their stand while
asserting their right at various forums. Reiterating these dicta
and upholding a Trial Court order is the Mumbai High Court decision
in Deccan Bottling & Distilling Industries Private Limited
v. Brihan Maharashtra Sugar Syndicate Limited [Appeal from
Order No.76 Of 2008]
Deccan challenging the order passed by the District Judge,
contended that it is a private limited company in the business of
'Blending & Bottling" of "Country Liquor"
and were applicants for registration of a label of its
"Country Liquor" branded as "Paru Santra"
before the Commissioner of State Excise, Mumbai. They stated that
they had applied for registration of their brand as "Gangu
Santra" which was objected by, Brihan and the same was refused
by the Commissioner of Excise. "Paru Santra" had been
approved by the Commissioner of Excise Mumbai vide his order and he
rejected the objections raised by Brihan. Further no proceedings
were preferred challenging the order of the State Excise.
Deccan contended that owing to the quality of the product and
marketing strategy for "Paru Santra" sales of the product
was increasing day by day. They alleged that being in the same
business and rival competitor, Brihan intended to stop and obstruct
the Deccan from manufacturing and filed before the District Court
along with application for temporary injunction for violation of
its brands and label "Sakhu Santra" under provisions of
the Copyrights Act 1957 and the Trade Marks Act 1999.
Deccan further contended the absence of deceptive similarity
between the brand name and labels of the product. It was noted that
the label used by Brihan had no glimpses of any artistic evidence
and therefore there existed no question of copying the same. In
view of the facts and merits of the case Deccan submitted that no
prima facie case had been made out and that balance of convenience
lay in their favour.
Brihan responded stating that Deccan had infringed the copyright
and in the facts of the case. Demonstrating both the labels it was
submitted that the brand name and label used by Deccan "Paru
Santra" was a deceptively similar brand name. They contended
to have established a prima facie case and that balance of
convenience in pursuance of which the trial Court had granted
The Court recalling the various provisions of the Copyright Act
and Trade Marks Act also reiterated the prominent principles
governing similarity and passing off cited in precedents. The Court
reinstated that due consideration to the impression made on a
person of an average intelligence and imperfect recollection would
be given, while microscopic examination of the two marks to
ascertain deceptive similarity may not be adopted. They also stated
that likelihood of confusion was sufficient and that keeping two
trademarks side by side for comparison and for close examination
would also not be a sound test. They also stated that it was not
necessary that deception be intended to cause confusion.
As regards the extent of similarity, the Court stated that it
was not necessary for phonetic and visual similarity to coexist. It
was noted that the deciding factor would be the overall appearance
of the mark coupled with the impact on the mind of ordinary persons
of average intelligence.
The Court opined that considering the overall design, colour
scheme, size of the label and the principles enunciated for
appreciating the case at the stage of grant of temporary injunction
the view adopted by the trial Court did not call for interference
by the present forum. The Court noting the vehement submissions
regarding the label having one orange device and two oranges
device, it opined that a prima facie case that the label used of
the likelihood of confusion in the minds of ordinary customers or
people had been made. Stating the Court to be appropriate and
reasonable in its conclusions, the High Court dismissed the Appeal
as devoid of merits.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
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