1. This is an application under 0. 39, Rr. I and 2 of the Civil P. C. in a suit for injunction restraining defendants from using in relation to their product 'carton' and 'tube' pertaining to Cosmo Turmeric Vanishing Cream' and/or any other 'carton' or 'tube' which is deceptively similar to plaintiffs' carton and tube pertaining to 'Vicco Turmeric Vanishing Cream' so as to pass off their goods a, the goods of the plaintiffs, for recovery of rupees one lakh as damages and also to deliver tip for 'destruction all designs, blocks, tubes, cartons etc. used in the manufacture of carton and tube deceptively similar to the carton and tube of the plaintiffs.
2. The suit was originally filed in the High Court of judicature at Bombay on 8tb Feb: 1978. Bharucha, J, passed the following order on 27-7-1978:
'I am not satisfied that this Court has jurisdiction. thereforee, Notice of Motion dismissed . Costs of the - notice of motion to be costs in the cause.'
3. The plaintiffs' counsel then applied in the High Court of judicature at Bombay for leave to withdraw the suit on the ground of lack of jurisdiction and the following order was passed on 8th Aug. 1978:
'Plaint returned for presentation to proper Court. The Plaintiffs to pay to. tile Defendants the costs fixed at Rs. 200/-.
4. The plaint returned on 10th Aug. 1978was filed in, this Court on 28th August 1978. An application (I. A. 3212/78.) was also filed under 0. 6, R. 17 of the Civil P. C. to amend the plaint pleading facts showing that this Court has jurisdiction, besides other formal amendments, on account of return of plaint by the High Court of judicature at Bombay, which was allowed on 29th Aug. 1978.
5. An ex parte injunction order was passed on 29th Aug. 1978 restraining defendants from using in relation to their product, the carton and the tube pertaining to 'Cosmo Turmeric Vanishing Cream' and/or any other carton or tube which is deceptively similar to the plaintiffs' carton - and tube, pertaining to 'Vicco, Turmeric Vanishing Cream' till further orders.
6. The, plaintiffs allege that they have been manufacturing and marketing since 1965 vanishing cream containing turmeric and sandal-wood, an ayurvedic preparation, under the name of Vicco Turmeric Vanishing Cream' which improves natural health of. the skin, adding luster to the complexion, for men, an ideal after shave cream, and effective in boils and pimples that the products of the plaintiffs including said cream have become popular all over the country. The plaintiffs have been marketing said cream in collapsible tubes of three different sizes namely small, medium, and economy packed in appropriate cartons. The 'carton' has an attractive, distinctive get up and colour scheme, i. e., red background with yellow floral design and printing in white letters. On two sides of the carton there are floral designs with the words 'Vicco Turmeric' in first line, words 'Vanishing Cream' in the second line, and words 'An Ayurvedic Preparator in the third line. On the third side of the carton there is floral design with the words 'manufactured in India by' printed in the first line and the plaintiffs' name and address in the second and third line. On the fourth side of the carton the uses of the said cream are mentioned. As regards the 'tube' containing the said turmeric Vanishing cream, the plaintiffs, allege that it has also a distinctive get-up. The collapsible tube has red background with floral design in yellow colour. On one side of the tube the words 'Vicco Turmeric' are written and below that appear the words 'Vanishing Cream' in yellow colour letters. On the reverse side of the tube the material similar to the material on the fourth side-of the carton is printed in dark yellow colour. The cap of the tube is yellow and the tube has a Yellow strip in the bottom. A specimen of The carton and the tube is marked as annexures A and A-1, which they allege have been used by them since April, 1975 for selling their turmeric vanishing cream, and the total sales since April, 1975 up to Dee, 1977 are of Rs. 1,77,31,377/-. The plaintiffs allege that by reason of sales and publicity their product has become popular in the market and by reason of distinctive get-up and colour scheme, the tube and the carton have come to be associated by the trade and the members of the public as the product of the plaintiffs exclusively, that they have spent an aggregate sum of Rs. 55,53,069.00 towards the publicity expenses from 1st April, 1975 to 1st Dec. 1977, in advertising through the media of radio, television and film.
7. In Nov. 1977, the plaintiffs learnt that the defendants had begun marketing a vanishing cream in cartons and tubes which are a colourable imitation of the plaintiffs' cartons and tubes, that Shri S. L. Jain proprietor of the defendant firm having factory and office at Community Centre, Phase-II, Ashok Vihar, Delhi has fraudulently flooded the markets including Delhi with imitation cartons and tubes with a view to trade upon the reputation of the. Plaintiffs product. The defendants' carton has also a red background and has floral design in yellow colour identical with. the plaintiffs' floral design. On two sides of the carton the words 'Cosmo Turmeric' are printed in white and below them 'Vanishing Cream' is printed.. The letters used in white printing are also similar. On the third side of the carton the defendant's name and details regarding manufacturing license and price are printed in white. On the fourth side of the carton the words 'Cosmo Turmeric Vanishing Cream improves the natural health of the skin, adding luster to the complexion. For men, an ideal after shave cream' are printed in white. The defendants' tube has also the get-up and colour scheme identical with that of the plaintiffs. The tube has a red/ orange background with a yellow floral de. sign. On one side of the tube the words 'Cosmo -Turmeric' are printed in yellow colour and below them appear the words 'Vanishing. Cream' also in yellow colour. On the reverse side of the tube the material appearing on the fourth side of the carton is printed 1-4 the same colour scheme and in the same manner as that of the plaintiffs. The cap of the defendants' tube is also yellow and there is a strip in yellow colour at the- bottom of the defendants' tube. A specimen of the defendants carton and the tube are marked as Exs. C and C-1.
8. The plaintiffs allege that the defendants have fraudulently adopted the tube 'and carton which are identical with or are a colourable imitation of the plaintiffs tube and carton, that they are deceptively similar and they have adopted the said carton. and the tube with a view to pass off their goods as and for the goods of the plaintiffs, that by reason of the acts of passing off already committed by the defendants they have caused loss and damage to the plaintiffs both in business as well as reputation in trade and that the loss to the plaintiffs' reputation cannot be easily calculated in terms of money, that the defendants have imitated the get-up, colour combination and the description of the plaintiffs' product in order to cause confusion and deception and to cam profits in an illegal manner. The plaintiffs further state that the defendant impugned product is of a recent origin, and if the defendants are not restrained from-carrying on their illegal trade active. Ties the plaintiffs would suffer a great hard ship.
9. The defendants in their reply state that there is no proper plaint in this Court, as the plaintiffs cannot present the same plaint which was presented in the High Court of judicature at Bombay, that the amendment Allowed by this Court without notice was unwarranted by law and it must be deemed that there is no amendment in -the plaint, that the defendants started selling 'Cosmo Turmeric Vanishing Cream' in Nov. 1977, that they are using their own descriptive words as well as floral design giving their address on the carton and tube along with manufacturing license and excise license number and also the retail price,- that the two trade marks 'VICC0' and 'COSMO' are different visually as well as Phonetically and no mistake is possible while purchasing the vanishing cream either of the plaintiffs or of the defendants. The various other allegations contained in the plaintiff application are also denied.
10. Rule 269-A of the Bombay High Court A S.) Rules, 1957 is as under: -
'269A (i) The Court or a judge may at any stage of the suit order the plaint to be returned to the plaintiff to be presented to -the Court in which the suit should have been instituted.
(ii) When an order for return of the plaint is made, the Prothonotary and Senior Master Or any Officer subordinate to him, shall endorse on the plaint the dates of its presentation. and return.
(iii) The plaint shall be returned only after the plaintiff has furnished a certified copy thereof for the record of the Court.'
The formalities of this It. R 269A appear to have been complied with which is apparent from the endorsements on the plaint. There does not appear any defect in the filing of the plaint in this Court.
11. Learned counsel for the defendants has contended that O. 7, R. 1OA of the Civil P. C. has not been complied with and thereforee the suit has not been properly instituted. At present, it appears to me that R. 10A of 0. 7 as substituted by Act 104 of 1976 in the Civil.- P. C. is not mandatory but only directory. The plaintiffs were not under any obligation to make any application in the High Court of judicature at Bombay specifying the Court in which they propose to present the plaint after its return. For the purposes of the present application, I am of the opinion that the plaint has been properly presented to this Court after its return by the High Court of judicature at Bombay.
12. The next objection of the defendants' counsel is that the amendment of plaint allowed by order dated 29th Aug. 1978 without notice to the defendants is not warranted by law. Ordinarily notice of an application is to be served upon the defendants. In the present case the proposed. amendment was to Plead facts showing that this Court has jurisdiction. The original plaint filed in the High Court of judicature at Bombay pleads facts showing Bombay Court has jurisdiction but when the same was returned for presentation to proper Court facts have to be pleaded showing that this Court has jurisdiction. Notice of such, application for formal amendment is not necessary. Without allowing amendment this Court has no jurisdiction to issue summons of the suit and notice of the application to the defendants
13. The plaintiffs claim passing off by the defendants of their product as and for the product of the plaintiffs on the basis of copy of the distinctive get-up and colour scheme of the collapsible tubes and the cartons by them. The defendants are not entitled to represent their goods as being the goods of the plaintiffs. The two marks 'Vicco' and 'Cosmo' used by the plaintiffs and defendants, respectively are no doubt different and the mark 'Cosmo', by itself is not likely to deceive but. the entire get-up and the colour scheme of the tube and the carton adopted by the plaintiffs and the defendants are identical in every detail and are likely to confuse and deceive the customer easily The get-up and the colour scheme of the plaintiffs adopted in every detail by the defendants for their tube and carton cannot be said to have been adopted by the defendants. unintentionally. Further the defendants allege that they started selling their product in the carton and tube in question from Nov,1077 while the Plaintiffs have been selling their product in the said carton and the tube since April, 1975. The suit was originally filed in Feb. 1978 at Bombay and ex parte injunction was granted on 29th Aug. 1978. The plaintiffs are prior users of their product in the carton. and the tube.
14. For the grant of a temporary injunction three facts are essential, namely, to Prove prima facie case, the balance of convenience between the parties and the irreparable injury likely to he caused in case the injunction is not granted. The plaintiffs have prima facie proved the case that they have been selling their product in the carton and the tube in question with distinctive get-up and colour scheme since April, 1975, while the defendants started selling their product in Nov. 1977 in the tube and the carton which prima facie appear to be copies of the entire getup and the colour scheme adopted by the plaintiffs. The tube and the carton with the get-up and colour scheme have come to be associated by the trade and members of the public as the product of the plaintiffs. the plaintiffs have also sold their product of the value of Rs. 1,77,31,377/- during the period April 1975 to Dec. 1977. The plaintiffs are the reputed 'Manufacturers of the turmeric cream since 1975. The defendants have put their product in the market only from Nov. 1977 and they have not disclosed the value of their sales, meaning thereby that the sales of the defendants are negligible. It appears that it would be proper if the defendants at this stage are restrained from passing off their product in the tube and the carton which are deceptively similar to the tube and the carton - adopted by the plaintiffs since April, 1975. It would be in the interest of the defendants also to adopt their own get-up for tube and the carton for the sale of their product. The plaintiffs are likely to suffer irreparable injury if the defendants are allowed to use to similar carton and the tube identical with get-up and colour scheme adopted by the plaintiffs. The injunction will not result in any hardship to the defendants if they at this stage can adopt any other carton and the tube with different get-up and colour scheme. The balance of convenience is In favor of the plaintiffs.
15. Various authorities have been cited on behalf of the plaintiffs and the defendants in support of their respective contentions. No previous case is an authority for any other case 'specially in passing off action as each case must depend upon the facts applicable to that case alone. I thereforee do not consider it necessary to refer the authorities cited by the counsel for the parties.
16. I allow the application of the plaintiffs and confirming the ex parte order dated 29th August, 1978 restrain the defendants, their servants, agents and dealers from using in relation to their product the carton and the tube pertaining to 'cosmo turmeric vanishing cream' and/or any other carton or tube which is deceptively similar to the plaintiffs carton and the tube pertaining to 'vicco turmeric vanishing cream' marked as Exs. A and A-1 on record till the decision of the suit. Cost of the application shall be the costs in the case.
17. Application allowed.