2011 (12) TMI 760 - HC - Indian Laws

Summary

Issues Involved:
1. Infringement of Copyright
2. Passing Off and Unfair Competition
3. Infringement of Registered Trademark
4. Claim for Damages and Delivery of Infringing Materials

Summary:

1. Infringement of Copyright:
The plaintiffs, a Swiss company and its Indian subsidiary, claimed that the defendant's packaging infringed their copyright in the Red Mug Device used for their NESCAFE coffee. The Red Mug Device, created by Mr. Wolf-rudi von der Emden and assigned to the plaintiffs, was alleged to be distinctive and associated with NESCAFE. The court found that the defendant's packaging, which included a red mug with a golden line, black coffee, and froth, was a substantial reproduction of the plaintiffs' work. The court emphasized that copyright protection extends to the unique depiction of a mug, not just the idea of a red mug. The defendant's claim of prior use since 1975 was unsupported by evidence, and the court concluded that the plaintiffs' copyright had been infringed.

2. Passing Off and Unfair Competition:
The plaintiffs sought an injunction to prevent the defendant from passing off their goods as those of the plaintiffs and engaging in unfair competition. The court noted the striking similarities between the plaintiffs' and defendant's packaging, which could create confusion among consumers. The defendant's use of a similar device was seen as an attempt to associate their product with the plaintiffs' well-known NESCAFE brand, thereby constituting passing off and unfair competition.

3. Infringement of Registered Trademark:
During the pendency of the suit, the plaintiffs obtained registration for the Red Mug Device as a trademark, effective from May 19, 2003. The court recognized this registration and found that the defendant's use of a similar device constituted trademark infringement. The court applied the "lay observer test" to determine whether an average customer would confuse the defendant's product with the plaintiffs'. The court concluded that the defendant's mark was likely to cause confusion and thus infringed the plaintiffs' registered trademark.

4. Claim for Damages and Delivery of Infringing Materials:
Although the plaintiffs claimed damages and delivery of infringing materials, no arguments were advanced on these reliefs. Consequently, the court did not grant these specific reliefs.

Order:
A decree for perpetual injunction was passed, restraining the defendant from using the impugned trademark or any mark similar to the plaintiffs' registered trademark. The defendant was also restrained from infringing the plaintiffs' copyright in the Red Mug Device. No order as to costs was made. The decree sheet was ordered to be drawn accordingly.