The Bombay High Court in the case of Jayant Industries v. Indian Tobacco Company (“ITC") [Commercial (IP) Suit No. 242 of 2015, decided on January 11, 2022], dismissed the suit filed by Jayant Industries on the application made by ITC for dismissing the same under Order XIII- A of the Civil Procedure Code, 1908 (“Code”) on the ground that the plaintiff has no real prospect of succeeding in the suit and also, imposed costs of Rs.60,00,000 (Rupees sixty lac) on the plaintiff.
The suit was filed by the plaintiff, through its sole proprietor, Janvi J. Shah, inter-alia, seeking perpetual injunction restraining ITC from, in any manner, using in relation to cigarettes or any other product/s, the impugned trademark, or any other trademark identical with and/ or deceptively similar to the plaintiff’s trademark and copyright “CLASSIC” so as to infringe the plaintiff’s registered copyright as well as an action in passing off. Apart from the perpetual injunction, the plaintiff also sought a money decree by way of damages and/ or royalty.
The plaintiff claimed to be the owner of the copyright in the artistic work “CLASSIC” written in a characteristic style, of which the word “CLASSIC” forms an essential and prominent part. The plaintiff claims to have applied for copyright registration vide its application dated June 11,2012 and secured registration under the Copyright Act, 1957 for the said artistic work on August 13, 2013.
The plaintiff filed the suit when it came to its notice that ITC has copied the trademark “CLASSIC” for cigarettes manufactured and sold by it. The plaintiff’s contended that since ITC had adopted the word “CLASSIC” without any consent, authorization, or license of the plaintiff, which according to the plaintiff, is identical to its trademark, had indulged in acts amounting to violation of the plaintiff’s right in its copyright and trademark.
Arguments of ITC:
- ITC is a registered proprietor of the trademark “CLASSIC” (97 registrations) in Class 34 and has openly and extensively been advertising and marketing cigarettes bearing the trademark “CLASSIC” written in a stylized manner since 1979;
- The trademark “CLASSIC” has immense goodwill in the market and the purchasers identify “CLASSIC” cigarettes exclusively with ITC;
- ITC is the author and owner of the copyright comprised in the artistic work “CLASSIC” and of a prior proprietorship of the trademark “CLASSIC” which is required to be examined with due regard to the facts and evidence concerning the ITC’s ownership, as well as its open and extensive use of the “CLASSIC” trademark since 1979;
- The use of the “CLASSIC” trademark by ITC since 1979 is not in dispute;
- The plaintiff’s claim of authorship of the “CLASSIC” artistic work and adoption of the same as a mark in 1968, is clearly false considering the plaintiff/ Janvi J. Shah was born on April 21, 1987 and was only 28 years old at the time of instituting the suit;
- The plaintiff/ Janvi J. Shah claims that she was 25 years old at the time of applying for the copyright registration in 2012. It is, therefore, impossible for the plaintiff/ Janvi J. Shah to claim authorship of the "CLASSIC” label and adoption of this mark in 1968 when she was only born in 1987; and
- In view of the fact that the plaintiff/ Janvi J. Shah was born in 1987, her case of authorship of the “CLASSIC” artistic work and adopting the same as a mark in 1968, is wholly false and untenable.
Arguments of the Plaintiff:
- In the year 1968, the plaintiff, conceived and adopted the trademark “CLASSIC” in respect of its various products and services for sanitary preparations, ash-trays, room fresheners etc. The plaintiff applied for registration of the label mark (artistic) on April 25, 2012 and the mark is pending registration;
- The plaintiff manufactures various types of sanitary and perfumery products like multi-purpose air purifiers, plastic dispensers for rooms, cupboard purifiers, etc. as also cigarettes and cigar ash-trays etc., the plaintiff has used “CLASSIC” as an umbrella brand for its various products since the year 1968 and has been openly, continuously, extensively, and exclusively using the trademark/logo “CLASSIC” in respect of its products and services all over India. It is thereafter stated that it has significant presence all over India and even exports its products;
- According to the plaintiff, the trademark “CLASSIC” has become popular and is a household name and this is apparent from the Plaintiff’s volume of annual sales for the products bearing the trademark “CLASSIC”;
- The plaintiff has spent and continues to spend large sums of money towards publicity and sales promotional efforts carried out to popularize, publicize and promote the sale of its products under the trademark “CLASSIC”;
- The plaintiff is active in this business for more than five decades and enjoys reputation of premium standards and outstanding quality for its various products all of which have been continuously sold under the trademark “CLASSIC”;
- ITC has blatantly copied the trademark “CLASSIC” for cigarettes manufactured and sold by it. ITC had adopted the word “CLASSIC” without any consent, authorization, or license of the plaintiff, which according to the plaintiff, is identical to its trademark, had indulged in acts amounting to violation of the plaintiff’s right in its copyright and trademark;
- ITC has deliberately adopted and is using the trademark and copyright logo “CLASSIC” for promotional/ marketing purposes with a definite and mala-fide intention of deriving unlawful benefit and to trade upon and take advantage of the hard-earned reputation and goodwill acquired by the plaintiff through its trademark; and
- The plaintiff having used the trademark “CLASSIC” for ash-trays which is a related/ ancillary product, there is a clear intent on the part of ITC to ride on the goodwill earned by the plaintiff in the said trademark “CLASSIC” which consumers of cigarettes have come to acknowledge as a quality product and associate with that of the plaintiff’s product.
Decision of the Court:
The Court, inter-alia, held as follows:
- The plaintiff/ Janvi J. Shah can never be the author of the copyright in the artistic work “CLASSIC” from 1968 when she was born only in the year 1987. Hence, it is clear that the plaintiff has come to Court with a completely false case;
- The bills and receipts annexed to the plaint purportedly showing the user of the artistic work “CLASSIC” from 1968 onwards are fabricated, or at the very least, back-dated to somehow establish the user of the artistic work “CLASSIC” from a date prior to the user of the mark “CLASSIC” by ITC. Thus, basis the fabricated documents/ back-dated documents, the claim by the plaintiff for passing off can never succeed;
- Plaintiff canvassed arguments to the effect that the author of the copyright in the artistic work “CLASSIC” is the grandmother of the Plaintiff/ Janvi and not Janvi herself - none of the documents or pleadings in the Plaint support her case;
- The entire proceedings is an abuse of the process of the Court;
- The Court termed the suit as a nuisance litigation and held that the plaintiff has no real prospect of succeeding in the above suit and the Court found no other compelling reason why the suit cannot be disposed of before recording oral evidence;
- ITC is entitled to a summary judgment of dismissal of the above suit under the provisions of Order XIII-A of the Code and accordingly ordered it; and
- The plaintiff was directed to pay costs of Rs.60,00,000/- (Rupees sixty lacs) to ITC, failing which ITC shall be at liberty to recover these costs as arrears of land revenue.
Please find attached a copy of the judgment.
This update has been contributed by Ranjit Shetty (Senior Partner) and Luckyraj Indorkar (Principal Associate).
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