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CASE DETAILS
The Plaintiff for this case: SULPHUR MILLS LIMITED
The Defendant for this case: VIRENDRA KUMAR SAINI
Court: Bombay High Court
Decision Date: 14 June 2021
Single Judge Bench: G.S. Patel
FACTS
This application was brought as an action of trademark and copyright infringement with the cause of action being passing off. Sulphur Mills limited is a known manufacturer in the Agro Chemical industry.
The Plaintiff has a product under the mark FERTIS. The Plaintiff began using this in July 2007 for a fertilizer product. The product has 90% sulphur in the form of water dispersible granules and is meant to overcome sulphur deficiency and nutrition stress in the soil. The FERTIS-branded product is a fertilizer and is meant for application to the soil. It which facilitates a rapid uptake of sulphur. The FERTIS mark has been in use continuously since 2007.
The Plaintiff has also spent large amounts on promoting its product and various registrations show that the Plaintiff has obtained for FERTIS in Class 1.
In January 2020, the Plaintiff realised that the Defendant was selling the particular FORTIS-branded product containing almost 80% of sulphur under the mark FORTIS ROYAL-WDG. Moreover, the word ROYAL is minimized to the point that it is almost indistinguishable right away. The font of the word ROYAL is also small relative to the rest of the mark.
The Plaintiff’s packaging have been almost entirely lifted and is principally same in terms of visual and artistic elements. The image of branching tree or plant with leaves showing various agricultural products is also present in the mark. A very similar colour combination of orange, white and yellow colour is used. The word FORTIS is rendered in italics in both.
RELEVANT RULES
The entire label and packaging is an original artistic work within the meaning of Section 2(c) of the Copyright Act of 1957, which deals with the definition of “artistic works”. As a result of the same the unauthorized and unlicensed use thereof constitutes infringement under Section 51 of the Act. This invites action under Section 55 of the Copyright Act.
DECISION OF THE BOMBAY HIGH COURT
The High Court issued an interim order prohibiting the defendant from using the mark Fortis Royal. The Bombay High Court issued an interim order prohibiting the defendant from using the mark Fortis Royal. It is interesting to note as to how the Court determined the scenatical similarity between Plaintiff and the Defendant’s mark. The marks were not only compared side by side but also the phonetical similarities were chalked out.
The Court noted that the Plaintiff’s packaging has nearly fully been lifted in terms of its visual and artistic features. The Court also observed that the image of a branching tree or plant majorly impacted the visual appearance of the mark and with leaves displaying numerous agricultural items is repeated, it became uncannily similar to the FERTIS Mark.
Lastly, the colour scheme is extremely similar, with orange, white, and yellow. In each, the word FORTIS is written in italics and the alphabet ‘O’ is changed to ‘E’.
There is clear trademark and copyright violation, as well as a strong prima facie case of passing off. The Court concluded that the defendant had lifted the plaintiff’s packaging and trademark representation after comparing the packaging. The Court stated that the defendant’s use of the mark will not be non-infringing if one vowel is changed.
Finally, it shall be noted that the scenatical treatment of the mark was perused by the High Court with respect to Section 51 of the Act. Section 51 prohibits unauthorised use of existing trademarks. Since, the Defendant had been using the mark for a considerable amount of time and the mark FORTIS ROYAL clearly resembles the plaintiff’s mark, it establishes the unauthorised use and the criteria of deceptive similarity. Thus, this constitutes infringement.
It is observed that even though the present case is a simple one, the Bombay has fairly judged it. This is in the sense that the marks were carefully perused and compared. One of the highlights of this case was even if a trademark has to be seen in its entirety, the presence of the word ROYAL didn’t mitigate the fact that the mark was designed in order to infringe upon the reputation of FERTIS products. The colour scheme of marks also plays an important role as evident from this case. Finally, the similarity in the industry in which these products operate had also played an important role in this case.