Injunction Applications On Passing Off And Copyright Infringement: Karnataka High Court Lays Down Guidelines For Trial Courts

The Karnataka High Court recently laid down guidelines to be followed by trial courts to deal with injunction applications, in a pending suit, seeking relief against passing off and copyright infringement. A bench of Justice Aravind Kumar and Justice Pradeep Singh Yerur laid down the guidelines while affirming an order dated 22.06.2021 passed by the Additional City Civil and Sessions Judge, (Commercial Court), Bengaluru, wherein it allowed the application filed by Cg Foods (India) Private Limited, for vacating the ex-parte interim order passed earlier and refusing to grant the relief of temporary injunction on the applications filed by ITC Limited. The court said, "In order to make it convenient for Courts to deal with injunction applications, in a pending suit, seeking relief against passing off, we have summarized the principles which must guide the courts in the inquiry into an action for passing off." 1. In an action for passing off, the plaintiff, in essence, pleads for protection against supposed misrepresentation causing damage to his business goodwill. 2: "Get up" refers to the whole visible external appearance of the goods in the form in which it is presented to the world at large, for public consumption. 3. In most cases, the 'get up' of a certain good or service, would be composed of a variety of marks – it may include visual imagery such as device, logo, symbol, emoji, signature, colour combinations etc.; or verbal expressions such as words, phrases, slogans etc. individually or in combination. It is strongly believed that "the eye is not an accurate recorder of visual detail, and ... marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Hence, it is not every aspect/feature that the Court must take interest in. Traders may assign greater prominence to certain aspects than others in terms of shape, font and colour; some aspects are mere fanciful additions with no particular utility except to add to the aesthetic value or attractiveness of the packaging. 4. Similarity in essential features is what amounts to misrepresentation as it deceives or is likely to deceive the buyer into thinking he has purchased what he wanted, when in reality, he has purchased a different product. Similarity in unessential features, however strong, amounts to mere copying without the strength to deceive. The law of passing off does not concern itself with allegations of 'unfair copying' of this kind – it is interested in protecting the plaintiff only against 'material misrepresentation' of his goods. 5. The question of whether the defendant is liable for the material misrepresentation of plaintiffs goods can be broken down into separate questions : The Distinctiveness of the Plaintiff's Mark - In terms of goods, what features of the claimant's goods are distinctive of him, to what extent and for what reasons? Deceptive Similarity: Are the defendant's goods sufficiently similar in those features to be taken for the claimant's? Also, has the defendant taken other measures or are there other factors, which effectively eliminate the possibility of confusion? 6. The first stage of the analysis begins with an inquiry into the distinctiveness of the plaintiffs goods. The critical question of fact which must be answered at the very outset is – What are the features by which the public distinguishes plaintiffs goods from other competitors? In answering this question, it is important to remember the fine distinction between the meaning of 'distinctiveness' in law' and 'distinctiveness' in the everyday sense. This would help in filtering out the essential features from the unessential. The essential features of the get-up are those which the consuming public attaches importance, for it enables them to identify the source of the goods. The weight attachable to a particular aspect of the mark depends on the function it plays in the consumer's purchasing decisions. 6.1 The court must next study the extent of distinctiveness among the essential features of the plaintiff's goods in a relative sense. This question bears some importance, in the next stage, during the deceptive resemblance analysis. For instance, a descriptive term may be sufficiently distinctive to be protected against idle copying, but may still not enjoy the protection of such wide scope as a term that is wholly arbitrary. In respect of a wholly arbitrary mark, the defendant adopting a mark that incorporates the same predominant idea even if the expression differs may be sufficient to cause deception. This completes the first stage of inquiring into the features which can be said to be distinctive of the plaintiffs' goods. The Court must next proceed to inquire if the defendant has adopted the essential features identified above, to such an extent, that it would lead persons of average...

Injunction Applications On Passing Off And Copyright Infringement: Karnataka High Court Lays Down Guidelines For Trial Courts

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