The case revolves around allegations of trademark infringement, passing off, and copyright infringement by Brooke Bond India Limited against Balaji Tea (India) Pvt. Ltd. The dispute arises over the use of similar trade dress and artistic elements in packaging, leading to claims of deceptive similarity. The plaintiff sought an interim injunction to restrain the defendant from using the impugned label.

• Detailed Factual Background:
  • Brooke Bond India Limited, a reputed tea manufacturer since 1912, marketed tea under the "Super Dust Tea" brand.
  • The trade dress included a green background, white text for "Super Dust Tea," and a floral design in shades of red and pink.
  • The plaintiff had registered multiple trademarks and, since 1987, introduced a yellow circle with "Super Dust Tea" in red and green.
  • In early 1989, the plaintiff noticed similar tea packaging in Nagpur and Visakhapatnam, allegedly introduced by Balaji Tea (India) Pvt. Ltd.
  • The defendant’s tea packets, labeled "Super Star Tea," had a strikingly similar color scheme, a yellow star replacing the plaintiff’s yellow circle, and floral designs mimicking the plaintiff’s label.
  • The plaintiff argued that the defendant’s packaging was designed to mislead consumers and capitalize on its goodwill.
• Detailed Procedural Background:
  • Brooke Bond India Limited filed a suit seeking:
    • An injunction against copyright infringement.
    • An injunction against infringement of its registered trademarks under Nos. 301187 and 250152.
    • An injunction restraining the defendant from passing off its goods as those of the plaintiff.
    • Leave under Clause 14 of the Letters Patent to combine trademark and passing-off claims with the copyright infringement claim.
  • A learned single judge of the Madras High Court dismissed all interim injunction applications.
  • The judge found no prima facie case for copyright infringement and held that the court lacked jurisdiction over the trademark and passing-off claims.
  • The plaintiff appealed under Clause 15 of the Letters Patent.
• Issues Involved in the Case:
  • Whether the defendant’s label infringed the plaintiff’s copyright in the artistic work?
  • Whether the defendant’s label infringed the plaintiff’s registered trademarks?
• Detailed Submissions of Parties:
  • Plaintiff’s Arguments:
    • The defendant’s tea packaging was deceptively similar and violated its registered trademarks and copyright.
    • The trade dress and artistic elements had acquired distinctiveness and secondary meaning in the tea trade.
    • The defendant's intent was to ride on the plaintiff’s goodwill and deceive consumers.
    • The Madras High Court had jurisdiction under Section 62(2) of the Copyright Act since the plaintiff carried on business in Madras.
    • Clause 14 of the Letters Patent should permit combining the claims to avoid multiplicity of litigation.
  • Defendant’s Arguments:
    • It operated in Raipur, and its sales were confined to Madhya Pradesh and Orissa, negating jurisdiction in Madras.
    • The trade dress elements used were common in the tea trade.
    • It had independently conceived and used the "Super Star Tea" brand since 1988.
    • No actual confusion had been reported.
    • The plaintiff had no exclusive rights over the words “Super Dust” or "Tea."
    • Clause 14 of the Letters Patent should not be invoked as the plaintiff had branches in cities where the alleged infringement occurred.
• Detailed Discussion on Judgments and Citations Cited by Parties:
  • The Daily Calendar Supplying Bureau, Sivakasi v. The United Concern: Plaintiff asserted jurisdiction under Section 62(2) of the Copyright Act. The court reaffirmed that a plaintiff could sue where they carried on business.
  • Burroughs Wellcome (India) Limited v. G.K. Sharma, etc. (1989) 1 PLR 60: Plaintiff justified combining copyright and trademark claims under Clause 14 of the Letters Patent.
  • Tuticorin Alkali Chemicals and Fertilizers Limited v. Cochin Silicate and Glass Industries: Discussed the balance of convenience principle in granting relief.
  • Seshatri Row v. Nawab Askur Jung Aftaldowlah Mushral Mulk, ILR 30 Mad 438: Defendant argued against granting leave under Clause 14 based on inconvenience to a small trader.
• Detailed Reasoning and Analysis of the Judge:
  • The division bench of the Madras High Court examined the correctness of the single judge’s findings.
  • The court upheld the plaintiff’s right to sue in Madras for copyright infringement under Section 62(2) of the Copyright Act.
  • The court disagreed with the single judge’s reasoning that joinder of causes of action was inappropriate.
  • It clarified that under Section 54 of the Copyright Act, a publisher of an anonymous or pseudonymous artistic work is presumed to be the copyright owner until proven otherwise.
  • The single judge had wrongly required the plaintiff to disclose the author's identity.
  • The court emphasized avoiding multiplicity of litigation and found that since all claims arose from the same set of facts, joinder was appropriate.
  • The defendant, despite being a small trader, would not suffer more inconvenience by defending all claims in one court rather than multiple courts.
  • The court found that the defendant's label had substantial similarities to the plaintiff’s label.
  • It upheld the prima facie case for copyright and trademark infringement, as well as passing off.

Final Decision:
The appeals were allowed. The suit was permitted to proceed for all claims in the Madras High Court. The court upheld jurisdiction under the Copyright Act and allowed joinder of causes of action under Clause 14 of the Letters Patent. The defendant undertook not to use the impugned label during the proceedings.

Law Settled in This Case:
Section 62(2) of the Copyright Act grants jurisdiction to a court where the plaintiff carries on business, even if the defendant operates elsewhere. Clause 14 of the Letters Patent should be liberally interpreted to avoid multiple suits where claims arise from the same transaction. A publisher of an artistic work is presumed to own its copyright unless rebutted. A strong prima facie case of deceptive similarity suffices for interim relief, even in the absence of direct consumer confusion evidence.

Case Title: Brooke Bond India Limited Vs Balaji Tea (India) Pvt. Ltd.
Date of Order: 25 November 1992
Case No.: O.S.A. No. 279 of 1989 
Neutral Citation: (1993) 2 MLJ 132
Name of Court: Madras High Court
Name of Judge: Hon'ble Justice Shri Mishra

Disclaimer:
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539