Calcutta High Court Grants Injunction To Moondust Paper Ltd | Honesty And Fair Play Are The Basic Policies In Business | Strong Case Of Infringement Of Captain Gogo Trademark
Isabella Mariam
The High Court at Calcutta, Single Bench of Justice Ravi Krishan Kapur, held that the respondents were engaged in infringing trademark and copyright rights of the petitioner by selling deceptively similar products in the same category. The Court directed protective reliefs in favour of the petitioner after finding prima facie evidence of infringement, passing off, and misrepresentation. The Court further held that there was every possibility of confusion among the public due to visual and phonetic similarity of the marks in question and accordingly issued orders restraining the respondents from continuing such acts. The final order granted relief to the petitioner by allowing prayers as sought in the Notice of Motion.
The petitioner is a company engaged in the manufacture, trade, import, and export of smoker’s articles such as cigarette paper booklets, matchboxes, cardboard filter tips for cigarettes, booklets of rolling paper, crushing trays, cone fillers, cone rollers, pre-rolled smoking paper cones, blunt paper, pre-rolled blunt smoking cones, rolls of cigarette paper, booklets of flavoured rolling paper, and pre-rolled flavoured smoking cones. The business has been conducted under the trademarks “CAPTAIN GOGO” and “GOGO.” The mark was conceived and adopted by the predecessor-in-interest of the petitioner in 2015 and has since become synonymous with the petitioner’s goods, being exclusively associated with the petitioner. The petitioner also claimed ownership of the artistic work in the mark “GOGO,” which is protected under the Copyright Act, 1957.
The petitioner placed reliance on various trademark registrations and copyright registrations, particularly with respect to the artistic work in the label and packaging of its products. The petitioner submitted that its products are sold through offline and online channels, including its website www.captaingogo.com, and significant amounts have been spent on advertisement and promotional activities. The petitioner also claimed impressive sales figures as evidence of goodwill and reputation.
The present proceedings were initiated as a rolled-up action against several respondents who were alleged to be carrying on an identical business by selling goods deceptively similar to those of the petitioner. The petitioner alleged that respondents nos. 1, 2, and 3 were selling identical products under deceptively similar marks “GOGO” and “GOGA,” thereby infringing upon the petitioner’s rights. Respondents nos. 4 to 11 were also alleged to be infringing by adopting similar marks and labels, while respondents nos. 7 and 11 were identified as manufacturers of such infringing products.
Despite service of notice, no appearance was made on behalf of any of the respondents at the time of hearing, even on the second call. The Court recorded that the petitioner had produced evidence of seizure of counterfeit products from various respondents. The comparison of rival products was set out in the judgment. For instance, on 16 May 2024, 80 boxes of paper rolls labelled “CAPITAL COCO” and 160 boxes labelled “Go Three Paper” were seized from one of the respondents. On the same date, seizures were also made from another respondent, including 30 boxes of “Captain GOGO” rolled papers, 20 boxes of “Captain COCO,” 50 boxes of “Super Go India” pre-rolled cones, and 650 boxes of “Go Three Paper.” Similarly, from other respondents, large quantities of products such as “GO N GO” Perfect Roll Ultra-Thin Paper, “GO THR3E” filter tips, and rolling papers were seized in July 2024.
The seized goods demonstrated that the respondents were selling products in the same trade channels as the petitioner and were imitating not only the petitioner’s marks but also the artistic work contained in the packaging, thereby infringing trademark and copyright rights. The petitioner contended that such acts amounted to fraudulent and dishonest misrepresentation with the intention of passing off goods as those of the petitioner.
The Court examined the rival marks and noted the similarity in visual and phonetic aspects. It recorded: “On a bare examination, the marks of the respondent are visually and phonetically similar to that of the petitioner. There is every likelihood of the public being confused and deceived.” The Court further observed that the relevant consumer of such goods in India might have very little knowledge of English, making minor spelling differences irrelevant. It stated: “While examining such cases, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no or very little knowledge of the English language and to whom different words with minor difference in spellings may sound phonetically similar.”
In the context of passing off, the Court reiterated the applicable test: “One of the important tests which has to be applied in each case is whether the misrepresentation made by the respondent is of such a nature that is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors.” Reliance was placed on the Supreme Court decision in Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited, (2020) 5 SCC 73.
The Court also referred to the decision in Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65, noting: “A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts.” It was further recorded: “The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith.”
The Court observed that the respondents’ conduct, in adopting marks such as “GO N GO,” “GO THREE,” and “CAPTAIN COCO,” indicated an attempt to fraudulently benefit from the petitioner’s goodwill. It recorded: “In selling the impugned products, the respondents are acting in a fraudulent and dishonest manner. There is every attempt made to imitate not only the petitioner’s name but also the copyright registration which is being enjoyed by the petitioner.”
On the question of balance of convenience, the Court held: “The petitioner has been able to demonstrate a strong case on merits. The balance of convenience and inconvenience and irreparably injury is also in favour of orders being passed as prayed for herein.”
The Court concluded that a strong prima facie case was established in favour of the petitioner and that irreparable harm would be caused if interim protection was not granted. It recorded: “In such circumstances, there shall be an order in terms of prayers (a), (b) and (c) of the Notice of Motion.” Accordingly, the interlocutory application was disposed of by granting interim relief as prayed for by the petitioner, effectively restraining the respondents from continuing their infringing activities.
Advocates Representing the Parties
For the Petitioners: Mr. Sayantan Basu, Senior Advocate; Mr. Tanmoy Roy, Advocate; Mr. Bhavesh Garodia, Advocate; Mr. Abhishek Chakraborty, Advocate; Ms. A. Roy, Advocate
Case Title: Moondust Paper Pvt. Ltd. v. Vinay Shaw and Others
Case Number: IA No. GA-COM/1/2024 in IP-COM/44/2024
Bench: Justice Ravi Krishan Kapur
