Bombay HC Makes Absolute Injunction Against 'Utsaha' Tea, Finds Packaging Prima Facie Copy Of 'Umang' Label

The Bombay High Court has confirmed an interim injunction against the makers of "Utsaha" tea, holding that the product's packaging prima facie infringes the copyright and trade dress of the "Umang" tea label.

Justice Sharmila U. Deshmukh, by an order dated June 8, made absolute an ad-interim order passed on June 14, 2024 in a suit filed by Anil Srichand Kundnani, proprietor of Bhagyalaxmi Tea Centre, against Pruthvi Ishwar Patel, proprietor of Maa Bahucharaji Sales.

"It is therefore not a case of only the use of cardamom and cup of tea which may be common in tea packaging, but the entire trade dress which is nothing but a slavish reproduction of the Plaintiff's artwork," the court observed.

Kundnani claimed to have adopted the mark "Umang" in 2009 for packaged tea and coffee products. He relied on multiple trademark registrations for the word mark "Umang" and a copyright registration obtained in November 2023 for one of his artistic labels.

According to Kundnani, he discovered in January 2024 that Patel was marketing tea under the label "Utsaha". A cease-and-desist notice was issued on February 15, 2024.

Comparing the rival products, the Court found significant similarities in their overall presentation.

"The background colour scheme of shaded green, the bed of cardamoms on which the tea cup is placed are identical. The stylized font of depiction of the marks and the words on the packaging is similar," the Court held.

The Court further noted that the word "Sociality" appeared on Patel's package in red colour within a slightly curved rectangle resembling the placement and presentation of the word "JALARAM" on the Umang packaging.

"The word 'sociality' is written on the Defendant's package in identical red colour inside slightly curved rectangle identical to the word 'JALARAM' on the plaintiff's package. The placement of all elements on the Defendant's packaging is identical to the Plaintiff's packaging," the Court observed.

Rejecting Patel's contention that the use of green colour, cardamom and tea cup imagery was common in the trade, the Court held that what had been copied was the overall artistic expression and trade dress of the Umang packaging.

The Court also examined Patel's copyright registration and found that it covered only a cropped version of the artwork rather than the complete label actually used in the market.

"The Defendant's registered artwork does not disclose several elements which are identical to the Plaintiff's original artwork and there is no explanation given for seeking copyright registration of the cropped version of the actual artwork being used by the Defendant," the Court observed.

The Court noted that Kundnani's copyright registration recorded the year of publication as 2009, while Patel's registration mentioned 2022. It found that Kundnani had prima facie created and adopted the artwork before Patel.

"It is therefore prima facie evident that the Plaintiff had created and adopted the artwork prior to that of the Defendant and the impugned artwork is a slavish reproduction of the Plaintiff's original artistic work. There is no material produced by the Defendant to show that the impugned art work is an independent creation. The application for copyright registration of cropped version shows dishonest intent on part of the Defendants," the Court held.

On the passing-off claim, the Court noted that Kundnani had produced a chartered accountant-certified sales turnover of Rs 6.15 crore for the financial year 2022-23 and had established goodwill in the market before the publication year claimed by Patel for his artwork.

"Considering the presence of the Plaintiff in the market since the year 2009 and the goodwill and reputation earned, the slavish reproduction of the Plaintiff's original artwork is likely to cause damage to the Plaintiff," the Court observed.

Holding that Kundnani had made out a prima facie case of copyright violation and passing off, the Court made the interim application absolute and continued the injunction against the use of the impugned label and artwork.