VICCO LABORATORIES vs EKCCO HERBS (INDIA)

A complaint/petition has been filed on behalf of the applicant/complainant, Vicco Laboratories charging the respondent, Ekcco Herbs (India) with adoption of and indulgence in unfair trade practices and alleging therein that the respondent has launched its product ''Primo Vajardanti'' tooth powder and to promote its sale, has used identical shape, size and colour of the container/bottle as that of the Vicco Vajardanti of the applicant/complainant. It has been further stated that the applicant/complainant is a manufacturer of various aurvedic products and medicines and ''Vicco Vajardanti'' tooth powder is one of its products registered with the Registrar of Trade Marks since 18th May, 1982 and has, over a period of time, carved a niche for itself in the market and has gained consumer acceptance. It has been stated that the respondent by using the identical colour, size, shape of the container/bottle and also the colour of the tooth powder has adopted an unfair and deceptive trade practice with a view to misleading and confusing the consumer into buying its product under the mistaken belief that he is purchasing ''Vicco Vajardanti'', the product of the applicant/complainant.

AN application for interim relief under Section 12A of the MRTP Act, 1969 (the Act for brief) has also been filed for injuncting the respondent from manufacturing and selling its product, ''Primo Vajardanti'' and also from using the same colour, size, shape and printing on the bottle/container and also the trade name ''Primo Vajardanti'' especially ''Vajardanti'' as that of the applicant/complainant. A notice in respect of both the complaint/petition and the interim relief application was issued to the respondent. The respondent, in its reply, while denying the charge of unfair trade practice, has stated that the present proceeding is not maintainable before this Commission as an equally efficacious remedy is available to the applicant/complainant under the specific statutes namely, the Trade and Merchandise Marks Act, 1958, the Copyright Act, 1957, the Designs Act and the Patents Act. It has also been stated that the complaint/petition and the allegations contained therein regarding similarities in the shape, size, colour etc. of the bottle, are to be construed as passing off the goods in similar trade dress for which a suit can be filed under Section 105 of the Trade and Merchandise Marks Act, 1958 in the District Court having jurisdiction to try the suit arising from the use of any trade mark which is identical with or deceptively similar to a mark which is either registered or unregistered.

We have heard the learned Advocate for the applicant/complainant as well as that of the respondent. The case of the applicant/complainant is that the respondent has adopted an unfair method and a deceptive trade practice within the meaning of Section 36A(1)(i) and (iv) of the Act and has used similar characteristics, style and model in packaging and marketing its product, ''Primo Vajardanti'' as that of the applicant/complainant and is causing irreparable damage to the goodwill and reputation of the applicant/complainant, in addition to eroding its market share. It has also been argued before us that the applicant/complainant has received complaints from its stockists which are to the effect that due to the similarity in the packaging, colour, size of the respondent''s product, not only the retailers are confused, even the consumers are being deceived and cheated.

IT is not disputed or denied that the Vicco Vajardanti tooth powder of the applicant/complainant has been given a certificate of registration of trade mark under the Trade and Merchandise Marks Act, 1958 with effect from 18th May, 1982 and the same has been renewed from time to time and is currently valid. IT is also not disputed that the respondent entered the market only recently and has also applied for registration of its trade mark but the same has not been registered and a certificate of registration has not been issued to it so far. The question for determination before us is whether the provisions of Section 36A(1) are attracted in the present case and whether similar packaging, size, shape, printing used by the respondent for marketing its product, ''Primo Vajardanti'' can be described as an unfair or deceptive method or trade practice ? It may be mentioned here that when the MRTP Act came into force on 1st June, 1970, there was no specific provision in it with regard to unfair trade practices and Section 36A was inserted subsequently, on the recommendations of the Sachar Committee so that the scope of the Act could be enlarged to cover unfair trade practices also. It was felt that as in other countries, there was need to protect the consumer not only from the effects of restrictive trade practices but also unfair trade practices which are deceptive and unfair and prejudicial to the interest of the consumers. In other words, it is in this background that the present case is to be considered.

IN this context, we are guided by the ruling of the Hon''ble Supreme Court in the case of Lakhanpal National Ltd. v. MRTPC, (1989) 3 Supreme Court Cases 251. It appears that the real test, whether a trade practice is unfair and deceptive, and therefore, should be prescribed, is whether it has the effect of misleading and deceiving innocent and gullible consumers. It follows that a particular trade practice is to be construed to be unfair and deceptive if it misleads a consumer into making a wrong choice while buying a product. It is, therefore, necessary to examine whether a consumer will be misled into buying the respondent''s product by the similarity of the shape, size, colour etc. of the bottle/container even though he has preference for the product of the applicant/complainant. IN the present case, as the colour, size, shape, printing on the container as also the colour of the tooth powder of the respondent is admittedly similar to that of the applicant/complainant and it appears that such a similarity has an element of misleading and deceiving the consumer into buying the product of the respondent in the belief that it is that of the applicant/complainant and is the same which he wishes to buy. Although it is true that the word ''Primo Vajardanti'' is also mentioned on the bottle and while a circumspect and discerning consumer may not be misled or get confused, it is not unlikely that illiterate and unlettered consumers, more particularly, in rural areas, are misled and deceived, and therefore, applying the test laid down by the Hon''ble Supreme Court in the aforesaid case, the trade practice adopted by the respondent in marketing its product, ''Primo Vajardanti'' tooth powder can be said to be an unfair trade practice within the meaning of Section 36A(1)(i) of the Act. It has been urged, on behalf of the respondent, that the similarity in packaging of the respondent''s tooth powder in respect of colour, size and shape of the bottle to that of the applicant/complainant is an act of passing off the goods in similar trade dress within the meaning of Section 105 of the Trade and Merchandise Marks Act, 1958, and therefore, the present complaint petition is not maintainable. Be that as it may, it cannot be denied that the applicant/complainant can have recourse to the provisions of Section 36A(1) of this Act. In this context, Section 4 of the Act needs to be referred to. This section makes it clear that the provisions of this Act are in addition to and not in derogation of any other law for the time being in force. In other words, if the trade practice adopted and indulged in by the respondent falls within the purview of the MRTP Act, we are of the opinion that the jurisdiction of the Commission can be invoked by the applicant/complainant and the present complaint/petition filed by it is maintainable. We treat the interim relief application filed by the applicant/complainant as information to the Commission and as the trade practice adopted by and indulged in by the respondent attracts the provisions of Section 36A(1)(i) and has the effect of misleading and deceiving the gullible consumer and as the consumer needs to be protected, we also direct that a Notice of Enquiry be issued against the respondent making it returnable on 22nd May, 2001.

IT also follows that as the impugned trade practice appears to be prejudicial to the interest of the consumers insofar as they would be misled into buying the product of the respondent without the intention of doing so and under the mistaken impression that it is the product of the applicant/complainant, they need to be protected. Tooth powder is an article of daily use and more and more people even in rural areas are using some kind of tooth paste/tooth powder for oral health care. There is growing consciousness about the beneficial effect of tooth paste/tooth powder on teeth and gums, and therefore, it is necessary that there should be truth and honesty in the representation made by a manufacturer/trader to the consumer. IT has also been argued before us that considerable damage is being caused to the goodwill and reputation of the applicant/complainant in addition to the erosion of its market share by the aforesaid trade practice of the respondent. For the aforesaid reasons, the balance of convenience also, is in favour of the applicant/complainant, and against the respondent, and therefore, it appears to us that an order injuncting the respondent from using the same colour, size, shape and printing on the container as that of the applicant/complainant deserves to be passed. The respondent is accordingly, restrained from using the same size, shape, colour and printing on the container/bottle as that of the applicant/complainant. The other prayers pertaining to the use of trade name, ''Primo Vajardanti'' or even ''Vajardanti'' by the respondent, contained in the interim relief application, are not considered to be falling within the scope of the interim relief, and therefore, no order is required to be passed.

AS the respondent has started manufacturing its products and has been marketing it for a few months, the respondent is given four weeks'' time for complying with this order. Complaint disposed of.