Case Study: Hawkins Cookers Ltd. v. Magicook Appliances Co.

By Harish Khan 13 Minutes Read

“A registered artistic work, such as a label, is protected under the Copyright Act, 1957, and that any unauthorized imitation of such a work constitutes infringement and using a label deceptively similar to a registered label with the intent to mislead consumers is actionable under the doctrine of passing off.”

Citation: 100 (2002) DLT698, AIR 2003 DELHI 191, (2002) 100 DLT 698

Date of Judgement: 13^th September, 2002

Court: Delhi High Court

Bench: S. Mukerjee (J)

Facts

• Hawkins Cookers Ltd., the plaintiff, is a prominent company engaged in manufacturing pressure cookers under a distinctive label since 1974. The label in question, registered under the Copyright Act, 1957, was characterized by unique features including specific color schemes and design elements. Magicook Appliances Company (Defendant No. 1) and another firm (Defendant No. 2) were alleged to be selling pressure cookers and cookbooks with labels and content strikingly similar to those of Hawkins. 
• The plaintiff sought a permanent injunction to prevent the defendants from using similar labels and cookbooks, requested the destruction of infringing materials, and demanded an account of profits earned through the alleged infringement.
• The plaintiff argued that their label, which had been distinctively designed and registered, was being imitated by the defendants. They claimed that the defendants’ pressure cookers and cookbooks bore labels and content that were substantially similar to theirs, thereby infringing on their copyright and constituting passing off. Despite sending cease and desist notices, the defendants did not respond, leading to the case being heard ex parte.
• The defendants, on the other hand, contended that they had rights to their label and content. However, they failed to substantiate these claims effectively and did not provide a meaningful defense as they proceeded against ex parte.

Decision of the Delhi High Court

The High Court of Delhi upheld the lower court’s decision, affirming the findings of copyright infringement and passing off. It agreed that the defendants’ label and cook book were unlawfully similar to Hawkins’ protected intellectual property. The High Court confirmed the lower court’s remedies, including the permanent injunction, destruction of infringing materials, and the requirement for the defendants to provide an account of profits. The judgment reinforced the protection of copyright and the prevention of unfair competition.

The Court granted several reliefs to the plaintiff, including:

• Permanent Injunction: The Court issued a permanent injunction restraining the defendants from using the similar label and cookbooks. This was based on the need to prevent ongoing and future infringement and passing off, in line with the principles of copyright protection and consumer protection.
• Destruction of Infringing Materials: The Court ordered the destruction of all infringing labels, cookbooks, and manufacturing tools in the defendants’ possession. This measure was intended to eliminate the infringing products and prevent further unlawful activity.
• Rendition of Accounts: The Court directed the defendants to render accounts of the profits earned through the infringing activities. The appointment of a Commissioner to oversee this process was in accordance with Section 55 of the Copyright Act, which provides for remedies including account of profits in cases of infringement.

Key legal issues discussed

1. Whether the plaint was signed and verified by a duly authorized person on behalf of the plaintiff.

Yes

The Court first confirmed that the plaint was duly signed and verified by an authorized representative of Hawkins Cookers Ltd. The evidence, including the Power of Attorney and the Certificate of Incorporation, substantiated that the suit was properly instituted on behalf of the plaintiff. This adherence to procedural requirements ensured that the suit was validly brought before the Court, in accordance with the legal principles of proper authorization and representation.

2. Whether the defendants’ label was deceptively similar to the plaintiff’s label?

Yes

The plaintiff’s label, registered under the Copyright Act, 1957, had distinctive features which were protected as an artistic work. The Court noted that the defendants’ label closely mirrored these features, leading to a conclusion that it was likely to deceive consumers. This finding was based on a comparative analysis of the labels and the absence of rebuttal evidence from the defendants, who had proceeded against ex parte. The Court relied on Section 2(e) and Section 48 of the Copyright Act, which recognize artistic works and provide for their protection. The principle established here is that the protection extends to preventing any unauthorized imitation that could mislead the public.

3. Whether the defendants had any legal right to use a similar label and mark as the plaintiff?

No

Addressing whether the defendants had any right to use a label similar to the plaintiff’s, the Court determined that the defendants did not possess such rights. The plaintiff’s label, being registered and protected under the Copyright Act, was granted exclusive rights. The Court’s reliance on Section 48 of the Copyright Act, which provides prima facie evidence of the copyright registration, reinforced that the defendants’ use of a similar label constituted a clear infringement. The legal principle here is that copyright protection extends to preventing unauthorized commercial use of registered artistic works.

The Court in Para 32 held that “The label of the plaintiff company is an artistic work within the meaning of Section 2(e) of the Copyrights Act, 1957. The same is duly registered under the Copyrights Act. The categorical stand of the plaintiff company both in the pleadings and the affidavit by way of evidence is that it is using the said label since the year 1974 and the said use is subsisting and valid.”

4. Whether the defendants were passing off their goods as those of the plaintiff?

Yes

The evidence showed that the defendants’ labels were designed to mimic those of the plaintiff, aiming to create confusion among consumers and benefit from the plaintiff’s established reputation. The Court’s finding of passing off was based on the likelihood of consumer deception and confusion, which are key elements in such claims. The Court cited precedents where similar deceptive practices were deemed actionable under the common law tort of passing off, reinforcing the principle that unfair competition through misleading labels is actionable.

The Court in Para 34 held that, “…In this view of the matter, the only conclusion possible is that the defendants have deliberately adopted the colour scheme, getup and layout and arrangement of the label of the plaintiff company in respect of the defendant’s Pressure cookers only to create confusion in the trade so that they may pass off their goods as those, of the plaintiff company. The intention of seeking recourse to such deception and confusion, can only with a view to treat upon the goodwill and reputation and profit of the plaintiff company while enhancing their (defendant’s profit), and to earn undue profits as affirmed by the pleadings and affidavits of the plaintiff company.“

5. Whether the defendants infringed the copyright in the plaintiff’s cook book?

Yes

Regarding the infringement of the plaintiff’s cookbook, the Court found that the defendants’ publication included substantial verbatim passages from the plaintiff’s book. This was supported by comparative analysis of the texts and the registration of the plaintiff’s cook book under copyright law. The Court’s decision was grounded in Sections 2(d), 2(m), and 51 of the Copyright Act, which protect original literary works and address unauthorized reproduction. The legal principle established is that direct copying of substantial parts of a copyrighted literary work constitutes infringement, and remedies are available under Section 55 of the Act.

6. Does the Copyright Act, 1957 protect artistic works such as labels from unauthorized imitation?

Yes

Under Section 2(e) and Section 48 of the Copyright Act, 1957, artistic works, including labels, are protected. The registration of such works provides prima facie evidence of copyright and its protection.

7. Can a label that is deceptively similar to a registered label be considered as passing off?

Yes

If the label is likely to deceive or cause confusion among consumers, it constitutes passing off. The Court’s finding in this case reinforces the actionable nature of such deceptive practices.

8. What remedies are available to a plaintiff for copyright infringement and passing off?

Yes

Remedies include permanent injunctions to prevent further infringement, destruction of infringing materials, and damages or accounts of profits, as provided under Sections 55 and 56 of the Copyright Act and common law principles.

The Court in Para 39, 40 and 41 held that “The defendants having infringed the copyright of the plaintiff company in terms of the provisions of the Section 51 of the Copyright Act, the plaintiffs are entitled to their civil remedies under Section 55 of the Act.

The defendants do not have any right to market their goods under the same or similar label.

Sine it is neither the defendants goods nor defendants have actually obtained any license in relation to the copyright, the same is held to be infringed.”

Harish Khan

This is Harish Khan, Enrolled as an Advocate with the Bar Council of Delhi. Currently, working as Legal Manager at Blackbull Law House. Pursued B.B.A. LL.B (Hons) Specialised in Business Laws from Himachal Pradesh National Law University, Shimla [H.P]. completed LL.M Specialised in Business Laws from Amity University, Lucknow [U.P].