Counsel Number: A-109

Gujarat National Law University

First Intra Moot Court Competition, 2019

In The Honourable High Court of Isengard

Miscellaneous First Appeal No. 14567 of 2018

In The Matter Of

Archer Industries Limited…….….……………. Appellant

v.

Bojack Products Private Limited………….…. Respondent

Written Submission on behalf of the Appellant

 TABLE OF CONTENTS

1. LIST OF ABBREVIATIONS …………………………………………………………..

…II
2. INDEX OF AUTHORITIES ……………………………………………………………

...IV
3. STATEMENT OF JURISDICTION …………………………………………................

...VI
4. STATEMENT OF FACTS ……………………………………………………………...

.VII
5. ISSUES RAISED ……………………………………………………………………….

..IX
6. SUMMARY OF ARGUMENTS ……………………………………………………….

...X
7. ARGUMENTS ADVANCED …………………………………………………………..

..XI
7.1. Whether the trade dress adopted by the Respondent on its ‘ZEAL’ brand of biscuits
and cookies is deceptively similar to the trade dress of the Appellant’s ‘ZEST’ brand
of orange cookies?........................................................................................................XI
7.1.1. That there existed goodwill in the market in favour of the
Appellant…………………………………………………………...................XIII
7.1.2. That the trade dress adopted by the Respondent had striking similarities and it
conveyed an association with the Appellant’s trade dress.
…………………………………………………………………………..XV
7.1.3. That the Appellant is likely to suffer injuries as a result of this
misrepresentation……………………………………………………………..XVI

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Written Submission on behalf of the Appellant
 7.2. Whether ‘Mr. Columbus’ adopted by the Respondent is an imitation of the Appellant’s
‘Happy Cloud’ on its packaging of biscuits and
cookies?......................................................................................................................XIX
7.2.1. That the consumers had started associating ‘Happy Cloud’ with its ‘ZEST’ brand
of cookies.…………………………………………….………………………XIX
7.2.2. That the adoption of ‘Mr. Columbus’ by the Respondent made a false
representation and conveyed an association with the Appellant’s ‘Happy
Cloud’………………………………………………………………………...XXI
7.2.3. That the Appellant is likely to suffer injuries as a result of this
misrepresentation…………………………………………………………...XXIII
8. PRAYER……………………………………………………………………..................XXV

LIST OF ABBREVIATIONS

& .. .. And
¶ .. .. Paragraph
§ .. .. Section
AC .. .. Appeal Cases
ACC. .. .. Accountancy
AIR .. .. All India Report, 1914-
All ER .. .. All England Law Reports, from 1936-
All MR .. .. All Maharashtra Law Reporter
Beav. .. .. Beavan’s Reports
Bom CR .. .. Bombay Cases Reporter
CHI. .. .. Chicago
CS .. .. Case
Cut LT .. .. Cuttack Law Times
DB .. .. Databases
DLT .. .. Delhi Law Times
FSR .. .. Fleet Street Reports
HC .. .. High Court
HL .. .. House of Lords
Hon’ble .. .. Honourable
IA .. .. Indian Appeals
Inc. .. .. Incorporation
INTELL. .. .. Intellectual
J. .. .. Journal

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Written Submission on behalf of the Appellant
L. .. .. Law
Ltd. .. .. Limited
Ors. .. .. Others
PROP. .. .. Property
PTC .. .. Patent and Trade Marks Cases

Pty .. .. Proprietary
Pvt. .. .. Private
REV. .. .. Review
RPC .. .. Remote Procedure Call
RTS. .. .. Rights
SC .. .. Supreme Court
SCC .. .. Supreme Court Cases
SCR .. .. Supreme Court Reports
U. .. .. University
US .. .. United States
v. .. .. Versus

Page | III
Written Submission on behalf of the Appellant
 INDEX OF AUTHORITIES

Articles
1. Gabriel A. D. Preinreich, The Law of Goodwill, 11(4) THE. ACC. REV. 317, 317 (1936).
2. Kellner Lauren Fischer, Computer user interfaces: Trade dress protection for ‘look and
feel’, 61 U. CHI. L. REV. 1011, 1011 (1994).
3. Shantanu Sahay, Piracy of Trade Dress and the Law of Passing off: National and
International Perspective, 11 J. INTELL. PROP. RTS. 201, 203 (2006).
Cases
Foreign Cases
1. Brinsmead v. Brinsmead, (1913) 30 RPC 493.
2. Britannia Industries Ltd. v. ITC Limited, (2017) 240 DLT 156 DB.
3. Cadburry Schweppes Pty Ltd v. Pub Squash co Pty Ltd, (1981) RPC 429.
4. Commissioners of Inland Revenue v. Muller & Co.’s Margarine Ltd., (1901) AC 217.
5. Consumers Distributing Co. v. Seiko Time Canada Ltd., (1984) 1 SCR 583.
6. Derek McCulloch v. Lewis A. May, (1948) 65 RPC 58 (64).
7. Erven Warnink Besloten Vennootschap v. J. Townend & Sons, (1979) SC 731.
8. Gorbatschow Wodka v. John Distilleries, (2011) 4 Bom CR 1 All MR 374.
9. Mattel USA v. 3894207 Canada Inc, (2006) 1 SCR 772 SCC 22.
10. Metropolitan Bank v. St. Louis Dispatch Co., (1893) 149 US 436.
11. Mind Gym Ltd. v. Mind Gym Kids Library Pvt. Ltd. (2013) 55 PTC 417.
12. Perry v. Truefitt, (1842) 6 Beav. 66.
13. Reckitt & Colman Products Ltd. v. Borden, (1990) RPC 341 HL.
14. Star Industrial Company Ltd. v. Yap Kwee Kor, (1976) FSR 256.
15. Taittinger v. Allbev, (1993) FSR 641.
16. Vonderbank v. Smith, (1951) 1 AC 850 All ER 1078.

Indian Cases
1. Cadbury India Limited and Ors. v. Neeraj Food Products, (2007) 142 DLT 724.
2. Dalpat Kumar & Anr. v. Prahlad Singh & Ors., (1992) 1 SCC 719.
3. Delhi Public School Society v. DPS World Foundation & Ors., (2018) CS 154 IA 6764.
4. Gorbatschow Wodka v. John Distilleries, (2011) 4 BomCR 1, AllMR 374.
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Written Submission on behalf of the Appellant
5. Horlicks Ltd. v. Bimal Khamrai, (2003) 26 PTC 241 (Del).
6. Larsen & Toubro Ltd. v. Lakshmi Industries & Ors., (2007) 1 SCC 214.
7. Laxmikant Patel v. Chetanbhat Shah, (2002) AIR SC 275.
8. Mahashian Di Hatti Ltd v. Raj Niwas, (2011) 46 PTC 343 (Del).
9. Orissa State Commercial Transport Corporation Ltd. v. Satyanarayan Singh, (1974) 40
Cut LT 336.
10. PepsiCo, Inc. and Ors. v. PSI Ganesh Marketing and Ors., (2014) 59 PTC 275 (Delhi).
11. PepsiCo, Inc. v. C.R. Associates, (1998) AIR 4 SC 198.
12. Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel and Ors., (2006) SC 3725.
13. Wockhardt Ltd. v. Torrent Pharmaceuticals & Anr, (2018) AIR SC 5106.

Online Sources
1. Supreme Court Cases online EBC
2. www.jstor.org
3. www.manupatra.com
Statutes
1. The Code of Civil Procedure, 1908
2. Trade Marks Act, 1999

Page | V
Written Submission on behalf of the Appellant
 STATEMENT OF JURISDICTION

The Counsel for the Appellant aggrieved by the decision of the Lower Court has approached
this Honourable Court under Section 941 of the Code of Civil Procedure, 1908, India read
with Order 43 Rule 1(r),2 to file a Miscellaneous First Appeal.

1
In order to prevent the ends of justice from being defeated the court may, if it is so prescribed,
(1) Issue a warrant to arrest the defendant and bring him before the court to show cause why he should not give
security for his appearance, and if he fails to comply with any order for security commit him to the civil prison;
(2) Direct the defendant to furnish security to produce any property belonging to him and to place the same at
the disposal of the court or order the attachment of any property;
(3) Grant a temporary injunction and in case of disobedience commit the person guilty thereof to the civil prison
and order that his property be attached and sold;
(4) Appoint a receiver of any property and enforce the performance of his duties by attaching and selling his
property;
(5) Make such other interlocutory orders as may appear to the court to be just and convenient.
2
Appeal from orders
An appeal shall be from the following orders under the provisions of section 104, namely:
(r) an order under rule 1, rule [rule 2A], rule 4 or rule 10 of Order XXXIX;

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Written Submission on behalf of the Appellant
 STATEMENT OF FACTS

1. Archer Industries Limited (hereinafter AIL) established in 1945, was incorporated in the
city of Isengard. It is a leading confectionary company with over 5.5 million retail outlets
across Isengard. AIL had a revenue of INR 10,000 crores in 2017-18 and about INR 6,500
crores only from the sale of cookies and biscuits.
2. AIL in the year 1970, launched orange-based cookies under the brand ‘ZEST’. And for the
same, AIL employed an unregistered distinctive package where orange was employed as
the primary colour and white as the secondary colour.
3. For some time now, AIL was associating the idea of cheeriness with the brand ‘ZEST’.
The ethos of the brand and pitch has been to spread cheeriness, as part of its advertising
campaign. For the same, they adopted a unique image to portray the idea. The image was
that of a blue cloud, with thick black eyebrows and a smiley face.
4. In early 2017, AIL adopted ‘Happy Cloud’ by placing it on the side of the mark ‘ZEST’.
AIL also engaged prominent actors/celebrities like Walia Bhatt to endorse its products
under the mark ‘ZEST’ with the ‘Happy Cloud’. Apart from these conventional forms, AIL
also promoted the ‘ZEST’ brand with the ‘Happy Cloud’ in social media such as YouTube,
Twitter, Instagram, etc. In all, AIL spent around INR 300 crores in promoting the new
packaging.
5. Bojack Products Private Limited (hereinafter BPPL) established in 1909, is a global
powerhouse in manufacturing and selling biscuits, cookies, chocolates and candies. BPPL
has been manufacturing biscuits and cookies in various flavors, since 1950. BPPL boasts a
global reputation with a presence in 35 countries of the world and has 7 million retail
outlets in Isengard. BPPL’s revenue in 2017-18 was INR 20,000 crores, with about INR
9,500 crores coming from selling cookies and biscuits only.
6. In early 2018, BPPL decided to change its packaging of the ‘ZEAL’ range of biscuits and
cookies. During the release of the cookies, BPPL conducted a press statement where they
adopted ‘Mr. Columbus’ to mark its pioneer ship in manufacturing biscuits and cookies.
They placed ‘Mr. Columbus’ above its mark ‘ZEAL’, while adopting a uniform coloring
scheme of orange, blue and white.
7. After the launch of the ‘ZEAL’ brand of cookies and biscuits, AIL filed a suit against
BPPL on the ground that trade dress of ‘ZEAL’ is similar to its ‘ZEST’ brand of cookies

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Written Submission on behalf of the Appellant
 and biscuits. AIL also contented that BPPL was seeking to imitate AIL’s packaging in
order to ride on their goodwill and reputation.
8. The Lower Court vide its order dated 27.12.2018 did not grant AIL an ex-parte injunction.
The lower court vide the same order issued a notice to BPPL and adjourned the matter tp
30.01.2019.
9. AIL filed an appeal before the Hon’ble HC of Isengard, to set aside the order dated
27.12.2018. The appeal was listed on 29.12.2018 and the court was adjourned in the
matters for hearing the interim reliefs to 19.01.2018 and 20.01.2019.

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Written Submission on behalf of the Appellant
 ISSUES RAISED

1. Whether the trade dress adopted by the Respondent on its ‘ZEAL’ brand of biscuits
and cookies is deceptively similar to the trade dress of the Appellant’s ‘ZEST’ brand
of orange cookies?
2. Whether ‘Mr. Columbus’ adopted by the Respondent is an imitation of the
Appellant’s ‘Happy Cloud’ on its packaging of biscuits and cookies?

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Written Submission on behalf of the Appellant
 SUMMARY OF ARGUMENTS

1. Whether the trade dress adopted by the Respondent on its ‘ZEAL’ brand of biscuits
and cookies is deceptively similar to the trade dress of the Petitioner’s ‘ZEST’ brand
of orange cookies?
The counsel for the Appellant argues on the very fact that the trade dress adopted by the
Respondent had striking similarities with the trade dress of the Appellant. The Appellant
here, was able to establish a goodwill in the market for its ‘ZEST’ brand of orange cookies
through the adoption of its unique trade dress with the ‘Happy Cloud’ mark on it.
Furthermore, it was evident that the people had started associating ‘Happy Cloud’ with the
idea of cheeriness under the brand name ‘ZEST’. This proved that the Appellant had
established a goodwill in the market for itself. The Respondent on the other hand, tried to
intentionally misrepresent the said goodwill for its own benefit. The adoption of a trade
dress strikingly similar to that of the Appellant’s is proof. This act by the Respondent was
in all way possible, able to affect the business prospects of the Appellant in the markets of
Isengard as far as the orange-based cookies under the brand name ‘ZEST’ was concerned.

2. Whether ‘Mr. Columbus’ adopted by the Respondent is an imitation of the

Petitioner’s ‘Happy Cloud’ on its packaging of biscuits and cookies?
The counsel for the Appellant again argues on the fact that ‘Mr. Columbus’ adopted the
Respondent is a clear imitation of the Petitioner’s ‘Happy Cloud’ on its packaging of
biscuits and cookies. The Appellant introduced the idea of cheeriness with the mark
‘Happy Cloud’, and people began to associate it with the same. After about a year, the
Respondent introduces ‘Mr. Columbus’, which was a clear imitation of ‘Happy Cloud’.
This imitation is enough to misguide people who have already started associating
cheeriness with it. As a result of the same, the Appellant is likely to suffer losses and it
may ruin its business aspects in the market.

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Written Submission on behalf of the Appellant
 ARGUMENTS ADVANCED

I. Whether the trade dress adopted by the Respondent on its ‘ZEAL’ brand of biscuits
and cookies is deceptively similar to the trade dress of the Appellant’s ‘ZEST’ brand
of orange cookies?
1. The counsel humbly submits before this Hon’ble Court that the trade dress adopted by
the Respondent on its ‘ZEAL’ brand of biscuits and cookies is deceptively similar to the
trade dress of the Appellant’s ‘ZEST’ brand of orange cookies. As a result, there is a
clear case of passing-off committed by the Respondents, as the trade dress was not
registered under the Trade Mark Act, 1999.
2. While defining passing-off, a decision from the House of Lords stated that3:
"A misrepresentation made by a trader in the course of trade to prospective customers
of his or ultimate consumers of goods or services supplied by him, which is calculated
to injure the business or goodwill of another trader (in the sense that this is a
reasonably foreseeable consequence) and which causes actual damage to a business
or  goodwill of the trader by whom the action is brought or will probably do so". In this
case, the Respondent did make a misrepresentation as there was a striking similarity
between its own trade dress and that of the Appellant’s. Furthermore, the Respondent
was in a position to reasonably foresee the consequences of its action, and still decided
to go ahead with that trade dress.
3. The present case, therefore, has to be considered as one of passing-off in relation to the
trade drees/get up. In Isengard, trade dress with respect to passing-off is protected under
the Trade Marks Act, 1999.4 The essential attributes which need to be established for a
successful passing-off action have often been considered as the classical trinity, which
in words of Lord Oliver in Reckitt & Colman Products Ltd. v. Borden Inc. & Ors. 5, are
as under:
“First, he must establish a goodwill or reputation attached to the goods or services
which he supplies in the mind of the purchasing public by association with the
identifying ‘get-up’ (whether it consists simply of a brand name or a trade description,
or the individual features of labelling or packaging) under which his particular goods
3
Erven Warnink Besloten Vennootschap v. J. Townend & Sons, (1979) SC 731.
4
Trade Marks Act, 1999, § 27(2), Acts of Parliament, 1999 (India).
5
(1990) RPC 341 HL.
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Written Submission on behalf of the Appellant
 or services are offered to the public, such that the get-up is recognised by the public as
distinctive specifically of the plaintiff’s goods or services.
Secondly, he must demonstrate a misrepresentation by the defendant to the public
(whether or not intentional) leading or likely to lead the public to believe that goods or
services offered by him are the goods or services of the plaintiff.
Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely
to suffer damage by reason of the erroneous belief engendered by the defendant’s
misrepresentation that the source of the defendant’s goods or services is the same as
the source of those offered by the plaintiff”. All such features are present are present in
this case as there was a goodwill which the Appellant was able to create; a
misrepresentation, which the Respondent did by adopting a trade dress which had a
striking resemblance with that of the Appellant’s, and the adoption happened about a
year after the launch of the trade dress by the Appellant, thereby signifying an
intentional misrepresentation; and finally a clear possibility of loss which the Appellant
is bound to suffer as a result.
4. Furthermore, in Reckitt & Colman Limited v. Borden Inc. & Ors. 6, it has been further
stated that:
"The law of passing-off can be summarised in one short general proposition - no man
may pass off his goods as those of another. More specifically, it may be expressed in
terms of the elements which the plaintiff in such an action has to prove in order to
succeed. These are three in number: First, he must establish a goodwill or reputation
attached to the goods or services which he supplies in the mind of the purchasing public
by association with the identifying "get-up" (whether it consists simply of a brand name
or a trade description, or the individual features of labelling or packaging) under which
his particular goods or services are offered to the public, such that the get-up is
recognised by the public as distinctive specifically of the plaintiff's goods or services.
Secondly, he must demonstrate a misrepresentation by the defendant to the public
(whether or not intentional) leading or likely to lead the public to believe that goods or
services offered by him are the goods or services of the plaintiff. Whether the public is
aware of the plaintiff's identity as the manufacturer or supplier of the goods or services
is immaterial, as long as they are identified with a particular source which is in fact the
plaintiff. For example, if the public is accustomed to rely upon a particular brand name
in purchasing goods of a particular description, it matters not at all that there is little
6
Supra note 4.
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Written Submission on behalf of the Appellant
 or no public awareness of the identity of the proprietor of the brand name.
Thirdly, he must demonstrate that he suffers or ... that he is likely to suffer, damage by
reason of the erroneous belief engendered by the defendant's misrepresentation that the
source of the defendant's goods or services is the same as the source of those offered by
the plaintiff".
Thus, a passing-off action has to be examined from a standpoint of three factors: (a)
Goodwill and reputation; (b) Misrepresentation/possibility of deception; and (c)
Likelihood of damage. We must also note that goodwill and reputation do not refer to
the same thing though, there could be some more degree of overlap. 7 It is not just the
reputation, but the goodwill which constitutes the property inasmuch as it represents a
link between the business and the customer.8
5. The nature of passing-off action was further explained by Justice Wynn-Parry in Derek
McCulloch v. Lewis A. May9, in the following words:
“With that statement of the relevant facts and my conclusion on the question of fraud, I
now turn to examine the nature of this action. It is of the essence of an action for
passing-off must depend on his showing that he enjoys a reputation in that name in
respect of some profession or business that he carries on or in respect of some goods
which he sells. Further, he must show that the acts of the defendant of which he
complains have interfered or are calculated to interfere with the conduct of his
profession, business, or selling goods, in the sense that those acts of the defendant have
led or are calculated to lead the public to confuse the profession, business or goods of
the defendant. The element of confusion is essential, but the elements of confusion
necessitates the comparison".
Comparing the above statements with the facts on record, we can say that the Appellant
was enjoying a reputation in the name of its brand ‘ZEST’ in respect of the business
which it was conducting, i.e., production of cookies. And, the acts of the Respondent
were in all ways such, that it could affect the business interests of the Appellant.
i. That there existed goodwill in the market in favour of the Appellant.
6. The essential elements of an action for passing-off can be summarized as need to show a
misrepresentation causing damage to the goodwill of the owner of the product. 10 While
many brand owners are able to show the goodwill attached to their products with ease,
7
Britannia Industries Ltd. v. ITC Ltd., (2017) 240 DLT 156 DB.
8
Ibid.
9
(1948) 65 RPC 58 (64).
10
Supra note 5.
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Written Submission on behalf of the Appellant
 providing distinctiveness of the trade dress of the product can be a complex process. 11
Although it is to an extent complex in this case, to establish goodwill, but the fact that
the people had started associating it with ‘ZEST’ makes things a bit easier.
7. Goodwill is the good reputation or brand identification enjoyed by a commercial entity.
Attempts to define goodwill and list its principal characteristics disclosed, first of all,
that it has no independent existence of its own.12 Attempts at more formal definitions of
goodwill are made in Metropolitan Bank v. St. Louis Dispatch Co.13, whereby it is stated
that:
“It is intangible property which, in the nature of things, can have no existence apart
from a business of some sort that has been established and carried on at a particular
place”.
In this case, the Appellant had created a goodwill over a period of one year from the
release of its orange-based cookies. AIL noticed that consumers had started associating
the concept of cheeriness pictorially depicted by the ‘Happy Cloud’ with ‘ZEST’. 14 So,
it can be clearly said that there was goodwill present in the market, in favour of the
Appellant.
8. Again, in Vonderbank v. Smith15, it was held that “Goodwill is the favour which the
management of a business wins from the public and the probability that all customers
will continue their patronage. It is the general public patronage and encouragement
which a business receives from its customers on account of its local position; that is the
subject of value and price and of bargain and sale, though intangible”. The subject of
patronage can be confirmed from the fact that the Appellant was successful in achieving
what it was trying to. The ethos of the brand and pitch has been to spread cheeriness, as
part of the advertising campaigns.16 This was what it was trying to achieve, and it did so
as well, when it saw that consumers were associating the concept of cheeriness with
‘Happy Cloud’.
9. It is recognized that passing-off is wide enough to encompass other descriptive material,
such as slogans or visual images which radio, television or other newspaper advertising
campaigns which can lead the public/market to associate with a plaintiff’s product, and

11
Shantanu Sahay, Piracy of Trade Dress and the Law of Passing off: National and International Perspective,
11 J. INTELL. PROP. RTS. 201, 203 (2006).
12
Gabriel A. D. Preinreich, The Law of Goodwill, 11(4) THE. ACC. REV. 317, 317 (1936).
13
(1893) 149 US 436.
14
Facts on Record, ¶ 5.
15
(1951) 1 AC 850 All ER 1078.
16
Facts on Record, ¶ 4.
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Written Submission on behalf of the Appellant
 thereby, such descriptive material has become part of the goodwill of the product. 17 The
real test in such cases is whether the product has derived from advertising a ‘distinctive
character’, that is recognized by the market. 18 In this case, the presence of ‘Happy
Cloud’ on the Appellant’s packaging, and the adoption of ‘Mr. Columbus’ by the
Respondent makes things clear.
10. The plaintiff has to establish goodwill in the market and association of the trade dress
of the plaintiff with the source.19 The Appellant was clearly able to establish this
association. Hence, goodwill was established in the market by the Appellant in its own
favour.
ii. That the trade dress adopted by the Respondent had striking similarities and it
conveyed an association with the Appellant’s trade dress.
11. In accordance to the above arguments, the counsel further submits that the trade dress
which was adopted by the Respondent had striking similarities with the trade dress of
the Appellant. And such similarities affected the Appellant in a substantial manner as
people starting associating the Respondent’s product with the Appellant’s, and this in
return caused or was likely enough to cause damage to its business prospects in
Isengard.
12. The adoption of ‘Mr. Columbus’ by the Respondent is a clear indication of
misrepresentation. ‘Mr. Columbus’ has striking similarities with the Appellant’s ‘Happy
Cloud’. Similarly, in Cadbury India Limited and Ors. v. Neeraj Food Products 20, the
Delhi High Court held the trademark "JAMES BOND" as physically and phonetically
similar to the registered trademark "GEMS" of the Cadbury. Although we can say that
here in this case ‘Mr. Columbus’ and ‘Happy Cloud’ were not similar as far as the
words are concerned, but the structure of these two characters were very much similar.
13. In Mattel USA v. 3894207 Canada Inc21, Canada’s Supreme Court opined that:
"In an action for passing-off, it would have been necessary for the appellant to show
that the respondent restauranteur intentionally or negligently misled consumers into
believing its restaurant services originated with the appellant and that the appellant
thereby suffered damage." As both the Appellant and the Respondent were leading
confectionary companies, it is easy to say that their market ambitions were similar. So,
17
Kellner Lauren Fischer, Computer user interfaces: Trade dress protection for ‘look and feel’, 61 U. CHI. L.
REV. 1011, 1011 (1994).
18
Cadburry Schweppes Pty Ltd v. Pub Squash co Pty Ltd, (1981) RPC 429.
19
Supra note 10 at 203.
20
(2007) 142 DLT 724.
21
(2006) 1 SCR 772 SCC 22.
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Written Submission on behalf of the Appellant
 comparing the above case law, we can come to a point where it can be said that the
Respondent were trying to intentionally mislead the people into buying its own
products, banking on the goodwill so established by the Appellant throughout an year.
14. In another case of Gorbatschow Wodka v. John Distilleries 22, the Plaintiff,
Gorbatschow Wodka, filed an infringement action before the Bombay High Court
alleging that the Defendant has invaded its intellectual property rights by adopting a
deceptive variation of the shape of the bottles of the Plaintiff. The adoption of ‘Mr.
Columbus’ also had a deceptive variation to the shape of ‘Happy Cloud’, thereby,
substantiating the fact that the misrepresentation was intentional.
15. Again, in Consumers Distributing Co. v. Seiko Time Canada Ltd.,23 it was stated that:
"The making of some false representation to the public, or to third persons, likely to
induce them to believe that the goods or services of another are those of the plaintiff.
This may be done, for example, by counterfeiting or imitating the plaintiff's trade
mark  or trade name, his wrappers, labels or containers, his vehicles, the badges or
uniforms of his employees, or the appearance of his place of business.
The test laid down in such cases has been whether the resemblance is so great as to
deceive the ordinary customer acting with the caution usually exercised in such
transactions, so that he may mistake one for the other."
The above test talks about the extent of resemblance between the trade dresses. Looking
at both the logos, namely ‘Happy Cloud’ and ‘Mr. Columbus’, it is quite clear that the
resemblance is to a substantial extent. Hence, it is safe to conclude that the Respondent
was of the full knowledge that such an adoption could have had an immense impact on
the business prospects of the Appellant.
iii. That the Appellant is likely to suffer injuries as a result of this misrepresentation.
16. The counsel humbly submits before this court that the actions of the Respondent is
likely to cause injuries to the business aspects of the Appellant. The injuries so sustained
may be irreparable in nature, and hence can cause a permanent damage to the business
aspects of the Appellant. In the case of Orissa State Commercial Transport Corporation
Ltd. v. Satyanarayan Singh24, the court observed that:
“Irreparable injury means such injury which cannot be adequately remedied by
damages. The remedy by damages would be inadequate if the compensation ultimately

22
(2011) 4 Bom CR 1 All MR 374.
23
(1984) 1 SCR 583.
24
(1974) 40 Cut LT 336.
Page | XVI
Written Submission on behalf of the Appellant
 payable to the plaintiff in case of success in the suit would not place him in the position
in which he was before injunction was refused”.
17. In Dalpat Kumar & Anr. v. Prahlad Singh & Ors.25, the Supreme Court explained the
scope of the aforesaid material circumstances, but observed as under:
“The phrases ‘prima facie case’, ‘balance of convenience’ and ‘irreparable loss’ are
not rhetoric phrases for incarnation, but words of width and elasticity, to meet myriad
situations presented by man’s ingenuity in given facts and circumstances, but always is
hedged with sound exercise of judicial discretion to meet the ends of justice. The facts
rest eloquent and speak for themselves. It is well nigh impossible to find from facts
prima facie case and balance of convenience”.
18. The counsel further states that when a detailed comparative study is drawn between
the Appellant and the Respondent, it can be concluded that the Respondent has a much
larger share in the market than the Appellant. The Respondent has been catering to 35
countries and boasts a global reputation in comparison to the Appellant’s customer base
which is limited to only Isengard. Thus, if an injunction is granted there would be a halt
in the operations of the Respondent in Isengard only, whereas, their sales in the other
34 countries would continue. On the contrary, if the injunction is not granted there
would be a hindrance in the sales of the Appellant in Isengard, the only country in
which it operates. As a result, there will be a substantial damage of existing trade and
profits of ZEST and when the existing trade and profits of ZEST is reduced it would
become very difficult for it to regain its past reputation. That would not only result in a
decline of existing trade and profits, but also threaten the potential sales and profits
which would be irreparable.
19. In trade-mark infringement cases irreparable damage, in this sense, is relatively easily
shown, since infringement may easily destroy the value of a mark or at least nullify
expensive advertising in a way that is hard to quantify for the purposes of an inquiry
into damages.26 In the present case, the Appellant has spent INR 300 crores through
conventional as well as unconventional forms of media for the promotion of ‘Happy
Cloud’. This implies that there is a huge possibility that the consumer base of the ZEST
brand of orange-based cookies is likely to get increased because of the extensive

25
(1992) 1 SCC 719.
26
Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel and Ors., (2006) SC 3725.

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Written Submission on behalf of the Appellant
 advertisement. But if an interim injunction is not granted then all the positive
consequences of the advertisements is likely to get dissolved.
20. Another irreparable damage that can be said to occur, if the injunction is not granted,
is ‘Dilution of Appellant’s goodwill’. It was acknowledged in the case of Taittinger v.
Allbev27. In that case it was held:
“If there is an erosion or debasement of the uniqueness associated with a party’s
product it is a ‘dilution of its goodwill’ and is irreparable in nature”.
This occurs when the Respondent’s misrepresentation causes the Appellant sign to
become familiar or commonplace and as a result falters the ability of the mark to
summon up consumers. It is submitted that the idea of cheeriness has been associated
with ZEST from a very long period of time. It is one of the most important elements
that helps ZEST in building up its consumer base in Isengard. After ZEST’s association
of cheeriness with ‘Happy Cloud’, the consumers started associating the idea of
cheeriness with ‘Happy Cloud’. If the injunction is not granted it would lead to dilution
of the idea of cheeriness of ZEST and would affect its well established goodwill.
Although the monetary loss could be quantifiable and reparable but the damage in
goodwill is irreparable and affects the Appellant in a long term.

II. Whether ‘Mr. Columbus’ adopted by the Respondent is an imitation of the

Appellant’s ‘Happy Cloud’ on its packaging of biscuits and cookies?
21. For the success of the claim against passing-off, the Appellant has to pass the classical
trinity test. This test was first used in the case of Perry v. Truefitt28 and was later upheld

27
(1993) FSR 641.
28
(1842) 6 Beav. 66.
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Written Submission on behalf of the Appellant
 in the landmark case of Reckitt & Colman Products Ltd. v. Bordan Inc. & Ors.29. The
test requires the Appellant to prove the presence of three elements in the acts of the
Respondent: (a) that the Appellant had acquired a reputation or goodwill in his goods,
name or mark; (b) that there was a misrepresentation, whether intentional or
unintentional, which was done by the Respondent by the use of mark of the Appellant
or by any other means; and (c) that the plaintiff has already suffered damage or is likely
to suffer damage due to such misrepresentation.  This test was later upheld by the
Supreme Court of India and further applied it in the case of Laxmikant Patel v.
Chetanbhat Shah30. 
22. In Delhi Public School Society v. DPS World Foundation & Ors. 31, the Supreme
Court by applying the classic trinity test restrained the DPS World Foundation from
using the marks ‘DPS’, ‘Delhi Public School’ and its logo. The Delhi Public School
Society runs schools under the name ‘Delhi Public School’ since 1948. Its logo, a
registered trademark, which it has been used since 1948, comprising of a hand holding
a torch, the school motto, “Service before Self” and the words “Delhi Public
School” written inside a shield. The Appellant became aware of the Respondent’s
conflicting mark and filed a suit against DPS World Foundation for passing off. The
logo used by Respondent was based on similar color scheme and comprising of a
similar torch as the Appellant’s. In the given factual matrix, ‘Mr. Columbus’ is based
on a similar scheme (blue) and comprises a similar smiling expression as the
Appellant’s mark.
i. That the consumers had started associating ‘Happy Cloud’ with its ‘ZEST’ brand
of cookies.
23. In the case of Star Industrial Company Ltd. v. Yap Kwee Kor32, the Privy Council
defined the tort of passing-off as:
“Being the invasion of a right of property in goodwill or business and that goodwill
cannot exist independently of a business”.
24. It is clear that the gist of a passing-off action is the goodwill and reputation which is
sought to be protected and thereby misrepresentation is prevented in the course of trade.
It is altogether a different matter that misrepresentation may include the use of mark in
the course of trade and the ultimate effect of a passing-off action in most of the cases is
29
Supra note 4.
30
(2002) AIR SC 275.
31
(2018) CS 154 IA 6764.
32
(1976) FSR 256.
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Written Submission on behalf of the Appellant
 the protection of the trademark anyway, but the heart and soul of the passing-off action
has always been the protection of goodwill and reputation aimed at to prevent
misrepresentation33.
25. The owner of the goodwill has a property right that can be protected by an action in
case of passing-off. Buckley LJ in case of Brinsmead v. Brinsmead34, described the
nature of the proprietary right as:
“A man who engages in commercial activities may acquire a valuable reputation in
respect of the goods in which he deals, or of the services which he performs, or of his
business as an entity. The law regards such a reputation as an incorporeal piece of
property, the integrity of which the owner is entitled to protect”.
Therefore, in a passing off action, commercial goodwill or business reputation should
not be exploited. The Appellant has to establish that his/her business or goods have
acquired the reputation which he/she is claiming, by showing that his/her trade name
has become distinctive of his/her goods and the purchasing public at large, associates
the Appellant’s name with them.
26. Lord Macnaghten gave a useful definition of goodwill in Commissioners of Inland
Revenue v. Muller & Co.’s Margarine Ltd.35, wherein he stated:
“What is goodwill? It is a thing very easy to describe, very difficult to define. It is the
benefit and advantage of the good name, reputation, and connection with a business. It
is the attractive force which begins with custom. It is the one thing which distinguishes
an old-established business from a new business at its first start. The goodwill of a
business must emanate from a particular centre or source. However widely extended or
diffused its influence may be, goodwill is worth nothing unless it has the power of
attraction sufficient to bring customers home to the source from which it emanates.”
27. In the given factual matrix, the Appellant is a leading confectionary which has been
established more than 70 years ago. It has more than 5.5 million retail outlets and
reaches over half the population of Isengard. It has a revenue of over 10,000 crores and
earns about 6,500 crores from the sale of cookies and biscuits 36. Clearly, it has a high
reputation and build among the population of Isengard and customers recognize it

33
Mind Gym Ltd. v. Mind Gym Kids Library Pvt. Ltd. (2013) 55 PTC 417.
34
(1913) 30 RPC 493.
35
(1901) AC 217.
36
Facts on Record, ¶ 1.
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Written Submission on behalf of the Appellant
 through its name, brand and logo.  Moreover, consumers had started associating the
concept of cheeriness pictorially depicted by the ‘Happy Cloud’ with ‘ZEST’37.
28. Passing off action is an action in common law which is essentially the protection of
goodwill and reputation which the person has created by virtue of carrying out of
business activities under a particular name and style or under a brand name for that
matter and the said action is an action in deceit which is to prevent any
misrepresentation caused amongst public. It is established that the brand ‘ZEST’ holds
high esteem and prestige in the eyes of the Isengard population and any other firm
trying to pass off its good as the Appellant’s, would seriously injure the goodwill and
reputation acquired by the Appellant in the last 70 years.
ii. That the adoption of ‘Mr. Columbus’ by the Respondent made a false
representation and conveyed an association with the Appellant’s ‘Happy Cloud’.
29. The Supreme Court in the Wockhardt Ltd. v. Torrent Pharmaceuticals & Anr38, in
consonance with the approach of the Bombay High Court, reaffirmed that the intention
to defraud or deceive, or mensrea, should not be considered to analyse
misrepresentation in a matter of passing-off. The Supreme Court upheld the position
taken by the Bombay High Court that, Wockhardt Ltd. should be made liable in an
action of passing-off, even though it did not have the intention to deceive or
misrepresent its products as those sold by Torrent Pharmaceuticals Ltd. Relying on the
Laxmikant judgement39, it held that:
“Though passing off is, in essence, an action based on deceit, fraud is not a necessary
element of a right of action, and that the defendant’s state of mind is wholly irrelevant
to the existence of a cause of action for passing off, if otherwise the defendant has
imitated or adopted the plaintiff’s mark.”
30. While granting injunction for using the trademark “Horlicks”, the Delhi High Court
in Horlicks Ltd. v. Bimal Khamrai40, held that:
“The use of the offending mark by the defendants appears to be a flagrant and blatant
attempt on the part of the defendants to imitate the plaintiffs' trade mark with a view to
deceive the unwary purchasers and exploit and encash on their goodwill in order to
pass off their products as that of the plaintiffs. The law does not permit any one to
carry on his business in such a way as would persuade the customers in believing that
37
Facts on Record, ¶ 14.
38
(2018) AIR SC 5106.
39
Supra note 30.
40
(2003) 26 PTC 241 (Delhi).
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Written Submission on behalf of the Appellant
 the goods belonging to someone else are his or are associated therewith. It is wholly
irrelevant whether the latter person does it fraudulently or otherwise. Where there is
probability of confusion in business, an injunction will be granted even though the
defendants adopted the name innocently.”
31. In Mahashian Di Hatti Ltd v. Raj Niwas41, Proprietor of MHS Masalay, the plaintiff
claimed that the Respondent's use of the logo "MHS" was done with the sole intention
of passing off their goods as those of the Appellant's, who sold their products under the
"MDH" mark, which amounted to not only infringement of its registered trademark but
also passing off the goods. The Appellant’s trademark consisted of three identical
hexagons placed beside each other, each containing one of the letters 'MDH'. The
Respondent's mark differs from the Appellant's in that the hexagon instead of the letters
"MDH" contains the letters "MHS" and in all other aspects it is similar. The Court held
that the visual similarities between the two was strong enough to not permit the
Respondent from using the logo. Also, it was noted that both the parties were engaged
in similar businesses. The court thus restrained the Respondent from manufacturing,
selling or marketing any spices or condiments under the logo "MHS”. The court held
that such misrepresentation is likely to confuse both the parties engaged, as both of
them are manufacturing and selling spices. The adoption and use of the letters "MHS"
in the manner was deceptive intended to confuse the consumer and encash upon the
goodwill which the Appellant's trademark enjoyed in the market.
32. From the abovementioned cases, it is clear that intention does not hold any relevance
in a passing off action where one party has imitated and tried to pass off their good as
other’s. In the given factual matrix, the fact that the Respondent imitated and developed
their mark, ‘Mr. Columbus’ deceptively similar to the Appellant’s ‘Happy Cloud’ is in
itself sufficient to hold them liable. The Respondent’s logo which is based on a cloud
with blue scheme colours clearly attempts to misrepresent and confuse the buyer.
Moreover, the Appellant has been using the smile on the logo to associate the idea of
cheeriness with their brand ‘ZEST’ since cheeriness has served as the ethos of the brand
and its pitch has been to spread cheeriness. BPPL’s logo which has a similar smile
clearly confuses the buyer due to overall resemblance in shape, colour and feature.
iii. That the Appellant is likely to suffer injuries as a result of this misrepresentation.
33. The final element which needs to be established to prove passing-off is to show that
the claimant has suffered damage, or is likely to suffer damage to his goodwill. This
41
(2011) 46 PTC 343 (Delhi).
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Written Submission on behalf of the Appellant
 damage must arise from the reliance of the Respondent's misrepresentation and can
arise in a number of ways: (1) The first and most obvious instance is where the
claimant has lost sales as a result of the Respondent's misrepresentation. However,
damage can also occur as a result of dilution to the Appellant's goodwill, such as, for
example, due to the inferior nature of the Respondent's goods or their reputation.
34. In Larsen & Toubro Ltd. v. Lakshmi Industries & Ors.42, the Defendant adopted a
phonetically identical and structurally similar mark to the Plaintiff’s ‘L&T’ logo, which
includes the letters 'L' and 'T' put together, the letter 'L' placed little above the left side
of the letter 'T' and put inside a full circle. The court held that where an individual or a
business creates and uses a distinctive mark with which its goods and services are
associated, and becomes so intrinsically associated with the product and its quality that
it denotes a reputation which the consumer expects of the products, if such marks are
copied by others it may result in dilution of brand and consequential reputation, thereby
resulting in injury to the trademark owner43. In the given matter, it is clear that
consumers had started associating the idea of cheeriness depicted by ‘Happy
Cloud’ with ZEST.
35. In PepsiCo, Inc. v. C.R. Associates44, it was held that the Defendants' label, mark and
logo "AQUALENA" was visually and deceptively similar to that of the plaintiffs' mark
"AQUAFINA and the defendants had adopted the aforesaid mark "AQUALENA" for
packaging their drinking water. The defendants had imitated the logo of the plaintiff
which included AQUAFINA written in a stylized font, in white, on a blue colour
background with the first and last letters being taller and more elongated than the other
letters and was extremely unique and distinctive.
36. In PepsiCo, Inc. and Ors. v. PSI Ganesh Marketing and Ors. 45, where the Delhi High
Court held that the defendant’s mark is deceptively similar to the plaintiff’s trademark,
the court noted that the use of the word "AQUA FIES" by the defendants is likely to
dilute the distinctive character of the plaintiffs' trademark "AQUAFINA" and the same
is likely to erode the goodwill and reputation of the plaintiffs among its existing as well
as potential customers in the market. The adoption and use of the identical trademark
by the defendants in relation to identical products amounts to an infringement of the
plaintiffs' statutory rights. 
42
(2007) 1 SCC 214.
43
Ibid.
44
(1998) AIR 4 SC 198.
45
(2014) 59 PTC 275 (Delhi).
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Written Submission on behalf of the Appellant
 37. In the above-mentioned cases, we see that whenever there has been a
misrepresentation by the Respondent via a deceptive similarity between the Appellant’s
and Respondent’s mark, the courts have held that such similarity might lead to
confusion among the buyers and this would seriously injure the Appellant’s right and
likely to lead to a loss of repute and business. In the given matter, we see that the
Appellant is a brand which has been enjoying a repute of about 50 years for its orange
cookies. Moreover, its logo ‘Happy Cloud’ has become popular among the Isengard
population and the people associate the idea of cheeriness with it as strived by the
Appellant. Moreover, the Appellant has engaged celebrities like Walia Bhatt to endorse
its product and spent more than 300 crores in promoting its brand through conventional
forms of media as well as through social media. In such circumstance if the Respondent
is not restrained from imitating ‘Happy Cloud’ in form of its mark ‘Mr. Columbus’, the
this might lead to a serious loss of business and repute to the Appellant and all the
money it has spent on advertising would become a waste.

PRAYER

Wherefore, in the light of the facts stated, cases cited, issues raised, arguments advanced and
authorities cited, it is most humbly prayed and implored before this Hon’ble High Court of
Isengard, that it may be graciously pleased to adjudge and declare that:

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Written Submission on behalf of the Appellant
1. The trade dress adopted by the Respondent on its ‘ZEAL’ brand of biscuits and cookies is
deceptively similar to the trade dress of the Petitioner’s ‘ZEST’ brand of orange cookies.
2. ‘Mr. Columbus’ adopted by the Respondent is an imitation of the Petitioner’s ‘Happy
Cloud’ on its packaging of biscuits and cookies.
3. The Respondent should stop using its current trade dress for its ‘ZEAL’ brand of biscuits
and cookies.

And pass any such order, or direction as the Hon’ble Court deems fit and proper, for this the
Appellant shall duty bound pray.

All of which is Respectfully Submitted

---------------------------------
---------------------------------
Counsel on behalf of Archer Industries Limited

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Written Submission on behalf of the Appellant