Deceptively similar packaging and related issues are on the rise these days. Herein according to the present system, mostly when the original user comes across products identical to his in the market either being passed off as the original or in deceptively similar packages he approaches the court and tries protecting his Intellectual Property rights. But given the intricacies of enforcing orders it requires the original user to be ever vigilant.

In this regard the recent judgment in Bombay Metal Works (P) Ltd. v. Tara Singh and Ors. 2006(33) PTC 63 (Bom.) (DB) may be referred to. This is an appeal against the order of the learned single judge dated 29.03.2006. The said order discharged the respondents from notice of contempt and virtually reviewed the injunction order dated 12.02.2002.

As per the order dated 12.02.2002, the respondents were restrained from manufacturing, selling, or offering to sale, advertising, directly or indirectly dealing in cycle parts under the impugned Ball Head Racers and Screw Head Racer or any other packaging which could be deceptively similar with or substantial reproduction of Ball Head Racers and Screw Head Racer till the disposal of the suit. Despite the said injunction, respondent no.1 continued selling and manufacturing goods in injuncted cartons from 2002 onwards in flagrant violation of the order dated 12.02.2002 as well as orders dated 20.12.002, 21.03.003 and 30.4.2003. Aggrieved by this, the appellants filed an application under section 2(a), 11 and 12 of the Contempt of Court Act before the learned single judge. However, the learned single judge, vide order dated 29.3.2006, absolved the respondents of any such charge and further gave a finding that impugned packaging of the respondents is not deceptively similar to that of the appellant's.

The parties had virtually settled their disputes regarding use of packaging cartons for marketing their respective products in the abovementioned orders. In the order dated 20.12.002 respondents agreed to change the color combination and packaging from black background to blue and from orange boundaries to any other color. The Court also prescribed the change of letterings of infringing packaging. The subsequent order dated 21.3.2003 was with regard to non-compliance to the order-dated 12.2.2002. Thereby the respondents were restrained from manufacturing, selling, or offering to sale, advertising, directly or indirectly dealing in cycle parts under the impugned Ball Head Racers and Screw Racer packaging or any other packaging which could be deceptively similar with or substantial reproduction of Ball Head Racer and Screw Head Racer packaging of plaintiff till disposal of the suit. Pursuant to the order dated 20.12.02 the respondents had carried out certain changes in their packaging.

The grievance of the petitioner was against the red packaging. The petitioners as well as the respondents had the Ball Head Racers in red packaging and the packages were usually stacked sideways and both used the same words, namely, Ball Head Racers, 10 sets, 'set of three' on the side of their respective packaging. Considering this visual similarity, especially size and shape and the fact that the consumers of the products are bicycle owners there was a strong likelihood of deception.

The respondents, after arguments had consented to put the same three circles of the product as shown in white in space in front of the carton on the sides also, which would make a distinguishing feature from that of the petitioner's product. Accordingly, the respondents were given 50 days to comply with this. However, it was later submitted that shifting the three rings in compliance to the earlier order is impossible and the same was included in the order dated 30.04.2003. Hence, the learned counsel for respondents suggested that they would rather get the logo 'Rajis' shifted to the extreme right side and Ball Head Racer on the left and in between the space, would have the three small circles. Counsel for the plaintiff agreed to this. The respondents also proposed to do the same modification with regard to the packaging in blue color.

Allowing the appeal, the Court came to the finding that, in spite of the agreements to change the color scheme and design in the interim orders, reference to appeal paper book showed a prima facie breach of the interim injunctions. The Court held that the respondents are estopped from acting contrary to their prior undertakings. And they were also therefore restrained to market their products Ball Head Racers and Screw Head Racers in packaging deceptively similar to the packaging of the appellant till the suit was pending.

The instant case is yet another addition to the catena of decisions in the area of deceptive similarity. Sure this shows a positive trend from the part of a vigilant judiciary trying to curb the menace but an increase in cases in the area also calls for the need for a mechanism that would help identify and check the issue at an earlier stage effectively.