G.S. Patel JUDGMENT
G.S. Patel, J.
1. First, mea culpa: I heard Counsel on both sides at some length almost a year ago. I reserved judgment. Other matters intervened since, and I somehow lost sight of this case. That is no excuse, nor do I seek to make it one. I can only request parties and their advocates to forgive me this lapse.
A. BACKGROUND
2. The suit is an action in trade mark and copyright infringement combined with a cause of action in passing off. The Plaintiff ("ITC") took an ex parte ad-interim order on 7th May 2014. That order included reliefs in passing off. ITC filed an application for leave under Clause XIV of the Letters Patent only thereafter. This was opposed. For reasons not immediately germane, the ad-interim order was, by consent, vacated on 17th July 2014. The present application is therefore limited to the cause of action in infringement of both trade mark and copyright.
3. ITC claims copyright in an artistic work being a label "GOLD FLAKE KINGS RED", a reproduction of which is provided.1 It says that this copyright has been infringed by the Defendant ("NTC") in its use of a rival mark "GOLD FLAKE".2 In addition, ITC says it is the registered owner of the trade marks "GOLD FLAKE", "HONEY DEW" and "HONEY DEW SMOOTH". Copies of the registrations of each are annexed.3 These, ITC claims, have been infringed by NTC inter alia by using rival marks "GOLD FLAKE" and "HONEY DROP". All of this is of course in the context of cigarettes and tobacco products.
4. I heard Mr. Kadam for ITC and Mr. Dwarkadas for NTC extensively and, with their assistance, considered the material on record. Both sides presented detailed notes of arguments, which I took on record. Mr. Dwarkadas's submissions, which I will consider in detail later in this judgment, were that ITC is guilty of material suppression, especially in relation to prior user by other manufacturers and traders; that ITC's conduct lacks all bona fides; that there is delay amounting to laches and acquiescence on ITC's part; and that in any case the so-called mark "HONEY DROP" is purely descriptive and no question of infringement arises. Mr. Dwarkadas was at some pains to point to the prior history of registrations by others of the "GOLD FLAKE" mark. He also said that the rival label was not a sufficiently substantial reproduction of ITC's label to warrant an injunction in copyright infringement. It is true that there is something of a history to at least one of these marks ("GOLD FLAKE"), one that goes back several decades, but I am unable to agree with Mr. Dwarkadas that the defence is enough to defeat ITC's claim. There is, I find, material on record that points to a persistent course of conduct by NTC in too closely adopting marks of others, not just ITC, and that shows that NTC has done this not once, which might have been merely happenstance, but far too often to be either that or coincidence. For the reasons that follow, I have granted the injunctions sought.
B. ITC'S REGISTRATIONS AND USE OF THE TRADE MARKS
5. ITC itself has been in the tobacco business for over a century. It claims that its predecessors-in-title conceived and adopted a distinctive mark, "GOLD FLAKE", in relation to cigarettes some time in 1910. This is now registered as a word mark. It has also been using the mark "HONEY DEW" since about that time. ITC says its earliest registration of the "GOLD FLAKE" mark dates back to 11th November 1942.4 It is not only the mark but also other essential features to which ITC lays claim: the device of a star in red; the gold, black and red colour scheme and so on.5 The Plaintiff is also the re........