Oral Judgment:
1. Leave to amend the Notice of Motion in terms of the draft amendment tendered, taken on record and marked X for identification. Amendment to be carried out forthwith, without need of re-verification. Mr. Khandekar waives service of the amended Notice of Motion.
2. I have before me on my desk two plastic containers. One is manufactured by the Plaintiffs. The other is manufactured by the Defendants. There is a difference in colour: the one in lighter pink is manufactured by the Plaintiffs. The one in a darker hue, closer to purple, is manufactured by the Defendants.
3. The question in this Notice of Motion for interim relief in an action in infringement and passing off under the Designs Act, 2000, is whether the Defendant s product infringes the Plaintiffs registered design.
4. I must state straight away that, though this is perhaps oversimplified, to the threshold question of whether these products have any appeal, one that is to be judged solely by the eye, the answer must be an unqualified yes.
5. There is then, of course, the question of similarity, and when I asked Dr. Saraf for the Plaintiffs which container is whose, he responded, and I think quite correctly, by saying that that is the entirety of his case on deceptive similarity.
6. I have before me both products side by side. This is a somewhat peculiar circumstance. This juxtaposed comparison is not one that is favoured or approved in trade mark or design law. I believe the settled position is that one must look to the product (or in the case of trade marks, the mark) as a whole and assess the overall impression that it conveys. In the case of a trade mark, one must also look to see if there is a certain memorable feature that one lingers in memory. This is because it very often happens that consumers do not have the benefit of seeing both products set one next to the other. I imagine much the same is true as a general principle in cases under the Designs Act, 2000. There may, however, be a slight difference in reality or in actual practice, in that that vendors or shopkeepers may often display products from more than one source next to each other. In a situation like this, I should not at all be surprised to find both the Plaintiffs and the Defendant s products being sold at the same shop or outlet. If that is ever so, then I imagine it would be very difficult indeed to tell them apart.
7. There remains the question of novelty, a term that conflates the concepts of new and original, both used in the statute. A considerable amount of the arguments in this matter centred around this, with Mr. Khandekar for the Defendant insisting that the Plaintiffs design lacks all novelty; it is neither new nor original, he says. Both sides referred to a great deal of learning on this aspect. I will turn to the rival submissions shortly.
8. I should, however, state that on all three aspects appeal, similarity and novelty I have found for the Plaintiffs and against the Defendants. I have granted the injunctions sought.
9. To begin with, a description of these items. I will start with the Plaintiffs container. This is a plastic container, a round box or jar, about three or four inches in height. The article is cylindrical. The height appears to be immaterial, because the Plaintiffs make similar containers of varying height (or depth). The lower portion has a ring so that the main cylinder is slightly lifted off its resting surface. The container also features an airtight rubber-seal. The clear plastic lid seems to have at least two concentric circles. It is a very snug fit. The top lip of the container and a portion of varying depth beneath it, ranging from around half inch to one inch, is a white wave-form band, the lower edge forming a sort of lazy sinusoidal curve. This is not something either painted or applied to the surface of Plaintiff s container. This sine-waved element appears to have been moulded or fused into the lower pink plastic cylinder. This means, necessarily, that the top of the cylinder, or its mouth is itself an inverted wave-form so that the white element is then, in the process of production, moulded or fused into it to form one mass. It is not possible to separate the white and the pink portions. This is what it looks like.
10. The Defendant s product is actually quite similar. I am unable to tell apart its dimensions from those of the Plaintiffs container, but that may not be material for our purposes. The lid itself is almost the same as well. Here, too, there is a lower ring at the very bottom which lifts the cylinder off slightly. The Defendant s container also has a wave-form. To be certain, this is not an exact copy or reproduction of the sine-wave-form that one finds in the Plaintiffs container. I notice, too, that the production quality of the Defendant s product is not nearly as accomplished as that of the Plaintiffs . On at least one side, there is a distinct chipping of the dark purple/pink portion, and the fit or mould is not as seamless. The following image of the Defendant s product is not nearly as clear, but it should do:
Plaintiffs Product (in red)
Irish Smart
11. The Plaintiffs have a registered design for this container. This was registered on 25th September 2013 under No. 256745 in Class 07-01. The lid was separately registered on 12th September 2011 under No. 241396 in Class 07-01. In November 2011, the 1st Plaintiff conceived and adopted this distinctive shape, configuration and novel pattern for the lid of the silicon ring around it. This provides the airtight seal. At about the same time, the Plaintiffs also conceived and adopted a distinguished shape, configuration and novel pattern for a bowl, fabricating it by a process of insert moulding. I understand this to mean that the white portion that I have described above is actually inserted into the lower pink receptacle. This design too was registered under 241397 in Class 07-01. In April 2013, the 1st Plaintiff licensed the 2nd Plaintiff to use the copyright in the design of the lid and this bowl.
Defendant s Container
12. The Plaintiffs thus claim that the 1st Plaintiff is a registered proprietor of the copyright in the design of the lid as well as the bowl, and the 2nd Plaintiff is a registered proprietor of the copyright in the design of the container and is a permitted user of the lid and the bowl. The Plaintiffs claim that they began production and introduced the product into the market in September 2013.
13. The 2nd Plaintiff manufactures, markets and sells its products under the trade mark BOTVEL CORP. Since October 2013, the container and lid are manufactured, marketed and sold under the sub-brand or trade mark IRISH SMART. The container itself comes in various sizes. These are shown at page 56. This page shows that there is a container of smaller height (500 ml), a slighter larger one of 850 ml the present one I am looking at and finally a taller one of 1200 ml. There is apparently a fourth set of small ones can be used on a tray.
14. The Plaintiffs also claim that they have by virtue of continuous, extensive and open user and considerable sales acquired extensive reputation and goodwill in the trade. This product, they say, is now associated exclusively with the Plaintiffs. There are annexed to the Plaint a certified statement of sales figures and sample invoices, as also promotional material. I will return to this a little later in this judgment.
15. The Plaintiffs say that in January 2016 they came across the Defendant s product which is sold under the trade mark OPI with a sub-trade mark NINJA. The complaint is that the Defendant s product is indistinguishable from that of the Plaintiffs and that the Defendants have thus not only infringed the Plaintiffs copyright in their design but have also sought to pass off the Defendant s product as that of the Plaintiffs. It is on this basis that the Plaintiffs seek relief in injunction in both infringement and passing off.
16. Annexed to the Plaint are the necessary documents. There are, of course, the necessary registrations of the lid, (Plaint, Exhibit A , pp. 31 37.)the bowl (Plaint, Exhibit B , pp. 38 44)and of the container (Plaint, Exhibit C , pp. 45 55).Certified statements of sales (Plaint, Exhibit D , p. 56) show sales from 2013 2014 to 2015 2016 for each of the four products that are shown in a tabulation as the product and against it the sales for that product. Common to all these four products is the design that is the subject matter of this action, i.e., the airtight lid and the lower cylinder with its sinusoidal wave-form.
17. There are also certain variations, i.e., the same product but with imprinted designs of leaves or other pictographs. Some samples are shown along with sales figures at Exhibit G to Plaint (Plaint, Exhibit G , p. 90).
The Plaint then shows several images of the Plaintiffs and the Defendant s products side by side (or more accurately above and below) seen from different perspectives (Plaint, Exhibits H1 to H5 , pp. 91 95).
18. On 5th January 2016, the Plaintiffs Advocates sent a cease and desist notice to the Defendants (Plaint, Exhibit I , pp. 96 101).The Defendants Advocates replied on 14th January 2016 (Plaint, Exhibit J , pp. 102 103).In this reply, the Defendants Advocates state that the Defendants product was visually, structurally and of different dimensions; that there was no similarity between the two and that the Plaintiffs registration was for a completely different design.
19. The Suit was brought a few months later. This Notice of Motion was filed for interim reliefs. There was an Affidavit in Reply and an Affidavit in Rejoinder. In addition, Mr. Khandekar for the Defendants has tendered a compilation.
20. I propose first to consider relevant portions of the Designs Act before proceeding to the rival submissions. I do so because very many things have been argued at the Bar. Ultimately, these must fit within the framework of the statute.
21. The Designs Act, 2000 contains the following definitions.
2. Definitions. In this Act, unless there is anything repugnant in the subject or context,-
(a) article means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately;
(d) design means only the features of shape, configuration, pattern, ornament or composition of lines of colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of subsection (1) of section 2 of the Trade an Merchandise Marks Ac, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957);
g) original , in relation to a design, means originating from the author of such design and includes the cases which though old in themselves yet are new in their application;
(Emphasis added)
22. The definition of a design under Section 2(d) is restrictive: it tells us what the word design means; it does not tell us that this definition is inclusive. The definition itself has four facets. The first is that it relates to features of shape, configuration, pattern, ornament or composition of lines or colours. The second is that these must be applied to an article (separately defined) and that this application may be in two-dimensional or three-dimensional or both forms. The third is that this application must be by an industrial process or means, and this process or means may be manual, mechanical or chemical, either separate or combined. The final aspect is that in the finished article, these features mentioned earlier, as applied by the defined process, must have, and have only, a visual appeal. To put it in another way, these four constituents seem to suggest four different questions, all interlinked:- (i) What is being applied? (ii) To what is it being applied (viz., what is the article)? (iii) How is it being applied? and (iv) What is the resultant effect of this application? Is it visually appealing or not?
23. Importantly, the definition has exclusions. The most important of these perhaps is that it excludes any mode or principal of construction or anything else merely mechanical. It also excludes a trade mark under the Trade Marks Act, 1999, a property mark defined in the Indian Penal Code, 1860, or an artistic work under the Copyright Act, 1957. Read together this means that a design must be something that is fanciful, purely a matter of form, never a matter of function (although conceivably there may be a functional element which has form). It must, in the words of settled law, be something that is capricious . Whether or not the words shape, configuration, pattern, ornament, composition are distinct elements or can be interchangeably used is a matter that also falls for consideration.
24. Sections 4, 11, 19 and 22 of the Designs Act, 2000 read as follows:
4. Prohibition of registration of certain designs.
A design which
(a) is not new or original; or
(b) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or
(c) is not significantly distinguishable from known designs or combination of known designs; or
(d) comprises or contains scandalous or obscene matter, shall not be registered.
11. Copyright on registration.
(1) When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration.
(2) If, before the expiration of the said ten years, application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the period of copyright for a second period of five years from the expiration of the original period of ten years.
19. Cancellation of registration.
(1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:-
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country prior to the date of registration; or
(c) that the design is not a new or original design; or
(d) that the design is not registrable under this Act; or
(e) that it is not a design as defined under clause (d) of section 2.
(2) An appeal shall lie from any order of the Controller under this section to the High Court, and the Controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred.
22. Piracy of registered design.
(1) During the existence of copyright in any design it shall not be lawful for any person.
(a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or
(b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or
(c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.
(2) If any person acts in contravention of this section, he shall be liable for every contravention
(a) to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt, or
(b) if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly:
Provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed fifty thousand rupees:
Provided further that no suit or any other proceeding for relief under this sub-section shall be instituted in any court below the court of District Judge.
(3) In any suit or any other proceeding for relief under sub-section (2), every ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence.
(4) Notwithstanding anything contained in the second proviso to sub-section (2), where any ground on which the registration of a design may be cancelled under section 19 has been availed of as a ground of defence and sub-section (3) in any suit or other proceeding for relief under sub-section (2), the suit or such other proceeding shall be transferred by the court, in which the suit or other proceeding is pending, to the High Court for decision.
(5) When the court makes a decree in a suit under sub-section (2), it shall send a copy of the decree to the Controller, who shall cause an entry thereof to be made in the register of designs.
25. Dr. Saraf is correct in saying that Sections 4 and 19 are counterparts. Section 4 speaks of a design that may not be registered. Leaving aside the fourth element in Section 4, the first three are important. The first prohibition, of course, is that to proceed to a registration a design must be new and original. Second, it must not have been previously disclosed in India or anywhere else prior to the filing date or the priority date. Third, it must be unknown to the prior art and must be significantly distinguishable from existing known designs.
26. The Act does not to use the words novel or novelty , although these expressions are much used in the decisions under the Designs Act, 2000. The Act speaks of designs that are new and original, and the word novelty will have to be understood, therefore, in context and according to its plain meaning. The word new obviously means not in existence before. Originality speaks to an element of creativity. Novelty is a term that embraces both: something that is new and original is novel.
27. The reference to Section 19 is important, and it does form a significant part of Mr. Khandekar s case. This sets out the various grounds on which a registration may be cancelled and Mr. Khandekar has been at some pains to point out that each of those grounds are available to him in these very proceedings before me in view of the expressed wording of Section 22(3). This is undoubtedly a correct reading of the statutory provisions.
28. The defences may be summarised thus:
(a) There is no novelty of any kind in the Plaintiffs design.
(b) The Plaintiffs have registration only for a shape and configuration and the wave-form is simply ornamentation .
(c) There are a very large number of others who used identical and indistinguishable designs.
(d) There are other registrations as well.
(e) No case is made out in passing off because the Plaintiffs sales are insignificant.
(f) The Defendant too has a registration and the design for which the Defendant has a registration, one that precedes the Plaintiffs registration, is otherwise indistinguishable.
(g) If the Plaintiffs claim a priority date of 13th October 2014, they must show goodwill and reputation as on that date, which they have not.
There is a final argument that is not seriously pressed, but which I note in passing, viz., that the rival packages are different.
29. Dr. Saraf points out that as to the question of novelty, or the lack of it, the answers are straightforward. The first is that the Plaintiffs have a registration, one that subsists even today. Second, that there is no material on record to show that there was anybody with a design either in India or elsewhere of the kind over which the Plaintiffs claim proprietary rights. He points out that what the Plaintiffs have done is to fuse or mould the white wave-form portion into the lower receptacle to achieve the desired new and original result. The Defendant refers to others in the market. But these, Dr. Saraf points out, are all after the date when the Plaintiffs entered the market. There is no material to show use by any person prior to the relevant date of October 2014. If the Defendant contends that there are others that are similar, it must establish that these are prior to the date of the Plaintiffs adoption of the design and entering the market. All that the Defendant shows, he submits, is other designs that are completely different from those of the Plaintiffs. The ones that are similar to the Plaintiffs (Notice of Motion paperbook, Exhibit D , pp. 75 78)are all of subsequent dates. Similarly, when the Defendant refers to other registrants of designs, it is unable to show any similarity between those registrations and that of the Plaintiffs. The Defendant s own registration is not comparable, and its assertion in sub-paragraph 4.2(iii) (Notice of Motion Paperbook, p. 17)of the Affidavit in Reply that it is the a registered proprietor of this wave design prior to the Plaintiffs commencing manufacture is incorrect. Further, the Defendant s own sales are negligible. The invoices are in low amounts (Notice of Motion Paperbook, pp. 98 142).The sales figures are unimpressive (Notice of Motion Paperbook, p. 143).They are for the period from November 2014 to March 2015 and show sales of about Rs. 3,50,000/-. This is to be compared to the Plaintiffs sales figures (Plaint, Exhibit D , p. 56)for almost the same period, in the aggregate of about Rs. 19 lakhs.
30. Mr. Khandekar s opposition to this is on distinct grounds. He begins by saying that the design itself was not registrable. It is not a design at all. It falls foul of Section 19. This furnishes the Defendant a sufficient ground not only for opposing this Notice of Motion but also for seeking a cancellation of the design registration. If the definition of a design under the Designs Act, 2000 is restrictive because it uses the words means only , and this definition includes ornamentation, then, in his submission, the Plaintiffs have claimed no registration or rights in the ornamentation. Their only claim is in the shape and the configuration, and this wave-form is nothing but ornamentation: it is neither shape nor configuration . There is no claim made in regard to the design of the lid. The only claim as pressed before the Court, Mr. Khandekar submits, is for what is nothing more than the purest ornamentation, viz., the wave-form ornamentation at the top of the container.
31. In any case, he says, this is neither original nor new. It is a variant, and a very minor variant at that, of something that is well-known to the trade, and has been well-known to the trade for a very long time. He points to the Plaintiffs registration (Plaint, Exhibit C , p. 48.)and emphasizes that the registration certificate itself shows that the Plaintiffs own claim is only as to shape and configuration . In paragraphs 8 and 9 of the Plaint, the assertion made is this:
8. In January, 2016 the Plaintiffs came across the product of the Defendant comprising of the container with lid sold under the trade mark OPI and the sub-trade mark NINJA (hereinafter referred to as the impugned product ). The Plaintiffs state that the design of the container and the lid of the impugned product are identical and/or colour imitation of the Plaintiffs said container and said lid respectively (hereinafter referred to as the impugned design ). Similar to the said container the container of the impugned product is circular in shape with round edges at the bottom and circular shaped support underneath the container (hereinafter referred to as the impugned container). The colour combination of the impugned container is segregated by curvy lines at top of outer surface of the same like the said container. Further, the configuration, shape and pattern of lid of the impugned container is similar to the said lid particularly the silicon ring to keep the container air tight (hereinafter referred to as the impugned lid ). Hereto annexed and marked Exhibit- H-1 to H-5 are the coloured photographs of the impugned products in comparison of the said product. The Plaintiffs crave leave to refer to and rely upon the impugned product, when product.
9. The Plaintiffs are vigilant about their rights in respect of the said container and the said lid. In order to safe-guard the said rights, the Plaintiffs through their Advocates issued notice dated 5th January 2016 to the Defendant for ceasing and desisting from manufacturing, marketing and/or selling the impugned products and/or impugned container and/or impugned lid and/or any other container and/or lid identical to the said product and/or said container and/or said lid. Hereto annexed and marked as Exhibit I is a copy of the said notice dated 5th January 2016. In reply to the said notice the Defendant through their Advocate s letter dated 14th January 2016 denied all the contents of the said notice and stated that they have not attempted to misappropriate the Plaintiffs design either. The Defendant further contended that the Plaintiffs can not claim exclusive rights on universal shapes and sizes. The Plaintiffs submits that the novelty in the said container and the lid resides in the pattern as well as ornamentation of the same and the Defendant has used identical pattern as well as ornamentation for impugned container and lid. Even after assuming the alleged contentions of the Defendant that shape and size of the said products is universal then they should have used different pattern as well as ornamentation upon the impugned product. The use of the identical pattern as well as ornamentation elucidates the dishonest and mala fide intention of the Defendant to encash upon the reputation and goodwill of the Plaintiff in the said product. Hereto annexed and marked as Exhibit J is a copy of the purported reply dated 14th January 2016.
32. Mr. Khandekar says that while the pleading is for some sort of proprietary right in the ornamentation, the registration itself does not extend to this. The novelty that is claimed is in the pattern or ornamentation but the registration is only of the shape or configuration. Till as late as the Affidavit in Rejoinder, the Plaintiffs have maintained this stand. This is to be found in paragraph 7 of the Affidavit in Rejoinder, (Notice of Motion paperbook, p. 152.)where the Plaintiffs say:
7. The novelty of the Plaintiffs container not only resides in its circular shape with round edges at the bottom and circular shaped support underneath the container but also pattern ornamentation of curvy lines at the top of outer surface of the same. The Defendant has absolutely imitated shape, configuration, pattern and ornamentation the Plaintiffs container for their container. I deny that there is nothing original about the design of the Plaintiffs container as alleged or at all. The container adopted by the Plaintiffs is capricious and have distinctive appearance as well as characteristic of the Plaintiffs goods. I deny that the design of the Plaintiffs is devoid of material particulars or does not set out any dimensions/particulars as alleged or for the reason alleged. I say that the drawings at page 45 to 55 of the Plaint are arrangement of lines which determine the form or figure i.e. dimensions/particulars of the container. I deny that the design of the Plaintiffs container is universal or lacks in originality or novelty as alleged or at all. The Controller of Design accepted the Application for registration of container after satisfying that there is no lawful objection in respect of the same. I say that the configuration mentioned in an Application for registration of the said container means figure, contour, pattern, or apparatus that result from a particular arrangement of parts or components... ...
33. It is on this basis that Mr. Khandekar says that there is no novelty at all.
34. I am unable to accept this argument in the manner in which it is placed. Having regard to the nature of the object itself, it seems to me that the wave portion is not an ornamentation or a pattern of the kind that Mr. Khandekar says it is. There are three reasons for holding against Mr. Khandekar.
(a) The first is the fact that the wave-form portion is fused in the process of fabrication into the container or article itself, and has become one with it. There is a unity in this. The wave-form is now inseparable from the rest. While this may not speak to shape , it certainly speaks to configuration .
(b) Second, the record itself demonstrates the difference between configuration and ornamentation. Examples are annexed to the Plaint. Exhibit D (Plaint, p. 56)has visuals of the Plaintiffs containers which show the lids and waveform. Exhibit G (Plaint, p. 90)shows almost the same containers, i.e., the same as to size, shape and configuration but with quite different ornamentation and patterns. In three of these, we see patterns of other wavy lines and leaves in blue and green. In the fourth, we seek curls, swirls and whorls in red and white imprinted on the container. These are elements of ornamentation or pattern, not configuration.
(c) Third, the white portion is not an article by itself, capable of what has been described as a stand-alone identity. It is a part, integer or element, one that is fused into another part to bring into being an entirely new and original that is to say, novel article.
35. Dr. Saraf references standard definitions of the word configuration annexed to the Affidavit in Rejoinder (Notice of Motion Paperbook, pp. 167 168).A configuration is defined in the Concise Oxford Dictionary as an arrangement of parts or elements in a particular form or figure. Other dictionaries referred to a configuration as the way constituent parts are arranged, or something (a figure, contour, pattern or apparatus) that results from a particular arrangement of parts or components. Looking at the two objects, I should imagine this is true of this container, viz., that the white portion being fused or moulded into the container makes it a component and part of the article s configuration, not just pure ornamentation or a pattern.
36. Mr. Khandekar then troubles me to go through several pages of illustrations annexed to the Affidavit in Reply (Notice of Motion Paperbook, pp. 34 44).These are all images of various types of cylindrical containers. All of them have some sort of lid or the other. Some of them have airtight lids. Some are fixed with clasps, others have rubber rings, some have both. I am unable to see the purpose of this exercise. If the argument is that we can, or should, de-construct any article into its constituent elements and then, on showing that there are other similar constituent parts, even if not applied in this fashion, and therefore no question of novelty remains, then that argument is without substance. I have not understood Dr. Saraf to claim design copyright in the cylindrical or round-bottom shape of the container.
37. But the Defendant does not stop there. It then proceeds to show a number of lids and other containers with some sort of wave or the other (Notice of Motion Paperbook, pp. 45 73) to claim that others also have either airtight lids or waves. None of these, in my view, remotely resemble the Plaintiffs product. The Defendant s product does. It is actually no more complicated then that. For example, the reference to one such allegedly similar product, made by one M.M. Plastoware, (Notice of Motion Paperbook, p. 52)turns out to be of very little use. It has a wave that is unlike the one to be found in either the Plaintiffs or Defendant s products, and in any case its registration seems to be of 27th November 2015, well after the Plaintiffs products were introduced. I have not understood Dr. Saraf to claim novelty in every kind of wave. What Dr. Saraf claims is that one must have regard to the object as a whole and look to see if there is novelty in the design of the article in its entirety and not proceed to de-construct the object into constituent elements and then to say that those constituent elements are not novel. It may often happen, and I think both counsel in fairness agree on this as a matter of law, that two previously known components or integers may be combined or applied in such a way so as to result in a completely novel design. Therefore, to suggest that there is no novelty in the shape, that the wave itself is not novel and, therefore, the addition of the wave to the container cannot possibly be novel and is necessarily only a trade variant is not an acceptable argument. What the Defendant must show is that there is such a design, or one very similar to it, that preceded the Plaintiffs design; that would rob the Plaintiffs design of the necessary newness and originality.
38. Mr. Khandekar refers to what he says is a competing product made by one Parab Plast under the mark Swagat. A representation is annexed (Notice of Motion Paperbook, Exhibit D , pp. 75 76).This is very similar to the Plaintiffs product. On this I must confess that I am unable to understand Mr. Khandekar s submission. Indeed I find it somewhat startling. He seems to suggest that because there are others who are using or making the same or a similar product, there is no novelty in the Plaintiffs product. This user by others need not be prior, he suggests, to that of the Plaintiffs. This is, in my view, an extremely dangerous approach. Just because there are 50 other imitators, that does not rob a product of its novelty. Indeed one of the decisions on which Mr. Khandekar relies, M/s. Joyo Plastics v M/s. Mayo World and Ors. (Notice of Motion No. 3593 of 2015 in Suit (L) No. 1339 of 2015, decided on 12th February 2016)answers this very argument. In paragraph 9 of that decision, Mr. Justice S.C. Gupte noted the submission made on behalf of the Plaintiff before him that it is no defence for an infringer to say that others have been equally guilty of infringement or passing off. It makes no difference whether this is under the Trade Marks Act or the Designs Act.
39. I must, at this stage, refer to the decision of the Supreme Court in Bharat Glass Tube Limited v. Gopal Glass Works Limited, (2008) 11 SCC 657) also relied on by Dr. Saraf for the proposition that the burden is on the complainant who disputes the validity of a registration to show that the design is not new or original. The Supreme Court held that the expression new or original means that the article came into being for the first time or had not been reproduced by anyone. I am unable to accept Mr. Khandekar s argument at this stage that use or copying after the Plaintiffs claimed priority date affords a sufficient defence. It cannot. Just because the market is flooded with imitators does not rob a registered design of the validity of its registration or of its novelty or originality. Therefore, Dr. Saraf is correct in saying that it is the application of the wave to the container that gives it originality.
40. Mr. Khandekar also attempts, in my view unsuccessfully, to show that this very design was known not only in India but overseas as well. He directs my attention to page 40 of the Defendant s compilation. This is a design registered in Italy. He has shown me the translation of the Italian text as also an image of the enlargement of the lid. The object is a container for confectionery. It is said to have a substantially frusto-conical conformation with projecting peripheral edges and a wave shape. I think Dr. Saraf is correct in saying that this is a completely different item for a completely different purpose with a completely different aspect, shape, configuration, ornamentation or pattern. The two are hardly comparable. It is not possible, in my view, to say that just because someone has used some sort of wave, therefore, the Plaintiffs use of a particular kind of wave lacks novelty.
41. Mr. Khandekar relies on the decision of the Delhi High Court in Dabur India Limited v Rajesh Kumar and Ors. (2008 (37) PTC 227 (Del.).I would imagine that this decision must be restricted to the facts of the case before it, especially because of the observations in paragraph 10 and 11. Apart from anything else, the learned Single Judge found that the two objects before him were entirely different. In paragraph 11, he had occasion to observe that the registration certificate only give certain views but did not specify dimensions or dimensional ratios. This is not a requirement of the statute. It is not a requirement that can be imported to every other case. It must, therefore, be restricted to the facts of that case and does not assist Mr. Khandekar in the present matter.
42. Mr. Khandekar also relies on the decision of another learned Single Judge of the Delhi High Court in Amit Jain v Ayurveda Herbal and Ors. (2015 (63) PTC 121 (Del.)).In fairness, he does so for a limited purpose, and only to suggest that in assessing novelty, the Court must consider whether there is a similar ornamentation, shape, configuration or pattern, and whether what is claimed to be novel is only a small, trivial or slight variation; or, as Mr. Khandekar puts it, a trade variant. On the strength of this, he submits that the change introduced should be substantial ; not necessarily that the whole of the design should be new, for the novelty and originality may be confined to a part of it, but that part must be, in his words, significant and potent enough to impart to the whole design a distinct identity. I believe the proposition is overbroad. I am also unable to agree with the observations in paragraph 32 of the Amit Jain decision. These seem to me too broadly stated to admit of ready application to other cases. The paragraph suggests that even new integers must have intrinsic or inherent novelty. This cannot possibly be correct. It is entirely possible to take two old or known integers and combine them in a new way, one that is purely aesthetic and appeals to the eye, by a process contemplated by the statutory definition, and to yet receive a result that qualifies as a design, both entirely new and entirely original. We see many such examples. From lead pencils to match boxes, there is no limit to human imagination or innovation. In any case, the question is academic: there is no old material shown to justify this submission.
43. Mr. Khandekar s reliance on Joyo Plastics does not also, in my view, assist him. Indeed paragraph 7 and 10 of that decision seem to me to support Dr. Saraf s case. Justice Mr. Gupte set out the three ingredients that a Plaintiff must satisfy to be entitled to an injunction. First, that the design adopted and used has novel or unique features and that these are capable of distinguishing the plaintiff s product from others. Second, that the plaintiff has goodwill and reputation sufficient to warrant relief. Third, that the defendant s article is so deceptively similar to that of the plaintiff as to make deception and confusion inevitable. As to the question of reputation and goodwill, Mr. Justice Gupte found on facts in Joyo Plastics that the plaintiff before him had not discharged that burden. Again this is a fact-specific observation. In the case before me, as I have noted, the Defendant s sales not only start from a later period but are insignificant when compared to the Plaintiffs . It is not a question of trying to establish reputation in an absolute sense or against some absolute standard or benchmark. The rival sales and claims must be matched one against the other. When I do so, I find that the Plaintiffs have in fact been able to establish that by the time the Defendant entered the market, the Plaintiffs already had a substantial reputation.
44. Dr. Saraf points out that in pages 15 to 17 of the Affidavit in Reply, the Defendants claim to have a similar design. They have referred to certain flasks and other products that bear a wave design. This registration, also under the Designs Act, 2000 is said to be much earlier than that of the Plaintiffs and it is on this basis that the Defendant says there is no novelty in the Plaintiffs design. Now the Defendant s design is actually quite distinct. It is applied to a tall flask. It seems to be some sort of embossed or raised wave-form skirting around the top with a series of vertical braids running down the shank of the cylinder. At the foot is another curve or wave portion. Again, I do not think the comparison is appropriate. One cannot compare apples and oranges, or as Mr. Khandekar would have it, Apples and Androids. The two products are entirely different. There is not even a remotest similarity between the Defendant s product at page 97 of the Motion paperbook and the Plaintiffs product.
45. Dr. Saraf relies on the decision of Mr. Justice Kathawalla in Whirlpool of India Ltd v Videocon Industries Ltd. (2015 (1) Bom.C.R. 137).It related to two washing machines. Both parties were prominent manufacturers and vendors. The pronouncement of law in paragraph 26 is comprehensive. The entire approach, as settled in law, has been set out. I can do no better than reproduce this in full.
26. The question of what tests are to be applied in deciding what constitutes an obvious imitation and/or is actionable is no longer res integra. This question has been considered in several judicial pronouncements. The leading decisions on the point are the decisions in the case of (Castrol India Limited Vs. Tide Water Oil Co. (I) Limited), 1996 P.T.C. (16) 202 and Kemp and Co., Vs. Prima Plastics Limited, 1999(1) Bom.C.R. 239 (O.S.) : 101(1) Bom.L.R. 65. In both the decisions, the Kolkata High Court and the Bombay High Court have laid down the following propositions as constituting the test to decide whether there is obvious imitation and/or piracy of a registered design.
Castrol India Limited Vs. Tide Water Oil Co. (I) Limited: (supra)
(i) The word imitation does not mean duplication in the sense that the copy complained of need not be an exact replica.
(ii) The Court is required to see in particular as to whether the essential part or the basis of the Plaintiff s claim for novelty forms part of the infringing copy.
(iii) The similarity or difference is to be judged through the eye alone and where the article in respect of which the design is applied is itself the object of purchase, through the eye of the purchaser.
(iv) The Court must address its mind as to whether the design adopted by the Defendant was substantially different from the design which was registered. The court ought to consider the rival designs as a whole to see whether the impugned design is substantially different from the design sought to be enforced. (The test laid down on (Benchchairs Ltd. C. Chair Center Ltd.), 1974 R.P.C. 429 was cited with approval).
(v) Obvious means something which, as soon as one looks at it, strikes one as being so like the original design/the registered design, as to be almost unmistakable. Fraudulent imitation is an imitation which is based upon, and deliberately based upon, the registered design and is an imitation which may be less apparent than obvious imitation, that is to say, one may have a more subtle distinction between the registered design and a fraudulent imitation and yet the fraudulent imitation, although it is different in some respects from the original, and in respect which render it not obviously an imitation may yet be an imitation perceptible when the two designs are closely scanned and accordingly amounts to infringement. (The test laid down in (Dunlop Rubber Co. Ltd. Vs. Golf Ball Developments ltd.), (1931) XLVIII R.P.C. 279 was cited with approval.
Kemp and Co., vs. Prima Plastics Limited: (supra)
(i) If the visual features of shape, configuration pattern designs are similar or strikingly similar to the eye, it is not necessary that the two designs must be exactly identical and same. The matter must be looked at as one of substance and essential features of the designs ought to be considered.
(ii) In a given case, where the registered design is made up of a pattern which has no one striking feature in it, but it appears to the eye as a whole, it may very well be that another design may be an imitation of it which makes the same appeal to the eye notwithstanding that there are many differences in the details. (The opinion of Farewell J. in Dunlop Rubber Co. Ltd. Vs. Golf Ball Developments Ltd..) 1931 XLVIII R.P.C. 279 was cited with approval).
(iii) In comparing rival designs the Court is required to see whether the impugned design/product is substantially different to the design which is sought to be enforced.
The aforesaid tests have been independently applied and/or followed in a series of judgments of various High Courts, including judgments in (JN Electricals (India) Vs. M/s. President Electricals), I.L.R. 1980 (1) Del. 215 (paras 24-25); (Alert India Vs. Naveen Plastics), 1997 P.T.C. 17 (para 36); (Hindustan Sanitaryware Vs. Dip Craft Industries), 2003 (26) P.T.C. 163 (Del.) (Para 8) and (Dabur India Vs. Amit Jain and anr.), 2009(39) P.T.C. 104 (Del.) (D.B.)
46. The Whirlpool decision is also important for an additional reason. In paragraph 33 Mr. Justice Kathawalla addressed himself to the question of an overall similarity and rejected out of hand the argument that minor variations a knob here, an outlet there were of any relevance. Once a Court concludes that there has been copying, cosmetic differences are irrelevant, and an involved enquiry is unnecessary. Where a copy is shown, the question of substantiality does not arise.
47. Dr. Saraf presses home his advantage by referring to paragraph 36, in which Mr. Justice Kathawalla also concluded, as have I in this case, that there was no plausible explanation from the defendants as to how they chanced upon this very design. Absent a plausible explanation and given the degree of substantial similarity, an order must follow.
48. Mr. Khandekar claims that his clients have a registered design, the one applied to the flask and which I have described earlier. This presumes that the Defendant claims novelty in this design. If, however, Defendant s earlier design is dissimilar to that of the Plaintiffs, then it is hardly open to the Defendant to contend that the Plaintiffs design lacks novelty. If the argument is that the Plaintiffs design inherently lacks novelty because it uses old and familiar integers then this must be true of the Defendant s design as well.
49. Whirlpool was carried in appeal. The Division Bench also rejected the argument raised on behalf of Videocon that Whirlpool s design was merely a combination of known designs and, therefore, lacked originality. After looking at the definitions of article and design in the Designs Act, 2000, the Division Bench concluded that it is the article by itself that must have its stand-alone identity. Design , in this context, means the design of a article capable of being made and sold separately. The phrase combination of known designs in the prohibitory Section 4(c) obviously means a combination of known articles. It is this that is prohibited; the interdiction does not extend to parts of known articles. Therefore, even if the wave-form integer was part of a previously known article, its use in the specified manner to yield a novel article is not forbidden.
50. In this case, as in the case before Mr. Justice S.J. Kathawalla, there is no difference that I can tell between the configuration of the Plaintiffs container and the Defendants. I have seen both. If the question is what appears to me on a first impression then I must conclude that they are in fact deceptively similar. I also do not think that there can be any dispute as to goodwill and reputation. The figures that I have quoted above speak for themselves. Mr. Khandekar s submission that there is no possibility of deception because the two products are entirely dissimilar is one that I cannot accept. I also reject emphatically the argument that a fundamental test of the design, that of appeal to the eye, is not satisfied. It is. The Plaintiffs product is undoubtedly an attractive product, one to which a consumer would readily gravitate when looking for a container or a set of containers.
51. As I have noted in this case, there is no material either to show pre-existing designs that are like the one in question. The ones that Mr. Khandekar relies on are entirely different. None of them have this fused or moulded wave or sinusoidal pattern in this form applied to a container.
52. As to the question of passing off, the observations in paragraphs 47 to 54 of the Whirlpool apply almost exactly to the case at hand. An action in passing off is an action in deceit and it makes no difference whether this is under the Designs Act, 2000 or Trade Marks Act, 1999. The tests are the same. The only enquiry is whether a person who purchases the Defendants product is likely to be misled into believing that he was purchasing the Plaintiffs product. In Parker Knoll v Knoll International Limited, ([1962] RPC 265) Lord Denning explained the words to deceive and the phrase to cause confusion thus:
Secondly, to deceive is one thing. To cause confusion is another. The difference in this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.
53. Similarly, the findings of the Whirlpool Division Bench on the question of passing off from paragraph 27 onwards are also binding. The Whirlpool Appeal Court also approved the decision of Hon ble Dr. Justice D.Y. Chandrachud (as he then was) in Gorbatschow Wodka KG v. John Distilleries Limited (2011 (4) Bom C.R. 1 (O.S.).There, the learned Single Judge held that the remedies in passing off would be rendered illusory were they to be limited to goods that the average consumer purchases for daily necessities, and that for everything else it is expected that the average consumer makes a study, careful and discerning decision.
54. I turn now to the next decision by Dr. Saraf, and that is the decision of Hon ble Mr. Justice S.A. Bobde (as he then was) in Faber-Castell Aktiengesellschaft v Pikapen Private Limited ((2003) 4 Mah.LJ 264 : (2003) 6 Bom CR 65 : (2003) 27 PTC 538).In this case, the Court granted the injunction in passing off though refusing the injunction in infringement. The contest was between the two highlighter pens. Paragraph 12 of this decision (in the Manupatra Report) makes it clear, I think, that the publication required to oust or defeat a registration must be a prior publication and not a subsequent publication. That only stands to reason. The Court found a US Patent previously registered and, therefore, held that the plaintiffs design was liable to cancellation. Publication, the Court said, may be of two types: publication in prior documents or publication by prior user. For our purposes the emphasis is on the word prior , and to my mind this completely answers Mr. Khandekar s repeated submission that it is sufficient to show even a subsequent use to defeat a claim of registration of a design.
55. Despite the finding on prior publication, Bobde J granted the injunction in passing off. That claim was also based on claim as to configuration and colour scheme, trade dress and get up. There again the Court took the competing products as a whole. It was this test that was applied and it was on this test that the plaintiffs obtained an injunction. This matter, too, should follow the same course; certainly there is an ample case made out in passing off. It is not necessary to multiply further authorities on the subject (Troikaa Pharmaceuticals Limited v Pro Laboratories (P) Limited and Anr., (2008) 3 GLR 2635 : MIPR 2009 (1) 168; and Eicher Goodearth Private Limited v Krishna Mehta and Ors., 2015 63) PTC 444 (Del).
56. In my view, the necessary tests are all satisfied. I find that the Plaintiffs design is both new and original. It satisfies the test of Section 2(d) of the Act. The Defendant s container is an obvious and slavish imitation. It has no relation whatsoever to the Defendant s own design. The Defendant is unable to show any prior publication or prior user. Why then should reliefs be denied? I can see no reason.
57. Dr. Saraf, on instructions, makes a statement that he is not pressing the reliefs in relation to the lid of the container. He says that the lid is part of the entire container for the purposes of reliefs in passing off.
58. A sufficient prima facie case is made out in both infringement and passing off. The balance of convenience certainly favours the Plaintiffs, to whom great prejudice is imminent if reliefs are denied.
59. Consequently, the Notice of Motion is made absolute in terms of prayer clauses (aa), (b) and (d), which read as follows:
(aa) that pending the hearing and final disposal of the Suit, the Defendant by themselves their sister concern/s, partners, proprietor, officers, agents, stockiest, distributors, servants and all other persons claiming through or under the Defendant jointly and / or severally or otherwise howsoever be restrained by a temporary order and injunction of this Hon ble Court from manufacturing, marketing and / or selling in any manner whatsoever the container as shown in Exhibit H-1 to Exhibit H-5 or any other container which is colourable imitation or a substantial reproduction of the Plaintiffs container as shown in Exhibit C so as to infringe the Plaintiffs copyright in the said registered design No.256745;
(b) That pending the hearing and final disposal of the Suit, the Defendant by themselves their sister concern/s, partners, proprietor, officers, agents, stockiest, distributors, servants and all other persons claiming through or under the Defendant jointly and / or severally or otherwise howsoever be restrained by a temporary order and injunction of this Hon ble Court from manufacturing, marketing and / or selling in any manner whatsoever the container as shown in Exhibit H-1 to Exhibit H-5 or any other container which is colourable imitation or a substantial reproduction of the Plaintiffs container as shown in Exhibit C so as to pass off or enable others to pass off their container as and for the container of the Plaintiffs.
(d) That pending the hearing and final disposal of the Suit, the Court Receiver, High Court, Bombay or such fit and proper person as this Hon ble Court thinks fit be appointed under Order XL, Rule 1 of the Code of Civil Procedure, 1908 as the Receiver of the container and lid as shown in Exhibit - H-1 to Exhibit- H-5 respectively or any other container and lid identical and / or deceptively similar to the container and lid as shown in Exhibit - CC and Exhibit - A respectively with all powers to enter the premises of the Defendant situated at plot No.33, Sector No.1, Vasai Taluka Industrial Estate, Opp. Hanuman Mandir, Gauripada, Vasai (East), Thane (Mumbai) and / or other premises of the Defendant, their sister concern/s, partners, proprietor, officers, agents, stockiest, distributors and servants at any time in day or night without notice to the Defendant and with the help of the police, if necessary, to seize and take charge, possession and control of all the container and lid as shown in Exhibit - H-1 to Exhibit- H-5 respectively in possession and control of the Defendant, their sister concern/s, partners, proprietor, officers, agents, stockiest, distributors and servants and if necessary to make inventories of all the stocks of the container and lid as shown in Exhibit - H-1 to Exhibit- H-5 respectively, articles, packing boxes, stamps, dies, mould sets, jigs, machinery, equipments, advertisements, bills, product catalogue, papers and vouchers of the container and lid as shown in Exhibit - H-1 to Exhibit- H-5 respectively and that the Defendant, their sister concern/s, partners, proprietor, officers, agents, stockiest, distributors and servants be directed not to obstruct the Plaintiffs or their authorised representative or employees when they are visiting the site of the premises along with the Court Receiver or his representative/s taking away the container and lid as shown in Exhibit - H-1 to Exhibit- H-5 respectively or any other design of the container and lid identical and / or deceptively similar to the container and lid as shown in Exhibit - H-1 to Exhibit- H-5 respectively by taking any proceedings or filing any criminal complaint against the Plaintiffs or their representatives or employees in executing the order.
60. The Court Receiver is only to make an inventory. The inventory report will be filed as a Court Receiver s Report in this Notice of Motion. That inventory to be made within a period of three weeks from today. The Defendants will also furnish a list of dealers, stockists and distributors with whom their products have been placed for sale and resellers who have bought products from the Defendant.
61. All office objections in the Notice of Motion and Suit are to be removed within two weeks of this order being uploaded.
62. All concerned to act on an authenticated copy of this order.
63. Mr. Khandekar requests for stay of the operation of this order. At his request, the order is stayed for a period of three weeks from the date the order is uploaded.