ORDER
Shiv Narayan Dhingra, J.
1. The plaintiff filed a suit for permanent injunction against defendants claiming that the defendants were infringing trade mark and registered design of the plaintiff and were passing off their goods as those of the plaintiff. Defendants also claimed damages and rendition of accounts. The above application being is No. 1881/07 is made by the plaintiff under Order 39 Rule 1 and 2 CPC.
2. The brief facts relevant for purpose of deciding this application are that plaintiff claimed that it was marketing 'Dabur Amla Hair Oil' in bottles having a distinctive design having semi circular shoulder with curvaceous back and front panel converging taperly into each other. The shape and configuration of plaintiff's bottle was unique, novel and original and was registered as design No. 17324 under the Designs Act and was valid up to 24th February, 2011. The green cap put over the bottle was also unique and this was registered under Designs Act as design No. 171486 valid up to 11th June, 2011. It is also contended that these bottles were having embossing of trade mark 'Dabur' of the plaintiff at the bottom. It is alleged that the defendants were manufacturing plastic bottles which were imitation of the bottles of the plaintiff and were having embossing 'Dabur' trade mark on the bottom and the defendants were selling these bottles to counterfeiters of 'Dabur Amla Hair Oil'. Thus defendants were infringing designs of the bottle of the plaintiff as well as cap of the bottle.
3. An ex parte interim order was granted to the plaintiff by the Court for seizure of the infringing material. The Local Commissioners visited the premises of all the 3 defendants and seized certain boxes of empty bottles as well as the ledger of defendant No. 3 showing that the empty bottles were being sold to different persons.
4. The defendants in written statement stated that the suit of the plaintiff was liable to be dismissed since it was based on false and frivolous allegations. Defendants have not been imitating the bottles of the plaintiff neither there was any embossing of trade mark of the plaintiff on the bottom or any part of the bottle seized by the Local Commissioner or being sold by the defendants. The defendants were not copying or infringing the design of the plaintiff. The bottles were being sold for multifarious uses of different persons and defendants were only selling empty bottles without any mark or number over these bottles. Selling of bottles of different sizes and shapes along with cap was the business of defendants.
5. During the arguments, both the bottles, i.e., of the plaintiff and defendants were produced in the Court and I have seen both the bottles. It could be seen that the plaintiff made false averment in the plaint that defendants were selling bottles with trade mark of the plaintiff embossed on the bottle. None of the bottles, seized from the defendants, bear the trade mark 'Dabur' at the bottom or at any other place. Neither any of the Local Commissioners in his report has stated that the bottle was having embossing of trade mark of 'Dabur'. It is apparent that the plaintiff, in order to create a case of infringement of trade mark and design made this false averment that bottles with embossing of trade mark 'Dabur' were being sold by the defendants. I consider that the plaintiff had no, prima facie, case against the defendants and suit is liable to be dismissed for deliberately making flase averments.
6. Even otherwise, a look at the bottles of the plaintiff would show that the bottles being used by the plaintiff are common bottles being used by the several other companies for marketing their hair oil, fixers and liquid products. These bottles have similar shape as being used by different manufacturers of liquid products like JOLEN (Skin Satin Moisturizer), SEBSUN (Anti Dandruff Shampoo), Lever Ayush Hair Poshak Oil of HLL, Shivanand Amla Plus Hair Oil, Bajaj Amla Shikakai Hair Oil, Cantharidine Hair Oil, SIMAX Hair Fixer, Amla Hair Oil manufactured by Nimson and Aroma hair Strengthening Oil by VLCC.
7. I have also seen photographs of different bottles of different manufacturers during the arguments. All these bottles had similar shape with slight variation in form and these bottles are in use much prior to the registration of the design of the plaintiff.
8. A perusal of the design registration certificate of the plaintiff would show that plaintiff had not got any peculiar feature of the bottle registered as a design. The plaintiff has got the whole bottle registered as a design. A plastic bottle is not a new thing. Plastic bottles are being used by different manufacturers in different shapes including in the shape being used by the plaintiff. The plastic bottles used by the plaintiff is a very common shape and does not have any peculiar eye catching desing or shape. I also find there was a variation in the plaintiff's and defendant's bottles.
The plaintiff's bottle from bottom till neck was having plain curved surface whereas there was one extra curve on each side of bottle of defendant running along the shoulders and neck of the bottle. The neck of the defendant's bottle is so wide that neck of plaintiff's bottle loosely goes into the mouth of the defendant's bottle. The circumference of defendant's bottle's neck is almost double than that of plaintiff's.
9. This Court had occasioned to examine the plaintiff's bottle vis- a-vis other bottles in another case Dabur India Ltd. v. Amit Jain and Anr. in is No. 1910 in CS(OS) No. 314/2007 and this Court observed as under:
The contention of the plaintiff is that the certificate of registration granted to the plaintiff was a prima facie evidence of the design of the plaintiff being novel and specific. The application filed by the defendant for rectification was filed after filing of suit by the plaintiff and cannot give a ground to the defendant to seek any relief. The mere probability that the registration of the plaintiff may be canceled, is not a ground or defense available to the defendant.
This Court held in Rotela Auto Components Private Limited and Anr. v. Jaspal Singh and Ors. 2002 (24) PTC 449 (Del.) that it was well settled that interlocutory injunction be not granted where damages are provided for remedy should the claim succeed. The Court will not grant an interlocutory injunction, unless it is satisfied that there is a real probability of the plaintiff succeeding on trial of the suit and where design is of recent date no injunction should be granted. More so, when there is a serious question as to the validity of the design to be tried in the suit an application for cancellation has been made.
I have seen the plastic bottles being used by the defendant as well plaintiff and the photographs of the other bottles which have been placed on record by the defendant. I find that the bottles which are being used by different manufacturers/companies for marketing their product like hair oil, fixer etc. have similar shape with little variations in the form. Some bottles have uniqueness of the form associated with the manufacturer while some bottles have no uniqueness. The bottle being used by the defendant is not of the same dimension of shape as that of the plaintiff neither it has logo of plaintiff with 'DABUR' on the bottom, as alleged. Neither the bottle got registered by the plaintiff under Design Act has any special unique feature which has been registered by the Registrar as a unique design. The registration certificate shows that what has been registered is bottle as a whole without specifying any distinctive feature of the bottle giving it a uniqueness of design. The Registrar has placed on the register of designs record photographs showing front elevation, top elevation and side elevations of the bottle and a photograph of the bottom. These photographs of the front, top and side elevations did not depict any special design or feature of the bottle. The shape of the bottle in which plaintiff is marketing its product is not something new. Similar shape bottles have been used and are being used by other manufacturers. Moreover, shape as a design has not been registered in favor of the plaintiff. It is well settled that when serious disputed question arises like prior publication of the design, lack of originality, trade variation etc. injunction will not follow as a matter of routine. From the perusal of the documents on record I consider that plaintiff has failed to show that the plastic bottle used by the defendant was prima facie violating/infringing the design of the plaintiff. Moreover, there is no substantial difference in the bottle of the plaintiff and the bottles being used earlier or registered earlier as design by other companies with different features.
10. It is settled law that an interlocutory injunction should not, normally, be granted where the plaintiff does not have a strong prima facie case and where damages can provide adequate remedy. I consider that in the present case, the plaintiff does not have a strong prima facie case that the trade mark or design of the plaintiff was infringed. The bottles of defendant does not bear trade mark of the plaintiff. Defendant is trading in empty bottles. These bottles can be used by anyone and everyone for filling any kind of liquid. There is no presumption that these bottles can be used only for imitation and marketing of 'Dabur Amla Hair Oil'.
11. In cases of design, the Court while granting interim injunction must keep in mind that the design must be validly registered and there must be some novelty and originality in the designs sought to be protected and it must not have been re published. No specific novelty has been mentioned by the plaintiff in the design of the bottle, neither any specific novelty has been mentioned in the registration certificate. The registration certificate only gives bottom view, top view and side view of the bottle. There is no specific dimensional ratio of the bottle given in the design as bottles are manufactured by most of the manufacturers for containing specific quantity of liquid by measurement. Normally these bottles are made 50 ml, 100 ml, 200 ml, etc. Since all the manufacturers manufacture bottles for such quantities, the bottles of same quantity are bound to have almost same height if they have same bottom circumference. Unless, plaintiff had any claim over specific ratios of the dimensions which were not pre-existing, there can be no novelty in the bottle. Similar designs are being used by many leading companies from the time much before the registration of this design by the plaintiff. I, thereforee, consider that the plaintiff is not entitled for interim injunction. The application of the plaintiff is hereby dismissed.
12. In view of dismissal of is No. 1881/07, is No. 13813/07 has become infructuous and is disposed of as such.
CS(OS) No. 306/2007.
List this matter before the Joint Registrar for admission/denial of documents and for completion of pleadings on 24th April, 2008 and thereafter before the Court for framing of issues on 20th August, 2008.