1998 Supreme(Bom) 550

IN THE HIGH COURT OF BOMBAY
R.M. Lodha, J.
M/s. Kemp Company another ..... Plaintiffs.
Versus
M/s. Prima Plastics Ltd..... Defendants.
Notice of Motion No. 2526 of 1996 in Suit No. 2499/1996, decided on 18-9-1998.
Advocates appeared :
Virag Tulzapurkar with Rahul Chitnis and H.J. Engineer, i/by Gordhandas Fozdar, for the plaintiffs.
R.M. Kadam i/by Gajria Co., for the defendants.

Headnote:Designs Act, 1971

       Sections 2(5), 43, 45,46,47, 51-A and 53--Copyright-Infringement of-Registration of Design of Baby chair-Sale before registration-Other manufacturer selling similar chairs under different trade mark-Held, as trade marks are different there is no false representation or infringement of copyright.-However, by similarly of such design, the plaintiffs by itself cannot claim the relief sought for in the motion. The prayer for temporary injunction and appointment of receiver is based on two grounds (i) the 1st plaintiff is the proprietor of the registered design and (ii) the plaintiffs have acquired distinctiveness, reputation and goodwill in the said design and, therefore, the defendants cannot pass off the said goods as that of the plaintiffs. It is true that the 1st plaintiff has got its design registered bearing No. 169723 under the Designs Act but it is well-settled principle of law that the certificate of registration by itself is not conclusive of the validity of the registration or that such design is new and original. Section 2(5) of th~ Designs Act defines design with only features of shape, configuration, pattern or ornament applied to any article by any industrial process or means, whether manual, mechanical or chemical separate or combined, which in the finished articles 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 sub-section (1) of Section 2 of the Trade, and Merchandise Marks Act, 1958 or property mark as defined in Section 479 of the Indian Penal Code. The provision for application for registration of design is made in Section 43 of the Act which provides that on the application of any person claiming to be the proprietor of any new or original design not previously published in India the Controller may register the design under the Act. Where a design has been registered in one of more classes of goods, the application of the design to register is in some one or more other classes shall not be refused, nor shall the registration thereof be invalidated on the ground that the design not being a new or original design, by reason only that it was so previously registered or on the ground of the design having been previously published in India by reason only that it has been applied to goods of any class in which it was so previously registered, subject of course to the condition that such subsequent registration shall not extend the period of copyright in the design beyond that arising from previous registration as provided under Section 43 of the said Act. The controller grants certificate of registration to the proprietor of the design when registered under Section 45 of the Act and the register of design is kept and maintained in terms of Section 46 of the Act. It is provided in Section 46(3) of the Act that the register of design shall be prima facie evidence of the matters by the Act directed or authorised to be enter therein. When design is registered proprietor of the design has copyright of the design for five years from the date of registration under Section 47 of the Act. It is not lawful for any person for the purpose of sale to apply or caused to be applied to any article in any class of goods in which the design is registered during the existence of copyright in any design. For contravention thereof remedy is provided in Section 53 of the Act to initiate legal proceedings against the offender by the proprietor having copyright in the design. Section 51-A of the Act provides that any person interested may present a petition for cancellation of the registration of design on the grounds, namely (i) that the design has been previously registered in India (ii) that it has been published in India prior to the date of its registration, or (Hi) that the design is not a new or original design.

       Thus this Court ruled that the certificate of registration is not conclusive and there is nothing in the Design Act which prevents the defendants in a suit for damages for infringement of the registered design under Section 53 from raising in defence a plea from the design was previously published and was neither new or original. In Benchairs Ltd. the Chancery Divisiond referred to Haigh v. Forth Blending Co. Ltd., (1953) 70 RPC 259 and observed that in all these cases there was something more than mere similarty between the goods themselves to amount to representation constituting passing off. The Chancery Division further went on to clarify that there may be cases where an articles itself is shaped in an unusual way not primarily for the purpose of giving some benefit in use or for any other practical purpose but capriciously in order purely to give that article a distinctive appearance characteristic of that particular manufacturers goods. In such a case the manufacturer must establish reputation and goodwill in such distinctive appearance of the articles itself which will give him a cause of action for passing off if his goods were copied. When these principles are applied to the facts in hand, it would be noticed that the plaintiffs design of baby chair with human face backrest and with removable inserts was made for educational purposes of the children. The plaintiffs themselves in para 5 of the plaint have averred that the 1st plaintiff first conceived the idea of providing a novel shape and design to a baby chair with human face on backrest with removable inserts having educational value (where emphasis). These features according to the plaintiffs primarily have value in use and, therefore, it was found there is no restriction for the defendants to copy that if they do not make false representation. From the available material it is clear that the defendants are not making false representation which may give the plaintiffs cause of action because the defendants are selling the said chairs with conspicuous label Prima while the plaintiffs are selling the said chairs with trade mark Modema Champ. Prima facie, therefore Court is of the view that the observations made by, the Chancery Division in Benchairs case relating to passing off are equally applicable in the present case.

       Section 49-Protection under -Disclosure of design-Section 49 preserves and protects proprietors registration-When disclosure made by proprietor to any other person in good faith.

       Section 76-Suit for damages -Infringement of registered design -Raising of defence plea that design was previously published and was neither new or original-Defence can always be set up at interlocutory stage while contesting the application for interim relief.-It is not necessary that before raising such plea that such proprietor is not proprietor of new or original design in the suit contesting injunction the opposite party (defendant) ought to have made an application for cancellation of registration under Section 51-A of the Designs Act. It is open to the defendant in a suit for injunction filed by the registered proprietor against him to plead and prove in defence finally or at interlocutory stage that the registered proprietor of such design is not proprietor of new or original design and design so registered is pre-existing common type.

       Section 29-Action of passing off-To establish goodwill and distinctiveness-Must show something more than mere similarity between the goods themselves-Mere copying is not to pass-off.-In order to establish goodwill and distinctiveness in a particular get-up, there must be something more than mere similarity between the goods themselves. Mere copying is not to pass-off. If a person copies shape or configuration or get-up of other persons goods or article, by itself it cannot be said that he has made false representation. No one is prevented from copying and seeing an article in the market provided he must show something more than mere similarity between the goods. Exceptions apart, where an article is shaped in an unusual way not primarily for giving some benefit in use or for any other practical purpose, but capricious in order purely to give an article a distinctive appearance, characteristic of that particular manufacturers goods, a case may be made out by the plaintiff that he has reputation and goodwill in the distinctive appearance of the article itself which could provide him a cause of action in the passing-off if his goods were copied.