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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
S.J. KATHAWALLA, J.
Whirlpool of India Ltd. – Plaintiff
Versus
Videocon Industries Ltd. – Defendant
Notice of Motion No. 2269 of 2012 in Suit No. 2012 of 2012
Decided On : 27.5.2014
Suit for infringement can lie against a registered proprietor. A registered proprietor of a design can under Section 22 of the Act file a suit for infringement against a registered proprietor of a design.
Fact of the Case:
The Plaintiff, a subsidiary of Whirlpool Corporation, obtained two design registrations for washing machines. The Defendant, Videocon Industries Ltd., manufactured and marketed a washing machine under the brand name “Videocon Pebble” which had virtually the same and/or similar design and features of shape and configuration as the Plaintiff’s product and the said designs registered by the Plaintiff. The Plaintiff filed a suit against the Defendant for infringement of the said designs; passing off; and damages.
Finding of the Court:
The Court held that a suit for infringement can lie against a registered proprietor of a design. The Court also held that the Defendant’s washing machine was an obvious imitation of the Plaintiff’s design and that the Defendant had infringed the Plaintiff’s registered designs. The Court further held that the Defendant was also guilty of passing off their goods/products as that of the Plaintiff.
Issues: 1. Whether a suit for infringement can lie against a Defendant who is also a registered proprietor? 2. Whether the Plaintiff has made out a case for infringement on merits? 3. Whether the Plaintiff has made out a case for passing off against the Defendants?
Ratio Decidendi: 1. The Court held that a suit for infringement can lie against a registered proprietor of a design based on the following grounds: a. A plain reading of Section 22 of the Act and subsections (1) to (3) in particular, makes it clear that the suit for infringement of a registered design lies against ‘any person’ which would include a registered proprietor. b. The legislative intent is also clear from the fact that in Section 29 (1), 29 (2) and 29 (4) of the Trade Marks Act, 1999, the Legislature has used the expression “a person who, not being a registered proprietor.” A similar exclusion against a registered proprietor is to be found in Section 29 of the Trade Marks Act, 1958. c. The expression ‘any person’ found in Sections 17, 19 and 41 of the Act makes it evident that the said expression must be given a plain, natural and ordinary meaning and includes even the registered proprietor. 2. The Court held that the Defendant’s washing machine was an obvious imitation of the Plaintiff’s design and that the Defendant had infringed the Plaintiff’s registered designs based on the following grounds: a. The Defendant’s washing machine had the exact look/appearance of the Plaintiff’s machine including the pattern and placement of the two colours captured in a photograph. b. The Defendant’s washing machine had photographs of the Defendant’s machine. c. The Defendant’s washing machine had a comparison of the Defendant’s product and the registered designs of the Plaintiff. d. The Defendant’s washing machine had a comparison of the Defendant’s product with the Plaintiff’s product. 3. The Court held that the Defendant was also guilty of passing off their goods/products as that of the Plaintiff based on the following grounds: a. The Defendant’s product was almost identical in shape and configuration pattern as that of the Plaintiff. b. The Defendant’s product and the Plaintiff’s products were prominently branded with the names of their respective manufacturers. c. The class of purchasers of such machines will therefore not necessarily be educated persons in cities but also include semi literate or persons who are not literate in villages and/or rural areas.
Final Decision: The Notice of Motion was allowed in terms of prayer clauses (b) and (c). The Defendant was ordered to pay costs of the Notice of Motion to the Plaintiff.
S.J. KATHAWALLA, J.
1. The Plaintiff is a subsidiary of Whirlpool Corporation, a Company incorporated under the laws of the United States. According to the Plaintiff Whirlpool Corporation is one of the world's leading manufacturers of home appliances globally and a pioneer in the manufacture and sale of washing machines. According to the Plaintiff, it is a pioneer in India for washing machines and manufactures all three types of washing machines viz. semi automatic, fully automatic (top loading) and a fully automatic (front loading) targeting different segments of consumers.
2. According to the Plaintiff, it has obtained two design registrations i.e. Nos. 223833 and 223835 which are annexed at Exhibits A1 and A2 at pages 40 and 45 of the Plaint (the said designs). The said design registrations are valid, subsisting and in force for a period of ten years from 15th July, 2009, and their validity can be extended for an additional period of five years thereafter. In or about June, 2012, the Plaintiff came across a washing machine manufactured and marketed by the Defendant – Videocon Industries Ltd. under the brand name “Videocon Pebble” which had virtually the same and/or similar design and features of shape and configuration as the Plaintiff’s product and the said designs registered by the Plaintiff. According to the Plaintiff a bare look at the product of the Defendant makes it absolutely evident that the same is a complete copy of the product and/or the said designs of the Plaintiff. The shape and/or configuration of the Defendant’s washing machine was almost identical to that of the Plaintiff. The Defendant’s washing machine had replicated the exact and novel combination of the distinctive circular wash area, the compact right aligned control panel and the unique rectangular drying area from outside. Not only were the individual features and/or components copied but even the combination thereof had been replicated. The copying by the Defendant did not rest with the mere replication of the shape, pattern and configuration. For good measure, the Defendant also copied the distinctive color scheme and/or two tone combination that was employed by the Plaintiff. The Defendant applied to its washing machines the same combination of colours, the same manner of placement of colours, and even replicated precisely the same pattern/placement of the rival colours. Resultingly, the two were visually on an initial look indistinguishable.
3. The Plaintiff in the circumstances filed the present suit against the Defendant for infringement of the said designs; passing off; and damages. The Plaintiff also took out a Notice of Motion in the Suit and moved for an adinterim injunction against the Defendant, before this Court on 25th July, 2012 (Coram: B.R. Gavai, J.). The Learned Single Judge by his detailed order dated 25th July, 2012, was pleased to grant an adinterim injunction in respect of both infringement and passing off. The Defendant’s challenge to the said decision of the Learned Single Judge was rejected by the Appeal Court (Coram: Mohit Shah, C.J. and Jamdar, J.) by its order dated 13th August, 2012.
4. Prior to the filing of the above Suit by the Plaintiff against the Defendant, the Defendant had applied for registration of the design applied to their washing machine “Videocon Pebble” which registration was granted.
5. Thereafter on 2nd November, 2012, the Defendant preferred a Special Leave Petition against the decision of the Division Bench dated 13th August, 2012. In the SLP the Defendant contended that no suit for infringement of design could lie against them since they had secured design registration and also that an action for passing off could not lie in respect of a registered design. These questions had in a different case been answered by the Full Bench of the Hon'ble Delhi High Court (in a majority decision of Sanjay Kishan Kaul and Rajiv Shakdhar, JJ.) which held that (i) a suit for infringement would lie against a r
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