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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
G.S. Patel, J.
M/s. Selvel Industries & Anr. - Plaintiffs
Versus
M/s. Om Plast (India) - Defendant
Notice of Motion (L) No. 1434 of 2016 In Suit (L) No. 439 of 2016
Decided On : 01-07-2016
Designs Act, 2000 - Novelty - Originality - Infringement - Passing off - Similarity - Deceptive similarity - Substantial reproduction - Colourable imitation - Injunction - Balance of convenience - Prior publication - Prior user - Registration - Cancellation - Burden of proof - Designs Rules, 2001.
Fact of the Case:
Plaintiffs, manufacturers of plastic containers, filed a suit for infringement and passing off under the Designs Act, 2000, against the Defendants, who were also manufacturers of plastic containers. The Plaintiffs claimed that the Defendant's product infringed their registered design for a container with a wave-form pattern. The Defendants contended that the Plaintiffs' design lacked novelty and originality, and that there were several other similar designs in the market. They also claimed that they had a registered design for a flask with a wave-form pattern, which was prior to the Plaintiffs' registration.
Finding of the Court:
The Court held that the Plaintiffs' design was novel and original, and that the Defendant's product was an obvious and slavish imitation. The Court found that the Defendant was unable to show any prior publication or prior user of the Plaintiffs' design. The Court also held that the Plaintiffs had made out a sufficient prima facie case in both infringement and passing off, and that the balance of convenience favoured the Plaintiffs. The Court granted an injunction restraining the Defendant from manufacturing, marketing, and selling the infringing product.
Issues: 1. Whether the Plaintiffs' design was novel and original? 2. Whether the Defendant's product infringed the Plaintiffs' registered design? 3. Whether the Plaintiffs had made out a case of passing off? 4. Whether the balance of convenience favoured the Plaintiffs?
Ratio Decidendi: 1. The definition of 'design' under Section 2(d) of the Designs Act, 2000 is restrictive and speaks of features of shape, configuration, pattern, ornament, or composition of lines or colours. The definition has four facets: (i) what is being applied; (ii) to what is it being applied; (iii) how is it being applied; and (iv) what is the resultant effect of this application? 2. Novelty and originality are essential requirements for a valid design registration. Novelty means not in existence before, while originality speaks to an element of creativity. Novelty and originality are interlinked and together constitute the concept of 'novelty'. 3. The burden of proof is on the person who disputes the validity of a registration to show that the design is not new or original. 4. 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. 5. The test for infringement of a registered design is whether the impugned design is substantially different from the registered design. The Court must consider the rival designs as a whole to see whether the impugned design is substantially different from the design sought to be enforced. 6. In an action for passing off, the test is whether a person who purchases the Defendant's product is likely to be misled into believing that he was purchasing the Plaintiffs' product.
Final Decision: The Court granted an injunction restraining the Defendant from manufacturing, marketing, and selling the infringing product.
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, necessa
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