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IN THE HIGH COURT AT CALCUTTA
Ravi Krishan Kapur, J.
The Raring Corporation And Anr. – Petitioners
Versus
Neogie Engineering Works Pvt. Ltd. – Respondents
IA NO: GA/1/2023 EOS/4/2022
Decided On : 20-06-2023
COPYRIGHT IN REGISTERED DESIGN - INFRINGEMENT - DESIGNS ACT, 2000 - SECTIONS 2(d), 4, 15, 19, 22 - SUIT FOR INFRINGEMENT OF COPYRIGHT IN REGISTERED DESIGN - INTERIM INJUNCTION - APPLICABILITY OF PRINCIPLES OF CASTROL INDIA LTD. VS. TIDE WATER OIL CO.(I) LTD. - HELD, THAT THE REGISTERED DESIGN WAS NOT PURELY FUNCTIONAL AND THAT THERE WAS NO EVIDENCE OF PRIOR PUBLICATION.
Fact of the Case:
The petitioners, well-known manufacturers and suppliers of dust collection and suppression systems, had designed a new "Sonic Nozzle" and obtained registration for its design under the Designs Act, 2000. They filed a suit for infringement of copyright against the respondent, who had allegedly started manufacturing an identical "Sonic Nozzle".
Finding of the Court:
The court held that the respondent's design was strikingly similar to the petitioner's registered design and that the respondent had failed to adduce any evidence to substantiate its claim that the registered design was purely functional or that there had been any prior publication.
Issues: Whether the respondent's design infringed the petitioner's copyright in the registered design.
Ratio Decidendi: The court relied on the principles laid down in Castrol India Ltd. vs. Tide Water Oil Co.(I) Ltd. and held that the registered design was not purely functional and that there was no evidence of prior publication. It also noted that the respondent had failed to provide any evidence to demonstrate that the registered design was the only design that could have been devised.
Final Decision: The court granted an interim injunction in favor of the petitioners, restraining the respondent from manufacturing, selling, or distributing the impugned design.
JUDGMENT :
Ravi Krishan Kapur, J.
1. In a suit for infringement, the petitioners seek interim protection in respect of the copyright in a registered design “Sonic Nozzle”.
2. Briefly, the petitioners are well known manufacturers and suppliers of Dust Collection and Suppression Systems of different varieties. The petitioner no.2 had entered into a collaboration with the petitioner no.1 to market and sell the petitioner no.1’s Agglomerative Dust Suppression (ADS) systems in India.
3. In or about early 2016, the petitioner no.1 after continuous efforts in the development of new and enhanced nozzles designed a new “Sonic Nozzle” which forms an essential component of ADS system for its fog based dust suppression system having a distinctive shape and configuration. In order to protect their distinctive design, the petitioner no.1 applied for registration of its article under the provision of the Designs Act, 2000 (the Act). Such application was filed on January 6, 2016 and registration was granted to the petitioner no.1 on January 19, 2017. The registration granted in favour of the petitioner records that “the novelty resides in the shape and configuration of the “Sonic Nozzle” as illustrated”.
4. In or about May, 2019 the petitioners came to learn that the respondent has started manufacturing a “Sonic Nozzle” identical to the Sonic Nozzle registered in favour of the petitioner no.1. A Search Information Report issued by the Assistant Controller of the Patents and Designs also confirms that the design of the article of the respondent is similar to the registered design of the petitioner no.1.
5. It is contended on behalf of the petitioners that the registered design in favour of the petitioner no.1 has been copied in all aspects by the respondent and is identical to the registered design of the petitioner no.1.
6. On behalf of the respondent, it is contended that the registered design in favour of the petitioner is functional and does not have any eye appeal. It is further contended that the alleged design of the petitioner no.1 is purely a mechanical device which is dictated solely by functionality. There is no aesthetic element involved in the registered design. The Act specifically excludes designs which are purely mechanical devices. It is also contended that the registered design is a published prior design. In support of their contentions, the respondent relies on the decisions in Tecalemit Ld. vs. Ewarts, Ld. (1927) 44 RPC 503, Amp Incorporated vs. Utilux Proprietary Limited (1972) RPC 103, Stenor Ltd. vs. Whitesides (1946) 63 RPC 81, Smithkline Beecham vs. Hindustan Lever Limited (2000) 52 DRJ 55 and APL Apollo Tubes vs Surya Roshni Limited (2017) 72 PTC 229.
7. Upon the filing of the suit, the petitioner has obtained an interim order of restraint dated 4 September, 2019. The matter was heard after the filing of the affidavits.
8. A comparison of the impugned article with the registered design of the petitioner no.1 shows a striking resemblance. On a visual inspection, prima facie, the respondent has copied all the essential features of the petitioner’s article. The broad features of shape, configuration, pattern etc., are substantially identical and bear a striking similarity to the registered design of the petitioner no.1. [Castrol India Ltd. vs. Tide Water Oil Co.(I) Ltd. (1994) SCC OnLine Cal 303 at paras 38 & 39 and Relaxo Footwares Limited vs. Aqualite Industries Pvt. Ltd. (2021) SCC OnLine Del 4651 at paras 27 & 39]
9. On the aspect of the registered design being purely functional, other than bare allegations, the respondent has failed to adduce any documentary evidence to substantiate such objection. There is no material to demonstrate that the impugned design is purely functional in nature. The novelty claimed is in the shape and configuration of the “Sonic Nozzle”. Ordinarily, in such cases, the question of functionality can be resolved by ascertaining whether the subject article could be made to function by use of any other
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