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High Court Of Delhi
SMITHKLINE BICHAM - Appellant
Versus
HINDUSTAN LEVER LIMITED - Respondent
Interim Application 94450 of 1996
Decided On : 11/26/1999
Held:
The plaintiffs have also not placed on record any evidence of any use, reputation or goodwill in the S bend feature of the plaintiffs tooth brush FLEX even internationally prior to launch in India i.e. in June, 1996. They have not even placed a single advertisement published in India or invoice prior to 1996 to show and indicate that there is subsistence of any goodwill in this country. In absence of any evidence of goodwill or any reputation it cannot be presumed that the plaintiffs achieved a trans-border reputation prior to the filing of the suit in respect of their tooth brush, no injunction could be granted in favor of the plaintiff even in respect of OZETTE manufactured and marketed by the defendants vis-a-vis ACQUAFRESH FLEX. In the case of Whirlpool reported in 1996 PTC 415 there was voluminous evidence produced which were circulated in India for several years and the goods were sold to Embassies and in the context of such evidence this court held that the said product achieved transborder reputation. No such evidence has been placed in the present case at least prior to 1996 and even whatever evidence has been placed on record after 1996 the same does not establish, that the plaintiffs achieved a trans-border reputation. In order to prove transborder goodwill and reputation the plaintiffs have relied upon materials published in the dental journal which admittedly has very restricted circulation. Mere publication of such advertisement and materials in dental journal cannot and would not establish a transborder reputation. Such reputation, if any, was confined to a particular class of people i.e. the persons subscribing to the said specialised journals and cannot be said to be extended to the general consumers. It could not be shown that any advertisement was made by the plaintiffs prior to 1996 in any journal or magazine having wide circulation. In absence of same it is not possible to hold that the tooth brush of the plaintiff acquired any trans-border reputation and goodwill.
Considering the entire facts and circumstances of the: case and also the three factors which are required to be considered for granting a temporary injunction 1 am of the considered opinion that the plaintiffs have failed to make out any case for grant of ad interim injunction and accordingly, the application stands dismissed.
( 1 ) THE plaintiffs instituted a suit in this court praying for a decree of declaration that the plaintiffs are exclusive owners and proprietors of the tooth brush designs `acqua FLEX and `acquafresh FLEX N DIRECT having foreign registrations. In the suit a decree for permanent injunction was also sought for preventing infringement of the tooth brush design registration of the plaintiffs by restraining defendants, their partners, servants and agents from manufacturing, selling or offering for sale tooth brushes bearing same designs which are identical with or deceptively similar to the tooth brush of the plaintiffs and also from restraining the defendants 1 and 2 jointly and severally from passing off their business and goods as those of the plaintiffs and also for payment of damages for a sum of Rs. 5,05,000. 00. Alongwith the aforesaid suit an application for temporary injunction was also filed seeking for an injunction restraining the defendants from making infringement to the said tooth brush design and from manufacturing, selling or offering for sale tooth brushes having designs which are identical with or deceptively similar to that of the plaintiffs.
( 2 ) IT is the case of the plaintiffs that the plaintiff No. 1 through its own efforts and through the efforts of its subsidiary companies developed the design of a tooth brush consisting of a distinctive aesthetic handle and head shape, a connecting portion with S-shaped (zig-zag) folds between the Head (carrying the `bristles ) and the Handle for which the plaintiffs obtained foreign registrations. It was further stated that the plaintiffs No. 1 and 2 had entered into an Intellectual Property Right Agreement dated 3. 6. 1996 whereunder the plaintiff No. 1 appointed the plaintiff No. 2 as its distributor to sell and distribute throughout India including the Territory of Delhi tooth brushes manufactured as per the foreign and/or Indian registered design of plaintiffs No. 1 and/or 3.
( 3 ) IT is alleged that the traders including defendant No. 1 who happened to go abroad, came across the acquafresh tooth brush of the plaintiffs or otherwise acquired knowledge about its distinctive design, and after making applications in India for registration of the said tooth brush design of the plaintiffs in their own name and the said applications for registration of design filed by defendant No. 2 were accepted and were granted registration without making proper investigation and search of Designs Register for existing registered designs and publications. In the light of the aforesaid statements the plaintiffs sought for a decree for declaration and for permanent injunction as delineated above and also sought for a temporary injunction.
( 4 ) THE defendants entered appearance and contested the suit for filing written statements as also replies to the application seeking for temporary injunction. The aforesaid application seeking for temporary injunction was pressed before me, on which I heard Mr. Michael Fyash and Mr. Arun Jaitley, appearing for the plaintiffs and Mr. Ashok Desai and Mr. V. P. Singh appearing for defendants No. 1 and 2 respectively. I propose to dispose of the said application by this order.
( 5 ) IT was argued on behalf of the plaintiffs that the plaintiffs manufactured and marketed two tooth brushes which are known and marketed as `acqua FLEX and `aquafresh FLEX N DIRECT which comprise of distinctive aesthetic handle and head shape, a connecting portion with s shaped (zig-zag) folds between the head carrying bristles and the handle. It is the specific case of the plaintiffs that the `s shaped region is primarily aesthetic and also serves the function of modifying flexibility of the connecting portion. The plaintiffs have pleaded that the aforesaid designs of the plaintiffs have foreign registration, for they have obtained registration in respect of the said design in Great Britain and other countries and also applied for registration of t
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