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High Court Of Delhi
PREM SINGH - Appellant
Versus
CEEAM AUTO INDUSTRIES - Respondent
Interim Application 2683 of 1989
Decided On : 05/04/1990
COPYRIGHT - INFRINGEMENT - PASSING OFF - INTERLOCUTORY INJUNCTION - COPYRIGHT IN DESIGN OF TIN BOXES - SIMILARITY OF DESIGN - PRIOR USER - VALIDITY OF COPYRIGHT - CLEAN HANDS DOCTRINE - PIRACY OF THIRD PARTY'S DESIGN - NO DISTINCTIVE REPUTATION - NO INTERLOCUTORY INJUNCTION.
Fact of the Case:
Plaintiff, claiming to be the registered proprietor of the trademark "mexpal" and copyright in the design of tin boxes used for car polishes, sought an interlocutory injunction against the defendant for infringement of copyright and passing off. The defendant denied the plaintiff's originality and distinctiveness of the design, claiming that it belonged to another party, M/s. Waxpol Industries, and that the plaintiff had stolen both the trademark and copyright. The defendant also argued that the plaintiff had no right to use similar tin boxes even under a different trademark.
Finding of the Court:
The court found that the plaintiff's design was not original and was deceptively similar to that of M/s. Waxpol Industries, which had a registered trademark and copyright since 1962. The court also noted that the plaintiff had not provided evidence of any publicity or advertising of the design, and that the sale figures were not substantial. The court held that the plaintiff was not the originator of the design and had no distinctive reputation in the market.
Issues: 1. Whether the plaintiff was the originator of the design of the tin boxes and had a valid copyright in it? 2. Whether the defendant's use of a similar design constituted infringement of copyright or passing off? 3. Whether the plaintiff was entitled to an interlocutory injunction to restrain the defendant from using the similar design.
Ratio Decidendi: 1. The court held that the plaintiff was not the originator of the design and had no valid copyright in it, as it was deceptively similar to the design of M/s. Waxpol Industries, which had a prior registered trademark and copyright. 2. The court held that the defendant's use of a similar design did not constitute infringement of copyright or passing off, as the plaintiff had not established that the design was distinctive to his goods or that he had acquired a reputation in the market. 3. The court held that the plaintiff was not entitled to an interlocutory injunction, as he had not established a prima facie case of infringement or passing off, and the balance of convenience did not favor the grant of an injunction.
Final Decision: The court dismissed the plaintiff's application for an interlocutory injunction, holding that the plaintiff had not established a prima facie case of infringement or passing off, and that the balance of convenience did not favor the grant of an injunction. The court also held that the plaintiff was not the originator of the design and had no valid copyright in it.
( 1 ) THIS is plaintiff s application under Order 39 Rule 1 and 2 read with section 151 of the Civil Procedure Code, who has brought a suit seeking is liancs of permanent injunction against the defendant, asserting to be a registered proprietor of trade mark "mexpal" inrespect to goods of car polishes, and also having a copyright in a specific design, get-up, colour scheme etc. in relation to tin boxes in which the said goods are marketed and sold, alleging infringement of the said copyright on part of the defendants, and seeking a restraint order prohibiting them from manufacturing, selling or otherwise dealing in car polishes in the tin boxes identical or deceptively similar to those of the plaintiff.
( 2 ) THE area of controversy in the present case is very narrow, being restricted to the copyright in the design, colour scheme. shape and get-up of the tin-boxes, inasmuch as the trade mark of defendant s goods is wholly different for the reason that whereas the plaintiff s trade mark is "mexpal", that of the defendant s is "farishta". The plaintiff claims user since the year 1979. and registration of the copyright since 1980, when he got both his trade mark as well as copyright in the design of the tin boxes registered, The allegation is that the defendant is also in the same trade, and earlier in the year 1983 it came to plaintiff s notice that a concern known as M/s. M. K. Aggarwal Auto Industries was using plaintiff s trade mark, namely, "mexpal" and marketing the same in containers or tin boxes identical to those of the plaintiff, and for that reason a suit for perpetual injunction for an action for infringement of the trade mark, copyright and pas ing off was brought. It is pleaded that an interim injunction order was issued by the Court in that suit which was confirmed subsequently by order dated 23rd October 1984: which suit was still pending, as the defendant there after having agreed to a consent decree being passed, that he would retrain from infringing plaintiffs trade mark mexpal, resiled subsequently.
( 3 ) IT is alleged that the plaintiff has come to know now that the defendant has adopted a different trade mark namely "farishta", but persists in marketing his goods of car polishes in tin boxes, which are identical or deceptively similar to those of the plaintiff, inasmuch as the entire colour scheme, get up, lay-out, writing style and arrangement of words of the tix boxes as employed by the plaintiff, has been adopted by the defendant. The plaintiff asserting to be the originator and author of artistic work, consisting of the design, shape, get-up and colour scheme of his tin boxes, which he claims to have become distinctive of his goods, besides being a registered proprietor of the copyright. vide registration No. A-26895180, which registration is still subsisting. valid, and effective throughout India contends that the defendant has no right to use similar tin boxes for marketing his car polishes, even under a different trade mark, and that activities of the defendant were tantamount to infringement of the copyright of the plaintiff in the said tin boxes.
( 4 ) DEFENDANT s answer is short and simple, consisting of emphatic denial of plaintiff s assertion of beng the originator of the design, colour scheme, shape or get-up of the tin boxe^, or that the same were distinctive of plaintiffs goods. The contention is that the tin boxes, and the design and get-up to which the plaintiff claims the copyright, in fact belonged to another party by the name of M/s. Waxpol Industries Ltd. , Calcutta under registration No. 208989 granted on 17th. May, 1962 in class 3 in respect of cleaning and polishing preparations and that the said Mis. Waxpol Industries Ltd. has been using this design under trade mark "waxpol" on tin boxes of car polish since the year 1950. It is contended that the plaintiff has stolen both the trade mark as well as the copyright of the said M/s. Waxpol Industries by adopting trade
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