2015 Supreme(Del) 975

IN THE HIGH COURT OF DELHI AT NEW DELHI
MANMOHAN SINGH, J.
EICHER GOODEARTH PVT LTD - Plaintiff
versus
KRISHNA MEHTA & ORS - Defendants
I.A. No.8010/2014 (Order 39 Rule 1 and 2 CPC), I.A. No.13372/2014 (Order 39 Rule 4 CPC) in CS(OS) 1234/2014
Decided on : 29.6.2015

Headnote:

None

Fact of the Case:

The plaintiff, a company running renowned chain of retail stores and galleries showcasing and selling unique lifestyle products, filed a suit for permanent injunction, passing off, unfair competition, dilution, rendition of accounts and damages against the defendants. The defendants were engaged in the illegal acts of imitating the unique motifs, pattern, art works and designs of the plaintiff and applying the same in various permutations and combinations on their products for sale and thereby were directly engaged in illegal acts of passing-off, unfair competition and dilution. The plaintiff claimed that the defendant No.1 was working as a Design Consultant with the plaintiff company on retainership basis and had been associated with the plaintiff for almost 2 years. It was submitted that during these years of employment, the defendant No.1 had no rights in any of the art-work, motifs, patterns, designs he worked upon or dealt with in any manner whatsoever in as much as all the rights therein vested with the plaintiff company only. That in the year 2012 he left the plaintiff company and thereafter is providing for sale of identical patterns that too in relation to identical range of products on the website www.indiacircus.com with a malafide intent to encash upon the goodwill/reputation of the plaintiff. The defendants filed the reply, written statement, counter claim as well as application for vacation of the interim order. The defence and all pleas raised by the defendants were common in the pleadings, the same is narrated as under: a. All the plaintiff’s designs in question are inspired by work of art available since centuries and the same are not being original designs as claimed by the plaintiff who is not the owner, inventor or creator of the same and no one can claim exclusive right on the Heritage/ Indian Tradition / Nature. b. It is the version of plaintiff that its designs namely Vrindavan, Periyar, Lotus are registered designs of the plaintiff under the provisions of the said Act, though no documents in support of the same has been produced by the plaintiff. Apart from the said three designs, the plaintiff has also alleged imitation of other four designs i.e. Falcon, Rose Princess, Seria and Bali Mynah. No relief can be claimed or can be granted to the plaintiff in respect of all the seven designs i.e. Falcon, Rose Princess, Periyar, Seria, Lotus, Bali Mynah and Vrindavan as the alleged designs of the plaintiff are not new or original. c. Since November, 2011 the defendant No.1 has started the defendant No.2 Company who has acquired an excellent reputation in its field with having over a few hundred products on its website and various designs. The defendant No.2 was established in November, 2011 who is engaged in designing, marketing, selling and retailing lifestyle products and also offering design label and sophisticated designs. The defendant No.2 (India Circus) is closely associated with defendant No.1, a well established and renowned designer who has also been associated with a number of lifestyle brands like 'The Elephant Company', 'The Bombay Store', 'Good Earth' (i.e. the plaintiff), Zeba, Godrej and Metro. d. The defendants have compared each design with the plaintiffs design as well. The details of inspiration by the defendants in order to also show that the plaintiffs’ all designs are pre-known, prior published and some of them are in public domain for the last many centuries. The comparison chart is reproduced herein below: • Design – Falcon • Design - Rose Princess • Design – Periyar: • Design – Serai: • Design – Lotus: • Design – Vrindavan: • Design – Bali Mynah: So far as the claim of the Plaintiff regarding passing off is concerned, merely imitation and the similarity would not be sufficient and unless the intention to pass off is established the case of passing off is made out. The defendants have their own website www.indiacircus.com where the products of the defendants are sold. Any person buying the products manufactured by the defendants from their website will always be aware that they are buying the products of the defendants.

Finding of the Court:

The Court found that the defendants were using visually, structurally and deceptively similar motifs or patterns or designs or piece of art as that of the plaintiff as alleged or at all and selling those products on their website or it constitutes passing off or unfair competition or dilution. The Court also found that the defendants were subsequent users of the impugned designs and were using such identical designs merely to ride on the reputation and goodwill of the plaintiff. The Court further found that the products of the parties are being displayed next to each other in various interior decor and fashion magazines are irrelevant. The Court also found that the plaintiff is the originator, inventor and owner of the said motifs, patterns, designs and piece of art and the plaintiff is seeking restrain orders by way of present suit before this Court against the defendants who are adopting and using visually, structurally and deceptively similar motifs, pattern, designs and piece of art of the plaintiff in any manner whatsoever and doing anything to cause confusion or deception amongst the consumers.

Issues: Whether the defendants were using visually, structurally and deceptively similar motifs or patterns or designs or piece of art as that of the plaintiff as alleged or at all and selling those products on their website or it constitutes passing off or unfair competition or dilution. Whether the defendants were subsequent users of the impugned designs and were using such identical designs merely to ride on the reputation and goodwill of the plaintiff. Whether the products of the parties are being displayed next to each other in various interior decor and fashion magazines are irrelevant. Whether the plaintiff is the originator, inventor and owner of the said motifs, patterns, designs and piece of art and the plaintiff is seeking restrain orders by way of present suit before this Court against the defendants who are adopting and using visually, structurally and deceptively similar motifs, pattern, designs and piece of art of the plaintiff in any manner whatsoever and doing anything to cause confusion or deception amongst the consumers.

Ratio Decidendi: The Court held that in a passing off action, the plaintiff has to establish the following ingredients: (i) That there is goodwill or reputation attached to the goods or services which the plaintiff offers in the mind of the purchasing public. (ii) That the defendant has employed misrepresentation. (iii) The defendants’ action has caused damage. The Court also held that an action for passing off of a design requires firstly that the design "be used as a mark", and such design/mark "identified the Plaintiff as the source of goods supplied or services offered" as the plaintiff in the present matter has claimed that the design used by them as a mark which is associated by the public and the same have unique goodwill and reputation; the same is not disputed by the other side.

Final Decision: The Court made the interim order absolute by disposing of both interim applications. The Court also vacated the ex-parte order pertaining to the design of Lotus and Bali Mynah. However, the defendant was restrained from using the titles Bali Mynah and Rose Princess in relation to the similar business as that of the plaintiff. The Court also gave the use of the Periyar design to the defendants during the course of arguments.