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2018 Supreme(Del) 2884
IN THE HIGH COURT OF DELHI AT NEW DELHI
YOGESH KHANNA, J.
Dart Industries Inc & Anr. - Plaintiffs
Versus
Polyset Plastics Pvt. Ltd. & Ors. - Defendants
CS (COMM) 630 & 631 of 2018
Decided On : 01-08-2018
Advocate Appeared:
For the Plaintiffs : Mr. Hemant Singh, Ms. Mamta R. Jha, Mr. Pranav Narain, Ms. Shrutttima Ehersa
For the Defendants : Mr. Sudhir Chandra, Mr. Jatin Zaveri, Mr. Neelkamal Mishra
The main legal point established in the judgment is the requirement for a prima facie case for infringement of registered designs, the balance of convenience, and the absence of irreparable loss to the defendant.
Headnote:
Infringement - Designs of Bottles and Caps - Designs Act, 2000 - Section 2(d), 4, 19, 22 - Aqua Safe Bottle - Eco Flip Top Bottle - Glaze wow bottle - Aava bottle - Novelty and originality of design - Registration of design - Infringement of design - Functional nature of design - Prima facie case for injunction
Fact of the Case:
The plaintiff filed a suit against the defendants for infringement of its designs of bottles and caps, alleging widespread reputation in the market for its Aqua safe bottle and Eco flip top bottle. The defendant claimed to be the registered proprietor of the design of the Glaze wow bottle and alleged suppression of facts by the plaintiff. The defendant also argued that the design was neither new nor original, and the market was already flooded with similar designs.
Finding of the Court:
The court found that the plaintiff had a prima facie case in its favor and granted the interim injunction, noting that the plaintiff would suffer irreparable loss/injury if the injunction was not granted. The court dismissed the defendant's application and allowed the plaintiff's application for injunction.
Issues: The issues raised included the novelty and originality of the plaintiff's design, the existence of other players in the market with similar designs, and the functional nature of the design.
Ratio Decidendi: The court held that the plaintiff had a prima facie case for infringement of its registered designs, and the balance of convenience was in its favor. The court also noted that the defendant's argument regarding irreparable loss was not supported by the defendant's continued business activities.
Final Decision: The court allowed the plaintiff's application for injunction and dismissed the defendant's application.
Yogesh Khanna, J.
IA No. 14512/2014 and 10831/2015 in CS(COMM) 630/2018; IA No. 14515/2014 and 10849/2015 in CS(COMM) 631/2018
1. The plaintiff has filed this suit against the defendants for infringement of its designs of bottles and caps in any size including 500ml, 750ml or 1 litre bearing the impugned designs or any other designs as may approved or obvious imitation of the plaintiff’s design registration no. 221424 and 221425 amounting the infringement thereof.
2. The plaintiff alleges:
a. the plaintiff no.1 is a company incorporated under the laws in Delware USA and the plaintiff no.2 is a company incorporated under the Companies Act 1956. The plaintiff’s belong to Tupperware Brands Corporation. The plaintiff no.1 being its subsidiary located in Florida USA;
b. tupperware Brands Corporation is a globally known as a multi-brand, multi-category, direct sales company. Prior to 2005 Tupperware brands corporation was known as Tupperware Corporation. It sells products under 8 brands consisting of Tupperware, which represents food preparation, storage and serving solutions for the home;
c. plaintiff no.2 was incorporated in the year 1996 as the subsidiary of plaintiff no.1 to carry on the business of distribution and marketing, interalia of food grade plastic storage containers and other products. Plaintiff no.1 is the owner of intellectual property rights including the proprietary know-how, innovative possession, trade secrets related to the Tupperware products, which are the culmination of the extensive research effort and investment by the plaintiff no.1’s predecessor companies or subsidiaries or sister concerns or as a collective effort of each of these affiliates of the plaintiff no.1 the labour, skill and judgment in addition to financial investments used for the manufacture by Tupperware products has resulted in the creation of novel and original design, moulds and drawings relating to Tupperware product;
d. the plaintiff alleges they have acquired widespread reputation in the market in respect of its product viz. aqua safe bottle which design includes the cap, created by Famia E. Ablo, a professional designer working with plaintiff no.1 as industrial designer. Since plaintiff no.1 is the proprietor of the design in question so it applied for registration of the said design with United States Patent and Trademark Office vide application No.29/310,710 (Bottle) and Application No.29/310,711 (Cap) dated 5th September, 2008 in class 09-01 and 09-07 respectively. The said design applications were granted US design registration nos. 609, 104 S dated 02.02.2010 (bottle) and 613, 160-S dated 06.04.2010 (Cap) the design, copy of design and registration certificates are placed on record. On grant of the US design no. 609,104-S, plaintiff no.1 took steps to file and obtain the aqua safe bottles design (including cap) in several countries including India by claiming same priority as US design application referred herein above namely 05.09.2008. The said bottle design is registered in 20 countries and the cap design in 19 countries. Accordingly design applications were filed before the Controller General of Patents, Designs and Trade Marks, India on 23.03.2009 claiming priority from the US Design 609,104 S (for Bottle) and US Design No. 613,160 S (for the Cap) whose priority dates were date of filing of their applications before USPTO on 05.09.2008. The said applications were granted design no. 221424 for bottle and design no. 221425 for cap design respectively;
e. the Aqua safe bottle is new, original and extremely popular in Indian market and acquired tremendous goodwill and reputation. Aqua safe bottle is one of the largest selling products of the plaintiff. The sale of the 500ml and 1litre bottle have raised from 5.6 crores and 15.2 crore in the year 2010 to 15.8 crores and 35.2 crores in the year 2013. The bottles are stated to be unique, distinctive, original, long-lasting, non-toxic and non-carcinogenic material. It is alleged
