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2012 Supreme(Mad) 1852
2012 (3) LW 463
High Court of Judicature at Madras
V. PERIYA KARUPPIAH
Indecon Structurals Pvt. Ltd., Rep. by its Managing Director D.P. Padmanabhan, Greams Road, Chennai
Versus
Ultra Tiles Pvt. Ltd., Ashok Nagar, Chennai
A.S. No. 433 of 1999
Decided On : 12-04-2012
For the Appellant:Sundar, Advocate.
For the Respondent:Prabhakar Reddy, Advocate.
Headnote:
DESIGN - INFRINGEMENT - COPYRIGHT - PASSING OFF - REGISTRATION OF DESIGN - VALIDITY - CANCELLATION - JURISDICTION - CONTEMPT OF COURT - INJUNCTION - INTERIM INJUNCTION - SUIT FOR INJUNCTION - SUIT FOR DAMAGES - SUIT FOR RENDERING OF ACCOUNTS - SUIT FOR SURRENDER OF GOODS.
Fact of the Case:
The plaintiff, a manufacturer of pre-polished concrete tiles, filed a suit against the defendant, a former employee, for infringement of copyright, passing off, and other reliefs. The plaintiff alleged that the defendant had copied the plaintiff's unique tile design, which was registered under the Copyright Act, and was selling tiles that were substantially similar to the plaintiff's tiles. The plaintiff also filed an original petition seeking cancellation of the defendant's design registration.
Finding of the Court:
The court held that the plaintiff's copyright registration was not valid because it was for a literary work, not an artistic work. The court also held that the defendant's tile design was not substantially similar to the plaintiff's tile design. The court further held that the plaintiff was not entitled to an injunction because it had not established a prima facie case of infringement. The court also held that the plaintiff was not entitled to damages or an accounting because it had not established that it had suffered any damages. Finally, the court held that the plaintiff was not entitled to an order requiring the defendant to surrender its tiles because it had not established that the defendant's tiles were infringing.
Issues: 1. Whether the plaintiff's copyright registration was valid. 2. Whether the defendant's tile design was substantially similar to the plaintiff's tile design. 3. Whether the plaintiff was entitled to an injunction. 4. Whether the plaintiff was entitled to damages or an accounting. 5. Whether the plaintiff was entitled to an order requiring the defendant to surrender its tiles.
Ratio Decidendi: 1. A copyright registration is not valid if it is for a literary work, not an artistic work. 2. A tile design is not substantially similar to another tile design if it has a different shape, configuration, pattern, or ornament. 3. A plaintiff is not entitled to an injunction if it has not established a prima facie case of infringement. 4. A plaintiff is not entitled to damages or an accounting if it has not established that it has suffered any damages. 5. A plaintiff is not entitled to an order requiring the defendant to surrender its tiles if it has not established that the defendant's tiles are infringing.
Final Decision: The court dismissed the plaintiff's suit and the plaintiff's original petition.
A.S.No.433 of 1999:This appeal is directed against the judgment and decree passed by the trial court made in O.S.No.1 of 1996 dated 19.06.1998 in dismissing the suit filed by the plaintiff without costs.
2.O.P.No.328 of 1998: This petition has been filed by the petition, seeking for cancellation of registration of design under Section 51 A of the Design Act with regard to the registration of design in Design No.171127 dated 19.04.1996 under certificate dated 26.12.1996 under Class-4 of Designs Act, 1911, granted in favour of the respondent and for other reliefs.
3. The appellant was the plaintiff and the respondent was the defendant before the trial court. The said appellant is also the petitioner and the respondent is also the respondent in the aforesaid original petition.
4. A.S.No.433 of 1999: The case of the plaintiff before the trial court would be as follows:-
The plaintiff manufactures and markets is different types of tiles under the trade mark "EUROCON TILES" along with various marks Aquarius, Taurus, Regalia, Pisces etc., in combination with trade mark "Eurocon Tiles". The trade mark "Eurocon Tiles" has been registered under the Trade and Merchandise Marks Act under No.437663 and this is in force. The plaintiff has executed many prestigious projects for a wide cross section of clientele and the projects successfully executed and acclaimed include public concourses, hotels, clubs, industrial houses, hospitals etc. The plaintiff is the first prepolished concrete tile manufacturing company in India to have bagged many prestigious orders from foreign countries such as Singapore, Maldives, Srilanka. The plaintiff has introduced a variety of designer tiles which range from the curved and chamfered, textured and hexagonal to the wary and ribbed and as such revolutionised and inter-nationalised the tile industry of India.
4(2) The plaintiff has designed a particular variety of tile under the name Aquarius which it is manufacturing since 1992, which has specific application for drive ways, walk ways, gardens, parks, porticos, sit-outs, swimming pool decks etc. The said tile is a uniquely shaped interlocking cement concrete tile. The uniqueness of the shape of Aquarius tiles primarily stems from the curvature which has been designed both on the top and bottom side of the tile. This curvature creates a unique flowing wavy pattern and also performs the function of inter-locking between tiles when they are laid. The plaintiff has designed the said tile by employing enormous skill energy, labour and capital and in fact in view of the uniqueness of shape, design and configuration, the said tiles manufactured by the plaintiff has won widespread public as claim. The plaintiff having designed the said tile, it has become the owner of the copyright in the drawing in respect of the said product with the sole right to produce or reproduce the said drawings or any substantial part thereof in any material form whatsoever to the exclusion of all other persons. The plaintiff being the owner of the copyright in the said drawing, has made an application for registration of the said work under the Indian Copyright Act 1957 claiming user from 1992. The plaintiff is the owner of the copyright in respect of the said drawing and no person is entitled to use the same to manufacture any produce by reproducing the said drawing in three dimensional form or use the said drawing in any other manner whatsoever.
4(3) In view of the uniqueness and novelty of the design of the said tile, the corporation or the city of Madras has awarded a contract to the plaintiff for the aesthetic pavement formation of the famous Marina Beach as part of its Madras Vision 2000 project.
4(4) The plaintiff was shocked and surprised to come across during the third week of December, 1995, tiles of identical shape and design manufactured by the defendants. The said tiles are a substantial reproduction in three dimensional form of the drawing of the plaintiff, in respec
