Back
IN THE HIGH COURT OF MADHYA PRADESH (INDORE BENCH)
SUJOY PAUL, SHAILENDRA SHUKLA, JJ.
Praveen Muraka - Appellant
Versus
Bhama Enterprises India Pvt. Ltd. and Ors. - Respondents
MA No. 2488 of 2020
Decided On : 16-02-2021
Design - Designs Act, 2000 - Section 4, Section 5 - The judgment discusses the application of the Designs Act, 2000 in a case involving the infringement of registered designs of water bottles branded as 'Kool Kommandar' and 'Cool Cutie'. The court analyzed the provisions of the Act, including the definition of 'design', the prohibition of registration of certain designs, and the application process for registration of designs. The court emphasized the requirement for a design to be new or original for registration and highlighted the interpretation of 'new' and 'original' as meaning not previously published or reproduced by anyone. The judgment also discussed the relevance of prior registrations and the estoppel of the defendant from claiming invalidity of registration in favor of the plaintiff. The court emphasized the 'look alike' test for determining similarity between designs and criticized the lower court for applying impermissible parameters in rejecting the application for injunction. The judgment cited relevant case law to support its interpretation of the Act and concluded by setting aside the lower court's order and allowing the application for injunction.
Fact of the Case:
The appellant, a manufacturer of water bottles branded as 'Kool Kommandar', filed an appeal against the order of the Commercial Court disallowing the application for injunction under Order XXXIX Rule 1 & 2 of CPC. The dispute involved the infringement of the appellant's registered design by the respondent's water bottle branded as 'Cool Cutie'. The appellant sought to restrain the respondent from infringing or passing off the appellant's registered design.
Finding of the Court:
The court found that the design of the respondent's bottle was not new or original and was substantially similar to the appellant's registered design. The court criticized the lower court for applying impermissible parameters in rejecting the application for injunction and set aside the lower court's order, allowing the application for injunction.
Issues: The issues involved in the case included the determination of the novelty and originality of the designs under the Designs Act, 2000, the application of the 'look alike' test for similarity between designs, and the relevance of prior registrations in establishing the newness and originality of a design.
Ratio Decidendi: The court's decision was based on the interpretation of the Designs Act, 2000, particularly focusing on the requirement for a design to be new or original for registration, the 'look alike' test for similarity between designs, and the estoppel of the defendant from claiming invalidity of registration in favor of the plaintiff.
Final Decision: The Miscellaneous Appeal was allowed, and the impugned order of the Commercial Court was set aside, allowing the application filed under Order XXXIX Rule 1 and 2 of the C.P.C. No costs were awarded.
ORDER :
Sujoy Paul, J.
1. The subject matter of challenge in this miscellaneous appeal filed under Order XLIII Rule 1(r) of the Code of Civil Procedure, 1908 (CPC) is the order of learned Commercial Court, Indore dated 05/09/2020, whereby application filed by appellant/plaintiff under Order XXXIX Rule 1 & 2 of CPC is disallowed. The appellant and respondents are manufacturer/proprietors of water bottles branded as "Kool Kommandar" and "Cool Cutie" respectively. They have taken diametrically opposite stand relating to newness and originality of the design of their bottles. Since attempt of appellant to obtain injunction against "Cool Cutie" failed, this appeal is filed assailing the order of Commercial Court and praying that the respondent be restrained from infringing or passing off the appellant's registered design in the interest of justice.
2. Certain facts are not in dispute in the instant case and pertinently, Court below in para-6 onwards of the impugned order mentioned those facts. It is apt to mention those relevant admitted facts:-
(i) The appellant/plaintiff manufactures bottle branded as "Kool Kommandar" and defendant No. 1 manufactures the bottle branded as "Cool Cutie".
(ii) Appellant/Plaintiff is a prior user of design of bottle "Kool Kommandar", whereas defendant's bottle "Cool Cutie" came into being later on.
(iii) The design of "Kool Kommandar" was registered under the Designs Act, 2000 (Act of 2000) on 30/11/2015, whereas design of "Cool Cutie" was registered on 08/01/2019.
(iv) Before institution of instant suit, the appellant sold 3, 81, 571 bottles of "Kool Kommandar".
(v) One of the defendants was employee of appellant/plaintiff.
3. The learned counsel for the parties appearing before us also fairly submitted that the aforesaid facts are not in dispute.
4. Shri Abhinav Malhotra, learned counsel for the appellant reiterated the stand taken by appellant before the Court below and urged that Section 4 of the Act of 2000 is mandatory in nature and protects a new or original design. The relevant factors for attracting Section 4 of the Act of 2000, aforesaid are in favour of the appellant yet Court below rejected the application preferred under Order XXXIX Rule 1 & 2 of CPC. Attention of this Court is drawn on a comparative chart (Page 45 & 46), to bolster the submission that the bottle "Cool Cutie" does not have any element of "new or original". The said chart is reproduced herein under:-
|
| PLAINTIFF'S 'KOOL KOMMANDAR' BOTTLE | DEFENDANTS' 'COOL CUTIE' BOTTLE |
| 1. | The Plaintiff's Kool Kommandar Bottle has a unique shape, configuration and surface pattern. | Identical shape, configuration and surface pattern has been adopted by the Defendants in their Cool Cutie Bottle. |
| 2. | The Configuration of the Kool Kommandar Bottle is such that it appears as if it is a unibody. | The Configuration of the Cool Cutie Bottle is such that it appears as if it is a unibody. |
| 3. | The surface pattern of the Kool Kommandar Bottle has a unique cylindrical cap which looks aesthetically attractive. | The surface pattern of the Cool Cutie Bottle has a unique cylindrical cap which looks aesthetically attractive. |
| 4. | Clean and bold cartoon graphic elements attractive to kids make Kool Kommandar Bottle stand out in cluttered market place / against the competition. | Clean and bold cartoon graphic elements attractive to kids make Cool Cutie Bottle stand out in cluttered market place / against the competition. |
| 5. | The surface of the bottle has a shining effect which gives elegant effect to the Kool Kommandar Bottle. | The surface of the bottle has a shining effect which gives elegant effect to the Cool Cutie Bottle. |
| 6. | The main body of the Kool Kommandar Bottle as also its cap contains a unique unibody design elegant. | The main body |
AI
The court ruled that design piracy requires examination from the perspective of an informed user aware of prior art; the plaintiff's design not being a fraudulent or obvious imitation led to the dism....
The onus to prove lack of novelty or originality in a design as a ground of defence against design piracy lies with the defendants, and unsubstantiated claims cannot invalidate the plaintiff's copyri....
Mere registration of a design does not automatically entitle the registrant to claim protection. The protection of essential features and the extent of similarity in designs are crucial in determinin....
Temporary injunction denied as plaintiffs failed to establish prima facie case due to admitted similarities in designs and functionality claims, violating provisions of the Designs Act.
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
