Full Text
HIGH COURT OF DELHI
Date of Decision: 17th July, 2019.
DART INDUSTRIES INC & ANR ..... Plaintiffs
Through: Mr. Hemant Singh, Ms. Mamta Jha, Ms. Shruttima Ehensa and Ms. Roshanara Rauf, Advs.
Through: Mr. Sushant Singh and Mr. Kunal Khanna, Advs.
JUDGMENT
1. The two plaintiffs, Dart Industries Inc. and Tupperware India Pvt. Ltd. instituted this suit against the four defendants (i) Vijay Kumar Bansal,
(ii) Techno Plast, (iii) Techno Plastic Industries and (iv) Bajrang Crockery
Corner, for permanent injunction restraining infringement of design, passing off and for ancillary reliefs, pleading (a) that the plaintiffs belong to the Tupperware Brands Corporation; the plaintiff No.1 is the subsidiary of Tupperware Brands Corporation, United States of America (USA) and the plaintiff No.2 is a subsidiary of plaintiff No.1; (b) that the plaintiff No.1 is the owner of intellectual property rights related to Tupperware products; (c) that the marketing and sale of Tupperware products is carried out by direct selling method; (d) that one, amongst most successful and reputed Tupperware products manufactured by the plaintiffs, is a Casserole / 2019:DHC:3449 Serving Bowl having a unique and novel design; its lid in particular has a distinctive butterfly knob design; the lid as well as the bowl are subject matter of design registrations in various countries worldwide including India; though the plaintiffs‟ casserole lid and bowl are independently registered, both being independent articles manufactured and sold together as well as separately, the present suit pertains to the infringement of design registration pertaining to the lid only; (e) that the casserole is used for storage and serving of cooked food which is kept warm in it; (f) that the features of novelty of design in Tupperware casserole lid, reside in the butterfly knob of the lid and combination of overall shape, get up, configuration as well as surface pattern of the inner and outer lids conjoined together; (g) that the feature of novelty of design in Tupperware casserole bowl also resides in its distinctive elliptical shape, downward protruding peripheral edges, the surface pattern emerging from conjoined use of inner and outer bowls, capable of also being used separately and which together impart an overall novel, unique and aesthetic eye appeal thereto; (h) that the said designs therefore constitute registerable designs in law, under the Designs Act, 2000; (i) that the said designs were authored for and on behalf of the plaintiffs and the authors have assigned rights in favour of the plaintiff No.1; (j) that the casserole lid cover is registered in India as a design at No.191086 and the casserole bowl is registered as a design at No.191087; (k) that “the features of novelty and uniqueness which together and conjointly impart a distinctive get up to the plaintiffs‟ casserole” are broadly categorized as under: “(a) a casserole lid with distinctive butterfly design knob with elliptical matte finish base of dark colour, being protrusion of the inner lid fitted underneath and emerging through elliptical opening in the outer lid which is of contrasting light colour;” (b) a set of dual casserole bowls used together, with dark coloured inner bowl (same as the colour of the inner lid) and an outer bowl having matte finish of light colour (same as the colour of the outer lid);
(c) a subdued glossy border depicted upon the outer lid;
(d) the combination of dark coloured inner bowl and light coloured outer bowl which when used together, constitutes the rim of the casserole of contrasting colours, upon which the casserole lid rests and which together impart a distinctive and attractive appearance to the casserole as a whole; The same is depicted pictorially as under: ”
(l) that the casserole of the plaintiffs being distinctive and unique, has acquired brand equity, brand significance and the status of a source identifier; (m) that the branding of Tupperware by the plaintiffs upon their products is such that the brand name „Tupperware‟ does not appear prominently or conspicuously on the product and appears embossed in the same colour as that of the lid underneath the inner cover of the lid and upon the bottom surface of the bowl; hence the product is mainly identified and distinguished by consumers by its overall get up which is inherently distinctive; (n) that the said get up of the plaintiffs‟ casserole constitutes trade mark; (o) that the defendants are involved in manufacture and sale of the impugned casserole which is not only an infringement of plaintiffs‟ registered design No.191086 but is also a blatant imitation of the get up and trade dress of the plaintiffs‟ casserole amounting to passing off; (p) that the defendants have copied the overall shape, configuration and surface pattern of plaintiffs‟ casserole lid / serving bowl and have used identical lid design having a butterfly knob; the defendants have even copied the individual components as well as the colour scheme of the plaintiffs‟ casserole; and, (q) that the photographs depicting the defendants‟ casserole are as under: Hence, the suit for permanent injunction restraining infringement of design and passing off and for ancillary reliefs.
2. The suit came up first before this Court on 30th September, 2011, when, though summons of the suit and notice of the application for interim relief were ordered to be issued but no interim relief granted, reasoning that the defendants had also registered a design of their product and certificate in which regard had been handed over by the counsel for the defendants appearing on seeing the matter in the Cause List. No substantial progress save for completion of pleadings was made in the suit till the pronouncement of the three Judge Bench decision in Mohan Lal Proprietor of Mourya Industries Vs. Sona Pain & Hardwares 2013 (55) PTC 61 (Del) holding a composite suit for infringement of design and passing off to be not maintainable. Accordingly, vide order dated 4th October, 2016, the plaintiffs were asked to elect, whether they wanted to pursue this suit as one of infringement of design or one for passing off. The plaintiffs filed IA No.12801/2016 for deleting from the plaint all averments relating to infringement of design and confining the suit for the reliefs claimed on the ground of passing off only. The said application was allowed on 18th October, 2016.
3. The plaintiffs filed FAO(OS)(COMM) No.103/2016 against the order dated 4th October, 2016 asking the plaintiffs to elect.
4. The defendants filed IA No.13717/2016 for amendment of the written statement and which application was dismissed vide order dated 11th November, 2016. Though the defendants also preferred FAO(OS)(COMM) No.123/2016 against the said order but withdrew the same on 5th July, 2017.
5. Arguments on this application for interim relief were heard on 5th January, 2018, 9th January, 2018 and 17th January, 2018 and orders reserved. The plaintiffs filed IA No.6344/2019 informing that the order dated 4th October, 2016 asking the plaintiffs to elect, whether they desire to proceed with the suit on the ground of infringement of design or on the ground of passing off, was set aside by the Division Bench of this Court in FAO(OS)(COMM) No.103/2016. The said application came up before this Court on 2nd May, 2019, when the counsel for the plaintiffs sought clarification that the suit will proceed on the basis of the plaint as originally filed and not on the basis of amended plaint filed pursuant to the order dated 4th October, 2016. The counsel for the defendants on 2nd May, 2019 contended that in view of Crocs Inc. USA Vs. Aqualite India Limited 2019 SCC OnLine Del 7409, the suit insofar as for the relief of passing off, to which the plaint was confined pursuant to the order dated 4th October, 2016, did not survive. IA No.6344/2019 was thus allowed and it was ordered that the suit was to proceed on the basis of the plaint as originally filed and not on the basis of the amended plaint. Since the arguments on the application for interim relief earlier heard were on the premise of the ground of passing off only, this application for interim relief was posted for fresh hearing for today.
6. I may mention that the defendants, in their joint written statement dated 14th October, 2011 have pleaded, (i) that the defendants have been manufacturing and marketing the subject casserole and lid since the year 2009, to the knowledge of the plaintiffs; (ii) that the suit for infringement of registered design is not maintainable as no suit for infringement of registered design lies against a registered proprietor of the design; (iii) that the plaintiffs‟ registration has been wrongly made—it is not in relation to an article and has been made under wrong classification; (iv) that the design of the plaintiffs as well as of the defendants have been registered by the wisdom, found sufficient distinction to sustain both the designs; (vi) that no case of passing off is made out as there are sufficient distinguishable features; while the plaintiffs‟ mark is „Tupperware‟, the mark of the defendants is „Signoraware‟ and the marks are mentioned on the products;
(vii) that there is a huge price variation, of more than double, between the plaintiffs‟ products and the defendants‟ products; (viii) that no remedy of passing off is available under the Designs Act, 2000; (ix) that the defendants are also the registered proprietors of the design in question vide registration No.221959 dated 26th March, 2009; (x) that the design of the plaintiffs is neither novel nor original within the meaning of Section 4 of the Designs Act; (xi) that the design of the plaintiffs is also pre-published and was available in the market since prior to the year 2002; (xii) that the said design also lacks novelty; (xiii) that a number of third parties are manufacturing casseroles of the same design; (xiv) that the said design is common to the trade; (xv) that while the design of the plaintiffs has a butterfly outer handle, in the design of the defendants, the outer handle is oval in shape and inspired by the shape of a leaf; (xvi) that while in the design of the plaintiffs, the overall shape on the base of the article is circular, in the design of the defendants, the product base is squarical; (xvii) that while the plaintiffs‟ product bears the mark „Tupperware‟, the defendants‟ product bears the mark „Signoraware‟ which is sufficient to distinguish the two products; and, (xviii) that the plaintiffs are not the proprietors of the registered design pertaining to complete article of casserole and parts of an article are not separately registrable under the Designs Act.
7. Though the plaintiffs filed replication to the written statement but the need to refer thereto for the present purpose is not felt.
8. The counsels have been heard.
9. In the earlier round of hearing, it was the argument of the counsel for the plaintiffs, (A) that the defendants have copied the shape and colour combination of the product of the plaintiffs; (B) that the Trade Marks Act, 1999 inter alia defines „trade mark‟ in Section 2(1)(zb) thereof, as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors; (C) that though shape of the product of the plaintiffs is not registered as a trade mark but a passing off action lies on account of the defendants copying the shape and get up of the product of the plaintiffs; (D) that Section 2(1)(m) of the Trade Marks Act, while inclusively defining „mark‟, also mentions shape of goods or combination of colours or any combination thereof; (E) that Section 2(1)(zb) only excludes from the purview of trade mark, functional shapes and Section 9(3) of the Trade Marks Act provides that a mark shall not be registered as a trade mark if it consists exclusively of the shape of goods which results from the nature of the goods themselves or the shape of the goods which is necessary to obtain a technical result or the shape which gives substantial value to the goods; (F) that it is not in dispute that the plaintiffs are the prior adopter of the subject shape; and, (G) reliance was placed on (i) Apollo Tyres Ltd. Vs. Pioneer Trading Corporation 2017 (72) PTC 253 (Del) where interim injunction was granted with respect to tread marks on a tyre which were held to be the trade mark; (ii) Ruston and Hornby Ltd. Vs. Zamindara Engineering Co. AIR 1970 SC 1649 explaining the distinction between an action for infringement of trade mark and an action for passing off; (iii) Mohan Lal supra to contend that notwithstanding registration as a design, an action for passing of as a trade mark lies; (iv) Satyam Infoway Ltd. Vs. Sifynet Solutions Pvt. Ltd. 2004 (28) PTC 566 (SC) to contend that the question is “who gets there first?” and that it is not essential for the plaintiff to prove long user to establish reputation in a passing of action; (v) T.V. Venugopal Vs. Ushodaya Enterprises Limited (2011) 4 SCC 85, to contend that honesty and fair play ought to be the basis for policies in the world of trade and business.
10. The counsel for defendants, in the earlier round of hearing, besides verbally addressing arguments also handed a written note dated 19th January, 2018 of his arguments contending (a) that the shape, configuration and overall colour scheme of a casserole is an intrinsic part of its design and thus a trade variant in the design regime; reliance was placed on Dart Industries Inc. Vs. Techno Plast MANU/DE/8161/2007; (b) that a trade variant in the design regime cannot become a distinctive trade mark under the Trade Marks Act; reliance was placed on Yakult Honsha KK’s TM Application (2001) R.P.C. 39; (c) that different/distinct shape from other goods does not mean distinctive in trade mark sense; reliance was placed on Bongrain S.A.s Trade Mark Application (2005) RPC 14; (d) that bar of Section 9(3) of the Trade Marks Act is to be considered prior to the stage of assessing distinctiveness; Section 9(3) is a complete bar for the shape of the goods; proviso of distinctiveness is only to Section 9(1) and not for Section 9(3) of the Trade Marks Act; (e) that object of Section 9(3) is, that no perpetual monopoly can be given to the valuable shapes that may be protected in other monopoly rights of patents and designs; (f) that to prima facie establish consumer reliance of shape as a badge of origin, consumer education of shape in a trade mark sense in the form of a marketing campaign is essential; no such advertisement is available in the present case, as the products are stated to be directly sold by the plaintiffs to the consumer; (g) that if shape is to be registered as a trade mark, the plaintiffs have to establish that shape in question alone identifies the product; no such case has been established; (h) that evidence available on record contradicts plaintiffs‟ claim of acquired distinctive character of shape of casserole; (i) reference was made to the prior litigation between the parties and the findings therein; (j) that the defendants‟ act of seeking registration as a design does not estop the defendants in any manner whatsoever; (k) that the goodwill of the plaintiffs is not in shape but in the trade mark Tupperware;
(l) that a shape mark is different from a word mark and the shape of the casserole is difficult to identify; (m) that the instructions manual inside the casserole of the plaintiffs also distinguishes the product of the plaintiffs from that of the defendants; and, (n) that while the plaintiffs claim their product to be sold without any packaging, the product of the defendants is sold in cardboard cartons and which prominently display the trade mark „SIGNORAWARE‟ of the defendants, also distinguishing the goods of the defendants from that of the plaintiffs.
11. I must record that the counsel for the defendants, besides the judgments referred hereinabove, also handed over a large number of other judgments but the need to burden this order therewith is not felt.
12. The counsel for the plaintiffs, in the earlier round of hearing, in his rejoinder argued (I) that a trade variant can only be qua an existing product and the defendants, though making an argument of trade variant, have not disclosed which was the existing product of which the plaintiffs‟ product was a variant; (II) that the defendants themselves got their casserole registered as a design and are estopped from taking the argument of trade variant; (III) that the defendants also applied for registration of shape of their casserole as a trade mark, calling it distinctive and are today also estopped from contending that shape of a casserole cannot be distinctive; it matters not that subsequently the said application was withdrawn; (IV) reliance was placed on Procter & Gamble Manufacturing (Tianjin) Co. Ltd. Vs. Anchor Health & Beauty Care Pvt. Ltd. 2014 (59) PTC 421 (Del) (DB) on estoppel by such conduct; (V) that Yakult Honsha KK’s TM Application and Bongrain S.A’s Trade Mark Application supra cited by the counsel for the defendants are not qua passing off; (VI) that in an action for passing off, it is immaterial whether registration could have been granted as a trade mark or not, inasmuch as passing of is an action in deceit.
13. I have in Crocs Inc. USA supra pronounced on 18th February, 2019, on a reading of the judgment of the Five Judges Bench of this Court in Carlsberg Breweries Vs. Som Distilleries 2018 SCC OnLine Del 12912, held that a registered design confers on the registrant, only the right to restrain another from infringing the design and not to, also claiming the registered design as its trade mark/trade dress, restrain another from passing off its goods as that of the registrant, by copying the registered design. It was further held that what is usable and protectable as a trade mark is “something extra” or more than what is registered as a design. I must also herein record that vide order dated 29th May, 2019 in RFA(OS)(COMM) No.22/2019 preferred thereagainst, the Division Bench of this Court has directed that the judgment under appeal will not constitute a precedent to bar other shape trade mark suits of the plaintiff therein i.e. Crocs Inc. USA, whether pending or to be filed, against others, seeking the relief of restraint of passing off qua registered design used as a trade mark / trade dress / get up, presentation of the products through its packaging and so and if the question of maintainability of those shape, trade marks, suits of Crocs Inc. USA arises, the same shall be decided independently of the judgment under challenge. However, the said interim order pertaining to Crocs Inc. USA and even the prima facie finding returned therein of the conclusion reached by the undersigned to be erroneous, would be of no avail, as far as the present lis is concerned. However, in light of this subsequent development, the counsels were again heard today.
14. It is not in dispute that the design registration of the plaintiffs had lapsed, even prior to the earlier round of hearing.
15. The counsel for the plaintiffs clarified that the plaintiffs are not pressing for relief on the ground of passing off the registered design and are seeking interim order in terms of Crocs Inc. USA supra, for “something extra” i.e. other than the registered design.
16. The counsel for the plaintiffs has also pointed out that the Designs Act, in Section 2(d) thereof defining „design‟, has carved out an exception qua trade mark as defined in Clause 2(1)(v) of Section 2 of the Trade Marks and Merchandise Act, 1958. It is stated that the definition of mark or trade mark in 1958 Act did not include shape as in 1999 Act.
17. However, on enquiry, whether not the settled principle of interpretation of statutes is, that reference in a statute to another statute is deemed to be reference to the statute referred, from time to time, the counsel for the plaintiffs has not addressed any other argument in this respect.
18. To show “something extra”, the counsel for the plaintiffs has drawn attention to paragraphs 14 and 21 of the plaint and to pages 3 & 5 of Part- III(A) file, being the Certificate of Registration as a design. It is argued that passing off by the defendants is with respect to the whole of the casserole i.e. of the casserole lid with respect to which the present suit is filed, as well as the casserole bowl registered separately as a design and with which this suit is not concerned. It is thus argued that casserole lid along with the casserole bowl or dish constitutes “something extra” within the meaning of my judgment in Crocs Inc. USA supra. It is further argued that the defendants have copied the entire product of the plaintiffs and which dishonesty should not be permitted to be perpetuated. It was contended that it was not as if the endeavour of the plaintiffs is to drive the defendants out of the business of manufacturing and marketing of casseroles; it is open to the defendants to make any modification / variation in their casserole for the same to appear different at the market place from the casserole of the plaintiffs. It is suggested that the defendants can vary the shape of the handle of the lid as well as the shape of the dish of the casserole. It is argued that the defendants have intentionally not done so, as the same would hit the sales of the defendants from consumers buying the products of the defendants assuming it to be of the plaintiffs. It is informed that though the sale model of the plaintiffs is direct selling to the customers but inspite thereof, the products of the plaintiffs land up in retail shops, where they are displayed on the same shelves as the products of the defendants.
19. Per contra, the counsel for the defendants has drawn attention to paragraphs 16,17,18 & 20 of the plaint and has argued that “something extra” within the meaning of Crocs Inc. USA supra had to be in the lid only and extra cannot be claimed by referring to the casserole bowl / dish with which the suit is not concerned and which was registered as a design separately from the lid. It is further argued that in the judgments in the earlier litigation between the parties, the trade marks „Tupperware‟ of the plaintiffs and „Signoraware of the defendants have already been held to be sufficient‟ to distinguish the two. It is argued that the plaintiffs cannot now compare the casserole lid and casserole bowl / dish for the purpose of interim relief. It is further argued that grant of relief on the ground of passing off requires establishment, of the mark having acquired distinctiveness and which is a matter of trial and thus no interim order can be granted. It is argued that a customer is not familiar with the shape of a casserole, to seek the products of the plaintiffs by looking at the shape. Else, it is reiterated that the defendants‟ casserole is sold in cardboard cartons, prominently displaying the trade mark „Signoraware‟ of the defendants and which is sufficient to distinguish the two products. It is also stated that the casserole of the plaintiffs has a printed instruction manual therein and which is not the case with the casserole of the defendants and the same also is sufficient to distinguish the two.
20. The counsel of the plaintiffs, in rejoinder has argued that just like the plaintiffs, on the outer surface of their casserole do not display their trade mark which is embossed in the same colour on the inside of the lid and on the base of the casserole, the defendants also on their casserole have followed the same practice. It is further argued that the resistance of the defendants to make any change whatsoever, to make the two casseroles look different, itself demonstrates the attempt of passing off of the defendants. It is yet further argued that there is no absolute bar of returning a prima facie finding of distinctiveness and if it were not so, in no passing off case, would interim injunction be granted.
21. I have considered the rival contentions.
22. Admittedly, the validity of the registered design of the plaintiffs lapsed on 14th August, 2012, on expiry of ten years from 14th August, 2002, when it was registered.
23. No interim injunction on the ground of infringement of registered design can thus be granted. The grant of interim relief is to be considered only on the ground of passing off.
24. I have in Crocs Inc. USA supra negatived the contention, that owing to the prohibition of a design being a trade mark being contained in the Designs Act and the absence of any prohibition in the Trade Marks Act to a design being a trade mark, in an action for infringement of a trade mark or passing off, it is irrelevant that what is claimed as a trade mark is registered as a design. It was reasoned that (i) the intention of the Legislature is clear from the prohibition contained in the Designs Act and to accept the said contention would defeat the legislative intent and the legislative intent in the enactment of the statute has to be respected; (ii) once the legislative intent is that a trade mark cannot be a design, the features of shape, configuration pattern, ornament or composition of lines or colours applied to any article, even if used as a trade mark, cease to be a trade mark on registration being granted to the same as a design, and a registrant is to be deemed in law to have surrendered, abandoned, acquiesced and waived all rights to use such features as a trade mark; else, there would be an anomalous situation, with there being in existence a prohibition to use a trade mark as a design but there being no prohibition to use of a design as a trade mark and such anomaly cannot be attributed to any law making authority; and, (iii) a prohibition contained in one statute has to be given effect to, while interpreting all other statutes.
25. I have in Crocs Inc. USA supra, for the reasons stated therein, also held that the meaning of trade mark in an action of passing off cannot be wider than the meaning in the statute relating to trade marks.
26. It thus follows that no action for passing off would lie with respect to what was registered as a design, inasmuch as the plaintiffs, by seeking registration thereof as a design, are deemed to have surrendered, abandoned, acquiesced and waived all rights to use such features as a trade mark, whether during the pendency oftheregistration as a design or even thereafter.
27. Thus, what has to be seen is, whether there is “something extra” in the product of the plaintiffs, which qualifies as a trade mark and which was not registered as a design.
28. That takes me to the Certificate of Registration in favour of the plaintiffs, of the casserole lid described therein as “cover for bowl”, as a design. The same shows the different views of the casserole lid / cover for bowl as under: and describes claim therein as under: “The novelty resides in the shape and configuration of the COVER as illustrated. No claim is made by virtue of this registration to any right in respect of any mechanical or other action of the mechanism whatever or in respect of any mode or principle of construction of the article. No claim is made by virtue of this registration to any right to the exclusive use of the words, letters, numerals or extraneous matters as appearing in the design. No claim is made by virtue of this registration to any right to the exclusive use of colour or colour combination as appearing in the design. Dated this 19th day of January, 2003. Sd. Jhini Mukherjee Of S. Majumdar & Co. Applicant’s Agent”
29. As aforesaid, it is the plea of the plaintiffs in the plaint that the aforesaid registration is pursuant to the US Design Application and the Application therefor was filed as a reciprocity application. The plaintiffs have also filed before this Court, the United States Design Patent with respect to “cover for a serving bowl” containing the claim as under: “CLAIM” The ornamental design for a cover for a serving bowl, as shown and described.” with the following figures of the cover for a serving bowl: with description thereof as under: “DESCRIPTION FIG. 1 is a top, right side and front perspective view of a cover for a serving bowl showing the new design; FIG. 2 is a front elevation view thereof; FIG. 3 is a rear elevation view thereof; FIG. 4 is a right side elevation view thereof; FIG. 5 is a left side elevation view thereof; FIG. 6 is a top plan view thereof; and, FIG. 7 is a bottom plan view thereof.”
30. I have already set out hereinabove, in paragraph 1 recorded the imitation by the defendants of trade dress and get up of the casserole lid / cover for the bowl, pleaded by the plaintiffs in the plaint. The plaintiffs have pleaded in paragraph 27(b) of the plaint as under: “a) The Defendants have copied the overall shape, configuration and surface pattern of Plaintiffs’ Casserole Lid / serving Bowl as sold by Plaintiffs in India; b) The Defendants have used identical Lid design for such Casseroles having “butter fly knob”; c) The Defendants have even copies the individual components as well as the colour scheme of the Plaintiffs’ Casserole/serving Bowl which comprises of: i) outer Casserole Lid is of Off White colour which is copied; ii) inner Casserole Lid is of dark contrasting colour which is also copied; iii) the butter-fly knob is depicted in contrasting dark colour (same as inner lid colour) which is copied; iv) the Casserole of the Plaintiff has “dual bowl” which is copied; v) the inner bowl has dark colour contrast, same as the inner lid and the knob which has been copied; vi) the outer bowl is of Off White colour which is copied; vii) the subdued branding in off-While colour blending in Off-While colour of the lid/outer bowl which is copied; viii) the glossed rim design upon the lid is also copied.”
31. I am afraid, the above demonstrates that there is no difference between what was registered as a design and what is being claimed as trade dress and get up qua which relief on the ground of passing off is sought.
32. The counsel for the plaintiffs however during the hearing argued passing off, claiming “something extra” in the casserole bowl. I have wondered, whether it is open to the plaintiffs to, while claiming passing off of “something extra” in a registered design, also include another article which is also a separately registered design. Prima facie it appears that in a suit filed with respect to a particular good / product, in this case a casserole lid or a cover for a bowl, to justify passing off, no reliance can be placed on the casserole bowl or dish which was separately registered as a design.
33. Section 2(d) of the Designs Act, while defining „design‟, defines the same as meaning only the features of shape, configuration, pattern, ornament or composition of lines or colours „applied to any article‟… by any industrial process or means, which in the finished article appeal to and are judged solely by the eye. Section 2(a) of the Designs Act defines „article‟ as meaning any article of manufacture and any substance, artificial or partly artificial and partly natural and includes any part of an article capable of being made and sold separately. Section 6 of the Designs Act also provides as under: “6. Registration to be in respect of particular article.—(1) A design may be registered in respect of any or all of the articles comprised in a prescribed class of articles. (2) Any question arising as to the class within which any article falls shall be determined by the Controller whose decision in the matter shall be final. (3) Where a design has been registered in respect of any article comprised in a class of article, the application of the proprietor of the design to register it in respect of some one or more other articles comprised in that class of articles shall not be refused, nor shall the registration thereof invalidated- (a) on the ground of the design not being a new or original design, by reason only that it was so previously registered; or (b) on the ground of the design having been previously published in India or in any other country, by reason only that it has been applied to article in respect of which it was previously registered: Provided that such subsequent registration shall not extend the period of copyright in the design beyond that arising from previous registration. (4) Where any person makes an application for the registration of a design in respect of any article and either- (a) that design has been previously registered by another person in respect of some other article; or (b) the design to which the application relates consists of a design previously registered by another person in respect of the same or some other article with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, then, if at any time while the application is pending the applicant becomes the registered proprietor of the design previously registered, the foregoing provisions of this section shall apply as if at the time of making the application, the applicant, has been the registered proprietor of that design.”
34. The Class of Articles referred to in Section 6 of the Designs Act are to be found in the Third Schedule to the Designs Rules, 2001 and which under Class 07 titled “Household good, not elsewhere specified” at Serial No.07-01 contains “China, Glassware, Dishes and Other Articles of a similar nature” and in note explains “including dishes and crockery in all materials” and further explains “not including cooking utensils and containers” and in Class 07-02 contains “Cooking Appliances, utensils and containers” in Class 07-04 contains “Appliances and Utensils, handmanipulated, for preparing food or drink” and in note thereto explains “not including appliances and utensils classified in Class 07-02” and in Class 07- 06 contains “Other Table Utensils”.
35. Though the counsel for the plaintiffs has argued that the casserole lid / cover for the bowl subject matter of this suit, besides being used with the casserole bowl / dish of the plaintiffs can also be used with any other bowl / dish but I am unable to, in the plaint, find any pleadings to the said effect. Rather, in paragraph 13 it is expressly pleaded that the plaintiffs‟ casserole lid and bowl are independently registered, both being independent articles manufactured and sold together as well as separately and that the present suit pertains to the infringement of design registration pertaining to the lid only. While pleading for the relief on the ground of passing off however, a claim is made with respect to casserole lid and bowl and while describing distinctiveness also, pleadings with respect to both are made. It thus appears that while the suit, insofar as for infringement of design, is with respect to design of the casserole lid / cover for the bowl only, passing off is claimed of the entire casserole comprising of not only the lid but also of the bowl / dish. I have wondered the permissibility thereof. Prima facie it appears that once a claim of the lid being an independent article or part of an article i.e. a casserole, is made, passing off cannot be claimed of lid with the bowl / dish, which are two independent products. It cannot be forgotten that the bowl / dish of the casserole is also separately registered as a design and to hold that “something extra” than the design can be claimed in conjunction with a separately registered design, would again, in my view, defeat the legislative intent of ensuring that the law does not unnecessarily extend protection beyond what is necessary to create the required incentive for design activity. Once the prima facie view qua legal entitlement of the plaintiffs to claim passing off is against the plaintiffs, the need to go into the other lengthy arguments addressed and plethora of judgments cited is not felt.
36. I am otherwise also of the view that the direction for the defendants to furnish particulars of their sales of the subject product would serve the purpose.
37. The defendants are thus directed to, within four weeks herefrom, file before this Court alongwith affidavit, the documents showing the number of impugned casserole lids and/or casserole bowls / dishes sold since the date of commencement of sale thereof, claimed in the year 2009, along with the price at which the said goods were sold from time to time and to, till the disposal of the suit, continue to file the said particulars of future sales, on a quarterly basis.
38. The application is disposed of.
39. List for hearing the counsels on, whether the suit can be decided on the legal question discussed, while disposing of the application for interim relief, on 4th December, 2019.