Veeplast Houseware Private Ltd. vs Bonjour International and Another

V.K. Jain, J.

IA No. 7916/2011 (O. 39 R. 1 and 2 Code of Civil Procedure)

The Plaintiff is engaged in the manufacturing and trading of various plastic products, including water jugs. The products of the Plaintiff are being sold under the name "Nayasa" and the Plaintiff claims PAN India presence in its field. The Plaintiff-company has three manufacturing plants and employees more than 400 workers. In the year 2004, the Plaintiff-company conceptualized and created a novel design to be used for water jugs. The design was registered vide Design No. 194990 in Class 07-01 and the registration is stated to be valid till 23rd July, 2014. In the first week of May 2001, the Plaintiff came to know about use of a design by the Defendant on their water jugs being sold under the name Bonjour Maharaja. The case of the Plaintiff company is that the design adopted by the Defendant for its jug is identical to the registered design of the Plaintiff. The Plaintiff has accordingly sought an injunction, restraining the Defendants from manufacturing, selling, offering for sale and distributing any water jug bearing a design which amounts to infringement of the registered design of the Plaintiff-company. The Plaintiff has also sought damages and delivery of infringing material. IA No. 7916 of 2011 has been filed by the Plaintiff, seeking ad interim injunction against the use of the design adopted by the Defendant for selling its water jug.

The suit has been contested by Defendant No. 1 which claims to be manufacturing various products, including water jugs and selling them under its mark Bonjour. It is claimed that the Plaintiff has no right to seek design registration in respect of water jug in entirety and the design of the Defendant is neither new nor original. It is also alleged that the bucket of the Defendant also has similar fold as is the fold of the water jug of the Plaintiff. As regards legs of the water jugs, it is alleged that these legs are identical to the legs on the vacuum flask of Defendant No. 1 which is holding a registered design to be applied by it in respect of that vacuum flask. It is also pointed out that the cap being used by the Plaintiff on the water jug is different from the cap shown on its registered design. It is further stated that cap being used by the Defendant on its water jugs is altogether different.

A perusal of the Certificate of Registration issued by Controller General of Patents, Designs and Trade Marks on 10th June, 2004 would show that the Plaintiff-company has been granted registration of design in respect of a water jug. The Certificate would show that novelty in the design is imputed to the shape and configuration of the water jug as illustrated in the Registration Certificate.

In Western Engineering Co. Vs. Paul Engineering Co., the High Court, inter alia, observed as under:

Whether a design is novel is a matter of fact to be decided by the eye. As already indicated, if the same shape or pattern, or one substantially similar, has previously been thought of in connection with any article of manufacture and the idea published, or registered, then the design will be deprived of its novelty. The previous idea or design, will act as an anticipation of the later design, and will be a bar to its protection. That the eye, and the eye alone, is to be the judge of Identity, and is to decide whether one design is or is not an anticipation of any, has been laid down time and time again in numberless cases.

The question which has to be decided is whether the two appearances are substantially the same or not. The design must be looked at as a whole, the question being whether an article made according to the design under consideration is substantially similar in appearance to an article made according to the alleged anticipation. The test is not only to look at the two designs side by side, but also apart, and a little distance away.

The legal proposition is that in order to ascertain whether the impugned design infringes another design which is duly registered or not, the two products need not be placed side by side and the matter has to be examined from the point of view of a customer with average knowledge and imperfect recollection. It needs to be kept in mind that a person coming across the impugned product may not be having the product of the Plaintiff with him at the time when he finds the product of the Defendant in the market. He, therefore, has no opportunity to compare the two products to compare their similarities and dissimilarities to ascertain which product originates from which source. But, even if the two products are placed side by side, it cannot be disputed that the primary design of the jug of the Plaintiff has been copied by Defendant No. 1. In fact, there seems to be no distinction in the primary design of the two products. The differences I can notice are in the design of handle and cap. Even the legs of the two jugs appear to be almost identical. As far as the tap is concerned, the knob of the two jugs appears to be similar though the nozzle portion is longer in the jug of the Defendant. Another noteworthy feature in this regard is that the lower portion of both the jugs is bigger than the upper portion and the overall shape of the two jugs is identical. It appears to me that any person coming across the water jug being manufactured and sold by Defendant No. 1 may easily take it as a product of the Plaintiff-company. This is more so in the case of a customer who is illiterate or semi-illiterate and, therefore, may not bother to read the brand name, written on the two jugs. In the case of Alert India v. Naveen Plastics 1997 PTC (17), this Court, inter alia held as under:

Thus for determining whether two designs are identical or not, it is not necessary that the two designs should be exactly the same. The main consideration to be applied is whether the broad features of shape, configuration, pattern etc. are same or nearly the same and if they are substantially the same then it will be a case of imitation of the design of one by the other.

Prima facie, it appears to me that the design adopted by Defendant No. 1 for selling its jug is more or less similar to that of the Plaintiff except in respect of the lid. Also, there is a strong possibility of Defendant No. 1 passing off its water jugs as those of the Plaintiff.

The learned Counsel for the Defendant, relying upon the provisions contained in Section 22(3) of the Designs Act read with Section 19 there of, has contended that since design got registered by the Plaintiff is not a new or original design, the registration granted to the Plaintiff-company is liable to be cancelled and, therefore, this is a valid defence available to the Defendant in the present suit. Prima facie, I find no merit in this contention. There is no material on record to show that the design got registered by the Plaintiff was being used by any other person in India before it was got registered by the Plaintiff. It is, therefore, difficult to accept that it is not a new or original design. As rightly contended by the learned Counsel for the Plaintiff, it is not the jug as a product in which any right is being claimed by the Plaintiff. The claim of the Plaintiff is confined to the shape and configuration of the product as is also made out from the Certificate, whereby the design was registered and the design used by the Defendant is practically a copy of the design of the Plaintiff as far as primary shape of the product is concerned.

The learned Counsel for the Defendant has relied upon Harish Chhabra Vs. Bajaj Electricals Ltd. and Another, , Hawkins Cookers Ltd. Vs. Zaverchand Liladhar Shah and Others, Brighto Auto Industries v. B. Chawla and Sons PTC (Suppl) (1) 851 (Del), Metro Plastic Industries (Regd) v. Galaxy Footwear New Delhi 2000 PTC 1(FB), whereas the learned Counsel for the Plaintiff has relied upon Castrol India Ltd. v. Tide Water Oil. Co. Ltd. 1996 PTC (16).

In the case Harish Chhabra (supra), Respondent No. 1, who was a manufacturer of ceiling fans and claimed to be an inventor of the design of a part of the ceiling fan decorative ring on the central part of the ceiling fan, was granted registration not in respect of any part invented by it, but in respect of the ceiling fan as a whole. Relying upon the decision of House of Lords in the case of William J. Holds worth and Ors. v. Henry C. M''crea reported in 1987 2 IA 380, it was held that the Registration Certificate granted by Respondent No. 2 in favour of Respondent No. 1 was erroneous and it was not in respect of new design invented by Respondent No. 1. A perusal of the judgment would show that the learned Counsel for the Defendant No. 1 conceded before the Court that the fan as a whole could not have been registered and the Certificate of Registration was not in respect of any part or a separate part innovated design but was in respect of the whole of the ceiling fan and the ceiling fan was not the invention nor a new design by the first Respondent. However, in the case before this Court, the Registration Certificate by itself made it clear that novelty was claimed on the basis of the shape and configuration and, therefore, the registration is deemed to be limited to the shape and configuration as indicated in the design which has been registered by the Controller General of Patents, Designs and Trade Marks.

In the case of Hawkins Cookers Ltd (supra), registration was granted in respect of an entire Tava and not in respect of the handle which the Petitioner claimed to have specially designed. Noticing that it was not the case of the Petitioner that the Tava was an innovation of the Petitioner, it was held that it was not permissible for a party to register the whole of the item but only that part was registered which was its own innovation. Since Tava was not an innovation of the Petitioners, the Court was of the view it ought not to have been registered. It was observed that in this case that even a slight innovation or improvement in the design is a design by itself and can be registered as independently innovated design. However, the fact remains that the Defendant has not got its design registered, and, therefore, no benefit of this judgment can be claimed by it. As noted earlier that in this case the right being claimed by the Plaintiff and the registration granted to it is confined to the shape and configuration of the product and not to the product as a whole. Registration of the design does not mean that no other person can manufacture a water jug and he cannot use a lid or a tap or legs on the water jug manufactured and sold by him. All these are essential components of a water jug and no one can claim any exclusive right therein. No right can be claimed in respect of the whole of the product unless the products itself is his innovation or in respect of its essential parts unless those parts are of a particular design invented by him. Therefore, what is objectionable in this case is the shape and design used by Defendant No. 1. There can be no objection to Defendant No. 1 manufacturing and selling any water jug so long as he does not adopt the configuration and shape which the Plaintiff-company has got registered in its name. I also perused the decisions in the case of Brighto Auto Industries and Metro Plastic Industries (supra). I find no such proposition of law in these judgments which would warrant taking a view contrary to what I am taking. There can be no dispute with the proposition of law that if a design even it is a registered design has no newness or originality in it, it can be got cancelled, but, where a particular design has been invented by a person and there is a novelty factor attached to it, that design cannot be adopted by any other person and if it is done, it would amount to infringement of registered design.

In Castrol India Ltd (supra), the Plaintiff held registration of a design in respect of a non-metallic container having a unique, novel and distinctive shape and configuration. The Respondent found using the registered design of the Petitioner in respect of the containers in which he was selling automotive lubricants. A suit for injunction was filed by the Petitioners for restraining the Respondents from infringing its registered design or using a design which was deceptively similar to its registered design. It was claimed by the Respondent that there were number of differences in the design being used by it vis-�-vis the design of the Plaintiff. It was claimed that there was difference in the colour packaging and shape of the ridges and it was also submitted that several other manufacturers were marketing their product in similar containers and there was nothing unique or original in the design of the Petitioner. Rejecting the contention of the Respondent, the Court, inter alia, observed as under:

The Controller of Patents and Designs registered the Petitioner''s design because he must have been satisfied that the design was new and original. u/s 51A of the Act, it was open to any concern to ask for cancellation of the Petitioner''s registration of the design if there were any grievance that the Petitioner''s design was not a new or original design. No such application has been made by concern including the Respondents before the Controller.

There is no evidence even prima facie that there was any design like the Petitioner''s design used in the market prior to the registration of the design in question. The certificate or registration was granted to the Petitioner on 13th November, 1990. The two samples of similar containers used by Bharat Petroleum and the Indian Oil Corporation and produced by the Respondents bear the dates September 1993 and November, 1993 respectively.

In the case before this Court also, the design of the Petitioner being a registered design, prima facie, it is entitled to protection unless it is shown that there was nothing new or original in the design. As noted earlier, there is no evidence of any design identical to the registered design of the Plaintiff being used prior to registration granted to the Plaintiff. Therefore, prima facie, the Plaintiff is entitled to protection of its registered design.

For the reasons given in the preceding paragraphs, I am of the view that the Defendant cannot be allowed to continue to use the impugned design. Defendant No. 1 is, therefore, restrained from manufacturing or selling any water jug with the impugned design or any other design which would constitutes infringement of the registered design of the Plaintiff. However, Defendant No. 1 is permitted to liquidate the stock which it has already manufactured, within four weeks from today, subject to its filing an affidavit by tomorrow, i.e., 03rd June, 2011, disclosing the quantity which it has already manufactured.

The applications stands disposed of. The observations made in this order being tentative nature and would not affect the final outcome of the suit.

CS (OS) No. 1181/2011

The parties to appear before the Joint Registrar for admission/denial of documents on 16th August, 2011.

The matter be listed before the Court for framing of issues on 12th December, 2011.

This matter was heard partly before lunch and was scheduled to be heard further at 2.15 PM. The matter was heard again after lunch and the hearing has concluded at 4.11 PM.

Copy of this order be given dasti under the signature of Court Master.