Karnataka High Court
John Distilleries Limited vs Shashi Distilleries Pvt Ltd on 6 February, 2012
ASR WP RAR RALARATINGT GMURE UP RAKNAIAKRA HiGh COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT QF KARNATAKA HIGH CC IN THE HIGH COURT OF KARNATAKA AT BANGALORE DATED THIS THE 06" DAY OF FEBRUARY 2012 _ a BEFORE _ . . . : . . THE HON'BLE MR. JUSTICE BV-PIRTO a JOHN DISTILLERIES LIMITED | ne A COMPARY INCCRFORATEL URDER TE PROVISIONS OF THE COMPANIES ACT 1956, HAVING ITS REGISTERED OFFICE AT NO.110, PANTHARAPALYA, MYSORE ROAD, BANGALOFE- 560: 039. oN REPRESENTED HERE BY TS HEAD-LEGAL SHAKEEL SYED, S/O.SYED SADIQ BASHA, AGED ABOUT 34 YEARS. IBY x eAiadacHaRas, ADVOCATE} ~ SHASHT: DISTILLERIES PRIVATE LIMITED A COMPANY INCORPORATED UNDER THE "PROVISIONS OF THE COMPANIES ACT, 1956, HAVING ITS REGISTERED OFFICE AT --NC.67/1, HULIMAVU VILLAGE, -_~ BANNERGHATTA ROAD, BANGALORE- 560 076 NNR SAUNAS ESS TTS ET RAPUIR TP RUARRNATAIA MIG COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT CF KARMATAKA HIGH REPRESENTED HEREIN BY ITS Bt MANAGING DIRECTOR es RESPONDENT - mn (BY SRI.DHANANJAY JOSHI, ADVOCATE) awe THIS MFA IS FILED U/O. 43 RULE 1(r) OF CFC AGAINST THE ORDER DATED 06.12. 2010 PASSED ON LA.NO.3 IN O.8.NO.6660/2010 ON THE FILE OF THE XVII ADDITIONAL CITY CiViL JIDGE, BANGALORE, DISMISSING 1A.NO.3 FILED uO 390 RULE 1 & 2 OF CPOPFORTI = MISC.CVL.4490/ 2011 1s FILED FOR TEMPORARY INJUNCTICN U/o- 39° RULES i & 2 READ WITH SECTION 151 OF CPC PRAYING TO ISSUE AN AD- INTERIM ORDER OF TEMPORARY INJUNCTION RESTRAMING THE RESFONDENTS, ITS DIRECTORS, DISTRIBUTORS, EMPLOYEES, SERVANTS, AGENTS OR ANY. PERSON/S ACTING OR CLAIMING THROUGH OR UNDER If IN WHATSOEVER CAPACITY FROM _ MANUFACTURING, BOTTLING SELLING, MARKETING, _ _ DISTRIBUTING LIQUOR AND OTHER RELATED "PRODUCTS UNDER ANY BRAND NAME IN THE BOTTLE DESIGN AS PER MONO2. WHICH ARE _ OBVIOUSLY/DECEPTIVELY SIMILAR TO THE REGISTERED BOTTLE DESIGN OF THE APPLICANT AS -
Z 4H COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COU! PER DESIGN NO.214542 IN THE INTEREST OF JUSTICE AND EQUITY.
THIS MFA AND MISC.CVL. ARE COMING ON FOR Os ADMISSION THIS DAY, THE COURT DELIVERED THE BO FOLLOWING:
on the file of 16 Additionai City Civil shade, CCH-10, Bangalore City (herein after nefarred to as the trial Court) wherein the learned Chal. Judge has rejected the prayer for an order for r temporary injunction in favour of the appellant 'ogainst: 'the: respondent. The parties are referred according to their rank before the trial Court
2. . The pla han fled a aut necking an onder of ae 'permanent injunction restraining the Defendant, its A directors, "distributors, employees, servants, agents or _ any person/s acting or claming through or under it in
-- whatsoever capacity from manufacturing, bottling, selling Zi rae oo OGURT OF RARNATAKRA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH whatsoever capacity from manufacturing, bottling, sling -
marketing, distributing liqour and other related products a under any brand name in the bottle design ao per _ M.O.No.2, which is obviously/ deceptively similae to to the | registered bottle design of the plaintif es Pet Design No.214542.
3. It is the stated int che plaint that, Plaintiff is a comparty incorporated under the Compartcs Act, 1956 having its registered offion ai. 110, Pantharaapalya, Mysore Road, Bangilore 360 039 and the Defendants company is alec @ compaty incorporated under the Companies Act, 1956, It is submitted in the plaint that, sai is engaged in the business of Manufacturing, : "Mate Po Foreign Liquor (IMFL) under various brand names ans one of the flagship brands of the Plaintiff compeny is
-- "Original Choice" for its ligour products. The plaintiff markets and sells its "Original Choice" trand of iquour products in a specially designed bottle, whose distinctive HIGH COURT OF KARNATAKAHIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH CC shape, design, pattern, contours, surface etc has bom - propounded, conocived and launched by the ° paint in a product. The said bottle also sets the plaintifs ¢ product . | apart in the market, since all other mamufactursre of IMFL or other Alcoholic. beverages: have: differently shaped/ designed bottles, _ |
4. itis further stated in the plant that, since 1995, plaintiff is cearrying on ite purines activities within the State of Karuataks and other parts of the Country continuously - without any interruption of whatsoever nature. In the course of time, the Plaintiffs IMFL, urns has owe fom aength to tength ad today with its flagsip brand, Plaintiff has presence in 16 states
- in the country. Plaintiff buoyed by the sucoesa of its branes under the trade mark/name is planning to mS . launch its product in other states of India as per its _ - expansion policy and plan in coming months/year and obtained the label approval in this proceas in the State of c LEO Orusa and West Bengal. It is further stated in the plaint 7 thet, since the launch, the plaintiff has invested huge Ys amounts of money towards Research: & Development axxd - Brand promotion of its trade mark/ name, The trade | mark/name and or brands adopted by plaintiff for its products have become synonymous with the plaintiff due to the high quality of the product and due to the extensive marketing and innovative promotional activities such as sponsoving regional, lenguage movies, stage shows/eventa/ promotions ote. -
5. Further it is eubmitisd in the plaint that, with a view to further enhence the brand value and image of its | products, the plaintiff conceived the idea of totally oa changing the design and shape of the bottles in which
- "Original, Choice" brand products were hitherto being _ tarmtactured and sold. The plaintiff being desirous of . 2 creating a stand alone or niche identity for its brand Original choice" in the year 2007 had assigned the task * to a core team involving the marketing and R & D team tart COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH Frame "Ht « Wa ~ HIGH COURT OF KARNATAKAHIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH CC to study the market and the existing designs in which :
IMFL in the particular segment is being sold wy, the industry at large (which primarily caters ra low income YS group) and also to provide necessary japute which will 7 help the company to evaluate: the 'feasibility to introduce & new and uniquely shaped bottle deaiga. Emphasis was ain given at reducing the coat of purchase of the regular shaped recycled. bottles. After a ery long, deliberated and constructive thought precees, , the plaintiff coriceived, designed and adopted a new bottle, designed with a distinct chape, feature and contours, which is totally different from the bottles thet were being used by the Plaintiff ecrlier and which are totally distinct from the bottles being. used j wy other manufacturers of liquor. The a same new design and shape of bottle was used even for : the populer 180 ML quantity of liquor bottles of the plaintiff. 'The eaid new bottle is being used for the ., plaintiffs products since October/November 2008. In _ | order to reach the desired customer base and to improve LE the sales, the Plaintiff has conceptualized and marketed -
its product under newly designed bottle and label. 'The <a products and the visual presentation, packaging a and look | of its products to improve sales and d reputation. a
6. It is further stated Lin te sins shat immediately after the approval of the ew bottle design by the board of the plaintiff, the plaintiff being vigilant of its Intellectual Property Rights, hos applied and obtained the Design veginwation of tise new bottle with the distinctive. design, shape, pattern, surface etc vide Design No. 214542 dated 02. 09. 2008 with effect from 05.02.2008 "from the Contreller General of Patents, Designs and oe Trade Marks under the provisions of the Designs Act, : 7 2000 with novelty of the shape, configuration, surface oe ane. Pattern on front view, back view, top view and 'COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH oN Pree:
e yy PRISE B Neel Me AE NAAR OR AINE DUPRE GRE Gr KARNAIOKA HiGH COURT OF KARNATAKA HIGH cor a Tent tact
7. It is further stated in the plaint, when things oy stood thus, to the utter shock and surprise the 7 Defendant during the month of August/ September 2010 ON released the impugned design of bottie for its products | "LBW Grape Brandy" in the state of Pondicherry, which is almost an exact replica of the regioterod bottle design adopted of the plaintiff i in tetas of. "shape, design, features and contours. 'It is obvious that the Defendant having a fraudulent intent hos made an obvious imitation of the pleintis botti to take advantage of the immense popularity, of the 'plintiffe product in the market and pass-oft the Defendant's preduct as that of the plaintiffs, The shape of the bottle adopted by the Defendant : is oles, piracy of the registered design of the / - plaintie | bottle. 'The design adopted by the Defendant for iis new bottle is of the same shape, design, size, mo "oiutbare,. with a very minute alteration in shoulder Xe portion and the absence of the ridges on the bottle is clearly dishonest. It is obvious to the eye that the Sg Soe wr MARAT FINGTT GUUICE UP KAKNALAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA High a re 10 defendants bottle is designed and engineered to cause confusion in the minds of the public/ customers between, - _ the products of the Plaintiff and those of the Defenciant's, a It is submitted that the Defendant is guilty of 'piracy under the Designs Act 2000 and is liable to be restrained from using its new bottle in the inarket, by this Hon'ble Court.
8. tn farther case oft paint chat, Defendant's product LBW Grape Brandy is being hottled and sold in Pondicherry through 3 one Ni' s. Revi Kumar Distilleries. It is pertinent to: mention bere that, plaintiff has a bottling agreement dated Gt 04, 2007 with the same M/s.Ravi Kumar Distilleries at Pondicherry, for bottling and selling es "Original: Choire" products in the state of Pondichery. Q The defendant apart from adopting a design deceptively ; Sinilar te that of plaintiff has also chosen to blend and . bottle | ita products through M/s. Ravikumar Distilleries : with: a view to deceive the bottlers, suppliers, traders, _ * peeyclers and most essentially the poor consumers who DMRS AIS SIGE MUR GT BAKNATARA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH Ct why it are led into, believing that Defendants products are those of plaintifis. Therefore, the plaintiff has prayed for a an order of injunction along with an order of ad-interimn a injunction before the trial Court, |
9. The Defendant has filed statement of objections countering the claim of she 'plait end contending interalia that the defendant lian not in any way infringed the design of the pleiztift itis Suter submitted that, the bottle of the plaintif Dae got a distinct identification marie and are vinitiy diftrent from the bottle of the defendant. It ia further subtaitted in the statement of objections thet, design of the bottle certainly does not cause any confusion in the minds of the consumers and is clearly distinguishable from the design of the bottle of
- the plaintiff on the following feature:
"aj 'The design of the plaintiffs bottle has a raised ring on the eurface positioned a little below the shoulder running around the bottle, while the Zr OF KARNATAKA HIGH COURT OF KARNATAKA HIGE TALE Ge GER WE REAR NAIA HIGH CUURT OF KARNATAKA HIGH COURT 12 desig ofthe defendants tote i pain ov the ; eo, plaintiff, the plaintiffs name is depicted at tie" | bottom of the bottle in a specific font, while the design of the bottle adopted by the defendant ckarly reflects the defendant's "name in a completely different feat: ae ¢) Further, the. consumers in. the market are never presented with the. plain hottlee and whey they purchase the. products 'being. sold therein, both sets of bottles are covered with labels reflecting the trade name/ brand name/trade mark identifying the product being sold in the bottles. 7 Hence, there i is no possibility whateoever of any * _ confusion being caused in the mind of the _ "consumers at the time of purchasing the desired
- Products:
10. Iti is further stated in the objections that, apart from it, the product namely liquor is sold with the label | - , of the defendant's company and in so far as the plaintiffs
- "product is concerned, it appears in red colour, whereas Ze PASSO MRE MIE UMAR PUA TATA TUG, CUI OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH C¢ eee eee mad ees 13 the Iabel of the defendant's bottle is yellow in colour. Therefore, there is no similarity in the bottles of the -- plaintiff as well as the bottles of the defensian:, .
11, The learned Civil Judge after "hearing both | parties rejected the application for tetaporary injunction pending disposal of the suit. Here, plaineif before this Court praying for an. norder of ftexoporary y injunction
12. I have heard Sr 'Semalacharan, learned counsel for the plnintis and Se Dhananiay Joshi, learned counsel for the Detendaast,
13. The learned counsel for the plaintiff submits that, plaintft i» the owner of the design and that the oe design hee been 'registered in Design No.214542, The : "said design has got a shape, configuration, surface and "ornamentation of the bottle noted in five places namely
- A,B,C, &B. Its submitted by learned counsel for the
- plaintiff that, bottles used by the defendant is deceptively similar and therefore, the use of the said bottle with sale Ln ee MIT IP RARNOTARS HIGH COURT OF KARNATAKA HIGH COURT OF KARMATAKA HIGH COURT GF KARNATAKA HIGH COURT OF KARNATAKA HIGH of the liquor has fraudulently infringed the rights graniad :
to the plaintiff under the Design Act.
14. It is further contended by the erned 'courte! | for the plaintiff that, the plainti? has been curry ing, on | the said business by selling the liqour in the inottles 'ight from the year 2008 and the: the defendant has entered into market in the year 2010 by copying the design of the plaintiff's bottle. it is further subsaitted 'by the learned counsel for the plaintift that, 'defendant has no right to copy the design of the bottle for which plaintiff has got an exclusive right to use, sine he has got registered the design ir in. his favour.
45. it i furtiner submitted that, since the defendant i bas copied the design of the bottle of the plaintiff as well : aa selling the liqour in the same design of the bottle of _ the plaintiff, irreparable loss has been caused to the
--- pisintiff and the defendant is contiming the same . iHlegallly contrary to the right of plaintiff. Henoe, he praya t Z HIGH COURT OF KARNATAKAHIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH CC 15 for a temporary injunction pending disposal of the suit i before trial Court. a upon the following decisions:
@) AIR 1972 SUPREME COURT 1259 Parle Products (P) Ltd. Vs. JP & Company, Mysore "To decide the hucittn se whether the plaintiffs right to a trade mark has been infringed in a particular ease, the approach must not be that in an action for passing off goods of the defendant as and for those of the plaintiff In order to come fo the conclusion whether one mark a is: deceptively 'similar to another, the broad and
- essential features of the two are to be considered. » They should rot be placed side by side to find out if there are any differences in the design and if so, oN whether they are of such character as to prevent _ one design from being mistaken for the other. It Pe would be enough if the impugned mark bears "such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to fe eis.) COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH 16 hin. It is of no use to note on how many points : . there is similarity and in how mary others there 7 te is absence of it. AIR 1965 SC 980, Rel. on RFA 7 No.170 of 1963, D/- 05.07.1965 Mysore} Reversed', SO
b) 1996 PTC (16) (Calcutta) ms | Castrol India Ltd. Ve Tide Water cit Co uid.
"Held- The statesivant of novelty hited by the petitioner was in respect of the shape configuration. and. surface patiern particularly the ridged side of the container 'The novelty was not dained etther in. relationship to the proportion of the shape or in the colour used. Therefore, the difference in the proportion of the
-- container and the difference in colour between _ the petitioner's container and the defendant's containers are immaterial as neither of the colour nor ne Bevpordons were part of the registered Section 532}b} Infringement of design- eS Confusion or deception is not necessary- The _ similarity must be an imitation of registered design.
Ze HIGH COURT OF KARNATAKAHIGH COURT OF KARMATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH CC 17 Held: The test of deceptive similarity would . -- be appropriate where the petitioner pleads passing off But in cases of infiingement: a | has ori ely to cause confusion or deoepon of aS @ purchaser but whether the similarity is an -- imitation of the registered design sufficient to destroy the exclusive right of user of the proprietor despite the fact that no conjusion is or may be caused as to the source of the goods. Otherwise. every. registered design could be imitated with impunity merely by changing the colour of the fue products: thus obviating any confusion. in my view the respondents have so imitated the petitioner's design as to deprive the petitioner of the protection under the Statute'. % @ 2003026) PTC C 16H Del) Hindustan Sanitangware & Industries Ltd. Vs. Dip "Interim Injunction- Infringement and Oe _ passing off action-Deceptive _similarity- Fraudulent imitation of designs without leave and licence of plaintiff Defendant's designs EE COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH eee 18 "Stylush', 'Corel', and 'Uttra" in respect of bath that, it has been selling or marketing said designs for its bath tubs prior to registration . obtained by plaintiffin respect of similar designs Ss "Tiffany", 'Strauss' and 'Aruba'- Enpringement. : alleged also relates to novelty claimed in respect of shape, configuration and surface- substantial resemblance between infringing. dazigns and plaintiff's registered designa- Injuncticn granted- Designs act, 2600, s.22, Cods cf Civil Procedure, 1908, Order 39 Rute 2 1,2° i
d) 2011 (an Pte 100 emp Gorbatschow Wodka~ KG. Vs John Distilleries 7 Limited.
7 oe 'The "certificate of Registration that has "been 'obtained by the defendant under the Designs Act, 2000 is of some significance. The "representation sheet which forms part of the
- Statement that 'the novelty resides in the shape, configuration, surface and omamentation of the bottle. In the Designs Act, 2000, the expression HIGH COURT OF KARNATAKAHIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH CO 12 'design' is defined in Section 2(d) to mean 'onty the features of shape, configuration, pattem, omament or composition of lines or. colours applied to any artide whether in two | dimensional or three dimensional or in both oS forms, by any industrial process or MEANS, VBC. . 13° nms.3463.10-2.5 whether | "manual, mechanical or chemioet, separate or combined which in the finished article appeal! tn and are judged solely by the eye. Section 4 contains a prohibition of @ design. which is not new or original or which has. been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other spay. 'Section 191) enunciates the grounds for cancellation of the registration of a | design. A design may be cancelled if it has been A previously registered or published in India or in any other country prior to ite date of registration or when the design is not new or original or is | os not registrable under the Act. The Designs Act, me 2000 is has not been disputed, does not contain
-- any procedure for the advertising of an _ @pplication before its registration as a design.
US? COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH The fact that the defendant has obtained not impinge the right of plaintiff to move an action for passing off. Section 27(2) of the Trade | Marks Act, 1999 provides that nothing in the Act shall be deemed. to affect the right of action -- against any person for passing off goods" or services. Section 27(2} is a statutory. recognition of VBC 14 nms 3463.10-2.5 the. principle that the remedy of passing off lles and is faunded in common low. -_ :
. Now, in the present case, the material which has heer. placed on the record by the plainsig, primarfiacie indicates that the plaintiff tnt on nigel forhof that reputation toe a oe _ | shape of the bottle in which Vodka is sold. The 7 shape: of the bottle which the plaintiff has adapted has no functional relationship with the nature of 'the product or the quality required of "the container in which Vodka has to be sold. The ~ shape, to use the language of a leading authority on the subject, is capricious. It is capricious in the sense that, it is novel and originated in the ingenuity and imagination Of the plaintiff.
HtGhH COURT OF KARNATAKAHIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH CO 21 Prima-facie a comparison of the shape of _ the bottle which has been adopted by the -- defendant with the bottle of the plaintif' would eS counsel appearing on behalf of the defendant -- 7 did, during the course of the submission, --
concede that there are similarities, VBC is nms.3463.10-2.5 Counsel, however, sought to urge that there are differences between the shape of the bottle which has heen adopted by the plaintiff and the shape of the bottle that has been adopted: by the defendant and these differences would emerge if the bottles were to be compared as itwere, side by side'.
€) 201 15). Ad 202 (el 7 Vesplast Housevare Pvt. Ltd. Vs.M/s.Bonjour 7 | International & Another.
. "trode Marks- Design, infringement of scope of- In order to ascertain whether the os 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 "uae COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH CGURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH 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 ofthe defendant in the market- He, therefore, has no opportunity to compare the two products io compare their similarities and dissimiiarities to ascertain twhich product originates from which
17. The. plain hes also relied upon the orders passed by this Cowt: nm MFA. to. 6637/2010 dated 13.12 2010 between SPR Group Holdings Pvt. Ltd. Ve. John Diatilleriee Limited and Order in MFA Ro, 7602/2009 dated - 02.12.2009 between Empee Distilleries Linnited VeJohn Distilleries Limited in _ support of his contentions.
18, The learned counsel for the defendant on the other hand submitted that, there is absohitely no oe similarity in the bottles of the plaintiff and the bottles of
- 'the defendant. He has further stated that, unique GH COURT OF KARNATAKA HIGH. COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH CO 23 features contained in the bottle of the plaintiff has not been infringed by the defendant and that a personal a ok oe these bottles are different in shape, congue | surface and ornamentation -- and it ig "clearly distinguishable by the naked eye. | it is further submitted by him that, there is no iniention to copy the design of the plaintiff and that there ie no design in eo far as the bottle is concerned, which is required for universal use. Hence, the Plaitift cannot claim the proprietary right over the bottle used by thw defendant. It is further submitind by Tim that, labels on bottles are also in : diferent colour, which the original choice is labeled in red. 'colour, the: hottles of the defendant comprise of / distinct yelicw colour on their label Therefore, it is not macy 'be possible that & common man would be misguided by s 'the: shape, colour or appearance from the bottle of the | "defendant which is distinctly different from the bottle of the plaintiff. Hence, he submits that, appeal may be COURT OF KARMATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARMATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH 2 injunction pending disposal of the suit before 'the 'trial oo Court may be rejected. ee Cote 19, The learned coume!. for the defendant in support of his submissions has relied upon the following na: ; as
a) AIR 1981 Bethi 95 © -
B Chawla & sens us. Bright Auto idustries : AAT nat every mere diference of cut*-he was speaking of collars-"Every change of outiine, every change. of length, or breadth, or configuration in a single and most familiar article of dress like tis, which constitutes novelty of
- _ design, hold that would be no paralyse "industry" and to make the Patents, Designs and "Trade Marks Act a trap to catch honest traders. There must be, nor a mere novelty of outline, but a : a. substantial novelty in the design having "regard to the nature of the article.' | Coming to the facts of the instant case the design in question as a whole consists in almost rectangular shape with rounded edges width IGH COURT OF KARNATAKAHIGH-COURT OF MARMATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH CO 2 Sides curved or sloping with a further curve on -
either side in the sloping upper length side. The respondent produced in evidence Japan's --
Bicycle Guide, 1972, Vol22. At page No. 218% 221, there are standard modeis of backinirrors _ ' besides branded models numbering 36. Modeis bearing Nos.59-6, 62-1, 61-3, 66-1 and 70-1 would show back view mirrors rectangular in shape with sloping widths or lengths. In some of these models there is curve in the upper length side. We have. mentioned. this fact simply to emphasis thet back view mirrors resembling the one in question. have been in the market for a long time. The appellants' case is that further a curve in the sloping upper length side makes their design new or original We have already oe | "Noted that the extent and nature of novelty was o not endorsed by the appellants in the application "for seeking registration and, Therefore, tt has to be taken only as regards the shape and
-- configuration. In final analysis the matter would _. beil down to whether addition of further curve on . elther side makes the variation a striking one or a substantial so as to constitute a novelty meriting of registration. The learned Single HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAK ean cra Judge after enundating the legal postion -
correctly used his eye for discerning if there was in fact a novelty and answered the question in the negative. We have once cgain gone through: i" :
the same exercise and come to the same opinion, = We fail to see the hard. labour which 'tie © appellants claimed to have bestowed | iy. creating the design they got registered. It is deviod of newness and equally. devoid of originality. An addition of curve here or there in a shape which is well-reoogrised shape of wn article of common use in the market cannct make it an article new or onginal in design. if it is made eligible for registration, it would » certainly hinder the progress of trade without there being any justification, whatsoever'.
"-b) 95 (2002) DLT 830
- Rotela Auto Components (P) Ltd. and Anr. vs. Jaspal Singh and Ors "A person looking at one lock than looking at the other lock cannot be deceived. Both locks bear the name on the locks and the cases of these type have to be decided taking into PERE Soe RE A TUARIMAR LATA THORS ICD WP RRMA ARAL Phar? LOUK E OF KARMAIAKS HIGH COURT QF KARNATAKA HIGH COURT OF KARNATAKA HIGH CC consideration when a person looking at -- plaintiffs' lock and it at that time he is ikied -- defendants' lock, whether he would take the lock of the defendants as that of the plaints? _ | Halbury's le Laws sof England, Volume 38 on. the as in para-1116 state:-
"1116. Design not ¢ autem 'different The question tohether & design which is alleged to infringe a registered design is or is not an injringement must be dstermined by the eye alone. 'The court has to decide only whether the alleged infringement has the same shape or pattern and must eliminate the question of the entity of function, since another design may have parts fulfilling the same functions without being an injringement. Small differences in detail _ do Rot. necessarily present, wifringement, but a. : generally speaking, it under normal conditions of user the eye would not confuse the two designs there is no infringement If there is some outstanding feature in the registered design which is not reproduced, this would generally J UP RARNATORA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH Sicha GS HT A Sats ob PLY RE AAPOR PGE ho wae Rb oy ad mo i A ES er a He i wa nt negative infringement. It is not an actionable imitation merely to take the idea suggested by the design unless it works out in the way protected by the registration Where an article may be readily manipulated into a position -- similar to the illustration of a design negisiration, sae there will be infringement." _ Q1996(36)DRIS09 Kellogg Company Vs. Pravin Kumar Bhadabhai and "The lax relating t 'rade dress' is very dear. Kerly in Law of Trade Marks*"(12 Ed.1986, para 16, 67} says that it is usually true in some degree that a trader's goods are recognised by their general appearance, or "get up? Accordingly, resemblance or "get up" is not 'uncommonly an ingredient in passing-off, and it is possible for imitation of get up alone to amount > to passing-off Such cases are rate, since few ~ traders rely on get-up alone to distinguish their goods, so that trade names and word trade marks are ordinarily present too.
LE TAGE LGR E GP RARNALARAIIGH CURT Or KAKRNALAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH CC In Schweppers Ltd. Gibbens (1905) 22 os RPC, the appellant was selling Soda Water. moo bottles, with a neck label around then, the body . of the label being of chocolate colour with.a ms _ white border and a red medallion in the centre of soda water in botles with a somewhat similar neck label round them in same colour and with a central red medallion. - However, appellant's labels showed " "Scheweppe's soda water printed on them in white characters wile respondents' contained the. "name. | 'Gibbens Soda Water' Action by plainti failed. It was held by the House of Lords that a fraudulent intent cannot be presumed inspite of the Similarities in the botties, labels, colour and medallion because the distinguishing feature of name adopted by » dejendants showed that they had no intention to decvive purchasers. Lord Halsbury L.C. said: " "T should have thought if you looked at the | os two betiles together no human being could have se mistaken one for the other. If "Royal" and "Flag' were sufficiently distinctive in the case to which _ the learned counsel called our attention Payton & Co., Vs Shelling Lampard & Co., 17 RPC 6281 c Je SiS RGA A wh Sd 7 Ce Rt a at At pS a iS te a a On ani ie ne SUAS A WR ne RES a ea ees tain SUES ESS DEES COMES UP RAR NADAS HIGH LOWRY OF RARNATAIA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH Should have thought 'Gibbens' and -- os "Schwappes" are equally impossible to" be confounded with each other'.
It has now been held that Shere ae | limitations to the theory of imperfect memory. a Halsbury's Laws of England (4% Bd) Val 48, oe Para 139) says that this principle of imperfeect recollection must not he pressed ing. for it says: "The Tribunal must bear in mind that the marks will not normally be seen side by side and quard ageinst the danger that a person seeking the new mark may think that it is the same as one he has seer. before, or even that it is a new or associated mark of the proprietor of the formal mark. - However, the doctrine of imperfact recollection must not been pressed too far Chappie Ltd. Vs. Spratt's Patent Ltd. (1954)
-- 71 REC 455, 'Marks are often remembered by general impression of by same essential feature (Decordova Vick Chemical Co. (1951) 68 RPC | 106 (PC) 289, ( On Appeal 71 RPC 348.(CA),' . peferred to, Lord Halsbury said "and if a person is so careless that he does not look and does not....... treats the label fairty but takes the LE HIGH COURT OF KARNATAKAHIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH CC 31 bottle without sufficient consideration and mn without reading what is written very plainly | indeed up- the face of the label on which the certainly cannot say he is deceived in fact, he -- does not care which it is. That would be the true interference which I think @ person would draw from conduct so described'. a
d) (2000)5 SCC 573 | . .
M/s.SM. Dyectisen Zed. VaM/s Cadbury (india) Ltd.
"1 appears ts us thet this Court did not have occasiun to decide as fur as we are able to See, ar: issue where there were also differences in essential features nor to consider the extent to which the differences are to be given importance over similarities. Such a question has arisen in the: present.case and that is why we have referred to the prinaples of English Law relating to differences in essential features which ~ : principles in our opinion are equally applicable in our country'.
@) 73 (1998) DLT 7.32 Samsonite Corporation Vs. Vijay Sales.
LZ oO COURT OF KARMATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH 32 "Lord Halsbury L.C. gave guidance in such 8 ' cases in Schweppes Ltd. Vs. Gibbens (1905) 22 ; RPC 601, 506 to be followed in get up cases. The learned Judge observed that the question te iad OS 'Whether in selling the bottle @ person is likely to be deceived hy the resemblance of' the one thing to the other and if a persen is so careless that he does not lock, and does not... treat the label fairly' but takes the bottle without sufficient. consideration and without reading what is written very plainly indeed upon the face of the labsl on which the trader has placed his own. name, then you certainly cannot say he is deceived... The witole question in these cases a is whether the thing- taken in its entirety, looking at the whole thing- is such that in the ordinary egurse of things a person with reasonable apprehension and with proper : 7 eyesigh: would be deceived".
2008 (38) PTC 568 Delhi "Allied Blenders and Distrillers P. Ltd. vs. Paul P John and Ors.
HGH COURT OF KARNATAKAHIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH CC 33 'The prima-facie evaluation of the label used by the appellant and the respondent ip akin to the evaluation of a trade dress. After all, : oe when a product is sold in a contained, be it a | pouch, a packet, @ box or a bottle, the issue of deceptive similarity has to be considered with reference to the over all get up of tie container, of course the test of a reasonable or a prudent person with imperfect memory: relying upon his memory to recollect the image of the product seen earlier and co-relating it to the product before hin while buying the product has to be duly taken note of :
"Por the purposes of an interim relief we find considerabie merit in the plea of the a respondent that the appellant as trailed the __Pespondent qua the get up of the label and the ° shape of the bottle used by the respondent since inception. 'We find that the appellant has been .. changing the shape of the bottle and the get up ofits label Law does not require to Hst out the "similarities and the dis-similarities by making a check list because the consumer is not expected to do so while buying a product. The test is to COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIG "Sa? QR OP FARM APA Ie A HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGI 34 have a glance at the two competing labels and as a reasonable and a prudent person forming msn hth three te of is the cognitive faculties ofa sudge: impromptu ling the jul mind wheter the inp ine brain have resulted in a conjtsion*. a @) AIR 1995.$0.2372 _ rene M/S Gujurat Botting Company Ld, "and others Vs. Cooo-ola Comparay and others, 7 : The arent if ei basbstoy injunction during the pendency of iegal proceedings is a matter requiring the exercise of discretion of the count. While exercising the discretion the court
-- applies the following fests - (1) whether the plaintiff has @ prima facie case; (ii) whether the balance of convenience is in favour of the
- Plaintify and (iti) whether the plaintiff would decision whether or not to grant an interlocutory tnfunction has to be taken at a time when the existence of the legal right assailed by the EN AG JRE Wr TUAR SUS TAR APE GUN P GP RUAARUIMALLAR A Piller LAUR PE ir BARIN ALES Poise rt UU Ur RK AAPA AG CUUKE Ur KAKNALAKA HEGH CU 33 plaintiff and its alleged violation are both = till they are established at the trail on evidence.
Relief by way of interlocutory injunction is a | ; granted to mitigate the risk of injustice to the as plaintiff during the period before that uncertainty So could be resolved. The object of f the interiocutory injunction is to protect the plaindi against injury by violation of his "ah fr which i he could. not be adequately -- compensated. . damages recoverable in the action if the tinvertainty were resolved in his favour at the triah The need for such protection has, however, to be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own
-- leyal rights for which he could not be adequately a compensated. The court must weigh one need against | another and determine where the 'balance uf convenience' lies. See: Wander Ltd.
and Ann V. Antox India P. Ltd.
_ MANU/SC/0595/ 1990. In order to protect the defendant while granting an interlocutory injunction in his fawour the Court can require the plaintiff to furnish an under taking so that the c M0 ee eR SR MUNA A PG WUE Ur RAKINATAIG NiGr COURT OF KAKMNATAKA HGR COURT OF KARNATAKA HIGH COURT OF KARNATAICA HIGH defendant can be adequately compensated if the uncertainty were resolved in his favour at. the trail". a
20. For the purpose of satisfying rayeelt aS ip . whether the bottles are deceptive or otherwise, y haw personally handled them in my own hands. I nave carefully examined the shape, configuration, surface, height and ornaments tion of the, bottle of each of the plaintiff as well.as the defendant and not only the bottle, but T have aluo examined the labels of each of the bottle of the defendant as well « as the bottle of the plaintiff.
21. "The terns Design » as defined U/s.2(d) of the Design Act, » 2000 is as follows Design means only the features of shape, configuration, pattern, ornament or composition
- @fines or colours applied ta any article whether "in two dimensional or three dimensional or in 7 _ both forms, by any industrial process or means, whether manual mechanical or chemical, separate or combined, which in the finished MiG UUUNE OF RARNAIAKS FiGh GOUKT OF KARNATAKA RIGH COURT OF KARNATAKA HIGH CO "ED GPU ARORA RPE LP AER article appeal to and are judged solely by the : -
eye; but does not include any mode o rin. Moe of construction or anything which is in substance a mere mechanical device, and oon ee . not include any trade may as defined in clause (u) of sub-section (1) of Section 2 of the Trade oe and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in 'Section 479 of the Indian Penal Code. {45 of 1860} or any artistic work as defined in dause (c) of Section 2 of the Copy Rights Act, 1957 (i4 of 1 957).
22. The rile 3 12 of the nares states as follows:
Rule 12. | Statement of Noevelty-~ The applicant may, and. shall, if required by the & - Controller in any case So to do, endorse on the a application and each of the representation a : brief sthemere ent of the novelty he claims for his design * a : 23. On the careful consideration of the submissions "made by both partic, it is observed that, if a laymen _ goes a8 a customers to the wine shop, he would be ~~ guided by the manner in which the product is wrapped Faas Pane ow fe stg od SUR Ob BARNATAICA NGM COURT OF RARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH and he would be accustomed to such wrapping of how : .
the product is and the person who handles the Product | prominent curves, appearances on the "upper portion of NS , the bottle which are visible to the naleed eye: ituel? and which also can be felt by hands while holding the bottles. Therefore, there is no question of ar. ordinary citizen misguiding himself : in the choice 'of the bottle since, features contained jn 'the: tonttle of "the pleintff are definitely not available ry the bottle. of the defendant. Therefore, the question of minguiding himself to purchase the defendant's bottle instead of that of the plaintiff does not, in my opinion, arise.
24. Further, 'the plaintiffe bottle contains the label, whieh is is red in 1 colour and the words "Original Choice"
are prominently exhibited on the bottle on the label, | whereas the defendant's bottle contains the label, which | "se yellow in colour and the words LBW Grape Brandy ia "prominently displayed on the label of the defendant's tGh COURT OF KARNATAKAHIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH CO 39 bottle. Therefore, I am of the considered opinion that, there is absolutely no question of a common customer -- misguiding himself while purchasing, the liquor bottles. a To that extent, plaintiff does not have prime- "facie case" | against the defendant. It in further 10 be noted that, 'the height of the bottle is not a matter of design in thie ¢ Case. Therefore, merely because the height of the defendant's bottle is equal to th height of the plointif bottle does not mean that, plaintiff oan yet an order of restraining the defendant from using the bottle of the same height as that of the pinintit Hence, plaintitt has not estabhshed a primar facis case in his favour and against the defendant. oe 8. far as the balance of convenience is
- 7 concemed, todays world j ig @ Competitive world and every citizen haw a right to carry on the business of his choice | without i infringing the rights of others. Therefore, the | a question of loss to the plaintiff because of the business carried on by the defendant does not arise and therefore, 2 MiGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH balance the convenience is also in favour of the : defendant. T,
26. I have gone through the onder pasced wy the trial Court and I am of the opiaion that the grounle on | which the trial Court has refused to grant an order of temporary injunction are neviher perverse nur contrary to the settled principles of lew and the order i based on physical analysis" and ancessmerit of the subject in question. The plaintit has not t made out any grounds to interfere with the order of the * trial Court in this appeal
27. tn view of what is stated above and also the grounds on which the learned 'vial Court haw rejected the application for temporary injunction, I am of the ~ considered opinion that, this appeal has no merits and
- the same is s dismissed as devoid of merite. 28, It ia always open to the trial Court to paes an appropriate order after recording evidence of the parties and also after appreciating the evidence on record with Z HGH COURT OF KARNATAKAHIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH CO 4i reference to the issues framed by the trial Court. -- Needleas to say that the trial Court has power to impose -- damage if the plaintiff proves that the action of the - defendant has caused legal damage or loos ine his
29. in view of the Sect that, cane iowohen huge amount of money - in terms of investment and it is requested that the tial Court shall dispose of the main suit within 6 months from. today.
30. In view of the disineal of the main apes, Misc. Cvl.4490/ 2011 'also does not survive for ronsideration and the game is also dismissed. Bt. 'The cbrervations made in this judgment are only for the. purpose of disposing this appeal and the learned Trial Judge shall not be carried away by the "> observations made in this Judgment, + LEO COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH COURT OF KARNATAKA HIGH weg a rg
32. The learned counsel for the appellant submits - that, certificate may be granted to approach the Hone -- Hon'ble Supreme Court by way of Sperial L Leave Petition - certificate may not be necessary. "Hence, certificate is rejected.
Sd/-
JUDGE