Delhi High Court
Dabur India Limited vs Mr. Amit Jain And Anr. on 31 May, 2007
Equivalent citations: MIPR2007(2)257, 2007(35)PTC257(DEL)
Author: Shiv Narayan Dhingra
Bench: Shiv Narayan Dhingra
JUDGMENT Shiv Narayan Dhingra, J.
Page 1575
1. Plaintiff is the owner of registered trade mark DABUR AMLA HAIR OIL and it is claimed that it has vast market not only in India but in overseas also with huge sales. The said oil is marketed in plastic bottles, which according to the plaintiff, bear a unique and distinctive design comprising semi circular shoulder with curvaceous back and a front panel that converge tapering into each other. The said shape and configuration being unique, aesthetic, novel and original was registered as a design under the Design Act, under design registration No. 173234 dated 24.2.1997 in favor of the plaintiff, which is valid till 24.2.2012 the allegation is that the defendant is manufacturing the bottle of same size and description copying the design and at the bottom of the bottle word 'DABUR' with same logo is inscribed. It is contended that the defendant was selling these plastic bottles to various manufactures, who were using the same with the purpose of counterfeiting DABUR AMLA HAIR OIL, which amounted to act of passing off and abatement to passing off, counterfeiting and selling spurious hair oil as genuine product of the plaintiff.
2. It is further pointed out that the defendants had earlier started marketing the oil under the trade-name "Plush Jasmine Hair Oil" and "Tushar Amla Hair Oil", which was packed in the bottles of deceptively similar to the design of the plaintiff's bottles and labels. Consequently, the plaintiff had instituted Suit No. 1699/2005 in which ad interim injunction was granted. Thereafter, the defendants settled the matter with plaintiff admitting the plaintiff to be the proprietor of the design of the bottles under the aforesaid design registration No. 173234 and suffered decree of injunction in terms thereof. However, it has come to the knowledge of the plaintiff in the first week of February, 2007 that the defendants have once again started business of manufacturing and selling 'Plush Jasmine Hair Oil" in similar plastic bottles, which amounted to infringement of the plaintiff's registered design No. 173234.
3. The defendant has opposed the application of the plaintiff on the ground that the plaintiff has obtained registration of the bottle by concealment and fraud and the Controller of Design has granted the design in utmost mechanical manner without application of mind. The present suit was filed by the plaintiff to scuttle competition in the market by unfair means. The bottles being used by the defendant were not of the same design as being used by the plaintiff and were of entirely different form. Even the local commissioner, who was appointed by the Court at the time of seizure of the bottles, had opined that the bottles were not similar to the bottles of the plaintiff. However, plaintiffs representative got the bottles sealed alleging that the bottles infringed the design of the plaintiff. It is also contended by the defendant that the claim of the plaintiff that there was an originality in the Page 1576 design of the bottle was false. No special feature of the bottle was registered as a design as was clear from the registration certificate filed by the plaintiff, and the plastic bottle in its entirety was registered as a design. The bottle itself is common in the trade and the bottle as a whole could not have been registered as a design because of the insignificant variations made by the plaintiff. The bottle got registered by the plaintiff had no exclusive artistic features, cuts or curves and the claim over the shoulder of the alleged bottles and its design were very insignificant giving no exclusive rights to the plaintiff over others. The defendant submitted that it has already filed a petition before Controller of Designs for cancellation of the registration of design in dispute and the petition is pending and plaintiff cannot claim exclusive right to use bottle till the petition of the defendant is disposed of by Controller of Designs. It is also submitted that plastic bottle is normally used for filling of hair oil, which was trade of plaintiff as well as of the defendant. The design of plastic bottle being used by plaintiff was similar to a pre-existing design even prior to the registration obtained by the plaintiff with light trade variations. Defendant filed photographs of similar bottles being used by different other manufactures viz. bottles of products:
1. JOLEN (Skin Satin Moisturizer)
2. SEBSUN (Anti Dandruff Shampoo)
3. Lever Ayush Hair Poshak Oil of HLL
4. Shivanand Amla Plus Hair Oil
5. Bajaj Amla Shikakai Hair Oil
6. Cantharidine Hair Oil
7. SIMAX Hair Fixer
8. Amla Hair Oil manufactured by Nimson
9. Aroma Hair Strengthening Oil by VLCC
4. The defendant, by showing the photographs of different bottles of the different manufactures, argued that all these bottles were of similar shape with slight variations in the form and they were all in use prior to the use of registration by the plaintiff. The plaintiff had not created any new design of the plastic bottle except doing small trade variations and the bottle of the defendant was not same as that of the plaintiff. The bottle of defendant was also of the shape as other bottles with different variations and was not a copy of the plaintiff's bottle. It is submitted that the design of the bottle obtained by the plaintiff was not a design as defined under Section 2(d) of Design Act. Similar design of bottle was known in public not only in India but in other countries as well. The design claimed by plaintiff was a previously known and disclosed design and it was a product falling under public domain and had been used by plaintiff themselves prior to registration of the design. The registration of the plaintiff was in contravention of Section 5 of the Design Act and was liable to be canceled. Defendant denied that the defendant committed any infringement of the design of the plaintiff or the bottle being used by the defendant for marketing its hair oil was similar to that of the plaintiff.
5. The contention of the plaintiff is that the certificate of registration granted to the plaintiff was a prima facie evidence of the design of the plaintiff being Page 1577 novel and specific. The application filed by the defendant for rectification was filed after filing of suit by the plaintiff and cannot give a ground to the defendant to seek any relief. The mere probability that the registration of the plaintiff may be canceled, is not a ground or defense available to the defendant.
6. This Court held in Rotela Auto Components Private Limited and Anr. v. Jaspal Singh and Ors. 2002 (24) PTC 449 (Del.) that it was well settled that interlocutory injunction be not granted where damages are provided for remedy should the claim succeed. The Court will not grant an interlocutory injunction, unless it is satisfied that there is a real probability of the plaintiff succeeding on trial of the suit and where design is of recent date no injunction should be granted. More so, when there is a serious question as to the validity of the design to be tried in the suit an application for cancellation has been made.
7. I have seen the plastic bottles being used by the defendant as well plaintiff and the photographs of the other bottles which have been placed on record by the defendant. I find that the bottles which are being used by different manufactures/companies for marketing their product like hair oil, fixer etc. have similar shape with little variations in the form. Some bottles have uniqueness of the form associated with the manufacturer while some bottles have no uniqueness. The bottle being used by the defendant is not of the same dimension or shape as that of the plaintiff neither it has logo of plaintiff with 'DABUR' on the bottom, as alleged. Neither the bottle got registered by the plaintiff under Design Act has any special unique feature which has been registered by the Registrar as a unique design. The registration certificate shows that what has been registered is bottle as a whole without specifying any distinctive feature of the bottle giving it a uniqueness of design. The Registrar has placed on the register of designs record photographs showing front elevation, top elevation and side elevations of the bottle and a photograph of the bottom. These photographs of the front, top and side elevations did not depict any special design or feature of the bottle. The shape of the bottle in which plaintiff is marketing its product is not something new. Similar shape bottles have been used and are being used by other manufacturers. Moreover, shape as a design has not been registered in favor of the plaintiff. It is well settled that when serious disputed question arises like prior publication of the design, lack of originality, trade variation etc. injunction will not follow as a matter of routine. From the perusal of the documents on record I consider that plaintiff has failed to show that the plastic bottle used by the defendant was prima facie violating/infringing the design of the plaintiff. Moreover, there is no substantial difference in the bottle of the plaintiff and the bottles being used earlier or registered earlier as design by other companies with different features.
8. I, therefore, find no force in the application under Order 39 Rules 1 & 2 made by the plaintiff. The application is hereby dismissed.
CS(OS) No. 314/2007The bottles seized by the local commissioner and handed over to the defendant on superdari, are released back to the defendant. Pleadings in this case are complete. To come up for framing of issues in 12th November, 2007.