Delhi High Court
Ok Play India Limited vs Mayank Aggarwal & Ors on 15 July, 2016
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
*IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 15th July, 2016.
+ CS(OS) No.2355/2015 & CC No.6/2016 (of the defendant no.8)
OK PLAY INDIA LIMITED ..... Plaintiff
Through: Mr. Jayant Mehta, Mr. Kapil
Wadhwa, Mr. Anirudh Wadhwa and
Ms. Tanya Sharma, Advs.
Versus
MAYANK AGGARWAL & ORS ..... Defendants
Through: Mr. Saikrishna Rajagopal, Mr.
Sidharth Chopra, Mr. Nitin Sharma
and Mr. Avijit Sharma, Advs. for D-1
to 7.
Mr. Bharat Deepak, Adv. for D-8.
CORAM:-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
IA No.16099/2015 (of the plaintiff u/O 39 R-1&2 CPC), IA
No.18726/2015 & IA No.24796/2015 (of defendants u/O 39 R-4 of the
CPC) & IA No.18727/2015 (of the defendants for release of goods).
1. The application of the plaintiff for interim injunction and the
applications of the defendants for vacation of the ex parte ad interim
injunction granted to the plaintiff vide order dated 7th August, 2015 and for
release of the goods seized by the Court Commissioner appointed vide the
same order and order dated 21st August, 2015 are for consideration.
2. The plaintiff, claiming to be a leading manufacturer and distributor of
quality products made using plastic moulding technology including toys,
CS(OS) No.2355/2015 Page 1 of 29
school furniture and playground equipment, has sued the eight defendants
namely Playwell Impex Private Limited and its Directors Mr. Mayank
Aggarwal, Ms. Meenakshi Gupta, Mr. Pawan Kumar Gupta and Mr. Vishal
Gupta and its Manager Mr. Darshan Singh Rawat and its distributor R.P.
Associates and its manufacturer Funko India for the relief of permanent
injunction restraining them from infringe upon the bundle of intellectual
property rights including copyright and Common Law Rights in designs
and/or from passing off or indulging in acts of unfair competition by
manufacturing, distributing and selling products identical or deceptively
similar to the products of the plaintiff and for ancillary reliefs.
3. It is inter alia the case of the plaintiff (i) that it is the assignee of all
the intellectual property rights owned by OK Play Limited (UK), a British
Company specializinig in manufacture and distribution of toys, including
trademarks and goodwill attached to the brand OK Play Limited (UK) and
all rights to the drawings, designs, moulds, casts and dyes relating to the toys
made by OK Play Limited (UK); (ii) that the plaintiff has been carrying on
business under the brand OK PLAY and is the leading toy manufacturer in
India having turnover of Rs.56,64,71,656/- in the financial year 2014-15;
(iii) that the plaintiff in the year 2014-15 spent Rs.1,28,80,197/- in
CS(OS) No.2355/2015 Page 2 of 29
marketing; (iv) that the plaintiff is the registered proprietor of the trademark
‗OK PLAY' since 25th August, 2005 (w.e.f. 26th October, 1992); (v) that the
mark OK PLAY is also used by the plaintiff in the form of a logo with the
words OK PLAY set out in a stylized font in yellow coloured lettering over
a red background and the plaintiff has also applied for registration of the said
(device) mark; (vi) that each toy produced by the plaintiff is unique and has
been conceptualized and designed under the strict control and supervision of
the plaintiff and the conceptualization and production of toys by the plaintiff
is confidential and proprietary and involves studying the market, coming up
with a feasibility report and demand, conceptualising keeping the mental and
physical development of the target age-bracket, coming up with the aesthetic
elements of the toy including colour scheme, dimensions etc., preparation of
the drawings, preparation of a dummy prototype, creation of the necessary
moulds, dyes and creation of casts; (vii) all the drawings are created either
in-house or by professionals engaged by the plaintiff; (viii) the plaintiff in
the five years preceding the institution of the suit spent Rs.4 crores on
research and development; (ix) the defendant no.2 Playwell Impex Private
Limited, also engaged in the business of manufacture, distribution and sale
of toys, in collusion with the defendant no.6 R.P. Associates which was the
CS(OS) No.2355/2015 Page 3 of 29
distributor of the toys of the plaintiff and defendant no.7 Darshan Singh
Rawat, who was earlier an employee of the plaintiff and privy to all
confidential and proprietary information and data of the plaintiff, has
launched a range of toys which are identical and deceptively similar to the
toys made by the plaintiff and is thereby passing off its goods as those of the
plaintiff, infringing the bundle of intellectual property rights of the plaintiff
in its products; and, (x) that the toys manufactured and sold by the
defendants under the brand FUNKO are a substantial re-production and
colourable imitation of the products of the plaintiff.
4. Vide ex parte ad interim order dated 7th August, 2015, while issuing
summons of the suit, the defendants were restrained from manufacturing,
selling, distributing, advertising or dealing with the products that are
identical/deceptively similar to the plaintiff's products and Court
Commissioners appointed to visit the premises of the defendants without
notice and to prepare inventory of all the impugned material and to take into
custody the infringing material. Vide subsequent order dated 21.08.2015,
Additional Commissioners were appointed to visit other locations.
CS(OS) No.2355/2015 Page 4 of 29
5. The Commission was executed and certain goods seized and for
release whereof application has been filed by the defendants and is also
under consideration.
6. Needless to state, the defendants have contested the suit. Separate
written statements have been filed by the defendant No.1, defendants
no.2&5, by the defendant no.3, by the defendants no.4&6 and by the
defendant no.8. The defendant no.8 Funko India has also filed a Counter
Claim against the plaintiff for recovery of Rs.2 crores for causing loss and
damage by having the commission executed. Pleadings have been
completed. The counsels were heard on the aspect of interim relief on
08.07.2016 and order reserved.
7. Having not found the plaintiff in the plaint to have claimed
registration under the Designs Act, 2000 and being of the prima facie
opinion that without the same the plaintiff cannot assert any intellectual
property rights, at least at the interim stage to be entitled to injunction,
during the hearing also the counsel for the plaintiff was straightaway quizzed
on the said aspect and for this reason only need at this stage to summarize
the defence of the defendants to the suit is not felt. Hearing was thus
confined to, whether the plaintiff without obtaining registration as a design
CS(OS) No.2355/2015 Page 5 of 29
with respect to any of the toys being manufactured by it is entitled to injunct
the defendants at the interim stage from copying the design of its toys.
8. The counsel for the plaintiff, in the ―bundle of copyrights‖ of which
infringement is claimed, asserts copyright in the drawings of the toys and
―Common Law Rights‖. Mr. Saikrishna Rajagopal, Advocate appearing for
the defendants no.1 to 7 on the other hand contended what was echoed by
me i.e. that without registration as a design, no intellectual property rights
can be claimed.
9. Before going into the legal provisions on the aforesaid aspect it may
be mentioned that it is the plea in para 19 of the plaint and it was argued by
the counsel for the plaintiff with reference to pages 181 and 182 of the
documents that the plaintiff, while conceptualizing a proposed toy, first
comes up with the aesthetic elements of the proposed toy including the
colour scheme, dimensions and functional requirements of the toy and on the
basis thereof the technical team prepares the drawings and on the basis of
which drawings prototype of the toy is prepared and subsequently the
necessary moulds, dyes and casts are created. According to the plaintiff, first
CS(OS) No.2355/2015 Page 6 of 29
a design and colour theme as under is prepared
and thereafter the drawing thereof as under:-
is prepared and in which the plaintiff claims copyright.
10. The statutory provisions to which the hearing was confined are as
under :-
(i) Section 14(c) of the Copyright Act, 1957:-
―For the purposes of this Act, ―copyright‖ means the
exclusive right subject to the provisions of this Act, to do
or authorise the doing of any of the following acts in
respect of a work or any substantial part thereof,
namely:--
(a) .......
CS(OS) No.2355/2015 Page 7 of 29
(b) .......
(c) in the case of an artistic work,-
(i) to reproduce the work in any material
form including -
(A) the storing of it in any medium by
electronic or other means; or
(B) depiction in three-dimensions of a
two-dimensional work or
(C) depiction in two-dimensions of a
three-dimensional work;
(ii) to communicate the work to the public;
(iii) to issue copies of the work to the public
not being copies already in circulation;
(iv) to include the work in any cinematograph
film;
(v) to make any adaptation of the work;
(vi) to do in relation to an adaptation of the
work any of the acts specified in relation
to the work in sub-clauses (i) to (iv);
(d) ......
(e) ......
Explanation. - For the purposes of this section, a copy
which has been sold once shall be deemed to be a copy
already in circulation."
(ii) Section 15 of the Copyright Act.
"15. Special provision regarding copyright in
designs registered or capable of being registered
under the [Designs Act, 2000 (16 of 2000)]-(1)
Copyright shall not subsist under this Act in any design
which is registered under the [Designs Act, 2000 (16 of
2000)].
CS(OS) No.2355/2015 Page 8 of 29
(2) Copyright in any design, which is capable of being
registered under the [Designs Act, 2000 (16 of 2000)],
but which has not been so registered, shall cease as
soon as any article to which the design has been
applied has been reproduced more than fifty times by
an industrial process by the owner of the copyright, or,
with his licence, by any other person."
(iii) Sections 2(c) and (d), 6(1) and 11 of the Designs Act
―2. Definitions. - In this Act, unless there is anything
repugnant in the subject or context, -
(c) "copyright" means the exclusive right to apply a
design to any article in any class in which the design
is registered;
(d) "design" means only the features of shape,
configuration, pattern, ornament or composition of
lines or colours applied to any article whether in
two dimensional or three dimensional or in both
forms, by any industrial process or means, whether
manual, mechanical or chemical, separate or
combined, which in the finished article appeal to
and are judged solely by the eye; but does not
include any mode or principle of construction or
anything which is in substance a mere mechanical
device, and does not include any trade mark as
defined in clause (v) of sub-section (1) of section 2
of the Trade and Merchandise Marks Act, 1958 or
property mark as defined in section 479 of the
Indian Penal Code or any artistic work as defined in
clause (c) of section 2 of the Copyright Act, 1957.
6. Registration to be in respect of particular article.
- (1) A design may be registered in respect of any or
CS(OS) No.2355/2015 Page 9 of 29
all of the articles comprised in a prescribed class of
articles.
11. Copyright on registration. - (1) When a design is
registered, the registered proprietor of the design
shall, subject to the provisions of this Act, have
copyright in the design during ten years from the
date of registration.
(2) If, before the expiration of the said ten years,
application for the extension of the period of
copyright is made to the Controller in the prescribed
manner, the Controller shall, on payment of the
prescribed fee, extend the period of copyright for a
second period of five years from the expiration of the
original period of ten years."
11. It was enquired from the counsel for the plaintiff whether not the
copyright under Section 14(c) supra, even if any of the plaintiff in the
drawing as re-produced above, was a copyright in a design within the
meaning of Section 2(d) and being capable of registration under the Designs
Act and whether not, having not been so registered, and the plaintiff having
applied the design to manufacture by industrial process of the toy concerned
more than 50 times, the said copyright in design ceased under Section 15(2)
supra.
12. The contention of the counsel for the plaintiff is and as indeed cannot
be anything else that the drawing aforesaid in which the plaintiff claims a
CS(OS) No.2355/2015 Page 10 of 29
copyright does not constitute a design within the meaning of Section 2(d)
supra and was thus not capable of being registered under the Designs Act.
13. On enquiry whether not the said question had been the subject matter
of any earlier judgment, the counsel for the plaintiff drew attention to the
judgment of the Division Bench of this Court in Microfibres Inc. Vs.
Girdhar & Co. 2009 (6) R.A.J. 106 (Del). However it was found that the
said judgment besides in the appeal preferred by Microfibres Inc. was also in
FAO(OS) No.447/2008 preferred by Mattel Inc., also a manufacturer of
toys, against Jayant Aggarwalla and further finding the judgment of the
Division Bench copy of which was handed over to be pertaining more to the
appeal preferred by Microfibres Inc., and having deferred the hearing of
appeal by Mattel Inc., the judgment of the Single Judge of this Court in
Mattel, Inc. Vs. Jayant Agarwalla and the judgment of the Division Bench
in the said appeal being FAO(OS) No.447/2008 were enquired of. The
counsel for the defendants no.1 to 7 handed over a copy of the judgment of
the Single Judge in Mattel, Inc. Vs. Jayant Agarwalla 2008 (38) PTC 416
(Del.) and during the course of hearing the counsel for the plaintiff also
procured from the internet the copy of the order dated 23 rd April, 2012 of the
CS(OS) No.2355/2015 Page 11 of 29
Division Bench disposing of FAO(OS) No.447/2008 preferred by Mattel,
Inc.
14. Mattel, Inc., also claiming to be a leading manufacturer of toys, games
and consumer products had filed the suit aforesaid in respect of its board
game marketed and popularized by the name SCRABBLE and to restrain the
defendants from adopting deceptively and confusingly similar online version
of the plaintiff's games. It was the contention of the defendants therein that
the question of the copyright protection being available to Mattel, Inc. did
not arise due to Section 15 of the Copyright Act and the provisions of the
Designs Act. Dismissing the application of Mattel, Inc. for interim
injunction it was reasoned:-
(a) relying on the judgment of the Single Judge in Microfibres Inc.
Vs. Girdhar & Co. 2006 (32) PTC 157 (Del) that in India we
have legislations governing the protection of different nature of
rights;
(b) insofar as the industrial designs are concerned, the protection is
provided under the Designs Act;
CS(OS) No.2355/2015 Page 12 of 29
(c) the legislative intent is also to be kept in mind which is to
provide protection for a certain period of time for commercial
exploitation;
(d) thus, nature of protection is quite different for an artistic work
under the Copyright Act which is for the lifetime of the author /
creator + 60 years;
(e) this is not so in the case of commercial exploitation as under
the Designs Act and the Patent Act the period is much lesser;
(f) if the configuration is made only with the object of putting it to
industrial / commercial use then it has to be dealt with under the
Designs Act;
(g) the exclusion of an 'artistic work' as defined in Section 2(c) of
the Copyright Act from the definition of 'design' under Section
2(d) of the Designs Act is only meant to exclude the nature of
artistic works like paintings, sculptors and other works of art
which are sought to be specifically excluded from the Designs
Act;
CS(OS) No.2355/2015 Page 13 of 29
(h) the concept behind excluding certain designs from protection
under the Copyright Act is to avoid any hindrance being
caused to the manufacturer in sale of industrial articles;
(i) the intention of the Legislature is to protect any artistic work
which has to be commercially exploited by the owner of the
copyright by not providing the protection under the Copyright
Act, but under the Designs Act;
(j) that in the context of the Indian Law, it is the Designs Act
which would give protection to the plaintiff and not
the Copyright Act;
(k) even where there is application of mind and skill and the
defendant has copied the same, that would still not amount to
the work in question being labeled as 'artistic work' within the
definition of Section 2(c) of the Copyright Act and the
protection under the Copyright Act would not be available;
(l) the object of Copyright law is to protect the original literary,
dramatic, musical and artistic works, cinematograph films,
sound recordings, broadcasting rights and/or performers' rights;
CS(OS) No.2355/2015 Page 14 of 29
(m) the object of Design Law on the other hand is protection of the
features of shape, configuration, pattern, ornamentation, or
composition of lines or colours applied to any article whether in
two dimensional or three dimensional or in both forms, by
industrial process or means;
(n) the Copyright Act precludes the subsistence of Copyright in the
Design which is registered or is capable of being registered as a
design;
(o) Section 47 (2) (c) of the Designs Act enables the Central
Government to frame rules inter alia to facilitate registration
thereunder; pursuant thereto the Designs Rules, 2001 were
framed and which classify the various articles and one of the
entries wherein deals with GAMES AND TOYS and another
with OTHER AMUSEMENT AND ENTERTAINMENT
ARTICLES - these prima facie cover all games and amusement
articles as well as toys;
CS(OS) No.2355/2015 Page 15 of 29
(p) designs in respect of various articles of games and other
amusement articles including game boards therefore can prima
facie be registered; and,
(q) thus the defendants' objection that copyright could not be
claimed was prima facie merited and plaintiffs' copyright claim
could not be granted at the interim stage.
15. The Division Bench in appeal preferred thereagainst and which was
clubbed with the appeal preferred by Microfibres Inc. while dismissing the
appeal of Microfibres Inc. ordered separate listing of the appeal preferred by
Mattel, Inc.. However it appears that the appeal preferred by Mattel, Inc. was
adjourned from time to time and is found to have been disposed of vide
order dated 23rd April, 2012 finding that the suit was at an advance stage and
merely with the clarification that the observations made while dismissing the
application for interim relief would not influence the final decision.
However I further find through the website of this Court that the said suit
has not been disposed of as yet.
16. The fact however remains that though the Division Bench did not
render any findings on merits but also did not set aside the judgment of the
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learned Single Judge which holds good till now. Going by the rule of
precedents, the plaintiff herein also cannot be granted any interim relief.
17. Interestingly, the judgment of the Division Bench in Microfibres Inc.
is also in FAO(OS) No.326/2007 preferred by Dart Industries Inc. against
the order of the Single Judge refusing to grant interim injunction against
infringement of its Tupperware Products. Just like FAO(OS) No.447/2008
preferred by Mattel Inc., FAO(OS) No.326/2007 preferred by Dart
Industries Inc. was also ordered to be listed separately and judgment wherein
is found to have been reserved by a Division Bench comprising of the same
learned Judge who had sitting singly pronounced the judgment in Mattel
Inc.
18. Be that as it may, the counsel for the plaintiff argued (i) Section 15
being an exception to Section 14 of the Copyright Act has to be construed
strictly; (ii) that the Division Bench in Microfibres Inc. in para 20 has held
that the definition in Section 2(c) of the Copyright Act of ―artistic work‖ has
a very wide connotation and includes a work of architecture or an abstract
work such as a few lines or curves arbitrarily drawn; (iii) that the Division
Bench in Microfibres Inc. in para 23 has held that there is a clear distinction
CS(OS) No.2355/2015 Page 17 of 29
between an original artistic work and design derived from it for industrial
application on an article and that the original artistic work is something
different from the design; (iv) that the Division Bench in Microfibres Inc. in
para 46(f.) has held that the original artistic work which may be used to
industrially produce the designed article would continue to fall within the
meaning of the artistic work defined under Section 2(c) of the Copyright Act
and would be entitled to the full period of copyright protection as evident
from the definition of design under Section 2(d) of the Designs Act; (v) that
a Single Judge of the High Court of Bombay also in Photoquip India
Limited Vs. Delhi Photo Store 2014 (60) PTC 563 held that that drawings of
the plaintiff therein being skilled diagrams that did not reflect any finished
products, let alone a finished product of any 'visual' or aesthetic appeal and
serving only a functional purpose were not a design and that the plaintiff
herein also is claiming copyright only in the drawings and not in the articles
and is thus entitled to interim injunction; (vi) that the defendants in their
written statement have admitted the e-mail of the defendant Mr. Darshan
Singh Rawat to the defendant Playwell Impex Private Limited forwarding
the brochure of the toys of the plaintiff and therefrom it is evident that the
defendant Playwell Impex Private Limited is replicating from the brochure
CS(OS) No.2355/2015 Page 18 of 29
of the plaintiff; (vii) that the defence of the defendants in their written
statements that identical toys of other brands were also available would not
disentitle the plaintiff from interim injunction - reliance in this regard is
placed on Pankaj Goel Vs. Dabur India Ltd. 2008 (38) PTC 49 (Del) and
Essel Packaging Limited Vs. Sridhar Narra (2002) 98 DLT 565; (viii) that
the plaintiff is entitled to interim injunction under the Common Law (on
enquiry whether in the face of statutory provisions there can be Common
Law to the contrary and whether not intellectual property rights are statutory
rights and not Common Law Rights, reliance was placed on Mohan Lal,
Proprietor of Mourya Industries vs. Sona Paint & Hardwares AIR 2013
Delhi 143 (FB)). (ix) reliance was placed on Laxmikant V. Patel Vs.
Chetanbhai Shah (2002) 3 SCC 65 on the subject of passing off; and, (x)
reliance was placed on Escorts Construction Equipment Ltd. Vs. Action
Construction Equipment Pvt. Ltd. 1998 Lawsuit (Del) 811 to contend that
commercial exigencies require that copyright/patent laws should be viewed
in the context of giving protection and exclusive rights for the purpose of
encouraging inventive activities and investments in research and
development.
CS(OS) No.2355/2015 Page 19 of 29
19. I had during the hearing enquired from the counsel for the plaintiff,
whether not the manufacture by industrial process of any article is to be
necessarily preceded by preparation of a drawing, and if it were to be held
that the copyright in the said drawing as an art work under Section 14(c)
supra is to be distinct from the design of the article manufactured, and to
enjoy protection for the lifetime of the author / creator + 60 years and entitle
him to injunct others during the said time from replicating that design,
protection whereof under the Designs Act is of maximum 15 years only,
why would anyone bother to register the design of an article and not chose
to be better off having a copyright which will afford the same protection as
registration of a design and for a much longer period.
20. The only answer forthcoming was that only that is eligible for
registration as a design which is without preceding art work. Attention in
this regard was drawn to para 24 of Microfibres Inc. (DB) supra.
21. The Division Bench in the said paragraph though observed that it is
not necessary that in every case a design has to be preceded by a artistic
work upon which it is founded and gave the example of a craftsman creating
a design without first creating a basic artistic work viz. a weaver creating a
CS(OS) No.2355/2015 Page 20 of 29
design while weaving a shawl but without going into the binding nature
thereof, that is not the case here. Here it is the specific case of the plaintiff
demonstrated as aforesaid from pages 181 and 182 of its documents that the
design in the form of prototype precedes the artistic work and the process of
manufacture by industrial process is preceded by the said artistic work.
22. The questions posed by me to the counsel for the plaintiff
demonstrates the incongruity of the contention of the counsel for the
plaintiff. If protection as artistic work having copyright were to be made
available to the drawing prepared/got prepared by plaintiff preceding
manufacture of its toys, when the drawing of the plaintiff itself is preceded
by ―design and colour theme‖, then it will amount to saying that though the
toys of the plaintiff have features of shape, configuration, pattern,
composition of colours and further though the said features have been
applied to the toys manufactured by industrial process and the said features
in the finished article i.e. toys appeal to and are judged solely by the eye, all
within the meaning of Section 2(d) supra but still do not constitute a design.
Such an interpretation would sound the death knell for the Designs Act.
CS(OS) No.2355/2015 Page 21 of 29
23. I reiterate that the pleading of the plaintiff and argument of counsel
for plaintiff itself shows that the plaintiff while conceptualizing a new toy
first prepares a design having features of shape, configuration, pattern,
ornament, colour to appeal to children to whom such toys are to be marketed
and only thereafter prepares a drawing for industrial manufacture of the said
design. The same shows that the art work in which the plaintiff is claiming
copyright is a step in manufacture of an article as per the design conceived
and cannot stand independently from the design.
24. I had yet further enquired from the counsel for the plaintiff whether
not Section 15(2) supra referring to ―copyright in any design‖, is itself
indicative of a design also qualifying as a copyright and which copyright
ceases as soon as the article to which design has been applied has been re-
produced more than 50 times.
25. The response of the counsel for the plaintiff was that since from the
definition in Section 2(d) of Designs Act artistic work as defined in Section
2(c) of the Copyright Act has been expressly excluded, a design cannot be a
copyright.
CS(OS) No.2355/2015 Page 22 of 29
26. I am unable to agree. The provisions of Sections 2(c), 14 and 15 of the
Copyright Act have to be read harmoniously with Section 2(d) of the
Designs Act and cannot be read so as to undo what the Designs Act has been
enacted to achieve. I reiterate that for a design to be applied to any article to
be re-produced more than 50 times by industrial process drawings will
necessarily have to be prepared and the preparation of such drawings in
application of a design to any article is but a part of the process of
application of the design to an article and the said drawings cannot be treated
disjunctively from a design so as, to by vesting a copyright therein, extend
the protection to which a design is otherwise entitled to under the Designs
Act. Section 15(2) expressly ends the said protection. The principles of
interpretation of a ‗Proviso' as are sought to be invoked, cannot be applied
to Section 15(2) which has to be given full effect to.
27. The counsel for the defendants no.1 to 7 has also rightly clarified that
the registration of a design is only in the context of an article and the
copyright in the drawings ceases only qua that article though may subsist for
other purposes.
CS(OS) No.2355/2015 Page 23 of 29
28. It is also the contention of the counsel for the defendants no.1 to 7 that
the judgment of the High Court of Bombay in Photoquip India Limited
supra is per incuriam Section 52(w) brought into the Copyright Act by
amendment of the year 2012 and that para 25 of the judgment shows that the
Court in that case was not concerned with any furnished product. He has
also drawn attention to the judgment dated 24th February, 2012 of the
Division Bench of this Court in RFA No.750/2010 titled Kiran Shoes
Manufacturers Vs. Registrar of Copyrights observing in para 9 thereof that
Section 15(2) of the Copyright Act means that even an artistic work which is
commercially exploited in relation to goods in the manner provided under
the Designs Act ceases to be a work which would get protection under the
Copyright Act and proper course of action in such cases is to get the same
registered under the Designs Act. (I am not only bound by the said judgment
of Division Bench but was also a member thereof.)
29. The counsel for the defendants no.1 to 7 with respect to the claim of
the plaintiff for interim injunction on the basis of Common Law Rights
contended that no interim injunction on the basis of Common Law Rights
which are to be established by evidence can be granted. It was argued that
the toys in which the plaintiff is claiming proprietary rights are generic
CS(OS) No.2355/2015 Page 24 of 29
products and are being marketed by a number of other manufacturers also
and all these questions cannot be decided at the interim stage.
30. I tend to agree with the counsel for the defendants no.1 to 7 and after
having perused the photographs of some of the toys in which the plaintiff is
claiming proprietary rights have asked the counsel for the plaintiff the
date/year since when the plaintiff has been manufacturing the said toys, as
the toys look familiar, which have been available in the market for ages. The
counsel for the plaintiff has generally stated that the said toys are being
manufactured by the plaintiff since the year 1992.
31. I am of the view that the articles of toys which indisputably have been
manufactured more than 50 times by an industrial process and in which the
plaintiff is claiming a bundle of intellectual property rights were/are
registrable under the Designs Act and the plaintiff having not done so, the
plaintiff at least at this interim stage cannot injunct the defendants from
manufacturing, selling and marketing identical toys. It is also worth noticing
that the protection of a design is for a maximum period of 15 years and
which also as per the plaintiff has lapsed. No protection on the basis of
copyright can be given to the plaintiff at this stage as I am of the prima facie
CS(OS) No.2355/2015 Page 25 of 29
opinion that the copyright if any of the plaintiff in the drawings prepared in
the course of manufacture of the toys by an industrial process was in the
design of the toys and which ceased as soon as the toys as per the said
design were manufactured more than 50 times by an industrial process. As
far as the Common Law Rights asserted by the plaintiff are concerned, there
at the moment is nothing to show that there were no toys of the design in
which the plaintiff claims the copyright or that the plaintiff is the
author/owner thereof. I am also circumspect though bound by the judgment
of the full bench whether, inspite of the law having granted protection for a
limited time, any protection under the Common Law can be afforded for
longer, nullifying the statute.
32. Recently a Division Bench of this Court in Midas Hygiene Industries
Pvt. Ltd. Vs. Sudhir Bhatia (2015) 225 DLT 178 concerned with a
challenge to the order of the Copyright Board expunging certain
registrations of copyright in artistic work inter alia on the ground that the
same was capable of design registration and having not been so registered
resulted in cessation of copyright, though in the facts of that case set aside
the order of the Copyright Board but otherwise inter alia held (i) that
copyright protection is to the original expression of an idea; however the
CS(OS) No.2355/2015 Page 26 of 29
right to exclude others from using the idea is restricted to the specific form,
to the collocation devised; (ii) that on the other hand trademarks protect the
distinctiveness of a mark, a logo, a symbol and its association with product
or service and are badges of origin which act as markers for the consumer to
identify the source of the goods or services; (iii) in distinction thereto the
copyright and trademark, design rights protect novelty of the design
elements (shape, presentation, etc) of an article; (iv) it is significantly based
on the visual appeal of the product or article; (v) the rationale of the
principle that a copyright does not subsist in a registered design is that
someone's choice of design registration is a conscious decision to use a
underlying work for mass production - the design then reaches through the
medium of the product or the article, a wider audience; it has a commercial
element; this is possible in the cases of designs of products and articles
which are sold widely or for a market; (vi) however that is not always so in
the case of an artistic work - typically a painting or a drawing or even a
sculpture for instance; (vii) the transformation of a work of art into a design
results in the possibility of its protection as a design; (viii) Section 15(1)
dictates that if this kind of work is registered as a design, there is no
copyright protection; (ix) Section 15(2) on the other hand says that if a work
CS(OS) No.2355/2015 Page 27 of 29
is capable of design registration and is not registered but replicated as a
product or article through a design more than 50 times through mechanical
process, copyright in that work ceases; (x) that a work of art may answer to
the description of subject matter capable of both design and copyright
protection; (xi) however copyright in such a work of art can only subsist if it
has not been registered as a design or while answering to the description of
registrable design it has not been registered as such and not been applied to
article which has been reproduced more than 50 times by an industrial
process by the owner, licencee or any other person; (xii) the copyright in the
work can continue to survive independent of the work's mere fitness for
design protection.
33. My reasoning recorded above is in consonance with the judgment
supra of Division Bench.
34. A Single Bench of this court also recently in Ritika Private Limited
Vs. Biba Apparels Private Ltd. MANU/DE/0784/2016 finding that the
plaintiff was creating dresses or creating articles by industrial means and
process by application of the design or drawing or sketch and had not
CS(OS) No.2355/2015 Page 28 of 29
obtained registration under the Designs Act, summarily dismissed the suit as
barred by Section 15(2) of the Copyright Act.
35. The application of the plaintiff for interim relief is thus dismissed and
the applications of the defendants for vacation of the ex parte order dated 7th
August, 2015 are allowed and the order dated 7th August, 2015 is vacated.
IA No.18727/2015 of the defendants for return of the goods is also allowed.
The goods seized by the Court Commissioner/s be forthwith released to the
defendant Playwell Impex Private Limited.
RAJIV SAHAI ENDLAW, J.
JULY 15, 2016 ‗pp' CS(OS) No.2355/2015 Page 29 of 29