Delhi High Court - Orders
Purosis International Llp vs V3 Poly Plast & Ors on 23 January, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~43
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 741/2023, I.A. 20554/2023
PUROSIS INTERNATIONAL LLP ..... Plaintiff
Through: Ms. Rajeshwari H. and Ms. Swapnil
Gaur, Advocates.
versus
V3 POLY PLAST & ORS. ..... Defendants
Through: Mr. Neeraj Grover, Ms. Meenakshi
Ogra, Mr. Tarun Khurana, Mr. Samrat
Skang, Ms. Chhavi Pandey, Mr. Rishi
Vohra and Mr. Devanshu Bedi,
Advocates for D-1.
Ms. Elisha Sinha, Mr. Saurabh Kumar
and Ms. Mokshita Gautam Advocates
for D-3 to 7, 9, 10.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 23.01.2024
I.A. 20553/2023 (seeking interim injunction)
BRIEF BACKGROUND
1. The Plaintiff and the Defendants are both engaged in the business of manufacturing and trading water purification products. This suit has been initiated by the Plaintiff, who alleges that the Defendants have infringed upon their registered design, numbered 355571-001. To substantiate this claim, the Plaintiff has drawn specific comparisons between their own CS(COMM) 741/2023 Page 1 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/01/2024 at 20:48:39 product and that of the Defendants:
Registered Design of Plaintiff's product as Defendant No. 1's product the Plaintiffs per registered design Registered Design of the Plaintiff's product as per Defendant No. 3's Plaintiffs registered design product Registered Design of the Plaintiff's product as per Defendant No. 5's Plaintiffs registered design product CS(COMM) 741/2023 Page 2 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/01/2024 at 20:48:39 Registered Design of Plaintiff's product as Defendant No. 9's the Plaintiffs per registered design product
2. On 17th October 2023, upon finding a prima facie case in favour of the Plaintiff, the Court issued summons and restrained the Defendants from manufacturing water purifier cabinets that allegedly infringed upon the Plaintiff‟s design. This decision was based on a comparative analysis of the Plaintiff‟s registered design and the impugned products. As for the Defendants‟ existing stock of the alleged infringing products, the Court appointed a Local Commissioner to prepare an inventory and allowed the Defendants to sell these items in their regular course of business. This was conditional upon the Defendants filing an affidavit to declare the monetary value of the water purifier cabinets in question. The order also explicitly stated that should Defendant No. 1 opt to use a new/modified design, they were obligated to provide the Plaintiff with an advance copy of the proposed design. In this context, Defendant No. 1 has proposed alternative designs, which have been shared with the Plaintiff‟s counsel. However, these proposed designs have met with objections from the Plaintiff and there is possibility of an amicable resolution on this issue. Defendant No. 1 thus seeks the Court‟s intervention for a specific clarification regarding the CS(COMM) 741/2023 Page 3 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/01/2024 at 20:48:39 injunction order, particularly in relation to the new design they intend to adopt, which, according to them, does not infringe upon the Plaintiff‟s registered design.
3. Before addressing the submissions of Defendant No. 1, it is necessary to briefly recapitulate the relevant earlier proceedings that involved the exchange of proposed designs by the Defendant. In a hearing held on 19 th October 2023, counsel for Defendant No. 1 presented alternate design proposals, which were shared with both the Court and the Plaintiff. In response, the Court instructed the Defendants to create a prototype based on these designs, permitting the Plaintiff an opportunity to inspect it. Subsequently, the prototype was presented in Court on 19 th December 2023. However, Plaintiff‟s counsel raised objections, arguing that the new design still constituted a fraudulent imitation of the Plaintiff‟s product, particularly due to the usage of a blue colour scheme similar to that of the Plaintiff. In light of this, the Court observed: "In the opinion of this Court, the present matter relates to design infringement, and as per the settled legal position, the Court has to examine the variation between the Plaintiff's registered design and the new proto type produced before the Court by the Defendant No. 1", and directed the matter to be adjourned for arguments on whether the prototype produced by the Defendant No. 1 would constitute a fraudulent imitation of the Plaintiff‟s product.
4. In this background, during the hearing on 5th January 2024, Ms. Rajeshwari H., representing the Plaintiff, proposed that Defendant No. 1 should implement additional changes or modifications to the prototype to completely eliminate any resemblance or imitation of the Plaintiff‟s product. These suggestions were verbally communicated to Mr. Neeraj Grover, CS(COMM) 741/2023 Page 4 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/01/2024 at 20:48:40 counsel for Defendant No. 1, who expressed the need to consult with his client for further instructions. Following this interaction and in compliance with the Court's direction, Defendant No. 1 subsequently proposed additional modifications to their design. These revised proposals were shared with the Plaintiff‟s counsel for review. However, despite these further modifications, the Plaintiff‟s counsel remained unsatisfied, deeming the new modifications as unacceptable still and potentially infringing upon the Plaintiff‟s design rights.
CONTENTIONS OF PARTIES
5. In light of the developments and discussions outlined above, the resolution of this design infringement issue in relation to proposed designs of Defendant No. 1 now falls within the purview of this Court. To aid in this process, Ms. Rajeshwari, counsel for Plaintiff, has presented a visual comparison of the prototypes and the design proposals exchanged between the parties. These comparisons are intended to illustrate the similarities and differences between the designs in question, providing a tangible basis for the Court‟s assessment. The details of this visual comparison, which are crucial to the Court‟s determination, are extracted and presented below:
CS(COMM) 741/2023 Page 5 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/01/2024 at 20:48:40 EXHIBIT A
6. Ms. Rajeshwari emphasizes that given the Court‟s initial finding of a prima facie case in favour of the Plaintiff and the consequent injunction restraining the Defendant from using any design that imitates the Plaintiff‟s product, it is imperative for the Defendant to adopt a design that is not only different but also substantially distinct from that of the Plaintiff. In this context, Mr. Rajeshwari underscores the necessity for a clear departure from any design that might be perceived as „precariously close‟ to that of the Plaintiff. To bolster this argument, Mr. Rajeshwari draws upon the precedent established by this Court in TTK Prestige Ltd vs KCM Appliances Private Limited1 and Kent Ro Systems Pvt Ltd & Anr vs Pushpendra Yadav & Anr 2 wherein the Court held as under:
TTK Prestige:
"42.4...the shape and configuration of the lid, which is the feature which mainly imparts novelty to the suit design, are even more inconsequential. ...
42.5...the defendant has clearly borrowed the idea of the central depressed portion of the lid for collection and evaporation of froth, thereby resulting in spillage control, from the idea devised by the plaintiff. No other source, from which the said idea was adopted by the defendant, has been brought to my notice. Prima facie, 1 2023:DHC:2494 2 2023:DHC:2118 CS(COMM) 741/2023 Page 6 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/01/2024 at 20:48:40 therefore, clear case of piracy exists."
Kent RO Systems:
"24.5 .....If those features of the plaintiffs design, which could be regarded as attributing novelty to it, treating it as an idea of the plaintiff, are replicated, substantially, in the design of the defendant's product, the Court would have to hold that piracy has taken place. The fact that the defendant's product might also have minor variations, in design, vis-À-vis the plaintiffs, would not alter the legal position.
24.6. Viewed thus, and being in balance the similarities, vis-A - vis the differences, between the suit design and the design of the defendant's product, I am convinced, prima facie, that the latter infringes the former..... If one is to regard the shape and configuration of the suit design as novel and original, the similarities in shape and configuration, between the suit design and the impugned design, art too many for the Court to ignore. The primary features which appeal in the suit design are also present in the impugned design of the defendant.
24.8. Prima facie, therefore, the impugned design of the defendant's water purifier infringes the suit design of the plaintiffs, so as to amount to piracy within the meaning of Section 22 of the Designs Act."
7. Considering the fact that the Defendants‟ products were being promoted as a mere variant of the Plaintiff‟s products, as evidenced by screenshots attached by the Plaintiff of instant messaging chats with Defendant No. 7, Ms. Rajeshwari further argues there must be absolutely no element of deceptive similarity between the products even in the modified design proposed to be adopted by the Defendant No. 1.
8. Mr. Grover, on the other hand, has handed over the latest iteration of the product design that they now wish to adopt. The same is reproduced below:
CS(COMM) 741/2023 Page 7 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/01/2024 at 20:48:40 EXHIBIT B
9. In relation to the above extracts, Mr. Grover states that the modified design in Exhibit B meets the thresholds suggested by Ms. Rajeshwari regarding the levels of dissimilarity necessary for the two products to be non-comparable.
ANALYSIS AND FINDINGS
10. The Court has thoroughly reviewed the contentions presented, particularly those advanced by Ms. Rajeshwari. While the legal principles she cites are well-established, it is also true that design infringement cases must be assessed based on their individual facts and circumstances. In the present case, the Court initially found a prima facie case in favour of the Plaintiff with regard to Defendant No. 1‟s impugned products, leading to the injunction order in respect of those designs. Given that the scope of the injunction extends to any designs deceptively similar to the injuncted ones, the Court‟s task now is to meticulously compare the Plaintiff‟s registered design with the new design proposed by Defendant No. 1. Upon careful examination and comparison of both designs, the Court notes significant CS(COMM) 741/2023 Page 8 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/01/2024 at 20:48:40 distinctions. The most notable feature of the Plaintiff‟s design is the clearly visible water storage unit that prominently protrudes on the left side of the water purifier unit. This element is not mirrored in Defendant No. 1‟s proposed design, where the water unit is textured and protrudes only partially, with part of the water container integrated into the main body of the unit. Additionally, Defendant No. 1‟s design includes a distinct control panel located on the bottom right, presented as a black strip, which further differentiates it from the Plaintiff‟s design. In light of these observations, the Court concludes that while there are similarities in the overall function and purpose of the designs, the specific elements and aesthetics present a clear distinction. Upon weighing the similarities and differences, it becomes evident to the Court that the designs of the Plaintiff and Defendant No. 1 possess distinct characteristics that set them apart sufficiently. As such, Defendant No. 1‟s proposed design does not appear to infringe upon the Plaintiff's registered design, conforming to the requisite legal standards of originality and distinctiveness
11. It must also be highlighted that Exhibit A, presented by Ms. Rajeshwari, contains a proposal from the Plaintiff delineating a design, as shown at position 4, that they deem acceptable for the Defendant to adopt. This proposed design, upon examination, bears a resemblance to the design suggested by the Defendant in Exhibit B. While the two proposals are in general concordance, it is observed that Defendant No. 1 has introduced certain additional features into their design. Consequently, the designs exhibit a degree of similarity. Therefore, if the Plaintiff finds their proposed design (position 4) acceptable, it becomes challenging to comprehend their objection to the variations introduced by Defendant No. 1‟s proposal. In CS(COMM) 741/2023 Page 9 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/01/2024 at 20:48:40 fact, the additional elements in Defendant No. 1‟s proposed design further contribute to its uniqueness, establishing a clear distinction from the Plaintiff‟s registered design. This consideration becomes critical in assessing the validity of the Plaintiff‟s objections and the permissibility of Defendant No. 1‟s design under the current legal framework.
12. In light of the foregoing analysis and comparisons, this Court concludes that the design proposed by Defendant No. 1, as depicted in Exhibit B, falls outside the purview of the injunction order dated 17 th October 2023. Consequently, it is hereby ordered that Defendant No. 1 may proceed with the implementation of this proposed design for their products. Defendant No. 1 shall strictly adhere to the specifics of the proposed design as detailed in Exhibit B. Any deviation from this approved design may potentially contravene the Court‟s order and the underlying intent of the injunction. Additionally, Defendant No. 1 is expressly prohibited from marketing or promoting their product as a variant or derivative of the Plaintiff‟s product. They must adhere to this condition to ensure that the market identity and intellectual property rights of the Plaintiff‟s product are preserved and that consumer confusion is avoided.
13. Mr. Grover, without prejudice to his rights and contentions and without admitting that their design impugned in the suit, infringes the Plaintiff‟s design, nonetheless, agrees that the injunction order dated 17th October, 2024 can be confirmed. It is ordered accordingly.
14. Defendant No. 1 is directed to file an affidavit disclosing the current status of the stock and the timelines within which such stock will be disposed of. Let the affidavit be filed within two weeks from today. Further directions in this regard shall be issued once the affidavit is filed.
CS(COMM) 741/2023 Page 10 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/01/2024 at 20:48:40
15. The application is disposed of.
CS(COMM) 741/2023
16. List before the Joint Registrar for completion of pleadings on 04th March, 2024.
17. List before the Court on 28th March, 2024.
SANJEEV NARULA, J JANUARY 23, 2024 nk CS(COMM) 741/2023 Page 11 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 29/01/2024 at 20:48:40