Calcutta High Court
The Raring Corporation And Anr vs Neogie Engineering Works Pvt Ltd on 20 June, 2023
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
IN THE HIGH COURT AT CALCUTTA
EXTRA ORDINARY ORIGINAL CIVIL JURISDICTION
COMMERCIAL DIVISION
ORIGINAL SIDE
BEFORE:
The Hon'ble Justice Ravi Krishan Kapur
IA NO: GA/1/2023
EOS/4/2022
THE RARING CORPORATION AND ANR
Vs.
NEOGIE ENGINEERING WORKS PVT LTD
For the Petitioners : Mr. Debnath Ghosh, Advocate
Mr. Paritosh Sinha, Advocate
Mr. K.K. Pandey, Advocate
Mr. S. Mitul Dasgupta, Advocate
Mr. Manosij Mukherjee, Advocate
For the Respondent : Mr. Shouriyo Mukherjee, Advocate
Mr. Shourjit Dasgupta, Advocate
Mr. Vishwarup Acharyya, Advocate
Reserved on : 12.06.2023
Judgment on : 20.06.2023
Ravi Krishan Kapur, J.:
1. In a suit for infringement, the petitioners seek interim protection in respect of the copyright in a registered design "Sonic Nozzle".
2. Briefly, the petitioners are well known manufacturers and suppliers of Dust Collection and Suppression Systems of different varieties. The petitioner no.2 had entered into a collaboration with the petitioner no.1 to market and sell the petitioner no.1's Agglomerative Dust Suppression (ADS) systems in India.
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3. In or about early 2016, the petitioner no.1 after continuous efforts in the development of new and enhanced nozzles designed a new "Sonic Nozzle" which forms an essential component of ADS system for its fog based dust suppression system having a distinctive shape and configuration. In order to protect their distinctive design, the petitioner no.1 applied for registration of its article under the provision of the Designs Act, 2000 (the Act). Such application was filed on January 6, 2016 and registration was granted to the petitioner no.1 on January 19, 2017. The registration granted in favour of the petitioner records that "the novelty resides in the shape and configuration of the "Sonic Nozzle" as illustrated".
4. In or about May, 2019 the petitioners came to learn that the respondent has started manufacturing a "Sonic Nozzle" identical to the Sonic Nozzle registered in favour of the petitioner no.1. A Search Information Report issued by the Assistant Controller of the Patents and Designs also confirms that the design of the article of the respondent is similar to the registered design of the petitioner no.1.
5. It is contended on behalf of the petitioners that the registered design in favour of the petitioner no.1 has been copied in all aspects by the respondent and is identical to the registered design of the petitioner no.1.
6. On behalf of the respondent, it is contended that the registered design in favour of the petitioner is functional and does not have any eye appeal. It is further contended that the alleged design of the petitioner no.1 is purely a mechanical device which is dictated solely by functionality. There is no aesthetic element involved in the registered 3 design. The Act specifically excludes designs which are purely mechanical devices. It is also contended that the registered design is a published prior design. In support of their contentions, the respondent relies on the decisions in Tecalemit Ld. vs. Ewarts, Ld. (1927) 44 RPC 503, Amp Incorporated vs. Utilux Proprietary Limited (1972) RPC 103, Stenor Ltd. vs. Whitesides (1946) 63 RPC 81, Smithkline Beecham vs. Hindustan Lever Limited (2000) 52 DRJ 55 and APL Apollo Tubes vs Surya Roshni Limited (2017) 72 PTC 229.
7. Upon the filing of the suit, the petitioner has obtained an interim order of restraint dated 4 September, 2019. The matter was heard after the filing of the affidavits.
8. A comparison of the impugned article with the registered design of the petitioner no.1 shows a striking resemblance. On a visual inspection, prima facie, the respondent has copied all the essential features of the petitioner's article. The broad features of shape, configuration, pattern etc., are substantially identical and bear a striking similarity to the registered design of the petitioner no.1. [Castrol India Ltd. vs. Tide Water Oil Co.(I) Ltd. (1994) SCC OnLine Cal 303 at paras 38 & 39 and Relaxo Footwares Limited vs. Aqualite Industries Pvt. Ltd. (2021) SCC OnLine Del 4651 at paras 27 & 39]
9. On the aspect of the registered design being purely functional, other than bare allegations, the respondent has failed to adduce any documentary evidence to substantiate such objection. There is no material to demonstrate that the impugned design is purely functional in nature. The novelty claimed is in the shape and configuration of the "Sonic Nozzle". Ordinarily, in such cases, the question of functionality 4 can be resolved by ascertaining whether the subject article could be made to function by use of any other shape as well. Thus, it is insufficient to contend that the form has some relevance to the function. In fact, it would be evident from the quotation dated 2 December, 2010 relied on by the respondent and the diagrams and designs annexed to their pleadings that the registered design is not the only mode or manner of design which is possible considering the functional requirement of the article. On the contrary, the particular function of the article can also be achieved through different forms. Accordingly, it is unacceptable that the registered design is the only design which could have been devised. The respondent has been unable to rely on any evidence even at this prima facie stage to demonstrate that the registered design is purely functional. In such circumstances, the defence that the design of the petitioner no.1 is purely functional cannot be accepted. [Whirlpool of India Ltd. vs. Videocon Industries Ltd. 2014 60 PTC 155 at Para 46]
10. In Tecalemit Ld. Vs, Ewarts, Ld. (1927) 44 RPC 503, it was found that in the peculiar facts and upon consideration of evidence there was no other manner in which the article could have been designed. In fact, the Court held that it was impossible for any other manufacturer to manufacture the article in any other manner. In the absence of any cogent evidence, the contention that the registered design is purely functional is unsubstantiated and bereft of particulars. All the other decisions cited by the respondent are distinguishable and inapposite to the facts of this case.
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11. On the aspect of prior publication, none of the documents annexed to the Written Objection evidence prior publication of the registered design. Out of the ten invoices relied on by the respondent six of the invoices have been filed subsequent to the date of the registered design. The remaining invoices as per the respondent's own website pertain to different articles when compared to the registered design of the petitioner no.1. The photographs disclosed by the respondent do not bear any date. The purported order relied on by the respondent does not contain any picture of the nozzles. Hence, there is nothing to suggest that there has been any prior publication.
12. In such circumstances, the petitioners have been able to establish a strong prima facie case on merits. The balance of convenience and irreparable injury is also in favour of orders being passed as prayed for herein.
13. In view of the aforesaid, the ad interim order dated 4 September 2019 stands confirmed. There shall be an order in terms of the prayer (a) of the application.
14. With the aforesaid directions, GA 1 of 2023 stands disposed of.
(Ravi Krishan Kapur, J.)