Delhi High Court
Rajesh Kalra vs Safeops. Surgical Care & Anr on 28 May, 2018
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 28th May, 2018
+ CS(COMM) 55/2018 & IAs No.1193/2018 (u/O XXXIX R-1&2
CPC) & 1194/2018 (u/O XXVI R-9 CPC)
RAJESH KALRA ..... Plaintiff
Through: Mr. Sanjeev Singh and Mr. D.K.
Yadav, Advs.
Versus
SAFEOPS. SURGICAL CARE & ANR ..... Defendants
Through: Mr. Ankit Jain, Amicus Curie/Adv.
with Mr. Divij Soni, Adv.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. The plaintiff, as per the amended plaint dated 27th January, 2018, has
instituted this suit for permanent injunction restraining infringement of
registered design and copyright inhering in its „Pre-Cut Eye Drape‟ and
passing off and of ancillary reliefs of rendition of accounts, damages etc.,
pleading:
(i) that the plaintiff is carrying on business of manufacturing,
marketing, distribution and sale of medical and surgical, dental,
veterinary apparatus and instruments and artificial limbs and eyes in
the name and style of M/s Surgitech Innovation;
(ii) that the plaintiff, in its effort to cater to emerging needs and/or
high expectations of Ophthalmologists and patients, designed a
unique shape and configuration of „Pre-Cut Eye Drape‟ with novel
technology, unique shape, size and configuration; the plaintiff faced
CS(COMM) 55/2018 Page 1 of 17
great difficulties in adjusting a pre-cut aperture on the polyurethane
film with the sterile ophthalmic drape and adjusting drainage bag and
lid holder and it is only after repeated efforts of the plaintiff that the
product was successfully invented and designed;
(iii) that the shape, size and configuration of the design of the „Pre-
Cut Eye Drape‟ are novel, which makes the design of the aforesaid
Eye Drape novel;
(iv) that the plaintiff applied for and the design in the shape, size
and configuration of „Pre-Cut Eye Drape‟ is registered under Design
Registration No.291917 dated 22nd March, 2017 in class 24-04 and
under Design Registration No.291915 dated 22nd March, 2017 in
class 24-01;
(v) that the said design of „Pre-Cut Eye Drape‟ bears unique and
novel shape, size and configuration and has greatly appealed to the
eyes of public and there is always a rush for the said product bearing
the said registered design;
(vi) that „Pre-Cut Eye Drape‟, owing to its quality, has successfully
established its identity in the industry and corporate sector engaged
in the research and development combined with the brand promotion
activities and advertisements; the said registered design of the
plaintiff has become distinctive, eye catching and associated with the
plaintiff and plaintiff‟s product;
(vii) that the defendant No.1 SafeOps. Surgical Care, Surat, Gujarat
is also engaged in trade and business of manufacturing and sale of
medical, surgical, dental, veterinary apparatus and instruments and is
CS(COMM) 55/2018 Page 2 of 17
also manufacturing and marketing Eye Drapes bearing the impugned
design;
(viii) that the defendant No.2 Parth Brahmbhatt trading as Nine
Vision at Pune is acting as trader of defendant No.1 and marketing
the products manufactured by the defendant No.1;
(ix) that the defendants are commercially and in the course of trade
using the shape, size and configuration of „Pre-Cut Eye Drape‟ which
is a copy of the plaintiff‟s registered design; the defendants have
copied in entirety the said registered design of the plaintiff and are
thus committing piracy of the registered design of the plaintiff;
(x) that the defendants have also copied the entire scheme and
business model of the plaintiff and illegally using the same shape and
configuration of Pre-Cut Eye Drape with unique pattern and
adjustment of pre-cut polyurethane film, drainage bag and lid holder;
(xi) that the plaintiff, in July, 2017, on learning of the infringement
by the defendants, got served a cease and desist notice dated 27 th
July, 2017 on the defendants; the defendant No.1 vide its reply dated
11th August, 2017 denied any infringement and the defendant No.2
did not reply to the notice;
(xii) that though the plaintiff is based at Karnal, Haryana but this
Court has territorial jurisdiction to entertain the suit as the defendants
are soliciting clients/customers of the plaintiff at Delhi and the
defendant No.1 is selling its goods to defendant No.2 at Delhi.
CS(COMM) 55/2018 Page 3 of 17
2. The suit came up before this Court for admission on 29 th January
2018, when the following order was passed:
"CS(COMM) 55/2018, IA No.1193/2018 (under Order XXXIX
Rules 1&2 CPC) & IA No.1194/2018 (under Order XXVI
Rule 9 CPC)
3. The suit is listed for admission.
4. None appears for defendants.
5. The order dated 25th January, 2018 was passed when the
lawyers were abstaining from work and the presence of proxy
counsel for the defendant has been wrongly recorded by the
Court Master.
6. The plaintiff has instituted this suit to restrain
infringement of design "Pre-Cut Eye Drape" and for ancillary
reliefs.
7. From the Registration Certificate of the design filed by
the plaintiff, the product could not be understood. The plaintiff
otherwise has not filed the product to which design relates.
8. The counsel for the plaintiff in the Court has handed over
the product and after understanding from the counsel for the
plaintiff, it transpires that the product is but a sheet used during
eye surgery to cover the face of the patient. On enquiry as to
what is the novelty therein, the counsel for the plaintiff states
that the sheet of the plaintiff comes with a pre-cut aperture from
where the surgeon can operate and further comes with an
attached pouch in which the fluids draining out from the eye
during the eye surgery can be collected. On enquiry, as to what
is otherwise being used during eye surgeries, the counsel for the
plaintiff states that the surgeon covers the face of the patient
with any sheet available and cuts an aperture therein and keeps
a beaker or a pouch to collect the fluids flowing out of the eye
during the eye surgery.
9. I have asked the counsel for the plaintiff to show the
other products available in the market.
CS(COMM) 55/2018 Page 4 of 17
10. The counsel for the plaintiff seeks adjournment. He also
states that an application has also been filed for amendment of
the plaint but which has not been listed yet.
11. I may record that the product of the plaintiff handed over
in the Court though has a pre-cut „square‟ in the centre thereof
but covered with plastic and it appears that the surgeon, instead
of cutting the sheet of any other material, in the sheet of the
plaintiff will have to cut the plastic to approach the eye.
12. I have also asked the counsel for the plaintiff as to how
the aforesaid qualifies as a „design‟ under the Designs Act,
2000, for a suit to be entertained.
13. The definition of „design‟ in Section 2(d) of the Designs
Act means 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.
14. There is no explanation in the plaint as to how the
product in question qualifies as two dimensional or three
dimensional, to fall in the definition of „design‟.
15. A perusal of the Registration Certificate also shows
disclaimers with respect to inter alia any mechanical or other
action or of principle of construction of the product and with
respect to colour or colour combination of the product.
16. The counsel for the plaintiff seeks adjournment to
address on the said aspects also.
17. List on 12th March, 2018."
3. Thereafter, the amended plaint aforesaid was taken on record and on
12th March, 2018, the following order was passed:
"1. This order is in continuation of the earlier order dated
29th January, 2018.
CS(COMM) 55/2018 Page 5 of 17
2. The counsel for the plaintiff seeks adjournment to answer
as to how the product in question qualifies as two-dimensional.
Though he has brought copy of Bharat Glass Tube Ltd. Vs.
Gopal Glass Works Ltd. (2008) 10 SCC 657 and copy of
Chapter 27 (pages no.390 to 398) of Narayanan‟s textbook
„Copyright in Industrial Designs‟ but is unable to point out the
queries raised and recorded in the order dated 29th January,
2018.
3. Last opportunity is given to the counsel for the plaintiff to
study the matter, else the suit would be dismissed.
4. List on 23rd April, 2018."
and on 23rd April, 2018, the following order was passed:
"1. This order is in continuation of the earlier orders dated
29th January, 2018 and 12th March, 2018.
2. The counsel for the plaintiff, though on earlier dates was
disputing that for a thing to qualify as a three dimensional, has
to have all three elements of length, width and height, today
agrees to the same. He further contends that though a piece of
paper would be two dimensional but the subject product is three
dimensional because of the plastic pouch attached to the
aperture and which adds height, even if of micro millimetres, to
the subject product.
3. On enquiry, whether a sheet of paper with the cello tape
affixed thereto would also qualify as three dimensional, though
the counsel initially answered in the negative but now states
that it would so qualify.
4. It is deemed appropriate to appoint an amicus curie to
assist on the question which has arisen.
5. Mr. Ankit Jain, Advocate present in Court has graciously
agreed to assist the Court on the legal issue.
6. The counsel for the plaintiff to supply a complete paper
book to Mr. Ankit Jain, Advocate today itself along with copies
of the orders passed in the suit.
CS(COMM) 55/2018 Page 6 of 17
7. List for hearing on 28th May, 2018."
4. Mr. Ankit Jain, learned Amicus Curie and the counsel for the
plaintiff in response have been heard.
5. Mr. Ankit Jain, Amicus Curie has argued:
(a) That the definition of „design‟ in Section 2(d) of the Designs
Act, 2000 excludes a mere mechanical device and to qualify as a
design it should be appealing to the eye and not appealing to the
function which it performs.
(b) That functional change if any made in an article cannot be
registered as a design.
(c) That the definition of „design‟ under the Designs Act is the
same as that which existed in United Kingdom (UK) earlier.
(d) That an Ophthalmologist will not buy an Eye Drape because of
how it looks but will buy it for its use.
(e) That the word „mechanical‟ as earlier existed in the UK Law
has now been substituted with "functional".
(f) That the House of Lords in AMP Incorporated Vs. Utilux
Proprietary Limited [1972] R.P.C. 103 has inter alia held that the
phrase "which in the finished article appeal to and are judged solely
by the eye" in the definition of „design‟ in Section 19 of the Patents
and Designs Act, 1919 (UK) is to be read as importing some
limitation to the expression "features of shape, configuration, pattern
or ornament" and that not all of such features constitute a design; the
CS(COMM) 55/2018 Page 7 of 17
emphasis is on external appearance, but not every external
appearance of an article constitutes a design; there must be in some
way a special, peculiar, distinctive, significant or striking
appearance--something which catches the eye and in this sense
appeals to the eye.
(g) That the Full Bench of this Court, in Mohan Lal Vs. Sona
Paint and Hardwares AIR 2013 Delhi 143, has held that designs
relate to non-functional features of the article; therefore, by necessary
corollary, a design which has functional attributes cannot be
registered under the Designs Act--this is an essence of Section 2(d)
of the Designs Act; the protection under the Designs Act is granted
only to those designs which have an aesthetic value or otherwise
appeal to the eye.
(h) That the High Court of Calcutta in Castrol India Ltd. Vs. Tide
Water Oil Co. (I) Ltd. 1996 (16) PTC 202 (Cal) held that all novel
designs are not protected; novel designs which are purely functional
cannot found an action for infringement; the object of the Designs
Act is to protect shape but not a functional shape and if shape and
configuration are dictated solely by function, it is not registrable as a
design.
(i) That this Court in Carlsberg Breweries A/s Vs. Som
Distilleries and Breweries Limited 2017 (70) PTC 413 (Del), though
appeal thereagainst is pending, has held that the words "judged solely
by the eye" must be intended to exclude cases where a customer
might choose an article of that shape not because he thought that the
CS(COMM) 55/2018 Page 8 of 17
shape made it more useful to him but because on viewing the
product/article it stands out or strikes as novel; indentations and
grooving on a bottle, in that case, though were found to be novel,
inasmuch as bottles of other manufacturers were not having identical
indentations and grooving but it was held that the indentations and
grooving appeared to serve the purpose of providing a space where
the label could be affixed and providing a frame to the label and were
thus functional.
(j) That though the Full Bench of this Court in Mohan Lal supra
has held that a suit for passing off of a design is also maintainable but
the plaintiff has not sued therefor.
(k) That a perusal of the Certificates of Registration filed by the
plaintiff show registration to be only with respect to shape and
configuration.
(l) That though Rule 11(4) of the Design Rules, 2001 permits an
applicant for registration to also state the purpose for which the
article is used but the Certificate of Registration filed by the plaintiff
does not state any purpose;
(m) That Rule 12 of the aforesaid Rules titled "Statement of
Novelty" permits the applicant for registration to, if required by the
Controller, endorse on the application and each of the
representations, a brief statement of the novelty he claims in his
design but there is no such statement also and nothing can be
gathered from the Certificates of Registration, as to what is novel.
CS(COMM) 55/2018 Page 9 of 17
(n) That the House of Lords, in Phillips Vs. Harbro Rupper
Company 1920 (37) R.P.C. 233, in the context of the Patents,
Designs and Trade Marks Act, 1883, noted that though the statute
requires that the application should contain a statement of the nature
of the design, and the rules made under that statute permit the
applicant to lodge a statement of the novelty claimed for the design,
but the applicant therein had not availed himself of the permission
and held that the Court themselves had to decide the question of
originality or novelty of the design and infringement only on the
basis of its own appreciation of the article by the test of eye; hope
was expressed that the Controller of Designs would freely avail
himself of this power as under Rule 12 supra of the Designs Rules
and/or in any case where doubt is likely to arise, as otherwise, the
only safe course for a Court to take will be to insist on absolute
identity between the infringing and the registered design.
(o) That this Court also, in Dabur India Limited Vs. Rajesh
Kumar 2008 (37) PTC 227 (Del), held that the plaintiff had not got
any peculiar feature of the bottle registered as a design and it got the
whole bottle registered as a design and that a plastic bottle is not a
new thing.
(p) That the plaintiff in the present case did not claim any novelty
in the aperture in the Eye Drape.
6. On query, whether the design claimed is two dimensional, the
learned Amicus Curie stated that since the Eye Drape as well as an aperture
therein has length and width, it would qualify as two dimensional.
CS(COMM) 55/2018 Page 10 of 17
7. The counsel for the plaintiff, in response has handed over in Court
Certificates, purportedly issued by various hospitals, to the effect that they
were earlier using regular drapes, without cut and found the „Pre-Cut Eye
Drape‟ of the plaintiff "very good and useful". The counsel for the plaintiff
also referred to Bharat Glass Tube Limited Vs. Gopal Glass Works
Limited (2008) 10 SCC 657 citing with approval Interlego A.G. Vs. Tyco
Industries Inc. [1988] 16 R.P.C. 343 and Interlego A.g. Vs. Alex Folley
(Vic) Pty. Ltd. [1987] F.S.R. 283 holding that a designing designs toys is
expected to have the question of appeal of the toy to the eye, even in the
case of a functional toy--a design has to be such that the article to which it
is applied makes an immediate visual appeal to the person buying the same.
The counsel thus contended that merely because the cut/aperture in the Eye
Drape is functional, does not make it any less appealing to the eye.
8. On a consideration of the pleadings, documents and contentions, I
remain of the opinion that the design claimed by the plaintiff does not
qualify as a „design‟, as defined in Section 2(d) of the Designs Act and
which is a ground provided in Section 19 of the Act for seeking
cancellation of registration of a design and which is also a defence available
under Section 22(3) of the Act to an action for infringement. I am further
of the view that if the Court, at the outset, itself finds so, the Court is not
compelled to admit the suit and wait for the defendants to take such a
defence under Section 22(3) of the Act. A plaintiff approaching the Court
for infringement of a design, before having the suit admitted, has to satisfy
the Court that the design is new or original or is registrable under the Act
and which the plaintiff in the present case has failed to satisfy. It cannot be
lost sight of that both the defendants impleaded, are situated outside Delhi
CS(COMM) 55/2018 Page 11 of 17
and issuance of summons/notice puts them to inconvenience and expense.
Appointment of amicus was considered necessary merely to assist the Court
and not to replace the defendants.
9. The Registration Certificate No.291915 in favour of the plaintiff
comprises of two sheets showing the front view and the back view of the
design as under:
CS(COMM) 55/2018 Page 12 of 17
and with both sheets having the following endorsement:
"ENDORSEMENT OF NOVELTY
The novelty resides in the shape & configuration of
SURGICAL EYE DRAPES as illustrated.
ENDORSEMENT OF DISCLAIMER
1. No claim is made by virtue of this registration in respect
of any mechanical or other action of mechanism
whatever or in respect of any mode or principle of
construction of the article.
2. No claim is made by virtue of its registration in respect of
colour or colour combination appearing in the design.
3. No claim is made by virtue of registration to any right to
the exclusive use of words, trademarks/name, letters and
numerals appearing in the design.
4. No claim is made with regard to extraneous matter
appearing in the design."
10. The Registration Certificate No.291917 also comprises of two sheets
showing the front view and back view as under:
CS(COMM) 55/2018 Page 13 of 17
and both sheets with same endorsement as aforesaid minus the word
„SURGICAL‟
11. The actual product, which the counsel for the plaintiff during the
hearing handed over, comprises of a blue colour sheet of non-woven sms
material admeasuring 80 cm X 70 cm and with a rectangular slit
admeasuring 7 cm X 9 cm thereon with a transparent plastic pouch
admeasuring 19 cm X 16.5 cm pasted thereon with a cello tape.
12. The plaintiff, not only in the application for registration did not state,
though could have, the novelty claimed, in the plaint also has not pleaded
so except for stating as already recorded in one of the orders reproduced
above, that "the sheet of the plaintiff comes with a pre-cut aperture from
where the surgeon can operate and further comes with an attached pouch in
which the fluids draining out from the eye during the eye surgery can be
collected. On enquiry, as to what is otherwise being used during eye
surgeries, the counsel for the plaintiff states that the surgeon covers the face
of the patient with any sheet available and cuts an aperture therein and
CS(COMM) 55/2018 Page 14 of 17
keeps a beaker or a pouch to collect the fluids flowing out of the eye during
the eye surgery." However, the cut or aperture with which the Eye Drape of
the plaintiff comes has no element of a design within the meaning of
Section 2(d) of the Act. It is not as if the cut or aperture has any peculiar
eye catching boundaries. The cut/aperture is in a straight-line.
13. The emphasis in the arguments of the counsel for the plaintiff also,
was on the utility to the Ophthalmologist of the Eye Drape with a pre-cut,
again meaning that the feature of the product in which the plaintiff claims
novelty is a functional feature and which will be bought by the consumers
thereof owing to the functional utility thereof instead of owing to the beauty
as aesthetic or eye catching nature. The plaintiff, in the plaint also, in
para 3 has described himself as engaged in inventing new products "which
can meet out the emerging need of the Ophthalmologists". In fact, the
plaintiff in the plaint has pleaded having applied for registration also as a
patent.
14. Thus, as per the admission of the plaintiff himself, there is no
novelty. The plaintiff admits that the pre-cut or aperture provided by him in
his Eye Drape, if were not to be there, would be made by the
Ophthalmologist or his paramedic at the time of surgery. Thus, all that the
plaintiff has done is that instead of the cut/aperture being made in the
course of the surgery, the Eye Drape is coming with an already existing
cut/aperture. The same is an admission of there being nothing novel in the
cut or aperture.
15. In my opinion, therefore, there is nothing non-obvious, novel or
unique in terms of shape, size, configuration, pattern and composition of
CS(COMM) 55/2018 Page 15 of 17
lines in the Eye Drape of the plaintiff, save for the functional utility of not
requiring the Ophthalmologist or the paramedic to, before using the same,
make a cut or an aperture therein for accessing the eye-socket to be
operated upon. A functional shape and configuration which is dictated
solely by functionality is not registrable under the Designs Act as a design.
Once, the overall appearance is dictated by function, it cannot be registered
as a design and the registration, if any, is invalid. This is not a case where
some features of a design may have a functional purpose. Here, as
aforesaid, the design of „pre-cut‟ is only functional and has no ornamental
value.
16. The suit thus fails and is dismissed.
17. No costs.
18. Decree sheet be drawn up.
The Court expresses its gratitude to Mr. Ankit Jain, Amicus
Curie/Advocate for the useful assistance rendered.
RAJIV SAHAI ENDLAW, J.
MAY 28, 2018 „bs‟ (corrected & released on 13th June, 2018) CS(COMM) 55/2018 Page 16 of 17