Delhi High Court
Dart Industries Inc & Anr vs Vijay Kumar Bansal & Ors on 17 July, 2019
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 17th July, 2019.
+ CS(COMM) 837/2016
DART INDUSTRIES INC & ANR ..... Plaintiffs
Through: Mr. Hemant Singh, Ms. Mamta Jha,
Ms. Shruttima Ehensa and Ms.
Roshanara Rauf, Advs.
Versus
VIJAY KUMAR BANSAL & ORS ..... Defendants
Through: Mr. Sushant Singh and Mr. Kunal
Khanna, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
IA No.15881/2011 (of plaintiffs u/O XXXIX R-1&2 CPC)
1. The two plaintiffs, Dart Industries Inc. and Tupperware India Pvt.
Ltd. instituted this suit against the four defendants (i) Vijay Kumar Bansal,
(ii) Techno Plast, (iii) Techno Plastic Industries and (iv) Bajrang Crockery
Corner, for permanent injunction restraining infringement of design,
passing off and for ancillary reliefs, pleading (a) that the plaintiffs belong to
the Tupperware Brands Corporation; the plaintiff No.1 is the subsidiary of
Tupperware Brands Corporation, United States of America (USA) and the
plaintiff No.2 is a subsidiary of plaintiff No.1; (b) that the plaintiff No.1 is
the owner of intellectual property rights related to Tupperware products; (c)
that the marketing and sale of Tupperware products is carried out by direct
selling method; (d) that one, amongst most successful and reputed
Tupperware products manufactured by the plaintiffs, is a Casserole /
CS(COMM) 837/2016 Page 1 of 27
Serving Bowl having a unique and novel design; its lid in particular has a
distinctive butterfly knob design; the lid as well as the bowl are subject
matter of design registrations in various countries worldwide including
India; though the plaintiffs‟ casserole lid and bowl are independently
registered, both being independent articles manufactured and sold together
as well as separately, the present suit pertains to the infringement of design
registration pertaining to the lid only; (e) that the casserole is used for
storage and serving of cooked food which is kept warm in it; (f) that the
features of novelty of design in Tupperware casserole lid, reside in the
butterfly knob of the lid and combination of overall shape, get up,
configuration as well as surface pattern of the inner and outer lids conjoined
together; (g) that the feature of novelty of design in Tupperware casserole
bowl also resides in its distinctive elliptical shape, downward protruding
peripheral edges, the surface pattern emerging from conjoined use of inner
and outer bowls, capable of also being used separately and which together
impart an overall novel, unique and aesthetic eye appeal thereto; (h) that the
said designs therefore constitute registerable designs in law, under the
Designs Act, 2000; (i) that the said designs were authored for and on behalf
of the plaintiffs and the authors have assigned rights in favour of the
plaintiff No.1; (j) that the casserole lid cover is registered in India as a
design at No.191086 and the casserole bowl is registered as a design at
No.191087; (k) that "the features of novelty and uniqueness which together
and conjointly impart a distinctive get up to the plaintiffs‟ casserole" are
broadly categorized as under:
"(a) a casserole lid with distinctive butterfly design knob
with elliptical matte finish base of dark colour, being
CS(COMM) 837/2016 Page 2 of 27
protrusion of the inner lid fitted underneath and
emerging through elliptical opening in the outer lid
which is of contrasting light colour;"
(b) a set of dual casserole bowls used together, with dark
coloured inner bowl (same as the colour of the inner
lid) and an outer bowl having matte finish of light
colour (same as the colour of the outer lid);
(c) a subdued glossy border depicted upon the outer lid;
(d) the combination of dark coloured inner bowl and light
coloured outer bowl which when used together,
constitutes the rim of the casserole of contrasting
colours, upon which the casserole lid rests and which
together impart a distinctive and attractive appearance
to the casserole as a whole;
The same is depicted pictorially as under:
"
(l) that the casserole of the plaintiffs being distinctive and unique, has
acquired brand equity, brand significance and the status of a source
identifier; (m) that the branding of Tupperware by the plaintiffs upon their
CS(COMM) 837/2016 Page 3 of 27
products is such that the brand name „Tupperware‟ does not appear
prominently or conspicuously on the product and appears embossed in the
same colour as that of the lid underneath the inner cover of the lid and upon
the bottom surface of the bowl; hence the product is mainly identified and
distinguished by consumers by its overall get up which is inherently
distinctive; (n) that the said get up of the plaintiffs‟ casserole constitutes
trade mark; (o) that the defendants are involved in manufacture and sale of
the impugned casserole which is not only an infringement of plaintiffs‟
registered design No.191086 but is also a blatant imitation of the get up and
trade dress of the plaintiffs‟ casserole amounting to passing off; (p) that the
defendants have copied the overall shape, configuration and surface pattern
of plaintiffs‟ casserole lid / serving bowl and have used identical lid design
having a butterfly knob; the defendants have even copied the individual
components as well as the colour scheme of the plaintiffs‟ casserole; and,
(q) that the photographs depicting the defendants‟ casserole are as under:
CS(COMM) 837/2016 Page 4 of 27
Hence, the suit for permanent injunction restraining infringement of
design and passing off and for ancillary reliefs.
2. The suit came up first before this Court on 30 th September, 2011,
when, though summons of the suit and notice of the application for interim
relief were ordered to be issued but no interim relief granted, reasoning that
the defendants had also registered a design of their product and certificate in
which regard had been handed over by the counsel for the defendants
appearing on seeing the matter in the Cause List. No substantial progress
save for completion of pleadings was made in the suit till the
pronouncement of the three Judge Bench decision in Mohan Lal Proprietor
of Mourya Industries Vs. Sona Pain & Hardwares 2013 (55) PTC 61
(Del) holding a composite suit for infringement of design and passing off to
be not maintainable. Accordingly, vide order dated 4 th October, 2016, the
plaintiffs were asked to elect, whether they wanted to pursue this suit as one
of infringement of design or one for passing off. The plaintiffs filed IA
No.12801/2016 for deleting from the plaint all averments relating to
infringement of design and confining the suit for the reliefs claimed on the
ground of passing off only. The said application was allowed on 18 th
October, 2016.
3. The plaintiffs filed FAO(OS)(COMM) No.103/2016 against the order
dated 4th October, 2016 asking the plaintiffs to elect.
4. The defendants filed IA No.13717/2016 for amendment of the written
statement and which application was dismissed vide order dated 11th
November, 2016. Though the defendants also preferred FAO(OS)(COMM)
No.123/2016 against the said order but withdrew the same on 5th July, 2017.
CS(COMM) 837/2016 Page 5 of 27
5. Arguments on this application for interim relief were heard on 5th
January, 2018, 9th January, 2018 and 17th January, 2018 and orders
reserved. The plaintiffs filed IA No.6344/2019 informing that the order
dated 4th October, 2016 asking the plaintiffs to elect, whether they desire to
proceed with the suit on the ground of infringement of design or on the
ground of passing off, was set aside by the Division Bench of this Court in
FAO(OS)(COMM) No.103/2016. The said application came up before this
Court on 2nd May, 2019, when the counsel for the plaintiffs sought
clarification that the suit will proceed on the basis of the plaint as originally
filed and not on the basis of amended plaint filed pursuant to the order dated
4th October, 2016. The counsel for the defendants on 2nd May, 2019
contended that in view of Crocs Inc. USA Vs. Aqualite India Limited 2019
SCC OnLine Del 7409, the suit insofar as for the relief of passing off, to
which the plaint was confined pursuant to the order dated 4 th October, 2016,
did not survive. IA No.6344/2019 was thus allowed and it was ordered that
the suit was to proceed on the basis of the plaint as originally filed and not
on the basis of the amended plaint. Since the arguments on the application
for interim relief earlier heard were on the premise of the ground of passing
off only, this application for interim relief was posted for fresh hearing for
today.
6. I may mention that the defendants, in their joint written statement
dated 14th October, 2011 have pleaded, (i) that the defendants have been
manufacturing and marketing the subject casserole and lid since the year
2009, to the knowledge of the plaintiffs; (ii) that the suit for infringement of
registered design is not maintainable as no suit for infringement of
registered design lies against a registered proprietor of the design; (iii) that
CS(COMM) 837/2016 Page 6 of 27
the plaintiffs‟ registration has been wrongly made--it is not in relation to an
article and has been made under wrong classification; (iv) that the design of
the plaintiffs as well as of the defendants have been registered by the
Registrar of Designs, Calcutta; (v) that the Registrar of Designs, in his
wisdom, found sufficient distinction to sustain both the designs; (vi) that no
case of passing off is made out as there are sufficient distinguishable
features; while the plaintiffs‟ mark is „Tupperware‟, the mark of the
defendants is „Signoraware‟ and the marks are mentioned on the products;
(vii) that there is a huge price variation, of more than double, between the
plaintiffs‟ products and the defendants‟ products; (viii) that no remedy of
passing off is available under the Designs Act, 2000; (ix) that the
defendants are also the registered proprietors of the design in question vide
registration No.221959 dated 26th March, 2009; (x) that the design of the
plaintiffs is neither novel nor original within the meaning of Section 4 of
the Designs Act; (xi) that the design of the plaintiffs is also pre-published
and was available in the market since prior to the year 2002; (xii) that the
said design also lacks novelty; (xiii) that a number of third parties are
manufacturing casseroles of the same design; (xiv) that the said design is
common to the trade; (xv) that while the design of the plaintiffs has a
butterfly outer handle, in the design of the defendants, the outer handle is
oval in shape and inspired by the shape of a leaf; (xvi) that while in the
design of the plaintiffs, the overall shape on the base of the article is
circular, in the design of the defendants, the product base is squarical; (xvii)
that while the plaintiffs‟ product bears the mark „Tupperware‟, the
defendants‟ product bears the mark „Signoraware‟ which is sufficient to
distinguish the two products; and, (xviii) that the plaintiffs are not the
CS(COMM) 837/2016 Page 7 of 27
proprietors of the registered design pertaining to complete article of
casserole and parts of an article are not separately registrable under the
Designs Act.
7. Though the plaintiffs filed replication to the written statement but the
need to refer thereto for the present purpose is not felt.
8. The counsels have been heard.
9. In the earlier round of hearing, it was the argument of the counsel for
the plaintiffs, (A) that the defendants have copied the shape and colour
combination of the product of the plaintiffs; (B) that the Trade Marks Act,
1999 inter alia defines „trade mark‟ in Section 2(1)(zb) thereof, as a mark
capable of being represented graphically and which is capable of
distinguishing the goods or services of one person from those of others and
may include shape of goods, their packaging and combination of colors; (C)
that though shape of the product of the plaintiffs is not registered as a trade
mark but a passing off action lies on account of the defendants copying the
shape and get up of the product of the plaintiffs; (D) that Section 2(1)(m) of
the Trade Marks Act, while inclusively defining „mark‟, also mentions
shape of goods or combination of colours or any combination thereof; (E)
that Section 2(1)(zb) only excludes from the purview of trade mark,
functional shapes and Section 9(3) of the Trade Marks Act provides that a
mark shall not be registered as a trade mark if it consists exclusively of the
shape of goods which results from the nature of the goods themselves or the
shape of the goods which is necessary to obtain a technical result or the
shape which gives substantial value to the goods; (F) that it is not in dispute
that the plaintiffs are the prior adopter of the subject shape; and, (G)
CS(COMM) 837/2016 Page 8 of 27
reliance was placed on (i) Apollo Tyres Ltd. Vs. Pioneer Trading
Corporation 2017 (72) PTC 253 (Del) where interim injunction was
granted with respect to tread marks on a tyre which were held to be the
trade mark; (ii) Ruston and Hornby Ltd. Vs. Zamindara Engineering Co.
AIR 1970 SC 1649 explaining the distinction between an action for
infringement of trade mark and an action for passing off; (iii) Mohan Lal
supra to contend that notwithstanding registration as a design, an action for
passing of as a trade mark lies; (iv) Satyam Infoway Ltd. Vs. Sifynet
Solutions Pvt. Ltd. 2004 (28) PTC 566 (SC) to contend that the question is
"who gets there first?" and that it is not essential for the plaintiff to prove
long user to establish reputation in a passing of action; (v) T.V. Venugopal
Vs. Ushodaya Enterprises Limited (2011) 4 SCC 85, to contend that
honesty and fair play ought to be the basis for policies in the world of trade
and business.
10. The counsel for defendants, in the earlier round of hearing, besides
verbally addressing arguments also handed a written note dated 19 th
January, 2018 of his arguments contending (a) that the shape, configuration
and overall colour scheme of a casserole is an intrinsic part of its design and
thus a trade variant in the design regime; reliance was placed on Dart
Industries Inc. Vs. Techno Plast MANU/DE/8161/2007; (b) that a trade
variant in the design regime cannot become a distinctive trade mark under
the Trade Marks Act; reliance was placed on Yakult Honsha KK's TM
Application (2001) R.P.C. 39; (c) that different/distinct shape from other
goods does not mean distinctive in trade mark sense; reliance was placed on
Bongrain S.A.s Trade Mark Application (2005) RPC 14; (d) that bar of
Section 9(3) of the Trade Marks Act is to be considered prior to the stage of
CS(COMM) 837/2016 Page 9 of 27
assessing distinctiveness; Section 9(3) is a complete bar for the shape of the
goods; proviso of distinctiveness is only to Section 9(1) and not for Section
9(3) of the Trade Marks Act; (e) that object of Section 9(3) is, that no
perpetual monopoly can be given to the valuable shapes that may be
protected in other monopoly rights of patents and designs; (f) that to prima
facie establish consumer reliance of shape as a badge of origin, consumer
education of shape in a trade mark sense in the form of a marketing
campaign is essential; no such advertisement is available in the present
case, as the products are stated to be directly sold by the plaintiffs to the
consumer; (g) that if shape is to be registered as a trade mark, the plaintiffs
have to establish that shape in question alone identifies the product; no such
case has been established; (h) that evidence available on record contradicts
plaintiffs‟ claim of acquired distinctive character of shape of casserole; (i)
reference was made to the prior litigation between the parties and the
findings therein; (j) that the defendants‟ act of seeking registration as a
design does not estop the defendants in any manner whatsoever; (k) that the
goodwill of the plaintiffs is not in shape but in the trade mark Tupperware;
(l) that a shape mark is different from a word mark and the shape of the
casserole is difficult to identify; (m) that the instructions manual inside the
casserole of the plaintiffs also distinguishes the product of the plaintiffs
from that of the defendants; and, (n) that while the plaintiffs claim their
product to be sold without any packaging, the product of the defendants is
sold in cardboard cartons and which prominently display the trade mark
„SIGNORAWARE‟ of the defendants, also distinguishing the goods of the
defendants from that of the plaintiffs.
CS(COMM) 837/2016 Page 10 of 27
11. I must record that the counsel for the defendants, besides the
judgments referred hereinabove, also handed over a large number of other
judgments but the need to burden this order therewith is not felt.
12. The counsel for the plaintiffs, in the earlier round of hearing, in his
rejoinder argued (I) that a trade variant can only be qua an existing product
and the defendants, though making an argument of trade variant, have not
disclosed which was the existing product of which the plaintiffs‟ product
was a variant; (II) that the defendants themselves got their casserole
registered as a design and are estopped from taking the argument of trade
variant; (III) that the defendants also applied for registration of shape of
their casserole as a trade mark, calling it distinctive and are today also
estopped from contending that shape of a casserole cannot be distinctive; it
matters not that subsequently the said application was withdrawn; (IV)
reliance was placed on Procter & Gamble Manufacturing (Tianjin) Co.
Ltd. Vs. Anchor Health & Beauty Care Pvt. Ltd. 2014 (59) PTC 421 (Del)
(DB) on estoppel by such conduct; (V) that Yakult Honsha KK's TM
Application and Bongrain S.A's Trade Mark Application supra cited by
the counsel for the defendants are not qua passing off; (VI) that in an action
for passing off, it is immaterial whether registration could have been
granted as a trade mark or not, inasmuch as passing of is an action in deceit.
13. I have in Crocs Inc. USA supra pronounced on 18th February, 2019,
on a reading of the judgment of the Five Judges Bench of this Court in
Carlsberg Breweries Vs. Som Distilleries 2018 SCC OnLine Del 12912,
held that a registered design confers on the registrant, only the right to
restrain another from infringing the design and not to, also claiming the
CS(COMM) 837/2016 Page 11 of 27
registered design as its trade mark/trade dress, restrain another from passing
off its goods as that of the registrant, by copying the registered design. It
was further held that what is usable and protectable as a trade mark is
"something extra" or more than what is registered as a design. I must also
herein record that vide order dated 29th May, 2019 in RFA(OS)(COMM)
No.22/2019 preferred thereagainst, the Division Bench of this Court has
directed that the judgment under appeal will not constitute a precedent to
bar other shape trade mark suits of the plaintiff therein i.e. Crocs Inc. USA,
whether pending or to be filed, against others, seeking the relief of restraint
of passing off qua registered design used as a trade mark / trade dress / get
up, presentation of the products through its packaging and so and if the
question of maintainability of those shape, trade marks, suits of Crocs Inc.
USA arises, the same shall be decided independently of the judgment under
challenge. However, the said interim order pertaining to Crocs Inc. USA
and even the prima facie finding returned therein of the conclusion reached
by the undersigned to be erroneous, would be of no avail, as far as the
present lis is concerned. However, in light of this subsequent development,
the counsels were again heard today.
14. It is not in dispute that the design registration of the plaintiffs had
lapsed, even prior to the earlier round of hearing.
15. The counsel for the plaintiffs clarified that the plaintiffs are not
pressing for relief on the ground of passing off the registered design and are
seeking interim order in terms of Crocs Inc. USA supra, for "something
extra" i.e. other than the registered design.
CS(COMM) 837/2016 Page 12 of 27
16. The counsel for the plaintiffs has also pointed out that the Designs
Act, in Section 2(d) thereof defining „design‟, has carved out an exception
qua trade mark as defined in Clause 2(1)(v) of Section 2 of the Trade Marks
and Merchandise Act, 1958. It is stated that the definition of mark or trade
mark in 1958 Act did not include shape as in 1999 Act.
17. However, on enquiry, whether not the settled principle of
interpretation of statutes is, that reference in a statute to another statute is
deemed to be reference to the statute referred, from time to time, the
counsel for the plaintiffs has not addressed any other argument in this
respect.
18. To show "something extra", the counsel for the plaintiffs has drawn
attention to paragraphs 14 and 21 of the plaint and to pages 3 & 5 of Part-
III(A) file, being the Certificate of Registration as a design. It is argued that
passing off by the defendants is with respect to the whole of the casserole
i.e. of the casserole lid with respect to which the present suit is filed, as well
as the casserole bowl registered separately as a design and with which this
suit is not concerned. It is thus argued that casserole lid along with the
casserole bowl or dish constitutes "something extra" within the meaning of
my judgment in Crocs Inc. USA supra. It is further argued that the
defendants have copied the entire product of the plaintiffs and which
dishonesty should not be permitted to be perpetuated. It was contended that
it was not as if the endeavour of the plaintiffs is to drive the defendants out
of the business of manufacturing and marketing of casseroles; it is open to
the defendants to make any modification / variation in their casserole for the
same to appear different at the market place from the casserole of the
CS(COMM) 837/2016 Page 13 of 27
plaintiffs. It is suggested that the defendants can vary the shape of the
handle of the lid as well as the shape of the dish of the casserole. It is
argued that the defendants have intentionally not done so, as the same
would hit the sales of the defendants from consumers buying the products
of the defendants assuming it to be of the plaintiffs. It is informed that
though the sale model of the plaintiffs is direct selling to the customers but
inspite thereof, the products of the plaintiffs land up in retail shops, where
they are displayed on the same shelves as the products of the defendants.
19. Per contra, the counsel for the defendants has drawn attention to
paragraphs 16,17,18 & 20 of the plaint and has argued that "something
extra" within the meaning of Crocs Inc. USA supra had to be in the lid only
and extra cannot be claimed by referring to the casserole bowl / dish with
which the suit is not concerned and which was registered as a design
separately from the lid. It is further argued that in the judgments in the
earlier litigation between the parties, the trade marks „Tupperware‟ of the
plaintiffs and „Signoraware of the defendants have already been held to be
sufficient‟ to distinguish the two. It is argued that the plaintiffs cannot now
compare the casserole lid and casserole bowl / dish for the purpose of
interim relief. It is further argued that grant of relief on the ground of
passing off requires establishment, of the mark having acquired
distinctiveness and which is a matter of trial and thus no interim order can
be granted. It is argued that a customer is not familiar with the shape of a
casserole, to seek the products of the plaintiffs by looking at the shape.
Else, it is reiterated that the defendants‟ casserole is sold in cardboard
cartons, prominently displaying the trade mark „Signoraware‟ of the
defendants and which is sufficient to distinguish the two products. It is also
CS(COMM) 837/2016 Page 14 of 27
stated that the casserole of the plaintiffs has a printed instruction manual
therein and which is not the case with the casserole of the defendants and
the same also is sufficient to distinguish the two.
20. The counsel of the plaintiffs, in rejoinder has argued that just like the
plaintiffs, on the outer surface of their casserole do not display their trade
mark which is embossed in the same colour on the inside of the lid and on
the base of the casserole, the defendants also on their casserole have
followed the same practice. It is further argued that the resistance of the
defendants to make any change whatsoever, to make the two casseroles
look different, itself demonstrates the attempt of passing off of the
defendants. It is yet further argued that there is no absolute bar of returning
a prima facie finding of distinctiveness and if it were not so, in no passing
off case, would interim injunction be granted.
21. I have considered the rival contentions.
22. Admittedly, the validity of the registered design of the plaintiffs
lapsed on 14th August, 2012, on expiry of ten years from 14th August, 2002,
when it was registered.
23. No interim injunction on the ground of infringement of registered
design can thus be granted. The grant of interim relief is to be considered
only on the ground of passing off.
24. I have in Crocs Inc. USA supra negatived the contention, that owing
to the prohibition of a design being a trade mark being contained in the
Designs Act and the absence of any prohibition in the Trade Marks Act to a
design being a trade mark, in an action for infringement of a trade mark or
passing off, it is irrelevant that what is claimed as a trade mark is registered
CS(COMM) 837/2016 Page 15 of 27
as a design. It was reasoned that (i) the intention of the Legislature is clear
from the prohibition contained in the Designs Act and to accept the said
contention would defeat the legislative intent and the legislative intent in the
enactment of the statute has to be respected; (ii) once the legislative intent is
that a trade mark cannot be a design, the features of shape, configuration
pattern, ornament or composition of lines or colours applied to any article,
even if used as a trade mark, cease to be a trade mark on registration being
granted to the same as a design, and a registrant is to be deemed in law to
have surrendered, abandoned, acquiesced and waived all rights to use such
features as a trade mark; else, there would be an anomalous situation, with
there being in existence a prohibition to use a trade mark as a design but
there being no prohibition to use of a design as a trade mark and such
anomaly cannot be attributed to any law making authority; and, (iii) a
prohibition contained in one statute has to be given effect to, while
interpreting all other statutes.
25. I have in Crocs Inc. USA supra, for the reasons stated therein, also
held that the meaning of trade mark in an action of passing off cannot be
wider than the meaning in the statute relating to trade marks.
26. It thus follows that no action for passing off would lie with respect to
what was registered as a design, inasmuch as the plaintiffs, by seeking
registration thereof as a design, are deemed to have surrendered, abandoned,
acquiesced and waived all rights to use such features as a trade mark,
whether during the pendency of the registration as a design or even thereafter.
27. Thus, what has to be seen is, whether there is "something extra" in
the product of the plaintiffs, which qualifies as a trade mark and which was
not registered as a design.
CS(COMM) 837/2016 Page 16 of 27
28. That takes me to the Certificate of Registration in favour of the
plaintiffs, of the casserole lid described therein as "cover for bowl", as a
design. The same shows the different views of the casserole lid / cover for
bowl as under:
and describes claim therein as under:
"The novelty resides in the shape and configuration of the
COVER as illustrated.
CS(COMM) 837/2016 Page 17 of 27
No claim is made by virtue of this registration to any right in
respect of any mechanical or other action of the mechanism
whatever or in respect of any mode or principle of construction
of the article.
No claim is made by virtue of this registration to any right to
the exclusive use of the words, letters, numerals or extraneous
matters as appearing in the design.
No claim is made by virtue of this registration to any right to
the exclusive use of colour or colour combination as appearing
in the design.
Dated this 19th day of January, 2003.
Sd.
Jhini Mukherjee
Of S. Majumdar & Co.
Applicant's Agent"
29. As aforesaid, it is the plea of the plaintiffs in the plaint that the
aforesaid registration is pursuant to the US Design Application and the
Application therefor was filed as a reciprocity application. The plaintiffs
have also filed before this Court, the United States Design Patent with
respect to "cover for a serving bowl" containing the claim as under:
"CLAIM"
The ornamental design for a cover for a serving bowl,
as shown and described."
with the following figures of the cover for a serving bowl:
CS(COMM) 837/2016 Page 18 of 27
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with description thereof as under:
"DESCRIPTION
FIG. 1 is a top, right side and front perspective view of a
cover for a serving bowl showing the new design;
FIG. 2 is a front elevation view thereof;
FIG. 3 is a rear elevation view thereof;
FIG. 4 is a right side elevation view thereof;
FIG. 5 is a left side elevation view thereof;
FIG. 6 is a top plan view thereof; and,
FIG. 7 is a bottom plan view thereof."
30. I have already set out hereinabove, in paragraph 1 recorded the
imitation by the defendants of trade dress and get up of the casserole lid /
cover for the bowl, pleaded by the plaintiffs in the plaint. The plaintiffs
have pleaded in paragraph 27(b) of the plaint as under:
"a) The Defendants have copied the overall shape,
configuration and surface pattern of Plaintiffs' Casserole
Lid / serving Bowl as sold by Plaintiffs in India;
b) The Defendants have used identical Lid design for such
Casseroles having "butter fly knob";
c) The Defendants have even copies the individual
components as well as the colour scheme of the
Plaintiffs' Casserole/serving Bowl which comprises of:
i) outer Casserole Lid is of Off White colour which is
copied;
ii) inner Casserole Lid is of dark contrasting colour
which is also copied;
iii) the butter-fly knob is depicted in contrasting dark
colour (same as inner lid colour) which is copied;
CS(COMM) 837/2016 Page 22 of 27
iv) the Casserole of the Plaintiff has "dual bowl"
which is copied;
v) the inner bowl has dark colour contrast, same as
the inner lid and the knob which has been copied;
vi) the outer bowl is of Off White colour which is
copied;
vii) the subdued branding in off-While colour blending
in Off-While colour of the lid/outer bowl which is
copied;
viii) the glossed rim design upon the lid is also copied."
31. I am afraid, the above demonstrates that there is no difference
between what was registered as a design and what is being claimed as trade
dress and get up qua which relief on the ground of passing off is sought.
32. The counsel for the plaintiffs however during the hearing argued
passing off, claiming "something extra" in the casserole bowl. I have
wondered, whether it is open to the plaintiffs to, while claiming passing off
of "something extra" in a registered design, also include another article
which is also a separately registered design. Prima facie it appears that in a
suit filed with respect to a particular good / product, in this case a casserole
lid or a cover for a bowl, to justify passing off, no reliance can be placed on
the casserole bowl or dish which was separately registered as a design.
33. Section 2(d) of the Designs Act, while defining „design‟, defines the
same as meaning only the features of shape, configuration, pattern,
ornament or composition of lines or colours „applied to any article‟... by
any industrial process or means, which in the finished article appeal to and
are judged solely by the eye. Section 2(a) of the Designs Act defines
CS(COMM) 837/2016 Page 23 of 27
„article‟ as meaning any article of manufacture and any substance, artificial
or partly artificial and partly natural and includes any part of an article
capable of being made and sold separately. Section 6 of the Designs Act
also provides as under:
"6. Registration to be in respect of particular article.--(1) A
design may be registered in respect of any or all of the articles
comprised in a prescribed class of articles.
(2) Any question arising as to the class within which any article
falls shall be determined by the Controller whose decision in
the matter shall be final.
(3) Where a design has been registered in respect of any article
comprised in a class of article, the application of the proprietor
of the design to register it in respect of some one or more other
articles comprised in that class of articles shall not be refused,
nor shall the registration thereof invalidated-
(a) on the ground of the design not being a new or
original design, by reason only that it was so previously
registered; or
(b) on the ground of the design having been previously
published in India or in any other country, by reason only
that it has been applied to article in respect of which it
was previously registered:
Provided that such subsequent registration shall
not extend the period of copyright in the design beyond
that arising from previous registration.
(4) Where any person makes an application for the registration
of a design in respect of any article and either-
(a) that design has been previously registered by another
person in respect of some other article; or
(b) the design to which the application relates consists of
a design previously registered by another person in
respect of the same or some other article with
CS(COMM) 837/2016 Page 24 of 27
modifications or variations not sufficient to alter the
character or substantially to affect the identity thereof,
then, if at any time while the application is pending the
applicant becomes the registered proprietor of the design
previously registered, the foregoing provisions of this
section shall apply as if at the time of making the
application, the applicant, has been the registered
proprietor of that design."
34. The Class of Articles referred to in Section 6 of the Designs Act are
to be found in the Third Schedule to the Designs Rules, 2001 and which
under Class 07 titled "Household good, not elsewhere specified" at Serial
No.07-01 contains "China, Glassware, Dishes and Other Articles of a
similar nature" and in note explains "including dishes and crockery in all
materials" and further explains "not including cooking utensils and
containers" and in Class 07-02 contains "Cooking Appliances, utensils and
containers" in Class 07-04 contains "Appliances and Utensils, hand-
manipulated, for preparing food or drink" and in note thereto explains "not
including appliances and utensils classified in Class 07-02" and in Class 07-
06 contains "Other Table Utensils".
35. Though the counsel for the plaintiffs has argued that the casserole lid
/ cover for the bowl subject matter of this suit, besides being used with the
casserole bowl / dish of the plaintiffs can also be used with any other bowl /
dish but I am unable to, in the plaint, find any pleadings to the said effect.
Rather, in paragraph 13 it is expressly pleaded that the plaintiffs‟ casserole
lid and bowl are independently registered, both being independent articles
manufactured and sold together as well as separately and that the present
suit pertains to the infringement of design registration pertaining to the lid
CS(COMM) 837/2016 Page 25 of 27
only. While pleading for the relief on the ground of passing off however, a
claim is made with respect to casserole lid and bowl and while describing
distinctiveness also, pleadings with respect to both are made. It thus
appears that while the suit, insofar as for infringement of design, is with
respect to design of the casserole lid / cover for the bowl only, passing off is
claimed of the entire casserole comprising of not only the lid but also of the
bowl / dish. I have wondered the permissibility thereof. Prima facie it
appears that once a claim of the lid being an independent article or part of
an article i.e. a casserole, is made, passing off cannot be claimed of lid with
the bowl / dish, which are two independent products. It cannot be forgotten
that the bowl / dish of the casserole is also separately registered as a design
and to hold that "something extra" than the design can be claimed in
conjunction with a separately registered design, would again, in my view,
defeat the legislative intent of ensuring that the law does not unnecessarily
extend protection beyond what is necessary to create the required incentive
for design activity. Once the prima facie view qua legal entitlement of the
plaintiffs to claim passing off is against the plaintiffs, the need to go into the
other lengthy arguments addressed and plethora of judgments cited is not
felt.
36. I am otherwise also of the view that the direction for the defendants
to furnish particulars of their sales of the subject product would serve the
purpose.
37. The defendants are thus directed to, within four weeks herefrom, file
before this Court alongwith affidavit, the documents showing the number of
impugned casserole lids and/or casserole bowls / dishes sold since the date
CS(COMM) 837/2016 Page 26 of 27
of commencement of sale thereof, claimed in the year 2009, along with the
price at which the said goods were sold from time to time and to, till the
disposal of the suit, continue to file the said particulars of future sales, on a
quarterly basis.
38. The application is disposed of.
CS(COMM) 837/2016
39. List for hearing the counsels on, whether the suit can be decided on
the legal question discussed, while disposing of the application for interim
relief, on 4th December, 2019.
RAJIV SAHAI ENDLAW, J.
JULY 17, 2019 „bs‟ (corrected & released on 14th September, 2019) CS(COMM) 837/2016 Page 27 of 27