India: Delhi High Court grants injunction in design case
In Dart Industries Inc & Anr v Polyset Plastics Pvt Ltd & Ors, a single judge of the Delhi High Court's vide order dated August 1 2018 confirmed an ex parte ad interim injunction in favour of the plaintiffs. The plaintiffs, Dart Industries Inc and its Indian subsidiary, filed two separate suits against the defendants for infringement and passing off the company's registered design of bottles and caps and other designs which amounted to an obvious imitation of the plaintiffs' registered designs. The plaintiffs also filed applications under Order 39 Rule (1) and (2), Civil Procedure Code (CPC) seeking an ex parte ad interim injunction against the defendants, and this was allowed in favour of the plaintiffs on the first day of the listing of the suit. The defendants, on being served with a copy of the summons filed applications under Order 39 Rule (4), CPC for vacation of the ex parte ad interim injunction.
The first plaintiff, Dart Industries Inc., a subsidiary of Tupperware Brands Corporation was the proprietor of two US registered designs for a bottle (Eco Flip Top bottle) and for a cap. The second plaintiff was a company incorporated in the year 1996 to carry on the business of distribution and marketing, inter alia, of food grade plastic storage containers and other products on behalf of the first plaintiff. The registration certificate in relation to the registered bottle of the first plaintiff claimed that the novelty of the bottle resided in the shape and configuration of the bottle and not in its mechanism or in respect of any mode or principle of construction of the article. On March 23 2009, the first plaintiff applied for the registration of the designs (i.e. Eco Flip Top bottle and the cap) in India before the controller general of patents, designs and trade marks claiming priority from the US designs. The designs were subsequently granted registrations in India. In December 2012, the first plaintiff launched another water storage product with a unique and novel design cap (Flip Top cap), along with the registered bottle design (Eco Flip Top bottle).
During the second week of May in 2014, the plaintiff came to know that the defendants had been selling bottles identical to its design. The plaintiff engaged an independent investigator and was informed that the bottle of the defendants was an imitation of the registered Eco Flip Top design of the plaintiff and was sold under the name Glaze Wow bottles. Soon after, the plaintiff filed the present suits against the defendants. The suits were accompanied by applications under Order 39 Rule 1 and 2 CPC seeking temporary injunction against the defendants.
A vide order dated August 5 2014, issued by a single judge of the Delhi High Court granted an ex parte ad interim injunction in favour of the plaintiff by stating that the bottles marketed by the defendants were similar to those of the plaintiff, and the defendants were infringing the registered designs of the plaintiff causing immense loss to the sale of the plaintiff's products. On being informed about the institution of the suits and the ex parte ad interim injunction, the defendants entered appearance and filed applications under Order 39 Rule (4), CPC to vacate the said ex parte, ad interim order of the single judge.
During the hearing, the plaintiff submitted that it was the registered owner of the design of the bottle and the cap since September 5 2008 and the use date claimed by the defendants i.e. March 2013 was post the date of registration of the designs of the plaintiff. Accordingly, it argued that a prima facie case was made against the defendants and hence the ad interim injunction must continue.
Per contra, the defendants argued that (a) the first defendant itself was the registered proprietor of the design of its bottle; (b) the designs of the plaintiff were neither new nor original and the plaintiff needed to prove the validity of its design registrations; (c) the designs of the plaintiff were patterns and not configurations as claimed by the plaintiff; (d) the market was filled with large and small manufacturers and sellers of the same kind of bottle as that of the plaintiff; and (e) since the design of the bottle and the cap was common, the defendants copied the shape of the bottle and flip top design due to its functional nature.
In order to substantiate its assertion that the designs of the plaintiff were neither new nor original, the defendants referred to the design of an Aava bottle (this belonged to another entity) which has been in the public domain since 2005 and was similar to that of the plaintiff's bottle. The defendants stressed the fact that the plaintiff needed to prove its designs were new, original and valid. Further, it was argued that what was registered was the shape and configuration of the bottles of the plaintiff and not the service pattern. Lastly, the defendants contended that the plaintiff's registration of the cap was under an incorrect sub-class 09-01 and should be in sub-class 09-07. Therefore, the design of the cap could not have been registered as per Sections 6 and 21 and Rule 10 of the Designs Act and hence there can be no infringement (as per the Designs Act, a cap as an article falls under "closing means and attachments" which can be found in sub-class 09-07 of the Third Schedule of the Designs Act, attached to Rule 10).
Firstly, theCourt held that the defendants in this case did not file any evidence to show that designs similar to those of the plaintiff existed prior to 2008. The defendants relied upon Aava bottles but failed to produce them before the Court. The Aava bottles were produced by the plaintiff and a look at them revealed that the plaintiff's bottle was substantially different in design and shape.
Furthermore, concerning the contention of the defendant that the plaintiff needed to prove the validity of the design, the Court was of the view that the burden of proof should be on the complainant i.e. the defendants to show that the plaintiff's design was not new or original. The plaintiff only needed to produce the two products before the Court for comparison. Since the defendants failed to discharge their obligation, there was no prima facie challenge to the validity of the design of the plaintiff.
Secondly, regarding the contention that the plaintiff's design was not new or original, the Court observed that the defendants themselves had the same design registered in the year 2012 saying it was new and original and therefore they cannot now question the validity of the registered design of the plaintiff. The Court further proceeded to compare the bottle and the cap belonging to the defendants with those belonging to the plaintiff and found them to be similar.
Thirdly, the Court held that the defendants' contention that the shape of the bottle and the cap were functional and hence cannot be protected under the Designs Act has to be proved by the defendants. The Court held that every product is functional in a way and whether the design is essentially functional or not, meaning that there is no other shape or configuration available in which the product can discharge the desired function, would have to be ascertained. Therefore, it was quite evident that the bottle and cap design (together forming the bottle) of the plaintiff was not the only product which could store water. There are multiple other bottles with unique designs which fulfil the same function.
Fourthly, the Court rejected the defendants' argument that what is registered is the shape and configuration of the bottles of the plaintiff and not the service pattern and observed that as per the Webster Oxford dictionary the meaning of the word configuration is "arrangement of elements in a particular form of figure or combination". Configuration includes the features that form a part of the fabrication of the article itself unlike a pattern which is embossed upon an article. The terms configuration and pattern could be used interchangeably depending upon the manner of use. Furthermore, it is the design of the bottle as a whole which must be novel and original irrespective of whether a feature is described as a configuration or a pattern.
Fifthly, the Court held that Sections 6 and 21 and Rule 10 of the Designs Act only talk of class and not sub-class. The Third Schedule attached to Rule 10 shows Class 9 to have various sub classes. Hence, registration in any of the sub-classes of the main class would still relate to the main class in which the article is registered.
Sixthly, since the designs of the plaintiff were registered from 2009 and as the defendants admitted that they began to sell the Glaze Wow bottle from 2013, the Court observed that once the designs of the plaintiffs were registered, it was not lawful for the defendants to apply for registration for the same design and offer it for sale. The Court observed that the use of a design not substantially different from the registered design would amount to infringement.
In view of the above findings, the Court observed that it is a settled law that designs must be protected against imitations since the statutory right of exclusive use is granted only for a limited period. Therefore, the applications of the defendants were dismissed, and the ad interim injunction granted in favour of the plaintiffs was made absolute. The order, however, made it clear that the observations made therein shall not affect the case of either parties at the stage of final determination, post-trial.
Anil Dutt and Sheena Wadhani
Lakshmikumaran & Sridharan Attorneys