The Delhi High Court recently comprising of a bench of Justice Jyoti Singh observed that plea of 'Passing-Off' can't be negated solely on ground that plaintiff had asserted trademark rights in registered designs. (HAVELLS INDIA LIMITED v. PANASONIC LIFE SOLUTIONS INDIA PVT LTD & ANR.)
The bench remarked, "the FJB has clearly held that the larger legal formulation in Mohan Lal, Proprietor of Mourya Industries v. Sona Paint & Hardwares, (2013 SCC OnLine Del 1980,) that a passing off action i.e., one which is not limited or restricted to trademark use alone, but the overall get-up, trade-dress etc., is correct. It was further held that as long as the elements of the design are not used as a trademark, but a larger trade dress get-up, presentation through its packaging etc. given that passing off claim can include and is also broader than infringement of a trademark, cause of action against such use lies."
Facts of the case
The present application was filed on behalf of the Plaintiff seeking interim injunction inter alia restraining the Defendants and their agents etc., from manufacturing, marketing, selling (including on online platforms), using designs bearing Nos. 280666 and 328605, the VENICE PRIME series of ceiling fans or any other fan(s) series, which are identical or deceptively similar to Plaintiff’s ENTICER series including ENTICER ART variants or which are a colourable imitation or substantial reproduction of Plaintiff’s ENTICER/ENTICER ART series in their get-up, layout, trade-dress, colour scheme, pattern etc.,in any manner, amounting to infringement, passing off, unfair competition etc.
It was averred in the plaint that Plaintiff was incorporated in the year 1983 and by itself and/or by its permitted user, engaged in the Electrical and Power Distribution Equipment business. Plaintiff is a Billion Dollar leading Fast Moving Electrical Goods Company having extensive production and distribution networks across India and internationally, providing a wide range of world-class industrial and consumer electrical products. Plaintiff enjoys an enviable market dominance across a wide spectrum of products, including cables and wires, motors, fans, home appliances, electric water heaters, power capacitors etc.
Contention of the Parties
The plaintiff contended that the unauthorized imitation, identical reproduction and piracy of the registered design of the Plaintiff by Defendant No.1 is an infringement under Section 22 of the Act. On account of the substantial copy by Defendant No.1 and common consumer base as well as the same trade channels, the goods of Defendant No.1 are likely to be passed off as those of the Plaintiff. The dishonest adoption of the designs of the Plaintiff’s ENTICER/ENTICER ART fans would dilute the distinctive character of Plaintiff’s brand, which by virtue of extensive use has acquired immense goodwill and reputation in the trade circles and amongst the consumers. The class of consumers purchasing the competing products are unwary customers of average intelligence and imperfect recollection. The customer base generally includes electricians, electric contractors, builders etc.who purchase these products from the retail shops and usually do not read the mark or label or the name of the manufacturer on the packaging of the product and owing to the high degree of visual similarity in the products of the Plaintiff and Defendant No.1, chances of confusion are extremely high.
The Defendant contended that the claim of novelty in Design 2016 is vague and cannot extend to the rectangular fin per se and Plaintiff’s right has to be limited to shape and configuration alone. In any event, the rectangular fin on the fan blade does not qualify as ‘new or original’ and is merely an introduction or substitution of ordinary trade variants in a prior published design. Defendant No.1 has listed out several prior published designs of companies such as Usha International Limited, Khaitan India Limited etc. and comparing them with an eye of an instructed person it can be seen that there is nothing ‘new or original’ to make it substantially different.There is thus a credible challenge to the design registration which is liable to be cancelled under Section 19(1)(a) of the Act. Plaintiff being in the same industry could not have been ignorant of prior publications and has suppressed the facts to obtain ex parte orders.
Moreover, Plaintiff has claimed trademark rights in the registered designs, as is evident from a cursory reading of the plaint wherein suit designs have been referred to as a ‘source identifier’, ‘trademark’, ‘trade dress’ or identifier of Plaintiff’s trade and business. Having claimed trademark in the suit designs, the design registration becomes vulnerable and is liable to be cancelled under Section 19(1)(e)of the Act. Section 2(d) of the Act defines a design ‘to exclude a trademark under the Trade Marks Act, 1999’ or ‘an artistic work under the Copyright Act, 1957’. In Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd., 2018 SCC OnLine Del 12912,it was held that if the registered design per se is used as a trademark, it can be cancelled.
Court's observations and Judgment
The bench observed, "Having carefully perused the plaint, more particularly, paras 7, 26, 38, 57, 63, 64, 66 etc., I prima facie find merit in the contention of Defendant No.1 that Plaintiff has sought to assert trademark rights in the registered designs, thereby making the designs vulnerable and entitling Defendant No.1 to take this as a defence. However, the question that begs an answer is, whether irrespective of the said pleadings, Plaintiff can lay a claim of passing off, not restricted or limited to the registered design alone but in the overall get-up, trade dress etc. or the pleas are self-destructive, as alleged by Defendant No.1."
The bench further observed, "In my view, learned Senior Counsel for Defendant No.1 is not correct in arguing that the pleas are self-destructive and therefore, no interim injunction should be granted till thePlaintiff amends the suit and elects one of the various reliefs claimed. It is a settled law that parties can raise alternate and inconsistent pleas but should not be permitted to raise pleas which are mutually destructive of each other, as held by the Supreme Court in Srinivas Ram Kumar v. Mahabir Prasad and Others, AIR 1951 SC 177. Therefore, even ifthe Plaintiff asserts a claim of trademark in a registered design, which makes a design vulnerable, it is open to the Plaintiff to plead that it has a goodwill and reputation and Defendant No.1, by misrepresentation is passing off its goods as that of the Plaintiff, thereby causing damage and injury and Defendant No.1 by fraudulent imitation of the article to which the registered design is applied is guilty of infringement of the said design."
The bench observed, "It is settled law that parties can raise alternate and inconsistent pleas but should not be permitted to raise pleas which are mutually destructive of each other. Therefore, even if the Plaintiff asserts a claim of trademark in a registered design, which makes a design vulnerable, it is open to the Plaintiff to plead that it has a goodwill and reputation and Defendant No.1, by misrepresentation is passing off its goods as that of the Plaintiff, thereby causing damage and injury and Defendant No.1 by fraudulent imitation of the article to which the registered design is applied is guilty of infringement of the said design."
The further observed, "It is prima facie evident from a mere visual comparison that every attempt has been made by Defendant No.1 to come as close as possible to Plaintiff’s fans. The impugned product has a same shape and configuration, ornamentation on the blade, body ring on bottom cover, layout and placement of the ornamentation. It is relevant to note that not only has the idea of using marble on the blades of the fan been copied, but even the shape in which it is cut, the size and the metallic border as well as its placement and layout have been substantially copied by Defendant No.1.
Learned Senior counsel for Defendant No.1 had sought to bring out certain dissimilarities by comparing the intersecting golden lines on the marble pattern of the Plaintiff’s fans with the motifs and colours on the impugned products. In my view, the differences/dissimilarities that were attempted to be highlighted, are not sufficient to hold in favour of Defendant No.1 that there has been no attempt to copy and misrepresent. It has been held in several judgments that if the Courts were to examine the dissimilarities with great minuteness, noPlaintiff would ever succeed in a claim for infringement or passing off as a clever Defendant, with some skill would always be in a position to make some cosmetic or minor changes and get away with deceit and/or infringement."
The bench remarked, "The argument that the packaging of the fans is different and contains the name of Defendant No.1 as ‘Anchorby Panasonic Cannot, in my view, help Defendant No.1 as it is common knowledge that ceiling fans are displayed as installed on the ceilings of the shops or showrooms and/or sometimes kept on the tables, but without boxes. It is only after the customer has chosen a particular fan, a fresh piece packed in a box is given to the customer on payment, as rightly urged by the Plaintiff."
The court accordingly held that the Defendant was infringing the design of the Plaintiff and passing off its goods as that of the Plaintiff, thereby deceiving the public. Thus, an interim injunction was granted in favour of the Plaintiff.
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