The Raring Corporation And Anr vs Neogie Engineering Works Pvt Ltd
2023 Latest Caselaw 1427 Cal/2

                     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.

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

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

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.

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.)