Delhi High Court

Veeplast Houseware Private Ltd vs M/S Bonjour International & Anr on 2 June, 2011

Author: V. K. Jain

         THE HIGH COURT OF DELHI AT NEW DELHI

%                     Judgment Pronounced on: 02.06.2011

+           CS(OS) No. 1181/2011


VEEPLAST HOUSEWARE PRIVATE LTD                  .....Plaintiff


                            - versus -


M/S BONJOUR INTERNATIONAL & ANR               .....Defendant

Advocates who appeared in this case:
For the Plaintiff:      Mr Surinder Singh and Mr Amit
                        Verma, Advs.

For the Defendant:            Mr Shailen Bhatia and Ms Zeba
                              Tarannum Khan, Adv

CORAM:-
HON'BLE MR JUSTICE V.K. JAIN

1. Whether Reporters of local papers may
   be allowed to see the judgment?                        Yes

2. To be referred to the Reporter or not?                 Yes

3. Whether the judgment should be reported                Yes
   in Digest?

V.K. JAIN, J. (ORAL)

IA No. 7916/2011 (O. 39 R. 1&2 CPC)

1. The plaintiff is engaged in the manufacturing and

trading of various plastic products, including water jugs.

The products of the plaintiff are being sold under the name

„Nayasa‟ and the plaintiff claims PAN India presence in its

field. The plaintiff-company has three manufacturing plants

and employees more than 400 workers. In the year 2004,

the plaintiff-company conceptualized and created a novel

design to be used for water jugs. The design was registered

vide Design No. 194990 in Class 07-01 and the registration

is stated to be valid till 23rd July, 2014. In the first week of

May 2001, the plaintiff came to know about use of a design

by the defendant on their water jugs being sold under the

name Bonjour Maharaja. The case of the plaintiff company

is that the design adopted by the defendant for its jug is

identical to the registered design of the plaintiff. The plaintiff

has accordingly sought an injunction, restraining the

defendants from manufacturing, selling, offering for sale

and distributing any water jug bearing a design which

amounts to infringement of the registered design of the

plaintiff-company. The plaintiff has also sought damages

and delivery of infringing material. IA No. 7916 of 2011 has

been filed by the plaintiff, seeking ad interim injunction

against the use of the design adopted by the defendant for

selling its water jug.

2. The suit has been contested by defendant No. 1

which claims to be manufacturing various products,

including water jugs and selling them under its mark

Bonjour. It is claimed that the plaintiff has no right to seek

design registration in respect of water jug in entirety and

the design of the defendant is neither new nor original. It is

also alleged that the bucket of the defendant also has

similar fold as is the fold of the water jug of the plaintiff. As

regards legs of the water jugs, it is alleged that these legs

are identical to the legs on the vacuum flask of defendant

No. 1 which is holding a registered design to be applied by it

in respect of that vacuum flask. It is also pointed out that

the cap being used by the plaintiff on the water jug is

different from the cap shown on its registered design. It is

further stated that cap being used by the defendant on its

water jugs is altogether different.

3. A perusal of the Certificate of Registration issued

by Controller General of Patents, Designs and Trade Marks

on 10th June, 2004 would show that the plaintiff-company

has been granted registration of design in respect of a water

jug. The Certificate would show that novelty in the design is

imputed to the shape and configuration of the water jug as

illustrated in the Registration Certificate.

4. In Eastern Engineering Co. Vs. Paul Engineering

Co., AIR 1968 Calcutta 109, the High Court, inter alia,

observed as under:

"Whether a design is novel is a matter of fact to be decided by the eye. As already indicated, if the same shape or pattern, or one substantially similar, has previously been thought of in connection with any article of manufacture and the idea published, or registered, then the design will be deprived of its novelty. The previous idea or design, will act as an anticipation of the later design, and will be a bar to its protection. That the eye, and the eye alone, is to be the judge of Identity, and is to decide whether one design is or is not an anticipation of any, has been laid down time and time again in numberless cases.

The question which has to be decided is whether the two appearances are substantially the same or not. The design must be looked at as a whole, the question being whether an article made according to the design under consideration is substantially similar in appearance to an article made according to the alleged anticipation. The test is not only to look at the two designs side by side, but also apart, and a little distance away."

5. The legal proposition is that in order to ascertain

whether the impugned design infringes another design

which is duly registered or not, the two products need not

be placed side by side and the matter has to be examined

from the point of view of a customer with average knowledge

and imperfect recollection. It needs to be kept in mind that

a person coming across the impugned product may not be

having the product of the plaintiff with him at the time

when he finds the product of the defendant in the market.

He, therefore, has no opportunity to compare the two

products to compare their similarities and dissimilarities to

ascertain which product originates from which source. But,

even if the two products are placed side by side, it cannot be

disputed that the primary design of the jug of the plaintiff

has been copied by defendant No. 1. In fact, there seems to

be no distinction in the primary design of the two products.

The differences I can notice are in the design of handle and

cap. Even the legs of the two jugs appear to be almost

identical. As far as the tap is concerned, the knob of the two

jugs appears to be similar though the nozzle portion is

longer in the jug of the defendant. Another noteworthy

feature in this regard is that the lower portion of both the

jugs is bigger than the upper portion and the overall shape

of the two jugs is identical. It appears to me that any person

coming across the water jug being manufactured and sold

by defendant No. 1 may easily take it as a product of the

plaintiff-company. This is more so in the case of a customer

who is illiterate or semi-illiterate and, therefore, may not

bother to read the brand name, written on the two jugs. In

the case of Alert India vs. Naveen Plastics, 1997 PTC (17),

this Court, inter alia held as under:

"Thus for determining whether two designs are identical or not, it is not necessary that the two designs should be exactly the same. The main consideration to be applied is whether the broad features of shape, configuration, pattern etc. are same or nearly the same and if they are substantially the same then it will be a case of imitation of the design of one by the other."

Prima facie, it appears to me that the design

adopted by defendant No. 1 for selling its jug is more or less

similar to that of the plaintiff except in respect of the lid.

Also, there is a strong possibility of defendant No. 1 passing

off its water jugs as those of the plaintiff.

6. The learned counsel for the defendant, relying

upon the provisions contained in Section 22 (3) of the

Designs Act read with Section 19 thereof, has contended

that since design got registered by the plaintiff is not a new

or original design, the registration granted to the plaintiff-

company is liable to be cancelled and, therefore, this is a

valid defence available to the defendant in the present suit.

Prima facie, I find no merit in this contention. There is no

material on record to show that the design got registered by

the plaintiff was being used by any other person in India

before it was got registered by the plaintiff. It is, therefore,

difficult to accept that it is not a new or original design. As

rightly contended by the learned counsel for the plaintiff, it

is not the jug as a product in which any right is being

claimed by the plaintiff. The claim of the plaintiff is

confined to the shape and configuration of the product as is

also made out from the Certificate, whereby the design was

registered and the design used by the defendant is

practically a copy of the design of the plaintiff as far as

primary shape of the product is concerned.

7. The learned counsel for the defendant has relied

upon Harish Chhabra vs. Bajaj Electricals Ltd and Anr

2005 (4) ALLMR 3, Hawkins Cookers Ltd vs. Zaverchand

Liladhar Shah & Ors 2005 (31) PTC 129 (Bom), Brighto

Auto Industries vs. B. Chawla & Sons PTC (Suppl), (1) 851

(Del), Metro Plastic Industries (Regd) vs. M/s Galaxy

Footwear New Delhi 2000 PTC 1(FB), whereas the learned

counsel for the plaintiff has relied upon Castrol India Ltd.

vs. Tide Water Oil. Co. Ltd 1996 PTC (16).

8. In the case Harish Chhabra (supra), respondent

No. 1, who was a manufacturer of ceiling fans and claimed

to be an inventor of the design of a part of the ceiling fan

decorative ring on the central part of the ceiling fan, was

granted registration not in respect of any part invented by it,

but in respect of the ceiling fan as a whole. Relying upon the

decision of House of Lords in the case of William J.

Holdsworth and Ors. Vs. Henry C. M' crea reported in

1987 2 ia 380, it was held that the Registration Certificate

granted by respondent No. 2 in favour of respondent No. 1

was erroneous and it was not in respect of new design

invented by respondent No. 1. A perusal of the judgment

would show that the learned counsel for the defendant No. 1

conceded before the Court that the fan as a whole could not

have been registered and the Certificate of Registration was

not in respect of any part or a separate part innovated

design but was in respect of the whole of the ceiling fan and

the ceiling fan was not the invention nor a new design by

the first respondent. However, in the case before this Court,

the Registration Certificate by itself made it clear that

novelty was claimed on the basis of the shape and

configuration and, therefore, the registration is deemed to

be limited to the shape and configuration as indicated in the

design which has been registered by the Controller General

of Patents, Designs and Trade Marks.

In the case of Hawkins Cookers Ltd (supra),

registration was granted in respect of an entire Tava and

not in respect of the handle which the petitioner claimed to

have specially designed. Noticing that it was not the case of

the petitioner that the Tava was an innovation of the

petitioner, it was held that it was not permissible for a party

to register the whole of the item but only that part was

registered which was its own innovation. Since Tava was

not an innovation of the petitioners, the Court was of the

view it ought not to have been registered. It was observed

that in this case that even a slight innovation or

improvement in the design is a design by itself and can be

registered as independently innovated design. However, the

fact remains that the defendant has not got its design

registered, and, therefore, no benefit of this judgment can

be claimed by it. As noted earlier that in this case the right

being claimed by the plaintiff and the registration granted to

it is confined to the shape and configuration of the product

and not to the product as a whole. Registration of the

design does not mean that no other person can

manufacture a water jug and he cannot use a lid or a tap or

legs on the water jug manufactured and sold by him. All

these are essential components of a water jug and no one

can claim any exclusive right therein. No right can be

claimed in respect of the whole of the product unless the

products itself is his innovation or in respect of its essential

parts unless those parts are of a particular design invented

by him. Therefore, what is objectionable in this case is the

shape and design used by defendant No. 1. There can be no

objection to defendant No. 1 manufacturing and selling any

water jug so long as he does not adopt the configuration and

shape which the plaintiff-company has got registered in its

name. I also perused the decisions in the case of Brighto

Auto Industries and Metro Plastic Industries (supra). I

find no such proposition of law in these judgments which

would warrant taking a view contrary to what I am taking.

There can be no dispute with the proposition of law that if a

design even it is a registered design has no newness or

originality in it, it can be got cancelled, but, where a

particular design has been invented by a person and there

is a novelty factor attached to it, that design cannot be

adopted by any other person and if it is done, it would

amount to infringement of registered design.

9. In Castrol India Ltd (supra), the plaintiff held

registration of a design in respect of a non-metallic

container having a unique, novel and distinctive shape and

configuration. The respondent found using the registered

design of the petitioner in respect of the containers in which

he was selling automotive lubricants. A suit for injunction

was filed by the petitioners for restraining the respondents

from infringing its registered design or using a design which

was deceptively similar to its registered design. It was

claimed by the respondent that there were number of

differences in the design being used by it vis-à-vis the

design of the plaintiff. It was claimed that there was

difference in the colour packaging and shape of the ridges

and it was also submitted that several other manufacturers

were marketing their product in similar containers and

there was nothing unique or original in the design of the

petitioner. Rejecting the contention of the respondent, the

Court, inter alia, observed as under:

"The Controller of Patents and Designs registered the petitioner‟s design because he must have been satisfied that the design was new and original. Under Section 51A of the Act, it was open to any concern to ask for cancellation of the petitioner‟s registration of the design if there were any grievance that the petitioner‟s design was not a new or original design. No such application has been made by concern including the respondents before the Controller.

There is no evidence even prima facie that there was any design like the petitioner‟s design used in the market prior to the registration of the design in question. The certificate or registration was granted to the petitioner on 13th November, 1990. The two samples of similar containers used by Bharat Petroleum and the Indian Oil Corporation and produced by the respondents bear the dates September 1993 and November, 1993 respectively."

In the case before this Court also, the design of the

petitioner being a registered design, prima facie, it is

entitled to protection unless it is shown that there was

nothing new or original in the design. As noted earlier,

there is no evidence of any design identical to the registered

design of the plaintiff being used prior to registration

granted to the plaintiff. Therefore, prima facie, the plaintiff

is entitled to protection of its registered design.

10. For the reasons given in the preceding paragraphs,

I am of the view that the defendant cannot be allowed to

continue to use the impugned design. Defendant No. 1 is,

therefore, restrained from manufacturing or selling any