Madras High Court
M/S.Maya Appliances P Ltd vs Apex Consumer Appliances P Ltd on 16 December, 2021
C.S.497 of 2016
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated : 16.12.2021
Coram:
THE HONOURABLE MR.JUSTICE N.ANAND VENKATESH
Civil Suit No.497 of 2016
M/s.Maya Appliances P ltd.,
No.10/5, Royal Enclave,
Besant Avenue, Adyar,
Chennai 600 020
Also having factory at
No.3/140, I.T Highway, Oggiyam,
Thoraipakkam, Chennai 600 097
Represented by its Authorised Signatory,
Mr.E.Mohan .. Plaintiff
/versus/
Apex Consumer Appliances P ltd.,
Plot No.29-P,
Off Kanjur Village Road,
Opp Cresent industrial Estate,
Kanjurmarg Estate,
Mumbai – 400042
Maharashtra, India ..Defendant
Prayer: Civil Suit has been filed under Order IV, Rule 1 of the
Original Side Rules and Order IV Rule of O.S Rules and order VII
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C.S.497 of 2016
Rule 1 C.P.C read with Section 22 of the Designs Act 2000 and
Section 55 & 62 of the Copyright Act, 1957, praying to pass a
judgment and decree for:-
(a) declaring that the defendant is infringing upon the
plaintiff's copyright in design Nos.272568, 272569, 272570 and
272571 granted on 05.06.2015 in respect of its VIDIEM “AIR”
frameless gas stove 276080 granted on 28.09.2015 and 264343
granted on 30.07.2014 by manufacturing, offering for sale and
selling of the defendant's APEX EVA gas stoves.
(b) granting a permanent injunction, restraining the
defendant, its men, agents, or persons acting on its behalf, from
in any manner infringing the plaintiff's copyright in design of
frameless gas stoves bearing Design Nos.272568, 272569, 272570
and 272571 granted 05.06.2015, 276080 granted on 28.09.201
and 269343 granted on 30.07.2021 (Amended as per order dated
18.03.2020 in A.No.9838 of 2019 and time extended as per order
dated 08.01.2021 by manufacturing of offering for sale or selling
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C.S.497 of 2016
any gas stoves with features similar to the plaintiff's frameless
gas stove design.
(c) granting permanent injunction restraining the defendant
from in any manner passing off the plaintiff's frameless gas
cooktops/ gas stoves marketed and sold under the name VIDIEM
AIR by using identical/or deceptively similar frameless design,
shape or configuration and marketing and selling the same under
the name APEX EVA or in any other name any manner
whatsoever.
(d) declaring that the defendant is infringing upon the
plaintiff's copyright in the phrases/text/words/voice over
appearing in the VIDIEM AIR promotion video namely the
following '8' mm thermally treated toughened gas, “360 degree
visual feedback”, by publishing the same namely, “8 mm
thermally treated toughened gas, “360 degree visual feedback”
on the carton box of APEX EVA.
(e) granting a permanent injunction restraining the
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C.S.497 of 2016
defendant, its men, agent, of persons acting on its behalf, from
in any manner infringing the plaintiff's copyright in phrases
/text/words and voice over appearing in the VIDIEM AIR
promotion video namely, '8mm thermally treated toughened gas,
“360 degree visual feedback” on its carton box/any packaging
material or using the same in any other form or manner in the
course of its business viz, in its correspondence, name board, sign
boards, advertisements in print and electronic media.
(f) Directing the defendant to pay the plaintiff a sum of
Rs.2,00,00,000/- as damages along with interest @ 18% per
annum from the date of plaint till the date of realisation.
(g) Directing the defendant, its men, agents and persons
acting on its behalf of it, to deliver up for destruction all the
infringing frameless gas stoves and any parts thereof, and any
frameless gas stoves marketed and offered for sale by the
defendant under the name of APEX EVA which would amount to
passing off as the plaintiff's frameless gas stove which is
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C.S.497 of 2016
marketed and offered for sale by the defendant under the name
of APEX EVA which would amount to passing off as the plaintiff's
frameless gas stove which is marketed and offered for sale under
the name VIDIEM AIR or any other frameless gas stove by being
identical or deceptively similar thereof including all dyes,
moulds, cartons boxes and other packaging materials and any
other machinery that may be used in the manufacture of the
infringing products
(h) Directing the defendant to pay the costs of the suit.
(i) pass such further or other reliefs, as this Hon'ble Court
may deem fit and proper in the circumstances of the case and
thus render justice.
For Plaintiffs : Mr.T.K.Bhaskar
For Defendant :Set exparte
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JUDGMENT
The instant suit seeks for a declaration to declare that
the Defendant is infringing upon the Plaintiff’s copyright in its
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C.S.497 of 2016
registered designs and grant a permanent injunction restraining
the Defendant, its men, agents, or persons acting on its behalf,
from in any manner passing off or infringing on the Plaintiff’s
copyright from manufacturing, offering for sale or selling any gas
stoves with features similar to the Plaintiff’s copyright. The
plaintiff further sought for a direction to the defendant to deliver
to the plaintiff for destruction of all the infringing frameless gas
stoves including all dyes, moulds, cartons, boxes and other
packaging material and any other machinery that may be used in
the manufacture of the infringing products. The plaintiff has also
sought for relief of damages against the defendant.
2. The case of the plaintiff is that they are a leading South
Indian Company in the field of manufacturing and marketing of
kitchen appliances for over 37 years with products present in
over 10 million homes worldwide. The plaintiff states that in
2013, they launched under its brand, VIDIEM, the world’s first
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C.S.497 of 2016
frameless gas stove/ gas cook top known as VIDIEM AIR. The Vice-
President and Deputy General Manager- Manufacturing of the
plaintiff company are said to have been granted registration for 6
designs, as extracted below :-
SI no. Design No. Title Date of Registration
1. 272568 GAS STOVE June 5, 2015
2. 272569 GAS STOVE June 5,2015
3. 272570 GAS STOVE June 5, 2015
4. 272571 GAS STOVE June 5, 2015
5. 276080 GAS STOVE September 28, 2015
6. 264343 GAS STOVE July 30, 2014
The Plaintiff submits that a subsequent Deed of
Assignment, for the 6 registered deigns, was executed in favour
of the plaintiff on 03.04.2016. The Plaintiff also states that the
design registrations specify “Novelty resides in the shape and
configuration of the gas stove”, and the Legal use Certificates
have been obtained for the same.
3. The further case of the plaintiff is that through their
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C.S.497 of 2016
Research and Development division, an amount of Rs.
3,64,61,356/- was incurred, resulting in its products being unique
and innovative. The plaintiff claims that the advantage of the
Plaintiff’s design of the frameless Gas Cook Top over
conventional frame model, is its safety as it provides a 360-
degree visual feedback. They further submit that in the event of
a gas leak or fire at the joints, it can be immediately spotted and
the gas can be switched off, preventing accidents. The plaintiff
claimed that the model has an enhanced cleaning ability,
reduced complexity and a unique sleek and compact design
compared to a conventional gas stove. The plaintiff further
claims that the Plaintiff’s products were immensely popular due
to the aesthetic appeal and was in a position to generate
1,03,447 pieces in a period of 2 years amounting to Rs. 38.47
crores approximately.
4. The grievance of the plaintiff is that the Defendant has
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C.S.497 of 2016
imitated every distinctive feature of the Plaintiff’s product with
a similar design and features of frameless gas stoves named APEX
EVA series. The Plaintiff states that prior to the manufacture of
EVA Series, the defendant company produced conventional
framed gas stoves. The defendant is said to have copied the
frameless feature with thermally treated toughened gas top
portion, fitments of burner assembly with heavy gauge brass
burned, gas flow pipe assembly and colourful thermoplastic legs.
The plaintiff further states that the defendant exactly
incorporated the frameless structure mechanism of using the top
portion and the leg portion together, which is a key aspect of the
Plaintiff’s model.
5. It is pleaded that the promotional video on the Plaintiff’s
website exhibiting the distinctive taglines and novel features of
the frameless gas stove, were squarely incorporated by the
Defendant on the cartons used, to sell the alleged infringing
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C.S.497 of 2016
product. The phrases/taglines appearing in the Plaintiff’s video
are
a. 8mm thermally treated toughened glass
b. 360 Degree Visual Feedback
c. Low height for easy handling of heavy vessels mentioned
at 1.56 Min in the video file
d. Removable drip trays with additional cap used to avoid
spillage
The plaintiff has therefore filed the present suit against the
defendant claiming for various reliefs.
6. The sole defendant was served with notice on
17.11.2021. The defendant failed to enter appearance and
defend the case and they were set ex-parte.
7. The only issue to be decided in the present suit is as
to whether the Defendant product has infringed the exclusive
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right of the Plaintiff, for the registered designs, as under Section
22 of the Designs Act,2000.
8. The instant suit was posted for recording ex-parte
evidence on 08.12.2021 and Mr. E. Mohan, the authorized
signatory of the Plaintiff was deposed as PW1 and Ex. P1 to P17
were marked.
9. Heard Mr.T.K.Bhaskar, Learned counsel appearing on
behalf of the plaintiff.
10. The Plaintiff is in the business of manufacturing and
marketing kitchen appliances. The plaintiff has incurred an
expenditure of Rs. 3,64,61,356/-, as shown in the Auditor’s
certificate and the same is marked as Ex. P2, towards research
and development of the frameless gas stove/ gas cook top known
as VIDIEM AIR. The certificates of registration of the 6 designs
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were granted to the Vice-President and Deputy General Manager-
Manufacturing of the plaintiff company, under the provisions of
the Designs Act, 2000 and Design Rules, 2001 as marked in Ex. P-
3 series. The owners of the design executed a Deed of
Assignment pertaining to the 6 registered designs, on 03.04.2016
in favour of the Plaintiff company. By virtue of this agreement,
the plaintiff acquired the sole and exclusive design right of the 6
frameless stove models.
11. It is clear that the Plaintiff has established good-will
and reputation by advertising the AIR Series frameless gas
cooktops in all forms of print and electronic media upon
obtaining registration. Ex. P7 bolsters this claim that the
Plaintiff’s product became immensely popular, putting them in a
position to generate an aggregate of 1,03,4427 pieces within a
period of 2 years to the value of Rs. 38.47 Crores.
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12. The plaintiff apprehended that on a juxtaposition of
the visual features, the Defendant projects a replicative image of
the Plaintiff’s products along with the incorporation of key
features distinctive to the Plaintiff’s product, similar internal
piping parts and similarly designed legs and thus, providing
unjust advantage to the Defendant on the good will and
reputation of the Plaintiff. It is with this cause of action the
present suit has been filed before this Court.
13. In the considered view of this Court, the apprehension
entertained by the Plaintiff has some basis. The perusal of the
visual features of the Plaintiff as submitted by the Plaintiff in
Comparative Table at Para. 17 of the Amended Plaint seen with
Defendant’s prior models which were conventional stove tops as
marked in Ex. P-9, substantiates that the Defendant has in
factintended to infringe on the exclusive right granted to the
Plaintiff for the 6 designs. There is yet another stark evidence of
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infringement by the Defendant, depicting the distinctive taglines
and novel features of the Plaintiff’s promotion video, publicly
available on its website, which are marked as Ex. P-14. The
taglines are slightly modified and incorporated on the cartons
used by the Defendant to sell the EVA series which is marked as
Ex. P-15.
14. There is no doubt that the Plaintiff is the true owner
of the design registrations vide Deed of Assignment and has the
sole exclusive right to exploit the designs without any restrictions
and the Defendant has infringed on the Plaintiff’s right. The
defendant has imitated each and every distinctive feature of the
Plaintiff’s product to the extent that the defendant’s products
are almost indistinguishable from the Plaintiff’s product.
15. The plaintiff is claiming protection from infringement
of its registered designs. On carefully looking at the design, it is
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clear that it is novel and unique.The essential part of the
plaintiff’s design is the frameless feature of its products and this
essential part has been completely copied by the Defendant. The
stark resemblance per se reflects the mind of the defendant. The
purchaser of the product will certainly mistake the product of
the Defendant to be that of the Plaintiff’s.
16. The real test to be applied under Section 22 is if the
impugned product is substantially the same as the registered
design when judged solely by the eye. On applying this test, the
overall identity and the features of the impugned product of the
defendant are substantially the same as that of the plaintiff’s
product.
17. A design can be used as a trademark and if by virtue
of its use, goodwill is generated in the course of trade or
business, it can be protected by an action in the nature of
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passing off. The test to be applied will be that firstly, the design
must be used as a mark and such design/mark should have
identified the plaintiff as the source of the goods supplied.
Thereafter, the Court must also see if there is a goodwill or
reputation attached to the goods which the plaintiff is offering,
in the mind of the purchasing public. This good will/ reputation
should have been taken advantage of by the defendant with an
intent to misrepresent the public and the same should result in
causing damage to the Plaintiff.
18. A cumulative reading of all the materials placed before
this Court shows that the Defendant is guilty of passing off their
product as the Plaintiff’s product.
19. Insofar as the plea regarding copyright is concerned,
the sound recording that appears in the promotion video and the
text appearing in the visuals associated with the promotional
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video will constitute a copyright under section 13 of the
copyright Act, 1957. The defendant, has virtually reproduced the
tagline featured in the video and it is seen in APEX EVA carton
box. This amounts to copyright infringement by the defendant.
20. The plaintiff has claimed for damages to the tune of Rs.
2,00,00,000. It is true that, Section 22 of the Act, makes the
infringer liable to pay damages. To claim such a substantial
amount as damages, the plaintiff is relying upon Ex P-2 and Ex.
P-7 which reveals the amount spent by the plaintiff towards
research and development and the aggregate sale of the
Plaintiffs products over a period of two years. According to the
plaintiff, the intentional act of the Defendant by bringing in the
impugned product has made inroads into the business and the
market of the Plaintiff and has brought down the sales of the
Plaintiff’s product.
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21. In the considered view of this Court, there is absolutely
no material available to assess the claim made by the
Plaintiff.The plaintiff has also not sought for the relief of
rendition of accounts against the Defendant. Therefore, there is
no way to assess the damages. In view of the same, this Court
cannot grant damages as claimed by the Plaintiff and only a
token damage can be awarded in line with section 22(2)(b) of the
Act. Accordingly, this Court is inclined to grant damages in favour
of the plaintiff to the tune of Rs. 5,00,000.
22. In view of all the above findings, the issue framed by
this Court is answered in favour of the plaintiff.
23. In the result, there shall be a judgement and decree as
prayed for in favour of the plaintiff in the following terms:
a) Declaring that the Defendant is infringing upon the
plaintiff’s copyright in design Nos. 272568, 272569,
272570 and 27251 granted on 05-06-2015 in respect of
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its VIDEM “AIR” frameless gas stove (Design nos.
276080 granted on 28-09-2015 and 264343 granted on
30-07-2014) by manufacturing, offering for sale and
selling of the defendant’s APEX EVA gas stoves.
b) Declaring that the permanent injunction
restraining the defendant, its men, agents, or persons
acting on its behalf, from in any manner infringing the
plaintiff’s copyright in design of frameless gas stoves
bearing design nos. 272568,272569,272570 and 272571
granted on 05-06-2015, design no. 276080 granted on
28-09-2015 and design no 264343 granted on 30-07-
2014by manufacturing, offering for sale and selling
any gas stoves with features similar to the plaintiff’s
gas stove design.
c) A permanent injunction restraining the defendant
from in any manner passing off the plaintiff’s
frameless gas cooktops/ gas stoves marketed and sold
under the name VIDEM AIR by using identical/or
deceptively similar frameless design, shape or
configuration, and marketing and selling the same
under the name APEX EVA or in any ither name any
manner whatsoever
d) Declaring that the Defendant is infringing upon the
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C.S.497 of 2016
plaintiff’ copyright in the phrases/text/words/voice
over appearing in the VIDEM AIR promotion video
namely the following, “8 mm thermally treated
toughened gas,” “360 degree visual feedback”, by
publishing the same namely, “ 8 mm thermally
treated toughened gas,” “360 degree visual
feedback”, on the carton box of APEX EVA.
e)A permanent injunction restraining the defendant,
its men, agents, or persons acting on its behalf, from
in any manner infringing the plaintiff’s
copyrightphrases/text/words/voice over appearing in
the VIDEM AIR promotion video namely the following,
“8 mm thermally treated toughened gas,” “360
degree visual feedback”, by publishing the same
namely, “ 8 mm thermally treated toughened gas,”
“360 degree visual feedback”, on its carton box/ any
packaging material or using the same in any other
form or manner in the course of its business viz, in its
correspondence, name boards, sign boards,
advertisements in print and electronic media.
f) Directing the defendant to pay damages of Rs. 5
lakhs with interest @ 9% per annum from the date of
plaint till the date of realisation and
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g) Directing the defendant, its men, agents, or
persons acting on its behalf to it, to deliver up for
destruction all the infringing frameless gas stoves and
any parts thereof, and any frameless gas stoves
marketed and offered for sale by the defendant under
the name of APEX EVA which would amount to passing
off as the plaintiff’s frameless gas stove which is
marketed and offered for sale under the name VIDEM
AIR or any other frameless gas stove by being
identical or deceptively similar thereof including all
dyes, moulds, cartons, boxes and other packaging
materials and any other machinery that may be used
in the manufacture of the infringing products.
24. In the result, the suit is decreed in the above terms and
considering the facts and circumstances of the case and the
conduct of the defendant, this Court is inclined to impose an
exorbitant cost of Rs. 5 Lakhs payable by the Defendant to the
Plaintiff.
16.12.2021
Index:Yes/No
Internet : Yes/No
rka
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C.S.497 of 2016
List of Witness examined on the side of the Plaintiffs:-
Mr. E. Mohan, the authorized signatory of the Plaintiff was
deposed as PW1
List of Witness examined on the side of the Defendant :-
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List of the Exhibits marked on the side of the Plaintiff:-
Sl. Particulars
Nos
.
1. Board resolution
2. Auditor's certificate on R&D Expenses
3. Certificate of Design Registration – Bearing Nos.272568,
272569, 272570, 272571
4. Industrial Assignment Deed of N.Balaji
5. Industrial Assignment Deed of N.D.Venkatesan
6. Legal user certificate
7. Auditor's certificate on sales turnover
8. Photographs of other companies Gas stove model
9. Photograph of Defendant's model launched prior to
“EVA”
10. Comparative Photograph of Defendant's gas stove with
plaintiff's gas stove (Design No.272568)
11. Comparative photograph of defendant's gas stove with
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C.S.497 of 2016
Sl. Particulars
Nos
.
plaintiff gas stove (Design No.272569)
12. Comparative photograph of defendant's gas stove with
plaintiff gas stove (Design No.272570)
13. Comparative photograph of defendant's gas stove with
plaintiff gas stove (Design No.272571)
14. CD containing plaintiff's promotion video
15. Comparative of snapshots from promotion video of
plaintiff along with photos of carton of the defendant
16. Sales invoice with warranty card
17. Certificate under Section 65 B of Indian Evidence Act,
List of the Exhibits marked on the side of the Defendant:-
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C.S.497 of 2016
N.ANAND VENKATESH. J.,
rka
C.S.No.497 of 2016
16.12.2021
https://www.mhc.tn.gov.in/judis
