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Hindustan Sanitaryware & Industries Ltd. v. Dip Crafts Industries
Factual and Procedural Background
The plaintiff filed an application under Order XXXIX Rules 1 & 2 CPC seeking a temporary injunction restraining the defendant (and its servants, agents, distributors, stockists and others acting on its behalf) from manufacturing, selling, offering for sale, advertising, displaying or otherwise dealing in certain impugned designs named "Stylush", "Corel" and "Ultra" for bath tubs. The plaintiff alleged these designs are identical or deceptively similar to the plaintiff's registered bath tub designs titled "Tiffany", "Strauss" and "Aruba" (Design Registration Nos. 183452, 183457 and 183458).
The plaintiff placed on record registration certificates (issued on 18 September 2000) and asserted exclusive rights to use those designs. A legal notice dated 16 February 2002 was issued by the plaintiff before filing the suit. The defendant entered appearance, filed a written statement and a reply to the injunction application. The defendant contended that the plaintiff's designs were not new/original, advanced a plea of prior publication, and placed affidavits, a catalogue and certain bills on record to support its plea.
The injunction application was heard by the Court. The court considered the registration certificates, the parties' pleadings and the documents placed on record, compared the designs visually, and reserved an order. The Court ultimately granted the temporary injunction and disposed of the application. The plaintiff was given three weeks to file replication; the parties were directed to file documents within three weeks and the suit was listed before the Joint Registrar on 11 February, 2002, for admission/denial of documents.
Legal Issues Presented
- Whether the defendant's designs ("Stylush", "Corel", "Ultra") are deceptively similar or an obvious/fraudulent imitation of the plaintiff's registered designs ("Tiffany", "Strauss", "Aruba"), amounting to infringement, piracy or passing off.
- Whether the defendant's plea of prior publication (and associated documents such as catalogue, affidavits and bills) successfully establishes that the plaintiff's designs were not new/original and hence not protectable.
- Whether the plaintiff is entitled to a temporary injunction restraining the defendant from using the impugned designs pending disposal of the suit.
Arguments of the Parties
Plaintiff's Arguments
- The plaintiff developed bath tubs named "Tiffany", "Aruba" and "Strauss" which are registered designs in the plaintiff's name under the Designs Act (registration certificates placed on record; certificates issued 18 September 2000).
- By virtue of registration, the plaintiff has exclusive rights to use and apply the said designs; no one else may use identical or deceptively similar designs without licence.
- The novelty of the bath tubs in shape, configuration and surface pattern was claimed and granted by the competent authority; the alleged infringement relates to those aspects.
- A legal notice was sent prior to suit (dated 16 February 2002), asserting infringement and seeking remedy.
Defendant's Arguments
- The designs registered by the plaintiff are not new within the meaning of the Designs Act; they are trade variants or prior published designs and therefore not original.
- The defendant's designs ("Stylush", "Corel", "Ultra") are the result of years of labour by its designers and any similarity is purely coincidental.
- To support prior publication, the defendant placed three affidavits, a catalogue (Annexure E) allegedly containing the impugned designs, and printer bills/invoices (Shubham Printers) dated 1 April 1998, 7 April 1998 and 25 June 1998.
- The defendant placed a registration certificate from the Delhi Sales Tax Authorities indicating it is a registered dealer and produced documents relating to sales tax assessment and bills to show prior marketing/sales.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Castrol India Ltd. v. Tide Water Oils Co. (I) Ltd., 1996 PTC (16) 202 (Calcutta High Court) | Similarity of designs is to be judged "through the eye alone"; not every resemblance is actionable — the copy must be a fraudulent or obvious imitation, though it need not be an exact replica. | The Court accepted and applied these observations, comparing the designs visually and concluding that there was substantial and sufficient resemblance amounting to prima facie infringement; the Castrol test supported granting the temporary injunction. |
Court's Reasoning and Analysis
The Court's reasoning proceeded in a series of fact- and document-based steps:
- The Court noted the plaintiff's registered design certificates (dated 18 September 2000) and the plaintiff's claim of novelty in shape, configuration and surface pattern, which was recognised by the competent authority.
- The Court examined the defendant's response: the defendant did not dispute the plaintiff's registrations in the immediate reply to the legal notice and initially asserted independent creation; the plea of prior publication was pressed only later after suit was filed.
- The Court evaluated the documentary evidence offered by the defendant in support of prior publication — a catalogue (Annexure E), an affidavit of the printer, and three printer bills/invoices from Shubham Printers dated in 1998 — and found defects in that evidence: the catalogue lacked a date and publisher/printer particulars in the form required; the bills did not demonstrate that the specific bath tub models ("Stylush", "Corel", "Ultra") were sold or published; the bills did not co-relate with the impugned designs.
- The Court observed that the sales tax registration and bills placed on record, prima facie, did not establish that the defendant marketed or sold the impugned designs prior to the plaintiff's registrations.
- Applying the visual test as articulated in Castrol India Ltd. (that similarity is to be judged by the eye and actionable resemblance must be fraudulent or an obvious imitation), the Court visually compared the plaintiff's registered designs and the defendant's impugned designs.
- On that comparison, the Court found substantial and sufficient resemblance between the registered designs and the defendant's designs and was of the prima facie view that the defendant was guilty of infringement of the plaintiff's registered designs.
- On the basis of these findings — defective documentary support for prior publication and a prima facie finding of deceptive similarity/infringement — the Court concluded that the plaintiff's injunction application had sufficient force and warranted interim protection.
Holding and Implications
Core Ruling: The Court granted a temporary injunction in favour of the plaintiff and against the defendant, restraining the defendant from infringing, pirating, attempting to infringe, or enabling or assisting others to infringe the copyright in the plaintiff's registered Design Nos. 183452, 183457 and 183458, or from using any design deceptively or confusingly similar to those registered designs, until the disposal of the suit.
Direct procedural consequences ordered by the Court:
- The injunction application was disposed of in terms of the order.
- The plaintiff was granted three weeks' time to file a replication.
- The parties were directed to file any additional/original documents within three weeks.
- The suit was listed before the Joint Registrar on 11 February, 2002, for admission/denial of documents.
Implications: The decision provided interim relief to the plaintiff by restraining the defendant's use of the disputed designs pending final adjudication. The opinion applied established case law (Castrol) and did not purport to establish a new legal precedent; its immediate effect was to preserve the status quo pending trial.
Dr. Mukundakam Sharma, J.:— This order shall dispose of the application filed by the plaintiff under order xxxix rules 1 & 2, cpc praying for a temporary injunction against the defendant, restraining the said defendant, its servants, agents, distributors, stockists and all others acting on its behalf from manufacturing, selling offering for sale, advertising or displaying directly or indirectly or dealing in any other manner whatsoever in the impugned designs named ‘Stylush’, ‘Corel’ and ‘Ultra’ or any other designs which are identical to or deceptively similar or an obvious fraudulent imitation thereto in relation to bath tubs of the plaintiff named as “Tiffany”, ‘Strauss’ and ‘Aruba’ which would amount to passing off, piracy and infringement of the plaintiff's design registration Nos. 183452, 183457 and 183458.
2. The case of the plaintiff as pleaded is that it developed bath tubs, particularly, those bath tubs under the titles and designations ‘Tiffany’, ‘Aruba’ and ‘Strauss’, which are also duly registered in favour of the plaintiff under the Designs Act, 1911. Registration certificates in respect of the said designs have been placed on record which indicates that the said three bath tubs under the title and designation ‘Tiffany’, ‘Aruba’ and ‘Strauss’ were duly registered under the Designs Act in the name of the plaintiff which is still subsisting in law. It is pleaded that by virtue of the said registrations, the plaintiff has the exclusive rights to use and apply the said designs in respect of its products and manufacture and market such products and that none else could be permitted to use the said designs or some other designs or any other design being an obvious or fraudulent imitation thereof without leave and licence of the plaintiff.
3. It is alleged that the defendant is marketing and selling bath tubs under the impugned designs under the title and designation ‘Stylush’, ‘Corel’ or ‘Ultra’ which are said to be fraudulent and obvious imitation to the plaintiffs bath tubs under the aforesaid designs. It is alleged that the defendants are trying to infringe the registered design of the plaintiff's as also passing off and indulging in activities within the meaning of Section 22 of the Designs Act, 2000. Summons and notices were issued in the suit whereupon, the defendant has entered appearance and filed a written statement and reply to the injunction application. It is stated by the defendant in the said reply that the designs in question got registered by the plaintiff are not new designs within the definition of Designs Act. It is also alleged that the impugned designs of the plaintiff are merely a trade variant of the existing business of bath tubs and are prior published designs and the same are neither new nor original. In support of the said contention, three affidavits have been filed by the defendant to prove and establish that the plaintiff has been dealing with the marketing goods of the similar designs since 1997. A catalogue is also placed on record by the defendant containing similar designs under the titles and designations ‘Tiffany’, ‘Aruba’ and ‘Strauss’ and an affidavit of the printer of the said catalogue is also placed on record.
4. The aforesaid injunciton application is placed before me for consideration on which I have heard the learned counsel appearing for the parties.
5. Counsel appearing for the plaintiff has taken me through the registration certificates issued by the authority which indicates that the bath tubs under the titles and designation ‘Tiffany’, ‘Aruba’ and ‘Strauss’ are registered designs of the plaintiff under the Designs Act. The said registration certificates were issued on 18th September, 2000. A legal notice was also issued by the plaintiff prior to filing of the present suit which is dated 16th February, 2002. A reply was sent by the defendant as against the aforesaid legal notice wherein the plea that was taken by the defendant was that the designs of the bath tubs marketed and sold by the defendant under the titles and designations ‘Stylush’, ‘Corel’ or ‘Ultra’ is the result of years of labour by the designers of the Dip Craft Industries, namely, the defendant and that the similarity in designs with the three designs of the plaintiff is purely coincidental. In the said reply by the defendant, the registration of the plaintiff in respect of all the three designs is not disputed. In the said reply which was sent by the defendant immediately after receipt of the legal notice, no such plea of prior publication of the impugned designs was raised or mentioned. Subsequently that is after filing of the suit, it appears that the defendant became wiser and took up a plea of prior publication of the impugned designs in support of which certain documents have been placed on record to which reference was also made by the counsel appearing for the defendant. A catalogue which is placed as (Annexure E) by the defendant contains various designs of the defendant which also include the impugned designs, namely, ‘Stylush’, ‘Corel’ and ‘Ultra’. In the said catalogue, the name of the printer is not mentioned although the same was required to be mentioned by the defendant. The document further does not contain any date of publication of the catalogue nor the name of the publisher is mentioned.
6. An affidavit is now filed by the defendant of the alleged printer of the said catalogue and the Bill of the said printer is also placed at page 58 of the document file. The said bill/invoice is of Shubham Printers. Three bills in support of the aforesaid plea have been placed on record which are dated 1st April, 1998, 7th April, 1998 and 25th June, 1998. I have perused the said three bills. None of the said bills indicate that by the aforesaid bills/invoices any of the bath tubs of the impugned designs under the model ‘Stylush’, ‘Corel’ and ‘Ultra’ was sold by the defendant. Therefore, no reliance can be placed on the said documents which do not co-relate with the impugned designs. The catalogue also being without any date and particulars regarding the name of the printer and publisher is not worthy or consideration. Those four documents do not support the plea of the defendant that the designs were pre-published. The defendant has also placed on record, a registration certificate of the Delhi Sales Tax Authorities indicating that the defendant is a registered dealer. The said documents placed on record relating to the sales tax assessment and the bills, prima facie, do not prove and establish the plea of the defendant that the defendant has been selling and/or marketing the impugned designs under the name ‘Stylush’, ‘Corel’ and ‘Ultra’, prior to the registrations obtained by the plaintiff in respect of similar designs of bath tubs under the name ‘Tiffany’, ‘Strauss’ and ‘Aruba’.
7. I have compared the designs of the plaintiff and of the defendant in respect of the said three impugned designs, namely, ‘Stylush’, ‘Corel’ and ‘Ultra’ of the defendant and find that the said designs are similar to that of the registered designs of the plaintiff namely, ‘Tiffany’, ‘Strauss’ and ‘Aruba’. The Court has to Judge the similarity or the difference of a particular design through the eye alone, as was held by the Calcutta High Court in Castrol India Ltd. v. Tide Water Oils Co. (I) Ltd., 1996 PTC (16) 202.
8. The plaintiff has claimed novelty of the bath tubs in respect of shape, configuration and surface pattern which was also granted by the Competent Authority. The infringement alleged also relates to shape, configuration and surface.
9. Having compared the designs of the plaintiff with the alleged impugned designs of the defendant, I find that there is substantial and sufficient resemblance between the allegedly infringed designs and the plaintiff's registered designs and, therefore, the present application filed by the plaintiff has sufficient force.
10. In Castrol India Ltd. (supra), it was held by the Calcutta High Court that it is not every resemblance in respect of the same article which would be actionable at the instance of the registered proprietor of the design and that the copy must be a fraudulent or obvious imitation but, then the word imitation would not mean duplication in the sense that the copy complained of need not be an exact replica.
11. I respectfully agree with the aforesaid observations of the Calcutta High Court and applying the same principles, I am of the prima facie view that the defendant is guilty of the infringement of the plaintiff's registered design. In that view of the matter, a temporary injunction is granted in favour of the plaintiff and against the defendant, restraining the defendant from infringing/pirating or attempting or causing enabling or assisting others to infringe/pirate the copyright in the registered Design Nos. 183452, 183457 and 183458 of the plaintiff or in any way using a design which is deceptively or confusingly similar to such registered designs of the plaintiff, till the disposal of the suit.
12. In terms of the aforesaid order, the application stands disposed of.
S. No. 1485/2002.
13. The plaintiff is granted three weeks time to file the replication.
14. The parties shall file their additional/original documents, if any, within three weeks. The suit be listed before the Joint Registrar on 11th February, 2002, for admission/denial of documents.
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