Vipin Sanghi, J.:— By this order, I proceed to dispose of the aforesaid application preferred by the plaintiff under order 39 rule 1 & 2 cpc to seek interlocutory injunction. The relief sought in the said application is to seek an ad-interim injunction against defendant, restraining it, its promoters, assigns, successors-in-interest, licensees, franchisees, partners, directors, representatives, servants, distributors, employees, agents etc. from using a design/bottle, which is claimed to be a fraudulent or obvious imitation of Design Representation No. 244246, as well as any label/trade dress/get up similar to that of plaintiff's registered trademark/label and trade dress/get up in any manner whatsoever, upon and in relation to their products/services/business;
2. The plaintiff claims to be a corporation organized and existing under the laws of Denmark. The plaintiff states that it is using a unique and distinctive bottle in respect of its product, viz. beer, under the brand “TUBORG”, design whereof is registered under the provisions of the Designs Act, 2000. The novelty of the applicant's registered design resides in the shape and configuration of the bottle.
3. The plaintiff is using its registered trademark, namely, “Clockman Shape Label” which appears as follows:
4. In respect of its said product being marketed under the mark “TUBORG”. The plaintiff states that its product is being sold with a distinctive trade dress/get up.
5. The plaintiff states that the defendant, which is also in the same line of business, is marketing its product under the brand name “HUNTER”, and has adopted an imitation of the registered bottle design, registered label mark and trade dress in respect of its product, which is not only leading to infringement of the plaintiff's registered bottle design; to infringement of its trademark contained in the ‘clockman shape label’, and; to passing off its products as that of the plaintiff. The comparison of the two products depicted by the plaintiff in the plaint, as well as in the present application, is as follows:
6. The plaintiff states that there is an overall similarity in the bottle and packaging of the defendant in respect of its product, with that of the plaintiff. The specific features outlined by the plaintiff, wherein similarity resides are the following:
i) similar neck portions;
ii) use of the arc/groove design on the bottles;
iii) similar indentation on both bottles;
iv) identical placement of the brand HUNTER as that of TUBORG;
v) use of label by respondent similar to applicant's registered clockman shape label;
vi) identical/deceptively similar placement of the labels on the bottles;
vii) identical pull-off caps on the bottles;
viii) identical/deceptively similar trade dress/get up of the bottles/products.
7. The plaintiff claims significant reputation and popularity of its product being marketed in its unique designed bottle with its label, trade dress and get up. In this regard, it seeks to rely upon its sales figures of its beer TUBORG. The global sales of the plaintiff in respect of TUBORG beer in the years 2012 to 2014 has been disclosed as follows:
YearGross Sales (USD in thousands)2012961,13820131,015,53520141,158,549
8. The gross sales in India of the said product of the plaintiff between April 2009 to March 2015, is disclosed as follows:
YearGross Sales (INR in millions)April 2009-December 2009341.3420101,236.4320112,910.1120125,085.7520137,986.39201414,209.00January 2015 - March 20154,544.45
9. The plaintiff also claims that it spends large amounts of money for commercial marketing and advertising of its brand worldwide, and in India. The worldwide figures of expenditure incurred between 2012 and 2014 are:
Financial YearPromotional, marketing and advertising expenditure (USD in thousands)201279,9292013103,4452014112,013
10. The promotional, marketing and advertising expenditure incurred in India for the product in question between April 2012 and March 2015 is disclosed as follows:
Financial YearPromotional, marketing and advertising expenditure (INR in millions)April 2012 - December 2012221.632013254.572014590.61January 2015 - March 201548.60
11. The plaintiff claims that the defendant was earlier marketing its product “HUNTER” in a different kind of packaging/bottle, with a completely distinct trade dress from that of the plaintiff. However, some time towards the end of April 2015, the defendant adopted the infringing bottle design, label and trade dress with a view to ride on the popularity and reputation of the plaintiff, and with a view to cause confusion in the mind of the consumers and take undue advantage of the same.
12. The plaintiff has given the comparison between the bottles/packaging that the defendant/respondent was using for marketing its product “HUNTER”, prior to April 2015; the impugned bottles/packaging, and; its own bottles/packaging which is as follows:
13. The plaintiff claims that the defendant “…is engaged in passing off its products as Applicant's products by adopting/using the bottle as well as label/cap/trade dress/get-up which is a slavish imitation of Applicant's registered design of bottle as well as label/cap/trade dress/get-up”
14. The plaintiff submits that “Being in the same line of business, the defendant is well aware of Applicant's established reputation and goodwill vesting in the registered design of its bottle as well as its registered clockman shape label/trade dress/get-up and that the said design/label/trade dress/get-up is exclusively associated with Applicant”
“…. copying of the essential feature of Applicant's registered design as well as the label/trade dress/get-up cannot be a mere coincidence and is testimony to the dishonest and fraudulent intention of the defendant to derive unjust pecuniary benefits therefrom.”
15. The plaintiff claims that the defendant has a history of trade mark infringement. The defendant “was restrained by this Court from using the trade mark TIGER CHAKRA which is deceptively similar to the registered trade mark TIGER of Heineken Asia Pacific Breweries [Heineken Asia Pacific Breweries v. Surjeet Lal (CS(OS) 3318/2014)]. The same speaks volumes on the conduct of the Defendant.”
16. The plaintiff also claims that the conduct of the defendant was found to be dishonest by the Bombay High Court in SABMiller India Ltd. v. Som Distilleries and Breweries Ltd., 2013 (54) PTC 291 (Bom), wherein the Bombay High Court held:
“… On the one hand the Defendant admits that its use of beer bottles bearing the Plaintiff's trade mark was a mistake, but yet on the other hand it still wants to continue with the said use.
Such conduct on the part of the Defendant has to be termed “dishonest”. Therefore I am in agreement with the submission of the Plaintiff that in view of such conduct on part of the Defendant, it is not entitled to raise any plea in equity such as balance of convenience”.
17. When the suit and the present application came to be listed on 21.05.2015, the defendant was represented through its counsels. The record shows that arguments were heard by this Court. The defendant made a statement through counsel that till the next date of hearing, “‘Hunter Beer’ in the new bottle shall not be launched in any new territory”. The matter was adjourned to 25.05.2015 On that date, the defendant was bound by the statement made on 21.05.2015 The matter was adjourned to 26.05.2015, when it was further adjourned to 27.05.2015 On the said date, the defendant tendered in Court an affidavit which was taken on record. The case was adjourned to 28.05.2015 On 28.05.2015, the Court passed the following order:
“During the course of hearing spread over a few days, the following transpired:—
A. Mr. Sandeep Sethi, learned senior counsel for the defendant fairly and candidly admits that the plaintiff is the owner of a legally valid registered design bearing no. 244246 at page 8 of Part III file. He also reiterates that the defendant in accordance with the undertaking given in the affidavit dated 27th May, 2015 shall within a period of four months adopt a new unique design for its HUNTER Beer bottle. He states that even during this period of four months, the defendant shall confine its sales of impugned bottles in the State of Delhi and Madya Pradesh. Mr. Sethi also undertakes to produce the new design before this Court in the first week of July, 2015.
B. Mr. Sethi prays for and is permitted, as a onetime measure, to sell the stocks which have already been manufactured for the State of Orissa, Pondicherry, Kerala and Para-military forces.
C. The cases of beer bottles as well as the batch numbers under which they are being dispatched to the State of Orissa, Pondichery, Kerala and Para-military Forces shall be placed on record by defendant by way of an affidavit by 30 May, 2015.
D. It is agreed between the parties that the defendant shall be entitled to sell beer in the impugned bottles in the State of Delhi and Madhya Pradesh for a period of four months from today. Even during this period, no new bottle, other than total of 56,23,305 which have already been purchased by the defendant, shall be introduced in the said markets.
E. The number of cases and batch number of the beer despatched for sale in Delhi and Madhya Pradesh shall also be furnished by way of an affidavit with advance copy to the plaintiff as and when the same are dispatched.
F. The defendant also undertakes and assures to this Court that no new order for the purchase of impugned bottles shall be placed and/or no advertisement with regard to the impugned bottle shall be published in any print media or visual media.
Today, Mr. Sandeep Sethi states that the period of four months is too short for the defendant to recover the investment that it has made in purchase of the bottles in question.
Mr. Amit Sibal, learned senior counsel for the plaintiff, on instructions, states that his client is willing to allow the defendant to sell beer in the impugned bottles in Madhya Pradesh for four months, but only for a period of one month in Delhi.
The period during which the defendant can sell the beer in the impugned bottles shall be decided on the next date of hearing.
List on 3rd July, 2015.
Order dasti”.
(emphasis supplied)
18. From the aforesaid order it would, inter alia, be seen that the defendant was granted four months time to sell its beer in its bottle in question in the State of Delhi and Madhya Pradesh, so as to utilize 56,23,305 bottles bearing the impugned design, trademark and trade dress. No new bottle could be introduced in the market. However, the defendant stated that the period of four months was too short for the defendant to recover the investment made in the purchase of the bottles in question. Since the parties could not agree on the time to be granted to the defendant, the matter was adjourned to 03.07.2015
19. Thereafter, the case was adjourned from time to time by the learned Judge. On 14.08.2015, the learned Judge released the matter from part-heard, since the parties were not able to resolve the matter amicably.
20. On 21.08.2015, this Court extended the time for the defendant to exhaust the 56 lakh odd bottles by marketing its product in the territories of Delhi and Madhya Pradesh till the next date of hearing, which was fixed for 09.10.2015 Thus, the time granted to the defendant by the order dated 25.08.2015 stood extended till 09.10.2015
21. The defendant preferred an appeal, being FAO (OS) No. 594/2015, to assail the order dated 25.08.2015 The said appeal was disposed on 20.10.2015 with a direction that the appellant/defendant may use only those bottles which have not earlier been put to use, i.e the appellant/defendant was not permitted to recycle the bottles and use the recycled bottles. The appellant/defendant disclosed that there are 11,40,000 such bottles which have not been used earlier. The said order permitted the appellant/defendant to sell its product in the bottles in question till 05.11.2015, which was the date fixed for hearing of the interim application in the suit.
22. On 05.11.2015, the Court took up for consideration the defendants application being I.A No. 21848/2015, whereby the defendant sought clarification of the order dated 09.10.2015 The clarification sought by the defendant was that the status quo and permission granted to the defendant to use the 56 lakhs (approx.) bottles was operative till the next date of hearing.
23. The learned Single Judge dismissed the said application by passing the following order:
“IA No. 21848/2015
On 28 May, 2015, the Court had recorded an agreement between the parties which inter alia, reads as under:
“D. It is agreed between the parties that the defendant shall be entitled to sell beer in the impugned bottles in the State of Delhi and Madhya Pradesh for a period of four months from today. Even during this period, no new bottle, other than total of 56,23,305 which have already been purchased by the defendant, shall be introduced in the said markets.”
On 21.8.2015, this Court had recorded as under:
“Insofar as the Court has allowed the defendant to dispose off the said 56 lacs (approximately) bottles in the territories of Delhi and Madhya Pradesh, it is permitted to do so till the next date of hearing and not further.”
Against the said order, limiting the time within which the bottles could be used for sale of the alcoholic beverage, the defendant went in appeal which, in turn, was dismissed by the Division Bench vide order dated 20.10.2015 The order reads as under:—
“FAO(OS) 594/2015 & CM 24636/2015(stay)
We have heard the counsel for the parties. This appeal is disposed of with the direction that the appellant may use only those bottles which have not earlier been put to use. According to the learned counsel for the appellant there are 11,40,000 such bottles which have not been used at all and would be used only for the first time. A clear affidavit along with proof of evidence with regard to this statement shall be filed today, if possible. In any event, the affidavit shall be served on the respondent today itself.
This appeal stands disposed of.
However, the entire excise details and clearances with regard to the” bottles shall be placed before the learned Single Judge on or before the next date of hearing. This order has been passed only till 05.11.2015 on which date the learned Single Judge will continue with the hearing.
Dasti.”
Mr. Sandeep Sethi, the learned Senior Advocate for the applicant/defendant would submit that, even as of today, approximately 10,45,000/- bottles are stored unused in mint condition, hence permission be granted for sale of beer in these new bottles in Delhi.
This is a suit seeking injunction against the defendant's design infringing the registered design of the plaintiff. The consent order passed on 28.5.2015 envisaged use of 56 lacs bottles. There was no lack of clarity as to time within which it would be done i.e four months in Madhya Pradesh and one month in Delhi. The said time was extended by this Court for both the States till 9 October, 2015. The order leaves no room for doubt that what was contemplated was the sale of 56 lacs bottles of beer in bottles with the ‘infringing design’, only till 9 October, 2015 and no further. The recycling of used bottles was not contemplated or referred to in previous orders. Hence, the endeavour to have the time period extended, without consent, would not be justified. If the defendant were to be permitted to use the bottles till they were naturally exhausted, with a loss of approximately 20% the bottles in each cycle, it would take approximately one and a half years. Resultantly, the purported infringement of the registered design of the bottles would run into several millions of bottles. For the purpose of recovery of investment made by the defendant, the statutory rights and interests of the plaintiff, who has a registered design of the bottle, cannot be compromised. On a balance of convenience, this Court finds that it would not be fair at this interlocutory stage to permit the defendants to continue to sell beer in bottles which are prima facie identical to the registered bottle design of the plaintiffs. The application is without basis and is accordingly dismissed.”
(emphasis supplied)
24. Thus, the learned Single Judge was of the view that the order dated 28.05.2015 and 21.08.2015 “leaves no room for doubt that what was contemplated was the sale of 56 lacs bottles of beer in bottles with the ‘infringing design’, only till 9 October, 2015 and no further. The recycling of used bottles was not contemplated or referred to in previous orders. Hence, the endeavour to have the time period extended, without consent, would not be justified. If the defendant were to be permitted to use the bottles till they were naturally exhausted, with a loss of approximately 20% the bottles in each cycle, it would take approximately one and a half years. Resultantly, the purported infringement of the registered design of the bottles would run into several millions of bottles”.
25. Dissatisfied with the aforesaid order, the defendant again preferred a first appeal, being FAO No. 628/2015, which was disposed of/dismissed on 23.11.2015 by extending the time for the appellant/defendant to sell its beer in the impugned bottles in the State of Delhi and Madhya Pradesh upto and including 31.12.2015 The defendant then preferred a Special Leave Petition being SLP (C) No. 34251/2015. The Supreme Court on 14.12.2015 passed the following operative order:
“Having heard the learned counsels for the parties we dispose of the present Special Leave Petition by requesting the High Court to decide the application under Order XXXIX rule 1 filed by the plaintiff in the suit being C.S(O.S) No. 1485 of 2015 within 31st January, 2016. The interim order granting permission to the defendant to use the disputed design in the bottles will continue until the said date.
It is argued by Shri Sudhir Chandra, learned Senior Counsel appearing for the respondent that the suit so far as the design is concerned has been decided. In this regard, the Court has specifically noticed the orders dated 28 May, 2015, 3 July,2015, 14 August, 2015, 21 August, 2015 and 5 November, 2015 passed by the learned single judge in the said suit which orders are available on record. We find that the said contention advanced on behalf of the respondent is not correct.
The Special Leave petition is disposed of in the above terms”.
(emphasis supplied)
26. It is in the aforesaid background that the present application has been heard. The hearing commenced on 20.01.2016 and continued thereafter on several dates. On 03.02.2016, this Court recorded the following order:
“In deference to the orders of the Supreme Court, the hearing is proceeding, as far as possible, on a day-to-day basis. In these circumstances, the interim arrangement worked out by the Supreme Court shall continue to operate during the hearing of the applications.
List on 04.02.2016”
27. Eventually, the hearing was concluded on 04.03.2016, and order reserved. Since the same could not be pronounced earlier on account of the heavy work load, and the fact that this case required consideration of the detailed submissions which was time consuming, the matter was listed for recapulation of submission on 16.09.2016 The submissions were recapulated by the learned counsels and judgment reserved on 20.02.2017
Plaintiff's submissions
28. Mr. Sudhir Chandra, learned senior counsel for the plaintiff has, firstly, drawn the attention of the Court to the affidavit of the defendant dated 27.05.2015, which had been tendered in Court on the said date and taken on record. He points out that in the said affidavit, the defendant had conceded that the plaintiff had a valid registered design and that the defendant was not contesting the same. The defendant after disclosing the number of bottles, which had already been bottled and which remain to be bottled, with the impugned design, had undertaken:
“2. … … that no new impugned bottles other than the total of 56,23,305 already purchased by the defendant shall be introduced in the market. The defendant therefore undertakes that no new order for the impugned bottles shall be placed by the defendant in future.
29. The defendant had further undertaken that:
“5. The defendant states that defendant shall within a period of four months from today, adopt a new unique design for “Hunter” beer. The defendant shall produce the said new design before the Hon'ble Court around the first week of July, 2015”.
30. Mr. Chandra submits that the aforesaid solemn statement made on behalf of the defendant by the authorized representative of the defendant constitutes an admission by the defendant of the fact that the defendant was infringing the plaintiff's copyright in the bottle design. He submits that it was on the basis of the aforesaid admission that the Court had passed the order dated 28.05.2015
31. He submits that the effect of the said admission made by the defendant is recorded in the order dated 28.05.2015 in the following words:
“…. Mr. Sandeep Sethi, learned senior counsel for the defendant fairly and candidly admits that the plaintiff is the owner of a legally valid registered design bearing no. 244246 at page 8 of Part III file. He also reiterates that the defendant in accordance with the undertaking given in the affidavit dated 27 May, 2015 shall within a period of four months adopt a new unique design for its HUNTER Beer bottle. He states that even during this period of four months, the defendant shall confine its sales of impugned bottles in the State of Delhi and Madhya Pradesh. Mr. Sethi also undertakes to produce the new design before this Court in the first week of July, 2015. ….”.
32. Mr. Chandra submits that it was on account of the aforesaid admission made by the defendant that it was permitted - as a one-time measure, to sell its stocks which had already been manufactured for the State of Orissa, Pondicherry, Kerala, and for the paramilitary forces. The defendant was also permitted to sell its beer in the impugned bottles in the State of Delhi and Madhya Pradesh for a period of four months, while making it clear that no new bottle, other than 56,23,305 bottles which had already been purchased by the defendant, shall be introduced in the said markets. The Court had also recorded the undertaking of the defendant that no new order for purchase of impugned bottles shall be placed, and no new advertisement with regard to the impugned bottles shall be put in print or visual media. Mr. Chandra submits that the defendant cannot be permitted to approbate and reprobate at the same time. Having conceded to the plaintiff's copyright in its registered bottle design, and on that basis obtained the leeway for marketing its beer in the impugned bottle design, the defendant cannot now seek to resile from its admissions.
33. Mr. Chandra submits that in view of the aforesaid admission made by the defendant, the relief qua infringement of design should not only be granted in the application, but a decree on admission should be passed in favour of the plaintiff in that respect. Mr. Chandra submits that since the claims of the plaintiff also pertain to infringement of its trademark in the label, and also to the copying of the trade dress/get up and consequent passing of, those aspects alone need to be addressed by the Court while disposing of the application, at a prima facie stage.
34. Without prejudice to his aforesaid submission that the issue with regard to infringement of the registered design of the plaintiff in its beer bottle stands concluded on account of the admission made by the defendant, on the aspect of infringement of the copyright in the plaintiffs design, Mr. Chandra submits that the defendant is using a fraudulent imitation of the plaintiff's registered bottle design which is liable to be injuncted by virtue of section 22 of the Designs Act, 2000. He submits that the copy must be a fraudulent or obvious imitation and that imitation does not mean duplication. It is not necessary that the infringing should be an exact replica of the original registered design. It is the article as a whole which must be compared and contrasted with the features or shape or configuration of the registered design. In support of the aforesaid submission, he places reliance on Castrol India Ltd. v. Tide Water Oil Co. (I) Ltd., 1996 (16) PTC 202 (Cal).
35. Mr. Chandra submits that if the Court finds that there is substantial and sufficient resemblance between the allegedly infringing design and the registered design, an injunction should follow. In this regard, he places reliance on Dabur India Ltd. v. Amit Jain, 2009 (39) PTC 104 (Del) DB.
36. Since features of a registered design are to be judged solely by the eye in respect of the essential features which form part of the registration, the two articles, namely, one having the registered design and the infringing article should, therefore, be judged visually and carefully with the eye of an informed person in the trade. In this regard, he places reliance on Videocon v. Whirlpool, 2012 SCC OnLine Bom 1171, and Whirlpool India Ltd. v. Videocon Industries, 2014 (60) PTC 155 (Bom).
37. Mr. Chandra submits that merely because the defendant may have also obtained registration of its design in its bottle is no ground to refuse injunction and the present suit and the interim application would still be maintainable and require consideration on merits. In this regard, he places reliance on the Full Bench judgment in Mohan Lal v. Sona Paint, 2013 (55) PTC 61 (Del) (FB).
38. Mr. Chandra submits that “mark” is defined in section 2(1)(m) of the Trademarks Act, to include a label. Trademark is defined in Section 2(1)(zb) to mean a mark capable of being represented graphically, and which is capable of distinguishing the goods or services of one person from those of others, and may include the shape of goods, their packaging and combination of colours. Thus, he submits that the novel shape of the plaintiff's bottle - with grooves and indentations, coupled with the unique label adopted by the plaintiff, have assumed trade mark significance, and identify the product of the plaintiff i.e beer under the mark TUBORG, with the plaintiff.
39. Mr. Chandra has also drawn the attention of the Court to section 29 of the trademarks act, which sets out the circumstances in which the registered trademark is infringed by a person.
40. Mr. Chandra submits that there is grave similarity in the mark/label adopted by the defendant, with the registered trademark of the plaintiff and the goods are also identical and, thus, there is every likelihood that the consumer of beer from the infringing bottle-with the label and get up as adopted by the defendant, would get confused. The public is also likely to draw an association of the defendant's product, with the plaintiff's product sold under the brand “TUBORG”.
41. Mr. Chandra has relied on Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, to submit that in an action for infringement the plaintiff must, no doubt, make out that the use of the defendants mark is likely to deceive, but where the similarity between the plaintiffs and the defendants mark is so close-either visually, phonetically, or otherwise, and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff rights are violated. If the essential features of the trademark of the plaintiff have been adopted by the defendant, the fact that the get up, packing and other writing or marks on the goods, or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
42. Mr. Chandra submits that the essential feature of the plaintiff's registered trademark in the label is its shape - which is the “Clockman Shape Label”. The same shape has been adopted by the defendant in respect of its label.
43. Mr. Chandra also submits that the act of the defendant in adopting the same trade dress gives an overall impression that the defendant's product has the same source of origin as that of the plaintiff. He has placed reliance on Parle Products (P) Ltd v. J.P & Co., Mysore, (1972) 1 SCC 618, wherein the Supreme Court has observed that to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. It is not the dissimilarities and differences which are to be focused upon, but the overall similarity between the registered trademark and the impugned mark which has to be considered. It would be enough if the impugned mark bears such an overall similarity to the registered mark, as would be likely to mislead a person usually dealing with the goods into accepting the goods of another, if offered to him.
44. Mr. Chandra submits that the features already enumerated herein above, and the general appearance of the two bottles-of the plaintiff and the defendant, leaves no manner of doubt that the impugned packaging and get up of the defendant is deceptively similar to that of the plaintiff. Mr. Chandra submits that the Supreme Court in the aforesaid decision had laid down the test, and applied the same in the following words:
“Anyone in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs' goods, he might easily mistake the defendants' wrapper for the plaintiffs' if shown to him some time after he had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendants' wrapper is deceptively similar to the plaintiffs' which was registered. We do not think it necessary to refer to the decisions referred to at the bar as in our view each case will have to be judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it”.
45. Mr. Chandra submits that if the same test is applied, there would be no manner of doubt that the defendant's packaging and get up is deceptively similar to that of the plaintiff. Mr. Chandra submits that the Court must have regard to the overall similarity between the trade dress adopted by the plaintiff and that adopted by the defendant. In this regard, he places reliance on R.R Oomerbhoy Pvt. Ltd. v. Court Receiver, High Court, 2003 (27) PTC 580.
46. He has also placed reliance on Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel, 2006 (33) PTC 281 (SC), wherein the Supreme Court observed that in an action for infringement, where the defendant's trade mark is identical with the plaintiff's registered mark, the aspect of confusion is not required to be enquired into.
47. Mr. Chandra has placed reliance on Vicco Laboratories, Bombay v. Hindustan Rimmer, Delhi, AIR 1979 Del 114, to submit that even though the two brand names/word marks TUBORG and HUNTER are distinct, and by themselves may not cause confusion - that by itself is not determinative of the issue of passing off. In this case, the two word marks in question were “Vicco” and “Cosmos”. However, the Court found that the entire get up and colour scheme of the tubes and cartons adopted by the defendant were identical in every detail with that of the plaintiff and were likely to confuse and deceive the consumer easily.
48. Reliance is placed on Colgate Palmolive Company v. Anchor Health & Beauty Care Pvt. Ltd., 2003 (27) PTC 478 (Del), wherein this Court had observed:
“52. It is the overall impression that customer gets as to the source and origin of the goods from visual impression of colour combination, shape of the container, packaging, etc. If illiterate, unwary and gullible customer gets confused as to the source and origin of the goods which he has been using for longer period by way of getting the goods in a container having particular shape, colour combination and getup, it amounts to passing off. In other words if the first glance of the article without going into the minute details of the colour combination, getup or lay out appearing on the container and packaging gives the impression as to deceptive or near similarities in respect of these ingredients, it is a case of confusion and amounts to passing off one's own goods as those of the other with a view to encash upon the goodwill and reputation of the latter.
x x x x x x x x x x
57. Words “Colgate” and “Anchor” are distinct and have not an iota of similarities either in look or in sound. That is why the ingredients of trade dress, get up, colour combination, lay out of the container or packing acquire significance and relevance for determining the offence of passing off. This criteria flows from the concept of action of passing off developed over the years that it is the similarities and not the dissimilarities which go to determine whether the action for passing off is required or not. That is why in trademark cases even the deceptive similarities are considered sufficient for infringement of trademark. If similarities of trade dress are substantial from the look of the two goods, it comes within the mischief of passing off.”
(emphasis supplied)
49. Mr. Chandra submits that a label-which is registered as a trade mark, contains several essential features, including its shape. He submits that since the shape of the plaintiff's label in the present case is uncommon, it is an essential feature of the said label mark. He submits that under Section 17(2)(b) of the Trade Marks Act, a mark which contains any matter which is not common to trade, or is otherwise of a distinctive character, stands protected on account of registration of the entire mark. He submits that in any event, to obviate an argument founded upon Section 17(2) of the Act, the plaintiff has already applied for registration of the shape of the label as a trade mark, and the said application is pending. He, thus, submits that the reliefs sought in the aforesaid application be granted to the plaintiff.
Defendant's submissions
50. The application is opposed by the defendant. Ms. Pratibha Singh, learned senior counsel for the defendant, firstly, submits that there is no admission made by the defendant qua the claim of validity in its registered design made by the plaintiff. Ms. Singh submits that the plaintiff is claiming that the defendant has admitted and conceded to the plaintiff's rights in the registered design in the affidavit dated 27.05.2015, which also forms the basis of the recording of paragraph ‘A’ in the order dated 28.05.2015 Ms. Singh submits that a perusal of the affidavit itself would show that the defendant had made the statements-as contained in the said affidavit, during the course of negotiations between the parties with a view to finally resolve all the disputes in the suit. This is clear from paragraph 2 of the said affidavit, wherein the defendant had expressly stated that “in order to bring an end to the litigation between the parties, the defendant is not contesting the registered design of the plaintiff … … …”. The defendant had also stated in the same paragraph, that it was “according to the plaintiff” that there was similarity in the design adopted by the defendant with that of the plaintiff for packaging of its TUBORG Beer. Thus, there was no unqualified or clear admission of similarity of the bottle design, trade mark, or trade dress.
51. She further submits that on the aforesaid aspect, the plea of the plaintiff was rejected even by the Supreme Court, while passing the order dated 14.12.2015 in S.L.P(Civil) No. 34251/2015. The plaintiff had sought to urge before the Supreme Court that so far as the plaintiff's claim qua its design is concerned, the suit had been decided. After noticing the orders dated 28.05.2015, 03.07.2015, 14.08.2015, 21.08.2015 & 05.11.2015, the Supreme Court observed that this contention of the plaintiff was not correct.
52. Ms. Singh submits that proposals made by the parties during the course of negotiations are always “without prejudice”, and in case the settlement does not come about, such proposals cannot be held against, or to be binding on the party making the same. She submits that if the Courts were to bind the parties to their proposals made during the course of their negotiations, no party would freely make a proposal on account of the risk of being bound down to the same, even though the settlement may not eventually be reached. She submits that in the present case, the parties eventually did not arrive at a settlement, and thus, the said proposal cannot be held against the defendant.
53. In support of her submission, she has placed reliance on Surinder Kaur & Ors…Plaintiffs; v. S. Rajdev Singh & Ors…Defendants., 152 (2008) DLT 704. In the said case the matter was taken in Chamber by the learned Judge and after hearing them the Court had passed an order regarding the in-principle settlement between them. One of the parties sought to enforce the said in-principle settlement by moving an application under Order XXIII Rule 3 CPC on the basis of the terms recorded by the learned Judge in Chamber. The Court observed that, in the order passed in Chamber, only the “basic agreement” had been reached between the parties. The parties were aware of the terms & conditions which had been settled, and certain details were yet to be worked out by the parties in consultation with each other. The Court observed:
“12. … … … For a lawful agreement, the parties have to be ad idem on each and every aspect. The reference in the order to the basic agreement, details to be prepared in consultation with chartered accountants and advocates shows that the parties were till then not ad idem. Though a mere reference to a formal contract will not prevent a binding bargain between the parties, I find that in the present case, the parties did not intend to be bound until a formal application under Order 23 Rule 3 CPC was signed. For this reason also no valid agreement can be said to have come into existence. In fact in the present case making, signing and filing of an application under Order 23 Rule 3 CPC was made a condition of the proposed settlement and if the application is not approved and signed, there is no concluded contract. Lord Cairns said in Rassier v. Miller [3 A.C 1124] “If you find not an unqualified acceptance subject to the condition that an agreement is to be prepared and agreed upon between the parties, and until that condition is fulfilled, no contract is to arise then you cannot find a concluded contract.””
(emphasis supplied)
54. The Court also considered the issue whether the plaintiff was entitled to a judgment/decree on admission contained in the recorded terms. The Court rejected the plaintiffs' argument in this regard by observing:
“14. … … … At the outset, it would be highly inequitable and unjust to do by way of admissions what cannot be done under Order 23 Rule 3, CPC. Under the CPC as amended in 2002, a duty has been cast upon the Court to explore the possibility of settlement and alternate means of adjudication of disputes and controversies between the parties under Section 89, CPC.
Several offers and counter offers may be exchanged between the parties during such parleys held by the Court. When under the law, what transpires in such parleys is not enforceable, the same cannot also constitute an admission to entitle the parties to apply for judgment on admissions. If the parties are permitted to seek orders/judgments on what is contained in the orders of the Court made during the said process of settlement/conciliation, the same will seriously hinder the settlement attempts by the Courts. The parties would be loathe to give offers and counter offers lest the same are held against them in the event of the compromise attempts failing. Section 81 of the Arbitration and Conciliation Act, 1996 also prohibits the parties from relying upon or introducing as evidence in arbitral or judicial proceedings views expressed or suggestions made by the other party in respect of possible settlement of the dispute or admission made by the party in the course of conciliation proceedings. The Courts ought not to allow such a procedure which would be contrary to the spirit of introduction of section 89 in the cpc in the year 2002 and which will negate the same.”
(emphasis supplied)
55. The Court also noticed that the defendant had agreed to make payment, not in admission of any liability but “to finish the litigation”. Ms. Singh submits that in the present case as well, the defendant had filed the affidavit with a view to put an end to the litigation between the parties, as is expressly recorded in the said affidavit, and not because the defendant admits the claim of the plaintiff unconditionally.
56. Ms. Singh submits that the present suit has been structured as a suit for infringement of a registered design of the plaintiff in its TUBORG beer bottle, and the plaintiff has also sought the relief of infringement of the registered trade mark in the label mark, and passing off in the same suit. She submits that a composite suit for the said reliefs is not maintainable, as held by the Full Bench of this Court in its decision dated 15.05.2013 in Mohan Lal, Proprietor of Mourya Industries v. Sona Paint & Hardwares, 2013 (55) PTC 61 (Del.)(FB). The Full Bench formulated three questions to be determined by it in the said decision. The third issue formulated by the Full Bench was:
“III. Whether the conception of passing off as available under the Trade Marks can be joined with the action under the Designs Act when the same is mutually inconsistent with that of remedy under the Designs Act, 2000?”
57. The Full Bench in its majority view held that since the cause of action for bringing a suit for infringement of a registered design is different from the cause of action on which a claim of passing off is premised, two separate suits would have to be filed by the aggrieved plaintiff; though, if filed at the same time, or in close proximity, they may be tried together as there may be some aspects which may be common. Specific reference has been made to paragraphs 24.3 and 25 of the majority view of the Full Bench, which read as follows:
“24.3 Thus, the cause of action in the infringement suit under the Designs Act could be different from that which obtained in a passing off action. The fundamental edifice of a suit for infringement under the Designs Act would be the claim of monopoly based on its registration, which is premised on uniqueness, newness and originality of the design. Whereas, the action for passing off is founded on the use of the mark in the trade for sale of goods and/or for offering service; the generation of reputation and goodwill as a consequences of the same; the association of the mark to the goods sold or services offered by the plaintiff and the misrepresentation sought to be created by the defendant by use of the plaintiff's mark or a mark which is deceptively similar, so as to portray that the goods sold or the services offered by him originate or have their source in the plaintiff. It is trite to say that different causes of action cannot be combined in one suit [See Dabur India Limited v. K.R Industries (2008) 10 SCC 595 @ page 607 paragraph 34].
25. Having regard to the nature of the two actions, in our opinion, the two actions cannot be combined. Though as indicated, at the beginning of discussion of this issue if the two actions are instituted in close proximity of each other the court could for the sake of convenience try them together, though as separate causes, provided it has jurisdiction in the matter.”
58. Ms. Singh further submits that the plaintiff was also conscious of this position and, consequently, has preferred another civil suit alleging passing off and seeking permanent injunction, delivery, rendition of accounts, etc. being C.S(O.S) No. 3076/2015. In paragraph 4 of the said plaint, the plaintiff has itself disclosed the filing of the present suit. The averment made by the plaintiff in paragraph 4 of the plaint in the said suit reads as follows:
“4. Plaintiff has already field a composite suit for piracy of its registered design, infringement of trade mark and passing off in trade dress before this Hon'ble Court being CS(OS) No. 1485 of 2015 and the same is pending adjudication. In the said suit, Plaintiff did not plead design passing off in view of the decision passed by the Full Bench of the Hon'ble High Court of Delhi in Micolube India Limited v. Rakesh Kumar trading as Saurabh Industries [CS(OS) No. 1446: 2013 (55) PTC 1 (Del)]. In view of the decision in Micolube (supra) the Plaintiff has filed the present Suit separately for passing off including design passing off.”
59. Thus, Ms. Singh submits that the present suit should be treated as confined to the issue of design infringement of the plaintiff's beer bottle TUBORG, since the other suit raises the other issues, including of trade mark infringement and trade dress passing off. Ms. Singh submits that while examining the issue of design infringement, the test to be applied is of a knowledgeable person, who knows the field, and not that of an unwary customer. She submits that design resides in the shape of the bottle de hors the label. Therefore, the bottle of the plaintiff de hors the label, would have to be compared with the bottle of the defendant de hors the label, to determine whether the registered design of the plaintiff has been infringed. She submits that, even the defendant had obtained registration of its design for its bottle during the pendency of the suit. She submits that when the defendant's bottle is viewed from different angles and compared with the plaintiff's bottle, marked dissimilarity are visible between the two.
60. The comparison of the designs of the plaintiff's and the defendant's bottle, filed by the defendant, is as follows:
61. On the aspect of comparison of the design registration of the plaintiff and of the defendant, the defendants have relied upon the following differences in the two designs:
SR NoDifference (as per the drawing)HUNTERTUBORG1.Body surface for label space188.08mm157.8mm2.Base width76+1.5 mm75.8 +1.5 mm3.Bottom Cavity3.5mm4mm4.Radius at the bottom9257.35.Curve at lower part from bottom30mm29.1mm6.Label usage Height132.30mm120.5mm7.Body Dia in the middle72+1.5mm71.8 + 1.5 mm8.Height from bottom to Shoulder Radius167.5mm168.5mm9.Radius at Shoulder404110.EmbossingHUNTER (distinctive difference)TUBORG11.Embossing ThiknessEngraving raised 0.50 mm max on both sideEngraved 0.4mm max at both side12.Engraving logoThe logo (bird) & Company's Name (SOM) engraved 0.50 max on backsideNil13.Label NotchOn side at the back to lockNil14.Neck bottom width dia49mm45mm15.Neck finishC.E.T.I.E.26H 12.6Not shown16.Total Height282 + 2 mmNot shown17.Neck profileSplender, longer & more conicalShorter18.GroovingDifferent arch and name embossedStraight grooving19.Engraving at bottom“Som Distillers & Breweries Ltd”.Not shown.
62. Ms. Singh submits that the defendant's brand of beer, namely, HUNTER is a very well established brand which was introduced in 1995. Since it is well accepted in the market, there was no reason for the defendant to make any attempt to copy the plaintiff's design in its bottle, or the lable or get up used for packaging and marketing TUBORG beer. She submits that after more than 15 years of defendant's launch of beer HUNTER, sometime in August 2011 the defendant started working on adoption of a new design and get up for its HUNTER beer bottle. In this regard, attention has been drawn to an email communication dated 18.08.2011 from one Rohit Bindal of purpolefocus.com-one of the entities being considered to, inter alia, revamp the packaging in respect of HUNTER beer. Other emails and communications have also been placed on record, including a “Contact Report: Session 8” prepared by Harish Bijoor Consultants, Bhopal India, inter alia, in relation to “Hunter Relaunch”. The same was received by the defendant on 26.08.2011 While the defendant was still holding consultations with one of the designers/consultants, on 30.03.2012 the plaintiff obtained registration of its design in its beer bottle in question. Thus, the submission is that even prior to the launch of its beer bottle in question by the plaintiff, the defendant was already engaged in consultations with experts in the field to revamp its own beer bottle.
63. Reference is also made to the email communication dated 12.01.2012 sent by the defendant to a consultant-one Mr. Michael at claessensinternational.com in relation to the designing of the HUNTER beer bottle and its labels. On the same line is the email dated 30.07.2012 received from the consultant Claessens International containing their proposal for undertaking the designing of the new HUNTER beer bottle. The defendant also held consultations with other consultants, such as Widecanvas and IPSOS. On 25.05.2012, the defendant had sent a email communication to one Vidya Sen-a consultant, inter alia, stating:
“Among beer, our flagship brand is HUNTER Super Strong Beer. We are planning to revamp its packaging and positioning but before this we want to know the current brand perception to move ahead carefully.
In order to get a clear & actual insight for our brand “HUNTER”, we are planning to have a research/survey on the following methodology:—
a. Conjoint analysis: This will help us know how people value different attributes for their beer purchase
b. Followed by VALS framework for psychographic segmentation.
c. VALS will be followed by cluster forming
d. Then will come Perception Mapping vis a vis other brands considered in the research.
Do let me know how your expertise will help us in moving forward”.
(emphasis supplied)
64. Another consultant Ascentaz also made a proposal in relation to the HUNTER brand of the defendant. In this respect, the defendant has placed on record the email dated 07.12.2012, wherein the said consultant, inter alia, stated:
“Perceptual Mapping of Brand Hunter Beer in M.P
We will work out a research methodology and short term contract for this based on the following brief as given by you and discussed with you:—
a. You need an input for Packaging redesign by 21 days for which this research result is a vital input.
b. We suggest that a qualitative research is done within this time period.
c. The qualitative research will cover, Gwalior, Bhopal/Jabalpur and Indore. It will focus on Males, SEC, A, B, C aged 18 to 35
d. The results will be shared with you in 21 days from date of signing off of short term contract by us.
e. Then we can create the brief for the Packaging Design agency and help monitor the design work along with you.
f. Once a set of designs is done, we need to test the proposed design layouts, quantitatively with at least 200 potential customers. This will take a few weeks.
g. Based on the quantitative study the final design layout may be chosen/modified.”
(emphasis supplied)
65. Similarly, another consultant JTW sent a email communication offering its services on 22.01.2013, inter alia, stating as follows:
“Thanks for sharing the brief and the earlier communication done. Our understanding of this project is as follow:
1. There are three parts to the project.
a. Basic primary research to be done in couple of key markets to understand key strengths and weakness of the brand by interacting with couple of retailers and consumers.
b. New packaging and positioning line to be developed for bottles, cans and carton.
c. Communication collaterals like, brand campaign including press, outdoor, shop signage, posters, banners, danglers, merchandise, etc (detailed scope of work will be fleshed out together).
Given the time constraints of Feb 15 as cut off for packaging, we would need to depend on you for research inputs. We would like to concentrate significant time on packaging job. We can do this in two days-we can share a questionnaire which can be administered by your team and the inputs are wired back to us. Or you can, based on your experience share a detailed understanding of the brand (we can have a detailed call for the same)”.
(emphasis supplied)
66. In February 2013, the defendant finally commissioned Lowe Lintas to revamp HUNTER bottle and the label. In this regard, reference is made to several emails, including the email dated 07.02.2013 sent by the defendant to the representatives of the consultant Lowe Lintas. Ms. Singh submits that after a great deal of exchange of thoughts and ideas, and several meetings between the defendant and its consultant, eventually, HUNTER beer bottle with its present bottle design and lable were created. Almost two years were spent by the defendant in considering several design options to zero-in on a new bottle design and the label, and in its fine tuning.
67. The defendant has also placed on record the communications exchanged with Lowe Lintas undertaken in the process of designing its bottles and labels. In this regard, reference may be made to the email communication of 20.08.2013, whereby Lowe Lintas sent to the defendant the power point presentation of the revised labels pasted on green bottles. The print out of the power point presentation itself has also been filed on record. The said power point presentation contains several options offered by the consultant. This is followed by another email communication of 26.08.2013 sent by the consultant to the defendant. The consultant stated that they had a bottle shape recommendation, which would be sent to the defendant. On 30.08.2013, the consultant forwarded its recommendations for the bottle design. This email communication from the consultant Lowe Lintas reads as follows:
“Please find our recommendations for the bottle design.
We have rendered the new label on some of the recommended designs as well so that you get a sense of how they would like finally.
Some of the criteria we had kept in mind are-the grip, the style, the simplicity, the uniqueness and the feasibility/ease of making them.
I hope you will like them.
Let us know your views”.
(emphasis supplied)
68. On 01.10.2013, the consultant sent the revised labels pasted on the shortlisted bottle shapes. The power point presentation containing several options designed by the consultant has also been placed on record. On 27.11.2013, the consultant sent another email communication including the modifications made by them in consultation with the defendant. In the feedback given by the defendant to the consultant, the defendant, inter alia, stated:
“The oval shaped label has been liked by the client right now, which will be pasted on an engraved shape in the bottle. But since oval is a common shape it leaves room for other manufacturers to use the bottle. We will have to make a label which has a unique design which has something coming out of the oval”.
69. Similarly, emails were sent by the consultant in relation to modifications suggested in the bottle groove and label options, as a result of consultation between the parties on 24.12.2013, 09.01.2014, 27.02.2014, 19.03.2014, 15.10.2014 and so on. Eventually, the design finalized by the defendant in consultation with the designer/consultant was sought to be registered by making a design registration application on 28.11.2014 Between December 2014 and January 2015, the defendant placed orders for manufacture and supply of 60 lacs new bottle on the basis of the design created by the consultant. The defendant has also placed on record several invoices and delivery notes evidencing the purchase of bottles in April and May 2015. Once the bottles were supplied, the defendant launched its HUNTER brand of beer in the new bottle design and the label in the States of Delhi and Madhya Pradesh in April 2015.
70. Thus, the submission of Ms. Singh is that the bottle design and label adopted by the defendant is the result of a process of evolution premised on the creativity of the consultant and the preference and feedback received from the defendant, who also actively participated in the said process. She submits that in this process neither the consultant, nor the defendant were influenced by, or driven with the objective of copying either the plaintiff's bottle design, or the label or the overall get up of the plaintiff's beer bottle TUBORG.
71. Ms. Singh also places reliance on the certificate issued by the defendant's consultant Lowe Lintas certifying that the defendant had appointed them in February 2013 to design the bottle and label for their brand HUNTER. The designs developed were conceptualized by Lowe Lintas based on the feedback gathered from the defendant. The designs are true and original to the best of their collective knowledge and experience. The consultant also confirmed the receipt of Rs. 18,33,943/- towards their fee out of the total project fee of Rs. 28,11,247/- for packaging and communication campaign of HUNTER.
72. The defendant has also placed on record the label approval for the HUNTER label in the various States such as Chhattisgarh, Andhra Pradesh, Himachal Pradesh, Uttarakand and Orissa. Ms. Singh submits that each label approval costs lakhs of rupees and if the use of the same is injuncted, the defendant would lose all the money invested to obtain approval of its lable in several states.
73. Ms. Singh submits that from the communication exchanged with Lowe Lintas, it would be seen that the criteria that was kept in mind by the defendant and its consultant while designing the beer bottle shape, were aspects such as grip, simplicity, uniqueness and feasibility. Several colour options were considered and label shapes were also considered. The defendants added ‘wings’ to the labels, to differentiate the same from standard oval labels. The communications would show that initially the design of the bottle had concave surface. However, the same was discarded after testing, due to wrinkles being formed on the labels when affixed to the belly of the bottle.
74. She further submits that the features claimed by the plaintiff to be distinctive and unique in their bottle design are present in most bottles used in the trade. She submits that a beer bottle is coloured green/brown on account of its functionality/utility, and no monopoly can be claimed by the plaintiff in respect of the same. The purpose is to prevent direct light from falling on the beer content in the bottle so as to prevent its deterioration. In this regard, she has referred to a print out placed on record containing pictures of about 20 beer bottles in green colour, including that of the plaintiff and the defendant. These contain pictures of beer bottles of other popular brands such as Heineken, Kingfisher and Stella Artois.
75. She submits that the pull-of caps used by the plaintiff are also common to trade in beverage industry, including in respect of beer bottles. The defendant has placed on record photographs of several bottles used by other brand owners for their beverages, including beer, which show the use of pull-of caps by the manufacturers. These include beer bottles of the brand Kingfisher, Kamenitza and Miller Highlife. Ms. Singh points out that the plaintiff has no proprietary right in respect of use of pull of caps as the United States Patent Office had granted a patent in respect of pull off caps in the year 1984 to a Swedish inventor. Thus, the plaintiff has no proprietary right in the use of pull off caps, and cannot seek an injunction against the defendant's use of the said feature.
76. She submits that the oval and circular shape of labels with insignia is also common to trade. In this regard, reference is made to the print out of several labels used in the beer industry which are in circular and oval shape, such as Amstel, Guinness, Bavaria, Yuengling Lager, Belhaven St. Andrews, New Castle Brown Ale etc. The insignia can be prominently seen in labels of Tiger, Joker I.P.A and Everards Sunchaser, apart from the labels of the plaintiff and the defendant. The label of the defendant has ‘wings’ on the two sides, which also appear in the label of Kingfisher, Kingdom and Everards Sunchaser.
77. Ms. Singh submits that the making of grooves on the bottles are a common practice in the trade. In this regard, reference is made to the print out of pictures of several bottles of beer manufacturers such as Redd's, Tanqueray, Cascade, Budweiser, Staropramen, Perla, Ursus, A. Le Coq, Hebckoe, Bavaria. The defendant has placed on record the pictures of the said bottles in support of its submission.
78. Mr. Singh submits that on a comparison of the labels used by the plaintiff and the defendant, it would be seen that they are markedly different. The label of the plaintiff is used and affixed at an angle. The insignia, thus, appears at an angle. Even the placement/printing of the plaintiff's mark TUBORG is at an angle. However, the defendant's mark is not placed or printed at an angle. The insignia used by the defendant is also markly different from that of the plaintiff. The two marks-of the plaintiff and the defendant, namely, TUBORG and HUNTER are boldly and prominently printed in different fonts, and different colour background in the respective lables. The red colour used by the defendant for HUNTER is very prominent, and there is no red colour used by the defendant in its label. Whereas the defendant's label has wings specially designed by the defendant's consultant in consultation with the defendant, the plaintiff's label is circular with an insignia. The plaintiff prints the words “export quality” on the upper part of the label, and “premium beer” on the lower part of the said label, as opposed to the print of ‘genuine quality’ and ‘strong’ on its label by the defendant.
79. Ms. Singh submits that the crown placed on the top of the label of the plaintiff is also not new to the trade. In this regard, reference is made to the label of Corona Extra (Mexico), Il Sud In Tavola (Italy), Case Riglio (Italy), Bienvenue Noble Femme, Audacieuse Et Sage, Templars Birra Artigianale (Italy), A. Le Coq etc. which appear as follows:
80. In response to the submissions of Mr. Chandra, with respect to the alleged infringement of the plaintiff's trademark in the label, Ms. Singh has submitted that the registration of the plaintiff's label grants protection qua the entire label, as such, and its registration cannot be relied upon to seek protection in respect of each and every aspect which has gone into the making of the label individually. In this regard, she has placed reliance on Section 17 of the Trade Marks Act, 1999, which reads as follows:
“17. Effect of registration of parts of a mark.- (1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.
(2) Notwithstanding anything contained in sub-section (1), when a trade mark-
(a) contains any part-
(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character,
the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.”
(emphasis supplied)
81. Ms. Singh has placed reliance on ITC Limited v. Philip Morris Products SA 166 (2010) DLT 177. In this case, the claim of infringement made by plaintiff in respect of its welcome group mark/logo by the defendant, was rejected. The Court in the course of its decision, inter alia, observed as follows:
“49. … … … As noted in the previous part of the judgment, the plaintiffs' mark is not a “stand alone” mark; it is used with the words WELCOMGROUP, or the name of the resort or service.
Moreover, the plaintiffs' mark is part of the overall marks and devices which are used in relation to each hotel, restaurant, resort or service it offers, to the consumer. The defendants claim that the impugned mark is used only for a special festive pack, i.e Diwali. The plaintiff's mark resembles a “W” but clearly a “Namaste” is discernable. All the defendant's previous marks resemble “M” (perhaps depicting MARLBORO). Considering the overall marks or logos, without cataloging minutely the similarities or dissimilarities, this Court discerns no “identity” or “similarity” in the overall presentation of the two. This conclusion is further fortified for the reason that the plaintiff's mark, in relation to hospitality industry, is a stylized logo, which has to be juxtaposed with another mark, which, the materials on record prima facie suggest, has its own distinctive market. The case law in India, on dilution - mostly pertaining to the situation existing prior to Section 29 (4) has hinged round comparison of competing word marks, which have their peculiarities. In the case of logos and other marks, the application of the “identity” or “similarity” test has to result in a conclusion that the rival marks bear a very close resemblance, seen from an overall perspective. It is, therefore, concluded, that prima facie the two trademarks are neither identical, nor similar to each other. This prima facie conclusion would also govern the plaintiff's copyright claim, because the W-NAMASTE of the dissimilarity between that logo or mark and the tilting “flame” logo of the defendants. The latter mark is quite different, and has its own artistic elements.”
(emphasis supplied)
82. Ms. Singh has also sought to place reliance on the judgment of this Court in Kellogg Company v. Pravin Kumar Bhadabhai. 1996 PTC (16). The plaintiff/appellant sought an injunction against the defendant/respondent in respect of its carton used for selling cornflakes. The carton of the plaintiff was described as “KELLOGG'S CORNFLAKES”. The defendant was selling its cornflakes in a carton more or less similar in size but with a title ‘AIMS ARISTO CORN FLAKES’ which was placed similarly as the plaintiff's words, “KELLOGG'S CORNFLAKES”. The plaintiff alleged likelihood of confusion amongst the consumers in respect of the two products. The learned Single Judge denied relief to the plaintiff and, consequently, the plaintiff preferred an appeal. The Division Bench in para 9 of this decision observed as follows:
“9. It is true that the appellant has referred to certain similarities in the size and shape of the carton, there being a square on the left top with word ‘KELLOGG'S CORN FLAKE'S; the words L and A being joined, border being red and green and a red band running round in the top horizontally. It is true that these similarities were not set out in the order. But in our prima facie view, the prominent display of the words ‘Kellogg's’ in bold red letters in white background inside the square on the left-top appellant's carton cannot go unnoticed by any buyer. We have to understand the learned Judge's words “trade dress of the plaintiff is entirely different”, in that light, prima facie.”
83. The Division Bench considered the decision of the House of Lords delivered by Lords Halsbury LC in Schewappers Ltd. v. Gibbens (1905) 22 RPC-a decision dealing with a claim for injunction, founded on adoption of similar trade dress, and, inter alia, observed:
“19. In the present case, in spite of any other close resembleness in the cartons, the name ‘AIMS’ written prominently on the respondents carton would, in our view, prima facie, as in case before Lord Halsbury show that there was no intention on the part of the defendant to play fraud by misrepresenting his goods as the goods of the appellant. In that very case, Lord Halsbury emphasized the need to see the whole description on the goods as one whole and not the individual features in isolation. He said:
“Inasmuch as you and certainly not to impute fraud without proof, you are not to suggest that people are fradulently committing some commercial trick without sufficient evidence, and I cannot conceive here how anybody could gravely argue that the one thing could be mistaken for the other by anybody who looked as it.
The whole question is these cases is whether the thing - taken in its entirety, looking at the whole thing, is such that in the ordinary course of things a person with reasonable apprehension and with proper eyesight would be deceived.”
(emphasis supplied)
84. The appeal of the plaintiff/appellant was accordingly dismissed. The defendant has also relied upon Vidarbha Distillers… v. Vidarbha Bottlers Pvt. Ltd.…. 2005 PTC (31) 427; Ruston & Hornsby Ltd. v. Zamindara Engineering Co.†. (1969) 2 SCC 727; and Societe des Produits Nestle S.A v. Cadbury UK Limited (2016) EWHC 50 (Ch) and London Taxi Company v. (1) Frazer Nash Research Limited (ii) Ecotive Limited 2016 EWHC 52 (Ch) in respect of the same submission.
85. She has also sought to place reliance on United Biotech Pvt. Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd. 2012 (50) PTC 433 (Del.)(DB) in support of her submission that label marks are to be taken as a whole and no separate right can be claimed in respect of any one matter which forms part of the registered label mark.
86. Ms. Singh has also referred to an order dated 10.11.2003 passed by the Division Bench in FAO(OS) 347/2003 to submit that the Division Bench, while entertaining the appeal against the judgment of the learned Single Judge in Anchor Health & Beauty Care Pvt. Ltd. v. Colgate Palmolive Co. decided on 29.10.2003 (which is relied upon by the plaintiff), by way of an interim order permitted the appellant to manufacture and sell tooth powder in the container having a colour combination with a blue band till the disposal of the appeal. Thus, the order of the learned Single Judge in the said case relied upon by the plaintiff, has no force.
87. Ms. Singh submits that the defendant is the largest standalone brewery in terms of volume in Central India, and is not a fly by night operator. Its brand Hunter has been popular since 1995. In 2013-14 itself, the sales of the defendant under the brand Hunter were to the tune of Rs. 58.25 crores. The defendant has been able to show its bonafide efforts to create a new bottle design and label. The defendant has invested about Rs. 30 lacs to create the new bottle design and label, and spent about Rs. 7 crores for purchase of bottles with the new design. The plaintiff cannot seek monopoly over functional aspects such as the colour of the bottle - the purpose of which is to prevent decomposition of alcohol due to sunlight; the use of pull of caps-which has been used by several manufacturers since 1970s, and; the grooving on the bottle itself-which is also common to trade. The defendant has got its label approved from the excise department of several States such as New Delhi, Orissa, Pondicherry, Kerala, Madhya Pradesh etc at heavy costs. The grant of injunction against the defendant would mean that the huge investment of about Rs. 7 cores in acquiring the Hunter brand bottles would go down the drain. She submits that as a practice in the industry, the beer bottles are recycled approximately 8-10 times, and the lifecycle of one batch of bottles is 4-5 years. She further submits that the plaintiff does not face competition from the defendant, also for the reason that the defendant sells its beer for Rs. 110 in Delhi, when compared to the plaintiff's beer which is sold for Rs. 90. Thus, there is a substantial price difference in the two brands - the defendant's brand being more expensive. She submits that the defendant would suffer irreparable injury and damages in case an injunction were to be granted in favour of the plaintiff and against the defendant.
88. Ms. Singh submits that the intentions of the plaintiff are not bonafide in filing the present suit. The plaintiff is the major market player in the beer industry. The multinational manufacturers of beer have taken over the Indian industry and the defendant is one of the very few Indian established manufacturers of beer, supplying Indian product in the market. The intention of the plaintiff is to eliminate competition being faced from an indigenous company. The defendant also claims that the plaintiff is pressurizing the bottle manufacturers not to manufacture bottles for the defendant. The plaintiff enjoys a dominant position and the same is being exploited by them to stifle competition. The present action by the plaintiff is also an attempt to achieve that objective.
89. On the aspect of design infringement, Ms. Singh places reliance on Gramophone Co. v. Magazine Holder Company, 1911 RPC 221. In this case, the House of Lords considered the issue whether the defendant had infringed the registered design of the plaintiff. The plaintiff had a registered design in a box or cabinet-for its shape and configuration, and brought an action against the defendants who had made another cabinet, also oblong in shape as that of the plaintiff, and also having wooden legs with the top opening like a lid and the front opening doors, disclosing inside a shelf and pigeon-hole arrangement somewhat similar to that of the plaintiff. The House of Lords, firstly, rejected the claim of the plaintiff of there being any novelty in the design of the plaintiff itself. That apart, the Court also rejected the plaintiff's claim for infringement of its design. Lord Loreburn LC held:
“I also finding, judging by the eye, that the defendants' design is not an imitation of the plaintiffs. It is a different combination of familiar contrivances. Upon this part of the case I agree with Mr. Justice Warrington and Lord Justice Buckley. If the suggested novelty lies in the detailed arrangements of the parts, quite a small change in the arrangements make a real difference.”
90. This view was concurred by the Earl of Halsbury, who held that for a registered design to be infringed “… … it must be the exact thing; and any difference, however trifling it may be or however unsubstantial, would nevertheless protect it from being made the monopoly of the particular designer who thought proper to take it”.
91. Lord Shaw, in his concurrent view commented on the aspect of novelty and originality of a design in the following words:
“My Lords, with regard to the novelty and originality of the design, I think that the duty of Court of Law is to protect an honest tradesman who has in the expertness and cleverness of his trade - such expertness and cleverness as distinguish a good tradesman from a bad tradesman - made an article of commerce; but it is only if it goes beyond that into the region - and not until it goes into the region - of novelty and originality that protection should be awarded …”.
92. Ms. Singh submits that in the present case, the design registration obtained by the plaintiff in respect of TUBORG beer bottle itself is suspect since, firstly, there is no novelty in the said design - inasmuch, as, the same is like any other bottle having the same basic features of a round base; a cylindrical body; a longish neck, and; proportionate round opening/mouth. She submits that, in any event, even if the peculiar indentations in the plaintiff's design are considered novel, original and creative enough to warrant design registration, unless the same design has been copied practically in its entirety, the same would not tantamount to infringement of the design as, even a small difference is capable of distinguishing the design of another. The differences in the design adopted by the plaintiff and that adopted by the defendant in respect of their respective beer bottles are far greater than being mere trifling or unsubstantial. Even if the difference had been trifling or unsubstantial, the same would not have amounted to infringement of the plaintiffs beer bottle design.
93. Ms. Singh has next placed reliance on Negretti & Zambra v. WF Stanley & Co., RPC (42) 358. In this case, the court was dealing with an action for infringement for registered design in respect of a stove thermometer. The plaintiffs thermometer had an inlet tube bent at a right angle and a projecting and inclined flat scale face, the novelty claimed being “the stove thermometer having the scale face A projecting and being inclined as shown”. The only substantial difference between the plaintiffs' design and the alleged infringement was that the defendants' thermometer had a V shaped scale face. The Chancery Division held that all the element in the plaintiffs' design (except the means for securing the thermometer to the stove) were old, and all that the plaintiffs had done, was to apply trade variants or trade adjustments well known and common for the purpose of making an instrument useful for the purpose for which it was intended. The fact that the plaintiff had produced an article of commerce, the utility of which had been demonstrated, was held to be wholly immaterial. It was held that the design of the plaintiff was not new or original. Having regard to the extreme slightness of the differences between the design of the plaintiff and the thermometers which had preceded it, the court held that there was sufficient distinction between the defendants' thermometer article and the plaintiffs' design to prevent the defendants' design to be an infringement of the plaintiffs' design. Thus, it was held that even if the plaintiffs design were held to be valid, the action should fail. In the course of its decision, the Chancery Division placed reliance on Gramophone (supra) and, in particular, on the proposition laid down in the said decision that in order to succeed in its claim of design infringement, the plaintiff must show that the article complained of is an exact reproduction of his design, and that any difference, howsoever ordinary or unsubstantial, will or may protect it from infringement. While comparing the two designs before it, the court observed:
“… The novelty claimed in the Certificate of Registration being the shape or configuration of the thermometer having the scale face projecting and being inclined as shown in the picture is a novelty which is not exactly or in fact reproduced in the defendant's instrument. The defendants have a perfectly common V-shaped fact to their scale plate, and that, having regard to the extreme slightness of the difference between this Design and the thermometers which have preceded it, if the Design be valid, is sufficient, in my judgment, to prevent the defendant's being an infringement ….”.
94. Ms. Singh also places reliance on Phillips v. Harbo Rubber Company, 37 RPC 433. In this case, the plaintiff had claimed design registration in respect of the surface pattern of rubber pads or plates for heels of boots and shoes. The defendant claimed that there was no novelty or originality in the plaintiffs' design. Alternatively, it was claimed that the defendants' design being different, the plaintiffs' registered design is not infringed. The trial court agreed with the defendants' submission that there was no substantial novelty or originality of the plaintiffs' combination of old parts. The appeal was dismissed by the court of appeal. The House of Lords held that a design cannot be rendered new or original merely by a change of mode of construction of an article. It was held that no design could be considered as new or original, unless it is distinguished from what previously existed, by something different from ordinary trade variants. In the course of its discussion, Lord Moulton observed that questions of the meaning of a design and of the fact of its infringement are matters to be judged by the eye. It is necessary to determine the question of infringement, and still more to determine the question of novelty or originality, that the eye should be of an instructed person i.e that he should know what was common trade knowledge and usage, in the class of articles to which the design applies. The introduction of ordinary trade variants into an old design cannot make it new and original. For example, if it is common practice to have spikes in the sole of running shoes, a man does not make a new and original design out of an old type of running shoe by putting spike into the soles. He observed:
“The working world, as well as the trade world, is entitled at its will to take, in all cases, its choice of ordinary trade variants for use in any particular instance, and no patent and no registration of a design can prevent an ordinary workman from using or not using trade knowledge of this kind”.
95. He further observed that it was the duty of the Court:
“to take special care that no design is to be counted a “new or original design”, unless it is distinguished from what previously existed by something essentially new or original which is different from ordinary trade variants which have long been common matters of taste or choice in the trade. It would be intolerable if a workman who made a coat (of ordinary cut) for a customer should be left in terror whether putting braid on the edges of the coat in the ordinary way so common a few years ago, or increasing the number of buttons or the like, would expose him for the next six years to an action for having infringed a registered design the nature of which the Legislature has purposely concealed from him. I am satisfied that the use of the words “new or original” in the Statute is intended to prevent this, and that the introduction or substitution of ordinary trade variants in a design is not only insufficient to make that design new or original, but that it does not even contribute to give it a new or original character. If it is not new or original without them, the presence of them cannot render it so.
Let me give an example taken from the Design which is the subject of this litigation. A portion of the raised edge is shown roughened in a way well known to the trade, and in common use for many years before the registration. If a customer preferred his soles or heels or any part of them thus roughened he could have them so. If he preferred them smooth, he could have them smooth. The matter was one of taste or caprice on the part of the maker or the customer. Accordingly, the doing it or not doing it cannot effect novelty or originality. The presence or absence of the roughening does not affect any other feature of the design. To quote a phrase which I used in a judgment delivered in this House in the case of Pugh v. Riley Cycle Company ((1914) 31 R. P. C 266, at p283)- which had the assent of the other members of your Lordships' House -“It is not an element of a combination, but merely an optional addition to the article made.” When this can be said of an element in a design which itself possesses no novelty, we may and should disregard it wholly in considering the novelty or originality of the design. I ought here to add that, if I did not take this view of the irrelevancy of the roughening shown in the Plaintiffs' Design, I should feel obliged to decide in favour of the Defendants on the issue of infringement, because the nature of the roughening in the Defendants' heel pieces-though probably equally old and equally well-known to the trade-is quite different from that which is shown in the registered Design and could not be understood to be indicated by it.”
96. The submission of Ms. Singh is that mere creation of a groove or indentations in the beer bottle by the plaintiff does not result in creation of a novel and original design, as indentations and grooves in bottles for beverages are well known and common to trade.
97. She also places reliance on Gaskell & Chambers Ltd. v. Measure Master Ltd., 1993 RPC 76. In this decision, the learned Judge set out the mechanism/test that a court would adopt to judge, for itself, the aspect of infringement of a registered design in the following words:
“The decision whether the registered design and the designs of the alleged infringements are substantially different is for the court and cannot be delegated to the opinions of the witnesses. It must be decided on a comparison of the features which appeal to, and are judged by, the eye. To do this, the court must adopt the mantle of a customer who is interested in the design of the articles in question as it is the eye of such an interested person, the interested addressee, which is relevant. To adopt that mantle it is often helpful to look at what was available before the priority date of the registered design as the eye of the interested addressee could be drawn to details if the design of the registered design only differs from the prior art by such details. However where a design differs radically from previous designs then the interested addressee's eye would be more likely to concentrate on and he would be more likely to remember the general form of the new design rather than the details.
It is settled law that the comparison must be made between the registered design and the alleged infringement side by side and also upon an assumption of “now and later”, namely upon the assumption that the two designs are compared side by side and thereafter the interested addressee goes away and comes back later to the alleged infringements. It is in that way that the Court can conclude which features of the design would in reality appeal to and be noticed by the eye and then decide whether the designs are or are not substantially different.”
98. Ms. Singh submits that this court should, therefore, consider the shape and configuration of the plaintiff's beer bottle, de hors the label and compare the same with other beer bottles which constitute prior art, as also with that of the defendant - without the label. The court should compare the features which appeal to it and which are judged solely by the eye on the competing bottles. She submits that if this exercise is carried out, it would be clear to the court that there is no novelty or originality in the plaintiff's claimed design and, in any event, there is no infringement of the plaintiff's registered design by the defendant, since the shape and configuration of the defendant's beer bottle is not identical in respect of features which the plaintiff claims to be novel in its own design.
99. Ms. Singh has also placed reliance on Repetition Woodwork Co. v. M Briggs, 41 RPC 449. In this decision, the plaintiff - a registered proprietor of design of a ‘combined press for neckties or the like and box to contain collars and other articles’, commenced an action for infringement of his design. The defendant's box differed in several respects. Firstly, the court held that there was no novelty or originality in the plaintiffs' design. The plaintiffs' design was merely a particular arrangement of old and well known things. The court further held that even if it were to be assumed that the plaintiff had a valid registration in respect of its design, there were six small differences between the defendant's articles and the plaintiffs' design. Since, an exact reproduction was necessary to constitute infringement, it was held that the defendant had not infringed the plaintiffs' registered design. The court relied on Gramophone (supra) in coming to its aforesaid conclusions. While holding that the defendant had not infringed the plaintiffs' design, the court held that “Although each one of these differences when taken separately may well be said not to be very substantial, yet when taken all together they cause the defendant's box, both when closed and when opened, to present an appearance substantially different from that of the plaintiffs design”.
100. Ms. Singh submits that several differences exist in the indentations and dimensions of the beer bottle of the plaintiff, when compared to that of the defendant, and when they are taken as a whole, they constitute substantial difference in the designs of the two bottles.
101. Ms. Singh has also placed reliance on a decision of the Calcutta High Court in Polar Industries Ltd. v. Usha International Ltd., 2000 (20) PTC 469 (Cal). The product in respect of which design infringement action was commenced by the plaintiff in this case was a table fan/portable fan. While making its claim for registration of its design of table fan, the plaintiff had claimed that “the novelty resides in the shape, configuration or ornamentation of the table fan”. The court held that this claim means that the novelty is claimed in the design as a whole. The court observed that an overall view of the registered design of the plaintiff-comprising of configuration, shape and ornamentation will have to be considered for the purpose of comparison. The component parts of the said registered design of the plaintiff could not be viewed in isolation, to determine as to what are its striking features. The court invoked the principal laid down in Gramophone (supra) while examining the question as to whether the design of the defendant-as applied to its portable fan, “is an obvious imitation” of the registered design of the plaintiff, when applied to its portable fan.
102. Ms. Singh has placed reliance on Dabur India Ltd. v. Rajesh Kumar, 2008 (37) PTC 227. The plaintiff claimed infringement of its registered design and its bottle used for marketing Dabur Amla Hair Oil. The plaintiff claimed to have a distinctive design-having semi circular shoulder with curvaceous back and front panel, converging taperly into each other in respect of its hair oil bottle. The plaintiff claimed that the shape and configuration of its bottle was unique, novel and original and was, accordingly, registered under the Designs Act. The plaintiff claimed that the green cap put over the bottle was also unique and was also registered under the Designs Act. The bottles were having embossing of the plaintiff's trademark “Dabur” at the bottom. The defendants were manufacturing plastic bottles-which were claimed to be imitation of bottle of the plaintiff, having embossing of “Dabur” trademark on the bottom, which were being sold by the defendant to counterfeiters of Dabur Amla Hair Oil. The defendant denied the plaintiff's claim, including its claim that the defendant's bottles were embossed with the trademark “Dabur” at the bottom or at any other place on its bottle. The court found the said averment of the plaintiff to be false. On a comparison of the bottles of the plaintiff and the defendant, the court observed as follows:
“Even otherwise, a look at the bottles of the plaintiff would show that the bottles being used by the plaintiff are common bottles being used by the several other companies for marketing their hair oil, fixers and liquid products. These bottles have similar shape as being used by different manufacturers of liquid products like JOLEN (Skin Satin Moisturizer), SEBSUN (Anti Dandruff Shampoo), Lever Ayush Hair Poshak Oil of HLL, Shivanand Amla Plus Hair Oil, Bajaj Amla Shikakai Hair Oil, Cantharidine Hair Oil, SIMAX Hair Fixer, Amla Hair Oil manufactured by Nimson and Aroma hair Strengthening Oil by VLCC. I have also seen photographs of different bottles of different manufacturers during the arguments. All these bottles had similar shape with slight variation in form and these bottles are in use much prior to the registration of the design of the plaintiff. A perusal of the design registration certificate of the plaintiff would show that plaintiff had not got any peculiar feature of the bottle registered as a design. The plaintiff has got the whole bottle registered as a design. A plastic bottle is not a new thing. Plastic bottles are being used by different manufacturers in different shapes including in the shape being used by the plaintiff. The plastic bottles used by the plaintiff is a very common shape and does not have any peculiar eye catching designing or shape. I also find there was a variation in the plaintiff's and defendant's bottles. The plaintiff's bottle from bottom till neck was having plain curved surface whereas there was one extra curve on each side of bottle of defendant running along the shoulders and neck of the bottle. The neck of the defendant's bottle is so wide that neck of plaintiff's bottle loosely goes into the mouth of the defendant's bottle. The circumference of defendant's bottle's neck is almost double than that of plaintiff's.”
(emphasis supplied)
103. Another decision of this court in Dabur India Ltd. v. Amit Jain passed in IA No. 1910 in CS(OS) No. 314/2007 was also relied upon. In that decision, the court had observed:
“I have seen the plastic bottles being used by the defendant as well plaintiff and the photographs of the other bottles which have been placed on record by the defendant. I find that the bottles which are being used by different manufacturers/companies for marketing their product like hair oil, fixer etc. have similar shape with little variations in the form. Some bottles have uniqueness of the form associated with the manufacturer while some bottles have no uniqueness. The bottle being used by the defendant is not of the same dimension of shape as that of the plaintiff neither it has logo of plaintiff with ‘DABUR’ on the bottom, as alleged. Neither the bottle got registered by the plaintiff under Design Act has any special unique feature which has been registered by the Registrar as a unique design. The registration certificate shows that what has been registered is bottle as a whole without specifying any distinctive feature of the bottle giving it a uniqueness of design. The Registrar has placed on the register of designs record photographs showing front elevation, top elevation and side elevations of the bottle and a photograph of the bottom. These photographs of the front, top and side elevations did not depict any special design or feature of the bottle. The shape of the bottle in which plaintiff is marketing its product is not something new. Similar shape bottles have been used and are being used by other manufacturers. Moreover, shape as a design has not been registered in favor of the plaintiff. It is well settled that when serious disputed question arises like prior publication of the design, lack of originality, trade variation etc. injunction will not follow as a matter of routine. From the perusal of the documents on record I consider that plaintiff has failed to show that the plastic bottle used by the defendant was prima facie violating/infringing the design of the plaintiff. Moreover, there is no substantial difference in the bottle of the plaintiff and the bottles being used earlier or registered earlier as design by other companies with different features.”
“In cases of design, the Court while granting interim injunction must keep in mind that the design must be validly registered and there must be some novelty and originality in the designs sought to be protected and it must not have been re published. No specific novelty has been mentioned by the plaintiff in the design of the bottle, neither any specific novelty has been mentioned in the registration certificate. The registration certificate only gives bottom view, top view and side view of the bottle. There is no specific dimensional ratio of the bottle given in the design as bottles are manufactured by most of the manufacturers for containing specific quantity of liquid by measurement. Normally these bottles are made 50 ml, 100 ml, 200 ml, etc. Since all the manufacturers manufacture bottles for such quantities, the bottles of same quantity are bound to have almost same height if they have same bottom circumference. Unless, plaintiff had any claim over specific ratios of the dimensions which were not preexisting, there can be no novelty in the bottle. Similar designs are being used by many leading companies from the time much before the registration of this design by the plaintiff. I, Therefore, consider that the plaintiff is not entitled for interim injunction. The application of the plaintiff is hereby dismissed.”
(emphasis supplied)
104. In the aforesaid circumstances, the court held that the plaintiff had not made out a strong prima facie case of design infringement. Consequently, the ex-parte order of injunction against the defendant was vacated.
105. Ms. Singh submits that in the present case as well, the design of the beer bottle of the plaintiff is common to trade. There is nothing new about the shape of the bottle which the plaintiff has adopted. Similar shape bottles are being used by other manufacturers of beverages and particularly beer. Ms. Singh has also tendered in Court an Article titled, “The Origins and Life of the Export Beer Bottle” by Bill Lockhart published by the Society for Historical Archeological in its May-June 2007 Issue, to submit that shape of the beer bottle-historically, has more or less remain the same and there is not much change in the same since then. She submits that beer bottles historically have been manufactured with a longish neck. She has also relied upon the designs of beer bottles depicted in the said article. The colour of the beer bottles - historically, have been green and brown. Some of the figures of beer bottles in this article are as follows:
106. The article also states:
“Apollinaris Bottles
…………These bottles were usually a light green (champagne green) in color, had steeply sloping shoulders, and were topped with “blob” finishes… … …
Because of their size, color and gently sloping shoulders, these are easily mistaken for champagne bottles.
x x x x x x x x x x
Returnable Beer Bottles and Transportation
In general, beer bottle development followed two different regional patterns in the United States. The Midwest, South and East Coast states tended toward three major beer bottles styles: Weiss Beer, Champagne Beer, and Select. Although these styles received some use in the West, the typical styles west of the Mississippi were export and Apollinaris bottles, mostly the export style. Another major difference between the two regions was the method of labelling. The eastern region maintained a heavy reliance on embossed bottles, while the West preferred paper labels. There were, of course, notable exceptions in both areas.
x x x x x x x x x x
The Export Beer Bottle
………..These bottles were usually amber in color, although some were made in green or a light blue. The earliest ones were produced in a post-bottom, two-piece mold, but some were made by the turn-mold process. By the mid-1870s, a few companies had begun embossing manufacturer's marks on the bases of the export bottles, but the practice did not become common until ca. 1880.”
107. Ms. Singh submits that when serious disputed question arise about the design, lack of originality, trade variants etc., injunction will not follow as a matter of routine. She submits that the plaintiff did not seek novelty in any specific aspect while claiming registration. No specific dimensional ratios of the bottle have been disclosed in the design. In any event the dimensions of the defendant HUNTER bottle are different. Thus, the plaintiff is not entitled to any protection of the said design. To the same effect is the decision of this court in S.K Industries Pvt. Ltd. v. Deepak Ghosh, 2010 (42) PTC 96.
108. Ms. Singh submits that it is well known that consumers of liquor constitute an informed class. She submits that, in fact, it was the case of the plaintiff itself in Carlsberg India Pvt. Ltd. v. Radico Khaitan Ltd., 2012 (49) PTC 54 that the Court held that “consumer of alcohol is an informed consumer and would not be misled, as claimed by Radico, not only for the reason that the two products are different but even for the reason that the price difference of the two products is substantial …”. She submits that the plaintiff cannot now be heard to say that consumers of beer would be misled on account of the design of the bottles of the plaintiff being, allegedly, same as that of the defendant, or even on account of similarity of the labels of the two parties.
109. Reliance is placed by Ms. Singh on Steelbird Hi-Tch India Ltd. v. S.P.S Gambhir, 2014 (58) PTC 428 (Del). In this case, the Court was considering the claim of the plaintiff to seek an interim injunction against the infringement of its registered design in respect of helmets. The learned Judge while dismissing the plaintiff's application referred to the view expressed by Buckley L.J on the question of quantum of novelty in Simmons v. Mathieson & Cold., 1911 (28) RPC 486 in the following words:
“In order to render valid the registration of a Design under the Patents and Designs Act, 1907, there must be novelty and originality, it must be a new or original design. To my mind, that means that there must be a mental conception expressed in a physical form which has not existed before, but has originated in the constructive brain of its proprietor and that must not be in a trivial or infinitesimal degree, but in some substantial degree.”
(emphasis supplied)
110. The Court proceeded to consider whether the plaintiff's design was new or original or different from what had been done before. The certificate itself was held not to throw any light since the claim of novelty was for the whole shape, configuration and surface pattern of the helmet. The learned Judge referred to Dover Ltd. v. Nurnberger Celluloidwaren Fabric Gebruder Wolff, 27 RPC 498, where Buckley L.J drew the distinction between “new” and “original”. The learned Single Judge by reference to this decision observed:
“18. …. ‘new’ is referred to a case where the shape or pattern was wholly new in itself and on the other hand ‘original’ to the case where it was old but new in its application to the particular subject matter. The word ‘original’, according to the learned Judge “contemplates that the person has originated something, that by the exercise of intellectual activity he has started an idea which had not occurred to anyone before, that a particular pattern or shape or ornament may be rendered applicable to the particular article to which he suggests that it shall be applied”.
19. It is rightly held in the cases decided that in the matter of novelty the eye is to be the ultimate test and the determination has to be on the normal ocular impression. In order to know its newness or originality it is necessary that a design identical with or even materially similar to the relevant design should not have been published or registered previously. A slight trivial or infinitesimal variation, from a pre-existing design will not qualify it for registration. Taking into account the nature of the article involved, the change introduced should be substantial. It is not necessary to justify registration that the whole of the design should be new, the newness may be confined to only a part of it but that part must be a significant one and it should be potent enough to impart to the whole design a distinct identity, unless registration is sought for the said part alone.”
(emphasis supplied)
111. The Court held:
“27. …. the addition of small feature here or there from the features of STUDDS and AIROH helmets' design would not make any difference which could only be called as routine type of trade variation as per demand of customers for their conveniences and advantages. Thus, prima facie I do not find the plaintiff's design being new or original and is not meant for protection …”.
Plaintiff's submissions in Rejoinder
112. In response to the submissions of Ms. Singh premised on Mohan Lal (supra), Mr. Chandra has submitted that the decision of the Full Bench is per incuriam, inasmuch, as, firstly, the statutory provision contained in Order 2 Rule 3 CPC has been overlooked, and the judgment of the Supreme Court in Dabur India Ltd. v. K.R Industries (2008) 10 SCC 595 has not been correctly appreciated by the Full Bench. Mr. Chandra points out that Order 2 Rule 3 CPC specifically provides for joinder of different causes of action in the same suit. It provides that the plaintiff “may unite in the same suit several causes of action against the same defendant, or the same defendants jointly; and any plaintiffs having causes of action in which they are jointly interested against the same defendant or the same defendants jointly may unite such causes of action in the same suit.” Thus, the causes of action in respect of the infringement of a registered design can be clubbed with the cause of action arising on account of the infringement of a registered trade mark, or cause of action relating to claim of passing off, since the parties are the same. He points out that in Mohan Lal (supra), the Full Bench observed that different causes of action cannot be combined in one suit and for that purpose places reliance on K.R Industries (supra), whereas, K.R Industries (supra) says just to the contrary. In this regard, he points out that the Supreme Court held that two causes of action may not be joined in the same suit, if the same Court does not have the territorial jurisdiction to deal with both of them. He has referred to para 19, 23, 24 and 34 of the said decision in K.R Industries (supra) which read as follows:
“19. The question which was posed by the learned Single Judge is as under:
“The next question, however, which is more important is whether the plaintiff can combine the two causes of action, one under the Copyright Act and the second under the Act of 1958 in a situation where this Court has the jurisdiction insofar as cause of action under the Copyright Act is concerned but has no territorial jurisdiction to entertain the cause of action relating to the Act of 1958.”
Noticing the provisions of Order 2 Rules 2 and 3 of the Code of Civil Procedure enabling the plaintiff to combine more than one causes of action, it was opined that the said provisions relate to pecuniary jurisdiction. The said jurisdiction, however, can be exercised only in the event the court has otherwise jurisdiction in respect of the cause of action wherefor the action has been brought.
xxx xxx xxx xxx xxx xxx xxx xxx xxx xxx xxx xxx xxx xxx xxx
23. It was also noticed that in a given case the petition under the 1957 act or the 1958 act may be overlapping, holding: (Dhodha House case [(2006) 9 SCC 41], SCC pp. 53-54, para 44)
“44. … The territorial jurisdiction conferred upon the court in terms of the provisions of the Code of Civil Procedure indisputably shall apply to a suit or proceeding under the 1957 Act as also the 1958 Act. Sub-section (2) of Section 62 of the 1957 Act provides for an additional forum. Such additional forum was provided so as to enable the author to file a suit who may not otherwise be in a position to file a suit at different places where his copyright was violated. Parliament while enacting the Trade and Merchandise Marks Act in the year 1958 was aware of the provisions of the 1957 act. It still did not choose to make a similar provision therein. Such an omission may be held to be a conscious action on the part of Parliament. The intention of Parliament in not providing for an additional forum in relation to the violation of the 1958 Act is, therefore, clear and explicit.”
24. Noticing that whereas in Dhodha House [AIR 1998 All 43] the infringement complained of primarily was that of the 1958 Act and not under the 1957 Act, in Patel Field Marshal [AIR 1998 Del 225] the thrust was on the sale of products and/or advertisement by the appellant for registration of trade marks in the Trade Marks Journal and other local papers. The law was stated in the following terms: (Dhodha House case [(2006) 9 SCC 41], SCC p. 56, para 54)
“54. For the purpose of invoking the jurisdiction of a court only because two causes of action joined in terms of the provisions of the Code of Civil Procedure, the same would not mean that thereby the jurisdiction can be conferred upon a court which had jurisdiction to try only the suit in respect of one cause of action and not the other. Recourse to the additional forum, however, in a given case, may be taken if both the causes of action arise within the jurisdiction of the court which otherwise had the necessary jurisdiction to decide all the issues.”
(emphasis supplied)
xxx xxx xxx xxx xxx xxx xxx xxx xxx xxx xxx xxx xxx xxx xxx
34. What then would be meant by a composite suit? A composite suit would not entitle a court to entertain a suit in respect whereof it has no jurisdiction, territorial or otherwise.
Order 2 Rule 3 of the Code specifically states so and, thus, there is no reason as to why the same should be ignored. A composite suit within the provisions of the 1957 act as considered in Dhodha House [(2006) 9 SCC 41], therefore, would mean the suit which is founded on infringement of a copyright and wherein the incidental power of the court is required to be invoked. A plaintiff may seek a remedy which can otherwise be granted by the court. It was that aspect of the matter which had not been considered in Dhodha House [(2006) 9 SCC 41] but it never meant that two suits having different causes of action can be clubbed together as a composite suit.”
(emphasis supplied)
113. He, therefore, submits that the Full Bench did not correctly appreciate the conclusion drawn in para 34 of the above decision, and failed to appreciate that two causes of action cannot be clubbed in a composite suit, only where they do not arise within the jurisdiction of the same Court. He has also placed reliance on two other decisions of the Supreme Court in Paragon Rubber Industries v. Pragathi Rubber Mills 2014 (57) PTC 1; and Dhodha House v. S.K Maingi. (2006) 9 SCC 41, which are also considered in Dabur India Ltd. (supra). In Paragon Rubber Industries (supra), the Supreme Court takes notice of Dhodha House (supra), and observes:
“19. We see no conflict in the ratio of law laid down in the aforesaid two cases. In both the cases, it has been held that for the purpose of invoking the jurisdiction of the court in a composite suit, both the causes of action must arise within the jurisdiction of the court which otherwise had the necessary jurisdiction to decide all the issues. However, the jurisdiction cannot be conferred by joining two causes of action in the same suit when the court has jurisdiction to try the suit only in respect of one cause of action and not the other. In Dabur India (supra) the ratio in Dhodha House has been explained. In Dhodha House, the law was stated in the following terms:
“54. For the purpose of invoking the jurisdiction of a court only because two causes of action joined in terms of the provisions of the Code of Civil Procedure, the same would not mean that thereby the jurisdiction can be conferred upon a court which had jurisdiction to try only the suit in respect of one cause of action and not the other. Recourse to the additional forum, however, in a given case, may be taken if both the causes of action arise within the jurisdiction of the court which otherwise had the necessary jurisdiction to decide all the issues.
55. In this case we have not examined the question as to whether if a cause of action arises under the 1957 Act and the violation of the provisions of the Trade Marks Act is only incidental, a composite suit will lie or not, as such a question does not arise in this case.”
(emphasis supplied)
114. Mr. Chandra also places reliance on Indian Performing Rights Society Ltd. v. Sanjay Dalia, 2015 (63) PTC 1 SC in support of the same proposition.
115. Mr. Chandra has argued that if this Court is faced with decision of a Larger Bench of this Court on the one hand, and the decisions of the Supreme Court on the other hand, which hold otherwise, this Court is bound to follow the judgments of the Supreme Court and by doing so, this Court would not be committing any judicial impropriety.
116. Mr. Chandra has sought to place reliance on State of U.P v. Synthetics and Chemicals Ltd. (1991) 4 SCC 139 (hereinafter referred to as ‘Synthetics and Chemicals-2’) to submit that the Supreme Court held, as per incuriam, the observations made in the Constitution Bench judgment in Synthetics and Chemicals Ltd. v. State of U.P (1990) 1 SCC 109 (hereinafter referred to as ‘Synthetics and Chemicals-1’). Specific reference has been made to paragraphs 36, 39, 40, 41 and 42 of this decision in SCL-2, the relevant extracts whereof read as follows;
“36. ……. We are firmly of the view that the decision of this Court in Synthetics [(1990) 1 SCC 109] is not an authority for the proposition canvassed by the assessee in challenging the provision. This Court has not, and could not have, intended to say that the Price Control Orders made by the Central Government under the IDR Act imposed a fetter on the legislative power of the State under Entry 54 of List II to levy taxes on the sale or purchase of goods. The reference to sales tax in paragraph 86 of that judgment was merely accidental or per incuriam and has, therefore, no effect on the impugned levy.”
(emphasis supplied)
“39. But the problem has arisen due to the conclusion in the case of Synthetic and Chemicals [(1990) 1 SCC 109]. The question was if the State legislature could levy vend fee or excise duty on industrial alcohol. The bench answered the question in the negative as industrial alcohol being unfit for human consumption the State legislation was incompetent to levy any duty of excise either under Entry 51 or Entry 8 of List II of the Seventh Schedule. While doing so the bench recorded the conclusion extracted earlier. It was not preceded by any discussion. No reason or rationale could be found in the order. This gives rise to an important question if the conclusion is law declared under Article 141 of the Constitution or it is per incuriam and is liable to be ignored.
40. ‘Incuria’ literally means ‘carelessness’. In practice per incuriam appears to mean per ignoratium. English courts have developed this principle in relaxation of the rule of stare decisis. The ‘quotable in law’ is avoided and ignored if it is rendered, ‘in ignoratium of a statute or other binding authority’. (Young v. Bristol Aeroplane Co. Ltd. [(1944) 1 KB 718: (1944) 2 All ER 293]). Same has been accepted, approved and adopted by this Court while interpreting Article 141 of the Constitution which embodies the doctrine of precedents as a matter of law. In Jaisri Sahu v. Rajdewan Dubey [(1962) 2 SCR 558: AIR 1962 SC 83] this Court while pointing out the procedure to be followed when conflicting decisions are placed before a bench extracted a passage from Halsbury's Laws of England incorporating one of the exceptions when the decision of an appellate court is not binding.
41. Does this principle extend and apply to a conclusion of law, which was neither raised nor preceded by any consideration. In other words can such conclusions be considered as declaration of law? Here again the English courts and jurists have carved out an exception to the rule of precedents. It has been explained as rule of sub-silentio. “A decision passes sub-silentio, in the technical sense that has come to be attached to that phrase, when the particular point of law involved in the decision is not perceived by the court or present to its mind.” (Salmond on Jurisprudence 12 Edn., p. 153). In Lancaster Motor Company (London) Ltd. v. Bremith Ltd. [(1941) 1 KB 675, 677: (1941) 2 All ER 11] the Court did not feel bound by earlier decision as it was rendered ‘without any argument, without reference to the crucial words of the rule and without any citation of the authority’. It was approved by this Court in Municipal Corporation Of Delhi v. Gurnam Kaur .. [(1989) 1 SCC 101] The bench held that, ‘precedents sub-silentio and without argument are of no moment’. The courts thus have taken recourse to this principle for relieving from injustice perpetrated by unjust precedents. A decision which is not express and is not founded on reasons nor it proceeds on consideration of issue cannot be deemed to be a law declared to have a binding effect as is contemplated by Article 141. Uniformity and consistency are core of judicial discipline. But that which escapes in the judgment without any occasion is not ratio decidendi. In B. Shama Rao v. Union Territory Of Pondicherry [AIR 1967 SC 1480: (1967) 2 SCR 650: 20 STC 215] it was observed, ‘it is trite to say that a decision is binding not because of its conclusions but in regard to its ratio and the principles, laid down therein’. Any declaration or conclusion arrived without application of mind or preceded without any reason cannot be deemed to be declaration of law or authority of a general nature binding as a precedent. Restraint in dissenting or overruling is for sake of stability and uniformity but rigidity beyond reasonable limits is inimical to the growth of law.
42. Effort was made to support the conclusion, indirectly, by urging that the State having raised same objections by way of review petition and the same having been rejected it amounted impliedly as providing reason for conclusion. Law declared is not that can be culled out but that which is stated as law to be accepted and applied. A conclusion without reference to relevant provision of law is weaker than even casual observation. In the order of Brother Thommen, the extracts from the judgment of the Constitution Bench quoted in extenso demonstrate that the question of validity of levy of sales and purchase tax was neither in issue nor was it raised nor is there any discussion in the judgment except of course the stray argument advanced by the learned Attorney General to the following effect: (SCC p. 139, para 43)
“But alcohol not fit for human consumption are not luxuries and as such the State legislatures, according to Attorney General, will have no power to levy tax on such alcohol.”
Sales tax or purchase tax under Entry 54 is levied on sale or purchase of goods. It does not contemplate any distinction between luxury and necessity. Luxuries are separately taxable under Entry 62. But that has nothing to do with Entry 54. What prompted this submission is not clear. Neither there was any occasion nor there is any constitutional inhibition or statutory restriction under the legislative entry nor does the taxing statute make any distinction between luxuries and necessities for levying tax. In any case the bench did not examine it nor did it base its conclusions on it. In absence of any discussion or any argument the order was founded on a mistake of fact and, therefore, it could not be held to be law declared. The bench further was not apprised of earlier Constitution Bench decisions in Hoechst Chemicals v. State of Bihar [(1983) 4 SCC 45: 1983 SCC (Tax) 248: AIR 1983 SC 1019] and Ganga Sugar Mill v. State of U.P [(1980) 1 SCC 223: 1980 SCC (Tax) 90: (1980) 1 SCR 769] which specifically dealt with the legislative competence of levying sales tax in respect of any industry which had been declared to be of public importance.
Therefore, the conclusion of law by the Constitution Bench that no sales or purchase tax could be levied on industrial alcohol with utmost respect fell in both the exceptions, namely, rule of sub-silentio and being in per incuriam, to the binding authority of the precedents.”
(emphasis supplied)
117. He has also placed reliance on Subhash Chandra v. Delhi Subordinate Services Selection Board (2009) 15 SCC 458 wherein the Supreme Court held that it is now a well settled principle of law that a Division Bench-in case of conflict between a decision of a Division Bench of two judges and a decision of a Larger Bench, and in particular Constitution Bench, would be bound by the latter. (See Sardar Associates v. Punjab & Sind Bank (2009) 8 SCC 257).
118. Mr. Chandra submits that majority view in Mohan Lal (supra) is a result of the Hon'ble Judges ignoring to take into account the express provision contained in Order 2 Rule 3 CPC, as well as observations made in K.R Industries (supra) in the correct perspective. In this respect, he read para 100 from the aforesaid decision in Subhash Chandra (supra) which reads as follows:
100. In Black's Law Dictionary, 8 Edn., 2004, it is stated:
“There is at least one exception to the rule of stare decisis. I refer to judgments rendered per incuriam. A judgment per incuriam is one which has been rendered inadvertently. Two examples come to mind: first, where the Judge has forgotten to take account of a previous decision to which the doctrine of stare decisis applies. For all the care with which attorneys and Judges may comb the case law, errare humanum est, and sometimes a judgment which clarifies a point to be settled is somehow not indexed, and is forgotten. It is in cases such as these that a judgment rendered in contradiction to a previous judgment that should have been considered binding, and in ignorance of that judgment, with no mention of it, must be deemed rendered per incuriam; thus, it has no authority…. The same applies to judgments rendered in ignorance of legislation of which they should have taken account. For a judgment to be deemed per incuriam, that judgment must show that the legislation was not invoked.’ Louis-Philippe Pigeon, Drafting and Interpreting Legislation 60 (1988)
‘As a general rule the only cases in which decisions should be held to have been given per incuriam are those decisions given in ignorance or forgetfulness of some inconsistent statutory provision or of some authority binding on the court concerned, so that in such cases some features of the decision or some step in the reasoning on which it is based is found on that account to be demonstrably wrong. This definition is not necessarily exhaustive, but cases not strictly within it which can properly be held to have been decided per incuriam, must in our judgment, consistently with the stare decisis rule which is an essential part of our law, be of the rarest occurrence.’ Rupert Cross & J.W Harris, Precedent in English Law 149 (4 Edn., 1991)”
(emphasis supplied)
119. Mr. Chandra has also placed reliance on Chauharya Tripathi v. Life Insurance Corporation of India (2015) 7 SCC 263 to submit that a case is only an authority for what it actually decides, and not what logically follows therefrom.
120. In response to the submission of Ms. Singh with regard to the investment allegedly made by the defendant in the development of its own design; procurement of bottles with the infringing design, and; the obtaining of licenses from various States, Mr. Chandra submits that if the design adopted by the defendant is in infringement of the plaintiff's registered design for its beer bottles and if the plaintiff's trademark in its registered label is infringed and the overall get up of the plaintiff's beer bottle, or if there is passing off by the defendant on account of a confusing overall get up of the defendant's beer bottle, the extent of monetary investment incurred by the defendant is not a relevant consideration and would not prevent this Court from granting an injunction against the defendant. In this regard, he places reliance on Thermos Ltd. v. Alladdin Sales and Marketing Ltd., 2000 FSR June 402.
121. The submission of Ms. Singh that there are others in the market with similar beer bottle designs and with similar label or trade dress as adopted by the plaintiff in respect whereof the plaintiff has not initiated action, Mr. Chandra submits that the plaintiff is not expected to sue all small type of infringers who may not be affecting the plaintiff's business. In this regard, he places reliance on Pankaj Goel v. Dabur India Ltd., 2008 (38) Prakash Roadline Ltd…Plaintiffs; v. Prakash Parcel Service (P) Ltd…Defendant., PTC (suppl) (2) 177 (Del).
Defendant's submission in Sur-Rejoinder
122. To counter the submission of Mr. Chandra, that this Court should follow the decision of the Supreme Court in K.R Industries (supra) in preference to the judgment of the Full Court in Mohan Lal (supra), Ms. Singh has argued that the correct course of action for this Court to adopt would be to invite the attention of the Chief Justice, and request the matter for being placed for hearing before a Bench of larger quorum than the Bench whose decision has come up for consideration. In this regard, she has placed reliance on Central Board of Dawoodi Bohra Community v. State of Maharashtra (2005) 2 SCC 673.
Discussion
123. Having heard learned Senior Counsels at length and considered their submissions, at the outset, I must first deal with the submission of Ms. Singh premised on the judgment of the Full Bench in Mohan Lal (supra). The submission of Ms. Singh is that a composite suit for infringement of registered design and for infringement of trade mark and passing off would not lie. She submitted that, being mindful of this position, the plaintiff has already filed a separate suit for infringement of the registered trade mark and passing off and, consequently, the present suit should be confined to a consideration of the plaintiff's case with regard to the alleged infringement of the registered design, and nothing more.
124. The submissions of Mr. Chandra, raising a doubt with regard to the correctness of the decision of the Full Bench in Mohan Lal (supra) on the aspect of maintainability of a single suit in relation to the different causes of action, namely, infringement of registered design and infringement of a trade mark/passing off are indeed forceful. The Full Bench, in Mohan Lal (supra) in para 34 (iii) has observed as follows:
“34(iii) We are also of the view that a composite suit for infringement of a registered design and a passing off action would not lie. The Court could, however, try the suits together, if the two suits are filed in close proximity and/or it is of the view that there are aspects which are common to the two suits.
The discretion of the court in this matter would necessarily be paramount”.
125. It appears on a reading of the decision in Mohan Lal (supra) that Order 2 Rule 3 CPC may have escaped the attention of the Full Bench. There is also force in the submission of Mr. Chandra that the observations made in K.R Industries (supra) may not have been appreciated in the correct context. However, this Court cannot ignore and go contrary to a judgment of the Full Bench of this very Court.
126. Synthetics and Chemicals-2 is not apposite in the facts of the present case. This is for the reason that the observations made by the Supreme Court in the decision of Synthetics and Chemicals-1 were found to be “abrupt observation without a preceding discussion, and inconsistent with the reasoning adopted by this Court in earlier decisions from which no dissent was expressed on the point”. In this context, para 14 of the Synthetics and Chemicals-2 may be taken note of, which reads as follows:
14. We have extensively quoted from the judgment of the Constitution Bench in Synthetics & Chemicals Ltd. v. State of U.P [(1990) 1 SCC 109], with a view to showing that the court was concerned with only one question, and that was whether the States could levy excise duty or vend fee or transport fee and the like by recourse to Entry 51 or 8 in List II in respect of industrial alcohol. This Court held, as seen above, that the States had no such power under either entry in respect of non-potable or industrial alcohol. This Court did not deal with the taxing power of the State under Entry 54 of List II which deals with ‘taxes on the sale or purchase of goods other than newspapers, subject to the provisions of Entry 92-A of List I’. The power of the State to levy taxes on sale or purchase of goods under that entry was not the subject matter of discussion by this Court, although in paragraph 86 of the leading judgment of Sabyasachi Mukharji, J., as he then was, there is a reference to sales tax. He says: “The State may charge excise duty on potable alcohol and sales tax under Entry 52 of List II”. Entry 52 of List II is mentioned in connection with excise duty and sales tax, but neither of them falls under Entry 52. Reference to Entry 51 of List II ought to have been made if it was excise duty that the court had in mind. Entry 54 of List II would have been referred to, and not Entry 52, if the court had in mind sales tax. On the other hand, Entry 52 refers to “Taxes on the entry of goods into a local area for consumption, use or sale therein”. None had a case that this entry had any application to the fees or charges in question. The Court further says: (SCC p. 158, para 86)
“However, sales tax cannot be charged on industrial alcohol in the present case, because under the Ethyl Alcohol (Price Control) Orders sales tax cannot be charged by the State on industrial alcohol.”
That was an abrupt observation without a preceding discussion, and inconsistent with the reasoning adopted by this Court in earlier decisions from which no dissent was expressed on the point. Coming, as it does, immediately after a reference to Entry 52 of List II in connection with excise duty and sales tax when neither falls under that entry, the submission of the Advocate General that the observation regarding sales tax in para 86 of the judgment was per incuriam assumes great significance.
(emphasis supplied)
127. Similarly, in para 39 (in the concurrent judgment by Sahai, J.), the Supreme Court observed;
“………It was not preceded by any discussion. No reason or rationale could be found in the order. This gives rise to an important question if the conclusion is law declared under Article 141 of the Constitution or it is per incuriam and is liable to be ignored.”
128. In para 36 of the same decision, the Supreme Court held that the Synthetics and Chemicals-1 decision was not an authority for the proposition canvassed by the assessee in challenging the provision. In this context, the Supreme Court observed in Synthetics and Chemicals-2 that the reference to sales tax in para 86 of that judgment (in Synthetics and Chemicals-1) was merely accidental, or per incuriam and has, therefore, no effect on the impugned levy.
129. In para 41 of the Synthetics and Chemicals-2 decision, the Supreme Court noticed the rule of sub-silentio which has been quoted hereinabove. I have deliberately highlighted the relevant observation of the Supreme Court in Synthetics and Chemicals-2 only to emphasize that what was held as per incuriam vis-a-vis Synthetics and Chemicals-1, was not the issue arising; raised, or; considered by the Supreme Court in Synthetics and Chemicals-1.
130. However, the position is materially different in the present case. In Mohan Lal (supra), the Full Bench expressly set out the issues which were referred to it by the learned Single Judge. Issue No. 3 as referred to the Full Bench, reads as follows:
“Whether the conception of passing off as available under the Trade Marks can be joined with the action under the Designs Act when the same is mutually inconsistent with that of remedy under the Designs Act, 2000?”
131. Thus, the said issue was present to the mind of the Full Bench, and it was, accordingly, answered by the Full Bench after a discussion on the subject.
132. Reliance placed by Mr. Chandra on Subhash Chandra (supra) is misplaced for the reason that this was a case of conflict of opinion between a decision of a Division Bench of two Judges, and a decision of a larger Bench, and, in particular, Constitution Bench. The Supreme Court held that the Division Bench would be bound by the larger bench decision. The same is not the case in the present situation. Sitting singly, this Court cannot ignore the decision of the Full Bench.
133. Chauharya Tripathi (supra) is also not relevant for the reason that it merely invoked the principle that, “a case is only an authority for what it actually decides and not what logically follows from it”, as held in Quinn v. Leathem 1901 AC 495: (1900-03) All ER Rep 1 (HL). In Mohan Lal (supra), the Full Bench has expressly held that a composite suit for design infringement and passing off is not maintainable.
134. In Dawoodi Bohra (supra), the Supreme Court summed up the legal position on the subject as follows:
“12. Having carefully considered the submissions made by the learned Senior Counsel for the parties and having examined the law laid down by the Constitution Benches in the abovesaid decisions, we would like to sum up the legal position in the following terms:
(1) The law laid down by this Court in a decision delivered by a Bench of larger strength is binding on any subsequent Bench of lesser or coequal strength.
(2) [Ed.: Para 12(2) corrected vide Official Corrigendum No. F.3.Ed.B.J/21/2005 dated 3-3-2005.] A Bench of lesser quorum cannot disagree or dissent from the view of the law taken by a Bench of larger quorum. In case of doubt all that the Bench of lesser quorum can do is to invite the attention of the Chief Justice and request for the matter being placed for hearing before a Bench of larger quorum than the Bench whose decision has come up for consideration. It will be open only for a Bench of coequal strength to express an opinion doubting the correctness of the view taken by the earlier Bench of coequal strength, whereupon the matter may be placed for hearing before a Bench consisting of a quorum larger than the one which pronounced the decision laying down the law the correctness of which is doubted.
(3) [Ed.: Para 12(3) corrected vide Official Corrigendum No. F.3.Ed.B.J/7/2005 dated 17-1-2005.] The above rules are subject to two exceptions: (i) the abovesaid rules do not bind the discretion of the Chief Justice in whom vests the power of framing the roster and who can direct any particular matter to be placed for hearing before any particular Bench of any strength; and (ii) in spite of the rules laid down hereinabove, if the matter has already come up for hearing before a Bench of larger quorum and that Bench itself feels that the view of the law taken by a Bench of lesser quorum, which view is in doubt, needs correction or reconsideration then by way of exception (and not as a rule) and for reasons given by it, it may proceed to hear the case and examine the correctness of the previous decision in question dispensing with the need of a specific reference or the order of the Chief Justice constituting the Bench and such listing. Such was the situation in Raghubir Singh [(1989) 2 SCC 754] and Hansoli Devi [(2002) 7 SCC 273].”
(emphasis supplied)
135. Thus, even though, this Court finds a lot of merit in the submissions of Mr. Chandra with regard to the conclusion drawn by the Full Bench in Mohan Lal (supra) in para 34(iii), I am bound by the said decision and, at this stage, it would not be appropriate for me to treat the present as a composite suit in respect of infringement of the copyright in the registered design of the plaintiff, and for infringement of the trade mark/passing off of the plaintiff's registered trade mark in its label and for passing off its trade dress.
136. As noticed above, the plaintiff being conscious of the aforesaid decision in Mohan Lal (supra), has preferred a separate suit in respect of the latter reliefs. Thus, I have no option but to limit the consideration in the present case to the aspect of infringement of the copyright in the registered design claimed by the plaintiff in its beer bottle in question.
137. Turning now to the submission of Mr. Chandra that the defendant has conceded and acknowledged the validity of the plaintiff's copyright in its design in the beer bottle in question and, therefore, to that extent nothing survives to be determined in the present suit and an injunction should follow, I find merit in the submission of the defendant that there is no unqualified and unconditional admission by the defendant of validity of the registration granted by the plaintiff in its design for its beer bottle. I have set out herein above the proceedings which were undertaken before the Court from 21.05.2015 onwards. It appears that on the said date, the defendant, on its own, made a statement through counsel that the HUNTER beer in the new bottle shall not be launched in any new territory and the case was adjourned to 25.05.2015 The defendant was bound by the said statement on 25.05.2015 and the matter was adjourned to 26.05.2015, and further adjourned to 27.05.2015 On the said date, the defendant tendered an affidavit in Court which was taken on record and the case adjourned to 28.05.2015
138. Mr. Chandra has sought to place strong reliance on the said affidavit of the defendant. The said affidavit has been sworn by one Ashok Bhandari, the Deputy Manager of the defendant. In para 2 of the said affidavit, he states that “the defendant states that in order to bring an end to the litigation between the parties, the defendant is not contesting the registered design of the plaintiff and is filing the present affidavit so as to address the concern of the plaintiff with respect to the impugned bottle design of the defendant, which according to the plaintiff, is similar to its registered design of “Tuborg” beer”.
(emphasis supplied)
139. Ashok Bhandari then proceeds to provide particulars of the number of bottles already utilized for the purpose of packaging its beer. He states that no new impugned bottles other than the total of 56,23,305 bottles already purchased by the defendant, shall be introduced in the market. He undertook that no new order for the impugned bottles shall be placed by the defendant in future. He, inter alia, stated that the defendant shall, within a period of four months, adopt a new unique design for “Hunter” beer.
140. What emerges from this affidavit, firstly, is that the said affidavit was filed by the defendant “in order to bring an end to the litigation between the parties”. The defendant did not contest the registered design of the plaintiff on account of the aforesaid consideration. The defendant clearly and consciously did not concede that the impugned bottle design of the defendant was similar to the registered design of the plaintiff's bottle. This is clear from the use of the expression “… … which according to the plaintiff, is similar to its registered design of “Tuborg” beer”. When the contents of the said affidavit are read in conjunction with the order dated 28.05.2015 recorded by the predecessor of this Court, the position clearly emerges that the affidavit filed by the defendant was a step taken by the defendant towards an overall settlement of the disputes with the plaintiff. However, the final settlement had yet to be arrived at. Pertinently, the affidavit of Ashok Bhandari dated 27.05.2015 does not talk about the period during which it shall continue to use its beer bottles which allegedly infringed the plaintiff's registered design in its beer bottles for TUBORG beer. The statement contained in the affidavit of Ashok Bhandari that the “defendant shall within a period of four months from today adopt a new unique design for Hunter beer” cannot be taken to mean that the defendant had impliedly also undertaken not to use its impugned bottle design after a period of four months from the date of the affidavit i.e 27.05.2015 His statement that the defendant shall not introduce its bottles with the impugned design in the market, other than the 56,23,305 bottles already purchased by the defendant conveys that the defendant intended to use the said bottles for marketing its beer.
141. Pertinently, the same affidavit also stated that the defendant shall produce the said new design before this Court around the first week of July 2015, meaning thereby that the same shall be placed before the Court so that the plaintiff and this Court may have a look at it, and the objection to the proposed new bottle design, if any, may also be examined and redressed. The said process was clearly open ended, and there could be no certainty as to when the objections, if any, to the proposed new design produced by the defendant would be taken by the Court and disposed of, one way or another. Thus, the assurance given by the defendant that it shall, within a period of four months, adopt a new unique design for HUNTER beer does not take within its scope the assurance that its beer bottles with the impugned design shall be discontinued after a period of four months from 27.05.2015 The aforesaid position also becomes clear from a reading of the order dated 28.05.2015 The said order, inter alia, records:
“Today, Mr. Sandeep Sethi states that the period of four months is too short for the defendant to recover the investment that it has made in purchase of the bottles in question.
Mr. Amit Sibal, learned senior counsel for the plaintiff, on instructions, states that his client is willing to allow the defendant to sell beer in the impugned bottles in Madhya Pradesh for four months, but only for a period of one month in Delhi.
The period during which the defendant can sell the beer in the impugned bottles shall be decided on the next date of hearing. List on 3 July, 2015.
Order dasti”.
142. The affidavit dated 27.05.2015 was filed by Ashok Bhandari in the context of the hearing which had been undertaken before the Court prior to the said date. If the clear and definite understanding of the parties had been that the defendant shall undertake to discontinue the use of its bottles with the impugned design within a period of four months, and if in that context the affidavit had been filed by Ashok Bhandari on 27.05.2015, there was nothing to prevent the Court from enforcing the said understanding on 28.05.2015 when the defendant claimed that the period of four months was too short for the defendant to recover the investment that it had made for purchase of the bottles in question. Clearly, there was no meeting of the mind between the parties as to for what length of time the defendant shall continue to use its existing stock of bottles with the impugned design. It is for this reason that the Court recorded the disagreement of the parties on the aforesaid aspect in the order dated 28.05.2015, and adjourned the case to 03.07.2015 by observing that the period during which the defendant can sell the beer in the impugned bottles shall be decided on the next date of hearing.
143. I find force in the submission of Ms. Singh that, firstly, there was no admission made by the defendant qua the claim of validity of the registered design of the plaintiff in its beer bottle in question and, secondly, that the affidavit dated 27.05.2015 of Ashok Bhandari merely contained a proposal of the defendant - made with a view to finally resolve all the disputes in the suit between the parties. The said offer of the defendant could, at the highest, be considered as a “without prejudice” offer. Pertinently, on the aforesaid aspect, the submission of the plaintiff has also been rejected by the Supreme Court while dealing with SLP (C) No. 34251/2015 in its order dated 14.12.2015 The Supreme Court has deliberately mentioned the orders dated 28.05.2015, 03.07.2015, 14.08.2015, 21.08.2015 and 05.11.2015 passed in the proceedings between the parties, and rejected the same submission of the plaintiff by observing that the said contention was not correct.
144. The decision of this Court in Surender Kaur (supra) is clearly attracted in the facts of the present case. All that could be said on a perusal of the affidavit dated 27.05.2015 of Ashok Bhandari is that there was an offer made by the defendant to the effect, that the defendant shall change the impugned design of its beer bottles; that the defendant shall not place orders for procurement of any further bottles with the impugned design; that the defendant shall come up with a new design of its beer bottles within a period of four months. The time line disclosed in the last of the aforesaid representations made by the defendant can only be described as possible time line for introduction of a new bottle design by the defendant, for the reason that the new bottle design was undertaken to be produced before the Court “around the first week of July 2015”. Thus, as to when the said proposed new bottle design would be produced was uncertain. It was also uncertain whether the new proposed bottle design produced by the defendant would meet the approval of the plaintiff and of the Court. The defendant may have assumed that the entire process may get concluded within a period of four months from 27.05.2015 i.e by 25.09.2015 On a reading of the affidavit dated 27.05.2015 of Ashok Bhandari, it certainly cannot be said that there was a definite date given by the defendant by when it would certainly introduce the new bottle design for its beer in the market. There was also no definite date given by the defendant as to when it would discontinue the use of the existing stock of the impugned bottle design, if at all!
145. I agree with the submission of Ms. Singh that in the aforesaid context, the defendant could not be bound down, and could not be said to have unconditionally conceded to or accepted the claim of validity made by the plaintiff in respect of its registered design for the beer bottle in question. The plaintiff cannot pick up a few words and sentences from the affidavit of Ashok Bhandari dated 27.05.2015, while ignoring the other parts of the same affidavit and the plaintiff cannot seek to introduce unstated obligations of the defendant - by implication, in the said affidavit, according to its own understanding or convenience. Thus, the submission of Mr. Chandra that the issue of validity of the plaintiff's claim for copyright in its design for the TUBORG beer bottle stands concluded in favour of the plaintiff has no merit, and is rejected.
146. This leads me to consider, prima facie, the claim of validity of the plaintiff in respect of its registered design in its TUBORG beer bottle.
147. Section 2(d) of the Designs Act defines the expression ‘Design’. Design means only the feature of shape, configuration, pattern, ornament or composition of lines or colours applied to any article - whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined which, in the finished article, appeal to and are judged solely by the eye.
148. In Castrol India Limited (supra) decided by the Calcutta High Court - relied upon by Mr. Chandra, Ruma Pal, J., as her ladyship then was, sets out the sequence of the obligations of the Court in considering a claim for infringement of design. The first inquiry that the Court would undertake would be - whether protection is claimed in respect of a design, or mode of manufacture. In the present case, protection is being sought in respect of a design of a bottle, and no protection is sought in respect of mode of manufacture of the bottle, which aspect would fall within the realm of, and may be protected by the law of patent.
149. The Court should then consider whether the design is, in fact, novel and if so, to what extent. In this respect, the learned Judge referred to Section 43 of the Designs Act, 1991 (which is similar (though not identical) to Section 5 of the Designs Act, 2000) which provides that, registration under the Act can be made in respect of a new and original design previously not published in India. Normally, designs which are purely functional cannot be protected or form the basis for an action for infringement. A functional shape and configuration, which is dictated solely by the functionality, is not registerable under the Design Act as a design. The learned Judge referred to the observation of Lord Reid, J. in Amp. Inc. v. Utilux Pty. Ltd. 1972 RPC 103 wherein the learned Lord observed, “……….and the words ‘judged solely by the eye’ must be intended to exclude cases where a customer might choose an article of that shape not because he thought that the shape made it more useful to him.”
150. The next question to be considered is whether there is sufficient resemblance between the alleged infringing copy and the plaintiff's registered design to found an action for infringement under Section 22 of the Act of 2000. In this regard, learned Judge cautioned that, not every resemblance in respect of the same article would be actionable at the instance of the registered proprietor of the design. She referred to Best Products Ltd. v. F.W Woolworth & Company Ltd. (1964) IX RPC 215, wherein it was held that it was necessary to break the article down into parts for descriptive purposes, but in the ultimate result it is the article as a totality that must be compared and contrasted with the features of shape and configuration of the claimed infringed design taken as a whole. Apart from over all resemblance in the design, the Court is required to see, in particular, as to whether the essential part or the basis of the petitioner's claim for novelty forms part of the allegedly infringing copy.
151. The next task of the Court is to judge the similarity or difference through the eye alone, and where the article in respect of which the design is applied is itself the object of purchase - through the eye of the purchaser. She referred to the observation of Russel L.J in Benchairs Ltd. v. Chair Center Ltd. 1974 RPC 429 wherein the learned Lords observed:
“As we see it, our task is to look at these two chairs, to observe their similarities and differences, to see them together and separately, and to bear in mind that in the end the question whether or not the design of the defendant's chair is substantially different from that of the plaintiff is to be answered by consideration of the respective design as a whole: and apparently, though we do not think it affects our present decision, viewed as though through the eyes of a consumer or customer.”
152. Her ladyship further observed that in judging the article solely by the eye, the Court must see whether the defendant's version is an obvious or a fraudulent imitation. Imitation does not mean duplication. The copy complained of, need not be an exact replica. The expressions, ‘obvious’ and ‘fraudulent’ as explained in Dunlop Rubber Co. Ltd. v. Golf Ball Developments Ltd. (1931) XLVIII RPC 268 were also taken into consideration. In Dunlop Rubber Co. Ltd. (supra), the Court held:
“…… ‘obvious’ means something which, as soon as you look at it, strikes one at once as being so like the original design, the registered design, as to be almost unmistakable. I think an obvious imitation is something which is very close to the original design, the resemblance to the original design being immediately apparent to the eye looking at the two.”
“………..fraudulent imitation seems to me to be an imitation which is based upon, and deliberately based upon, the registered design and is an imitation which may be less apparent than an obvious imitation; that is to say, you may have a more subtle distinction between the registered design and a fraudulent imitation and yet the fraudulent imitation, although it is different in some respects from the original, and in respects which render it not obviously an imitation may yet be an imitation, imitation perceptible when the two designs are closely scanned and accordingly an infringement.”
153. Thus, to see whether the imitation is obvious, the same should strike at once on a visual comparison of the article containing the registered design and the article containing the design which is said to be infringing the registered design. The impugned design should be very close to the original design - the resemblance of the original design being immediately apparent to the eye while looking at the two designs.
154. Fraudulent imitation is one which is deliberately based upon the registered design. The imitation may be less apparent than an obvious imitation. There may be subtle distinction between the registered design and the alleged fraudulent imitation, and yet the fraudulent imitation although different in some respects from the original, renders it as a perceptible imitation when the two designs are closely scanned.
155. Her Ladyship rejected the argument of the respondent that the purchase (in that case of Motor Oil) would be dictated by the brand of the oil, and not by the particular shape of the container in which the oil is sold (in that case the design infringement related to the shape of the container). She observed that:
“……..The fact that the design may not influence a purchaser of oil does not mean that the design plays no part the marketing of the product. But if the argument of the respondent is taken to be correct there would be no scope for the Court assessing the matter from the point of view of the purchaser or customer.”
156. She also observed that in cases of infringement of design, the question is not whether the similarly has, or is likely to cause confusion or deception of a purchaser, but whether the similarity is an imitation of the registered design - sufficient to destroy the exclusive right to user of the registered proprietor despite the fact that no confusion is or may be caused as to the source of the goods. Otherwise, every registered design could be imitated with impunity merely by changing the colour of the two products, thus obviating any confusion.
157. Before comparing the registered design of the plaintiff in its beer bottle, with the design adopted by the defendant in respect of its beer bottle, it would be useful to also take into consideration the tests laid down and applied by the courts in the decisions relied upon by the defendants. The leading case relied upon by the defendant is that of Gramophone (supra). While rejecting the claim of the plaintiff for design infringement, the House of Lords (Lord Loreburn LC) held that the product of the defendant - a cabinet, “is a different combination of familiar contrivances”. He further observed that if the suggested novelty lies in the detailed arrangements of the parts, quite a small change in the arrangements make a real difference. The Earl of Halsbury in the same case observed that:
“……….it must be the exact thing; and or any difference, however trifling it may be or however unsubstantial, would nevertheless protect it from being made the monopoly of the particular designer who thought proper to take it.”
158. Lord Shaw, in his opinion, emphasized the aspect of novelty and originality which alone would render the design entitled to protection.
159. In Negretti (supra), the claim of the plaintiff for design protection was rejected by holding that the plaintiff's design was not new or original. There was only a slight difference between the design of the plaintiff and the design of thermometer which had preceded it. The Court also held that there was sufficient distinction between the defendant thermometer and the design of the plaintiff.
160. In Phillips (supra), the House of Lords rejected the claim of the plaintiff for a novel design in respect of rubber pads and plates for heels of boots and shoes on the ground that the same was not new or original, since it is not distinguishable from what previously existed. It was merely an ordinary trade variant. The House of Lords further held that to determine the question of infringement of a registered design, the eye should be of any instructed person i.e he should know what was common trade knowledge and usage in the class of articles to which the design applies.
161. In Gaskell & Chambers Ltd. (supra), the Court held that the issue of validity of registered design should be decided on a comparison and features which appeal to and are judged by the eye. It is often helpful to look at what was available before the priority date of the registered design as the eye of the interested addressee could be drawn to details, only if the registered design differs from the prior art by such details. It is only when the new design differs radically from the previous designs, that the interested person's eye would more likely concentrate on and more likely remember the general form of the new design rather than the details.
162. In Repetition Woodwork Co. (supra), the comparison of the designs was in respect of combined press for neckties - or the like, and box to contain collars and other articles. The Court held that although each one of the differences in the two designs when taken separately may well be said to be not very substantial, yet when taken all together they cause the defendant's box, both when closed and when opened, to present an appearance substantially different from that of the plaintiff's design. Thus, apart from comparison of the different parts of the article in question, an overall view is also required to be taken.
163. In Polar Industries Ltd. (supra) since the design registration claim by the plaintiff pertained to the entire article as a whole, namely, a table fan/portable fan, the Court held that overall view of the registered designs of the plaintiff - comprising of configuration, shape and ornamentation will have to be considered for the purpose of comparison. The component parts of the registered design of the plaintiff could not be viewed in isolation to determine as to what are its striking features.
164. In Rajesh Kumar (supra), the claim for design infringement made by the plaintiff was rejected by the Court by observing that the hair oil bottles of the plaintiff are common bottles being used by several other companies for marketing their hair oil and other products. These bottles have similar shape with slight variation in form which have pre-existed the registration of design of the plaintiff. In that case, the design registration obtained by the plaintiff was not in respect of any peculiar feature of the bottle registered as a design. The whole bottle was got registered as a design. The Court held that the plastic bottle got registered as a design by the plaintiff was a very common shape, and that it did not have any peculiar eye catching designing or shape. To the same effect is the decision in Amit Jain (supra). In Amit Jain (supra), the Court held that unless the plaintiff had any claim qua specific ratios of the dimensions which were not pre-existing, there could be no novelty in the bottle.
165. In Steelbird Hi-Tch India Ltd. (supra), the aspect of novelty and originality was explained to mean that there must be a mental conception expressed in a physical form which has not existed before, but has originated in the constructive brain of its proprietor and that it must not be trivial or infinitesimal in degree, but in some substantial degree.
166. In Dover Ltd. (supra), the Court held that a slight trivial or infinitesimal variation from the pre-existing design will not qualify for its registration, and that the change introduced should be substantial. At the same time, the newness may be confined to only a part of the design of the article-but that part must be a significant one and it should be potent enough to impart to the whole design a distinct identity, unless registration is sought for the said part alone.
167. I now turn to apply the aforesaid tests to examine, prima-facie, the plaintiff's claim of holding a valid design in its beer bottle, and if it does, whether the same stands, prima facie, infringed by the defendant.
168. The design certificate, apart from the cover sheet, contains the following four sheets in respect of the design of the bottle registered by the plaintiff:
169. The plaintiff is claiming protection in respect of its bottle design, and its claim does not involve registration of a process of manufacturer (the first step undertaken by the Court in Castrol India Ltd. (supra)). Thus, the plaintiff claims infringement of the copyright in its registered design, and no claim involving infringement of a patent is alleged. The design registration is in respect of the entire beer bottle, and not in respect of a part of it. The statement of novelty contained in the design registration certificate reads:
“The novelty resides in the shape and configuration of “BOTTLE” as illustrated.”
170. The bottle illustrated in the design registration certificate, by itself, is not a new or novel item. The shape of the bottle, itself, is like any other bottle existing in the prior art. Like most other bottles, it has a round base; a cylindrical body; a proportionate narrowing neck and; a mouth, which could be capped after the bottle is filled with whatever contents one may choose to fill in the bottle. Thus, the only aspect that needs consideration is whether there is any novelty in the indentations/grooves found in the plaintiff's bottle which are seen from the design registration certificate reproduced hereinabove. It would also need consideration, whether the indentations are functional - and, therefore, not entitled to protection; whether they appeal to the eye - i.e when adjudged solely by the eye. If the indentations are functional, they would not be entitled to design protection.
171. When the bottle of the plaintiff is viewed, the indentations made on it appear to be novel, but the question is, whether they appeal to the eye. Can it be said that the plaintiff's bottle stands out, on account of the indentations/grooving?
172. In my view, the answer is ‘No’. Though the indentations/grooving may be novel inasmuch, as, the bottles of other manufacturers may not have identical indentations/grooving, the idea of adopting a bottle design with indentation/grooving is not new in itself, since there are scores of other bottles being used by other vendors of beer and other beverages, and other products, which too have indentations/groovings.
173. In that sense, the indentations/groovings on the plaintiff's bottle in question can be described as “a different combination of familiar contrivances”. (See Gramophone (supra), where Lord Loreburn LC used the aforesaid expression while comparing the defendant's product - a cabinet, with that of the plaintiffs). The indentations on the plaintiff's bottle - and for that matter even on the defendant's bottle, appear to serve the only purpose of providing the groove, wherein the printed label is to be affixed. The grooving serves as a frame within which the label is affixed. In that sense, the indentations can also be described as functional. The grooves serve the purpose of accommodating, within the grooves, the label containing the mark of the manufacturer/plaintiff.
174. It appears to me that the claim of the plaintiff is similar to the one made by the plaintiff in Rajesh Kumar (supra) and Amit Jain (supra). Like in Rajesh Kumar (supra) - where the claim for design infringement was made in respect of a hair oil bottle, it appears that the plaintiff's beer bottle has similar shape (as those available in the prior art), with only slight variation in form. The plaintiff has not claimed novelty and appeal to the eye in respect of any peculiar feature of its bottle registration. The whole bottle has been got registered as a design, and the shape of the bottle as a whole, undoubtedly, exists in the prior art.
175. Thus, prima-facie, it appears to me that the design registration obtained by the plaintiff in respect of its beer bottle itself may not be worthy of protection, as it may be liable to be revoked.
176. The next question that arises for consideration is that even if the plaintiff's design registration is presumed to be valid, i.e that the indentations/grooves found on the plaintiff's beer bottle are presumed to be not only novel, but also appealing to the eye and at the same time, as not being functional, whether the defendant's bottle design prima-facie infringes the plaintiff's registered design.
177. Once again, I, prima-facie, find that the plaintiff has not been able to make out a case of design infringement. When one compares the beer bottle of the plaintiff as a whole with the beer bottle of the defendant - as a whole, they both appear to be like any other ordinary beer and other beverage bottles available in the market. The defendant has placed on record photographs of several other beer and other beverages brands having similar shapes of bottles, such as Bud Weiser, Staropramel, Podkovan, Ursus, Glenfiddseh, Goldur, Praha, etc. It needs consideration whether the indentations/grooves in the plaintiff's bottle design, and those found in the defendant's bottle, when compared, lead to the prima-facie conclusion that the defendant's indentations/grooves are a fraudulent and obvious imitation of the plaintiff's bottle design. The two bottles when viewed from different angles, by placing them side by side appear as follows:
178. The above comparison has been taken from the documents filed by the defendant at pages 651 and 652 of the record. I may observe that the plaintiff has not filed a similar comparison. The plaintiff has, however, filed the comparison of photographs taken from the same angles, and they have been taken note of in paragraph 3 above.
179. As held in Castrol India Ltd. (supra), not every resemblance would be actionable at the instance of the registered proprietor of the design. At the same time, imitation does not mean duplication. The copy complained of need not be an exact replica. While comparing, it is necessary to break down the article into parts for descriptive purposes, but in the ultimate result, it is the article in totality, i.e as a whole, that must be compared and contrasted with the features of shape and configuration of the design allegedly infringed, taken as a whole. The Court “is required to see as to whether the essential part or the basis of the plaintiff's claim for novelty forms part of the alleged infringing copy”.
180. I proceed to compare the two bottles from different angles. The front: top view of the plaintiff's bottle has the name “TUBORG” inscribed. The indentations/grooving shows a larger asymmetrical curvature in the groove at the top. The groove/indentation on the plaintiff's bottle is parabolic in shape at the top. In contrast, the groove/indentation in the defendant's bottle shows a curved groove with lesser radius, and the same appear to be a symmetrical shape. The groove/indentation on the defendant's bottle appears more circular. The grooving of the bottom of the bottle is, no doubt, similar but the said design appears to carry no novelty or appeal to the eye at all. Moreover, it does not, prima facie, form an essential part or the basis of the plaintiff's claim for novelty in its design. The indentation of the words “TUBORG” on the plaintiff's bottle, and the word “HUNTER” on the defendant's bottle, are obviously not similar. When both the bottles are rolled by 90°, there is nothing of significance noticed in either of the two designs, and clearly there is no novelty or appeal to the eye in the shape of the grooves/indentations as seen on the side of the bottle.
181. This brings us to the rear view of the bottle. Whereas, in the plaintiff's bottle the groove/indentations is a plain horizontal line, in the defendant's bottle grooving/indentation is the same as found in the front view. The additional features found on the defendant's bottle in its rear view are the grooving/indentation of the word “SOM” written vertically, and in the crown of the circular indentation/groove at the top, the logo of the defendant is engraved. Once again, the plaintiff's and defendant's brands “TUBORG” and “HUNTER” are also engraved, just as the bottle begins to taper into the neck portion. The grooving at the bottom of the two bottles, no doubt, appear to be similar. To that extent, it appears that the defendant's drawing at serial no. 4 is not completely accurate. For this purpose, one may refer to the photographic comparison provided by the plaintiff in respect of the indentations at the bottom which is as follows:
182. Once again, in my view, the said indentations are extremely insignificant and non-essential part of the entire bottle design. It is not something that appeals to the eye, and when an overall view of the design of the two bottles is taken, the same pales into insignificance. When the two design shapes of the bottles in question are compared, in my view, it cannot be said that there is an obvious or a fraudulent imitation. The defendant's bottle design does not appear to be an obvious imitation, because the so-called similarity in the shapes of the two bottles - when they are compared part by part, and thereafter as a whole, do not lead to the immediate and striking impression that the defendant's bottle design is so close to the original design of the plaintiff's bottle, that the similarity is immediately apparent to the eye.
183. It also cannot be said that the so-called imitation is based upon the plaintiff's registered design, or that the distinction between the two bottle designs is found to be subtle in nature, upon close examination and comparison of the two bottle designs. The adoption of its bottle design by the defendant also appears to be bona fide and not fraudulent in view of the detailed and protracted correspondence that the defendant has had with several designers, as already taken note of hereinabove while recording the defendant's submissions. From the correspondence place on record, prima-facie, it appears that the idea of revamping the Hunter Beer bottle design and packaging was present to the mind of the defendant as early as in August 2011, if not earlier, as would be apparent from the e-mail communication dated 18.08.2011 from Rohit Bindal of purpolefocus.com The correspondence placed on record by the defendant with the various designers/consultants shows that the defendant approached several consultants for designing a new bottle and packaging for its Hunter Beer. Pertinently, the plaintiff got its design registered only on 30.03.2012, i.e sometime after the defendant had already initiated the process of engaging consultants to design and re-package its beer bottle and packaging for Hunter Beer. The communications that the defendant had with several designers/consultants have been extracted hereinabove, precisely for the reason that a perusal of these communications show that the defendant was actively engaged in the process of re-designing its bottle and packaging for its Hunter Beer. It appears that, eventually, the defendant engaged Lowe Lintas, who made their recommendations. The recommendations made on 30.08.2003 along with the e-mail have been taken note of hereinabove. It appears that the process of consultation continued even thereafter, and the pros and cons of the suggestions/recommendations made by the consultant were discussed between the defendant and the consultant. From the correspondence placed on record, it appears that the new design of the beer bottle and the packaging was firmed up by the defendant in consultation with its designer/consultant sometime in November 2014, whereafter the defendant applied for registration of its design on 28.11.2014 The defendant also proceeded to place the orders for manufacture and supply of 60 Lakhs new bottles on the basis of the bottle design, label and packaging created by the consultant. The consultant has also acknowledged receipt of substantial amount of professional fee from the defendant, as is evident from the certificate/communication of the consultant placed on record. Thus, prima facie, it appears that the defendant's beer bottle design is an independently evolved design and not a fraudulent imitation of the plaintiff's bottle design.
184. It appears to the Court that the grooving/indentations on the bottles is not even designed with a view to create the shape/grooving which appeals to the eye - since there is no eye appeal in the grooving as found on either of the two bottles. The groovings are not very striking or artistic, so as to immediately attract the attention of the viewer. In fact, it appears to this Court that the grooving is something which follows the shape of the label created/designed by the designer/consultant. Evidently, it is the label which is first conceived of and designed - which is to be affixed on the bottle, and thereafter, the grooving/indentation is designed on the bottle, such that the grooving/indentation serves as a frame within which the label is affixed. As aforesaid, the grooving in that sense is functional more than anything else. I am, thus, of the considered view on a prima-facie examination that neither the plaintiff's claim for novelty/appeal to the eye, in its design may be sustainable, nor its claim for infringement thereof is made out on a comparison of the plaintiff's bottle design with that of the defendant.
185. It also appears to me that balance of convenience is not in favour of the plaintiff, since the defendant has invested very large amount of money in designing and procuring its bottles. To injunct the defendant at this stage from using its bottle design would certainly lead to a substantial loss to the defendant and would also be a waste of resources. The rights of the parties can well be balanced by requiring the defendant to keep full and complete accounts and submit the same in this Court periodically. Since the design in question relates to a beer bottle - which is a control commodity, the defendant would be obliged, under the law, to maintain and preserve accounts in relation to its production and sale of beer scrupulously. I am, therefore, inclined to dismiss the present application. The defendant is, however, directed to maintain full and complete accounts in respect of its beer sales under its brand Hunter; and to file in this Court the statements reflecting the sales of the said beer State-wise, throughout the country on a quarterly basis. The statements in respect of the past period shall be filed within four weeks, and the statements in respect of future sales shall be filed within one month of the expiry of each quarter.
186. In view of the decision of the Supreme Court in Dawoodi Bohra (supra), I deem it proper to invite the attention of Hon'ble the Chief Justice, and to request her for the matter being placed for hearing before a bench of larger quorum than three judges, since it is the decision of the Full Bench of three learned Judges in Mohan Lal (supra), which has come up for consideration. Thus, while dismissing the plaintiff's application, i.e I.A No. 10972/2015 and leaving the parties to bear their respective costs, I direct that the present matter be placed before Hon'ble the Chief Justice. The Hon'ble the Chief Justice may consider whether the decision in Mohan Lals (supra) - on the aspect of maintainability of a composite suit in relation to infringement of a registered design and for passing off, where the parties to the proceedings are the same needs re-consideration by a larger bench in the light of Order II Rule 3 CPC, which permits joinder of causes of action.
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