Full Judgment Text
IN THE HIGH COURT OF DELHI AT NEW DELHI
FAO (OS) No. 293 of 2007
Reserved on: September 08, 2008
Date of judgment: December 3, 2008
DABUR INDIA LTD. ..... Appellant
Through: Mr. Hemant Singh, Advocate.
versus
AMIT JAIN & ANR. .... Respondents
Through: Mr.V.K. Bansal and
Mr. Shashi P. Ojha, Advocates.
CORAM:
HON'BLE THE CHIEF JUSTICE
HON'BLE DR. JUSTICE S. MURALIDHAR
1. Whether Reporters of local papers may be
allowed to see the judgment? Yes
2. To be referred to the Reporter or not? Yes
3. Whether the judgment should be reported in Digest? Yes
JUDGMENT
03.12.2008
Dr. S. Muralidhar, J.
1. Aggrieved by the dismissal of its application IA No.1910 of 2007 under
Order 39 Rules 1 & 2 CPC in CS (OS) No.314 of 2007, the Plaintiff Dabur
India Limited („DIL‟) has filed this appeal. With the consent of parties the
appeal is taken up for final hearing.
2. The Appellant states that it is the fourth largest fast moving consumer
goods company in India engaged in the business of manufacturing
FAO(OS) No. 293/2007 Page 1 of 19
pharmaceuticals, toiletries and medicinal preparations and that it has been
carrying on its trading activities since 1884. Among its reputed products is
Amla Hair Oil which is being marketed under the trade mark Dabur Amla
Hair Oil. The Appellant states that besides vast sales in India it has also
been exporting Dabur Amla Hair Oil to various countries since 1884. Dabur
Amla Hair Oil is marketed in plastic bottles shaped with a semi-circular
shoulder with curvaceous back and front panel tapering into each other,
thereby providing a novel and original overall appearance and look to the
Appellant‟s bottle. The said design being unique, aesthetically novel and
original is also registered under the Designs Act, 2000 under Design
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Registration No.173234 dated 24 February 1997 in favour of the Appellant.
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It is stated that the design registration stands renewed till 24 February 2012.
The green cap used in relation to the said plastic bottle has also been
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separately registered under Design Registration No.171486 dated 11 June
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1996 and it is valid till 11 June 2011.
3. According to the Appellant it introduced the abovementioned plastic
bottle for marketing its hair oil in the year 2000. Prior to this Dabur Hair Oil
was marketed in a glass bottle whose design was registered with the
Controller of Patents and Designs in favour of the Appellant under Design
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Registration No. 160812 dated 14 March 1989. The Appellant states that it
has incurred substantial expenditure on advertisement and promotion of the
Dabur Amla Hair Oil. The figures given by it from 1995-96 till 2004-05
FAO(OS) No. 293/2007 Page 2 of 19
show that on publicity it incurred an expenditure of Rs.1232.21 lakhs in
2004-05. The Appellant claims that on account of prior adoption, long and
continuous use, extensive advertising campaign and marketing network,
enormous sales, the Appellant has acquired goodwill and reputation in the
market and the product of the Appellant i.e. the Dabur Amla Hair Oil along
with its packaging i.e. the bottle and cap described hereinabove have come
to be identified and associated exclusively with the Appellant‟s goods
among consumers belonging both to rural and semi-urban areas and
townships. The Appellant has placed on record annual sales figures of the
Dabur Amla Hair Oil and Dabur Jasmine Hair Oil packed in the above
bottles along with the caps.
4. Defendant No.1 in CS (OS) No. 314 of 2007 is Amit Jain (Respondent
No.1 herein) and Defendant No.2 is M/s. V.N. Cosmetics (Respondent No.2
herein). In November 2005 the Appellant Plaintiff found Amit Jain, the sole
proprietor of M/s. Vinayak Industries, Delhi to be engaging in the business
of manufacturing and selling Plus Jasmine Hair Oil and Tushar Amla Hair
Oil in bottles of same design and under label marks deceptively similar to
the design of the Appellant‟s bottles and labels. The Appellant filed Suit No.
1699 of 2005 against Amit Jain and Vinayak Industries by way of an
infringement action. An application was also filed in the said Suit seeking
an interim injunction. The said Suit was disposed of in terms of a
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compromise arrived at between the parties. The order dated 6 January
FAO(OS) No. 293/2007 Page 3 of 19
2006 by the learned Single Judge of this Court in CS (OS) No.1669 of 2005
records the fact that the parties had jointly filed an application under Order
23 Rule 3 CPC and a direction was issued to record the respective
submissions of the parties. Among the terms of the compromise were the
following admissions made and undertaking given by the Defendants
including Amit Jain:
“2. The Defendants admit the Plaintiff to be the
proprietor of the design of the plastic bottles under
Design Registration No. 173234 dated 24.02.1997 and
the design of the cap used in relation to the said plastic
bottle under Design Registration No.171486 dated
11.06.1996. The Defendants acknowledge the validity of
the abovementioned Design Registrations.
3. The Defendants undertake not to use the impugned
“Plush Jasmine Hair Oil Bottle”, “Plush Amla Hair Oil
Bottle”, “Lesure‟s Tushar Amla Hair Oil Bottle” and the
impugned trade dress and labels pertaining thereto in
respect of hair oil, subject matter of the present
proceedings or any other label or design that may be
deceptively similar to the DABUR Amla Hair Oil and
Dabur Jasmine Hair Oil labels and bottle
designs/packaging their colour combination, lay out,
arrangement of feature and get up as may be likely to
cause confusion or deception amounting to passing off or
infringement of copyright.”
5. Notwithstanding the disposal of the aforementioned Suit in terms of the
FAO(OS) No. 293/2007 Page 4 of 19
compromise between the parties, of which the above undertaking of
Defendant Amit Jain forms part, in the first week of February 2007 the
Appellant learnt that Amit Jain had once again started manufacturing and
selling Plush Amla Hair Oil in plastic bottles which according to the
Plaintiff Appellant were “obvious and fraudulent infringement of the
DABUR Amla Hair Oil and cap design which form the subject matter of the
Appellant‟s registered Design No.173234 and 171486 in terms of their shape
and configuration.” Accordingly, the Appellant filed a fresh Suit being CS
(OS) No. 314 of 2007 against the respondents Defendants Amit Jain and his
reconstituted proprietary concern M/s. V.N.Cosmetics in this Court seeking
a decree of permanent injunction restraining infringement and passing off of
the design of the plaintiff damages from the. I.A. No.1910 of 2007 was filed
under Order 39 Rules 1 & 2 along with the plaint seeking an interim
injunction against the Defendants.
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6. By an order dated 20 February 2007, a learned Single Judge opined that
the Appellant had made out a case of ex parte ad interim injunction and
granted it till the next date of hearing. By the same order, the learned Single
Judge appointed an advocate of this Court as Local Commissioner to seize
the infringing goods/bottles as well as moulds, make an inventory thereof
and release the same to the Defendants on superdari .
7. The Defendants Amit Jain and V.N.Cosmetics thereafter filed an
FAO(OS) No. 293/2007 Page 5 of 19
application along with the written statement seeking vacation of the ex parte
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ad interim injunction order dated 20 February 2007. After pleadings were
completed in the application, the learned Single Judge by the impugned
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order dated 31 May 2007 vacated the earlier ad interim injunction dated
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20 February 2007. The learned Single Judge after examining the samples
of the bottles used by the plaintiff as well as the defendant and the
photographs of the other bottles came to the conclusion that the “bottle being
used by the defendant is not of the same dimension or shape as that of the
plaintiff; neither it has the logo of the plaintiff with „DABUR‟ on the
bottom, as alleged.” Further it was held by the learned Single Judge that
“the shape of the bottle in which plaintiff is marketing its product is not
something new.” The learned Single Judge also relied upon the judgment of
the Division Bench of this Court in Rotela Auto Components Private
Limited v. Jaspal Singh 2002 (24) PTC 449 (Del.) where injunction was
declined where the design in question was of recent origin. Further it was
held that “the plaintiff has failed to show that the plastic bottle used by the
defendant was prima facie violating/ infringing the design of the plaintiff.”
8. Aggrieved by the impugned order the Appellants have filed the present
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appeal FAO (OS) No. 293 of 2007. By an order dated 8 August 2007 a
Division Bench of this Court admitted the appeal. However it declined to
grant any interim relief and dismissed the application for stay being C.M.
No.10494 of 2007. Aggrieved by the refusal of stay by the Division Bench,
FAO(OS) No. 293/2007 Page 6 of 19
the Appellants filed SLP (C) No.15385 of 2007 in the Supreme Court. This
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SLP was disposed of by the Supreme Court on 21 September 2007 by the
following order:
“Pending hearing and final disposal of the appeal before
the High Court, the impugned order shall remain stayed.
Consequently, the injunction granted by the trial court on
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20 February, 2007 will continue to operate. We request
the High Court to expeditiously hear and dispose of the
appeal, preferably within eight weeks from today.”
9. We have heard at length the submissions of Mr. Hemant Singh, learned
counsel appearing for the Appellant/Plaintiff and Mr.S.K. Bansal, learned
counsel appearing for the Defendants/ Respondents.
10. It is submitted by Mr. Hemant Singh that the registration in respect of
both the bottle and the cap in favour of the Appellant, conferred the statutory
right to exclusive use of the said design on the Appellant in terms of Section
11 of the Designs Act, 2000 („Act‟). It is further submitted that the
fraudulent imitation of the said design by the Defendants/Respondents
constitutes infringement under Section 22 of the Act, and an injunction
should follow in terms of Section 22 (1A) and 22 (1B) of the Act. Reliance
is placed on the judgment in Alert India Ltd. v. Naveen Plastics 1997 (Vol.
17) PTC 15 (Delhi HC) , Castrol India Ltd. v. Tide Water Oil Co. (I) Ltd.
1996 PTC (16) 202 (Calcutta HC) , Hindustan Sanitaryware v. Dip Crafts
FAO(OS) No. 293/2007 Page 7 of 19
2003 (26) PTC 163 (Delhi HC) to contend that the resemblance need not be
identical, but as long as it is a planned and an obvious imitation although in
some respects different from the original, the infringing design will be
injuncted.
11. The Appellant also relies on the principle of estoppel as explained by the
Supreme Court in Sailendra Narayan Bhanja Deo v. The State of Orissa
AIR 1956 SC 346 to contend that the undertaking given by Amit Jain in the
earlier suit before this Court would estop him from using the said design
either by himself or through any proprietary concern of his like M/s.
V.N.Cosmetics. The Respondents were precluded from imitating the said
design and exploiting it for commercial purposes. The submission on behalf
of the Respondent/Defendant that it has also obtained the registration of its
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bottle design on 9 November 2006 is countered by the Appellant by
pointing out that it has already applied for cancellation of the said
registration in terms of the Act and that the subsequent design registration is
in any event not a defence to an infringement of a prior registered design.
12. The further contention of learned counsel for the Appellant is that the
use of the impugned bottle design by the Respondent is a case of dishonest
infringement of Appellant‟s statutory right and that an injunction has to
therefore automatically follow. Reliance is placed on the judgment of the
Supreme Court in Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia
FAO(OS) No. 293/2007 Page 8 of 19
(2004) 3 SCC 90.
13. On behalf of the Defendants/Respondents it is submitted by Mr. S.K.
Bansal, learned counsel, that the bottles now being used by it for which an
injunction is sought by the Appellant Plaintiff did not form the subject
matter of either the Suit No. 1169 of 2005 or the bottles and caps which
were alleged to be infringing the Plaintiff‟s registered design as mentioned
in that Suit. It is urged that the seizures made by the Local Commissioner in
the instant case is not of the infringing bottles but of a new bottle being used
by the Defendants which is different from the one which forms the subject
matter of the earlier Suit. Reliance is placed on some of the judgments
relied upon by the Appellant and this includes Castrol India Ltd . In
addition the Respondents relied upon the judgment in Merico Limited v. Raj
Oil Mills Limited 2007 (35) PTC 330 (Bombay) , Ravinder Kumar Gupta v.
Ravi Raj Gupta 1986 PTC 50 and Bharat Glass Tube Limited v. Gopal
Glass Works Limited AIR 2008 SC 2520 . It is contended that the design of
the bottle or the cap of the Appellant is neither new nor novel, and therefore
was not entitled to be granted any registration under the Act. In particular it
is contended that the cap of the bottle does not have its own commercial
identity in the market and therefore does not qualify to be an article under
the Designs Act. It is contended that the right of a Plaintiff in a registered
design extends only to the extent of novelty claimed in a registered design.
Moreover the registration of the Plaintiff‟s bottles is not with any special
FAO(OS) No. 293/2007 Page 9 of 19
unique feature and therefore no case can be said to have been made out for
infringement.
14. One of the first questions to be considered is whether the undertaking
given by Amit Jain in the earlier Suit No. 21669 of 2005 acts as an estoppel
and restrains the Defendants herein from using bottles and caps deceptively
similar to that of the Appellant and in respect of which the Appellant holds
registration. This Court finds that there is justification in this plea of the
Plaintiff. The first defendant Amit Jain is bound by the undertaking. So is
the second defendant which is but a proprietory concern of Amit Jain.
15. The principle of issue of estoppel has been explained by the Supreme
Court in Raja Sri Sailendra Narayan Bhanja Deo in para 8 as under:
8. The plea of estoppel is sought to be founded on the
compromise decree, Ex.'O' passed by the Patna High Court on
2nd May, 1945, in F. A. No. 15 of 1941. The compromise
decree is utilised in the first place as creating an estoppel by
judgment. In – “In re. South American and Mexican
Company, Ex parte Bank of England (1895) 1 Ch. 37 (C) , it
has been held that a judgment by consent or default is as
effective an estoppel between the parties as a judgment
whereby the court exercises its mind on a contested case.
Upholding the judgment of Vaughan Williams, J., Lord
Herschell said at page 50 :-
"The truth is, a judgment of consent is intended to
put a stop to litigation between the parities just as
much as is a judgment which results from the
FAO(OS) No. 293/2007 Page 10 of 19
decision of the Court after the matter has been
fought out to the end.
And I think it would be very mischievous if one
were not to give a fair and reasonable
interpretation to such judgments, and were to allow
questions that were really involved in the action to
be fought over again in a subsequent action".
To the like effect are the following observations of the Judicial
Committee in Kinch v. Walcott and others, 1929 AC 482 at p.
493 (D) :-
"First of all their Lordships are clear that in
relation to this plea of estoppel it is of no
advantage to the appellant that the order in the libel
action which is said to raise it was a consent order.
For such a purpose an order by consent, not
discharged by mutual agreement, and remaining
unreduced, is as effective as an order of the Court
made otherwise than by consent and not
discharged on appeal".
The same principle has been followed by the High Courts in
India in a number of reported decisions. Reference need only be
made to the cases of Secretary of State for India in Council v.
Ateendranath Das 63 Cal. 550 , at p. 558 (E); Bhaishanker
Nanabhai and others v. Morarji Keshavji and Co. 36 Bom.
283 (F) and Raja Kumara Venkata Perumal Raja Bahadur,
Minor by guardian Mr. W. A. Varadachariar v. Thatha
Ramasamy Chetty and others 35 Mad. 75 (G) . In the Calcutta
case after referring to the English decisions the High Court
observed as follows :-
"On this authority it becomes absolutely clear that
the consent order is as effective as an order passed
on contest, not only with reference to the
conclusions arrived at in the previous suit but also
with regard to every step in the process of
reasoning on which the said conclusion is founded.
FAO(OS) No. 293/2007 Page 11 of 19
When we say "every step in the reasoning" we
mean the findings on the essential facts on which
the judgment or the ultimate conclusion was
founded. In other words the finding which it was
necessary to arrive at for the purpose of sustaining
the judgment in the particular case will operate as
estoppel by judgment".
16. If the Respondent‟s plea were to be accepted it will render meaningless
the undertaking given earlier by Amit Jain to this Court whereby he accepted
the novelty of the Plaintiff‟s design and the registration granted to the
Plaintiff in respect thereof. There can be no denial of the fact that Amit Jain
is a common Defendant to both Suits and he is the proprietor of both the
concerns namely Vinayak Industries, Defendant No.2 in Suit No. 1699 of
2005 and V.N. Cosmetics, Defendant No.2 in the present Suit No. 314 of
2007. We are therefore not impressed at all with the plea of the Respondent
that what it is using now is different from the bottle in respect of which the
compromise was entered into between the parties and the registration was
held by the Plaintiff.
17. The law in regard to similarity which constitutes infringement and which
in turn attracts an order of injunction has been explained by this Court in
Alert India Ltd . (supra). Reference in the said case has been made to an
earlier decision in J.N. Electricals (India) v. President Electricals ILR 1980
(1) Delhi 215 where it was explained that “the „sameness‟ of features does
not necessarily mean that the two designs must be identical on all points and
FAO(OS) No. 293/2007 Page 12 of 19
should differ on none. They have to be substantially the same.” In Alert
India Ltd. it was held as under:
“36. Thus for determining whether two designs are
identical or not, it is not necessary that the two designs
should be exactly the same. The main consideration to
be applied is whether the broad features of shape,
configuration, pattern etc. are same or nearly the same
and if they are substantially the same then it will be a
case of imitation of the design of one by the other…”
18. Likewise in Castrol India Ltd. the Calcutta High Court explained that
“the word „imitation‟ does not mean „duplication‟ in the sense that the copy
complained of need not be an exact replica.” Reference was made to the
earlier decision of the said High Court in Best Products Ltd. v. F.W.
Woolworth & Company Ltd. 1964 RPC where it was held that “it is the
article as a totality that must be compared and contrasted with the features of
a shape and configuration shown in the totality observable from the
representation of the design as registered. It was said that the Court must
address its mind as to whether the design adopted by the defendants was
substantially different from the design which was registered.” The decision
in Dunlop Rubber Co. Ltd. v. Golf Ball Developments Ltd. (1931) XLVIII
RPC 268 is also a pointer to the approach to be adopted by the Court when a
complaint is made by a Plaintiff of fraudulent imitation of its design by a
Defendant. It was observed “…fraudulent imitation seems to be an imitation
FAO(OS) No. 293/2007 Page 13 of 19
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.”
As explained in Hindustan Sanitaryware if the Court is able to find that,
“there is substantial and sufficient resemblance between the allegedly
infringed designs and the Appellant‟s registered designs…”, an injunction
should follow.
19. This Court has been shown the bottles and caps which form the subject
matter of Suit No. 1669 of 2005 and the bottle and cap now being used by
the Respondent Defendant. Further during the course of his submissions
Mr.Bansal also produced the further modified version of the bottle and caps
being used by the Respondent at present. Having examined these bottles and
caps, this Court is of the prima facie view that the bottles and caps used by
the Defendants, produced before us (in addition to the photographs forming
part of the record) are indeed deceptively similar to that of the Plaintiff.
20. The next plea to be considered is whether the Plaintiff‟s design was of
sufficient novelty for the grant of registration. This Court notices that this
FAO(OS) No. 293/2007 Page 14 of 19
plea is no longer available to be taken after the compromise order arrived at
in the earlier suit between the same parties. Likewise, the plea now raised
that there cannot be a separate registration in respect of a cap since it is by
itself marketable is also not available to the Defendant to raise.
21. For the purposes of considering the plea of the Plaintiff for grant of an
interim injunction pending the final determination of the issue in the suit, we
find that it is not necessary to take a final view on the plea of the Defendant
that the registration granted of the design in favour of the Appellant is
invalid. This would be gone into in the statutory proceedings instituted by
the defendant raising the said for challenge.
22. In the circumstances, the learned Single Judge, in our view, erred in
coming to conclusion that the Plaintiff‟s design was not novel or new. The
design which is referred to in the compromise order in the earlier Suit cannot
be diluted or ignored by this Court particularly when at no point in time the
Respondent has resiled from the said undertaking which expressly
recognizes the validity of the Plaintiff‟s design. There was no occasion for
the learned Single Judge to reopen the issue which came to be decided by
the earlier Suit. Also there was no occasion for the learned Single Judge to
give a finding that the design of the Respondent‟s bottle was different from
the registered design of the Appellants bottle in question. In any event, as
pointed out by the Plaintiff, as regards the subsequent registration of the
Defendant, it has already filed an application to have the registration
FAO(OS) No. 293/2007 Page 15 of 19
cancelled. The mere fact that there is a subsequent registration in favour of
the Defendant is clearly not a defence in an action for infringement as
explained in Alert India Ltd. in para 20 as follows:
“This Scheme of the Act makes its purpose clear that the
underlying principle behind the law providing for
registration of a design is that the commercial exigency
requires that a specific design should be protected and its
infringement prohibited and prevented.”
23. A plea was raised by the learned counsel for the Defendant that the
bottles seized by the Local Commissioner in the instant case were different
from the bottles in respect of which the compromise was recorded in the
earlier Suit and that by means of the present Suit the Plaintiff is somehow
seeking to overreach the Court to have the injunction extended to all the
bottles used by the Respondents. We are not impressed with the submission.
The report of the Commissioner has been placed on record. At no point in
time did the Defendants actually raise any objection to the report. We do not
see why we should permit this kind of a plea to be entertained at the stage of
the appeal. Having compared the bottles, even those currently used by the
Defendants, this Court is satisfied that the Plaintiffs have made out a prima
facie case for grant of an injunction. This is not a case where the award of
damages would have been sufficient to compensate the Plaintiff for the
infringement of its registered designs. There is certainly an element of loss
of goodwill in allowing the infringement to continue. We therefore reject the
FAO(OS) No. 293/2007 Page 16 of 19
plea of the respondents/defendants that the impugned design of the
Respondents is different from the design which was the subject matter of
Suit No. 1669 of 2005.
24. Counsel for the Respondent Defendant submitted that the very design in
respect of which the registration has been granted in favour of the Plaintiff is
already in the public domain and has been published earlier. The
Respondents have relied upon the Design Registration Nos.319582 and
263373 issued by the US Patent Office to contend that there is no novelty as
far as the Plaintiff‟s designs are concerned. In the first place it must be
noticed that the reliance upon a design registered in the US cannot satisfy the
requirements of Section 19 of the present Act which specifies the ground on
which cancellation can be granted. Section 19 reads as under:
“19. Cancellation of registration.--- (1) Any person
interested may present a petition for the cancellation of
the registration of a design at any time after the
registration of the design, to the Controller on any of the
following grounds, namely:-
(a) that it has been previously registered in India;
(b) that it has been published in India or in any other
country prior to the date of registration;…”
25. We find that the Calcutta High Court has in Gopal Glass Works Ltd. v.
Assistant Controller of Patents & Designs 2006 (33) PTC 434 (Cal)
explained the position, with which we concur, as under:
FAO(OS) No. 293/2007 Page 17 of 19
“39. The next question in issue before this Court is
whether the finding of the Respondent No.1 that the
document downloaded from the internet from the website
of the Patent Office of the United Kingdom might be
taken as prior publication of the impugned design, is
legally sustainable.
40. It is true that publication has not been defined in
the 2000 Act. Yet, for reasons discussed above, mere
publication of design specifications, drawings and/or
demonstrations by the Patent Office of the United
Kingdom, or for that matter, any other foreign country, in
connection with an application for registration, would
not, in itself, amount to publication that would render a
design registered in India liable to cancellation.”
26. The mere fact that there may have been a registration in the U.S in
respect of similar bottles and caps cannot come in the way of the Plaintiffs
seeking an order restraining the Respondent from infringing its registered
design.
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27. We accordingly set aside the impugned order dated 30 May 2007
passed by the learned Single Judge and restore the injunction granted by him
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on 20 February 2007. This injunction will continue till the disposal of the
Suit. The appeal is accordingly allowed with costs of Rs.20,000/- which will
be paid by the Respondents to the Appellant within a period of four weeks
from today.
FAO(OS) No. 293/2007 Page 18 of 19
S. MURALIDHAR, J
CHIEF JUSTICE
DECEMBER 3, 2008
dn
FAO(OS) No. 293/2007 Page 19 of 19
FAO (OS) No. 293 of 2007
Reserved on: September 08, 2008
Date of judgment: December 3, 2008
DABUR INDIA LTD. ..... Appellant
Through: Mr. Hemant Singh, Advocate.
versus
AMIT JAIN & ANR. .... Respondents
Through: Mr.V.K. Bansal and
Mr. Shashi P. Ojha, Advocates.
CORAM:
HON'BLE THE CHIEF JUSTICE
HON'BLE DR. JUSTICE S. MURALIDHAR
1. Whether Reporters of local papers may be
allowed to see the judgment? Yes
2. To be referred to the Reporter or not? Yes
3. Whether the judgment should be reported in Digest? Yes
JUDGMENT
03.12.2008
Dr. S. Muralidhar, J.
1. Aggrieved by the dismissal of its application IA No.1910 of 2007 under
Order 39 Rules 1 & 2 CPC in CS (OS) No.314 of 2007, the Plaintiff Dabur
India Limited („DIL‟) has filed this appeal. With the consent of parties the
appeal is taken up for final hearing.
2. The Appellant states that it is the fourth largest fast moving consumer
goods company in India engaged in the business of manufacturing
FAO(OS) No. 293/2007 Page 1 of 19
pharmaceuticals, toiletries and medicinal preparations and that it has been
carrying on its trading activities since 1884. Among its reputed products is
Amla Hair Oil which is being marketed under the trade mark Dabur Amla
Hair Oil. The Appellant states that besides vast sales in India it has also
been exporting Dabur Amla Hair Oil to various countries since 1884. Dabur
Amla Hair Oil is marketed in plastic bottles shaped with a semi-circular
shoulder with curvaceous back and front panel tapering into each other,
thereby providing a novel and original overall appearance and look to the
Appellant‟s bottle. The said design being unique, aesthetically novel and
original is also registered under the Designs Act, 2000 under Design
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Registration No.173234 dated 24 February 1997 in favour of the Appellant.
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It is stated that the design registration stands renewed till 24 February 2012.
The green cap used in relation to the said plastic bottle has also been
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separately registered under Design Registration No.171486 dated 11 June
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1996 and it is valid till 11 June 2011.
3. According to the Appellant it introduced the abovementioned plastic
bottle for marketing its hair oil in the year 2000. Prior to this Dabur Hair Oil
was marketed in a glass bottle whose design was registered with the
Controller of Patents and Designs in favour of the Appellant under Design
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Registration No. 160812 dated 14 March 1989. The Appellant states that it
has incurred substantial expenditure on advertisement and promotion of the
Dabur Amla Hair Oil. The figures given by it from 1995-96 till 2004-05
FAO(OS) No. 293/2007 Page 2 of 19
show that on publicity it incurred an expenditure of Rs.1232.21 lakhs in
2004-05. The Appellant claims that on account of prior adoption, long and
continuous use, extensive advertising campaign and marketing network,
enormous sales, the Appellant has acquired goodwill and reputation in the
market and the product of the Appellant i.e. the Dabur Amla Hair Oil along
with its packaging i.e. the bottle and cap described hereinabove have come
to be identified and associated exclusively with the Appellant‟s goods
among consumers belonging both to rural and semi-urban areas and
townships. The Appellant has placed on record annual sales figures of the
Dabur Amla Hair Oil and Dabur Jasmine Hair Oil packed in the above
bottles along with the caps.
4. Defendant No.1 in CS (OS) No. 314 of 2007 is Amit Jain (Respondent
No.1 herein) and Defendant No.2 is M/s. V.N. Cosmetics (Respondent No.2
herein). In November 2005 the Appellant Plaintiff found Amit Jain, the sole
proprietor of M/s. Vinayak Industries, Delhi to be engaging in the business
of manufacturing and selling Plus Jasmine Hair Oil and Tushar Amla Hair
Oil in bottles of same design and under label marks deceptively similar to
the design of the Appellant‟s bottles and labels. The Appellant filed Suit No.
1699 of 2005 against Amit Jain and Vinayak Industries by way of an
infringement action. An application was also filed in the said Suit seeking
an interim injunction. The said Suit was disposed of in terms of a
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compromise arrived at between the parties. The order dated 6 January
FAO(OS) No. 293/2007 Page 3 of 19
2006 by the learned Single Judge of this Court in CS (OS) No.1669 of 2005
records the fact that the parties had jointly filed an application under Order
23 Rule 3 CPC and a direction was issued to record the respective
submissions of the parties. Among the terms of the compromise were the
following admissions made and undertaking given by the Defendants
including Amit Jain:
“2. The Defendants admit the Plaintiff to be the
proprietor of the design of the plastic bottles under
Design Registration No. 173234 dated 24.02.1997 and
the design of the cap used in relation to the said plastic
bottle under Design Registration No.171486 dated
11.06.1996. The Defendants acknowledge the validity of
the abovementioned Design Registrations.
3. The Defendants undertake not to use the impugned
“Plush Jasmine Hair Oil Bottle”, “Plush Amla Hair Oil
Bottle”, “Lesure‟s Tushar Amla Hair Oil Bottle” and the
impugned trade dress and labels pertaining thereto in
respect of hair oil, subject matter of the present
proceedings or any other label or design that may be
deceptively similar to the DABUR Amla Hair Oil and
Dabur Jasmine Hair Oil labels and bottle
designs/packaging their colour combination, lay out,
arrangement of feature and get up as may be likely to
cause confusion or deception amounting to passing off or
infringement of copyright.”
5. Notwithstanding the disposal of the aforementioned Suit in terms of the
FAO(OS) No. 293/2007 Page 4 of 19
compromise between the parties, of which the above undertaking of
Defendant Amit Jain forms part, in the first week of February 2007 the
Appellant learnt that Amit Jain had once again started manufacturing and
selling Plush Amla Hair Oil in plastic bottles which according to the
Plaintiff Appellant were “obvious and fraudulent infringement of the
DABUR Amla Hair Oil and cap design which form the subject matter of the
Appellant‟s registered Design No.173234 and 171486 in terms of their shape
and configuration.” Accordingly, the Appellant filed a fresh Suit being CS
(OS) No. 314 of 2007 against the respondents Defendants Amit Jain and his
reconstituted proprietary concern M/s. V.N.Cosmetics in this Court seeking
a decree of permanent injunction restraining infringement and passing off of
the design of the plaintiff damages from the. I.A. No.1910 of 2007 was filed
under Order 39 Rules 1 & 2 along with the plaint seeking an interim
injunction against the Defendants.
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6. By an order dated 20 February 2007, a learned Single Judge opined that
the Appellant had made out a case of ex parte ad interim injunction and
granted it till the next date of hearing. By the same order, the learned Single
Judge appointed an advocate of this Court as Local Commissioner to seize
the infringing goods/bottles as well as moulds, make an inventory thereof
and release the same to the Defendants on superdari .
7. The Defendants Amit Jain and V.N.Cosmetics thereafter filed an
FAO(OS) No. 293/2007 Page 5 of 19
application along with the written statement seeking vacation of the ex parte
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ad interim injunction order dated 20 February 2007. After pleadings were
completed in the application, the learned Single Judge by the impugned
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order dated 31 May 2007 vacated the earlier ad interim injunction dated
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20 February 2007. The learned Single Judge after examining the samples
of the bottles used by the plaintiff as well as the defendant and the
photographs of the other bottles came to the conclusion that the “bottle being
used by the defendant is not of the same dimension or shape as that of the
plaintiff; neither it has the logo of the plaintiff with „DABUR‟ on the
bottom, as alleged.” Further it was held by the learned Single Judge that
“the shape of the bottle in which plaintiff is marketing its product is not
something new.” The learned Single Judge also relied upon the judgment of
the Division Bench of this Court in Rotela Auto Components Private
Limited v. Jaspal Singh 2002 (24) PTC 449 (Del.) where injunction was
declined where the design in question was of recent origin. Further it was
held that “the plaintiff has failed to show that the plastic bottle used by the
defendant was prima facie violating/ infringing the design of the plaintiff.”
8. Aggrieved by the impugned order the Appellants have filed the present
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appeal FAO (OS) No. 293 of 2007. By an order dated 8 August 2007 a
Division Bench of this Court admitted the appeal. However it declined to
grant any interim relief and dismissed the application for stay being C.M.
No.10494 of 2007. Aggrieved by the refusal of stay by the Division Bench,
FAO(OS) No. 293/2007 Page 6 of 19
the Appellants filed SLP (C) No.15385 of 2007 in the Supreme Court. This
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SLP was disposed of by the Supreme Court on 21 September 2007 by the
following order:
“Pending hearing and final disposal of the appeal before
the High Court, the impugned order shall remain stayed.
Consequently, the injunction granted by the trial court on
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20 February, 2007 will continue to operate. We request
the High Court to expeditiously hear and dispose of the
appeal, preferably within eight weeks from today.”
9. We have heard at length the submissions of Mr. Hemant Singh, learned
counsel appearing for the Appellant/Plaintiff and Mr.S.K. Bansal, learned
counsel appearing for the Defendants/ Respondents.
10. It is submitted by Mr. Hemant Singh that the registration in respect of
both the bottle and the cap in favour of the Appellant, conferred the statutory
right to exclusive use of the said design on the Appellant in terms of Section
11 of the Designs Act, 2000 („Act‟). It is further submitted that the
fraudulent imitation of the said design by the Defendants/Respondents
constitutes infringement under Section 22 of the Act, and an injunction
should follow in terms of Section 22 (1A) and 22 (1B) of the Act. Reliance
is placed on the judgment in Alert India Ltd. v. Naveen Plastics 1997 (Vol.
17) PTC 15 (Delhi HC) , Castrol India Ltd. v. Tide Water Oil Co. (I) Ltd.
1996 PTC (16) 202 (Calcutta HC) , Hindustan Sanitaryware v. Dip Crafts
FAO(OS) No. 293/2007 Page 7 of 19
2003 (26) PTC 163 (Delhi HC) to contend that the resemblance need not be
identical, but as long as it is a planned and an obvious imitation although in
some respects different from the original, the infringing design will be
injuncted.
11. The Appellant also relies on the principle of estoppel as explained by the
Supreme Court in Sailendra Narayan Bhanja Deo v. The State of Orissa
AIR 1956 SC 346 to contend that the undertaking given by Amit Jain in the
earlier suit before this Court would estop him from using the said design
either by himself or through any proprietary concern of his like M/s.
V.N.Cosmetics. The Respondents were precluded from imitating the said
design and exploiting it for commercial purposes. The submission on behalf
of the Respondent/Defendant that it has also obtained the registration of its
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bottle design on 9 November 2006 is countered by the Appellant by
pointing out that it has already applied for cancellation of the said
registration in terms of the Act and that the subsequent design registration is
in any event not a defence to an infringement of a prior registered design.
12. The further contention of learned counsel for the Appellant is that the
use of the impugned bottle design by the Respondent is a case of dishonest
infringement of Appellant‟s statutory right and that an injunction has to
therefore automatically follow. Reliance is placed on the judgment of the
Supreme Court in Midas Hygiene Industries P. Ltd. v. Sudhir Bhatia
FAO(OS) No. 293/2007 Page 8 of 19
(2004) 3 SCC 90.
13. On behalf of the Defendants/Respondents it is submitted by Mr. S.K.
Bansal, learned counsel, that the bottles now being used by it for which an
injunction is sought by the Appellant Plaintiff did not form the subject
matter of either the Suit No. 1169 of 2005 or the bottles and caps which
were alleged to be infringing the Plaintiff‟s registered design as mentioned
in that Suit. It is urged that the seizures made by the Local Commissioner in
the instant case is not of the infringing bottles but of a new bottle being used
by the Defendants which is different from the one which forms the subject
matter of the earlier Suit. Reliance is placed on some of the judgments
relied upon by the Appellant and this includes Castrol India Ltd . In
addition the Respondents relied upon the judgment in Merico Limited v. Raj
Oil Mills Limited 2007 (35) PTC 330 (Bombay) , Ravinder Kumar Gupta v.
Ravi Raj Gupta 1986 PTC 50 and Bharat Glass Tube Limited v. Gopal
Glass Works Limited AIR 2008 SC 2520 . It is contended that the design of
the bottle or the cap of the Appellant is neither new nor novel, and therefore
was not entitled to be granted any registration under the Act. In particular it
is contended that the cap of the bottle does not have its own commercial
identity in the market and therefore does not qualify to be an article under
the Designs Act. It is contended that the right of a Plaintiff in a registered
design extends only to the extent of novelty claimed in a registered design.
Moreover the registration of the Plaintiff‟s bottles is not with any special
FAO(OS) No. 293/2007 Page 9 of 19
unique feature and therefore no case can be said to have been made out for
infringement.
14. One of the first questions to be considered is whether the undertaking
given by Amit Jain in the earlier Suit No. 21669 of 2005 acts as an estoppel
and restrains the Defendants herein from using bottles and caps deceptively
similar to that of the Appellant and in respect of which the Appellant holds
registration. This Court finds that there is justification in this plea of the
Plaintiff. The first defendant Amit Jain is bound by the undertaking. So is
the second defendant which is but a proprietory concern of Amit Jain.
15. The principle of issue of estoppel has been explained by the Supreme
Court in Raja Sri Sailendra Narayan Bhanja Deo in para 8 as under:
8. The plea of estoppel is sought to be founded on the
compromise decree, Ex.'O' passed by the Patna High Court on
2nd May, 1945, in F. A. No. 15 of 1941. The compromise
decree is utilised in the first place as creating an estoppel by
judgment. In – “In re. South American and Mexican
Company, Ex parte Bank of England (1895) 1 Ch. 37 (C) , it
has been held that a judgment by consent or default is as
effective an estoppel between the parties as a judgment
whereby the court exercises its mind on a contested case.
Upholding the judgment of Vaughan Williams, J., Lord
Herschell said at page 50 :-
"The truth is, a judgment of consent is intended to
put a stop to litigation between the parities just as
much as is a judgment which results from the
FAO(OS) No. 293/2007 Page 10 of 19
decision of the Court after the matter has been
fought out to the end.
And I think it would be very mischievous if one
were not to give a fair and reasonable
interpretation to such judgments, and were to allow
questions that were really involved in the action to
be fought over again in a subsequent action".
To the like effect are the following observations of the Judicial
Committee in Kinch v. Walcott and others, 1929 AC 482 at p.
493 (D) :-
"First of all their Lordships are clear that in
relation to this plea of estoppel it is of no
advantage to the appellant that the order in the libel
action which is said to raise it was a consent order.
For such a purpose an order by consent, not
discharged by mutual agreement, and remaining
unreduced, is as effective as an order of the Court
made otherwise than by consent and not
discharged on appeal".
The same principle has been followed by the High Courts in
India in a number of reported decisions. Reference need only be
made to the cases of Secretary of State for India in Council v.
Ateendranath Das 63 Cal. 550 , at p. 558 (E); Bhaishanker
Nanabhai and others v. Morarji Keshavji and Co. 36 Bom.
283 (F) and Raja Kumara Venkata Perumal Raja Bahadur,
Minor by guardian Mr. W. A. Varadachariar v. Thatha
Ramasamy Chetty and others 35 Mad. 75 (G) . In the Calcutta
case after referring to the English decisions the High Court
observed as follows :-
"On this authority it becomes absolutely clear that
the consent order is as effective as an order passed
on contest, not only with reference to the
conclusions arrived at in the previous suit but also
with regard to every step in the process of
reasoning on which the said conclusion is founded.
FAO(OS) No. 293/2007 Page 11 of 19
When we say "every step in the reasoning" we
mean the findings on the essential facts on which
the judgment or the ultimate conclusion was
founded. In other words the finding which it was
necessary to arrive at for the purpose of sustaining
the judgment in the particular case will operate as
estoppel by judgment".
16. If the Respondent‟s plea were to be accepted it will render meaningless
the undertaking given earlier by Amit Jain to this Court whereby he accepted
the novelty of the Plaintiff‟s design and the registration granted to the
Plaintiff in respect thereof. There can be no denial of the fact that Amit Jain
is a common Defendant to both Suits and he is the proprietor of both the
concerns namely Vinayak Industries, Defendant No.2 in Suit No. 1699 of
2005 and V.N. Cosmetics, Defendant No.2 in the present Suit No. 314 of
2007. We are therefore not impressed at all with the plea of the Respondent
that what it is using now is different from the bottle in respect of which the
compromise was entered into between the parties and the registration was
held by the Plaintiff.
17. The law in regard to similarity which constitutes infringement and which
in turn attracts an order of injunction has been explained by this Court in
Alert India Ltd . (supra). Reference in the said case has been made to an
earlier decision in J.N. Electricals (India) v. President Electricals ILR 1980
(1) Delhi 215 where it was explained that “the „sameness‟ of features does
not necessarily mean that the two designs must be identical on all points and
FAO(OS) No. 293/2007 Page 12 of 19
should differ on none. They have to be substantially the same.” In Alert
India Ltd. it was held as under:
“36. Thus for determining whether two designs are
identical or not, it is not necessary that the two designs
should be exactly the same. The main consideration to
be applied is whether the broad features of shape,
configuration, pattern etc. are same or nearly the same
and if they are substantially the same then it will be a
case of imitation of the design of one by the other…”
18. Likewise in Castrol India Ltd. the Calcutta High Court explained that
“the word „imitation‟ does not mean „duplication‟ in the sense that the copy
complained of need not be an exact replica.” Reference was made to the
earlier decision of the said High Court in Best Products Ltd. v. F.W.
Woolworth & Company Ltd. 1964 RPC where it was held that “it is the
article as a totality that must be compared and contrasted with the features of
a shape and configuration shown in the totality observable from the
representation of the design as registered. It was said that the Court must
address its mind as to whether the design adopted by the defendants was
substantially different from the design which was registered.” The decision
in Dunlop Rubber Co. Ltd. v. Golf Ball Developments Ltd. (1931) XLVIII
RPC 268 is also a pointer to the approach to be adopted by the Court when a
complaint is made by a Plaintiff of fraudulent imitation of its design by a
Defendant. It was observed “…fraudulent imitation seems to be an imitation
FAO(OS) No. 293/2007 Page 13 of 19
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.”
As explained in Hindustan Sanitaryware if the Court is able to find that,
“there is substantial and sufficient resemblance between the allegedly
infringed designs and the Appellant‟s registered designs…”, an injunction
should follow.
19. This Court has been shown the bottles and caps which form the subject
matter of Suit No. 1669 of 2005 and the bottle and cap now being used by
the Respondent Defendant. Further during the course of his submissions
Mr.Bansal also produced the further modified version of the bottle and caps
being used by the Respondent at present. Having examined these bottles and
caps, this Court is of the prima facie view that the bottles and caps used by
the Defendants, produced before us (in addition to the photographs forming
part of the record) are indeed deceptively similar to that of the Plaintiff.
20. The next plea to be considered is whether the Plaintiff‟s design was of
sufficient novelty for the grant of registration. This Court notices that this
FAO(OS) No. 293/2007 Page 14 of 19
plea is no longer available to be taken after the compromise order arrived at
in the earlier suit between the same parties. Likewise, the plea now raised
that there cannot be a separate registration in respect of a cap since it is by
itself marketable is also not available to the Defendant to raise.
21. For the purposes of considering the plea of the Plaintiff for grant of an
interim injunction pending the final determination of the issue in the suit, we
find that it is not necessary to take a final view on the plea of the Defendant
that the registration granted of the design in favour of the Appellant is
invalid. This would be gone into in the statutory proceedings instituted by
the defendant raising the said for challenge.
22. In the circumstances, the learned Single Judge, in our view, erred in
coming to conclusion that the Plaintiff‟s design was not novel or new. The
design which is referred to in the compromise order in the earlier Suit cannot
be diluted or ignored by this Court particularly when at no point in time the
Respondent has resiled from the said undertaking which expressly
recognizes the validity of the Plaintiff‟s design. There was no occasion for
the learned Single Judge to reopen the issue which came to be decided by
the earlier Suit. Also there was no occasion for the learned Single Judge to
give a finding that the design of the Respondent‟s bottle was different from
the registered design of the Appellants bottle in question. In any event, as
pointed out by the Plaintiff, as regards the subsequent registration of the
Defendant, it has already filed an application to have the registration
FAO(OS) No. 293/2007 Page 15 of 19
cancelled. The mere fact that there is a subsequent registration in favour of
the Defendant is clearly not a defence in an action for infringement as
explained in Alert India Ltd. in para 20 as follows:
“This Scheme of the Act makes its purpose clear that the
underlying principle behind the law providing for
registration of a design is that the commercial exigency
requires that a specific design should be protected and its
infringement prohibited and prevented.”
23. A plea was raised by the learned counsel for the Defendant that the
bottles seized by the Local Commissioner in the instant case were different
from the bottles in respect of which the compromise was recorded in the
earlier Suit and that by means of the present Suit the Plaintiff is somehow
seeking to overreach the Court to have the injunction extended to all the
bottles used by the Respondents. We are not impressed with the submission.
The report of the Commissioner has been placed on record. At no point in
time did the Defendants actually raise any objection to the report. We do not
see why we should permit this kind of a plea to be entertained at the stage of
the appeal. Having compared the bottles, even those currently used by the
Defendants, this Court is satisfied that the Plaintiffs have made out a prima
facie case for grant of an injunction. This is not a case where the award of
damages would have been sufficient to compensate the Plaintiff for the
infringement of its registered designs. There is certainly an element of loss
of goodwill in allowing the infringement to continue. We therefore reject the
FAO(OS) No. 293/2007 Page 16 of 19
plea of the respondents/defendants that the impugned design of the
Respondents is different from the design which was the subject matter of
Suit No. 1669 of 2005.
24. Counsel for the Respondent Defendant submitted that the very design in
respect of which the registration has been granted in favour of the Plaintiff is
already in the public domain and has been published earlier. The
Respondents have relied upon the Design Registration Nos.319582 and
263373 issued by the US Patent Office to contend that there is no novelty as
far as the Plaintiff‟s designs are concerned. In the first place it must be
noticed that the reliance upon a design registered in the US cannot satisfy the
requirements of Section 19 of the present Act which specifies the ground on
which cancellation can be granted. Section 19 reads as under:
“19. Cancellation of registration.--- (1) Any person
interested may present a petition for the cancellation of
the registration of a design at any time after the
registration of the design, to the Controller on any of the
following grounds, namely:-
(a) that it has been previously registered in India;
(b) that it has been published in India or in any other
country prior to the date of registration;…”
25. We find that the Calcutta High Court has in Gopal Glass Works Ltd. v.
Assistant Controller of Patents & Designs 2006 (33) PTC 434 (Cal)
explained the position, with which we concur, as under:
FAO(OS) No. 293/2007 Page 17 of 19
“39. The next question in issue before this Court is
whether the finding of the Respondent No.1 that the
document downloaded from the internet from the website
of the Patent Office of the United Kingdom might be
taken as prior publication of the impugned design, is
legally sustainable.
40. It is true that publication has not been defined in
the 2000 Act. Yet, for reasons discussed above, mere
publication of design specifications, drawings and/or
demonstrations by the Patent Office of the United
Kingdom, or for that matter, any other foreign country, in
connection with an application for registration, would
not, in itself, amount to publication that would render a
design registered in India liable to cancellation.”
26. The mere fact that there may have been a registration in the U.S in
respect of similar bottles and caps cannot come in the way of the Plaintiffs
seeking an order restraining the Respondent from infringing its registered
design.
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27. We accordingly set aside the impugned order dated 30 May 2007
passed by the learned Single Judge and restore the injunction granted by him
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on 20 February 2007. This injunction will continue till the disposal of the
Suit. The appeal is accordingly allowed with costs of Rs.20,000/- which will
be paid by the Respondents to the Appellant within a period of four weeks
from today.
FAO(OS) No. 293/2007 Page 18 of 19
S. MURALIDHAR, J
CHIEF JUSTICE
DECEMBER 3, 2008
dn
FAO(OS) No. 293/2007 Page 19 of 19