Full Judgment Text
2017:BHC-OS:3842
Cello Household Products v Modware India
925-NMSL209-17.DOC
Atul
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION (L) NO. 209 OF 2017
IN
SUIT (L) NO. 48 OF 2017
1. Cello Household Products ,
A registered partnership firm, having
its office at Cello House, Corporate
Avenue, B Wing, Sonawala Lane,
Goregaon (East), Mumbai 400 063
India
2. Cello Plastic Industrial
Works ,
A registered partnership firm, having
its office at Cello House, Corporate
Avenue, B Wing, Sonawala Lane,
Goregaon (East), Mumbai 400 063
India … Plaintiffs
~ versus ~
1. Modware India
having its office at 109, 2nd Floor,
Swadeshi Market, 316, K D Road,
Mumbai 400 002 and factory at No. 15
& 16, S.K-1 Compound, Lasudia Mori,
Dewas Naka, Indore 452 001, Madhya
Pradesh, India
2. Praveen Murarka ,
C/o. M/s. Modware India, having
office at 109, 2nd Floor, Swadeshi
Market, 316, K D Road, Mumbai 400
002 and factory at No. 15 & 16, S.K-1
… Defendants
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Compound, Lasudia Mori, Dewas
Naka, Indore 452 001, Madhya
Pradesh, India
APPEARANCES
FOR THE PLAINTIFFS FOR THE DEFENDANTS
Mr VV Tulzapurkar,
Senior Advocate ,
with Hiren Kamod & Gautam
Panchal, i/b Gautam & Co,
Mr Harshit Tolia ,
with Rajendra Bhansali, &
Mandar Soman.
CORAM: G.S. PATEL, J
DATED: 30th March 2017
ORAL JUDGMENT:
1. The action is in design infringement and passing off. There is
also a prayer in the suit for relief in passing off in relation to
packaging. The design in question is of a plastic water bottle. The
Plaintiffs (collectively, “ Cello ”) claim to have designed a unique
water bottle —in the words of the Designs Act 2000, one that has
both novelty and originality. This claim is based on the bottle’s
shape, configuration and surface ornamentation. Cello says the
Defendants (collectively, “ Modware ”) illicitly brought into the
market a product that is indistinguishable in every single respect,
down even to the colours of the water bottles. Though Cello makes
no claim in the colour or colour combinations, Mr Tulzapurkar for
the Plaintiffs makes a reference to the two-tone colour scheme of the
water bottles only to show the extent of copying. He also points out
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that even the packaging adopted by Modware is so remarkably
similar to Cello’s that it cannot be a mere coincidence.
2. The facts lie in a narrow compass. Both Plaintiffs are
partnership firms. They are part of the Cello Group of companies.
They make various types of plastic insulated products such as
bottles, bowls and so on. The 2nd Plaintiff owns the house mark
CELLO . It controls this for other group companies. The 1st
Plaintiff manufactures and markets these products bearing the
house mark.
3. Paragraphs 4 and 5 of the plaint speak to the Plaintiffs’
reputation and corporate track record. There is no dispute about
this. Cello claims a high sales turnover and promotional expenses. I
will accept this too as correct. There is no denial and no part of the
defence is based on this.
4. The bottle in question is known as the PURO bottle. The
Plaintiffs say it has a unique innovative, original and novel design.
The novelty claimed is set out in paragraph 11 of the plaint and its
sub-paragraphs:
“11. The feature of novelty in PURO Bottle design
resides inter alia in its overall shape, configuration and
surface pattern making the said design aesthetically
appealing and attractive. The characteristic features
used by the Plaintiffs to impart distinctive design to the
PURO bottle along with the cap manufactured by them
are highlighted herein below:-
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(1) The Plaintiffs’ PURO bottle has a unique
shape, configuration and surface pattern;
(2) The configuration of the bottle is such that
it appears as if the body of the bottle is
divided into separate parts;
(3) The surface pattern of the bottle has a
unique type of oval/egg shape curve,
which looks aesthetically attractive.
Unsymmetrical places reversed oval
graphics on main body gives
contemporary and unique impression to a
bottle.
(4) Interplay of stepped up and stepped down
surfaces creates unique surface pattern.
(5) Minimal yet clean and bold graphic
elements makes PURO Bottle stand out in
cluttered market place/against the
competition.
(6) The flip cap of the bottle also appears that
it has divided into two parts.
(7) The surface of bottle has a shining effect,
which gives elegant effect to the PURO
Bottle.
(8) The main body of the PURO bottle as also
its cap contains a unique colour
combination of two colours.
(All above features of PURO Bottle, are hereinafter
collectively referred to as “the said features”).
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5. Cello says it created this bottle in-house in May 2016. It
applied for registration with the Controller General of Patents,
Designs and Trade Marks, who granted the application under
Design Registration No. 283345 on 23rd August 2016 with a priority
1
date of 12th May 2016. Cello claims this bottle is unbreakable, leak-
proof and, being BPA-free, safe. In paragraph 18 of the Plaint, Cello
says the aesthetic (i.e., the non-functional or capricious) elements in
the design, including the surface ornamentation and the other
unique features referred to earlier, have never been used in such
combination for any previous bottle. The PURO bottle is sold in
various two-tone colour combinations in a distinctive packaging. It is
one of Cello’s most successful and popular products. A separate
statement of sales from May 2016 to December 2016 for the PURO
2
bottle, certified by the Chartered Accountants, is annexed, as are
3
sample invoices. Cello claims that in that very brief span of six
months or so, it achieve PURO bottles sales in excess of Rs. 7 crores.
Cello also says it was widely advertised.
6. Cello claims that it came upon Modware’s rival bottle, under
the name KUDOZ, in the third week of January 2017. The similarity
is so exact, says Mr Tulzapurkar, that both infringement and passing
off are self-evident.
7. In paragraph 21 of the plaint, Cello first sets out in a tabular
fashion its product and compare it to Modware’s. There follows a
1 Plaint, Exhibit “E”, pp. 104–110.
2 Plaint, Exhibit “G”, p. 112.
3 Plaint, Exhibits “H-1” to “H-31”, pp. 113–143.
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description of similarities. I will reproduce the images that are to be
found in the plaint, as also those in paragraph 21 relating to the
packaging:
Plaintiffs’ PURO Bottle Defendants’ impugned
KUDOZ Bottle
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The Plaintiffs’ PURO bottle has a
unique shape, configuration and
surface pattern
Identical shape, configuration
and surface pattern has been
adopted by the Defendants
The configuration of the bottle is
such that it appears as if the body
of the bottle is divided into separate
parts
The configuration of the bottle
is such that it appears as if
the body of the bottle is
divided into separate parts
The surface pattern of the bottle has
a unique type of oval/egg shape
curve,
The surface pattern of the
bottle has similar type of
oval/egg shape curve,
Interplay of stepped up and
stepped down surfaces creates
unique surface pattern.
Interplay of stepped up and
stepped down surfaces
creates similar surface
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pattern.
The bottle has a flip cap which has The bottle has a flip cap
been divided into two parts. which has been divided into
two parts.
The surface of bottle has a shining The surface of bottle has a
effect shining effect
The main body of the PURO bottle
as also its cap contains a unique
colour combination of two colours.
The main body of the
impugned bottle as also its
cap contains a unique colour
combination of two colours.
8. The packaging comparison images are from paragraph 22 of
the plaint.
Plaintiffs’ PURO Bottle Defendants’ impugned KUDOZ
Packaging Bottle Packaging
FRONT SIDE
FRONT SIDE
The getup, colour combination
and background of the
packaging bag is very attractive
and unique
The Defendants haveused a
similar getup, colour combination
and background for its
packaging.
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BACK SIDE
BACK SIDE
The placement of word like BPA
Free, Insulated Water bottle,
Break Free, Leak Proof etc. are
copied from the Plaintiff’s
packaging.
9. I have reproduced these images not for a juxtaposed
comparison myself, but because when the actual bottles and
packaging were placed before me, my question to Counsel on both
sides was “Which is whose?” I should imagine that in an action such
as this, that is more than enough for the grant of interim relief. After
all, this branch of law requires the test to be that of the Court’s
impression, presumably on the footing that if a judge cannot tell the
difference then more should not be demanded of the average
consumer, he of average intelligence and imperfect recollection.
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10. The tests for the reliefs in infringement and passing off often
overlap. Similarity in the two products is undoubtedly common
ground. If one should find, therefore, that Modware’s product is
confusingly and deceptively similar to that of Cello’s registered
design, ordinarily an injunction on the cause of action in
infringement should follow. The defences are few and well-known.
These would include saying that the design is known to the prior
art; there is prior publication or, perhaps, that the plaintiffs’ only
claim, correctly read, is neither of novelty nor originality but of
merely cobbling together several pre-existing known designs, or
mosaicing. Indeed, these are the principal defences that Mr Tolia for
Modware takes.
11. Slightly different considerations arise when assessing the
claim in passing off. Here, as in any passing off action, a plaintiff
must satisfy all three probanda of the so-called Classical Trinity: (i)
reputation and goodwill in the goods; (ii) misrepresentation by the
Defendants; and (iii) damage. This posits that similarity is
demonstrated to begin with; that done, the question then is not so
much whether it is confusing, but whether it is calculated to deceive.
Passing off is an action in deceit; the deceit lies in the
misrepresentation; and the misrepresentation must be as to source,
i.e., to deceive the average consumer into believing the defendant’s
product is the plaintiff’s. There need not be fraud, and intention is
irrelevant. It is well-settled that actual damage does not have to be
proved. The mere likelihood of damage, viz., that damage was
reasonably foreseeable, suffices. Reputation and goodwill are also
slightly different concepts. This has been the subject of some debate
in international cases but this need not detain us today because Cello
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claims both reputation and goodwill and does not seek to treat the
two as synonymous. There is some authority for the proposition that
there must be a sale, because without a sale there is no
misrepresentation; and, too, for the proposition, that there must be
some prima facie evidence of misrepresentation, this not being a
presumption. That material can come in different forms, and one of
this might be to show the extent of copying and its exactitude, or to
show that elements other than those in which protection is claimed
have also been copied.
12. The passing off alleged is not only of the bottle itself but also
of the packaging. At this stage, I will note a few sections of the
Designs Act 2000.
2(d) “ ” means only the features of shape,
design
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; but does not include any mode or principle of
construction or anything which is in substance a mere
mechanical device, and does not include any trade
mark as defined in clause (v) of sub-section (1) of
Section 2 of the Trade and Merchandise Marks Act, 1958
(43 of 1958) or property mark as defined in section 479
of the Indian Penal Code (45 of 1860) or any artistic
work as defined in clause (c) of section 2 of the
Copyright Act, 1957 (14 of 1957);
4. Prohibition of registration of certain designs.— A
design which —
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(a) is not new or original; or
(b) has been disclosed to the public anywhere in
India or in any other country by publication in tangible
form or by use or in any other way prior to the filing
date, or where applicable, the priority date of the
application for registration; or
(c) is not significantly distinguishable from known
designs or combination of known designs; or
(d) comprises or contains scandalous or obscene
matter, shall not be registered
(1) Any person
19. Cancellation of registration. —
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 the design has been previously registered in
India; or
(b) that it has been published in India or in any other
country prior to the date of registration; or
(c) that the design is not a new or original design; or
(d) that the design is not registrable under this Act;
or
(e) that it is not a design as defined under clause (d)
of section 2.
(2) An appeal shall lie from any order of the
Controller under this section to the High Court, and the
Controller may at any time refer any such petition to the
High Court, and the High Court shall decide any petition
so referred.”
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13. Modware has made no application for cancellation of Cello’s
registered design.
14. Annexed to the plaint also, apart from the body of the plaint,
are further comparisons. Cello’s PURO bottle is shown in different
colours at pages 100, 101, 102 and 103 and is contrasted with
Modware’s KUDOZ bottles in corresponding colours at pages 144,
145, 146 and 147.
15. Mr Tolia’s defences are these. He says, first, that there is
prior publication. He says this on the basis that Modware also
manufactures bottles. His case is that a bottle is a bottle, by
whatever name called. It is a container of liquid. Generally, it is
taller than wider. Modware makes very many bottles. So do others.
He shows me images of Modware’s various bottles and those of
other manufacturers. All these are just bottles, he says. Therefore,
according to him, there is neither novelty nor originality in Cello’s
claim as to ‘shape’ or ‘configuration’. Others have also made tall
cylinders with screw top or flip top lids. Cello can claim no
originality in these.
16. In paragraph 9 of the Affidavit in Reply, Modware claims that
the shape of the PURO bottle is “the natural shape of any bottle”
and this is millennia old. In paragraph 11 it then claims that the
surface pattern or ornamentation has no novelty. This is ‘merely’ an
ovoid shape embossed or recessed on the bottle’s surface. Modware
also suggests that the oval shape is functional to provide a better
grip. Cello makes no such claim. There is no evidence of this at all.
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17. As to the bottle in question itself, Mr Tolia says all that
Modware did was to take the lid from one of its other products, Kool
Kruiser , and apply it to the KUDOZ product. The Kool Kruiser
bottle has been in the market in the past. Therefore the ‘design’ is
known to the prior art. There is prior publication. In April 2014,
Modware launched its Kool Kruiser bottle. In May 2009, it applied
for registration of its Kool King bottle, another similar design,
according to Mr Tolia. Mr Tolia insists Modware’s KUDOZ bottle
is similar to its own earlier products, Kool Kruiser , Kool King and
Mario in various regards — some in respect of shape, some in
respect of configuration and some in respect of design. But all these,
even from the images that are shown in the Reply, are entirely
different from Modware’s impugned product, KUDOZ.
18. The difficulty in accepting any of this is graphically
demonstrated at page 132 of the Notice of Motion paper book where
Modware’s KUDOZ bottle is set next to its own Kool Kruiser bottle.
The two are entirely different products. The Kool Kruiser is nothing
at all like Cello’s PURO; but Modware’s KUDOZ bottle is almost
exactly Cello’s PURO bottle. That is the totality of the case before
me.
19. The a-bottle-is-a-bottle argument must be rejected. It is not
possible to accept this submission that no vertical cylindrical fluid
container can have either originality or novelty because it is, after
all, vertical and cylindrical. That is an unacceptable over-
simplification of the requirements of the Designs Act and of the law
on the subject.
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20. I find no explanation for Modware taking not only this
registered design but its identical — or, at any rate, an extremely and
certainly deceptively similar — packaging and the same two-tone
colour combinations. These are all issues that will have to be
considered in the context of the settled law on the subject. There is
no manner of doubt in my mind that on all three aspects, i.e., shape,
configuration and ornamentation, the Modware KUDOZ product is
wholly indistinguishable from Cello’s PURO bottle.
21. The first test to which Mr Tulzapurkar invites my attention is
that set out in SJ Kathawalla J’s order in Whirlpool of India Ltd v
4
Videocon Industries Ltd . The decision covered a range of issues in
the context of rival designs for washing machines. Paragraph 25 of
the decision sets out the tests to be applied in deciding what
constitute an obvious imitation and is actionable as such:
“26. The question of what tests are to be applied in
deciding what constitutes an obvious imitation and/or is
actionable is no longer . This question has
res integra
been considered in several judicial pronouncements.
The leading decisions on the point are the decisions in
the case of
Castrol India Limited vs. Tide Water Oil Co.(I)
(1996 PTC (16) 202) and
Limited Kemp & Co. vs. Prima
(Vol. 101 (1) BLR 65). In both the
Plastics Limited
decisions, the Kolkata High Court and the Bombay High
Court have laid down the following propositions as
constituting the test to decide whether there is obvious
imitation and/or piracy of a registered design.
4 2014 (60) PTC 155 (Bom) : 2015 (1) Bom CR 137.
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Castrol India Limited vs. Tide Water Oil Co.(I)
:( )
Limited supra
(i)
The word ‘imitation’ does not mean ‘duplication’
in the sense that the copy complained of need not be
.
an exact replica
(ii)
The Court is required to see in particular as to
whether the essential part or the basis of the Plaintiff’s
.
claim for novelty forms part of the infringing copy
(iii)
The similarity or difference is to be judged
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
(iv) The Court must address its mind as to
whether
the design adopted by the Defendant was
substantially different from the design which was
registered. The Court ought to consider the rival
designs as a whole to see whether the impugned
from the design sought
design is substantially different
to be enforced. (The test laid down on
Benchchairs Ltd.
. (1974 RPC 429) was cited with
C. Chair Center Ltd
approval).
(v) ‘Obvious’ means something which, as soon as
one looks at it, strikes one as being so like the original
design/the registered design, as to be almost
unmistakable.
Fraudulent imitation is an imitation
which is based upon, and deliberately based upon, the
registered design and is an imitation which may be
less apparent than obvious imitation, that is to say,
one may have a more subtle distinction between the
registered design and a fraudulent imitation and yet
although it is different in some
the fraudulent imitation,
respects from the original, and in respects which render
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it not obviously an imitation may yet be an imitation
perceptible when the two designs are closely scanned
and accordingly amounts to infringement. (The test laid
down in
Dunlop Rubber Co. Ltd. v. Golf Ball Developments
. ((1932) XLVIII RPC 279) was cited with approval.
Ltd
: ( )
Kemp & Co. vs. Prima Plastics Limited supra
(i)
If the visual features of shape, configuration
pattern designs are similar or strikingly similar to the
eye, it is not necessary that the two designs must be
exactly identical and same. The matter must be looked
at as one of substance and essential features of the
.
designs ought to be considered
(ii) In a given case,
where the registered design is
made up of a pattern which has no one striking
feature in it, but it appeals to the eye as a whole, it
may very well be that another design may be an
imitation of it which makes the same appeal to the eye
notwithstanding that there are many differences in the
. (The opinion of Farwell J. in
details Dunlop Rubber Co.
. ((1932) SLVIII RPC
Ltd. vs. Golf Ball Developments Ltd
279) was cited with approval).
(iii) In comparing rival designs the Court is required
to see whether the impugned design/product is
substantially different to the design which is sought to
be enforced.
The aforesaid tests have been independently applied
and/or followed in a series of judgments of various High
Courts, including judgments in
JN Electricals (India) vs.
(ILR 1980 (1) Del 215, paras 24-
M/s. President Electricals
25); (1997 PTC 17, para 36);
Alert India vs. Naveen Plastics
(2003 (26)
Hindustan Sanitaryware v. Dip Craft Industries
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PTC 163 (Del), para 8), and
Dabur India v. Amit Jain & Anr.
(2009 (39) PTC 104 (Del) (DB)).”
( Emphasis added )
22. The approach is not, as the Court said, in identifying
individual similarities or dissimilarities. These are not dispositive.
The judicial assessment must be on an examination of the rival
products, actually made available if possible. The products and
designs must be seen as a whole, from the perspective of the
common consumer. The test is of visual appeal, and the task is to
see if the essentials of that which makes it visually appealing have
been substantially, but not necessarily exactly, copied.
23. In this case too, one of the defences taken is that Modware
took the lid from one its own other designs and applied it to the one
Cello says is the infringing product. Mr Tulzapurkar’s submission is
that once an explanation offered by Modware is found to be
unworthy of credence, the inevitable conclusion must be that
Modware copied Cello’s design. This is a submission hard to resist.
24. In Whirlpool , the defendants too alleged lack of novelty. This
is how Kathawalla J dealt with that submission:
“40.
The next defence which the Defendant has
raised to the Plaintiff’s registration is the lack of
novelty in the Plaintiff’s design. It has been contended
that there is no new, novel or original shape in the
Plaintiff’s design. The Plaintiff’s design is a
.
combination of known designs The Defendant urges
that the Plaintiff has used designs (or parts thereof)
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which were in the public domain and the aggregation
thereof, in the form /shape of a present design, lacks
novelty and/or originality. In support thereof, the
Defendant had adduced extensive material which
amounts to a virtual aggregation of almost all the
available washing machines. If the machines depicted
in the Defendant’s material are considered, it is
impossible to discern how a defence of lack of novelty
or originality based on a plea of combination of known
The Plaintiff’s product has a
designs can be sustained.
design and/or shape which is very distinctive and is a
novel combination of a distinctive circular shaped wash
area, an equally distinctive rectangular shaped dry area
and a uniquely placed and/or designed panel. In an
attempt to discredit this combination the Defendant has
placed on record washing machines which are largely
rectangular in shape. Realizing that this material is not
adequate, the Defendant in a further affidavit in reply
dated 30th July, 2013, then sought to place reliance
upon some products and/or registrations from
China/Hong Kong (Pages 147-150 of further Affidavit in
reply of the Defendant dated 30th July, 2013).
None of
these have any similarity with the Plaintiff’s product. In
fact as submitted on behalf of the Plaintiff, each
subsequent design/product relied upon by the
Defendant has only been progressively and
The Defendant has in particular
increasingly different.
placed strong reliance on a US Patent office
specification which contains the design of a semi
automatic washing machine which is found at page 420
of the written statement which is reproduced herein
below. …
( Emphasis added )
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25. This entirely covers the defences taken before me, too,
including Mr Tolia’s submission that Cello’s product is a mere
combination of known designs.
26. As to the question of passing off Kathawalla J held that there
was no dispute before him — and indeed there is none before me —
that under Section 2(z) of the Trade Marks Act, 1999, the definition
of “mark” includes the shape of goods.
27. Mr Tulzapurkar also draws my attention to the order of the
Division Bench in appeal from an earlier order in the same dispute,
and in particular paragraphs 13 and 14. There, Mr Tulzapurkar for
the Appellant took the very arguments that Mr Tolia takes today. Mr
Tulzapurkar did not succeed. Neither can Mr Tolia, and for exactly
the same reasons. Both decisions bind me, and particularly the
finding that novelty and originality are to be tested in the context of
aesthetic or visual appeal.
28. I must reject too Mr Tolia’s argument of mosaicing. I believe
it to be misapplied to this case. It is not a requirement of the law in
infringement or passing off in relation to a design that every single
aspect must be entirely newly concocted and unknown to the history
of mankind. If that were so, we should never see any new or original
design at all. It is a general rule that “mosaicing” of prior art, i.e.,
combining selected features in different prior art publications, is not
permissible when assessing whether an invention is new.
Conversely, mosaicing is also no defence to a charge of infringement
of a registered design. Mosaicing contemplates taking known
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integers or combinations and simply re-arranging them. In a
situation like ours, it might for example apply if Cello laid claim to a
very similar bottle with a similar shape, configuration and
ornamentation but merely repositioned the ornamentation by setting
it horizontally rather than vertically and doing not much else
besides. That is not the case here.
29. Mr Tulzapurkar also refers me to my previous decisions in
5
Selvel Industries & Ors v Om Plast (India) and Faber-Castell
6
Aktiengesellschaft & Ors v Cello Pens Pvt Ltd & Ors but I will pass
over these quickly, noting only that in this case, as in Selvel , I find no
plausible explanation from Modware as to how it chanced upon this
very design. In paragraph 27 of my decision in Faber-Castell I quoted
7
a passage from Johns v Hallworth :
“... I only refer to it as showing what the difficulty is;
because there, the Court of Appeal, consisting of three
learned Judges, all thought — their three pairs of eyes
all thought — that the similarities were supreme, as the
differences were of little moment.
The difficulty of the
task imposed upon the Judge consists in what I have
stated. One has to go through a certain process of
induction; because in no case that ever I tried and in
no case that I ever heard of was it not possible for the
Defendant to say, “I am perfectly at liberty to make
this article; I am at perfect liberty to call it so-and-so; I
am perfectly at liberty to attach to it such-and-such a
If you take
name,” and so on to the end of the chapter.
— as, of course, Mr. Bigham, as an advocate, did take —
5 2016 (67) PTC 286 (Bom).
6 2016 (65) PTC 76 (Bom).
7 14 RPC 225.
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the points of similarity in detail, it is often not very
difficult — sometimes it is extremely easy — to show
that in all those points of similarity the Defendant is
perfectly right and has played the part of an innocent
man. That applies directly to this case. No one contends
that the Defendants are not entitled to manufacture and
sell polishing cloths; nobody contends that they are not
entitled to manufacture and sell polishing cloths of
certain sizes, or to impress thereon by printing or
otherwise certain words; nobody contends that they are
not at liberty to make these of Egyptian or American
cotton, and, if they make them of Egyptian cotton alone,
or of Egyptian and American cotton mixed, not to
produce them of a certain colour. Nobody contends that
this fact pile velveteen is not open and common to the
trade and suitable to the particular article; that it may
not be singed; that it may not be scoured.
All those
things are perfectly common to the trade; every one of
them may be done with perfect innocence. But, by an
inductive process, one may come to this conclusion,
that every one of those perfectly innocent things when
combined in a series may produce something which is
”
the reverse of innocent.
( Emphasis added )
30. This is exactly true of the present case. Mr Tolia’s attempt to
dismember the design into individual integers is futile. The
configuration, shape and ornamentation used in both is such that is
impossible to tell one from the other.
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8
31. Gorbatschow Vodka KG V John Distilleries Ltd is a decision
that relates to both Trade Marks Act and the Designs Act. On the
question of passing off and honesty in adoption, Chandrachud J (as
he then was) said in paragraph 25, citing the well-known case of
9
Slazenger & Sons v Feltham & Co .
“... There is sufficient nearness, sufficient
neighbourhood, in the one word to the
other, to justify me in coming to the
conclusion that it is calculated to deceive. I
shall, no doubt, be assumed to conclude
and I make no secret that I do conclude
that that finding is at least consistent with
the honesty of the case.”
As Lord Justice Lindley held in that case:
Well, what is that for?
One must exercise
one’s common sense, and, if you are
driven to the conclusion that what is
intended to be done is to deceive if
possible, I do not think it is stretching the
imagination very much to credit the man
with occasional success or possible
success. Why should we be astute to say
that he cannot succeed in doing that
which he is straining every nerve to do?
( Emphasis added )
I might say the very same; and I do. There is no reason that we here
today should be any more astute than Lord Justice Lindley, so as to
8 2011 (47) PTC 100 (Bom).
9 1889 RP Design 531
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say that Modware is unlikely to succeed in doing that which it is
evidently straining every nerve to do.
32. I am not impressed by Mr Tolia’s argument based on Section
4(1)(c) of the Designs Act 2000 that the Plaintiffs’ bottle is not
significantly distinguishable from known designs or a combination of
known designs. This is not demonstrated in the least. His argument
is that since a bottle is a bottle, and is always only a bottle, only an
expert that can tell one bottle from the other. I do not think this is
remotely true. For some who claim familiarity with bottles —
perhaps for reasons unrelated to their design — the differences are
evident; many cylindrical liquid containers are instantly recognized
as unique and as indicative of their contents. The expertise, usually
borne of much experience, in such cases has not so much to do with
the design of a bottle as its contents. No “expert” can add much
more than that which is obvious to the naked eye.
33. Mr Tolia then says that the Plaintiffs’ design was
‘anticipated’. How, he does not say, nor by whom. Certainly it does
not seem to have been “anticipated” by Modware, for it waited till
the PURO bottle reached the market before embarking on
production of its own competing product. Copying is not
anticipation. However, it may very well be both infringement and
passing off.
34. Mr Tolia places a very great deal of reliance on the decision of
10
the House of Lords in Phillips v Harbro Rubber Company . This was
10 Vol. XXXVII RPC 233.
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also a case of design infringement. It pertained to a surface pattern
of India rubber pads or plates for heels or boots and shoes. Mr Tolia
emphasizes this to suggest that it is not the eye of the layman that
should be determinative but it should be that of an instructed
person, one who would know what was common trade knowledge
and usage in the class. I understood this submission, based on pages
239 and 240 of the report, to mean that it would require an expert or
a person well versed in the trade to be able to say what was and what
was not previously known to that trade; more particularly to prevent
normal trade variants from being masqueraded as new or original.
Where, for example, Mr Tolia says, it is not a question of a
combination but merely an optional addition to the article then the
tests of design registration are not met and no injunction should be
granted. In the context of the items before me, he submits that there
is nothing to show that the oval ornamentation — the “optional”
element in our case — is unique. I would actually invert this. There
is nothing before me to show that it was ever commonplace;
certainly Modware has not brought forth any such material. I do not
see how we can rely or demand the views of an expert to show us
something that simply does not exist or is not shown to be exist. It
would be for Modware to show that such ornamentation is
commonplace. What the argument overlooks, I believe, is that the
House of Lords was duly instructed on the commonplace elements
of trade use. We find this at page 241 of the report, placetum 5. I
have no such ‘instruction’ and Mr Tolia is unable to offer any for
reasons that I think that are obvious.
35. But what really fails Mr Tolia’s cause is the observation at
page 243 of this very report at placetum 10 that the design must be
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taken as a whole . In that case, the House of Lords may have found
neither novelty nor originality but I do not think it is at all legitimate
for Mr Tolia to expand this to suggest that the various integers in the
bottle be segregated and each integer separately tested for novelty
and originality. That is not even Cello’s case. For a given bottle for,
say, the manufacture of perfumes, fragrances or specialized liquor
products, it is entirely conceivable that the bottle would take a
completely unique shape, a never-seen-before combination of shape,
configuration and ornamentation.
36. Mr Tolia is incorrect in saying that an expert view is the only
test of novelty and originality. I believe Mr Tulzapurkar is justified
in his reliance on the decision of the Court of Appeals in Wright,
11
Layman & Umney LD v Wright . This was in the context of passing
off and the question was whether there was anything to clearly
distinguish the defendants’ product from the plaintiffs. That should
be the determinant. In the present case, I am not shown anything to
support any such distinction.
37. As to the question of reputation and goodwill, let us look at
the distinct factors that the Plaintiffs have pleaded in support of
their case. There is, first of all, largely uncontroverted, the material
regarding evidence of sales. Paragraph 19 of the plaint says (and I
will leave aside all sales figures) that in a six or seven month period,
Cello achieved sales for this particular bottle in excess of Rs 7
crores. The answer to this is not what Modware suggests: that there
are other bottles that are available in two tones, that there are bottle
11 LXVI RPC 149.
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tops or lids others arguably of a similar shape although none are
shown to have the combination Cello’s bottle does. There is not, I
find, a specific traverse of paragraph 19 of the plaint and perhaps
that might be expecting too much. So when it comes to reputation
the first factor we have is this large volume of sales. Then there is a
statement by the Plaintiffs of the wide advertising done of the bottle.
But the law on passing off requires that a reputation be established
as to source, i.e., as to the Plaintiffs. This might be little more
difficult where the manufacturer is a new entrant in the market.
Cello is not. The reputation of the Cello house mark is already such
that the Plaintiffs are an established name in direct relation to that
mark. The question is not of identification of the brand, i.e., PURO
and the Plaintiffs do not suggest that people necessarily buy a bottle
by this name. What they do suggest is that people tend to prefer
bottles with the CELLO mark, i.e., as identified as coming from the
Plaintiffs’ house or source; within that range of choice of Cello’s
products, this particular bottle has achieved a great deal of
commercial renown. The question of establishing reputation for the
purposes of passing off by identifying the product and its origin or
source is thus answered.
38. This takes us to the second requirement of showing
misrepresentation, and there, I imagine this must be a case of res ipsa
loquitur . I can think of no tenable explanation for Modware to have
adopted a shape, configuration and ornamentation so very nearly
identical to that of Cello. Showing other bottles of the same height
or girth does not take Modware the required distance. There is no
explanation for the indistinguishable colours either, i.e., the exact
same two-tone colour combination used by Cello. Modware did not
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take merely a two-tone scheme but with different colours. Modware
took exactly Cello’s colours and colour combinations. This is true
too of the packaging that Modware chose, and here again between
the blue colour, the droplets of water and so on, the one is
indistinguishable from the other.
39. What does this tell us? Everything points but in one direction
that Modware was attempting to deceive consumers into believing
that its products came from the house of Cello. This is, therefore,
prima facie , an attempt calculated to deceive and the deception and
misrepresentation is as to source or origin. These are the necessary
requirements that must be met in a cause of action in passing off.
40. Modware also contends that this Court does not have
territorial jurisdiction to entertain the Suit. I do not actually see how
this can be raised because paragraphs 25 and 26 of the Reply do
contain a statement that the label or printed matter on Modware’s
own product shows the address of one Lalitkumar Shah, a relative of
the 2nd Defendant. That address is in Mumbai. In paragraph 27 the
Defendants claim this address was only ever ‘used for
correspondence’ and Shah has no connection with the Defendants.
That is a submission that needs only to be stated to be rejected.
Indeed I find it inconceivable that anyone would put a
‘correspondence only’ address on a physical object being offered for
sale. This is usually found on letterheads and stationary but not on
tangible product put to market. What is not denied, though, is that
there is such a label; it is on Modware’s product; and the address on
that label is in Mumbai. The defence here is futile.
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41. In my view, there is more than sufficient cause made out for
the grant of interim reliefs. An ample prima facie case is made out
and the balance of convenience is clearly in favour of the Plaintiffs,
to whom irreparable injury would be caused in my view if the
injunctions sought are denied.
42. On 2nd February 2017 I granted an ad-interim order in terms
of prayer clause (a), (b) and (c). I will confirm that as the final order
on this Notice of Motion.
43. The Suit, in my view, will need to be registered in the
Commercial Division. The Registry will take the necessary steps in
that regard acting on an authenticated copy of this order.
44. In view of the amendments to the Code of Civil Procedure
1908 brought by the Commercial Courts, Commercial Division &
Commercial Appellate Division of High Courts Act 2015, and in
particular the amendments to Section 35 and 35A of the Code of
Civil Procedure 1908, this would mean that costs would follow the
event, and an award of costs would have to be made against the
Defendants. The amended Act requires me to give reasons for not
awarding costs and, therefore, this: in view of the fair approach of
Mr Tolia and Mr Soman throughout, and noting they have argued
their case with admirable economy of time, I believe this is not a fit
case for the award of costs.
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45. The Motion is made absolute in these terms, with no order as
to costs.
(G. S. PATEL, J.)
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