2016 (7) TMI 1190 - HC - Indian Laws

Violation of copyright - infringing products designs - the products i.e. food grade plastic storage containers known as Tupperware registered as trade mark in the name of plaintiff - design infringement under Section 20 of the Designs Act; - copyright infringement under Section 55 of the Copyright Act; - Held that - unless a work of art is capable of design protection and has been registered as a design, or should have been registered as a design, the copyright in the underlying artistic work subsists independently of design rights. In this case, the work is protected as a design; the averments in the suit are that design registration subsists in respect of the products which the defendants are alleged to have infringed. In the circumstances, the question of asserting a copyright infringement claim, independently, when the design protection subsists, but infringement has not been prima facie established, cannot arise at all. In the present case, the copyright protection (and infringement) claim is premised on a bare assertion that the drawings (from which the moulds are made) are artistic works, because considerable amount of money was spent on the making of such molds. Though the court cannot comment on the veracity of such claim, at least the decision in Modak (2007 (12) TMI 466 - SUPREME COURT) now binds it to examine every copyright claim closely, to see whether there is some minimum creativity. Now, the plaint nowhere discloses that the drawings (i.e. the artistic works here) have any inherent capability of art it is evident that these drawings are of commonplace every day articles used in households. The idea expression doctrine, itself would prima facie prevent copyright protection because the depiction of daily articles cannot per se be enclosed to create a monopoly where the legitimate monopoly (design right) which the plaintiffs could have claimed, has not been prima facie established by them. Whilst in the case of trade dress in the form of label or mark, distinctiveness is easily discernable, in the case of shape based trade dress, the plaintiff has to necessarily show that the get up of the product or article (over which certain exclusivity or distinctiveness is claimed) has an integral association only with it. Unless this requirement is pleaded and established, (and for interim injunction purposes, at least prima facie) every product with a commonplace shape would ride on the reputation of an exclusive trademark, based on a distinctive name, label or color combination of the packaging or label, etc. In this case, the distinctiveness of the shape of the product- asserted to be unique or solely associated with the plaintiff has not been so pleaded and established. Decided against the appellant / plaintiff.

Summary

Issues Involved:
1. Design Infringement
2. Copyright Infringement
3. Passing Off
4. Unfair Competition and Unfair Trade Practices

Issue-wise Detailed Analysis:

1. Design Infringement:
The plaintiffs claimed that the defendants copied their designs for food-grade plastic storage containers, infringing on their registered designs. The court noted that the plaintiffs had obtained registrations under the Designs Act and the Copyright Act, but the defendants argued that the designs were previously published and lacked novelty. The court, referencing previous decisions, concluded that the designs were not new or original as they were published in "The Tupperware Cook" book, thus lacking the novelty required for design protection. Consequently, the plaintiffs were not entitled to a temporary injunction on the grounds of design infringement.

2. Copyright Infringement:
The plaintiffs asserted that their product drawings and mould drawings were "artistic works" under Section 2(c)(i) of the Copyright Act and that the defendants infringed these copyrights by using reverse engineering. The court, however, found that the plaintiffs' claim of copyright ceased under Section 15 of the Copyright Act, which states that once a design is registered under the Designs Act, copyright therein shall not subsist. The court held that the plaintiffs' drawings were used for manufacturing purposes and thus did not qualify for copyright protection. Therefore, the plaintiffs' claim of copyright infringement was not maintainable.

3. Passing Off:
The plaintiffs argued that the defendants' products were visually similar to their Tupperware products, leading to consumer confusion. The court noted that the defendants' products were sold under a different trade name, "Signoraware," and there was no evidence of the defendants passing off their goods as Tupperware products. The court observed that the defendants were merely puffing up their products by claiming they were as good as Tupperware but sold at half the price. Thus, the court found no prima facie case of passing off.

4. Unfair Competition and Unfair Trade Practices:
The plaintiffs claimed that the defendants' actions amounted to unfair competition and unfair trade practices. However, the court did not find sufficient evidence to support this claim, as the defendants' products were distinct in trade name and packaging. The court emphasized that the plaintiffs failed to establish the distinctiveness of their product shapes as a source identifier, which is crucial for a passing off claim based on trade dress similarity.

Conclusion:
The court dismissed the appeal, finding no prima facie case for design infringement, copyright infringement, or passing off. The plaintiffs' claims lacked the necessary evidence to establish the novelty of their designs, the subsistence of copyright in their drawings, and the distinctiveness of their product shapes. The court upheld the single judge's decision, emphasizing the importance of clear and substantial evidence in intellectual property disputes.