TMI Blog2016 (7) TMI 1190X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 requireme ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ng use, reliability, high quality and wide publicity of the Tupperware products, has resulted in TIPL s substantial goodwill and reputation in India for the Tupperware products so much so that these products are identified by the customers by their respective design(s) and for being innovative and high quality products. The plaintiffs also claim that these products have won several design awards the world over. The Guinness Book has listed Tupperware products amongst ten greatest inventions of the 20th century. It is one of the seven US companies to recently receive the '2004 Good Buy Award' for its 'Stuffable Storage Containers' which is an award given by the Good Housekeeping Institute in USA. Details of awards won by the plaintiff over the years are furnished along with the plaint. The plaintiffs have also filed various newspaper and magazine clippings to show the goodwill and reputation which Tupperware products enjoy. 3. The plaintiffs claim that the diverse range of Tupperware products is known worldwide for its unique designs, world class quality, technical and functional superiority over similar kind of products produced by many other plastic manufacturer ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the suit filed by the plaintiff under Section 22 of the Design Act is not maintainable and 12 designs in question were previously published; thus neither new nor original. It was also urged that the first defendant is the sole proprietorship firm of fourth defendant; the second, third and fifth defendants had nothing to do with the suit. The sixth defendant too had nothing to do with the business of the first defendant and was only purchasing the material from the first and fourth defendants. The locus standi of TIPL to file the suit is also challenged on the ground that registration of the designs is in favor of Dart. TIPL was not a licensee to use these designs in India. The territorial jurisdiction of this Court to entertain and try the suit was challenged. The maintainability of the suit under Section 55 of the Copyright Act was challenged stating that the plaintiff has made the disclaimer vis- -vis the copyright while obtaining the design registrations. It was also alleged by the defendants that there was no trademark or copyright infringement and there is no question of any confusion. It is also contended that passing off action under the Design Act is not even maintainable. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t designs were registered in favour of an applicant (here, Dart) it did not strengthen its case, because registration was only prima facie evidence of novelty and originality, the essential requirements of design protection in law. In sum, the learned single judge ruled that the materials to destroy novelty and to say that the designs were previously published were contained in the book revised new edition (C) 1989 The Tupperware Cook . The single judge then stated that at the stage of granting or refusing temporary injunction, the court has to assess the prima facie strengths of the parties. The Court took note of an earlier decision, Ravinder Kumar Gupta v. Sh. Ravi Raj Gupta and Ors. 1986 PTC 50 that ......The Court has to consider and look at the designs in question with an instructed eye and say whether there is or is not such a substantial difference between that which had been published previously and the registered design as to enable the proprietor of the registered design to say that at the date of registration that was a new or original design and, therefore, properly registered. 1 Rosedale Associated Manufacturers Ltd. v. Airfix Ltd.1, Hills v Evans186 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s also gave them right over 3D and 2D objects and articles; the defendants used such objects and with computer aided programs, were able to misuse the drawings. 10. The impugned judgment rejected copyright claims, stating colour and colour combination by virtue of Copyright Act, cannot result in exclusivity under the law and the case of alleged infringement of copyright under Section 45 of the Act is not maintainable. It was also observed that the copyright claimed by the plaintiffs ceased to exist under Section 15 of the Copyright Act. Samsonite Corporation v. Vijay Sales 1998 (18) PTC 372 was relied on for purpose. It was stated that the drawings in question were prepared by the plaintiffs for the purpose of creating designs for the products to be launched, as alleged in the suit. Description of various processes - from conceptualization of idea, creation of drawings, and moulds, leading to the manufacture of the product was for the purpose of product creation. Microfibres Inc. v. Girdhar Co. Ors , 128 (2006) DLT 238 Polymer Papers Ltd. v. Gurmit Singh and Ors 2002 (25) PTC 327 (Del.)and Samsonite Corporation v. Vijay Sales (supra) were followed and applied. The ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n held out by the defendant was not that the goods were Tupperware Products. On the contrary, representation was that they were the products of a different manufacturer namely Signoraware Products and were being sold at half the price of Tupperware Products though they were look alike of Tupperware Products. Thus, in terms of this statement by the plaintiff, the defendants were not passing off their goods as that of Tupperware Products. The representation was that though they were similar to Tupperware, they were also cheap. This representation about half the price of the Tupperware Products meant that the defendants were making it clear that though the products were not Tupperware Products but they were equally good and were sold at half the price of Tupperware Products. The single judge also observed prima facie that the defendants were, at the most, puffing up their product by alleging that they were of the same quality as Tupperware Products and selling at half the rates but had not created or tried to create any confusion. Rather, they were selling their own product, represented to be as good as that of plaintiffs products. The question of passing off, therefore, did not aris ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 49), the name under which a business trades will almost always be a trade mark (or if the business provides services, a service mark, or both). Independently of questions of trade or service mark, however, the name of a business (a trading business or any other) will normally have attached to it a goodwill that the Courts will protect. An action for passing off will then lie wherever the defendant-company s name, or its intended name, is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses. If this is not made out there is no case. The ground is not to be limited to the date of the proceedings; the Court will have regard to the way in which the business may be carried on in the future, and to its not being carried on precisely as carried on at the date of the proceedings. Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently. 10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... to give the article a distinctive appearance or characteristic of the goods of the manufacturer. If that be so, the manufacturer may be able to establish that he has a reputation and goodwill in the distinctive appearance of the article itself which would furnish a cause of action in passing off. 12. Under the Trade Marks Act 1999, the shape of goods is now statutorily recognized as being a constituent element of a trademark. Section 2(zb) of the Trade Marks Act, 1999, define the expression trademark to mean a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and to include shape of goods, their packaging and combination of colours The appellant/plaintiffs also submit that conscious deception and striking resemblance in shape, configuration and pattern of the Infringing Products to the Tupperware Products is evident from a first glance at the infringing products without going into the minute details of size, capacity, design, material used, colour combinations, product finish and the logos and trade names. Several cases are cited in support of the contention that colour co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , 2000 and acquired an exclusive right to apply and cause to be applied to the Tupperware products the registered design comprising the features of shape, pattern and configuration etc. which appeal to the eye. These designs were original and novel and were created with the extensive knowledge, search, skill, labour and monies invested over several years by Dart s engineers and experts. Dart allowed and consented to TIPL s use of the said registered designs on the Tupperware Products as part of a worldwide arrangement as well as for the Tupperware Products to be offered for sale in India by TIPL. Unlawful use constituted a piracy of the registered design under Section 22 of the Designs Act, 2000. The defendants use of the same designs, are a fraudulent or obvious imitation of Dart s registered designs to enable sale of the infringing products. The striking similarity between Tupperware Products and the infringing products results in consumer s confusion evidenced from the market survey report dated 10.12.2004 submitted by AC Neilsen ORG MARG, an independent reputed survey organization. The affidavit of the Notary Public who witnessed the reaction of consumers during a visit by him ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... to take into account a material circumstance, the court should exercise restraint. 19. On the merits, learned counsel submitted that 13 designs asserted in the plaint are relating to the articles like Bowls, Casseroles, Lunch Boxes, etc., which on the face of them are commonly placed and lack novelty and originality within the meaning of Designs Act. The learned Single Judge analyzed features of each of these respective articles and came to the conclusion that all 13 designs were pre-published in nature and were trade variants of known designs. Counsel invited attention of the Court to the article-wise comparison of prepublication made by learned Single Judge in para 27 of the impugned judgment. It was submitted that having regard to the limited parameter for appellate intervention the single judge s decision should not be upset. Counsel submitted that mere registration or the fact that the appellant asserted that its products were unique or novel did not necessarily mean that they indeed were. The designs claimed to be unique or novel, were fairly commonplace; the incorporation of some features such as lines etc. did not per se mean that they became unique or design protecta ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... are', whereas the defendants' trade name is 'Signoraware'. Lastly, learned counsel relied on the judgment of the UK Chancery Division in Soci t des Produits Nestl S.A. v. Cadbury UK for the submission that to protect any claim for distinctive shape of a mark, the applicant must prove that a significant proportion of the relevant class of persons regards the trade mark (as opposed to any other trade mark which may also be present) as indicating the origin of the goods. 21. As to the submission that the impugned designs violated the copyright in the drawings, learned counsel stressed on Section 15 (2) of the Copyright Act to say that no copyright can subsist in any registered design. Since the plaintiffs were design proprietors in respect of the product, the question of separate copyrights in either the product or the drawings could not prima facie arise. It was urged that though the Division bench ruling in Microfibres (supra) segregates the independent copyright in works of art, it cannot be asserted that copyright can subsist in drawings of purely functional day to day articles, unless they have inherent or minimum creativity. Counsel stressed that the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t, the main factor required to be adjudged is the visual effect and the appeal of the picture illustration .If the visual effect of the pattern, the shape or the combination of the pattern, shape, dimension, colour scheme, if any, are not clear from the picture illustrations, the novelty cannot be said to have been destroyed by prior publication, unless there are clear and unmistakable directions to make an article which is the same or similar enough to the impugned design. The impugned judgment relied on Paras 3.89, 3.92, 3.93, 3.96, 3.121,3.147 and 3.181 Russell-Clarke on Industrial Designs (Sixth Edition). It was then noticed that novelty and originality was the bedrock of design protection law and that if the alleged infringer was able to show lack of novelty due to existence of the same design prior to its claim by the plaintiff, the action had to fail. Niky Tasha India Pvt. Ltd. v. Faridabad Gas Cadgets Pvt. Ltd. , AIR 1985 Del 136 which ruled that registration was only a prima facie evidence of proprietorship, was relied on. 24. The prima facie lack of novelty in respect of design registration for which the design infringement was alleged and materials publishe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the product drawing in any material form including depiction in three dimensions of a two dimensional work or in two dimension of a three dimensional work as well as to make any adaptation of the artistic work. It is also the case of the plaintiffs that the product drawings and mould drawings created by Dart determine the size and shape of the parts of the mould such that each part of the mould performs its function smoothly so as to arrive at the end product as designed. The plaintiffs argued that the defendants products are an obvious imitation of the Tupperware Products and there is a material and sufficient degree of objective similarity amounting to deceptive similarity between the two products. Therefore, the defendants have, by manufacturing infringing products, produced 'infringing copies' as defined under Section 2(m) of the Copyright Act, 1957. The infringement is possible by use of computer techniques possibly by 2D or 3D scanning, along with other inspection and measurement tools followed by use of such assimilated designs to ultimately reproduce the assimilated designs in a tangible and finished form i.e. the infringing products. 27. The defendants firstly ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ot apply to artistic works because of the definition of design (Section 2(d) of the Designs Act) which states that design means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means . 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). However, this ipso facto does not lead the court to agree with the plaintiff s contention. The language of Section 15 of the Copyright Act makes it clear that copyright does not subsist in a registered design. The rationale for this is that someone's choice of design registration is a conscious decision to use the underlying work, for mass production. The design then reaches, through the medium of the product or the article, a wider audience; it has a commercial element. This is of course possible in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rate or combined, which in the finished article appeal to and are judged solely by the eye . Thus design involves certain elements: there must be features of shape, configuration, pattern, or ornament and these must be applied (or intended to be applied in the words of Section 22 of the Copyright Act) to any article by way of industrial means or process. Section 22 emphasises the same aspects. Designs to which the section is to apply are those used or intended to be used as models or patterns to be multiplied by any industrial process. Thus a design may be the shape of a coal scuttle, a basin, a motor car, a locomotive engine or any material object, it may be the shape embodied in a sculptured or plastic figure, which is to serve as a model for commercial production, or it may be a drawing in the flat of a complex pattern, intended to be used for the manufacture of things such as linoleum or wall paper. Design copyright is thus to be distinguished from artistic copyright.. The Supreme Court succinctly set out the object of the Designs Act and Parliamentary intention in affording protection to designs, in Bharat Glass Tube v Gopal Glass Works Ltd. AIR 2008 SC 2520 The ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ght to apply the design to any article in any class in which the design is registered. 28. The issue with regard to the extent of, and the conditions for the copyright protection to such an artistic work, as an artistic work under the Copyright Act, which is a design registered or capable of registration under the Designs Act, is what is dealt with, by section 15 of the Copyright Act. Once the distinction between the original artistic work and the design derived from it, and the distinction between Copyright in an original artistic work under the Copyright Act, and a copyright in a design under the Designs Act is appreciated, the meaning and purport of section 15 of the Copyright Act becomes clear. 29. Section 15 of the Copyright Act is in two parts. The first part i.e. sub- section (1) states that copyright shall not subsist under the Copyright Act in any design which is registered under the Designs Act. Consequently once the design is created and got registered under the Designs Act, whether or not the design is eventually applied to an article by an industrial process, the design loses its protection as an artistic work under the Copyright Act. Therefore, subject to wh ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e Design would lose its copyright protection under the Copyright Act but not the original painting. If it is a design registrable under the Designs Act but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. This interpretation, in our view, would harmonize the Copyright and the Designs Act in accordance with the legislative intent. 46. We thus summarize our findings as follows: - a. The definition of ‗artistic work' has a very wide connotation as it is not circumscribed by any limitation of the work possessing any artistic quality. Even an abstract work, such as a few lines or curves arbitrarily drawn would qualify as an artistic work. It may be two dimensional or three dimensional. The artistic work may or may not have visual appeal. b. The rights to which a holder of an original artistic work is entitled are enumerated in Section 14(c) of the Copyright act. c. It is the exclusive right of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. This interpretation would harmonize the Copyright and the Designs Act in accordance with the legislative intent. 30. Therefore, 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. Nevertheless, this court would proceed that arguendo, such claims would need to be examined at this stage. 31. For copyright protection (since the plaintiff asserts that the drawings of the products, i.e., bowls, et ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ection (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 (supra) 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. For these reasons, it is held that the single judge s reasoning as to the lack of prima facie strength in the copyright infringement claim, cannot warrant interference. 33. On the issue of passing off action the plaintiffs had argued that the new and original des ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... are product namely Freezer mate (700 ml) was also illustrative of the passing off by the defendants inasmuch as the fountain shaped symbol shown on the sidewall and bottom of the Tupperware Product to indicate its use in refrigerator and its utility in the Freezer has been copied and placed at the same place in the infringing product which probably cannot be used in the refrigerator. iii) Another infringing product namely 4-in -1 Multipurpose Container and the Atta and Chapati Bowl are not only an obvious imitation of the design of the Tupperware Product namely Crystalwave Divided Bowl but also have the identical colour combination and even the written instructions on the lid as also the placement of the written instructions and the languages in which this written instructions which are given are identical. iv) In the case of two of the infringing products namely Executive Lunch and Classic Lunch Box , the defendants have not only made an obvious imitation of the registered designs of the corresponding Tupperware Products but have even used names matching those given to the identical Tupperware Products. Moreover the defendants are actively trying to cash on t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... defendants of the said product in the Indian market after the date of its design registration in favor of the plaintiff No. 1 but prior to the launch of the Tupperware Product in India is also indicative of the defendants actively trying to cash on the goodwill and reputation of the plaintiffs by imitating the design of the Serving Bowl sold subsequently in the Indian market. Similar is the case where the defendants have advertised the design of Executive Lunch. 35. The plaintiffs had argued that the single judge s rejection of this claim is not correct and cited the decision in Microlube India Limited v Rakesh Kumar .The defendants argued that there is no question of any confusion or deceptive similarity inasmuch as products of the plaintiffs and defendants are sold under totally different trade mark/name namely 'Tupperware' and 'Signoraware' respectively. It is also submitted that neither the plaintiff has alleged in the plaint about the trademark of the defendants nor any relief is claimed against the trademark 'Signoraware'. There is no common law right of passing off provided under the Designs Act. 36. The plaintiffs assertion of the right to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 51. There would be another interesting question for determination if the design is no more protected under the Designs Act and is now in public domain, whether passing off action would be maintainable. In view of such question and coupled with the fact that there are certain aspects which will have to be settled through evidence, it may not be a case of injunction. 52. It is not only this reason which persuades me to take this view. The defendants are not a fly by night company. In the plaint, the plaintiff has itself stated that they are manufacturing the products at large scale and selling the same through various retail outlets in Punjab and Haryana and other parts of the country. The defendant No. 1 has three storied factory building measuring approximately 800 sq. yards at Hissar Road, Ambala City, with large number of workers who are working in multiple shifts. Likewise, the defendant No. 6 is also having another factory. It is also stated that the factory of the defendant No. 6 was established in the year 1981. This is not a fit case for grant of ad-interim injunction at interlocutory stage. 37. This court finds considerable merit in the approach of the single judg ..... X X X X Extracts X X X X X X X X Extracts X X X X
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