Dismissed

Nilkamal Ltd. v. Shree Vari Multiplast India

Madras HC15 Dec 2017OA/439/2017

Case brief

AI extract

What is this about?

The Madras High Court considered an application for an ad-interim injunction regarding alleged design piracy of a registered chair design. The court dismissed the injunction, holding that the applicant's design lacked sufficient originality and was merely a modification of existing market designs. However, the respondent was ordered to maintain sales accounts.

What did the court decide?

Interim injunction denied. Respondent directed to maintain accounts of Holiday chair sales. Patent Office granted four weeks to decide cancellation petition.

Nilkamal Ltd. Vs Shree Vari Multiplast India — Intellectual Property | Madras HC (2017)

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IN THE HIGH COURT OF JUDICATURE AT MADRAS (ORDINARY ORIGINAL CIVIL JURISDICTION) FRIDAY, THE 15TH DAY OF DECEMBER 2017 THE HON'BLE DR. JUSTICE ANITA SUMANTH O.A. No.439 of 2017 in C.S. No.323 of 2017

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Nilkamal Limited, Represented by Sundararajan Srinivasan, Assistant Regional Manager, Deccan Square, 3^rd Floor (@home), 74-4, Nelson Manickam Road, Aminjikarai, Chennai 600029 ... Applicant/Plaintiff

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-Versus-

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Shree Vari Multiplast India Pvt.Ltd SF No.101/3, Mandampalyampirivu Kanji Kovil Road, Perudurai 638052, Tamil Nadu, India.

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Malathi Steel House, New No.514, (Old No.260/1), Mint Street, Chennai 600 003.

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P S Furniture & Home Appliances, # 137/67, Prakasam Salai, Broadway, Chennai ... Respondents/Defendants

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Original Application praying that this Hon'ble Court be pleased to pass an order of ad-interim injunction, restraining the Defendants, their Servants, agents, distributors, stockiest or anyone acting under or through it from in any manner manufacturing or marketing chairs with the designs which are identical with or deceptively similar to the Applicants registered Design No.242843 from being pirated, pending of the above suit.

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This Original Application coming on this day before this court for hearing, the court made the following order:-

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Neelkamal Limited, the applicant, claims to be the largest processor of moulded products in Asia and a leading manufacturer of moulded furniture. It has filed the present application seeking an order of ad-interim injunction restraining the respondent from pirating its registered design in No.243843 dated 03.12.2012 and manufacturing, marketing or selling chairs with a design that is identical to or deceptively similar to the applicants’ design.

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Mr. A.R.L. Sundaresan, learned senior counsel appearing for Mr.A.K.Balaji, learned counsel for the applicant states that Neelkamal holds a registration for the design of its chair vide design registration No.242843 dated 03.2.2012. The novelty, according to the certificate of registration, resides in the shape, configuration and surface pattern of the chair. He would allege that the defendant was manufacturing and marketing moulded plastic chairs that are identical/deceptively similar to its own chairs. The distinctive features of the Nilkamal chair, referred to as the ‘Sunday chair’ have been explained and highlighted to state that the chair is an ergonomic design with a high backrest and neck support. The top of the back of the chair bulges outside followed by a series of five slits creating six ventilation spots with one vertical reinforcing rib. The handle of the chair has a riser as well as a horizontal portion and a gradual inclination is maintained from the riser over the horizontal part. He would state that the design is original and has been adopted after extensive research and the registration itself has been granted after an inspection of the design by the Controller of Designs.

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The respondent, according to Mr.Sundaresen, is marketing a product termed as the ‘Holiday chair’ that is identical in appearance constituting a slavish imitation of the Sunday chair. Nilkamal has, according to him, earned substantial goodwill in the Indian Market for the high quality of its products and is an ISO:9001-2000 certified company, a recipient of several awards for home and office improvement. It has invested significant amounts in research and development and has incurred huge expenditure for the promotion and marketing of its products ranging from 500 lakhs to 1,300.5 lakhs over the five year period from 2012-13 to end December 2016. It carries on business under the brand name '@home' and has 19 retail stores as well as virtual platforms from which it does business. He would thus argue that the identity in the design of the two chairs was conscious and calculated to deceive the consumer into believing that the chairs were one and the same.

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Mr.Ramesh Ganapathy, learned counsel appearing for Mission Legal Advocates for the respondent would state that the respondent is in the business of manufacturing plastic chairs since 1999. While denying all the allegations made, Mr.Ramesh would mainly rely on two facts - that there is nothing new, original or distinctive about the design of the chair manufactured by Nilkamal as defined under section 2(d) read along with sections 4 (a), (b) and (c) of the Designs Act 2000 (Act) and that in any event, the Holiday chair manufactured and marketed by the respondent was different in design and appearance from Nilkamal’s Sunday chair. He would also point out that the chair featured pictorially in the plaint is not the

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chair for which protection has been granted and as such allege that the plaint be dismissed in limine for suppression of material facts. Mr.Sundaresan does not dispute this last allegation but only pleads an inadvertent error in the plaint in this regard.

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Visuals of several other chairs similar in design and appearance to the Sunday chair have been placed before me by Mr.Ramesh to illustrate that the so-called distinctive or novel features of the Sunday chair are present in other chairs as well and there was really no novelty attached to the same. The other designs are also registered, some in 2010, prior to the applicants’ registration and a few post thereto. In these circumstances, the respondent has filed a petition on 15.12.16 seeking to cancel the design registration obtained by the applicant in terms of section 19 of the Designs Act 2000. The matter is pending consideration before the office of the Controller of Patent & Designs, Calcutta. In any event the respondents’ chairs are stated to be dissimilar to the Nilkamal chairs and as such there is no question, according to the learned counsel, of piracy, in these circumstances.

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In reply, Mr.Sundaresan would dismiss the allegation regarding the existence of other similar chairs stating that their configuration, shape and pattern are wholly different and as such there cannot be any comparison with those chairs and the Sunday chair. He relies upon the following decisions in support of his submissions:

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i. Whirpool of India Ltd v. Videocon Industries Ltd , CDJ 2014 BHC 1150 2014 (60) PTC 155 (Bom) to the following effect:

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‘ 32.Although both sides have placed before the Court material in the form of comparative charts highlighting the similarities and/or dissimilarities, these are really not determinative of the matter. What is important and relevant is the assessment of the Court on an examination of the Defendant's product and comparing the same with the Plaintiff's designs. For this purpose, through the hearing, the Plaintiff had produced and kept in Court, for the visual examination of the Court, the Plaintiffs, as well as the Defendant's washing machines. The said machine of the Defendant was an almost total replica of the Plaintiff's design barring one or two minor variations, example, on the control panel instead of three knobs (which is the case in the Plaintiff's design), the Defendant had in its product three knobs and one outlet point. This does not detract from the overall identity of the two. In fact, as submitted by the Defendant, this is what the House of Lords has frowned upon in the case of Designers Guild Limited vs. Russell Williams (Textile Limited) (201) 1 All ER 700) by describing it as 'altered copying'. In the said House of Lord's judgment in the said Designers Guild case, the Court concluded by observing thus:

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“If the similarities between the two were sufficient to justify the interference that one had been copied from the other, there was, in my judgment no further part for the concept of substantiality to play”

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In other words, once the Court concludes that there has been copying, the cosmetic differences and the rather involved inquiry is completely uncalled for and/or not required. The concept of substantiality is not required to be gone into once the Court concludes that one had copied from the other. In the present case, I am satisfied that even if the basis of substantiality is complied with, there is no manner of doubt that the Defendant's product is a substantial reproduction and/or imitation of the Plaintiff's designs. In view thereof, the submissions advanced and the reliance/analysis of case laws by the Defendant to establish otherwise cannot be accepted.

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ii. Castrol India Limited vs. Tide Water Oil Co(I)

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Limited, (1996 PTC (16) 202 (Cal)), the Calcutta High Court holds as follows:

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22. Apart from such overall resemblance in the design, the authorities have held that the Court is

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required to see in particular as to whether the essential part of the bases of the petitioner's claim for novelty forms part of the allegedly infringing copy. In Best Products Ltd. vs. F.W. Woolworth & Company Ltd. (supra) the essential part of the registered design of a whistling kettle was found by the Court to be the shape of the spout and the cap applied to it. The Court said that the very form of the registration emphasized that it was in respect of the audible alarm characteristic that the application of the plaintiff's registered design found its intended exploitation. The audible alarm, according to the learned Judge necessarily assumed a primary significance. The difference between the audible alarm of the plaintiff's kettle and that of the defendant's kettle as being marked, the action for infringement was dismissed (see: also in the context Phillips vs. Harbro Rubber Company (1920) 34 RPC 233 and Dunlop Rubber Co. Ltd vs. Golf Ball Developments Ltd. (1931) 48 RPC 268, 281.

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25.In Dunlop Rubber Co. Ltd vs. Golf Ball Developments Ltd. (1931) XLVIII RPC 268 at 279, the meaning of the word 'obvious' and 'fraudulent' have been stated”.. 'obvious' means something which, as soon as you look at it, strikes one at once as being so like the original design, the registered design, as to be almost being so like the original design, the registered design, as to be almost unmistakable. I think an obvious imitation is something which is very close to the original design, the resemblance to the original design being immediately apparent to the eye looking at the two.”

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26.In a later portion of the judgment it was said:

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“.. fraudulent imitation seems to me to be an imitation which is based upon, and deliberately based upon, the registered design and is an imitation which may be less apparent than an obvious imitation; that is to say, you may have a more subtle distinction between the registered design and a fraudulent imitation and yet the fraudulent imitation, although it is different in some respects from the original, and in respects which render it not obviously and imitation may yet be an imitation, imitation perceptible when the two designs are closely scanned and accordingly an infringement.”

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27.Applying these principles to the facts of the case before me I am prima facie of the view that the respondents are guilty of infringement of the petitioner's registered design.”

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iii. In the case of Selvel Industries & ors Vs. Om Plast (India) , ((67) PTC 286 (Bom)), the Bombay High Court has held as follows:

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‘26.The question of what tests are to be applied in deciding what constitutes an obvious imitation and/or is actionable is no longer res integra. This question has 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) Limited), MANU/WB/0501/1994:1996 P.T.C (16) 202 and Kemp * Co., Vs. Prima Plastics Limited, MANU/MH/0027/1999:1999 (1) Bom. C.R. 239 (O.S): MANU/MH/0027/1999:101 (1) Bom. L.R.65. In both the 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. 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 seen 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 design is substantially different from the design sought to be enforced. The test laid down on (Bench chairs Ltd. C Chair Center Ltd.), 1974 R.P.C 429 was cited with approval). (v) 'Obvious' means something which, as soon as one looks at it, strikes 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 the fraudulent imitation, although it is different in some respects from the original, and in respect which render it not obviously and imitation may yet be an imitation perceptible when the two designs are closely scanned and accordingly

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amounts to infringements. (The test laid down in (Dunlop Rubber Co. Ltd. Vs. Golf Ball Developments Ltd.), (1931) XLVIII R.P.C.279 was cited with approval. 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 as one of substance and essential features of the designs ought to be considered. (ii) Ina given case, where the registered design is made up of a pattern which has no one striking feature in it, but it appears 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 may differences in the details. (The opinion of Farewell J. in Dunlop Rubber Co. Ltd Vs. Golf Ball Developments Ltd..) 1931 XLVIII R.P.C. 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.

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iv. In the case of Cavinkare Private Limited vs. Daily Fresh Fruits P. Ltd. and ors., (MANU/TN/2853/2016), the Madras High Court holds as follows:

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‘ 6.ISSUE No.(i): A perusal of the proof affidavit of P.W.1 coupled with documentary evidences would disclose the following facts. ex.P2 is the copy of the design registration certificate No.203635 for bottle dated 24.03.2006, bearing the design of the plaintiff, which has been registered under the Designs act, 2000 and Design Rules, 2001/ Ex. P3 is the specimen of plaintiff's MAA label. A comparison of the same with Ex. P.4, the specimen of defendant's DAILEE label would clearly reveal that the defendants have adopted the label an design. That apart, a perusal of Ex.P.5, the comparison of photograph of plaintiff and defendant's bottles and Ex. P.6, the comparison of photograph of plaintiff and defendant's bottles with labels would disclose that the defendants had adopted similar design of the bottles of the plaintiff. It is very difficult to made a distinction between the plaintiffs container and the defendants container. A perusal of Ex.P.7, the comparison of labels of other fruit beverages and labels of fruit beverages of plaintiff and

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defendant also would made it clear that the defendants had adopted the label, similar colour, pattern of the plaintiff. The shape and configuration of the bottles of the plaintiff which was registered is evidenced under Ex.P.2 and since they are in the said line of business right from 1996 and adopted a distinctive label with artistic features and unique shape and configuration of the bottle has earned great reputation and goodwill among the trade and public, and they adopted a distinct artistic label/trade dress and design for their products to distinguish its uniqueness and proved the same, issue No.(i) is answered in affirmative and in favour of the plaintiff.

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7.ISSUE No.(ii): As already pointed out the defendants are manufacturers of fruit beverages and that there is nothing wrong in manufacturing and selling fruit beverage with mango flavour, however, adopting the label and design of bottles as that of the plaintiff, in the considered opinion of this Court, has to be said that has been done with fraudulent intention and the said act is deliberate and also dishonest trade practice. Hence, issue No.(ii) is answered in affirmative and in favour of the plaintiff.

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The respondent relies upon the following decisions:

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Steel Bird Hi-Tech India Ltd v. S.P.S. Gambhir and Ors (I.A.Nos.19671 of 2013 & 596 of 2014 in C.S.(O.S.)No.,2407 of 2013 dated 24.2.2014) wherein the Delhi High Court holds as follows:

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‘15. In the present case, it is undisputed fact that pattern of the helmet is available in this Country and other parts of the world for more than three decades. Even the plaintiff is manufacturing and marketing helmet for the last more than twenty years. The issue involved in the present litigation is as to whether novelty, shape and configuration claimed by the plaintiff during the course of hearing is new or original or has not been prior known or published by anyone or not on the date of registration i.e. 1^st December, 2011. If the answer is yes, then interim order must continue. If answer is negative, then interim order may not be issued as per settled law.

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16. It was expressed by Buckley L.J. On the question of quantum of novelty in Simmons v. Mathieson & Cold, (1911) 28 R.P.C. 486In these words:

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“In order to render valid the registration of a Design under the Patents and Designs Act, 1907, there must be novelty and originality it must be a new or original design. To my mind, that means that there must be a mental conception expressed in a physical form which has not existed before, but has originated in the constructive brain of its proprietor and that must not be in a trivial or infinitesimal degree, but in some substantial degree.”

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18.The question before me for consideration is whether the plaintiffs' design when registered on 1^st December, 2011 was new or original or different from what has been done before. As per certificate of registration produced along with plaint, the same does not show any light except the novelty is claimed in all views for the whole shape, configuration and surface pattern of the Helmet. 'Original' means that the design originating from the author.

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19.Drawing a distinction between 'new' and original Buckley L.J. Said in Dovel Ltd. Vs. Nurnberger Celluloidwaren fabric Gebruder Wolff, (27 R.P.C. 493) that 'new' is referred to a case where the shape or pattern was wholly new in itself and on the other hand 'original' to the case where it was old but new in its application to the particular subject matter. The word 'original' according to the learned Judge, “contemplates that the person has originated something, that by the exercise of intellectual activity he has stated an idea which had not occurred to anyone before, that a particular pattern or shape of ornament may be rendered applicable to the particular article to which he suggests that it shall be applied.”.

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20. It is rightly held in the cases decided that in the matter of novelty the eye is to be the ultimate test and the determination has to be on the normal ocular impression. In order to know its newness or originality it is necessary that a design identical with or even materially similar to the relevant design should not have been published or registered previously. A slight trivial or infinitesimal variation, from a pre-existing design will not qualify it for registration. Taking into account the nature of the article involved, the change introduced should be substantial. It is not necessary to justify registration that the whole of the design should be new, the newness may be confined to only apart of it but that part must be a significant one and it should be potent enough to impart to the whole design a distinct identity, unless registration is sought for the said part alone.

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27.There are various manufacturers already making such designs with the claimed “Beak Shae” and have been marketing across the world. An Internet search reveals various such similarly designed helmets. The details and pictures of the same are mentioned earlier in this order.

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28.Even otherwise the addition of small feature here or there from the features of STUDDS and AIROH helmets' design wold not make any difference which could only be called as routine type of trade variation as per demand of customers for their conveniences and advantages.

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ii. Amit Jain Vs. Ayurveda Herbal & Ors, (I.A.No.18023 of 2014 in C.S.(OS) No.2689 of 2014 dated 24.04.2015) where the Delhi High Court holds thus:

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‘31.It is rightly held in the cases decided that in the matter of novelty the eye is to be the ultimate test and the determination has to be on the normal ocular impression. In order to know its newness or originality it is necessary that design identical with or even materially similar to the relevant design should not have been published or registered previously. A slight trivial or infinitesimal variation, from a pre-existing design will not qualify it for registration. Taking into account the nature of the article involved, the change introduced should be substantial. It is not necessary to justify registration that the whole of the design should be new, the newness may be confined to only a part of it but that part must be a significant one and it should be potent enough to impart to the whole design a distinct identity, unless registration is sought for the said part alone.

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32. It is important to keep in mind that if an improvement made in the design known before should be more than a mere workshop improvement by combining of old known part of the design with new integers which have no novelty, it does not qualify the new design under the eyes of the Act as the same would not involve the exercise of novel and new design. There must be novelty in the design over what is old.

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33. From the comparison of the products already available in the market and earlier design registration obtained prior to the date of registration of assignor and/or by the plaintiff, it is clear that all the designs claimed by the plaintiff are either prior publish or trade variant.

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34.Dis-similarities pointed out by the counsel for the plaintiff of the earlier products available in the market and prior registrations are negligible.”

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Heard learned counsel and carefully perused the

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evidences as well as the cases relied upon. Mr.Ramesh, at the outset, seeks a dismissal of the plaint in limine on the ground that the applicant has not come to Court with clean hands. According to the respondent the visual of the chair in the plaint is not the registered design of the applicant and what has been shown and compared with the respondents’ chair is another chair altogether. This is admitted by the applicant who would orally plead an inadvertent error. For the moment, I take it to be so. For the sake of clarity, the visuals of Nilkamal’s Sunday chair and the respondents’ Holiday chair are depicted below:

Applicant

Respondent

(Sunday Chair)

(Holiday Chair)

The term ‘Design’ is defined in section 2(d) of the

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Designs Act 2000 (in short ‘Act’) as follows:

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d) “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

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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 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

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The registration of a design for the purposes of affording it protection under the Act is subject to the conditions and prohibitions set out in section 4 of the Act as follows:

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4. A design which (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.

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I then have to address the fundamental question of whether the design of the Sunday chair can be considered ‘new’ or ‘original’. The term ‘Original’ is defined in section 2(g) to read thus:

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(g) “original”, in relation to a design, means originating from the author of such design and includes the cases which though old in themselves yet are new in their application

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The definition of ‘Design’ in the Act makes the eye the ultimate arbiter of novelty and appeal. Though Mr. Sundaresan, would dwell upon the similarities between the Sunday and Holiday

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chairs as well as the differences in the features of the applicants’ chair viz-a-viz other chairs available in the market, to my eye the differences, if at all, appear only cosmetic. In construing originality in design, the court cannot be guided by the utility of the product or embark upon an examination of the features of the product in reference to the utility or use to which the product may be put, but is to be solely guided by the visual characteristics of the products in question. The originality has to be apparent and of such degree that the product is readily identifiable as a distinct product with the features setting it apart clearly from other similar products of the same genre. Seen in this light, the degree of difference between the Sunday chair and the other chairs already in the market is not such as to make the applicants’ design novel or original, in the sense of ‘new’ or ‘hitherto unseen’. Admittedly, chairs bearing similar shapes and patterns have been in the market for long, at least since 2010. In such circumstance, the applicants’ design would at best, be a modification of the existing designs and nothing so dramatic so as to constitute a original or unusual design by itself.

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While Mr.Sundaresan would be at pains to point out the differences in shape and features between the other products and the Sunday chair, I believe that originality in design has to speak for itself, immediately and evidently, and cannot be established by the painstaking process of minute comparisons. As held by the courts in the decisions referred to by both parties and extracted above, originality in design is for its uniqueness and such uniqueness cannot be achieved by peripheral

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tweaking of an existing product. Though even a modification in an existing design can well result in a new creation, the result in such modification has to be a product, original in appearance, such originality being perceivable by the eye in contrast with existing products. I cannot, in the present case, perceive such originality.

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Then again in the counter filed, a visual depiction of both the Chairs is set out. At first glance, the pictures reveal that the seat of the Sunday Chair has four slits creating three columns with a rib running through the centre, conspicuous by its absence in the Holiday chair. These pictures are set out below as depicted in the counter. No rejoinder is filed refuting this averment and as such the same is held to be uncontroverted and representing the current position in fact.

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The injunction sought for is denied and the Original Application is dismissed. However, seeing as Nilkamal holds a valid design registration as of now, the respondent is directed to maintain accounts in regard to the sale of the Holiday chairs and submit the same to Court, on a monthly basis.

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16.The parties are before the Patent Office at Calcutta, where the petition for cancellation of design filed by the respondent will be decided on merits. Let the petition be disposed of expeditiously and in any event within a period of four weeks from the date of production of this order before the authority after hearing the parties and in accordance with law. The authority is requested to pass orders uninfluenced by the observations contained herein that are prima facie in nature.

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Upon finalisation of the matter before the Patent Office at Calcutta, parties may have the Suit listed upon mention before the Additional Master for trial.

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15.12.2017

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//Certified to be a true copy//

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Dated this the day of 2019

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jj 28/01/2019 COURT OFFICER

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From 25.09.2008 the Registry is issuing certified copies of the Order/Judgment Decree in this format.

Nilkamal Ltd. v. Shree Vari Multiplast India

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Nilkamal Ltd. v. Shree Vari Multiplast India

Case brief

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