TaxTMI 
TaxTMI 
2016 (7) TMI 1190
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....tive technology, intellectual property rights and trade secrets in creating the designs used for the manufacture of its products commonly known as Tupperware products. These products- so the suit says- are the result of artistic work in the form of product drawings, mould drawings and moulds over which copyright is claimed. Dart contractually granted to TIPL the right to use its moulds to manufacture Tupperware products and the right to use and apply the proprietary and registered designs in respect of those products for manufacture and offer for sale in India. Dart alleges that it has registered the proprietary designs in relation to the Tupperware products globally and in India as well. As the designs of these products are new and original, they have become extremely popular in the Indian market and have acquired tremendous goodwill and reputation. The extensive and longstanding 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 quali....
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....n injunction is also maintainable; (d) The defendants have copied the designs by adopting reverse engineering methodology; (e) the impugned act of the defendants also amounts to unfair competition and unfair trade practices which also entitles the plaintiffs to claim injunction against the defendants. The plaintiffs described 12infringing articles of the defendants; description of these articles is set out in Para 6 of the impugned judgment. 5. The Court had granted ex-parte injunction and appointed three local commissioners. They visited the premises and submitted their reports after preparing inventories. The first four defendants filed a common written statement. The eighth and ninth defendants filed separate written statements. The written statements filed on behalf of the first four defendants urged several preliminary objections. One, that 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....
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....ld not arise. On the other hand, it was said that if the plaintiff was disentitled to any injunction against the first and fourth defendants, then the question whether the eighth and ninth defendants were distributors/stockists or not would be immaterial. The single judge identified four issues on which the application for temporary injunction had to be addressed, viz design infringement; copyright infringement; passing off of trade dress, trade name etc and unfair competition and unfair trade practices. 8. As to design infringement, the single judge noticed previous decisions of this court and various other courts, on the meaning of "publication"1 and concluded that it meant, contextually, the availability of knowledge or awareness about a particular design in relation to specific articles or products. If such information was available in the public domain that 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....
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....yright. 9. The copyright infringement claim of the plaintiff was based on the plea that there existed copyright in the drawings, because they were a product of considerable skill and expense, spent by Darts" experts. The claim here was that the drawings were "artistic works" under Section 2(c)(i) of the Copyright Act, 1957. Each mould - created with such drawings cost approximately US $ 200,000 to US$ 1,000,000 (approximately equivalent to Rs. 88 lakhs to Rs. 4.4 crores) and has a life of 30 years. Since these works were created during the course of the employment of such experts with Dart, by reason of Section 17 of the said Act, it became copyright owner of the artistic works. The plaintiffs relied on Sections 13 and 14 of the Copyright to say that the bundle of rights flowing from these entitled them to exclusive rights and that the drawings of moulds 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 th....
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....opyright survived despite design copyright registration and also show that such copyright had tremendous reputation, it would not be safe to injunct the defendants. 11. The single judge considered the allegation of passing off, which was based on claim of visual similarity and likelihood of confusion. The impugned judgment states that the plaintiff's representative noticed that women who were visiting the defendants" stall in an exhibition were getting confused as to whether the products on display were the products of Tupperware and whether the said products were an imitation. Noting that in a report, the plaintiff admitted that the salesman was asserting that their products, namely Signoraware Products though were a look alike of Tupperware Products, they were being sold at half the price of Tupperware Products. Thus, the representation 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 th....
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....ll get up- including the colour combinations used for each article, have independent design and trade dress appeal. Emphasizing that the court should be careful in analyzing the passing off claim, it was submitted that a plain comparison of the plaintiffs" Tupperware goods and products with that of the Defendants" goods and articles would bring home the proof that the defendants were copying the plaintiff's designs; they showed visual similarity and likeness to the plaintiff's Tupperware goods. Learned counsel relied on Lakshmikant Patel v Chetanbhai Shah 2002 (3) SCC 65 where it was held that: "8. It is common in the trade and business for a trader or a businessman to adopt a name and/or mark under which he would carry on his trade or business. According to Kerly (Law of Trade Marks and Trade Names, 12th Edition, para 16.49), 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....
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....s the customer. 15. It was submitted that the single judge did not go into the question of passing off, based on trade dress similarity in the products- though there was sufficient material on this aspect but on the other hand, brushed it aside, saying that once the design copyright claim was held to be unsound, the question of shape based trademark confusion did not arise. It was submitted in this context that the Trademarks Act recognizes that shapes are capable of protection and are included in the expression "trade-mark". ^12 He relied on the decision of the Bombay High Court in Gorbatschow Wodka KG . Counsel highlighted the test indicated by the Court in that case, which is extracted below: "The test is whether the shape that has been adopted by the Plaintiff is one that is adopted capriciously, purely 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....
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.... considering that the Appellants copyright in the 'moulds' and in the 'drawings' has been infringed by the defendants as they have, by a reverse process of preparing drawings from the plaintiffs products and moulds therefrom, infringed copyright twice, once in the 'drawings' and again in the 'moulds'. The Calcutta High Court in Smithkline Beecham Consumer Health Care V. Eden Cosmetics Ltd held that copyright can be claimed in a 'mould' under Section 14 (c) of the Copyright Act 1957. 17. Learned senior counsel faulted the impugned judgment on the ground that Dart was author and proprietor of the registered designs comprising combination of shape, pattern and configuration. These vested Dart with copyright in the said designs by virtue of Section 11 of the Designs Act, 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 ....
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....learned counsel for the defendants, urged that the impugned judgment does not call for interference. It was argued that as an appellate court, in an interlocutory matter, the Division Bench should be extremely circumspect in interfering with the prima facie decision of the single judge: reliance was placed on Wander limited v. Antox India (Pvt.) Limited (1990) Suppl. SCC 727 and Mohd. Mehtab Khan &Ors. Vs Khushuma Ibrahim & Ors. (2013) 9 SCC 221. It was argued that the impugned decision was based on a detailed analysis and appreciation of the facts; this court should not subject the materials appraised by the single judge as though the present proceeding were a regular appellate review of a final judgment. In the absence of a glaring prejudice to the appellant, on the basis of an important omission 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 ....
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.... their experts have revealed that the goods of the defendants are not as good in quality as that of the plaintiffs. Therefore, the defendants were, at the most, puffing up their product by alleging that they are of the same quality as Tupperware Products and selling at half the rates. Thus, they have not created or tried to create any confusion but have clearly told that they are selling their own product which is represented to be as good as that of plaintiffs products. The question of passing off, Therefore, would not arise. The latin maxim "Caveat Emptor" meaning let the buyer beware would, Therefore apply. It was not the case of the plaintiff nor could it be that the trade name of the two products have no commonality as the plaintiffs' products are sold under the trade name of 'Tupperware', whereas the defendants' trade name is 'Signoraware'." Lastly, learned counsel relied on the judgment of the UK Chancery Division in Société des Produits Nestlé 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 r....
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.... put into his head...." 23. The single judge clarified that "a person with ordinary prudence while seeing the designs/documents in question is able to relate, in his mind's eye, the same antecedents designs/statements without the necessity of making further experiments i.e. the moment he sees the design, he is able to at once say 'Oh! I have seen before'. Reliance was also placed on Gopal Glass Works Limited v. Assistant Controller of Patents and Designs and Ors., where Calcutta High Court stated that in undermining the novelty of a design registration, prior disclosure must be of the pattern, shape and/or configuration applied to the same article. That High Court's observations about publication are as follows: "When the novelty of an article is tested against a prior published document, 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 unmista....
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....mmences from the conceptualization of the idea for a design followed by a tedious and lengthy process involving extensive research and application of labour, skill and judgment of the experts employed by Dart, which had relied on an expert's affidavit describing the process of conceptualization and creation of the designs. This, according to Dart, showed that the drawings were its 'artistic works' under the proviso of Section 2(c)(i) of the Copyright Act, 1957. Since these works were created during the course of the employment with Dart, by reason of Section 17 of the said Act, Dart became copyright owner of the artistic works. The plaintiffs relied on Sections 13 and 14 of the Copyright Act; they are entitled to bundle of exclusive right including the right to reproduce the artistic work i.e. 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....
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....imate product design, the copyright in the said drawings cannot be claimed under the Copyright Act. It was observed that Section 15 of the Copyright Act provides that once a design is registered under the Designs Act, copyright therein shall not subsist. Such a copyright in any design ceases even when any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright. The underlying message is that the Designs Act governs copyright in an industrial design. If a design is registered under that Act it is not entitled for protection under the Copyright Act. Warner Brothers v. Roadrunner was cited and relied on. 29. The term "artistic work" has been defined expansively in the Copyright Act. Section 15 (2) of the said Act does not 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 m....
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....ticles in the toys, brooches, etc. The House of Lords drew a distinction between copyright under the Copyright Act on the one hand, and "design copyright" under the relevant Designs law. The Court concluded that such design rights are separate and their extinction did not result in cessation of copyright in the work (i.e., the cartoon character in question). It was held that: "......The statutory definition of design now in force is found in Section 19 of the Patents and Designs Act,1919, which replaces that given in Section 93 of the Patents and Designs Act, 1907. The operative definition so far as here material is: " „Design" means only the „"features of shape, configuration, pattern, or ornament applied to any article „"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". 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....
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....rnament or composition of lines or colours" in the definition of "design" in the Designs Act. Therefore, the original artistic work, which may have inspired the creation of a design, is not merely the feature of shape, configuration, pattern, ornament or composition of lines or colours which are created to apply to an article by an industrial process. The original artistic work is something different from the design. Secondly, the definition of "design" expressly excludes, inter alia, any artistic work defined in section 2(c) of the Copyright act, 1957. ************ *********** 27. Under the Designs Act, a copyright has a different connotation from a copyright under the Copyright Act. Under the Designs Act, copyright means the exclusive right to apply the design to any article in any class in which the design is regist....
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....the specified limit, if the design derived from the original artistic work is exploited (i.e. if the design is applied more than 50 times by an industrial process on an article) the copyright in the design ceases unless it is registered under the Designs Act... **************** ******************** We do hold that in the original work of art, copyright would exist and the author/holder would continue enjoying the longer protection granted under the Copyright Act in respect of the original artistic work. Thus, for instance a famous painting will continue to enjoy the protection available to an artistic work under the Copyright Act. A design created from such a painting for the purpose of industrial application on an article so as to produce an article which has features of shape, or configuration or pattern or ornament or composition of lines or colours and which appeals t....
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....a work of pure art. f. The original paintings/artistic works which may be used to industrially produce the designed article would continue to fall within the meaning of the artistic work defined under Section 2(c) of the Copyright Act, 1957 and would be entitled to the full period of copyright protection as evident from the definition of the design under Section 2(d) of the Designs Act. However, the intention of producing the artistic work is not relevant. g. This is precisely why the legislature not only limited the protection by mandating that the copyright shall cease under the Copyright Act in a registered design but in addition, also deprived copyright protection to designs capable of being registered under the Designs Act, but not so registered, as soon as the concerned design had been applied more than 50 times by industrial process by the owner of the copyright or his licensee. h. In the original work of art, copyright would exist and the author/holder would continue enjoying the longer protection granted under the Copyright Act in respect of the original artistic work per se. i. If the design is registered under the Designs Act, the Design would lose its ....
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....d that the two positions i.e. the sweat of the brow on the one hand, and "modicum of creativity" were extreme; it preferred a higher threshold than the doctrine of "sweat of the brow" yet, not as high as "modicum of creativity". Therefore in India too, the law has recognized the shift, and mandates that not every effort or industry, or expending of skill, results in copyrightable work, but only those which create works that are somewhat different in character, involve some intellectual effort, and involve a certain degree of creativity. This standard of originality is now applicable in respect of the plaintiffs" claim to copyright of its drawings. There are further limitations in the law of copyright such as the idea expression merger. By this, Courts have refused to protect (through copyright) the expression of an idea, which can be expressed only in a very limited manner, because doing so would confer monopoly on the ides itself. The decision in Herbert Rosenthal Jewelry Corporation v. Kalpakian is illustrative in this regard. The plaintiffs there sued the defendants asking them to refrain from manufacturing bee shaped jewel pins. The Court held that the bee shaped jewel pin was ....
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.... to the same set of consumers as of the Tupperware Products. The plaintiffs relied on the applicability of the test of impression of an unwary customer, who would be misled into purchasing the infringing product, believing it to be that of the plaintiffs. The application of designs identical or similar to the Tupperware Product designs by the defendants to the infringing products is clearly creating and is likely to further create confusion and misconception in the minds of the customers leading them to believe that the infringing products of the defendants are the products emanating from TIPL while in fact it is not so. It was alleged that the defendants have adopted the registered designs of the plaintiffs and applied them to its products to encash the reputation and goodwill enjoyed by the plaintiffs and its products that is Tupperware Products manufactured with the registered designs. 34. The identity in trade dress and get up was highlighted in this regard, vis-à-vis the following features: i) similar designs of the infringing products namely the "4-in-1 Multipurpose Container, the "Atta and Chapati Bowl", "Multipurpose Containers", "Tumbler" and "Slim Lunch Box" ....
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....ion of the defendants to not only make material and substantial imitation of the design of Tupperware Products but also an attempt to pass off the infringing products as Tupperware Products. v) Apart from the overall shape of the infringing products being identical to the shape of the Tupperware Products, one of the infringing products namely "Crazy Bowl" is identical in shape to the state of the art Tupperware Product namely "Serving Bowl" along with "Seal for Bowl" brought to India only for the purposes of being used as an incentive/promotional product and initially not yet sale but intended to be launched for sale in India in the near future. It is submitted that the design of the said product duly registered by plaintiff No. 1 in India is the state of art design using special moulding techniques and machinery to manufacture the said product. Though the plaintiff No. 2 has only distributed the said product as a promotional item to its sales force and has not yet launched the said product for sale in India, the defendants appeared to have obtained the said product either from a member of the sales force of plaintiff No. 2 or the defendants may have purchased the said product a....
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....ld at half the price of Tupperware Products. Thus, the representation held out by the defendant was not that the goods were Tupperware Products. On the contrary, representation was that they were the products of different manufacturer namely the Signoraware Products and were being sold at half the price of Tupperware Products though they were look alike of Tupperware Products. Thus, as per this statement of the plaintiff, the defendants were not passing off their goods as that of Tupperware Products. The representation was that though they were of the same type as Tupperware but sold cheap. The very fact that they were representing that they were at half the price of the Tupperware Products means 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. It is also interesting to note that the plaintiffs themselves say that the comparison of the two products through their experts have revealed that the goods of the defendants are not as good in quality as that of the plaintiffs. Therefore, the defendants were, at the most, puffing up their product by alleging that ....