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Dart Industries Inc & Anr. Versus Techno Plast & Ors

2016 (7) TMI 1190 - DELHI HIGH COURT

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 .....

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fringement) 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 artisti .....

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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 .....

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ents Through: Mr. Sushant Singh with Mr. Prakash C. Arya and Ms. Nupur Lamba, Advocates. S.RAVINDRA BHAT, J. 1. The plaintiffs, unsuccessful in their application for ad-interim injunction during pendency of their suit for copyright and design infringement as well as for permanent injunction complaining passing off, appeal the decision of a learned single judge. 2. The two plaintiffs filed a suit for permanent injunction against the defendants under Section 22 of the Designs Act, 2000 read with S .....

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esult 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 design .....

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. 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 plai .....

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18.83 crores in the year 1998-99, have gone up to ₹ 56.47 crores by the end of financial year 2004. The products were marketed in the year 1996 and substantial amounts were also spent on advertising, publicity and promotion to the extent of ₹ 6.91 crores in the year 2003-2004. 4. The suit urges that the plaintiffs obtained registrations from the Controller General of Patents, Designs and Trade Marks under the Designs Act and Rules, particulars of which were noticed in a detailed char .....

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cts. These actions of the defendants amount to: (a) design infringement under Section 20 of the Designs Act; (b) copyright infringement under Section 55 of the Copyright Act; (c) defendants are passing off their goods as that of the plaintiffs by copying trade address and trade name etc. which is confusing and similar to that of the plaintiffs goods. Therefore passing off action in injunction is also maintainable; (d) The defendants have copied the designs by adopting reverse engineering methodo .....

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e 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 de .....

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challenged. The maintainability of the suit under Section 55 of the Copyright Act was challenged stating that the plaintiff has made the disclaimer vis-à-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. 6. The defendants alleged that 'Signora' is .....

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ture the products in colours, which were never used by TIPL in India. The designs in question are in public domain and the first and fourth defendants prepared them with their own skill and labour and are entitled to do so. They gave their explanation how each design is in the public domain. The eighth defendant stated that he is neither a distributor/stockist nor in any way connected with Techno Plast (first defendant) or its trade; rather it is a company formed with the main objective of deali .....

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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 infringem .....

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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 .....

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Airfix Ltd.1, Hills v Evans1862 LJ (Ch) 457; Gopal Glass Works Limited v. Assistant Controller of Patents and Designs &Ors and 12006 (33) PTC 434 were relied on and cited by the Single judge to determine what kind of publication was necessary to undermine novelty. The Single judge relied on Gopal Glass where it was stated that: 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 pictur .....

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held that there were only little variations in the products already existing and that adding a curve here or there in shape which is well recognized shape of an article of common use in the market cannot make it an article new or original in design. Such a claim was devoid of newness and equally devoid of originality. In the light of all these prima facie findings and observations, it was held by the single judge that the designs lacked originality and the plaintiffs were not entitled to tempor .....

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#8377; 88 lakhs to ₹ 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 defendan .....

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y 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. Gur .....

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The plaintiff s argument that Tupperware Products were reverse engineered by using its drawings with computer techniques possibly by 2D or 3D scanning was held to be something that required evidence. However, prima facie, the court held that that once drawings were made for creating the ultimate 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 Des .....

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ever, the court felt that since there were serious disputes which needed evidence before the plaintiff could establish copyright infringement by showing that its copyright 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 .....

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presentation 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 sim .....

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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 arise. In Microfibres Inc. v. Girdhar & Co. and Ors. (supra), the Court denied injunction, inter alia, on the ground that the two products were sold under a totally different trade name. For these reasons, it was held that prima facie, there was no confusion and the claim for passing off, .....

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nd overall representation of the article to the consumer. Counsel placed reliance on Vicco Laboratories Bombay v Hindustan Rimmer AIR 1979 Del 114 and he relied on other decisions in this regard. Castrol Ltd v O. MuraliDhar Reddy &Ors 2001 (21) PTC 134 (Mad); M/s Anglo Dutch Paint, Colour and Varnish Works v M/s India Trading House AIR 1977 Del 41; Richardson Vicks Inc v Medico Laboratories 1985 (5) PTC 167 (Del); 13. According to learned senior counsel, the visual appeal and presentation of .....

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laintiffs 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 .....

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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 .....

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o has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt .....

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sentation in one incident without considering that similarity/confusion in the products is not to be judged by the claim of the parties but rather by what the products are saying and representing about themselves. It is urged that what is to be seen is whether the products are similar or are creating confusion and not what the sales representative informs 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 p .....

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cated 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 .....

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n 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 combinations, shape and colour etc are important source identifiers which cannot be appropriated by a rival trade .....

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39; would not qualify as 'artistic work' under Section 2(c)(i) of the Copyright Act,1957. It is contended that the decision in Samosonite Corporation was wrongly relied on. It is emphasized that the Division Bench judgment in Micro FibreInc vs Girdhar & Co holds that original paintings/works which may be used to industrially produce the designed article would continue to fall within the meaning of artistic work' defined under Section 2(c) of the Copyright Act and would be entitle .....

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ts 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 .....

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se 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 defe .....

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to the IITF also records similar observations. It was contended that the single judge s prima facie opinion that Dart s registered designs were invalid due to lack of novelty or originality due to their prior publication is erroneous. It was argued that the claim of prior disclosure of the designs was wrongly accepted by the impugned judgment. They argued that the defendants' allegation that some of the registered designs are common to trade were unproved and are mere bald allegations. They .....

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ample of the product. Reliance on the publication in the price lists produced by the defendants on the record of the present case is misplaced and misconceived as the price lists do not relate to the product but only to a part of the product. For instance, in the case of the registered design of 'container crystal wave divided bowl', the price list referred has mentioned of the lid/the seal or a completely different product i.e. 'crystal wave medium', which is a different product .....

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(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 subm .....

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f 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 l .....

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gistration) did not preclude existence of right to protect trade dress, through an action for passing off, there had to be strong grounds to claim that relief. Likewise, counsel submitted that Laxmikant Patel was in the context of trade dress in respect of label, packaging and get up. In the present case, the shape of the product having been held to be not unique or novel cannot claim to be distinctive, which is the basis for a passing off action. Learned counsel particularly relied on the follo .....

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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 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 confusi .....

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ndants' 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 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 .....

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f 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 drawings relating to glasses, bowls, etc with some lines added, per se are incapable of copyright protection and the plaintiff s argument that such drawings are artistic works (under Section 2 (c) of the Copyright Act) are insubstantial. Analysis and Conclusions 22. This Court would first focus on the design claim .....

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rers Ltd. v. Airfix Ltd., where the Court of Appeals had relied on its previous ruling in Hills v Evans that 'The antecedent statement must, in order to invalidate the subsequent patent, be such that a person of ordinary knowledge of the subject would at once perceive and understand and be able practically to apply the discovery without the necessity of making further experiments.' The Court of appeals then stated that: if a document is to constitute prior publication, then a reader of i .....

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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 .....

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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. .....

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tes prior publication and the application of the law to the given facts of the case, by a comparison of the several designs that are the subject matter of the disputes, in this court s opinion leaves no doubt as to the soundness of the conclusion that prima facie, the designs in respect of which temporary injunction was claimed, were part of the public domain over which protection could not be claimed. Wander (supra) and Mohd. Mehtab Khan (supra) are categorical that unless the interlocutory app .....

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r alia, the making of 'product drawings' based on which the 'mould drawings' are made and ultimately the engravings in the form of 'moulds' is built by Dart, all of which are the 'artistic works' created by the experts during the course of their employment with Dart. The manufacture of each final product commences from the conceptualization of the idea for a design followed by a tedious and lengthy process involving extensive research and application of labour, sk .....

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elied 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 p .....

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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 urged that the plaintiffs have themselves given up their claim pertaining to use of colour or colour combination as appearing in the design while obtai .....

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at 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. 28. The single judge had relied on Samsonite Corporation v. Vijay Sales (supra) that unless the plaintiff pleads that the drawings were not for the purpose of manuf .....

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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 unde .....

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ny 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 th .....

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s and articles that are sold widely or have a market. Such is not the case with an artistic work- typically a painting a drawing or even a sculpture for instance (which are closest species of copyrights that overlap with designs). Yet the transformation of a work of art into a design results in the possibility of its protection as a design. Section 15 (1) dictates that if this kind of work is registered as a design, there is no copyright protection. Section 15 (2) on the other hand, says that if .....

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ain in enunciating a satisfactory concord between these two disparate threads of thinking was noticed long ago, in King Features Syndicate Incorporated and Frank Cecil Betts, the Personal representative of Elzie Chrisler Segar, Deceased v. O & M Kleeman Ld. In that case, the anthropomorphic cartoon strip character "Popeye the Sailor" used in comics and later in films, was reproduced in the form of toys and brooches. The author, did not industrialize the cartoon character, but later .....

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f 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 in .....

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r 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 .....

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oduct of original artistic effort in producing a drawing. Indeed the whole purpose of a design is that it shall not stand on its own as an artistic work but shall be copied by embodiment in a commercially produced artefact. Thus the primary concern, is what the finished article is to look like and not with what it does and the monopoly provided for the proprietor is effected by according not, as in the case of ordinary copyright, a right to prevent direct reproduction of the image registered as .....

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lication on an article. This position is clarified by the use of the expression "only" before the words "the features of shape, configuration, pattern, ornament 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 .....

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ch 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 Copyr .....

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icle by an industrial process, the design loses its protection as an artistic work under the Copyright Act. Therefore, subject to whatever rights that are available under the Designs Act, the registered design holder cannot claim protection or complain of copyright infringement in respect of the registered Design under the Copyright Act. 30. Subsection (2) of section 15 deals with the situation where the design, which is capable of being registered under the Designs Act, is not so registered. It .....

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s aspect in the Copyright Act. The same would have been dealt with under the Designs Act. Therefore, the law tolerates only a limited industrial, or shall we say commercial, exploitation of the original artistic work by the application/reproduction of the said work in any other form or reproduction of copies thereof in exercise of the rights under Section 14(c)(1) and 14(c)(iii) of the Copyright Act. Beyond the specified limit, if the design derived from the original artistic work is exploited ( .....

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able 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 to the eye would also be entitled design protection in terms of the provisions of the Designs Act. Therefore, if the design is registered under the Designs Act, the Design would lose its copyright protectio .....

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he 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 whic .....

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gns Act cannot be extended to include the copyright protection to the works which were industrially produced. e. A perusal of the Copyright Act and the Designs Act and indeed the Preamble and the Statement of Objects and Reasons of the Designs Act makes it clear that the legislative intent was to grant a higher protection to pure original artistic works such as paintings, sculptures etc and lesser protection to design activity which is commercial in nature. The legislative intent is, thus, clear .....

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on 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 own .....

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ction 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 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 .....

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theless, 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, etc) are artistic works the essential prerequisite for protection, should be original under the Act. The content of what is original has undergone considerable change from the previously applicable sweat of the brow doctrine spelt out in University of London Press (supra) to the modicum of c .....

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e original in the sense that by virtue of selection, coordination or arrangement of pre-existing data contained in the work, a work somewhat different in character is produced by the author . The Supreme Court noticed 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, an .....

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ough 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 an idea that anyone was free to copy, the expression of which could be possible only in a .....

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um 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 pri .....

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nt spent on research and development etc. and various awards those products had taken was the basis that the plaintiffs products are well known and have acquired household popularity because of their quality, technical and functional superiority. The defendants household plastic containers i.e., the infringing products were advertised as 'Microwavable Crockery' made from food grade plastic material meant to be sold to the same class of consumers as Tupperware Products. The plaintiffs arg .....

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ing 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 .....

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r" and "Slim Lunch Box" and the "Donga" have similar colour combination and identical colour shape, configuration and design. ii) The infringing product "Snack and Spare Box" being identical in design to the Tupperware 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 .....

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ment 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 th .....

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dentical in design, colour combination of green and black coloured check, shape and placement of the trade name, material and other configuration used in the bag recently launched by plaintiffs. The time lag between the launch of the infringing product and the Tupperware Product, being short, is helping the defendants in being successful in passing off the infringing products as Tupperware Product to take advantage of the reputation and goodwill acquired by the Tupperware Products. Such a practi .....

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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 .....

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r 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 .....

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ademark 'Signoraware'. There is no common law right of passing off provided under the Designs Act. 36. The plaintiffs assertion of the right to sue for passing off as an independent claim under the common Law not dependent upon the Designs Act was held to be correct: This submission of the plaintiff appears to be correct. The common law right of passing off is distinct and is available dehors the Designs Act. This was so held by a Single Bench of this Court in the case of Smithkline Beec .....

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e plaintiff admits that the salesman was asserting that their products, namely Signoraware Products though were look alike Tupperware Products, 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 different manufacturer namely the Signoraware Products and were being sold at half the price of Tupperware Products though they wer .....

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t 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 they are of the same quality as Tupperware Products and selling at half the rates…. ************ *********** 51. There would be another .....

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ted 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 .....

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. However, what is essential in such cases is not merely the existence of the remedy of infringement (of a trademark through a permanent or temporary injunction) or the remedy against passing off, but the proof of essential elements that are necessary. The plaintiff must plead and prove the distinctiveness of the mark. In the present case, the distinctiveness averred in the suit relates to the mark Tupperware . There is no assertion- except a general and vague assertion with respect to passing o .....

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