MANU/TN/1629/2017

Equivalent Citation: MIPR2017(3)158

IN THE HIGH COURT OF MADRAS

O.As. 1103 and 1104 2015 in C.S. 829 of 2015
Decided On: 12.05.2017
Appellants: Dart Industries Inc.
Vs.
Respondent: Cello Plastotech
Hon'ble Judges/Coram:
K. Kalyanasundaram, J.
Case Note:
Designs - Infringement - Injunction - Whether Plaintiffs have made out a
prima facie case and balance of convenience is in favour of Plaintiff for
grant of an order of interim injunction?
Held, Plaintiffs' design was registered in year 2008, whereas Defendants
launched impugned design only in June, 2011 and suit was instituted on
5th October, 2015 alleging that, Plaintiffs came to know sale of infringing
bottles through their field force on 1st August, 2015. Moreover when
dishonesty and fraud qua, Defendants are apparent, a mere delay would not
be a ground to deny an order of injunction. First Plaintiff is proprietor of
design AQUASAFE BOTTLE and same was registered with USA Patent and
Trade mark Office vide application, dated 5th September, 2008 and it was
registered in India in February, 2009. Further registration is valid till 2019.
Though it is sought to be contended that design registrations have
variations, this defense can be decided only after trial. At this juncture, it
cannot be a ground to reject injunction applications. Defense of Defendants
is that designs of Plaintiffs is not new or unique and similar bottle designs
have been published and used even before 2008 and they have been in
public domain to dispute right of Plaintiffs. However, Defendants have not
produced any material to substantiate their case. It is to be seen that,
Defendants themselves claim to be registered proprietor of similar designs.
It is contended by Plaintiffs that, a bottle can be well gripped irrespective
of design configuration utility of grip of a bottle can be attained by other
design options, and such features cannot be considered as essential
function. It is not case of Defendant that design applied for was the only
mode which was possible considering functional requirements of products.
In case of Whirlpool India Ltd. v. Videocon Industrial Ltd., Mumbai High
Court has held that "For a defense of functionality to succeed, it is not
enough to say that the form has some relevance to the function. If a
particular function can be achieved through a number of different forms,
then a defense of functionality must fail." Hence, Defendants contention
regarding functionality is rejected. In an action of infringement of design, it
is not necessary that two designs must be identical on all points and they
should be exactly same. Main consideration to be applied is whether broad
features of shape, configuration, pattern etc. are same or nearly same and
if they are substantially same then, it will be a case of imitation of design

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 of one by other. As held by Delhi High Court in case of Dabur India v. Amit
Jain, the word imitation' does not mean 'duplication' or need not be an
exact replica. A general view of features of both designs should be looked
in to find out whether a particular design is as good as the other, and the
conclusion is to be arrived at by visual examination of the two things.
Bottles and caps of Defendants are deceptively similar to that of the
Plaintiffs. Both water bottles of Plaintiffs and Defendants are cylindrical
and rectangular in shape. Case of Plaintiffs is that shape, configuration and
surface patent has aesthetic eye appeal. It is further claimed that on
account of unique designs and high quality of Plaintiffs' product, they
witnessed a phenomenal increase of sale. Turnover of Rs. 18.83 crores in
1998-1999, increased to Rs. 98.09 crores in 2008-2009 and Rs. 469.68
crores in 2013-2014 and annual sale of AQUASAFE BOTTLES of Rs. 20.8
crores in year 2010 was increased to Rs. 51 crores in 2013. Thereby
Plaintiffs acquired goodwill and reputation. Passing off action is essentially
an action in deceit and right is considered essential for protection of
goodwill in business against misrepresentation caused in course of Trade
and for prevention of resultant damage on account of said
misrepresentation. Shape, configuration cannot be described as functional.
Unique design has been copied and adopted by Defendants. Then, onus
would heavily lie on Defendants to explain as to why Defendants adopted
similar getup and lay out of Plaintiffs. Defendants have not given any
reasonable explanation whatsoever as to why Defendants have been using
identical design to that of Plaintiffs. It is next contended by Defendants
that since Defendants are registered proprietors of design, prayer for
injunction as sought for by Plaintiffs cannot be allowed. Delhi High Court in
case of Mohanlal Proprietor of Mourya Industries v. Sona Paints & Hardware
held that a suit against a registered proprietor is maintainable. Defendants
have imitated Plaintiffs' design as to deprive Plaintiffs of protection under
statute. Plaintiffs have made out a strong prima facie case for grant of
interim injunction. Balance of convenience requires that Defendants should
be restrained from using design and passing off.
Ratio Decidendi:
In an action of infringement of design, it is not necessary that the two
designs must be identical on all points and they should be exactly the same
JUDGMENT
K. Kalyanasundaram, J.
1. Pending suit for infringement of designs and passing off, the plaintiffs have filed
the above applications, praying for interim injunction.
2. For convenience, the parties are referred hereunder as per their rank in the Suit.
3 . The brief facts of the case are that the first plaintiff is a company incorporated
under the laws of Delawara, USA, having its principal place of business at 14 901,
South Orange Blossom Tral, Orlando, Flourida, 3287, USA. The second plaintiff is a
company incorporated under the Companies Act, having its registered office at 204-
206, Tolstoy House, 15 Tolstoy Mark, New Delhi 110001. The first plaintiff is a
subsidiary of Tupperware brands corporation located in Flourida, USA and it was
established in 1928. Tupperware brands corporation is globally known as a

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 multibrand, multi category, direct sales company.
4. The second plaintiff was incorporated in the year 1996 as a subsidiary of the first
plaintiff. Due to exceptional quality, several Tupperware products have won world
wide awards. Presently, the Tupperware products are sold in more than 100 countries
around the world including India. The first plaintiff has consented the second plaintiff
to use its moulds, its proprietary and registered designs for manufacture of
Tupperware products and the sale in India. On account of unique designs and
intrinsic high quality of the tupperware products the consequent growth in reputation
as a premium consumer goods brand, the second plaintiff has witnessed a
phenomenal ever increasing pattern of sale of tupperware products in India.
5. The plaintiffs would further state that the sale of tupperware products in the Indian
market was Rs. 18.83 crores in 1998-99, has gradually increased to 98.09 crores in
2008-09 and Rs. 469.68 crores in 2013-14. It is further stated that the second
plaintiff has spent substantial amount of money towards publicity by way of print and
electronic media, advertisements. In para 13 of the plaint, it is stated that they have
spent 1.44 crores in 1998-99 and increased every year and in 2008-2009 rose to Rs.
12.55 crores and Rs. 65.89 crores in 2013-14.
6 . The plaintiffs would further state that Mr. Famia E. Ablo, who is a professional
designer and employee of first plaintiff created the AQUASAFE BOTTLE. Since the first
plaintiff is the proprietor of the Design applied for registration of the design with
United States Patent and Trademark Office (USPTO), vide application No. 29/310, 710
(bottle) and application No. 29/310, 711 (cap), dated 5th September 2008 in clause
09-01 and 09-07, respectively. The said design application was granted in US design
Registration No. 609, 104S, dated 2nd February 2010 and US design Registration No.
613, 160S dated 6th April 2010 (cap). The first plaintiff took steps to file and obtain
design registration of AQUASAFE BOTTLE design in several other countries.
Accordingly, Design applications were filed before the Controller General of Patents,
Designs and Trademarks, India on 23rd February 2009 under Section 44 of the
Designs Act read with Rule 15 of the Design Rules claiming priority of Design from
US Designs.
7 . The plaintiffs would state that the AQUASAFE BOTTLE has been designed by the
plaintiff and it incorporates not only technical sound and efficient quality and
features, also comprises over all unique and novel shape, configuration and surface
patent having attractive and aesthetic eye appeal. Since, the AQUASAFE BOTTLE are
new and original, the same has been extremely popular in the Indian Market and they
have acquired tremendous goodwill and reputation, which is evident by sale of 500
ml and 1 litre AQUASAFE BOTTLES increased from 20.8 crores in 2010 to 51 crores in
the year 2013.
8 . The plaintiffs would further state that the AQUASAFE BOTTLES are purchased by
people from different strata of society including illiterate and semi-illiterate,
consumers belonging to affiliant and non affiliant backgrounds and resident of Urban
and Semi Urban Areas.
9 . The plaintiffs have alleged that the defendants have blatantly copied and
reproduced the overall design comprising the shape and configuration of bottle and
cap of the plaintiffs in Design Registration Nos. 221424 and 221425. The defendants
have deliberately copied the same to derive undue and unlawful illegal gains
therefrom. The defendants have further blatantly imitated and adopted the overall

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 getup, layout and trade dress of the plaintiffs' distinctive AQUASAFE BOTTLE and
applied them to the impugned bottle and cap of their own manufacture and sell to
create confusion and deception in the trade and to induce the purchasing public with
a view to trade upon the hard earned goodwill and reputation built by the plaintiffs.
10. It is further alleged that a large number of consumers being illiterate and semi
illiterate having average recollection including the consumers who can not read and
comprehend in English, the bottles are purchased on the basis of faint recollection of
the overall design of the shape of the bottle. Hence, confusion and deception is most
likely on account of over all visual similarities in terms of overall getup of the bottle
and its cap leading to passing off the defendants goods and business for those of the
plaintiffs.
1 1 . The plaintiffs have further alleged that the conduct of the defendants is
fraudulent, dishonest and motivated to earn easy and illegal profits by
misappropriating plaintiffs goodwill and reputation and thereby causing irreparable
damage and injuries to the plaintiffs and also the consumers. Hence, the suit.
12. Before the suit came to be numbered, an application A. No. 6709 of 2015 filed by
the plaintiffs seeking leave to sue was allowed on 06.10.2015. Along with the suit,
O.A. No. 1103 of 2015 and O.A. No. 1104 of 2015 were filed, seeking interim
injunction. This Court granted interim injunction by order dated 08.10.2015 and
15.10.2015 respectively. Subsequently, the defendants filed A. No. 7585 of 2015 to
revoke the leave granted in A. No. 6709 of 2015 dated 06.10.2015. That Application
was allowed on 16.12.2015, resulting closure of the injunction applications.
Challenging the order, plaintiffs preferred an appeal O.S.A. No. 268 of 2015. In view
of a settlement reached between the parties, the Division Bench set aside the order
made A. No. 7585 of 2015, dated 16.12.2015 and restored the suit to the file and
permitted the parties to appear before this Court for considering the injunction
applications.
13. The defendants have filed a counter affidavit refuting the allegations made by the
plaintiffs and also contended that the plaintiffs have not approached the Court with
clean hands. The defendants' Cello, as a brand made its inception in the year 1974,
has become largest manufacturer of branded household commodities in India, with a
wide range of plastic moulded products. The annual sales turnover of the Cello stands
at over Rs. 1,500 crores and foreign revenue to the tune of USD 39 Million is
generated by exports. The defendants have a strong marketing and distribution
network in India and they have a large market presence in respect of their various
products. The various types of "AQUA KOOL" bottles of the defendants alone for the
present financial year has generated a sales turn over of Rs. 1.95 crores. Since the
launch of the said product in June 2011, it has been extensively and continuously
sold in different parts of India by the defendants for the last 5 years.
14. It is further stated that the plaintiffs design is contravention of the provisions of
Designs Act and liable to be rectified. The plaintiffs though have applied for and
obtained registration in respect of the "ornamental design" of its bottle in September
2008 in the United States of America and have not sought for any proprietary over
the shape or configuration of their bottle, however, they have fraudulently applied for
and obtained registration for such common shape in India.
1 5 . It is further stated in the counter that all water bottles are generally are
cylindrical and rectangular in shape. In addition to the above many bottles have

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 curves for ease of gripping the bottle. These are regular features in the industry there
is nothing new and unique about the plaintiffs bottle design. Therefore, the plaintiffs'
bottle is not new or original and the design granted with respect to the shape of the
bottle ought to be cancelled. Likewise, with respect to cap normally the same
resembling the caps of water bottles in general. The mouths of water bottles are
generally round and the caps are also generally round so as to fit the mouth.
Therefore, there is nothing new and unique about the bottles cap of the plaintiffs.
Further to the vertical projection on the cap is a functional feature and it is not open
for design registration or protection. The side projection has no aesthetic value and
not unique and it has been placed to serve a functional purpose.
16. The defendants have further claimed that the plaintiffs design was registered with
effect from 15.09.2008. Similar bottle designs have been published and used before
the year 2008 and they have come in public domain. Hence, the design registration of
the plaintiffs is invalid. Moreover, the defendants' design is substantially different
from the plaintiffs' design and so the register of designs and registrations have been
granted to the defendants' bottles. They also sold under two totally different brand
names viz., Tupperware and Cello. Hence, there cannot be any likelihood of confusion
arising in the minds of the public while buying the bottles and prayed for dismissal of
the applications.
1 7 . Heard, Mr. Hemanth Singh, learned counsel for Mr. Arun C. Mohan, learned
counsel for the plaintiffs and Mr. P. Satish Parasaran learned Senior Counsel for the
defendants and perused the materials available on record.
18. The learned counsel for the plaintiffs would submit that the plaintiffs are the
registered proprietors of the design applied to the bottle and the cap of its AQUASAFE
BOTTLE, which is narrated in paragraphs 16 and 17 of the plaint; that Section 2C
defines copyright and Section 11 of the Designs Act confers copyright to the
registered Proprietor of the design for a initial period of 10 years and under 11(2) of
the Act, the period further extended to another period of 5 years. So the first plaintiff
has exclusive copyright till 05.09.2023; that Section 22 prohibits infringement of
registered design; that in view of Sections 19(1)(A) and 19(1)(C) of the Designs Act,
the Design Registration of the defendants are ex-facie invalid and it confers no right
on the defendants and that in the US Design Registration, the design is displayed in
form of drawing, whereas in the Indian Design Registration relates to "shape and
configuration of the bottle", so there is no discrepancy between the US Design
Registration and the Indian Design Registration.
19. The learned counsel would urge that Section 2D of Designs the Act excludes only
such devices which are mere mechanical and designs which are essentially functional.
If there are choices of designing available to attain the same functional utility, then
such design is not an essentially functional design. It is contended that the
defendants have not produced any evidence to establish that the features of the
novelty claimed as design by the plaintiffs are essentially functional. A bottle can be
well gripped irrespective of the design configuration subject matter of the plaintiffs
registered design. The utility of the grip of a bottle can be attained by other design
options. Similarly, the features to facilitate is of opening of a cap of a bottle can be
attained by various design features and therefore such features cannot be considered
as "essentially functional" or "essentially utilitarian" or "mere mechanical device",
therefore such designs are protected under the Designs Act.
20. It is next contended by the learned counsel for the plaintiffs that the defendants

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 cannot be permitted to approbate and reprobate that the features are registrable as
designs when it comes to the defendants registration, but they are not registrable as
designs when it comes to the plaintiffs design registration. The plaintiffs have
pleaded and produced substantial evidence to establish extensive and commercial use
and promotion of product by the plaintiffs and the defendants have copied the shape,
configuration, the arrangement of features, colours scheme, the getup and over all
trade dress of the plaintiffs AQUASAFE BOTTLES. Further, there is no explanation
from the defendants for such imitation and therefore it shall be inferred that the
defendants imitation is to derive benefit from the goodwill and reputation built by the
plaintiffs in their products, so as to pass of their goods as that of the plaintiffs. So
the plaintiffs are entitled for interim injunction.
2 1 . The learned counsel for the plaintiffs has relied on the following decision in
support of his contentions:
(i) Bharat Glass Tube Ltd. v. Gopal Glass Work Ltd. MANU/SC/2096/2008 :
2008 (37) PTC 1 SC
(ii) Castrol India v. Tide Water Co. MANU/WB/0501/1994 : 1996 PTC (16)
(iii) Alert India v. Naveen Plastics, MANU/DE/1315/1996 : 1997 PTC (17)
(iv) Dabur India v. Amit Jain, MANU/DE/1715/2008 : 2009 (39) PTC (Del)
(v) Cow (PB) & Coy Ltd. V. Cannon Rubber Manufacturers Ltd. RPC (1959)
240
(vi) Whirlpool India Ltd. v. Videocon Industrial Ltd. 2010 (60) PTC 155
(Bom)
(vii) RN Gosain v. Yashpal Dhir MANU/SC/0078/1993 : AIR 1993 SC 352
(viii) Automatic Electric v. RK Dhawan, MANU/DE/0412/1994 : 1999 PTC
(19) 81
(ix) Aravind Laboratories v. Modicare, CS No. 460 of 2010
(x) Satyam Infoway Ltd. vs. Sifynet Solutions Pvt. Ltd. MANU/SC/0462/2004
: 2004 (28) PTC 556 (SC)
(xi) Ruston & Hornby Ltd. vs. Z. Engineering Co. MANU/SC/0304/1969 : AIR
1970 SC 1649
(xii) Mohan Lal, Proprietor of Mourya Industries vs. Sona Paints & Hardwares
MANU/DE/1254/2013 : 2013 (55) PTC 61 [Del][FB]
(xiii) Syed Mohideen v. P. Sulochana Bai, MANU/SC/0576/2015 : (2016) 2
SCC 683
(xiv) Gorbatschow Wodka KG vs. John Distilleries Limited.
MANU/MH/0630/2011 : 2011 (47) PTC 100 (Bom.)
(xv) Faber-Castell Aktiengesellschaft vs. Cello Pens Pvt. Ltd.
MANU/MH/3735/2015 : 2016 (65) PTC 76 [Bom]

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 (xvi) Sketchers Inc. & Ors. v. Pure Play Sports, MANU/DE/1297/2016
(xvii) Eicher Goodearth Pvt. Ltd. Vs. Krishna Mehta MANU/DE/1908/2015 :
2015 (63) PTC 444 (Del)
(xviii) Ishi Khosla vs. Anil Aggarwal MANU/DE/7192/2007 : 2007 (34) PTC
370 (Del)
(xix) T.V. Venugopal vs. Ushodaya Enterprises Ltd. MANU/SC/0169/2011 :
(2011) 4 SCC 85
(xx) Midas Hygiene Industries (P) Ltd. vs. Sudhir Bhatia
MANU/SC/0186/2004 : (2004) 3 SCC 90
(xxi) Pankaj Goel vs. Dabur India Ltd. MANU/DE/2271/2008 : 2008 (38) PTC
49 (Del.) (DB)
(xxii) Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.
MANU/SC/0199/2001 : (2001) 5 SCC 73
(xxiii) In re Zahn, 204 USPQ 988.
2 2 . Per contra, Mr. P. Satish Parasaran, learned Senior for the defendants would
submit that the plaintiffs are involved in forum shopping and the suit is an abuse of
process of law. It is the case of the defendants that both the parties are situated
outside the jurisdiction of this Court, yet the present suit is filed based on a stray
sale of alleged infringing goods within the jurisdiction of this Court, despite the fact
the second defendant's principle business is situated in New Delhi.
23. The first defendant had filed a caveat in anticipation of proceedings from the
second plaintiff before the High Court of Delhi and also before the High Court of
Mumbai, where the second plaintiff and the first defendant are situated respectively.
However, in order to obtain an ex-parte order of injunction and coerce the
defendants, the plaintiffs have filed the present suit before this Court where no part
of cause of action or miniscule part of cause of action had arisen; that the plaintiffs
are not entitled to exclusive use in India of the shape of the bottle, surface
ornamentation on the bottle due to the reasons that the Indian Design Registration
was obtained by making false statement and suppression of material facts, which is
different from the parent US Design Registration. There is no novelty or originality
exists in the shape or configuration of the bottle. The first plaintiff claims only the
shape and configuration of the bottle in India, but the design registration does not
cover the ornamentation and surface pattern on the plaintiffs bottle.
24. It is also contended that mere existence of curvaceous shape and ridges along
the bottle does not confer any distinctive or extraordinary shape of the degree that
merits conferral of exclusive right of use and the claimed features are essentially
functional and as such they are not open for design registration in view of Section 2
of Designs Act. The plaintiffs have claimed the over all getup of AQUASAFE BOTTLE is
a trademark, but as per Section 2D of the Design Act, the plaintiffs trademark is not
entitled to design protection and the suit for passing off against the defendant is not
maintainable. Further, the defendant has a valid registration and they have statutory
right and authority to use its registered design under the Act.
25. It is further submitted that the parties market their products through different

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 trade channels and as such the defendants product cannot be mistaken for the
plaintiffs and the packing of both the products is entirely different and the defendants
have prominently affixed its own name/trademark on the product and packing. So the
consumer could easily distinguish the products and it is lastly contended that the
defendants have been manufacturing and extensively selling the alleged infringing
products form past 5 years to the knowledge of the plaintiff and the plaintiffs are also
aware of the designs of the defendants as a registered design, hence as per Section
41G of specific relief act, the plaintiffs have acquiesced their right, so it is not
entitled to any injunction.
2 6 . The learned Senior Counsel for the defendants has relied on the following
decisions in support of his contentions:-
a) Indian Performing Rights Society Ltd. vs. Sanjay Dalia -
MANU/SC/0716/2015 : (2015) 10 SCC 161
b) Wing Shing Products (BVI) Co. Ltd., vs. Sunbeam Products, Inc. et al --
(665 F. Supp. 2D 357 (S.D.N.Y. 2009)
c) Egyptian Goddess, Inc., vs. Swisa, Inc., - 88 U.S.P.Q. 2D 1658
d) Yakult Honsha KK's Trade Mark Application (2001) R.P.C. 756
e) S.M. Jaleel a Co. Ltd's. Trade Mark Application - 2000 R.P.C. 471
f) Philip Electronics v. Remington Consumer Products (1998) RPC 283
g) Amp Inc. v. Utilux, (1971) FSR 572
h) Dart Industries Inc. & Anr. v. Techno Plast & Ors., MANU/DE/8161/2007 :
(2007) 35 PTC 285 Del at Para 31
i) Hall v. Wright, 103 USPQ 16 at Para 7 D.Cal., 1954
j) X v. Bedfordshire CC, (1995) 3 All. E.R. 353
k) Duraco Products v. Joy Plastic Enterprises, 32 USPQ 2d. 1724 at 1725
l) Societe Des Produits Nestle SA v. Cadbury UK Ltd., (2016) EWHC 50 (Ch)
m) Manual of Trade Marks Practice and Procedure (India) at Pgs. 65
n) Thomas & Betts Corp. v. Panduit Co, 36 USPQ 2d 1065 at 1067-1068
o) Coca-Cola v. Office for Harmonisation in the Internal Market, (2016) ETMR
25 at Para 37
p) Hodgkinson Corby Ltd. v. Wards Mobility Services Ltd., (1995) FSR 169 at
174
q) Cadilla Health Care Ltd. v. Cadila Pharmaceuticals Ltd.
MANU/SC/0199/2001 : (2001) 5 SCC 73 at Para 35
r) Aravind Laboratories vs. Modicare, C.S. No. 460 of 2010 at Para 42
s) Durga Dutt Sharma vs. Navaratna Pharmaceuticals Laboratories

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 MANU/SC/0197/1964 : (1965) 1 SCR 737 at para 28
t) Conopco Inc. v. May Department Stores, 32 USPQ 2d. 1225
u) Kellogg Co. v. Pravin Kumar Bhadabhai, MANU/DE/0233/1996 : (1996) 36
DRJ 509 at Para 14
v) Moroccanoil Israel Ltd. v. Aldi Stores Ltd., (2014) EWHC 1686
w) Power Control Appliances v. Sumeet Machines Pvt. Ltd.
MANU/SC/0646/1994 : (1994) 2 SCC 448 at Para 26.
27. In the applications we have to see whether the plaintiffs have made out a prima
facie case and the balance of convenience is in favour for granting an order of interim
injunction.
28. Before considering the rival submissions of the learned counsels, it would be
appropriate to consider the object and scheme of the Act. The relevant provisions are
extracted below:-
(i) Section 2(d) of the Designs Act would run thus:-
"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, 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 (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); "
(ii) Section 4 of the Designs Act would run thus:-
"Prohibition of registration of certain designs. -- 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."
(iii) Section 5 of the Designs Act would run thus:-

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 "Application for registration of designs.-
(1) The Controller may, on the application of any person
claiming to be the proprietor of any new or original design
not previously published in any country and which is not
contrary to public order or morality, register the design
under this Act:
Provided that the Controller shall before such registration
refer the application for examination, by an examiner
appointed under sub-section (2) of section 3, as to whether
such design is capable of being registered under this Act and
the rules made thereunder and consider the report of the
examiner on such reference.
(2) Every application under sub-section (1) shall be in the
prescribed form and shall be filed in the patent office in the
prescribed manner and shall be accompanied by the
prescribed fee.
(3) A design may be registered in not more than one class,
and, in case of doubt as to the class in which a design ought
to be registered, the Controller may decide the question.
(4) The Controller may, if he thinks fit, refuse to register any
design presented to him for registration; but any person
aggrieved by any such refusal may appeal to the High Court.
(5) An application which, owing to any default or neglect on
the part of the applicant, has not been completed so as to
enable registration to be effected within the prescribed time
shall be deemed to be abandoned.
(6) A design when registered shall be registered as of the
date of the application for registration."
(iv) Section 11 of the Designs Act would run thus:-
"Copyright on registration.-
(1) When a design is registered, the registered proprietor of
the design shall, subject to the provisions of this Act, have
copyright in the design during ten years from the date of
registration.
(2) If, before the expiration of the said ten years, application
for the extension of the period of copyright is made to the
Controller in the prescribed manner, the Controller shall, on
payment of the prescribed fee, extend the period of
copyright for a second period of five years from the
expiration of the original period of ten years."
(v) Section 22 of the Designs Act would run thus:-
"Piracy of registered design.-

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 (1) During the existence of copyright in any design it shall
not be lawful for any person-
(a) for the purpose of sale to apply or cause to be applied to
any article in any class of articles in which the design is
registered, the design or any fraudulent or obvious imitation
thereof, except with the licence or written consent of the
registered proprietor, or to do anything with a view to
enable the design to be so applied; or
(b) to import for the purposes of sale, without the consent
of the registered proprietor, any article belonging to the
class in which the design has been registered, and having
applied to it the design or any fraudulent or obvious
imitation thereof; or
(c) knowing that the design or any fraudulent or obvious
imitation thereof has been applied to any article in any class
of articles in which the design is registered without the
consent of the registered proprietor, to publish or expose or
cause to be published or exposed for sale that article.
(2) If any person acts in contravention of this section, he
shall be liable for every contravention-
(a) to pay to the registered proprietor of the design a sum
not exceeding twenty-five thousand rupees recoverable as a
contract debt, or
(b) if the proprietor elects to bring a suit for the recovery of
damages for any such contravention, and for an injunction
against the repetition thereof, to pay such damages as may
be awarded and to be restrained by injunction accordingly:
Provided that the total sum recoverable in respect of any one
design under clause (a) shall not exceed fifty thousand
rupees: Provided further that no suit or any other proceeding
for relief under this sub-section shall be instituted in any
court below the court of District Judge.
(3) In any suit or any other proceeding for relief under sub-
section (2), every ground on which the registration of a
design may be cancelled under section 19 shall be available
as a ground of defence.
(4) Notwithstanding anything contained in the second
proviso to sub-section (2), where any ground on which the
registration of a design may be cancelled under section 19
has been availed of as a ground of defence and sub-section
(3) in any suit or other proceeding for relief under sub-
section (2), the suit or such other proceeding shall be
transferred by the court, in which the suit or such other
proceeding is pending, to the High Court for decision.
(5) When the court makes a decree in a suit under sub-

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 section (2), it shall send a copy of the decree to the
Controller, who shall cause an entry thereof to be made in
the register of designs."
29. The object of registration of design is to provide statutory protection to designs
to those who produce new and original designs, primarily to advance industries, and
to keep them at a high level of competitive progress. However, novel designs which
are purely functional cannot found an action of infringement, Court must see as to
whether the design adopted by the defendants was substantially different from the
design which was registered.
30. The main defense taken by the defendants are that (i) they are manufactures of
household commodities in India since 1974 and the impugned design in AQUA KOOL
bottles was launched in June 2011 and the product is being sold continuously for the
past five years, so, the delay and laches disentitle the plaintiffs from claiming reliefs
against the defendants, (ii) The designs have variations, (iii) The AQUASAFE BOTTLE
has regular features, there is nothing new or unique in the design, (iv) the vertical
protection on the cap is a functional feature, therefore, it is not open for design
registration and (v) The design of the defendants is substantially different from the
plaintiffs' design.
31. It is not in dispute that the plaintiffs are registered proprietors of the design in
US design Registration No. 609, 104S and US design Registration No. 613, 160S
(cap). The plaintiffs have specifically stated that the product of the plaintiffs has
phenomenally increased and they have spent huge sums towards promotion of the
business. To fortify their case, plaintiffs have specifically averred in plaint paragraphs
12 and 13 and also produced documents, which are not seriously disputed by the
defendants.
32. It is also not the case of the defendants, that they are prior user of the design
and even design registration of the plaintiffs would not affect the rights of prior user.
It is an admitted fact the plaintiffs' design was registered in the year 2008, whereas
the defendants launched the impugned design only in June 2011 and the suit was
instituted on 05th October 2015 alleging that the plaintiffs came to know the sale of
the infringing the bottles through their field force on 1st August 2015.
33. While considering delay, laches and acquiescence, the Hon'ble Supreme Court in
M/s. POWER CONTROL APPLIANCES AND OTHERS V. SUMEET MACHINES PVT. LTD.,
[MANU/SC/0646/1994 : (1994) 2 SUPREME COURT CASES 448], has held as
follows:-
"29. This is the legal position. Again in Halsbury's Laws of England, Fourth
Edn., Vol. 24 at paragraph 943 it is stated thus:
'943. Acquiescence.- An injunction may be refused on the ground of
the plaintiff's acquiescence in the defendant's infringement of his
right. The principles on which the court will refuse interlocutory or
final relief on this ground are the same, but a stronger case is
required to support a refusal to grant final relief at the hearing.
[.Patching v. Dubbins; Child v. Douglas; Johnson v. Wyatt; Turner v.
Mirfield; Hogg v. Scott; Price v. Bala and Festiniog Rly. Co.] The
reason is that at the hearing of the cause it is the court's duty to
decide upon the rights of the parties, and the dismissal of the action
on the ground of acquiescence amounts to a decision that a right

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 which once existed is absolutely and for ever lost: Johnson v. Wyatt
at; and see Gordon v. Cheltenham and Great Western Union Rly. Co.
per Lord Longdate MR.')'
30. In Aktiebolaget Manus v. R.J. Fullwood & Bland, LD.4 at pp. 338-39 it
was held thus: "Apart from this point the case of Fullwood v. Fullwood shows
that the injunction in a passing-off case is an injunction sought in aid of a
legal right, and that the Court is bound to grant it if the legal right be
established unless the delay be such that the Statute of Limitations would be
a bar. That case apparently concerned some predecessors of the defendants.
The delay was one of rather under two years and the relief sought was an
injunction to restrain the use by the defendants of cards and wrappers
calculated to induce the belief that his business was connected with the
plaintiff. Fry, J., in the course of his judgment said this:
'Now, assuming, as I will, for the purpose "of my decision, that in
the early part of 1875 the plaintiff knew of all the material facts"
which have been brought before me today, he commenced his action
in November 1876. "In my opinion that delay, and it is simply delay,
is not sufficient to deprive the plaintiff of his rights. The right
asserted by the plaintiff in this action is a legal right. He is, in 18
(1853) Kay 1 : 69 ER 119 : (1854) 5 De GM & G 739 : 43 ER 1057
20 : (1863) 2 De GJ & Sm 18 : 46 ER 281 21 : (1865) 34 Beav 390 :
55 ER 685 22 : (1874) LR 18 Eq 444 23 : (1884) 50 LT 787 24 :
(1842) 5 Beav 229, 233 : 49 ER 565 25 : (1878) 9 ChD 176 : 47 L J
Ch 459 "effect, asserting that the defendants are liable to an action
for deceit". It is not suggested in the defence that the delay here
involves a question under or analogous to the period under the
Statute. The defendants did suggest that there had been something
more than mere delay on the part of the plaintiffs, and that the
plaintiffs had lain by and allowed the goodwill which the plaintiffs
now propose to acquire, but this point was not seriously pressed. It
was suggested that Mr. Evans Bajker, the plaintiffs' solicitor, knew
from 1941 onwards what the defendants were doing, but it is
impossible to impute to a busy solicitor a knowledge which he could
only acquire by seeing advertisements in local or farming papers
advertising the defendants' activities. No direct information was
afforded to him; on the contrary it will be remembered that when in
1942 he made enquiries on behalf of his clients information was
studiously withheld from him. I conclude therefore that there has
been no acquiescence to disentitle the plaintiff to relief.
..."
3 4 . A similar view was taken by the Apex Court in the decision reported in
MANU/SC/0186/2004 : (2004) 3 SCC 90 (supra), which would run thus:-
"5. The law on the subject is well settled. In cases of infringement either of
Trade Mark or of Copyright normally an injunction must follow. Mere delay in
bringing action is not sufficient to defeat grant of injunction in such cases.
The grant of injunction also becomes necessary if it prima facie appears that
the adoption of the Mark was itself dishonest."

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 3 5 . In view of the above decisions, when the dishonesty and fraud qua, the
defendants are apparent, a mere delay would not be a ground to deny an order of
injunction. Considering the facts of this case, I am of the view, the above referred
judgments of the Supreme Court would squarely apply to the case on hand.
Therefore, the contention of the defendants on this score cannot be appreciated.
3 6 . Indisputably that the first plaintiff is the proprietor of the design AQUASAFE
BOTTLE and the same was registered with USA Patent and Trademark Office vide
application, dated 5th September 2008 and it was registered in India in February
2009. The registration is valid till 2019. Though it is sought to be contended that the
design registrations have variations, I am of the opinion this defense can be decided
only after trial. At this juncture, it cannot be a ground to reject injunction
applications.
37. The next defense of the defendants is though it is sought to be contended by the
defendants that the designs of the plaintiffs is not new or unique and the similar
bottle designs have been published and used even before 2008 and they have been in
public domain to dispute the right of the plaintiffs, however, the defendants have not
produced any material to substantiate their case. It is to be seen that the defendants
themselves claim to be the registered proprietor of similar designs. Hence, as rightly
contended by the learned counsel for the plaintiffs, the defendants cannot be
permitted to blow hot and cold in the same breath.
3 8 . In the decision referred by the learned counsel for the plaintiffs in
MANU/DE/0412/1994 : 1999 PTC (19) 81 [Automatic Electric v. R.K. Dhawan], the
Delhi High Court has held as follows:-
"16. The defendants got their trade mark "DIMMER DOT' registered in
Australia. The fact that the defendant itself has sought to claim trade
proprietary right and monopoly in "DIMMER DOT, it does not lie in their
mouth to say that the word "DIMMER" is a generic expression. User of the
word "DIMMER" by others cannot be a defense available to the defendants, if
it could be shown that the same is being used in violation of the statutory
right of the plaintiff. In this connection, reference may be made to the
decision of this Court in Prakash Road line Ltd. Vs. Prakash Parcel Service (P)
Ltd.; reported in MANU/DE/0526/1992 : 1992(2) Arbitration Law Reporter
page 174. Reference may also be made to the decision in P.M. Diesels Ltd.
Vs. S.M. Diesels; reported in MANU/DE/0636/1994 : 53 (1994) Delhi Law
Times 742. It was held in those decision that if the plaintiff is a proprietor of
the registered trade mark, the same gives to the proprietor of the registered
trade mark the exclusive right to use the trade mark with relation to goods in
respect of which the trade mark is registered under the provisions of Section
28 of the Trade and Merchandise Marks Act. It was also held that such
statutory right cannot be lost merely on the question of principles of delay,
laches or acquiescence. It was also held that in general mere delay after
knowledge of infringement does not deprive the registered proprietor of a
trade mark of his statutory rights or of the appropriate remedy for the
enforcement of those rights so long as the said delay is not an inordinate
delay. In my considered opinion, the ratio of the aforesaid decisions are
squarely applicable to the facts of the present case."
Hence, the contention of the defendants on lack of novelty has no merit and the same
is rejected.

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 39. It is contended by the plaintiffs that a bottle can be well gripped irrespective of
the design configuration the utility of the grip of a bottle can be attained by other
design options, and such features cannot be considered as essential function. I fine
force in the said contention of the learned counsel for the plaintiffs. It is not the case
of the defendant that the design applied for is the only mode which was possible
considering the functional requirements of the products. In 2010 (60) PTC 155
(supra), the Mumbai High Court has held as follows:-
"39. .... For a defense of functionality to succeed, it is not enough to say that
the form has some relevance to the function. If a particular function can be
achieved through a number of different forms, then a defense of functionality
must fail. For the defence of functionality to succeed, it is essential for the
Defendant to establish that the design applied for is the only mode/option
which was possible considering the functional requirements of the products.
Even otherwise, as submitted by the Plaintiff assuming that the shape also
performs a certain function, that by itself is not determinative of the fact that
the design is functional if that is not the only shape in which the function
could be performed. In the case of Cow (P.B.) and Coy Ltd. vs. Cannon
Rubber Manufacturers Ltd. 29 (cited at page 75 of the majority judgment of
the Delhi High Court), the court held that there may be cases where the
design while fulfilling the text of being appealing to the eye is also
functional. In such cases, the conundrum of functionality is resolved by
taking note of the fact that it would make no impact on the articles
functionality, if the function could be performed by the use of another shape
as well. The fact that there are umpteen number of shapes in which washing
machines are sold clearly shows that the external shape has nothing to do
with the function sought to be performed. In the present case, it surely
cannot be argued that the constraints of functionality were such that the
Plaintiff's design was the only design which could have been 29 1959 RPC
347 KPPNair-42-NMS 2269 OF 2012 devised. Since the external shape of the
Plaintiff's washing machine has nothing to do with the function it performs
and since the Plaintiff in the present case is seeking enforcement of its entire
design and not an individual component thereof, the case law cited by the
Defendant in support of its defense attributing features of the Plaintiff's
design to functional requirements, has no bearing on the present case."
4 0 . Similar view was taken by the Delhi High Court in the case Cannon Rubber
Manufacturers Ltd. RPC (1959) 240. In view of the above facts, at this juncture, I find
it difficult to accept the contention of the defendants.
41. It is also contended by the learned Senior Counsel for the defendants that both
the parties are having place of business outside the jurisdiction of this Court, since
the defendants had already filed caveat petitions before the High Courts of Delhi and
Mumbai, this suit is filed before this Court with an intention to get interim order
behind their back. It is the case of the defendants that the plaintiffs have not
approached this Court with clean hands and this Court has no territorial jurisdiction
to decide the issue involved in the suit. The objections on jurisdiction raised by the
defendants need not be gone into, since the Hon'ble Division Bench of this Court, by
an order dated 25.02.2016, in O.S.A. No. 3268 of 2015, directed the learned Single
Judge to consider the prayer for interim relief and pass appropriate orders. It is to be
noted that before the Hon'ble Division Bench, the defendants have agreed to decide
the case on merits. In view of the above facts, the judgment relied on by the learned
Senior Counsel for the defendants reported in MANU/SC/0716/2015 : (2015) 10 SCC

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 161, does not help them.
42. It is settled law that in an action of infringement of design, it is not necessary
that the two designs must be identical on all points and they should be exactly the
same. The main consideration to be applied is whether the broad features of shape,
configuration, pattern etc., are same or nearly same and if they are substantially the
same then, it will be a case of imitation of the design of one by the other. As held by
the Delhi High Court in the case of Dabur India v. Amit Jain, the word imitation' does
not mean 'duplication' or need not be an exact replica. A general view of the features
of both the designs should be looked in to find out whether a particular design is as
good as the other, and the conclusion is to be arrived at by visual examination of the
two things. In this connection, it would be useful to refer the following decisions:-
(i) The Calcutta High Court in MANU/WB/0501/1994 : 1996 PTC (16) 202, in
the case of Castrol India Ltd. Vs. Tide Water Oil Co. (I) Ltd., in paragraphs
22 to 24 has held as follows:-
"22. The next question is whether there is sufficient resemblance
between the allegedly infringing copy and the petitioner's registered
design to found an action for infringement under section 53 of the
Act it is not every resemblance in respect of the same article which
would be actionable at the instance of the registered proprietor of
the design. The copy must be a fraudulent or obvious imitation. The
word 'imitation' dose not mean 'duplication' in the sense that the
copy complained of need not be an exact replica. The word has been
judicially considered but not defined with any degree of certainty. In
Best Product Ltd. (supra) it was said in deciding the issue of
infringement, it was necessary to break the article down into integers
for descriptive purposes but in the ultimate result it is the article as a
totality that must be compared and contrasted with the features of a
shape and configuration shown in the totality observable from the
representation of the design as registered. It was said that the Court
must address its mind as to whether the design adopted by the
defendants was substantially different from the design which was
registered.
2 3 . Apart from such overall resemblance in the design, the
authorities have held that the Court is required to see in particular as
to whether the essential part or the bases of the petitioner's claim for
novelty forms part of the allegedly infringing copy. In Best Products
Ltd. v. 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 emphasised 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 v. Harbro Rubber Company, (1920) 34 RPC 233 and Dunlop
Rubber Co. Ltd. v. Golf Ball Developments Ltd., (1931) 48 RPC 268,
281.

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 24. The next task of the Court is to judge the similarity or difference
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. Thus in the case of Benchairs Ltd. v. Chair Center
Ltd., 1974 RPC 429 where the article to which registered design was
applied was a chair. Russel L.J. said:
(ii) MANU/DE/1715/2008 : 2009 (39) PTC 104 [Dabur India v. Amit Jain],
the Delhi High Court has held as follows:-
"17. The law in regard to similarity which constitutes infringement
and which in turn attracts an order of injunction has been explained
by this Court in Alert India Ltd. (supra). Reference in the said case
has been made to an earlier decision in J.N. Electricals (India) v.
President Electricals MANU/DE/0172/1979 : ILR 1980 (1) Delhi 215
where it was explained that "the "sameness" of features does not
necessarily mean that the two designs must be identical on all points
and should differ on none. They have to be substantially the same."
In Alert India Ltd. it was held as under:
"36. Thus for determining whether two designs are identical
or not, it is not necessary that the two designs should be
exactly the same. The main consideration to be applied is
whether the broad features of shape, configuration, pattern
etc. are same or nearly the same and if they are substantially
the same then it will be a case of imitation of the design of
one by the other..."
43. Keeping in view, the dictum laid down in the above decisions and having seen
the bottles and caps of the plaintiffs as well as the defendants, this Court is of the
considered opinion that the bottles and caps of the defendants are deceptively similar
to that of the plaintiffs.
44. According to the plaintiffs, AQUASAFE BOTTLE was designed by the plaintiffs,
which is unique and novel. The designs have been registered with United States
Patent and Trademark, dated 2nd February 2010 and 6th April 2010, vide applications
dated 5th September 2008. The designs of the bottle and cap came to be registered
in India on 23rd February 2009 under Section 44 of the Designs Act and the
defendants have deliberately copied the designs and adopted the overall get up,
layout and trade dress of the applications, which would cause confusion and deceive
the consumers being illiterate and semi literate, leading to passing off the defendants
goods as that of the plaintiffs.
45. In the instant case, both the water bottles of the plaintiffs and the defendants are
cylindrical and rectangular in shape. The case of the plaintiffs is that shape,
configuration and surface patent has aesthetic eye appeal. It is further claimed that
on account of unique designs and high quality of the plaintiffs' product, they
witnessed a phenomenal increase of sale. The turnover of Rs. 18.83 crores in 1998-
99, increased to Rs. 98.09 crores in 2008-09 and Rs. 469.68 crores in 2013-14 and
the annual sale of AQUASAFE BOTTLES of Rs. 20.8 crores in the year 2010 was
increased to Rs. 51 crores in 2013. Thereby the plaintiffs acquired goodwill and
reputation.
46. The action of "passing off is a common law remedy. It is settled law that in a

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 passing off action, the plaintiffs have to establish the following ingredients:-
(i) that there is a goodwill or reputation attached to the goods or services
which the plaintiffs offers in the mind of the purchasing public.
(ii) that the defendant has employed misrepresentation.
(iii) that the defendant's action has caused damage.
4 7 . The Hon'ble Supreme Court in the case of RUSTON AND HORNBY LTD. V.
ZAMINDARA ENGINEERING CO. [MANU/SC/0304/1969 : AIR (1970) Supreme court
1649], has held as follows:-
"5. It very often happens that although the defendant is not using the trade
mark of the plaintiff, the get up of the defendant's goods may be so much
like the plaintiff's that a clear case of passing off would be proved. It is on
the contrary conceivable that although the defendant may be using the
plaintiff's mark the get up of the defendant's goods may be so different from
the get up of the plaintiff's goods and the prices also may be so different that
there "would be no probability of deception of the public. Nevertheless, in an
action on the trade mark, that is to say, in an infringement action, an
injunction would issue as soon as it is proved that the: defendant is
improperly using the plaintiff's mark.
6. The action for infringement is a statutory right. It is dependent upon the
validity of the registration and subject to other restrictions laid down in ss.
30, 34 and 35 of the Act. On the other hand the gist of a passing off action is
that A is not entitled to represent his goods as the goods of B but it is not
necessary for B to prove that A did this knowingly or with any intent to
deceive. It is enough that the get-up of B's goods has become distinctive of
them and that there is a probability of confusion between them and the
goods of A. No. case of actual deception nor any actual damage need be
proved.
48. The Bombay High Court in MANU/MH/0630/2011 : 2011 (47) PTC 100 in similar
facts, while granting interim injunction, after considering number of judgments,
observed as follows:-
"23. The Supreme Court in its judgment in Khoday Distilleries Limited V.
Scotch Whisky Association, MANU/SC/2361/2008 : 2008 (10) SCC 723 :
2008 (37) PTC 413 (SC) emphasized that the class of purchasers who are
likely to buy the goods by their education and intelligence and the degree of
care which they are likely to exercise in purchasing or using the goods would
be required to be considered. In that context, the Supreme Court relied on
the earlier judgment in Cadila Health Care Ltd. V. Cadila Pharmaceuticals
Ltd., MANU/SC/0199/2001 : (2001) 5 SCC 73 : 2001 PTC (21) 300 (SC). The
Supreme Court inter alia emphasized that when the class of buyers is
education and rich, the test is to be applied is different from one where the
product would be purchased by villagers or by the illiterate and poor. The
Supreme Court held in that case that had the test been applied, the matter
might have been different and in a given case probably the Court would not
have interfered. The Court was, however, inclined to interfere because a
wrong test had been applied which had led to a wrong result. In the present
case, the Court mus undoubtedly place in the balance the fact that both the

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 plaintiff and the defendant are selling Vodka which has a distinctive clientele.
For the purposes of the application for interlocutory relief one can well
proceed on the basis, as was suggested by the defendant, that the purchasers
of Vodka are primarily educated and well placed in life. But that by itself is
not dispositive of the issue as to whether the conduct of the defendant does
or does not amount to passing off. In the present case, there are several 11
(2011) 5 SCC 73 circumstances, which mus equally be placed in the balance
by the Court. Firstly, the plaintiff has prima facie established both a trans
border reputation as well as a reputation in the market in India and the fact
that unique shape of the bottle is an important element in tracing the source
of origin of the product to the plaintiff.
Secondly, under the Trade Marks Act, 1999, the shape of goods and their
packaging is statutorily recognized as a constituent element of a trade mark
as distinguishing the goods or services of a person with those of others;
Thirdly, the submission of the plaintiff that no other manufacturer either
globally or in India has adopted the shape of the bottle of the plaintiff (save
and except for the defendant) has not been disputed in the course of
submissions by counsel for the defendant; Fourthly the shape which has
been adopted by the plaintiff is unique to the point being capricious.
The defendant has absolutely no plausible or bona fide explanation for
adopting a shape which is strikingly similar; Even though the ad interim
order of the Court permitted the defendant to sell Vodka, though in a 'distinct
shaped bottle' the defendant has chosen not to do so. The defendant has no
explanation of how this particular design was adopted; and fifthly, the
attempt of the defendant if it is allowed would result in diluting the
distinctiveness and exclusivity of the mark of the plaintiff which has an
essential ingredient, the distinctive shape of the bottle in which Vodka is
sold. This would only embolden other infringers to invade upon the
proprietary right of the plaintiff and would ultimately result in a destruction
of the goodwill associated with the mark of the plaintiff."
49. In a recent judgment, the Hon'ble Apex Court in the case of SYED MOHIDEEN v.
P. SULOCHANA BAI [MANU/SC/0576/2015 : (2016) 2 SCCC 683] has held as
follows:-
31.1. Traditionally, passing off in common law is considered to be a right for
protection of goodwill in the business against misrepresentation caused in
the course of trade and for prevention of resultant damage on account of the
said misrepresentation. The three ingredients of passing off are goodwill,
misrepresentation and damage. These ingredients are considered to be
classical trinity under the law of passing off as per the speech of Lord Oliver
laid down in Reckitt & Colman Products Ltd. v. Borden Inc. [Reckitt & Colman
Products Ltd. v. Borden Inc., MANU/UKHL/0012/1990 : (1990) 1 WLR 491 :
(1990) 1 All ER 873 (HL)] which is more popularly known as "Jif Lemon"
case wherein Lord Oliver reduced the five guidelines laid out by Lord Diplock
in Erven Warnink Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd.
[Erven Warnink Besloten Vennootschap v. J. Townend & Sons (Hull) Ltd.,
MANU/UKHL/0030/1979 : 1979 AC 731 at p. 742 : (1979) 3 WLR 68 : (1979)
2 All ER 927 (HL)] ("the Advocate case") to three elements: (1) goodwill
owned by a trader, (2) misrepresentation, and (3) damage to goodwill. Thus,
the passing off action is essentially an action in deceit where the common

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 law rule is that no person is entitled to carry on his or her business on
pretext that the said business is of that of another. This Court has given its
imprimatur to the above principle in Laxmikant V. Patel v. Chetanbhai Shah
[Laxmikant V. Patel v. Chetanbhai Shah, MANU/SC/0763/2001 : (2002) 3
SCC 65].
3 1 . 2 The applicability of the said principle can be seen as to which
proprietor has generated the goodwill by way of use of the mark/name in the
business. The use of the mark/carrying on business under the name confers
the rights in favour of the person and generates goodwill in the market.
Accordingly, the latter user of the mark/name or in the business cannot
misrepresent his business as that of business of the prior right holder. That
is the reason why essentially the prior user is considered to be superior than
that of any other rights. Consequently, the examination of rights in common
law which are based on goodwill, misrepresentation and damage are
independent to that of registered rights. The mere fact that both prior user
and subsequent user are registered proprietors are irrelevant for the
purposes of examining who generated the goodwill first in the market and
whether the latter user is causing misrepresentation in the course of trade
and damaging the goodwill and reputation of the prior right holder/former
user. That is the additional reasoning that the statutory rights must pave the
way for common law rights of passing off.
32. Thirdly, it is also recognised principle in common law jurisdiction that
passing off right is broader remedy than that of infringement. This is due to
the reason that the passing off doctrine operates on the general principle that
no person is entitled to represent his or her business as business of other
person. The said action in deceit is maintainable for diverse reasons other
than that of registered rights which are allocated rights under the Act. The
authorities of other common law jurisdictions like England more specifically
Kerly's Law of Trade Marks and Trade Names, 14th Edn., Thomson, Sweet &
Maxwell South Asian Edition recognises the principle that where trade mark
action fails, passing off action may still succeed on the same evidence. This
has been explained by the learned author by observing the following:
"15-033. A claimant may fail to make out a case of infringement of a
trade mark for various reasons and may yet show that by imitating
the mark claimed as a trade mark, or otherwise, the defendant has
done what is calculated to pass off his goods as those of the
claimant. A claim in 'passing off has generally been added as a
second string to actions for infringement, and has on occasion
succeeded where the claim for infringement has failed."
32.1. The same author also recognises the principle that the Trade Marks Act
affords no bar to the passing off action. This has been explained by the
learned author as under:
"15-034. Subject to possibly one qualification, nothing in the Trade
Marks Act, 1994 affects a trader's right against another in an action
for passing off. It is, therefore, no bar to an action for passing off
that the trade name, get up or any other of the badges identified
with the claimant's business, which are alleged to have been copies
or imitated by the defendant, might have been, but are not registered

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 as, trade marks, even though the evidence is wholly addressed to
what may be a mark capable of registration. Again, it is no defence
to passing off that the defendant's mark is registered. The Act offers
advantages to those who register their trade marks, but imposes no
penalty upon those who do not. It is equally no bar to an action for
passing off that the false representation relied upon is an imitation of
a trade mark that is incapable of registration. A passing off action
can even lie against a registered proprietor of the mark sued upon.
The fact that a claimant is using a mark registered by another party
(or even the defendant) does not of itself prevent goodwill being
generated by the use of the mark, or prevent such a claimant from
relying on such goodwill in an action against the registered
proprietor. Such unregistered marks are frequently referred to as
'common law trade marks'."
50. The rights in passing off are emanating from the common law. The passing off
action is essentially an action in deceit and the right is considered essential for
protection of goodwill in the business against misrepresentation caused in the course
of trade and for prevention of resultant damage on account of the said
misrepresentation. As held supra, the shape, configuration cannot be described as
functional. The unique design has been copied and adopted by the defendants. Then,
onus would heavily lie on the defendants to explain as to why the defendants adopted
the similar getup and lay out of the plaintiffs. The defendants have not given any
reasonable explanation whatsoever as to why the defendants have been using the
identical design to that of the plaintiffs. Even according to the defendants, they are
involved in the business of manufacturing household commodities since 1974,
however, the defendants failed to establish their design and patent, so as to oppose
the interim relief prayed for by the plaintiffs.
51. The Hon'ble Supreme Court in Cadila Health Care Ltd. vs. Cadila Pharmaceuticals
Ltd. [MANU/SC/0199/2001 : 2001 (5) SCC 73] has observed that the decisions of
English Courts cannot be a deciding factor and they may be relevant in understanding
the essential feature of the trademark law, which reads as follows:-
"33. The decisions of English Courts would be relevant in a country where
literacy is high and the marks used are in the language which the purchaser
can understand. While English cases may be relevant in understanding the
essential features of trade mark law but when we are dealing with the sale of
consumer items in India, you have to see and bear in mind the difference in
situation between England and India. Can English principles apply in their
entirety in India with no regard to Indian conditions? We think not. In a
country like India where there is no single common language, a large
percentage of population is illiterate and a small fraction of people know
English, then to apply the principles of English law regarding dissimilarity of
the marks or the customer knowing about the distinguishing characteristics
of the plaintiffs goods seems to over look the ground realities in India. While
examining such cases in India, what has to be kept in mind is the purchaser
of such goods in India who may have absolutely no knowledge of English
language or of the language in which the trade mark is written and to whom
different words with slight difference in spellings may sound phonetically the
same. While dealing with cases relating to passing off, one of the important
tests which has to be applied in each case is whether the misrepresentation
made by the defendant is of such a nature as is likely to cause an ordinary

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 consumer to confuse one product for another due to similarity of marks and
other surrounding factors. What is likely to cause confusion would vary from
case to case...."
In view of the above decision, with great respect I am not able to follow the foreign
decisions relied on by the learned Senior Counsel for the defendants and the other
decisions referred by the learned Senior Counsel have no relevance to the facts of the
present case.
52. It is next contended by the learned Senior Counsel for the defendants, since the
defendants are registered proprietors of the design, the prayer for injunction as
sought for by the plaintiffs cannot be allowed. The Full Bench of the Delhi High Court
in the case of Mohanlal Proprietor of Mourya Industries vs. Sona Paints & Hardware
MANU/DE/1254/2013 : (2013 (55) PTC 61 [Del] [FB]) held that a suit against a
registered proprietor is maintainable.
53. Keeping in view, the scheme and the object of the Act, the principles laid down
in the judgments referred supra and in view of my above finding, I am of the
considered opinion the defendants have imitated the plaintiffs' design as to deprive
the plaintiffs of the protection under the statute. I am also of the opinion that the
plaintiffs have made out a strong prima-facie case for the grant of interim injunction.
The balance of convenience requires that the defendants should be restrained from
using the design and passing off.
54. In such view of the matter, there shall be an order of injunction as prayed for in
these applications till the disposal of the suit.
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