w w w . L a w y e r S e r v i c e s . i n



Marico Limited a company registered v/s Raj Oil Mills Limited, a company registered


Company & Directors' Information:- MARICO LIMITED [Active] CIN = L15140MH1988PLC049208

Company & Directors' Information:- RAJ OIL MILLS LIMITED [Active] CIN = L15142MH2001PLC133714

Company & Directors' Information:- N K OIL MILLS PVT LTD [Active] CIN = U15201GJ1994PTC022669

Company & Directors' Information:- B P OIL MILLS LIMITED [Active] CIN = U15142UP1965PLC003232

Company & Directors' Information:- K P L OIL MILLS PRIVATE LIMITED [Active] CIN = U15142KL1983PTC003685

Company & Directors' Information:- N K B OIL MILLS PRIVATE LIMITED [Active] CIN = U15142KL1999PTC013095

Company & Directors' Information:- K K K OIL MILLS PRIVATE LIMITED [Strike Off] CIN = U15142KL2000PTC013621

Company & Directors' Information:- S N OIL MILLS PRIVATE LIMITED [Strike Off] CIN = U15142HR1986PTC025702

Company & Directors' Information:- G. B. OIL MILLS PRIVATE LIMITED [Strike Off] CIN = U15326HR1985PTC019817

Company & Directors' Information:- R. OIL MILLS PRIVATE LIMITED [Strike Off] CIN = U15141DL1992PTC047883

Company & Directors' Information:- J K OIL MILLS COMPANY LIMITED [Strike Off] CIN = U15143UP1955PLC002570

Company & Directors' Information:- MARICO (INDIA) PVT LTD [Strike Off] CIN = U24229WB1974PTC029174

Company & Directors' Information:- N N OIL MILLS PRIVATE LIMITED [Strike Off] CIN = U15147MH1999PTC117989

Company & Directors' Information:- J & T OIL MILLS PRIVATE LIMITED [Strike Off] CIN = U15141KL2006PTC019754

Company & Directors' Information:- A AND R OIL MILLS PVT LTD [Strike Off] CIN = U15315CH1994PTC014265

    Appeal No.418 of 2007 In Notice of Motion No.3579 of 2006 In Suit No.2961 of 2006

    Decided On, 20 February 2008

    At, High Court of Judicature at Bombay

    By, THE HONOURABLE DR. JUSTICE S. RADHAKRISHNAN & THE HONOURABLE MR. JUSTICE ANOOP V. MOHTA

    For the Appellants : F. Pooniwala, N. Master, Crowford Bayely and Co., Advocates. For the Respondents: Ravi Kadam, Senior Advocate (Advocate General of Maharashtra), V.R. Dhond, Avesh Kayser, Advocates.



Judgment Text

Anoop V. Mohta, J.


The Appellants/ Original Plaintiffs are the registered proprietor of the designed article, for reference called "Parachute Cap", since 1999. The Respondents? Application for registration of their cap i.e. for reference called "Cocoraj Cap" was rejected some time in the year 2004.


2. In the month of September, 2006, the cause of action arose, when the Plaintiffs learnt about the use by the Respondents-Defendants of the impugned caps for which they have registered and acquired copyright of the said design.


3. On 8th September, 2006, the Appellants/ Original Plaintiffs vide their Advocate?s letter called upon the Respondents/ Original Defendants to desist from using the impugned caps of which they are the proprietor of registered design bearing No. 181063.


4. On 19th September, 2006, the Defendants vide their Advocate?s letter denied the allegation of the Plaintiffs and claimed to be using the impugned caps since 2002.


5. On 3rd October, 2006, the Plaintiffs vide their Advocate?s letter, once again called upon the Defendants to desist from using the impugned caps for which they are the proprietor of registered design. 6. On 4th October, 2006, the Plaintiffs thereafter filed the suit in this Court in order to restrain the Defendants from further infringing their registered cap design.


7. On 27th February, 2007, the Notice of Motion filed by the Plaintiffs was dismissed. Therefore, being aggrieved by the order of the learned single Judge dated 27th February, 2007, the Appellants prefer this Appeal before this Court.


8. The learned counsel for the Appellants relied on the Judgment in Ford Motor Co. Ltd.?s Design Applications (1995) R.P.C. (No. 5) House of Lords, Page 167 167.


9. The learned Senior counsel for the Respondents relied on the following Judgments. a) Ravinder Kumar Sharma Vs. State of Assam and Ors. (1999) 7 Supreme Court Cases, 435. b) Sifam Electrical Instrument Co. Ltd. Vs. Sangamo Weston Ltd., 1973 R.P.C. (No.29) Chancery Division, Page 899. c) Wander Ltd. & Anr. Vs. Antox India P. Ltd., 1990 (Supp) Supreme Court Cases 727. d) M/s. Kemp & Company & another Vs. M/s. Prima Plastics Ltd., 1999(1) Bom. C.R. 239. e) Polar Industries Ltd. Vs. Usha International Ltd. & Ors., AIR 2000, Cal. 119, (2002)2 CALLT 162 (HC)


10. The relevant provisions of the Designs Act-2000, (for short, "The Act") are as under:-


2. Definitions:- .......


a) "article" means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately;


b) .....


c) .....


d) "design" means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by 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);


11. Section 19. - Cancellation of registration: -


(1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:-


a) that the design has been previously registered in India; or


b) that it has been published in India or in any other country prior to the date of registration; or


c) that the design is not a new or original design; or


d) that the design is not registerable under this Act; or


e) that it is not a design as defined under clause (d) of section 2.


12. Section 22. - Piracy of registered design:-


1) ......


2) ......


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), every 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.


13. It is relevant to note the introduction, statement of objects and reasons of the Act. INTRODUCTION:-


In 1911 the Designs Act was passed by the then British Government in India, Since then extensive amendments have been made in the Designs Act. In the meanwhile India has made tremendous progress in the field of science and technology. There has been considerable increase in the registration of designs. To provide more effective protection to registered designs and to promote design activity in order to promote design element in an article of production it has become necessary to make the legal system of providing protection to industrial designs more efficient." .......


STATEMENT OF OBJECTS AND REASONS:-


. ...........The proposed Designs Bill is essentially aimed to balance these interests. It is also intended to ensure that the law does not unnecessarily extend protection beyond what is necessary to create the required incentive for design activity while removing impediments to the free use of available designs. To achieve these purposes, the Bill incorporates inter alia, the following, namely:-


a) it enlarges the scope of definition of "article" and "design" and introduces definition of "original";


(Emphasis added.)


14. The notes on clauses as published on 13th December, 1999 in reference to a Bill to consolidate and amend the law relating to protection of designs, as relevant, is reproduced below:-


Clause 2.- This clause contains definitions of various expressions used in the Bill. While most of the definitions in the existing Act have been retained, the definition of "original" has been incorporated vide clause (o). According to this definition, "original", in relation to a design, means originating from the author of such design and includes the cases which though old in themselves yet are new in their application. The definition of "original" has been incorporated in order to specify the registerable designs. The definitions of "article" and "design" have been amplified to align them with similar definitions internationally accepted for providing wider protection to the intellectual property. The definition of "article" has been amplified for inclusion of parts of articles sold separately within its scope. the definition of "design" has been amplified to incorporate therein the composition of lines and colours so as to avoid overlapping with the Copyright Act, 1957 regarding definition of "design" in respect of artistic work.


(Emphasis added.)


15. There is no dispute that the date of certificate of registration is dated 29/06/2000, therefore, the provisions of the Act are applicable. Both the parties have argued and made respective submissions based upon the Act.


16. The learned Single Judge by the impugned order in pending suit, has dismissed the Notice of Motion of the Appellants/ Plaintiffs mainly by holding that the Appellants? cap is not "an article" as defined in Section 2 (a) of the Act by mainly relying on English Court?s Judgment reported in (1995) R.P.C. 167, (House of Lords) (Ford Motor Company Limited?s Design Applications) and observed as under:-


"8. Mr. Kadam, the learned Advocate General appearing for the defendant, relied on a decision of the House of Lords in Ford Motor Co. Ltd.?s Design Applications, reported in (1995) R.P.C.167. A similar provision in the English statute reads as follows:-


"If that part is to be made and sold separately"


The House of Lords observed as follows:-


"My Lords, for these reasons I have been compelled to give up the attempt to read the words of the definition literally, and will instead look behind them for the intention of the legislature. In my opinion the purpose was to distinguish between on the one hand, an item designed for incorporation, whether as a spare part or as an original component, in a particular article or range of articles made by the manufacturer of the component, and on the other an item designed for general use, albeit perhaps aimed principally at use with manufacturer?s own artifacts. Whilst it is often unwise to restate the effect of a statute in different words, since this may lead to the new formula being subjected to the kind of textual analysis which ought to be reserved to the statute itself, an answer will, I believe be supplied in many cases by applying the criterion given by McCowan L.J., namely: that to qualify under Section 44(1) a spare part has to have an independent life as an article of commerce and not be merely an adjunct of some larger article of which it forms part".


I am in respectful agreement with the said judgment and also of view that the Indian statute should not be read literally. Merely because a part of the article can be made separately and sold separately, it should not be taken as covered by that phrase unless the part has an identity in the market by itself. Indeed, a part must have an independent life as an article of commerce and not be merely an adjunct of some larger article of which it forms part. The cap involved in the present case cannot be said to have an independent life of an article of commerce."


17. The definition of "article" under the Act as reproduced above read with the definition of "design" are different from the provision of the English statute as reproduced above and importantly, the following words "includes any part of an article capable of being made and sold separately", whereas, in the English statute the words are "if that part is to be made and sold separately". Therefore, the words "capable of being made and sold separately" has to be read and considered in the context of the Act. The English Law is silent with regard to the above words of the Act. The repealed Act 1911 defines "article" means any article of manufacture and any substance artificial or natural or partly artificial or partly natural. The above words "capable of being made and sold separately" were not there earlier. Therefore, as noted in the objects and reasons and as intended to enlarge the definition of "article" and "design", above words have been inserted. These words are clear and unambiguous.


18. The observations of House of Lords as reproduced above and as relied, therefore, cannot be read in isolation without considering the existing enlarged definition of an "article" under the Act. The similar provisions of English statute as relied, even if read, in no way similar and or identical with the newly inserted words under the Act. The English statute and or the decision as referred above, in view of the amended definition cannot be extended in such a fashion to interpret the Act, by holding that "a part must have an independent life as an article of commerce and not by merely an adjunct of some larger article of which it is formed part. The cap involved in the present case not independent life of an article of commerce".


19. The Apex Court in an innumerable cases has held that when the language of the Act or statute is plain, simple and clear it needs to be respected. There is no vagueness in the definition of "article". Apart from the intention of the legislature, it is unambiguous and clear. The Act, therefore, needs to be interpreted in this background and not otherwise. The isolated section cannot be read of English statute to decide the express and clear provisions of the Indian Law like in question.


20. As expressed by the Supreme Court in State of West Bengal Vs. M/s. B.K.Mondal & Sons, (five Judges), AIR 1962, S.C. 779, the assistance of English decisions dealing with the Indian Statutory Provisions is limited, as observed thus:-


"In such a case, where we are dealing with the problem of construing a specific statutory provision it would be unreasonable to invoke the assistance of English decisions dealing with the statutory provisions contained in English law. As Lord Sinha has observed in delivering the judgment of the Privy Council in Ramanandi Kuer Vs. Kalawati Kuer, 55 Ind APP 18 : ILR 7 Pat 221: (AIR 1928 PC 2) "it has often been pointed out by this Board that where there is a positive enactment of the Indian Legislature the proper course is to examine the language of that statute and to ascertain its proper meaning uninfluenced by any consideration derived from the previous state of the law or of the English law upon which it may be founded". If the words used in the Indian statute are obscure or ambiguous perhaps it may be permissible in interpreting them to examine the background of the law or to derive assistance from English decisions bearing on the point; but where the words are clear and unambiguous it would be unreasonable to interpret them in the light of the alleged background of the statute and to attempt to see that their interpretation conforms to the said background."


21. Even otherwise at the most the English decisions have persuasive value but cannot be relied to interpret, specially when the provisions of the Act as amended is different and clear.


22. The Supreme Court has further observed in Forasol Vs. Oil and Natural Gas Commission, AIR 1984 S.C. 241 that:-


"Further, the English decisions referred to by us are of courts of a country from which we have derived our jurisprudence and large part of our laws and in which the judgments were delivered by Judges held in high repute. Undoubtedly, none of these decisions are binding upon this Court but they are authorities of high persuasive value to which we may legitimately turn for assistance. Whether the rule laid down in any of these cases can be applied by our courts must, however, be judged in the context of our own laws and legal procedure and the practical realities of litigation in our country."


23. As noted in the present case, in view of the changed definition of article under the Act itself the said Judgment, Ford Motors Company Limited?s Design Applications (Supra), cannot be extended and or made applicable to decide the case in hand.


24. Strong reliance was placed on following paras of the another English Judgment reported in (1973) R.P.C. 899, Sifam Electrical Instrument Company Limited Vs. Sangamo Limited Weston Limited, by the learned Senior Counsel appearing for the Respondents.


"I come then to the final question: Was the design of the meter front in sketch No.10 registerable under the Designs Act, 1949?


This depends on the words of sections 1 and 44 of that Act. Section 1(1) reads: "A design may be registered under this Act in respect of any article or set of articles specified in the application". Section 44 defines article as including "any part of an article if that part is made and sold separately".


" The meter front here is not now and never has been sold separately nor was it ever intended that it should be. The words of the section are, however, difficult because they cannot be read strictly literally. If an article or part of an article is in fact being sold at the time of the application to register that in itself would invalidate the registration because the design would have been published and would not be "new or original" within subsection (2). What then do the words mean? The defendants say they mean "susceptible of being sold separately", which they say this meter front is. But here again any part of any article is susceptible of being sold separately even if, for example, the part has to be forcibly removed from the whole of the article of which it forms part."


"The words used are "if that part is made and sold separately", and the phrase as a whole, to my mind, confirms that both the manufacture and sale of the part in question must be operations which are distinct from the manufacture and sale of the whole article of which the "part" forms a component. It is necessary to imply the words "to be" in order to construe the phrase as not including sale of the part prior to or at the date of the application for registration since this would produce an absurd result contrary to section 1(2), would invalidate the registration, and cannot possibly have been the intention of the legislature."


25. The facts and circumstances apart, from law it is distinct and distinguishable. The present designed article cap is capable of being made separately and sold separately. There is no question of any forcible separation of any part of the designed cap. The registered cap itself is the article for the purpose of the Act and registered accordingly.


26. As noted, the words clear whereby the legislature has intended to enlarge the definition and meaning of the word "article". The above English judgments as well as law in our opinion cannot be the precedent and or the binding decisions. Those Judgments, therefore, in no way assist the defendants to support their case that the registered cap in question is not an article within the definition and ambit of Section 2(a) of the Act.


27. The fact which also cannot be overlooked at this stage of the proceeding is that the Defendants themselves had applied for registration of their cap separately which was rejected. There is no further Appeal or challenge raised to the said rejection of their separately made cap for their registered bottle.


There is an affidavit on record filed by the Defendants itself shows that the caps are made separately in the market. The caps which can be made separately, it also includes that the said caps are "capable of being made and sold separately". The dictionary meaning of the word capable is as under:-


1. WEBSTER ILLUSTRATED CONTEMPORARY


DICTIONARY EDITION) ( ENCYCLOPEDIC EDITION):-


Capable:- adj. Having suitable ability; competent. - capable of 1. Having the required ability or capacity for. 2. Open to; susceptible of. [ Open to or admitting of something. 2 (of a person) competent. - DERIVATIVES capably adv. -ORIGIN C16: from Fr., from late L. capabilis, from L. capere ?take or hold?.


28. The phrase, therefore, "capable of being made and sold separately" covers the cases not only that an article upon which a design article can be made but also can be sold separately. Therefore, such article which is separate from the other parts of the goods and registered separately as a design, if intended and or desired by the proprietor of the registered article, as capable of being made and sold, is saleable in the market separately. Therefore, it is registerable under the Act. Admittedly, having once registered under the Design Act pursuance to the existing provisions including the enlarged definition of "an article" and "design", it is difficult to accept the contention as raised by the learned counsel appearing for the Defendants and also the reasons given by the learned Judge on such articles, though made separately and capable of being made and sold separately, still it is not an article within the meaning/ definition under Section 2(1) (a) of the Design Act. Only because such article in present circumstances may not be put up in the market for sale separately. It is not correct to say that the cap involved in the present case, cannot be said to have an independent life as an article of commerce. The fact that such article is "capable of being made and sold separately" that itself is sufficient. It is difficult to accept the contention that such caps are not article as they have no independent life as an article of commerce and not an adjunct of some larger article.


29. The phrase as inserted in the Act, now even covers "any part of an article capable of being made and sold separately". Apart from any article of manufacture, therefore, we have no doubt that the words inserted in the Act have a wide meaning and are not to be restricted to exclude an article and or even the part of an article which is "capable of being made and sold separately", as contended and as held by the learned Judge. There is no question of giving the restricted meaning to exclude finished design article like cap in question which admittedly and factually were and are made separately. These caps are capable of being sold separately.


30. The fact remains that there is no dispute on record that both the parties got the cap made separately. The concept of getting such cap registered separately is known to the commercial world and specially business and the market of the products in question. The Respondents cap registration was rejected. The Appellants/ Plaintiffs got the registration under the Act. Therefore, such proprietor of design article is definitely entitled to have exclusive rights to claim the protection. Therefore, unless the said registration is set aside on application either by the Defendants or such person, at present it is final and binding to all.


31. The Defendants? defence even though permissible under Section 22(3)(4) of the Act, unless decided in trial, at this stage, the rights created in view of the registered design just cannot be taken away by raising such defence including the validity/ legality of grant of registration to the Appellants/ Plaintiffs. The suit is still pending for trial. The issue about cancellation of registration as need detailed material and inquiry kept open for the trial.


32. The additional factor is that when a design is registered, the registered proprietor of the design shall, subject to the provisions of the Act have a copyright in the design during 10 years from the date of registration as contemplated under Section 11 of the Act which is extendable for further 5 years.


33. In our opinion, the Appellants? cap falls within the ambit of definition "an article" under Section 2(a) of the Act. There is no contra material and or justification on record to hold otherwise. The Respondents? contention and or contradictory stands with reference to the registration of such article, in view of the above facts and circumstances, is unacceptable and unsustainable.


34. In view of the clear words and plain reading of the definition of "an article" there is no question of reading in the definition that such article has to be a commercial identity in the market of its own, as held by the learned Judge. Once a part of an article if falls within the ambit of the definition of "an article" and which is "capable of being made and sold separately", further enlargement of the definition and or restriction of any kind on the ground that such article and or part of an article has not commercial identity in the market of its own, its not an article, is not correct. The scheme of the Act with specific intention to enlarge the definition of "an article" even to cover a part of an article just cannot be overlooked, merely in view of the English statute and judgment passed upon the English Law.


35. Another facet is that, any design article which is capable of being made and sold separately, is a prerogative and or a right of the registered owner of the design to sale it separately or not. There is nothing pointed out and or shown to demonstrate that once the design is registered, it is nontransferable and or not assignable to third person. Even if such proprietor decide not to make and or sale it separately and or allow and or permit to any other person to use the said cap of the bottle of their products and or other products still in view of the definition, as the only requirement is that such article and or part of the article should have capacity and or capability being made and sold separately and no other. The purchaser, infringer, and or third person like Respondents cannot take shelter and take defence on this ground that the article so designed, cannot be made and or sold separately, and therefore, it is not "an article" within the ambit of the definition under the Act and the registration as granted be rejected.


36. We have allowed the Respondents to challenge the reasoning on merit of infringement, in view of the Apex Court Judgment (Ravinder Sharma) (supra) based upon Order 41 Rule 22(1) of the Civil Procedure Code. (C.P.C.). Even otherwise, there is a case to deal with the merit of the matter, based on the material available on the record. Both the parties have argued on merit of the matter accordingly.


37. The commercial identity of any article in the market cannot be judged from the point of view of the objector of the cap of a bottle or such other article.


In the commercial market, the person like the Appellants who are registered owner of the designed article, entitled to claim exclusive right over the designed article. No third person is entitled to use and utilize the said design on their articles without the consent and or permission from the registered owner.


38. Any distinct characteristic, feature, shape, size, pattern or composition of lines and or colours applied to any article by any process in the finished article need to be considered and judged solely by the eye of the third person including the Judges. In the present case, there is no dispute that the Appellants? bottle?s shape and configuration is registered, whereas, the Respondents registration of separate cap was rejected. There is no dispute about the shape, colour of the bottle. Both are comparatively same so far as the shape is concerned. Even the shade of colour, principally both the bottles are of blue shade/ colour. There is no dispute about any mechanism of the construction of an article apart from colour combination as appeared in the design. There is no dispute about the front side, isometric bottom view of the Respondents? bottle, which they got registered some time in the year 2004, whereby, the registration of the cap of the said bottle as claimed and or as designed/ was rejected. Whereas, by virtue of registration of cap design of Parachute bottle, the Appellants have acquired the copyright of the said design under the Act. The Appellants have exclusive manufacture and market such bottle cap and to apply for such in product. The Appellants have been, therefore, using the said registered design since July, 2000.


39. Now, we have to see what are the identical configuration and or protrusions which constitute a obvious infringement of Appellants? registered design of cap of bottle in question. There is a certificate on record dated 29th June, 2000 in favour of the Appellants with regard to the registered design number on 181063 dated 10th December, 1999 in clause 3 in the name of Marico Industries Limited, Mumbai, in respect of the shape, configuration and surface pattern of bottle cap of the Appellants. There is no claim in respect of any mechanical or mechanism or construction or colour combination of the article, including use of the letters or numerals appearing in the said representation.


40. We have seen and deliberated on the front, rear, left side, right side, top, bottom, and isometric view of the Appellants? Parachute cap of bottle and also the cap of Respondents? Cocoraj bottle.


41. There is a clear different mark name with Parachute and Cocoraj with a tick mark symbol on Parachute bottle. There is a single drop shape mark on Cocoraj bottle. The word "Parachute" and "Cocoraj" written on different letters, shape, size and design. The marks of both the bottles are different of respective name i.e. "Parachute" and "Cocoraj". The Parachute cap consists of a circular/ cylindrical elevation with cut outs at two ends. There is no such shape of Respondents? cap. The pattern of the Respondents? cap is combination of a concave and a convex surface with the intermediate part being raised. There is a mark of "Parachute" on the top of the cap. The shape and design of cap of Parachute from the top, rear, left side, right side and views are different than "Cocoraj". The colour of the bottles as well as Cap of "Parachute" is solid blue. Looking from the top and surface pattern of the bottle cap, even from the point of view of the shape and configuration and surface pattern of the bottle cap, both the bottles are not similar. The colour of cap of "Cocoraj" is translucent blue. The edges of the caps of "Cocoraj" are rounded. The top of the "Cocoraj" cap has embossed name "Cocoraj" with an embossed tick mark symbol. On "Cocoraj" cap from front, the plastic seal touches the top level of the cap or placed on the equal level. Whereas the plastic seal on the "Parachute" cap or parallel level of the cap. As some part of the cap about the seal is visible on "Parachute" cap. The "Parachute" cap has a sharper edge from all sides.


42. The similarities are:- a) The Shape of both the bottles is the same, b) The basic blue shade is same, c) The one side of both the caps having tied ribbon shaped hinge is similar, d) Nozzle of both the caps are comparatively same but that can be seen only after opening the cap and not otherwise. Comparative similarity is only the mechanism of a flap with one side hinge on the cap. After opening the flap, inner shape and size of both the caps are different.


43. We are, therefore, of the view that both the caps do not have identical configuration and protrusions as alleged and therefore, there is no question of infringement of any registered design. Both the caps are not identical or similar as contended. Though, both the bottles containing coconut oil are in the market, we are, prima facie, of the view that there is no similarity of the Respondents? cap with that of the Appellants.


44. In totality, we are of the opinion that, there are more differences in these two bottles and specially in the caps in question. Both the bottles? caps are separately designed and identifiable by any consumer. There cannot be any confusion in the mind, whosoever goes in the market to purchase oil of particular brand as there is no complaint about the colour and shape of the bottle and mechanism of the cap. I

Please Login To View The Full Judgment!

t is difficult to accept the contention that there is any similarity in the caps of "Parachute" and "Cocoraj". The reasoning to that effect are also quashed and set aside by holding that there is no similarity between these two caps on merit itself. 45. The another aspect which cannot be overlooked is, the Respondents? product i.e. "Cocoraj" bottle with cap containing coconut oil based upon the registered novelty in the shape are configuration of the bottle in particular in the place marked "A" of the bottle as illustrated which remained still in force since 07/07/2004 are in the market since then. There is no dispute about the shape, size, colour and colour combination and mechanical and any other mechanism of the construction of the Article of the bottle though selling the same coconut oil in the same market. The suit in question alongwith Notice of Motion filed on 4th October, 2006. There is no ad-interim relief granted in favour of the Plaintiffs at any point of time, restraining the defendants/ Respondents from selling and or marketing their bottle with caps. The Respondents/ Defendants have also averred which is supported by an affidavit, that approximately 1,52,43,725 bottles here in this suit, with the caps in question have been sold in the market from July 2004 to 2005. Apart from further sale from 2005 till this date in a way i.e. the matter of trial but still this fact just cannot be overlooked while dealing with the grant of injunction in such matter, apart from delay and laches. By an order dated 27th February, 2007, the Notice of Motion was dismissed. 46. There is no interim relief of any sort in operation against the Respondents. The suit is still pending. Therefore, considering the scope of the Appellate Court in such matter and as elaborated with reference to the grant of injunction under Order 39 Rule 1 readwith Section 43 of the Code of Civil Procedure (for short, "CPC") as reported in Wander Ltd. and Anr. Vs. Antox India P.Ltd., 1990 (Supp) Supreme 727 Court Cases, 727, we are of the view that there is no case made out by the Appellants to interfere with the order of dismissal of the Notice of Motion but for the reasons recorded in this Judgement. Therefore, we have though interfered with the reasoning but considering the over all view of the matter as recorded above, we are also of the view not to interfere with the order of dismissal of Notice of Motion. 47. After visual examination of the registered design cap of the Appellants and the cap of the Respondents, we are of the prima-facie view that both the caps are dissimilar in shape. No case of piracy or any infringement is made out. There is no case of imitation of registered design of the Appellants. (Polar Supra) Industries Ltd.) (Supra). 48. We are of the view that, cap is an article within the ambit of definition of "an article" under Section 2(1) of the Design Act, unless set aside. It is binding at this stage. Both the caps in question, are not similar and identified as contemplated under the Act. There is no case made out for grant of any injunction. 49. Taking all this into account, the reasonings given by the learned Judge are reversed and quashed and set aside on both the above counts but the order of dismissal of Notice of Motion is maintained. 50. In the result, for the above reasons the Appeal is disposed off. No order as to costs.
O R