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M/s. Fun World & Resorts (India) Pvt. Ltd., Bangalore, Represented By Its Managing Director, Vinod Kumar Sabharwal v/s K.K. Nimil, Proprietor, M/s. Niel Entertainment, Palarivattom, Ernakulam

    FAO. No. 151 of 2019

    Decided On, 13 January 2020

    At, High Court of Kerala

    By, THE HONOURABLE MR. JUSTICE ANIL K. NARENDRAN

    For the Appellant: Dr. K.P. Satheesan, S. Vibheeshanan, K. Sudhinkumar, S.K. Adithyan, Sabu Pullan, P. Mohandas (Ernakulam), Advocates. For the Respondent: P. Gopinath Menon, Sr. Advocate, Navod Prasannan Pattali, Advocate.



Judgment Text


1. The appellant is the defendant in O.S. (Copy Right) No.34 of 2019 on the file of the District Court, Ernakulam, a suit filed by the respondent herein, who is the proprietor of M/s.Niel Entertainment, a proprietary concern engaged in the business of conducting exhibitions, seeking a decree of declaration that he is the copyright owner of design 'Underwater Mobile Glass Tunnel Aquarium'. He has also sought for other consequential reliefs, including a decree for permanent injunction restraining the appellant or anyone claiming through him from manufacturing, selling, advertising, exhibiting and offering for sale 'Tunnel Aquarium' using the copyright in the 'Underwater Mobile Glass Tunnel Aquarium' design.

2. Going by the plaint averments, the plaintiff is engaged in the business of conducting various exhibitions at different locations. An 'Underwater Mobile Glass Tunnel Aquarium' with unique features ensuring safety, security and portability was conceptualised, designed, constructed and exhibited by the plaintiff at various places. Nobody has got a right to replicate the same for making unlawful gain. The plaintiff filed an application for registration of the design and the same is pending consideration. In the meanwhile, the defendant, which is a company registered under the Companies Act, which is engaged in similar activities, made 'Tunnel Aquarium', a replica of 'Underwater Mobile Glass Tunnel Aquarium' of the plaintiff, and started using it in exhibitions. As the plaintiff has a copyright of the design, the defendant cannot infringe the same and therefore, suit was filed seeking the aforesaid reliefs.

3. Along with the suit, the plaintiff filed I.A.No.5546 of 2019, under Order XXXIX, Rules 1 and 2 of the Code of Civil Procedure, 1908 seeking interim injunction retraining the defendant by himself, his servants, his agents, distributors or anyone claiming through him from manufacturing, selling, advertising, exhibiting and offering for sale 'Tunnel Aquarium', using the copyright in the 'Underwater Mobile Glass Tunnel Aquarium' design, during the pendency of the suit.

4. On receipt of notice, the defendant entered appearance and filed counter affidavit in I.A.No.5546 of 2019 for temporary injunction. In the counter affidavit, the defendant denied the claim made by the plaintiff that 'Underwater Mobile Glass Tunnel Aquarium' is the brain child of the plaintiff and he has copyright of its design. According to the defendant, the concept and design of 'Tunnel Aquarium' reached his hand through one Rafeeque, who was with the plaintiff as a contractor. The concept of 'Glass Tunnel Aquariums' belongs to one Abdul Nazar of National Pets Academy, Parappanangadi, who was approached by the plaintiff for technical advice, who got several design drawings from the said Abdul Nazar, and using the same the plaintiff constructed an 'Underwater Mobile Glass Tunnel Aquarium'. The plaintiff cannot claim any copyright over the design and his request for registration of the same is not likely to be allowed. The defendant has made elaborate arrangements for conducting 'Tunnel Aquarium' show at Kannur and if interim injunction as sought for is granted, it will cause irreparable injury and hardships to the defendant. Therefore, the defendant prayed for dismissal of I.A.No.5546 of 2019 for temporary injunction.

5. Before the court below, Exts.A1 to A8 were marked on the side of the plaintiff and Exts.B1 to B13 were marked on the side of the defendant. Exts.C1 to C3 series were marked as court exhibits.

6. After considering the pleadings and materials on record, the court below by the impugned order dated 03.09.2019 allowed I.A.No.5546 of 2019 with cost and the defendant, his servants, agents and distributors or anyone claiming through him are restrained by a temporary injunction from manufacturing, selling, advertising, exhibiting and offering for sale any 'Tunnel Aquarium', using the copyright in 'Underwater Mobile Glass Tunnel Aquarium' of the plaintiff, till the disposal of the suit.

7. Feeling aggrieved by the order of the court below in I.A.No.5546 of 2019 in O.S. (Copy Right) No.34 of 2019, the appellant/defendant is before this Court in this appeal filed under Section 104 of the Code of Civil Procedure, 1908 read with Order XLIII Rule 1(r) of the said Code.

8. On 05.09.2019, when this appeal came up for admission, this Court admitted the matter on file. The respondent/plaintiff entered appearance through counsel. Along with the appeal, the appellant filed I.A.No.1 of 2019 seeking an order to stay all further proceedings pursuant to the impugned order of the Court below in I.A.No.5546 of 2019 in O.S. (Copy Right) No.34 of 2019, dated 03.09.2019. On the said interlocutory application, this Court passed the following order;

“It is not in dispute that the appellant has made arrangements for conducting the exhibition of tunnel aquarium at the 'Onam Fair' at Police Maidan, Kannur from 09.08.2019 to 24.09.2019. There will be an interim stay of operation of the order dated 03.09.2019 in I.A.No.5546 of 2019 of the District Court, Ernakulam for a period of two weeks. This shall be subject to the condition that the appellant maintains true and proper accounts relating to the running of the show and specifically regarding the issue of entry tickets for the show.”

9. On 19.09.2019, when this appeal came up for consideration, this Court extended the interim order granted in I.A.No.1 of 2019 by one week. Thereafter, on 26.09.2019, when the appeal came up for further consideration, this Court clarified that no order of stay is in force and the appeal was ordered to be listed on 01.10.2019.

10. On 01.10.2019, the appellant filed I.A.No.2 of 2019, seeking an order to revive and extend the interim order of stay from 26.09.2019, until further orders, pending disposal of this appeal.

11. The respondent/plaintiff filed counter affidavit opposing the relief sought for in I.A.No.2 of 2019, pointing out that, though the order of stay in I.A.No.1 of 2019 was vacated on 26.09.2019, the appellant/defendant exhibited 'Underwater Mobile Glass Tunnel Aquarium' till 29.09.2019 in the Onam Fair conducted at Kannur Police Maidan, in violation of the interim injunction granted by the court below on 03.09.2019. On 26.09.2019, when this appeal was taken up for hearing, the learned Senior Counsel engaged by the counsel for the appellant/defendant and also the learned counsel for the respondent/plaintiff were present in Court. The learned counsel for the respondent pointed out before this Court that the appellant intends to exhibit 'Underwater Mobile Glass Tunnel Aquarium' in an exhibition organised at Palakkad, on the strength of the interim order granted in I.A.No.1 of 2019, which would cause irreparable injury and loss to the respondent. In the light of that submission, this Court did not extend the interim order in I.A.No.1 of 2019 and has clarified that no order of stay is in force. It is thereafter that the appellant filed I.A.No.2 of 2019, seeking revival and extension of the interim order of stay from 26.09.2019, as if they were unaware of the order of this Court dated 26.09.2019 in I.A.No.1 of 2019.

12. On 14.10.2019, after considering the submission made by the learned Senior Counsel for the appellant/ defendant and also the learned Senior Counsel for the respondent/plaintiff this Court dismissed I.A.No.2 of 2019, holding that, in view of the order dated 26.09.2019, the appellant cannot file an application to revive and extend the interim order granted in I.A.No.1 of 2019, pending disposal of this appeal.

13. Heard the learned Senior Counsel for the appellant/defendant and also the learned Senior Counsel for the respondent/plaintiff.

14. The learned Senior Counsel for the appellant would contend that the interim order of injunction granted by the court below amounts to allowing the suit itself and in such circumstances, the said order cannot be legally sustained. Several materials were produced before the court below to show that the defendant and its associates have been using 'Tunnel Aquarium' from the year 2016 onwards. There was no objections whatsoever from any corner and the application for registration made by the plaintiff under the provisions of the Copyright Act, 1957 was filed only in the year 2017. Moreover, the design in question is not capable of being registered under the Designs Act, 2000 since in Section 4 of the said Act there is prohibition of registration of a design which is not new or original. Therefore, the plaintiff is not entitled for protection under sub-section (2) of Section 15 of the Copyrights Act. The court below granted the interim order of injunction without considering the legal aspects and also the fact that the defendant had already spent considerable amount for conducting fairs, which cannot be compensated in any manner once the period of those fairs are over.

15. Per contra, after referring to various provisions under the Designs Act and that under the Copyright Act, the learned Senior Counsel for the respondent would contend that the plaintiff has got a legal right for registration of the design under Section 4 of the Designs Act. During the pendency of the application for registration, the plaintiff is entitled for protection under sub-section (2) of Section 15 of the Copyright Act. The court below, after considering the legal provisions and after satisfying that the plaintiff has made out a prima facie case, granted interim injunction as prayed for in I.A.No.5546 of 2019, and the said order is perfectly legal, which requires no interference in this appeal.

16. The Designs Act, 2000 was enacted to consolidate and amend the law relating to protection of designs, which came into force with effect from 11.05.2001, by repealing the Designs Act, 1911 made by the then British Government in India. The statement of objects and reasons of the Designs Act, 2000 read thus; Since the enactment of the Designs Act, 1911 considerable progress has been made in the field of science and technology. The legal system of the protection of industrial designs requires to be made more efficient in order to ensure effective protection to registered designs. It is also required to promote design activity in order to promote the design element in an article of production. The proposed Design Bill is essentially aimed to balance these interests. It is also intended to ensure that the law does not unnecessarily extent 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, among other things, it enlarges the scope of the definition of 'article' and 'design' and introduces definition of 'original'; it amplifies the scope of 'prior publication'; it contains provisions for identification of non-registerable designs; it introduces internationally followed system of classification in the place of Indian classification; etc.

17. Clause (a) of Section 2 of the Designs Act, 2000 defines the term 'article' to mean 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. Clause (c) of Section 2 defines the term 'copyright' to mean the exclusive right to apply a design to any article in any class in which the design is registered. Clause (d) of Section 2 defines the term 'design' to mean 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 Mechandise Marks Act, 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.

18. Clause (g) of Section 2 of the Designs Act defines the term 'original', in relation to a design, to mean originating from the author of such design and includes the cases which though old in themselves yet are new in their application. Clause (j) of Section 2 defines the term 'proprietor of a new or original design', to mean (i) where the author of the design, for good consideration, executes the work for some other person, means the person for whom the design is so executed; (ii) where any person acquires the design or the right to apply the design to any article, either exclusively of any other person or otherwise, means, in the respect and to the extent in and to which the design or right has been so acquired, the person by whom the design or right is so acquired; and (iii) in any other case, means the author of the design; and where the property in or the right to apply, the design has devolved from the original proprietor upon any other person, includes that other person.

19. Section 4 of the Designs Act deals with prohibition of registration of certain designs. As per Section 4, a design which (a) is not new or original; or (b) has been disclosed to the public any where 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.

20. Section 5 of the Designs Act deals with application for registration of designs. As per sub-section (1) of Section 5, 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. As per the proviso to sub-section (1) of Section 5, 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.

21. As per sub-section (2) of Section 5 of the Designs Act, 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. As per sub-section (3) of Section 5, 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. As per sub-section (4) of Section 5, 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. As per sub-section (5) of Section 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. As per sub-section (6) of Section 5, a design when registered shall be registered as of the date of the application for registration.

22. Section 11 of the Designs Act deals with copyright on registration. As per sub-section (1) of Section 11, 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. As per sub-section (2) of Section 11, if, before the expiration of the said ten years, application for 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.

23. The Copyright Act, 1957 was enacted to amend and consolidate the law relating to copyright, which came into force with effect from 21.01.1958. Clause (c) of Section 2 defines the term 'artistic work' to mean (i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality; (ii) a work of architecture; and (iii) any other work of artistic craftsmanship.

24. Section 14 of the Copyright Act deals with meaning of copyright. As per clause (c) of Section 14, in the case of an artistic work, for the purposes of this Act, 'copyright' means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the acts enumerated in the said clause, in respect of a work or any substantial part thereof. Clause (c) of Section 14 of the said Act reads thus;

14. Meaning of Copyright.- For the purposes of this Act, 'copyright' means the exclusive right subject to the provisions of this Act, to do or authorise the doing of any of the following acts in respect of a work or any substantial part thereof, namely:—

(a) xxx xxx xxx

(b) xxx xxx xxx

(c) in the case of an artistic work,--

(i) to reproduce the work in any material form including—

(A) the storing of it in any medium by electronic or other means; or

(B) depiction in three-dimensions of a twodimensional work; or

(C) depiction in two-dimensions of a threedimensional work;

(ii) to communicate the work to the public;

(iii) to issue copies of the work to the public not being copies already in circulation;

(iv) to include the work in any cinematograph film;

(v) to make any adaptation of the work;

(vi) to do in relation to adaptation of the work any of the acts specified in relation to the work in subclauses (i) to (iv);

(d) xxx xxx xxx

(e) xxx xxx xxx”

25. Section 15 of the Act deals with special provision regarding copyright in designs registered or capable of being registered under the Designs Act, 2000. As per sub-section (1) of Section 15, copyright shall not subsist under this Act in any design which is registered under the Designs Act, 2000. As per sub-section (2) of Section 15, copyright in any design, which is capable of being registered under the Designs Act, 2000 (16 of 2000), but which has not been so registered, shall cease as soon as any article to which the design has been applied has been produced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person.

26. In Bharat Glass Tube Limited v. Gopal Glass Works Limited [(2008) 10 SCC 657] the Apex Court held that the sole purpose of the Designs Act is protection of the intellectual property right of the original design for a period of ten years or whatever further period extendable. The object behind this enactment is to benefit the person for his research and labour put in by him to evolve the new and original design. This is the sole aim of enacting the Designs Act. It has also laid down that if design is not new or original or published previously then such design should not be registered. It further lays down that if it 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 then such design will not be registered or if it is found that it is not significantly distinguishable from known designs or combination of known designs, then such designs shall not be registered. It also provides that registration can be cancelled under Section 19 of the Act if proper application is filed before the competent authority, i.e., the Controller that the design has been previously registered in India or published in India or in any other country prior to the date of registration, or that the design is not a new or original design or that the design is not registerable under this Act or that it is not a design as defined in clause (d) of Section 2. The Controller after hearing both the parties if satisfied that the design is not new or original or that it has already been registered or if it is not registerable, cancel such registration and aggrieved against that order, appeal shall lie to the High Court. These prohibitions have been engrafted so as to protect the original person who has designed a new one by virtue of his own efforts by researching for a long time. The new and original design when registered is for a period of ten years. Such original design which is new and which has not been available in the country or has not been previously registered or has not been published in India or in any other country prior to the date of registration shall be protected for a period of ten years. Therefore, it is in the nature of protection of the intellectual property right. This was the purpose as is evident from the statement of objects and reasons and from various provisions of the Designs Act.

27. In Bharat Glass Tube Limited the Apex Court quoted with approval Paragraph 27.01 of Law of Copyright and Industrial Designs by P. Narayanan (Fourth Edition) which reads thus;

“27.01. Object of registration of designs.-

The protection given by the law relating to designs to those who produce new and original designs, is primarily to advance industries, and keep them at a high level of competitive progress.

Those who wish to purchase an article for use are often influenced in their choice not only by practical efficiency but the appearance. Common experience shows that not all are influenced in the same way. Some look for artistic merit. Some are attracted by a design which is a stranger or bizarre. Many simply choose the article which catches their eye. Whatever the reason may be one article with a particular design may sell better than one without it: then it is profitable to use the design. And much thought, time and expense may have been incurred in finding a design which will increase sales. The object of design registration is to see that the originator of a profitable design is not deprived of his reward by others applying it to their goods.

The purpose of the Designs Act is to protect novel designs devised to be applied to (or in other words, to govern the shape and configuration of) particular articles to be manufactured and marketed commercially. It is not to protect principles of operation or invention which, if profitable at all, ought to be made the subject matter of a patent. Nor is it to prevent the copying of the direct product of original artistic effort in producing a drawing. Indeed the whole purpose of a design is that it shall not stand on its own as an artistic work but shall be copied by embodiment in a commercially produced artefact. Thus the primary concern, is what the finished article is to look like and not with what it does and the monopoly provided for the proprietor is effected by according not, as in the case of ordinary copyright, a right to prevent direct reproduction of the image registered as the design but the right, over a much more limited period, to prevent the manufacture and sale of article of a design not substantially different from the registered design. The emphasis therefore is upon the visual image conveyed by the manufactured article.”

(underline supplied)

28. In Bharat Glass Tube Limited, on the question as to whether the design in dispute is new or original, the Apex Court noticed that, Section 4 of the Designs Act, couched in the negative terms, says that the design which is not new or original then such design cannot be registered. The burden is on the complainant to show that the design was not original or new. The expression, 'new or original' appearing in Section 4 means that the design which has been registered has not been published anywhere or it has been made known to the public. The expression, 'new or original' means that it had been invented for the first time or it has not been reproduced by anyone. 'Design' has been defined in clause (d) of Section 2, which means that a feature 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. That means that a feature or a pattern which is registered with the registering authority for being produced on a particular article by any industrial process whether manual, mechanical or chemical or by any other means which appears in a finished article and which can be judged solely by eye appeal. The definition of 'design' as defined in clause (d) of Section 2, read with application for registration and Rule 11 of the Designs Rules, 2001 with Form 1 makes it clear that the design which is registered is to be applied to any finished article which may be judged solely by eye appeal. A conjoined reading of these three provisions makes it clear that a particular shape or a particular configuration is to be registered which is sought to be produced on any article which will have visual appeal. Such design once it is registered then it cannot be pirated by any other person.

29. In Bharat Glass Tube Limited the attention of the Apex Court was drawn to Paragraph 27.07 of Law of Copyright and Industrial Designs by P. Narayanan (Fourth Edition) which reads thus;

“27.07. Design as a conception or idea.-

Design means a conception or suggestion or idea of a shape or of a picture or of a device or of some arrangement which can be applied to an article by some manual, mechanical or chemical means mentioned in the definition clause. It is a suggestion of form or ornament to be applied to a physical body. It is a conception, suggestion or idea, and not an article, which is the thing capable of being registered. It may according to the definition clause, be applicable to any article whether for the pattern or for the shape or configuration or for the ornament thereof (that is to say of the article) or for any two or more of such purposes. The design, therefore, is not the article, but is the conception, suggestion, or idea of a shape, picture, device or arrangement which is to be applied to the article, by some one of the means to be applied to a physical body.

A design capable of registration cannot consist of a mere conception of the features mentioned in the definition, or in the case of an article in three dimensions, of a representation of such features in two dimensions It must, in such a case, in order to comply with the definition, consist of the features as they appear in the article to which they have been applied by some industrial process or means. An applicant for registration of a design has to produce a pictorial illustration of the idea or suggestion which he has to establish as new or original.”

(underline supplied)

30. In Bharat Glass Tube Limited after referring to Paragraph 27.07 of Law of Copyright and Industrial Designs by P. Narayanan (Fourth Edition), the Apex Court held that the concept of design is that a particular figure conceived by its designer in his mind is reproduced in some identifiable manner and it is sought to be applied to an article. Therefore, whenever registration is required then those configuration has to be chosen for registration to be reproduced in any article. The idea is that the design has to be registered which is sought to be reproduced on any article. Therefore, both the things are required to go together, i.e., the design and the design which is to be applied to an article.

31. For determining whether two designs were identical or not, it is not necessary that the two designs must be be identical in every respect. Similarity in the broad features of shape, pattern or configuration would amount to imitation of the design of one by the other. In Dabur India Ltd. v. Amit Jain [(2009) 39 PTC 104] a Division Bench of the Delhi High Court, following an earlier judgement of the same High Court in Alert India Ltd. v. Naveen Plastics [(1997) 17 PTC 15] held 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. The word 'imitation' does not mean 'duplication' in the sense that the copy complained of need not be an exact replica. The court must address its mind as to whether the design adopted by the defendants was substantially different from the design which was registered. A fraudulent imitation seems to be an imitation which is based upon, and deliberately based upon, the registered design and is an imitation which may be less apparent than an obvious imitation; that is to say, you may have a more subtle distinction between the registered design and a fraudulent imitation and yet the fraudulent imitation, although it is different in some respects from the original, and in respects which render it not obviously an imitation may yet be an imitation, imitation perceptible when the two designs are closely scanned and accordingly an infringement. If the court is able to find that, there is substantial and sufficient resemblance between the allegedly infringed designs and the Appellant's registered designs, an injunction should follow. Paragraphs 17 and 18 of the said decision read thus;

“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 [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 …....”

18. Likewise, in Castrol India Ltd. v. Tide Water Oil Co. (I) Ltd. [(1996) 16 PTC 202] the Calcutta High Court explained that the word 'imitation' does not mean 'duplication' in the sense that the copy complained of need not be an exact replica. Reference was made to the earlier decision of the said High Court in Best Products Ltd. V. F.W. Woolworth & Company Ltd. [1964 RPC 215] where it was held that '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'. The decision in Dunlop Rubber Co. Ltd. V. Golf Ball Developments Ltd. [1931 XLVIII RPC 268] is also a pointer to the approach to be adopted by the court when a complaint is made by a plaintiff of fraudulent imitation of its design by a Defendant. It was observed 'a fraudulent imitation seems to be an imitation which is based upon, and deliberately based upon, the registered design and is an imitation which may be less apparent than an obvious imitation; that is to say, you may have a more subtle distinction between the registered design and a fraudulent imitation and yet the fraudulent imitation, although it is different in some respects from the original, and in respects which render it not obviously an imitation may yet be an imitation, imitation perceptible when the two designs are closely scanned and accordingly an infringement'. As explained by the Delhi High Court in Hindustan Sanitaryware v. Dip Crafts [(2003) 26 PTC 163] if the court is able to find that, 'there is substantial and sufficient resemblance between the allegedly infringed designs and the Appellant's registered designs', an injunction should follow.”

(underline supplied)

32. In Microfibres Inc. v. Girdhar and Co. and another [(2009) 40 PTC 519] a Division Bench of the Delhi High Court held that clause (c) of Section 2 of the Copyright Act defines 'artistic work' to mean a painting, sculpture, a drawing (including a diagram, map, chart or plan), and engraving or photograph, whether or not any such work possesses artistic quality. It also includes a work of architecture and any other artistic craftsmanship. This definition has a very wide connotation as it is not circumscribed by any limitation of the work possessing any artistic quality. Even an abstract work, such as a few lines or curves arbitrarily drawn would qualify as an artistic work. It may be two dimensional or three dimensional. The artistic work may or may not have visual appeal. The rights to which a holder of an original artistic work is entitled are enumerated in clause (c) of Section 14 of the Copyright Act. Therefore, it is the exclusive right of the holder of a copyright in an original artistic work to reproduce the work in any material form. When the copyright holder of an original artistic work reproduces the same in another material form, he may, or may not do so by employing an industrial process or means which may be manual, mechanical or chemical, separate or combined, on an article. If the reproduction of the original artistic work is done by employing an industrial process, as aforesaid, on an article, and the same results in a finished article which appeals to the eye as adjudged solely by the eye, then the features of shape, configuration, pattern, ornament or composition of lines or colours applied to the article by the industrial process constitutes a 'design', within the meaning of this expression as defined under the Designs Act. There is a clear distinction between an original artistic work, and the design derived from it for industrial application on an article. This position is clarified by the use of the expression 'only' before the words 'the features of shape, configuration, pattern, ornament or composition of lines or colours' in the definition of 'design' in the Designs Act. Therefore, the original artistic work, which may have inspired the creation of a design, is not merely the feature of shape, configuration, pattern, ornament or composition of lines or colours which are created to apply to an article by an industrial process. The original artistic work is something different from the design. Secondly, the definition of 'design' expressly excludes, inter alia, any artistic work defined in clause (c) of Section 2 of the Copyright act, 1957.

33. In Microfibres Inc. the Division Bench emphasised that it is not necessary that in every case a design has to be preceded by an artistic work upon which it is founded. A craftsman may create a design without first creating a basic artistic work. This may best be illustrated by a weaver who may straightaway create a design while weaving a shawl, which product could be created even without the basic artistic work. Whether or not a design is preceded by an original artistic work, a design would, in its own right qualify to be termed as an artistic work within the meaning of clause (c) of Section 2 of the Copyright Act. This is so because the expression 'artistic work' as defined in clause (c) of Section 2 of the Copyright Act bears a wide definition to mean a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality. However, the design may or may not enjoy a copyright protection under the Copyright Act, depending on whether it is an 'original artistic work' or not.

34. In Microfibres Inc. the Division Bench held that the expression 'copyright in any design' used in sub-section (2) of Section 15 means the copyright as understood under the Copyright Act, and not under the Designs Act. This is evident from the expression 'copyright shall not subsist under this Act ......' used in sub-section (1) of Section 15. However, copyright in an artistic work subsists provided it is an original artistic work. Therefore, there can be no claim for copyright under the Copyright Act in an artistic work which does not have the quality of possessing originality. The holder of a copy of an original artistic work cannot claim copyright protection. Therefore, to be entitled to protection under the Copyright Act, the design should have originality. That is not to say that, if the design is not entitled to copyright protection under the Copyright Act, on account of it not possessing originality vis-vis the original artistic work, the design does not require, or cannot be granted registration under the Designs Act for it to be entitled to protection under the Designs Act. Under the Designs Act, a copyright has a different connotation from a copyright under the Copyright Act. Under the Designs Act, copyright means the exclusive right to apply the design to any article in any class in which the design is registered. The issue with regard to the extent of, and the conditions for the copyright protection to such an artistic work, as an artistic work under the Copyright Act, which is a design registered or capable of registration under the Designs Act, is what is dealt with, by Section 15 of the Copyright Act. Once the distinction between the original artistic work and the design derived from it, and the distinction between Copyright in an original artistic work under the Copyright Act, and a copyright in a design under the Designs Act is appreciated, the meaning and purport of Section 15 of the Copyright Act becomes clear.

35. In Microfibres Inc. the Division Bench noted that Section 15 of the Copyright Act is in two parts. The first part, i.e., sub-section (1) states that copyright shall not subsist under the Copyright Act in any design which is registered under the Designs Act. Consequently once the design is created and got registered under the Designs Act, whether or not the design is eventually applied to an article by an industrial process, the design loses its protection as an artistic work under the Copyright Act. Therefore, subject to whatever rights that are available under the Designs Act, the registered design holder cannot claim protection or complain of copyright infringement in respect of the registered Design under the Copyright Act. Sub-section (2) of Section 15 deals with the situation where the design, which is capable of being registered under the Designs Act, is not so registered. It provides that copyright in such a design shall cease as soon as any article to which the design has been applied has been reproduced more than 50 times by an industrial process by the owner of the copyright or with his licence, by any other person. The Parliament in Section 15 of the Copyright Act was dealing with the aspect of copyright in a registered/registrable design, as understood in the Copyright Act and not the Designs Act. Else, there was no need to deal with this aspect in the Copyright Act. The same would have been dealt with under the Designs Act. Therefore, the law tolerates only a limited industrial, or commercial, exploitation of the original artistic work by the application/reproduction of the said work in any other form or reproduction of copies thereof in exercise of the rights under sub-clause (i) of clause (c) of Section 14 and subclause (iii) of clause (c) of Section 14 of the Copyright Act. Beyond the specified limit, if the design derived from the original artistic work is exploited (i.e., if the design is applied more than 50 times by an industrial process on an article) the copyright in the design ceases unless it is registered under the Designs Act.

36. In Microfibres Inc. the Division Bench summarised the findings in Paragraph 46, which reads thus;

“46. We thus summarise our findings as follows: -

(a) The definition of 'artistic work' has a very wide connotation as it is not circumscribed by any limitation of the work possessing any artistic quality. Even an abstract work, such as a few lines or curves arbitrarily drawn would qualify as an artistic work. It may be two dimensional or three dimensional. The artistic work may or may not have visual appeal.

(b) The rights to which a holder of an original artistic work is entitled are enumerated in clause (c) of Section 14 of the Copyright act.

(c) It is the exclusive right of the holder of a Copyright in an original artistic work to reproduce the work in any material form. For example, a drawing of an imaginary futuristic automobile, which is an original artistic work, may be reproduced in the three-dimensional material form using an element, such as a metal sheet.

(d) The design protection in case of registered works under the designs Act cannot be extended to include the copyright protection to the works which were industrially produced.

(e) A perusal of the Copyrights Act and the Designs Act and indeed the Preamble and the Statement of Objects and Reasons of the Designs Act makes it clear that the legislative intent was to grant a higher protection to pure original artistic works such as paintings, sculptures etc and lesser protection to design activity which is commercial in nature. The legislative intent is, thus, clear that the protection accorded to a work which is commercial in nature is lesser than and not to be equated with the protection granted to a work of pure art.

(f) The original paintings/artistic works which may be used to industrially produce the designed article would continue to fall within the meaning of the artistic work defined under clause (c) of Section 2 of the Copyright Act, 1957 and would be entitled to the full period of copyright protection as evident from the definition of the design under clause (d) of Section 2 of the Designs Act. However, the intention of producing the artistic work is not relevant.

(g) This is precisely why the legislature not only limited the protection by mandating that the copyright shall cease under the Copyright Act in a registered design but in addition, also deprived copyright protection to designs capable of being registered under the Designs Act, but not so registered, as soon as the concerned design had been applied more than 50 times by industrial process by the owner of the copyright or his licensee.

(h) In the original work of art, copyright would exist and the author/holder would continue enjoying the longer protection granted under the Copyright Act in respect of the original artistic work per se.

(i) If the design is registered under the Designs Act, the design would lose its copyright protection under the Copyright Act. If it is a design registrable under the Designs Act but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. This interpretation would harmonize the Copyright and the Designs Act in accordance with the legislative intent.”

37. In the instant case, before the court below, the specific case of the plaintiff was that 'Underwater Mobile Glass Tunnel Aquarium' with unique features ensuring safety, security and portability was conceptualised and designed by a brilliant human brain, and constructed and exhibited by the plaintiff at various places. It has won 'Arabian Book of World Records' for creating world's first portable water tunnel aquarium, as evidenced by Ext.A2 certificate. It was conceptualised in the year 2016 and exhibitions of 'Tunnel Aquarium' were conducted at Kollam from 19.09.2018 to 21.10.2018, at Thiruvananthapuram from 25.01.2019 to 11.03.2019, at Thiruvalla from 13.04.2019 to 19.05.2019, at Thrissur from 21.06.2019 to 10.07.2019 and an exhibition is proposed at Pala from 23.08.2019 to 16.07.2019. The plaintiff filed application for registration of design, in the year 2017, which is pending consideration of the Controller of Designs. During the pendency of that application, the design is protected by virtue of the provisions under the Copyright Act. The structure of the 'Tunnel Aquarium' was attempted by many to replicate, without the safety features, and the show was disastrous. From Ext.A8 news report appeared in Mathrubhumi daily Kannur Edition the plaintiff came to know that the defendant is going to exhibit 'Tunnel Aquarium' at Police Ground, Kannur from 09.08.2019, infringing the intellectual property right of the plaintiff.

38. The defendant filed counter affidavit in I.A.No.5546 of 2019 for temporary injunction, denying the claim made by the plaintiff that 'Underwater Mobile Glass Tunnel Aquarium' is the brain child of the plaintiff. The defendant contended that the plaintiff cannot claim any copyright over the design and their request for registration is not likely to be allowed. The defendant made elaborate arrangements for conducting 'Tunnel Aquarium' show at Kannur and if interim injunction as sought for is granted, it will cause irreparable injury and hardships to him and therefore, the defendant prayed for dismissal of I.A.No.5546 of 2019 for temporary injunction.

39. In the counter affidavit filed in I.A.No.5546 of 2019, the defendant has no case that any article to which the design in question has been applied has been produced more than fifty times by an industrial process by the plaintiff or, with his licence, by any other person. The case of the defendant is that, in view of the prohibition contained in clause (a) of Section 4 of the Designs Act, the design in question cannot be registered, since it is not new or original and that the same is not capable of being registered under the Designs Act. In paragraph 18 of the counter affidavit, the defendant would contend that, in the year 2014 itself, 'Glass Tunnel Aquarium' has been built in Kerala. An 'Underwater Glass Tunnel Aquarium Show' was conducted at KTC Ground, Near MIMS Hospital, Bypass Road, Kozhikode in the name and style 'Pisces World Underwater Tunnel Expo-2016' from 09.04.2016 to 22.05.2016 (Ext.B4). Another expo was conducted in the name and style 'Oceanic Underwater Expo' at Thekkattu Ground, Arayidathpalam Junction, Kozhikode from 07.10.2016 to 28.10.2016 (Ext.B5). There was a fire in the Underwater Expo on 28.10.2016 and the news was covered by almost all newspapers and channels (Exts.B11 to B13). According to the defendant, M/s. Mermide Aquarium and Ponds located at Bangalore has also built 'Glass Tunnel Underwater Aquarium' in the year 2017 and conducted exhibitions at Mysore and Udupi.

40. During the course of arguments, the learned Senior Counsel for the respondent/plaintiff has made available for the perusal of this Cour

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t a copy of W.P.(C)No.6052 of 2016 filed by the defendant Sri Nimil K.K. (Blue Sea Hospitality Management, Parappanangadi) challenging the action of Corporation of Thrissr in declining permission to conduct 'Underwater Aqua Show' at Paravattani Muncipal Ground, Thrissur from 25.05.2016 to 10.05.2016, in the name and style 'Oceanos Underwater Expo-2016' . 41. The court below deputed an Advocate Commissioner to inspect the 'Underwater Mobile Glass Tunnel Aquarium' of the plaintiff and the 'Tunnel Aquarium' of the defendant. The Advocate Commissioner submitted Ext.C1 report dated 24.08.2019, as per which, the 'Tunnel Aquarium' of the defendant is similar in many aspects to the 'Underwater Mobile Glass Tunnel Aquarium' of the plaintiff. The similarities noted by the Advocate Commissioner are as follows; “(a) On the first impression, both the tunnel's look exactly the same. (b) The art work depicted on both the tunnel's look identical. (c) The model of the defendant's tunnel looks similar with that of the plaintiff. (d) There is great similarity in the tunnel's structure and body work. (e) Even the stands and supports which are used for construction of the tunnel are also similar in appearance. (f) The appearance and nature of the structres look very similar. (g) Images taken of the defendant's tunnel from the bottom, top and side view match that of the plaintiff's tunnel.” Along with Ext.C1 report, the Advocate Commissioner submitted Ext.C2 sketch and Ext.C3 series of photographs. After perusing the photographs of the 'Tunnel Aquarium' of the defendant taken from different angles, the court below found that there are similarities in shape and design with the 'Underwater Mobile Glass Tunnel Aquarium' of the plaintiff. 42. Ext.A1 application submitted by the plaintiff on 14.12.2017 for registration of the design, under Section 5 of the Designs Act, is pending consideration before the Controller of Designs, where novelty and uniqueness are claimed for the shape, configuration and pattern of the structure from various sides and also its components. As already noticed, in the counter affidavit filed in I.A.No.5546 of 2019, the defendant has no case that any article to which the design in question has been applied has been produced more than fifty times by an industrial process by the plaintiff or, with his licence, by any other person. Therefore, in view of the provisions under subsection (2) of Section 15 of the Copyright Act, pending consideration of Ext.P1 application for registration of design, the plaintiff shall have copyright in the design in question till any article to which that design has been applied has been produced more than fifty times by an industrial process by the plaintiff, who is stated to be the owner of the copyright or, with his licence, by any other person. 43. The contentions raised by the appellant/defendant that the design in question is not capable of being registered under the Designs Act and that, the same cannot be registered, since it is not new or original, in view of the prohibition contained in clause (a) of Section 4 of the Designs Act, have to be decided at the trial. At the interlocutory stage, the court below need only to consider whether the plaintiff has made out a prima facie case for grant of an order of interim injunction, in view of the provisions under sub-section (2) of Section 15 of the Copyright Act, and whether the basic ingredients for grant of an order of interim injunction are in his favour. Considering the pleadings and materials on record, in the light of the law laid down in the decisions referred to supra, and also the similarities noted in Ext.C1 report of the Advocate Commissioner, it cannot be said that the plaintiff has not made out prima facie case that, pending consideration of Ext.P1 application for registration of design, he shall have copyright in the design in question, in view of the provisions under sub-section (2) of Section 15 of the Copyright Act. 44. In the impugned order, after considering the pleadings and materials on record, Ext.C1 report of the Advocate Commissioner and taking note of the law laid down by the Division Bench of the Delhi High Court in Microfibres Inc. (supra), the court below arrived at a conclusion that the plaintiff has made out a prima facie case for grant of interim injunction, as prayed for, and the balance of convenience is also in favour of the plaintiff. The court below found that, if the order of temporary injunction, as prayed for, is not granted, the plaintiff will suffer irreparable injury and damage. Accordingly, the court below allowed I.A.No.5546 of 2019 as prayed for with cost. 45. The reasoning of the court below in the impugned order is neither perverse or patently illegal, warranting an interference in this appeal. 46. In the result, this appeal fails and the same is accordingly dismissed. No order as to costs. It is made clear that the observations contained in this judgment, touching the merits of the case, are made for the limited purpose to decide the challenge made in this appeal against the impugned order, and the court below shall proceed with the suit untrammeled with any such observations.
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