INDEX

SR. NO. PARTICULARS PAGE NO.

1. Microfibres Inc. vs. Girdhar & Co. 2009 (40) PTC 1-28
519

2. Dart Industries & Anr. Vs. Techno Plast & Ors. FAO 29-49
(OS) 26 of 2007 Para 32

3. Kiran Shoes Manufacturers Vs. Registrar of 50-56

Copyrights RFA 750 of 2010 Para 9

4. Mattel Inc & Ors. Vs. Jayant Agarwalla & Ors. 2008 57-74
(38) PTC 416(Del.) Paras 29-30

5. Microfibres Inc. Vs. Girdhar & Co. 2006 (32) PTC 75-94
157(Del.) Paras 62-74

6. Ritika Private Limited Vs. Biba Apparels Private 95-112

Ltd. MANU/DE/0784/2016.

7. Midas Hygiene Industries Pvt. Ltd. Vs. Sudhir 113-127

Bhatia MANU/DE/4121/2015

8. State of Rajasthan & Ors. vs. Aanjaney Organic 128-132

Herbal Pvt. Ltd., (2012)10SCC283 @ para.12

9. Mohan Lal Vs. Sona Paint and Hardwares AIR 133-156

(2013) Del 143.
 10. OK Play India Ltd. Vs. Mayank Aggarwal & Ors. 157-166

CS(OS) No. 2355 of 2015

Place: New Delhi Saikrishna &Associates

Dated: Advocate for the Respondents/Defendants
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2009 SCC OnLine Del 1647 : (2009) 40 PTC 519 (DB)

In the High Court of Delhi

(BEFORE MUKUL MUDGAL AND VIPIN SANGHI, JJ.)

RFA (OS) NO. 25 of 2006

Microfibres Inc. .…. Appellant;
Versus
Girdhar & Co. and Another .…. Respondents.
And
FAO(OS) NO. 447 of 2008
Mattel Inc and Others .…. Appellants;
Versus
Jayant Aggarwalla and Others .…. Respondents.
And
FAO(OS) NO. 326 of 2007
Dart Industries Inc. and Another .…. Appellants;
Versus
Techno Plast and Others .…. Respondents.
RFA (OS) NO. 25 of 2006; FAO(OS) NO. 447 of 2008; and FAO(OS) NO. 326 of
2007
Decided on May 28, 2009
Advocates who appeared in this case:
RFA (OS) NO. 25 of 2006
Mr. Raju Ramachandran, Sr. Advocate, with Ms. Ruchi Agnihotri and Ms. Anushree
Tripathi, Advocates, for the Appellant
Mr. Prashanto Chandra Sen, Advocate, for the Respondent no. 1.
Mr. Rajendra Kumar and Ms. Punita Bhargava, Advocates, for Respondent no. 2.
FAO(OS) NO. 447 of 2008
Mr. Praveen Anand, Ms. Swathi Sukumar and Ms. Tusha Malhotra, Advocates, for the
Appellants
Dr. A.M. Singhvi, Sr. Advocate, with Mr. Sushant Singh, Advocate, for the
Respondents
FAO(OS) NO. 326 of 2007
Mr. Arun Jaitley, Sr. Advocate, Ms. Jaspreet Sareen, Mr. Angad Varma and Ms.
Pragya Jha, Advocates, for the Appellants
Mr. Sanjay Jain, Sr. Advocate, with Mr. Sushant Singh, Advocate, for the
Respondents
The judgement of the court was delivered by
MUKUL MUDGAL, J.:—This appeal bearing RFA (OS) No. 25/2006 arises out of the
judgment of the learned Single Judge dated 13th January, 2006 in Suit No.
1480/2002.
2. Since certain common issues arise in this appeal and the other two appeals i.e.
FAO (OS) No. 326/2007 filed by Dart Industries Inc. and FAO (OS) No. 447/2008 filed
by Mattel Inc., on the question of interpretation of Section 2(c) of the Copyright Act
read with Section 2(d) of the Designs Act and Section 15(2) of the Copyright Act and
their interplay with each other, we have permitted the parties in the connected
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appeals also to make submissions on the common legal principles arising in these
appeals. However, the aforesaid two appeals bearing FAO(OS) Nos. 326/2007 and
447/2008 will be taken up for hearing on facts and other pleas after the
pronouncement of the judgment in the present appeal bearing RFA(OS) No. 25/2006
in the appeal titled Microfibres v. Girdhar & Co.
3. The appellant manufactures and sells upholstery fabrics with designs derived
from the original and unique artistic works either conceptualized or drawn by its
employees or by assignation of the copyright in such artistic works to the appellant by
the original artists.
4. The respondents are also manufacturers of upholstery fabrics and the learned
Single Judge in the judgment challenged in this court has held that the upholstery
fabrics of the respondent do incorporate/reflect the designs founded upon the
appellant's artistic works or a substantial reproduction thereof.
5. The grievance of the appellant arises from the premise that the learned Single
Judge held that the designs in question were capable of being registered under the
Designs Act, 2000 and consequently the appellant was not entitled to seek protection
under the copyright law as the designs had not been registered under the Design's
Act.
6. The learned Single Judge held as follows:—
a. In order for the work of the appellant to qualify as an artistic work, it must fall
within the sub-section (c) of the Section 2 of the Copyright Act. A reading of the
said provision shows that the attempt of the appellant can only be to bring it to
the concept of ‘painting’.
b. The comparison with the painting of M.F. Hussain, would be otiose, as the work
in question in the present case, is not a piece of art by itself in the form of
painting.
c. The originality is being claimed on the basis of the arrangement made. What
cannot be lost sight of is the very object with which such arrangements or works
had been made. The object is to put the artistic work into industrial use.
d. The two important aspects are the object with which it is made, which is
industrial and its inability to stand by itself as a piece of art. In fact, it has no
independent existence in itself.
e. In India, there are special legislations governing the protection of different
nature of rights. In so far as the industrial designs are concerned, the protection
is provided under the Designs Act, 2000.
f. Fabric designs on textile goods have been classified as proper subject matter of
design protection by inclusion as a specific class in the rules framed under the
Designs Act. Such protection is provided under clause 05 of the New Design
Rules, 2001.
g. The exclusion of an ‘artistic work’ as defined in Section 2(c) of the Copyright Act
from the definition of ‘design’ under Section 2(d) of the Designs Act, 2000 is
only meant to exclude the original artistic works like paintings of M.F. Hussain. It
is, thus, the original paintings, sculptors and such works of art which are sought
to be specifically excluded from the definition of Design under the Designs Act,
2000.
h. It is, thus, apparent that in the context of the Indian Law, it is the Design Act of
1911 or 2000, which would give protection to the appellant and not the
Copyright Act.
i. The application of mind and skill is not being denied nor the fact that the
respondents have copied the same, but that would still not amount to the works
in question being labeled as ‘artistic work’ within the definition of Section 2(c) of
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the Copyright Act and, thus, the protection is not available under the Copyright
Act.
j. At the relevant stage of time, it was the Designs Act of 1911 which was in
operation since the Designs Act, 2000 came into force only in May, 2001. The
works of the appellant were capable of registration under the Designs Act of
1911. The appellant, however, failed to register the same at that relevant stage
of time. That the appellant itself has set out that it had registered the patterns
under the Designs Act in England.
k. Designs copyright was, thus, held to be distinguishable from artistic copyright.
The rights under the Patent and Designs Act were much narrower than those
given by the Copyright Act and in respect of such products, it was not intended
that they should have cumulative protection both under the Copyright Act, the
Patent Act and/or the Designs Act.
l. What the appellant was actually required to do, was to register the designs, which
the appellant has failed to do. The designs are older and, thus, would have been
registrable under the Designs Act of 1911. The appellant failed to register the
designs. Insofar as the Designs Act of 2000 is concerned, the appellant has also
admittedly not registered the designs under the said Act.
m. It would suffice to say that the patterns and designs of the appellant were
capable of registration both under the old Act and the new Act and the appellant
failed to do so with the result that the protection is not available to the appellant
which would have arisen if they had been so registered.
n. The appellant has failed to make out a case of having completed the requisite
formalities in law so as to avail the benefit of the exclusive use of the patterns
and designs in question.
7. It has been submitted on behalf of the appellant that the above finding of the
learned Single Judge that the works of the appellant were not original artistic works
within the definition of Section 2(c) of the Copyright Act proceeds on the
misappreciation of law and seeks to draw an artificial distinction between those works
which are pure artistic works and those which are not. In particular, he has questioned
the finding of the learned Single Judge that the artistic work in question does not have
the ability to stand by itself as a piece of art and in fact has no independent existence
in itself. It has been contended that the exclusion of an ‘artistic work’ as defined in
Section 2(c) of the Copyright Act from the definition of ‘design’ under Section 2(d) of
the Designs Act, 2000 is meant to exclude the original artistic work.
8. The following three conclusions of the learned Single Judge have been
questioned in this appeal:—
(i) Re the works in question “…its inability to stand by itself as a piece of art. In
fact, it has no independent existence in itself.” (para 62 of the impugned
judgment)
(ii) The exclusion of an ‘artistic work’ as defined in section 2(c) of the Copyright Act
from the definition of ‘design’ under Section 2(d) of the Designs Act, 2000 is
only meant to exclude the nature of artistic works like painting of M.F. Hussain
(para 65 of the impugned judgment).
(iii) The application of mind and skill is not being denied nor the fact that the
respondents have copied the same, but that would still not amount to the works
in question being labeled as ‘artistic works’ within the definition of Section 2(c)
of the Copyright Act and, thus, the protection is not available under the
Copyright Act (para 62 of the impugned judgment).
9. The appellant through Senior Counsel Sh. Raju Ramachandran submitted as
follows:—
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a. An erroneous and artificial distinction has been drawn by the learned Single
Judge in between artistic works which are a piece of art by themselves and other
works through the interpretation of Section 2(c)(i), whereas the subjective
assessment of the artistic quality of a work is not required so as to qualify for the
protection available under the Copyright Act, 1957. Reliance has been placed on
the judgment in the case of British Northrop v. Texteam Blackburn Ltd. (1974)
RPC 57 (ChD) to submit that the works must originate with the author and not
being copies from another work as the only requirement, so as to qualify for
copyright protection.
b. The learned Single Judge found that the works in question were capable of being
registered under the designs law as the Designs Act classification includes
‘fabrics’ as articles whose design can be registered. However, this finding fails to
take note of the fact that it is the nature of the work which determines the
intellectual property rights vested therein and not merely the fact that it falls
under the classification of the Designs Act or the Trade Marks Act. Even the Trade
Marks Act provided for registration of fabrics/textiles in Class 24. What was
required to determine the capacity of being registered under the Designs Act was
not whether the object fell into the classification within the Designs Act, but
whether the work in question satisfied the substantive requirements for
registration as a ‘design’.
c. The phrase ‘capable of being registered’ must be understood as referring to
designs possessing, at the time of being made, such essential characteristics
which qualify them as ‘designs’ under the Designs Act, 2000 i.e. being novel and
original as opposed to merely original as required under the Copyright Act, 1957.
The Copyright Act requirement was merely the originality of the work. For a work
to be within the meaning of ‘capable of being registered’, it must satisfy the
definition of ‘design’ as well as the test of the work being novel or original and of
it being sufficiently distinguishable from known designs or combination of known
designs. While the learned Single Judge noted the respondents submission to
the following effect “..designs in use are built around permutations and
combinations of a limited number of motifs/limitations from various sources and
requiring very little by way of distinguishing variations to claim originality”, yet
he went on to hold that the said works are capable of being registered as designs
and the two conclusions are incompatible. It is also found erroneously by the
learned Single Judge that there is an element of labour and skill applied to a
particular pattern of work in question which clearly required original artistic
works and nevertheless a finding was made that the artistic works in question
are not ‘original artistic works’.
d. The operation of Section 15(2) of the Copyright Act, 1957 does not exclude from
the ambit of copyright protection, the subject/underlying artistic works.
Consequently, the original underlying paintings created and acquired/owned by
the appellant which were applied to the textiles with certain modifications do fall
within the meaning of ‘original artistic works’ defined under Section 2(c) of the
Copyright Act, 1957 and thus entitled to copyright protection. In fact, such
works were clearly and expressly excluded from the definition of ‘design’ in
Section 2(d) of the Designs Act.
e. The paintings are either purchased from a third party or created inhouse by the
appellant, and when an artistic work is purchased from a third party, a Certificate
of Authenticity is obtained from the author of that painting, declaring that the
copyright and the artistic work is assigned by the owner to the appellant. The
original paintings undergo a series of processes and adaptations for them to be
applied to fabrics, and each of these paintings and the modified drawings are
separately and independently entitled to protection as an ‘artistic work’ under
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the Copyright Act, 1957. The intermediate paintings leading to the final product
satisfy all the requisites of ‘artistic works’ and have independent existence by
themselves as opposed to technical/engineering drawings solely created for the
purposes of production of a corresponding product, which were no more than
instructions for manufacturing applied to the product in question to which they
may have been applied. The application of adaptations and modifications to such
artistic works on fabrics, may under Section 15(2) of the Copyright Act,
extinguish the copyright protection therein after 50 productions, but does not
affect the copyright protection afforded to the original work as ‘the artistic work’.
It also does not affect the existence of separate copyright in any independent
work which may have been used in the context of the creation of a particular
product. The copyright in the underlying/original artistic work would continue to
subsist and can be enforced by the copyright owner.
f. The respondents' fabrics being colorable imitations or substantially similar copies
of the original underlying modified paintings of the appellant amounted to
infringement of the artistic copyright therein. This is particularly so when inspite
of the work of the respondent being claimed to be independent, no details of
such original independent work were forthcoming. Reliance was placed on the
judgment in the case of Rajesh Masrani v. Tahiliani Designs Pvt. Ltd. [(2009) 39
PTC 21 (Del.)] which held that Section 2(d) of the Designs Act, 2000 does not
include any artistic work as defined in Section 2(c) of the Copyright Act. It was
also held in the above judgment that it is evident from the definition of ‘design’
under the Designs Act, 2000 that the artistic work as defined in Section 2(c) of
the Copyright Act, 1957 is excluded if any party is able to bring his case within
the framework of Section 2(c) of the Copyright Act, 1957 while claiming the
copyright. In such a situation, the suit for infringement is maintainable.
g. Lastly, the plea of unfair competition which was evident from the almost identical
product of the respondent was lost sight of. The finding of the learned Single
Judge clearly demonstrated that the respondent having copied the artistic work
of the appellant were not entitled to protection and such an interpretation has
led to the blatant act of copying being permitted on account of mere
technicalities. It has also been submitted that in the criminal proceedings
instituted by the appellant under Section 63 of the Copyright Act, the Additional
Chief Metropolitan Magistrate has rejected the report of the Investigating Officer
stating that no case was made out on the following findings:—
“The investigating agency did not consider that the accused by counterfeiting
the works of the complainant were intentionally and dishonestly deceiving
innocent customers into believing that their products are made by the
complainant and thus dishonestly and fraudulently induced them to part with
monies for such counterfeit and spurious products. The IO failed to examine the
aspect that the accused have committed an offence of cheating and fraud within
the meaning of Section 415 & 420 read with Section 120B IPC….”
10. The learned senior counsel summarized his arguments as follows:—
a. The artistic works of the appellant were original “artistic works” within the
meaning of Section 2(c) of the Copyright Act, 1957 and hence the appellant
could claim exclusive rights in the same under Section 14(c) of the said Act.
b. The true import and content of the definition of Design under the Designs Act,
2000 specifically excludes “artistic works” as defined by Section 2(c) of the
Copyright Act, 1957 from the definition of ‘Design’.
c. The artistic works in question being “artistic works” within the meaning of
Section 2(c) of the Copyright Act, 1957, were squarely covered within the
exceptions carved out under Section 2(d) of the Designs Act, 2000, and were
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hence “incapable of registration” under the Designs Act, 2000, rendering them
protectable, solely under the Copyright Act, 1957.
d. Section 15(2) of the Copyright Act, 1957, cannot be said to apply to an “original
artistic works “, such as those which were the subject matter of the suit and the
appeal, which are incapable of being registered as Designs.
e. The exclusion in Section 15(2) applies only in respect of works which have been
applied to an article and the said article has been reproduced more than fifty
times.
f. The copyright in the paintings are not extinguished by virtue of Section 15(2) of
the Copyright Act, 1957.
g. “Design” as defined by the Designs Act, 1911 as well as the Designs Act, 2000;
means only the features of shape, configuration, pattern or ornament applied to
any article by any industrial process or means; and to be such must satisfy, inter
alia, the test of “new” and “original” and not merely “originality” as under the
Copyright Act, 1957.
h. The analysis to be undertaken to determine whether a work is “capable of being
registered” is not whether the same falls into a classification within the Designs
Act, 2000 or not but rather whether the work in question satisfies the
substantive requirements for registration as a “design”.
11 Mr. Arun Jaitley, Sr. Advocate, appeared on behalf of the appellants in FAO(OS)
No. 326/2007 titled as Dart Industries Inc v. Techno Plast and FAO(OS) No. 447/2008
titled as Mattel Inc v. Jayant Aggarwalla He addressed the arguments only on the
question of interpretation of Section 15(2) of the Copyright Act as according to him
the decision in the present case i.e. Microfibres Inc. v. Girdhar and Co. would also
affect the appeals filed by his client.
12. He submitted that his client in the first case is a manufacturer of plastic utility
products. The process involved is the preparation of the drawing which is called the
first stage which then leads to the production of mould/engraving which is the second
stage and from the said mould/engraving, the final product emerges, which is the
third stage.
13. As far as the second case of Mattel is concerned, he submitted that the stage of
mould/engraving is not there and straightaway from the drawing the product emerges.
He further submitted that a design is related to aesthetics and visual features and
utility part of the product relates to, at best, the patent and not the design law. He
submitted that Section 14(c) of the Copyright Act defines the rights of an owner of a
Copyright in an artistic work within the meaning of Copyright Act. By placing reliance
on Section 14(c)(i), he submitted that such a copyright owner has a right to reproduce
the work either in two-dimensional or three-dimensional products. Section 2(c) which
defines ‘artistic works’ covered specifically both drawings and engravings. The
offending product of the respondent, was made by a process of reverse engineering
which would involve the taking up of the product, creating a mould from it and finally
a drawing. That the moulds and the drawings of the appellant are copyright
protectable under the Copyright Act and could not be, and are incapable of forming
part of the design registration. Inter alia he submitted that the mould and the drawing
do not appeal to the eye as required under Section 2(d) of the Designs Act. Reliance
was placed on Section 15(1) read with Section 2(c) of the Copyright Act to submit
that upon the registration of a design the loss of copyright is restricted to the stage III
i.e. the eventual product. Section 15(1) does not contemplate stages I and II, that is,
the drawing and the mould not being protected under the Copyright Act. Section 15 of
the Copyright Act in its entirety does not affect stages I and II and will apply to only
those cases, which are design registrable and copyright registrable. That in so far as
Section 15(1) is concerned, the copyright is lost immediately upon the registration
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under the Designs Act and the exclusion under S. 15(2) covers the cases which are
registrable under the Designs Act and the product is produced 50 times. Reference
was made to Section 2(d) of the Designs Act and reliance was placed upon a judgment
in Ahuja Intellectual Property Cases Vol.3 NO. 5, August 1998 Smithkine Beecham
Consumer Health Care v. Eden Cosmetics Ltd.
14. The learned counsel for the respondent no. 2, Sh. Rajender Kumar submitted as
under:—
A. The appellant's case was that the claim of artistic copyright in the fabric designs
is not affected by the definition of ‘design’ in the new Designs Act, 2000 which
specifically excludes ‘artistic work’ as defined in Section 2(c) of the Copyright
Act, 1957. This plea of the appellant has been termed as incorrect in law and fact
by the learned counsel for the respondent no. 2. It is submitted that the
interpretation negates the rationale underlying the copyright legislation and the
design legislation and is not only anti-competitive but also would throttle and
stagnate the industry. Reliance has been placed on the case of Interlego A.G. v.
Tyco Industries Inc. (1988) R.P.C. 343; Premier Hangers CC v. Polyoak (PTY) Ltd.
(1997) (1) SA 416 and S.S. Sarna Inc. v. Talwar and Khullar Pvt. Ltd. I.A. Nos.
6597 and 6944 of 1991 in Suit No. 1481 of 1991 decided on August 08, 1991.
B. Reliance on the above judgments has been placed to show that the copyright
protection relates to the image per se and design protection is for the
manufactured article as a whole. While the protection of the image per se confers
a very broad protection, the protection of the manufactured article confers only a
limited monopoly.
C. The term ‘artistic work’ under the Copyright Act, 1957 include two dimensional
works such as drawings, paintings, photographs and engravings and three
dimensional works such as sculptures, models and works of artistic
craftsmanship. Under the Copyright Act, the copyright owners have wide range of
rights including the basic right to reproduce their works in a material form
including reproduction in different dimensions. The term of protection under the
Copyright Act is far longer than that of a registered design (life of the author plus
60 years posthumous as against 15 years under the Designs Act) and there is no
requirement of registration for protection. The copyright infringement remedies
are far broader than those under the Designs Act. For this purpose, reliance has
been placed on paragraphs 19 to 35 of the learned Single Judge's judgment.
D. The design does not stand on its own as an artistic work but is to be copied or
applied in a commercially produced artifact object by an industrial process
conferring protection on the manufactured article itself without any conceptual
separation between the artistic work and the product on which it is applied. The
statutory monopoly granted by the Designs Office is granted for a limited period
of 10 years which is renewable by a further period of 5 years.
E. The crucial test is the industrial intent with which the object is made. It is
submitted that the interpretation sought to be canvassed by the appellant would
have the effect of rendering the design legislation in India redundant because
each design registered thereunder would be able to trace its origin to a diagram,
chart, drawing etc. and thus, cease to be governed by the Designs Act. This
would therefore enlarge the monopoly in industrial design from the current
maximum term of 15 years to that available for a period of the age of the author
plus 60 years available under the Copyright Act. Such an interpretation is anti-
competitive and stagnates industrial innovativeness, the rationale underlying the
statutory monopolies such as designs and patents. Reliance has been placed on
paragraphs 51 and 64 of the learned Single Judge's judgment.
F. Reliance was placed on Section 15 of the Copyright Act, 1957 to emphasize the
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clear demarcation between the Copyright Act and the Designs Act.
G. Even assuming without admitting that the appellant's fabric designs fell within
the definition of ‘artistic works’ so as to enable them to claim protection under
the Copyright Act, the appellant still cannot rely upon any artistic copyright
underlying designs and invoke the protection of the Copyright Act, 1957 in view
of the clear mandate provided under Section 15(2) of the Act. The appellant's
fabric designs not being registered and having been applied to by an industrial
process more than 50 times, no artistic copyright protection can be claimed in
view of the mandate of Section 15(2) of the Copyright Act, 1957. For this
purpose, reliance has been placed on paragraphs 67 of the learned Single
Judge's judgment.
H. Even assuming without admitting that the exclusion of artistic work in the
Designs Act, 2000 has the meaning ascribed to it by the appellant, such a
meaning still does not support the case of the appellant. Section 15 of the
Copyright Act is a limitation on the scope of the artistic works and contemplates
such works which are aesthetic, eye-appealing and ornamental i.e. pure and
simple works of fine arts. Section 15 withdraws the copyright from such works if
such manifestation or features of shape, configuration, ornament etc. has been
applied to an industrial product and multiplied more than 50 times. Section 15 of
the Copyright Act interprets an important limitation on the scope of protection
available to artistic works under the Act and exclusion of ‘artistic work’ from the
definition of ‘design’ under Section 2(d) of the Designs Act, 2000, therefore, has
to be read in view of the limitation imposed on copyright by virtue of Section 15
of the Copyright Act.
I. The rationale and philosophy underlying the design protection under the Designs
Act, 1911 and its successor Designs Act, 2000 has remained the same and is
evident from the following factors:—
a. The textile fabrics are registrable and in fact have been registered under both
the Design Acts (1911 & 2999 Acts).
b. Under the Designs Act, the fabric designs on textile goods have been classified
under proper subject matter of design protection.
c. The statement of objects and reasons, the notes on clauses accompanying the
Designs Bill which lead to the enactment of the Designs Act, 2000.
d. The proceedings from the parliamentary debate on the Bill.
e. Hand-outs by the Designs Office for public information.
f. Formal confirmation by the Registrar of Designs that the fabric design
continues to be registrable under the Designs Act, 2000.
Reliance for the purpose has been placed upon paragraphs 65 and 66 of the
learned Single Judge's judgment.
J. The appellant's case is not that the work in dispute was created as an artistic
work, pure and simple and the plaint states that the appellant has been in the
business of manufacturing and marketing of upholstery fabrics and in connection
therewith has created original artistic works applied by it to such upholstery
fabrics which is manufactured, marketed, sold and exported all over the world
including India by it. The so-called artistic work thus, was always intended to be
an industrial product for the production of a commercially produced fabric and
marketed commercially. Reliance has thus been placed on the averments in
paragraphs 3, 4, 6 and 13 of the plaint.
K. Even on facts, the appellant's case is founded on a few designs which in fact had
originated when the repealed Designs Act was in operation. It is also not in
dispute that the subject matter ‘designs’ was created with an industrial intent for
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application to fabric or cloth and more than 50 reproductions have been made
without registering them under the Designs Act.
L. Even the certificates relied upon by the appellant from the U.S. Copyright Officer
refers to the subject matter as fabric designs and not artistic works.
M. The appellant was conscious of the fact that the registration was required for
registration under the Designs Act and similar design was in fact registered
under the U.K. Designs Act, 1949. Reliance was placed on paragraph 68 of the
learned Single Judge's judgment.
N. For the first time in the appeal, it has been averred by the appellant that the
exception “capable of being registered” necessarily connotes and includes the
element of novelty as a necessary requisite for design protection and thus, lack
in novelty makes them incapable of registration under the Designs Act thereby
granting them the protection under the Copyright Act. Such an interpretation by
the appellant is not justified and has been rejected in the following two
judgments i.e. Interlego A.G. v. Tyco Industries Inc. (1988) R.P.C. 343 and
Bayliner Marine Corp. v. Doral Boats (1987) FSR 497.
15. Mr. Prashanto Chandra Sen, who appeared on behalf of the respondent no. 1
submitted as follows:—
a. That the idea of applicability of work/painting/drawing to an article is central to
the concept of design and for this purpose the learned counsel relied upon the
definition of ‘design’ under Section 2(5) of the Designs Act, 1911 and Section 2
(d) of the Designs Act, 2000. Reliance was placed on the judgment of Dover LD
case 1910 PRC Pg. 498 and in particular the following passages:—
“….The explanation of this lies possibly in the fact that the novelty may consist
not in the idea itself but in the way in which the idea is to be rendered applicable
to some special subject matter. The word “original” contemplates that the person
has originated something, that by the exercise of intellectual activity he has
started an idea which had not occurred to anyone before, that a particular
pattern or shape or ornament may be rendered applicable to the particular article
to which he suggests that it shall be applied. If that state of things be satisfied,
then the Design will be original, although the actual picture or shape or whatever
it is which is being considered is old in the sense that it has existed with
reference to another article before. It is more easy by illustration in the concrete
than by words in the abstract to explain what I mean. First, a few illustrations as
to shape. The traditional figure or Falstaff is as old as Shakespeare, but if a
person conceived for the first time the idea of making a wine beaker in the form
of the figure of Falstaff that would be an original design for a wine beaker……..
….The words “new or original” involve the idea of novelty either in the pattern,
shape or ornament itself or the way in which an old pattern, shape, or ornament
is to be applied to some special subject matter. There must be the exercise of
intellectual activity so as to originate, that is to say, suggest for the first time,
something which had not occurred to anyone before as to applying, by some
manual, mechanical, or chemical means, some pattern, shape or ornament to
some special subject matter to which it had not been applied before…”
b. It was further submitted that the distinction between a ‘design’ and an ‘artistic
work’ lies in the applicability of the former to an article. Reliance in this regard
was placed on the quotation from Copinger's Law of Copyright, 5th edition
referred in Con Planck Ltd. case 1923 KB 804 wherein it was held that the
fundamental distinction between a design and a simple artistic work lies in the
applicability of the former to some other article.
c. Consequently, the test which was required to be applied was to consider the
design and to see whether it is used or intended to be used as model of patterns
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to be multiplied by an industrial process.

d. In respect of the present case, it was submitted that the patterns and designs
were used industrially and commercially in India and abroad as per the case set
up by the appellant in the plaint.
e. The case set up by the appellant-plaintiff would result in every tracing, drawing
etc. being protected under the Copyright Act and also being
industrially/commercially exploited, by being applied to articles which was not
the intention of the Designs Act. Reliance was placed on the judgment of Pugh v.
Riley 1912 RPC 196 which emphasizes the fact that a design necessarily requires
something in the nature of a drawing or tracing. The following quotation from the
above judgment was relied upon by the learned counsel for the respondent no.
1:—
“A design to be registrable under the Act must be some conception or
suggestion as to shape, configuration, pattern, or ornament. It must be capable
of being applied to an article in such a way that the article, to which it has been
applied, will show to the eye the particular shape, configuration, pattern or
ornament, the conception or suggestion of which constitutes the Design. In
general, any application for registration must be accompanied by a
representation of the design; that is, something in the nature of a drawing or
tracing, by means of which the conception or suggestion constituting the Design
may be imparted to others. In fact, persons looking at the drawing ought to be
able to form a mental picture of the shape, configuration, pattern, or ornament of
the article to which the Design has been applied.”
f. It was consequently submitted that what was capable of being registered as a
design is the tracing, drawing etc. as applied to an article and not the tracing or
drawing itself. The tracing, drawing etc. once applied to an article becomes
incapable of being registered as a design.
g. The plea of the appellant was that even if the drawing or painting is applied to an
article, it is still not being capable of being registered as a design because the
original drawing/painting is protectable under copyright and artistic works
protected by the copyright are excluded from the ambit of design. It is
submitted that the above interpretation relied upon by the appellant is flawed as
no tracing, drawing or painting which is applied to an article and commercially
exploited can be registered as a design. In such an event the Designs Act would
become otiose as every design necessarily traces its origin to a drawing or a
painting.
h. Different kinds of protection for an artistic work and commercially exploited work
have been made available by the Legislature and, thus, the applicability of the
drawing/tracing/mould being applied to articles is crucial to the concept of
design as it is only the applicability of a tracing/drawing to an article which
makes the work commercially exploitable.
i. The copyright protection is available for the lifetime of the author or sixty years
whereas such a long period of protection is not available under the Designs Act
or the Patents Act. The legislative intent is obvious as the products being
commercially exploited cannot be granted a longer protection. Reliance was also
placed on the judgments in Interlego case (1988) RPC 343 at page 353, M/s.
S.S. Sama, M/s. Samsonite case, (1998) 73 DLT 732; M/s. Deepak Printary,
Ahmedabad v. The Forward Stationery Mart (1976) XVII Gujarat R 338. We
might notice that in the Interlego case the following position of law was laid
down:—
“The definition of ‘design’ in section 1(3) of the Act of 1949 is hardly a model
of Parliamentary draughtsmanship and this is by no means the first case in which
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its meaning and application have been called in question. In approaching the
question of construction there has to be borne in mind that the purpose of the
Act, as appears both from its terms and its legislative history, is to protect novel
designs devised to be ‘applied to’ (or, in other words, to govern the shape and
construction of) particular articles to be manufactured and marketed
commercially. It is not to protect principles of operation or inventions which, if
protected 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 artifact. 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 articles of a
design not substantially different from the registered design. The emphasis
therefore is upon the visual image conveyed by the manufactured article.”
j. He further submitted that the issue is academic in the present case as admittedly
the designs of the appellant were made and sold much prior to 2000 and
therefore, the definition of the Designs Act, 2000 would not be applicable in the
present case.
k. By placing reliance on Section 15(2) of the Copyright Act, 1957, it was submitted
that the reproductions have been sold commercially in India and abroad by the
appellant and the said reproduction are more than 50 in number and the
appellants have modified their case only to overcome this and a plea has been
raised that at first the original artistic works were sourced and thereafter they
were considerably modified and applied to upholstery fabrics manufactured by
the appellant company. Such a plea did not figure in the plaint.
l. This is evident from the plea taken for the first time i.e. the underlying artistic
works were not applied to any article and as such the extinguishment of the
copyright under Section 15(2) of the Copyright Act does not apply to the said
paintings.
16. Mr. Sanjay Jain, the learned Senior counsel appearing on behalf of the
respondent no. 1 in FAO (OS) No. 326/2007 titled as DART Industries Inc. v. Techno
Plast, has made the following submissions in respect of the interplay of the Designs
Act and the Copyright Act:—
a. In so far as the ‘artistic work’ is concerned, it has a different connotation under
the two Acts and enjoys different levels of copyright protection.
b. Under Section 2(d) of the Designs Act, the exclusion of ‘artistic work’ is confined
only to those artistic works governed by the Copyright Act. The above definition
itself clearly stipulates that there are two categories of ‘artistic works’ — one
governed by the Designs Act and the other by the Copyright Act. The artistic
work governed by the Designs Act consequently receives copyright cover under
Chapter III of the Designs Act and the residuary categories of artistic works
receive protection under the Copyright Act.
c. It is, therefore, necessary to determine the purpose for which the artistic work
was created so as to determine which enactment applies. The creation of artistic
work at the original stage/threshold level and then to assess if at all, at what
stage it was decided to put it for industrial application, is also a relevant factor.
Once the artistic work falls within the category of Designs Act, it cannot revert
back to the protection of the Copyright Act as once having been put to industrial
use by replicating it 50 times, the protection under the Copyright Act is lost
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permanently. Consequently, once such artistic work is put to an industrial

application, the intent of the author at the initial/conceptual stage becomes
immaterial and copyright can only be preserved under the second category
governed by the Copyright Act, even though the expression ‘design’ is not
specifically used under Section 2(c) of the Copyright Act. The ‘design’ is certainly
an artistic work at the initial stage and depending upon its application acquires
protection of either the Copyright Act or the Designs Act if the industrial
application is resorted to. This is evident from the exclusion embodied in Section
2(d) of the Designs Act.
d. Since in the case of Microfibre Inc and Dart Industries Inc, it has been stated in
the plaint that the artistic works in question were created/conceived by the in-
house employees/promoters for the sole and pre-determined purpose of using
the same as designs, meant for industrial application, the creation of the artistic
work constitutes an integral part of a pre-programmed ‘manufacturing process’.
There is an industrial application and its segregation into two or three stages
such as drawing/painting/moulding is not feasible under the regime of the
Copyright and/or the Designs Act.
e. Section 2(j) of the Designs Act recognizes the existence of proprietary rights in a
new or original design and as per Section 2(g) of the Designs Act, “originality” in
relation to a design means as originating from the author of such design.
Consequently, the expression ‘appeal to and judged solely by the eye’ occurring
in Section 2(d) does not necessarily connote any aesthetic beauty in the classical
sense but merely refer to such artistic works which have the capacity to enhance
decorative value or visual appeal when applied to a finished article and can be
distinctly perceived through human eye as various features described in Section
2(d) of the Designs Act i.e. (a) shape (b) configuration (c) ornament and/or (d)
composition of lines or colours.
f. The goods falling in all the above three categories fall under the classification of
the Designs Act and in fact, in the Tupperware case, the plaintiffs had got a
registration under the Designs Act.
g. The learned counsel further submitted that the second of the two categories of
artistic works are those works, which to begin with, were not put to industrial
application and would be covered under the definition of Section 2(c) of the
Copyright Act. Further, if such an artistic work is put to industrial use as defined
in Section 15(2) by the industrial application of 50 replications, it then loses its
copyright protection and no protection is then available to such artistic work
under the Copyright Act. Such extinguishment of copyright protection under
Section 15(2) of the Copyright Act, once applied to final product as a design,
whether through the conversion of a drawing into a two dimensional product or
the conversion of drawing to moulding, eventually resulting in three-dimensional
product, nevertheless, does not provide any copyright protection to the
intermediate stages such as drawing/painting/moulding.
h. Once an artistic work extinguishes, it loses the protective cover of the Copyright
Act. As per application of Section 15(2) the protection under the Copyright Act
ceases forever. The protection under Section 15(2) of the Copyright Act is not
available at the initial stage of such artistic work, which at the threshold level are
created for industrial application by obtaining registration under the Designs Act
and such works stand covered by Section 15(1) of the Copyright Act. Such
category of artistic work is completely excluded from the coverage under the
Copyright Act at the threshold and even under the meaning of Section 2(c) of
the Copyright Act, no protection is available to such works at any stage as the
process of obtaining registration under the Designs Act is a clear intention of
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abandoning the protection of the Copyright Act. Consequently, the two-stage

theory for the underlying copyright coverage cannot apply as evident from
perusal of Section 15(2) of the Copyright Act.
i. Consequently, an artistic work falls in the basket of Designs Act by being created
to be used as a design only; though not originally created to be used as design
but subsequently relegated or pushed to be used as a design for being applied
on a finished article after being produced more than 50 times.
j. It is significant that the definition of artistic work in Section 2(c) of the Copyright
Act does not use the expression ‘design’ as a variant or constituent of artistic
work.
k. Once the ‘design’ as a concept or as a variant is conspicuous by its absence from
the definition of ‘artistic work’ under the Copyright Act, it is clear that a design
cannot be de-structured or de-constructed by reverse engineering or otherwise to
be an ‘artistic work’ within the meaning of Copyright Act.
l. However, an artistic work can be lifted to the level of design under Section 15(2)
of the Copyright Act. This is evident from the definition of ‘design’ under the
Designs Act which removes all doubts and possibilities of overlapping or an
equivocal interpretation of the expression ‘design’ in the context of an ‘artistic
work’ and excludes those artistic works from its ambit which has not been (a)
created or (b) used as a design and then proceeds to confer copyright on such
artistic works under Chapter III of the Designs Act.
17. Dr. Singhvi, the learned Senior counsel appearing on behalf of the respondents
in FAO(OS) No. 447/2008 titled as Mattel Inc. v. Jayant Agarwalla, submitted as
follows:—
I. Section 15 of the Copyright Act was retained for the purpose of statutory
harmony between the Designs Act, 2000 and the Copyright Act, 1957. The scheme
of the Designs Act of 1911 is the same and except the amendment in Section 2(d)
of the Designs Act, 2000 which excludes artistic work defined under Section 2(c) of
the Copyright Act, 1957, the object was evident and was to prevent a very long-
term or perennial monopoly of a person who was commercially exploiting something
and yet enjoying long periods of copyright protection. The retention of Section 15 of
the Copyright Act, 1957 inspite of the Designs Act, 2000 is relevant and shows that
the legislature intended that Section 15 integrates the two Acts. The acceptance of
the appellant's plea would render the need to register the design under the Designs
Act nugatory as a design proponent would automatically get a larger period of
copyright protection under the Copyright Act. Such an interpretation would indeed
render the Designs Act otiose.
Section 15(1) of the Copyright Act clearly notes the impact of the Designs Act,
2000 and promotes the mandate that the copyrightable designs shall not enjoy
Copyright protection. Conversely, the Designs Act, 2000 excludes other copyrights
not intended to be covered by the Designs Act.
An example of a painting of ‘Ganesha’ was given which would enjoy full copyright
protection during the lifetime of the author plus 60 years. However, if the author
applied the said painting of ‘Ganesha’ to a furnishing, to be commercially
reproduced, such a painting when applied to a furnishing gets limited copyright
protection under the Designs Act, 2000. The act of applying the painting to a
furnishing, however, does not mean that the full copyright protection of the stand
alone work of art/artistic work such as ‘Ganesha’ is lost. If anyone seeks to only
reproduce the drawing/painting as a standalone work of art, it would violate
copyright of the author.
Section 15(2) of the Copyright Act protects copyright in unregistered designs
only till 50 reproductions are made. This clearly demonstrates the reciprocal
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statutory legislative intent which promotes harmony and not disharmony. On an

assumption that Section 15 was not present in Copyright Act, the legislature could
not have intended that the anomalous situation arises allowing industrial designs to
claim monopoly under the Copyright Act too. This rule out the applicability of the
repugnant legislation which only applies in respect of interpretation of List III of the
Constitution.
II. The mischief sought to be protected by the amendment in the Designs Act,
2000 is the larger protection period under the Copyright Act for a design which has
been put into commercial production. Consequently, the mischief sought to be
prevented is not the mischief of copying but of the larger monopoly claimed by the
design proponent inspite of commercial production. The objects and reasons of the
Designs Act clearly show that the legislature intended by virtue of Designs Act to
promote design activity, competition and lessen the monopoly period. This is the
finding in Microfibres Inc. v. Girdhar & Co, (2006) 32 PTC 157 in the following
terms:—
“the mischief which is sought to be prevented by reading Section 15 is not
copying by the respondent, but the mischief which is intended to be prevented by
Section 15 is that a right holder cannot switch over the monopoly right and indirect
claim right over a designable subject matter.”
In the case of Indian Handicrafts Emporium v. Union of India, (2003) 7 SCC 589
the mischief rule has been thus enunciated by the Supreme Court as under:—
“104. xxx
xxx
xxx
42. In Jones v. Wrotham Part Settled Estates, AC at p.105, the law is stated in
the following terms:
‘….I am not reluctant to adopt a purposive construction where to apply the literal
meaning of the legislative language used would lead to results which would clearly
defeat the purposes of the Act. But in doing so the task on which a court of justice
is engaged remains one of construction, even where this involves reading into the
Act words which are not expressly included in it. Kammins Ballrooms Col. Ltd. v.
Zenith Investments (Torquay) Ltd. provides an instance of this, but in that case the
three conditions that must be fulfilled in order to justify this course were satisfied.
First, it was possible to determine from a consideration of the provisions of the Act
read as a whole precisely what the mischief was that it was the purpose of the Act
to remedy ………………..’
Similar view was taken in the case of S. Gopal Reddy v. State of A.P., (1996) 4
SCC 596 wherein it was held as under:—
“…He must set to work on the constructive task of finding the intention of the
Parliament, and he must do this not only from the language of the statute, but also
from a consideration of the social conditions which gave rise to it and of the
mischief which it was passed to remedy, and then he must supplement the written
word so as to give ‘force and life’ to the intention of the legislature…….”
III. The purpose of the Designs Act is that any aesthetic “not classical” value as
applied to an article and appealing to eye is protected. The protection is afforded to
aesthetic and ornamental aspects of two dimensional and three dimensional
products as well as the idea of applying such aesthetic and ornamental aspects to
the product. The design registration giving protection of 15 years encourages
commerce and if there was no Section 15 of the Copyright Act, the copyright
protection would then be perpetual in effect rendering the Designs Act otiose.
The three levels of protection suggested by Mr. Jaitley, the learned Senior
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Counsel, i.e. the sketch, mould and product seeks to circumvent the legislative
intent by achieving what is prohibited directly; that is enlarging the monopoly of
commercial products.
Every design is traceable to a mould or a drawing and the only test which needs
to be applied is the intent of creating the mould.
IV. It is evident that the intent of making the mould is not to sell the mould as a
stand alone product on the article on which the mould or design would be applied.
Thus, a drawing or mould eventually merges into an article and becomes part of the
product and the copyright in the drawing or mould may remain as per the Copyright
Act, 1957 but would stand reduced for the mould or drawing as applied to an article
to 15 years, due to the commercial production and the emerging of the drawing and
the mould into article. It is also submitted that if any monopoly right over the
article is lost, then the stages antecedent to the article has no value.
V. The design proponent once having elected to produce the article commercially
cannot claim the larger period of copyright protection as once a right holder chooses
to have patent/design right over an article then by virtue of operation of doctrine of
election, the indirect right of copy over the drawings is abandoned/foregone by a
right holder. This position was held in the case of Catnic Components Ltd. v. Hill &
Smith Ltd. (1978) F.S.R. Vol.4 405.
VI. Non-application of the doctrine of election would result in term of
inconsistency that is the protection of design right for a period of more than 15
years. The claim of the appellant's in Dart Industries Inc. and Mattel Inc. are
inconsistent with the copyright protection of 15 years by virtue of the Designs Act,
2000 and would amount to extending the copyright to the term of the lifetime of
the author plus 60 years.
VII. The article is to be seen as a whole and the appeal of the article, subject
matter of the design protection forms part of the article itself and hence cannot be
protected as separate work of art.
18. In his rejoinder arguments Mr. Praveen Anand has argued that there is a vital
difference between the subject matter of copyright and design protection.
I. He has tabulated the essential features of copyright and design protection as
follows:
S. COPYRIGHT DESIGN
No.
1. Creation based Registration based
2. Not destroyed by prior publication Destroyed by prior publication
3. Copying necessary Grants monopoly
4. Compromise of the work itself Compromise of Article in addition to
Design. That is the article is the
different from the design that is
applied to the article.
II. He submits that the election theory or intention test, as is propounded by the
respondents is flawed. He submits that the election theory that the creator of an
artistic work loses his copyright upon application of the work to an article or if the
artistic work is created with the intention of being used as a design is improper and
that it would lead to inequitable situations. The reasons for this submission of his
are:
(a) The application of an artistic work to an article may not be in contemplation
of the person creating the artistic work at the time of creation. Illustration : For
instance, if “A” creates an artistic work in the year 2001 and releases it in an art
gallery. In 2003, the work is applied to an article.
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Under the interpretations of the respondents, “A” will not be entitled to copyright
protection under Section 15(2) of the Copyright Act, 1957.
“A” will also not be entitled to design protection under Section 19(1)(b) of the
Designs Act, 2000, as the “design” has been published by the exhibition of the
artistic work in the art gallery in 2001
This will lead to an anomalous situation, where artists would be deprived of both
rights.
(b) The application of the artistic work may be the thought of subsequent
assignee and not the original artist; and
(c) The article to which the work is applied may itself come into existence in
future (e.g. KINDLE by Amazon) and may not be in existence at the time the
artistic work was created.
III. Mr. Anand submits that the extension of rights can arise only on the
happening of two events which are as under:
A. Registration of a design is necessary. This is only possible if there is an article,
under the Designs Act (Section 15(1) of the Copyright Act, 1957)
So the intention test is non-workable as it discloses the ambiguity and
uncertainty of:—
i. Whose intention is relevant?
ii. When should the intention have existed; and
iii. Intention to do what
B. Copyright in the design is capable of being registered and is reproduced over
fifty times (Section 15(2) of the Copyright Act, 1957). For this provision to apply,
an ‘article’ has to exist, as defined under the Designs Act.
IV. Consequently, for Section 15 of the Copyright Act to get triggered it is not
steps 1, 2 and 3 but steps 4 and 5 which trigger the section.
1. Creation of an artistic work
2. Formation of an intention by someone to apply the work to an article.
3. Creation of an article
4. Getting design for the article
5. Not getting a design registered but multiplying it fifty times
V. He submits that what stands extinguished is the copyright in the design and
applied to an article and not the copyright in the artistic work itself. He refers to
Schedule 3 of the Designs Rules 2001 which deals with classification of goods for
purpose of registration as a design to point out that the schedule uses expressions
like equipment, apparatus, articles etc. but does not use the expression “Drawings”.
He submits that the extent of extinction is copyright in the design for that article for
which steps 4 and 5 above, namely registration or mass- multiplication have taken
place. The copyright in the artistic work, as also the copyright in designs for non-
registered and non-mass multiplied articles is preserved.
VI. He submits that he would make his submissions with regard to the meaning
of an “article” and on the scope of Section 2(d) on the Specific Reference to the
facts of the Mattel Inc.'s case and submissions in that respect has not been made
as at present.
19. The relevant statutory provisions are as follows:—
THE DESIGNS ACT, 2000 THE COPYRIGHT ACT, 1957
Section 2(d), The Designs Act, 2000 Section 2(c), The Copyright Act, 1957
“design” means only the features of (c) “artistic work” means,—
shape, configuration, pattern, ornament (i) a painting, a sculpture, a drawing
or composition of lines or colours applied (including a diagram, map, chart or
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to any article whether in two dimensional plan), an engraving or a photograph,

or three dimensional or in both forms, by whether or not any such work possesses
an industrial process or means, whether artistic quality;
manual, mechanical or chemical, (ii) a work of architecture;
separate or combined, which in the and
finished article appeal to and are judged (iii) any other work of artistic
solely by the eye; but does not include craftsmanship;
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
or property mark as defined in Section
479 of the Penal Code, 1860 or any
artistic work as defined in clause (c) of
Section 2 of the Copyright Act, 1957;
Section 2(g) The Design Act, 2000 Section 13(2)(i) The Copyright Act, 1957
“original”, in relation to a design, means 13(2)(i) in the case of a published work,
originating from the author of such the work is first published in India, or
design and includes the cases which where the work is first published outside
though old in themselves yet are new in India, the author is at the date of such
their application; publication, or in a case where the author
was dead at that date, was at the time of
his death, a citizen of India;
Section 2(j) The Design Act, 2000: Section 15 The Copyright Act, 1967
“proprietor of a new or original design”,— Special provision regarding copyright in
(i) where the author of the design, for designs registered or capable of being
good consideration, executes the work for registered under the Designs Act, 1911.
some other person, means the person for (2) Copyright shall not subsist under this
whom the design is so executed; Act in any design which is registered
(ii) where any person acquires the design under the Designs Act, 1911 (2 of 1911).
or the right to apply the design to any (3) Copyright in any design, which is
article, either exclusively of any other capable of being registered under the
person or otherwise, means, in the Designs Act, 1911 (2 of 1911), but which
respect has not been so registered, shall cease as
(iii) and to the extent in and to which the soon as any article to which the design
design or right has been so acquired, the has been applied has been reproduced
person by whom the design or right is so more than fifty times by an industrial
acquired; process by the owner of the copyright or,
and in any other case, means the author with his licence, by any other person.
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.
Section 4. (The Design Act, 2000): Section 16 (The Copyright Act, 1957)
Prohibition of registration of certain No copyright except as provided in this
designs.—A design which— Act.—No person shall be entitled to
(a) is not new or original; or copyright or any similar right in any
(b) has been disclosed to the public any work, whether published or unpublished,
where in India or in any other country by otherwise than under and in accordance
publication in tangible form or by use or with the provisions of this Act or of any
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in any other way prior to the filing date, other law for the time being in force, but
or where applicable, the priority date of nothing in this section shall be construed
the application for registration; or as abrogating any right or jurisdiction to
(c) is not significantly distinguishable restrain a breach of trust or confidence.
from known designs or combination of
known designs; or
(d) comprises or contains scandalous or
obscene matter,
Section 12 (The Designs Act, 2000): Section 40(a) (The Copyright Act, 1957)
Restoration of lapsed designs.—(1) Power to extend copyright to foreign
Where a design has ceased to have effect works.—
by reason of failure to pay the fee for the 40(a) to work first published in any
extension of copyright under sub-section territory outside India to which the order
(2) of Section 11, the proprietor of such relates in like manner as if they were first
design or his legal representative and published within India;
where the design was held by two or
more persons jointly, then, with the leave
of the Controller one or more of them
without joining the others, may, within
one year from the date on which the
design ceased to have effect, make an
application for the restoration of the
design in the prescribed manner on
payment of such fee as may be
prescribed.
(2) An application under this section
shall contain a statement, verified in the
prescribed manner, fully setting out the
circumstances which led to the failure to
pay the prescribed fee, and the Controller
may require from the applicant such
further evidence as he may think
necessary.
Section 11. Copyright on registration— Section 22
(1) When a design is registered, the Term of copyright in published literary,
registered proprietor of the design shall, dramatic, musical and artistic works.—
subject to the provisions of this Act, have Except as otherwise hereinafter provided,
copyright in the design during ten years copyright shall subsist in any literary,
from the date of registration. dramatic, musical or artistic work (other
(2) If, before the expiration of the said than a photograph) published within the
ten years, application for the extension of lifetime of the author until [sixty years]
the period of copyright is made to the from the beginning of the calendar year
Controller in the prescribed manner, the next following the year in which the
Controller shall, on payment of the author dies.
prescribed fee, extend the period of
copyright for a second period of five
years from the expiration of the original
period of ten years.
Section 22. Piracy of registered design. Section 67 Penalty for making false
(1) During the existence of copyright in entries in register, etc., for producing or
any design it shall not be lawful for any tendering false entries.—Any person who,
person— —
(a) for the purpose of sale to apply or (a) makes or causes to be made a false
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cause to be applied to any article in any entry in the Register of Copyrights kept
class of articles in which the design is under this Act, or
registered, the design or any fraudulent (b) makes or causes to be made a writing
or obvious imitation thereof, except with falsely purporting to be a copy of any
the licence or written consent of the entry in such register, or
registered proprietor, or to do anything (c) produces or tenders or causes to be
with a view to enable the design to be so produced or tendered as evidence any
applied; or such entry or writing, knowing the same
(b) to import for the purposes of sale, to be false,
without the consent of the registered shall be punishable with imprisonment
proprietor, any article belonging to the which may extend to one year, or with
class in which the design has been fine, or with both.
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.
20. After taking into account the above pleas, we are of the view that Section 2(c)
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.
21. The rights to which a holder of an original artistic work is entitled are
enumerated in Section 14(c) of the Copyright act. These are, the right:
(i) To reproduce the work in any material form including depiction in three
dimensions of a two dimensional work or in two dimensions of a three
dimensional 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 an adaptation of the work any of the acts specified in
relation to the work in sub-clauses (i) to (iv)
22. 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. 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. 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
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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.
23. There is, therefore, 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 section 2(c) of the Copyright act, 1957.
24. It needs to be emphasized 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.
25. 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
Section 2(c) of the Copyright Act. This is so because the expression ‘artistic work’ as
defined in Section 2(c) 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.
26. The expression “copyright in any design” used in Section 15(2) 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-à-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.
27. Under the Designs Act, a copyright has a different connotation from a copyright
under the Copyright Act. Under the Designs Act, copyright means the exclusive right
to apply the design to any article in any class in which the design is registered.
28. The issue with regard to the extent of, and the conditions for the copyright
protection to such an artistic work, as an artistic work under the Copyright Act, which
is a design registered or capable of registration under the Designs Act, is what is dealt
with, by section 15 of the Copyright Act. Once the distinction between the original
artistic work and the design derived from it, and the distinction between Copyright in
an original artistic work under the 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.
29. Section 15 of the Copyright Act is in two parts. The first part i.e. sub-section
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(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.
30. 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. It is clear to us
that 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 shall we say commercial, exploitation of the
original artistic work by the application/reproduction of the said work in any other form
or reproduction of copies thereof in exercise of the rights under Section 14(c)(1) and
14(c)(iii) of the Copyright Act. Beyond the specified limit, if the design derived from
the original artistic work is exploited (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.
31. We are also of the view that it is not correct on behalf of the appellant to urge
that the intention of the creation of the work determines the Intellectual Property
Rights contained therein, and not whether such work fell within the classification of
“Designs” under the Designs Act or the Copyright Act. The Designs Act nowhere
stipulates the intention of the creator of the work as a determinative criteria and the
exhaustive definition given not only in the Designs Act but indeed the Copyright Act
clearly rules out such interpretation as suggested by Shri Raju Ramachandran. In fact,
the appropriate occasion to evaluate the registrability of a design would arise when the
artistic work is translated into an object having features of shapes, configuration,
pattern, ornament or composition of lines or colors whether two dimensional or three
dimensional by employing an industrial process. Significantly, the appellant
themselves have registered their product under the Designs Act in U.K. Furthermore,
as submitted by the appellant, even if there is very little variation between the original
artistic work and the design which is industrially applied to an article to produce a
product, nevertheless, such a design can claim registration under the Designs Act,
provided such registration was sought. The interpretation suggested by the appellant
would clearly afford not only the design protection in case of registered works but also
in addition, the copyright protection to the works which were industrially produced,
which interpretation does not reflect the legislative intent.
32. A perusal of the Copyright Act and the Designs Act and indeed the Preamble
and the Statement of Objects and Reasons of the Designs Act makes it clear that the
legislative intent was to grant a higher protection to pure original artistic works such
as paintings, sculptures etc and lesser period of protection to design activity
commercial in nature. The period of copyright would be the author's life span plus 60
years. However, the legislature has allocated a lesser time span for the protection
available to a registered design as only being 15 years. Thus, commerce and art have
been treated differently by the Legislature and any activity which is commercial in
nature has been granted lesser period of protection. On the other hand, pure artistic
works per se have been granted a longer protection.
33. The Statement of Objects and Reasons of the Designs Act, 2000 reads as
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follows:—
“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
Designs 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.”
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.
34. Section 6 of the Designs Act, 2000 reads as follows:
“6. Registration to be in respect of particular article.—(1) A design may be
registered in respect of any or all of the articles comprised in a prescribed class of
articles.
(2) Any question arising as to the class within which any article falls shall be
determined by the Controller whose decision in the matter shall be final.
(3) Where a design has been registered in respect of any article comprised in a
class of article, the application of the proprietor of the design to register it in
respect of some one or more other articles comprised in that class of articles shall
not be refused, nor shall the registration thereof invalidated—
(a) on the ground of the design not being a new or original design, by reason
only that it was so previously registered; or
(b) on the ground of the design having been previously published in India or in
any other country, by reason only that it has been applied to article in respect
of which it was previously registered:
Provided that such subsequent registration shall not extend the period of
copyright in the design beyond that arising from previous registration.
(4) Where any person makes an application for the registration of a design in
respect of any article and either—
(a) that design has been previously registered by another person in respect of
some other article; or
(b) the design to which the application relates consists of a design previously
registered by another person in respect of the same or some other article with
modifications or variations not sufficient to alter the character or substantially
to affect the identity thereof,
then, if at any time while the application is pending the applicant becomes the
registered proprietor of the design previously registered, the foregoing provisions of
this section shall apply as if at the time of making the application, the applicant,
had been the registered proprietor of that design.”
A perusal of the above Section 6 clearly indicates that once the design has been
registered for a particular article comprised in a class of articles, the subsequent
registration of other articles comprised in that class of articles shall not be refused but
the subsequent registration shall not extend the period of copyright in the design
beyond that arising from the previous registration. It is significant that the subsequent
registration has statutorily been mandated not to extend the period of copyright
registration beyond the period beginning from the original registration. This clearly
shows the legislative intent of limiting the copyright protection in the design to the
initial period of 10 years, extendable by further period of 5 years.
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35. However, there can be no quarrel with the plea of Shri Ramachandran that the
operation of Section 15(2) of the Copyright Act does not exclude from the ambit of
Copyright protection either the original “artistic work” upon which the design is based
or the design which by itself is an artistic work. It cannot be disputed that the original
paintings/artistic works which may be used to industrially produce the designed article
would continue to fall within the meaning of the artistic work defined under Section 2
(c) of the Copyright Act, 1957 and would be entitled to the full period of copyright
protection. This is also evident from the definition of the design under Section 2(d) of
the Designs Act. This, in our view, in fact is a factor which would go against the
appellants in construing the nature of protection to be given to the original artistic
work such as a painting, as contrasted with the applied artistic work that is the design,
which in the present case does not mean the intermediary medium such as a mould,
engraving devised/produced only to enable industrial application of the painting to
produce the furnishing products of the appellant. Thus, while the original painting
would indeed be entitled to the copyright protection, the commercial/industrial
manifestation of such paintings such as the design derived from and founded upon the
original painting for the purpose of industrial production of furnishings would only be
covered by the limitations placed in Section 15 of the Copyright Act and would get
protection if registered as a design under the Designs Act but would enjoy lesser
period of protection in case of a registered design.
36. This clearly shows that the legislature intended that even if the artistic work
such as a painting has been used as the basis for designing an industrially produced
object for commerce, such as the furnishing in the present case, nevertheless the
original painting would indeed enjoy full copyright protection, while the result of the
industrial application of such painting, namely, the design used in the industrial
production of the ultimate product shall enjoy lesser period of protection as stipulated
under the Designs Act provided it is registered as a design under the Designs Act.
Thus, we are of the view that an original artistic work initially acquires protection
under the Copyright Act as an ‘artistic work’ or else the protection under the Designs
Act qua the product created from the artistic work when industrially applied.
37. Dr. Abhishek Manu Singhvi, the learned Senior Counsel appearing for the
respondent in FAO (OS) No. 447/2008 had submitted, and in our view rightly so that
the object of the two legislations was to prevent long term usage by the person who
was commercially exploiting something and yet wanting to claim an exclusive
monopoly through longer period of copyright protection afforded to an artistic work.
Section 15 of the Copyright Act demonstrates the legislative intention of integrating
the Copyright and Designs Acts and any other interpretation would, as rightly
submitted by Dr. Singhvi, render the registration under the Designs Act as
meaningless as a design proponent will always get a longer period of copyright
protection under the Copyright Act. In our view, the above plea would make a
registration under the Designs Act meaningless, which the legislature could have
never intended. In fact, the plea of Dr. Singhvi that a design which has been granted
the protection under the Designs Act cannot be granted protection under the
Copyright Act is correct and this is evident from Section 15(1) of the Act.
38. Thus, while it is not open to the respondent to reproduce such paintings per se,
which formed the basis of the design that was applied to the fabric, nevertheless, such
protection qua the design imprinted on the product through industrial application is
available only under the Designs Act, provided there is a registration. 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. This
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clearly indicates that the legislature intended to provide industrial and commercial
application of an artistic work for commerce lesser protection.
39. Shri Arun Jaitley, the learned Senior Counsel appearing for the appellant in FAO
(OS) No. 326/2007 titled as M/s Dart Industries Inc. v. M/s Techno Plast had only
made submissions in the present appeal in respect of Section 15 of the Copyright Act
to the extent it could affect the appeal filed by his clients. He had advanced a very
attractive argument as to the three stages of processes leading to the eventual
designed product. He submitted that the first stage is of the preparation of drawing or
artistic work which leads to the production of mould/engraving which is the second
stage and such mould/engraving leads to the final commercially marketable product,
which is the third stage. He has also submitted that the products of the respondent
were made by the process of reverse engineering starting from the final product
leading to the second stage of creating a moulding, and from it a final drawing. His
plea was based upon the premises that the mould and the drawing of the appellant
are copyright protectable under the Copyright Act and cannot be or are incapable of
forming part of the design registration regime. It is submitted that the product of the
respondent involves the copying of the mould/drawing of the appellant.
40. While the argument is very attractive but nevertheless it is not legally
sustainable because such a plea would enlarge the monopoly in industrial design from
the current maximum time of 15 years to the longer period available under the
Copyright Act. While the original drawings of the appellant could be entitled to
copyright protection under the Copyright Act as artistic works, the designs derived
therefrom as moulds which are used for industrial application of the design on the
articles would not qualify for protection as artistic works under the Copyright Act
except in accordance with Section 15(2) of the Copyright Act. It is not the case of the
appellant Microfibres or even that of Mr. Jaitley's clients that the design applied on the
fabric (in the case of Microfibres) or the plastic (in the case of Mattel Inc.) has not
been applied for more than 50 times. There designs have been used more than 50
times. The learned Single Judge in paragraph 51 of the impugned judgment held as
follows:
“The plea of the plaintiff is also sought to be negated on the issue of definition of
a ‘design’ under Section 2(d) of the Designs Act, 2000 whereby an ‘artistic work’ as
defined in clause (c) of Section 2 of the Copyright Act has been specifically
excluded. The submission was, thus, advanced that this would have the effect of
rendering the law of designs redundant for the simple reason that each design
registered thereunder would be able to trace its origin to a diagram, chart, drawing,
etc. and, thus, cease to be governed by the Designs Act. The legislative intent could
not have been this because the law of designs is based on the same principle as
applicable to other monopolies and to fuel industrial innovativeness by granting
limited time-limit to the monopolies and allow others to make use of them after
they have passed into the public domain. Thus, the plea of the plaintiff, if accepted,
would be anticompetitive and would throttle and stagnate the industry.
(Emphasis supplied)”
In our view the learned Single Judge has felicitously summed up the legislative
intent that limited monopoly should be granted to fuel industrial inventiveness in the
field of commerce. We fully approve and reiterate the aforesaid view.
41. As rightly submitted by Shri Rajender Kumar, the learned counsel for the
respondent no. 2 in the present appeal, the interpretations canvassed by the appellant
would, render the design legislation otiose, because every registered design would
then be able to trace its origin to a chart, drawing, diagram etc. and consequently also
claim copyright protection under the Copyright Act in addition to the protection as a
registered design under the Designs Act.
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42. Shri Prashanto Chandra Sen, the learned counsel appearing on behalf of the
respondent no. 1, contended that the difference between a design and an artistic work
lies in the applicability of the former to an article as evident from the decision in Con
Planck Ltd. case 1923 KB 804, wherein it was held that the fundamental distinction
between a design and a simple artistic work lies in the applicability of the former to
some other article. In our view, the interpretation suggested by Shri Jaitley would
result in every industrial tracing, drawing or mould which may not be an original
artistic work within the meaning of Section 2(c) read with Section 13 of the Copyright
Act, and which lead to the designed product, being afforded protection under the
Copyright Act as an original artistic work and also being at the same time industrially
and commercially exploitable by being applied to marketable articles by claiming
protection under the Designs Act, 2000.
In the case of Interlego (1988) RPC 343, the following position of law was laid
down:
“The definition of ‘design’ in section 1(3) of the Act of 1949 is hardly a model of
Parliamentary draughtsmanship and this is by no means the first case in which its
meaning and application have been called in question. In approaching the question
of construction there has to be borne in mind that the purpose of the Act, as
appears both from its terms and its legislative history, is to protect novel designs
devised to be ‘applied to’ (or, in other words, to govern the shape and construction
of) particular articles to be manufactured and marketed commercially. It is not to
protect principles of operation or inventions which, if protected 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 artifact. 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 articles of a design not substantially different from the
registered design. The emphasis therefore is upon the visual image conveyed by the
manufactured article.
(emphasis supplied)”
Thus, in the case of Pugh v. Riley 1912 RPC 196 the general principle was laid down
that any application for registration must be accompanied by a representation of the
design which ought to be in the nature of a drawing or a tracing, by means of which
the suggestion constituting the design may be imparted to others. A person looking at
the drawing must be able to form a mental picture of the shape, configuration, pattern
or ornament of the article to which the design has been applied. Further, in the case of
Interlego (supra) it was laid down that the purpose of design is not to protect the
principles of operations or inventions which, if protected at all, must be made the
subject matter of the patent. This process of operation or invention such as a
moulding/engraving could at best be granted patent protection and thus, Mr. Jaitley's
plea that such intermediary process be granted copyright protection cannot be
accepted. Thus, what is granted is a right, over a lesser period, to prevent the
manufacture and sale of articles of a design not substantially different from those
industrially produced by the application of the registered design. The emphasis
therefore, is upon the visual image conveyed by the manufactured article and thus the
above judgment of Interlego (supra) also supports the case of the respondent, that
the intermediary process of creation of a design from an original artistic work cannot
be afforded protection under the Copyright Act if it crosses the lakshman rekha of
having been applied more than 50 times industrially to produce an article.
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43. Undoubtedly, it is true as contended by Shri Jaitley that the artistic work
defined under Section 2(c) of the Copyright Act need not possess artistic quality. His
plea about the copyright protection available to moulding/engraving/drawing is
postulated on the above premise. Nevertheless, we cannot lose sight of the fact that
the design, based upon a moulding or an engraving derived from the original artistic
work, which is used for industrial application on an article and which evolves during
any process intermediate to the reproduction of the finally designed article, would not
qualify as an artistic work. The case of Dover LD (supra) clearly requires the exercise of
intellectual activity so as to originate some novel application and thus, this principle
cannot be applied to a mould, or an engraving i.e. the intermediates which are mere
derivatives of the original artistic work. In the case of Pugh v. Riley (supra) also it was
held that a design is preceded by a drawing or tracing which incorporates the design
to be imparted to produce the designed article and upon being applied to an article
become incapable of being registered as a design.
Thus, the interpretation as suggested by the appellant would have the effect of
rendering the design legislation in India redundant as every design could have its
origin to an intermediate product such as a engraving, mould, diagram etc. It is also
anti-competitive and stagnates innovativeness beside in effect negating the legislative
intent of giving lesser protection of 15 years to a ‘design’ under the Designs Act as
compared to the larger protection of 60 years to an ‘artistic work’ under the Copyright
Act.
44. We cannot accede to the plea of Shri Sanjay Jain that the intention of creating
an artistic work would determine as to which enactment applies. The artist's intent at
the time of creation of the artistic work is indecipherable at the best of times. Artists
are governed more often than not by their emotions and moods and whatever be the
intention at the time of the creation of the artistic work cannot, in our view, determine
the nature of protection available to the artistic work. Indeed such a plea of Shri
Ramachandran has already been rejected by us, as the stupendous and commercial
success of a particular artistic work may spur on the artist to permit commercial
utilization and exploitation of such a work of art. To this extent, we agree with Mr.
Praveen Anand that an intention of creation is difficult to ascertain and cannot form
the basis of determining the rights. Thus, even if the original painting was intended to
be created only as a work of art, a latter intention may transform it by its industrial
application into a commercially viable object. To this extent, we agree with the plea of
Shri Sanjay Jain that once the artistic work, by industrial application transforms into a
commercially marketable artifact its design falls within the domain of the Designs Act
and the protection to the design founded upon the artistic work is limited by section
15 of the Copyright Act and the provisions of the Designs Act.
45. Learned counsel Shri Praveen Anand, appearing on behalf of the appellant in
FAO (OS) No. 447/2008 has contended that there is a vital difference between the
subject matter of copyright and design protection. In our view, while this plea is
sustainable, nevertheless, it cannot be ignored that different kinds of protection for an
artistic work, and the design founded upon the artistic work which is industrially and
commercially exploited, has been intended by the Legislature. He has further
submitted that what stands extinguished under Section 15 of the Copyright Act is the
copyright in the design itself as applied to an article and not the copyright in the
artistic work itself. There is no quarrel with this proposition. However, that does not
advance the case of the appellant. We do hold that in the original work of art,
copyright would exist and the author/holder would continue enjoying the longer
protection granted under the Copyright Act in respect of the original artistic work.
Thus, for instance a famous painting will continue to enjoy the protection available to
an artistic work under the Copyright Act. A design created from such a painting for the
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purpose of industrial application on an article so as to produce an article which has

features of shape, or configuration or pattern or ornament or composition of lines or
colours and which appeals to the eye would also be entitled design protection in terms
of the provisions of the Designs Act. Therefore, if the design is registered under the
Designs Act, the Design would lose its copyright protection under the Copyright Act
but not the original painting. 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, in our view,
would harmonize the Copyright and the Designs Act in accordance with the legislative
intent.
46. We thus summarize our findings as follows:—
a. The definition of ‘artistic work’ has a very wide connotation as it is not
circumscribed by any limitation of the work possessing any artistic quality. Even
an abstract work, such as a few lines or curves arbitrarily drawn would qualify as
an artistic work. It may be two dimensional or three dimensional. The artistic
work may or may not have visual appeal.
b. The rights to which a holder of an original artistic work is entitled are enumerated
in Section 14(c) 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 Copyright Act and the Designs Act and indeed the Preamble and
the Statement of Objects and Reasons of the Designs Act makes it clear that the
legislative intent was to grant a higher protection to pure original artistic works
such as paintings, sculptures etc and lesser protection to design activity which is
commercial in nature. The legislative intent is, thus, clear 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 Section 2(c) of the Copyright Act, 1957 and would be entitled to
the full period of copyright protection as evident from the definition of the design
under Section 2(d) of the Designs Act. However, the intention of producing the
artistic work is not relevant.
g. This is precisely why the legislature not only limited the protection by mandating
that the copyright shall cease under the Copyright Act in a registered design but
in addition, also deprived copyright protection to designs capable of being
registered under the Designs Act, but not so registered, as soon as the
concerned design had been applied more than 50 times by industrial process by
the owner of the copyright or his licensee.
h. In the original work of art, copyright would exist and the author/holder would
continue enjoying the longer protection granted under the Copyright Act in
respect of the original artistic work per se.
i. If the design is registered under the Designs Act, the Design would lose its
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
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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.
47. Thus, we find no merit in this appeal and the same is dismissed but with no
order as to costs.
48. List FAO (OS) No. 447/2008 and FAO (OS) No. 326/2008 for hearing on 7th
August, 2009.
———
Disclaimer: While every effort is made to avoid any mistake or omission, this casenote/ headnote/ judgment/ act/ rule/ regulation/ circular/
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2016 SCC OnLine Del 4016 : (2016) 233 DLT 1 (DB) : (2016) 158 DRJ (SN)
703 : (2016) 67 PTC 457 (DB)

In the High Court of Delhi at New Delhi

(BEFORE S. RAVINDRA BHAT AND DEEPA SHARMA, JJ.)

Dart Industries Inc. & Anr. .…. Appellants

Mr. S.C. Agarwal, Sr. Advocate with Ms. Jaspreet Sareen and Mr. Chirag Kher,
Advocates.
v.
Techno Plast & Ors. .…. Respondents
Mr. Sushant Singh with Mr. Prakash C. Arya and Ms. Nupur Lamba, Advocates.
FAO (OS) 326/2007
Decided on July 21, 2016
A. Intellectual Property — Copyright Act, 1957 — Ss. 2(c)(i), 15(2) — Artistic works —
Infringement — Injunction — Copyright protection and infringement claim is premised on
assertion that drawings from which moulds are made — Are artistic works because
considerable amount of money was spent on making of such molds — Plaint nowhere
discloses that drawings — Artistic works have any inherent capability of art — These
drawings are of commonplace every day articles used in households — Idea expression
doctrine itself would prima facie prevent copyright protection — Because depiction of daily
articles cannot be ‘enclosed’ to create a monopoly where legitimate monopoly — Design
right — Which plaintiffs could have claimed has not been prima facie established by them —
Single judge's reasoning as to lack of prima facie strength in copyright infringement claim
does not warrant interference — Designs Act, 2000 — S. 22 — Trade and Merchandise
Marks Act, S. 2
(Para 38)
King Features Syndicate Incorporated v. O. & M. Kleeman Ltd., 1941 (48) RPC 207; Bharat Glass
Tube v. Gopal Glass Works Ltd., (2008) 10 SCC 657; Microfibres Inc. v. Girdhar & Co., 128
(2006) DLT 238; Fiest Publication Inc. v. Rural Telephone Service, (1991) 199 US 340; Eastern
Book Company v. D.B. Modak, (2008) 1 SCC 1, relied on
CCH Canadian Ltd. v. Law Society of Upper Canada, (2004) 1 SCR 339; Herbert Rosenthal Jewelry
Corporation v. Kalpakian, (1971) 446 F2d 738; Ravinder Kumar Gupta v. Sh. Ravi Raj Gupta,
1986 PTC 50B; Chawla & Sons v. Bright Auto Industries, AIR 1981 Delhi 95; Samsonite
Corporation v. Vijay Sales, 1998 (18) PTC 372; Polymer Papers Ltd. v. Gurmit Singh, 2002 (25)
PTC 327 (Del.); Warner Brothers v. Roadrunner, 1988 FSR 292; Vicco Laboratories Bombay v.
Hindustan Rimmer, 1988 FSR 292; Castrol Ltd. v. O. Murali Dhar Reddy, 2001 (21) PTC 134
(Mad); Anglo Dutch Paint, Colour and Varnish Works v. India Trading House, AIR 1977 Del 41;
Richardson Vicks Inc v. Medico Laboratories, 1985 (5) PTC 167 (Del); Lakshmikant Patel v.
Chetanbhai Shah, (2002) 3 SCC 65; SmithKline Beecham Pic v. Hindustan Lever Limited, 2000
PTC 83; Gorbatschow Wodka KG, 2011 (4) BCR 1; Micro FibreInc v. Girdhar & Co., 2009 (40) PTC
519 (Del); Wander limited v. Antox India (P) Ltd., 1990 Supp SCC 727; Mohd. Mehtab Khan v.
Khushuma Ibrahim, (2013) 9 SCC 221 : (2013) 4 SCC (Civ) 285; Société des Produits Nestlé
S.A. v. Cadbury UK, [2014] FSR 28 (Ch); Gopal Glass Works Limited v. Assistant Controller of
Patents and Designs, 2006 (33) PTC 434; Niky Tasha India Pvt. Ltd. v. Faridabad Gas Cadgets
Pvt. Ltd., AIR 1985 Del 136; Samsonite Corporation v. Vijay Sales, 1998 (18) PTC 372; Warner
Brothers v. Roadrunner, 1988 FSR 292, referred
B. Intellectual Property — Practice and Procedure — Interim/Interlocutory
Order/Injunction/Stay/Interim Relief — Claim premised on a bare assertion that drawings
are artistic works — Products of plaintiffs and defendants are sold under totally different
trade mark/name namely ‘Tupperware’ and ‘Signoraware’ — Neither plaintiff alleged in
plaint about trademark of defendants nor any relief is claimed against trademark
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‘Signoraware’ — Vague assertion with respect to passing off of trade dress — No case for
interference
(Paras 42 to 44)
Smithkline Beecham Plc. v. Hindustan Lever Ltd., 2000 PTC 83; Laxmikant Patel). William Grant &
Sons Ltd. v. McDowell & Co. Ltd., 1994 FSR 690 (Del), relied on
S. RAVINDRA BHAT, J.:— The plaintiffs, unsuccessful in their application for ad-
interim injunction during pendency of their suit for copyright and design infringement
as well as for permanent injunction complaining passing off, appeal the decision of a
learned single judge.
2. The two plaintiffs filed a suit for permanent injunction against the defendants
under Section 22 of the Designs Act, 2000 read with Section 55 of the Copyright Act,
1957. The first plaintiff (hereafter “Dart”) is a Delaware, USA incorporated company;
the second plaintiff, i.e., M/s. Tupperware India Pvt. Ltd. (hereafter “TIPL”) is an
Indian company. Dart claims ownership and possession to the proprietary know-how,
innovative technology, intellectual property rights and trade secrets in creating the
designs used for the manufacture of its products commonly known as Tupperware
products. These products-so the suit says-are the result of artistic work in the form of
product drawings, mould drawings and moulds over which copyright is claimed. Dart
contractually granted to TIPL the right to use its moulds to manufacture Tupperware
products and the right to use and apply the proprietary and registered designs in
respect of those products for manufacture and offer for sale in India. Dart alleges that
it has registered the proprietary designs in relation to the Tupperware products
globally and in India as well. As the designs of these products are new and original,
they have become extremely popular in the Indian market and have acquired
tremendous goodwill and reputation. The extensive and longstanding use, reliability,
high quality and wide publicity of the Tupperware products, has resulted in TIPL's
substantial goodwill and reputation in India for the Tupperware products so much so
that these products are identified by the customers by their respective design(s) and
for being innovative and high quality products. The plaintiffs also claim that these
products have won several design awards the world over. The Guinness Book has listed
Tupperware products amongst ten greatest inventions of the 20th century. It is one of
the seven US companies to recently receive the ‘2004 Good Buy Award’ for its
‘Stuffable Storage Containers’ which is an award given by the Good Housekeeping
Institute in USA. Details of awards won by the plaintiff over the years are furnished
along with the plaint. The plaintiffs have also filed various newspaper and magazine
clippings to show the goodwill and reputation which Tupperware products enjoy.
3. The plaintiffs claim that the diverse range of Tupperware products is known
worldwide for its unique designs, world class quality, technical and functional
superiority over similar kind of products produced by many other plastic
manufacturers and these products are sold in more than 100 countries around the
world. In India, the sales figures, which were Rs. 18.83 crores in the year 1998-99,
have gone up to Rs. 56.47 crores by the end of financial year 2004. The products were
marketed in the year 1996 and substantial amounts were also spent on advertising,
publicity and promotion to the extent of Rs. 6.91 crores in the year 2003-2004.
4. The suit urges that the plaintiffs obtained registrations from the Controller
General of Patents, Designs and Trade Marks under the Designs Act and Rules,
particulars of which were noticed in a detailed chart in the impugned judgment of the
learned single judge. This is an undisputed fact. The suit alleged that the defendants
copied the plaintiff's design for their products i.e. food grade plastic storage containers
and infringed the plaintiff's designs in these products. The defendants' infringing
products' designs are identical to the designs of the plaintiffs' products. Such
infringement entitles the plaintiffs to seek restraint of the defendants from
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manufacturing and marketing these products. These actions of the defendants amount
to : (a) design infringement under Section 20 of the Designs Act; (b) copyright
infringement under Section 55 of the Copyright Act; (c) defendants are passing off
their goods as that of the plaintiffs by copying trade address and trade name etc.
which is confusing and similar to that of the plaintiffs goods. Therefore passing off
action in injunction is also maintainable; (d) The defendants have copied the designs
by adopting reverse engineering methodology; (e) the impugned act of the defendants
also amounts to unfair competition and unfair trade practices which also entitles the
plaintiffs to claim injunction against the defendants. The plaintiffs described
12infringing articles of the defendants; description of these articles is set out in Para 6
of the impugned judgment.
5. The Court had granted ex-parte injunction and appointed three local
commissioners. They visited the premises and submitted their reports after preparing
inventories. The first four defendants filed a common written statement. The eighth
and ninth defendants filed separate written statements. The written statements filed
on behalf of the first four defendants urged several preliminary objections. One, that
the suit filed by the plaintiff under Section 22 of the Design Act is not maintainable
and 12 designs in question were previously published; thus neither new nor original.
It was also urged that the first defendant is the sole proprietorship firm of fourth
defendant; the second, third and fifth defendants had nothing to do with the suit. The
sixth defendant too had nothing to do with the business of the first defendant and was
only purchasing the material from the first and fourth defendants. The locus standi of
TIPL to file the suit is also challenged on the ground that registration of the designs is
in favor of Dart. TIPL was not a licensee to use these designs in India. The territorial
jurisdiction of this Court to entertain and try the suit was challenged. The
maintainability of the suit under Section 55 of the Copyright Act was challenged
stating that the plaintiff has made the disclaimer vis-à-vis the copyright while
obtaining the design registrations. It was also alleged by the defendants that there
was no trademark or copyright infringement and there is no question of any confusion.
It is also contended that passing off action under the Design Act is not even
maintainable.
6. The defendants alleged that ‘Signora’ is the family trade mark of their business.
They sell their products under the mark. The products and mark are distinct and have
been marketed in cardboard packing material. TIPL, however sells its products in loose
form. The written statement urged that there was a lot of difference between the two
trade-marks namely ‘Tupperware’ of the plaintiff and ‘Signoraware’ of the defendants
and, therefore, question of confusion and deception does not arise. The first four
defendants manufacture the products in colours, which were never used by TIPL in
India. The designs in question are in public domain and the first and fourth defendants
prepared them with their own skill and labour and are entitled to do so. They gave
their explanation how each design is in the public domain. The eighth defendant
stated that he is neither a distributor/stockist nor in any way connected with Techno
Plast (first defendant) or its trade; rather it is a company formed with the main
objective of dealing in Medical and Pharmaceutical products and has nothing to do
with the sale of the goods in question. The ninth defendant took an identical plea.
Impugned judgment
7. The learned single judge was of opinion that the contest in the proceedings was
primarily between the plaintiffs and the first and fourth defendants and if injunction is
to be confirmed vis-à-vis first and fourth defendants, the question of appointment of
any distributors or marketing would not arise. On the other hand, it was said that if
the plaintiff was disentitled to any injunction against the first and fourth defendants,
then the question whether the eighth and ninth defendants were distributors/stockists
or not would be immaterial. The single judge identified four issues on which the
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application for temporary injunction had to be addressed, viz design infringement;

copyright infringement; passing off of trade dress, trade name etc. and unfair
competition and unfair trade practices.
8. As to design infringement, the single judge noticed previous decisions of this
court and various other courts, on the meaning of “publication”1 and concluded that it
meant, contextually, the availability of knowledge or awareness about a particular
design in relation to specific articles or products. If such information was available in
the public domain that designs were registered in favour of an applicant (here, Dart) it
did not strengthen its case, because registration was only prima facie evidence of
novelty and originality, the essential requirements of design protection in law. In sum,
the learned single judge ruled that the materials to destroy novelty and to say that the
designs were previously published were contained in the book revised new edition (C)
1989 “The Tupperware Cook”. The single judge then stated that at the stage of
granting or refusing temporary injunction, the court has to assess the prima facie
strengths of the parties. The Court took note of an earlier decision, Ravinder Kumar
Gupta v. Sh. Ravi Raj Gupta2 that “……The Court has to consider and look at the
designs in question with an instructed eye and say whether there is or is not such a
substantial difference between that which had been published previously and the
registered design as to enable the proprietor of the registered design to say that at the
date of registration that was a new or original design and, therefore, properly
registered.”
9. The single judge also relied on B. Chawla & Sons v. Bright Auto Industries3 ,
where it was held that there were only little variations in the products already existing
and that adding a curve here or there in shape which is well recognized shape of an
article of common use in the market cannot make it an article new or original in
design. Such a claim was devoid of newness and equally devoid of originality. In the
light of all these prima facie findings and observations, it was held by the single judge
that the designs lacked originality and the plaintiffs were not entitled to temporary
injunction on the ground of infringement of design copyright.
10. The copyright infringement claim of the plaintiff was based on the plea that
there existed copyright in the drawings, because they were a product of considerable
skill and expense, spent by Darts' experts. The claim here was that the drawings were
“artistic works” under Section 2(c)(i) of the Copyright Act, 1957. Each mould - created
with such drawings cost approximately US $ 200,000 to US$ 1,000,000
(approximately equivalent to Rs. 88 lakhs to Rs. 4.4 crores) and has a life of 30 years.
Since these works were created during the course of the employment of such experts
with Dart, by reason of Section 17 of the said Act, it became copyright owner of the
artistic works. The plaintiffs relied on Sections 13 and 14 of the Copyright to say that
the bundle of rights flowing from these entitled them to exclusive rights and that the
drawings of moulds also gave them right over 3D and 2D objects and articles; the
defendants used such objects and with computer aided programs, were able to misuse
the drawings.
11. The impugned judgment rejected copyright claims, stating colour and colour
combination by virtue of Copyright Act, cannot result in exclusivity under the law and
the case of alleged infringement of copyright under Section 45 of the Act is not
maintainable. It was also observed that the copyright claimed by the plaintiffs ceased
to exist under Section 15 of the Copyright Act. Samsonite Corporation v. Vijay Sales4
was relied on for purpose. It was stated that the drawings in question were prepared
by the plaintiffs for the purpose of creating designs for the products to be launched, as
alleged in the suit. Description of various processes - from conceptualization of idea,
creation of drawings, and moulds, leading to the manufacture of the product was for
the purpose of product creation. Microfibres Inc. v. Girdhar & Co.5 , Polymer Papers Ltd.
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v. Gurmit Singh6 and Samsonite Corporation v. Vijay Sales (supra) were followed and
applied. The single judge held that since industrial drawings and designs were for the
purposes of manufacturing of filter related machines or components and as such
clearly fell within the meaning of design - defined in the Designs Act. The court held
that the claim of copyright in the industrial drawings and designs, which were being
used for manufacturing purposes, is not maintainable. The plaintiff's argument that
Tupperware Products were “reverse engineered” by using its drawings with computer
techniques possibly by 2D or 3D scanning was held to be something that required
evidence. However, prima facie, the court held that that once drawings were made for
creating the ultimate product design, the copyright in the said drawings cannot be
claimed under the Copyright Act. It was observed that Section 15 of the Copyright Act
provides that once a design is registered under the Designs Act, copyright therein
shall not subsist. Such a copyright in any design ceases even when any article to
which the design has been applied has been reproduced more than 50 times by an
industrial process by the owner of the copyright. The underlying message is that the
Designs Act governs copyright in an industrial design. If a design is registered under
that Act it is not entitled for protection under the Copyright Act. Warner Brothers v.
Roadrunner7 was cited and relied on. However, the court felt that since there were
serious disputes which needed evidence before the plaintiff could establish copyright
infringement by showing that its copyright survived despite design copyright
registration and also show that such copyright had tremendous reputation, it would
not be safe to injunct the defendants.
12. The single judge considered the allegation of passing off, which was based on
claim of visual similarity and likelihood of confusion. The impugned judgment states
that the plaintiff's representative noticed that women who were visiting the
defendants' stall in an exhibition were getting confused as to whether the products on
display were the products of Tupperware and whether the said products were an
imitation. Noting that in a report, the plaintiff admitted that the salesman was
asserting that their products, namely Signoraware Products though were a look alike of
Tupperware Products, they were being sold at half the price of Tupperware Products.
Thus, the representation held out by the defendant was not that the goods were
Tupperware Products. On the contrary, representation was that they were the products
of a different manufacturer namely Signoraware Products and were being sold at half
the price of Tupperware Products though they were look alike of Tupperware Products.
Thus, in terms of this statement by the plaintiff, the defendants were not passing off
their goods as that of Tupperware Products. The representation was that though they
were similar to Tupperware, they were also cheap. This representation about half the
price of the Tupperware Products meant that the defendants were making it clear that
though the products were not Tupperware Products but they were equally good and
were sold at half the price of Tupperware Products. The single judge also observed
prima facie that the defendants were, at the most, puffing up their product by alleging
that they were of the same quality as Tupperware Products and selling at half the rates
but had not created or tried to create any confusion. Rather, they were selling their
own product, represented to be as good as that of plaintiffs' products. The question of
passing off, therefore, did not arise. In Microfibres Inc. v. Girdhar & Co. (supra), the
Court denied injunction, inter alia, on the ground that the two products were sold
under a totally different trade name. For these reasons, it was held that prima facie,
there was no confusion and the claim for passing off, was not strong.
Submissions by parties
13. Mr. Sudhir Chandra, learned senior counsel, submitted that the learned single
judge fell into error in not seeing the painstakingly built reputation of the plaintiff, in
respect of its uniquely designed articles. It was highlighted that shapes and colours
acquire distinctiveness and are protectable in law. He highlighted that a passing off
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action is not confined to a claim of a trademark; it covers trade dress, product shape,
packaging, colour, visual and overall representation of the article to the consumer.
Counsel placed reliance on Vicco Laboratories Bombay v. Hindustan Rimmer8 and he
relied on other decisions in this regard.9
14. According to learned senior counsel, the visual appeal and presentation of a
product or article is of paramount importance to a customer. In the case of
Tupperware products, the goods sold are known for their uniqueness and novelty, the
world over. The shapes and functional features of the products, were unique; even the
overall get up-including the colour combinations used for each article, have
independent design and trade dress appeal. Emphasizing that the court should be
careful in analyzing the passing off claim, it was submitted that a plain comparison of
the plaintiffs' Tupperware goods and products with that of the Defendants' goods and
articles would bring home the proof that the defendants were copying the plaintiff's
designs; they showed visual similarity and likeness to the plaintiff's Tupperware
goods. Learned counsel relied on Lakshmikant Patel v. Chetanbhai Shah10 where it was
held that:
“8. It is common in the trade and business for a trader or a businessman to
adopt a name and/or mark under which he would carry on his trade or business.
According to Kerly (Law of Trade Marks and Trade Names, 12th Edition, para 16.49),
the name under which a business trades will almost always be a trade mark (or if
the business provides services, a service mark, or both). Independently of questions
of trade or service mark, however, the name of a business (a trading business or
any other) will normally have attached to it a goodwill that the Courts will protect.
An action for passing off will then lie wherever the defendant-company's name, or
its intended name, is calculated to deceive, and so to divert business from the
plaintiff, or to occasion a confusion between the two businesses. If this is not made
out there is no case. The ground is not to be limited to the date of the proceedings;
the Court will have regard to the way in which the business may be carried on in
the future, and to its not being carried on precisely as carried on at the date of the
proceedings. Where there is probability of confusion in business, an injunction will
be granted even though the defendants adopted the name innocently.
10. A person may sell his goods or deliver his services such as in case of a
profession under a trading name or style. With the lapse of time such business or
services associated with a person acquire a reputation or goodwill which becomes a
property which is protected by Courts. A competitor initiating sale of goods or
services in the same name or by imitating that name results in injury to the
business of one who has the property in that name. The law does not permit any
one to carry on his business in such a way as would persuade the customers or
clients in believing that the goods or services belonging to someone else are his or
are associated therewith. It does not matter whether the latter person does so
fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are,
and ought to be, the basic policies in the world of business. Secondly, when a
person adopts or intends to adopt a name in connection with his business or
services which already belongs to someone else it results in confusion and has
propensity of diverting the customers and clients of some one else to himself and
thereby resulting in injury.”
15. It is argued that the impugned judgment is in error in its interpretation and
applicability of SmithKline Beecham Pic v. Hindustan Lever Limited11 . The Single Judge
it is urged, incorrectly relied upon the defendants' representation in one incident
without considering that similarity/confusion in the products is not to be judged by the
claim of the parties but rather by what the products are saying and representing about
themselves. It is urged that what is to be seen is whether the products are similar or
are creating confusion and not what the sales representative informs the customer.
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16. It was submitted that the single judge did not go into the question of passing
off, based on trade dress similarity in the products-though there was sufficient
material on this aspect but on the other hand, brushed it aside, saying that once the
design copyright claim was held to be unsound, the question of shape based
trademark confusion did not arise. It was submitted in this context that the
Trademarks Act recognizes that shapes are capable of protection and are included in
the expression “trade-mark”.12 He relied on the decision of the Bombay High Court in
GorbatschowWodka KG 13 . Counsel highlighted the test indicated by the Court in that
case, which is extracted below:
“The test is whether the shape that has been adopted by the Plaintiff is one that
is adopted capriciously, purely to give the article a distinctive appearance or
characteristic of the goods of the manufacturer. If that be so, the manufacturer may
be able to establish that he has a reputation and goodwill in the distinctive
appearance of the article itself which would furnish a cause of action in passing off.”
17. The appellant/plaintiffs also submit that conscious deception and striking
resemblance in shape, configuration and pattern of the Infringing Products to the
Tupperware Products is evident from a first glance at the infringing products without
going into the minute details of size, capacity, design, material used, colour
combinations, product finish and the logos and trade names. Several cases are cited in
support of the contention that colour combinations, shape and colour etc. are
important source identifiers which cannot be appropriated by a rival trader, without
legal consequences.14
18. On the copyright claim, learned senior counsel argued that the impugned
judgment is in error in holding that since the design claim is unsubstantiated, there
can be no question of an independent copyright in respect of the drawings and
moulds. The decision is in error, in concluding that only if ‘product drawings’ were
intended for manufacture, as against the purpose of keeping the artistic quality of the
said drawings, then such ‘product drawings’ would not qualify as ‘artistic work’ under
Section 2(c)(i) of the Copyright Act,1957. It is contended that the decision in
Samosonite Corporation was wrongly relied on. It is emphasized that the Division
Bench judgment in Micro FibreInc v. Girdhar & Co15 holds that original paintings/works
which may be used to industrially produce the designed article would continue to fall
within the meaning of ‘artistic work’ defined under Section 2(c) of the Copyright Act
and would be entitled to the full period of copyright protection as evident from the
definition of ‘design’ under Section 2(d) of the Designs Act. It is further submitted
that moulds are ‘engravings’ covered within the definition of ‘artistic works’ under
Section 2(c) of the Copyright Act and that under Section 14 (c) of the Copyright Act,
the Appellants have exclusive rights to reproduce the artistic work in any material
form. The impugned judgment erred in not considering that the Appellants copyright
in the ‘moulds’ and in the ‘drawings’ has been infringed by the defendants as they
have, by a reverse process of preparing drawings from the plaintiffs products and
moulds therefrom, infringed copyright twice, once in the ‘drawings’ and again in the
‘moulds’. The Calcutta High Court in Smithkline Beecham Consumer Health Care v.
Eden Cosmetics Ltd held that copyright can be claimed in a ‘mould’ under Section 14
(c) of the Copyright Act 1957.
19. Learned senior counsel faulted the impugned judgment on the ground that Dart
was author and proprietor of the registered designs comprising combination of shape,
pattern and configuration. These vested Dart with copyright in the said designs by
virtue of Section 11 of the Designs Act, 2000 and acquired an exclusive right to apply
and cause to be applied to the Tupperware products the registered design comprising
the features of shape, pattern and configuration etc. which appeal to the eye. These
designs were original and novel and were created with the extensive knowledge,
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search, skill, labour and monies invested over several years by Dart's engineers and
experts. Dart allowed and consented to TIPL's use of the said registered designs on the
Tupperware Products as part of a worldwide arrangement as well as for the Tupperware
Products to be offered for sale in India by TIPL. Unlawful use constituted a piracy of
the registered design under Section 22 of the Designs Act, 2000. The defendants use
of the same designs, are a fraudulent or obvious imitation of Dart's registered designs
to enable sale of the infringing products. The striking similarity between Tupperware
Products and the infringing products results in consumer's confusion evidenced from
the market survey report dated 10.12.2004 submitted by AC Neilsen ORG MARG, an
independent reputed survey organization. The affidavit of the Notary Public who
witnessed the reaction of consumers during a visit by him on 18.11.2004 to the IITF
also records similar observations. It was contended that the single judge's prima facie
opinion that Dart's registered designs were invalid due to lack of novelty or originality
due to their prior publication is erroneous. It was argued that the claim of prior
disclosure of the designs was wrongly accepted by the impugned judgment. They
argued that the defendants' allegation that some of the registered designs are
common to trade were unproved and are mere bald allegations. They disputed the
defendants' plea with reference to the Tupperware catalogues on the ground that
photographs shown in the catalogues do not show designs as a whole and that there
was a lack of depiction of the registered design shape, features, pattern configuration
etc. The visual effect of the picture illustration in the said catalogues does not give the
explicit picture and clear depiction of the application of Dart's registered design on the
article as a whole with the same visual effect as the sample of the product. Reliance on
the publication in the price lists produced by the defendants on the record of the
present case is misplaced and misconceived as the price lists do not relate to the
product but only to a part of the product. For instance, in the case of the registered
design of ‘container crystal wave divided bowl’, the price list referred has mentioned of
the lid/the seal or a completely different product i.e. ‘crystal wave medium’, which is a
different product altogether.
Defendant's contentions
20. Mr. Sushant Singh, learned counsel for the defendants, urged that the
impugned judgment does not call for interference. It was argued that as an appellate
court, in an interlocutory matter, the Division Bench should be extremely circumspect
in interfering with the prima facie decision of the single judge : reliance was placed on
Wander limited v. Antox India (Pvt.) Limited16 and Mohd. Mehtab Khan v. Khushuma
Ibrahim17 . It was argued that the impugned decision was based on a detailed analysis
and appreciation of the facts; this court should not subject the materials appraised by
the single judge as though the present proceeding were a regular appellate review of a
final judgment. In the absence of a glaring prejudice to the appellant, on the basis of
an important omission to take into account a material circumstance, the court should
exercise restraint.
21. On the merits, learned counsel submitted that 13 designs asserted in the plaint
are relating to the articles like Bowls, Casseroles, Lunch Boxes, etc., which on the face
of them are commonly placed and lack novelty and originality within the meaning of
Designs Act. The learned Single Judge analyzed features of each of these respective
articles and came to the conclusion that all 13 designs were “pre-published” in nature
and were trade variants of known designs. Counsel invited attention of the Court to
the article-wise comparison of prepublication made by learned Single Judge in para 27
of the impugned judgment. It was submitted that having regard to the limited
parameter for appellate intervention the single judge's decision should not be upset.
Counsel submitted that mere registration or the fact that the appellant asserted that
its products were unique or novel did not necessarily mean that they indeed were. The
designs claimed to be unique or novel, were fairly commonplace; the incorporation of
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some features such as lines etc. did not per se mean that they became unique or
design protectable.
22. It was submitted that no fault can be found with the single judge's opinion that
design protection refusal meant facially that some other vague and unarticulated
trademark right could be successfully asserted. In this context it was submitted that
though the decision in Microlubes is an authority for the proposition that the lapse of
design protection (at the end of the period prescribed for the duration of design
registration) did not preclude existence of right to protect trade dress, through an
action for passing off, there had to be strong grounds to claim that relief. Likewise,
counsel submitted that Laxmikant Patel was in the context of trade dress in respect of
label, packaging and get up. In the present case, the shape of the product having
been held to be not unique or novel cannot claim to be distinctive, which is the basis
for a passing off action. Learned counsel particularly relied on the following
observations of the single judge:
“Thus, as per this statement of the plaintiff, the defendants were not passing off
their goods as that of Tupperware Products. The representation was that though
they were of the same type as Tupperware but sold cheap. The very fact that they
were representing that they were at half the price of the Tupperware Products
means that the defendants were making it clear that though the products were not
Tupperware Products but they were equally good and were sold at half the price of
Tupperware Products. It is also interesting to note that the plaintiffs themselves say
that the comparison of the two products through their experts have revealed that
the goods of the defendants are not as good in quality as that of the plaintiffs.
Therefore, the defendants were, at the most, puffing up their product by alleging
that they are of the same quality as Tupperware Products and selling at half the
rates. Thus, they have not created or tried to create any confusion but have clearly
told that they are selling their own product which is represented to be as good as
that of plaintiffs products. The question of passing off, Therefore, would not arise.
The latin maxim “Caveat Emptor” meaning let the buyer beware would, Therefore
apply. It was not the case of the plaintiff nor could it be that the trade name of the
two products have no commonality as the plaintiffs' products are sold under the
trade name of ‘Tupperware’, whereas the defendants' trade name is ‘Signoraware’.”
23. Lastly, learned counsel relied on the judgment of the UK Chancery Division in
Société des Produits Nestlé S.A. v. Cadbury UK18 for the submission that to protect any
claim for distinctive shape of a mark, the applicant must prove that a significant
proportion of the relevant class of persons regards the trade mark (as opposed to any
other trade mark which may also be present) as indicating the origin of the goods.
24. As to the submission that the impugned designs violated the copyright in the
drawings, learned counsel stressed on Section 15(2) of the Copyright Act to say that
no copyright can subsist in any registered design. Since the plaintiffs were design
proprietors in respect of the product, the question of separate copyrights in either the
product or the drawings could not prima facie arise. It was urged that though the
Division bench ruling in Microfibres (supra) segregates the independent copyright in
works of art, it cannot be asserted that copyright can subsist in drawings of purely
functional day to day articles, unless they have inherent or minimum creativity.
Counsel stressed that the drawings relating to glasses, bowls, etc. with some lines
added, per se are incapable of copyright protection and the plaintiff's argument that
such drawings are artistic works (under Section 2 (c) of the Copyright Act) are
insubstantial.
Analysis and Conclusions
25. This Court would first focus on the design claim of the plaintiff, before moving
on to the other two aspects. The onus to show that the designs were unoriginal in
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terms of Section 2(g) of the Designs Act as they were in public domain was on the
defendants. To decide this, it is essential to see if there was a prior publication of the
designs over which the plaintiffs claimed exclusivity. In this context, the single judge
noted that the expression.
“publication” was not defined in the Act. The Court noted Rosedale Associated
Manufacturers Ltd. v. Airfix Ltd.19 , where the Court of Appeals had relied on its
previous ruling in Hills v. Evans20 that ‘The antecedent statement must, in order to
invalidate the subsequent patent, be such that a person of ordinary knowledge of
the subject would at once perceive and understand and be able practically to apply
the discovery without the necessity of making further experiments.’ The Court of
appeals then stated that:
“if a document is to constitute prior publication, then a reader of it, possessed
ordinary knowledge of the subject, must from his reading of the document be
able, at least, to see the design in his mind's eye and should not have to depend
on his own originality to construct the design from the ideas which the document
may put into his head….”
26. The single judge clarified that “a person with ordinary prudence while seeing
the designs/documents in question is able to relate, in his mind's eye, the same
antecedents designs/statements without the necessity of making further experiments
i.e. the moment he sees the design, he is able to at once say ‘Oh! I have seen before’.
Reliance was also placed on Gopal Glass Works Limited v. Assistant Controller of
Patents and Designs21 , where Calcutta High Court stated that in undermining the
novelty of a design registration, prior disclosure must be of the pattern, shape and/or
configuration applied to the same article. That High Court's observations about
publication are as follows:
“When the novelty of an article is tested against a prior published document, the
main factor required to be adjudged is the visual effect and the appeal of the
picture illustration….If the visual effect of the pattern, the shape or the combination
of the pattern, shape, dimension, colour scheme, if any, are not clear from the
picture illustrations, the novelty cannot be said to have been destroyed by prior
publication, unless there are clear and unmistakable directions to make an article
which is the same or similar enough to the impugned design.”
27. The impugned judgment relied on Paras 3.89, 3.92, 3.93, 3.96, 3.121,3.147
and 3.181 Russell-Clarke on Industrial Designs (Sixth Edition). It was then noticed
that novelty and originality was the bedrock of design protection law and that if the
alleged infringer was able to show lack of novelty due to existence of the same design
prior to its claim by the plaintiff, the action had to fail. Niky Tasha India Pvt. Ltd. v.
Faridabad Gas Cadgets Pvt. Ltd.22 , which ruled that registration was “only a prima
facie evidence” of proprietorship, was relied on.
28. The prima facie lack of novelty in respect of design registration for which the
design infringement was alleged and materials published prior to the novelty claim,
have been set out and described in great factual detail in Paras 26-27 of the impugned
judgment.
29. The painstaking factual analysis thus undertaken by the single judge-both with
respect to what in law constitutes prior publication and the application of the law to
the given facts of the case, by a comparison of the several designs that are the subject
matter of the disputes, in this court's opinion leaves no doubt as to the soundness of
the conclusion that prima facie, the designs in respect of which temporary injunction
was claimed, were part of the public domain over which protection could not be
claimed. Wander (supra) and Mohd. Mehtab Khan (supra) are categorical that unless
the interlocutory appellate court discerns serious infirmity in the reasoning of the court
of first instance or trial court, interference in interim orders is uncalled for. As a result,
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this court holds that there is no scope for holding that the conclusions recorded- prima
facie as to the lack of novelty of the designs is erroneous.
30. On copyright infringement the impugned judgment noted that the plaintiffs
claimed copyright in the product in question on the ground that the designs which are
created involve, inter alia, the making of ‘product drawings’ based on which the
‘mould drawings’ are made and ultimately the engravings in the form of ‘moulds’ is
built by Dart, all of which are the ‘artistic works’ created by the experts during the
course of their employment with Dart. The manufacture of each final product
commences from the conceptualization of the idea for a design followed by a tedious
and lengthy process involving extensive research and application of labour, skill and
judgment of the experts employed by Dart, which had relied on an expert's affidavit
describing the process of conceptualization and creation of the designs. This, according
to Dart, showed that the drawings were its ‘artistic works’ under the proviso of Section
2(c)(i) of the Copyright Act, 1957. Since these works were created during the course
of the employment with Dart, by reason of Section 17 of the said Act, Dart became
copyright owner of the artistic works. The plaintiffs relied on Sections 13 and 14 of the
Copyright Act; they are entitled to bundle of exclusive right including the right to
reproduce the artistic work i.e. the product drawing in any material form including
depiction in three dimensions of a two dimensional work or in two dimension of a three
dimensional work as well as to make any adaptation of the artistic work. It is also the
case of the plaintiffs that the product drawings and mould drawings created by Dart
determine the size and shape of the parts of the mould such that each part of the
mould performs its function smoothly so as to arrive at the end product as designed.
The plaintiffs argued that the defendants' products are an obvious imitation of the
Tupperware Products and there is a material and sufficient degree of objective
similarity amounting to deceptive similarity between the two products. Therefore, the
defendants have, by manufacturing infringing products, produced ‘infringing copies’ as
defined under Section 2(m) of the Copyright Act, 1957. The infringement is possible
by use of computer techniques possibly by 2D or 3D scanning, along with other
inspection and measurement tools followed by use of such assimilated designs to
ultimately reproduce the assimilated designs in a tangible and finished form i.e. the
infringing products.
31. The defendants firstly urged that the plaintiffs have themselves given up their
claim pertaining to use of colour or colour combination as appearing in the design
while obtaining the registration of the designs under the Design Act. They also stated
that question of claiming the said colour and colour combination by virtue of Copyright
Act is, impermissible under the law and the case of alleged infringement of copyright
under Section 45 of the Act is not maintainable. The defendants argued that the
copyright claimed by the plaintiffs ceased to exist under Section 15 of the Copyright
Act. Samsonite Corporation v. Vijay Sales23 was relied on for purpose. It was urged
that the drawings in question were prepared by the plaintiffs for the purpose of
creating designs for the products to be launched, as alleged in the suit. Description of
various processes - from conceptualization of idea, creation of drawings, and moulds,
leading to the manufacture of the product was for the purpose of product creation.
32. The single judge had relied on Samsonite Corporation v. Vijay Sales (supra)
that unless the plaintiff pleads that the drawings were not for the purpose of
manufacture but the drawings were made for keeping the artistic quality of the
drawings there cannot be a copyright infringement claim for a design protected article
and its underlying drawings. The court held that the claim of copyright in the
industrial drawings and designs, which were being used for manufacturing purposes,
is not maintainable. Prima facie, the single judge held that that once drawings were
made for creating the ultimate product design, the copyright in the said drawings
cannot be claimed under the Copyright Act. It was observed that Section 15 of the
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Copyright Act provides that once a design is registered under the Designs Act,
copyright therein shall not subsist. Such a copyright in any design ceases even when
any article to which the design has been applied has been reproduced more than 50
times by an industrial process by the owner of the copyright. The underlying message
is that the Designs Act governs copyright in an industrial design. If a design is
registered under that Act it is not entitled for protection under the Copyright Act.
Warner Brothers v. Roadrunner24 was cited and relied on.
33. The term “artistic work” has been defined expansively in the Copyright Act.
Section 15(2) of the said Act does not apply to artistic works because of the definition
of “design” (Section 2(d) of the Designs Act) which states that “design” means only
the features of shape, configuration, pattern, ornament or composition of lines or
colours applied to any article whether in two dimensional or three dimensional or in
both forms, by any industrial process or means…. and does not include any trade 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 Penal
Code, 1860 or any artistic work as defined in clause (c) of section 2 of the Copyright
Act, 1957 (14 of 1957).” However, this ipso facto does not lead the court to agree with
the plaintiff's contention. The language of Section 15 of the Copyright Act makes it
clear that copyright does not subsist in a registered design. The rationale for this is
that someone's choice of design registration is a conscious decision to use the
underlying work, for mass production. The design then reaches, through the medium
of the product or the article, a wider audience; it has a commercial element. This is of
course possible in the cases of designs of products and articles that are sold widely or
have a market. Such is not the case with an artistic work-typically a painting a
drawing or even a sculpture for instance (which are closest species of copyrights that
overlap with designs). Yet the transformation of a work of art into a design results in
the possibility of its protection as a design. Section 15(1) dictates that if this kind of
work is registered as a design, there is no copyright protection. Section 15(2) on the
other hand, says that if a work is capable of design registration, and is not registered,
but replicated as a product or article through a design more than 50 times through
mechanical process, copyright in that work ceases. This dimension renders the issue
complex, because works of art, primarily so, which are also capable of design
registration or have been registered as design, would lose even copyright protection,
thus undermining creativity and the efficacy of copyright protection itself. This paradox
- and the strain in enunciating a satisfactory concord between these two disparate
threads of thinking was noticed long ago, in King Features Syndicate Incorporated and
Frank Cecil Betts, the Personal representative of Elzie Chrisler Segar, Deceased v. O &
M Kleeman Ld.25 In that case, the anthropomorphic cartoon strip character “Popeye the
Sailor” used in comics and later in films, was reproduced in the form of toys and
brooches. The author, did not industrialize the cartoon character, but later, due to its
popularity, he licensed some manufacturers to produce articles in the toys, brooches,
etc. The House of Lords drew a distinction between copyright under the Copyright Act
on the one hand, and “design copyright” under the relevant Designs law. The Court
concluded that such design rights are separate and their extinction did not result in
cessation of copyright in the work (i.e., the cartoon character in question). It was held
that:
“……The statutory definition of design now in force is found in Section 19 of the
Patents and Designs Act,1919, which replaces that given in Section 93 of the
Patents and Designs Act, 1907. The operative definition so far as here material
is:“‘Design’ means only the ‘’features of shape, configuration, pattern, or ornament
applied to any article ‘’by any industrial process or means whether manual,
mechanical, or chemical, “separate or combined, which in the finished article appeal
to and are judged “solely by the eye”. Thus design involves certain elements : there
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must be features of shape, configuration, pattern, or ornament and these must be

applied (or intended to be applied in the words of Section 22 of the Copyright Act)
to any article by way of industrial means or process. Section 22 emphasises the
same aspects. Designs to which the section is to apply are those used or intended
to be used as models or patterns to be multiplied by any industrial process. Thus a
design may be the shape of a coal scuttle, a basin, a motor car, a locomotive engine
or any material object, it may be the shape embodied in a sculptured or plastic
figure, which is to serve as a model for commercial production, or it may be a
drawing in the flat of a complex pattern, intended to be used for the manufacture of
things such as linoleum or wall paper. Design copyright is thus to be distinguished
from artistic copyright.”
34. The Supreme Court succinctly set out the object of the Designs Act and
Parliamentary intention in affording protection to designs, in Bharat Glass Tube v.
Gopal Glass Works Ltd26 . The Court held as follows:
“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.”
35. The Division Bench ruling in in Microfibres27 (supra) where the Division Bench
observed as follows:
“23. There is, therefore, 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 section 2(c) of the Copyright act, 1957.
************ ***********
27. Under the Designs Act, a copyright has a different connotation from a
copyright under the Copyright Act. Under the Designs Act, copyright means the
exclusive right to apply the design to any article in any class in which the design is
registered.
28. The issue with regard to the extent of, and the conditions for the copyright
protection to such an artistic work, as an artistic work under the Copyright Act,
which is a design registered or capable of registration under the Designs Act, is
what is dealt with, by section 15 of the Copyright Act. Once the distinction between
the original artistic work and the design derived from it, and the distinction
between Copyright in an original artistic work under the Copyright Act, and a
copyright in a design under the Designs Act is appreciated, the meaning and
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purport of section 15 of the Copyright Act becomes clear.

29. 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.
30. Subsection (2) of section 15 deals with the situation where the design, which
is capable of being registered under the Designs Act, is not so registered. It
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. It is clear to us that 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 shall
we say commercial, exploitation of the original artistic work by the
application/reproduction of the said work in any other form or reproduction of copies
thereof in exercise of the rights under Section 14(c)(1) and 14(c)(iii) of the
Copyright Act. Beyond the specified limit, if the design derived from the original
artistic work is exploited (i.e. if the design is applied more than 50 times by an
industrial process on an article) the copyright in the design ceases unless it is
registered under the Designs Act…
**************** ********************
We do hold that in the original work of art, copyright would exist and the
author/holder would continue enjoying the longer protection granted under the
Copyright Act in respect of the original artistic work. Thus, for instance a famous
painting will continue to enjoy the protection available to an artistic work under the
Copyright Act. A design created from such a painting for the purpose of industrial
application on an article so as to produce an article which has features of shape, or
configuration or pattern or ornament or composition of lines or colours and which
appeals to the eye would also be entitled design protection in terms of the
provisions of the Designs Act. Therefore, if the design is registered under the
Designs Act, the Design would lose its copyright protection under the Copyright Act
but not the original painting. 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, in
our view, would harmonize the Copyright and the Designs Act in accordance with
the legislative intent.
46. We thus summarize our findings as follows : -
a. The definition of ‘artistic work’ has a very wide connotation as it is not
circumscribed by any limitation of the work possessing any artistic quality.
Even an abstract work, such as a few lines or curves arbitrarily drawn would
qualify as an artistic work. It may be two dimensional or three dimensional.
The artistic work may or may not have visual appeal.
b. The rights to which a holder of an original artistic work is entitled are
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enumerated in Section 14(c) 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 Copyright Act and the Designs Act and indeed the Preamble
and the Statement of Objects and Reasons of the Designs Act makes it clear
that the legislative intent was to grant a higher protection to pure original
artistic works such as paintings, sculptures etc. and lesser protection to
design activity which is commercial in nature. The legislative intent is, thus,
clear 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 Section 2(c) of the Copyright Act, 1957 and would be
entitled to the full period of copyright protection as evident from the definition
of the design under Section 2(d) of the Designs Act. However, the intention of
producing the artistic work is not relevant. g. This is precisely why the
legislature not only limited the protection by mandating that the copyright
shall cease under the Copyright Act in a registered design but in addition, also
deprived copyright protection to designs capable of being registered under the
Designs Act, but not so registered, as soon as the concerned design had been
applied more than 50 times by industrial process by the owner of the
copyright or his licensee. h. In the original work of art, copyright would exist
and the author/holder would continue enjoying the longer protection granted
under the Copyright Act in respect of the original artistic work per se.
i. If the design is registered under the Designs Act, the Design would lose its
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.”
36. Therefore, unless a work of art is capable of design protection and has been
registered as a design, or should have been registered as a design, the copyright in
the underlying artistic work subsists independently of design rights. In this case, the
work is protected as a design; the averments in the suit are that design registration
subsists in respect of the products which the defendants are alleged to have infringed.
In the circumstances, the question of asserting a copyright infringement claim,
independently, when the design protection subsists, but infringement has not been
prima facie established, cannot arise at all. Nevertheless, this court would proceed that
arguendo, such claims would need to be examined at this stage.
37. For copyright protection (since the plaintiff asserts that the drawings of the
products, i.e., bowls, etc) are “artistic works” the essential prerequisite for protection,
should be “original” under the Act. The content of what is “original” has undergone
considerable change from the previously applicable “sweat of the brow’ doctrine spelt
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out in University of London Press (supra) to the “modicum of creativity” standard put
forth in Fiest Publication Inc. v. Rural Telephone Service28 . The Supreme Court has also
signified a shift in Eastern Book Company v. D.B. Modak29 following the Canadian
Supreme Court's judgment in CCH Canadian Ltd. v. Law Society of Upper Canada30 , it
rejected the sweat of the brow doctrine, (which conferred copyright on works merely
because time, energy, skill and labour was expended, that is, originality of skill and
labour), and held that the work must be original “in the sense that by virtue of
selection, coordination or arrangement of pre-existing data contained in the work, a
work somewhat different in character is produced by the author”. The Supreme Court
noticed that the two positions i.e. the sweat of the brow on the one hand, and
“modicum of creativity” were extreme; it preferred a higher threshold than the
doctrine of “sweat of the brow” yet, not as high as “modicum of creativity”. Therefore
in India too, the law has recognized the shift, and mandates that not every effort or
industry, or expending of skill, results in copyrightable work, but only those which
create works that are somewhat different in character, involve some intellectual effort,
and involve a certain degree of creativity. This standard of originality is now applicable
in respect of the plaintiffs' claim to copyright of its drawings. There are further
limitations in the law of copyright such as the idea expression merger. By this, Courts
have refused to protect (through copyright) the expression of an idea, which can be
expressed only in a very limited manner, because doing so would confer monopoly on
the ides itself. The decision in Herbert Rosenthal Jewelry Corporation v. Kalpakian31 is
illustrative in this regard. The plaintiffs there sued the defendants asking them to
refrain from manufacturing bee shaped jewel pins. The Court held that the bee shaped
jewel pin was an idea that anyone was free to copy, the expression of which could be
possible only in a few ways; therefore, no copyright could subsist in it.
38. In the present case, the copyright protection (and infringement) claim is
premised on a bare assertion that the drawings (from which the moulds are made) are
artistic works, because considerable amount of money was spent on the making of
such molds. Though the court cannot comment on the veracity of such claim, at least
the decision in Modak (supra) now binds it to examine every copyright claim closely,
to see whether there is some minimum creativity. Now, the plaint nowhere discloses
that the drawings (i.e. the artistic works here) have any inherent capability of art : it
is evident that these drawings are of commonplace every day articles used in
households. The idea expression doctrine, itself would prima facie prevent copyright
protection because the depiction of daily articles cannot per se be “enclosed” to create
a monopoly where the legitimate monopoly (design right) which the plaintiffs could
have claimed, has not been prima facie established by them. For these reasons, it is
held that the single judge's reasoning as to the lack of prima facie strength in the
copyright infringement claim, cannot warrant interference.
39. On the issue of passing off action the plaintiffs had argued that the new and
original designs of their Tupperware Products, had become extremely popular in the
Indian market as well as in other countries worldwide and acquired tremendous
goodwill and reputation. Sales of those products, the amount spent on research and
development etc. and various awards those products had taken was the basis that the
plaintiffs' products are well known and have acquired household popularity because of
their quality, technical and functional superiority. The defendants' household plastic
containers i.e., the infringing products were advertised as ‘Microwavable Crockery’
made from food grade plastic material meant to be sold to the same class of
consumers as Tupperware Products. The plaintiffs argued that the defendants infringed
the design and copyright of the plaintiffs by manufacturing and selling infringing
products which have a striking resemblance in shape, configuration and pattern of the
Tupperware Products. The infringing products, i.e., household goods are being
targeted to be sold to the same set of consumers as of the Tupperware Products. The
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plaintiffs relied on the applicability of the test of impression of an unwary customer,

who would be misled into purchasing the infringing product, believing it to be that of
the plaintiffs. The application of designs identical or similar to the Tupperware Product
designs by the defendants to the infringing products is clearly creating and is likely to
further create confusion and misconception in the minds of the customers leading
them to believe that the infringing products of the defendants are the products
emanating from TIPL while in fact it is not so. It was alleged that the defendants have
adopted the registered designs of the plaintiffs and applied them to its products to
encash the reputation and goodwill enjoyed by the plaintiffs and its products that is
Tupperware Products manufactured with the registered designs.
40. The identity in trade dress and get up was highlighted in this regard, vis-à-vis
the following features:
i) similar designs of the infringing products namely the “4-in-1 Multipurpose
Container, the “Atta and Chapati Bowl”, “Multipurpose Containers”, “Tumbler”
and “Slim Lunch Box” and the “Donga” have similar colour combination and
identical colour shape, configuration and design.
ii) The infringing product “Snack and Spare Box” being identical in design to the
Tupperware product namely “Freezer mate” (700 ml) was also illustrative of the
passing off by the defendants inasmuch as the fountain shaped symbol shown on
the sidewall and bottom of the Tupperware Product to indicate its use in
refrigerator and its utility in the Freezer has been copied and placed at the same
place in the infringing product which probably cannot be used in the refrigerator.
iii) Another infringing product namely “4-in-1 Multipurpose Container” and the “Atta
and Chapati Bowl” are not only an obvious imitation of the design of the
Tupperware Product namely “Crystalwave Divided Bowl” but also have the
identical colour combination and even the written instructions on the lid as also
the placement of the written instructions and the languages in which this written
instructions which are given are identical.
iv) In the case of two of the infringing products namely “Executive Lunch” and
“Classic Lunch Box”, the defendants have not only made an obvious imitation of
the registered designs of the corresponding Tupperware Products but have even
used names matching those given to the identical Tupperware Products.
Moreover the defendants are actively trying to cash on the goodwill and
reputation of the plaintiffs by imitating and/or advertising the design of
“Executive Lunch” carry bag recently introduced in the market by the plaintiff
which product of the defendants is identical in colour combination to the
plaintiffs' product and was found being sold by the defendants at the Trade Fair
held in November, 2004. The brochure picked up from the India International
Trade Fair shows a new design of the bag of the “Executive Lunch” which is
identical in design, colour combination of green and black coloured check, shape
and placement of the trade name, material and other configuration used in the
bag recently launched by plaintiffs. The time lag between the launch of the
infringing product and the Tupperware Product, being short, is helping the
defendants in being successful in passing off the infringing products as
Tupperware Product to take advantage of the reputation and goodwill acquired by
the Tupperware Products. Such a practice is indicative of the intention of the
defendants to not only make material and substantial imitation of the design of
Tupperware Products but also an attempt to pass off the infringing products as
Tupperware Products.
v) Apart from the overall shape of the infringing products being identical to the
shape of the Tupperware Products, one of the infringing products namely “Crazy
Bowl” is identical in shape to the state of the art Tupperware Product namely
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“Serving Bowl” along with “Seal for Bowl” brought to India only for the purposes
of being used as an incentive/promotional product and initially not yet sale but
intended to be launched for sale in India in the near future. It is submitted that
the design of the said product duly registered by plaintiff No. 1 in India is the
state of art design using special moulding techniques and machinery to
manufacture the said product. Though the plaintiff No. 2 has only distributed the
said product as a promotional item to its sales force and has not yet launched
the said product for sale in India, the defendants appeared to have obtained the
said product either from a member of the sales force of plaintiff No. 2 or the
defendants may have purchased the said product abroad. In the case of the said
product the defendants appeared to have not only imitated the said product but
have also infringed the copyright in the design. Moreover, the launch by the
defendants of the said product in the Indian market after the date of its design
registration in favor of the plaintiff No. 1 but prior to the launch of the
Tupperware Product in India is also indicative of the defendants actively trying to
cash on the goodwill and reputation of the plaintiffs by imitating the design of
the “Serving Bowl” sold subsequently in the Indian market. Similar is the case
where the defendants have advertised the design of “Executive Lunch.”
41. The plaintiffs had argued that the single judge's rejection of this claim is not
correct and cited the decision in Microlube India Limited v. Rakesh Kumar32 .The
defendants argued that there is no question of any confusion or deceptive similarity
inasmuch as products of the plaintiffs and defendants are sold under totally different
trade mark/name namely ‘Tupperware’ and ‘Signoraware’ respectively. It is also
submitted that neither the plaintiff has alleged in the plaint about the trademark of
the defendants nor any relief is claimed against the trademark ‘Signoraware’. There is
no common law right of passing off provided under the Designs Act.
42. The plaintiffs assertion of the right to sue for passing off as an independent
claim under the common Law not dependent upon the Designs Act was held to be
correct:“This submission of the plaintiff appears to be correct. The common law right
of passing off is distinct and is available dehors the Designs Act. This was so held by a
Single Bench of this Court in the case of Smithkline Beecham Plc. v. Hindustan Lever
Limited 2000 PTC 83”. The single judge, however, rejected the passing off claim, in
the following terms:
“50. No doubt, it is also alleged that the representative of the plaintiff noticed
that women who were visiting the said stall were getting confused as to whether
the products on display were the products of Tupperware products or nor or whether
the said products were an imitation of Tupperware Products. However, in the
aforesaid quoted portion, the plaintiff admits that the salesman was asserting that
their products, namely Signoraware Products though were look alike Tupperware
Products, were being sold at half the price of Tupperware Products. Thus, the
representation held out by the defendant was not that the goods were Tupperware
Products. On the contrary, representation was that they were the products of
different manufacturer namely the Signoraware Products and were being sold at
half the price of Tupperware Products though they were look alike of Tupperware
Products. Thus, as per this statement of the plaintiff, the defendants were not
passing off their goods as that of Tupperware Products. The representation was that
though they were of the same type as Tupperware but sold cheap. The very fact
that they were representing that they were at half the price of the Tupperware
Products means that the defendants were making it clear that though the products
were not Tupperware Products but they were equally good and were sold at half the
price of Tupperware Products. It is also interesting to note that the plaintiffs
themselves say that the comparison of the two products through their experts have
revealed that the goods of the defendants are not as good in quality as that of the
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plaintiffs. Therefore, the defendants were, at the most, puffing up their product by
alleging that they are of the same quality as Tupperware Products and selling at
half the rates…. ************ ***********
51. There would be another interesting question for determination if the design is
no more protected under the Designs Act and is now in public domain, whether
passing off action would be maintainable. In view of such question and coupled with
the fact that there are certain aspects which will have to be settled through
evidence, it may not be a case of injunction.
52. It is not only this reason which persuades me to take this view. The
defendants are not a fly by night company. In the plaint, the plaintiff has itself
stated that they are manufacturing the products at large scale and selling the same
through various retail outlets in Punjab and Haryana and other parts of the country.
The defendant No. 1 has three storied factory building measuring approximately
800 sq. yards at Hissar Road, Ambala City, with large number of workers who are
working in multiple shifts. Likewise, the defendant No. 6 is also having another
factory. It is also stated that the factory of the defendant No. 6 was established in
the year 1981. This is not a fit case for grant of ad-interim injunction at
interlocutory stage.”
43. This court finds considerable merit in the approach of the single judge.
Undoubtedly, the Full Bench, in its majority ruling in Microlubes declared that
regardless of subsistence of design right - or its exhaustion, a passing off action can
lie, in given cases. In so concluding, the court did take into account changes to the
Trademark Act, which now extend trademark registration protection even to shapes.
However, what is essential in such cases is not merely the existence of the remedy of
infringement (of a trademark through a permanent or temporary injunction) or the
remedy against passing off, but the proof of essential elements that are necessary.
The plaintiff must plead and prove the distinctiveness of the mark. In the present
case, the distinctiveness averred in the suit relates to the mark “Tupperware”. There is
no assertion-except a general and vague assertion with respect to passing off of trade
dress-as to how the shape mark which the plaintiffs seek protection of are distinctive
for trademark purposes.
44. In the context of passing off, undoubtedly trade dress and the get up of the
packaging, presentation of the product through label, etc. constitute essential
components of the goodwill and reputation of a commercial enterprise (Ref. Laxmikant
Patel). William Grant & Sons Ltd. v. McDowell & Co Ltd33 also supports such a
proposition. Yet, for seeking even prima facie protection in the nature of interim
injunction there should be material disclosing that the general public associates the
shape in question (which is asserted by the plaintiff as their distinctive mark or get
up) only with the plaintiff. Whilst in the case of trade dress in the form of label or
mark, distinctiveness is easily discernable, in the case of shape based trade dress, the
plaintiff has to necessarily show that the get up of the product or article (over which
certain exclusivity or distinctiveness is claimed) has an integral association only with
it. Unless this requirement is pleaded and established, (and for interim injunction
purposes, at least prima facie) every product with a commonplace shape would “ride”
on the reputation of an exclusive trademark, based on a distinctive name, label or
color combination of the packaging or label, etc. In this case, the distinctiveness of the
shape of the product-asserted to be unique or solely associated with the plaintiff has
not been so pleaded and established.
45. As a result of the above discussion, it is held that there is no infirmity with the
conclusions of the learned single judge on all aspects relating to the absence of prima
facie strength of its case in relation to design protection, copyright infringement and
passing off. The appeal fails and is therefore dismissed without any order on costs.
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———
1 Rosedale Associated Manufacturers Ltd. v. Airfix Ltd., Hills v. Evans 1862 LJ (Ch) 457; Gopal Glass Works
Limited v. Assistant Controller of Patents and Designs and 12006 (33) PTC 434 were relied on and cited by the
Single judge to determine what kind of publication was necessary to undermine novelty. The Single judge relied
on Gopal Glass where it was stated that:

“When the novelty of an article is tested against a prior published document, the main factor required to be
adjudged is the visual effect and the appeal of the picture illustration….If the visual effect of the pattern, the
shape or the combination of the pattern, shape, dimension, colourscheme, if any, are not clear from the
picture illustrations, the novelty cannot be said to have been destroyed by prior publication, unless there are
clear and unmistakable directions to make an article which is the same or similar enough to the impugned
design.”
2 1986 PTC 50,
3
AIR 1981 Delhi 95
4 1998 (18) PTC 372
5
128 (2006) DLT 238
6
2002 (25) PTC 327 (Del.)
7 1988 FSR 292
8 AIR 1979 Del 114
9
Castrol Ltd. v. O. MuraliDhar Reddy2001 (21) PTC 134 (Mad); Anglo Dutch Paint, Colour and Varnish Works v.
India Trading House AIR 1977 Del 41; Richardson Vicks Inc v. Medico Laboratories 1985 (5) PTC 167 (Del);
10 (2002) 3 SCC 65
11 2000 PTC 83
12
Under the Trade Marks Act 1999, the shape of goods is now statutorily recognized as being a constituent
element of a trademark. Section 2(zb) of the Trade Marks Act, 1999, define the expression “trademark” to mean
“a mark capable of being represented graphically and which is capable of distinguishing the goods or services of
one person from those of others” and to include “shape of goods, their packaging and combination of colours”.
13 2011 (4) BCR 1
14 Vicco Laboratories Bombay v. Hindustan Rimmer, Delhi - AIR 1979 Del 114;
15
2009 (40) PTC 519 (Del)
16 1990 Supp SCC 727
17 (2013) 9 SCC 221
18
[2014] FSR 28 (Ch)
19 1957 RPC 239
20
1862 LJ (Ch) 457
21
2006 (33) PTC 434
22 AIR 1985 Del 136
23 1998 (18) PTC 372
24
1988 FSR 292
25 1941 (48) RPC 207
26
AIR 2008 SC 2520
27
Microfibres v. Girdhar2009 (4) PTC 519
28 (1991) 199 US 340
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29 (2008) 1 SCC 1
30
2004 SCC 13
31 (1971) 446 F2d 738
32
2013 (55) PTC 61
33
1994 FSR 690 (Del)
Disclaimer: While every effort is made to avoid any mistake or omission, this casenote/ headnote/ judgment/ act/ rule/ regulation/ circular/
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2012 SCC OnLine Del 1152 : (2012) 129 DRJ 105 (DB) : (2013) 54 PTC 386 (DB) :
(2012) 50 PTC 14

High Court of Delhi

BEFORE A.K. SIKRI, A.C.J. AND RAJIV SAHAI ENDLAW, J.

Kiran Shoes Manufacturers … Appellant;

Versus
Registrar of Copyrights & Anr. … Respondents.
RFA 750 of 2010
Decided on February 24, 2012
Copyright Act, 1957
Section 15 — Designs Act, 2000 — Design registered under Designs Act in the year 1999 —
Copyright obtained for the design ‘Side trim’ in the year 2000 — If a design is registered under
the Designs Act, it loses its protection under copyright Act — Order of expunction of design from
the register of copyright, affirmed.

Page: 106

Cases Referred:

Bharat Glass Tube Limited v. Gopal Glass (2008) 10 SCC 657

Works Ltd.

Microfibres Inc. v. Girdhar and Co. 2009 (40) PTC 519

Pugh v. Riely Cycle Co Ltd. (1912) 29 R.P.C. 196

PRESENT:
Mr. C.M. Lall, Advocate with Mr. Navel Kastia, Mr. Pranay Sarkar and Ms. Ekta Sarin,
Advocates for Appellant.
Mr. N.K. Kantawala, Advocate for R. 2.
1. Very brief yet crisp order dated 30th June, 2010 passed by the Copyright Board on
an application preferred by the respondent no. 2 herein under Section 50 of the Copyright
Act, 1957 is the subject matter of the present appeal. The respondent no. 2 had filed the
said application for expunction of registration number A-62685/02 granted by the
Registrar in favour of the appellant herein. Before we take note of the basis on which
expunction of the registration was sought, it would be apposite to find out what this
registration is about. The appellant which is a registered partnership firm with its office in
Kathmandu, Nepal claims that it is a well established and renowned firm engaged in the
business of manufacturing and marketing of sports shoes and footwear since 1990. It also
boost about the excellent quality of its product which has demand in Nepal as well as in
India. The goods are manufactured and marketed under the-trade mark “GOLD STAR
along with the side trim device which is a part of their trade mark label applied to the
footwear. The appellant also claims that it has spent considerable time and money to
establish the aforesaid trade mark.
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2. The side trim device of the sport shoes which is a part of the trade mark as well, is
said to be the artistic work which was designed by one Shri Mukti Chakraborty for the
appellant firm who assigned all rights therein to the appellant. Treating it to be an artistic
work, the appellant applied for and was granted copyright therein namely side trim of its
sport shoe for “GOLD STAR” in India vide Registration No. A-62685/2002 dated 11th
October, 2002. The respondent herein felt aggrieved by the said registration and thus filed
application under Section 50 of the Copyright Act for expunction thereof which, as stated
above has been allowed by the Copyright Board, directing the Registrar to expunge the
said entry from the Register. The order of the Board discloses that the expunction was
sought on the following grounds:—
(a) Violation of rule 16(3) of the Copyright Rules, 1958 since respondent was aware of
the petitioners interest in the impugned work. Petitioner had opposed the application
for registration of trade mark for the same mark Gold Star before the Registrar of
Trade Marks;
(b) disentitlement under section 15 of the Copyright Act, 1957 since respondent has
got registered the mark under the Design Act as design under registration number
178564 dated 27.1.1999;

Page: 107

(c) respondent had been using the mark as licensee of the petitioner. Thus the ownership
of the work belongs to the petitioner.

3. While allowing the application, the entire reasoning is given in one para which reads
as under:—
“4. It is manifest that the mark was intended to be used as affixation to shoes since
respondent is in that business. In any case, use thereof would have been for more than
50 by now. Thus the impugned registration falls within the mischief, of Section 15(2) of
the Act. Name of the author mentioned in the impugned certificate is Mr. Mukti
Chakraborty. Thus the first owner of the work is that person. Applicant for registration
in the matter is the respondent, a firm. It is nowhere ascertainable from the pleadings
including the written submissions now filed that the first author had assigned the work
to the respondent. On this count also registration fails.” The aforesaid extract discloses
following reasons which prevail with the Copyright Board while passing the impugned
order:—
(i) The mark was intended to be used as affixation to shoes since the appellant is in
that business. Thus the registration applied was for artistic work which was to be
applied to goods;
(ii) Use thereof would have been for more than 50 by now and, therefore, the
registration falls within the mischief of Section 15(2) of the Copyright Act;
(iii) The name of the author is Shri Mukti Chakraborty who is first owner of the work
and the appellant has nowhere shown that Shri Chakraborty had assigned this
mark to the appellant.
4. It is clear from the above that the Copyright Board has proceeded on the basis that
the device in question is capable of registration under the Designs Act, as even if it is
artistic work, it is relating to the goods. On this premise, registration under Copyright Act
is cancelled invoking the provisions of Section 15(2) thereof which reads as under:—
“15(2) Special provision regarding copyright in designs registered or capable of being
registered under the Designs Act, 1911
(1) x x x x
(2) Copyright in any design, which is capable of being registered under the Designs
Act, 1911 (2 of 1911), but which has not been so registered, shall cease as soon
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as any article to which the design has been applied has been reproduced more
than fifty times by an industrial process by the owner of the copyright, or, with his
licence, by any other person.”
5. The case set up by the appellant is that provisions of Section 15(2) of the Copyright
Act are not applicable inasmuch as no registration under the Designs Act has been
obtained by the appellant in respect of the concerned work. It is also contended that the
appellant had used the label/work as a trade mark much prior to its application submitted
to the Copyright Office for registration under the Copyright Act. The mark was

Page: 108

widely used since 1990 and the appellant had also applied for registration of the work
“GOLD STAR” (Device/Label) “Side Trim” under the Trademarks Act, under Class 25 for
Footwear by Application No. 816260. This was duly disclosed before the Copyright Board
as well. It is further contended that the work in question namely “side trim” is an artistic
work with “GOLD STAR” inscribed thereupon and cannot be registered/registerable as a
“design under the Designs Act, 2000. Our attention was drawn to Section 2(d) of the
Designs Act which defines “design”. Our attention was also drawn to the Section 45 of the
Act particularly proviso thereof to contend that there was no existing mark that was
identical to the mark/label of the appellant and this exercise was done by the Registrar,
Copyright Board before granting the registration. The appellant has also pointed out that it
had initiated legal proceedings against those parties who had surreptitiously applied for
design registration for “side trim” under the name of “Uni Star” and obtained the
registration under the Designs Act and the suit was filed in this Court in the year 2008 i.e.
on 8th October, 2008 which fact is also ignored by the Copyright Board. It is also
contended that the proceedings which are initiated by the respondent no. 2 are vexatious
proceedings and the Copyright Board has failed to appreciate the same.

6. It is also the contention of the appellant that the application for expunction moved
by the respondent no. 2 was highly belated which was filed six years after the registration
even when the respondent no. 2 being distributor of the appellant had full knowledge of
the devices accorded registration No. A-62685/02 but the Board totally ignored this aspect
of delays and laches.
7. In nutshell, the argument of the appellant is that the work in question is an artistic
work and not covered by the Designs Act and the Designs Act would not cover the design
in question.
8. The respondent no. 2 on the other hand contends that the device is not artistic work
at all. It is in fact a design which is capable of registration under the Designs Act and side
trim has been registered under the Designs Act in the name of Rohit Plastic, Delhi and also
Uni Star Footwear with slightly different side trim. The respondent no. 2 has thus refuted
the contention of the appellant in this behalf. This is the heart of the matter and outcome
of the appeal largely depends on the decision on this issue. Therefore, we take up this
aspect for consideration in the first instance.
9. It is clear from the reading of Section 15(2) of the Copyright Act that if a particular
artistic work is capable of treating as design, and is meant for the use of goods and can be
registered under the Designs Act, its registration under the Copyright Act as artistic work
is not permissible. It would mean that even an artistic work which is commercially
exploited in relation to goods in the manner provided under the Designs Act, it ceases to
be a work which would get protection under the Copyright Act. The proper

Page: 109
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course of action in such cases is to get the same registered under the Designs Act. The
term “design” defined in Section 2(d) of the Act reads as follows:—

“Section 2 — definitions:
(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 an 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 of 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 or property mark as defined in Section 479 of
the Penal Code, 1860 or any artistic work as defined in Clause (c) of Section 2 of the
Copyright Act, 1957.”
10. In Bharat Glass Tube Limited v. Gopal Glass Works Ltd. (2008) 10 SCC 657, the
Apex Court interpreted the expression “Design” in the following terms:
“35. The expression, ‘design’ has come up for interpretation in English courts. The
expression, design is almost pari materia with the definition of design in the Indian
context. The expression, ‘design’ in the English Act which is known as the Registered
Designs Act, 1949 reads as under : In this Act the expression, ‘design’ means features
of shape, configuration, pattern or ornament applied to an article by any industrial
process, being features which in the finished article appeal to and are judged solely by
the eye, but does not include
(a) a method or principle of construction or
(b) features of shape or configuration which (i) are dictated solely by the function
which the article has to perform, or (ii) are dependent upon the appearance of
another article of which the article is intended by the author of the design to form
an integral part. The history of this definition has been detailed by Russel-Clarke
and Howe on Industrial Designs (Seventh Edition) at para 3.11 at page 74 which
reads as under:
“3-11. This definition contains a cumulative series of requirements, many of which have
been the subject of judicial decision and analysis. The historical process by which this
definition has evolved is of importance to its present day interpretation and application.
Some of the more important embellishments to the definition, such as those dealing
with eye appeal and methods or principles of construction, have found their way into
the pre 2001 statutory definition as a result of the explicit adoption such requirements
were held to be implicit in the earlier and less elaborate statutory definitions of
“design”. This manifests an intention

Page: 110

by the legislature to adopt and make explicit the principles developed in those cases.

x xx xx
3.13. The words of the section are:
“…design means features of shape configuration, pattern or ornament applied to an
article…. “Thus a registrable design, as defined by the RDA (A), must have reference to
some specific article to which it is to be applied. The design to be registered” is a
shape, configuration or pattern to be applied a particular specified article”. It can be
readily seen that a particular pattern of surface ornamentation could be applied to wide
range of different articles. An application for registration was not in respect of the
pattern as such, but in respect of its application to the specific article named. If it was
desired to register the same design, e.g. a surface pattern or decoration, in respect of a
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series of different articles (apart from the special case of articles which together form a
set), then a separate application had to be made in respect of each article, and each
application to register was numbered separately and treated as a separate and distinct
application. In the case of designs consisting of features of shape or configuration,
there may of course be cases where the design is intrinsically applicable only to a
specific kind of article. The article itself does not, however, constitute the design. In
Dover v. Nurnberger Celluloid Waren Fabrik Gebruder Wolff, Buckley L.J. said : Design
means, therefore, 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. It is a conception, suggestion, or idea, and not an
article, which is the thing capable of being registered…. It is a suggestion of form or
ornament to be applied to a physical body. [Pugh v. Riely Cycle Co. Ltd. (1912) 29
R.P.C. 196]
Accordingly, it is submitted that a design is an idea or conception as to features of
shape, configuration, pattern or ornament applied to an article. Although that idea,
while still in the author's head, may be potentially capable of registration, in fact it
must be reduced to visible form to be identifiable, and until it is so reduced there is
nothing capable of registration, It may be so rendered either by its being embodied in
the actual article, or by its being placed upon a piece of paper in such a way that the
shape or other features of the article to be made are clear to the eye. Whenever the
means of identification (under some of the old Acts, provision was made whereby a
mere verbal description could in some cases be accepted as sufficient), as soon as the
idea is reduced to a form which is identifiable, there is something which is a “design”,
and which, if new or original, may be registrable.”
36. Similarly our attention was also invited to para 27.07 of the law of Copyright and
Industrial Designs by P. Narayanan (Fourth Edition) which reads as under:“Design as a
conception or idea “Design means a

Page: 111

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;”

Therefore, the concept of design is that a particular figure conceived by its designer in
his mind and it 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.”
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11. For the purpose of this case, it is the above mentioned interpretation of the
expression “design” that has to be kept in mind. The work “side trim” in question which
was under the Copyright Act and which registration has been cancelled by the Board is
visibly seen as under:
The way it is stretched on the side of the shoe can be seen from the picture of the shoe:
—
It would be of significance to state at this stage that the appellant has got the design
registered under Reg. No. 178564 in the year 1999 which shows that the aforesaid side
trim is fit for registration under the Designs Act, 2000. The Copyright was obtained in
the year 2002 for this side trim. After examining the aforesaid side trim minutely and
having regard to the aforesaid fact, we are of the view that this side trim is a design
under the Designs Act and, therefore, Section 15(2) would clearly be attracted. A
Division Bench of this Court in the case of Microfibres Inc. v. Girdhar and Co. 2009 (40)
PTC 519 held that if the design is registered under the Designs Act, the Design would
lose its copyright

Page: 112

protection under the Copyright Act. If it is a design registerable 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.

12. Therefore, in our opinion, the order of the Board is correct on this aspect and does
not call for any interference.
13. This finding of ours would be sufficient to dismiss this appeal, we may however,
point out that another reason given by the Board is that Shri Mukti Chakraborty is the first
author and there is nothing on record to suggest that he had assigned this work to the
appellant. In this appeal the appellant has produced letter of assignment as Annexure-A.
Some other documents are sought to be relied upon to show that there is a valid
assignment of the copyright by said Shri Mukti Chakraborty in favour of the appellant.
However, when this objection was taken before the Board, it was incumbent upon the
appellant to produce the necessary documents to dispel this objection of the respondents.
Be as it may, we are not required to go into this issue and leave this question open.
14. At the same time, we would like to point out the submission of the respondent to
the effect that the appellant has suppressed the fact that suit for dissolution of the
appellant firm which is a partnership firm has been filed by one partner in Nepal District
Court. It is also pointed out that respondent has even filed writ petition in this Court
against the appellant in respect of trademark “GOLD STAR” registered in favour of the
appellant which registration, according to the respondent no. 2 has been fraudulently
obtained by the appellant despite notice of opposition by the respondent no. 2 It is also
pointed out that not only the respondent no. 2 but some other parties had also filed
opposition/cancellation of trade mark proceedings against the registration of trade mark
“GOLD STAR” and “SEVEN STAR” filed by the appellant. If these arguments are correct,
they may become the additional basis for dismissal of the appeal. However, as the
aforesaid aspects are still sub-judice in various Courts, we are not making any comment
thereon.
15. We accordingly dismiss the appeal leaving the parties to bear their own costs.
———
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circular/ notification. All disputes will be subject exclusively to jurisdiction of courts, tribunals and forums at Lucknow only. The authenticity of this text
must be verified from the original source.

© 2022 Delhi Reported Judgments.

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2008 SCC OnLine Del 1059 : ILR (2009) 2 Del 193 : (2008) 153 DLT 548 :
(2008) 38 PTC 416

In the High Court of Delhi

IA
(BEFORE S. RAVINDRA BHAT, J.)

Mattel, Inc. & Ors. … Plaintiffs;

Versus
Mr. Jayant Agarwalla & Ors. … Defendants.
IA No. 2352/2008 in CS(OS) 344/2008
Decided on September 17, 2008
Code of Civil Procedure Code, 1908 — Order 39 Rule 1

Page: 194

& 2 — Trademarks Act, 1999 — Section 11(6) & 29 — Copyright Act, 1957 — Section 2(C), 2 (o) &
15 — Designs Act, 1911 — Designs Act, 2000 — Section 6 & 47(2)(c) — Designs Rules, 2001 —
Rule 10 — International Copyright Order, 1991 — Application for ad interim injunction restraining
defendants from infringing copyright and trademark of plaintiffs — Plaintiffs manufacturers of board
game and owner of trademark (TM) SCRABBLE — Claim of the plaintiffs that defendants launched on
line version of their board game under the mark SCRABULOUS which is a deceptively and confusingly
similar to plaintiffs TM Scrabble — Defendants also infringed marks and indulged in passing off by
using metatags with word SCRABBLE to divert Internet traffic away from the plaintiffs' websites and
mislead public that their product was associated with plaintiffs — Defendants created hyperlinks to
the plaintiffs' website and rules for the SCRABBLE game — Defendants also infringed copyright in the
game board which is an artistic work and rules — Infringing use of the plaintiffs board game would
cause grave and irreparable loss since they were planning to launch their online version of the board
game — Held, game board is not a creative work entitled to copyright protection — Also doctrine of
merger applied to present case and copyright claim of the plaintiffs for the game board and rules
cannot be granted — Copyright protection also not available due to provisions of Section 15 of
Copyright Act as game board not registered under the Designs Act of 1911 or 2000 also game board
and alphabetical titles reproduced more than 50 times by industrial process — Prima facie proof of
deceptive similarity and infringement — Plaintiffs produced sufficient evidence to show the extensive
use of SCRABBLE as a word mark for the game — Plaintiffs entitled to protection as TM registered
have extensive sales in India and have spent huge amounts on advertising — Denial would result in
irreparable injury and danger of genericness

Page: 195

of the mark with consequent loss of distinction — Defendnat's mark SCRABULOUS too close
phonetically and semantically to the plaintiffs mark to be an original inventive term — Hyperlinks
provided in their websites to the plaintiff's website evidences that SCRABBLE inspired them to coin
their mark — Users played game SCRABULOUS on the basis of web search for ‘online SCRABBLE’ —
Unless injuncted the defendants would continue acts of infringement and divert internet traffic to their
websites causing considerable loss to the plaintiffs — Balance of convenience lies in favour of the
plaintiffs for grant of temporary injunction because the defendants have not shown how their use is
bonafide or how they would be prejudiced — Also denial of relief would cause harm and injury to
plaintiffs — Defendants restrained from using the name SCRABULOUS or any other mark deceptively
similar to SCRABBLE in any manner including using it as a part of domain name or other use such as
hyperlinking, metatagging, advertisement or any other form of use till diposal of suit — IA allowed.
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The above facts show that ‘SCRABBLE’ is not per se descriptive of the word game, unlike, say
MONOPOLY or CROSSWORD, which are close to the genus. No doubt, its extensive use and
popularity has resulted in the word being used to describe the game. But that is precisely what the
plaintiffs contend, in support of their argument about distinctiveness of the mark. In evaluation of
these competing claims, the court cannot be unmindful of the fact that language is an evolving and
organic system, which assimilates all kinds of usage, customs and convenient descriptions of objects,
processes, systems, places and persons. The journey begun by a word with one meaning, might well
end up with an entirely different one, the original meaning obscured in course of time. Etymological
adventurism by the court should not lead to loss of distinctiveness of a mark which is part of the
popular lore. The plaintiffs have shown that SCRABBLE,

Page: 196

according to the Oxford Dictionary is a proprietary word game. They have also produced other
supporting evidence of its extensive use, as word mark for the game. These, the registration which
they undeniably hold, in respect of the/nark, their claim of sales in India to the extent of Rs. 13
crores, (of the game) and their averment to having spent Rs. 51 lakhs in advertisement, prima facie
entitles it to protection; denial, of interim injunction at this stage would result in irreparable injury, and
the danger of genricness of the mark, with consequent loss of distinctiveness.

(Para 37)
The defendants' mark, SCRABULOUS is too close, phonetically and semantically to the plaintiffs'
mark, to be an original inventive term. They have not furnished any explanation, why they hit upon
this term, for a word game. Besides, the hyperlinks, which they provide in their websites, to the
plaintiffs' websites, evidences that SCRABBLE inspired them to coin their mark. Indeed, the tenor and
nature of their argument was that SCRABBLE is generic, incapable of protection, and their variant
SCRABULOUS thus cannot be injuncted. Besides, the material produced by the plaintiffs, in the form
of users' comments, culled out from various ‘blog’ archived articles, as well as from ‘Facebook’ and
the defendants' “Scrabulous Wall” reveal that the users played the game scrabulous, on the basis of
web search for ‘online scrabble’. All these are prima facie proof of deceptive similarity and confusion
amounting to infringement.
(Para 38)
Important Issue Involved: Doctrine of merger—Copyright cannot be granted where the idea
and expression are inextricably connected so as not to be able to distinguish between the two, as
conferring copyright would confer monopoly on the idea itself.
[Ad Ch]

Page: 197

Appearances
For the Plaintiffs: Mr. N.K. Kaul Sr. Advocate with Mr. Praveen Anand, Ms. Swathi
Sukumar, Mr. Dhruv Anand, Mr. Tarvinder Singh and Ms. Anu Bagai, Advocates.
For the Defendants: Mr. Sushant Singh with Mr. Manav Kumar, Advocates.
Cases Referred to:
1. Eastern Book Company v. DB Modak, (2008) 1 SCC 1.
2. Heinz Italia v. Dabur India, (2007) 6 SCC 1.
3. Mirerofibres Inc. v. Girdhar & Co., 2006 (32) PTC 157 (Del).
4. Godfrey Philips India Ltd. v. Girnar Food & Beverages (P) Ltd., (2004) 5 SCC 257.
5. CCH Canadian Ltd. v. Law Society of Upper Canada, (2004) 9 SCC 13.
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6. Info Edge India Pvt. Ltd. v. Shailesh Gupta, 2002 (24) PTC 355.
7. Scandecor Developments AB v. Scandecor Marketing AB 4 April 2001, UKHL 21 of
2001.
8. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., (99-150) 529 U.S. 205 (2000).
9. SBL LTD. v. Himalaya Drug Co., 1997 (17) PTC (DB).
10. Allen v. Academic Games League of Am., 89 F.3d 614 (9th Cir. 1996).
11. J.P. Kapoor v. Micronix India, 1994 Supp (3) SCC 215.
12. Fiest Publication Inc. v. Rural Telephone Service, 199 US 340 (1991).
13. Aliotti v. R. Dakin & Co., 831 F.2d 898, 901 (9th Cir. 1987).

Page: 198

14. Landsberg v. Scrabble Crossword Game Players, Inc., 736 F.2d 485, 488 (9th Cir.
1984).
15. See v. Durang, 711 F.2d 141, 143 (9th Cir. 1983).
16. Atari Inc v. North American Philips Consumer Electronics Corp, 672 F.2d 607,
(1982 US App. LEXIS 21341).
17. Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11
(1982).1.
18. Midway Mfg. Co. v. Bandai-America, Inc., 546 F.Supp. 125, 148 (D.N.J. 1982).
19. Anti-Monopoly, Inc. v. General Mills Fun Group, 611 F. 2d. 296, 300 n. 1 (9th Cir.
1979)…”.
20. Surgicenters of America, Inc. v. Medical Dental Surgeries Co., 601 F.2d 1011,
1014 (9th Cir. 1979).
21. RG Anand v. Delia Films, (1978) 4 SCC 118).
22. Sid & Marty Krofft Television Productions, Inc. v. McDonald's Corp., 562 F.2d 11
57, 1163 (9th Cir. 1977).
23. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).;
F.2d 4, 10—11 (CA2 1976).
24. Affiliated Hospital Products, Inc. v. Merdel Game Mfg. Co., 513 F.2d 1183, 1188-89
(2nd Cir. 1975).
25. Herbert Rosenthal Jewelry Corporation v. Kalpakian, 446 F.2d 738 (1971).
26. Bada Co. v. Montgomery Ward & Co., 426 F.2d 8, 11 (9th Cir.), Cert, denied, 400
U.S. 916, 91 S.Ct. 174, 27 L.Ed.2d 155 (1970).
27. Roche & Co. v. G. Manner & Co., (1969) 2 SCC 716 : AIR 1970 SC 2062.
28. Morrissey v. Proctor & Gamble Co., 379 F.2d 675, 678-79 (1st Cir. 1967).
29. Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories, AIR
1965 SC 980.
30. Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449.
31. Mazer v. Stein, 341 U.S. 201, 218 (1954).
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Page: 199

32. Chamberlin v. Uris Sales Corp, 150 F.2d. 512 (2d. Cir. 1945).
33. Dixie Rose Nursery v. Coe, 76 U.S. App.D.C. 371, 372, 131 F.2d 446, 447 (D.C.
Cir.), Cert, denied, 318 U.S. 782, 63 S.Ct. 856, 87 L.Ed. 1149 (1942).
34. Coca-Cola Co. v. Pepsi-Cola Co., (1942), 2 D.L.R. 657 (P.C.).
35. DuPont Cellophane Co. v. Waxed Products Co., 85 F.2d 75 (2d Cir.), Cert, denied,
299 U.S. 601, 57 S.Ct. 194, 81 L.Ed. 443 (1936), 304 U.S. 575, 58 S.Ct. 1047, 82
L.Ed. 1539 (1938).
36. Nichols v. Universal Pictures Corp., 45 F.2d (2d Cir. 1930).
37. Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y.1921).”
38. Baker v. Seldon, 101 US 99 [1879]. S.
The Judgment of the Court was delivered by
S. RAVINDRA BHAT, J.:— This order shall dispose off IA No. 2352/2008 preferred by
the plaintiffs under Order XXXIX Rule 1&2 of the Code of Civil Procedure, 1908,
seeking an ad interim injunction restraining the defendants from infringing the
trademark and copyright of the plaintiffs in the board game called SCRABBLE.
2. The first plaintiff is a company incorporated in Delaware, United States. The
second and third plaintiffs, incorporated in the United Kingdom and India respectively,
are wholly owned subsidiaries of the first plaintiff. They aver to being leading
manufacturers of toys, games and consumer products. Their best selling brands
include “Barbie”, “Hot Wheels”, “Matchbox”, “Little People” and a wide assortment of
entertainment inspired toy lines.
3. One of the well-known products of the plaintiffs is the board game marketed and
popularized by the name ‘SCRABBLE’ (hereafter referred to as ‘the game’). This word-
based game challenges the players to form words on a grid; points are scored by
forming such words. It is averred$that over 100 million sets of the game have been
sold in

Page: 200

approximately 29 different languages. They also manufacture and market board games
with SCRABBLE formative marks, like the ‘Junior Scrabble’, the ‘Rainbow Scrabble’ etc.
The game was invented in 1932 by one Mr. Alfred Mosher Butts and has been
redesigned since then. The trademark SCRABBLE has been used since the year 1948.
The plaintiffs aver being owners of the trademark SCRABBLE in all countries except the
United State and Canada, where Hasbro Inc. owns it. The plaintiffs own two
registrations in relation to the trademark SCRABBLE in India; No. 850786 in Class 9
and No. 342431 in Class 28, from the year 1999 and 1978 respectively. It is averred
that two related applications are pending registration. These marks have also been
registered in number of other countries.

4. The plaintiffs state that the game is very popular in a number of countries and
can be judged by the fact that the Oxford English Dictionary, Volume XIV, Second
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Edition, 1991 defines ‘scrabble’ as “theproprietary name of game in which the players
use tiles displaying individual letters to form words on a special board”. The plaint
avers that world wide, several tournaments and competitions based on the game are
conducted every year. Further, various computer and video game versions of the game
have been released by the plaintiffs' licensees for various platforms including PC, Mac,
Amiga, Playstation, Palm OS and mobile phones. In this respect the plaintiffs have
given a list of their licensees for various platforms. They have also advertised and
promoted the game extensively through the Internet and they maintain websites
including www.scrabble.com and www.mattelscrabble.com. The plaintiffs claim that
mark SCRABBLE has become a well-known trademark within the meaning of section
11(6) of the Trademarks Act, 1999. It is stated that the plaintiffs have made sales to
the tune of Rs. 13 corers in India from the year 2003, and the expenditure on
marketing and promotion amounted to approximately Rs. 51 lakhs.
5. The plaintiffs claim that every version of the game since the first in 1932 is an
artistic work under section 2(c) of the Copyright Act, 1957 and the plaintiffs' works are
entitled to protection in India by virtue of the International Copyright Order, 1991. The
plaintiffs have filed a table depicting the flow of title in the copyrighted work, from the
creators to the predecessors in interest of the plaintiffs and finally themselves.
Following the takeover of the second plaintiff by the first plaintiff in

Page: 201

1999, the game was redesigned and the latest version created. Apart from claiming
the ownership in the artistic layout of the board, the plaintiffs also claim to be the
owners of the copyright in the rules of the game, which according to them is a literary
work under section 2(o) of the Copyright Act, 1957.

6. The first and second defendants are brothers and partners in the third defendant,
a firm engaged in providing IT solutions. The plaintiffs allege being appalled to find
out that the defendants had launched an online version of their board game under the
mark SCRABULOUS, as an application available through the popular networking
website www.facebook.com. The online version was also promoted through the
defendants' website www.scrabulous.com, www.scrabulous.info and
www.scrabulous.org. Such unlawful adoption of deceptive and confusingly similar
mark for the online version of the plaintiffs' game, it is claimed amounts to
infringement under section 29 of the Trade Marks Act, 1999 and passing off. The
intent to appropriate the goodwill of the plaintiffs' mark, it is stated, is evident from
the fact that the third defendant's website advertises the launch of the Scrabulous as
the “best place to play Scrabble online for free”. The plaintiffs also state that consumer
merchandise in the form of clocks, tableware etc were also launched under the mark
Scrabulous.
7. Apart from adopting a deceptively mark, the defendants, it is alleged, have also
infringed the plaintiffs' mark by using metatags, which are machine readable codes
used by search engines to index sites. The defendants use the following metatags:
scrabble online, play scrabble online, free scrabble online, play scrabulous live etc. The
plaintiffs claim that these clearly amount to infringement and passing off, since the
defendants, through such tags divert internet traffic away from the plaintiffs' websites
and mislead the public that their (defendants') products are associated with the
plaintiffs. Similarly, the defendants also use hyperlinks to the plaintiffs' websites and
rules for the scrabble game. Some of the hyperlinks used are: download scrabble free,
play scrabble free, free online scrabble etc. The text of the hyperlinks independent of
the content of the websites, it is claimed, is sufficient to constitute infringement.
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8. The plaintiffs claim the defendants have admitted to their rights in the trademark
SCRABBLE, when they addressed an email dated 15th

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January 2008 to the first plaintiff, enquiring whether they would licence the rights to
their games. The plaintiffs have also detailed various sections of the defendants'
websites where they have referred to the plaintiffs' game and the mark SCRABBLE.
Some of them are:

(a) “Basic of Scrabble”

(b) “Rules of Scrabble”
(c) “Scrabulous is a registered trademark of J.W. Spear & Son PLC and Hasbro Inc.
Any and all uses of the word “Scrabulous” on these pages refers to this
trademark. This web page in no way is an attempt to confuse the visitor that it is
the web page of Mattel or Hasbro brand Scrabulous”
They have also listed out instances where users of the social networking site
‘Facebook’ have referred to their mark and game, on the ‘Scrabulous Wall’, which is
forum for comments on the scrabulous application. For example:
a. “Play scrabble with me pizz”
c. “Anyone know how to invite mates onto scrabble”
d. “F m really pleased with this version of Scrabble. Well designed. Good job”
e. “Awesome. I love Scrabble, thanks for making this application, You, rock.”
f. “scrabulous is the best online scrabble gaming site.I”
They state these evidence deceptive similarity and confusion in the minds of the
public, between the two marks.
9. The plaintiffs also claim that defendants have infringed their copyright in the
game board and the rules. By the use of red, pink, blue and light blue tiles, use of
identical patterns of arrangement of coloured tiles and the use of a star pattern on the
central square, the plaintiffs claim that the defendants have infringed their copyright
in the game board which is an artistic work. Such infringing use of the plaintiffs' board
game it is alleged cause grave and irreparable loss, since they were planning to launch
their online version of the board game. Therefore, the plaintiffs seek an interim
injunction restraining the defendants from

Page: 203

infringing their rights in the trademark SCRABBLE, from infringing their copyright in
the current game board, previously used game boards, rules and formats of the game.

10. The defendants in their written statement allege that the copyright claim in
relation to the game board is not maintainable since the board, which is a three
dimensional article is not copyrightable. Additionally, the shape and configuration of
the board can be registered as a design, and therefore, monopoly over the copyright
extinguished the' moment more than 50 articles are produced and commercially sold
under section 15(2) of the Copyright Act. The plaintiffs do not hold a valid design
registration and therefore, they cannot claim copyright to that effect. Moreover, the
defendants state that since the plaintiffs are not the registered owners of any
copyright in the rules of the game, no injunction can be claimed in that regard too.
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The game board could have been protected as a design and the monopoly thereby
granted would have lasted only for 15 years. They cannot now claim copyright over the
board since that would result in guaranteeing a protection, which does not validly exist
in law. It is averred that the said game cannot be treated as a literary work in any
manner whatsoever under section 2(o) of the Copyright Act.
11. The defendants state that the suit for infringement and passing off in relation to
the mark SCRABBLE is not maintainable since the word is a generic/publici juris term,
which has become the description of the game and has become a non-distinctive
mark, like Ludo, Carrom Board, Cricket, Table Tennis etc. It is claimed that several
hotels, schools, and casinos are employing the same terminology as a general term
describing the game rather than to indicate any specific brand supporting their
trademark. The defendants allege that the plaintiffs' claims in relation to ownership of
the said trademarks are not backed by adequate documentary evidence. They deny
that SCRABBLE has become a well-known mark since it has already become a
distinctive mark, in relation to the plaintiffs' game and that various traders are using
the word ‘Scrabble’ in respect of game boards in various countries.
12. The defendants further submit that the copyright claim is not sustainable since
the patent claim for the game was applied for in 1948 and rejected by the Patents
Office. The present claim they aver amounts to switching over of monopoly rights,
which is not permissible in law.

Page: 204

They also aver that the plaintiffs have suppressed material information from the Court
by not disclosing that had caused a letter dated 5th July 2007 to be written to the
defendants requesting them to cease and desist the operations in relating to the
internet game Scrabulous. The defendants had thereafter, replied asking the plaintiffs
to provide particulars of the rights owned by them. The plaintiffs replied restricting
their request for cease and desist to United States and Canada only.

13. The defendants claim to be lawfully operating their websites and that there
have been no attempt to misappropriate any traffic. It is claimed that that the
metatags used are in relation to their product Scrabulous and not Scrabble. Using the
word scrabble in coding was a method of describing the game and was not intended to
indicate any brand. They also deny that their website contains hyperlinks to various
unauthorized infringing websites. Since the word scrabble is in the public domain, any
such use cannot be infringement of the plaintiffs' rights. It is also pointed out that the
plaintiffs do not have any version of their game online, and therefore, there is no
question of diverting Internet traffic.
14. Mr. Neeraj Kishan Kaul, learned senior counsel, urged that the defendants' use
of the word-mark “Scrabulus” is a brazen attempt to misappropriate the plaintiffs'
goodwill and reputation in the registered trademark SCRABBLLE. Being a registered
trademark owner, the plaintiffs can legitimately complain that the defendants' use of
the mark, in respect of the same game, which too has been blatantly copied, without
as much as an effort to even make any distinction, amounts to infringement under
Section 29 of the Trademarks Act, 1999. Reliance was placed on Kavirai Pandit Durga
Putt Sharma v. Navratna Pharmaceutical Laboratories, AIR 1965 SC 980, to say that in
an action for infringement, like the present case, where the similarity between the
Plaintiffs and Defendants mark is so close, either visually, phonetically or otherwise
and the Court reaches a conclusion that there is an imitation, no further evidence is
required to establish that the Plaintiffs rights are violated. It was also argued that
applying the tests indicated in Amritdhara Pharmacy v. Satva Deo Gupta, AIR 1963 SC
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449, and Heinz Italia v. Dabur India, (2007) 6 SCC 1, the only conclusion is that the
court should take note of the similarities, rather than consider the minute
dissimilarities, when adjudging the question of deceptive resemblance of the rival
marks.

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Considerable emphasis was placed on the fact, that well known dictionaries describe
SRABBLE as a proprietary game, which establishes that the word mark has acquired a
strong distinctive secondary meaning, which the defendants are dishonestly seeking to
appropriate. According to counsel, the defendants' dishonesty is a strong factor to
guide the court into enjoining their continued use of the mark; reliance was placed on
the judgment of this court in Info Edge India Pvt. Ltd. v. Shailesh Gupta, 2002 (24)
PTC 355 in this context.

15. The plaintiffs also contend that there is no question of the word SCRABBLE
becoming publici juris, since the mark is at once descriptive, as well as distinctive.
Counsel relied on Godfrey Philips India Ltd. v. Girnar Food & Beverages (P) Ltd.,
(2004) 5 SCC 257 to say that a descriptive trademark may be entitled to protection if
it has assumed a secondary meaning which identifies it with a particular product or as
being from a particular source.
16. Learned counsel submitted that copyright in the board, which comprises of a
unique grid consisting of diagonally criss-crossed coloured boxes, the tiles with their
value, the rules of the game, combined together, as well as individually, is with the
plaintiffs. Their cynical commercial exploitation by the defendants, whose
SCRABULOUS is a slavish imitation of the plaintiffs game, amounts to infringement of
copyright, which, unless injuncted, would cause incalculable harm to the plaintiffs'
commercial interests.
17. Mr. Sushant Singh, counsel for the defendant, submitted that there is no
question in any trademark in the word SCRABBLE, which is generic, and has become
publici juris. He supports this contention by relying on SBL LTD. v. Himalaya Drug Co.,
1997 (17) PTC (DB) and Roche & Co. v. G. Manner & Co., (1969) 2 SCC 716 : AIR
1970 SC 2062; to say that no one can claim an exclusive right to a generic term and
the customer will not consider the common feature and would pay more attention to
the descriptive features. Learned counsel relied on the meaning of the expression
“scrabble” in “the FREE ONLINE DICTIONARY”; it defines the term to mean “aimless
drawing” and “‘a board game in which words are formed from letters in patterns
similar to a cross word puzzle’. The dictionary also says that used as a verb “Scrabble”
means “feel searchingly”.

Page: 206

18. It was next urged that the plaintiffs cannot seek enforcement of the trademark
SCRABBLE, because of Section 36 of the Trademarks Act, which reads as follows:
“36. Saving for words used as name or description or an article or substance or
service.— (1) The registration of a trade mark shall not be deemed to have become
in valid by reason only of any use after the date of the registration of any word or
words which the trade mark contains or of which it consists as the name or
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description of an article or substance or service.

Provided that, if it is proved either—
(a) that there is well known and established use of the said word as the name or
description of the article or substance or service by a person or persons
carrying on trade therein, not being use in relation to goods or services
connected in the course of trade with the proprietor or a registered user of the
trade mark or (in the case of a certification trade mark) in relation to goods or
services certified by the proprietor, or

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(b) that the article or substance was formerly manufactured under a patent that
a period of two years or more after the cesser of the patent has elapsed and
that the said word is the only practicable name or description of the article or
substance. The provisions of sub-section (2) shall apply.
(2) Where the facts mentioned in clause (a) or clause (b) of the proviso to sub-
section (1) are proved with respect to any words, then,—
(a) for the purpose of any proceeding under section 57 if the trade mark consist
solely of such words, the registration of the trade mark, so far as regards
registration in respect of the article or substance in question or of any goods
of the same description, or of the services or of any services of the same
description, or of the services or of any services of the same description, as
the case requires, shall be deemed to be an entry wrongly remaining on the
register.
(b) for the purpose of any other legal proceedings relating to the trade mark,—
(i) if the trade mark consists solely of such words, all rights of the proprietor
under this Act or any other law to the use of the trade mark, or
(ii) if the trade mark contains such words and other matters, all such right of
the proprietor to the use of such words, in relation to the article or
substance or to any goods of the same description, or to the service or to
any services of the same description, as the case requires, shall be deemed
to have ceased on the date on which the use mentioned in clause (a) of the
proviso to subsection (1) first became well known and established or at the
expiration of the period of two years mentioned in clause (b) of the said
proviso.”
19. Learned counsel next urged that the plaintiffs' copyright claim is unfounded and
incapable of enforcement. He urged that the plaintiffs' documents reveal that a patent
claim was made earlier. Now, the plaintiffs cannot seek a wider protection in copyright
law, for a much larger period of time. It was argued that the Copyright Act is meant to
provide protection to expression of ideas through artistic or literary works, but not
designs, particularly of those articles which are mass produced. Counsel submitted
that Parliamentary intention was that whenever any artistic work can be commercially
exploited by the owner, it should be excluded from protection of the Act, and
correspondingly protection can be granted under the Designs Act. Counsel submitted
that whenever the intention of putting a work to industrial use arises, protection under
Copyright Act ceases. He relied on the judgment of this court, reported as Mircrofibres
Inc. v. Girdhar & Co., 2006 (32) PTC 157 (Del). He also relied on Section 15(2) of the
Designs Act, in support of this argument.
20. The above narrative would indicate that the plaintiffs' claims fall under two
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categories; firstly, copyright over the game board and the rules of the game, and
secondly, claims of infringement of trademark and passing off. The Court shall
examine the copyright claims first.
21. An essential element of copyright law is that it does not grant the author of a
literary work protection on ideas and facts. (Baker v. Seldon, 101 US 99 [1879],
Nichols v. Universal Pictures Corp., 45 F.2d (2d Cir. 1930), RG Anand v. Delux Films,
(1978) 4 SCC 118) It is only the creative expression of such ideas and facts that is
rewarded by law, by conferring a privilege to exclusively exploit such expression for a
limited time. Law does not protect every such expression. The issue in Baker was
whether the defendant's publication of a book on ‘book-keeping’ articulating a similar
manner of book keeping as was done in the plaintiffs book amounted to infringement.
Severing the expression of the idea of book keeping from the very science of boo
keeping the Court held as follows:
“On the other hand, the teachings of science and the rules and methods of useful
art have their final end in application and use; and this application and use are
what the public derive from the publication of a book which teaches them. But as
embodied and taught in a literary composition or book, their essence consists
only in their statement. This alone is what is secured by the copyright. The use
by another of the same methods of statement, whether in words or illustrations,
in a book published for teaching the art, would undoubtedly be an infringement
of the copyright.
The description of the art in a book, though entitled to the benefit of copyright, lays
no foundation for an exclusive claim to the art itself. The object of the one is
explanation; the object of the other is use. The former may be secured by
copyright. The latter can only be secured, if it can be secured at all, by letters-
patent.
The novelty of the art or thing described or explained has nothing to do with the
validity of the copyright. To give to the author of the book an exclusive property
in the art described therein, when no examination of its novelty has ever been
officially made, would be a surprise and a fraud upon the public. That is the
province of letters-patent, not of copyright.”
22. In the realm of copyright law the doctrine of merger postulates that were the
idea and expression are inextricably connected, it would not possible to distinguish
between two. In other words, the expression should be such that it is the idea, and
vice-versa, resulting in an inseparable “merger” of the two. Applying this doctrine
courts have refused to protect (through copyright) the expression of an idea, which
can be

Page: 209

expressed only in a very limited manner, because doing so would confer monopoly on
the ides itself. The decision in Herbert Rosenthal Jewelry Corporation v. Kalpakian, 446
F.2d 738 (1971) is illustrative in this regard. The plaintiffs there sued the defendants
asking them to refrain from manufacturing bee shaped jewel pins. The Court held that
the jewel shaped bee pin was an idea that anyone was free to copy, the expression of
which could be possible only in a few ways; therefore, no copyright could subsist in it.
In Nichols, Judge Learned Hand spoke about the famous “abstractions” test which the
courts must follow, when confronted with the idea/expression dichotomy:

“Upon any work, and especially upon a play, a great number of patterns of
increasing generality will fit equally well, as more and more of the incident is left
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out. The last may perhaps be no more than the most general statement of what
the play is about, and at times might consist only of its title; but there is a point
in this series of abstractions where they are no longer protected, since otherwise
the playwright could prevent the use of his “ideas,” to which, apart from their
expression, his property is never extended. Holmes v. Hurst, 174 U.S. 82, 86, 19
S. Ct. 606, 43 L. Ed. 904; Guthrie v. Curlett, 36 F.(2d) 694 (CCA. 2).”
23. The case of Allen v. Academic Games League of Am., 89 F.3d 614 (9th Cir.
1996) is worth noticing at this stage. The plaintiff in that case contended that the rule
books published by the defendants to play the games developed by the him, violated
his copyright over the tournament rulebooks developed by him. The court rejected the
plaintiffs claim and held that:
“A copyright only protects a particular expression of an idea and not the idea
itself Mazer v. Stein, 347 U.S. 201, 218 (1954). Thus, ideas contained in a
copyrighted work may be freely used so long as the copyrighted expression is not
wholly appropriated. This is often the case with factual works where an idea
contained iri an expression cannot be communicated in a wide variety of ways.
Landsberg v. Scrabble Crossword Game Players, Inc., 736 F.2d 485, 488 (9th Cir.
1984), cert, denied, 469 U.S. 103 7 (1984). Consequently, the notions of idea and
expression may merge from such “stock” coacepts that even verbatim reproduction
of a factual work may not constitute infringement.

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Accord See v. Durang, 711 F.2d 141, 143 (9th Cir. 1983); Sid & Marty Krofft
Television Productions, Inc. v. McDonald's Corp., 562 F.2d 11 57, 1163 (9th Cir.
1977); Aliotti v. R. Dakin & Co., 831 F.2d 898, 901 (9th Cir. 1987).

This doctrine of merger is particularly applicable with respect to games “since

they consist of abstract rules and play ideas.” Midway Mfg. Co. v. Bandai-America,
Inc., 546 F.Supp. 125, 148 (D.N.J. 1982); see also Anti-Monopoly, Inc. v. General
Mills Fun Group, 611 F.2d 296, 300 n.l. (9th Cir. 1979). A similar logic has been
applied to rules of a contest where most subsequent expressions of an idea of a rule
are likely to appear similar to the words of a related rule. See Morrissev v. Proctor &
Gamble Co., 379 F.2d 675, 678-79 (1st Cir. 1967); Affiliated Hospital Products, Inc.
v. Merdel Game Mfg. Co., 513 F.2d 1183, 1188-89 (2nd Cir. 1975). Here, Allen has
not shown that it is possible to distinguish the expression of the rules of his game
manuals from the idea of the rules themselves. Thus, the doctrine of merger applies
and although Allen may be entitled to copyright protection for the physical form of
his games, he is not afforded protection for the premises or ideas underlying those
games. To hold otherwise would give Allen a monopoly on such commonplace ideas
as a simple rule on how youngsters should play their games.”
(emphasis supplied)
24. The doctrine of merger was also applied in Atari Inc v. North American Philips
Consumer Electronics Corp, 672 F.2d 607, (1982 US App. LEXIS 21341) to deny wider
protection to elements in the video games. The US Court of Appeals (Seventh Circuit),
speaking through a panel of three judges, said:
“…copyright protection does not extend to games as such. Chamberlin v. Uris
Sales Corp, 150 F.2d. 512 (2d. Cir. 1945); see also Anti-Monopoly, Inc. v. General
Mills Fun Group, 611 F. 2d. 296, 300 n. 1 (9th Cir. 1979)…”
The above formulation is not meant to foreclose copyright protection to all games;
indeed, there can be certain distinctive elements, or patterns, innovated or created by
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its author, which, though intrinsic to the game, can claim independent copyright
protection.

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25. In India, in relation to games, rules and schemes (for playing) are not
protectable under the Patents Act, 1970; they are not deemed inventions under the
Act. Section 3 of the Patents Act, provides as follows:
“3. WHAT ARE NOT INVENTIONS.
The following are not inventions within the meaning of this Act,—
xxxxxxxx xxxxxxxx xxxxxxxx
(m) a mere scheme or rule or method of performing mental act or method of
playing game;…”
An untenable patent claim-as rules of a game are-cannot transmigurate into a wider,
longer lasting copyrightable expression. Such rules, in the absence of clear
segregation of the expression from the idea, cannot be granted copyright protection.
The expression, in this case is the idea itself.
26. The plaintiffs' claim to copyright is in respect of the three game-boards, with
the diagonal criss-cross design with placement of the double word, triple word, double
and triple letter values, as well as rules of the game. Every literary or artistic work, to
be afforded protection, should be “original” under the Act. The content of what is
‘original’ has undergone considerable change from the previously applicable “sweat of
the brow' doctrine spelt out in University of London Press (supra) to the ‘modicum of
creativity’ standard put forth in Fiest Publication Inc. v. Rural Telephone Service, 199
US 340 (1991). Our Supreme Court has also signified a shift; in Eastern Book
Company v. DB Modak, (2008) 1 SCC 1, following the approach of the Canadian
Supreme Court in CCH Canadian Ltd. v. Law Society of Upper Canada, (2004) 9 SCC
13, it rejected the sweat of the brow doctrine, (which conferred copyright on works
merely because time, energy, skill and labour was expended, that is, originality of skill
and labour), and held that the work must be original “in the sense that by virtue of
selection, co-ordination or arrangement of pre-existing data contained in the work, a
work somewhat different in character is produced by the author”. Our Supreme Court
noticed that the two positions i.e. the sweat of the brow on the one hand, and
“modicum of creativity”-were extreme; it preferred a higher threshold than the
doctrine of “sweat of the brow” yet, not as high as “modicum

Page: 212

of creativity”. Thus, our law too has recognized the shift, and mandates that not every
effort or industry, or expending of skill, results in copyrightable work, but only those
which create works that are somewhat different in character, involve some intellectual
effort, and involve a certain degree of creativity. This standard of originality, is now
applicable in respect of the plaintiffs' claim to copyright in various aspects of the
game.

27. So far as the collocation of lines on the game board are concerned; the diagonal
colour scheme with values for words, and the combination thereof, the element of
modicum of creativity has not been shown, to measure up to the test of “originality”,
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post Eastern Book Company. Even otherwise, the creative expression, if any is
minimalistic not to warrant copyright protection. Furthermore, and most importantly,
the application of the doctrine of merger would mean that the colour scheme on such a
board can be expressed only in a limited number of ways; if the plaintiffs'
arrangement were to be avoided, it is not known whether the idea of such a word
game could be played at all. Similarly, the reasoning in Allen and Atari, as far as
copyrightability of rules of a game are concerned apply squarely, in this case. This
doctrine of merger is applicable with respect to games as (according to those
decisions) “they consist of abstract rules and play ideas.” By way of illustration, the
arrangement of colours, values on the board, the collocation of lines, value for
individual alphabetical tiles, etc have no intrinsic meaning, but for the rules. If these
rules-which form the only method of expressing the underlying idea are to be subject
to copyright, the idea in the game would be given monopoly: a result not intended by
the lawmakers, who only wanted expression of ideas to be protected. Thus, this court
concludes, prima facie, that the copyright claim of the plaintiff cannot be granted.
28. As far as the defendants' arguments on the question of the copyright protection
in this case, not being available due to provisions of Section 15 of the Act, and
provisions of the Designs Act are concerned, it would be appropriate to set out the
observations in Microfibres (supra):
“In India, we have special legislations governing the protection of different
nature of rights. Insofar as the industrial designs are concerned, the protection is
provided under the Designs Act, 2000, which came into force from May, 2001 and
repealed the

Page: 213

earlier Designs Act, 1911. An important and relevant aspect is that both under the old
Act and the new Act, fabric designs on textile goods have been classified as proper
subject matter of design protection by inclusion as a specific class in the Rules framed
under the Acts. In the Designs Act of 1911, Classes 13 and 14 of the Fourth Schedule
of the Rules dealt with printed or woven designs of textile goods other than checks
and stripes and checks and stripes respectively. Such protection is now provided under
Class 5 of the new Design Rules of 2001.

64. Furthermore, the legislative intent is also to be kept in mind which is to

provide protection for a certain period of time for commercial exploitation. Thus,
nature of protection is quite different for an artistic work under the Copyright Act
which is for the lifetime of the author/creator + 60 years. This is not so in the case
of commercial exploitation as under the Designs Act and the Patent Act the period
is much lesser. In the present case, the configuration was made only with the
object of putting it to industrial/commercial use.
65. The exclusion of an ‘artistic work’ as defined in Section 2(c) of the Copyright
Act from the definition of ‘design’ under Section 2(d) of the Designs Act, 2000 is
only meant to exclude the nature of artistic works like painting of M.F. Hussain. It
is, thus, the paintings, sculptors and such works of art which are sought to be
specifically excluded from the new Act.
66. The observations of the learned Single Judge in S.S. Sarna Inc's case (supra)
succinctly set out the concept behind excluding certain designs from protection
under the Copyright Act which was to avoid any hindrance being caused to the
manufacturer of sale and industrial articles. Thus, the intention of the Legislature
has been expressed as one to protect any artistic work which has to be
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commercially exploited by the owner of the copyright by not providing the

protection under the Copyright Act, but under the earlier the Designs Act, 1911. A
similar view was also expressed by another learned Single Judge of this Court in
Samsonite Corporation's case (supra). To this extent, I see no difference between
the intent under the old Act and the new Act. A perusal of the Statement of Objects
and

Page: 214

Reasons for introduction of the new Act, the handouts issued by the Design Office and
the registrations made of textile fabrics both under the old Act and the new Act leave
little manner of doubt that the protection for such configurations, designs or works (by
whichever name it may be called) is provided under the Designs Act. It is, thus,
apparently clear that in the context of the Indian Law, it is the Design Act of 1911 or
2000, which would give protection to the plaintiff and not the Copyright Act. The
application of mind and skill is not being denied nor the fact that the defendants have
copied the same, but that would still not amount to the works in question being
labeled as ‘artistic work’ within the definition of Section 2(c) of the Copyright Act and,
thus, the protection is not available under the Copyright Act. Issue No. 1 is answered
accordingly.”

29. The objective of Copyright law is to protect the original literary, dramatic,
musical and artistic works, cinematograph films, sound recordings, broadcasting rights
and/or performers' rights. The object of Design Law, on the other hand, is protection of
the features of shape, configuration, pattern, ornamentation, or composition of lines or
colours applied to any article whether in two dimensional or three dimensional or in
both forms by industrial process or means, whether manual, mechanical or chemical,
separate or combined which in the finished appeal to and/are judged solely by the
eye, but does not include any trade mark or property mark or artistic work.
“Copyright” is defined in Section 2(c) of the Designs Act to mean exclusive right to
apply a “design” to any article in any class in which design is registered. “Copyright”
in Section 14 of the Copyright Act is defined to mean an exclusive right to authorize
the doing of any of the acts as prescribed therein. Section 15 of The Copyright Act
precludes the subsistence of Copyright in the Design which is registered or is capable
of being registered as a “design” under The Designs Act, 1911
30. Section 47(2)(c)— of the Designs Act, 2000 enables the Central Government,
for the purposes of classification of articles, (to facilitate registration under Section 6
of the Designs Act, 2000) to frame rules. Pursuant to this, the Designs Rules, 2001
were framed; Rule 10 prescribes that classification, for the purposes of registration of
various articles shall be according to the Third Schedule (to the Rules). The third

Page: 215

schedule, by Class 21, Entry 21-01 deals with GAMES AND TOYS and by Entry 21-03,
deals with OTHER AMUSEMENT AND ENTERTAINMENT ARTICLES. These prima facie
cover all games and amusement articles as well as toys. Designs in respect of various
articles of games and other amusement articles, including game boards, therefore,
can, prima facie, be registered.

31. Section 15 of the Copyright Act mandates that copyright subsists under the
Copyright Act in any design, which is registered under the Designs Act, 1911 and in
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respect of designs capable of registration under the Designs Act, 1911, the copyright
shall cease as long 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 his licensee. It cannot be disputed here that reproduction of the multicoloured
game board has occurred more than 50 times, as also the alphabetical tiles. It is not
also in dispute that there is no registration which has taken place under the Designs
Act, 1911 (or under the Designs Act, 2000). In these circumstances, the defendants'
objection that copyright cannot be claimed, is prima facie merited. For this reason too,
it is held that the plaintiffs' copyright claims cannot be granted, at this stage.
II The Trademark claim
32. The object of trademark law is to prevent an injury to the goodwill and
reputation of the enterprise which owns the trademark; as well as ensuring that
consumers are not misled as to the product, services or their sources. Marks help
buyers to identify their source, and assure them of the constancy of quality from a
particular producer. The essence of a trade mark has always been that it is “a badge of
origin” (Ref Scandecor Developments AB v. Scandecor Marketing AB 4 April 2001,
UK.HL 21 of 2001). It indicates trade source: a connection in the course of trade
between the goods and the proprietor of the mark. Trademarks are thus, a valuable
medium of advertisement, vital for marketing of products. If the consumers
understand the trademark in the context of its source, the manufacturer is inseparably
associated with it. The drawback here could be that trademarks are misused if they
serve to limit competition in the manufacture and sales of a product.
33. The genericness doctrine in trademark law is a method evolved to inhibit anti-
competitive use of trademarks. In Anti-Monopoly, the

Page: 216

genericness doctrine was described as follows:

“At its simplest, the doctrine states that when a trademark primarily denotes a
product, not the product's producer, the trademark is lost. As we have stated, “one
competitor will not be permitted to impoverish the language of commerce by
preventing his fellows from fairly describing their own goods.” Bada Co. v.
Montgomery Ward & Co., 426 F.2d 8, 11 (9th Cir.), Cert, denied, 400 U.S. 916, 91
S.Ct. 174, 27 L.Ed.2d 155 (1970). Thus, the Lanham Act, enacted in 1947, provides
for the cancellation of a trademark if “at any time (it) becomes the common
descriptive name of an article or substance.” 15 U.S.C. § 1064(c). Further, “no
incontestable right shall be acquired in a mark which is the common descriptive
name of any article or substance, patented or otherwise.” 15 U.S.C. § 1065(4).
Courts equate “common descriptive name,” as used in the statute, with the
shorthand expression “generic term.” See, e.g., Abercrombie & Fitch Co. v. Hunting
World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).
….One way courts have analyzed genericness is to ask whether a term “has come
to be understood as referring … to the genus of which the particular product … is a
species.” Surgicenters of America, Inc. v. Medical Dental Surgeries Co., 601 F.2d
1011, 1014 (9th Cir. 1979); Abercrombie & Fitch Co. v. Hunting World, Inc., supra,
537 F.2d at 9. The distinction is between a broad classifying term the genus and a
specific sub-classifier the species. As a hypothetical example, suppose several
manufacturers produce game equipment for playing chess. Chessco's chess game is
called EN PASSANT. When a consumer has available in his vocabulary the broad
classifier “chess,” but instead asks for EN PASSANT, we can infer that the consumer
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wants the “species” of chess equipment produced by Chessco. The consumer may
have innumerable reasons for desiring EN PASSANT chess equipment: E. g., price,
style, durability, consistency of quality, goodwill engendered by a catchy
commercial jingle, or simply a liking for the sound of the trademark. But these
desired characteristics are all source-particular, in that they correlate with a given
producer, Chessco.

Page: 217

The consumer thus uses the term EN PASSANT exactly as a trademark should be
used to enable him to recognize and ask for a particular producer's chess
equipment. Moreover, Chess Co benefits precisely as a producer should from a
trademark: it reaps profits from consumer goodwill both as to quality of its goods
and attractiveness of its advertising associated with its unique personality in the
marketplace. It is important to recognize that the species term EN PASSANT
subcategorizes only as to source. For trademark genericness purposes, it is the
source-denoting function of EN PASSANT which causes us to call EN PASSANT a
species instead of a genus.
A genus, in contrast to a species, is a product category including essentially
interchangeable4 goods made by unique producers. To the extent the goods within
the genus differ, their distinguishing characteristics are primarily source-particular,
E. g., price, quality, and advertising jingle. When, in the consumers' minds, the
characteristics which distinguish a particular product are no longer primarily source-
particular, that product becomes its own genus, and its name becomes a generic
name. See Dixie Rose Nursery v. Coe., 76 U.S. App.D.C. 371, 372, 131 F.2d 446,
447 (D.C. Cir.), Cert, denied, 318 U.S. 782, 63 S.Ct. 856, 87 L.Ed. 1149 (1942).
See also DuPont Cellophane Co. v. Waxed Products Co., 85 F.2d 75 (2d Cir.), Cert,
denied, 299 U.S. 601, 57 S.Ct. 194, 81 L.Ed. 443 (1936), 304 U.S. 575, 58 S.Ct.
1047, 82 L.Ed. 1539 (1938); Bayer Co. v. United Drug Co., 272 F. 505
(S.D.N.Y.1921).”
34. The US Supreme Court, in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., (99-
150) 529 U.S. 205 (2000), considered differing nature of trademarks, and the stage
when a mark could be said to become “distinctive” as to be afforded protection:
“In evaluating the distinctiveness of a mark under §2 (and therefore, by analogy,
under §43(a)), courts have held that a mark can be distinctive in one of two
ways. First, a mark is inherently distinctive if “[its] intrinsic nature serves to
identify a particular source.” Ibid. In the context of word marks, courts have
applied the now-classic test originally formulated by Judge

Page: 218

Friendly, in which word marks that are “arbitrary” (“Camel” cigarettes),

“fanciful” (“Kodak” film), or “suggestive” (“Tide” laundry detergent) are held to be
inherently distinctive. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
10—11 (CA2 1976). Second, a mark has acquired distinctiveness, even if it is not
inherently distinctive, if it has developed secondary meaning, which occurs when, “in
the minds of the public, the primary significance of a [mark] is to identify the source
of the product rather than the product itself.” Inwood Laboratories, Inc. v. Ives
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Laboratories, Inc., 456 U.S. 844, 851, n. 11 (1982).”

35. In this case, the defendant's contention about genericness of the word mark
SCRABBLE is not entirely without any basis. Each time courts are confronted with the
issue of determining whether general words used as marks are source specific, the
nature of the product, the degree of resemblance it bears with the word mark, the
length of time used, are guiding, though not the only factors to be considered. Though
courts would be slow in conferring a monopoly over common words, yet if a mark is
shown to conjure up strong associations with the product or services, there should be
no hesitation in affording protection. Midas Hygiene is an authority on the point that
there cannot be a blanket policy against inferring that generic words cannot acquire
distinctiveness.
36. The defendant raises the issue that under Section 36, the court should refuse
protection to the plaintiffs' word mark, since the game can be described only as
SCRABBLE. Prima facie, the argument appears powerful; the defendant cites the
authority of Coca-Cola Co. v. Pepsi-Cola Co., (1942), 2 D.L.R. 657 (P.C.) where Coke
sued Pepsi for violating its trade-mark. The courts ruled that “Cola” was simply a
descriptive word identifying a type of beverage, and that the “distinguishing feature”
of the Coca-Cola trade-mark was the word “Coca.” And because the distinguishing
feature was not borrowed, there was no likelihood that the average person would get
those trade-marks confused. This contention is somewhat supported by the decision
reported as J.P. Kapoor v. Micronix India, 1994 Supp (3) SCC 215, where the Supreme
Court observed that the word, “micro” being descriptive of micro technology used for
production of electronic items of daily use, could not be claimed exclusivity. Here, the
word “scrabble” by the defendant's showing, based

Page: 219

on the “Free Online Dictionary” is to:

“1. To scrape or grope about frenetically with the hands.

2. To struggle by or as if by scraping or groping.
3. To climb with scrambling, disorderly haste; clamber.
4. To make hasty, disordered markings; scribble.
v.tr.
“1. To make or obtain by scraping together hastily.
2. To scribble on or over.
n.
1. The act or an instance of scrabbling.
2. A scribble; a doodle.” (http://www.thefreedictionary.com/scrabble visited on
15-9-08, at 23-17 hrs)
37. The above facts show that ‘SCRABBLE’ is not per se descriptive of the word
game, unlike, say MONOPOLY or CROSSWORD, which are close to the genus. No doubt,
its extensive use and popularity has resulted in the word being used to describe the
game. But that is precisely what the plaintiffs contend, in support of their argument
about distinctiveness of the mark. In evaluation of these competing claims, the court
cannot be unmindful of the fact that language is an evolving and organic system,
which assimilates all kinds of usage, customs and convenient descriptions of objects,
processes, systems, places and persons. The journey begun by a word with one
meaning, might well end up with an entirely different one, the original meaning
obscured in course of time. Etymological adventurism by the court should not lead to
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loss of distinctiveness of a mark which is part of the popular lore. The plaintiffs have
shown that SCRABBLE, according to the Oxford Dictionary is a proprietary word game.
They have also produced other supporting evidence of its extensive use, as word mark
for the game. These, the registration which they undeniably hold, in respect of the
mark, their claim of sales in India to the extent of Rs. 13 crores, (of the game) and
their averment to having spent Rs. 51 lakhs in advertisement, prima facie entitles it to
protection; denial, of interim injunction at this stage would result in irreparable injury,
and the danger of genricness of the mark, with consequent loss of distinctiveness.

Page: 220

38. The defendants' mark, SCRABULOUS is too close, phonetically and semantically
to the plaintiffs' mark, to be an original inventive term. They have not furnished any
explanation, why they hit upon this term, for a word game. Besides, the hyperlinks,
which they provide in their websites, to the plaintiffs' websites, evidences that
SCRABBLE inspired them to coin their mark. Indeed, the tenor and nature of their
argument was that SCRABBLE is generic, incapable of protection, and their variant
SCRABULOUS thus cannot be injuncted. Besides, the material produced by the
plaintiffs, in the form of users' comments, culled out from various ‘blog’ archived
articles, as well as from ‘Facebook’ and the defendants' “Scrabulous Wall” reveal that
the users played the game scrabulous, on the basis of web search for ‘online scrabble’.
All these are prima facie proof of deceptive similarity and confusion amounting to
infringement.
39. The court is also of the opinion that unless appropriately injuncted, from
continuing to use SCRABULOUS or any other trademark deceptively or confusingly
similar to the plaintiffs' the defendants would continue these acts of infringement, and
divert internet traffic to their websites, causing considerable commercial loss to the
plaintiffs. The balance of convenience too lies in favour of the plaintiffs for grant of
temporary injunction, because, the defendants have not shown how their use is bona
fide, or how they would be prejudiced. On the other hand, the denial of relief would
cause harm and injury to the plaintiffs.
40. In view of the above discussion, the defendants, their partners, agents, or any
business associates, etc are hereby restrained from infringing the plaintiffs' registered
trademark in SCRABBLE; they shall not use the name SCRABULOUS, or any other
mark deceptively or confusingly similar to SCRABBLE, in any manner, including by
using it as part of domain name, or other use such as hyperlinking, metatagging,
advertisement, or any other such form of use, till disposal of the suit. IA No.
2352/2008 is allowed in these terms. No costs.
CS(OS) 344/2008
List on 10.02.2009 before the Joint Registrar for admission/denial of documents.
———
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2006 SCC OnLine Del 60 : (2006) 128 DLT 238 : (2006) 32 PTC 157 : 2006 CLC
350

Delhi High Court

(BEFORE SANJAY KISHAN KAUL, J.)

Microfibres INC. … Plaintiff;

versus
Girdhar & Co. & Ors. … Defendants.
CS (OS) No. 1480 of 2002
Decided on January 13, 2006

Page: 239

The Judgment of the Court was delivered by

SANJAY KISHAN KAUL, J.—The plaintiff's grievance of violation of its copyright in the
artistic works applied to upholstery fabrics and the allegation of an attempt to pass off
the goods of the defendants as that of the plaintiff has given rise to the present
litigation.
2. The plaintiff is a company incorporated under the laws of the USA and is stated
to be engaged worldwide in the business relating to manufacturing, marketing, selling
and exporting of upholstery fabrics directly or through its subsidiaries and affiliates.
The brand name of the plaintiff is stated to be Microfibres. The business of the plaintiff
is stated to have commenced in the year 1926 and the plaint states that on the
upholstery fabrics are printed, unique and original artistic works which are
conceptualized and drawn/printed by either its employees or other persons who have
assigned the copyright in the works to the plaintiff. More than 1000 people are stated
to be employed by the plaintiff and a global annual turnover is stated to be more than
$ 200 million. The plaintiff's product under the brand name Microfibres is stated to be
sold in more than hundred countries including India and has wide presence in the
manufacture and sale of synthetic nylon flox fabric and velvet upholstery fabric.
3. The plaintiff claims to have extensive international reputation with manufacturing
bases and operations in several countries of the world and there are more than 250
brands of microfibres which are apparently sold in India. The plaintiff claims to have
obtained registration of copyright of most of its original artistic works in the drawings
applied by it on upholstery fabric and the details of

Page: 240

such registration are set out in para 7 of the plaint. However during the course of
arguments, the plaintiff concentrated the claim in respect of some of these artistic
works in respect of which it was alleged that the defendants had violated the
copyright. The details of the same are as under:

S.NO. TITLE REGISTRATION NO. DATE OF REGN.

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15. HALLMARK V Au-366-558 20.06.1996

21. JUNE V Au-432-374 19.05.1998
23. LEIPZIG V Au-380-615 24.01.1997
31. MEISSEN V Au 391-653 20.05.1997
33. PALMETTO V Au-356-331 21.11.1995
38. PRESTIGE V Au-406-109 17.12.1997
42. TARSUS V Au-458-207 12.11.1999
46. BLACK POOL*
56. REGIA* V Au-498-306 06.12.2000
4. It may be noticed that in the said para 7 of the plaint itself, it has been stated
that copyrights in these works were being filed except the artistic works which are
marked with an asterisk for which the registered copyrights are not readily available.
In respect of some of the artistic works, there is stated to be no registration of the
copyright. It is, however, claimed that whether such a copyright is registered or not, in
view of the provisions of the Copyright Act, 1957 (hereinafter referred to as the
Copyright Act) the copyright in the artistic works subsists and gives an exclusive right
to the owner thereof.
5. The plaintiff has claimed that the artistic work constitutes original artistic work as
defined within the meaning of Section 2(c) of the Copyright Act. The plaintiff also
claims that it enjoys copyright protection in India as a consequence of the provisions
of Section 40 of the Copyright Act and the Berne Convention, Universal Copyright
Convention read with Indian International Copyright Order, 1999.
6. In May, 2002, the plaintiff discovered that defendant No. 2 was manufacturing
and marketing upholstery fabric through defendant No. 1 as the distributor which
infringed the copyright of the plaintiff. Such sale is also alleged to amount to passing
off the goods of the defendant as if they were the goods of the plaintiff. The
defendant's goods are alleged to be inferior and the use of the artistic work of the
plaintiff on upholstery fabric is unauthorized and dishonest. No consent of the plaintiff
was taken.
7. The plaintiff claims exclusive rights in respect of the copyright work in view of
provisions of Section 14(c) of the Copyright Act and the infringement of the
defendants is stated to be covered under the provisions of Section 51 of the Copyright
Act.

Page: 241

8. The upholstery fabric manufactured and sold by the defendants is stated to bear the
artistic works which are identical copies or colourable imitations of the artistic work in
which the plaintiff has a copyright and all the distinctive features of the plaintiffs
artistic work is alleged to have been copied. The defendants' conduct is thus stated to
be dishonest as the defendants are stated to have strained every nerve to come as
close to plaintiff's product as possible. It is thus alleged to be a slavish copying of the
artistic work of the plaintiff. The object is stated to be to encash on the reputation and
goodwill earned by the plaintiff in respect of its goods.

9. A composite action has been brought both for infringement of copyright and for
passing off. The plaintiff has also claimed damages.
10. The suit has been contested by the defendants and the principal defence raised
is that the plaintiff is not entitled to protection under the Copyright Act. This plea is
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based on the fact that the artistic works are actually designs relating to textile
products and come within the scope of the Designs Act, 2000 (hereinafter referred to
as the Designs Act, 2000). The plaintiff has failed to apply for registration of designs in
India under the provisions of the said Act or the predecessor Act being the Designs
Act, 1911 (hereinafter referred to as the Designs Act, 1911). The plaintiff having failed
to complete the requisite formalities under either of the two designs acts, is alleged to
be now seeking to claim protection under the Copyright Act, which is not permissible.
It is claimed that in textile trade, the designs in use are built around permutations and
combinations of a limited number of motifs/imitations drawn from various sources and
requiring very little by way of distinguishing variations to claim originality. Thus the
three fold submission of the defendants is:
(i) The plaintiff was itself conscious of the fact that registration was required under
the Designs Act and had applied for designs to be registered in U.K. under the
local designs act;
(ii) The certificate relied upon and issued by the United States Copyright Office
refers to the subject as fabric designs and not artistic works;
(iii) The Indian Patent and Designs Office has confirmed vide its letter dated
19.7.2002 that the subject designs being textile designs are registrable under
the Designs Act, 2000.
11. The defendants have also alleged that the plaintiff is guilty of suppressio veri
and suggestio falsi. This plea is based on the allegation that the plaintiff has failed to
disclose the prior litigation including criminal proceedings where investigation officer
has submitted a report to the Court clearly stating that no case under the copyright
law had been made out.
12. The stand of the defendants is that the designs in respect of which the plaintiff
claims proprietary right and protection under the Copyright Act, are all

Page: 242

textile designs which are aesthetic, ornamental and visual in nature with an appeal to
the eyes only. It is thus the submission of the defendants that such features cannot be
subject matter of copyright as they do not constitute artistic work and are not capable
of protection within the meaning of Section 14(c) of the Copyright Act. In case novelty
existed in the same, the statutory protection in such features could only be under the
provisions of Designs Act, 2000 by obtaining necessary registration thereunder. The
textile fabrics are registrable subject matter of design and artistic work is specifically
excluded from the definition of design. Such exclusion is specifically directed to
paintings, drawing, pictures, etc. which are not industrially applied to articles. The
alternative plea raised is that in view of provisions of Section 15(2) of the Copyright
Act, the copyright in any design which is capable of being registered but has not been
so registered, ceases as soon as any article to which the design has been applied has
been re-produced more than 50 times by an industrial process by the copyright owner
or his licensee.

13. A further aspect emphasized is that there can be no deception as the plaintiff
admittedly sells its products under the brand name ‘Microfibres’ while the defendants
sell under the brand name ‘Velveleen’.
14. Defendant No. 2, the manufacturer, has specifically pleaded that it is only by
making use of the motifs/imitations drawn from various sources and use of the
elements of the public domain and combining the same with its own creative
ingenuity, a wide variety of flox fabrics has been produced. The plaintiff's right to
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claim exclusivity in the design as a proprietor is denied.

15. The provisions of Section 15 of the Copyright Act have been strongly relied
upon for the plea that no copyright subsists in any design which is registered under
the Designs Act, 1911. Further, copyright under Section 15(2) of Copyright Act in any
design which is capable of being registered, but has not so been registered, ceases as
soon as the article to which the design has been applied has been re-produced more
than 50 times. In view of there already being a vast number of re-productions, the
copyright, if any, is stated to have ceased. The Designs Act, 1911 has been referred to
show that two separate classes for registration of textile designs are provided in
Classes 13 and 14 of the Fourth Schedule dealing with classification of goods. The
defendant No. 2 has claimed that its designs were created through its own attempts,
independent of the plaintiff. However, no details of the same have been given.
16. In the replication, the plaintiff has specifically pointed out that in view of new
Designs Act, 2000, the definition of design as contained in Section 2(d) specifically
excludes any artistic work as defined in Class 2(c) of the Copyright Act.
17. The aspect of registration in UK under the local Designs Act is sought to be
explained by reason of the definition of design in the said Act where by once the
artistic work was applied industrially, the protection could have been enjoyed only with
respect to industrial obligation under that Act and not under the Copyright Act. The UK
Designs Act does not exclude artistic works.

Page: 243

18. In view of the aforesaid pleas raised, the matter in issue, in my considered view,
is more of a legal issue rather than a factual one. The legal issue arises from the
interplay and the rights and obligations under the Copyright Act, the Designs Act of
1911 and the Designs Act, 2000. In order to fully appreciate the controversy, it will be
necessary to have a brief overview of the provisions of the three Acts in question which
are relevant to the present matter.

19. Section 2(c) of the Copyright Act defines artistic work as under:
“‘artistic work’ means,—
(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plain), 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.”
20. An author in relation to an artistic work is defined in Section 2(d)(iii) of the
Copyright Act as under—
“in relation to an artistic work other than a photograph, the artist;”
21. The Section 13 of the Copyright Act stipulates the works in which copyright
subsists and an original artistic work is included in Section 13(1)(a). The Section 14
defines the meaning of a copyright and the relevant portion is as under:
“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) ………….
(b) ………….
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(c) in case of an artistic work,—

(i) to reproduce the work in any material form including depiction in three
dimensions of a two dimensional work or in two-dimensions of a three
dimensional 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 adaption of the work;
(vi) to do in relation to an adaption of the work any of the acts specified in
relation to the work in Sub-clauses (i) to (iv);.”
22. Section 15 deals with the special provisions regarding copyright in

Page: 244

designs registered and capable of being registered under the Designs Act, 1911 and
reads as under:

“15. Special provision regarding copyright in designs registered or capable of being

registered under the Designs Act, 1911.—
(1) Copyright shall not subsist under this Act in any design which is registered
under the Designs Act, 1911 (2 of 1911).
(2) Copyright in any design, which is capable of being registered under the Designs
Act, 1911 (2 of 1911), but which has not been so registered, shall cease as soon
as any article to which the design has been applied has been reproduced more
than fifty times by an industrial process by the owner of the copyright, or, with
his licence, by any other person.”
23. A reading of the aforesaid sections thus makes it clear that there cannot be a
subsisting copyright in any design which is registered under the Designs Act, 1911 or
which is capable of being registered, but not registered, under the Designs Act, 1911
once the article has been reproduced more than 50 times.
24. Section 17 provides that the first owner of a copyright in case of an artistic
work shall be the author. A copyright can be assigned under Section 18 and Section
19 provides for the mode of assignment. Such assignment in terms of Section 19 can
be valid only if it is in writing, signed by the assignor, or, his duly authorised agent.
The term for which a copyright exists is provided in Section 22 as under:
“22. Term of copyright in published literary, dramatic, musical and artistic works.—
Except as otherwise hereinafter provided, copyright shall subsist in any literary,
dramatic, musical or artistic work (other than a photograph) published within the
lifetime of the author until (sixty years) from the beginning of the calendar year
next following the year in which the author dies.
Explanation—In this section the reference to the author shall, in the case of an work
of joint authorship, be construed as a reference to the author dies last.”
25. Chapter XI provides for infringement and Section 51 stipulates when a
copyright is infringed and reads as under:
“51. When copyright is infringed—Copyright in a work shall be deemed to be
infringed—
(a) when any person, without a licence granted by the owner of the copyright or the
Registrar of Copyrights under this Act or in contravention of the conditions of a
licence so granted or of any condition imposed by a competent authority under
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this Act,
(i) does anything, the exclusive right to do which is by this Act conferred upon
the owner of the copyright, or

Page: 245

(ii) permits for profit any place to be used for the communication of the work to the
public where such communication constitutes an infringement of the copyright in the
work, unless he was not aware and had no reasonable ground for believing that such
communication to the public would be an infringement of copyright; or

(b) when any person—

(i) makes for sale or hire, or sells or elts for hire, or by way of trade displays or
offers for sale or hire, or
(ii) distributes either for the purpose of trade or to such an extent as to affect
prejudicially the owner of the copyright, or
(iii) by way of trade exhibits in public, or
(iv) imports into India, any infringing copies of the work:
Provided that nothing in sub Clause (iv) shall apply to the import of one copy
of any work, for the private and domestic use of the importer.
Explanation—For the purpose of this section, the reproduction of a literary,
dramatic, musical or artistic work in the form of a cinematograph film shall be
deemed to be an ‘infringing copy’
26. In exercise of the power conferred by Section 40 of the Copyright Act, the
International Copyright Order, 1999 was published in the Gazette of India dated
6.4.1999. Para 3 of the said order postulates that subject to the provisions of Paras 4,
5 and 6, all provisions of the Copyright Act, except those in Chapter VIII and those
other provisions which apply exclusively to the Indian works, shall apply to any work,
first made or published in a country mentioned in Part I, II, III, IV or VI of the
Schedule in like manner as if it was first published in India. The United States of
America is mentioned at serial No. 56 of Part III.
27. The Designs Act, 1911 defines a design under Section 2(5) as under:
“2.(5) ‘design’ means only the features of shape, configuration, pattern or ornament
applied to any article by any industrial process or means, whether manual,
mechanical or chemical, separate or combined, which in the finished article appeal
to and are judged solely by the eye; 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, or property mark as defined in
Section 479 of the Penal Code, 1860;
28. Part II deals with the registration of designs and Section 47 stipulates that
when a design is registered, the registered proprietor of the design shall have
copyright in the design during five years from the date of registration.

Page: 246

29. Section 77 empowers the Central Government to make rules, and in exercise of
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said powers, the Design Rules, 1933 were notified. The Fourth Schedule give the
classification of goods and the relevant schedule is as under:

“THE FOURTH SCHEDULE

Classification of goods
Class 13—Printed or woven designs on textile goods (other than checks or stripes)
Class 14—Printed or woven designs on textile goods being checks or stripes.”
30. The Designs Act, 2000 was enacted to provide a more effective protection to
the registered designs. In terms of Section 48 of this Act, the Designs Act, 1911 was
repealed. However, any notification, rule, etc. under the old Act was to continue to be
in force. Section 2(d) defines the design and was made more comprehensive and it
reads as under:
“2. Definitions.—
… … … … … … … …
(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 devise, 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 Penal Code, 1860
or any artistic work as defined in Clause (c) of Section 2 of the Copyright Act,
1957 (14 of 1957).”
31. A reading of the aforesaid definition would show that as compared to the earlier
definition inter alia any artistic work as defined in Clause 2(c) of Copyright Act, 1957
was specifically excluded.
32. A copyright in a registered design was provided in Section 11 under Chapter III
and reads as under:
“11. 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

Page: 247

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.”

33. A statutory monopoly thus is provided for a period of ten years extendable by
another five years totalling to 15 years.
34. Section 22 stipulates the rights conferred on a registered design and reads as
under:
“22. Piracy of registered design.—(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
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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

Page: 248

Section (2), where any ground on which the registration of a design may be cancelled
u/s 19 has been availed of as aground of defence and sub Section (3) in any suit or
other proceeding by the Court, in which the suit or such other proceeding is pending,
to be High Court for decision.

(5) When the Court makes a decree in a suit under sub 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.”
35. In terms of Section 47, the Central Government is authorized to make rules and
thus Design Rules, 2001 were promulgated and Class 5 Entry 05-05 of the Rules reads
as under:
“CLASS 5
… … … … … … … …
05-05. Textile fabrics
Note.—(a) Including textile fabrics, woven, knitted or otherwise manufactured,
tarpaulins, felt and loden.”
36. In the conspectus of the aforesaid position, the following issues were framed:
“1. Whether there is any Copyright in the stated artistic work of the plaintiff?
—OPP
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2. Whether any Copyright subsists in favour of the plaintiff in view of the provisions
of Section 15 of the Copyright Act? —OPP
3. Whether the plaintiff was required to register the artistic work under the Designs
Act, 2000? —OPP
4. Whether the Designs Act, 1911 would have any application to the stated artistic
works of the plaintiff? If so, to what effect? —OPD
5. Whether the defendant is passing off its goods as those of the plaintiff?
—OPP
6. Whether the plaintiff is entitled to rendition of accounts from the defendant? If
so, for what period? —OPP
7. Whether the plaintiff is guilty of suppressing any material fact? —OPD
8. Relief.”
37. The parties on the said date of 26.9.2005, when the issues were framed, agreed
that the suit can be decided on the basis of documents filed and no oral evidence was
necessary. Learned Counsel for the parties further agreed that the documents may be
read in evidence without formal proof and the matter be heard finally on that basis.

Page: 249

Issue No. 1:

38. The plaintiff claims to be the owner of the copyright in the artistic works which
are applied on upholstery fabrics. The certificates of registration issued by the United
State Copyright Office have been filed. The registration is stated to have been done
under the 1976 Copyright Act of United States. However for a number of artistic
works, including a number of those in question, the registered copyrights are stated
not to be readily available. For some of the artistic works, the plaintiff has not even
registered the copyrights. The protection is however sought on the basis that the
copyright in the artistic works subsists and gives an exclusive right to the plaintiff.
39. The plaintiff has placed strong reliance upon the Berne Convention for
protection of literary and artistic works. Article 16(a) of the Convention is relied upon
to substantiate the plea that the protection exists automatically and there is no
registration required in India in view of India being a signatory to Berne Convention,
the Universal Copyright Convention, 1971 and the International Copyright Order 1999
being promulgated.
40. Learned Counsel for the plaintiff referred to the judgment of the Supreme Court
in Gramophone Company of India Ltd. v. Birendra Bahadur Pandey, (1984) 2 SCC 534
where the international conventions were discussed and it was emphasized that:
“The next step for us to consider is whether there is any general Convention on
Copyright. An artistic, literary or musical work is the brain-child of its author, the
fruit of his labour, and, so, considered to be his property. So highly is it prized by
all civilized nations that it is thought worthy of protection by national laws and
international conventions relating to copyright. The International Convention for the
protection of literary or artistic works first signed at Berne on September 9, 1886,
was revised at Berlin in 1908, at Rome in 1928, at Brussels, in 1948, at Stockholm
in 1967 and finally at Paris in 1971. Article 1 of the Convention, as revised,
constitutes the countries to which the Convention applies into a Union for the
protection of the rights of authors in their literary and artistic works. The expression
‘literary and artistic works’ is defined to include every production in the literary,
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scientific and artistic domain whatever may be the mode or formation of its
expression. It is provided that the work shall enjoy protection in all countries of the
Union. Various detailed provisions are made in the Convention for the protection of
the works. Article 9 provides that authors of literary and artistic works protected by
the Convention shall enjoy the exclusive right of authorising the reproduction of
these works in any manner of form. It is also expressly stipulated that any sound or
visual recording shall be considered as a reproduction for the purposes of the
Convention. We are not really concerned with the several details of the Convention.
But we may refer to Article 16 which provides—

Page: 250

1. Infringing copies of a work shall be liable to seizure in any country of the Union
where the work enjoys legal protection.

2. The provisions of the preceding paragraphs shall also apply to reproductions

coming from a country where the work is not protected, or has ceased to be
protected.
3. The seizure shall take place in accordance with the legislation of each country.
India, we may mention, is a party to the Berne Convention.”
41. The Full Bench of Madhya Pradesh High Court in K.C. Bokadia v. Dinesh
Chandra Dubey, 1999 (1) MP LJ 33 has observed that there is no legislative intent to
make registration of a copyright mandatory. Para 8 reads as under:
“8. A careful analysis of the Scheme and the provisions of the Act does not disclose
any legislative intention to make registration of copyright mandatory or to take
away civil or criminal remedies in the event of nonregistration of copyright. On the
other hand, some of the provisions point a contrary conclusion. Copyright is the
exclusive right, subject to the provisions of the Act, to do and authorise the doing of
any of the acts enumerated in Section 14 in respect of a work or substantial part
thereof. The first owner of the copyright shall be the author of the work. In other
words, the ownership of the copyright is a logical consequence of the authorship.
Copyright does not arise from registration of copyright. Provision regarding
registration and maintenance of register is basically a provision to enable entries to
be made in respect of relevant particulars including the names of owners of
copyright. Unless there is an existing copyright and a person is the owner of of a
copyright, the question of applying for or making entries in the register of
copyrights does not arise. Registration follows the copyright and not vice-versa.
Certified copies entries in the register are only prima facie evidence without further
proof and they are not conclusive. A copyright when it is propounded or challenged
has to be duly established in a competent Court. There is no specific provision as in
the trade and Merchandise Marks Act or Indian Partnership Act barring institution of
legal proceedings in the absence of registration. Having regard to all these
circumstances it has to be held that registration is not mandatory and for breach of
copyright, civil or criminal remedy can be resorted to without registration.”
42. The Division Bench of Kerala High Court in R. Madhavan v. S.K. Nayar; AIR
1988 Kerala 39 has taken the same view that Sections 44 & 45 of the Copyright Act
are only enabling provisions and do not effect the common law right to sue for
infringement of copyright. In view of the aforesaid position, the plaintiff contended
that the words in Section 2(c) of the Copyright are wide and inclusive and the
definition is not narrowed on account of any intent behind making of such work or
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the intent with respect to any of such work. Thus, the plaintiff claims that an artistic
work would subsist in the works in question of the plaintiff. It is thus the submission
of the plaintiff that even if known and existing material in public domain are
rearranged and compiled in a particular way, so long as the re-arrangement of the
compilation is original, it would be an artistic work for purposes of Copyright Act. This
originality is an essential ingredient and the purpose of copyright law is to provide the
owner of a copyright with specific exclusive economic rights. This is the reason that
author/creator of the work not made in course of employment is usually the first owner
and has the exclusive right to reproduce, publish, publicly perform, broadcast and
adapt the work.

43. Learned Counsel for the plaintiff relied upon the judgment of the Privy Council
in Macmillan and Company Limited v. K. and J. Cooper, A.I.R. 1924 Privy Council 75.
In the said judgment, the observations of Lord Halsbury in the case of Walter v. Lane,
(1990) A.C. 539 were quoted with approval. Lord Halsbury observed as under:
“I should very much regret if I were compelled to come to a conclusion that the
state of the law permitted one man to make a profit and to appropriate to himself
what has been produced by the labour, skill and capital of mother. And it is not
denied that in this case the defendant seeks to appropriate to himself what has
been produced by the skill, labour and capital of others. In the view I take of this
case the law is strong enough to restrain what to my mind would be a grievous
injustice.”
44. A reference has also been made in Macmillan and Company Limited's case
(supra) to the observations of Justice Story in Frederick Emerson v. Chas. Davies,
Story's United States Reports Vol. 3 p. 768 to the effect that three important aspects
have to be kept in mind, which are as under:
“First, that any new and original plan, arrangement or compilation of material will
entitle the author to copyright therein whether the materials themselves be old and
new. Second, that whosoever by his own skill, labour and judgment writes a new
work may have a copyright therein, unless it be directly copied or evasively imitated
from another's work. Third, that to constitute piracy of a copyright it must be shown
that the original has been either substantially copied or to be so imitated as to be a
mere evasion of the copyright.”
45. In Frederick Emerson's case (supra), Justice Story further observed at page 778
as under:
“The book of the plaintiff is, in my judgment, new and original in the sense in which
those words are to be understood in cases of copyright. The question is not whether
the materials which are used are entirely new and have never been used before, or
even that they have never been used before for the same purpose. The true
question is whether the same plan, arrangement and combination of materials have
been used before for the

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same purpose or for any other purpose. If they have not, then the plaintiff is entitled
to a copyright, although he may have gathered hints for his plan and arrangement or
parts of his plan and arrangement from existing and known sources. He may have
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borrowed much of his materials from others, but if they are combined in a different
manner from what was in use before … he is entitled to a copy right…. It is true that
he does not thereby acquire the right to appropriate to himself the materials which
were common to all persons before, so as to exclude those persons from a future use
of such materials; but then they have no right to use such materials with his
improvements super-added, whether they consist in plan, arrangement, or
illustrations, or combinations for these are strictly his own … In truth, in literature, in
science and in art there are and can be few, if any, things which, in an abstract sense,
are strictly new and original throughout.”

46. A reference has also been made in the judgment of Macmillan and Company
Limited's case (supra) to the judgment in the case of University of London Press Ltd. v.
University Tutorial Press Ltd., (1916) 2 Ch. 601 in which Mr. Justice Peterson dealing
with the meaning of the words ‘original literary work’ said at page 608:
“The word ‘original’ does not in this connection mean that the work must be the
expression of original or inventive thought. Copyright Acts are not concerned with
the origin of ideas but with the expression of thought; and in the case of ‘literary
work’, with the expression of thought in print or writing. The originality which is
required relates to the expression of the thought; but the Act does not require that
the expression must be in an original or novel form, but that the work must not be
copied from another work—that it should originate from the author.”
47. Learned Counsel for the defendants, on the other hand, emphasized that the
crucial question to be considered would be whether the subject work in question is an
‘artistic work’ protected under the provisions of the Copyright Act or a ‘design’ under
the Designs Act, 2000 (or the Designs Act, 1911). The defendants contended that the
subject work in dispute are floral designs which are applied upon fabrics used for
upholstery through an industrial process. This is the reason why in United Kingdom
(for short, ‘U.K.’), the plaintiff has registered the subject work as a design. A practical
proof of this is stated to be the letter dated 19.7.2002 issued by the Patent Office to
the effect that ‘textile design fabrics’ are registrable under the Designs Act, 2000.
Certain certificates of registration of such fabric patterns have also been placed on
record.
48. Learned Counsel for the defendants referred to the definition of ‘artistic work’ in
Section 2(c) of the Copyright Act to contend that the only category in which the work
in question can fall would be ‘painting’. The word ‘painting’, it was contended, is
meant to refer to works which are created to have independent

Page: 253

existence and not to patterns or configurations which are merely created for being
applied through an industrial process on another article. In this behalf, a reference has
been made to the judgment of Gujarat High Court in Deepak Printers, Ahmedabad v.
The Forward Stationery Mart, (1976) XVII Guj. LR 338 to substantiate the plea that
‘artistic work’ is not concerned with the production of commercial articles with the help
of ideas borrowed from an artist as the purpose is not to prevent rival manufacturers
from using the same idea or to prevent competition between them.

49. In view of the aforesaid, it was contended that if the definition of ‘design’ is
seen under Section 2(d) of the Designs Act, 2000 or under Section 2(5) of the Designs
Act, 1911, in a ‘design’, the features are merely ornamental (i.e., nonfunctional) and
are applied to another article (which would be the textile fabric in the present case) to
provide it visual appeal and the features constitute an integral part of the article and
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has no independent existence. Thus, the subject work is stated not to be a ‘painting’
in the sense of a work of M.F. Hussain having independent existence, but is clearly a
‘design’ forming an integral part of the fabric.
50. The economic impact of the aforesaid has also been emphasized. If the subject
work is an ‘artistic work’, the term of legal protection it will enjoy under Section 22 of
the Copyright Act, would be the lifetime of its author + 60 years and it would be
enforceable not only through civil proceedings, but also incur criminal liabilities.
However, if the subject work is a ‘design’, then the protection, it enjoys is for a
maximum period of 15 years under the provisions of Section 11 of the Designs Act,
2000. Needless to say that in terms of the said section, only if the design is registered,
the said period of copyright in the design shall exist. It was emphasized that even in
the case of inventions under the Patents Act, the protection is limited to only 20 years.
51. The plea of the plaintiff is also sought to be negated on the issue of definition of
a ‘design’ under Section 2(d) of the Designs Act, 2000 whereby an ‘artistic work’ as
defined in Clause (c) of Section 2 of the Copyright Act has been specifically excluded.
The submission was, thus, advanced that this would have the effect of rendering the
law of designs redundant for the simple reason that each design registered thereunder
would be able to trace its origin to a diagram, chart, drawing, etc. and, thus, cease to
be governed by the Designs Act. The legislative intent could not have been this
because the law of designs is based on the same principle as applicable to other
monopolies and to fuel industrial innovativeness by granting limited time-limit to the
monopolies and allow others to make use of them after they have passed into the
public domain. Thus, the plea of the plaintiff, if accepted, would be anti-competitive
and would throttle and stagnate the industry. Learned Counsel referred to judgment of
the Privy Council in Interlego A.G. v. Tyco Industries Inc., (1988) R.P.C. 343 wherein it
has been observed as under:
“The definition of ‘design’ in Section 1 (3) of the Act of 1949 is hardly a model of
Parliamentary draughtsmanship and this is by no means the first

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case in which its meaning and application have been called in question. In
approaching he question of construction there has to be borne in mind that the
purpose of the Act, as appears both from its terms and its legislative history, is to
protect novel designs devised to be ‘applied to’ (or, in other words, to govern the
shape and construction of) particular articles to be manufactured and marketed
commercially. It is not to protect principles of operation or inventions which, if
protected 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 articles of a design not substantially different from the
registered design. The emphasis therefore is upon the visual image conveyed by the
manufactured article.”

52. A reference was also made to the judgment in Premier Hangers CC v. Polyoak
(PTY) Ltd., 1997 (1) SA 416 (Appellate Division). Both the parties were manufacturers
and suppliers of hangers to the clothing industry and were competitors. The litigation
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arose from a claim by Polyoak that Premier was passing off hangers manufactured by
it as being those of Polyoak. Infringement of certain designs registered in terms of the
Designs Act were also pleaded. It was observed as under:
“The evidence of Louw shows that trends, fashions, and the hangers of other
manufacturers, are routine sources of inspiration in the field. A number of Polyoak's
designs were based on what Louw had seen overseas or knew to be designs being
used overseas. Louw referred to the imitation of a Marks & Spencer hanger as an
example. The Uni range itself was produced with a particular Section (described by
Louw as the C Section) copied from an overseas hanger. It was also said that
hanger design is influenced by the need to adapt a hanger so as to display dresses
with, for example, broad straps, or to necessitate further modification when narrow
straps are in favour. Another example given by him was that a particular material
such as silk may become fashionable. This would require rounded edges to the
hangers as sharp edges would be unsuitable for such use. Another feature of the
industry testified to by Louw was that changes were made to hangers incrementally
and largely in accordance with customer suggestions or demands. So, too, sizes of
hangers are determined solely by the standard measurements of dress-makers, and
label plates are added, altered or removed in accordance with the customers’
wishes. I say this not to denigrate Polyoak's endeavours but

Page: 255

to illustrate that in the general sense of justice of the community (quite apart from the
question of design registration) copying in this field would not be regarded as
improper. In short, copying is very much the order of the day while individual
innovations are rare.”

53. The defendants contended that the legislative intent behind the repealed
Designs Act, 1911 and coming into force of the new Designs Act, 2000 remained the
same and the exclusion of ‘artistic work’ in the definition in the new Designs Act, 2000
is only clarificatory and was intended to exclude only artistic work pure and simple
such as paintings, sculptures and works of art.
54. To substantiate the aforesaid plea, a reference was made to the judgment of
learned Single Judge of this Court in I.A. Nos. 6597 and 6944 of 1991 in Suit No.
1481 of 1991 titled ‘S.S. Sarna Inc. v. Talwar & Khullar Pvt. Ltd.’ decided on 8.8.1991.
The subject matter of dispute was the allegation of copying by the defendants of the
original artistic works owned by the plaintiff in the form of artistic metal sculptors such
as fire boards, welcome wreaths, decorative hooks, wall hangings/small fire boards
and planters, etc. The plaintiff was a company incorporated under the laws of United
States of America (for short, ‘USA’). Learned Single Judge found that it was really not
in dispute that the basic idea of such products produced by the defendants appeared
to have emanated from the plaintiff. It was observed as under:
“… Copyright Act in general protects the artistic work, but the idea behind excluding
certain designs from the protection under the Copyright Act, although otherwise the
same design might have been so entitled to protection, appears to be to avoid any
hindrance being caused to the manufacture and sale of industrial articles which in
the absence of a provision similar to Section 15 could not be achieved. The
intention of the Legislature appears to be very clear that wherever any artistic work
has to be in a commercial exploitation by the owner of the copyright the same
should be excluded from the protection under the Copyright Act and should be
provided protection under the Designs Act, 1911 only provided the said design is
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registered under the Designs Act. The reference to the definition of term ‘Design’
under the Designs Act is wide enough, in my opinion, to cover the artistic work of
the nature similar to the ones that we are concerned in the present suit. Plaintiffs
have further submitted that the term ‘Design’ is not defined under the Copyright
Act. In my opinion, when a particular term is used in reference to an Act and that
term ‘design’ has been defined under that Act, it can be safely presumed that the
Legislature implied that it is the definition of the term under that particular Act (The
Designs Act, 1911) which can be looked into to decide the present controversy.”
55. Learned Counsel for the defendants referred to the judgment of another learned
Single Judge of this Court in Samsonite Corporation v. Vijay Sales, (2000) F.S.R. July
(c) Sweet & Maxwell 463. The dispute related to a range

Page: 256

of suitcases known as System 4 range and the plaintiff claimed that the defendants
suitcases infringe the copyrights relating to the said range and that the defendants
were passing off suitcases for those of the plaintiff. The dispute was similar whether
the plaintiff's drawings were artistic work. If they were designs and had not been
registered under the Designs Act, they were not subject to copyright protection. It was
observed as under:

“60…. The main thrust of the argument of learned Senior Counsel of the plaintiffs
was that the suitcases manufactured by the plaintiffs would easily attract any
person because it has got a powerful and attractive shape which would immediately
attract the eye. Learned Senior Counsel submitted that people travelling by air, rail
and other modes of transport would look at the shape of the box and then would
make inquiries as to who had manufactured it and that they would like to buy one.
Therefore, the whole purpose of the manufacture was to attract the eyes of
customers. Therefore, it would follow from the argument on behalf of the plaintiffs
that it is clearly a design coming within the meaning of the definition of design,
under the Designs Act, 1911, and coming within the meaning of Section 15 of the
Copyright Act, 1957. Consequently, the plaintiffs cannot claim any copyright as the
same had not been registered. The fact that it is being manufactured industrially is
not in dispute. Prima facie, I accept the submission on behalf of learned Counsel for
the defendants that inasmuch as the plaintiffs had not registered the designs the
plaintiffs cannot claim any protection under the Copyright Act, 1957 with reference
to the drawings.”
56. Learned Counsel for the defendants also pointed out the documents filed on
record to show that the textile fabrics had been registered both under the Designs Act,
1911 and the Designs Act, 2000.
57. In order to appreciate the object of introduction of the new Designs Act of
2000, various proceedings were referred to by learned Counsel for the defendants. The
Statement of Objects and Reasons of the Designs Bill, 1999 provided that the intent
was 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 very use of available designs. The definition of ‘design’ has been
amplified to incorporate therein the composition of line and colours so as to avoid
overlapping with the Copyright Act regarding definition of ‘design’ in respect of
‘artistic work’. The proceedings from the Parliamentary Debate on the Bill were also
referred to to show that the concerned Minister of State had observed that the Act was
being amended to ‘provide help and protecting the rights of designers’. The Handbook
issued by the Design Office for information to the public was referred to which inter
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alia states as under:

What can be registered as a Design?
To qualify for registration as a design, an article should relate to the

Page: 257

rnamental or new shape, surface pattern, lines or colour with aesthetic look (Designs
of industrial plans, layouts or installation are not registrable).

It should be applicable to any product reproducible by industrial means

(Paintings/Sculptures and ‘works of art’ excluded).
58. Learned Counsel further referred to the judgment of learned Single Judge of
this Court in AGA Medical Corporation v. Faisal Kapadi, 2003 (26) PTC 349 (Del) where
it was observed as under:
“13…. This Court on a consideration of the matter and more particularly the
meaning of copyright and the definition of ‘design’ in the Designs Act is, prima
facie, of the view that the plaintiff does not have a subsisting copyright under the
Copyright Act, firstly; because it is capable of being registered under the Designs
Act though it has not been so registered and secondly; as per the plaintiff's own
showing, the devices to which the drawings have been applied, has been
reproduced more than 50 times by an industrial process by the plaintiff.”
59. The decision on this particular issue has a material bearing on even the
subsequent issues framed in the suit and, thus, had to be examined in-depth. The
crucial issue would, in my considered view, which has been rightly put forth in its
perspective by the learned Counsel for the parties, is whether the work in question can
be said to be an ‘artistic work’ within the definition of Section 2(c) of the Copyright Act
or was it a ‘design’ within the meaning of the Designs Act, 2000.
60. The work in question is no doubt the arrangement of motifs, flowers, leaves and
shapes which have been arranged in a particular manner. There is, thus, element of
labour and skill applied to have a particular pattern as observed in Walter v. Lane's
case (supra). There is also little doubt that the defendants have copied the same. This
would be apparent from the comparison of the designs of the fabrics of the plaintiff
and the defendants. To illustrate this aspect, some of the original and alleged
offending products are being reproduced herein-below:
Plaintiff's Product—‘LEIPZIG’
Defendants' Infringing Product
Plaintiff's Product—‘PRESTIGE’
Defendants' Infringing Product
Plaintiff's Product—‘HALLMARK’
Defendants' Infringing Product
Plaintiff's Product—‘MIESSEN’
Defendants' Infringing Product
Plaintiff's Product—‘JUNE’
Defendants' Infringing Product

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61. The defendants have attempted to throw doubts on the certificates of registration
issued by the Copyright Office at USA. However, once the parties have agreed that the
documents can be read in evidence, the documents filed do give sufficient proof of
such registration in USA. There have been also cases of assignment. It has been set
out in the plant that there are large number of staff of the plaintiff doing this very
work, while in respect of others, assignment has taken place. However, in respect of
some of the works, the documents are stated not to be available. It has been pleaded
that, in any case, the defendants are copying.

62. In order for the work of the plaintiff to qualify as an ‘artistic work’, it must fall
within the definition of Sub-section (c) of Section 2 of the Copyright Act. A reading of
the said provision would show that attempt of the plaintiff can only be to bring it
within the concept of ‘painting’. The comparison with the painting of M.F. Hussain
would be otiose as the work in question, in the present case, is not a piece of art by
itself in the form of a painting. There is no doubt that labour has been put and there is
some innovativeness applied to put a particular configuration in place. Such
configuration is of the motifs and designs which by themselves would not be original.
The originality is being claimed on the basis of the arrangement made. What cannot
be lost sight of is the very object with which such arrangements or works had been
made. The object is to put them to industrial use. An industrial process has to be done
to apply the work or configuration to the textile. It is not something which has to be
framed and put on the wall or would have any utility by itself. The two important
aspects are the object with which it is made (which is industrial) and its inability to
stand by itself as a piece of art. In fact, it has no independent existence of itself.
63. In India, we have special legislations governing the protection of different
nature of rights. Insofar as the industrial designs are concerned, the protection is
provided under the Designs Act, 2000, which came into force from May, 2001 and
repealed the earlier Designs Act, 1911. An important and relevant aspect is that both
under the old Act and the new Act, fabric designs on textile goods have been classified
as proper subject matter of design protection by inclusion as a specific class in the
Rules framed under the Acts. In the Designs Act of 1911, Classes 13 and 14 of the
Fourth Schedule of the Rules dealt with printed or woven designs of textile goods
other than checks and stripes and checks and stripes respectively. Such protection is
now provided under Class 5 of the new Design Rules of 2001.
64. Furthermore, the legislative intent is also to be kept in mind which is to provide
protection for a certain period of time for commercial exploitation. Thus, nature of
protection is quite different for an artistic work under the Copyright Act which is for
the lifetime of the author/creator + 60 years. This is not so in the case of commercial
exploitation as under the Designs Act and the Patent Act the period is much lesser. In
the present case, the configuration was made only with the object of putting it to
industrial/commercial use.
65. The exclusion of an ‘artistic work’ as defined in Section 2(c) of the Copyright
Act from the definition of ‘design’ under Section 2(d) of the Designs

Page: 259

Act, 2000 is only meant to exclude the nature of artistic works like painting of M.F.
Hussain. It is, thus, the paintings, sculptors and such works of art which are sought to
be specifically excluded from the new Act.

66. The observations of the learned Single Judge in S.S. Sarnalnc's case (supra)
succinctly set out the concept behind excluding certain designs from protection under
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the Copyright Act which was to avoid any hindrance being caused to the manufacturer
of sale and industrial articles. Thus, the intention of the Legislature has been
expressed as one to protect any artistic work which has to be commercially exploited
by the owner of the copyright by not providing the protection under the Copyright Act,
but under the earlier the Designs Act, 1911. A similar view was also expressed by
another learned Single Judge of this Court in Samsonite Corporation's case (supra). To
this extent, I see no difference between the intent under the old Act and the new Act.
A perusal of the Statement of Objects and Reasons for introduction of the new Act, the
handouts issued by the Design Office and the registrations made of textile fabrics both
under the old Act and the new Act leave little manner of doubt that the protection for
such configurations, designs or works (by whichever name it may be called) is
provided under the Designs Act. It is, thus, apparently clear that in the context of the
Indian Law, it is the Design Act of 1911 or 2000, which would give protection to the
plaintiff and not the Copyright Act. The application of mind and skill is not being
denied nor the fact that the defendants have copied the same, but that would still not
amount to the works in question being labeled as ‘artistic work’ within the definition of
Section 2(c) of the Copyright Act and, thus, the protection is not available under the
Copyright Act. Issue No. 1 is answered accordingly.
Issues Nos. 2 & 3:
67. The second issue arises from the provisions of Section 15 of the Copyright Act.
The section provides that copyright subsists under the Copyright Act in any design,
which is registered under the Designs Act, 1911 and in case a design is capable of
being registered under the Designs Act, 1911, the copyright shall cease as long 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 his licensee. It is not in
dispute that reproduction has occurred more than 50 times. It is not also in dispute
that there is no registration which has taken place under the Designs Act, 1911 (or
under the Designs Act, 2000).
68. An important aspect is that the designs and works have been registered in the
years 1998-1999 or even prior to that and put to industrial/commercial use. At the
relevant stage of time, it was the Designs Act of 1911 which was in operation since the
Designs Act, 2000 came into force only in May, 2001. The works of the plaintiff were
capable of registration under the Designs Act of 1911. The plaintiff, however, failed to
register the same at that relevant stage of time. It may be taken note of here that the
plaintiff itself has set out that it registered the patterns under the Designs Act in
England.
69. Learned Counsel for the defendants has also referred to judgment of the

Page: 260

House of Lords in King Features Syndicate Incorporated and Frank Cecil Betts, The
Personal Representative of Elzie Chrisler Segar, Deceased v. O. & M. Kleeman Ld.,
LVIII RPC 207. This judgment is commonly known as Popeye's case. The copyright
was claimed in respect of the fictitious character drawing known as ‘Popeye the Sailor’
which had originally appeared in a series of cartoons and later in cinematograph films.
The allegation of infringement related to reproduction of the character in the form of
toys and brooches. The author, when he produced the drawing, had no intention of
industrializing the same, but some years later, the character of Popeye had become
popular and the author proceeded to licence certain manufacturers to make articles in
the form of designs such as toys, brooches, etc. The relevant observations, however,
relate to the fact that the House of Lords found that the Legislature was drawing a
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distinction between the Copyright Act and what has been called design copyright or
copyright and design under the Patent and Designs Act. It was held that the latter is a
right distinct from the former, thus, the ‘design’ means only the feature of shape,
configuration, pattern or ornament applied to any other article by an industrial process
which in the finished article appeal to and are judged solely by the eye. The design,
thus, may be the shape of a coal scuttle, a basin, a motor car, a locomotive engine or
any material object and it may be shaped and sculptured to serve as a model for
commercial production. It may also be a drawing in the flat of a complex pattern
intended to be used for the manufacture of things such as linoleum or wall paper.
Designs copyright were, thus, held to be distinguished from artistic copyright. The
rights under the Patent and Designs Act were much narrower than those given by the
Copyright Act and in respect of such products, it was not intended that they should
have cumulative protection both under the Copyright Act and under the Patent and
Designs Act.

70. It may be noticed that learned Single Judge of this Court in Polymer Papers Ltd.
v. Gurmit Singh, 2002 (25) PTC 327 (Del) has considered the effect of Section 2(c) of
the Copyright Act and Section 11 of the Designs Act to come to the conclusion that
industrial drawings and designs in which copyright was claimed were for purposes of
manufacturing of filter related machines or components and as such clearly fell within
the meaning of ‘design’ as defined in the Designs Act of 2000 and since the alleged
designs had not been registered under the Designs Act, the plaintiff in the suit could
not claim any copyright therein. The submission of the plaintiffs that the copyright in
artistic works was not required to be registered under the Designs Act was repealed
since copyright was claimed of the industrial drawings and designs which were being
used for manufacturing purposes. Once it was found that the designs or drawings were
being used for manufacturing purposes and were not registered under the Designs
Act, 2000, the plaintiff was not held entitled to the relief.
71. The linked question to this which, thus, arises is the requirement of registration
by the plaintiff under the Designs Act of 2000. It is not in dispute that the plaintiff is
not registered proprietor of the designs under the said Act. In terms of Section 11 of
the Designs Act of 2000 when a design is registered, the registered

Page: 261

proprietor of the design has copyright in the design for 10 years, which could be
extended by another 5 years. The legal proceedings under Section 22 of the Designs
Act, 2000 would arise during the existence of the copyright in any design.

72. The conspectus of the aforesaid shows that what the plaintiff was actually
required to do was to register the designs which the plaintiff has failed to do. The
designs are older and, thus, would have been registrable under the Designs Act of
1911. The plaintiff failed to register the designs. Insofar as the Designs Act of 2000 is
concerned, the plaintiff has also admittedly not registered the designs under the said
Act. It has already been discussed above that these designs were capable of
registration under the earlier and the current Designs Acts. In fact, the Registrar of
Designs had confirmed vide letter dated 19.7.2002 that the fabric designs continued
to be registered under the Designs Act of 2000. The plaintiff had even initiated
criminal proceedings where certain reports were filed by the investigative agency
saying that the offences were really under the Designs Act and not under the
Copyright Act. However, it is not necessary to dwell greater in respect of that matter.
It would suffice to say that the patterns and designs of the plaintiff were capable of
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registration both under the old Act and the new Act and the plaintiff failed to do so
with the result that the protection is not available to the plaintiff which would have
arisen if they had been so registered. The said issues are answered accordingly.
Issue No. 4:
73. Issue No. 4 relates to application of the Designs Act of 1911. It has already
been noticed that most of the designs of the plaintiff had originated when the Designs
Act of 1911 was in operation. The designs were created with the industrial intent to
apply them to fabric or cloth and more than 50 reproductions have admittedly been
made without registering the designs under the earlier Act. Thus, the earlier Act did
apply to the designs of the plaintiff and the issue is answered accordingly.
Issues Nos. 5 & 6:
74. The whole case of the plaintiff was actually based on infringement of the
copyright of the plaintiff and the attempt of the defendants to pass off their goods as
that of the plaintiff. In order for the plaintiff to succeed, the plaintiff ought to have
proved that it was an ‘artistic work’ within the meaning of the Copyright Act. That
issue has been answered against the plaintiff. The designs of the plaintiff were liable
to be registered under the Designs Act which the plaintiff failed to do. Thus, the
protection is not available to the plaintiff under those Acts.
75. No evidence has been led to show as to what is the nature of sales in India and
whether the defendants are passing off their goods as that of the plaintiff. There is no
doubt about the identical nature of the designs, but the plaintiff has failed to establish
any case of passing off and damages arising therefrom. The goods are being sold
under distinct and different trade names. The issues are accordingly answered against
the plaintiff.

Page: 262

Issue No. 7:

76. This issue arises from the allegation of the defendants of the plaintiff
suppressing material. In fact, it is really not a case of suppression of fact and what the
defendants have sought to contend is that the facts relating to the prior litigations
should have been put forth in greater detail and not in an innocuous manner as sought
to be put by the plaintiff. I find no basis to come to the conclusion that the plaintiff is
guilty of suppression of material facts.
Issue No. 8, Relief.
77. In view of the findings arrived at on the aforesaid issues, the plaintiff has failed
to make out a case of having completed the requisite formalities in law so as to avail
the benefit of the exclusive use of the patterns and designs in question.
78. The suit is accordingly dismissed, but in the given facts and circumstances, the
parties are left to bear their own costs.
Suit dismissed.
———
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2016 SCC OnLine Del 1979 : (2016) 230 DLT 109

In the High Court of Delhi at New Delhi

(BEFORE VALMIKI J. MEHTA, J.)

Ritika Private Limited .…. Plaintiff

Ms. Tanvi Misra, Advocate.
v.
Biba Apparels Private Limited .…. Defendant
Mr. Jayant K. Mehta, Mohd. Saeed Hussain, Ms. Roopa Dayal and Mr. Yash Karan
Jain, Advocates.
CS(OS) No. 182/2011
Decided on March 23, 2016
VALMIKI J. MEHTA, J.
IA No. 13045/2011 (under Order VII Rule 11 CPC filed by the defendant) & CS
(OS) No. 182/2011
1. Though this application is titled under Order VII Rule 11 of the Code of Civil
Procedure, 1908 (CPC), counsel for the defendant states that this application actually
is under Order XII Rule 6 CPC for dismissing the suit on the admitted facts and legal
position, and since the heading of the application will not change the substance, the
subject application be treated as an application under Order XII Rule 6 CPC. Ordered
accordingly.
2. Plaintiff has filed the present suit claiming copyright in various drawings and
sketches which are created by the plaintiff for dresses being sold under the trade
name/brand RITU KUMAR. It is pleaded that the drawings and sketches are distinctive,
exclusive and identifiable with the brand RITU KUMAR of the plaintiff and the brand
enjoys goodwill and reputation. It is pleaded that there is originality in the garment
prints and sketches created by the plaintiff for the dresses/garments. It is pleaded
that ensembles of the plaintiff are so designed that each component, such as sleeves,
front and back panels etc. are delineated and are co-ordinated with unique features.
The plaintiff is stated to be maintaining digital records of the creation of each drawing
and print by giving it identification code and name which is also shown in the invoices
issued by the plaintiff. The claim of the plaintiff with respect to its copyright work is
set out in the form of process adopted by the plaintiff as detailed in paras 10, 11 and
12 of the plaint and which paras read as under : -
“10. The initial stage of the Plaintiff's creative process in general may be
summarized as follows:
(a) A drawing or sketch is created by Mrs. Ritu Kumar and/or other designers
employed by the Plaintiff. The same is an original derivative artistic work.
(b) The drawing is put in digital form and completed on a computer assigninig
colours. The same is independently a derivative artistic work.
These first stages result in the creation of independent artistic works
which can be enjoyed for their own sake or used for various purposes
including different garments.
11. The artistic works so created are then suitably adapted for different garments
and different partes of garment ensembles, as described below. Each such variation
is a further, derivative work, which does not affect the Plaintiff's separate rights in
the original.
(a) Screems are prepared for each colour facilitationg an initial printing
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(“swatching”) to test the design on different fabrics.

(b) The artisti work so created is then available for use in connection with
different products.
(c) Acording to requirement and market assessment, but artistic work is then
customized for use on different garments with appropriate variations.
12. Further, in some cases embriodiery of an artistic characher is done on each
garment individually, by hand or using a machine, by a skilled craftsman. Such
garments are works of artistic craftsmanship”.
3. Plaintiff claims to be the first owner of the copyright in all the products of the
plaintiff's company created from the sketches, drawings, designs etc.
4. Plaintiff also pleads violation of its trade secrets by the defendant inasmuch as
defendant is employing erstwhile employees of the plaintiff. The said employees are
Ms. Neelam Arora and Ms. Reshu Singbal. It is stated that these employees are in
know of the trade secrets of the plaintiff's work and are revealing these trade secrets
to the defendant. The issue with respect to violation of trade secrets of the plaintiff by
the defendant is pleaded as per paras 16 and 17 of the plaint and these paras read as
under:
“16. Fashion products have a short life, and the Plaintiff's business depends on
the Plaintiff's knowledge and understanding of trends and changing tastes, its
corporate judgment under Mrs. Ritu Kumar's creative leadership of what will meet
with success next season. There is a long gestation period for each product during
which the utmost confidentally has to be maintatined within the Plaintiff's
organization; surprise innovation is the lifeblood of the Plainitff's business. Starting
with the Plaintiff's skilled market assessment, going through the technical creative
process described above, but also including the general conceptualization of each
collection of each outfit and of each individual garment and accessory, there is thus
a multiplicity of creative inputs which cumulatively reflect the Plainitff's know how
and incorporate valuable trade secrets.
17. It is submitted that such confidentally is an inherent feature of the industry,
without which no fashion enterprise would be viable. Though the confidentiality of
the Plaintiff's trade secrets does not depend on contractual agreements, the Plaintiff
nevertheless takes due care to ensure that its employees appreciate their
confidentiality obligations. The copies of employment agreements filed in these
proceedings contain the following conditions which directly and indirectly ensure
that confidentiality and exclusivity of the employee's work for the Plaintiff…..”
5. The subject suit is filed by the plaintiff claiming the relief of injunction seeking
restraint against the defendant from reproducing, printing, publishing, distributing,
selling, offering etc. of prints or garments which are colourable immitaion or
substantial reproduction of the plaintiff's prints and garments. Other related reliefs of
injunctions and rendition of accounts are also claimed against the defendant.
6. The issue urged on behalf of the defendant for seeking dismissal of the suit is as
per the provision of Section 15(2) of the Indian Copyright Act, 1957 and which
provides that once a copyright in a design is applied to an article by an industrial
process for more than 50 times, ownership of the copyright ceases because the
copyright resulting in creation of the article is capable of being registered under the
Designs Act, 2000 but has not been registered by the plaintiff. Section 15 of the
Indian Copyright Act, 1957 reads as under:
“Section 15 of the Indian Copyright Act, 1957
15. Special provision regarding copyright in designs registered or capable
of being registered under the Designs Act, 2000 (16 of 2000). —
(1) Copyright shall not subsist under this Act in any design which is registered
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under the Designs Act, 2000 (16 of 2000).

(2) 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
reproduced more than fifty times by an industrial process by the owner of the
copyright, or, with his licence, by any other person.”
7. It is also argued on behalf of the defendant that the paragraphs of the plaint
with respect to violation of trade secrets as alleged by the plaintiff are no averments
as required of a cause of action in law because not only what are the specific trade
secrets are not mentioned resulting in the fact that a general order of alleged violation
of unspecified trade secrets should not be passed, but also that really the so called
trade secrets are nothing but the copyrights claimed by the plaintiff as applied to
garments and dresses and that once copyright does not subsist in the plaintiff because
of Section 15(2) of the Indian Copyright Act, there does not arise the issue of any
violation of trade secrets as is falsely alleged by the plaintiff.
8. The only issue which is called for decision by this Court is that once the
copyrighted works of the plaintiff are applied for making of dresses, and production of
which dresses exceeds 50 in number, whether the plaintiff does not lose out in
ownership of the copyright works, inasmuch as, the copyright works of the plaintiff are
capable of being registered as designs under the Designs Act, but the plaintiff has not
secured registrations of the sketeches, drawings, designs etc. under the Designs Act.
9. I may at the outset note that it is not the case of the plaintiff in the plaint that
plaintiff has not created dresses out of its designs and sketches only upto 50 times,
and therefore, this Court proceeds on the basis that designs and sketches have been
applied by the plaintiff on the dresses manufactured by the plaintiff and such dresses
etc. have exceeded 50 in number. Even during the course of arguments, it has not
been the case of the plaintiff that the drawings, designs and sketches with respect to
the garments and dresses had not been applied by the plaintiff to the garments and
dresses only upto 50 times.
10. I may note that learned counsel for the plaintiff who argued the case on behalf
of the plaintiff had initially sought an adjournment as it was stated that counsel for the
plaintiff Sh. Pravin Anand who has to argue the case had gone abroad, but, the
counsel for the defendant has very vehemently opposed the adjournment on the
ground that adjournment cannot be granted if a counsel chooses to go abroad once
the specific date is fixed in the presence of the counsels for both the parties including
the counsel who appeared on the last date when today's date was fixed. In view of the
strong opposition by the defendant to the adjournment, I have refused the
adjournment, more so because the issue which calls for decision is fully covered by the
ratio of a Division Bench judgment of this Court and which binds this Court.
11. Besides referring to Section 15(2) of the Indian Copyright Act for the purposes
of the present decision, the definition of design under the Designs Act, 2000 would
also have to be seen alongwith Section 4 of the Designs Act. Section 4 of the Designs
Act is being referred to inasmuch as some arguments were urged on behalf of the
plaintiff by referring to Section 4. Sections 2(d) and 4 of the Designs Act read as
under:
“Section 2(d) of the Designs Act, 2000
2(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
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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 Penal Code, 1860 or any
artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of
1957);
“Section 4 of the Designs Act, 2000
4. 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”
12. The arguments which have been urged on behalf of the plaintiff are as under:
(i) What is a subject matter of copyright continues to be a subject matter of
copyright in the exclusive ownership of the owner of the copyright inspite of the
copyright being used for manufacturing of an article for more than 50 times
inasmuch as the definition of design by its very language in its last part excludes
an artistic work which is the subject matter of a copyright under Section 2(c) of
the Indian Copyright Act and once copyright artistic work is excluded from the
definition of a design under the Designs Act, Section 15(2) of the Indian
Copyright Act does not come into play as the precondition for application of
Section 15(2) is that that the copyright work is included as a design under
Section 2(d) of the Designs Act. In other words it is sought to be argued that
copyright can continue to exist in a sketch or a design of a dress, although the
said sketch, drawing or design is capable of being registered as a design
inasmuch as the drawing, sketch or design which is the subject matter of Section
2(c) of the Indian Copyright Act is not a design because it is excluded from the
definition of design by the last few words and lines as found in the definition of
design under the Designs Act. It is, therefore, argued that non-registration under
the Designs Act by the plaintiff of its drawings, sketches or design with respect
to its garments and dresses will not extinguish the rights of the plaintiff to the
copyrights existing in the plaintiff in such works and the defendant is, therefore,
liable to be injuncted from infringing the copyrighted works of the plaintiff.
(ii) Whereas what is the subject matter of the copyright has to be original in view of
Section 13(1)(a) of the Indian Copyright Act, because the language of Section 4
of the Designs Act prohibits the registration of a design which is not
new/original, consequently, an existing copyrighted artistic work under Section 2
(c) of the Indian Copyright Act cannot be the subject matter of registration of
design under the Designs Act being excluded from the registration as a design
under the Designs Act, thus resulting in inapplicability of Section 15(2) of the
Indian Copyright Act. It is argued that a copyright work has to be original
whereas a design need not be original or novel and, therefore, this Court should
protect original artistic work which is the subject matter of copyright under
Section 2(c) of the Indian Copyright Act.
13. Reliance is placed upon the two judgments of Hon'ble Division Benches of this
Court in the cases of Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia, 225 (2015)
DLT 178 (DB) and Rajesh Masrani v. Tahiliani Design Pvt. Ltd., 2009 (39) PTC 21
(Del.) and it is argued that these judgments lay down the ratios which support the
plaintiff that copyrighted works even if not registered as a design under the Designs
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Act, though capable of being registered as a design, copyrighted artistic works will
continue to have protection as copyrights under the Indian Copyright Act.
14. Ordinarily, the issues which are raised on behalf of the plaintiff would have
called for detailed discussion and analysis of various sections of the Indian Copyright
Act and the Designs Act alongwith the arguments of the plaintiff, however, this Court
need not venture on the same as the issue to be decided in this case is clearly and
completely covered against the plaintiff by a judgement of a Division Bench of this
Court in the case of Microfibres Inc. v. Girdhar & Co. 2009 (40) PTC 519 (Del) : 2009
SCC Online Del 1647. The very arguments which are urged on behalf of the plaintiff of
contending that copyright in a drawing or a sketch will continue even if the same is
not registered as a design and an article is produced on the basis of the drawing,
sketch or design for more than 50 times by an industrial process or means, has been
squarely dealt with against the plaintiff in terms of the following paragraphs of the
judgment in Microfibre's case (supra). Though the paragraphs are many, I have no
option but to reproduce them as all of them pertain to the ratio laid down in
Microfibre's case (supra). These para nos. 20 to 33 and 35 to 46 are reproduced
below : -
“20. After taking into account the above pleas, we are of the view that Section 2
(c) 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.
21. The rights to which a holder of an original artistic work is entitled are
enumerated in Section 14(c) of the Copyright act. These are, the right:
(i) To reproduce the work in any material form including depiction in three
dimensions of a two dimensional work or in two dimensions of a three
dimensional 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 an adaptation of the work any of the acts specified in
relation to the work in sub-clauses (i) to (iv)
22. 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. 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. 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.
23. There is, therefore, a clear distinction between an original artistic work, and
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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 Section 2(c) of the Copyright act, 1957.
24. It needs to be emphasized 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.
25. 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 Section 2(c) of the Copyright Act. This is so because the expression ‘artistic work’
as defined in Section 2(c) 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.
26. The expression ‘copyright in any design’ used in Section 15(2) 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-à-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.
27. Under the Designs Act, a copyright has a different connotation from a
copyright under the Copyright Act. Under the Designs Act, copyright means the
exclusive right to apply the design to any article in any class in which the design is
registered.
28. The issue with regard to the extent of, and the conditions for the copyright
protection to such an artistic work, as an artistic work under the Copyright Act,
which is a design registered or capable of registration under the Designs Act,
is what is dealt with, by Section 15 of the Copyright Act. Once the distinction
between the original artistic work and the design derived from it, and the
distinction between Copyright in an original artistic work under the 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.
29. 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
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artistic work under the Copyright Act. Therefore, subject to whatever rights that are
available under the Designs Act, the registered design holder cannot claim
protection or complain of copyright infringement in respect of the registered Design
under the Copyright Act.
30. 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. It is clear to us that 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 shall
we say commercial, exploitation of the original artistic work by the
application/reproduction of the said work in any other form or reproduction of copies
thereof in exercise of the rights under Section 14(c)(1) and 14(c)(iii) of the
Copyright Act. Beyond the specified limit, if the design derived from the original
artistic work is exploited (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.
31. We are also of the view that it is not correct on behalf of the appellant to
urge that the intention of the creation of the work determines the Intellectual
Property Rights contained therein, and not whether such work fell within the
classification of ‘Designs’ under the Designs Act or the Copyright Act. The Designs
Act nowhere stipulates the intention of the creator of the work as a determinative
criteria and the exhaustive definition given not only in the Designs Act but indeed
the Copyright Act clearly rules out such interpretation as suggested by Shri. Raju
Ramachandran. In fact, the appropriate occasion to evaluate the registrability of a
design would arise when the artistic work is translated into an object having
features of shapes, configuration, pattern, ornament or composition of lines or
colors whether two dimensional or three dimensional by employing an industrial
process. Significantly, the appellant themselves have registered their product under
the Designs Act in U.K. Furthermore, as submitted by the appellant, even if there is
very little variation between the original artistic work and the design which is
industrially applied to an article to produce a product, nevertheless, such a design
can claim registration under the Designs Act, provided such registration was
sought. The interpretation suggested by the appellant would clearly afford
not only the design protection in case of registered works but also in
addition, the copyright protection to the works which were industrially
produced, which interpretation does not reflect the legislative intent.
32. A perusal of the Copyright Act and the Designs Act and indeed the Preamble
and the Statement of Objects and Reasons of the Designs Act makes it clear that
the legislative intent was to grant a higher protection to pure original artistic works
such as paintings, sculptures etc. and lesser period of protection to design activity
commercial in nature. The period of copyright would be the author's life span plus
60 years. However, the legislature has allocated a lesser time span for the
protection available to a registered design as only being 15 years. Thus, commerce
and art have been treated differently by the Legislature and any activity which is
commercial in nature has been granted lesser period of protection. On the other
hand, pure artistic works per se have been granted a longer protection.
33. The Statement of Objects and Reasons of the Designs Act, 2000 reads as
follows:
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“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 Designs 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.”
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.
xxxxx
35. However, there can be no quarrel with the plea of Shri. Ramachandran that
the operation of Section 15(2) of the Copyright Act does not exclude from the ambit
of Copyright protection either the original ‘artistic work’ upon which the design is
based or the design which by itself is an artistic work. It cannot be disputed that
the original paintings/artistic works which may be used to industrially produce the
designed article would continue to fall within the meaning of the artistic work
defined under Section 2(c) of the Copyright Act, 1957 and would be entitled to the
full period of copyright protection. This is also evident from the definition of the
design under Section 2(d) of the Designs Act. This, in our view, in fact is a factor
which would go against the appellants in construing the nature of protection to be
given to the original artistic work such as a painting, as contrasted with the applied
artistic work that is the design, which in the present case does not mean the
intermediary medium such as a mould, engraving devised/produced only to enable
industrial application of the painting to produce the furnishing products of the
appellant. Thus, while the original painting would indeed be entitled to the
copyright protection, the commercial/industrial manifestation of such paintings
such as the design derived from and founded upon the original painting for the
purpose of industrial production of furnishings would only be covered by the
limitations placed in Section 15 of the Copyright Act and would get protection if
registered as a design under the Designs Act but would enjoy lesser period of
protection in case of a registered design.
36. This clearly shows that the legislature intended that even if the artistic work
such as a painting has been used as the basis for designing an industrially
produced object for commerce, such as the furnishing in the present case,
nevertheless the original painting would indeed enjoy full copyright protection,
while the result of the industrial application of such painting, namely, the design
used in the industrial production of the ultimate product shall enjoy lesser period of
protection as stipulated under the Designs Act provided it is registered as a design
under the Designs Act. Thus, we are of the view that an original artistic work
initially acquires protection under the Copyright Act as an ‘artistic work’ or else the
protection under the Designs Act qua the product created from the artistic work
when industrially applied.
37. Dr. Abhishek Manu Singhvi, the learned Senior Counsel appearing for the
respondent in FAO (OS) No. 447/2008 had submitted, and in our view rightly so
that the object of the two legislations was to prevent long term usage by the person
who was commercially exploiting something and yet wanting to claim an exclusive
monopoly through longer period of copyright protection afforded to an artistic work.
Section 15 of the Copyright Act demonstrates the legislative intention of integrating
the Copyright and Designs Acts and any other interpretation would, as rightly
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submitted by Dr. Singhvi, render the registration under the Designs Act as
meaningless as a design proponent will always get a longer period of copyright
protection under the Copyright Act. In our view, the above plea would make a
registration under the Designs Act meaningless, which the legislature could have
never intended. In fact, the plea of Dr. Singhvi that a design which has been
granted the protection under the Designs Act cannot be granted protection under
the Copyright Act is correct and this is evident from Section 15(1) of the Act.
38. Thus, while it is not open to the respondent to reproduce such paintings per
se, which formed the basis of the design that was applied to the fabric,
nevertheless, such protection qua the design imprinted on the product through
industrial application is available only under the Designs Act, provided there is a
registration. 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. This clearly indicates that the legislature
intended to provide industrial and commercial application of an artistic work for
commerce lesser protection.
39. Shri. Arun Jaitley, the learned Senior Counsel appearing for the appellant in
FAO (OS) No. 326/2007 titled as Dart Industries Inc. v. Techno Plast had only made
submissions in the present appeal in respect of Section 15 of the Copyright Act to
the extent it could affect the appeal filed by his clients. He had advanced a very
attractive argument as to the three stages of processes leading to the eventual
designed product. He submitted that the first stage is of the preparation of drawing
or artistic work which leads to the production of mould/engraving which is the
second stage and such mould/engraving leads to the final commercially marketable
product, which is the third stage. He has also submitted that the products of the
respondent were made by the process of reverse engineering starting from the final
product leading to the second stage of creating a moulding, and from it a final
drawing. His plea was based upon the premises that the mould and the drawing of
the appellant are copyright protectable under the Copyright Act and cannot be or
are incapable of forming part of the design registration regime. It is submitted that
the product of the respondent involves the copying of the mould/drawing of the
appellant.
40. While the argument is very attractive but nevertheless it is not legally
sustainable because such a plea would enlarge the monopoly in industrial design
from the current maximum time of 15 years to the longer period available under the
Copyright Act. While the original drawings of the appellant could be entitled to
copyright protection under the Copyright Act as artistic works, the designs derived
therefrom as moulds which are used for industrial application of the design on the
articles would not qualify for protection as artistic works under the Copyright Act
except in accordance with Section 15(2) of the Copyright Act. It is not the case of
the appellant Microfibres or even that of Mr. Jaitley's clients that the design applied
on the fabric (in the case of Microfibres) or the plastic (in the case of Mattel Inc.)
has not been applied for more than 50 times. There designs have been used more
than 50 times. The learned Single Judge in paragraph 51 of the impugned
judgment held as follows:
“The plea of the plaintiff is also sought to be negated on the issue of definition
of a ‘design’ under Section 2(d) of the Designs Act, 2000 whereby an ‘artistic
work’ as defined in Clause (c) of Section 2 of the Copyright Act has been
specifically excluded. The submission was, thus, advanced that this would have
the effect of rendering the law of designs redundant for the simple reason that
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each design registered thereunder would be able to trace its origin to a diagram,
chart, drawing, etc. and, thus, cease to be governed by the Designs Act. The
legislative intent could not have been this because the law of designs is based on
the same principle as applicable to other monopolies and to fuel industrial
innovativeness by granting limited time-limit to the monopolies and allow others
to make use of them after they have passed into the public domain. Thus, the
plea of the plaintiff, if accepted, would be anti-competitive and would throttle
and stagnate the industry.
(Emphasis supplied)”
In our view the learned Single Judge has felicitously summed up the legislative
intent that limited monopoly should be granted to fuel industrial inventiveness in
the field of commerce. We fully approve and reiterate the aforesaid view.
41. As rightly submitted by Shri. Rajender Kumar, the learned Counsel for
the respondent No. 2 in the present appeal, the interpretations canvassed
by the appellant would, render the design legislation otiose, because every
registered design would then be able to trace its origin to a chart, drawing,
diagram etc. and consequently also claim copyright protection under the
Copyright Act in addition to the protection as a registered design under the
Designs Act.
42. Shri. Prashanto Chandra Sen, the learned Counsel appearing on behalf of the
respondent No. 1, contended that the difference between a design and an artistic
work lies in the applicability of the former to an article as evident from the decision
in Con Planck Ltd. case 1923 KB 804, wherein it was held that the fundamental
distinction between a design and a simple artistic work lies in the applicability of
the former to some other article. In our view, the interpretation suggested by Shri.
Jaitley would result in every industrial tracing, drawing or mould which may not be
an original artistic work within the meaning of Section 2(c) read with Section 13 of
the Copyright Act, and which lead to the designed product, being afforded
protection under the Copyright Act as an original artistic work and also being at the
same time industrially and commercially exploitable by being applied to marketable
articles by claiming protection under the Designs Act, 2000.
In the case of Interlego (1988) RPC 343, the following position of law was laid
down:
“The definition of ‘design’ in Section 1(3) of the Act of 1949 is hardly a model
of Parliamentary draughtsmanship and this is by no means the first case in which
its meaning and application have been called in question. In approaching the
question of construction there has to be borne in mind that the purpose of the
Act, as appears both from its terms and its legislative history, is to protect novel
designs devised to be ‘applied to’ (or, in other words, to govern the shape and
construction of) particular articles to be manufactured and marketed
commercially. It is not to protect principles of operation or inventions which, if
protected 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 artifact. 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 articles of a
design not substantially different from the registered design. The emphasis
therefore is upon the visual image conveyed by the manufactured article.”
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Thus, in the case of Pugh v. Riley 1912 RPC 196 the general principle was laid
down that any application for registration must be accompanied by a
representation of the design which ought to be in the nature of a drawing or a
tracing, by means of which the suggestion constituting the design may be
imparted to others. A person looking at the drawing must be able to form a
mental picture of the shape, configuration, pattern or ornament of the article to
which the design has been applied. Further, in the case of Interlego (supra) it
was laid down that the purpose of design is not to protect the principles of
operations or inventions which, if protected at all, must be made the subject
matter of the patent. This process of operation or invention such as a
moulding/engraving could at best be granted patent protection and thus, Mr.
Jaitley's plea that such intermediary process be granted copyright protection
cannot be accepted. Thus, what is granted is a right, over a lesser period, to
prevent the manufacture and sale of articles of a design not substantially
different from those industrially produced by the application of the registered
design. The emphasis therefore, is upon the visual image conveyed by the
manufactured article and thus the above judgment of Interlego (supra) also
supports the case of the respondent, that the intermediary process of creation of
a design from an original artistic work cannot be afforded protection under the
Copyright Act if it crosses the lakshman rekha of having been applied more than
50 times industrially to produce an article.
43. Undoubtedly, it is true as contended by Shri. Jaitley that the artistic work
defined under Section 2(c) of the Copyright Act need not possess artistic quality.
His plea about the copyright protection available to moulding/engraving/drawing is
postulated on the above premise. Nevertheless, we cannot lose sight of the fact that
the design, based upon a moulding or an engraving derived from the original
artistic work, which is used for industrial application on an article and which evolves
during any process intermediate to the reproduction of the finally designed article,
would not qualify as an artistic work. The case of Dover LD (supra) clearly requires
the exercise of intellectual activity so as to originate some novel application and
thus, this principle cannot be applied to a mould, or an engraving i.e. the
intermediates which are mere derivatives of the original artistic work. In the case of
Pugh v. Riley (supra) also it was held that a design is preceded by a drawing or
tracing which incorporates the design to be imparted to produce the designed
article and upon being applied to an article become incapable of being registered as
a design.
Thus, the interpretation as suggested by the appellant would have the effect
of rendering the design legislation in India redundant as every design could have
its origin to an intermediate product such as a engraving, mould, diagram etc. It
is also anti-competitive and stagnates innovativeness beside in effect negating
the legislative intent of giving lesser protection of 15 years to a ‘design’ under
the Designs Act as compared to the larger protection of 60 years to an ‘artistic
work’ under the Copyright Act.
44. We cannot accede to the plea of Shri. Sanjay Jain that the intention of
creating an artistic work would determine as to which enactment applies. The
artist's intent at the time of creation of the artistic work is indecipherable at the
best of times. Artists are governed more often than not by their emotions and
moods and whatever be the intention at the time of the creation of the artistic work
cannot, in our view, determine the nature of protection available to the artistic
work. Indeed such a plea of Shri. Ramachandran has already been rejected by us,
as the stupendous and commercial success of a particular artistic work may spur on
the artist to permit commercial utilization and exploitation of such a work of Article
To this extent, we agree with Mr. Praveen Anand that an intention of creation is
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difficult to ascertain and cannot form the basis of determining the rights. Thus,
even if the original painting was intended to be created only as a work of art, a
latter intention may transform it by its industrial application into a commercially
viable object. To this extent, we agree with the plea of Shri. Sanjay Jain that once
the artistic work, by industrial application transforms into a commercially
marketable artifact its design falls within the domain of the Designs Act and the
protection to the design founded upon the artistic work is limited by Section 15 of
the Copyright Act and the provisions of the Designs Act.
45. Learned Counsel Shri. Praveen Anand, appearing on behalf of the
appellant in FAO (OS) No. 447/2008 has contended that there is a vital difference
between the subject matter of copyright and design protection. In our view, while
this plea is sustainable, nevertheless, it cannot be ignored that different kinds of
protection for an artistic work, and the design founded upon the artistic work which
is industrially and commercially exploited, has been intended by the Legislature. He
has further submitted that what stands extinguished under Section 15 of the
Copyright Act is the copyright in the design itself as applied to an article and not
the copyright in the artistic work itself. There is no quarrel with this proposition.
However, that does not advance the case of the appellant. We do hold that in the
original work of art, copyright would exist and the author/holder would continue
enjoying the longer protection granted under the Copyright Act in respect of the
original artistic work. Thus, for instance a famous painting will continue to enjoy the
protection available to an artistic work under the Copyright Act. A design created
from such a painting for the purpose of industrial application on an article so as to
produce an article which has features of shape, or configuration or pattern or
ornament or composition of lines or colours and which appeals to the eye would also
be entitled design protection in terms of the provisions of the Designs Act.
Therefore, if the design is registered under the Designs Act, the Design would lose
its copyright protection under the Copyright Act but not the original painting. 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, in our view, would
harmonize the Copyright and the Designs Act in accordance with the legislative
intent.
46. We thus summarize our findings as follows:
a. The definition of ‘artistic work’ has a very wide connotation as it is not
circumscribed by any limitation of the work possessing any artistic quality.
Even an abstract work, such as a few lines or curves arbitrarily drawn would
qualify as an artistic work. It may be two dimensional or three dimensional.
The artistic work may or may not have visual appeal.
b. The rights to which a holder of an original artistic work is entitled are
enumerated in Section 14(c) 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 Copyright Act and the Designs Act and indeed the Preamble
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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 Section 2(c) of the Copyright Act, 1957 and would be
entitled to the full period of copyright protection as evident from the definition
of the design under Section 2(d) of the Designs Act. However, the intention of
producing the artistic work is not relevant.
g. This is precisely why the legislature not only limited the protection by
mandating that the copyright shall cease under the Copyright Act in a
registered design but in addition, also deprived copyright protection to
designs capable of being registered under the Designs Act, but not so
registered, as soon as the concerned design had been applied more than 50
times by industrial process by the owner of the copyright or his licensee.
h. In the original work of art, copyright would exist and the author/holder would
continue enjoying the longer protection granted under the Copyright Act in
respect of the original artistic work per se.
i. If the design is registered under the Designs Act, the Design would lose its
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.”
(emphasis added by me).
15. The underlined and emphasised portions of the above paragraphs leave no
manner of doubt that it has been held by the Hon'ble Division Bench of this Court, and
which is binding upon this Court, that once a drawing, a sketch or a design is used for
creation of dresses, then, once the dresses cross 50 numbers, no copyright can subsist
in the drawing and sketch under the Indian Copyright Act because of the language of
Section 15(2) of the Indian Copyright Act. The Hon'ble Division Bench of this Court in
Microfibre's case (supra) has noted that the legistature intended to give lesser period
of protection to a copyright when from the copyright a design is created which is
applied for commercial purposes. The Hon'ble Division Bench has also clearly observed
that if the interpretation as is sought to be urged by the plaintiff in this case, and
which was also urged on behalf of the plaintiff in that case is accepted, then
registrations of designs would be rendered meaningless (vide paras 37 & 41). The
Division Bench in para 42 of its judgment has also observed that the interpretation as
is canvassed on behalf of the plaintiff in the present case, and which is also canvassed
in that case of entitlement of protection under the Indian Copyright Act even if the
design is not registered under the Designs Act, would lead to a design under the
Designs Act being given protection of copyright even under the Indian Copyright Act
as an original artistic work resulting in rights being enforced simultaneously under the
Indian Copyright Act and the Designs Act which was not the intention of the
legislature. In para 43 of the judgment, the Division Bench has clearly observed that
an interpretation to give protection under the Indian Copyright Act although the
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drawing, sketch or design is to be registered under the Designs Act would result in the
Designs Act being redundant because every design for its origin would have an
intermediate product such as engraving or mould or diagram. The same aspect is
reiterated in para 45 of the judgment in Microfibre's case (supra) clearly holding that if
the design is not registered under the Designs Act, the design will lose its copyright
protection under the Indian Copyright Act and the copyright will subsist only till the
threshold limit of application of a copyright to an article by an industrial process is
upto 50 times in number and once that limit is crossed, the design loses protection as
a copyrighted work under the Indian Copyright Act. This is finally so stated in para 46
(i) of the judgment by observing that the interpretation given in the Microfibre's case
(supra) would harmonize the Indian Copyright Act and the Designs Act in accordance
with the legislative intent.
16. In view of the categorical ratio in Microfibre's case (supra), it is not permissible
for the plaintiff to reargue the case noting that the same counsel who appears for the
plaintiff in the present case had unsuccessfully argued the same aspects before the
Division Bench in Microfibre's case (supra).
17. Reliance placed by the plaintiff upon the judgment in the case of Midas Hygiene
Industries Pvt. Ltd. (supra) is clearly misconceived as the judgment in the case of
Midas Hygiene Industries Pvt. Ltd. (supra) dealt with the application of a copyright
work to a carton or a packaging and accordingly observations were made. Midas
Hygiene Industries Pvt. Ltd. (supra) was not a case of application of a copyright work
by creating an article more than 50 times by an industrial process or means. For the
sake of completeness let me refer to para 25 of this judgment in the case of Midas
Hygiene Industries Pvt. Ltd. (supra) which is being relied upon by the plaintiff and
which para 25 reads as under:
“25. The label is clearly both a trademark, as it indicates the brand and the origin
(i.e. the manufacturer or producer) as well as a copyright, as it contains a
combination of colours and stylized lettering, set in red colour, with the image of a
cockroach. The expression “LAXMAN REKHA” and the other one, “KRAZY LINES” are
at least in combination with the colour scheme and get up, trade-marks; hence
they are labels and clearly excluded from the definition of “designs”. Furthermore,
the respondent nowhere asserts that there are novel or new elements in the shape
or configuration of the packaging which deserve design protection. By virtue of
Section 4(c) design registration is refused if the work is “not significantly
distinguishable from known designs or combination of known designs…” It is not
shown how the packaging or label upon it, in this case is so unique or novel as to
distinguish it from known designs. The object of the Designs Act is to confer
protection to novel and unique designs. If every object based upon some drawing
were afforded design registration, soon, objects of common utility-vessels,
containers, furniture items, etc. could not be replicated. Therefore, it is held that
apart from the fact that the work in the present case was copyrighted as an artistic
work and thus stood excluded from the definition of design-as well as the fact that
it was a trademark label, it is also held that it cannot also qualify for design
registration-the sole condition for operation of Section 15(2). The respondent had
urged that the artistic work does not qualify for registration because it is not
original or creative. However, there is no discussion on the issue by the Board.”
18. I do not find anything in para 25 in Midas Hygiene Industries Pvt. Ltd.'s case
(supra) to support the arguments urged on behalf of the plaintiff in the present case of
a protection under the Indian Copyright Act to continue although the copyright is
capable of being registered as a design under the Designs Act but not registered and
the copyrighted drawings, sketches or designs having applied to produce an article
more than 50 times in number by an industrial process or means.
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19. It is very relevant to note that the observations which are made by a court in a
judgment have necessarily to be related to the facts of the case and the ratio of a case
cannot be dehors the facts of the case as held by the Constitution Bench judgment of
the Supreme Court in the case of Padma Sundara Rao (Dead) v. State of T.N., (2002)
3 SCC 533. Para 9 of this judgment is relevant and which reads as under : -
“9. Courts should not place reliance on decisions without discussion as to how
the factual situation fits in with the fact situation of the decision on which reliance
is placed. There is always peril in treating the words of a speech or judgment as
though they are words in a legislative enactment, and it is to be remembered that
judicial utterances are made in the setting of the facts of a particular case, said Lord
Morris in Herrington v. British Railways, Board. Circumstantial flexibility, one
additional or different fact may make a world of difference between conclusions in
two cases.”
(underlining added)
20. Therefore, observations made by the Division Bench in the case of Midas
Hygiene Industries Pvt. Ltd. (supra) were in the facts of that case of applying
copyright work as it is to a carton or a packaging, and such observations therefore
cannot be read with respect to copyright continuting to exist although from the
copyrighted work articles are manufactured by an industrial process or means more
than 50 times in number.
21. The judgment in the case of Rajesh Masrani (supra) is also not applicable for
the same reason that the facts of the said case were different and again the ratio of
the Constitution Bench case in Padma Sundara Rao (Dead) (supra) is reitereated that
the issue of interpretation of Section 15(2) of the Indian Copyright Act never came up
in Rajesh Masrani's case (supra) as the admitted position in that case was that the
limit of 50 number of articles produced from the copyright work was not crossed. The
Division Bench in Rajesh Masrani's case (supra) in paras 27 and 28 distinguished the
judgment of a learned Single Judge of this Court in the case of Micro Fibre Inc v.
Girdhar & Co., 2006 (32) PTC 157, and which ultimately went up in appeal and was
decided by the Division Bench in Microfibre's case (supra) of 2009. These paras 27 and
28 of the Division Bench in Rajesh Masrani's case (supra) distinguish the observations
of the said case from the issue in the case before the Division Bench in Microfibre's
case (supra) (and in this case), and these paras 27 and 28 of Rajesh Masrani's case
(supra) read as under:
“27. We may mention that in support of his plea, the learned Counsel for the
Defendant has strongly relied upon the judgment of this court in the case of Micro
Fibre Inc v. Girdhar and Co. 2006 (32) PTC 157. He referred various paras of the
said judgment, particularly Paras 62 and 72 said judgments which are reproduced
as under:
“62. In order for the work of the plaintiff to qualify as an ‘artistic work’, it
must fall within the definition of Subsection (c) of Section 2 of the Copyright Act.
A reading of the said provision would show that attempt of the plaintiff can only
be to bring it within the concept of ‘painting’. The comparison with the painting
of M.F. Hussain would be otiose as the work in question, in the present case, is
not a piece of art by itself in the form of a painting. There is no doubt that labour
has been put and there is some innovativeness applied to put a particular
configuration in place. Such configuration is of the motifs and designs which by
themselves would not be original. The originality is being claimed on the basis of
the arrangement made. What cannot be lost sight of is the very object with
which such arrangements or works had been made. The object is to put them to
industrial use. An industrial process has to be done to apply the work or
configuration to the textile. It is not something which has to be framed and put
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on the wall or would have any utility by itself. The two important aspects are the
object with which it is made (which is industrial) and its inability to stand by
itself as a piece of art. In fact, it has no independent existence of itself.
72. The conspectus of the aforesaid shows that what the plaintiff was actually
required to do was to register the designs which the plaintiff has failed to do. The
designs are older and, thus, would have been registrable under the Designs Act
of 1911. The plaintiff failed to register the designs. Insofar as the Designs Act of
2000 is concerned, the plaintiff has also admittedly not registered the designs
under the said Act. It has already been discussed above that these designs were
capable of registration under the earlier and the current Designs Acts. In fact,
the Registrar of Designs had confirmed vide letter dated 19.07.2002 that the
fabric designs continued to be registered under the Designs Act of 2000. The
plaintiff had even initiated criminal proceedings where certain reports were filed
by the investigative agency saying that the offences were really under the
Designs Act and not under the Copyright Act. However, it is not necessary to
dwell greater in respect of that matter. It would suffice to say that the patterns
and designs of the plaintiff were capable of registration both under the old Act
and the new Act and the plaintiff failed to do so with the result that the
protection is not available to the plaintiff which would have arisen if they had
been so registered. The said issues are answered accordingly.”
28. The above said case, in our view, is on an entirely different footing from the
present case for the following reasons:
a) In the present case, as per the pleadings, the work in question has not been
reproduced more than 50 times by an industrial process by the plaintiff. In
the case of Micro Fibre (supra), the court has specifically noticed and
highlighted in Para 62 of the said judgment, the fact that the intent of
creating the design in question was to put them into industrial use and the
production of the said work had occurred more than 50 times as mentioned in
Para 73 of the said judgment.
b) The court has also noticed in Para 47 of the said judgment that the subject
matter of the work in dispute are floral design which are applied upon fabric
used for upholstery through the industrial process and the plaintiff has
registered the subject matter of the work of design in United Kingdom and the
said certificates of registration have also been placed on record.
c) In Para 72 of the judgment, it was further held that the plaintiff failed to
register the designs which were capable of being registered under the Designs
Act, therefore, the protection of copyright in the design was not available to
the plaintiff.
In the present case all the above said aspects are absent and, therefore, the said
judgment is not applicable to the facts and circumstances of the present case.
Moreover as we have already come to the conclusion that the subject matter comes
under Section 2(c) of the Copyright Act, this judgment does not help the case of
the appellant.”
22. Learned counsel for the plaintiff placed strong reliance upon para 26 of the
judgment in Rajesh Masrani's case (supra) in support of the plaintiff's arguments and
this para 26 reads as under:
“26. We are, therefore, of the opinion that the plaintiffs' work is entitled for
protection under Section 2(c) of the Copyright Act and is an original artistic work.
Since the work is an ‘artistic work’ which is not covered under Section 2(d) of the
Designs Act, 2000, it is not capable of being registered under the Designs Act and
the provision of Section 15(2) is not applicable.”
23. The aforesaid para 26 of the judgment in Rajesh Masrani's case (supra) holds
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and proceeds on the basis that the copyright work which is the subject matter of the
Indian Copyright Act being an artistic work is not covered under the Designs Act
because it is not capable of being registered under the Designs Act resulting in Section
15(2) of the Indian Copyright Act being not applicable. It is however noted that these
observations were made in the facts of that case which are different from the facts in
Microfibre's case (supra) and which points of distinction have been stated by the
Division Bench itself in Rajesh Masrani's case (supra) in para 28 which has been
reproduced above. Plaintiff cannot therefore derive any benefit of para 26 of the
judgment in Rajesh Masrani's case (supra).
24(i). At this stage, I would like to refer to the argument urged on behalf of the
plaintiff that copyright work is excluded by the definition of designs and therefore once
a copyright cannot be registered as a design by virtue of definition of design under the
Designs Act, hence, the copyright will have an independent protection than the
subject matter of design under the Designs Act. What is essentially sought to be
argued is that since a copyright artistic work is excluded from the definition of a
design, therefore, a copyright work does not fall within the scope of the design and
hence does not fall within the scope of Section 15(2) of the Indian Copyright Act.
24(ii). This argument urged on behalf of the plaintiff is misconceived for the reason
that Section 15(2) of the Indian Copyright Act uses the expression “capable of being
registered” i.e it is capable though not actually so registrable as a design because of
the definition of design under the Designs Act excluding copyrighted artistic work.
Legislature has consciously used the words “capable of being registered” meaning
thereby the possibility of a copyrighted sketch or drawing or artistic work being also
capable of being registered as a design though excluded from the definition of design.
The legislature deliberatly used the word capable in Section 15(2) of the Indian
Copyright Act. Therefore, it is not necessary that a drawing or a sketch or a design
must fall within the definition of design under the Designs Act and only then can it be
said that it will fall under Section 15(2) of the Indian Copyright Act, inasmuch as,
such an argument orverlooks the expression “capable of being registered” deliberately
so used under Section 15(2) of the Indian Copyright Act.
25. Finally, I would like to note that counsel for the plaintiff sought to argue that
there are judgments of foreign courts and there are judgments of other High Courts
which take different views than the view taken in Microfibre's case (supra), however,
there is no need for me even to refer to such judgments, inasmuch as, I am bound by
the ratio given by the Division Bench of this Court and I cannot decide a case in
violation of a ratio of the judgment of the Division Bench of this Court. Thus,
arguments accordingly sought to be urged cannot be raised before this Court and can
only be raised before a Bench larger than the Division Bench of this Court inasmuch as
decision in Microfibre's case (supra) is a decision of a Division Bench of this Court.
26. Lastly, I may note that in the facts of the present case it is not as if the
copyright work in itself is reprinted so to say on the dresses which are created by the
defendant. If the facts were that from the copyrighted works of the plaintiff prints
were created and such prints which have protection under the copyright work are as it
is lifted and printed upon the dresses of the defendant, may be in such a case without
saying so finally on this aspect, an issue of violation of the copyright of the work of the
plaintifff under Indian Copyright Act may have arisen. However, in the facts of the
present case the defendant is creating dresses or creating articles by an industrial
means and process by application of the design or drawing or sketch and the
defendant is not as it is affixing a print taken from the copyrighted work of the plaintiff
as a print on a dress created by the defendant. Issue in the present case therefore will
not be a violation of a copyright of the plaintiff under the Indian Copyright Act.
27. So far as the issue of violation of trade secrets is concerned, it is noted that
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firstly paras 16 and 17 of the plaint are far too general to make out such a case and for
passing an order as to so called trade secrets which are being not specifically talked of
and pleaded by the plaintiff. If an injunction order is sought with respect to trade
secrets then such specific trade secrets have to be mentioned and as to how those
trade secrets are in the ownership of the plaintiff, and only thereafter the court can
consider the grant of any injunction order on the basis of specified trade secrets and it
cannot be that a general order can be passed that there is presumed to be a trade
secret of the plaintiff and the defendant to be injuncted with respect to that
unspecified trade secret which is not described in the plaint, and with respect to which
thus no specific injunction order qua specific trade secret can be passed.
28. As a matter of abundant caution during the course of arguments I put it to the
counsel for the plaintiff as to what are the trade secrets which the plaintiff has and to
which counsel for the plaintiff argued that they are the same sketches, drawings and
designs in which copyright is claimed by the plaintiff and which are taken away by the
erstwhile employees of the plaintiff and used by the defendant. Therefore really the
issue once again is nothing but of application of Section 15(2) of the Indian Copyright
Act and not with respect to any trade secret dehors the provisions of the Indian
Copyright Act and the Designs Act.
29. In view of the above, it is found that the present suit is barred by Section 15(2)
of the Indian Copyright Act read with the ratio of the Division Bench of this Court in
the case of Microfibres (supra), and therefore, the suit is dismissed, leaving the parties
to bear their own costs.
———
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2015 SCC OnLine Del 13249 : (2015) 225 DLT 178 (DB) : (2016) 2 CCC 16 :
(2016) 1 Civ LT 63 (DB) : (2015) 64 PTC 366

(BEFORE S. RAVINDRA BHAT AND VIPIN SANGHI, JJ.)

Midas Hygiene Industries Pvt. Ltd. .…. Appellant

v.
Sudhir Bhatia .…. Respondent
Ms. Prathiba. M. Singh, Sr. Advocate with Sh. Sushant Singh, Sh. P.C. Arya and Ms.
Suhasni, Advocates, for the appellant.
Sh. Shailen Bhatia, Sh. Mohan Vidhani and Ms. Priti, Advocates, for the respondent.
RFA 239/2011
RFA 240/2011
RFA 241/2011
Decided on November 4, 2015
S. RAVINDRA BHAT, J.:— These appeals, under Section 72 of the Copyright Act,
1957, challenge the order of the Learned Copyright Board (hereinafter “the Board)
dated 04.04.2011, which expunged registration numbers A-51334/91, A-55885/99,
and A-55885/99 upon the petition filed on 23.01.07 by the respondent/Applicant,
Sudhir Bhatia (hereinafter, “the respondent”). The ground in support of the appeal is
that inter alia, the Board mis-applied Section 15(2) of the Copyright Act, 1957 in the
facts and circumstances of the case.
2. The appellants (hereafter called “Midas”) claim to be pioneers in insecticides and
pesticide production in the form of chalks in India. After conceiving the idea and
testing it, Midas launched commercial activity under the trademarks “Krazy Lines” and
“Laxman Rekha” (hereafter “the trademarks”) approximately in 1989. The trademarks
were registered, bearing Nos. 545608 and 54610 respectively in 1991, and the
packaging material of the products was registered under No. A-51334/91 of the
Copyright Act.
3. The respondent was employed by the appellants from 1985 as he was a close
relative of a director, Mr. S.S. Kapoor. In 1992, he started production of identical
chalks under the trademarks “Krazy Lines” and “Laxman Rekha”, pursuant to which a
legal notice was served upon him on 28.02.1992, which was replied to by him. When
such production activity continued in 1994, criminal proceedings were initiated against
the respondent. Later that year, upon the insistence of family members, an agreement
was signed between the opposing parties, which, inter alia, stipulated the
abandonment of the trademarks “Krazy Lines” and “Laxman Rekha” by both the
appellant and the respondent, after 30.06.1994.
4. The agreement, however, was breached, in the first instance, by the respondent,
after which the appellant also found it expedient in their business' interests to flout its
terms and continue production of the insecticide and pesticide chalks. Thereafter,
Midas filed Suit No. 1821/1999 against the respondent before this Court. The matter,
after being heard by a Single Judge and later, a Division Bench the Court, was
eventually decided by the Supreme Court of India on 22.01.2004, restraining the
respondent from using the said trademarks, during pendency of the suit on the file of
this Court. The Supreme Court held that the cartons used by the respondent was
“almost identical” to that of the appellant. The Court held that the respondent was
unable to explain why such a mark was used and that this indicated a prima facie
dishonest intention.
5. After these developments, the respondent filed a Rectification Petition Nos. F 1-
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6/2007-CRB (WZ); F1-23/2007-CRB (WZ) and F1-24/2007-CRB (WZ) seeking

cancellation of the copyright numbered A-55884/99 (copyright for “KRAZY LINES”); A-
55885/99 (copyright for “LAXMAN REKHA”) and A-55334/91 (copyright for “LAXMAN
REKHA” and “KRAZY LINES”) before the Board claiming to be the rightful proprietor of
the said trademarks, and challenging the said registration on several grounds such as
non-compliance with Rule 16 of the Copyright Rules, 1958, lack of originality in the
artistic works of Midas, the lack of proper assignment between Midas and its
predecessor-in-title. The Board ordered cancellation of the copyrights in the order
dated 04.04.2011, which is the subject matter of these appeals.
6. The Copyright Board, which made the impugned orders, directing cancellation of
copyright registration, restricted the scope of the appeal to a consideration of the true
interpretation of Section 15(2) of the Copyright Act, 2000, which enacts that where
copyright in a design is capable of registration under the Designs Act, and is not so
registered, as soon as the article - to which such copyright is applied, is produced
more than fifty times through an industrial process, the copyright shall cease to exist.
The Copyright Board held that the appellant's registration vis-à-vis the artistic work, in
respect of which it had copyright, was capable of design registration and consequently,
the omission to apply for and obtain design protection resulted in the cessation of
copyright. The Board, in so concluding relied on a Division Bench ruling of this Court in
Microfibres v. Girdhar 2009 (4) PTC 519, particularly, the summation of the law,
contained in Para 46 of the report. It was held that the copyrights of the appellants
ceased the moment they used the artistic works for the purpose of the packaging,
which was capable of design registration.
The appellant's arguments
7. The appellant avers-and its learned senior counsel, Ms. Pratibha Singh, argues
that that the Copyright Board fell into error in applying Section 15(2) of the Copyright
Act, 1957 in the present instance, resulting in erroneous cancellation of its copyrights.
The appellant submits that the respondent, at the time of the registration of the said
copyright in 1999, could not be understood as a “person interested”, thereby
necessitating no issuance of notice under Rule 16 of the Copyright Rules, 1958, which
legal infirmity, the respondent claims, can solely merit the cancellation of the
copyrights. Furthermore, the appellant has opposed the impugned order on the
grounds that the laws of limitation and waiver barred the respondent's application.
8. Elaborating on the first contention, Ms. Pratibha Singh argued the copyright -
used as a label, does not in any manner cease to be an artistic work. Counsel
submitted that the use of the copyright as label while packing products (i.e. insect-
repellent chalk) did not render the packaging a “design” which was compulsorily
registrable. In this regard, counsel relied on the decision in Microfibres (supra) as well
as other decisions, notably William Grant & Sons v. McDowell's and Co. Ltd. 55 (1994)
DLT 80; Hindustan Lever Ltd. v. Nirma (Pvt) Ltd. AIR 1992 Bom 195 to the following
effect:
“The expression ‘design’ has been defined in Section 2(5) of the Designs Act,
1911. The said expression has been authoritatively interpreted in various
judgments, of various High Courts. To give an illustration, one may usefully refer to
the judgment of Chinnappa Reddy, J. in the case of A.F. Products v. A.B. Works AIR
1973 AP 17. It was held in this case that a design is necessarily part and parcel of
the article manufactured while a trade mark is necessarily not so. Thus the label to
be put on a carton to be used as a container for the goods can never amount to
design within the meaning of Section 2(5) of the Designs Act. Section 15(2) of the
Copyright Act, 1957 has no application to this case.”
9. Highlighting that Microfibres is binding precedent in the context of findings as to
the use of an artistic work as an integral and constitutive part of an article, Learned
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counsel submitted that the artistic work in the present case was incapable of design
protection and therefore fell outside the mischief of Section 15(2). It was highlighted
that for the applicability of that provision, there must be an element of inseparability
as between the design (of the article) and the artistic element. Here, however, a mere
label could not be said to constitute an artistic work capable of design right protection.
Learned counsel submitted that the impugned order of the Copyright Board failed to
notice and deal with Section 2 (a) of the Designs Act, which highlights that an article
could be artificial or partly artificial and should be capable of independent production
and sale. In the present case, submitted counsel there was nothing unique or novel in
the packaging over which the label was printed that warranted design registration.
Counsel emphasized that the application of the artistic work to the label as opposed to
the article itself distinguished the facts of the present case from those in Microfibres.
It was highlighted that the question, which was addressed by the Division Bench
there, was if an artistic work enjoy wider protection under the Copyright Act and not
whether a label - as opposed to an article or thing-could be independently protected
as a design. Thus, the findings of the Copyright Board were unfounded.
10. It was next argued that the Board failed to consider the effect of Section 2(1)(l)
and (m) of the Trade Marks Act, 1958, which define “package” and “mark”. The
contention was that Section 15 of the Copyright Act would apply in two cases, viz. (1)
when the design is applied to an article and (2) when the artistic work applied to an
article is capable of design registration. Here, it was argued that the definition of
“design” under Section 2 (a) excluded an artistic work (and a copyright in it) in a
label. Counsel also relied on Section 45 of the Copyright Act and proviso to the said
section to say that an artistic work which can secure protection as copyright as well as
a trademark. It was argued that the exclusive rights under the Copyright Act and
Trademarks Act can be maintained and enforced. Learned counsel submitted that the
considerations are entirely different when it is asserted that designs which embody
copyrights are also to be treated as capable of design protection. Such eventuality is
possible only if the artistic work in the design, i.e. the article itself is capable of
embodiment. Absent that condition, the independent assertion of copyright cannot be
repelled.
11. Section 2(1)(m) of the Trade and Merchandise Marks Act, 1958 defines “mark”
as including “a device, brand, heading, label, ticket, name, signature, word letter or
numeral or any combination thereof”. Further, Section 2(1)(l) of the Trade and
Merchandise Marks Act, 1958 defines “package” as “any case, box, container, covering,
folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame,
capsule, cap, lid, stopper and cork”. It is argued that the impugned trade-marks,
Krazy Lines and Laxman Rekha, and several cognates thereof (Lakshman Rekha, Magic
Laxman Rekha, Original Krazy Lines et al), fall squarely within the purview of the
above definitions.
12. Reliance was placed on Section 2(c)(i) of the Copyright Act, 1957 which defines
“artistic works” as “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”. It was submitted that Section 2 (c) (iii) brings within the purview of
the aforesaid Act “any other work of artistic craftsmanship”. Evidently, the distinctively
written words “Krazy Lines” and “Laxman Rekha” could be understood, within the
language of the Act, as a diagrammatic drawing, or alternatively, as an engraving; the
innovative representation of the insecticide products are covered by the expression
“work of artistic craftsmanship” of the Act. In brief argued the Appellants, the
impugned trademarks, and packaging of the insecticides products marketed
thereunder, can both doubtlessly be considered “artistic works” under the definition
stipulated under the Copyright Act, 1957.
13. Learned counsel for the appellant also referred to averments in the suit filed
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before this Court, CS (OS) 1821/1999 where a claim for trademark infringement and
copyright infringement was asserted against the present respondent (applicant before
the Copyright Board). It was submitted that the appellants' right to the trademarks in
KRAZY LINES and LAXMAN REKHA were clearly asserted. The Court had granted ad-
interim injunction, which was vacated on appeal by the Division bench. However, the
order of the learned single judge was restored by the Supreme Court in appeal by
special leave; the said decision is reported as Midas Hygiene Industries P. Ltd. v.
Sudhir Bhatia (2004) 3 SCC 90. Reliance was placed on the observations of the
Supreme Court, in that judgment, to the effect that the present appellant had secured
copyright registration in 1991 and renewed it in 1999 and that the present
respondent/applicant had not indicated any plausible reason for reproducing an
identical colour scheme for the label of his products. It was lastly contended that the
Copyright Board could, not have entertained the respondent's rectification application,
because he did not possess the locus standi to maintain it. Counsel also highlighted
that the application under Section 50 was inordinately delayed and therefore, should
not have been entertained at all.
14. Counsel for the respondent/rectification applicant, Mr. Shailen Bhatia, urged
that this Court should not interfere with the impugned order of the Copyright Board. It
was submitted that the Division Bench ruling in Microfibres (supra) was correctly
applied. It was emphasized that like in that case, the artistic work in the present case,
itself became embodied in the article. The article, i.e. the packaging was capable of
and compulsorily registrable. In this context, learned counsel argued that the Design
Rules, 2001, framed under Section 47 of the Design Act, enabled various articles to be
registered and classified them. It was submitted in this regard that design in
packaging is not excluded from registration, as is evident from a glance at Sl. No. 3-
01, Sl. No 9-05, Class 19 of the Third schedule to the Designs Rules. It is urged that
the design capability of such articles extends to packages; consequently, the
appellants' submissions are unfounded. Learned counsel also relied on the single
judge's decision in Microfibres v. Girdhar 2006 (32) PTC 157 and argued that the
salient aspect of design registration there too, was considered in the context of
classification of articles under the Rules of 2001. It is urged, particularly, that the
cartons are for commercial use and industrially produced and therefore fall within class
19 of the third schedule. The said Class contains the Chapter heading “Stationery and
Office equipments, artists' and teaching material”. Class 19-01 includes “all paper in
the widest sense of the term…envelops”. Class 19-02-19-09, broadly construed in the
light of the expressly provided articles-as also the “Miscellaneous” entry, leave no
doubt that cartons and packaging, which contain labels, are to be compulsorily design
registered. Therefore, Section 15(2) is squarely attracted.
15. Learned counsel submitted that there is no period of limitation prescribed for an
application under Section 50 of the Copyright Act and the provisions of the Limitation
Act are inapplicable. Furthermore, there cannot be any question about the respondent
being entitled to maintain the proceeding before the Copyright Board since he is a
rival trader and unquestionably has an interest in ensuring that copyrights disentitled
to protection are not conferred monopoly rights and are struck of the register.
Relevant statutory provisions
16. The relevant statutory provisions are extracted below:
“Provisions of the Indian Copyright Act, 1957
Section 2 (c) “artistic work” means-
(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
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(iii) any other work of artistic craftsmanship;

******* ******** *********
15. Special provision regarding copyright in designs registered or capable
of being registered under the Designs Act, 2000 (16 of 2000) -
(1) Copyright shall not subsist under this Act in any design which is registered
under the Designs Act, 2000 (16 of 2000).
(2) 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
reproduced more than fifty times by an industrial process by the owner of the
copyright, or, with his license, by any other person.
45. Entries in register of Copyrights. -(1) The author or publisher of, or the
owner of or other person interested in the copyright in, any work may make an
application in the prescribed form accompanied by the prescribed fee to the
Registrar of Copyrights for entering particulars of the work in the Register of
Copyrights:
Provided that in respect of an artistic work which is used or is capable of being
used in (relation to any goods or services), the application shall include a
statement to that effect and shall be accompanied by a certificate from the
Registrar of Trade Marks referred to in [(Section 3 of the Trade Marks Act, 1999
(47 of 1999)], to the effect that no trade mark identical with or deceptively
similar to such artistic work has been registered under that Act in the name of,
or that no application has been made under that Act for such registration by, any
person other than the applicant.]
(2) On receipt of an application in respect of any work under sub-section (1), the
Registrar of Copyrights may, after holding such inquiry as he may deem fit, enter
the particulars of the work in the Register of Copyrights.
*************** **************
Provisions of The Designs Act, 2000
2. Definitions. - In this Act, unless there is anything repugnant in the subject or
context.
(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;
(c) “copyright” means the exclusive right to apply a design to any article in any
class in which the design is registered;
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 subsection (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 Penal Code, 1860 or any artistic work as defined in clause
(c) of section 2 of the Copyright Act, 1957 (14 of 1957).
4. 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
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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.
Provisions of The Trade and Merchandise Marks Act, 1958
2 (v) “trade mark” means -
(i) in relation to Chapter X (other than section 81), a registered trade mark or a
mark used in relation to goods for the purpose of indicating or so as to
indicate a connection in the course of trade between the goods and some
person having the right as proprietor to use the mark; and
(ii) in relation to the other provisions of this Act, a mark used or proposed to be
used in relation to goods for the purpose of indicating or so as to indicate a
connection in the course of trade between the goods and some person having
the right, either as proprietor or as registered user, to use the mark whether
with or without any indication of the identity of that person, and includes a
certification trade mark registered as such under the provisions of Chapter
VIII.”
Analysis and Conclusions
17. This case concerns with the seeming overlap between three intellectual
property rights, viz. copyright, trademark and design. Copyright protection is to the
original expression of an idea. It has been characterized in While-Smith Music Pub. Co.
v. Apollo Co. 209 (1908) U.S. 1 as the “The right to exclude” others from using the
idea in the protected (i.e expressed) form and the basis for this protection is “that the
person to whom it is given has invented some new collocation of visible or audible
points, - of lines, colors, sounds, or words. The restraint is directed against
reproducing this collocation, although but for the invention and the statute any one
would be free to combine the contents of the dictionary, the elements of the spectrum,
or the notes of the gamut in any way that he had the wit to devise. The restriction is
confined to the specific form, to the collocation devised.” Trademarks protect the
distinctiveness of a mark, a logo, a symbol, and its association with a product or
service. They are “badges of origin” which act as markers for the consumer to identify
the source of goods or services (Aristo Ltd. v. Rysta Ltd. 1945 AC 68). Design rights,
on the other hand, protect novelty of the design elements (shape, presentation, etc) of
an article : it is significantly based on the visual appeal of the product or article.
18. The undoubted facts here are that the appellant and the respondent have a
long litigious history. The appellant sued the respondent complaining violation of
trademark rights, in a passing off action. The Division Bench set aside the interim
order made in its favour; ultimately, the Supreme Court restored the learned single
judge's restraint order. The appellant had obtained copyright registrations based on its
applications that the author of the artistic works of the label for LAXMAN REKHA and
KRAZY LINES, two works, had assigned his rights to it. These three copyright
registrations were obtained in 1991; they were renewed in 1999. They were also
disclosed in the passing off suit, filed against the respondent in 1999. After the final
order (in the interim injunction appeal of the appellant) by the Supreme Court
(rendered in 2003), the respondent filed applications under Section 50 of the
Copyright Act, for cancellation of copyright registration. These were allowed by the
Board in its impugned order.
19. As is evident from the previous factual narrative, the primary bone of
contention between the parties to this litigation is the design registration capability of
the artistic work used by the appellant to market its products. The appellant faults the
impugned decision of the Board canceling its copyrights. It argues that the artistic
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work cannot be registered because it is excluded from the definition of the expression
“design” under the Designs Act. It next argues that even otherwise the reproduction of
the artistic work on a package as a label does not automatically compel the
registration of the article namely the package or container as a design. Quite naturally,
the respondent argues to the contrary and urges this Court to uphold the Board's
decision. The respondent primarily bases his argument upon the text of Section 15(2)
of the Designs Act. Both parties base their arguments upon the previous Division
Bench ruling in Microfibers.
20. The definition of the expression “artistic work” in the Copyright Act is
expansive. It includes both a painting and a drawing. To that extent, the appellant is
correct in asserting that the subject work is an artistic work and consequently capable
of copyright protection. Indeed the pleadings before the Board are predicated not only
on the assertion of design protection capability of the subject work but also the
averment that it lacks the originality which makes an artistic work copyrightable in the
first instance. There is consequently an implicit admission that the subject mark or
work - or label, if you have it - should not be afforded copyright protection through a
registration. If so, this averment is reason enough to negate the respondent's
submission with regard to applicability of Section 15(2) because of the definition of
“design” (Section 2(d) of the Designs Act) clarifies that ‘“design” means only the
features of shape, configuration, pattern, ornament or composition of lines or colours
applied to any article whether in two dimensional or three dimensional or in both
forms, by any industrial process or means…. and does not include any trade 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 Penal
Code, 1860 or any artistic work as defined in clause (c) of section 2 of the Copyright
Act, 1957 (14 of 1957).” The applications under Section 50 before the Board, by the
respondent, clearly state (for instance in Paras 7 and 9) that a) there is no authorship
of the artistic work in question, to claim copyright and secondly that the artistic work
lacks originality. Clearly, therefore, the respondent's argument was that the subject
label/work is in fact an artistic work. Such being the case, the Board, in this Court's
opinion, fell into error in wholly ignoring the definition of “design” which excludes,
inter alia, artistic works - so defined under the Copyright Act and that labels - as
defined under the old Trade and Merchandise Marks Act, are excluded. Here, it may be
emphasized that “trademark” under the said 1958 Act is defined as a trademark used
in “relation to” goods (Section 2(v)(i)).
21. The Court would not rest its decision on the narrow premise indicated above; it
would now proceed to discuss the submission of the parties as to the central issue,
urged by them, i.e. the design registration capability which according to the
respondent, disentitled copyright protection. As evident from the language of Section
15 of the Copyright Act, copyright does not subsist in a registered design. The
rationale for this is that someone's choice of design registration is a conscious decision
to use the underlying work, for mass production. The design then reaches, through the
medium of the product or the article, a wider audience; it has a commercial element.
This is of course possible in the cases of designs of products and articles, which are
sold widely or have a market. However, that is not always so in the case of an artistic
work-typically a painting a drawing or even a sculpture for instance (which are closest
species of copyrights that overlap with designs). Yet the transformation of a work of
art into a design results in the possibility of its protection as a design. Section 15(1)
dictates that if this kind of work is registered as a design, there is no copyright
protection. Section 15(2) on the other hand, says that if a work is capable of design
registration, and is not registered, but replicated as a product or article through a
design more than 50 times through mechanical process, copyright in that work ceases.
Now this injects a complicating dimension, because works of art, primarily so, which
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are also capable of design registration, would lose even copyright protection, thus
undermining the creative impulse and the efficacy which the Copyright Act in the first
place assures. The dichotomy - indeed the difficulty in articulating an acceptable
harmony between these two strands of thought was seen long ago. This was noticed
and commented upon in King Features Syndicate Incorporated and Frank Cecil Betts,
the Personal representative of Elzie Chrisler Segar, Deceased v. O & M Kleeman Ld.
1941 (48) RPC 207. In that case, the anthropomorphic cartoon strip character “Popeye
the Sailor” used in comics and later in films, was reproduced in the form of toys and
brooches. The author did not industrialize the cartoon character, but later, due to its
popularity, he licensed some manufacturers to produce articles in the toys, brooches,
etc. The House of Lords drew a distinction between copyright under the Copyright Act
on the one hand, and “design copyright” under the relevant Designs law. The Court
concluded that such design rights are separate and their extinction did not result in
cessation of copyright in the work (i.e the cartoon character in question). It was held
that:
“……The statutory definition of design now in force is found in Section 19 of the
Patents and Designs Act, 1919, which replaces that given in Section 93 of the
Patents and Designs Act, 1907. The operative definition so far as here material
is:‘Design’ means only the “features of shape, configuration, pattern, or ornament
applied to any article “by any industrial process or means whether manual,
mechanical, or chemical, “separate or combined, which in the finished article appeal
to and are judged “solely by the eye”. Thus design involves certain elements : there
must be features of shape, configuration, pattern, or ornament and these must be
applied (or intended to be applied in the words of Section 22 of the Copyright Act)
to any article by way of industrial means or process. Section 22 emphasises the
same aspects. Designs to which the section is to apply are those used or intended
to be used as models or patterns to be multiplied by any industrial process. Thus a
design may be the shape of a coal scuttle, a basin, a motor car, a locomotive engine
or any material object, it may be the shape embodied in a sculptured or plastic
figure, which is to serve as a model for commercial production, or it may be a
drawing in the flat of a complex pattern, intended to be used for the manufacture of
things such as linoleum or wall paper. Design copyright is thus to be distinguished
from artistic copyright..”
22. More recently, the Supreme Court succinctly set out the object of the Designs
Act and Parliamentary intention in affording protection to designs, in Bharat Glass
Tube v. Gopal Glass Works Ltd. AIR 2008 SC 2520. The Court held as follows:
“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 artifact. 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.”
23. The most elaborate discussion on the subject is found in Microfibres (supra)
where the Division Bench observed as follows:
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“23. There is, therefore, 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 section 2(c) of the Copyright act, 1957.
24. It needs to be emphasized 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.
25. 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 Section 2(c) of the Copyright Act. This is so because the expression “artistic
work’ as defined in Section 2(c) 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.
26. The expression “copyright in any design” used in Section 15(2) 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-à-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.
27. Under the Designs Act, a copyright has a different connotation from a
copyright under the Copyright Act. Under the Designs Act, copyright means the
exclusive right to apply the design to any article in any class in which the design is
registered.
28. The issue with regard to the extent of, and the conditions for the copyright
protection to such an artistic work, as an artistic work under the Copyright Act,
which is a design registered or capable of registration under the Designs Act, is
what is dealt with, by section 15 of the Copyright Act. Once the distinction between
the original artistic work and the design derived from it, and the distinction
between Copyright in an original artistic work under the 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.
29. 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
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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.
30. Subsection (2) of section 15 deals with the situation where the design, which
is capable of being registered under the Designs Act, is not so registered. It
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. It is clear to us that 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 shall
we say commercial, exploitation of the original artistic work by the
application/reproduction of the said work in any other form or reproduction of copies
thereof in exercise of the rights under Section 14(c)(1) and 14(c)(iii) of the
Copyright Act. Beyond the specified limit, if the design derived from the original
artistic work is exploited (i.e. if the design is applied more than 50 times by an
industrial process on an article) the copyright in the design ceases unless it is
registered under the Designs Act…
**************** ****************
We do hold that in the original work of art, copyright would exist and the
author/holder would continue enjoying the longer protection granted under the
Copyright Act in respect of the original artistic work. Thus, for instance a famous
painting will continue to enjoy the protection available to an artistic work under the
Copyright Act. A design created from such a painting for the purpose of industrial
application on an article so as to produce an article which has features of shape, or
configuration or pattern or ornament or composition of lines or colours and which
appeals to the eye would also be entitled design protection in terms of the
provisions of the Designs Act. Therefore, if the design is registered under the
Designs Act, the Design would lose its copyright protection under the Copyright Act
but not the original painting. 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, in
our view, would harmonize the Copyright and the Designs Act in accordance with
the legislative intent.
46. We thus summarize our findings as follows : -
a. The definition of ‘artistic work’ has a very wide connotation as it is not
circumscribed by any limitation of the work possessing any artistic quality.
Even an abstract work, such as a few lines or curves arbitrarily drawn would
qualify as an artistic work. It may be two dimensional or three dimensional.
The artistic work may or may not have visual appeal.
b. The rights to which a holder of an original artistic work is entitled are
enumerated in Section 14(c) 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
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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 Copyright Act and the Designs Act and indeed the Preamble
and the Statement of Objects and Reasons of the Designs Act makes it clear
that the legislative intent was to grant a higher protection to pure original
artistic works such as paintings, sculptures etc. and lesser protection to
design activity which is commercial in nature. The legislative intent is, thus,
clear 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 Section 2(c) of the Copyright Act, 1957 and would be
entitled to the full period of copyright protection as evident from the definition
of the design under Section 2(d) of the Designs Act. However, the intention of
producing the artistic work is not relevant.
g. This is precisely why the legislature not only limited the protection by
mandating that the copyright shall cease under the Copyright Act in a
registered design but in addition, also deprived copyright protection to
designs capable of being registered under the Designs Act, but not so
registered, as soon as the concerned design had been applied more than 50
times by industrial process by the owner of the copyright or his licensee.
h. In the original work of art, copyright would exist and the author/holder would
continue enjoying the longer protection granted under the Copyright Act in
respect of the original artistic work per se.
i. If the design is registered under the Designs Act, the Design would lose its
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.”
24. It is thus clear that a work of art may answer to the description of subject
matter, capable of both design and copyright protection. However, copyright in such a
work of art can only subsist if it has (i) not been registered as a design or (ii) while
answering to the description of a registerable design, it has not been registered as
such and not been applied to article which has been reproduced more than fifty times
by an industrial process by the owner, licensee, or any other person. In other words,
the copyright in the work can continue to survive independent of the work's mere
fitness for design protection. In the present case, the subject work is a label.
According to the respondent it is an artistic work. However, that it answers the
description above is sought to be supported by the classification of various products
and articles in the third schedule to the Design Rules. Now, there is no express
indication in the rule that a label fixed or printed on a container, or a container or
package on which a label amounting to an artistic work is printed becomes capable of
registration. In any case, the statutory definition of designs excludes “artistic work”
and labels used as trademarks. This aspect - that labels cannot be “designs” and are
artistic works for copyright purpose and also entitled to trademark protection-has been
held in at least three decisions of various High Courts - Andhra Pradesh, Bombay and
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this Court. Ampro Food Products v. Ashoka Biscuit Works AIR 1973 A.P 17 for
instance, has this to say:
“4…. It should be remembered that a trade mark is different from design. A
design is necessarily part and parcel of the article manufactured while a trade mark
is not necessarily so. In fact, the definition of “design” in Section 2(5) of the
Designs Act expressly states that it does not include any trade mark as defined in
Section 2(1)(v) of the Trade and Merchandise Marks Act, 1958. That is why the
certificate of registration of the design contains a note which recites “the novelty in
the design resides in the ornamental source pattern which appears only on the side
of the biscuit as illustrated. No claim is made by virtue of this registration to any
right to the use as a trade mark of what is shown in the representations or to the
exclusive use of the letters appearing in the design”.
25. In Hindustan Lever Limited v. Nirma Private Limited AIR 1992 Bom 195 the
Bombay High Court similarly ruled as follows:
“27. The learned counsel for the defendant has contended that in spite of notices
served on the Advocates for the plaintiff, the plaintiff has been unable to produce
the contracts of employment between the plaintiff and the artist Mr. B.G. Naik and
it should, therefore, be taken that the plaintiff is not the owner of the Copyright in
the artistic work evidenced by certificate (Exs. Y-1 and Y-2 to the plaint). It is not
possible to accept this submission in view of the strong prima facie presumption
attached to the said certificates under Section 48 of the Copyright Act. The
certificate at Exhibit ‘Y-1’ states that the label attached thereto was first published
by Hindustan Lever Limited in 1976. The said certificate clearly describes Hindustan
Lever Limited as the owner of the copyright. Similar is the case in respect of the
artistic work (Exhibit ‘Y-2’ to the plaint). I have no doubt in my mind that the
plaintiff has paid the necessary consideration to the artist Mr. B.C. Naik through
M/s. Lintas Ltd. and the plaintiff is entitled to all the copyrights in respect of the
labels since long. It was contended by the learned counsel for the defendant that
the said label is a design which was capable of being registered under the Designs
Act, 1911 and the copyright attached to the said labels, if any, has ceased to be
operative by virtue of the provisions contained in Section 15(2) of the Copyright
Act, 1957. With respect to the learned counsel, I find no merit whatsoever in this
contention. The expression ‘design’ has been defined in Section 2(5) of the Designs
Act, 1911. The said expression has been authoritatively interpreted in various
judgments, of various High Courts. To give an illustration, one may usefully refer to
the judgment of Chinnappa Reddy, J. in the case of A.F. Products v. A.B. Works,
AIR 1973 Andh Prad 17. It was held in this case that a design is necessarily part
and parcel of the article manufactured while a trade mark is necessarily not so.
Thus the label to be put on a carton to be used as a container for the goods can
never amount to design within the meaning of Section 2(5) of the Designs Act.
Section 15(2) of the Copyright Act, 1957 has no application to this case. No such
contention is raised in any of the affidavits filed on behalf of the defendant.”
26. William Grant & Sons Ltd. v. McDowell & Co. Ltd. 1994 FSR 690 is the decision
of this Court, on the issue of a label's inherent design protection capability. It was held
that:
“It has to be kept in mind that the provisions of the Trade & Merchandise Marks
Act, particularly section 2(j), do not include “wrapper” as a mark, whereas a “label”
is included as a mark. I have already indicated that the two are quite distinct, and
have stated the reasons why I think they are quite distinct. The aforesaid
observations regarding a “wrapper” being a mark, indicate that there may be a
difference between the English statute and the Indian statute regarding trade
marks. Whereas the English statute may have included “wrapper” as part of the
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definition of a trademark, the Indian Statute has excluded “wrapper”. For this
reason, this authority may not be applicable to cases which arise in India.
In my view, when a manufacturer skillfully blends factual information with
features on the label which are intended to distinguish his own product from the
products of other manufacturers, and, the blending of the factual information and
their distinguishing features is achieved in a manner which combines the aforesaid
particulars and features as a unified whole, or a representation, then such a
representation is a label, which, depending upon the manner in which the various
features are harmonised with each other, may give rise to a claim that the label is
“artistically” made. Actually being so, it is thus, by itself copyrightable matter.
XXXXXX XXXXXX XXXXXX
The Trade & Merchandise Marks Act, 1958 deals with trade marks. According to
Section 2(j) of the Act, “mark” includes a device, brand, heading, LABEL, ticket,
name, signature, word, letter or numeral or any combination thereof. Section 2(2)
of the Act states, “unless the context otherwise requires, any reference - (a) to the
use of a mark shall be construed as a reference to the use of a printed or other
visual representation of the mark.“Reading Sections 2(j) and 2(2) together, it is
clear that printed material such as the plaintiff's label is a mark. This being the
position, the same cannot be treated as a “design”. The label cannot be a design
also for the reason that in the Designs Act 1911, section 2(5) defines “design” as
follows:*714 “design” means only the features of shape, configuration, pattern or
ornament applied to any article by any industrial process, or means, whether
manual, mechanical or chemical, separate or combined, which in the finished article
appeal to and are judged solely by the eye; 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 subsection
(1) of Section 2 of the Trade and Merchandise Marks Act, 1958; or property mark as
defined in Section 479 of the Penal Code, 1860.
27. This discussion, in the opinion of the court, can be concluded from a relevant
extract of the decision in Interlego A.G. v. Tyco Industries 1988 (3) All ER 749
“It is not to protect principles of operation or inventions which, if protected 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 articles of a design not substantially different from the
registered design.”
28. For a better appreciation of the facts of this case, it would be useful to
reproduce two images of the label - the first image, i.e. the label on the package, as it
exists with the product (insect repellant) inside it and the second (on the right side)
after the package is opened and unraveled.
29. The label is clearly both a trademark, as it indicates the brand and the origin
(i.e. the manufacturer or producer) as well as a copyright, as it contains a combination
of colours and stylized lettering, set in red colour, with the image of a cockroach. The
expression “LAXMAN REKHA” and the other one, “KRAZY LINES” are at least in
combination with the colour scheme and get up, trade-marks; hence they are labels
and clearly excluded from the definition of “designs”. Furthermore, the respondent
nowhere asserts that there are novel or new elements in the shape or configuration of
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the packaging which deserve design protection. By virtue of Section 4 (c) design
registration is refused if the work is “not significantly distinguishable from known
designs or combination of known designs…” It is not shown how the packaging or label
upon it, in this case is so unique or novel as to distinguish it from known designs. The
object of the Designs Act is to confer protection to novel and unique designs. If every
object based upon some drawing were afforded design registration, soon, objects of
common utility-vessels, containers, furniture items, etc. could not be replicated.
Therefore, it is held that apart from the fact that the work in the present case was
copyrighted as an artistic work and thus stood excluded from the definition of design-
as well as the fact that it was a trademark label, it is also held that it cannot also
qualify for design registration-the sole condition for operation of Section 15(2). The
respondent had urged that the artistic work does not qualify for registration because it
is not original or creative. However, there is no discussion on the issue by the Board.
30. This Court is conscious that product packaging can potentially to do much more
than its primary function—it can speak to consumers. Along with functional features,
such as automatic strength and user friendliness, packaging design features convey a
visual message resulting in consumer recognition, or “secondary meaning,” for the
product and its source. This unspoken message of package design, essentially a
promotion of the “trade dress” of the package, may become a significant asset for
market entrenchment and product valuation. Instances of some such product
packaging synonymous with the article itself are TOBLERONE chocolate packaging;
certain liquor bottle containers and packages; chocolate and cheese wrappers, etc.
However, there exist distinct design elements, which inherently qualify for protection.
There is complete absence of any such novel design element in the appellant's
package/labels, which would compel a design registration.
31. This court notices that the Copyright Board, in its impugned order, noticed the
question of lack of the applicant/respondent's locus standi. However, it did not deal
with it. This issue is relevant because Section 50 is premised upon a person aggrieved
moving the Board for cancellation of copyright. The said expression “person aggrieved”
is synonymous with the expression locus standi. Shri Ganga Vishnu Raheja v. Shri
Swami Satyanand Dharmarth 2005 (30) PTC 577 (Del) is authority for the proposition
that there should be some semblance of locus standi for someone to validly maintain a
proceeding under Section 50 of the Copyright Act. Likewise, the Board noticed, but
wholly failed to consider the submission of the appellant that the application for
cancellation or striking off registration of the copyright (made by the respondent) was
time barred or hit by delay and laches.
32. In view of the above discussion the finding of the Board that the appellant's
copyright registrations have to be cancelled or cannot stand, because they are capable
of design registration and consequently covered by Section 15(2) of the Copyright Act,
are set aside. However, in view of the Board not returning any finding as to whether
the work could qualify for protection as an artistic work, in the sense that it had the
requisite element of originality, as well as whether the application was maintainable on
account of the respondent's being a person aggrieved - as also the question of
limitation, and laches, the matter is remitted to the Board for fresh hearing of the
parties, and findings. The Copyright Board too did not deal with other grounds urged
in the application. The appeal is, therefore allowed to the extent indicated above-all
findings with respect to application of Section 15(2) of the Copyright Act are set aside.
This court has not rendered any findings on the merits of any other contention. On
such other issues, the Board shall hear the parties and render fresh findings, in
accordance with law.
———
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2013 SCC OnLine Del 1980 : (2013) 200 DLT 322 (FB) : AIR 2013 Del 143
(FB) : (2013) 55 PTC 61

In the High Court of Delhi

(BEFORE SANJAY KISHAN KAUL, MANMOHAN SINGH AND RAJIV SHAKDHER, JJ.)

CS (OS) 384/2008
Mohan Lal, Proprietor of Mourya Industries .…. Plaintiff
Mr. Ashok Goel & Mr. Ranjeev Kumar, Advs.
v.
Sona Paint & Hardwares .…. Defendants
Mr. Mohan Vidhani, Mr. Rahul Vidhani & Mr. Arun Jain, Advs.
Ms. Pratibha M. Singh, Advocate, amicus curiae.
And
CS (OS) 1446/2011
Micolube India Limited .…. Plaintiff
Mr. S.K. Bansal, Mr. Vikas Khera & Mr. Pankaj Kumar, Advs.
v.
Rakesh Kumar Trading as Saurabh Industries & Ors. .….
Defendants
Mr. Pravin Anand & Mr. Saif Khan Advs. Mr. Sudhir Chandra Aggarwal, Sr. Adv. with
Mr. Jaspreet Sareen & Mr. Angad Varma, Advs. for the Interveners.
Ms. Pratibha M. Singh, Advocate, amicus curiae.
CS (OS) 384/2008 and CS (OS) 1446/2011
Decided on May 15, 2013
A. Intellectual Property — Designs Act, 2000 — Ss. 19 and 22(4) — Trade Marks Act,
1999 — Ss. 19, 29 and 32 — Suit for infringement against registered proprietor under the
Designs Act — Maintainability — Held, the suit for infringement seeks to assert the
monopoly rights of the plaintiff based on the uniqueness, newness and the originality of his
design qua the defendant registrant and a plaintiff is entitled to approach the court and
plead that his registered design is unique and that the defendant has obtained registration
which is neither new nor significantly distinguishable when compared to the plaintiff's
registered design — One registered design holder can sue another registered design holder
in a suit for infringement
(Paras 17 and 18)
B. Intellectual Property — Designs Act, 2000 — Ss. 2(c), 11 and 22 — Trade Marks Act,
1999 — Ss. 11(3)(a), 27(2), 134 and 135 — Remedy by way of passing off under the
Designs Act — Whether a composite suit for infringement of a registered design can be filed
along with an action for passing off — Held, different causes of action cannot be combined in
one suit and the cause of action in the infringement suit under the Designs Act could be
different from that which obtained in a passing off action — A suit for infringement under the
Designs Act would be the claim of monopoly based on its registration where as the action
for passing off is founded on the association of the mark to the goods sold or services
offered by the plaintiff and the misrepresentation sought to be created by the defendant by
use of the plaintiff's mark or a mark which is deceptively similar, so as to portray that the
goods sold or the services offered by him originate or have their source in the plaintiff
(Paras 24 and 34)
Dabur India Ltd. v. K.R. Industries, (2008) 10 SCC 595, relied on
RAJIV SHAKDHER, J
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CS (OS) No. 348/2008

CS (OS) No. 1446/2011 & IA Nos. 9537/2011 (by plaintiff), 13404/2012 (by
defendant no. 4) & IA No. 11874/2012
1. The captioned suits in the first instance came to be filed in the District Court on
an application being moved under Section 22(4) of the Designs Act, 2000 (in short the
Designs Act), CS(OS) 348/2008 (originally numbered as CS(OS) 358/2007, was
transferred to this court vide order dated 11.02.2008, while CS(OS) 1446/2011
(originally numbered as 45/2011) was, similarly, transferred to this court vide order
dated 19.05.2011, on an application moved by the plaintiff, like in the other case,
under provisions of 22(4) of the Designs Act.
1.1 These applications were transferred and moved as, in the written statements
filed defences, which are available under Section 19 of the Designs Act, were taken.
2. Mr Justice Manmohan Singh by an order dated 30.03.2012, while hearing
arguments on two interlocutory applications, one filed by the plaintiff and the other
filed by defendant no. 3 in the said suit for vacation of ex-parte order, passed by the
learned Additional District Judge (ADJ), referred the matter to a Larger Bench in view
of the dichotomy in the opinions expressed by various Benches of this Court in respect
of issues which would have a bearing on matters in issue in the said suit.
2.1 Since, similar issues, evidently, arise in CS(OS) No. 384/2008, Mr Justice
Manmohan vide order dated 31.03.2013, referred the said suit to a Larger Bench in
view of the order of reference passed in the other suit.
3. Accordingly, the captioned suits were placed before the Full Bench.
4. Mr Justice Manmohan Singh (who is also a member of the Full Bench) vide order
dated 30.03.2012 has sought a decision on the following issues:
I. Whether the suit for infringement of registered Design is maintainable against
another registered proprietor of the design under the Designs Act, 2000?
II. Whether there can be an availability of remedy of passing off in absence of
express saving or preservation of the common law by the Designs Act, 2000 and more
so when the rights and remedies under the Act are statutory in nature?
III. Whether the conception of passing off as available under the Trade Marks can
be joined with the action under the Designs Act when the same is mutually
inconsistent with that of remedy under the Designs Act, 2000?
5. In order to appreciate the background in which the aforesaid issues have been
raised, it may be relevant to very briefly advert to the pleadings in the two suits before
us. For this purpose, we would be referring to the parties in the two suits by their
respective names or abbreviated names wherever it is found convenient. In the first
suit, plaintiff would be referred to as Mohan Lal, while the defendant, Sona Paints &
Hardware would be referred to as SPH. In the second suit, the plaintiff Micolube India
Ltd. will be referred to as MIL, while the defendants being many, will be collectively
referred to as defendants.
CS(OS) No. 384/2008
6. Mohan Lal, who is the proprietor of M/s Mourya Industries, claims to be in the
business of manufacturing and trading of mirror frames, door pipe handles, hinges,
almirah locks and almirah lock plates.
6. It is averred that in 2005, he developed novel and distinguishable designs of
mirror frames, which were submitted for registration with the authorities constituted
under the Designs Act. Apparently, in respect of mirror frames two registrations
bearing no. 202050 and 202051, of even date, i.e., 09.11.2005, in class 06 - 07, were
made in favour of Mohan Lal.
6.2 It is also averred that similar applications, for registration, in 2006, were made
in class 08-06 qua : hinges, two different and distinguishable almirah lock plates and
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a door handle. The petitioner claims that, the said designs being new, original and
novel, were registered on 15.03.2006 vide registration nos. 203506, 203507, 203508
and 203509, respectively.
6.3 In respect of each of the aforementioned designs it is averred that they are
new, novel and distinguishable. It is also averred that, Mohan Lal is the originator,
inventor, owner and lawful proprietor of the aforementioned registered designs. It is
averred that, in October, 2007, Mohan Lal became aware of the fact that SPH had
clandestinely commenced manufacturing mirror frames, door handles of almirah etc.
bearing designs which were identical and similar to those in respect of which Mohal Lal
claimed proprietary rights.
6.4 Consequently, a legal notice dated 13.10.2007 was issued to SPH. SPH,
evidently, sent a reply dated 18.10.2007 which, according to Mohan Lal, was vague
and misleading. This necessitated, institution of a suit for permanent injunction,
passing off, damages and rendition of account of profits earned as also for delivery of
the goods of SPH, which are, imitations of the designs registered in the name of
Mohan Lal. Delivery is also sought for destruction of packaging, advertisement
materials, stationery, dies etc. on which, imitation designs are reproduced.
6.5 SPH, on the other hand, in its defence has pleaded that the designs in issue,
were wrongly registered in favour of Mohan Lal, and that, they are neither new nor
original. Being in public domain, it is averred, they ought not to have been registered
in the first instance. It is thus the stand of SPH that, the designs in issue, are liable to
be cancelled on this ground alone as they do not fulfil the criteria prescribed under
Section 4(a) and 4(b) of the Designs Act. It is pleaded that the designs are trade
variants of prior publication and thus, as indicated above, liable to be cancelled.
6.6 More specifically, SPH pleads that in respect of mirror frame registrations
bearing no. 202050 and 202051, there is a prior registration bearing no. 189330 in
favour of a person by the name of Mr. Gopal Panchal, trading under the name and
style of Reveria Steel India, situate at 72, Periyan Colony, Indore, state of Madhya
Pradesh.
6.7 It is further averred that the design, “frame of mirror” is registered in favour of
SPH vide registration no. 206510, and therefore, Mohan Lal cannot maintain a claim
for piracy and infringement, qua SPH, vis-à-vis the said registration. An alternative
plea has also been taken that, the design of SPH is different. A similar plea is taken
qua other designs in respect of which the registrations have been obtained by Mohan
Lal.
6.8 It is also pleaded that Mohan Lal has concealed the fact that, he had dealt with
SPH and had sold his goods, bearing the designs in issue, to SPH.
CS(OS) No. 1446/2011
7. MIL, claims to be in the business of manufacturing and marketing petroleum
products, and brake and clutch fuel oil, lubricating oil and greases as also other allied
and cognate products (hereinafter collectively referred to as products). It is averred
that, these products are sold in containers which have original and novel designs, and
that, MIL is the author and the owner of these designs.
7.1 MIL claims to have created two such novel and original designs in 2008. It is
averred that, in respect of one of the two designs created, it has obtained registration
on 10.12.2008, under the Designs Act, bearing no. 220071. MIL claims that the said
containers have a novel shape, configuration and pattern and that the design has
aesthetic qualities which are appealing to the eyes of the holder. The designs by
themselves, it is averred, have no bearing on the efficiency of the products in issue.
7.2 MIL claims to have sold the aforementioned products in the containers designed
by it, over a period of time, with annual sale running into several lakhs.
7.3 It is claimed that defendants 1 to 4 are in the same business of manufacturing
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and marketing, industrial oils, greases, oil and lubricant oil etc. and other allied
products. It is further averred that, the defendants, who are inter-related (though the
exact nexus and constitution of defendants is not known), are selling their goods in
containers which have designs identical to those of MIL. The containers of the
defendants bear the same shape and configuration as those of MIL and hence, are
fraudulent and obvious imitation of the designs in which MIL claims proprietorship. It
is also averred that, at a given point in time, defendant nos. 1 and 4 were Directors in
MIL.
7.4 It is claimed that in February, 2011 MIL became aware for the first time of the
fact that the defendants had been selling their goods in containers which bore designs
similar to those of MIL. It is inter alia averred that, since the infringement of the
registered designs of MIL and the tort of passing off took place in Delhi, this Court has
the necessary jurisdiction to entertain and try the suit and hence the decision to
approach this court, by way of the present suit.
7.5 The reliefs claimed in this suit are identical to the earlier suit. The relief sought
are in the nature of : grant of permanent injunction, rendition of accounts of profits
illegally earned by the defendants, delivery of finished and unfinished material bearing
designs, over which MIL claims proprietorship.
7.6 The contesting defendant, i.e., defendant no. 3, apart from preliminary
objections raised in the written statement, has taken the usual defences, which are
that : MIL is not the proprietor of a new and original design and has instead pirated
the design from other lubricant manufacturers. This averment is supported with the
submission that, MIL has not placed on record drawings, CAD models, patterns and
any R&D process adopted for creation of the designs in issue nor, is there any bill,
invoice or any Memorandum of Understanding filed, which would show the terms
arrived at with the designer/artist who purportedly was instrumental in designing the
containers in respect of which, MIL is claiming proprietorship. A challenge is laid to the
registration obtained by the MIL on the ground that, it was obtained by playing a fraud
on the concerned statutory authority, i.e., the Controller of Designs. It is further
averred that, MIL should be put to strict proof of its claim of having been made sales
running into lakhs of rupees, and also, with regard to the assertion made, of having
spent huge sums of money on advertisement and promotion of products, sold in
containers bearing the designs in issue.
7.7 The defendants claimed to have obtained two trade mark registrations in class 4
bearing no. 1653586 and 736355. The defendants trademark is MECO claimed to have
used this trade mark since 1993.
7.6 Preliminary objections have been raised in respect of the following : (I) that the
registration certificate itself bears a disclaimer that it is not to be made use in the
legal proceedings or for obtaining registration abroad; (ii) the suit is barred under
Section 2(d) of the Designs Act1 and hence the plaint is liable to be rejected under
Order 7 Rule 11 of the Code of Civil Procedure, 1973 (in short the Code); (iii) the
Court does not have the territorial jurisdiction to entertain and try the suit, and (iv)
lastly, the suit is barred under the provisions of Order 2 Rule 2 of the Code as it does
not include the entirety of MIL's claim.
SUBMISSION OF COUNSELS
8. In the broad background of the pleadings referred to above, arguments in this
matter were addressed on behalf of the plaintiff in CS(OS) No. 384/2008 by Mr. Ashok
Goel, Advocate, and those, on behalf of defendants by Mr. Mohan Vidhani, Advocate.
In CS(OS) No. 1446/2011, arguments on behalf of the plaintiff were addressed by Mr.
S.K. Bansal, Advocate. The defendants were represented by Mr. Pravin Anand,
Advocate. Arguments in interlocutory application : IA No. 11874/2012 were advanced
by Mr. Sudhir Chander Aggarwal, senior counsel. This application has been filed, in CS
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(OS) 1446/2011, as the applicant has preferred an appeal being : FAO(OS) No.
326/2007, in which, it is stated that issue no. II, culled out hereinabove, arises for
consideration. The said appeal as directed by the Division Bench vide its order dated
30.04.2012 is to be taken up for hearing post the decision of the Full Bench. Ms
Pratibha M. Singh, Advocate in her capacity as an amicus curiae has also, advanced
submissions in the matter.
9. The submissions made by Mr. Goel were as follows. In respect of issue no. I it
was submitted that a suit for infringement of a registered design as against another
person claiming to have obtained registration in his favour, was maintainable, for the
following reasons:
9.1 That only that design could be registered which was new or original. In other
words, the designs which were neither new nor original, or were not significantly
distinguishable from other known designs or combination of known designs, could not
be registered. This submission, according to Mr. Goel, flowed from a combined reading
of Section 2(j)2 and Section 4 of the Designs Act. It was thus contended, that under
Section 19, “any person” could file a petition for cancellation of a registered design on
any of the grounds referred to above. Therefore, any design which was registered
subsequently, was obviously neither new or original and hence a registrant holding
such a registration could never be considered to be in possession of a valid
registration.
9.2 It was contended that, Section 223 of the Designs Act, prohibited any person for
the purposes of sale to apply or cause to be applied to any article in any class of
articles in which the design is registered, the registered design or any of its fraudulent
or obvious imitation. In other words, it was claimed that Section 22 permitted
infringement actions against any person, who had been granted registration for
identical or similar design.
9.3 That such an action was permissible, according to Mr. Goel, was evident from
the fact that the Trademarks Act, 1999 (in short the Trademark Act), which was
enacted only a year prior to the Designs Act, specifically excluded action against
another registered proprietor. Reference in this regard was made to Section 29, 29(1),
29(2) and 30(2)(e) of the Trademarks Act.
9.4 It was contended that a reading of provisions of Section 22(4) of the Designs
Act would show that the High Court was vested with the power to direct cancellation of
registered designs, as long as the grounds raised were those, which fell, within the
provisions of Section 19 of the Designs Act. Reliance in this regard was also placed on
Section 22(5) of the Designs Act.
9.5 As regards the other two issues, it was submitted that not only was the passing
off remedy available but that both could be combined in a single action, as they were
not mutually inconsistent. In this context, it was contended that, passing off was a
common law remedy, which related to a tortious act of the defendant whereby the
defendant represented his own goods as someone else's goods. The misrepresentation
made is intended to injure the goodwill generated by the plaintiff's business and cause
actual damage to him. The tort of passing off is not confined to trademarks but
extends to slogans, visual images, patterns and/or ornamentation when they become
part of the goodwill and reputation of the product. It was submitted that, as long as
there is no prohibition from instituting an action of passing off, the access to that
remedy cannot be denied to a plaintiff.
9.6 Mr. Goel submitted that the argument often made that because there is saving
of the remedy of passing off under the Trademark Act, which is not so in the case of
Designs Act, and hence no remedy by way of passing off is available in cases of
designs, is an untenable argument for the following reasons:
9.7 Section 27(1)4 of the Trademarks Act makes it clear that there can be no
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infringement action in respect of an unregistered trademark. This assertion in sub

Section (1) of Section 27 could have caused confusion and, therefore, the legislature
by way of abundant caution in Sub Section (2) of Section 275 has made a provision for
saving the remedy of passing off.
9.8 Under the Trademarks Act, there is a recognition of a legislative policy of
recognising multiple owner i.e., registered proprietors of an identical or a substantially
similar mark and it is for this reason perhaps that the remedy of a passing off action,
is saved by inserting a provision such as Sub Section (2) of Section 27. The fact that
there is recognition of multiple ownership i.e., registered proprietors of a trademark is
quite evident on a perusal of Sections 28, 29(1), 29(2) and Section 30(2)(e) of the
Trademarks Act.
9.9 It was submitted by Mr. Goel that, the expiration of the statutory period for
design during which the proprietor has monopoly on the use of the design, would not
mean that, once the design passes into public domain, the proprietor would not have a
remedy of passing off, available to him. By way of example, it is sought to be
contended that if, for example, a design was not used as a trademark during the
statutory period, for which it was registered, but came to be used as a trademark once
it became available in public domain then, could a right to protect the use of the mark
by another person be denied if the plaintiff is able to demonstrate that while the mark
was in public domain he had used the mark to which a substantial goodwill was
attached.
10. It was submitted that while in order to establish the tort of passing off a higher
degree of proof would perhaps be required than, in an action for infringement under
the Designs Act, the remedies by themselves were independent of each other. The
remedy of passing off had its source in common law, and was thus, a perpetual
remedy available to the plaintiff. In this behalf reliance was placed on the judgment of
the Chancery Division, England and Wales in the case of Numatic International Ltd. v.
Qualtex UK Ltd. [2010] EWHC 1237 (Ch.). It was submitted that a remedy of passing
off action was available to protect the rights which inhere in a shape, pattern or an
ornamentation which has gained secondary meaning amongst consumers. The design,
it was submitted, protects non-functional attributes which relate to aesthetics and are
pleasing to the eye. Mr. Goel, thus contended that, therefore, a remedy by way of a
passing off action was available both during the subsistence of the statutory right
created in a design and thereafter. The remedy of a passing off as against design
infringement were independent of each other, therefore, did not impinge upon each
other. Since the two remedies were not mutually inconsistent and thus not destructive
of each other, both actions, could be combined in one suit.
11. On the other hand, Mr. Vidhani submitted that the Designs Act was a self-
contained code. Under Section 116 , a registered proprietor was conferred with a
copyright in a design for a period of ten (10) years which was extendable for a further
period of five (5) years. The Designs Act made no distinction between a prior and a
subsequent registration qua a design. The expression “any person” under Section 22
would have to be a person other than a registered proprietor as the subsequent
registered proprietor obtains a copyright in terms of Section 11 of the Designs Act.
Having obtained a registration, it cannot be said that the subsequent registrant, has
obtained an unlawful registration.
11.1 What is provided under Section 22(3) of the Designs Act are grounds to
challenge of the registration, in an infringement proceedings, which are otherwise
available as grounds for cancellation of a registered design. This, however, does not
confer on the High court the jurisdiction to invalidate or cancel a registration; that
power is available under Section 19 only to the Controller of Designs. Therefore, a suit
for infringement cannot lie against another registered proprietor. Reliance in this
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regard was placed on a judgment of a Single Judge of this Court in the case of Tobu
Enterprises Pvt. Ltd. v. Megha Enterprises 1983 PTC 359 (in short Tobu Enterprises).
11.2 Mr. Vidhani submitted that the only remedy available to a prior registered
proprietor of a design would be to seek cancellation of an infringing subsequent
registration under Section 19 and not by way of a suit, the basis of which resides in
Section 22 of the Designs Act.
11.3 As regards issue no. II, it was submitted that rights qua a design flow from a
statute, i.e., the Designs Act, and not from common law. Like the Trademarks Act,
which recognizes the remedy of a passing off action, there is no such provision under
the Designs Act. In that sense, the rights qua both a patent and a design are statutory
in nature. It is submitted that the remedy of passing off is a common law remedy; and
it is only those common law remedies which existed prior to the enactment of the
Constitution and to the extent that they were saved by statutory provisions, would
continue to operate.
11.4 The legislature was cognizant of this fact, since it had under the provisions of
Section 27(2) of the Trademarks Act specifically saved the remedy of a passing off
action. The Designs Act which was enacted thereafter consciously excluded the said
remedy. In other words, a remedy which is not provided in the statute cannot be
imported into the statute. In this behalf an attempt was made to distinguish the
observations made by another Single Judge of this Court in Tobu Enterprises (P) Ltd.
v. Joginder Metal Works AIR 1985 Del 244 (in short Joginder Metal Works). It was
submitted that, apart from a passing reference in paragraph 6 of that judgment, which
seemed to suggest that the remedy of passing off was not excluded, under Section 53
of the Designs Act, 1911 (present Section 22 Designs Act 2000), there is no other
discussion on this aspect of the matter. To support this argument, a reference was
made to Section 15(2) of the Indian Copyright Act, 1957 (Copyright Act)7 to contend
that copyright and design which is capable of registration under the Designs Act and
has not been registered and if the design was applied to industrial process, more than
50 times, the copyright in such a design was lost. It was thus contended that passing
off remedy was thus, clearly ruled out qua designs.
11.5 Mr. Vidhani contended that since shape of goods are now included in the
definition of a Trademark [see Sections 2(1)(n) and 2(1)(zb) of the Trade Marks Act]
and therefore a plaintiff would have to choose which statutory act he would wish to
take recourse to. If the design which is registered under the Designs Act falls into
public domain after the expiry of the statutory period, then no remedy by way of
passing off would be available. If the relief of passing off is made available after the
lapse of the statutory period, then the very purpose of providing exclusive rights;
albeit for a limited duration, would get defeated.
12. Mr. S.K. Bansal, on the other hand, submitted that a suit for infringement is
available against a subsequent registered proprietor as registration of a design under
Section 10(4) of the Designs Act8 was only:“a prima facie evidence of any matter by
this Act directed or authorized to be entered therein”. The distinction, according to Mr.
Bansal, stood out in sharp contrast to the provisions of Section 31 of the Trademarks
Act, whereby upon registration the mark was construed to be prima facie valid. It was
submitted that, a subsequent registration being an invalid registration was statutorily
liable to be cancelled under Section 19(1)(a) of the Designs Act. Accordingly, it was
contended, that Section 22(3) of the Designs Act was applicable both to the plaintiff
as well as the defendant. According to Mr. Bansal, a conjoint reading of Section 10(4),
Section 19(1)(a) and Section 22 of the Designs Act would show that no cause of action
would be available to a plaintiff for instituting a suit based on a subsequently
registered design unless invalidity of the subsequent registration is pleaded.
12.1 As regards the second issue, it was contended by Mr. Bansal that an action by
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way of passing off was not maintainable nor was a remedy of that nature available
under the Designs Act.
12.2 It was further contended, though in the alternative, that if a remedy of
passing off was to be made available then, it should be confined to the statutory
period for which exclusive rights are given qua a design. The reasons articulated in
support of this submission were as follows : (i) The clear and implied nature, scheme
and mandate of the Designs Act; (ii) the statement of Objects and Reasons contained
in the Designs Act; (iii) the construction of the Designs Act with reference to allied,
cognate and related IPR laws, such as the Trademarks Act, Copyright Act and the
Patents Act, 1970 (in short Patents Act); (iv) the law of passing off itself; and (v)
lastly, law and practice prevalent in United Kingdom (U.K.) and European Union (E.U.)
pertaining to design per se in relation to designs, IPR such as trademarks, patents,
copyright and, the history of designs law.
12.3 It was contended that the rights in a design exists only till the design is in
existence. Once the registration ceases, the rights available under the Designs Act
cease. Reference was placed on Sections 2(c) and 11 of the Designs Act. The definition
of design specifically excludes the trademark as defined in the trade and Merchandise
Mark Act, 1958 (in short the 1958 Act) and, the Property Mark and Artistic work as
defined in the copyright Act. The definition of design sets out clear and distinct
parameters which does not admit anything more than what is prescribed in the
definition. Reliance was placed in this behalf on Section 2(d) of the Designs Act and
the judgment of the Supreme Court in P. Kasilingam v. P.S.G. College of
Technology AIR 1995 SC 1395.
12.4 The definition of design cannot be extended to common law rights or goodwill.
The Designs Act confers rights in negative, that is, a right to exclude rival activity. The
pecuniary compensation for infringement is also kept capped to prescribed sums of
money. Reliance in this regard was placed on Section 22(a) and 22(b) of the Designs
Act. The sum and substance was that the provisions of the Act are self-sustained code
and when read with the Statements of Objects and Reasons of the Designs Act, it
decidedly excludes the remedy by way of a passing off. Reference was also made, like
Mr. Vidhani, to the provisions of the Trademarks Act, in particular, Sections 11(3)(a)
and Section 27(2), Section 134 and 135 of the Trademarks Act.
12.5 It was contended that the passing off remedy which is based on law of torts,
does not protect the mark or design per se, but only protects the goodwill and
reputation attached to it so as to prevent deception being employed on the consumer
as to the source and origin of the goods. Reliance in this regard was placed on the
judgment of the Supreme Court in the case of : Laxmikant V. Patel v. Chetanbhat
Shah (2002) 3 SCC 65 at page 5 in paragraph 11.
12.6 Reference was also made to various enactments in United Kingdom and
European Union to suggest how overlap is avoided. In this regard, a reference was also
made to the Indian legislation in this area of the law by drawing the attention of the
Court to the Patents And Designs Act which was amended in 1970 so as to divorce the
Patents Act, 1970 from designs. Similarly, it was submitted that the Copyright Act,
was repealed by the Copyright Act of 1957 in a manner that a copyright protection
was excluded qua designs. It was contended, like Mr. Vidhani, that the Trademarks
Act which incorporates shapes of goods in the definition of a trademark; the right to
file action for infringement and passing off are specifically provided in that Act itself.
12.7 In support of the alternative submission, it was contended, that if, goodwill
were to attach to a registered design by virtue of its commercial exploitation, then
such goodwill, could exist only for a period of fifteen (15) years, i.e., the statutory life
of the registered design. It was contended that, goodwill can have no independent
existence, and therefore, would get subsumed in the statutory life of the design.
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Reliance in this regard was placed on the judgment in the case of Laxmikant v. Patel
V. Chetanbhai Shah (2002) 3 SCC 65. It was thus submitted, that in order to maintain
a passing off action, within the period of 15 years, the plaintiff would have to establish
that the design had obtained distinctiveness. Reliance was placed on Mogen David
Wine Corporation 372 F.2d 539.
12.8 As regards the third issue, Mr. Bansal submitted that a combined action could
be maintained in view of the fact that the passing off action, which was based on a
common law right, inhered in the goodwill attached to the design, on the basis that it
was a source indicator. The action for passing off is founded on the principle that it is
initiated to prevent deception and confusion in the market. Whereas an action filed to
prevent infringement of a registered design, seeks protection against fraudulent and
obvious imitation by a rival third party. In this regard recourse is to be taken to the
provisions of Section 22 of the Designs Act.
13. Ms Pratibha Singh, who appeared as an Amicus Curiae in the matter, made the
following submissions : In respect of the first issue, she submitted that a suit for
infringement would not lie against a registered proprietor. It was her submission that
the very grant of registration by a Controller under Section 5 read with Section 10(4)
was prima facie, an action, based on a plea of novelty which, according to the plaintiff,
inhered in the design. It was her submission that registration of a design recognized
novelty. By way of illustration, a reference was made to two registrations obtaining in
a similar or an identical product, say, a pen, in respect of which, the novelty in one
registration may relate to the pen cap, while the novelty in relation to the other
registration, may relate to the stylus. In these circumstances, it was submitted that a
suit by one registrant would not lie against the other. This submission was supported
by placing reliance on a judgment of this Court in S.S. Products of India v. Star
Plast 2001 PTC 835 (Del).
13.2 As regards the second issue, Ms Singh seems to contend that the remedy of
passing off being a distinct remedy, would not be available save and except where the
shape or the get up has acquired distinctiveness or a secondary meaning. Even in such
a situation, it is the contention of Ms Singh, what is sought to be prevented is the
confusion as to the source of the product to which the design is applied, and not to
extend protection to the creative element, which is the design. That generally, a
passing off remedy is not available, as is sought to be contended. This argument like
others preceding her was based on the provisions of Section 27(2) of the Trademarks
Act; an equivalent of which, it is submitted, is not provided for, in the Designs Act.
13.3 In so far as the third issue is concerned, Ms Singh has contended that, since
the two remedies are distinct and independent of each other the same can be
combined as long as passing off is claimed for preventing confusion as to the origin or
the source of the product to which the design is applied and not to protect the design
registration by itself. It is submitted that the legislature has deliberately provided a
life span for a design. Example is given by way of rights under the Copyright Act
where the term of protection is the life time of the copyright holder plus sixty (60)
years. Similarly, under the Patents Act where the term of protection is 20 years from
the date of application, and lastly, under the Designs Act, where the term of protection
is ten (10) years, which is extendable by further (5) five years, and thus in all, a total
of fifteen (15) years is provided as the statutory life span. It is only under the
trademark law that the protection is initially granted for a period of ten (10) years with
limitless renewals. In other words, except for the trade mark law, where protection can
be in perpetuity, all other rights, have a statutory life span.
13.4 Ms Singh submitted that public policy demanded that a registered design
should fall in the public domain once this statutory period of protection expires save
and except in a situation where a design has acquired distinctiveness and secondary
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meaning. It was her contention that, therefore, the two actions could be combined
being mutually distinct and independent of each other.
14. Mr. Sudhir Chander Aggarwal, learned senior advocate and Mr. Pravin Anand,
Advocate, largely relied upon the extracts from McCarthy's book on Trademarks and
Unfair Competition to contend that a remedy by way of passing off action was
available even qua a registered design. Several extracts from the learned authors'
book were read to which we would be making a reference in the latter part of our
judgment.
GENERAL PREFACE/ISSUE NO. I
15. Before one proceeds further, it may be relevant to indicate here some well
accepted principles which operate in the field of designs law. Design as is generally
understood refers to the features of shape, configuration, pattern or ornament when
applied to an article. It is for this reason that designs such as these are described as
Industrial Designs. It is these designs which are covered under the Designs Act.
Designs can be two dimensional or three dimensional. While pattern or an ornament
would ordinarily be applied to an article; shape and configuration, become the article
itself. Designs in that sense relate to the non-functional features of the article.
Therefore, by necessary corollary, a design which has functional attributes cannot be
registered under the Designs Act. This is the essence of Section 2(d) of the Designs
Act. The protection under the Designs Act is granted only to those designs which have
an aesthetic value or otherwise appeal to the eye. There may be, however, cases
where the design while fulfilling the test of being appealing to the eye, is also,
functional. [See judgment in the case of Cow (P.B.) & Coy Ld. v. Cannon Rubber
Manufacturers Ld. (1959) RPC 347]. In this case the diagonal ribs on a hot water
bottle were both appealing to the eye as well as functional. They were functional in as
much as they permitted the heat to be radiated without singeing the user. The
conundrum of functionality was resolved by taking note of the fact that it would make
no impact on the articles functionality if, the ribs on the hot water bottle were either
horizontal or vertical or even diagonal formations.
15.1 Registration of a design under the Designs Act creates a monopoly in favour of
the registrant. A registration therefore, can be obtained only if it does not fall within
the ambit of Section 4 of the Designs Act. Section 4 of the Designs Act describes
negatively as to which designs cannot be registered. To put it positively designs which
are new or original or which have not been pre-published, i.e., disclosed to the public
either in India or abroad in a tangible form or by use or by any other way prior to the
institution of an application for that purpose, or wherever applicable the priority date
qua such an application or, is significantly distinguishable from known designs or
combination of known designs and does not contain scandalous or obscene matter,
such a design, can be registered.
15.2 Thus in effect, after registration, the registrant has in its possession a
copyright in an industrial design. By statutory fait, such industrial designs, which are
registered under the Designs Act, are excluded from protection of the Copyright Act
(see Section 15(1) of the Copyright Act). There is, however, a caveat added by the
legislature to this, which is, that a copyright in any design which is capable of being
registered under the Designs Act, shall have protection under the Copyright Act, till
such time it is not reproduced more than 50 times by an industrial process by the
owner of the copyright or with his license by any other person. (See Section 15(2) of
the Copyright Act). This of course would be subject to the provisions of Section 13 of
the Copyright Act, which enumerates the works in which copyright can subsist.
16. Therefore, a design is registerable and is amenable to the protection of the
Designs Act as long as it steers clear of the aspects referred to in Section 4 and is a
design which fulfils the criteria prescribed under Section 2(b) of the Designs Act.
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16.1 It is thus quite possible for two registrants to seek to establish that their
respective designs are new or original, are not published anywhere in India or, are
“significantly distinguishable” from known designs or combination of known
designs provided of course it does not contain any scandalous or obscene matter.
There could, however, be a difference of opinion inter se the two registrants with
regard to newness, originality or even claimed significant distinction between/amongst
designs. Since registration of design creates a monopoly, each design on registration
will necessarily be presumed to be unique. However, the registration, would only result
in creation of a rebuttable presumption that it fulfils adoption of all procedural
safeguards which are required to be taken and that it is shorn of all prohibitions as
contained in the Designs Act.
16.2 Having regard to above, it would be useful to appreciate at this stage the
nature of an infringement suit under the Designs Act. In this context, a broad
overview of the relevant provision may be necessary.
16.3 As indicated above, prohibitions qua registration of a design is contained in
Section 4 of the Designs Act. Section 5 provides for an application to be filed by a
proprietor of a design which is not prohibited under Section 4 of the Act. The
Controller of Designs under Section 5 of the Designs Act is empowered to verify this
aspect by having the application for registration being referred to an examiner. The
Controller's decision with regard to the registration of design in respect of any or all of
the articles prescribed in a class of articles is final under the provisions of Section 6 of
the Designs Act.
16.4 Upon the completion of the aforesaid exercise, the Controller of Designs is
entitled to issue a certificate of registration to the proprietor of the design under
Section 9 of the Designs Act and thereafter in exercise of power under Section 10,
enter the name and address of the proprietor of such a design alongwith any
notification of assignment or transmission, in the Register of Designs.
16.5 Under Section 19, any person, who is interested, is conferred with the right to
seek cancellation of a registered design on the grounds given in clause (a) to (e) of
Sub-Section (1) of Section 19.
16.6 Section 22 protects a registrant against piracy of his design. Clause (a) of Sub
Section (1) of Section 22 make it unlawful for any person to apply for the purposes of
sale or cause to be applied any article in a class of articles in which the design is
registered, that design or any fraudulent or obvious imitation of that design except
with the license or written consent of the registered proprietor. This prohibition
extends to anything that may be done to enable the registered design to be infringed
in the manner described above. Clause (b) of Sub Section (1) of Section 22 extends
the prohibition to even articles imported for sale without the consent of a registered
proprietor which otherwise is an article belonging to a class in which the design is
registered. Similarly, clause (c) of Sub Section (1) of Section 22 makes it unlawful to
publish or expose or cause to be published or exposed for sale that article by a person
who has the knowledge that the design or any fraudulent or obvious imitation has
been applied to any article in any class of articles in which the design is registered
without the consent of the registered proprietor.
16.7 Sub Section (2) of Section 22 provides for penal consequences in the form of
damages. The second proviso to Sub Section (2) of Section 22 mandates that a suit
for infringement cannot be instituted in a court below the court of a District Judge.
Sub Section (3) of Section 22 enables the defendant in an infringement suit, where an
allegation of piracy has been made qua the defendant to plead in his defence grounds,
which are available under Section 19 of the Designs Act, for cancellation of a
registered design.
16.8 Sub Section (4) of Section 22 requires that a suit in which a defence in terms
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of Section 19 of the Designs Act has been pleaded, the same shall be transferred to
the High Court for decision.
16.9 Sub Section (5) of Section 22 provides that, when a decree is passed in a suit
under Sub Section (2), a copy of the decree would be sent to the Controller who will
cause necessary entries to be made in the Register of Designs.
17. A composite reading of the aforesaid provisions would show that a plaintiff is
entitled to approach the court and plead that his registered design is unique and that
the defendant registrant (in a case where he has a registration in his favour as against
one who applies an unregistered design to articles in the class of articles qua which
registration has been obtained) has obtained registration which is neither new nor
significantly distinguishable when compared to the plaintiff's registered design. The
assertion in the suit is a right of monopoly. It is quite possible that the defendant on
the other hand apart from pleading as part of his defence, those very grounds which
are available under Section 19 to seek cancellation of the plaintiff's registration may
be able to establish that his registered design is new or original or even significantly
distinguishable from that of the plaintiff.
17.1 Therefore, the submissions made by the learned counsels for the parties that
one registered design holder cannot sue another registered design holder, in our view,
fails to appreciate the nature of the suit. The suit for infringement seeks to assert the
monopoly rights of the plaintiff based on the uniqueness, newness and the originality
of his design qua the defendant registrant. The entry by the Controller of Designs in
the Register of Designs, in our view, is only a prima facie evidence of any matter so
directed to be done by the Designs Act or authorised to be entered in the Register of
Designs. See Sections 10(4) and 38 of the Designs Act.
18. A brief synoptic view given by us hereinabove with regard to the provisions for
a registration of a design under the Designs Act would show that there is no procedure
prescribed for prior publication of an application made seeking registration of a design,
followed by any request for entertaining an opposition to such an application for
registration. The procedure under the Designs Act unlike that which is contained under
the Patents Act (see Chapter IV and V of the Patents Act) and the Trade Marks Act
(see Chapter III) does not entail entertaining an opposition to registration. There is,
thus, a marked difference in the language as contained in Sections 10(4) and 38 of
the Designs Act as compared to Section 31 of the Trade Marks Act, which speaks of
prima facie evidence of validity, once a trademark is registered.
ISSUE NO. II
19. In order to answer the second issue, one would have to briefly delve into what
constitutes a passing off action. A passing off action simply put is an action filed to
vindicate one's claim that the defendant by employing misrepresentation (whether
intentional or not) is seeking to represent to the public at large that his goods are
those of the claimant and such a mis-representation has caused or is likely to cause
substantial damage to the goodwill/reputation which is attached to the plaintiff's
goods. Therefore, in a passing off action the plaintiff would have to establish the
following ingredients : -
(i). that there is goodwill or reputation attached to the goods or services which the
plaintiff offers, in the mind of the purchasing public, i.e., the consumers, who
associate or are in a position to identify such goods or services by virtue of trademark
used, which could include the get-up, trade-dress, signs, packaging, label, etc.
(ii). that the defendant has employed mis-representation which has made the
consumers believe that the defendants goods are those of the plaintiff. It is no defence
in an action of passing off that the mis-representation was unintentional or lacked
fraudulent intent;
(iii). And lastly, that the defendant's action has caused damage or is calculated to
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cause damage; [see Reckitt & Colman Products Limited v. Borden Inc. (Jif Lemon
case), (1990) R.P.C. 341 and Erven Warnink B.V. v. J. Towend & Sons (Hull Ltd.)
(Advocaat case) (1980) RPC Page 31].
20. Now, regard to the definition of a trade mark in Section 2(1)(zb) of the Trade
Marks Act. If regard is had to the same, it cannot be said that a design, which includes
shape of goods, can never be used as a trade mark. The relevant extract from the
definition of trade mark is referred to hereinafter : -
(zb) “trade mark” means a mark capable of being represented graphically and
which is capable of distinguishing the goods or services of one person from those of
others and may include shape of goods, their packaging and combination of colours;
and..” (emphasis supplied)
20.1 That a design includes a shape or a configuration is quite evident upon perusal
of the definition of design given in 2(d) of the Designs Act. The relevant part of the
said definition, for the sake of convenience, is extracted hereinafter : -
“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 Penal Code, 1860 or any artistic work as defined in clause (c) of
Section 2 of the Copyright Act, 1957 (14 of 1957)” (emphasis supplied)
20.2. What follows therefore is, that a design can be used as a trade mark and if by
virtue of its use, goodwill is generated in the course of trade or business, it can be
protected by an action in the nature of passing off.
21. The argument advanced against maintainability of a passing off action is
founded on the following points of contention : -
(i). that once a design is registered, it cannot be registered as a trade mark;
(ii). the rights qua a design are not rooted in common law. The rights qua a design
flow from the statute, that is, the Designs Act;
(iii). On the expiration of the rights, that is after the conclusion of the statutory
period of protection, which is a maximum of 15 years, the design falls within public
domain and, therefore, ought to be available freely to the public for use;
(iv). unlike the Trade Marks Act, which saves a passing off remedy, by an express
provision in the form of Section 27(2) of the Trade Marks Act; there is no such
provision in the Designs Act, and therefore, by necessary implication, there is
legislative intent reflected, which is that, a passing off remedy ought not to be made
available to a a registered design.
22. In our view, the aforesaid contentions are flawed for the reason that while the
Trade Marks Act confers certain statutory rights qua a registered trade mark, it does
not deprive a user of an unregistered trade mark the right to protect the misuse of his
mark by a defendant who is in possession of a registered trade mark. Therefore, in so
far as a design, which is registered under the Designs Act is concerned, it may not
have the statutory rights, which a registered trade mark has, under the Trade Marks
Act, it would certainly have the right to take remedial steps to correct a wrong
committed by a defendant by instituting a passing off action. If such an action is
instituted, the plaintiff would have to demonstrate that the registered design was used
by him as a trade mark which, in the minds of the purchasing public is associated with
his goods or services which, have acquired goodwill/reputation which is worth
protecting. Quite naturally, result of such an action, would depend upon whether or
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not the plaintiff is successful in proving the essential ingredients involved in a passing
off action, to which we have already made a reference hereinabove.
22.1 Therefore, the argument that since there is no saving clause in the Designs Act
as found in Section 27(2) of the Trade Marks Act, and consequently such a remedy
ought not to be made available qua a registered design, which is used as a trade
mark, is in our view, completely without merit. As is obvious, such a passing off action
would be based on a plea that : the design, which is an unregistered mark, was being
used by the plaintiff for the purposes of business; and that the plaintiff's goods and/or
services had acquired a reputation and/or goodwill, which were identified in the minds
of the consumers, by associating the design/the mark, with the goods and/or services.
In other words, the plea would be that the design which was being used as a mark
identified the plaintiff, as the source of the goods supplied or services offered.
22.2 The plaintiff, in our opinion, would not have to look to the Designs Act, for
instituting such an action. Therefore, the argument that the legislature by not
incorporating a similar provision, such as Section 27(2) of the Trade Marks Act, has by
necessary implication excluded the availability of such like remedy to a plaintiff, who
uses a registered design, as his trade mark, is untenable. Our view is fortified by the
opinion expressed in that regard by the learned authors of book-McCarthy:
“….Dual protection from both design patent and trademark law may exist where it is
alleged that the configuration or shape of a container or article serves to identify and
distinguish the source of goods - that is, acts as a trademark or trade dress. Such a
container or product shape may also be capable of design patent protection. In such
cases, the protection afforded by patent law vis-a-vis trademark law is quite different.
In the Mogen David Wine Bottle case 372 F.2d 539 the existence of design patent
protection for a container (Mogen David Wine bottle) was held not to preclude the
right to enter on the Principal Register the bottle shape as a trademark for the wine.
Judge Smith compared design patent protection to trademark protection for container
shapes:
The purpose of the federal design patent laws is to encourage the creation of
ornamental design. The inventor receives, for a limited period, a federal right to
exclude others from making, using, or selling the patented design throughout the
United States. Upon expiration of the design patent this federal right no longer exists.
Thus the inventor loses this exclusive right or interest. Federal trademark laws,
independent in origin from design patent law, have the dual purpose of protecting
both the trademark owner and the public from confusion, mistake and deception.
Judge Smith concluded that:
Thus all appellant asserts is the right to register the shape of the container as a
trademark for its wines for the reason that its serves to identify and distinguish them
from those of others. In no sense is there any assertion of an interest in the container
shape per se for all uses… If the public recognizes and accepts appellant's container
shape in a trademark sense, appellant seeks only federal recognition of that public
interest. It is the public that is protected… I conclude from these considerations that
the federal patent laws and trademark laws are not in conflict. Appellant is thus not
barred from seeking federal protection for what the public recognizes as a trademark.
The court concluded that Mogen David wine Co. had not sustained its evidentiary
burden of proving that the bottle shape had acquired secondary meaning so as to
function as a trademark identifying Mogen David wines and distinguishing them from
wines of competitors. The bottle was held not to create a commercial impression
separate and apart from teh word marks appearing on the label on the bottle.
However, these statements of the Court of Customs and Patent Appeals must be
compared with the dictum of the United States Supreme Court in Kellogg Co. v.
National Biscuit Co. where Justice Brandeis appeared to say that the pillow-shaped
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shredded wheat biscuit fell into the public domain upon expiration of a design patent
covering the biscuit shape and of functional patents covering production machinery.
After holding that “shredded wheat” was a generic term, not a trademark, Justice
Brandeis said of plaintiff's claim to exclusive right in the shape of the biscuit:
The plaintiff has not the exclusive right to sell shredded wheat in the form of a
pillow-shaped biscuit-the form in which the article became known to the public. That
is the form in which shredded what was made under the basic patent. The patented
machines used were designed to produce only the pillow-shaped biscuits. And a
design patent was taken out to cover the pillow-shaped form. Hence, upon expiration
of the patents, the form, as well as the name, was dedicated to the public. Kellogg
Company was free to use the pillow-shaped form, subject only to the obligation to
identify its product lest it be mistaken for that of the plaintiff.
It could be argued that the Shredded Wheat case says that the existence of design
patent protection for a shape precludes trademark significance for the same shape.
Exactly the opposite was held in Mogen David. However, Mogen David and the
Shredded Wheat cases can be reconciled on a number of points. The shredded wheat
biscuit design patent was held invalid before it expired, and the Supreme Court said
that the biscuit shape was functional, and hence not capable of either trademark or
design patent protection:
The evidence is persuasive that this form is functional - that the cost of the biscuit
would be increased and its high quality lessened if some other form were substituted
for the pillow shape.
As a primarily functional shape, the biscuit could possess no trademark significance
or distinctiveness at all. The C.C.P.A. has in fact distinguished the Shredded Wheat
dicta on the grounds discussed above.
In 1993, the Seventh Circuit, agreeing with the analysis in Mogen David and similar
cases, noted that “the C.C.P.A., the Federal Circuit and the T.T.A.B. have since
interpreted 45 to allows trademark protection for qualifying product configurations. A
constitutional challenge to such registrations was rejected by the court. The argument
that was rejected was that the Constitutional Patent Clause requires that protection be
for a “limited time”, trademark protection for a product shape is the equivalent of a
perpetual design patent, and therefore such trademark protection is unconstitutional.
The court held that trademark protection is not the equivalent of a perpetual patent
because the nature and scope of trademark protection is significantly different from
that of a design patent:
Federal trademark protection does not transform the durationally limited monopoly
of a design patent into a perpetual right… [The registrant] simply has the right to
preclude other from copying its trademarked product for the purpose of confusing the
public as to its source. [A competitor] is free to copy [the registrant's] design so long
as it insures that the public is not thereby deceived or confused into believing that its
copy is a [registrant's] faucet.
In fact, a design patent, rather than detracting from a claim of trademark, may
support such a claim. Since a design patent is granted only for non-functional designs,
it may be presumptive evidence of non-functionality and thus support the trademark
claimant. However, while a design patent is some evidence of non-functionality, it is
not sufficient without some other evidence.
The fact that an infringer of trade dress owns a design patent on this product
design is no defense to the trade dress charge. A patent is a grant of a right to
exclude, not of a right to use. “Thus, if a patented product operates to deceive or
confuse consumers as to its source or sponsorship, there is no reason why the patent
holder cannot be enjoined from such deception or confusion.
The potential conflict between patent and trade dress law is heightened when
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federal anti-dilution law is invoked to create exclusive rights in a product design. While
the likelihood of confusion test operates to distinguish the scope of patent from trade
dress infringement, anti-dilution infringement has no such requirement of likely
confusion and more closely resembles design patent law..” (emphasis supplied)
22.3 The argument pertaining to public interest is equally flawed. Any trademark
would ordinarily serve two distinct purposes. First, it protects the owner of trademark
and thus advances his business interest. Second, and more importantly, it serves
public interest in preventing confusion as to the source and the origin of goods and
services on offer.
22.4 Therefore, once the statutory period of registration has expired (the maximum
being 15 years) qua a particular design, it will fall in public domain. The user can then
use the design as long as the user ensures that there is no confusion caused as to the
source and origin of the goods and services offered.
22.5 As would be evident from the definition of design given in Section 2(d) of the
Designs Act, it excludes from its scope any trademark falling within Section 2(1)(v) of
the 1958 Act, a property mark as defined in Section 479 of the Penal Code, 1860 (in
short the IPC), or any artistic work as defined in Section 2(c) of the Copyright Act. On
the other hand, the definition of trademark does not specifically exclude a design. As a
matter of fact, Section 2(zb) of the Trade Marks Act, i.e., the 1999 Act, includes
‘Shape of Goods” in contradistinction to the 1958 Act. Therefore, what is registered as
design may not ordinarily be registered as a trademark under the Trademarks Act.
22.6 This logic applies based on the principle that trademark is something which is
extra, which is added on to the goods to denote origin, while a design forms part of
the goods.
22.7 This rationale though may not hold in certain situations on account of overlap.
A case in point is the judgment of the House of Lords in Smith Kline & French
Laboratories Ltd. v. Sterling-Winthrop Group Ltd. (1975) 1 W.L.R. 914. Briefly, the
appellant before the House of Lords was claiming registration of a colour mark. The
appellant was a manufacturer of a pharmaceutical pellets - one half of which bore
different colours (the colour was unique to each pellet), while other half was
transparent. The House of Lords while allowing the appeal made the following crucial
observations:
“….In stating what he conceived to be the difference between a registrable design
and a registrable trade mark, Sargant L.J. said, at p. 668:
“A design form part of the goods themselves. A trade mark is something which is
extra, which is added to the goods for the purpose of denoting the origin of the goods,
and, speaking generally of trade mark and design, the same thing is not a trade mark
and a design.”
It is conceded that if this is to be understood as meaning that what is capable of
being registered as a design is ipso facto incapable of being registered as a trade
mark, it does not correctly state the law. If this latter part of the dictum is omitted,
the preceding words would not rule out the trade marks claimed by SKF in the instant
case. The “extra” added to the goods is the colour applied to one half of the capsule
and the various colours applied to the individual pellets within the capsules.
In the instant case the ground upon which all three members of the Court of Appeal
overruled Graham J. And rejected SKF's applications was that the description of the
mark was merely a description of the whole external appearance of the goods in
respect of which it was intended to be registered, viz. the capsules and their pellets.
This is another way of saying that if the mark when applied to the goods will cover the
whole visible surface of the goods it cannot be registered as a trade mark. For my part,
as I have said, I cannot see any business reason why this should be so, and I can find
nothing in the Act or in the authorities to justify such a conclusion. Upon this, which is
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the main point in the appeal, I would uphold the judgment of Graham J……”
22.8 Therefore, having regard to the definition of a design under Section 2(d) of the
Designs Act, it may not be possible to register simultaneously the same mater as a
design and a trade mark. However, post registration under Section 11 of the Designs
Act, there can be no limitation on its use as a trademark by the registrant of the
design. The reason being : the use of a registered design as a trade mark, is not
provided as a ground for its cancellation under Section 19 of the Designs Act.
ISSUE NO. III
23. This brings us to the third issue, whether a composite suit for infringement of a
registered design can be filed alongwith an action for passing off. In our view, since
the cause of action for bringing the two suits is different, separate suits would have to
be filed; though if filed at the same time or in close proximity they may be tried
together as there may be some aspects which may be common.
23.1 The principle that every suit filed by a plaintiff should include the whole claim
which a plaintiff is entitled to make applies when the cause of action is same. The
plaintiff is entitled, in law, to relinquish a portion of his claim to bring his suit within
the jurisdiction of the court before whom the suit is filed. If the plaintiff chooses to sue
in respect of a portion of the claim, or intentionally relinquishes a portion of the claim,
he is not entitled in law to sue thereafter in respect of that portion of the claim which
he has chosen to omit or relinquish. Similarly, if a person is entitled to cumulative
reliefs or several reliefs in respect of a cause of action, he is entitled to sue for all or
some of them. If, however, the plaintiff omits some reliefs without leave of the court,
he would not be entitled to institute a second suit for the reliefs so omitted. These are
broadly the parameters which are prescribed in Order 2 Rule 2 sub-rule (2) and (3) of
the Code.
23.2 The underlying principle would thus be that a plaintiff should exhaust all
reliefs in respect of a cause of action except where leave of court is obtained and not
that different causes be combined in one suit even if they arise from the same
transaction. [see Payanna Reena Saminathan v. Pana Lana Palaniappa (1913-14) 41
Ind. App. 142. Also see Amarsingh Gajjansingh v. Tulsiram Ramdayal AIR 1949
Nagpur 195]
24. The policy of law is to prevent multiplicity of suits and to protect a person from
being vexed twice qua the same cause. Therefore, if the causes of action are different,
then they cannot be combined in one suit.
24.1 In our view, in a suit filed by a plaintiff to protect his statutory rights, flowing
from registration obtained under the Designs Act would decidedly based on elements
which are found in Section 2(d) and 11 read with the exclusions provided in Section 4
of the Designs Act. Ordinarily, the plaintiff would aver that he had secured for himself
a design as defined in Section 2(d) in respect of which a certificate of registration has
been issued, the registration is valid in terms of the provisions of Section 11, the
plaintiff is the inventor (or in a given case a lawful assignee) of the design which is
new or novel or significantly distinguishable from any known designs or any
combination of known designs, and that, the defendant is applying the plaintiff's
registered design or its fraudulent or obvious imitation without his consent or license.
The suit is brought to injunct piracy of the registered design by the defendant in terms
of Section 22 of the Designs Act.
24.2 As against this the broad pleading in a passing off action would be that the
plaintiff is using its design as a trademark. The plaintiff sells his goods or offers his
services as the case may be under the said trademark. The goods and services have
acquired a goodwill and reputation. In the minds of the purchasing public, the
trademark is associated with the plaintiff. The defendant seeks to represent (by using
the mark of the plaintiff or a mark which is deceptively similar to the plaintiff's mark)
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falsely that the goods sold or services offered by the defendant are those of the
plaintiff. This misrepresentation has caused injury or is calculated to cause injury to
the plaintiff. A cause of action simply put means every fact which the plaintiff will have
to prove if traversed, in order to obtain a judgment in his favour. (see Read v. Brown,
(1888) 22 Q.B.D. 128.
24.3 Thus, the cause of action in the infringement suit under the Designs Act could
be different from that which obtained in a passing off action. The fundamental edifice
of a suit for infringement under the Designs Act would be the claim of monopoly based
on its registration, which is premised on uniqueness, newness and originality of the
design. Whereas, the action for passing off is founded on the use of the mark in the
trade for sale of goods and/or for offering service; the generation of reputation and
goodwill as a consequences of the same; the association of the mark to the goods sold
or services offered by the plaintiff and the misrepresentation sought to be created by
the defendant by use of the plaintiff's mark or a mark which is deceptively similar, so
as to portray that the goods sold or the services offered by him originate or have their
source in the plaintiff. It is trite to say that different causes of action cannot be
combined in one suit [See Dabur India Limited v. K.R. Industries (2008) 10 SCC 595
paragraph 34].
25. Having regard to the nature of the two actions, in our opinion, the two actions
cannot be combined. Though as indicated, at the beginning of discussion of this issue
if the two actions are instituted in close proximity of each other the court could for the
sake of convenience try them together, though as separate causes, provided it has
jurisdiction in the matter.
26. Before we conclude our discussions, we would like to refer to some of the cases
which have been adverted to in the order of reference which represent the dichotomy
in the view expressed by different Benches of this Court. It is these differences, which
led to the instant reference being made. 26.1 The first case to which reference has
been made is : Tobu Enterprises. This was a case where the plaintiff being a
manufacturer of “mini bike tricycle”, obtained registration qua the design of its
product, on 16.08.1976. Defendant no. 1 in that case, also obtained registration for
design for its product, which was also, a tricycle; though on a later date, i.e.,
06.10.982. A learned Single Judge of this court refused to grant injunction on the
ground that the plaintiff had not approached the court with “clean hands” in as much
as, it had attempted to obtain an injunction based on its latest model of tricycle,
whereas it had in fact obtained registration of a different design of the said tricycle.
The other ground on which the injunction was refused, was that, the design of the
plaintiff was distinctly different from that in respect of which the defendant had
obtained registration. The learned Judge was of the view that not only the general
appearance was different but the absence of the front-wheel mudguard in the design
of the plaintiff made all the difference.
26.2 While these reasons were given in the latter part of the judgment, the learned
Single Judge in the earlier part of the judgment discussed his view on certain aspects
of law, based on the acceptance of the allegation made by the plaintiff that the
defendant's design was identical to that of the plaintiff. The learned Single Judge was
considering the provisions of the old Designs Act of 1911 (in short the Old Act). It
must be stated that substantially the provisions in respect of which the learned Judge
expressed his opinion, are pari materia with the corresponding provision obtaining in
the Designs Act, i.e., the Act of 2000. The learned Single Judge, while interpreting old
Section 53 (now Section 22) came to the conclusion that since both the plaintiff and
defendant no. 1 were proprietors of registered designs, it would be “absurd” to issue
injunction in favour of one of the parties to the suit by restraining the other from using
the registered design. The learned Single Judge went on to observe that:“The net
result, therefore, is that when the design of both the parties is registered, no action in
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the nature of issue of injunction or recovery of damages is permissible”. The view

taken was : the remedy available to an aggrieved party in such a case would be to
move for cancellation of registration under Section 51 of the old Act (now Section 52).
The learned Judge, while recognizing the fact that Section 47 of the old Act (now
Section 11) created a substantive right in favour of the person whose design was
registered, the said provision, according to the learned Judge, did not state that a
registration which is obtained earlier in point of time will prevail over the later
registration. The learned Judge thus opined:“that registration of a design can,
therefore, prevail and is to be protected against infringement only when the opposite
party does not possess any registration. The obvious result is that if each of the parties
is having registration of design, each of them can use that design for its
products.” (See paragraphs 6, 7 & 9 to 11 at pages 361 to 365)
26.3 On the aspect of the availability of the remedy of passing off, the learned
Judge opined that passing off was a common law right and that right was subject to
the provisions of a particular statute. Since Section 53 of the old Act provided for a
remedy by way of an injunction and claim of damages and rendition of accounts,
passing off remedy stood excluded. Learned Judge in coming to this conclusion found
support from the provisions of Section 53 of the old Act which placed a cap on the
maximum damages which could be claimed by a plaintiff. This, according to him, was
in contradiction to what the general law or common law provided. (see paragraph 12
pages 365 and 366).
26.4 This view found favour with another Single Judge of this court in the case of
Indo Asahi Glass Co. Ltd. v. Jai Mata Rolled Glass Ltd. 1996 (16) PTC 220 (Del).
Though in this case the learned Single Judge declined to grant an injunction based on
the principle set forth in Tobu Enterprises case - what is not discernable clearly from
the facts stated in the judgment, as to whether the defendant also had a registration
in its favour. The plaintiff in this case was in the business of manufacturing and
selling, inter alia, sheet glass. In respect of the same, the plaintiff had obtained
registration under the Designs Act. The defendant appears to have pleaded that the
design applied on its product was supplied by a West German firm. As indicated
above, the narration of facts do not indicate as to whether the German firm had
obtained a registration in its favour. Since the judgment in the case of Tobu
Enterprises has been applied, one would have to presume that there was registration
both in favour of plaintiff and the defendant. We must confess that this judgment does
not independently discuss the intricacy of the Designs Act, a fact which has been
noticed in a subsequent judgment of this Court. The reference to Tobu Enterprises is
found in paragraphs 24 and 25 of the judgment.
26.5 The view taken in Tobu Enterprises was also followed in S.S. Products of India
v. Star Plasts 2001 PTC 835 (Del). It appears that the learned Single Judge was not
referred to the views expressed in a latter judgment, that is, Joginder Metal Works
case and Alert India v. Naveen Plastics 1997 PTC (17) (Del).
26.6 In the line of judgments which have taken the view expressed in Tobu
Enterprises is a judgment of the Madras High Court in the case of Eagle Flask
Industries Pvt. ltd. v. Bon Jour International 2011 (48) PTC 327 (Mad). This is a short
judgment where the learned Single Judge declined to grant injunction to the plaintiff
since one of the partners of the defendant firm claimed it also had a registered design
in its favour. The product in issue was a vacuum flask. The learned Judge noted that
both parties had applied for cancellation of each others registered design, with the
Controller of Designs, and therefore, in those circumstances he was of the view that
they could not prevent each other from applying their respective registered design to
the products manufactured by them. The learned Single Judge appears to have
applied the principles encapsulated in Section 30(2)(e) of the Trademarks Act.
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27. With respect to, in our view, the judgment in Tobu Enterprises failed to
appreciate that the registration of a design is prima facie evidence of the fact that the
design is unique, novel or original or that it is significantly distinguishable from any
known design or combinations of designs. Thus, the registration in that sense creates
a monopoly in favour of the registrant for the period prescribed under Section 11 of
the Designs Act. The registrant thus has, in our opinion, the right to assert this
monopoly against all and sundry, including a subsequent registrant. There are no
words of limitation in Section 4, 11 and 22 which would exclude institution of an
action against the subsequent registrant. The decision in the suit would leave
ultimately only one party unscathed. Therefore, in our opinion, the rationale supplied
in Tobu Enterprises that the only remedy available to the plaintiff against a
subsequent registration would be to seek cancellation of the registration, is flawed.
27.1 It is precisely for this reason, if in a suit for infringement the defendant pleads
in defence the grounds which are available for cancellation under Section 19, the suit
is necessarily required to be transferred to the High Court under the provisions of
Section 22(4) of the Designs Act. In our opinion, the manner in which the scheme of
the Designs Act operates, a decree passed in a suit for infringement, shall be binding
on the Controller, who will have to cause an entry in that regard in the register of
designs. On the other hand, an order of cancellation under Section 19 passed by the
Controller is amenable to appeal under sub-section (2) of Section 19. In addition,
under sub-section (2) of Section 19 of the Designs Act the Controller has the power to
refer, at any time, the petition filed before him, to the High Court for decision.
28. We also, respectfully, disagree with the view taken by the learned Single Judge
in Tobu Enterprises with respect to non-availability of a remedy of a passing off action
qua a design used as a trademark. The learned Judge has come to this conclusion for
the following reasons : Firstly, that Section 53 of the old Designs Act does not provide
for a remedy of action of passing off and; secondly, Section 53 of the old Designs Act
caps the extent of damages which could be claimed in an action for infringement and
consequential relief of damages. Both reasons, according to us, overlook the
fundamental principle that in order to institute a suit, a right has not to be necessarily
found in a statute enacted by a legislature. Unless the statute expressly or by
necessary implication prohibits the jurisdiction of a court to entertain a suit, a civil
court cannot refuse to entertain a suit. Jurisdiction of a civil court to deal with civil
causes can only be excluded by clear and unambiguous language used by special Acts
enacted for that purpose. Ordinarily, the ouster of a jurisdiction of a civil court is not to
be inferred. The presumption is ordinarily otherwise. [See Dhulabhai v. State of
M.P. AIR 1969 SC 78, State of Andhra Pradesh v. Manjeti Laxmi Kantha Rao (2000) 3
SCC 689, Guda Vijayalakshmi v. Guda Ramachandra Sekhara Sastry (1981) 2 SCC
646 and Kihoto Hollohan v. Zachillhu 1992 Supp (2) SCC 651].
29. Section 9 of the Code clearly provides that a court shall have jurisdiction to try
all suits of civil nature except suits in respect of which congnizance is either expressly
or impliedly barred.
30. A somewhat similar view has been taken by a single Judge of this court in
Joginder Metal Works. The view in this case is contrary to the view taken by the single
Judge in Tobu Enterprises. We respectfully agree with the view taken in the Joginder
Metal Works.
31. Another Single Judge of this Court in Alert India v. Naveen Plastics has
disagreed with the view taken in Tobu Enterprises. This was a case, where the plaintiff
which was a manufacturer of footwear soles, had filed a suit for infringement of its
registered design and for passing off and other ancillary reliefs. The defendant no. 2 in
that case, who was the proprietor of defendant no. 1, pleaded in defence that he had
also obtained a registered design, and thus, had the exclusive right to apply the said
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design to the product manufactured by it. To be noted, the defendant in that case,
was also manufacturing footwear soles. The design of the defendant, however, was
registered, in point of time later to that of the plaintiff.
31.1 Based on the judgment of Tobu Enterprises it was contended that such a suit
was not maintainable against the holder of a registered design, and that, the only
remedy available was to seek cancellation under Section 51-A of the old Designs Act.
31.2 The learned Single Judge, however, repelled both these contentions. The
single Judge based his judgment on the Division Bench judgment of the Allahabad
High Court and the Lahore High Court in the case of Mohd. Abdul Karim v. Yasin AIR
1934 All. 798 (DB) and Qadar Bakhsh v. Ghulam Mohd. AIR 1934 Lahore 709,
respectively. The learned Single Judge while taking into account the fact that the
plaintiff's design was registered at an earlier point in time, observed that:“if the two
designs are same or identical, in that case the defendant, whose design was
registered much later, cannot be said to be ‘proprietor’ of a new or original
design, not previously published in India”. The learned Single Judge based on the
judgments of the Allahabad High Court and Lahore High Court, came to the following
conclusion : a person claiming to be proprietor of a registered design, which is not new
or original, and which is being used by others, since prior to his registration, or such
design, notwithstanding such registration, is not entitled to seek legal remedies
provided under Section 53 of the Act (i.e., the old Act). The learned Single Judge was
thus, of the view that, the defendant would not be entitled to seek legal remedies
under Section 53 of the old Designs Act, in case, he were to file a suit, against the
plaintiff, and therefore, could the defendant use such a registered design, as a shield
in a suit filed by the plaintiff. The learned Single Judge was, therefore, of the view that
the defendant who is found to be a pirator of the design, cannot be allowed to defeat
the just and legal right available to him under law, including the right to seek
injunction under Section 53 of the old Act. (see observations in paragraph 28 to 30 at
pages 22).
32. On the aspect of non-availability of the remedy of a passing off action,
disagreement has been expressed by another Single Judge of this court in the case of
Smithkline Beechem Plc v. Hindustan Lever Ltd. 1999 PTC 775 (Del). The learned
Single Judge has preferred the view taken in Joginder Metal Works as against that
which is expressed in Tobu Enterprises. (See paragraph 13 at pages 781 and 782).
32.1 This view has also found concurrence in another judgment titled as Smithkline
Beechem Consumers Health Care GMBH v. G.D. Rathore 2002 (25) PTC 243 (Del). This
judgments cites with approval the judgment in Smithkline Beechem Plc v. Hindustan
Lever Ltd. (see paragraphs 22 pages 256 to 260).
32.2 A single Judge of the Bombay High Court in the case of Gorbatschow Wodka
KG v. John Distilleries Ltd 2011 (47) PTC 100 (Bom.) granted an interim injunction in
a passing off action against a defendant, which had a registered design in its favour.
The plaintiff in that case filed a quia timet action against the defendant in which he
asserted that the shape of its Wodka bottles was distinctive and formed an intrinsic
part of its goodwill and reputation. The grievance of the plaintiff apparently was that
the defendant had invaded its intellectual property rights by adopting a deceptive
variation of the shape of the bottles of the plaintiff. The plaintiff claimed that, it had
registered the shape of its bottle in various jurisdictions across the world, and that, in
India, it had applied for registration of the shape of its bottle, as a trademark under
the Trademarks Act. The defendants, as noticed in the judgment, had obtained
registration under the Designs Act and thus inter alia pleaded that an action for
passing off would not lie. Dr. Justice D.Y. Chandrachud pertinently made following
observations in the judgment:
“…15. The fact that the Defendant has obtained registration under the Designs Act,
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2000, does not impinge the right of the Plaintiff to move an action for passing off.
Section 27(2) of the Trade Marks Act, 1999 provides that nothing in the Act shall be
deemed to affect the right of action against any person for passing off goods or
services. Section 27(2) is a statutory recognition of the principle that the remedy of
passing off lies and is founded in common law.
16. Now, in the present case, the material which has been placed on the record by
the Plaintiff, prima facie indicates that the Plaintiff has an established trans border
reputation and that an integral part of that reputation lies in the shape of the bottle in
which Vodka is sold. The shape of the bottle which the Plaintiff has adopted has no
functional relationship with the nature of the product or the quality required of the
container in which Vodka has to be sold. The shape, to use the language of a leading
authority on the subject, is capricious. It is capricious in the sense that it is novel and
originated in the ingenuity and imagination of the Plaintiff….
….The true test is not as to whether the Defendant took a search from the Design
Register. As the first user of the shape, the Plaintiff was not bound to register it under
the Designs Act, 2000. If the Defendant knew that the bottles of the Plaintiff with a
distinctive shape were in the market - as a prudent person in the trade would know
upon a diligent enquiry no amount of search in the Register would bring it within the
purview of an honest adoption……
….. 22. The test is whether the shape that has been adopted by the Plaintiff is one
that is adopted capriciously, purely to give the article a distinctive appearance or
characteristic of the goods of the manufacturer. If that be so, the manufacturer may
be able to establish that he has a reputation and goodwill in the distinctive appearance
of the article itself which would furnish a cause of action in passing off…..
… 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 of
being capricious……”
33. Having noticed the views expressed in the judgments discussed above, we
must state that we are broadly in agreement with the view expressed in Alert India v.
Naveen Plastics, Joginder Metal Works, Smithkline Beechem Plc v. Hindustan Lever
Ltd. and Gorbatschow Wodka v. John Distilleries Ltd.
34. On various issues raised we may crystallize our opinion as follows.
(i) A plaintiff could institute a suit for infringement of a design against a defendant,
who was also a holder of a registered design. The expression “any person” found in
Section 22 of the Designs Act would not exclude a subsequent registrant as, according
to us, no such words of limitation are found in said Section.
(ii) The plaintiff would be entitled to institute an action of passing off in respect of a
design used by him as a trade mark provided the action contains the necessary
ingredients to maintain such a proceeding. The argument that such a suit could be
instituted only after the expiry of the statutory period provided under Section 11 of the
Designs Act, does not find favour with us. This is for the reason that in a given fact
situation the plaintiff may have commenced the use of the design as a trademark after
its registration. While Section 2(d) of the Designs Act excludes from the definition of a
design, any trademark which is defined as such in clause (v) of sub-Section (1) of
Section 2 of the 1958 Act or property mark, as defined in Section 479 of the IPC, or
any artistic work as defined in clause (c) of Section 2 of the Copyright Act - the use of
the design as a trademark post its registration, is not stipulated as a ground for
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cancellation under Section 19 of the Designs Act.

(ii) (a) In this context we must note the argument of Ms Singh, learned amicus,
that passing off action may perhaps be maintainable provided the mark has attained
secondary meaning. In our opinion, the issue before us is limited to whether a remedy
by way of passing off action would be available qua a registered design used as a
trademark by the plaintiff - we are not inclined to comment on the quality of evidence
which may be required, if at all, to be produced by the plaintiff to prove whether the
mark has acquired the necessary secondary distinctive meaning, for him to secure
success, in the action instituted in that behalf.
(iii) We are also of the view that a composite suit for infringement of a registered
design and a passing off action would not lie. The Court could, however, try the suits
together, if the two suits are filed in close proximity and/or it is of the view that there
are aspects which are common to the two suits. The discretion of the court in this
matter would necessarily be paramount.
36. Accordingly, our answers to the three issues are as follows:
ISSUE No. I : A holder of a registered design could institute a suit against a
defendant who is also in possession of a registered design.,
ISSUE No. II : A holder of a registered design can institute an action for passing
off.
ISSUE No. III : The two actions cannot be combined in one suit.
37. The reference is thus disposed of in the aforesaid terms. The suits be placed
before the roster Bench for appropriate orders.
———
1 2 (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 or property mark as
defined in section 479 of the Penal Code, 1860 or any artistic work as defined in clause (c) of section 2 of the
Copyright Act, 1957
2 2 (j) “proprietor of a new or original design”,-

(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.
3
22. (I) 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 license 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. (1) 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:
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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 subsection shall be instituted in any
court below the court of District Judge.
(3) In any suit or any other proceeding for relief under subsection (2), ever 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 or 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
proceedings 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-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.
4
27. (1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the
infringement of an unregistered trade mark.
5 27 (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing of goods or
services as the goods of another person or as services provided by another person, or the remedies in respect
thereof.
6
11. (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.
7 15 (2) Copyright in any design, which is capable of being registered under the Designs Act, 1911, but which
has not been so registered, shall cease as soon as any article to which the design has been applied has been
reproduced more than fifty times by an industrial process by the owner of the copyright or, with his license, by
any other person.
810(4) The register of designs shall be prima facie evidence of any matter by this Act directed or authorized to
be entered therein.

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2016 SCC OnLine Del 3880 : (2016) 233 DLT 234 : (2016) 158 DRJ (SN) 711 :
(2016) 67 PTC 665

In the High Court of Delhi at New Delhi

(BEFORE RAJIV SAHAI ENDLAW, J.)

OK Play India Limited .…. Plaintiff

Mr. Jayant Mehta, Mr. Kapil Wadhwa, Mr. Anirudh Wadhwa and Ms. Tanya Sharma,
Advs.
v.
Mayank Aggarwal & Ors. .…. Defendants
Mr. Saikrishna Rajagopal, Mr. Sidharth Chopra, Mr. Nitin Sharma and Mr. Avijit
Sharma, Advs. for D-1 to 7.
Mr. Bharat Deepak, Adv. for D-8.
CS(OS) No. 2355/2015 & CC No. 6/2016 (of the defendant no. 8)
Decided on July 15, 2016
Intellectual Property — Copyright — Passing off — Designs Act, 2000 — Ss. 2(c), (d), 6
(1) and 11 — Copyright Act, 1957 — Ss. 14(c), 15 — Common Law Rights — It is contended
by the plaintiff that the drawing in which the plaintiff claims a copyright does not constitute
a design within the meaning of S. 2(d) and is thus not capable of being registered under the
designs act — Held, the provisions of Ss. 2(c), 14 and 15 of the copyright act have to be
read harmoniously with S. 2(d) of the designs act and cannot be read so as to undo what
the designs act has been enacted to achieve and for a design to be applied to any article to
be re-produced more than 50 times by industrial process drawings will necessarily have to
be prepared and the preparation of such drawings in application of a design to any article is
but a part of the process of application of the design to an article and the said drawings
cannot be treated disjunctively from a design so as, to by vesting a copyright therein,
extend the protection to which a design is otherwise entitled to under the designs act — No
protection on the basis of copyright can be given to the plaintiff at this stage as the
copyright if any of the plaintiff in the drawings prepared in the course of manufacture of the
toys by an industrial process was in the design of the toys and which ceased as soon as the
toys as per the said design were manufactured more than 50 times by an industrial process
— Application of the plaintiff for interim relief is dismissed and the applications of the
defendants for vacation of the ex parte order are allowed
(Paras 28, 30, 33 and 34)
RAJIV SAHAI ENDLAW, J.
IA No. 16099/2015 (of the plaintiff u/O 39 R-1&2 CPC), IA No. 18726/2015 &
IA No. 24796/2015 (of defendants u/O 39 R-4 of the CPC) & IA No.
18727/2015 (of the defendants for release of goods).
1. The application of the plaintiff for interim injunction and the applications of the
defendants for vacation of the ex parte ad interim injunction granted to the plaintiff
vide order dated 7th August, 2015 and for release of the goods seized by the Court
Commissioner appointed vide the same order and order dated 21st August, 2015 are
for consideration.
2. The plaintiff, claiming to be a leading manufacturer and distributor of quality
products made using plastic moulding technology including toys, school furniture and
playground equipment, has sued the eight defendants namely Playwell Impex Private
Limited and its Directors Mr. Mayank Aggarwal, Ms. Meenakshi Gupta, Mr. Pawan
Kumar Gupta and Mr. Vishal Gupta and its Manager Mr. Darshan Singh Rawat and its
distributor R.P. Associates and its manufacturer Funko India for the relief of
permanent injunction restraining them from infringe upon the bundle of intellectual
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property rights including copyright and Common Law Rights in designs and/or from
passing off or indulging in acts of unfair competition by manufacturing, distributing
and selling products identical or deceptively similar to the products of the plaintiff and
for ancillary reliefs.
3. It is inter alia the case of the plaintiff (i) that it is the assignee of all the
intellectual property rights owned by OK Play Limited (UK), a British Company
specializinig in manufacture and distribution of toys, including trademarks and
goodwill attached to the brand OK Play Limited (UK) and all rights to the drawings,
designs, moulds, casts and dyes relating to the toys made by OK Play Limited (UK);
(ii) that the plaintiff has been carrying on business under the brand OK PLAY and is
the leading toy manufacturer in India having turnover of Rs. 56,64,71,656/- in the
financial year 2014-15; (iii) that the plaintiff in the year 2014-15 spent Rs.
1,28,80,197/- in marketing; (iv) that the plaintiff is the registered proprietor of the
trademark ‘OK PLAY’ since 25th August, 2005 (w.e.f. 26th October, 1992); (v) that the
mark OK PLAY is also used by the plaintiff in the form of a logo with the words OK
PLAY set out in a stylized font in yellow coloured lettering over a red background and
the plaintiff has also applied for registration of the said (device) mark; (vi) that each
toy produced by the plaintiff is unique and has been conceptualized and designed
under the strict control and supervision of the plaintiff and the conceptualization and
production of toys by the plaintiff is confidential and proprietary and involves studying
the market, coming up with a feasibility report and demand, conceptualising keeping
the mental and physical development of the target age-bracket, coming up with the
aesthetic elements of the toy including colour scheme, dimensions etc., preparation of
the drawings, preparation of a dummy prototype, creation of the necessary moulds,
dyes and creation of casts; (vii) all the drawings are created either in-house or by
professionals engaged by the plaintiff; (viii) the plaintiff in the five years preceding
the institution of the suit spent Rs. 4 crores on research and development; (ix) the
defendant no. 2 Playwell Impex Private Limited, also engaged in the business of
manufacture, distribution and sale of toys, in collusion with the defendant no. 6 R.P.
Associates which was the distributor of the toys of the plaintiff and defendant no. 7
Darshan Singh Rawat, who was earlier an employee of the plaintiff and privy to all
confidential and proprietary information and data of the plaintiff, has launched a range
of toys which are identical and deceptively similar to the toys made by the plaintiff
and is thereby passing off its goods as those of the plaintiff, infringing the bundle of
intellectual property rights of the plaintiff in its products; and, (x) that the toys
manufactured and sold by the defendants under the brand FUNKO are a substantial re-
production and colourable imitation of the products of the plaintiff.
4. Vide ex parte ad interim order dated 7th August, 2015, while issuing summons of
the suit, the defendants were restrained from manufacturing, selling, distributing,
advertising or dealing with the products that are identical/deceptively similar to the
plaintiff's products and Court Commissioners appointed to visit the premises of the
defendants without notice and to prepare inventory of all the impugned material and
to take into custody the infringing material. Vide subsequent order dated 21.08.2015,
Additional Commissioners were appointed to visit other locations.
5. The Commission was executed and certain goods seized and for release whereof
application has been filed by the defendants and is also under consideration.
6. Needless to state, the defendants have contested the suit. Separate written
statements have been filed by the defendant No. 1, defendants no. 2&5, by the
defendant no. 3, by the defendants no. 4&6 and by the defendant no. 8. The
defendant no. 8 Funko India has also filed a Counter Claim against the plaintiff for
recovery of Rs. 2 crores for causing loss and damage by having the commission
executed. Pleadings have been completed. The counsels were heard on the aspect of
interim relief on 08.07.2016 and order reserved.
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7. Having not found the plaintiff in the plaint to have claimed registration under the
Designs Act, 2000 and being of the prima facie opinion that without the same the
plaintiff cannot assert any intellectual property rights, at least at the interim stage to
be entitled to injunction, during the hearing also the counsel for the plaintiff was
straightaway quizzed on the said aspect and for this reason only need at this stage to
summarize the defence of the defendants to the suit is not felt. Hearing was thus
confined to, whether the plaintiff without obtaining registration as a design with
respect to any of the toys being manufactured by it is entitled to injunct the
defendants at the interim stage from copying the design of its toys.
8. The counsel for the plaintiff, in the “bundle of copyrights” of which infringement
is claimed, asserts copyright in the drawings of the toys and “Common Law Rights”.
Mr. Saikrishna Rajagopal, Advocate appearing for the defendants no. 1 to 7 on the
other hand contended what was echoed by me i.e. that without registration as a
design, no intellectual property rights can be claimed.
9. Before going into the legal provisions on the aforesaid aspect it may be
mentioned that it is the plea in para 19 of the plaint and it was argued by the counsel
for the plaintiff with reference to pages 181 and 182 of the documents that the
plaintiff, while conceptualizing a proposed toy, first comes up with the aesthetic
elements of the proposed toy including the colour scheme, dimensions and functional
requirements of the toy and on the basis thereof the technical team prepares the
drawings and on the basis of which drawings prototype of the toy is prepared and
subsequently the necessary moulds, dyes and casts are created. According to the
plaintiff, first a design and colour theme as under is prepared
10. and thereafter the drawing thereof as under : -
11. is prepared and in which the plaintiff claims copyright.
12. The statutory provisions to which the hearing was confined are as under : -
(i) Section 14(c) of the Copyright Act, 1957 : -
“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) …….
(b) …….
(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 two-dimensional work or
(C) depiction in two-dimensions of a three-dimensional 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 an adaptation of the work any of the acts specified
in relation to the work in sub-clauses (i) to (iv);
(d) ……
(e) ……
Explanation. - For the purposes of this section, a copy which has been
sold once shall be deemed to be a copy already in circulation.”
(ii) Section 15 of the Copyright Act.
“15. Special provision regarding copyright in designs registered or
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capable of being registered under the [Designs Act, 2000 (16 of 2000)]
-(1) Copyright shall not subsist under this Act in any design which is
registered under the [Designs Act, 2000 (16 of 2000)].
(2) 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
reproduced more than fifty times by an industrial process by the owner of the
copyright, or, with his licence, by any other person.”
(iii) Sections 2(c) and (d), 6(1) and 11 of the Designs Act
“2. Definitions. - In this Act, unless there is anything repugnant in the
subject or context, -
(c) “copyright” means the exclusive right to apply a design to any article
in any class in which the design is registered;
(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 or property mark as
defined in section 479 of the Penal Code, 1860 or any artistic work as
defined in clause (c) of section 2 of the Copyright Act, 1957.
6. Registration to be in respect of particular article. - (1) A design
may be registered in respect of any or all of the articles comprised in a
prescribed class of articles.
11. 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.”
13. It was enquired from the counsel for the plaintiff whether not the copyright
under Section 14(c) supra, even if any of the plaintiff in the drawing as re-produced
above, was a copyright in a design within the meaning of Section 2(d) and being
capable of registration under the Designs Act and whether not, having not been so
registered, and the plaintiff having applied the design to manufacture by industrial
process of the toy concerned more than 50 times, the said copyright in design ceased
under Section 15(2) supra.
14. The contention of the counsel for the plaintiff is and as indeed cannot be
anything else that the drawing aforesaid in which the plaintiff claims a copyright does
not constitute a design within the meaning of Section 2(d) supra and was thus not
capable of being registered under the Designs Act.
15. On enquiry whether not the said question had been the subject matter of any
earlier judgment, the counsel for the plaintiff drew attention to the judgment of the
Division Bench of this Court in Microfibres Inc. v. Girdhar & Co. 2009 (6) R.A.J. 106
(Del). However it was found that the said judgment besides in the appeal preferred by
Microfibres Inc. was also in FAO(OS) No. 447/2008 preferred by Mattel Inc., also a
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manufacturer of toys, against Jayant Aggarwalla and further finding the judgment of
the Division Bench copy of which was handed over to be pertaining more to the appeal
preferred by Microfibres Inc., and having deferred the hearing of appeal by Mattel Inc.,
the judgment of the Single Judge of this Court in Mattel, Inc. v. Jayant Agarwalla and
the judgment of the Division Bench in the said appeal being FAO(OS) No. 447/2008
were enquired of. The counsel for the defendants no. 1 to 7 handed over a copy of the
judgment of the Single Judge in Mattel, Inc. v. Jayant Agarwalla 2008 (38) PTC 416
(Del.) and during the course of hearing the counsel for the plaintiff also procured from
the internet the copy of the order dated 23rd April, 2012 of the Division Bench
disposing of FAO(OS) No. 447/2008 preferred by Mattel, Inc.
16. Mattel, Inc., also claiming to be a leading manufacturer of toys, games and
consumer products had filed the suit aforesaid in respect of its board game marketed
and popularized by the name SCRABBLE and to restrain the defendants from adopting
deceptively and confusingly similar online version of the plaintiff's games. It was the
contention of the defendants therein that the question of the copyright protection
being available to Mattel, Inc. did not arise due to Section 15 of the Copyright Act and
the provisions of the Designs Act. Dismissing the application of Mattel, Inc. for interim
injunction it was reasoned : -
(a) relying on the judgment of the Single Judge in Microfibres Inc. v. Girdhar & Co.
2006 (32) PTC 157 (Del) that in India we have legislations governing the
protection of different nature of rights;
(b) insofar as the industrial designs are concerned, the protection is provided under
the Designs Act;
(c) the legislative intent is also to be kept in mind which is to provide protection for
a certain period of time for commercial exploitation;
(d) thus, nature of protection is quite different for an artistic work under the
Copyright Act which is for the lifetime of the author/creator + 60 years;
(e) this is not so in the case of commercial exploitation as under the Designs Act
and the Patent Act the period is much lesser;
(f) if the configuration is made only with the object of putting it to
industrial/commercial use then it has to be dealt with under the Designs Act;
(g) the exclusion of an ‘artistic work’ as defined in Section 2(c) of the Copyright Act
from the definition of ‘design’ under Section 2(d) of the Designs Act is only
meant to exclude the nature of artistic works like paintings, sculptors and other
works of art which are sought to be specifically excluded from the Designs Act;
(h) the concept behind excluding certain designs from protection under the
Copyright Act is to avoid any hindrance being caused to the manufacturer in sale
of industrial articles;
(i) the intention of the Legislature is to protect any artistic work which has to be
commercially exploited by the owner of the copyright by not providing the
protection under the Copyright Act, but under the Designs Act;
(j) that in the context of the Indian Law, it is the Designs Act which would give
protection to the plaintiff and not the Copyright Act;
(k) even where there is application of mind and skill and the defendant has copied
the same, that would still not amount to the work in question being labeled as
‘artistic work’ within the definition of Section 2(c) of the Copyright Act and the
protection under the Copyright Act would not be available;
(l) the object of Copyright law is to protect the original literary, dramatic, musical
and artistic works, cinematograph films, sound recordings, broadcasting rights
and/or performers' rights;
(m) the object of Design Law on the other hand is protection of the features of
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shape, configuration, pattern, ornamentation, or composition of lines or colours

applied to any article whether in two dimensional or three dimensional or in both
forms, by industrial process or means;
(n) the Copyright Act precludes the subsistence of Copyright in the Design which is
registered or is capable of being registered as a design;
(o) Section 47(2)(c) of the Designs Act enables the Central Government to frame
rules inter alia to facilitate registration thereunder; pursuant thereto the Designs
Rules, 2001 were framed and which classify the various articles and one of the
entries wherein deals with GAMES AND TOYS and another with OTHER
AMUSEMENT AND ENTERTAINMENT ARTICLES - these prima facie cover all
games and amusement articles as well as toys;
(p) designs in respect of various articles of games and other amusement articles
including game boards therefore can prima facie be registered; and, (q) thus the
defendants' objection that copyright could not be claimed was prima facie
merited and plaintiffs' copyright claim could not be granted at the interim stage.
17. The Division Bench in appeal preferred thereagainst and which was clubbed
with the appeal preferred by Microfibres Inc. while dismissing the appeal of Microfibres
Inc. ordered separate listing of the appeal preferred by Mattel, Inc.. However it
appears that the appeal preferred by Mattel, Inc. was adjourned from time to time and
is found to have been disposed of vide order dated 23rd April, 2012 finding that the
suit was at an advance stage and merely with the clarification that the observations
made while dismissing the application for interim relief would not influence the final
decision. However I further find through the website of this Court that the said suit
has not been disposed of as yet.
18. The fact however remains that though the Division Bench did not render any
findings on merits but also did not set aside the judgment of the learned Single Judge
which holds good till now. Going by the rule of precedents, the plaintiff herein also
cannot be granted any interim relief.
19. Interestingly, the judgment of the Division Bench in Microfibres Inc. is also in
FAO(OS) No. 326/2007 preferred by Dart Industries Inc. against the order of the
Single Judge refusing to grant interim injunction against infringement of its
Tupperware Products. Just like FAO(OS) No. 447/2008 preferred by Mattel Inc., FAO
(OS) No. 326/2007 preferred by Dart Industries Inc. was also ordered to be listed
separately and judgment wherein is found to have been reserved by a Division Bench
comprising of the same learned Judge who had sitting singly pronounced the
judgment in Mattel Inc.
20. Be that as it may, the counsel for the plaintiff argued (i) Section 15 being an
exception to Section 14 of the Copyright Act has to be construed strictly; (ii) that the
Division Bench in Microfibres Inc. in para 20 has held that the definition in Section 2
(c) of the Copyright Act of “artistic work” has a very wide connotation and includes a
work of architecture or an abstract work such as a few lines or curves arbitrarily
drawn; (iii) that the Division Bench in Microfibres Inc. in para 23 has held that there
is a clear distinction between an original artistic work and design derived from it for
industrial application on an article and that the original artistic work is something
different from the design; (iv) that the Division Bench in Microfibres Inc. in para 46
(f.) has held that the original artistic work which may be used to industrially produce
the designed article would continue to fall within the meaning of the artistic work
defined under Section 2(c) of the Copyright Act and would be entitled to the full
period of copyright protection as evident from the definition of design under Section 2
(d) of the Designs Act; (v) that a Single Judge of the High Court of Bombay also in
Photoquip India Limited v. Delhi Photo Store 2014 (60) PTC 563 held that that
drawings of the plaintiff therein being skilled diagrams that did not reflect any finished
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products, let alone a finished product of any ‘visual’ or aesthetic appeal and serving
only a functional purpose were not a design and that the plaintiff herein also is
claiming copyright only in the drawings and not in the articles and is thus entitled to
interim injunction; (vi) that the defendants in their written statement have admitted
the e-mail of the defendant Mr. Darshan Singh Rawat to the defendant Playwell Impex
Private Limited forwarding the brochure of the toys of the plaintiff and therefrom it is
evident that the defendant Playwell Impex Private Limited is replicating from the
brochure of the plaintiff; (vii) that the defence of the defendants in their written
statements that identical toys of other brands were also available would not disentitle
the plaintiff from interim injunction - reliance in this regard is placed on Pankaj Goel v.
Dabur India Ltd. 2008 (38) PTC 49 (Del) and Essel Packaging Limited v. Sridhar Narra
(2002) 98 DLT 565; (viii) that the plaintiff is entitled to interim injunction under the
Common Law (on enquiry whether in the face of statutory provisions there can be
Common Law to the contrary and whether not intellectual property rights are statutory
rights and not Common Law Rights, reliance was placed on Mohan Lal, Proprietor of
Mourya Industries v. Sona Paint & Hardwares AIR 2013 Delhi 143 (FB)). (ix) reliance
was placed on Laxmikant V. Patel v. Chetanbhai Shah (2002) 3 SCC 65 on the subject
of passing off; and, (x) reliance was placed on Escorts Construction Equipment Ltd. v.
Action Construction Equipment Pvt. Ltd. 1998 Lawsuit (Del) 811 to contend that
commercial exigencies require that copyright/patent laws should be viewed in the
context of giving protection and exclusive rights for the purpose of encouraging
inventive activities and investments in research and development.
21. I had during the hearing enquired from the counsel for the plaintiff, whether
not the manufacture by industrial process of any article is to be necessarily preceded
by preparation of a drawing, and if it were to be held that the copyright in the said
drawing as an art work under Section 14(c) supra is to be distinct from the design of
the article manufactured, and to enjoy protection for the lifetime of the author/creator
+ 60 years and entitle him to injunct others during the said time from replicating that
design, protection whereof under the Designs Act is of maximum 15 years only, why
would anyone bother to register the design of an article and not chose to be better off
having a copyright which will afford the same protection as registration of a design
and for a much longer period.
22. The only answer forthcoming was that only that is eligible for registration as a
design which is without preceding art work. Attention in this regard was drawn to para
24 of Microfibres Inc. (DB) supra.
23. The Division Bench in the said paragraph though observed that it is not
necessary that in every case a design has to be preceded by a artistic work upon which
it is founded and gave the example of a craftsman creating a design without first
creating a basic artistic work viz. a weaver creating a design while weaving a shawl
but without going into the binding nature thereof, that is not the case here. Here it is
the specific case of the plaintiff demonstrated as aforesaid from pages 181 and 182 of
its documents that the design in the form of prototype precedes the artistic work and
the process of manufacture by industrial process is preceded by the said artistic work.
24. The questions posed by me to the counsel for the plaintiff demonstrates the
incongruity of the contention of the counsel for the plaintiff. If protection as artistic
work having copyright were to be made available to the drawing prepared/got
prepared by plaintiff preceding manufacture of its toys, when the drawing of the
plaintiff itself is preceded by “design and colour theme”, then it will amount to saying
that though the toys of the plaintiff have features of shape, configuration, pattern,
composition of colours and further though the said features have been applied to the
toys manufactured by industrial process and the said features in the finished article
i.e. toys appeal to and are judged solely by the eye, all within the meaning of Section
2(d) supra but still do not constitute a design. Such an interpretation would sound the
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death knell for the Designs Act.

25. I reiterate that the pleading of the plaintiff and argument of counsel for plaintiff
itself shows that the plaintiff while conceptualizing a new toy first prepares a design
having features of shape, configuration, pattern, ornament, colour to appeal to
children to whom such toys are to be marketed and only thereafter prepares a drawing
for industrial manufacture of the said design. The same shows that the art work in
which the plaintiff is claiming copyright is a step in manufacture of an article as per
the design conceived and cannot stand independently from the design.
26. I had yet further enquired from the counsel for the plaintiff whether not Section
15(2) supra referring to “copyright in any design”, is itself indicative of a design also
qualifying as a copyright and which copyright ceases as soon as the article to which
design has been applied has been reproduced more than 50 times.
27. The response of the counsel for the plaintiff was that since from the definition in
Section 2(d) of Designs Act artistic work as defined in Section 2(c) of the Copyright
Act has been expressly excluded, a design cannot be a copyright.
28. I am unable to agree. The provisions of Sections 2(c), 14 and 15 of the
Copyright Act have to be read harmoniously with Section 2(d) of the Designs Act and
cannot be read so as to undo what the Designs Act has been enacted to achieve. I
reiterate that for a design to be applied to any article to be re-produced more than 50
times by industrial process drawings will necessarily have to be prepared and the
preparation of such drawings in application of a design to any article is but a part of
the process of application of the design to an article and the said drawings cannot be
treated disjunctively from a design so as, to by vesting a copyright therein, extend the
protection to which a design is otherwise entitled to under the Designs Act. Section 15
(2) expressly ends the said protection. The principles of interpretation of a ‘Proviso’ as
are sought to be invoked, cannot be applied to Section 15(2) which has to be given
full effect to.
29. The counsel for the defendants no. 1 to 7 has also rightly clarified that the
registration of a design is only in the context of an article and the copyright in the
drawings ceases only qua that article though may subsist for other purposes.
30. It is also the contention of the counsel for the defendants no. 1 to 7 that the
judgment of the High Court of Bombay in Photoquip India Limited supra is per
incuriam Section 52(w) brought into the Copyright Act by amendment of the year
2012 and that para 25 of the judgment shows that the Court in that case was not
concerned with any furnished product. He has also drawn attention to the judgment
dated 24th February, 2012 of the Division Bench of this Court in RFA No. 750/2010
titled Kiran Shoes Manufacturers v. Registrar of Copyrights observing in para 9 thereof
that Section 15(2) of the Copyright Act means that even an artistic work which is
commercially exploited in relation to goods in the manner provided under the Designs
Act ceases to be a work which would get protection under the Copyright Act and
proper course of action in such cases is to get the same registered under the Designs
Act. (I am not only bound by the said judgment of Division Bench but was also a
member thereof.)
31. The counsel for the defendants no. 1 to 7 with respect to the claim of the
plaintiff for interim injunction on the basis of Common Law Rights contended that no
interim injunction on the basis of Common Law Rights which are to be established by
evidence can be granted. It was argued that the toys in which the plaintiff is claiming
proprietary rights are generic products and are being marketed by a number of other
manufacturers also and all these questions cannot be decided at the interim stage.
32. I tend to agree with the counsel for the defendants no. 1 to 7 and after having
perused the photographs of some of the toys in which the plaintiff is claiming
proprietary rights have asked the counsel for the plaintiff the date/year since when the
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plaintiff has been manufacturing the said toys, as the toys look familiar, which have
been available in the market for ages. The counsel for the plaintiff has generally stated
that the said toys are being manufactured by the plaintiff since the year 1992.
33. I am of the view that the articles of toys which indisputably have been
manufactured more than 50 times by an industrial process and in which the plaintiff is
claiming a bundle of intellectual property rights were/are registrable under the
Designs Act and the plaintiff having not done so, the plaintiff at least at this interim
stage cannot injunct the defendants from manufacturing, selling and marketing
identical toys. It is also worth noticing that the protection of a design is for a
maximum period of 15 years and which also as per the plaintiff has lapsed. No
protection on the basis of copyright can be given to the plaintiff at this stage as I am
of the prima facie opinion that the copyright if any of the plaintiff in the drawings
prepared in the course of manufacture of the toys by an industrial process was in the
design of the toys and which ceased as soon as the toys as per the said design were
manufactured more than 50 times by an industrial process. As far as the Common Law
Rights asserted by the plaintiff are concerned, there at the moment is nothing to show
that there were no toys of the design in which the plaintiff claims the copyright or that
the plaintiff is the author/owner thereof. I am also circumspect though bound by the
judgment of the full bench whether, inspite of the law having granted protection for a
limited time, any protection under the Common Law can be afforded for longer,
nullifying the statute.
34. Recently a Division Bench of this Court in Midas Hygiene Industries Pvt. Ltd. v.
Sudhir Bhatia (2015) 225 DLT 178 concerned with a challenge to the order of the
Copyright Board expunging certain registrations of copyright in artistic work inter alia
on the ground that the same was capable of design registration and having not been
so registered resulted in cessation of copyright, though in the facts of that case set
aside the order of the Copyright Board but otherwise inter alia held (i) that copyright
protection is to the original expression of an idea; however the right to exclude others
from using the idea is restricted to the specific form, to the collocation devised; (ii)
that on the other hand trademarks protect the distinctiveness of a mark, a logo, a
symbol and its association with product or service and are badges of origin which act
as markers for the consumer to identify the source of the goods or services; (iii) in
distinction thereto the copyright and trademark, design rights protect novelty of the
design elements (shape, presentation, etc) of an article; (iv) it is significantly based
on the visual appeal of the product or article; (v) the rationale of the principle that a
copyright does not subsist in a registered design is that someone's choice of design
registration is a conscious decision to use a underlying work for mass production - the
design then reaches through the medium of the product or the article, a wider
audience; it has a commercial element; this is possible in the cases of designs of
products and articles which are sold widely or for a market; (vi) however that is not
always so in the case of an artistic work - typically a painting or a drawing or even a
sculpture for instance; (vii) the transformation of a work of art into a design results in
the possibility of its protection as a design; (viii) Section 15(1) dictates that if this
kind of work is registered as a design, there is no copyright protection; (ix) Section 15
(2) on the other hand says that if a work is capable of design registration and is not
registered but replicated as a product or article through a design more than 50 times
through mechanical process, copyright in that work ceases; (x) that a work of art may
answer to the description of subject matter capable of both design and copyright
protection; (xi) however copyright in such a work of art can only subsist if it has not
been registered as a design or while answering to the description of registrable design
it has not been registered as such and not been applied to article which has been
reproduced more than 50 times by an industrial process by the owner, licencee or any
other person; (xii) the copyright in the work can continue to survive independent of
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the work's mere fitness for design protection.

35. My reasoning recorded above is in consonance with the judgment supra of
Division Bench.
36. A Single Bench of this court also recently in Ritika Private Limited v. Biba
Apparels Private Ltd. MANU/DE/0784/2016 finding that the plaintiff was creating
dresses or creating articles by industrial means and process by application of the
design or drawing or sketch and had not obtained registration under the Designs Act,
summarily dismissed the suit as barred by Section 15(2) of the Copyright Act.
37. The application of the plaintiff for interim relief is thus dismissed and the
applications of the defendants for vacation of the ex parte order dated 7th August,
2015 are allowed and the order dated 7th August, 2015 is vacated. IA No. 18727/2015
of the defendants for return of the goods is also allowed. The goods seized by the
Court Commissioner/s be forthwith released to the defendant Playwell Impex Private
Limited.
———
Disclaimer: While every effort is made to avoid any mistake or omission, this casenote/ headnote/ judgment/ act/ rule/ regulation/ circular/
notification is being circulated on the condition and understanding that the publisher would not be liable in any manner by reason of any mistake
or omission or for any action taken or omitted to be taken or advice rendered or accepted on the basis of this casenote/ headnote/ judgment/ act/
rule/ regulation/ circular/ notification. All disputes will be subject exclusively to jurisdiction of courts, tribunals and forums at Lucknow only. The
authenticity of this text must be verified from the original source.
MANU/DE/1160/2017
Equivalent Citation: 2017(70)PTC 512(Del)

IN THE HIGH COURT OF DELHI

CS (Comm.) 83/2017
Decided On: 26.04.2017
Appellants: Holland L.P. and Ors.
Vs.
Respondent: A.D. Electro Stell Co. Pvt. Ltd.
Hon'ble Judges/Coram:
Indermeet Kaur, J.
Counsels:
For Appellant/Petitioner/Plaintiff: J. Sai Deepak, Mohit Goel, Shidhant Goel, Ashutosh
Nagar and Abhishek Kotnala, Advs.
For Respondents/Defendant: Rajesh Mahendru, Adv.
JUDGMENT
Indermeet Kaur, J.
I.A. No. 4740/2014 (under Order XXXIX Rules 1 & 2 CPC)
1. Present suit is a suit for permanent injunction restraining infringement of copyright,
rendition of accounts and damages. The plaintiff is a company incorporated under the
law of United States of America having its registered office at Illinois, USA.
2 . Plaintiff No. 2 is a partnership firm registered under the laws of India having its
registered office at Greater Kailash Enclave-I, New Delhi. Mr. Naveen Sangri, the
constituted attorney of plaintiff No. 1 is also the managing partner of plaintiff No. 2.
The plaint has been signed and verified through him.
3 . Plaintiff No. 1 is stated to have pioneered the delivery of comprehensive and
progressive transportation solutions and especially 580 in the field of railway transport.
It has an experience of more than 80 years in the said industry and boasts of a global
presence in more than 40 countries. Amongst several auto rack components, cable and
chain securement systems are a container securement locks developed by plaintiff No.
1, i.e. the automatic twist locks (ATLs). The plaintiffs' ATLs are used to secure
containers to railcars and to fit all ISO corner castings. The novel constructional
features of the plaintiffs' ATLs is a result of years of research and development which
has involved investment of tremendous amounts of skill, labour of the engineers and
experts of plaintiff No. 1. The intellectual rights in these ATLs including his drawings
vests solely with plaintiff No. 1. He is entitled to enjoy all such exclusive rights under
Section 14 of the Copyright Act, 1957 (hereinafter referred to as the 'Copyright Act').
4. The plaintiff No. 1 has been granted a patent for its ATLs in the USA. Plaintiff No. 2
has also applied for a patent for its ATLs in India under Patent Application No.
1922/DEL/2007 dated 28.08.2006 which is currently pending.

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5. The two fundamental constructional features of the proprietary drawings of ATLs of
plaintiff No. 1 comprise of (i) a uniquely configures shaft member for receiving springs
of various types/material and (ii) spiral torsional springs that are made of tempered
steel. All these features which are illustrated in the drawings of plaintiff No. 1 are
proprietary to plaintiff No. 1 who alone is the owner of copyright in such original
drawings/artistic work. Plaintiff No. 2 is the exclusive licensee of plaintiff No. 1 for ATLs
in the territory of India. Plaintiff No. 2 is authorized to manufacture, reproduce, sell,
offer for sale these ATLs based on the proprietary drawings of plaintiff No. 1. The fact
that plaintiff No. 2 is the licensee of plaintiff No. 1 has been communicated to the
Ministry of Railways, Research Design and Standard Organisation (RSDO) (defendant
No. 2). In September 1997, the Container Corporation of India (CONCOR) selected the
plaintiffs' ATLs conforming to drawings No. CONTR-9405-S-21 (fitment details of the
plaintiffs' ATLs) which have been used by the Indian Railways in all its containers. The
RITES (defendant No. 3) was assigned the task of carrying out 'vendor approval' for the
ATLs of plaintiff No. 2 but now the responsibility has been taken over by defendant No.
2. Once defendant No. 2 took over this responsibility, the approval had been granted by
defendant No. 2 in accordance with the 'Guidelines for Multisourcing of Automatic Twist
Lock' (hereinafter referred to as the Multisourcing Guidelines) issued by defendant No. 2
in the year 2011. The RITES has also carried out trials of ATLs of various other
companies who have devised their own proprietary drawings for such ATLs. The ATLs of
plaintiff No. 1, licensed to plaintiff No. 2, was also tested by RITES. On 18.05.2012,
defendant No. 2 conveyed its approval to plaintiff No. 2 for supply of plaintiffs' ATLs to
RITES in accordance with the Multisourcing Guidelines. This has made plaintiff No. 2 an
approved vendor for ATLs. The quality assurance plan approved by defendants No. 2 &
3 is also a part of the record. Till the date of filing of the suit (2014), no other supplier
except the plaintiff has been approved by defendants No. 2 & 3/Indian Railway for the
supply of ATLs.
6 . Defendant No. 1 (A.D. Electro Steel Company Pvt. Ltd.) is engaged in the
manufacture and supply of container securement locks. Defendant No. 1 is not a
licensee of the ATLs of the plaintiff or of the spare parts of ATLs of the plaintiff. As per
the information of the plaintiff, defendant No. 1 till the filing of the suit has not been
approved as a vendor by defendant No. 2 for supply of securement locks. In the year
2009, defendant No. 1 first attempted to infringe upon the copyright of the plaintiff in
their ATLs when it sought to supply ATLs conforming to the plaintiffs' drawings to the
Indian Railways. On 12.08.2009, the Northern Railways had raised an order upon
defendant No. 1 for supply of ATLs conforming to Holland drawings. Such an order
could not have been completed without defendant No. 1 infringing upon the original
proprietary drawings of the plaintiffs. The plaintiffs raised an objection both before the
defendant No. 1 and the authorities of the Indian Railways. The General Manager,
Northern Railways on 12.10.2009 wrote to defendant No. 3 seeking information as to
whether defendant No. 1 was an approved vendor or not. On 27.10.2009, defendant No.
3 wrote back to the General Manager, Northern Railways stating that plaintiff No. 2 is
only an approved source for the supply of ATLs; defendant No. 1 has so far not been
approved for supply of ATLs. Defendant No. 1 has deliberately misled the Railways that
it has been approved by the RITES when it has not been done so. Pursuant to a tender
floated by Southern Railways for which defendant No. 1 had made a bid, a purchase
order dated 10.12.2013 was placed upon defendant No. 1 for the supply of the said
ATLs. To execute the order of Southern Railways, defendant No. 1 would have
necessarily supplied the ATLs in conformity with the original proprietary drawings of the
plaintiffs' ATLs which would have amounted to an infringement of copyright of the
plaintiffs. An objection was raised by the plaintiff. It was learnt that defendant No. 1 in
July has also procured a purchase order from East Coast Railway for supply of these

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ATLs which were conforming to the original drawings of the plaintiffs. A clarification
was thereafter issued by the Southern Railways qua the purchase order of the defendant
clarifying and directing the defendant to follow the Multisourcing Guidelines. Defendant
No. 1 has bid for other tenders of the Railways and to fulfil these tenders, he would
necessarily have to infringe upon the original drawings of the plaintiffs. It is reiterated
that the plaintiffs' original proprietary drawings of ATLs and its spare parts constitute an
artistic work under Section 13 read with Section 2 (c) of the Copyright Act. The
unauthorized, illegal and unlicensed use of such proprietary drawings of the plaintiffs
amounts to an infringement of his copyright. Present suit has accordingly been filed.
7. Defendant No. 1 alone had been arrayed as a party; thereafter with the intervention
of the Court, on 19.03.2014, the RSDO, RITES and the Ministry of Railways were also
directed to be made parties. They have been impleaded as defendants No. 2, 3 & 4
respectively. Amended memo of parties is on record.
8. Defendant No. 1 has denied the averments made in the plaint. His defence is that the
plaintiffs have no right of the said drawings as they are in public domain and have been
issued by defendant No. 2. The plaintiffs in fact never challenged the tenders floated by
the Railways for the supply of ATLs conforming to the drawings of the plaintiffs; the
plaintiffs cannot claim any monopolstic right on the said drawings. No copyright
subsists in any design which is capable of being registered under the provisions of
Design Act; the copyright in any design which is capable of being registered ceases as
soon as the article to which the design has been applied has been reproduced more
than 50 times which is so in the instant case. The design of the plaintiff was capable of
being registered under the Design Act; it has not been done so; thus the alleged
copyright in the said design has even otherwise ceased. Defendant No. 1 from time to
time has been participating in the tenders floated by the Ministry of Railways for supply
of ATLs. His participation in these tenders is since the year 2009. The drawings and
guidelines for manufacturer and supply of ATLs are provided by defendant No. 2 to
defendant No. 1 on a request made by defendant No. 1 to defendant No. 2. This tender
inter-alia contains an item description of ATL devices specifying the drawing numbers
which are provided by defendant No. 2 on the basis of which specifications and final
drawings have to be prepared by defendant No. 1 and to be submitted to defendant No.
2 for its approval. In order to meet the specifications and drawings given by defendant
No. 2, the drawings prepared by defendant No. 1 of the assembled devices are more or
less the same and in compliance with the specifications and drawings of defendant No.
2. They are in conformity and in compliance with the specifications of the drawings
provided by defendant No. 2.
9 . Defendant No. 2 provides the necessary drawings which drawings numbers are
mentioned by the Railways in their tenders along with the Guidelines for the supply of
ATL devices. These Guidelines in fact specify that in order to maintain the public and
pricing policy, at least 80% of the demand should be covered invariably from the
registered/approved suppliers, the balance quantity upto 20% should be covered from
unregistered firms whose capacity could not be tried by an educational order earlier but
whose offers are competitive and prima-facie the Railway is satisfied that they are
capable of executing the order. The Railways have floated tenders for supply of ATLs
keeping in mind the public policy. With this policy in mind, the Railways offered 20% of
the demand to various unregistered firms including defendant No. 1 from time to time.
This discretion of such an offer is wholly upon the Railways and it is on their approval
that defendant No. 1 has been supplying these ATL devices to the Railways. Defendant
No. 1 has been participating in these tenders for supply of ATL devices since the year
2009 along with the plaintiffs. The plaintiff was at all material point of time aware of

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these orders which were being placed upon defendant No. 1. The plaintiffs inspite of
being aware of the specifications, character and dimensions of the ATL device supplied
by defendant No. 1 have never raised any objection till the filing of the suit. In 2011,
defendant No. 1 submitted his drawings for the manufacture of its ATLs to defendant
No. 2 for approval. He was registered as a registered supplier. These ATLs are since
being supplied by defendant No. 1 to defendant No. 2. Defendant No. 2 in 2014 had
given a letter to defendant No. 1 asking him to supply three wagons of ATL devices for
experimental running and there is every possibility that a final approval would be
granted to defendant No. 1. Copy of the letter dated 23.08.2014 exchanged between
defendants No. 1 & 2 is also on record. It is denied that the plaintiff has made any
novel constructional features of the ATLs including its drawings as has been alleged by
him. The claim of plaintiff No. 1 is barred under the Design Act and the Patent Act as
the said drawings have been provided by defendant No. 2 to the Ministry of Railways for
public purpose. The drawings prepared by defendant No. 1 are from the drawings
provided by defendant No. 2 and thus cannot be termed as 'infringement' committed by
defendant No. 1 of any copyright of the plaintiffs. It is denied that plaintiff No. 1 is the
owner of such drawings as has been alleged. The drawings of defendant No. 1 have
been approved by defendant No. 2 for which reason defendant No. 2 had in the last
letter of 2014 asked defendant No. 1 to be tested by defendant No. 1 for a period of
three months. The defendant has committed no infringement of the drawings of the
plaintiff. These drawings are readily available for reference by purchasing a publication
for a sum of Rs. 2,300/-; such a publication has been done by the Indian Railways to
encourage further innovation and competition in the space of ATLs.
10. Defendants No. 2 & 4 i.e. RSDO and Ministry of Railways have filed a common
written statement. Their submission is that the Railways have no role in the
manufacture of this product. It is stated that drawing No. CONTR-9405-S/21 details the
interfacing of the plaintiffs ATL's with the container flat wagons; it does not detail the
internal components of plaintiffs' product. The quality assurance plan of the plaintiffs
was acknowledged and returned with a mark 'noted for record only'. It was not
approved by defendant No. 2 as has been claimed by the plaintiffs. The plaintiff has
been declared as a 'developed source' of ATL devices on the Indian Railways. Defendant
No. 2 has been writing to the Zonal Railways to re-direct any source to them so that
defendant No. 2 can engage with them for their development in accordance with the
structural multisourcing regime. A series of correspondence have in fact been addressed
by defendant No. 2 asking the Zonal Railways to direct other firms for development and
multisourcing. The letter dated 27.10.2009 issued by defendant No. 3 indicates that
defendant No. 1 is not an approved source for ATLs. In para 36, it has been stated that
efforts for multisourcing have been made by defendant No. 2 to develop newer vendors
and such informations are given to the Zonal Railways/stake holders. These
communications do not stop the Zonal Railways from procuring any item from other
sources known to them. In fact defendant No. 2 also advised the Zonal Railways to
direct these sources to defendant No. 2 for consideration under the multisourcing
guidelines. It is denied that any proprietary drawing of the plaintiffs' ATL have been
published by defendant No. 2. Defendant No. 2 has incorporated the interfacing of the
plaintiffs' product with the container wagons design i.e. owned by defendant No. 2 i.e.
drawing No. CONTR-9405-S/21. This interfacing does not publish any detail of the
plaintiffs' internal components. In fact drawing No. SB-71350/S is available on the
website of plaintiff No. 2 itself.
11. Defendant No. 3 (RITES)'s defense is that the only role attributed to him was to
grant an approval which it did for a period of two years; thereafter, the process of
vendor approval was taken over by defendant No. 2 i.e. w.e.f August, 2010 who has

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since then been dealing with all approvals in respect of ATLs. It is not denied that
defendant No. 3 had written a letter (dated 27.10.2009) to the General Manager,
Northern Railways informing them that defendant No. 1 was not an approved source for
supply of ATLs.
12. Replication has been filed by the plaintiff to the respective written statements. The
averments contained in the plaint have been reiterated. It is reiterated that the claim
made by defendant No. 1 that the drawings of the plaintiffs' ATLs are in public domain
is false. Defendants No. 2 to 4 have specifically stated that drawing No. CONTR-9405-
S/21 details only the interfacing of the plaintiffs' ATLs with the Indian Railways; the
drawing does not detail the internal components of the plaintiffs' ATLs.
13. In the course of these proceedings, defendant No. 1 had filed an additional affidavit
dated 06.03.2017 wherein it is stated that drawing No. CONTR-9405-S/21 of the ATLs
was provided by the Railway Authorities in the year 2007-2008; based on these details
and specifications, defendant No. 1 had designed the ATLs.
14. On behalf of the plaintiffs, arguments have been addressed by Mr. Jai Sai Deepak,
Advocate. Contention is that the plaintiff is the owner of the copyright in the drawings
of the ATLs'; it is an artistic work within the meaning of Section 2 (c) read with Section
13 of the Copyright Act with the plaintiffs' right to convert a two dimensional artistic
work into a three dimensional constructions. Plaintiff No. 1 is the exclusive owner of
this copyright and plaintiff No. 2 is his exclusive licensee. Defendant No. 1 in para 9 (v)
of the written statement has in fact admitted that he is copying the drawings of the
plaintiff; his justification is that this copyright in the drawings has ceased in view of the
provisions of Section 15 (2) of the Copyright Act; submission being that it is only an
aesthetic feature which can be registered under Section 2 (d) of the Design Act; the
functional features are not capable of a registration under the Design Act. To support
this proposition, reliance has been placed upon MANU/DE/1254/2013 : 2013 (55) PTC
61 Mohan Lal v. Sona Paint and Hardwares as also another judgment of a Bench of this
Court reported as MANU/DE/0185/1999 : 1999 PTC 36 (DEL) Escorts Construction
Equipment v. Action Construction Equipment,. Further submission being that the fact
that plaintiff No. 1 has been granted a patent by USA for these ATLs prima-facie
demonstrates that the same have functional features; the exclusive right to reproduce
these drawings into a 3-D object vests with the plaintiffs. The drawings of the plaintiffs
are not in public domain as defendant No. 2 has admitted that no drawings have been
given by defendant No. 2 to defendant No. 1. Moreover, drawing No. CONTR-9405-S/21
details only the interfacing of the plaintiffs' ATL and does not detail the internal
components. The Multisourcing Guidelines which regulate the grant of approval deals
with the physical characteristics of the ATLs; the Multisourcing Guidelines do not permit
defendant No. 1 to infringe upon the drawings of the plaintiffs; merely because the
plaintiffs' drawings are used as reference point or quoted in the tender so prescribed by
defendant No. 2 does not take away the copyright of the plaintiff; they do not come into
public domain.
15. Arguments have been refuted. The contesting defendant is in fact defendant No. 1.
His submission is that drawing No. CONTR-9405-S/21 has in fact been uploaded by
defendant No. 2 and given to defendant No. 1 who has conformity features of the said
drawings; it does not amount to an infringement as these drawings are now in public
domain. It is further pointed out that shape, configuration and pattern detailed in the
drawings fall within the meaning 'design' under Section 2 (d) of the Design Act and
necessarily have to be registered. Under Section 15 (2) of the Copyright Act, a
copyright in any design which is capable of being registered under the Design Act but it

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has not been registered will cease where the article has been reproduced 50 times. The
allegation of the plaintiff that these drawings are the original artistic work of the
plaintiff is wrong. The plaint is also lacking in material particulars. The allegations in
the plaint are vague with no details, numbers and no marks of identification are
disclosed as to what drawings, information, know-how or secrets belonged to plaintiff
No. 2 and which have allegedly been infringed by defendant No. 1; the so called alleged
intellectual properties are not identifiable. It is further pointed out that defendant No. 1
cannot be restrained from carrying on a lawful trade; the plaintiff was well aware of the
fact that defendant No. 1 has entered into this business since the year 2009; he has
chosen to file a suit only in 2015 i.e. after almost six years. He has acquiesced the
approval to defendant No. 1 by defendant No. 2. Defendant No. 1 has been making
supplies of ATLs to the Indian Railways and to various Zonal Railways and the last letter
dated 28.03.2014 issued by the Ministry of Railways in favour of defendant No. 1 clearly
shows that he has been directed to supply three wagons set of ATLs to CONCOR for a
study; the various other orders which have been placed upon him also support his
submission that in fact defendant No. 1 has almost reached the stage of having become
an approved vendor. The Multisourcing Guidelines also encourage other vendors to
participate in this venture; it cannot be the monopoly of plaintiff No. 2 alone; it is
pointed out that ATLs which were original priced at Rs. 12,000/- has now been reduced
to a figure of Rs. 4,900/- and this is all because of the competition in the market where
defendant No. 1 is only a small fish. This is a healthy competition which should be
encouraged and this is clear from the Multisourcing Guidelines which envisage such a
situation. Learned counsel for defendant No. 1 in support of his submission has placed
reliance upon a judgment of a Bench of this Court reported as MANU/DE/0900/2002 :
2002 (25) PTC 327 (Del) Polymer Papers Ltd. v. Gurmit Singh & Others as also another
judgment of the Division Bench of this Court reported as MANU/DE/0647/2009 : 2009
(40) PTC 519 (Del) Microfibres Inc. v. Girdhar & Co. & Anr. Submission is that the
plaintiffs have failed to make out any prima-facie case in their favour. The application is
liable to be dismissed.
16. Arguments have been heard. Record has been perused.
17. Plaintiff No. 1 on 03.02.2009 was granted a patent qua his container securement
device i.e. the automatic twisted lock (ATL). This is evident from the patent application
of plaintiff No. 1 which has been placed on record. On 11.7.2006 plaintiff Nos. 1 and 2
had entered into an agreement by virtue of which plaintiff No. 2 became the exclusive
licensee of plaintiff No. 1 in the territory of India. The patent application filed by
plaintiff No. 2 seeking a grant of patent in his favour is pending before the Competent
Authority since 28.8.2006; he has not yet been granted a patent. Drawing No. CONTR-
9405-S-21 is a copy of the drawing of plaintiff No. 1's ATL. This drawing has been filed
at serial No. 4 in the list of documents of the plaintiff. The fact that this drawing
number has been uploaded by defendant No. 2 and in fact had been passed on to
defendant No. 1 on the basis of which defendant No. 1 had prepared his drawing and
the ATL which he was manufacturing for the Railway is not in dispute. The
supplementary affidavit of defendant No. 1 dated 06.3.2007 specially so states. This
affidavit of defendant No. 1 states that drawing No. CONTR- 9405-S-21 of the ATL has
been provided to him by the Railway Authorities in the year 2007-08 and based on the
details and specification contained in the said drawing defendant No. 1 designed his
ATL with all its specifications. The fact that this drawing had been given to defendant
No. 1 as way back as in the year 2007-08 by defendant No. 2 is not disputed. There is
no opposition to this affidavit dated 21.01.2017 which has been taken on record and
which was in compliance of the directions contained in the order dated 21.3.2017. In
fact this has always been the stand of defendant No. 1 who has stated that it was on the

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basis of this drawing which has been given to him by defendant No. 2 that defendant
No. 1 had made his own drawing and manufactured his ATLs which were then being
supplied to the Railway since the year 2009. The fact that ATLs had been manufactured
and were supplied by defendant No. 1 to various departments of the Indian Railways
including the Zonal Railways since the year 2009 is evident from the documents of the
defendant. Various purchase orders have been placed on record. The purchase order
dated 26.9.2011 of the East Cost Railway shows that ALTs had been supplied by
defendant No. 1 to the East Cost Railway. Purchase order dated 06.6.2013 issued by the
Indian Railways, purchase order dated 19.7.2013 issued by the South Western Railway
all evidence this same position that orders for manufacture and supply of ATLs were
placed by the Railways upon defendant No. 1 pursuant to which ATLs were
manufactured and supplied. These purchase orders were followed by subsequent orders
dated 23.9.2013 issued by the Southern Railways in favour of the defendant followed by
another purchase order of the Southern Railway dated 10.12.2013. Letter dated
28.3.2014 issued by the Ministry of Railway in favour of defendant No. 1 had advised
him to supply three wagons supply of ATLs to CONCOR for purposes of a case study. On
10.02.2014, defendant No. 2 (RSDO), who was the certified body to grant approval to a
party for the quality of his product had granted a certificate of approval to defendant
No. 1 which was for a period of three years i.e. up to 10.02.2017. The issuance of this
communication by defendant No. 1 details the approval granted by defendant No. 2 in
favour of defendant No. 1 subject to terms and conditions annexed along with this
document. These various purchase orders ranging from the year 2011 all show that the
Indian Railways under the Ministry of Railway as also the East Coast Railways, South
Western Railways and Southern Railways had placed several orders on defendant No. 1
for supply of ATLs which purchase orders had been completed meaning thereby it was
to the satisfaction of the Railways that these ATLs which had been manufactured by
defendant No. 1 had been accepted by the Railways. The letter dated 20.01.2014 sent
by the Ministry of Railway to defendant No. 1 also reflects the intent of the Government
to accord to defendant No. 1 the status of a regular supplier of his ATL's.
18. The fact that the drawing of the plaintiff No. CONTR- 9405-S-21 has been handed
over by defendant No. 2 to defendant No. 1 is also not in dispute. This document is thus
in public domain. Pictorial representation of the drawing of both plaintiff and the
defendant has also been perused. To the naked eye, the drawings appear to be almost
similar and this is also the stand adopted by defendant No. 1 who has stated that it was
on the basis of these drawings which had been given to him by defendant No. 2 that
defendant No. 1 had prepared his specifications and drawings and assembled his device
which was in compliance of the specifications of the drawings approved by defendant
No. 2.
19. The fact that these supplies had been made by defendant No. 1 to various branches
of the Railways since 2009 which has been specifically stated in the written statement of
defendant No. 1 to which there is no denial. This suit has been filed in March, 2014.
There appears to be no explanation as to why the plaintiff did not take any action prior
in time if he was really aggrieved by the fact that his own drawings upon which he had
a proprietary right has been infringed upon by defendant No. 1; why no action has been
taken for such a long period has not been answered.
20. Section 2(d) of the Design Act reads as follows:
"2(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

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 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 (14of 1957)."
21. The shape, configuration, pattern and composition of the lines mentioned in the
pictorial drawing of the plaintiff prima facie fall within the definition of "design" as
contained in Section 2(d) of the Designs Act. This drawing (CONTR-9405-S-21) cannot
simpliciter be termed as a mechanical device to get the benefit of being excluded from
Section 2(d) of the said Act. The plaintiff has admittedly not made any effort to get his
design registered.
22. Section 15(2) of the Copyright Act reads as under:
"15. Special provision regarding copyright in designs registered or capable of
being registered under the Designs Act, 2000 (16 of 2000)-
(1)........
(2) Copyright in any design, which is capable of being registered under
the Designs Act, 1911 (2 of 1911), but which has not been so
registered, shall cease as soon as any article to which the design has
been applied has been reproduced more than fifty times by an
industrial process by the owner of the copyright, or, with his licence,
by any other person."
23. Since the design in the instant case which was capable of being registered under
the Designs Act and which has not been registered, it would lose its copyright, if any,
since admittedly this article has been reproduced more than 15 times by an industrial
process. Reliance upon Section 15(2) of the said Act by defendant No. 1 appears prima
facie to be in his favour.
24. The Multi Sourcing Guidelines of defendant No. 2 are also on record. This is an
admitted document. Along with this Guidelines annexure II/4-21 which is a copy of the
letter dated 27.01.1979 is also on record. This document is admitted. This document is
a communication inter se the various departments of the Railway Board and the Indian
Railways wherein instructions are given that even unregistered firms should furnish
their quotations in order that supply can be placed upon them for the supply of railway
equipments; their capacity can be verified by deputing representatives of the
Department for the said purpose. This circular in fact states that 80% of the demand
should be covered invariably by a registered/approved supplier but the balance quantity
of 20% should be covered from unregistered firms whose capacity could not be tried by
an educational order earlier but whose offers are competitive and prima facie the
Railway is satisfied that they are capable of executing the order. This is also the stand
adopted by defendant No. 1. In his written statement this circular has been relied upon
to substantiate this defence that this circular is in fact an instruction to control healthy
pricing and to remove the monopoly of bother big giants like the plaintiff. The fact that
after participation of defendant No. 1 in the fray the original price of an ATL which was
priced at Rs. 12,000/- per lock has been reduced to Rs. 4900/-. This is not in dispute.
This reduction is primarily because of the healthy competition which has been created

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by defendant No. 1. The last order placed upon defendant No. 1 by defendant No. 2
through its communication dated 28.3.2014 substantiates the submission of defendant
No. 1 that a trial testing is going on his product; the fact that earlier orders had been
placed upon him and they had been satisfactorily implemented qua various Zonal
Departments of the Railways also not being in dispute, the submission of defendant No.
1 that he is at the stage of getting a status of an "approved vendor" cannot be
discounted. The fact that he had been granted a certificate of approval by defendant No.
2 on 10.02.2014 is also not in dispute. This document is on record. He is a registered
supplier. Defendant No. 1 who is carrying out his trade lawfully cannot be restrained
from doing so. Merely because he is in competition with the plaintiff does not make out
a case to return a finding that the petitioner having a patent under the US law is
automatically entitled to the benefit of the same for which an application is admittedly
pending since the year 2006.
25. The plaintiffs have failed to show that they are the exclusive owners of this drawing
CONTR- 9405-S-21 which they are using for the purpose of manufacturing their ATLs.
There claim to be the originators of the said ATLs is destroyed by the fact that it is this
drawing which has been used by defendant No. 2 as a benchmark to allow other
competitors to come into the market and to make ATLs which would be in the
conformity and as per the specifications laid down in this drawing. This drawing has
entered the public domain; it cannot be the proprietary right of the plaintiffs. Heavy
reliance placed by the plaintiff upon the stand of defendant Nos. 2 to 4 that the drawing
along has been uploaded and not its internal component is neither here and nor there.
This statement of the plaintiff is vague; what are those internal components, know-
how; secrets which have been obtained by defendant No. 1 unauthorizedly has not been
detailed. The drawing No. CONTR- 9405-S-21 admittedly having been supplied by
defendant No. 2 to all persons, who wish to apply to bid for supply of ATLs to the
Railways, have to follow the design and pattern laid down in the said drawing. Such a
drawing would fall prima facie within the definition of Section 2(d) of the Designs Act
and was required to be registered. Admittedly the plaintiff has not applied for
registration under the Designs Act. Section 15(2) of the Copyright Act, at the cost of
repetition, comes to the aid of the defendant.
26. The Multi Sourcing Guidelines as discussed supra also permit unregistered owners
to participate in tenders floated by the Department and in fact defendant Nos. 2 to 4 in
their written statement have been crying hoarse hoping that the Zonal Railways would
redirect other suppliers to them in order that orders could be placed upon on such like
suppliers even if they are unregistered. Thus in terms of the Multi Sourcing Guidelines,
20% of such orders have to be placed upon such unregistered firms; this is to promote
a healthy competition and which exactly the Government has been following; as a result
the price index of the ATLs has been reduced considerably.
27. The plaintiffs have failed to make out a prima facie case in their favour; balance of
convenience is also not in their favour; irreparable loss and injury will be suffered by
the defendants in case defendant No. 1 is restrained from carrying on his trade.
28. Application is dismissed.
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