The Single Judge Bench of the Delhi High Court, in the
case of OK Play India Ltd. V. Mayank Aggarwal &
Ors., has ruled in favor of Mayank Aggarwal and other
Defendants by vacating the previous ex parte ad interim injunction
granted to Ok Play India Ltd.
In the present case, the Hon'ble Court analyzed the relation
between the Copyright Act and the Design Act, and ordered that the
Artistic works which are related to Design can only be protected
under the Designs Act and not under the Copyright Act.
The Plaintiff, OK Play India Ltd., is a leading manufacturer and
distributor of quality products made using plastic moulding
technology including toys, school furniture and playground
equipment. The Plaintiff is also the registered proprietor of the
trademark 'OK PLAY' since August 25, 2005.
The Plaintiff has sued eight Defendants namely Playwell Impex
Private Limited, Mr. Mayank Aggarwal, Ms. Meenakshi Gupta, Mr.
Pawan Kumar Gupta, Mr. Vishal Gupta, Mr. Darshan Singh Rawat, R.P.
Associates and Funko India who are involved in manufacture and
distribution of similar products. The Plaintiff claimed relief of
permanent injunction to restrain the Defendants from infringing its
copyright, common law rights in designs and passing off of
deceptively similar products.
The ex parte ad interim injunction was granted to the Plaintiff
vide order dated August 7, 2015 and the goods, of the Defendant,
were seized by the Court Commissioner appointed vide the same
Contentions of the Plaintiff
That the products of Plaintiff are
unique and conceptualized individually which involves studying the
market, preparation of the drawings, coming up with a feasibility
report, new color scheme, dimensions, etc.
That the Defendant Playwell Impex
Private Limited is engaged in the business of manufacture,
distribution and sale of toys in collusion with the other
Defendants including R.P. Associates who was earlier the
distributor of Plaintiff's products and Darshan Singh Rawat,
who is an ex-employee of the Plaintiff. The Defendant Playwell
Impex Private Limited 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
That the toys manufactured and sold
by the Defendants under the brand FUNKO are a substantial
re-production and colorable imitation of the products of the
There is a clear distinction between
an original artistic work and a design derived from it for
industrial application on a product. The original artistic work
which may be used to industrially produce the designed article
would fall within the meaning of the artistic work defined under
Section 2(c) of the Copyright Act and would be entitled to
copyright protection as defined under Section 2(d) of the Designs
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.
Contentions of the Defendant
That the drawing in which the
Plaintiff claims a copyright does not constitute a design within
the meaning of Section 2(d) of the Design Act and was thus, not
capable of being registered under the Designs Act.
That the Plaintiff has no right to
claim protection of design without any registration.
That the Plaintiff's toys which
are being manufactured since the year 1992, are not novel and
similar products are available in the market for ages.
That no interim injunction should be
granted at this stage when infringement is not proved.
Observation of the Court
That if a design is applied to an
article and re-produced for more than 50 times by industrial
process after making a drawing then the drawing cannot be treated
disjunctively from the said design and the copyright cannot be
vested in such drawing. Section 15(2) of the Copyright Act
expressly ends the said protection.
That the Plaintiff's products are
manufactured more than 50 times by industrial process and their
designs are registrable under the Designs Act. The protection of a
design is for a maximum period of 15 years which has lapsed for the
Plaintiff. No protection on the basis of copyright can be given to
the Plaintiff at this stage.
The application of the Plaintiff for interim relief is
dismissed. The applications of the Defendants for vacation of the
ex parte order and return of its goods are allowed. The goods
seized by the Court Commissioner/s be forthwith released to the
Defendant Playwell Impex Private Limited.
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This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
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