India: Dabur´s Design Contest In Hair Oil Packaging

Last Updated: 2 April 2009

Aggrieved by the dismissal of an application filed under Order 39 Rules 1 and 2 CPC, Dabur India Limited filed an appeal to the decision of the Ld. Single Judge of the Delhi High Court, in Dabur India Ltd. v. Amit Jain & Anr. {2009 (39) PTC 104 (Del.)}. Dabur claiming to be the fourth largest fast moving consumer goods (FMCG) company in India, and that they were in trade since 1884, filed this appeal in pursuance to the design registration in the packaging of its hair oil for the bottle and cap.

Among its various products, was being marketed as Dabur Amla Hair Oil. Dabur stated that besides vast sales in India, they had been exporting Dabur Amla Hair Oil to various countries since 1884. Marketed in plastic bottles shaped with a semi-circular shoulder with curvaceous back and front panel tapering into each other, The Design being unique, aesthetically novel and original was also registered under the Designs Act, 2000. The green cap used in relation to the bottle also had subsisting registration.

Dabur averred that the bottle was introduced for marketing its hair oil in the year 2000, prior to which Dabur Hair Oil was marketed in a glass bottles whose design was also registered. Dabur averred that substantial expenditure on advertisement and promotion of the Dabur Amla Hair Oil had been made. On account of prior adoption, long and continuous use, extensive advertising campaign and marketing network, enormous sales, Dabur had acquired goodwill and reputation in the market and the packaging came to be identified and associated exclusively with Dabur's goods among consumers belonging both to rural and semi-urban areas and townships. Dabur placed on record annual sales figures of the Dabur Amla Hair Oil and Dabur Jasmine Hair Oil to corroborate their ground.

In November 2005 Dabur found Amit Jain, the sole proprietor of M/s. Vinayak Industries, Delhi to be engaged in the manufacture and sale of Plus Jasmine Hair Oil and Tushar Amla Hair Oil in bottles and labels deceptively similar to that of Dabur'. The filed a suit in pursuance of alleging infringement action and moved to seek an interim injunction. A compromise was arrived at between the parties. The compromise included admissions made and undertaking given by the Defendants, acknowledging the validity of the Design Registration and undertook not to use the impugned trade dress, label, etc.

Dabur consequently learnt that Amit Jain had again started manufacturing and selling Plush Amla Hair Oil in plastic bottles which according to them was obvious and fraudulent infringement of the DABUR Amla Hair Oil and cap design. Accordingly, a fresh Suit was filed by Dabur seeking a decree of permanent injunction, restraining infringement and passing off of the design of Dabur .The Single Judge opined that a case of ex parte ad interim injunction had been made out and an advocate as Local Commissioner to seize the infringing goods/bottles as well as moulds, make an inventory thereof and release the same to Amit Jain on superdari.

An application seeking the vacation of the ex parte ad interim injunction order was filed, which was vacated. . The learned Single Judge after examining samples of bottles used by Dabur as well as by Amit Jain concluded that the bottle used by Amit Jain were of different dimension or shape from that of Dabur's. The shape of the bottle used by Dabur was also not termed to be new. An appeal was filed to the order but the SLP was also dismissed by the Supreme Court.

The counsel for Dabur submitted that the registration in respect of both the bottle and the cap in their favour conferred the statutory right to exclusive use of the design in terms of Section 11 of the Designs Act, 2000. They also propounded that fraudulent imitation of the design constituted infringement under Section 22 of the Act, and an injunction should follow in terms of Section 22 (1A) and 22 (1B) of the Act.

The principle of estoppel was also brought to the fore to contend that the undertaking given by Amit Jain in the earlier suit before this Court would estop him from using the said design either by himself or through any proprietary concern of his like M/s. V.N.Cosmetics. Amit Jain was said to be precluded from imitating the said design and exploiting it for commercial purposes. Amit Jain averred that he had also obtained the registration of its bottle design on 9th November 2006, which was countered by Dabur by pointing out that cancellation of the said registration in terms of the Act and that the subsequent design registration is in any event not a defence to an infringement of a prior registered design.

On behalf of Amit Jain, it was submitted that the bottles now being used by it for which an injunction is sought by Dabur did not form the subject matter of the earlier Suit. The seizures made by the Local Commissioner in the instant case is not of the infringing bottles but of a new bottle being used by Amit Jain which is different from the one which forms the subject matter of the earlier Suit. It was contended that the design of the bottle or the cap of used by Dabur was neither new nor novel, and therefore was not entitled to be granted any registration under the Act. It was contended that the cap of the bottle did not have its own commercial identity in the market and therefore did not qualify to be an article under the Designs Act. It was contended that the right of a Plaintiff in a registered design extended only to the extent of novelty claimed in a registered design. Moreover the registration of Dabur's bottles was said to be devoid of any special unique feature and therefore no case could be said to have been made out for infringement.

The Court stated that one of the first questions to be considered was whether the undertaking given by Amit Jain in the earlier Suit act as an estoppel and restraining them from using bottles and caps deceptively similar to that of Dabur's. Referring to precedents in the matter, the Court declared that if Amit Jain' plea were to be accepted, the same would render meaningless the undertaking given earlier by them to this Court whereby he accepted the novelty of the Dabur's design.

The law in regard to similarity which constitutes infringement was also discussed by the Court. The Court examining note of the bottles and caps in contention was of the prima facie view that the bottles and caps used by Amit Jain and co-defendants were deceptively similar to that of Dabur. The plea of an absence of sufficient novelty was also answered, to which the Court stated that the plea was no longer available in view of the compromise order arrived at in the earlier suit.

For the purpose of considering the plea of Dabur for grant of an interim injunction pending the final determination of the issue in the suit, the Court opined that it was not necessary to take a final view on the plea of Amit Jain that the registration granted of the design in favour of the Appellant was invalid. The Court stated that this is would be taken up at the statutory proceedings instituted by Amit Jain raising the said for challenge.

The Court opined that the learned Single Judge, seemed to have erred in concluding that Dabur' design was devoid of novelty or being new. The Court opined that the compromise order in the earlier Suit could not be diluted or ignored by this Court particularly when an undertaking expressly recognizing the validity of the design was endorsed. The Court stated that there was no occasion for the Single Judge to reopen the issue which had been decided by the earlier Suit. Also it was stated that no occasion for the learned Single Judge to give a finding that the design of Amit Jain's bottle was different from the registered design of Dabur in question. The mere fact of a subsequent registration in favour of Amit Jain was stated not to be a not a defence in an action for infringement.

It was also contended by Amit Jain that the bottles seized by the Local Commissioner in the instant case were different from the bottles in respect of which the compromise was recorded in the earlier Suit. In view of the report of the Commissioner having been placed on record, the Court noted that the same had not been objected to; the Court reiterated its satisfaction of a prima facie case having been made out. This case was said to be beyond one where the award of damages would have been sufficient to compensate Dabur for the infringement of its registered designs. The Court stated that an element of loss of goodwill was ingrained in allowing the infringement to continue and rejected the plea.

Amit Jain submitted that the very design in respect of which the registration had been granted in favour of Dabur was already in public domain and had been published earlier. Reliance was placed upon Designs registered at the US Patent Office to contend that there was no novelty as far as Dabur' designs were concerned. The Court noted that reliance upon a design registered in the US could not satisfy the requirements of Section 19 of the present Act which specifies the ground on which cancellation can be granted.

The Court also noted that in absence of a definition for "publication", mere publication of design specifications, drawings and/or demonstrations by the Patent Office of any foreign country, in connection with an application for registration, would not, in itself, amount to publication that would render a design registered in India liable to cancellation. The Court opined that registration in the U.S in respect of similar bottles and caps cannot come in the way of Dabur's seeking an order restraining Amit Jain from infringing its registered design. In this light, the injunction was restored until the disposal of the Suit and costs amounting to Rs.20, 000/- were ordered to be paid.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

 
In association with
Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions