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.

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