In a recent ongoing battle between two packaging companies, the Indore High Court, on 01.09.2021, finally passed a judgement in favour of the Defendants. The Defendants in this case were represented by Adv. Neeraj Grover assisted by Abhijeet Deshmukh, Meenakshi Orga and Suvanagana Agarwal of Khurana & Khurana- IP Advocates and Attorneys.
It is was the Plaintiff's case that they had been established in the year 1985 and since then involved in the business of manufacturing and selling rigid plastic packaging material including manufacturing of injection moulded containers for lubes, paints etc. The Plaintiff also claimed that they have engaged in research and development activities. They say that they had come to know in the month of September-October, 2019, that the Defendant had adopted the exact similar design as that of the Plaintiff's- both lid and container, and had been manufacturing and supplying them to edible oil manufacturers.
The Plaintiff counsel attempted to make their case by drawing the attention of the cPurt toward various aspects of the design of the lid and container.
The Defendant on the other hand argued that they too were an entity that manufactured pet bottles, pet jars, pharma bottles, plastic jar, PET bottle, plastic cap, cosmetic bottles etc. however, the defendants are not engaged in the manufacturing of the containers and lids in question. They were instead purchasing the same from a third party. The defendant had also, further, raised an objection regarding the validity of both the impugned designs and as such the plaintiff has no locus to allege infringement of its designs by the defendant in as much as both the designs are invalid and not capable of being registered. They further submitted that the purpose of the Design Act is to protect novel designs which have been devised to be applied to articles manufactured or to be manufactured and marketed commercially and it is a well settled law that the test of novelty is the eyes alone by placing the two designs side by side and see whether the one for which novelty is claimed is new or not. And, hence so far as the impugned designs of the plaintiff are concerned, they are neither new nor original as they have already been invented and registered by other manufacturers outside India and/or in India.
The defendant counsel had also gotten a Design Invalidation Search done in respect of impugned Design No.1and 2 i.e. design No.299039 and 299041-for the container and the lid for the container, and vide its report dated 29.2.2020, IIPRD, which provides complete and Patent Analytics including due diligence of Intellectual Property Assets, has clearly enumerated and given details of the designs similar to the impugned designs which have already been registered and/or application for registration filed all over the world, prior to the date of filing by the plaintiff i.e. prior to 01.11.2017. The defendant counsel even drew the Court's attention towards the plaintiff's own publication on its own website wherein similar designs of the containers have been prior published and made available to the public at large starting from 09.8.2009, whereas the plaintiff filed for registration its impugned designs only on 01.11.2017.
In rebuttal the Plaintiff counsel submitted that until and unless the designs are not cancelled by the Controller the defendant cannot claim that the designs are not noble or original or that it has been disclosed to public prior to the filing date and thus the objections are of no avail. They further submitted that Counsel has further submitted that in the counter affidavit the plaintiff company have traversed the contentions made by the defendant in its reply to the application for temporary injunction and none of the contentions raised by the defendant are admitted by the plaintiff. Thus, it is submitted that the defendant be restrained from manufacturing and selling the container and the lid in question.
The Court therefore held that:
Owing to the evidence placed on record with regard to prior publication, the Court did not find any prima facie evidence in favour of the Plaintiff, nor did they find the balance of convenience in their favour, especially when the defendant's primary objection is that it is not the manufacturer of the impugned container and the lid of the container, and hence, the court rejected the application for a temporary injunction.
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