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Mandev Tubes Pvt Ltd A Private Limited Company v. Kalpesh R. Jain and Ors. - (High Court of Bombay) (06 Dec 2016)

Minute differences are not to be reckoned as sufficient to defeat an otherwise good claim


Intellectual Property Rights

Plaintiff seeks to protect its registered designs, alleging infringement and passing off. These are designs in respect of copper tubes. Plaintiff’s case is that, three Defendants have infringed Plaintiff’s design. Three Defendants are not strangers to the Plaintiff. 1st Defendant is admittedly a former transporter for Plaintiff’s goods, and runs his own proprietorship firm. There are invoices from 1st Defendant in respect of his transport services. Defendants Nos. 2 and 3 are Plaintiff’s erstwhile employees. Plaintiff was established in 1964 and is a manufacturer, supplier and distributor of copper tubes, a business it has been doing for over 45 years. It claims to have gained considerable goodwill and reputation.

Definition of “design” under Section 2(d) of Designs Act, 2000 makes it clear that design is a reference only to features of shape, configuration, pattern, ornament or composition of lines and colours applied to any article, whether in two or three dimensions or both by any industrial process or means whether manual, mechanical or chemical, separate or combined, which in finished article appeal to and are judged solely by the eye. This design excludes any mode or principle of construction or anything which is in substance a mere mechanical device. It also does not include a trade mark, property mark or any artistic work (the latter being covered by the Copyright Act, 1957).

As per Section 16 and 19 of Designs Act, 2000, prior publication affords a good and even a complete defence to a design infringement and passing off action. Defendants would, therefore, have to show, prima facie, that there is a lack of novelty; that, design has been in the market and has been widely used; or that it was previously published. Law is well-settled that, minute differences are not to be reckoned as sufficient to defeat an otherwise good claim.

There is an undeniable novelty and originality to the Plaintiff’s design. There is no functionality demonstrated by either side, nor does the Plaintiff claim any rights to any functionality. Defendants’ past association with the Plaintiff is undeniable. It is a circumstance that weighs heavily against them when they enter market with so very nearly identical a product. Defendants are unable to show any use by them or anybody else prior to the Plaintiff. Though they refer to a prior publication, they choose not to place any material. It is not only the Plaintiff who obtained infringing product from Pravin Tubes; so did another entity, M/s. Universal Strips. Both entities obtained not only invoices but actual products with delivery challans. Products delivered have been photographed. A more than sufficient prima facie case has been made out. The balance of convenience favours the Plaintiff to whom undoubtedly irretrievable prejudice will be caused if an injunction is refused.

Relevant : Sections 2(d), 16 and 19 of Designs Act, 2000


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