ssm sm sm IN IN IN THE HIGH COURT OF JUDICATURE AT BOMBAY THE HIGH COURT OF JUDICATURE AT BOMBAY THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORDINARY ORDINARY ORIGINAL CIVIL JURISDICTION ORIGINAL CIVIL JURISDICTION ORIGINAL CIVIL JURISDICTION APPEAL APPEAL APPEAL NO.418 OF NO.418 OF NO.418 OF 2007 2007 2007 IN IN IN NOTICE NOTICE NOTICE OF MOTION NO. 3579 OF 2006 OF MOTION NO. 3579 OF 2006 OF MOTION NO. 3579 OF 2006 IN IN IN SUIT SUIT SUIT NO. 2961 OF 2006 NO. 2961 OF 2006 NO. 2961 OF 2006 Marico Limited a company registered under the Companies Act-1956, having its registered office at Rang Sharda, K.C. Marg, Bandra Reclamation, Bandra (W), Mumbai- 400 050. ...Appellants. (Orig. Plaintiffs). Vs. Raj Oil Mills Limited, a company registered, under the Companies Act-1956, having its registered office at 224, Bellasis Road, Mumbai 400 008. ...Respondents. (Orig. Defendants) Mr. F. Pooniwala with Mr. N. Master i/by M/s. Crowford Bayely and Co. for the Appellants. Mr. Ravi Kadam, Senior Advocate (Advocate General of Maharashtra) with Mr. V.R. Dhond i/by Mr. Avesh Kayser for the Respondents. CORAM CORAM CORAM : DR. S. RADHAKRISHNAN & : DR. S. RADHAKRISHNAN & : DR. S. RADHAKRISHNAN & ANOOP ANOOP ANOOP V. MOHTA, JJ. V. MOHTA, JJ. V. MOHTA, JJ. DATE DATE DATE OF RESERVING THE JUDGMENT : 18th January, 2008 OF RESERVING THE JUDGMENT : 18th January, 2008 OF RESERVING THE JUDGMENT : 18th January, 2008. ( 2 ) DATE DATE DATE OF PRONOUNCING THE JUDGMENT: 20th February,2008. OF PRONOUNCING THE JUDGMENT: 20th February,2008. OF PRONOUNCING THE JUDGMENT: 20th February,2008. JUDGMENT JUDGMENT JUDGMENT ( PER:- ANOOP V. MOHTA, J.):- ( PER:- ANOOP V. MOHTA, J.):- ( PER:- ANOOP V. MOHTA, J.):- . The Appellants/ Original Plaintiffs are the registered proprietor of the designed article, for reference called "Parachute Cap", since 1999. The Respondents’ Application for registration of their cap i.e. for reference called "Cocoraj Cap" was rejected some time in the year 2004. 2. In the month of September, 2006, the cause of action arose, when the Plaintiffs learnt about the use by the Respondents-Defendants of the impugned caps for which they have registered and acquired copyright of the said design. 3. On 8th September, 2006, the Appellants/ Original Plaintiffs vide their Advocate’s letter called upon the Respondents/ Original Defendants to desist from using the impugned caps of which they are the proprietor of registered design bearing No. 181063. 4. On 19th September, 2006, the Defendants vide their Advocate’s letter denied the allegation of the Plaintiffs and claimed to be using the impugned caps ( 3 ) since 2002. 5. On 3rd October, 2006, the Plaintiffs vide their Advocate’s letter, once again called upon the Defendants to desist from using the impugned caps for which they are the proprietor of registered design. 6. On 4th October, 2006, the Plaintiffs thereafter filed the suit in this Court in order to restrain the Defendants from further infringing their registered cap design. 7. On 27th February, 2007, the Notice of Motion filed by the Plaintiffs was dismissed. Therefore, being aggrieved by the order of the learned single Judge dated 27th February, 2007, the Appellants prefer this Appeal before this Court. 8. The learned counsel for the Appellants relied on the Judgment in Ford Motor Co. Ltd.’s Design Ford Motor Co. Ltd.’s Design Ford Motor Co. Ltd.’s Design Applications Applications Applications (1995) R.P.C. (No. 5) House of Lords, (1995) R.P.C. (No. 5) House of Lords, (1995) R.P.C. (No. 5) House of Lords, Page Page Page 167 167 167. 9. The learned Senior counsel for the Respondents relied on the following Judgments. ( 4 ) a) a) a) Ravinder Ravinder Ravinder Kumar Sharma Vs. State of Assam and Kumar Sharma Vs. State of Assam and Kumar Sharma Vs. State of Assam and Ors. Ors. Ors. (1999) 7 Supreme Court Cases, 435. (1999) 7 Supreme Court Cases, 435. (1999) 7 Supreme Court Cases, 435. b) b) b) Sifam Sifam Sifam Electrical Instrument Co. Ltd. Vs. Electrical Instrument Co. Ltd. Vs. Electrical Instrument Co. Ltd. Vs. Sangamo Sangamo Sangamo Weston Ltd., 1973 R.P.C. (No.29) Weston Ltd., 1973 R.P.C. (No.29) Weston Ltd., 1973 R.P.C. (No.29) Chancery Chancery Chancery Division, Page 899. Division, Page 899. Division, Page 899. c) c) c) Wander Wander Wander Ltd. & Anr. Vs. Antox India P. Ltd. & Anr. Vs. Antox India P. Ltd. & Anr. Vs. Antox India P. Ltd., Ltd., Ltd., 1990 (Supp) Supreme Court Cases 727. 1990 (Supp) Supreme Court Cases 727. 1990 (Supp) Supreme Court Cases 727. d) d) d) M/s. M/s. M/s. Kemp & Company & another Vs. M/s. Kemp & Company & another Vs. M/s. Kemp & Company & another Vs. M/s. Prima Prima Prima Plastics Ltd., 1999(1) Bom. C.R. 239. Plastics Ltd., 1999(1) Bom. C.R. 239. Plastics Ltd., 1999(1) Bom. C.R. 239. e) e) e) Polar Polar Polar Industries Ltd. Vs. Usha Industries Ltd. Vs. Usha Industries Ltd. Vs. Usha International International International Ltd. & Ors., AIR 2000, Cal. Ltd. & Ors., AIR 2000, Cal. Ltd. & Ors., AIR 2000, Cal. 119, 119, 119, (2002)2 CALLT 162 (HC) (2002)2 CALLT 162 (HC) (2002)2 CALLT 162 (HC) 10. The relevant provisions of the Designs Act-2000, (for short, "The Act") are as under:- 2. Definitions:- Definitions:- Definitions:- ....... ....... ....... a) "article" means any article of manufacture and any substance, artificial, or partly ( 5 ) artificial and partly natural; and includes any part of an article capable of being made and sold separately; b) ..... c) ..... d) "design" means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal ( 6 ) Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957); 11. . Section Section Section 19. - Cancellation of registration:- 19. - Cancellation of registration:- 19. - Cancellation of registration:- (1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:- a) that the design has been previously registered in India; or b) that it has been published in India or in any other country prior to the date of registration; or c) that the design is not a new or original design; or d) that the design is not registerable under this Act; or ( 7 ) e) that it is not a design as defined under clause (d) of section 2. 12. Section 22. - Piracy of registered design:- Section 22. - Piracy of registered design:- Section 22. - Piracy of registered design:- 1) ...... 2) ...... 3) In any suit or any other proceeding for relief under sub-section (2), every ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence. 4) Notwithstanding anything contained in the second proviso to sub-section (2), every ground on which the registration of a design may be cancelled under Section 19 has been availed of as a ground of defence and sub-section (3) in any suit or other proceeding for relief under sub-section (2), the suit or such other proceeding shall be transferred by the court, in which the suit or such other proceeding is pending, to the ( 8 ) High Court for decision. 13. It is relevant to note the introduction, statement of objects and reasons of the Act. INTRODUCTION:- INTRODUCTION:- INTRODUCTION:- . In 1911 the Designs Act was passed by the then British Government in India, Since then extensive amendments have been made in the Designs Act. In the meanwhile India has made tremendous progress in the field of science and technology. There has been considerable increase in the registration of designs. To provide more effective protection to registered designs and to promote design activity in order to promote design element in an article of production it has become necessary to make the legal system of providing protection to industrial designs more efficient." ....... STATEMENT STATEMENT STATEMENT OF OBJECTS AND REASONS:- OF OBJECTS AND REASONS:- OF OBJECTS AND REASONS:- . ...........The proposed Designs Bill is ( 9 ) essentially aimed to balance these interests. It is also intended to ensure that the law does not unnecessarily extend protection beyond what is necessary to create the required incentive for design activity while removing impediments to the free use of available designs. To achieve these purposes, the Bill incorporates inter alia, the following, namely:- a) it enlarges the scope of definition of "article" and "design" and introduces definition of "original"; (Emphasis (Emphasis (Emphasis added.) added.) added.) 14. The notes on clauses as published on 13th December, 1999 in reference to a Bill to consolidate and amend the law relating to protection of designs, as relevant, is reproduced below:- Clause Clause Clause 2.- 2.- 2.- This clause contains definitions of various expressions used in the Bill. While most of the definitions in the existing Act have been retained, the ( 10 ) definition of "original" has been incorporated vide clause (o). According to this definition, "original", in relation to a design, means originating from the author of such design and includes the cases which though old in themselves yet are new in their application. The definition of "original" has been incorporated in order to specify the registerable designs. The definitions of "article" and "design" have been amplified to align them with similar definitions internationally accepted for providing wider protection to the intellectual property. The definition of "article" has been amplified for inclusion of parts of articles sold separately within its scope. the definition of "design" has been amplified to incorporate therein the composition of lines and colours so as to avoid overlapping with the Copyright Act, 1957 regarding definition of "design" in respect of artistic work. (Emphasis (Emphasis (Emphasis added.) added.) added.) ( 11 ) 15. There is no dispute that the date of certificate of registration is dated 29/06/2000, therefore, the provisions of the Act are applicable. Both the parties have argued and made respective submissions based upon the Act. 16. The learned Single Judge by the impugned order in pending suit, has dismissed the Notice of Motion of the Appellants/ Plaintiffs mainly by holding that the Appellants’ cap is not "an article" as defined in Section 2 (a) of the Act by mainly relying on English Court’s Judgment reported in (1995) R.P.C. 167, (1995) R.P.C. 167, (1995) R.P.C. 167, (House (House (House of Lords) (Ford Motor Company Limited’s Design of Lords) (Ford Motor Company Limited’s Design of Lords) (Ford Motor Company Limited’s Design Applications) Applications) Applications) and observed as under:- "8. Mr. Kadam, the learned Advocate General appearing for the defendant, relied on a decision of the House of Lords in Ford Motor Co. Ltd.’s Design Applications, reported in (1995) R.P.C.167. A similar provision in the English statute reads as follows:- . "If that part is to be made and sold separately" ( 12 ) The House of Lords observed as follows:- . "My Lords, for these reasons I have been compelled to give up the attempt to read the words of the definition literally, and will instead look behind them for the intention of the legislature. In my opinion the purpose was to distinguish between on the one hand, an item designed for incorporation, whether as a spare part or as an original component, in a particular article or range of articles made by the manufacturer of the component, and on the other an item designed for general use, albeit perhaps aimed principally at use with manufacturer’s own artifacts. Whilst it is often unwise to restate the effect of a statute in different words, since this may lead to the new formula being subjected to the kind of textual analysis which ought to be reserved to the statute itself, an answer will, I ( 13 ) believe be supplied in many cases by applying the criterion given by McCowan L.J., namely: that to qualify under Section 44(1) a spare part has to have an independent life as an article of commerce and not be merely an adjunct of some larger article of which it forms part". . I am in respectful agreement with the said judgment and also of view that the Indian statute should not be read literally. Merely because a part of the article can be made separately and sold separately, it should not be taken as covered by that phrase unless the part has an identity in the market by itself. Indeed, a part must have an independent life as an article of commerce and not be merely an adjunct of some larger article of which it forms part. The cap involved in the present case cannot be said to have an independent life of an article of commerce." 17. The definition of "article" under the Act as reproduced above read with the definition of "design" ( 14 ) are different from the provision of the English statute as reproduced above and importantly, the following words "includes any part of an article capable of being made and sold separately", whereas, in the English statute the words are "if that part is to be made and sold separately". Therefore, the words "capable of being made and sold separately" has to be read and considered in the context of the Act. The English Law is silent with regard to the above words of the Act. The repealed Act 1911 defines "article" means any article of manufacture and any substance artificial or natural or partly artificial or partly natural. The above words "capable of being made and sold separately" were not there earlier. Therefore, as noted in the objects and reasons and as intended to enlarge the definition of "article" and "design", above words have been inserted. These words are clear and unambiguous. 18. The observations of House of Lords as reproduced above and as relied, therefore, cannot be read in isolation without considering the existing enlarged definition of an "article" under the Act. The similar provisions of English statute as relied, even if read, in no way similar and or identical with the newly ( 15 ) inserted words under the Act. The English statute and or the decision as referred above, in view of the amended definition cannot be extended in such a fashion to interpret the Act, by holding that "a part must have an independent life as an article of commerce and not by merely an adjunct of some larger article of which it is formed part. The cap involved in the present case not independent life of an article of commerce". 19. The Apex Court in an innumerable cases has held that when the language of the Act or statute is plain, simple and clear it needs to be respected. There is no vagueness in the definition of "article". Apart from the intention of the legislature, it is unambiguous and clear. The Act, therefore, needs to be interpreted in this background and not otherwise. The isolated section cannot be read of English statute to decide the express and clear provisions of the Indian Law like in question. 20. As expressed by the Supreme Court in State of State of State of West West West Bengal Vs. M/s. B.K.Mondal & Sons, (five Bengal Vs. M/s. B.K.Mondal & Sons, (five Bengal Vs. M/s. B.K.Mondal & Sons, (five Judges), Judges), Judges), AIR 1962, S.C. 779, AIR 1962, S.C. 779, AIR 1962, S.C. 779, the assistance of English decisions dealing with the Indian Statutory ( 16 ) Provisions is limited, as observed thus:- . "In such a case, where we are dealing with the problem of construing a specific statutory provision it would be unreasonable to invoke the assistance of English decisions dealing with the statutory provisions contained in English law. As Lord Sinha has observed in delivering the judgment of the Privy Council in Ramanandi Kuer Vs. Kalawati Kuer, 55 Ind APP 18 : ILR 7 Pat 221: (AIR 1928 PC 2) "it has often been pointed out by this Board that where there is a positive enactment of the Indian Legislature the proper course is to examine the language of that statute and to ascertain its proper meaning uninfluenced by any consideration derived from the previous state of the law or of the English law upon which it may be founded". If the words used in the Indian statute are obscure or ambiguous perhaps it may be permissible in interpreting them to examine the ( 17 ) background of the law or to derive assistance from English decisions bearing on the point; but where the words are clear and unambiguous it would be unreasonable to interpret them in the light of the alleged background of the statute and to attempt to see that their interpretation conforms to the said background." 21. Even otherwise at the most the English decisions have persuasive value but cannot be relied to interpret, specially when the provisions of the Act as amended is different and clear. 22. The Supreme Court has further observed in Forasol Forasol Forasol Vs. Vs. Vs. Oil and Natural Gas Commission, AIR 1984 S.C. Oil and Natural Gas Commission, AIR 1984 S.C. Oil and Natural Gas Commission, AIR 1984 S.C. 241 241 241 that:- . "Further, the English decisions referred to by us are of courts of a country from which we have derived our jurisprudence and large part of our laws and in which the judgments were delivered by Judges held in high repute. Undoubtedly, none of ( 18 ) these decisions are binding upon this Court but they are authorities of high persuasive value to which we may legitimately turn for assistance. Whether the rule laid down in any of these cases can be applied by our courts must, however, be judged in the context of our own laws and legal procedure and the practical realities of litigation in our country." 23. As noted in the present case, in view of the changed definition of article under the Act itself the said Judgment, Ford Motors Company Limited’s Design Ford Motors Company Limited’s Design Ford Motors Company Limited’s Design Applications Applications Applications (Supra), cannot be extended and or made applicable to decide the case in hand. 24. Strong reliance was placed on following paras of the another English Judgment reported in (1973) R.P.C. (1973) R.P.C. (1973) R.P.C. 899, 899, 899, Sifam Electrical Instrument Company Limited Vs. Sifam Electrical Instrument Company Limited Vs. Sifam Electrical Instrument Company Limited Vs. Sangamo Sangamo Sangamo Weston Limited Weston Limited Weston Limited, by the learned Senior Counsel appearing for the Respondents. . "I come then to the final question: Was the design of the meter front in sketch No.10 ( 19 ) registerable under the Designs Act, 1949? This depends on the words of sections 1 and 44 of that Act. Section 1(1) reads: "A design may be registered under this Act in respect of any article or set of articles specified in the application". Section 44 defines article as including "any part of an article if that part is made and sold separately". . " The meter front here is not now and never has been sold separately nor was it ever intended that it should be. The words of the section are, however, difficult because they cannot be read strictly literally. If an article or part of an article is in fact being sold at the time of the application to register that in itself would invalidate the registration because the design would have been published and would not be "new or original" within subsection (2). What then do the words mean? The defendants say they mean "susceptible of being sold separately", which they say this meter front is. But here again any part of any article is ( 20 ) susceptible of being sold separately even if, for example, the part has to be forcibly removed from the whole of the article of which it forms part." . "The words used are "if that part is made and sold separately", and the phrase as a whole, to my mind, confirms that both the manufacture and sale of the part in question must be operations which are distinct from the manufacture and sale of the whole article of which the "part" forms a component. It is necessary to imply the words "to be" in order to construe the phrase as not including sale of the part prior to or at the date of the application for registration since this would produce an absurd result contrary to section 1(2), would invalidate the registration, and cannot possibly have been the intention of the legislature." 25. The facts and circumstances apart, from law it is distinct and distinguishable. The present designed article cap is capable of being made separately and ( 21 ) sold separately. There is no question of any forcible separation of any part of the designed cap. The registered cap itself is the article for the purpose of the Act and registered accordingly. 26. As noted, the words clear whereby the legislature has intended to enlarge the definition and meaning of the word "article". The above English judgments as well as law in our opinion cannot be the precedent and or the binding decisions. Those Judgments, therefore, in no way assist the defendants to support their case that the registered cap in question is not an article within the definition and ambit of Section 2(a) of the Act. 27. The fact which also cannot be overlooked at this stage of the proceeding is that the Defendants themselves had applied for registration of their cap separately which was rejected. There is no further Appeal or challenge raised to the said rejection of their separately made cap for their registered bottle. There is an affidavit on record filed by the Defendants itself shows that the caps are made separately in the market. The caps which can be made separately, it also includes that the said caps are ( 22 ) "capable of being made and sold separately". The dictionary meaning of the word capable is as under:- 1. WEBSTER WEBSTER WEBSTER ILLUSTRATED CONTEMPORARY ILLUSTRATED CONTEMPORARY ILLUSTRATED CONTEMPORARY DICTIONARY DICTIONARY DICTIONARY ( ENCYCLOPEDIC EDITION) ( ENCYCLOPEDIC EDITION) ( ENCYCLOPEDIC EDITION):- . Capable:- Capable:- Capable:- adj. Having suitable ability; competent. - capable of 1. Having the required ability or capacity for. 2. Open to; susceptible of. [< LL Capabilis <L capere take, receive] - ca’pa.ble.ness n.- ca’pa.bly adv. 2. BLACK’S BLACK’S BLACK’S LAW DICTIONARY (SPECIAL DELUXE) LAW DICTIONARY (SPECIAL DELUXE) LAW DICTIONARY (SPECIAL DELUXE) (FIFTH (FIFTH (FIFTH EDITION):- EDITION):- EDITION):- . Capable:- Capable:- Capable:- Susceptible; competent; qualified; fitting; possessing legal power or capacity. Able, fit or adapted for. 3. CONCISE CONCISE CONCISE OXFORD ENGLISH DICTIONARY:- OXFORD ENGLISH DICTIONARY:- OXFORD ENGLISH DICTIONARY:- . Capable:- Capable:- Capable:- adj. 1 (capable of doing something) having the ability or quality ( 23 ) necessary to do something. > Open to or admitting of something. 2 (of a person) competent. - DERIVATIVES capably adv. -ORIGIN C16: from Fr., from late L. capabilis, from L. capere ’take or hold’. 28. The phrase, therefore, "capable of being made and sold separately" covers the cases not only that an article upon which a design article can be made but also can be sold separately. Therefore, such article which is separate from the other