Trademark & Designs Wars- Now Online!
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Trademark & Designs Wars- Now Online!
In an age where people are moving from the rudimentary concept of shopping towards the contemporary 'online' shopping, Hon'ble Justice Manmohan Singh of the Hon'ble High Court of Delhi, pronounced judgment on a heated dispute between two online shopping forums.
The plaintiff- Eicher Goodearth Pvt. Ltd., is a company dealing in manufacturing and selling creative, exclusive and unique lifestyle products which are classy and exclusive in design, style, pattern, quality and standard. The plaintiff runs a renowned chain of retail stores and galleries and trades through an online store www.goodearth.in as well. The plaintiff is a registered proprietor of the trademark GOODEARTH under several classes in India and abroad. The products of the plaintiff have been extensively written about in various press articles, magazines and news letters. The public at large recognize the unique products of GOODEARTH. The plaintiff submits that its design team creates unique designs inspired from natural beauty like botanical images of flowers, leaves, mountains, trees or from lifestyles like paintings of lifestyles and luxury living from Mughal Era. The strength of the Plaintiff's brand lied in these innovative and catchy designs, which are preferred by customers from various social stratas. Designs like SERAI, PERIYAR, VRINDAVAN, BALI MYNAH, LOTUS, ROSE PRINCESS and FALCON are used on a wide range of products. Also, artworks under PERIYAR, VRINDAVAN and LOTUS are registered under the Designs Act, 2000.
The defendant No. 1- Mr. Krishna Mehta, is a free lance professional and proprietor of India Circus, an online shopping store www.indiacircus.com manufacturing and selling products like clothing, accessories and lifestyle products. Defendant No. 2 is the company India Circus, of which Defendant No. 1 is the creative director.
It was alleged that the defendants are selling products with impugned motifs, art work, patterns and designs on the website. The patterns and designs sold by the defendant are visually or structurally or deceptively similar to those of the plaintiff. A fact was also presented that the Defendant No. 1 was working as a Design Consultant with the plaintiff company on retainership basis for almost two years. Defendant No. 1 had no rights over the art work, motifs, patterns and designs he worked upon during the time. Mr. Mehta left the plaintiff company in the year 2012 and initiated the said business, selling identical patterns and designs for identical products. For more clarity on the infringement in designs, pictorial representations are given here (the first picture being the Plaintiff's product and the second picture being the Defendant's) –
The defendants submitted various points in their defence. Firstly, the website of the rival parties are different, which leaves no ground for confusion in the minds of a person who is browsing the respective sites; that the person browsing the website of the Defendants will be well aware that the products shown therein are the products of the defendants, as the defendants are not selling their products in the name of the plaintiff. Secondly, the art work and designs in respect of which dispute has been raised are not new or original and has been disclosed to public in India and other countries by publication much prior to the plaintiff. The designs from which both the rival parties draw inspiration are available since centuries, hence neither parties can claim rights over the same. Lastly, it was argued that several other companies and persons deal in similar kind of business as the rival parties herein, just because Defendant No. 1 has worked for the Plaintiff does not mean Defendant No. 1 cannot deal in an identical business.
To the defence raised by the Defendants as per provisions of Designs Act, 2000, that the Plaintiff's designs are not registerable as the same are not original, were clarified by the Plaintiff by saying that the instant suit is for passing off under Trade Marks Act, 1999 and Unfair Competition. However, the matter also deals with registrability of designs of the plaintiff.
The Hon'ble High Court was taken through a number of decisions discussing the issue of originality of designs; Mohan Lal, Proprietor of Mourya Industries v. Sona Paints & Hardwares, Micolube India Ltd. v. Rakesh Kumar trading as Saurab industries & Ors., Servewell Products Pvt. Ltd. & Anr. v. Dolphin, Century Traders v. Roshan Lal Duggar, Laxmikant V. Patel v. Chetanbhai Shah & Anr., B.K. Engineering Co. v. Ubhi Enterprises, Gopal Glass Works v. Assistant Controller of Patents and Designs and Asian Rubber Industries v. Jasco Rubber. The Hon'ble Court observed that "It is a well-settled law that even thought the design is old in itself but if the same is applied to a new article to which it has never been previously applied, the said design needs to be protected."
Further, looking at the similarity of the designs used by the Defendants on their products to that of the Plaintiff's designs, the Court upheld the well-settled law of passing off, observing that "the Plaintiff has established the following; There is goodwill and reputation attached to the goods offered by the Plaintiff in the mind of the purchasing public, That the Defendant has employed misrepresentation and Such action has caused damage to the Plaintiff."
Judgments on position of law regarding ex-employees were also placed before the Hon'ble Court; Charan Dass v. Bombay Crockery House, J.K. Jain & Ors. v. Ziff-Davies Inc. The Court observed, "…it is apparent that most of the products used by the Defendants are almost similar. The defendants have used these products subsequent to the use of the Plaintiff."
At last, the Hon'ble High Court laid down that in relation to the design of Falcon, Rose Princess, Serai and Vrindavan used by the Defendants are almost same to those of the Plaintiff; while the designs Lotus and Bali Mynah are dissimilar.
This decision is a landmark judgment in the arena of Indian Intellectual Property Laws, with the dispute being between online shopping forums. Thus, goodwill and reputation goes a long way, right from the original concept of shopping to the modern one.
– MIPR 2015 (2) 0345
Contributed By : Hetvi Trivedi (Advocate)
Designed By : Vikash Singh