DABUR INDIA LIMITED Vs. AMIT JAIN

JUDGEMENT

(1.) Plaintiff is the owner of registered trade mark DABUR AMLA HAIR OIL and it is claimed that it has vast market not only in India but in overseas also with huge sales. The said oil is marketed in plastic bottles, which according to the plaintiff, bear a unique and distinctive design comprising semi circular shoulder with curvaceous back and a front panel that converge tapering into each other. The said shape and configuration being unique, aesthetic, novel and original was registered as a design under the Design Act, under design registration No. 173234 dated 24.2.1997 in favour of the plaintiff, which is valid till 24.2.2012 the allegation is that the defendant is manufacturing the bottle of same size and description copying the design and at the bottom of the bottle word 'DABUR' with same logo is inscribed. It is contended that the defendant was selling these plastic bottles to various manufactures, who were using the same with the purpose of counterfeiting DABUR AMLA HAIR OIL, which amounted to act of passing off and abatement to passing off, counterfeiting and selling spurious hair oil as genuine product of the plaintiff.

(2.) It is further pointed out that the defendants had earlier started marketing the oil under the trade-name "Plush Jasmine Hair Oil" and "Tushar Amla Hair Oil",which was packed in the bottles of deceptively similar to the design of the plaintiffs bottles and labels. Consequently, the plaintiff had instituted Suit No. 1699/2005 in which ad interim injunction was granted. Thereafter, the defendants settled the matter with plaintiff admitting the plaintiff to be the proprietor of the design of the bottles under the aforesaid design registration No. 173234 and suffered decree of injunction in terms thereof. However, it has come to the knowledge of the plaintiff in the first week of February, 2007 that the defendants have once again started business of manufacturing and selling "Plush Jasmine Hair Oil" in similar plastic bottles, which amounted to infringement of the plaintiffs registered design No. 173234.

(3.) The defendant has opposed the application of the plaintiff on the ground that the plaintiff has obtained registration of the bottle by concealment and fraud and the Controller of Design has granted the design in utmost mechanical manner without application of mind. The present suit was filed by the plaintiff to scuttle competition in the market by unfair means. The bottles being used by the defendant were not of the same design as being used by the plaintiff and were of entirely different form. Even the Local Commissioner, who was appointed by the Court at the time of seizure of the bottles, had opined that the bottles were not similar to the bottles of the plaintiff. However, plaintiff's representative got the bottles sealed alleging that the bottles infringed the design of the plaintiff. It is also contended by the defendant that the claim of the plaintiff that there was an originality in the design of the bottle was false. No special feature of the bottle was registered as a design as was clear from the registration certificate filed by the plaintiff, and the plastic bottle in its entirety was registered as a design. The bottle itself is common in the trade and the bottle as a whole could not have been registered as a design because of the insignificant variations made by the plaintiff. The bottle got registered by the plaintiff had no exclusive artistic features, cuts or curves and the claim over the shoulder of the alleged bottles and its design were very insignificant giving no exclusive rights to the plaintiff over others. The defendant submitted that it has already filed a petition before Controller of Designs for cancellation of the registration of design in dispute and the petition is pending and plaintiff cannot claim exclusive right to use bottle till the petition of the defendant is disposed of by Controller of Designs. It is also submitted that plastic bottle is normally used for filling of hair oil, which was trade of plaintiff as well as of the defendant. The design of plastic bottle being used by plaintiff was similar to a pre-existing design even prior to the registration obtained by the plaintiff with light trade variations. Defendant filed photographs of similar bottles being used by different other manufactures viz. bottles of products: 1.JOLEN (Skin Satin Moisturizer) 2.SEBSUN (Anti Dandruff Shampoo) 3.Lever Ayush Hair Poshak Oil of HLL 4.Shivanand Amla Plus Hair Oil 5.Bajaj Amla Shikakai Hair Oil 6.Cantharidine Hair Oil 7.SIMAX Hair Fixer 8.Amla Hair Oil manufactured by Nimson 9.Aroma Hair Strengthening Oil by VLCC