The container design was subject of design infringement and passing off dispute between two Bombay based manufacturer of plastic containers. The question before the Bombay High Court was whether the Defendant’s (Om Plast) product infringes the 1^st Plaintiff (Selvel Industries) registered design. The designs of the plaintiff and defendant’s product can be seen below.

Selvel has a registered design for the container. This was registered on 25^th September 2013 under No. 256745 in Class 07-01. The lid was separately registered on 12^th September 2011 under No. 241396 in Class 07-01. Selvel claims that in November 2011, it conceived and adopted this distinctive shape, configuration and novel pattern for the lid of the silicon ring around it. This provides the airtight seal. At about the same time, the Plaintiffs also conceived and adopted a distinguished shape, configuration and novel pattern for a bowl, fabricating it by a process of insert moulding. In April 2013, Selvel licensed the 2nd Plaintiff (Sears) to use the copyright in the design of the lid and this bowl.

The Plaintiffs came across the deceptively similar jar of the Defendant (Om) in around January 2016. The Plaintiffs claims that the container being sold by Om under the trade name OPI and sub name Ninja is indistinguishable from that of the Plaintiffs and that the Defendant has thus not only infringed the Plaintiffs’ copyright in their design but have also sought to pass off their product as that of the Plaintiffs.

The Defendant contested the claim on following grounds:

• • There is no novelty in the Plaintiffs’ product, the defendant alleged that there are other manufacturers making the same article as that of the plaintiffs and hence it lacks the Novelty criteria. The Defendant also questioned the grant of registration to the article.
  • There are a number of registrations of similar container by third parties.
  • The Plaintiff’s registration is for a shape and configuration and wave form is ‘simply ornamentation’.
  • There is no case of passing off as the sales figure of the Plaintiff is quiet insignificant. The Defendant has a registration prior to that of the Plaintiff for a flask with wave design and hence the registration of the Plaintiff ought to be cancelled as the Defendant has a prior registration.

Plaintiffs’ argument:

1. There is no material to show use by any person prior to the relevant date of October 2014 (the priority date claimed by the plaintiff). The Designs that are similar to the Plaintiff are all of subsequent dates.
2. The wave-form portion is fused in the process of fabrication into the container or article itself, and has become part of it. There is a unity in this. The wave-form is inseparable from the rest. Hence they are a single unit and finally the white part is not an article by itself capable of standalone identity rather it is that integer or element which is infused into the other. Thus Plaintiff has come up with a novel design and not just a pure ornamentation or pattern.
3. For any idea to be new or novel the entire article should not be new rather the change has to be substantial enough to afford it the necessary protection.
4. The sales figure are not essential to determine the infringement and moreover the sales figure of the Defendant was on the same line and a product like one that of the plaintiff was such that it would definitely afford public attention in the market when they go to buy containers.

The court concluded the Plaintiff’s article or container was a new or novel one and that the registration for the same was valid. On the other hand the container of the Defendant was deceptively similar. If both are placed in the same shop it is sure to cause confusion. The court accepted the contention of the Plaintiff that it was the first to register the design of the container as per the regulations of the Designs Act and that all other manufacturers stated by the Defendant lacked the prior usage or prior registration criteria. The Defendant by way of producing and using a design deceptively similarly to that of the Plaintiff was conducting the act of passing off. The court also noted that it is no defence for an infringer to say that others have been equally guilty of infringement or passing off.