Specific design or configuration created in any article with a visual appeal once registered as “design” cannot be pirated

  1. Jamdar, J.
 
  1. The trial Court by the impugned order has restrained the appellant-defendant Videocon Industries Ltd., from marketing a certain design of washing machine. According to respondent-plaintiff M/s.Whirlpool India Ltd., the appellant M/s.Videocon Industries Limited has infringed the designs registered by M/s Whirlpool India Ltd. and is also guilty of passing off the said product.
 
  1. The respondent M/s Whirlpool India Ltd (referred hereinafter as Whirlpool) filed suit bearing Suit (lodging) No.1675 of 2012 in this Court seeking an injunction invoking provisions of the Designs Act, 2000 (hereinafter referred to as the said Act) against appellant M/s Videocon Industries Pvt. Limited (hereinafter referred as Videocon).
 
  1. In the suit Whirlpool contended: It had registered two designs of washing machines on 15th July, 2009. The designs were registered for shape and configuration of washing machines in Class No.15-05. The designs were:
  (a) Design No.223833 filed on 15th July 2009 and granted on 30th December 2009 in class 15-05 with respect to Washing Machine; and   (b) Design No.223835 filed on 15th July 2009 and granted on 31st December 2009 in class 15-05 with respect to Washing Machine.   The registrations are in force for a period of 10 years from 15th July, 2009, to be further extended for additional period of 5 years thereafter. The design of the washing machine of being square on one side and rounded on the other side is a distinctive and aesthetically appealing design. This design has proved to be a run away success, so much so that in a short span of around one and half years almost three lakh machines are sold. In June 2012 Whirlpool noticed a washing machine manufactured and marketed by Videocon Industries having same/similar design, shape and configuration as the one registered by Whirlpool India under the Design Nos.223833 and 223835. The washing machine marketed by Videocon Industries was so similar to the designs registered by Whirlpool India, that it was obvious that Videocon had infringed the designs registered and had done so deliberately to encash the popularity enjoyed by distinctive design of Whirlpools washing machine. It was thus necessary to injunct Videocon from in any manner dealing with the impugned product whose designs were placed on record alongwith the plaint.  
  1. In the suit, Whirlpool also took out Notice of Motion (Lodging) No.1955 of 2012 seeking an order of interim injunction. Whirlpool placed on record the efforts taken by it for designing and popularizing its products and the sales figures generated since September, 2010. Videocon had not only copied the design but is also selling their product at a cheaper price, thus causing incalculable damage to the sales of the Whirlpool products. Whirlpool also placed on record that in the past also the Videocon had sought to copy and imitate designs of Whirlpool and it was injuncted by the Karnataka High Court. Whirlpool thus prayed that the Videocon should be immediately directed to desist from imitating and passing off the registered design of Whirlpool.
 
  1. Videocon appeared in the suit and filed its reply to the Notice of Motion. In the reply Videocon urged: The design of washing machine registered by Whirlpool was not an original design. Such a design was in the market since last more than 50 years. Therefore, Whirlpool cannot claim any monopoly regarding such design. The product which Videocon marketed is not similar to the one registered by Whirlpool India. Whirlpool has registered its design for only size and shape and for no other aspect. Passing off action is not possible as Videocons brand is known much more than the Whirlpool and there is no possibility that Videocon will try to sell its products as that of Whirlpool. If a consumer makes a conscious choice to select the product of Videocon which is distinct in appearance than Whirlpool and has its brand name prominently displayed, there is no passing off. Videocon is pioneer in manufacturing of semi automatic washing machines in India and its brand enjoys a very high reputation. Whirlpool has no case and is merely trying to monopolize the market. No infringement or passing off is made out. Videocon has also applied for registration of its own design which is pending. Thus there is no case made out for injunction.
 
  1. Before the learned trial Judge the learned counsel on behalf of the parties addressed the Court on the lines as indicated above. Videocon mainly urged that the design registered by Whirlpool was neither unique nor original and is similar to the designs of washing machines which were available in the market since last 50 years. Whirlpool on the other hand contended that the shape and configuration of its washing machine was distinctive and the product marketed by Videocon was a clear imitation of its design. The learned trial Judge considered the rival submissions and found that by applying the test of judging solely by eye, the product marketed by Videocon was similar to the design registered by Whirlpool. The learned trial Judge held that there was real and cogent likelihood of consumers getting deceived by similarity in designs and the action for passing off is also made out. The learned trial Judge also noted that the product marketed by Videocon is much cheaper than the one marketed by Whirlpool under its registered design. The learned trial Judge by his order dated 25th July, 2012 granted ad-interim relief in terms of prayer clauses (b) and (c ) of the notice of motion. Prayer clause (b) and ( c ) read as under:
  (b) that pending the hearing and final disposal of the suit, the Defendant by itself, through its servants, agents, dealers, manufacturers, directors, owners, proprietors and/or otherwise howsoever be restrained by an order and injunction of this Honble Court from in any manner using, applying, placing upon the market for sale or exposing for sale and/or selling and/or cause to be used, applied, placed upon the market or expose for sale, and/or otherwise in any manner dealing with the impugned product bearing the impugned design as shown in Exhibit “D” to the Plaint and/or any other washing machine containing the design which is/ are obvious/colorable and/or fraudulent imitation and/or piracy in any manner whatsoever to that of Plaintiffs said design relating to its said product as shown in Exhibits “A1”, “A2” and “B” to the Plaint so as to infringe the Plaintiffs said registered design of washing machine bearing Nos.223833 and 223835 being Exhibit “A1” and “A2” to the Plaint.   (c ) That the pending the hearing and final disposal of the suit, the Defendant by itself, through their servants, agents, dealers, manufactures, directors, owners, proprietors and/or otherwise howsoever be restrained by an order and injunction of this Honble Court from in any manner using, applying, placing upon the market for sale and/or exposing for sale and/or selling and/or cause to be used, applied, placed upon the market for sale, and/or otherwise in any manner dealing with the impugned product bearing the impugned design as shown in Exhibit “D” to the Plaint and/or any other washing machine containing the design, features of shape, configuration and/or get up which is/ are colorable and/or obvious imitation and/or fraudulent imitation and/or deceptive variation thereof in any manner whatsoever so as to pass off and/or enable others to pass off their impugned product as and for that of the Plaintiffs product as shown in Exhibit “B” to the Plaint.  
  1. Videocon is thus in appeal before us challenging the aforesaid decision of the learned trial Judge. We have heard Mr.ViragTulzapurkar, Senior Advocate alongwithMr.R.D.Soni for Videocon, and Mr.Ravi Kadam, Senior Advocate with Mr.V.R.Dhond, Senior Advocate for Whirlpool. We also have had an opportunity to observe the machines of both the brands, which were brought in the Court and were placed side by side, during the entire course of hearing.
 
  1. Learned counsel Mr.Tulzapurkar and Mr.Soni appearing for Videocon Industries contended:
  (a) Under section 22 (3) of the Designs Act, 2000 the defendant in a suit for injunction filed on the ground of infringement of design, is entitled to take a defence that the design of which infringement is alleged should not have been registered. It is not necessary to move for cancellation of the registration of the plaintiff. This is one of the special features of the Act of 2000. The designs of Whirlpool could not have been registered in view of section 4 (a), (b) and (c) of the Act. The designs are not new and original. The designs have been in public domain much before registration. They are also not significantly distinguishable from known designs or combination of known designs. The material depicting history of washing machines downloaded from the internet, shows that the so called distinctive design of Whirlpool, was in market since last atleast 50 years. If not a copy of one design, so called distinct shape and design is achieved by merely putting together shapes borrowed from two or more designs. Thus the designs of Whirlpool are merely a combination of known designs, which is not permitted under section 4(c). Admittedly the registration is only for shape and configuration and not for pattern, ornamentation or colours. Since the registration of design of Whirlpool is only for shape and configuration and since the washing machine of the Videocon has different ornamentation, colouration and placement of operational knobs, it cannot be said that both the products are similar. They are distinct even when solely judged by eye. Whirlpool cannot claim any right in respect of colour, pattern and ornamentation, which has made the videocons machine look different.   (b) When Whirlpool has registered two designs with hardly any difference then the second design cannot be as original. If Whirlpool could register two designs of the washing machines with hardly any difference between them, there is no reason why Videocon cannot register and/or market their washing machines, which has far more differences than the two designs of Whirlpool interese.   (c). Whirlpool has several color variations of the product and there is no distinctiveness in their own products. For passing off there must be more than mere similarity between the products and there has to be an intention to deceive the consumers. The product must have a unique look to it, which the general public associates with it and there is no such uniqueness in the product of Whirlpool. Considering the nature of the goods and the class of buyers and where the goods are sold, there is no possibility of confusion between the products. The brand names are prominently displayed on both the products and therefore an average discerning buyer will be easily able to distinguish between the products. There is no deception if the buyer makes a conscious choice.   (d) Videocon is having far many products in the market than Whirlpool and its brand enjoys wide reputation. It is not a fly by night operator who will capitalize from imitating products of others. It is not possible that Videocon will downgrade its own image by trying to sell its products as manufactured by Whirlpool, thereby indirectly giving more publicity to Whirlpool. The impugned order is not sustainable and also that a final relief has been granted at the ad-interim stage.  
  1. Mr. Ravi Kadam, Senior Advocate with Shri V. R. Dhond, Senior advocate appearing on behalf of Whirlpool contended :
  (a) The designs registered by Whirlpool India having square shape on one side and rounded shape on the other side is meant to have a distinctive aesthetic appeal. They are not at all similar to any washing machine designs from the past, which have been placed on record by Videocon. The designs downloaded from the internet and placed on record by Videocon do not have same aesthetic appeal. A mere look at the material will show that there is no similarity between the said designs and the design of Whirlpool. The test to be applied to find out if the design is distinguishable from the known designs, is whether the holder of earlier design could secure an order of injunction against the design in question. The designs from the past relied upon by Videocon are so different from the designs registered by Whirlpool that no injunction could have ever been issued against it. If that be so then it cannot be said that the registered design is not significantly distinguishable from earlier known designs. The argument based on section 4 (c) of Act is mis-conceived. It is not combination of part of design that is contemplated under section 4 (c) of the Act. This position is clear by the language of Section 4 (c) read with section 2 (a) and (d) of the Act. A design means the finished article and the article is defined to mean something which is capable of being made and sold separately.   (b) The argument that if the Whirlpool could register two designs with a very little difference, then there is no reason why Videocon Industries could not market their product which has substantial difference, is mis-conceived in view of section 6 of the Act. Section 6 of the Act places the similar designs sought to be registered by the same person on a different footing than similar designs sought to be registered by two different persons.   (c) For passing off it is sufficient if a person consciously creates opportunities for deception. Since the design registered by Whirlpool provides a certain appeal then the consumer may prefer the cheaper version of washing machine available, if such consumer has already made up his mind to purchase the washing machine with such distinctive design. In places where the washing machines are sold such deception can easily take place. From September 2010 to January 2012 about three lakh washing machines have been sold by Whirlpool and the product is a success story because of its unique design. The unique boat shape design has appealed to the buyers even though the shape by itself does not relate to functionality. The shape is distinctive and thus the action of Videocon in marketing the product with same/similar design, is clearly to pass off the goods. It is clear that Videocon have introduced its products with the sole view of taking advantage of the popularity generated by the registered designs of Whirlpool. The action of Videocon is brazen and they have been rightly injuncted by the learned trial Judge.   (d) In the past also Videocon has tried to imitate the products of Whirlpool and have been injuncted by the High Court of Karnataka. The order was passed after giving full opportunity to Videocon. Videocon had even filed their reply opposing the notice of motion. Once it is found that a registered mark is infringed, such infringement and passing off must be stopped immediately or protection under the Act will have no meaning. Thus the appeal be dismissed.  
  1. We will now proceed to consider the rival submissions. As far as contention based on Section 22 (3) of the Act is concerned, the position in law is not seriously disputed. Bare reading of Section 22 (3) read with Section 4 of the Act shows that the defendant is entitled to take defences enumerated under section 4 of the Act and defend the suit contending that the registered design on which the suit is filed, ought not to have been registered. There are four grounds provided under section 4 of the Act which prohibits registration of certain designs. Section 4 of the Act reads as under:-
  “4. Prohibition of registration of certain designs – A design which-   (a) is not new or original; or   (b) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or   (c) is not significantly distinguishable from known designs or combination of known designs; or   (d) comprises or contains scandalous or obscene matter, shall not be registered.”   Ground (d) is not relevant for the purpose of this case.  
  1. Thus if the defendant can show that the registered design on the basis of which the suit is filed falls within the prohibited categories as enumerated above, then no injunction can be issued based on such registered designs. Under the provisions in this Act, there is no need for a defendant to apply for cancellation of the registered trade mark and the challenge can even be made while defending the suit.
 
  1. Thus the question will be whether the design registered by Whirlpool falls within the above mentioned prohibited categories as contended by the Videocon.
 
  1. It is contended by Mr.Tulzapurkar for Videocon that the designs registered by Whirlpool are not original and such design is in market since long time. Reliance is placed on the print outs down loaded from internet of model manufactured by Easy Washing Machine Corporation from the years around 1930 and 1960. Placing reliance on this material which depicts photographs of the model and design, it is contended that the shape and configuration of being rounded on one side and square on the other, is not original. This design has been disclosed to public as seen from the extracts from websites and it is not significantly distinguishable from the said design. The said design thus could not have been registered in view of Section 4(b), (c) of the Act.
 
  1. If we compare the designs registered by the Whirlpool and the designs depicted in the material relied upon by Videocon, the designs do not appear similar. The design registered by Whirlpool being square on one side and rounded on the other, gives it the distinctive boat shape appearance. The edges of the Whirlpool design are smoothened out. It looks contemporary, does not have sharp edges and does not have the industrial look of the forties and sixties washing machines. The first design placed by Videocon on record had a functional look to it which made it look like a piece of machinery. The drums, stands, removable tin cap, gave it a Spartan functional look to it. The later design of Easy Washing machine appears to have three parts, potruding handles and does not have a sleek look of the Whirlpool design. The product registered by Whirlpool has distinctive shape and design with gentler edges and has certain aesthetic appeal. It has contemporary styling which is different than the machines from the past. The novelty of the design registered by Whirlpool, as urged by Mr.Kadam, is to give it a pleasing appearance. If the product is designed with a purpose of making it more attractive to the buyer by giving it a particular pleasing shape, then the innovation lies in the aesthetic appeal. Thus looking to the material depicting the models of washing machines from the past placed on record by Videocon, it cannot be said that the designs in question registered by Whirlpool is not new or original and not significantly distinguishable from the known designs.
 
  1. A contention was raised by Mr.Tulzapurkar based on section 4(c) of the Act that if a design which is not significantly distinguishable from combination of known designs, it cannot be registered. Relying on this provision it was contended that the design registered by Whirlpool is merely a combination of known designs. It was contended that the material produced on record shows that the Whirlpool has merely copied various facets of different known designs and there is no originality in the designs. To appreciate this argument, the definition of design needs to be noticed.
  The “Design” has been defined under section 2(d) of the Act, as under:-   “2 (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 subsection (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 Code (45 of 1860) or any artistic work as defined in clause (c ) of Section 2 of the Copyright Act, 1957 (14 of 1957)”  
  1. Above definition shows that the design includes features of shape, configuration, pattern, ornamentation, composition of colors applied to Article. Article may be two dimensional or three dimensional or in both forms and which, after processing, results into finished article. Thus what is contained in the phrase design is the term Article. Term Article has been defined under section 2(a) of the Act which reads as under:-
  “2 (a) “article” means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately.”   (Emphasis supplied.)  
  1. The essential part of the above definitions is that the design meaning thereby an article should be capable of being made and sold separately. The article by itself must have an identity of its own. It should be capable of being marketed by itself. Thus the design would mean design of an article which is capable of being made and sold separately. Thus, it is clear that the phrase combination of known designs referred in section 4(c) means combination of known articles. Thus, if two or more independent articles which are capable of being sold separately and which have distinctive designs are put together to create a new design, the same cannot be termed as original. To illustrate the point, Mr.Kadam has rightly cited an example of mirror of an automobile. Mirror is a part of the design of the automobile but is also an article which can be manufactured and sold separately. In contrast, if the argument made by Mr.Tulzapurkar on interpretation of section 4(c) is to be accepted, then it would mean that the phrase combination of known designs includes combination of parts of articles, which by itself, have no independent identity. This would be re-writing the section. It will also create virtual impossibility for registering any new design. By twenty first century there have been countless designs of countless products and any part of a new design will most likely resemble some other part of the known design. In the present case, even if some parts of the Whirlpool design which have no value by themselves, resemble parts of some other earlier machines, it cannot be said that the design falls within the ambit of the phrase combination of known designs. Thus we are not in agreement with the arguments made by Mr.Tulzapurkar that the design registered by the petitioners is hit by prohibition contained in section 4 (c) of the Act.
 
  1. It was then contended by Mr.Tulzapurkar that the Whirlpool India has registered two designs bearing Nos.223833 and 223835 on the same day viz.15th July, 2009. It was contended that these two designs have hardly any differentiating characters between them and still both the designs have been registered and are allowed to be sold. Based on this fact two arguments were made by Mr.Tulzapurkar. Firstly the second design registered by Whirlpool cannot be called as original in view of first registration. Secondly if two designs with hardly any difference between them can be registered and sold, then the design marketed by Videocon which has far more differentiating characters, also can be registered and sold. For that purpose a comparative chart of differentiating features between the models of Videocon Industries and Whirlpool India is placed on record.
 
  1. We will take the second argument first. Though the argument seems attractive at first blush, it militates against the scheme of the Act. This argument proceeds on the premise that the registration of two similar designs by the same person stand on the same footing as the registration of similar designs by two different persons. The scheme of the Act would demonstrate otherwise. This distinction is obvious from the object of the Designs Act 2000 itself and the language of the sections.
 
  1. The statement of object and reasons of the Act, indicates that the Act was enacted to ensure effective protection to register designs, to promote design activity and at the same time to ensure that the protection granted to such registration does not unnecessarily extend beyond reasonable period so as to stifle further innovations. In this context, section 6 of the Act needs to be noticed, which reads as under:-
  “6. Registration to be in respect of particular article: –   (1) A design may be registered in respect of any or all of the articles comprised in a prescribed class of articles.   (2) Any question arising as to the class within which any article falls shall be determined by the Controller whose decision in the matter shall be final.   (3) Where a design has been registered in respect of any article comprised in a class of article, the application of the proprietor of the design to register it in respect of some one or more other articles comprised in that class of articles shall not be refused, nor shall the registration thereof invalidated –   (a) on the ground of the design not being a new or original design, by reason only that it was so previously registered; or   (b) on the ground of the design having been previously published in India or in any other country, by reason only that it has been applied to article in respect of which it was previously registered:   Provided that such subsequent registration shall not extend the period of copyright in the design beyond that arising from previous registration.   (4) Where any person makes an application for the registration of a design in respect of any article and either-   (a) that design has been previously registered by another person in respect of some other article; or   (b) the design to which the application relates consists of a design previously registered by another person in respect of the same or some other article with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, then, if at any time while the application is pending the applicant becomes the registered proprietor of the design previously registered, the foregoing provisions of this section shall apply as if at the time of making the application, the applicant had been the registered proprietor of that design.”  
  1. Section 6 (4) makes it clear that when a person makes an application for registration of a design and the design has been previously registered by another person, and while the application is pending the applicant becomes proprietor of the design previously registered, then it will be treated as if the applicant was proprietor of the design on the date when he makes an application. Thus his ownership will relate back. This section therefore would indicate that a person can make an application for registration of a design and also at the same time purchase the existing design. On purchase of existing design his ownership to that design would relate back and thus he would technically be in possession of two designs viz.one which he applied for and the other which he purchased. Thus, the Act does contemplate that the person can have one or more designs, which are similar to each other. But this privilege cannot be and is not meant to be availed by a person seeking to register a design similar to a design registered in the name of another person. Permitting it will run counter to the very object for which the Act of 2000 is enacted. “Y” infringing the design registered by “X” cannot be equated with “X” who is the proprietor of two registered designs of similar nature. The above argument cannot, therefore, be accepted.
 
  1. As regards the contention about second registration not being valid, even assuming that only one of the designs registered by Whirlpool is valid, still Videocon will have to show whether the washing machine marketed by it is distinct from atleast one of the registered designs.
 
  1. This takes us to the question whether the Videocon Industries with the impugned design has committed breach of Section 22 of the Act. Section 22 deals with piracy of registered designs. Section 22 (1) of the Act reads as under:-
  “22. Piracy of registered design:-   (1) During the existence of copyright in any design it shall not be lawful for any person –   (a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or   (b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or   (c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.”  
  1. Thus it will have to be seen whether the washing machine manufactured and marketed by Videocon Industries with impugned design is the “design” or “fraudulent” or “obvious imitation” of the design registered by Whirlpool. This will involve comparison of both the designs. Both the washing machines were brought to the Court. We have had an opportunity to have a look at both the washing machines throughout the proceedings. Our first impression, judging by the eye, was that the designs are similar and that even an average buyer will feel so. This impression continued till the conclusion of the proceedings.
 
  1. This test of judging through the eye alone is accepted and followed by the Courts. In the judgment of the learned Single Judge of Calcutta High Court in Castrol India Limited V/s.Tide Water Oil Co. (I) Ltd. (1996 PTC (16) relied upon by Mr.Kadam, the learned Judge held as under;
  “24. The next task of the Court is to judge the similarity or difference through the eye alone and where the article in respect of which the design is applied is itself the object of purchase, through the eye of the purchaser. Thus in the case of BenchairsLtd.vs. Chair Center Ltd.1994 RPC 429 where the article to which registered design was applied was a chair. Russel L.J.said: As we see it, our task is to look at these two chairs, to observe their similarities and differences, to see them together and separately, and to bear in mind that in the end the question whether or not the design of the defendants chair is substantially different from that of the plaintiff is to be answered by consideration of the respective design as a whole: and apparently, though we do not think it affects our present decision,viewed as though through the eyes of a consumer or customer.  
  1. In judging the articles solely by the eye the Court must see whether the defendants version is an obvious or a fraudulent imitation.
 
  1. In Dunlop Rubber Co.Ltd.vs.Golf Ball Developments Ltd. (1931) XLVIII RPC 268 at 279, the meaning of the word obvious and fraudulent have been stated.
  “..obvious means something which, as soon as you look at it, strikes one at once as being so like the original design, the registered design, as to be almost unmistakable. I think an obvious imitation is something which is very close to the original design, the resemblance to the original design being immediately apparent to the eye looking at the two.” (emphasis supplied).  
  1. The design registered by Whirlpool which has distinctive boat shape appearance is also found in the washing machine marketed by Videocon. The shape and configuration of these two machines needs to be noticed. It was contended that as the coloration, ornamentation and the lines of the washing machines marketed by Videocon are different, they do not look similar. But as we have observed earlier, the novelty of the design registered by Whirlpool is in its shape which has certain appeal to the eye. It is this shape which has created a value in the products which may not be relatable to improved functionality, but it makes it desirable. According to Whirlpool, it is this distinctive shape which has made this machine a marketing success. Merely by placing certain ornamentations, changing position of knobs or adding color scheme, Videocon has not made any difference to its product so as to give it look of a completely different shape than the product marketed by Whirlpool. To us both the machines share distinctive shape and they are obviously similar. The shape and configuration of the Whirlpools washing machine can be clearly seen in the machine marketed by Videocon. According to us, the learned trial Judge was right in holding that the Videocon has infringed the design registered by Whirlpool. The test applied by him of judging solely by the eye alone and his conclusion that both the machines are similar cannot be faulted. Case under section 22(1) (a) of the Act is made out.
 
  1. Whirlpool has also sought action against Videocon on the ground of passing off. Denying the charge of passing off, reliance is placed by Mr.Tulzapurkar on judgment of the learned Single Judge of this Court (Mr.JusticeR.M.Lodha, as his Lordship then was) in the case of Kemp & Company &Ors. V/s. Prima Plastics Ltd) (2000 PTC 96).Mr.Tulzapurkarrelied on Paragraph Nos.15, 16 and 17 of the said judgment, which read as under:-
  “15. Coming to the aspect of passing off, it may be observed that the plaintiffs in the plaint have averred that after the design was registered, in short span of time they have sold chairs valuing Rs. 199.22 lakhs. According to the plaintiffs therefore they have acquired goodwill and their design with holes of human face and backrest and removable inserts acquired distinctiveness.  
  1. Copinger and Stone James on Copyright at pages 757 and 758 in their 13th edition states thus:
  “Goods of a particular get up just as much proclaim their origin as if they had a particular name attached to them. When goods are sold with a particular get up for long enough, they may come to be recognised by the public as goods of a particular manufacturer, even if the public does not know who is in fact the particular manufacturer. By adopting a similar get up for his goods the defendant may in fact be representing to the public that his goods are the goods of the plaintiff and thereby attach to himself some pan of the goodwill and reputation enjoyed by the plaintiff in respect of his goods.   In order to establish goodwill in a particular get up, there must be something more than mere similarity between the goods themselves. Get up is mainly concerned with such matters as the design of the packaging and any associated labels which, over a period of time, the public come to associate with goods of a particular manufacturer. To copy is not to pass off. Merely copying the shape of that other persons goods or articles is not in itself a false representation. Subject to some such monopoly as registered design or statutory right of property, such as copyright, anyone is entitled to copy and sell an article on the market, provided that he does not make a false representation suggesting that the articles which he is selling is in fact that of the plaintiff. A person does not, for example, hold himself out as a licensee of another simply by reproducing that others work, whether in an altered or unaltered form. There is thus a difference between imitating get up and reproducing the article. The plaintiff must show something more than mere similarity between the goods themselves to constitute a representation amounting to passing off. There may, indeed, be cases where an article itself is shaped in an unusual way, not primarily for the purpose of giving some benefit in use or for any other practical purpose but capriciously in order purely to give the article a distinctive appearance characteristic of that particular manufacturers goods. In such a case the manufacturer might be able, in the course of time, to establish that he has a reputation and goodwill in the distinctive appearance of the article itself which will give him a cause of action in passing off if his goods were copied. In those circumstances, the putting of a copy on to the market with the distinctive feature or combination of features in question would amount to a misrepresentation that it emanated from the plaintiff.”  
  1. It would be seen that in order to establish goodwill and distinctiveness in a particular get up, there must be something more than mere similarity between the goods themselves. Mere copying is not to pass off. If a person copies shape or configuration or get up of other persons goods or article, by itself it cannot be said that he has made false representation. No one is prevented from copying and selling an article in the market provided he does not make a false representation suggesting that the article which he is selling is in fact that of plaintiff. Monopoly in the property is only preserved in favour of registered design holder. If the plaintiff has to succeed on the ground of passing off, he must show something more than mere similarity between the goods. Exceptions apart, where an article is shaped in an unusual way not primarily for giving same benefit in use or for any other practical purpose, but capricious in order purely to give an article a distinctive appearance, characteristic of that particular manufacturers goods, a case may be made out by the plaintiff that he has reputation and goodwill in the distinctive appearance of the article itself which could provide him a cause of action in the passing of if his goods were copied.
  Relying on these paragraphs, it was contended that to sustain the action of passing off, something more than mere similarity between the goods is needed. Merely selling the similar goods without making false representation, no action of passing off can be sustained. Also there must something unique and distinctive in the design which the consumer associates with the product. It was urged that Whirlpool product does not have such distinctive feature. We have already held that the shape of Whirlpool product has a distinctive shape and we do not wish to repeat the same passages again.”  
  1. Reliance was also placed on the judgment of U.K.Courtof Appeal in the case of Lancer Trade Mark 1987 (R.P.C.303). In the said case, the Court of appeal was considering the infringement of trade mark of an automobile Lancia by the mark Lancer. In that case the Court of Appeal observed that by the nature of the goods (i.e. automobile) which are not to be equated with everyday purchase over shop counter, risk of confusion between the products or any misrepresentation is ruled out. Relying on this observation, it was contended by Mr.Tulzapurkar that the washing machines are sold in large shops often with other machines, all washing machines have brand names prominently written on them and that the consumer is normally educated class, and thus there is no question of any confusion and when a consumer makes a conscious choice there is no passing off.
 
  1. On the other hand Mr.Kadam relied on the judgment of the learned Single Judge of this Court (Dr.D.Y.Chandrachud, J.) in the case of GorbatschowWodka KG V/s.John Distilleries Ltd. (Notice of Motion No.3463 of 2010 decided on 2nd May, 2011), more particularly Paragraph No.24 thereof, which reads as under:-
  “24. The submission of the Defendant is that because the purchasers of the Plaintiff’s product are educated and affluent, they have within them a discerning capacity which renders the possibility of a deception unlikely. The submission involves a basic fallacy. The fallacy lies in assuming that while those who are educated or affluent have the ability to discern, since they have higher disposable incomes, persons who do not belong to that category are more likely to be deceived. Gullibility as a trait of human character does not necessarily possess social or economic attributes. The ability of a consumer to discern is not necessarily relatable to social class or economic status and to make such an assumption would lead the Court to an unwitting stereotype. At least the Court must not accept such stereotypes. An ordinary consumer with a lower disposable income may well be concerned, as much as a consumer of high end products is, about the quality of what she consumes. But the point which has been urged before the Court is that an unwary consumer of low priced, fast moving consumer goods is more likely to be deceived than a purchaser of a premium commodity. The inference sought to be drawn is that passing off is more likely in the former and improbable in the case of the latter. Stretched to its logical conclusion, the submission of the Defendant would lead to a result where the remedy in passing off becomes available only in respect of goods which the average consumer purchases for the daily necessities of life. For, it is the submission of the Defendant that it is in the case of such goods that the consumer makes a decision to purchase without a careful and discerning mind. The remedy in passing off would be rendered illusory if such an argument were to be accepted. The law has not restricted the remedy only in relation to goods of a particular nature or quality but across the spectrum of trade and business. As contemporary experience shows goods and services across the spectrum are subject to imitation and piracy. The protection of the remedy in passing off is as much available to a manufacturer who invests capital, time and ingenuity in producing premium goods or services or those styled as fast moving consumer goods. The Court will not readily assume that because consumers of premium goods and services have higher disposable incomes or, as the Defendant states are educated, that the likelihood of deception is minimal. If the law were to accept such a position, it would only open a pathway for deceit. Less than honest competitors in business would carefully grind away at the features of an existing mark with an established reputation so that eventually nothing will be left of the uniqueness of the mark. The protection of intellectual property will be a writ in sand if such a submission is accepted. The class of purchasers is undoubtedly a relevant consideration, but the Court must have due regard to all the relevant circumstances including that.”   In this judgment leaned Single Judge held that merely because the consumer of such goods are educated and have higher disposable income, it cannot be said that there will be no deception. We agree. We also do not think that the tests indicated in the case of Lancer Trade Mark (supra) which was in case of automobiles, is applicable in case of washing machines. In case of automobiles the class of buyers is different and they exhibit a high degree of brand consciousness.  
  1. Furthermore for maintaining action under passing off it is not necessary that the person must himself actively carry out the misrepresentation. It is enough that an instrument of deceit is created with full knowledge and intention and also no steps are taken to stop the deceit. The action of passing off can be maintained if the offender with full knowledge creates a situation where the consumer can be deceived. Creating opportunities where consumer can be deceived is enough to sustain action under passing off.
 
  1. In the case at hand, the product is a washing machine. A washing machine is quite often sold in large shops or in shopping malls where several models of different brands of washing machines are kept together. If the consumer is attracted by a particular design of a washing machine, then he may choose the washing machine with that design, irrespective of the brand. The distinctive design of the Whirlpool is not meant to add functionality to the product, but to make it look more attractive. It is common knowledge that the washing machine in a store cannot be tested to see as to how it performs. With several brands manufacturing washing machines, the general basic level of functionality is expected from the leading brands. What the design of Whirlpool seeks to do, is to try to make the washing machine otherwise a piece of machinery, to make it look more artistic and appeal to aesthetic sense. The design seeks to appeal to the heart rather than to the head, to use common parlance. Once the consumer likes such a design, then the choice is made on aesthetic values rather than solely on functionality. Mr.Kadam therefore is right in contending that once a consumer is attracted to the design, the consumer can very well opt for a cheaper and smaller version of the design when it is placed in the same showroom. The average consumer of washing machine as depicted by Mr.Tulzapurkar, as being of rational thought, of certain education and affluence, need not necessarily make a logical choice based on functionality and brand when decision is to be made based on aesthetic appeal.
 
  1. Thus Mr.Kadam is right in contending that even though Videocon may not have actively misrepresented to the consumer, it has nevertheless knowingly created a tool for deception and thus is guilty of passing off. According to us, action of passing off is clearly made out. The design registered by Whirlpool has been a success and according to them, about three lakh machines have been sold in a short span. The design registered by Whirlpool is very similar to the impugned product. The washing machine designed and sold by Whirlpool has been in market since September, 2010 and have sold about 3 lakh machines because of its innovative design. No reason is placed on record as to how the Videocon thought of designing the washing machine with same distinctive shape in June, 2012. To our mind it was to take advantage of popularity of the design of Whirlpool washing machine.
 
  1. It was also contended on behalf of Videocon that the Videocon is pioneer in manufacturing semi automatic washing machines in India. It was also contended that the Videocon has a large team of R & D Personnel and has won several awards for its designs. It has been accredited with ISO certifications and it also manufactures several products such as refrigerators, micro-ovens, mixtures, toasters, irons apart from manufacturing the washing machines. It was thus contended that with such a brand reputation it is not likely that the Videocon will try to sell its products as the products of Whirlpool. Be that as it may, we do not find that the argument that merely because a brand is well known it will not indulge in passing off products of another well known, as convincing. With the market place crowded with many brands and products with stiff competition vying for a share in the sales, it will be too naive to carry such presumption. Apart from this position, the credentials of Videocon have been doubted by Whirlpool, which has placed on record that earlier also Videocon had tried to imitate the product designed by Whirlpool, for which prohibitory order had been passed against it.
 
  1. As noted above, we have had an opportunity to have a look at both the washing machines throughout the proceedings as both the washing machines were brought to the Court. Employing the test of being solely judged by eye, we found both the machines to be extremely similar. Apart from other legal aspects of the matter, ultimately what is also material is how two designs appear to the eyes of the average buyer. Even by employing this test alone, the case of the Videocon that its machine is not similar to the machine of Whirlpool, must fail.
 
  1. We do not find any merit in the contention that the learned trial Judge ought not to have granted the relief of injunction at the ad-interim stage and ought to have deferred the decision regarding it till the conclusion of the trial. Once it is clear that the registered design has been infringed and the goods are being passed off, then, in view of the object for which the Act is enacted, it is necessary to restrain the infringer forthwith unless exceptional grounds are made out for refusal. After coming to a prima-facie conclusion that there is infringement of registered design, the injunction cannot ordinarily be deferred till the conclusion of the trial. To do so, will make the protection granted under the Act, illusionary. Once a prima-facie case was made out in this case that the registered design of Whirlpool was infringed, then the balance of convenience was in restraining the Videocon from benefiting from the infringement. Thus, the learned trial Judge was right in injuncting the Videocon from manufacturing and marketing the impugned product at the ad-interim stage. Even otherwise, the Videocon had full opportunity of presenting its case before the order and had in fact filed a detailed affidavit in reply.
 
  1. We may also note that we are exercising appellate jurisdiction over the discretionary order passed by the trial Judge, who also applied the same test and came to the conclusion that the products are similar and action of infringement and passing off has been made.
  The appeal is thus dismissed.  

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