Page 52 - A&A Patents&Design Rewind-2016

ORIENTATION VERSUS CONFIGURATION
The Plaintiff, Selvel Industries Ltd., being the
registered proprietor of design of a lid (with on record to show prior publication or use.
a typical wave form design) as well as the bowl, With regard to the other similar products in the market,

and the container (comprising both bowl and lid) filed a the Court also held that it is no defence for an infringer

complaint against the Defendant, Om Plast (India), on the to say that others have been equally guilty of infringement

grounds that the Defendant’s product is indistinguishable or passing off. Just because the market is flooded with

from that of the Plaintiff and that the Defendant has not imitators does not rob a registered design of its validity or

only infringed the Plaintiff’s registered design but has also of its novelty or originality.

sought to pass off its product as that of the Plaintiff.

The Plaintiff has fused or moulded the white wave-form

The Defendant argued the following defences: (a) that portion into the lower receptacle to achieve the desired

there is no novelty in the Plaintiff’s design which is a very new and original result .It was held that the wave portion is

minor variant ,(b) that the Plaintiff has registration only not an ornamentation or a pattern based on the following

for a shape and configuration and the wave-form is ‘simply reasons:

ornamentation’, (c) that there are a number of other (a) Firstly, the wave-form portion is fused in the process

companies who used identical and indistinguishable designs, of fabrication into the container or article itself, and

(d) that there are other registrations as well ,(e) that no has become one with it. There is a unity in this. The

case of passing off is made because the Plaintiff’s sales are wave-form is now inseparable from the rest.

insignificant and , (f) that the Defendant too has a design (b) Secondly, there is a difference between configuration

registration which precedes the Plaintiff’s registration and and ornamentation.

is otherwise indistinguishable. (c) Thirdly, “the white portion is not an ‘article’ by itself,

capable of what has been described as a stand-alone

The Defendant, in particular, argued that the design itself identity. It is a part, integer or element, one that is

was not registrable since it was not a design at all and fell fused into another part to bring into being an entirely

foul of Section 19. new and original -- that is to say, novel – article”.

The Plaintiff argued that they have a subsisting registration Therefore, the Court held that even if the wave-form
today and that there was no material on record to show integer was part of a previously known article, its use
that there was anybody with a design either in India or in the specified manner to yield a novel article is not
elsewhere of the kind over the Plaintiff’s proprietary rights. forbidden. None of them have this fused or moulded wave
or sinusoidal pattern in this form applied to a container.
The Plaintiff relied on definitions of “configuration” in the
Concise Oxford Dictionary as an arrangement of parts It was also observed that the Defendant’s container was
or elements in a particular form or figure and on other an obvious and slavish imitation of the Plaintiff’s and had
dictionaries which referred to a “configuration” as the way no relation whatsoever to the Defendant’s own design. A
constituent parts are arranged, or something (a figure, sufficient prima facie case was found to be made for both
contour, pattern or apparatus) that results from a particular infringement and passing off. The Court found the balance
arrangement of parts or components. It was argued that of convenience favouring the Plaintiffs, to whom great
looking at the two objects, one should imagine this is true prejudice was imminent if reliefs were denied. In light of
of this container, where the white portion being fused or the same the Defendant was retrained from manufacturing,
moulded into the container makes it a component and part marketing and/or selling in any manner whatsoever, the
of the article’s configuration, not just pure ornamentation container based on the Plaintiff’s registered design by a
or a pattern. temporary order of injunction.

The Court granted interim relief to the Plaintiff. The Court The order can be accessed at:-
found the Plaintiff’s design prima facie both, new and https://indiankanoon.org/doc/105734429/
original since the Defendant failed to present any material

52 | Patents & Design