1. In this application the petitioner has asked for protective orders relating to the petitioners copyright in a registered design. The design is in respect of a container. The design has been registered under the Designs Act, 1911 (hereinafter referred to as the 1911 Act).

It is the petitioners case that it had developed a non-metallic container having a unique, novel and distinctive shape and configuration which is the design in question. It is said that the design was developed after considerable research and expenditure by the petitioner. The petitioner states that since December, 1991 the petitioner had been selling premium brand motor oil in the specially designed container. It is said that the petitioner incurred substantial expenditure in promoting the product in those containers. It is further said that the specially designed containers were exclusively associated with the petitioners product. The petitioners grievance is that the respondent no. 1 has been wrongfully manufacturing and using the registered design of the petitioner in respect of container in which the respondent no.1 was selling automotive lubricants. The respondent no. 2 is the selling agent/distributor/dealer of the product manufactured by the respondent no.1. The petitioner accordingly filed a suit for inter alia a perpetual injunction to restrain the respondents from infringing pirating and enabling the infringement of the copyright of the petitioner in the registered design or from using a design on containers which was deceptively similar to the registered design of the petitioner. In addition, the petitioner has also asked for a monetary decree against the respondent and other ancillary relief.

2. This application was moved on 11th October 1993 for an interim injunction in respect of the main relief claimed in the suit as also for orders to restrain the respondents from marketing their products or advertising them in containers to which the registered design of the petitioner applied. On 11th October, 1993 an interim order was passed restraining the respondent from utilising the design. An appeal was preferred by the respondent no.1 from the ad interim order before the vacation bench. The operation of the order dated 11th October, 1993 was stayed. The appeal was disposed of and the interim order was made absolute by the division bench to continue until the disposal of this interlocutory application by the trial court.

3. The affidavits have since been filed and the matter argued at some length. Written notes of arguments have also been submitted. The petitioner has said that at least in March, 1992 the respondent no.1 had been marketing its products in containers which were totally different from those of the petitioner. The petitioner came to know in January, 1993 that the respondent no.1 was advertising its product in containers having a design almost identical with the registered designs of the respondent no-1 complaining of the infringement of the registered design. The respondent no.1 replied to the petitioner pointing out certain features which according to the respondent no.1 distinguished the containers used by the respondent no.1 with those of the petitioner. This reply was given on *26th February, 1993. According to the petitioner, it could not take any steps to protect its rights in the design for several months because of the major bomb blast in Bombay in March, 1993. It was only in September, 1993 that the petitioner caused search to be made under the 1911 Act. According to the petitioner, the joint Controller of Patents and Designs issued a certificate on 4th October, 1993 to the effect that the design of the respondent no. 1 was similar to the designs of the petitioner. It is further submitted that upon a visual assessment of the design of the container registered by the petitioner and the design of the container used by the respondent no.1 it would be clear that the design of the respondent no.1 was an infringing copy. Several decision have been referred to by the petitioner in support of its case against the respondent which will be considered subsequently.

4. The respondent no. 1 has submitted that it has been manufacturing and selling lubricating oil since 1920 and the oil is extensively marketed throughout India. It is claimed that the respondent no.1s turnover is higher than the turnover of the petitioner. It is submitted that the customers purchasing lubricating oil are more concerned with the content of the container than the design of the container. As far as designs of the container is concerned it is said that an examination of the two designs would show that there were several dissimilarities between the two design. The respondent no.1 has disputed that the petitioner has incurred expenditure of advertisement with regard to the container. It is urged that what was advertised was the quality of the engine oil being sold . It is emphasised that there is no reference in the advertisement to the container . It is stated that the petitioner sells some of its products in tin cans. It is submitted that the comparison must be made with a "tutored eye" after considering the totality of the design. Reliance has been placed on several decisions to contend that there had been no infringement of the petitioner no.1s design and that the prayer for injunction should be refused.

5. According to the respondent, there is also a difference in the colour, packaging, and the shape of the ridges. It is said that several other manufacturers are marketing their oil in similar type containers and that there was nothing unique and original in the petitioners design.

6. Before considering the merits of the submission made, the statutory provisions relevant to an action based on a registered design may be considered. The petitioners design has been registered under the Designs Act, 1911 read with the Designs Rules, 1933.

7. The Designs Act 1911 (hereafter referred to as the ) was originally termed as the Patents and Design Act, 1911. Both-the name of the and substantial portions. of the body of the statute were amended after the enactment of the Patents Act, 1970. The Act as it now stands provides for the protection of design. The word Design has been defined in section 2(5) of theas meaning:

"(5) design means only the features of shape, configuration , pattern or ornament applied to any article 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 sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958, or property mark as defined in section 479 of the Indian Penal Code."

8. The operative words are shape, configuration, pattern or ornament. These are not protected in the abstract but must be applied to an article. For the protection of a design any person claiming to be the proprietor any new or original design not previously published in India may apply to the Controller General of Patents, Designs and Trade Marks for registration of the design. The design is registered in more than one class. When a design is registered the date of the application for registration is taken as the date of registration (see: section 43 of the). Once a design is registered a certificate of registration is granted to the proprietor of the design by the Controller. Every registered design has a copyright in the design during 5 years from the date of the Registration which may be extended for further consecutive period of 5 years (see : section 47).

9. Section 2(4) has defined what a copyright on registration of the design means. Section 2(4) reads under :

"(4) copyright means the exclusive right to apply a design to any article in any class in which the design is registered."

10. In section 51- A registration of a design may be cancelled on specified grounds including the ground that the design is not a new or original design. The only other relevant section of the for the purposes of this application is section 53 which deals with the question of piracy of registered Designs. General speaking this section prohibits any person during the existence of copyright in any design

"(a) for the purpose of sale to apply or cause to be applied to any article in any class of goods in which the design is registered the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or

(aa) 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

(b) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of goods 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."

11. Section 53(2)(b) gives the proprietor of Registered Design the option to bring a suit for the recovery of damages for any such contravention and for an injunction against the repetition thereof.

12. The Registration of Designs is made with reference to a class of goods. The class of goods is set in 4th Schedule to the Designs Rules, 1933. The petitioners design was registered with reference to class-3 of the 4th Schedule. This reads as follows:

"class 3. Articles composed wholly of India rubber, wood, bone, ivory, papier mache, celluloid, bakelite, or like substance, or of materials in which such substance predominate (except articles included in class 10)."

13. The petitioners application for registration was dated 13.11.1990. The statement of Novelty claimed originality in the shape, configuration and surface pattern particularly in the portion marked P of the container. The design is of a container the body of which is rectangular in shape, the top of which is like a triangle, the tip of the triangle ending in the mouth of the container and the back of the triangle supporting the handle. Just below the handle along the narrow side of the container are ridges which have been marked p in the application. This is -the design which has been registered. Enclosed with the application were photographic representations showing the front view, a top view and an underneath view.

14. Copies of advertisements have been annexed to the petition to show that the petitioner had advertised product Castrol GTX 2 in the container as designed.

15. Castrol GTX 2 was introduced in India in November and December, 1990. Publications were made in diverse newspapers all over the country relating to the introduction.

16. The respondent no.1 sells petroleum products under the trade name Veedol. The respondent no.1 sells some of its products in non-metallic containers the body of which is rectangular with a ridged side. The top is not quite as triangular as the petitioners design. The top of the triangle is flattened to a larger extent. But like the petitioners design the sloping side of the top supports the handle. The entire container is larger than the petitioners and is capable of holding 5 litres as opposed to the 4 litres container of the petitioner. At the hearing the respondent no.1 produced containers being utilised by Indian Oil Corporation Ltd. and Bharat Petroleum Corporation Ltd. The design of the container used by these two companies are similar in the sense that they have rectangular bodies with a ridged side, a triangle like top with a handle on the slope of the triangle and the top triangle ending in the mouth of the containers.

17. The difference in the petitioners containers and the containers of the other concerns including the petitioner is primarily in the proportions of the rectangle and secondarily in the colours used. But broadly speaking there can be no doubt that the design of the respondents container bears a family resemblance to the petitioners design see : Best Products Ltd v. F.W. Woolworth & Company Ltd. 1964) IX RPC 215. There can also be no doubt that the design used by in. respondent in respect of the very class of goods in respect of which the petitioners design is registered.

18. The sequence of the obligation of the court in considering an application for infringement of a design is first to consider whether protection is claimed in respect of a design .3r of the mode of manufacture. The first is protected by the Design Act 1911 and the second by the law of patents. A design protects an idea embodied in a particular form while a patent protects the idea itself See : Philips v. Harbio Rubber Company (1920) 34 RPC 233.

19. The court is then to consider whether the design is in fact novel and if so to what extent. This follows from section 43 of theunder which the registration under the can be made of a new or original designs not previously published in India.

20. But all novel designs are not protected. - Novel designs which are purely functional cannot found an action for infringement see : In re : Lamson Industries Ltd.s Application (1978) RPC 1. The object of the Designs Act is to protect shape but not a functional shape and if shape and configuration are dictated solely by function it is not registrable as a design. The decision in the case of Amp. Inc. v. Utilux Pty. Ltd: 1972 RPC 103, of the house of Lords related to the manufacture of electric terminals.

21. Lord Reid J. said :

"... and the words judged solely by the eye must be intended to exclude cases where a customer might choose an article of that shape not because he thought that the shape made it more useful to him."

22. The next question is whether there is sufficient resemblance between the allegedly infringing copy and the petitioners registered design to found an action for infringement under section 53 of the. It is not every resemblance in respect of the same article which would be actionable at the instance of the registered proprietor of the design. The copy must be a fraudulent or obvious imitation. The word imitation dose not mean duplication in the sense that the copy complained of need not be an exact replica. The word has been judicially considered but not defined with any degree of certainty. In Best Product Ltd. (supra) it was said in deciding the issue of infringement, it was necessary to break the article down into integers for descriptive purposes but in the ultimate result it is the article as a totality that must be compared and contrasted with the features of a shape and configuration shown in the totality observable from the representation of the design as registered. It was said that the Court must address its mind as to whether the design adopted by the defendants was substantially different from the design which was registered.

23. Apart from such overall resemblance in the design, the authorities have held that the Court is required to see in particular as to whether the essential part or the bases of the petitioners claim for novelty forms part of the allegedly infringing copy. In Best Products Ltd. v. F.W. Woolworth & Company Ltd. (supra) the essential part of the registered design of a whistling kettle was found by the Court to be the shape of the spout and the cap applied to it. The Court said that -the very form of the registration emphasised that it was in respect of the audible alarm characteristic that the application of the plaintiffs registered design found its intended exploitation. The audible alarm, according to the learned Judge necessarily assumed a primary significance. The difference between the audible alarm of the plaintiffs kettle and that of the defendants kettle as being marked, the action for infringement was dismissed see: also in the context Phillips v. Harbro Rubber Company (1920) 34 RPC 233 and Dunlop Rubber Co. Ltd. vs Golf Ball Developments Ltd. (1931) 48 RPC 268, 281.

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 Benchairs Ltd. v. Chair Center Ltd. 1974 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."

25. In judging the articles solely by the eye the Court must see whether the defendants version is an obvious or a fraudulent imitation.

26. In Dunlop Rubber Co. Ltd. v. 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."

27. In a later portion of the judgment it was said :

"...fraudulent imitation seems to me to be an imitation which is based upon, and deliberately based upon, the registered design and is an imitation which may be less apparent than an obvious imitation; that is to say , you may have a more subtle distinction between the registered design and a fraudulent imitation and yet the fraudulent imitation, although it is different in some respects from the original, and in respects which render it not obviously an imitation may yet be an imitation, imitation perceptible when the two designs are closely scanned and accordingly an infringement."

28. Applying these principles to the facts of the case before me I am prima facie of the view that the respondents are guilty of infringement of the petitioners registered design.

29. The petitioners complaint is relatable solely to the shape of the containers and not to the mode of manufacture. The shape of a drinks bottle or a carton is clearly projectable as a registered design even though the purpose behind the shape is to persuade a customer to purchase the contents of the bottle or carton rather than the packaging itself. See Morris & Quest : Design, the Modem Law & Practice para 11.4.2.)

30. The. Controller of Patents and Designs registered the petitioners design because he must have been satisfied that the design was new and original. Under section 51A of the Act, it was open to any concern to ask for cancellation of-the petitioners registration of the design if there were any grievance that the petitioners design was not a new or original design. No such application has been made by concern including the respondents before the Controller.

31. There is no evidence even prima facie that there was any design like the petitioners design used in the market prior to the registration of the design. in question. The certificate of registration was granted to the petitioner on 13th November, 1990. The two samples of similar containers used by Bharat Petroleum and the Indian Oil Corporation and produced by the respondents bear the dates September 1993 and November 1993 respectively.

32. Not only have the respondent failed to show that petitioners registered design was neither new nor original, there is prima facie proof that prior to 1993 the respondent no.1 was not using the containers like the petitioner at all. The petitioner has annexed copies of the February, 1993 issue of a magazine entitled "Power and Pack International" which supports the case that the respondent started using design similar to the petitioners registered design only in 1993. The article refers to the fact that Veedol (a trade name of the respondent no.1) had just launched a bold and dynamic "new packaging concept."

33. The statement of novelty filed by the petitioner was in respect of the shape, configuration and surface pattern particularly the ridged side of the container. The novelty was not claimed either in relationship to the proportion of the shape or in the colour used. Therefore, the difference in the proportion of the container and the difference in colour between the petitioners containers and the defendants containers are immaterial as neither of the colour nor the proportions were part of the registered design. See Sommer Allibert (UK) Ltd. v. Flair Plastic Ltd. : 1987 25 RPC 599.

34. It has not been urged by the respondents that any part of the design in question was purely functional. Even if some function could be ascribed to the triangular top and handle the side ridges marked P in the statement of Novelty is nothing more than ornamental. It must be remembered that this case cannot be compared to cases where the article to which the registered design is applied is itself the object of purchase such as the design of a kettle, chair, golf ball, etc. Here the design is in the packaging of the petitioners product. "In the field of packaging, copyright can be especially valuable" [Morris & Quest Ibid.] because an attractive packaging of a product might contribute to the sale of the product itself.

35. The respondents say that the purchaser would be interested in the oil and that the purchaser of lubricating oil would not be persuaded to buy a particular brand of oil by the shape of the containers in which the oil is sold. The matter is not quite so simple. The fact that the design may not influence a purchaser of oil does not mean that the design plays no part the marketing of the product. But if the argument of the respondent is taken to be correct there would be no scope for the Court assessing the matter from the point of view of the purchaser or customer.

36. , According to the statement of novelty filed by the petitioner along with its application for registration it would appear that the essential feature in the design was the ridged side. The other salient feature is the sloping top and positioning of the handle. The triangular top and ridged side are both striking features of the design which "catch and hold the eye". Both these striking features have been included in the defendants design in obvious and recognisable form.

37. Under section 47(1) of thethe Registered Proprietor of the design has a Copyright in the design which means that it has the exclusive right to apply the design to any article in the class only the design is registered. This is an action for infringement of that copyright in respect of class 3 grade by the petitioner.

38. The test of deceptive similarity would be appropriate where the petitioner pleads passing off. But in cases of infringement of design the question is not whether the similarity has or is likely to cause confusion or deception of a purchaser but whether the similarity is an imitation of the registered design sufficient to destroy the exclusive right of user of the proprietor despite the fact that no confusion is or may be caused as to the source of the goods. Otherwise every registered design could be imitated with impunity merely by changing the colour of the two products thus obviating any confusion. In my view the respondents have so imitated the petitioners design as to deprive the petitioner of the protection under the Statute.

39. In addition to the prima facie satisfaction that the petitioners rights under the as registered proprietor of the design in respect of the containers has been infringed by the respondents, I am also of the opinion that the balance of convenience requires that the respondents should be restrained from using the design. Besides where there is infringement of a Copyright, an injunction should normally be granted as the matter of course as damages would not be an adequate remedy See : Penguin Books Ltd. England v. India Book Distributors : AIR 1985 Del. 29 [LQ/DelHC/1984/317] Para 47. In addition in this case it is on record that the respondent No. 1 has been and is still using other designs for sale of its products in the market. No such damages would be suffered by the respondents as cannot be compensated in the event the suit is ultimately dismissed if they are restrained from for selling other products in non-metallic containers with the same or a similar design.

40. It was sought to be argued by the respondents that the petitioners should not be granted their relief by reason of the delay between the admitted knowledge of the alleged infringement of the petitioners design and the filing of the suit. This argument is unacceptable. Apart from the explanation given by the petitioner for the delay which I see no reason to discredit, the question of delay may be and-perhaps was, the relevant consideration in denying the petitioners ad interim relief. After the filing of affidavits, in my view the question of delay is no longer a relevant consideration. Furthermore, the delay in this case cannot be said to be an unconscionable one. -Finally as observed by a Learned Single Judge of the Bombay High Court, "the question of delay has to be balanced against the likelihood of the plaintiff ultimately succeeding in the action and where the strength of the plaintiffs prima facie case is very strong, the plaintiffs delay in filing the action would not disentitle the plaintiff to relief see : Astra-IDL Ltd. v. TTK Pharma Ltd., AIR 1992 Bom 35 [LQ/BomHC/1991/400] and see also M/s. Hindustan Pencils (P) Ltd. v. India Stationery Products Co., AIR 1990 Del 19.

41. For the reasons aforesaid there will be an order of the injunction restraining the respondents nos. 1 and 2 and each of them by themselves or by their servants or agents or dealers or any of them or otherwise howsoever from infringing/pirating or attempting or causing enabling or assisting others to infringe/pirate the copyright in the registered Design No. 162663 of the petitioner or in any way using a design on containers which is similar to the such registered design of the petitioner.

42. Costs in the cause.