Madras High Court: In a plaint filed under Order IV Rule 1 of the Original Side Rules and Order VII Rules 1 of Civil Procedure Code, 1908 (‘CPC’), read with Section 11 and 22 of the Designs Act, 2000, read with Proviso 1 to Section 7 of the Commercial Courts Act against infringement and passing off the Prestige Pressure Cooker’s design, Abdul Quddhose, J., has granted the following reliefs:
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A permanent injunction prohibiting Nirlon Kitchenware and his agents, from manufacturing, selling, offering for sale, exporting, advertising, pressure cookers in any size or variation that bear the contested designs, or any other design considered fraudulent or an obvious imitation of the Prestige design.
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A permanent injunction restraining Nirlon Kitchenware and his agents in any manner passing off and enabling others to pass off their pressure cookers as and for Prestige’s Svachh Pressure cookers.
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Nirlon Kitchenware was directed to surrender to Prestige for destruction, all moulds, blocks, dyes, brochures, and all other materials used for the manufacture and marketing of Pressure cookers which are identical to or imitation of Prestige’s’ registered design.
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A preliminary decree was granted in favour of Prestige by directing Nirlon Kitchenware to render account of profits made by imitation of the Prestige’s registered design.
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Nirlon Kitchenware was also directed to pay the cost of the suit.
Background
Prestige designed and manufactured Svachh pressure cookers which had a unique design. The novel feature of the design of the pressure cooker was its contoured lid with a peripheral wall, with a depression on the inside. The design was invented by Prestige, and they were the first company to manufacture this design.
Prestige alleged that Nirlon Kitchenware knowingly replicated a unique aspect of their design, having taken advantage of its immediate success and deliberately copied this distinct feature, constituting an infringement of the Prestige’s registered design. Nirlon Kitchenware blatantly copied this design, manufactured it and sold it for gaining illicit profits from the product.
Prestige claimed that their Svachh pressure cookers’ appearance and branding held significant goodwill exclusively tied to their brand and any similar look or branding used by others could confuse consumers about the Nirlon Kitchenware ‘s connection to Prestige.
Prestige claimed that Nirlon Kitchenware’s actions were fraudulent and solely aimed at illegitimately profiting from Prestige’s goodwill in the design as this was evident in the comparison between both designs and the defendant’s marketing of a phonetically similar “Svachh” or “Swachch” series. Thus, Prestige filed a suit against infringement and passing off their Pressure Cooker’s design.
Analysis
. The Court said that Prestige has obtained registration of its design under the Designs Act and as per its certificate there is novelty in the shape and configuration of Prestige’s pressure cooker.
The pictures of both the designs as well as the physical features of the pressure cookers of the parties were compared by the Court as given below:
The Court said that the lids were identical as the design was one and the same. The Court added that Prestige was in the market of manufacturing pressure cookers for a long time and their trade mark is well known and their turnover was huge.
The Court said that this suit was filed before the Court on 21-06-2023 and despite of summons by the Court the defendant did not appear before it and hence they were set exparte. The Court further added that Prestige, having been in the pressure cooker market for an extensive period, presented sufficient evidence and assertions in the complaint regarding their market standing.
Upon examining Nirlon Kitchenware design and considering the evidence provided by Prestige, the Court held that Nirlon Kitchenware has blatantly replicated the overall design of Prestige’s pressure cooker lid from their Svachh series of pressure cookers.
The Court said that since the defendant has remained exparte and the contentions of the plaintiff have not been rebutted, this Court had to accept the plaintiff’s contentions that the defendant had fraudulently and with malicious intent infringed upon the plaintiff’s design, which was the subject matter of the suit, to gain undue and unlawful profits.
The Court said that the contoured lid of the pressure cooker with a peripheral wall and a depression on the inside was the novel feature of the design, which has been blatantly copied by Nirlon Kitchenware.
Thus, the Court granted injunctions against Nirlon Kitchenware.
[TTK Prestige Ltd. v. Nirlon Kitchenware Private Ltd, 2023 SCC OnLine Mad 7564, decided on 06-11-2023]
Advocates who appeared in this case :
Counsel for the Plaintiff: Mr.Arun C. Mohan
