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Petitioner: TEAM NAYYER (PVT.) LIMITED through Authorized Attorney VS Respondent: SUI SOUTHERN GAS COMPANY LIMITED and anothers
Court Name: Sindh High Court Judge(s): Munib Akhtar, Muhammad Ather Saeed Title:TEAM NAYYER (PVT.) LIMITED through Authorized Attorney vs SUI SOUTHERN
GAS COMPANY LIMITED and anothers Case No.: H.C.A. No,297 and C.M.A. No,1340 of 2006 Date of Judgment:2010-10-04 Reported As: 2011 CLD 285 Result: Appeal allowed Judgment ORDER ' MUNIB AKHTAR, J.--- This appeal arises out of an interim order dated 16-5-2006 made by the learned single Judge in Suit 1388 of 2005 pending on the original side of this Court. The suit was filed by the present appellant, as plaintiff, against the respondents as defendants, in respect of the alleged violation by the latter of the rights of the former under the Registered Designs Ordinance, 2000 ("2000 Ordinance"). (For convenience, the parties are hereinafter referred to in the same manner as they are arrayed in the suit.) The plaintiff claims to be the registered proprietor of certain designs under the 2000 Ordinance. The first of these designs was Design No,11357-D, registered on 31-5-2003 ("the First Design") while five other designs were registered subsequently, three being Design Nos.12310-D, 12311-D and 12312-D which were registered on 2-7-2005, and two being Design Nos.12328-D and 12329-D which were registered on 14-4-2005 (all of these designs being hereinafter referred to as the "Subsequent Designs"). All of these designs were in respect of canopies for motor vehicles. The plaintiffs case, as made out in the suit, was that sometime in December, 2003, it started work on preparing canopies for use by vehicles belonging to the defendant No,1 ("Sui Southern") by way of customizing its registered design (which at that time was of course, only the First Design) to suit the latter's purposes. The plaintiff contended that this work carried on for several months, during which it incurred huge expenditure in tailoring and modifying its design for Sui Southern and also handed over to the latter prototypes of the canopies duly fitted onto its vehicles. Sui Southern expressed full satisfaction with the work done by the plaintiff and it was clearly understood that the contract for manufacturing canopies for its vehicles would be awarded to the plaintiff. However, the plaintiff was informed that the procurement procedures
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mandated for Sui Southern required that all contracts be by way of tender. The plaintiff claimed that it was assured that this was a mere formality, but one which had to be undertaken. Accordingly, a tender was floated by Sui Southern (in February-March, 2005), in which detailed specifications of its requirements (including a sketch/drawing) were given. The plaintiff stated that (merely as a matter of form) it put in a bid after the tender had been floated, but much to its shock and consternation, the contract was awarded to the defendant No,2. The plaintiff alleged that the prototype developed by it for Sui Southern was handed over to the defendant No,2, and that in gross violation of the plaintiffs rights under the 2000 Ordinance, canopies were manufactured and supplied by the said defendant to Sui Southern. In the meanwhile, but after the tender the plaintiff also got registered the Subsequent Designs. 2. It was in these circumstances that the plaintiff was constrained to file the suit aforementioned in this Court, along with which the plaintiff also made an application for interim relief. Both the defendants appeared in the suit and vigorously contested the grant of any relief to the plaintiff. The latter's application for interim relief was eventually heard by the learned single Judge but was dismissed by means of the impugned order. 3. 3. The learned single Judge held that it was not the plaintiffs case that the defendants had infringed the First Design; he concluded that the dispute was as regards the Subsequent Designs. He also observed that the First Design was different from the Subsequent Designs. The learned single Judge also concluded that the plaintiff had made the canopy for Sui Southern under its instructions and it was only subsequently, and much later, that the latter invited bids by means of the tender aforesaid. The learned single Judge observed that there was some similarity between the sketch/drawing of the desired canopy as required by Sui Southern through the bid documents and the Subsequent Designs. However, he held that the tender was published on 2-3-2005, while the first of the Subsequent Designs was not registered in favour of the plaintiff till July, 2005, i.e., till after the tender had been floated. Crucially, the learned single Judge concluded from the photographs of the canopies manufactured and sold to Sui Southern by the defendant No, 2, when compared with the registered design of the plaintiff (the copies of which were also available on record) that "it is difficult to say that the same are copy of the plaintiffs design". The learned single Judge also concluded that any damage that the plaintiff may have suffered on account of any alleged infringement (which would of course have to be established at the trial) could be assessed in terms of money and awarded by way of damages. Thus, the learned single Judge was satisfied that the plaintiff had been unable to make out any case for interim injunctive relief, and as noted above, dismissed its application. Being aggrieved by the aforesaid order, the plaintiff preferred the instant appeal. On 1-9-2010, learned counsel appearing for the parties were put on notice that the appeal would be heard and disposed of finally at Katcha Peshi stage. It was subsequently heard on the date aforementioned. 4. Learned counsel for the appellant assailed the impugned order on a number of grounds. He referred to the various provisions of the 2000 Ordinance to explain in detail the rights thereby conferred and the manner and extent to which they could be, and were in the present case, in fringed upon and the remedies that were available against such infringement. He submitted that the plaintiffs case was that it was the First Design that had been infringed by the defendants and emphasized that this was the registered design owned by the plaintiff long before the contract between Sui Southern and the defendant No, 2, and the tender that had been floated by Sui Southern. He submitted that the correspondence between the parties and the work done by the plaintiff for Sui Southern clearly showed that the canopy being prepared by the plaintiff for the latter was based on the First Design, subject to such alterations and modifications as Sui Southern required to suit its particular needs and purposes. His case was that such customization was only
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of a minor and incidental nature which did not affect the basic design of the canopy which was, and remained, squarely based on the First Design. Insofar as the tender was concerned, learned counsel submitted that the plaintiff participated in it only on the assurance by Sui Southern that this was a mere formality. According to him, such participation did not amount to any acceptance by the plaintiff of the infringement of any design rights nor did it amount to any waiver of the same. His case was that the plaintiff would not have put in the effort and incurred the expenditure that it did if there were not a clear understanding between the parties that Sui Southern would only use the plaintiff for the manufacture and supply of canopies as per the latter's design. In support of his submissions, learned counsel placed reliance on Team Nayyer (Pvt.) Ltd. v. Tariq Ahmed Sultani 2008 CLD 94 (Karachi), Team Nayyer (Pvt.) Ltd. v. Kamran Jamal Khan 2008 CLD 227 (Karachi), Mere & Co. v. Hilton Pharma (Pvt.) Ltd. 2003 CLD 407 (Karachi) and Valor Heating Company Ltd. v. Main Gas Appliances Ltd. (1972) FSR 497. 5. Learned counsel for Sui Southern defended and supported the impugned order. He submitted that the work done by the plaintiff in developing the canopy had been carried out on the instructions of Sui Southern and the sketch/drawing shown in the tender was reflective of this work. Thus according to learned counsel, the design of the canopy as required by Sui Southern, both from the plaintiff and in terms of the tender, was determined by Sui Southern and had nothing to do with the registered designs of the plaintiff. In fact, according to learned counsel, it was the plaintiff who was violating the rights of Sui Southern inasmuch as after the tender was floated, the plaintiff went and 'got the Subsequent Designs registered in terms of the sketch/drawing contained in the tender. His case was that there was no infringement whatsoever by Sui Southern of the First Design. Learned counsel also submitted that in any case, the design in question had no novelty in it and was a known and commonly used design. Accordingly, he challenged the validity of the plaintiffs registered designs and submitted that since they were invalid, no question arose of any infringement of the same. He submitted that the entire case made out by the plaintiff, both as to the work done and expenditure allegedly incurred by it, and the violation of any rights, whether under the 2000 Ordinance or otherwise, was entirely without merit. He placed reliance on Mehran Plastic Industries (Pvt.) Ltd. v. Registrar of Designs and others 2006 CLD 546 (Karachi), Wali Oil Mills Ltd. v. Faisalabad Oil Refinery (Pvt.) Ltd. 2004 CLD 1198 (Karachi), Universal Brushwares (Pvt.) Ltd. v. Syed Industries and others 1991 CLC 382 (Karachi), Maniar Industries Ltd. v. Mobin Plastic Industries 1987 CLC 135 (Karachi) and Haji Sayed Sikander Shah v. Mian Bahim Bakhsh AIR 1940 Pesh. 38. 6. 6. Exercising his right of reply, learned counsel for the plaintiff submitted that there was no application pending for the cancellation of the plaintiffs registered designs, which were being used by it as its property. Learned counsel further submitted that if the contention of learned counsel for Sui Southern, namely that the sketch/drawing in the tender related only to the Subsequent Designs and not the First Design, were accepted, then the participation by the plaintiff in the tender did not in any manner affect its position vis-a-vis its claim that its rights had been violated. 7. We have heard learned counsel for the parties, examined the relevant record with their assistance and carefully considered the case-law relied upon and statutory provisions referred to by them. Before proceeding to consider the appeal on the merits, one point needs to be examined first. Section 8 of the 2000 Ordinance, which deals with infringement, provides in relevant part as follows:- "8. Infringement.--- (1) If any person infringes a registered proprietor's right, the registered proprietor may bring a suit against him for the recovery of damages and for an injunction against the continuation of the infringement:
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' Provided that, for the purposes of grant of a temporary injunction, the registered proprietor must show that he has a prima facie case and that his design is valid and that it has been infringed by the defendant." It will be seen that the proviso which deals specifically with the grant of interim relief, requires the plaintiff to establish (at least) three things: (a) a prima fade case, (b) the validity of his design, and (c) its infringement by the defendant. Learned counsel for the plaintiff submitted that insofar as the second requirement is concerned, all that the plaintiff has to show is that his design appears on the register of designs (maintained under section 13). In our view, this interpretation is not supported by the language of the proviso, since it does not use the word "plaintiff' but instead refers to the "registered proprietor". The latter term is defined in section 2(j) as meaning, in relation to a design, "the person for the time being entered in the register of designs as proprietor of the design". If the second requirement had the meaning ascribed to it by learned counsel for the plaintiff, it would be rendered otiose since that meaning is in any case carried by the term "registered proprietor". In our view, the proper interpretation of the second requirement is that if the validity of a design is challenged by the defendant at the stage of interim relief, then it is necessary for the plaintiff to establish this before he can be regarded as entitled to an interim injunction. Of course, any finding on the validity or otherwise of the design would only be confined to the stage of interim relief, and would not affect the case of either party on this issue at the trial, or on the merits if (e.g.) the defendant moves an application under section 10 for cancellation of the registration of the design. 8. Since the present appeal is concerned both with the infringement and the validity of the plaintiffs designs, It is necessary to examine in some detail the meaning and scope of the term "design" as used in the 2000 Ordinance. This is defined in section 2(e) in the following terms:--- "'design' means features of shape, configuration, pattern ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye, but does not include a method or principle of construction or features of shape or configuration which are dictated solely by technical and functional considerations." ' The word "article" is defined in section 2(a) as meaning "any article of manufacture and includes a part of an article if made and sold separately". The first point to note is that both definitions are exhaustive since they use the word "means". Insofar as the meaning of "design" is concerned, it can be regarded as having both a positive and a negative aspect. The positive aspect consists of those elements which define the term, while the negative aspect tells us what stands excluded from the definition. In our view, the meaning of "design" can therefore be presented as follows: ' A design is (a) features of (i) shape, (ii) configuration, (iii) pattern or (iv) ornament, or any combination of two or more of the foregoing, which are (b) applied to an article (c) by any industrial process or means, (d) and are features which in the finished article (e) appeal to and are judged solely by the eye but design does not include (f) a method or principle of construction, or (g) features of shape or configuration which are dictated solely by technical and functional considerations. ' We now turn to examine these elements and consider whether and if so, how they apply to the plaintiffs designs. 9. As is clear from the foregoing, the first and foremost requirement of a design is that it must comprise of "features" which are "applied" to an "article". A design is separate and distinct from the article to which it is applied and it is the former that can be registered and not the latter. Therefore,
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in determining whether a design has been infringed or whether it is valid, the first exercise that must be carried out is to determine what is the "article" in question, and what are the "features" of shape, configuration, pattern or ornament (or any combination of two or more of the foregoing) that are being "applied" to the article. The matter was explained thus in Dover Ltd. v Nurnberger Celluloidwaren (1910) 27 RPC 498:--- "...a design means something which is applicable to an 'article.... Design means, therefore, a conception or suggestion or idea of a shape or of a picture of a device or of some arrangement which can be applied to an article by some manual, mechanical or chemical means. It is a conception, suggestion, or idea, and not an article, which is the thing capable of being registered. It may, according to the definition clause, be applicable to any article whether for pattern or for the shape or configuration or for the ornament thereof (that is to say of the article) or for any two or more of such purposes. The design, therefore, is not the article, but is the conception, suggestion. Or idea of a shape, picture, device or arrangement which is to be applied to the article, by someone of the means mentioned in the definition clause. It is a suggestion of form or ornament to be applied to a physical body." (per Buckley, LJ., at pg. 503; emphasis supplied) ' The Supreme Court of India, in Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd. AIR 2008 SC 2520, while considering the meaning of "design" in the (Indian) Design Act, 2000 (section 2(d) thereof, which is in pari materia section 2(e)) cited at length from a leading treatise on the subject, Russel- Clarke and Howe on Industrial Designs (7th Edition, 2005), where it has been stated, inter alia, as follows:-- "Thus a registrable design, as defined by the [(UK) Registered Designs Act, 19491, must have reference to some specific article to which it is to be applied .... It is submitted that a design is an idea or conception as to features of shape, configuration, pattern or ornament applied to an article. Although that idea, while still in the author's head, may be potentially capable of registration, in fact it must be reduced to visible form to be identifiable, and until it is so reduced there is nothing capable of registration, It may be so rendered either by its being embodied in the actual article, or by its being placed upon a piece of paper in such a way that the shape or other features of the article to be made are clear to the eye. Whenever the means of identification..., as soon as the idea is reduced to a form which is identifiable, there is something which is a "design", and which, if new or original, may be registrable." (cited in AIR 2008 SC 2520, para 8) ' Another standard treatise on the subject gives the example of a chair, which the design turns into "something more than a mere chair. It becomes a chair with a conception or suggestion about shape or configuration beyond the fundamental form of a chair" (Intellectual Property Law by Lionel Bently and Brad Sherman (2001), pg. 581). Perhaps a classic example of a design is the iconic Coca-Cola bottle, the mere mention of which conjures up its image in the minds of most people. There, the "article" was a bottle, and the contoured shape given to it was the "feature" "applied" to the bottle by the Coca-Cola Company. (This design was registered by the Coca-Cola Company in most jurisdictions, though of course the term of the design has in almost all cases long since expired.) 10. When the foregoing principles are applied to the facts of the present case, it is clear that the "article" in question is a "canopy". As explained in the New Shorter Oxford English Dictionary (Vol. I, pg. 329), this word (insofar as is presently relevant) has the following meaning: "An overhead covering forming part of the upper structure of a vehicle esp. The cover of the cockpit of an aircraft". The sense in which it is used in the present case is of a box-like structure which is placed on a flatbed or pickup truck behind the cabin. The structure can be used to house or carry passengers or goods or material. This then is the "article". The next question is what are the "features" of shape, configuration, pattern or ornament that have been "applied" to this "article" (i.e., canopy) by the plaintiff so as to constitute its design. When the First Design is examined, it is clear
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that what the plaintiff has added to .The top and front of the canopy is a triangular, wedge shaped element, which element lies or rests on top of the cabin when the canopy is placed or axed on top of the flatbed or pickup. In Gramophone Co. Ltd. v. Magazine Holder Co. (1910) 27 RPC 151, the meaning of "shape" 'and "configuration", as used in the definition of "design" was explained in the following terms: (A) design... May be one applicable to an article 'for the shape or configuration.' ... These two words 'shape' and 'configuration' are not I think tautologous. The word 'shape' prima fade imports, and certainly includes, the external form of the article. 'Configuration' conveys the idea, not of the external form only, but of the construction of a composite article. The word configuration' imports the arrangement by which the shape of a composite article is arrived at." (per Buckley, LE, pg. 159) ' In our view, the triangular wedge shaped element added to the canopy by the plaintiff constitutes the "shape" (i.e., feature) which has been "applied" to the "article" (i.e., the canopy). Thus, the first two elements of the definition (see para 8 supra) are fulfilled. Insofar as the third element is concerned, it is not in dispute that both the manufacturing of the canopy and the additional triangular wedge shaped element added to it is the result of an industrial means or process. The fourth and fifth elements (the last two elements of the positive aspect of the definition) require that the design appeal to, and be judged solely by the eye. The question of what constitutes "eye appeal" was considered by the House of Lords in Amp Inc. v. Utilux (Pvt.) Ltd. (1972) RPC 103. This important case, in which reasoned speeches were delivered by almost all the Law Lords, was considered in detail by the Privy Council in its equally important decision in Interlego AG v. Tyco Industries Inc. (1988) RPC 343, where it was observed as follows:--- "Accepting that there are differences of emphasis in the speeches of the various members of the Committee in the Amp case, their Lordships are nevertheless of the view that the principles to be deduced from it are tolerably clear. First, the primary essential before a shape can be registered as a design is that it should have eye-appeal and in this context (a) the eye is that of the prospective customer and (b) the appeal is that created by a distinctiveness of shape, pattern or ornamentation calculated to influence the customer's choice." (at pg. 355) ' In Dunlop Rubber Co. Ltd. v. Golf Ball Developments Ltd. (1931) 48 RPC 268, it was observed that it may be that "a design has in it a striking feature which catches and holds the eye, and which is the one thing that strikes the eye when one looks at the design" (at pg. 281) and this has since then come to be known as the "striking feature" test. It should be kept in mind that the requirement that the design "appeal to... The eye" does not require that the design must embody any aesthetic beauty in the classical sense; it is sufficient if the design, when applied, has the capacity to qualitatively enhance the decorative value or visual appeal of the finished article (and it must, of course, be capable of being seen because it must be judged solely by the eye). When the foregoing principles are kept in mind, in our view, the plaintiffs design as explained above does have the necessary appeal to attract or influence the choice of a prospective customer. The triangular wedge shaped element can be regarded as the striking feature of the design. This element, when added to the top and front tends to give the canopy a smooth and finished look which (since the wedge sits on top of the cabin) gives the canopy a contoured and sculpted shape that fits in with the body of the truck on which the canopy is mounted. 11. It follows from the foregoing that in our view, the plaintiffs design fulfilled all the elements of the positive aspect of the definition in section 2(e), and it now remains to be considered whether it comes within either of the elements of the negative aspect, because if it does, then it would not be a design within the meaning of the definition. The only element of the negative aspect that needs to be considered is whether the plaintiffs design is dictated solely by "technical and functional considerations". This point (i.e., the exclusion of a design from the definition because its features merely embodied functional requirements), was considered at length by the Privy Council in the
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Interlego case. The Board was there considering the definition of "design" in the Registered Designs Act, 1949 ("the UK Act") which at the material time was in the following terms:--- 'design' means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include--- (a) a method or principle of construction, or (b) features of shape or configuration of an article which-- (i) are dictated solely by the function which the article has to perform, or (ii) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part." ' It will be seen that this definition is in pari materia section 2(e). It should however, be noted that the definition in the 2000 Ordinance speaks of features of shape or configuration being excluded if they are "dictated solely by technical and functional…
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