Thursday, November 2, 2017

RAJESH MEHTA & ANR VS OAKLEY INC




$~28

*                    IN THE HIGH COURT OF DELHI AT NEW DELHI



+            FAO 405/2017


RAJESH MEHTA & ANR                                                                    ..... Appellants


Through:          Ms. Anuradha Salhotra and Mr. Achal

Shekhar, Advs.


versus

OAKLEY INC                                                                                                              ..... Respondent

Through:          Mr.  Sandeep  Sethi,  Sr.  Adv.  with  Mr.

S.K.Bansal, Mr. Ajay Amitabh Suman,
Mr. Kapil Giri and Mr. Vinay Shukla,
Advocates.

CORAM:

HON'BLE MR. JUSTICE VALMIKI J. MEHTA

%

O R D E R

17.10.2017
Caveat No. 906/2017



Counsel appears for the caveator.  Caveat accordingly stands discharged.

CM Nos. 37462-64/2017 (Exemptions)

Exemptions allowed subject to just exceptions.

CMs stand disposed of.

FAO 405/2017 & CM No. 37461/2017 (stay)








FAO 405/2017                                                                                                                                             Page 1 of 10







1.                  This First Appeal is filed under Order 43(1)(r) CPC by the defendants in the suit impugning the order of the trial court dated 19.7.2017 which has allowed the injunction application filed by the respondent/plaintiff and has dismissed the application under Order 39 Rule 4 CPC filed by the appellants/defendants. The disputes between the parties arise on account of the claim of the respondent/plaintiff to the shape of the goggles as a trademark.
2.                  The respondent/plaintiff pleaded entitlement to restrain the appellants/defendants from using shapes of two goggles which are manufactured by the respondent/plaintiff. One type of goggles is called as “OAKLEY FROGSKIN” and the other goggles are called as “OAKLEY RADARLOCK”. These two goggles of the respective parties are reproduced as under:-

































FAO 405/2017                                                                                                                                             Page 2 of 10






























3.                  It is therefore seen that the right claimed by the respondent/plaintiff is with respect to the shape of the goggles which are used, manufactured and sold by the respondent/plaintiff on the ground that shapes of the goggles are its exclusive trademark ie the respondent/plaintiff has an exclusive right to use the shape of the two goggles which are being manufactured and sold by it.
4.                  At the outset, I would like to note that the subject suit is not a suit for infringement of a registered trademark. Not only the suit is not for infringement of a registered trademark, the suit is not for infringement of a registered trademark which is a word mark. The suit is also not for passing off of a trademark which is a word mark. The suit is a suit for injunction alleging passing off by the appellants/defendants of the shapes of the subject two goggles and which shapes are claimed as exclusive trademarks of the respondent/plaintiff.






FAO 405/2017                                                                                                                                             Page 3 of 10





5.                  This Court has to examine the aspect of whether the shapes of the goggles of the respondent/plaintiff are so exclusive that only it has a right in such designs as a trademark, and that no other person including the appellants/defendants can use the shape of the goggles which are being used by the respondent/plaintiff.

6.                  No doubt, the definition of a trademark under the Trade Marks Act, 1999, and as contained in Section 2(1)(zb) of the Trade Marks Act, states that even shape of the goods can be protected as trademarks, however, it is to be seen that once shapes of any goods are claimed as a trademark, there is definitely an overlap in the claim of use of the shape as a trademark and the right to use a shape because of it being a design under the Designs Act. It is this overlap which in my opinion is such that Courts should in such cases be very cautious in granting an exclusive right to a person to use a shape if otherwise the shape could not be protected as a design under the Designs Act.

7.                  I have already reproduced the goggles of the respective parties above. Goggles or Spectacles obviously have two main parts. One part is the frame and the other part comprises of the lenses or glasses which are fixed in the frames. The issue in the present case is honestly with respect to the shapes of the frames because the glasses/lenses are fixed as per the shape of the frames in front part where the glasses/lenses are fixed, though it is additionally relevant to note that in ‘RADARLOCK’ goggles the shape of the lenses are not related to the shape of that part of the frame where the glasses are fixed.





FAO 405/2017                                                                                                                                             Page 4 of 10





8.                  In my opinion, the facts of the present case so far as the designs which are known as ‘FROGSKIN’ are concerned are not such unique designs that the appellants/defendants should, by an interim injunction be totally stopped from carrying on their business. After all the appellants/defendants have specifically taken up a case that the design of “OAKLEY FROGSKIN” goggles of the respondent/plaintiff is not such a unique design and it was a design which was otherwise published and manufactured even prior to manufacture of the same by the respondent/plaintiff. In this regard I would like to note that the designs and shapes with respect to which the respondent/plaintiff claimed exclusivity on account of designs and shapes of the trademark, would not have protection under the Designs Act once the design was such a design which was affected by prior publication. Entitlement of registration to a design or shape under the Designs Act is lost if the design or shape which is sought to be got registered is affected by prior publication. If that is so under the Designs Act, then Courts while dealing with the shapes and designs as a trademark, should necessarily be extremely cautious in giving a relief which otherwise could not have been given because of the bars contained in the Designs Act. Of course I may hasten to add that this Court is not observing that shapes and designs cannot have rights in them as a trademark, but that facts of each case will have to be examined as to whether shapes or designs will be such so as to give them right as a trademark, more so in a passing off case where respective products are sold under different brand names,






FAO 405/2017                                                                                                                                             Page 5 of 10





and with which aspect I will advert to hereinafter.

9.                  So far as the shape of “OAKLEY RADARLOCK” is concerned, no doubt the frame is different as also the lenses or glasses, however, surely this is a matter of trial because this Court cannot hold at this stage today that the shapes of the respondent/plaintiff’s goggles “OAKLEY RADARLOCK” are such that never such a design or shape could have ever existed with respect to spectacles or goggles prior to manufacture and sale by the respondent/plaintiff of the subject goggles. I may note that the appellants/defendants have filed in the trial court the designs of various goggles of their being in public domain prior to manufacture of subject goggles by the respondent/plaintiff, and such goggles in some parts are seen to have similarities with the functionality and shape of the goggles of the respondent/plaintiff. However, such highly disputed questions of fact cannot be decided in favour of the respondent/plaintiff at the stage of interim injunction application by grant of interim injunction to the respondent/plaintiff and thereby destroying the business of the appellants/defendants. After all, in case the respondent/plaintiff will succeed, the respondent/plaintiff will always be entitled to monetary relief of damages.

10.             In my opinion, the most important aspect to be noticed in the present case is that the subject suit is a suit based on a cause of action for passing off only and that whereas the brand name of the goggles of the respondent/plaintiff are

“OAKLEYFROGSKIN”and“OAKLEYRADARLOCK”,the







FAO 405/2017                                                                                                                                             Page 6 of 10





appellants/defendants are selling their goggles under totally different trademarks of “SASA LIFESTYLE” and “SASA SPORTY”. In my opinion, use of these brand names or trademarks of “SASA LIFESTYLE” and “SASA SPORTY” with respect to the goggles being manufactured and sold by the appellants/defendants are such that there is sufficient distinction created for a reasonable consumer not to be mislead when he is purchasing goggles of the appellants/defendants that he is confused that he is in fact purchasing the goggles of the respondent/plaintiff being manufactured and sold by the respondent/plaintiff under the brand names of “OAKLEY FROGSKIN” and “OAKLEY RADARLOCK”. There is absolutely no deceptive similarity or any scope of confusion between the brand names or trademarks “SASA LIFESTYLE” and “SASA SPORTY” with “OAKLEY FROGSKIN” and “OAKLEY RADARLOCK”.

11.             Learned counsel for the respondent/plaintiff places great reliance upon the recent judgment delivered by a learned Single Judge of this Court in the case of

Apollo Tyres Ltd. Vs. Pioneer Trading Corporation & Anr. 2017 VII AD (Delhi) 127, and which judgment is relied upon by the respondent/plaintiff to argue that pattern and grooves of the tyres will constitute a trademark and entitlement of such manufacturer of the tyres to prevent any other manufacturer from using such pattern and grooves in the tyres which were manufactured by the other person/defendant. In the case of Apollo Tyres Ltd. (supra) injunction in favour of Apollo Tyres Ltd./plaintiff was granted with respect to pattern and grooves of the





FAO 405/2017                                                                                                                                             Page 7 of 10





tyres which were manufactured by the Apollo Tyres Ltd.

12.             In my opinion, there is no dispute with the proposition of law that shapes can be subject of a trademark, and which is so provided in Section 2(1)(zb) of the Trade Marks Act, however, whether a particular shape is or is not entitled to protection as a trademark, that too at an interim stage of disposal of an injunction application, will necessarily depend upon the facts of each case and this has also to be taken with the fact that cases dealt with pattern of tyres surely cannot be equated with eye wear/goggles/spectacles. Issues with respect to shapes of the pattern of the tyres cannot be an argument for being used on facts with respect to the shapes of goggles/spectacles.

13.             A very other important aspect which is required to be noted is that appellants/defendants took up a case that the subject two goggles “OAKLEY FROGSKIN” and “OAKLEY RADARLOCK” of the respondent/plaintiff are very similar to the goggles being manufactured by another company Rayban and in this regard respondent/plaintiff took up a stand that Rayban company is owned by the respondent/plaintiff and Rayban is a group company. In my opinion, this stand of the respondent/plaintiff almost completely leads to non-maintainability of the suit because if the respondent/plaintiff admitted that the shape of the goggles which are subject matter of the present suit are in similar in shapes to the goggles which are previously manufactured by Rayban, then since Rayban is not a plaintiff in the suit then possibly the suit may be completely non-maintainable because it would






FAO 405/2017                                                                                                                                             Page 8 of 10





only be Rayban company who would be the owner of the shapes of the goggles as trademark and hence only Rayban would be entitled to the reliefs claimed in the present suit and not the respondent/plaintiff who did not claim to be owner of the shapes of the goggles which are owned by Rayban company. Also and admittedly the respondent/plaintiff did not plead itself to be the registered licensee of the Rayban company for manufacturing of the subject goggles for it to have locus standi to file the suit. In fact, the respondent/plaintiff claimed exclusive ownership and rights to the shapes of the two goggles on the ground that they have registered these shapes in various countries worldwide and that the respondent/plaintiff has trans-border reputation. It may be noted that in fact the respondent/plaintiff is in some manner seeking to overreach the Court because when it pleads its entitlement on account of registrations of the goggles and right on account of registrations of goggles, because such registrations in different countries worldwide which are being relied upon by the respondent/plaintiff are registration as designs and not registrations under the Trade Marks Act as trademarks.


14.             In view of the aforesaid discussion, till further orders unless varied by the Court, there shall be stay of operation of the impugned order of the trial court dated 19.7.2017 passed in TM No. 359/2016 titled as Oakley Inc. Vs. Bhargav

Mehta and Ors.

15.             I may hasten to clarify that aforesaid observations are made limited to







FAO 405/2017                                                                                                                                             Page 9 of 10





passing off the interim order for today’s date and all aspects of merits will be examined when the appeal comes up for disposal on the date of hearing fixed.

16.             Notice.  Counsel for respondent/plaintiff accepts notice.

17.             Counsel for the respondent/plaintiff seeks time to file reply. Reply be filed within a period of six weeks. Rejoinder be filed within four weeks thereafter.
18.             List on 27th February, 2018.



VALMIKI J. MEHTA, J

OCTOBER 17, 2017

ib











































FAO 405/2017                                                                                                                                          Page 10 of 10

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