A slight modification of an existing design does not confer exclusive rights.
Introduction:The case of Glaxo Smithkline Consumer Healthcare vs. Amigo Brushes Private Limited & Anr. revolves around an alleged infringement of a registered toothbrush design. The plaintiff, a global healthcare company, sought an interlocutory injunction restraining the defendant from manufacturing, selling, or offering for sale toothbrushes that were claimed to be an obvious and fraudulent imitation of the plaintiff’s registered design. The primary issues in the case were whether the defendant had infringed the plaintiff’s registered design and whether the plaintiff was entitled to an interlocutory injunction.
Factual Background:Glaxo Smithkline Consumer Healthcare, a German company, was engaged in the healthcare sector, including the design and sale of toothbrushes. The company obtained a design registration (No. 183197) dated February 15, 2000, in Class 3 for toothbrushes. The design was claimed to be novel and unique. Under the Designs Act, 2000, this registration granted the plaintiff copyright protection for five years, extendable by two successive periods of five years each. The plaintiff also secured corresponding design registrations in multiple countries.
In 2003, the plaintiff discovered that defendant No. 2, Hindustan Lever Limited (HLL), was selling toothbrushes under the brand name "Pepsodent Cushion," which was alleged to be a fraudulent imitation of the plaintiff's design. The packaging of the toothbrush disclosed that it was manufactured by Amigo Brushes Private Limited, which was initially named as defendant No. 1 in the suit. The plaintiff had previously initiated legal proceedings against HLL in another suit (CS No. 2515/96), where the interim relief was denied. The plaintiff had also filed copyright infringement suits against HLL in the Bombay High Court.
HLL, in its defense, contended that it was merely a marketer of the toothbrushes, not the manufacturer. The toothbrush handles were imported from China by Seema Impex, which supplied them to Amigo Brushes Pvt. Ltd. for bristling and finishing. The final product was then marketed by HLL under its brand. The defendant argued that the plaintiff’s design lacked novelty and was already in the public domain due to prior publication in the British Dental Journal. It also claimed that the plaintiff’s design was primarily functional and thus ineligible for protection under the Designs Act.
Procedural Background:The plaintiff sought a permanent injunction against the defendants, along with interim relief under Order 39, Rules 1 and 2 of the CPC. After service of notice, defendant No. 2, HLL, contested the application, while the plaintiff withdrew its claims against defendant No. 1, Amigo Brushes Pvt. Ltd. The case proceeded against HLL alone. The defendant argued that the suit was bad for non-joinder of necessary parties, including the Chinese manufacturer and the importer, Seema Impex.
The plaintiff contended that it was entitled to interim relief based on the novelty of its design and the defendant’s deliberate imitation. It submitted that the defendant had previously attempted to imitate its designs and was aware of the plaintiff’s rights. The defendant, however, claimed that the plaintiff’s design lacked originality, had been previously published, and was primarily functional. The defendant also argued that the plaintiff had delayed in filing the suit and had misrepresented facts.
Issues Involved: Whether the defendant’s toothbrush was a fraudulent or obvious imitation of the plaintiff’s registered design, amounting to design infringement?
Submissions of the Parties:The plaintiff argued that its registered design was novel and had not been previously published. It contended that the defendant had knowingly copied its design to deceive consumers. The plaintiff relied on Castrol India Ltd. v. Tide Water Oil Co. Ltd. (1996 PTC 202) to assert that fraudulent imitation was evident from the similarities in shape, configuration, and ornamentation. It also cited Walker & Co. v. A.G. Scott & Co. (1892 RPC 482) to argue that even an arrangement of well-known parts could constitute a new design.
The defendant countered that the plaintiff’s design lacked novelty and was published in the British Dental Journal before registration, making it unenforceable under Hello Mineral Water Pvt. Ltd. v. Thermoking California Pure (2000 PTC 177). The defendant relied on AMP Incorporated v. Utilux Proprietary Ltd. (1972 RPC 103) and Stenor Ltd. v. Whitesides (1946 RPC 81) to argue that functional designs were not protectable. It also cited Dover Ltd. v. Nurnberger Celluloidwaren Fabrik Gebruder Wolff (1910 RPC 498) to contend that mere trade variants did not constitute a new design.
Discussion on Judgments and Citations:The court analyzed precedents cited by both parties. AMP Incorporated v. Utilux Proprietary Ltd. (1972 RPC 103) held that functional features dictated solely by necessity cannot be protected as designs. This was applied to reject the plaintiff’s claim that the thickness of the handle was novel. Stenor Ltd. v. Whitesides (1946 RPC 81) emphasized that small mechanical variations do not create a new design and was used to counter the plaintiff’s argument that its toothbrush had a unique aesthetic appeal. Dover Ltd. v. Nurnberger Celluloidwaren Fabrik Gebruder Wolff (1910 RPC 498) established that a design must be truly original, not just a variation of existing products, leading the court to find that the plaintiff’s handle was merely a trade variant. Smithkline Beecham Consumer Healthcare GmbH v. G.D. Rathore (2002 PTC 243 (Del)) had previously denied an injunction for a similar toothbrush due to lack of distinctiveness, which the court followed. Castrol India Ltd. v. Tide Water Oil Co. Ltd. (1996 PTC 202) was cited by the plaintiff to argue fraudulent imitation, but the court found the comparison unpersuasive.
Reasoning and Analysis of the Judge:The court ruled that the plaintiff’s design was primarily functional and lacked originality. The court held that the plaintiff’s claim was limited to the handle grip, which was a necessary functional component and not a standalone article under Section 2(a) of the Designs Act, 2000. The thickness of the handle was dictated by ergonomics, making it unprotectable under AMP Incorporated v. Utilux Proprietary Ltd. Prior publication in the British Dental Journal invalidated the claim of novelty. The plaintiff had suppressed material facts regarding previous cases where similar claims were rejected. The defendant’s product had minor differences, making it distinguishable.
Final Decision: The court refused to grant an interlocutory injunction, stating that the plaintiff had not established a prima facie case. The balance of convenience was in favor of the defendant, and the plaintiff would not suffer irreparable harm since it was not selling the toothbrush in India. The suit was not dismissed but was set for trial on merits.
Law Settled in This Case: Functional designs are not protectable under the Designs Act, 2000. A design must have an aesthetic appeal beyond mere utility. Prior publication can invalidate a design registration. If a design has been publicly disclosed before registration, it loses novelty. Trade variants do not qualify as new designs. A slight modification of an existing design does not confer exclusive rights. Suppression of material facts can disqualify a party from obtaining an interim injunction. Courts expect full disclosure of relevant proceedings.
Case Title: Glaxo Smithkline Vs. Amigo Brushes Private Limited
Date of Order: December 11, 2003
Citation: 2004 (28) PTC 1 (DEL)
Court: Delhi High Court
Judge: Hon'ble Justice Mahmood Ali Khan
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Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
