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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
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O R D E R
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17.10.2017
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Caveat No. 906/2017
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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
