Sunday, 24 December 2017

Whether a tread pattern on Tyre can be considered as shape of goods in trade mark sense?

As an IP lawyer, while reading a recent judgement of Hon'ble Delhi High Court in a case of Apollo Manufacturing Co. Vs. Anil Moolchandani reported in 2017 (72) PTC 253 [DEL],  an interesting issue in respect of 'tread pattern' of tyre  considered as shape of goods for passing off action has come across. Let me discuss it herein after. In this Case Ex- parte injunction is passed against the defendant by the Court and it is confirmed .

Facts of the Case:

The plaintiff company is a manufacturer of tyres. Apart from the facts related to the involvement in tyre business of the plaintiff  since ages, the main fact of the case of the plaintiff is that  tread pattern is prominent distinguishing feature of a tyre as it is the only feature through which a black coloured tyre is different or distinguished among all black coloured tyres of trucks. Such tread patterned tyres for trucks are sold under name of ENDURANCE LD 10.00 R 20. Further, it is the case of the plaintiff that tread pattern for tyres  adopted by the defendant under the name of HI FLYHH505 is identical to that of the plaintiff resulting the act of passing off as the defendant is violating the goodwill and reputation of the plaintiff.  That the defendant is in the same business and is well aware about  the plaintiff. It was further case of the plaintiff that the defendant is selling tyre in Delhi through one Rajasthan Trading Co. by using identical tread pattern in respect of tyre.

Arguments on behalf of the plaintiff:

The argument of the plaintiff is that as per the provisions of Section 2(m) i.e. definition of 'Mark' includes shape of goods. Section 2 (zb) is the definition of trade mark which may also include shape of goods. It is further submitted that the tread of pattern on tyre is a shape which qualifies as a Trademark.  As the plaintiff invented and adopted such unique pattern first, he is entitled to be protected. Based on the contentions of affidavit of an expert in the field of polymer science which shows similarities between two designs I.e. tread pattern on tyres of the plaintiff and of the defendant.
 The plaintiff has relied upon the following judgements.
1) MRF Limited vs. Metro Tyres Limited , 1990 (10) 101 Mad.
2) Anglo-Dutch Colour and Varnish Works Private Limited vs. India Trading House, 1984(4) PTC 54 (DEL) 
3) Vicco Laboratories , Bombay vs. Hindustan Rimmer, AIR 1979 DEL 114.
4) Zippo Manufacturing Company v. Anil Moolchandani, 2011(185) DLT 51: 2011 (48) PTC 390.

Arguments on behalf of the Defendant:

The argument of the defendant is that Delhi Court has no jurisdiction as the defendant is situated in Mumbai and it has no office or branch office or other business entity in Delhi within the jurisdiction of Delhi Court, nor does the defendant supply its goods in Delhi and hence, the product of the defendant is not sold in Delhi. Referring to the affidavit of person of Rajasthan Trading co, it is argued that it is mentioned in the affidavit that that Trading Co. has no business connection with the defendant of this Case. Further, the website of the defendant accessed from Delhi is not interactive and it does not offer the products of the defendants for sale on internet. Further, the point of suppression of material fact is raised by the defendant. The suppression is that defendant no. 1 was a dealer for Apollo and Kazen tyres till May, 2015. On termination of plaintiff's dealership, the plaintiff has filed the present suit for taking revenge. Further, the argument of the defendant is that tread pattern is a registerable design which can be protected under Design Act. As the plaintiff has not registered the said design under Design Act, he has no exclusive right over the tread pattern in dispute.The defendant also took defence of section 2 (d) read with Section 15 of the Design Act, 2000. 'Common to trade' is one of the defences of the defendant. Several others manufacturers are also using similar tread pattern for tyres in the market openly. The defendants have also produced a list of manufactures from China who are selling tyres in India and several photographs. The defendants also show dissimilarities of the products of the plaintiff and the defendants. it is also argued that tread pattern is dispute is functional part in nature and they are provided for better grip of the tyre on road and stability to the vehicle while driving. Further, the plaintiff itself have averred that tread pattern is functional so no ownership right can be claimed. Section 9 (1)(b) and Section 9(3) of the Trade marks Act, 1999 is also a part of argument of defendant. The defendants have relied upon the following judgements.
1)Ram Krishan & Sons Charitable Trust vs. IILM Business School, I.A. No. 8445/2007 in C.S. (O.S) No. 1308/2007 Delhi High Court.
2).Rajappa Hanamantha Ranoji vs. Sri Mahadev Channabasappa & Ors, 2000 (4) Scale 692. ( on suppression )
3) Satisk Khosla v. M/s. Eli Lilly Ranbaxy Ltd. & Anr. 71 (1998)DLT1 (DB) ( on fraud )
4)Smithkline Beecham Consumer Healthcare Ltd. vs. G.D. Rathore & Ors., 2002 (25) PTC 243 (Del) ( on fraud).
5) Lego Juris A/S v. Office for Harmonisation in the International Market (Trade Marks and Designs) (OHIM)  (European Court) ( on  products result from nature of goods) 
6) Phillips Electronics NV vs. Remington Consumer Products Limited ( judgement of Supreme Court of England)
7) Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 (Hon'ble SC observed that" in passing off action , the defendant may escape the liability if he can show that the added matter is sufficient to distinguish his good from those of the plaintiff.")

Plaintiff's Rejoinder Arguments: 

It is argued that from all black coloured and round shaped tyres, it is only tread pattern which is able to identify and distinguish the one tyre manufacturer from that of another. Further, the functional part is groove in a tyre, however, tread pattern is ornamental. Reliance is placed on judgement of English Court in a case of Cow (P.B.) & Coy Ld. v. Cannon Rubber Manufacturers Ld. 1959 (9) RPC 240 against the defence raised by the defendant that tread pattern is functional and it cannot be protected. It is further submitted that it is due to the long use of design, such design becomes source identifier and therefore, it is entitled to be protected as a tread mark. The rest of the arguments are made against the other defences which is not core point of this Article, hence, for the sake of brevity, I am not going to deal with them here in this article.

Order passed by Hon'ble Delhi High Court:

In view of the facts and law related to the issued involved, Hon'ble High Court has passed an Order by observing that though there was termination of the distributorship of the defendant, the defendant, even after that termination, continues the sale of the tyre with the identical tread pattern which creates confusion in the mind of the customers as mentioned in paragraph no. 70 of the judgement. Secondly, relying upon the judgement of Full Bench in a case of Mohan Lal, Proprietor of Maurya Industries v. Sona Paints and Hardware reported in 2013 (55) PTC 61 (DEL) FB,( paragraph no. 22), Hon'ble Delhi High Court in paragraph nos. 75 to 77 of the present case, has not considered the defence of the defendants that the tread pattern is registerable as a design and when it is not registered by the plaintiff, the plaintiff has no exclusive right over disputed design. Considering the ratio laid down in the cited judgements, the Hon'ble Court is of the opinion that the shape of goods could have trade mark significance i.e.  particular shape of goods can be a source identifier of the goods and therefore,  the defense that tread pattern on a tyre constitutes a design registrable becomes meritless  as mentioned in paragraph no. 81 of the judgement. The defense regarding trade pattern is functional is not accepted by Hon'ble Court in the case of passing off action as mentioned in paragraph no. 82. The Court is of the view that the tread pattern is used as a source identifier in tyre industry by all manufactures and therefore when it is a source identifier, it is a trademark. In paragraph no. 113, relying upon the test laid down in Satyam Infoway Ltd by Hon'ble Supreme Court , the  Hon'ble Delhi High Court is of the opinion that the goodwill and reputation of the plaintiff in respect of the tyre in question is, prima facie, well established on the basis of considerable sales with regard to truck tyre in question and thereby confirmed the Ex- parte injunction granted in favour of the plaintiff and rejected the application filed by the defendant under O. 39(4) of CPC.

My Opinion:

First of all this case is of passing off action of tread pattern of a tyre under the provisions of Trade marks Act as in this case tread pattern is considered as shape of tyre or on tyre. Before I give my opinion, there are a few questions arise in my mind while reading this judgement.

1) Whether a thread pattern can be considered as shape of goods for being protected under the trade mark Act for the relief of passing off action ?
2) Whether a definition of trade mark or mark includes a tread pattern in the name of shape ?
3) Whether a classical trinity or ingredients of passing off action are satisfied in this case for passing off of tread pattern ?
4) Whether a tread pattern can be called a shape of tyre in general sense apart from trade mark sense ?
5) Whether a tyre of plaintiff company is sold by 'tread pattern' among people ?
6) Whether a test of goodwill and reputation is only considered by way of producing voluminous sales ?
7) Whether people at large are really aware of the 'tread pattern' while buying vehicles using tyres  or tyres separately of plaintiff company ?
8) Whether a 'tread pattern' can be considered as 'source identifier' for protection under trade mark Act ?
9) Whether a person who fails to be protected under Designs Act can be protected under Trade marks Act for passing off action ?
10) Whether 'shape of goods' can be considered under Designs Act ?
11) Whether a proprietor of  registered design, during the period of registration and thereafter be protected under trade marks Act for passing off action ?

To deal with this judgement, it is required to know what a tread pattern is.

 First of all a tread means the thick moulded part of a vehicle tyre for gripping the road as per the Oxford dictionary.
Now pattern means a repeated decorative design of a random combination of shapes or colours on a design as per the  Oxford dictionary.

As per the case of the plaintiff the in paragraph no. 6 of the judgement, the tread pattern on tyres is one of the most important factors to make the tyres stand out in the showroom or tyre shops. The tread affords necessary grip between the tyre and ground during movement of the vehicle and it is only due to the tread pattern the tyre is known or differed from company to company. Here my question is that  whether plaintiff has  produced  any documents establishing  that its tyres are sold only due to specific tread pattern ? The answer is NO.  Or whether it has come up on record though  the voluminous sale bills that the tyres are sold due to specific tread pattern ? The answer is NO. As per paragraph no. 9 of the judgement, sales and advertisement expenses are in crores however, the tyre ENDURANCE LD 10.00 R 20 is mentioned in sales. But by these records of bills it is not proved that the tyres of the plaintiff is sold due to the thread pattern only and it is one type of grip for protection so how can tread pattern be considered as essential feature as the tyres are sold under the name ENDURANCE LD 10.00 R 20  even though such pattern is displayed in advertisement ?

In paragraph no. 15 the submission for the plaintiff is that as per the definition of  'mark' and 'trade mark' include 'shape' and tread pattern on tyre is a shape and hence it qualifies a trade mark for protection. In my opinion, with due respect, the plaintiff has tried to be protected under trade marks Act as he is not registered under the Designs Act . Other wise if tread pattern is considered as shape of tyre then tyre has already has circle or round  shape. The definition of Design under Section 2(d) of Designs Act, 2000 includes shape, pattern, ornament or composition of lines or colours applied top any article which does not include any trade mark. Here a tyre is an article and tread pattern on it is just design or pattern or composition of lines and not more than that. As per this definition tread pattern does  not cover under the definition of mark or trade mark in Trade mark sense. Now as per definition of mark i.e 2(m) of the Trade marks Act, 1999, shape of goods can be considered as 'mark' but here in this case the goods is tyre and shape of it is circle or round, As per Section 2 (zb), shape of goods may include, and not must include, moreover, the entire definition of trade mark is required to be read as a whole  and therefore 'tread pattern' on tyre can not be considered as 'shape' Moreover, 'pattern' on tyre can not be considered as 'shape' and therefore, I disagree with the submission made in paragraph no. 15 on behalf of the plaintiff.

In paragraph no. 48 the submission is that the plaintiff has established goodwill and reputation of its trade mark in question by showing voluminous sales figures of tyre ENDURANCE LD 10.00 R 20 , however, the plaintiff is silent about the point that whether  goodwill and reputation is based on 'tread pattern' on tyre or not and it is question that in sale bills whether tread pattern is mentioned or not. It is possible that use of the trade mark can be established by voluminous sale invoices but goodwill and reputation are something higher factor for passing off case on the bases of shape of goods and therefore, contention of paragraph no. 49 where in the plaintiff relies upon the judgement of Hon'ble Supreme Court in case of Satyam Infoway Ltd v. Sifynete Solutions Pvt Ltd reported in 2004 (28) PTC 566 (SC) is not applicable as it was the case in respect of domain name and not shape of goods.  The question before Hon'ble Supreme Court  in that case is whether a domain name can be considered as trade mark or not. The issue is totally different in that case than that of the present case.

In my opinion if there are more than one tyres in a shop without name or wrapper of any brand , and if a customer is able to recognise the tyre of the plaintiff by 'tread pattern', goodwill and reputation of  such tread pattern on tyre is required to be considered otherwise not.

In paragraph no. 68 Hon'ble Delhi High Court is rightly of the opinion that suppression or misstatement should relate to a relevant and material fact. A trivial or minor falsity in drafting of pleadings does not have any effect of changing the case.

Referring to paragraph no. 72, the Hon'ble Delhi High Court has relied upon the Case of Midas Hygine Industries (P) Ltd vs. Sudhir Bhatia reported in (2004) 3 SCC 90 to conduct the issue of delay and latches, it is true that in paragraph no. 5 of Hon'ble Supreme Court has laid down the ratio that in the case of infringement of trade mark or copyright injunction must follow and mere delay in bringing action is not sufficient to defeat grant of injunction, however, with due respect, I say that the case in hand is for passing off action of shape of goods, there is no case of infringement than how this judgement is applicable is a question. Normally in the case of passing off , delay and latches are required to be considered.

Referring to paragraph nos. 75, the paragraph no. 22 of  the judgement of  Full Bench of Hon'ble Delhi High Court in a case of Mohan Lal, proprietor of Maurya Industries vs. Sona Paints and Hardware, 2013 (55) PTC 61 (Del) is relied by Hon'ble Delhi High Court in present case answering the defence raised by the defendant that 'tread pattern' is registerable as a Design and the same is not registered as a Design and therefore, no exclusive right can be claimed by the plaintiff. I fully  agree with the ratio laid down by Full Bench. However, in paragraph no. 34 of the judgement, there is condition precedent that the plaintiff must prove the essential ingredients of passing off action to establish the case of passing off action of unregistered design or a design used as a trade mark.  Moreover, in the case in hand 'tread pattern' can be considered as 'shape of goods' is a question of fact and law in my opinion.

In paragraph no. 80, the judgement in the case of Gorbatschow Wodka KG v. John Distilleries Limited , 2011(47) PTC 100 (BOM) is  referred wherein shape of bottles of Vodka was discussed, however, the case in hand is not related to shape of tyre but shape of 'tread pattern' applied on tyre and therefore in my opinion this judgement is not applicable looking to the facts of the case as functional part of article and pattern applied to the article is different in my opinion. In another judgement Reckitt & Colman Prducts Limited v. Bordeen Inc. and Others (1990) RPC 341, a shape of plastic container is protected under passing off remedy irrespective of functional part.

Referring paragraph no. 90, the judgement of Chancery Division in the case of Cow (P.B) & Coy Ld. vs. Cannon Rubber Manufacturers reported in 1959 (9) RPC 240 is referred wherein the issue is related to design and its validity and not passing off of shape of goods.

In paragraph no. 92, the judgement in the case of Whirlpool of India Ltd vs. Videocon Industries Ltd. reported in AIR 1979 DEL 114, the issue of functional parts of washing machine qua design is there and not such issue involved in the case in hand.

Considering the above mentioned factual matrix and legal scenario,  I am of the opinion that it is very hard to establish the case of passing off without satisfying classical trinity or ingredients of passing off action. Mere pleading or voluminous documents are not enough to establish the case of shape of goods in respect of passing off action. My considered opinion is that for the case of passing off action in respect of shape of goods, ex- parte injunction or bi-party injunction should only be granted when the case of the plaintiff is very strong and ingredients of Order 39 Rule 1 & 2 of Code of Civil Procedure, 1908 are satisfied by the plaintiff.

Chirag Bhatt
IP Lawyer
09824025041






Tuesday, 12 December 2017

Civil Rights vs. Religious belief

As an IP lawyer, while reading, I have come across one very recent interesting case of U.S. Court. The issue involved in this case reached to U.S. Supreme Court., has been argued out and is pending for decision.  I would like to discuss that case in this article.
This case  Masterpiece Cake shop Vs. Colorado Civil Rights Commission is related to design of marriage cake for gay couple and religious belief of masterpiece cake shopkeeper. Denial for making a cake for gay couple on the basis of religious belief invokes the litigation between the said parties on the basis of discrimination and violation of civil rights. The same-sex wedding couple filed a complaint before Colorado (a State in U.S.)  Civil Right Commission alleging that the cake shopkeeper Mr. Philips violated their civil rights by refusing them to provide their wedding cake.  The Colorado Civil Right Commission passed an Order in favour of that same-sex couple and against the cake shopkeeper holding that Mr. Philips had violated the Colorado Anti- Discrimination Act (CADA).  Against the Order passed by Civil Right Commission of Colorado, the response of cake shopkeeper was that CADA was not applicable to him as it was violation of his constitutional right to of freedom of speech and religious belief as he is Christian.
This case becomes talk of the town in among legal community and among general public at large in United States.  Various opinions have been delivered from every corner of legal world for this case as the issue involved in this case becomes a battle of rights of both the parties. For gay marriage couple, it is a violation of their gay rights and for the cake shopkeeper, it is violation of his constitutional rights and religious belief.

The question is that once Gay marriage is legalized, can anybody refuse like Cake shopkeeper refuse them to provide marriage cake in the name of religious belief and violation of freedom of speech, a Constitutional right? If Yes, then what about the discrimination faced by that Couple as discrimination is violation of civil law. This battle is in respect of law vs. religious belief.  This is  probablyfor the first time  U.S. Supreme Court  has come across such issue. In the Country like Unites States, if such type of case is happened, then it is nothing new or astonishing, if anything happens in India or any other country where the religious belief is at paramount stage.
My concern is why should we human beings make laws and why should we bind ourselves with certain belief, whatever the belief may be, irrespective of religion or political or social ? The creation of laws is to maintain the human life in its best manner. Laws are always helpful to humanity and they are never harmful. In the present case, it is law which prohibits discrimination and it is law which prohibits constitutional rights. In respect of the present case, the issue is not of denial of providing cake, denial of cake is very small issue which creates a big issue like discrimination against gay couple and violation of constitutional rights of shopkeeper in this case.
Keeping the facts of the case in mind, the issues are (1) whether denial for providing cake to gay couple for their marriage is amount to their violation of civil rights in the name of discrimination? (2) Whether a cake shopkeeper can be compelled to provide cake or compelled to give damage to the gay couple? (3) Whether a true religious belief has no value in the eyes of law? (4) Whether Law always prevails over true religious belief? As both law and true religion make the human perfect and peaceful  leading the people on the right path of life.

Chirag Bhatt
IP Lawyer
09824025041