Tuesday, March 28, 2006

Toothbrush Copyright Case [India]

SmithKline Beecham filed four suits for permanent injunction seeking the prevention of copyright infringement, passing off, delivery up and rendition of accounts. It also sought interim injunctions. Although the interim applications were dismissed and the ex parte ad interim order was vacated, the main order was granted in a suit on which reliance was placed while dismissing the applications in other suits.

SmithKline claimed to be the owner of copyrights in precision moulds for manufacturing toothbrushes under three different brand names. It sought an injunction restraining the defendants from the manufacture or sale of toothbrushes under the brand name Cello Flexy. The grounds for obtaining such an injunction were (i) the similarity in the dimensions of the toothbrush, and (ii) the use of the word 'flexy', which is similar to 'flex' as used by SmithKline. SmithKline also claimed that the descriptive matter on the defendants' packaging was very similar to that used by SmithKline.
The defendants, GD Rathore and others, contended that the suits were barred since the plaintiff did not disclose any cause of action. In addition, they claimed that the design of the toothbrush was in the public domain and the registrations of the design under the Designs Act had been cancelled and surrendered by SmithKline; therefore, no rights or copyrights subsisted in the matter. It was also argued that the moulds were never published and, therefore, the issue of copying did not arise. They also referred to SmithKline's litigation against Hindustan Lever Ltd and Kewal Raj and Co over the same toothbrush design, in which an injunction was denied and its own registration was cancelled/surrendered.
SmithKline replied that the suit against Hindustan Lever Ltd had no bearing on the present suit, since that was concerned with the passing off and infringement of a registered design, while the present suit dealt with copyright in injection moulds and drawings. Despite copyright in the design being lost, it contended that copyright in the mould would subsist.
Referring to the action against Hindustan Lever Ltd and Kewal Raj and Co, the single judge held that, although that case related to design while the present case dealt with copyright, the observations in the design case judgment were applicable. He held that it did not appear that the moulds used by the defendants to manufacture toothbrushes were made through reverse engineering from the plaintiff's toothbrushes. According to the defendants, the moulds were from a catalogue by a Taiwanese mould maker, and the allegedly copied 'S' shape was only functional and thus incapable of protection - therefore, no passing-off action was possible.
SmithKline contended that the moulds and the toothbrushes were separate objects and that it held copyright in the moulds. It claimed that the judge had failed to appreciate the copying and had overlooked the most relevant facts and dates. It also contended that it had already test-marketed its products when the defendants selected the mould design from the catalogue. SmithKline attempted to impugne the opinion that the 'S' shape feature was only functional and not capable of protection on the grounds that it was registered around the world.
The case further examined the scope and extent of power enjoyed by the appellate court in interfering with a detailed order passed under the discretion of the trial judge and reversing it in facts and circumstances. It did not appear that the trial judge had ignored or overlooked the principles of granting an interlocutory injunction or omitted to consider any material or plea. The trial judge held that if copyright did not exist in the final product, then neither did it exist in the moulds. Therefore, it is not possible to infer that he did not consider the case of alleged copyright violation, which will be adjudicated only after the parties present their evidence and produce the relevant documents. The court affirmed the orders of the trial judge and declined to grant an ad interim injunction.

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