In Michael Casey Enterprises Ltd. & Ors v TVC Sky Shop, the controversy entailed the interplay of the Copyright Act, 1957 and the Designs Act, 2000. In this case Michael Casey Enterprises Ltd & Ors (Plaintiffs) filed a suit for permanent injunction seeking to restrain TVC Sky Shop (Defendant) from selling health and fitness equipment under the trademarks "PERFECT ABS" and "AB PRO PLUS" which were three dimensional reproduction of engineering drawings of the Plaintiff's "AB KING PRO".
The Plaintiffs filed the suit claiming that they are engaged in the business of marketing inter alia of health equipment, and one of the many health equipments is an apparatus marketed under the trade mark "AB KING PRO", which is designed to generate negative contractions of abdominal muscles by acting as a reverse crunch for a complete workout and a fuller range of motion. The Plaintiffs stated that the said equipment had been advertised extensively throughout the Indian subcontinent and as a result had become popular amongst the public and had acquired formidable goodwill and reputation. It was further contended that the said equipment had been granted registration by the United States Design & Patent Office, that the said patent contained several engineering drawings which illustrated the functional features and constituted original artistic works within the meaning of Section 2(c) of the Copyright Act, 1957 and was thus entitled to copyright protection in India.
While the Plaintiffs argued to show that what they sought to protect was a copyright, the Defendant, on the other hand, contended that that there was no copyright but a design and qua which the Plaintiffs were not entitled to any protection under the Designs Act, 2000. The Defendant pointed out that the registration relied upon by the Plaintiffs granted by the United States Design and Patent Office was for an ornamental design which is covered by Section 2 (d) of the Designs Act, 2000 by virtue of which the same is capable of registration in India also as a design and since it had not been done so, therefore it was not entitled for protection. They also referred to the affidavit as evidence filed by the Plaintiffs and pointed out that the even the basic measurements /dimensions on the basis of which drawings or equipment can be made by anybody else was missing. It was an added contention that the assignment documents of the Plaintiffs also mentioned only design and not copyright which therefore meant that the rights claimed by the Plaintiffs could only be as a design and not copyright.
The Plaintiff's in their rejoinder contended that the Defendant had not refuted their claim that their product was original/new and had also not alleged that the Plaintiffs had themselves copied. Further, they pointed out that there is no protection to functional designs in India as in the United States and that the question of functionality and aesthetics of a design is one of fact and not law. Also, it was stated that even of the equipment was not patentable, it was still entitled to be protected under copyright laws, and that there was nothing aesthetic about it.
On the basis of the aforementioned contentions the High Court of Delhi held no case for interim relief was made out without evidence being led. The applications of the Plaintiff for interim relief was therefore dismissed.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
