SMITHKLINE BEECHAM CONSUMER HEALTHCARE GMBHY Vs. HINDUSTAN LEVER LIMITED

JUDGEMENT

(1.) THIS Notice of Motion is taken out by the plaintiffs. The plaintiffs have filed this suit seeking a decree of perpetual injunction and other reliefs on the allegation that the defendants have infringed their copyright in the drawing and the mould used for manufacture of the toothbrushes.

(2.) THE facts that are material and relevant for consideration and decision of this Notice of Motion are as under :-

(3.) THE defendant No. 1 is a company registered under the Companies Act, 1956, and carries on business inter alia dealers in and/or sellers of toothbrushes. The defendant No. 2 is an Indian company registered under the Companies Act, 1956 which carries on business inter alia as manufacturers of and/or dealers in and/or sellers of toothbrushes and importers of moulds used for the manufacture of toothbrushes. Prior to the commencement of these proceedings, defendant No. 1 has offered for sale and has sold in India toothbrushes under, or by reference to, the trade mark PEPSODENT POPULAR. Further by letter to the plaintiffs then Advocates dated August 7, 1999, Advocates acting for defendant No. 1, stated in paragraph 5 thereof, that defendant No. 2 manufactures PEPSODENT POPULAR toothbrushes for defendant No. 1 on a "principal to principal basis". In addition, by letter to the plaintiffs then Advocates dated 10 August, 1999, Advocates acting for another manufacturer of PEPSODENT POPULAR toothbrushes, Unident Brushes Private Limited of 78 Suryakiran Complex, Old Padra Road, Vadodara-390 015 ("unident") stated the same fact in paragraph 12 thereof. In the premises, as an independent supplier of PEPSODENT POPULAR toothbrushes to the defendant No. 1, defendant No. 2 has accordingly at all material times had possession, power custody and/or control of the moulds used to make the said toothbrushes. The PEPSODENT POPULAR toothbrush is made of a single plastic moulding and has no rubber grip pad. However, the PEPSODENT POPULAR toothbrush and the Major Component of the MARK II and MARK III toothbrushes are nearly identical, alternatively are substantially similar in both physical dimensions and in appearance. Reference to the drawings reveal in particular a virtual identity in appearance and dimensions between the PEPSODENT POPULAR toothbrush and the Major Component of the MARK III toothbrush. The PEPSODENT POPULAR toothbrush is manufactured by injection moulding of thermoplastic material. The moulds in which such toothbrushes are made are in two parts and each contain cavities which together are shaped to reproduce (or substantially reproduce) the shape of the PEPSODENT POPULAR toothbrush. The defendants moulds were designed by or on behalf of the defendant No. 1. In particular, drawings for such moulds were made and moulds were made therefrom by the process of spark erosion for and on behalf of the defendants or either of them. In the premises, the manufacture of the defendants moulds (and/or any pilot mould or moulds antecedent thereto or moulds made to replace those moulds) has been effected or authorised by the defendant No. 1 or by the defendant No. 2, alternatively by defendant No. 1 and defendant No. 2 acting together. By importing the defendants moulds or by manufacturing or authorising the manufacture of the said moulds as alleged in the preceding paragraphs, without the license or consent of the plaintiffs or any of them, the defendant No. 1 and/or defendant No. 2 jointly and severally, have infringed the plaintiffs artistic works. In the premises, the defendants moulds and each of them are infringing copies of one or more of the plaintiffs copyright works aforesaid. By virtue of section 58 of the Copyright Act, 1957, plaintiffs Nos. 1 and/or 3 have at all material times been the owners of each such infringing copy and are entitled to possession thereof together with any drawing or "plate" used in its making. None of the said infringing copies (or drawings or plates) being within their possession, custody, authority or control, the plaintiffs or any one of them are entitled to recover possession thereof. In a suit pending before the Honble Delhi High Court, being Suit No. 2515 of 1996, the plaintiffs Nos. 2 and 3 are the plaintiffs. In that action it was alleged that certain of the plaintiff No. 3s registered designs had been infringed and that (inter alia) the PEPSODENT POPULAR tufted toothbrush as sold was being passed off as and for the plaintiffs MARK II toothbrush. The defendants herein are defendants in that suit. During the course of as interlocutory hearing in that suit in view of the evidence of prior publication the plaintiff No. 3 abandoned its allegations of registered design infringement and agreed to surrender the registered designs there in issue on the ground that they were invalid because of prior publication. The said designs have subsequently been cancelled. By virtue thereof any consequent relief based upon the registered design also shall not be pressed. For the avoidance of uncertainty it is clarified that the aforementioned suit in Delhi is concerned solely with toothbrushes as sold and not with any allegations of copyright infringement or with any moulds used or intended to be used for the making of toothbrushes. The plaintiffs submit that they are entitled to an order of permanent injunction restraining the defendants whether acting by their directors, officers, servants or agents or any of them or otherwise howsoever from infringing and/or authorising the infringement of the first and/or third plaintiffs copyright either by importation, manufacturing or authorising the manufacture of further moulds in any or all of the works. The plaintiffs further submit that they are entitled to an order for delivery up to the plaintiffs (or to their representatives) of all moulds in the defendants authority, possession, power, custody or control (or that of either of them) which are infringing copies of any or all of the first and/or third plaintiffs copyright works together with all plates used in the making thereof as may be in their respective power, possession, custody or control.