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Cello v. Modware: Design Infringement or Passing Off

That the Plaintiff i.e. M/S. Cello Household Products has filed a suit for Design Infringement and Passing off against the defendant i.e. M/S. Modware India And Anr before the Bombay High Court and the Hon’ble Bombay High Court vide order dated 30.03.2017 granted Ad-interim order in favor of the Plaintiff. The Plaintiff sough injunction on two grounds;

  1. Passing Off.
  2. Design Infringement.

Passing Off

Passing off is the act of making a representation that induces customers to believe that a product originates from a particular manufacturer, without it actually originating from that manufacturer.
For determining whether passing off had occurred, the Hon’ble Court used a well-established test called the “classical trinity”:

  1. Existence of Reputation and Goodwill.
  2. Existence of the Fact of Misrepresentation.
  3. Possibility of Irreparable Injury.

But the law on passing off requires that a reputation be established as to source, i.e., as to the Plaintiffs. This might be little more difficult where the manufacturer is a new entrant in the market. Cello is not. The reputation of the Cello house mark is already such that the Plaintiffs are an established name in direct relation to that mark. The question is not of identification of the brand, i.e., PURO and the Plaintiffs do not suggest that people necessarily buy a bottle by this name. What they do suggest is that people tend to prefer bottles with the CELLO mark, i.e., as identified as coming from the Plaintiffs’ house or source; within that range of choice of Cello’s products, this particular bottle has achieved a great deal of commercial renown. The question of establishing reputation for the purposes of passing off by identifying the product and its origin or source is thus answered.

The standard for testing goodwill is breached if consumers identify the product with a source, which in fact, is the plaintiff. In other words, whether the public knows the identity of the source entity or not is of little significance. But what is required is that consumers recognize the product as belonging to a single source, whose identity they might not know.

Design Infringement

Modware’s counsel’s initial argument was to suggest that a “Bottle is a bottle” and therefore, there couldn’t really be any protection for Cello’s bottle design however the Hon’ble Court, rightly so, summarily set aside this argument by holding that such an understanding of design law was overly reductionist.

Next, counsel sought to invalidate Cello’s protection under design law by arguing that the design was a result of a combination of earlier known designs (invalid under S.4(c) read with S. 22(2) of Designs Act).

Counsel attempted to establish that Cello’s design was a combination of earlier known designs by splitting the impugned design into sub-parts and putting forth, as evidence, earlier designs of bottles that incorporated each of these sub-parts.

However, the Hon’ble Court chose not to go into such an intricate analysis, and held that none of the prior designs brought to his notice, on the whole, were similar to Modware’s product, while Modware’s product was almost identical to Cello’s product. Therefore, it was held that, prima facie, Cello’s design was sufficiently original and that Modware’s product infringed upon it.