The Designs Act, like its IP counterparts, is getting into the business of writs. In an unusual petition decided upon by the Madras High Court earlier this month (which you can read here), the rights of a re-seller/re-cycler of old beer bottles came under scrutiny. The two writs (both on the same issue) were dismissed, and rightly so, for being premature and “vague” petitions. But the outcome is not of as much interest to us as perhaps the subject matter is. The details are a little sketchy, but I shall try my best.Recently, however, the petitioners allege that two enforcement authorities — the office of the Regional Transport Officer and the local Inspector of Police — have been preventing them from such transportation. It turns out that some of the bottles were registered as designs under the Act by certain distilleries. The enforcement agencies claim that such transportation is violative of the Designs Act. First Information Reports (FIRs) have also apparently been filed before the police against the petitioners, alleging criminal breach of trust (section 406 of the Indian Penal Code), and piracy of registered designs (S. 22 of the Designs Act).
The petitioners argued that the enforcement agencies were stopping their vehicles without the authority of law, and that no one could be restrained from transporting empty bottles in this fashion without an injunction from a court. This formed the basis of their writ of mandamus before the High Court, which sought to forbear (restrain) the enforcement agencies from interfering with the petitioners’ rights to transport old empty bottles across states.
On their part, the agencies said that the petitioners had not substantiated their allegations in any manner. Not only had they failed to show specific instances of harassment, they could also not show that they were carrying on this business with necessary licenses or permits. Further, they counter-alleged that when there were third party claims of infringement. it was for the petitioners to prove that they were entitled to continue such transportation.
The High Court threw the petitions out, saying they were without merit: the relief sought was very vague and general in nature, and no blanket order could be passed by the court.
This is a story of on-the-ground IP enforcement incidents that we rarely get to hear in India. It’s anecdotally accepted that the agencies threaten and harass weaker parties, frequently without real cause. Here, the anecdote seems to have made it to court – it seems hard to believe that someone would have attempted to reach the echelons of a High Court without a degree of truth in the story. Failing to substantiate their case convincingly was a stupid move on the part of the petitioners, but nevertheless, there may be some encouragement for those who believe their rights are being unfairly (and perhaps even violently) taken away without being given a fair hearing, particularly in IP matters. A couple of (distantly) associated posts can be read here and here.
(On a side note, I used to once know a gentleman, who has since passed on, who collected old beer bottles for a hobby. Whatever happened to that collection now, I wonder. Separately, it also seems that returnable bottles are facing extinction (Image from here).)
Sumati,
This is indeed an interesting post. But I wondered how the court failed to find any merit in this petition. The petitioners are registered with Commercial Taxes Department and are involved into purchasing the “empty” bottles from small merchants and selling the goods to their agents for recycling. However, the petitioners should ensure that the goods are forwarded for recycling only and not for any other commercially significant but illegal activity.
Further, if the petitioners are providing valid bills subject to the payment of sales tax, then is it an offence or rather a cognizable offence?
And if certain distilleries want to protect their design property then why don’t they start with their own “authorized redemption centre” in every town. So that the way we recycle the old newspaper, etc, we can also sell these “designed” bottles and containers appropriately at these centers.
regards
S
S – All valid points. Like I said, the order was sketchy, and what I got out of it was that the petitioners did not substantiate their claims, which is why it got thrown out.
So, for instance, there does not seem to have been any dwelling upon whether the bottles were being transported only for recycling or were being refilled and resold elsewhere – at least in the order. Similarly, the distilleries were not party to the petition, and so their rights were not discussed.
Your idea of authorised centres is good, and I believe similar practices are being followed in the case of hardware devices (I know, for instance, that Apple offers refurbished, second hand products for resale, in some jurisdictions). Maybe this petition will prompt proprietors of registered designs of products such as these to do exactly as you suggest.
Dear sumathi
Recently a case of similar nature has been filed in High court of Delhi, wherein the Plaintiff a distillery firm MOHAN BREWERIES and DISTILLERIES
LTD has claimed recycling for usage of their empty bottles for consumption by the defendants in the market.
The order of the instant case is reproduced herein below for your reference. This case i will be following now.
CS(OS) 283/2012
MOHAN BREWERIES and DISTILLERIES
LTD ….. Plaintiff
Through: Mr. Ashish Agarwal, Adv.
versus
M/S SUPERIOR INDUSTRIES LTD and
ORS ….. Defendants
Through: None.
CORAM:
HON’BLE MR. JUSTICE A.K. PATHAK
O R D E R
10.02.2012
I.A. No. 2220/2012 (u/Sec. 151 CPC)
Certified copies of the documents be filed within four weeks. Application is disposed of.
CS(OS) No. 283/2012, I.A. No. 2218/2012 (u/O 39 R 1 and 2 r/w Sec. 151 CPC) and I.A. No. 2219/2012 (u/O 26 R 9 CPC)
Plaint be registered as a Suit. Summons in suit and notice of the
application be issued to the defendants through ordinary process, registered A.D. post and courier service, returnable for 26th April, 2012. Process fee etc. be filed within a week.
A.K. PATHAK, J.
FEBRUARY 10, 2012
@IPVocal – thanks for the heads up on this. will definitely keep an eye out for more news. Do let us know if you hear of any developments.
Nice article for initiating the issue..
But could have been more specific & insightful about what is the status quo in the Recycling industry and legal consequences
Best
Kabir