Delhi High Court
The Plaintiff manufactures truck tyre Endurance LD 10.00 R20, with a peculiar tread patter over which it had claimed proprietary rights.
APOLLO TYRES LTD. v. PIONEER TRADING CORPORATION & ANR [DEL] CS (OS) 2802/2015
1. The Plaintiff manufactures truck tyre Endurance LD 10.00 R20, with a peculiar tread patter over which it had claimed proprietary rights.
2. The defendant also manufactures truck tyre HI FLY with similar tread pattern of the Plaintiff.
3. Plaintiff filed a suit against Defendant for infringement of its proprietary rights and an interim injunction was granted in favour of the Plaintiff.
4. Defendant moved an application to vacate the stay.
Interim stay confirmed.
5. I have set out hereinabove the manner in which the tyres of the plaintiff and the other manufacturers are displayed in the course of marketing, advertisement etc. They clearly show that the tread patterns are utilized by the manufacturers including by the plaintiff, in respect of its tyre in question, as a source identifier, i.e., as a trademark. No doubt, the tread pattern adopted by the plaintiff in respect of its tyre also serves the purpose that the treads on any tyre serve.
6. However, if the same function can be achieved through numerous different forms of tread patterns, then the defence of functionality must fail.
7. It was essential for the defendant to, at least, prima facie, establish that the tread pattern of the plaintiff was the only mode/ option, or one of the only few options, which was possible to achieve the functional requirements of the tyre.
8. The position which emerges on a perusal of the documents placed on record by the plaintiff is that there are innumerable different and unique tread patterns in existence, adopted by different manufacturers of tyres, which achieve the same objective. It cannot be said that the unique tread pattern adopted by the plaintiff is attributable only to the technical result, namely, of providing grip and stability to the vehicle on which the tyre of the plaintiff is used. The same function can be performed by any other tyre with a different tread pattern.
9. The manner in which the tyres of different manufacturers are advertised and marketed leaves no manner of doubt that the tread pattern on the tyre of the manufacturer is prominently displayed, apart from the brand name of the manufacturer. It is also not uncommon to see the customer - interested in buying a tyre, being shown the tyres by the vendor with the tread pattern in a vertical position i.e., by showing the “face” of the tyre, such that the tread pattern is the first thing that strikes and appeals to the eye of the customer.
10. It is also not uncommon to see that even when tyres are wrapped in covering, the vendor removes the covering while displaying his tyres to the customers. Pertinently, the defendant does not display its tyres in question under the brand “HI FLY” in a wrapped condition in its advertisements.
11. The defendant is displaying its tyre in question under the brand “HI FLY” in an unwrapped condition, and prominently showing the tread pattern on the tyre. This itself shows that the wrapping of the tyre does not inhibit the display and marketing of the tyre, by prominently displaying the tread pattern on the tyres.
12. Thus, the submission that the tread pattern adopted by the plaintiff is functional and, therefore, not capable of protection, cannot be accepted. This submission is rejected.
13. The tread pattern on a tyre, in my view, is such a prominent feature - and is so prominently displayed and advertised, that the added matter, namely the brand name on the sides of the tyre, is not sufficient to distinguish the goods of the defendant from those of the plaintiff.
14. Similarly, the inclusion of the tyre-tube and flap in the plaintiff’s tyre, and only the flap along with the tyre in the defendant’s tyre - minus the tube, is not sufficient to distinguish the plaintiff’s tyre from that of the defendants.
15. It is not in dispute that both tyres of the plaintiff and the defendant in question are tyres meant for trucks. Therefore, some change of specifications between the two is of no consequence, when it comes to the aspect of confusion in the mind of the customer.
16. I may also observe that the customers of the truck tyres, by and large, are semi-literate middle class truck owners, operators and drivers, from whom it is difficult to expect a detailed examination, threadbare, of all the differences in the tyres of the plaintiff and that of the defendant before the purchase of the tyre is made.
17. In view of the aforesaid, I am inclined to confirm the injunction granted in favour of the plaintiff till the disposal of the suit.
18. Accordingly, the plaintiff’s application, i.e., I.A. No. 19350/2015 is allowed and the ex- parte ad interim order of injunction dated 15.09.2015 is confirmed till the disposal of the suit.