Kerala High Court
Unknown vs K.R on 3 December, 2018
Author: A.Hariprasad
Bench: A.Hariprasad
C.R.
IN THE HIGH COURT OF KERALA AT ERNAKULAM
PRESENT
THE HONOURABLE MR. JUSTICE A.HARIPRASAD
MONDAY ,THE 03RD DAY OF DECEMBER 2018 / 12TH AGRAHAYANA, 1940
FAO.No. 155 of 2018
AGAINST THE ORDER DATED 25-07-2018 IA NO.3452/2018 IN OS NO.
20/2018 of ADDITIONAL DISTRICT COURT - VII, ERNAKULAM
APPELLANTS/RESPONDENTS 1 TO 4 AND ADDITIONAL RESPONDENTS 5 AND
6/DEFENDANTS 1 TO 4 AND ADDITIONAL DEFENDANTS 5 & 6:
1 M/S VARSHA POLYMERS,
10/114 A, SOUTH VAZHAKULAM PO, SOUTH EZHIPURAM,
ERNAKULAM, 68 31 05, REPRESENTED BY ITS PARTNER
SRI ELDHOS P J.
2 M/S VARSHA PLASTICS,
WEST VENGOLA PO, KOLLIMUGHAL, VALAYANCHIRANGARA
(VIA), PERUMBAVOOR, ERNAKULAM 68 35 56 REPRESENTED BY
ITS PARTNER SRI ELDHOS P J
3 ELDHOSE P J,
PARTNER, M/S VARSHA POLYMERS & M/S VARSHA PLASTICS,
WEST VENGOLA PO, KOLLIMUGHAL, VALAYANCHIRANGARA(VIA),
PERUMBAVOOR, ERNAKULAM 68 35 56
4 SHIHAB T K,
AGED 40 YEARS,PARTNER, M/S VARSHA POLYMERS & M/S
VARSHA PLASTICS, WEST VENGOLA PO, KOLLIMUGHAL,
VALAYANCHIRANGARA (VIA), PERUMBAVOOR,
ERNAKULAM 68 35 56.
5 BESSY M VARGHESE
AGED 32,W/O.ELDHOSE P J, RESIDING AT PACHAMPARAMBIL
HOUSE, VARIKKAD, VALAYANCHIRANGARA
ERNAKULAM, 68 35 56
6 SHAMLA A A,
AGED 33 YEARS,W/O.SHIHABUDHEEN T K, RESIDING AT
THURUTHUMMAL HOUSE, EDATHALA P O, ERNAKULAM.
BY ADVS. SRI.P. CHANDRASEKHAR
SRI.R.NANDAGOPAL
SRI.K.T.SAJU
SMT.SANDHYA R.NAIR
SRI.D.SREEKANTH
FAO No.155 of 2018 2
RESPONDENTS/PETITIONERS/PLAINTIFFS:
1 M/S VAJRA PLASTICS INDUSTRY,
DEVELOPMENT AREA, ANGAMALY SOUTH, CAMPANNUR,
ERNAKULAM DISTRICT, KERALA, 68 35 73, REPRESENTED BY
ITS MANAGING PARTNER SRI M M PAULOSE, S/O M M MATHEW
RESIDING AT MADAPPILLIL HOUSE, VENGOLA WEST PO,
PERUMBAVOOR, ERNAKULAM, 68 35 56
2 MATHEW JOSEPH
S/O JOSEPH, PARTNER, M/S VAJRA PLASTICS INDUSTRY,
RESIDING AT THOTTUNGAL HOUSE, KIZHAKAMBALAM,
ERNAKULAM DISTRICT, KERALA, 68 35 62
BY ADV. MILLU DANDAPANI
THIS FIRST APPEAL FROM ORDERS HAVING COME UP FOR ORDERS ON
25.10.2018, THE COURT ON 03.12.2018 DELIVERED THE FOLLOWING:
FAO No.155 of 2018 3
C.R.
A.HARIPRASAD, J.
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F.A.O.No.155 of 2018
--------------------------------------
Dated this the 3rd day of December, 2018
JUDGMENT
Appellants are the defendants in O.S.No.20 of 2018 before the District Judge, Ernakulam, a suit filed by the respondents invoking the provisions of Designs Act, 2000 (hereinafter referred to as "the Act") praying, inter alia, to restrain the appellants from using the registered design of the respondents or any other design identical or deceptively similar to that of the respondents in manufacturing rainwater gutters and allied products. Along with the suit, an application for temporary injunction as I.A.No.3452 of 2018 was also filed. Court below, on considering the evidence produced and after hearing both sides, passed a temporary injunction in the following manner:
"a). Petition is allowed;
b). The respondents and their men are restrained from using the registered design of the petitioners' in manufacturing rainwater gutters and similar products in any of the respondents' business, establishments or in any of FAO No.155 of 2018 4 their advertisements, pending disposal of the suit.
c). The petitioners are entitled to get the costs of this petition."
2. 1st plaintiff is a registered partnership firm incorporated under the Indian Partnership Act, 1932. 2nd plaintiff is a partner of the 1 st plaintiff firm. 1st defendant is yet another partnership firm engaged in the manufacture of plastic and plastic related products. According to the plaint averments, 2nd defendant is a subsidiary and sister concern of the 1st defendant firm. It is averred that defendants 3 and 4 are the partners of the 1st defendant firm.
3. 1st plaintiff firm was constituted for the purpose of carrying on business in manufacturing PVC pipes and other related activities. During 2009, the 1st plaintiff firm introduced PVC rainwater gutters into the market. Fine crafting and design techniques adopted by the 1 st plaintiff soon gained popularity in the market and it became one of the leading market players in manufacture and sale of PVC rainwater gutters.
4. While so, the plaintiffs ideated and came out with a novel design for rainwater gutters which can be fixed on to the outside portion of houses/buildings to enable free flow of rainwater. Normal rainwater gutters are in "half C" shape. Plaintiffs designed and manufactured a unique pattern design which enabled more efficient flow of rainwater and gave FAO No.155 of 2018 5 additional strength to the gutter. Leaf guard provided to the gutter prevented blockade in the gutter, thereby ensuring free flow. Leaf guard was provided with an easy to use lock fittings. Stronger and sharper edges could support larger water flow than "half C" shaped rainwater gutters. The said design aesthetically pleases eyes and blends with any building design. According to the plaint case, 1st plaintiff firm is one among the manufacturers who introduced PVC rainwater gutters in different colours that could match with colour of the roof and wall. Trade name adopted by the plaintiffs is "Euro Guard".
5. 1st plaintiff in order to protect uniqueness in their product composition and design filed an application for patent registration for the designs vide design No.265829 with effect from 22.09.2014. 1 st plaintiff was granted design certificate under class 23-01 dated 22.04.2016 by patent office with effect from 22.09.2014 under the Act. 1st plaintiff has been manufacturing, marketing and selling the aforesaid products under the brand name "Euro Guard" all over India, especially in Kerala, Karnataka, Maharashtra and some other States.
6. Design of rainwater gutter with the brand name "Eruo Guard"
has earned a very high reputation in the market for the aesthetically pleasing design. In addition to the above, ease of assembling and disassembling, rigidity and ability to carry large amounts of rainwater, high FAO No.155 of 2018 6 quality of materials used and leaf guard facilities also have contributed to its quality.
7. Suddenly the plaintiffs noticed a fall in their market share of PVC rainwater gutters and on enquiry it has come to their knowledge that the defendants 3 and 4, who are the ex-sales representatives of the 1 st plaintiff company, with an intention to defeat the plaintiffs' interest and business, have started a plastic products manufacturing unit in the name and style "Varsha Polymers". It is learned by the plaintiffs that the defendants, with an intention to take undue benefit of the wide popularity and market share of the plaintiffs' PVC rainwater gutter and other products and also to capitalize the marketing and advertisements that the plaintiffs have already made, started to manufacture, market and sell low quality rainwater gutters with identical design as that of the plaintiffs' rainwater gutters. Plaintiffs would contend that they are the absolute owners and proprietors of the said design, No one has any authority to use the said design or a similar or identical design for a similar business/service; the defendants have no right or interest whatsoever in the unique design and composition. Defendants' act is in violation of the patent and design rights conferred on the plaintiffs. According to the plaintiffs' case, rainwater gutter of the defendants (Varsha Square Gutter) is visually and structurally similar, identical and confusing with that of the plaintiffs (Euro Guard). A FAO No.155 of 2018 7 bare look at the product of the defendants will create an impression in the mind of any person that it is the product of the plaintiffs. Therefore, the plaintiffs are entitled to get the reliefs claimed in the suit as well as in the temporary injunction application.
8. Defendants/appellants contended that the suit is bad for multifariousness. Plaintiffs are not entitled to combine the alleged causes of action, viz., passing off and infringement of the alleged design in one suit. The suit is bad for non-joinder of necessary parties and causes of action.
9. Defendants 1 and 2 are different firms functioning independently without any control or supervision over each other. The business activity of defendants 1 and 2 are totally different and independent. Therefore they cannot be joined in one suit, that too in respect of different causes of action. Hence the suit is bad for mis-joinder of parties as well.
10. The plaintiff is put to proof about their right to manufacture PVC pipe, plastic machine parts manufacturing and other related activities. It is further contended by the defendants that PVC rainwater gutters were not introduced in the market by the 1st plaintiff. Allegation that there is a unique and fine crafting in design techniques in the product of the 1 st plaintiff firm is also denied. Further contention that the plaintiffs ideated FAO No.155 of 2018 8 and came with a novel design for rainwater gutters is also disputed.
11. The plaintiffs, as proprietors, do not have any unique or distinct composition or design. The design certificate issued in the name of the plaintiffs is not legal or valid. Claims in the plaint regarding reputation of the plaintiffs' product is also denied. Defendants contended that there are many people in Kerala who import rectangular rainwater gutters and market the same in the State. Names of various companies outside India engaged in manufacturing rainwater gutters have been mentioned by the defendants. It is denied that the product of the plaintiffs' firm has any distinct shape, configuration, patent, ornament or composition of lines or colours distinct from the rectangular type rainwater gutter available in the market. Requirements under Section 2(d) of the Act have not been satisfied in respect of the plaintiffs' product. Therefore the plaintiffs cannot claim any monopoly over the rectangular type rainwater gutters.
12. Plaintiffs are new entrants in the business of rectangular type rainwater gutter and cannot expect any such reputation in a short span of time. Defendants do not admit that the plaintiffs had spent huge amounts on research, machinery and advertisements towards business promotion. Plaintiffs have not pointed out any additional design or feature of their product which makes them aesthetically appealing.
13. Names "Euro Guard" and "Varsha Square Gutter" are totally FAO No.155 of 2018 9 dissimilar and clearly distinguishable. Therefore there is no meaning in contending that the defendants with an intention to take undue benefit of the wide popularity, recognition and market shares of the plaintiffs' rectangular rainwater gutters tried to pass off their goods. There are striking features apparently distinguishing the rainwater gutters manufactured by the 1st defendant from the same manufactured by the 1st plaintiff. Rainwater gutters manufactured by the plaintiffs are not ribbed outside the gutter, which can easily be seen with naked eyes. Thickness of PVC material of rainwater gutters is also different. Plaintiffs are not entitled to any relief.
14. Heard the learned counsel on both sides.
15. Understanding the relevant provisions in the Act will be useful for a proper resolution of the dispute. Section 2(a) of the Act defines the expression "article" in the following words:
"(a) "article" means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately"
Definition of "design" in Section 2(d) of the Act is also relevant:
"(d) "design" means only the features of shape, configuration, pattern, ornament or composition of lines or FAO No.155 of 2018 10 colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957);"
16. Following the principles in Interlego v. Tyco ((1988) RPC 343), P.Narayanan in Copyright and Industrial Designs, 3rd Edition, page 390, has stated the following principles:
" The purpose of the Designs Act is to protect novel designs devised to be applied to (or in other words, to govern the shape and configuration of) particular articles to be manufactured and marketed commercially. It is not to protect principles of operation or invention which, if protectable at all, ought to be made the subject-matter of a patent. Nor is it to FAO No.155 of 2018 11 prevent the copying of the direct product of original artistic effort in producing a drawing. Indeed the whole purpose of a design is that it shall not stand on its own as an artistic work but shall be copied by embodiment in a commercially produced artefact. Thus the primary concern, is what the finished article is to look like and not with what it does and the monopoly provided for the proprietor is effected by according not, as in the case of ordinary copyright, a right to prevent direct reproduction of the image registered as the design but the right, over a much more limited period, to prevent the manufacture and sale of articles of a design not substantially different from the registered design. The emphasis therefore isupon the visual image conveyed by the manufactured article."
17. On a careful reading of the definition of "design", the following aspects will be clear:
(1) Design means only the shape, configuration, pattern, ornament or composition of lines or colours applied to every article; (2) the article may be in two-dimensional form or three-
dimensional form or both the forms;
FAO No.155 of 2018 12(3) the application of the design to the article can be by any industrial process or means;
(4) the industrial process or means may be manual, mechanical or chemical;
(5) the manual, mechanical or chemical process or means may be applied separately or combined together;
(6) the shape, configuration, pattern, ornament or composition of lines or colours, in the finished article, appeals to eye only and judged solely by eye.
Nevertheless, "design" does not include :-
(1) Any mode or principle of construction or anything which is merely mechanical device;
(2) Any trade mark as defined in section 2(1)(v) of the Trade and Merchandise Marks Act, 1958 (43 of 1958);
(3) Any property mark as defined in section 479 of Indian Penal Code (45 of 1860);
(4) Any artistic work as defined in section 2(c) of the Copyright Act, 1957 (14 of 1957).
18. Supreme Court in Bharat Glass Tube Limited v. Gopal Glass Works Limited (AIR 2008 SC 2520) has clearly held that the definition of design in Section 2(d) read with application for registration and FAO No.155 of 2018 13 Rule 11 with Form I would make it clear that the design which is registered is to be applied to any finished article which may be judged solely by eye appeal. A conjoint reading of these three provisions will make it clear that a particular shape or a particular configuration is to be registered which is sought to be produced on any article which will have a visual appeal. Such design once it is registered cannot be pirated by any other person. The concept of design is at a particular figure conceived by its designer in his mind, reproduced in some identifiable manner and it is sought to be applied to an article.
19. Calcutta High Court in Anuradha Doval v. The Controller of Patents and Designs and others (AID No.1 of 2015, decided on 13.04.2017) after considering precedents on the point held thus:
" ...... The definition makes it clear that design means the features of shape, configuration, pattern, ornament or composition of lines or colours applied to an article and not the article itself. The definition of "design" is applicable to an article in two dimensional or three dimensional forms or in both the forms. Thus, as a general rule, a design consists of :
(i) three-dimensional features, such as the shape of a product;
(ii) two-dimensional features, such as ornamentation, FAO No.155 of 2018 14 patterns, lines or colour of a product;
or
(iii) a combination of one or more such features.
The design must be such that in the finished article the features of it 'appeal to and are judged solely by the eye'. It does not relate features which are dictated by function. The rationale behind this exclusion is that the point of design protection is to reward and encourage good product design by protecting the skill, creativity and labour of product designers. Design is concerned with both form and function. Design law is not seeking to reward advances in function. A good subject of design must be visually appealing, though it need not be an artistic work or possess artistic merit. ......"
20. Bombay High Court in a judgment rendered in Gorbatschow Wodka Kg v. John Distilleries Limited (Suit No.3046 of 2010 decided on 02.05.2011) held thus:
"The test is whether the shape that has been adopted by the Plaintiff is one that is adopted capriciously, purely to give the article a distinctive appearance or characteristic of the goods of the manufacturer. If that be so, the manufacturer may be able to establish that he has a reputation and goodwill FAO No.155 of 2018 15 in the distinctive appearance of the article itself which would furnish a cause of action in passing off. ........."
21. On the question whether a composite suit for infringement of a registered design can be filed along with an action for passing off, a Full Bench of the Delhi High Court in Mohan Lal, Proprietor of Mourya Industries v. Sona Paint and Hardwares (AIR 2013 Del.143) held thus:
"24. The policy of law is to prevent multiplicity of suits and to protect a person from being vexed twice qua the same cause. Therefore, if the causes of action are different, then they cannot be combined in one suit.
24.1 In our view, in a suit filed by a plaintiff to protect his statutory rights, flowing from registration obtained under the Designs Act would decidedly based on elements which are found in S.2(d) and S.11 read with the exclusions provided in S.4 of the Designs Act. Ordinarily, the plaintiff would aver that he had secured for himself a design as defined in S.2(d) in respect of which a certificate of registration has been issued, the registration is valid in terms of the provisions of S.11, the plaintiff is the inventor (or in a given case a lawful assignee) of the design which is new or novel or FAO No.155 of 2018 16 significantly distinguishable from any known designs or any combination of known designs, and that, the defendant is applying the plaintiff's registered design or its fraudulent or obvious imitation without his consent or license. The suit is brought to injunct piracy of the registered design by the defendant in terms of S.22 of the Designs Act.
24.2 As against this the broad pleading in a passing off action would be that the plaintiff is using its design as a trademark. The plaintiff sells his goods or offers his services as the case may be under the said trademark. The goods and services have acquired a goodwill and reputation. In the minds of the purchasing public, the trademark is associated with the plaintiff. The defendant seeks to represent (by using the mark of the plaintiff or a mark which is deceptively similar to the plaintiff's mark) falsely that the goods sold or services offered by the defendant are those of the plaintiff. The misrepresentation has caused injury or is calculated to cause injury to the plaintiff. A cause of action simply put means every fact which the plaintiff will have to prove if FAO No.155 of 2018 17 traversed, in order to obtain a judgment in his favour. (see Read v. Brown, (1888) 22 Q.B.D. 128.
24.3 Thus, the cause of action in the infringement suit under the Designs Act could be different from that which obtained in a passing off action. The fundamental edifice of a suit for infringement under the Designs Act would be the claim of monopoly based on its registration, which is premised on uniqueness, newness and originality of the design. Whereas, the action for passing off is founded on the use of the mark in the trade for sale of goods and/or for offering service; the generation of reputation and goodwill as a consequences of the same; the association of the mark to the goods sold or services offered by the plaintiff and the misrepresentation sought to be created by the defendant by use of the plaintiff's mark or a mark which is deceptively similar, so as to portray that the goods sold or the services offered by him originate or have their source in the plaintiff. It is trite to say that different causes of action cannot be combined in one suit (see Dabur India Limited vs. K.R. FAO No.155 of 2018 18 Industries 2008(10) SCC 595 @ page 607 paragraph
34.)
25. Having regard to the nature of the two actions, in our opinion, the two actions cannot be combined. Though as indicated, at the beginning of discussion of this issue if the two actions are instituted in close proximity of each other the court could for the sake of convenience try them together, though as separate causes, provided it has jurisdiction in the matter."
22. In this case, pleadings will reveal that the plaintiffs have founded their claims both on infringement and passing off. Since these actions emanate from distinct causes of action, combination of them per se cannot legally be permitted. It is not the case of the plaintiffs that on the ground of infringement they seek some reliefs and on passing off, some other. Entire reliefs are claimed on causes of action arising out of infringement and passing off. However, a detailed enquiry in this regard should be made at the time of trial.
23. Regarding passing off, the observation by the Bombay High Court in M/s.Kemp & Company and another v. M/s.Prima Plastics Ltd. (1999 (1) Bom.CR 239) is thus:
FAO No.155 of 2018 19
"It would be seen that in order to establish goodwill and distinctiveness in a particular get up, there must be something more than mere similarity between the goods themselves. Mere copying is not to pass off. If a person copies shape or configuration or get up of other persons goods or article, by itself it cannot be said that he has made false representation. No one is prevented from copying and selling an article in the market provided he does not make a false representation suggesting that the article which he is selling is in fact that of plaintiff. Monopoly in the property is only preserved in favour of registered design holder. If the plaintiff has to succeed on the ground of passing off, he must show something more than mere similarity between the goods. Exceptions apart, where an article is shaped in an unusual way not primarily for giving same benefit in use or for any other practical purpose, but capricious in order purely to give an article a distinctive appearance, characteristic of that particular manufacturer's goods, a case may be made out by the plaintiff that he has reputation and goodwill in the distinctive appearance of the article itself which could provide him a cause of action in the passing of if FAO No.155 of 2018 20 his goods were copied."
24. I shall now turn to the facts in this case. Exts.A1 to A8 and B1 to B7 are the documents produced on the side of the contestants. Ext.C1 series are the court's exhibits which includes the commissioner's report and materials collected by the commissioner. Ext.A1 is the deed of partnership of the plaintiffs. Ext.A2 is the true copy of the certificate issued to the plaintiffs by a chartered accountant showing the investment on advertisements. Ext.A3 is the copy of certificate of registration of design of the plaintiffs' product. Ext.A3 shows top perspective view, front perspective view, top view and side view of the rain water gutter manufactured by the plaintiffs. It has been clearly mentioned in Ext.A3 that the novelty lies in the shape and configuration of rain water gutter as illustrated therein. It makes further clear that no claim is made by virtue of this registration in respect of any mechanical or other action of any mechanism whether or in respect of any mode or principle of construction of the article. Further, no claim could be made by virtue of registration to any right to the exclusive use of colour and colour combination appearing in the design of the article. Ext.A4 is the brochure of the plaintiffs' product. Ext.A5 is the comparative photos of the plaintiffs' rain water gutter with that of the defendants kept side by side. According to the learned counsel for the appellants, the marking "Varsha" on the products of the defendants is clearly visible and FAO No.155 of 2018 21 the plaintiffs' product carry a distinct marking "Euro Guard" and so much so there is no possibility of any passing off. It is also contended by the learned counsel for the appellants that these products are normally purchased by builders, contractors or other technicians and the ultimate consumers can never be deceived by the shape since they carry different names and there are visible differences and dissimilarities even in the design. It is therefore strongly contended that the case of passing off can never lie.
25. Similarly the defendants also produced copy of the partnership deed as Exts.B1 and B2. Exts.B3 to B6 are the photographs to compare the rain water gutter and accessories produced by the parties to show that they appear differently.
26. Learned counsel on both sides demonstrated by assembling the rainwater gutter and accessories belonging to both the parties. It is argued by the learned counsel for the appellants that the plaintiffs are not the first ones to manufacture square gutters. It is manufactured all over the world in various countries. Case that the plaintiffs ideated and designed rainwater gutter in square shape cannot be accepted since the design is not a novel one. In order to buttress this argument, brochures relating to Sekisui Eslon BV of Netherlands has been produced. It is contended that in other countries also such rainwater gutters with flow-guard are in vogue. Some other documents are also produced to show that in India, other FAO No.155 of 2018 22 manufactures too make rainwater gutters in square shape. It is therefore contended that the plaintiffs have no exclusive right over rainwater gutters with a square shape.
27. Learned counsel for the appellants contended that the averments in paragraph 4 of the plaint are highly insufficient to claim a legal right under the Act. According to him, the recitals therein do not constitute a monopoly right over the design in respect of the rainwater gutter manufactured by the plaintiffs/respondents. Per contra, learned counsel for the respondents contended that all the ingredients to constitute legal rights under the Act have been pleaded in the plaint. However, sufficiency of pleadings cannot be considered at this stage. But then, the pleadings become relevant in the matter of considering a prima facie case, balance of convenience and aspects relating to injury.
28. Learned counsel for the appellants raised serious objections in the way the trial Judge appreciated the issues involved. According to him, the court below did not bestow any attention to the striking differences in the names of both the products and the manner in which the names are depicted on the rainwater gutters. Appellants would contend that there is no possibility of any customer being deceived because of the glaring dissimilarities. Moreover, the quality of materials used by the contestants are also different. It is true that merely because of a broad similarity in FAO No.155 of 2018 23 shape, a man of ordinary prudence will not be mistaking the product of the plaintiffs as that of the defendants because of the clearly visible differences in name. It cannot be disputed that there is no similarity whatsoever in the names of the rival products. The names have been clearly imprinted on the products to make it clear who the manufacturer is. Long line of decisions rendered by the Supreme Court, especially in the field of Trade Marks Act, make it clear that passing off is an action in deceit and the remedy therefor lies in common law. Considering the difference in the names of the products, the difference in the quality of the materials used for manufacturing and also that ordinarily the customers are building contractors or other skilled persons, I find no reason to infer a possibility of passing off in this case.
29. It is true that the plaintiffs have a registration of rainwater gutter under the Act as mentioned above. However, going by the provisions of the Act and the legal position mentioned above, they cannot claim any exclusive right in respect of the principles of operation or invention which ought to be made the subject of a patent. It is also evident that merely providing a ribbed pattern design, prima facie it cannot be held that the plaintiffs have created a novel shape, configuration or pattern. The products manufactured and marketed by the appellants also have ribs on the top of the water gutter. It is submitted that the rib is intended to give a FAO No.155 of 2018 24 grip to the leaf guard to be fitted on the top of the water gutter.
30. The reasoning by the trial Judge that issuance of a certificate of registration of design to the respondents' products by the Controller General of Patents pre-supposes that their product is a unique one which is distinct and different from other products available in the market cannot held good in the light of the principles discussed above. Further observation that the appellants' product is a colourable imitation of the respondents' design also prima facie cannot be accepted in the light of the factual and legal position emerging in this case. Hence I find it difficult to sustain the impugned order for the reason that the materials on record were not appreciated correctly by the court to find out prima facie an infringement of any legal right.
31. It will be undesirable to comment more about the merit of the matter at this interlocutory application stage. The establishment of legal rights in a full-fledged scale can be done at the time of trial. On an over all evaluation, I find that the impugned order has to be interfered with, but of course with the following stipulations.
For the above reasons the impugned order is set aside. The appeal is disposed with following directions. The defendants/appellants are directed to keep a true account of all the sales they make of the disputed products. They shall produce the accounts before the trial court every two FAO No.155 of 2018 25 months starting from the date of this judgment. The appellants shall file an undertaking affidavit before the court below in one month that they will pay the entire damages to the plaintiffs/respondents should the suit be decreed against them. Court below shall take appropriate steps to complete the pre- trial steps within three months and complete trial of the case within a total period of six months from the date of this judgment.
All pending interlocutory applications will stand closed.
A.HARIPRASAD, JUDGE.
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