Rajasthan High Court - Jaipur
Paresh Ajitkumar Kapoor vs Tomar Enterprises on 28 November, 2022
Author: Inderjeet Singh
Bench: Inderjeet Singh
HIGH COURT OF JUDICATURE FOR RAJASTHAN
BENCH AT JAIPUR
S.B. Other Original Suit No. 1/2021
1. Paresh Ajitkumar Kapoor, Aged About 48 Years, Male,
Having Present Address At A-11, Savita Apartment, Nr.
Judgees Bungalow, Bodakdev, Ahmedabad.
2. Kapsun Resources Corporation, A Proprietorship Concern
Through Its Proprietor Meeta Ashok Kapoor, Through Her
Power Of attorney holder Shri Paresh Ajitkumar Kapoor
(Plaintiff No. 1) Having Address At Shed No. 5, Raj Estate,
B/h. Vallabh Dining Hall, Sarkhej Sanand Cross Road,
Sarkhej, Ahmedabad-382210.
----Plaintiffs
Versus
1. Tomar Enterprises, (Dealer/Seller Of Product Of
Defendant No. 2 And 3) Having address At 9, Jayanti
Market, M.I. Road, Jaipur-2376256.
2. Raj Cooling System Private Limited, CIN -
U31904GJ2017PTC097755 GSTIN/UIN
No.24AAICR3608N1Z4 A Company Registered Under
Companies Act, 1956 Through Its Director Defendant No.
3, having its Address At Block No.70P, Unit 10, Resurvey
No.923, Crystal Indus Logistic Park, NH8th Bhayla Village,
Nr. Roselab Pharma, Opp. Kerala GIDC, Bawla,
Ahmedabad-382220 also having address at Plot No. 58,
Survey No.31, B/h Show Room Vavdi, Rajkot.
3. Raj Cooling World Private Limited, CIN-
U25203GJ2011PTC067549 A company registered Under
Companies Act, 1956 Through Its Director Defendant No.
3 Having Its Address At Plot No. 58, Survey No. 31, Opp.
Jivraj Estate, Gondal Road, Vavdi, Rajkot.
4. Kamleshkumar Manubhai Ramoliya, DIN No. 07751960
Male, Aged Adult, Having Address At Plot No. 58, Survey
No. 31, Opp. Jivraj Estate, Gondal Road, Vavdi, Rajkot.
5. Bhavnaben Kamleshbhai Ramoliya, DIN No. 03639885
Female Aged Adult. Having Address At Plot No. 58,
Survey No. 31, Opp. Jivraj Estate, Gondal Road, Vavdi,
Rajkot.
----Defendants
Connected With
S.B. Civil Miscellaneous Appeal No. 549/2021
Kamlesh Kumar Manubhai Ramoliya, Having Address At Plot No.
58, Survey No. 31, Opp. Juvraj Estate Estate, Gondal Road,
Vavdi, Rajkot (Name Wrongly Mentioned In Suit As Kamlesh
Instead Of Kalpesh)
----Appellant/Defendant
Versus
1. Paresh Ajitkumar Kapoor, aged about 48 years R/o A-11,
Savita Apartment, Nr. Judges Bungalow, Bodakdev
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[OOS-1/2021]
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Ahmedabad.
2. Kapsun Resources Corporation A Proprietorship Concern,
Through Its Proprietor Meeta Ashok Kapoor, Through Her
Power Of Attorney Holder Shri Paresh Ajitkumar Kapoor
(Plaintiff No. 1) Having Address At Shed No. 5 Raj Estate,
B/h. Vallabh Dining Hall, Sarkhej-Sanand Cross Road,
Sarkhej, Ahmedabad-382210.
Respondents/Plaintiff
3. Tomar Enterprises, (Dealer/seller Of Article Of Defendant No. 2 And 3) Having Address At 9, Jayanti Market, M.I. Road, Jaipur-2376256.
Respondent/Defendant
4. Raj Cooling System Private Limited, (Cin U31904GJ2017PTC097755) A Company Registered Under Companies Act, 1956, through Its Director Defendant No. 3, Having Its address at Plot No. 58, Survey No. 31, B/h Show Room, Vavdi, Rajkot.
5. Raj Cooling World Private Limited, (CIN U25203GJ2011PTC067549) A company registered under Companies Act, 1956, Through Its Director Defendant No. 3, having its address at Plot No. 58, Survey No. 31, Opp. Jivraj Estate, Gondal Road, Vavdi, Rajkot.
6. Bhavnaben Kamleshbhai Ramoliya, (DIN No. 03639885) aged adult, having address at Plot No. 58, Survey No. 31, Opp. Jivraj Estate, Gondal Road, Vavdi, Rajkot
----Performa Respondents/Defendants S.B. Civil Miscellaneous Appeal No. 612/2021 Kamlesh Kumar Manubhai Ramoliya, aged adult, having address at Plot No. 58, Survey No. 31, Opp. Jivraj Estate, Gondal Road, Vavdi, Rajkot (name wrongly Mentioned In suit as Kamlesh instead of Kalpesh)
----Appellant/Defendant Versus
1. Paresh Ajitkumar Kapoor, aged about 48 Years, R/o A-11, Savita Apartment, Nr. Judges Bungalow, Bodakdev, Ahmedabad.
2. Kapsun Resources Corporation, a Proprietorship concern through its Proprietor Meeta Ashok Kapoor, through her power of attorney holder Shri Paresh Ajitkumar Kapoor (Plaintiff No. 1) having address at Shed No.5 Raj Estate, B/h. Vallabh Dining Hall, Sarkhej Sanand Cross Road, Sarkhej, Ahmedabad 382210.
Respondents/Plaintiff
3. Tomar Enterprises, (Dealer/Seller of article of Defendant No.2 And 3) having address At 9, Jayanti Market, M.I. Road, Jaipur-2376256.
Respondent/Defendant
4. Raj Cooling System Private Limited, (CIN U31904GJ2017PTC097755) A company registered under (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (3 of 48) Companies Act, 1956, through its Director Defendant No.3, having its address At Plot No. 58, Survey No. 31, B/h Show Room, Vavdi, Rajkot.
5. Raj Cooling World Private Limited, (CIN U25203GJ2011PTC067549) A company registered under Companies Act, 1956, through its Director Defendant No.3, having its address At Plot No. 58, Survey No. 31, Opp. Jivraj Estate, Gondal Road, Vavdi, Rajkot.
6. Bhavnaben Kamleshbhai Ramoliya, (DIN No. 03639885) aged adult, having address at Plot No. 58, Survey No. 31, Opp. Jivraj Estate, Gondal Road, Vavdi, Rajkot.
----Respondents For Petitioner(s) : Mr. Rajendra Prasad, Sr. Counsel with Mr. Anuroop Singhi with Mr. Harshit Tolia & Mr. Rahul Khandelwal(in OOS 1/2021) Mr. S.S. Hora & Mr. Rahul Lodha (in C.M.A-549/2021) & (C.M.A.-612/2021) For Respondent(s) : Mr. S.S. Hora & Mr. Rahul Lodha (in OOS 1/2021) Mr. Rajendra Prasad, Sr. Counsel withMr. Anuroop Singhi with Mr. Harshit Tolia & Mr. Rahul Khandelwal(in CMA-C.M.A-549/2021 & 612/2021) HON'BLE MR. JUSTICE INDERJEET SINGH Order 28/11/2022
1. At the request & consent of the respective learned Senior Counsels for the parties, the matter has been heard on the application filed by the plaintiffs under Order 39 Rule 1 & 2 CPC read with Section 151 CPC.
2. Brief facts which are relevant for disposal of the application filed by the plaintiffs under Order 39 Rule 1 & 2 CPC read with Section 151 CPC are that a suit came to be filed by the plaintiffs for infringement & perpetual injunction under Section 22 of the (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (4 of 48) Designs Act, 2000 (hereinafter to be referred as the Act of 2000) against the defendants in the Court of District & Sessions Judge, Jaipur Metro-II, Jaipur along with the application under Order 39 Rule 1 & 2 CPC read with Section 151 CPC seeking temporary injunction during pendency of the said suit. According to the plaintiffs, they are engaged in the activity of research and development of novel and unique designs of air cooler and also in the business of manufacturing, marketing, selling and exporting the air coolers across the country and to several foreign countries also. The plaintiffs applied for registration of design of their cooler with the Controller General of Patent, Design and Trademark (hereinafter to be referred as Controller) on 27.12.2010. The said design was duly registered by the Controller and originally it was for ten years and as per the provisions of the Act of 2000, said registered design, according to the plaintiffs, is deemed to have been extended upto 26.12.2025. It was further stated by the plaintiffs in the suit that after registration of the said design, they started manufacturing, selling and exporting the products of their air cooler in the market extensively and continuously. The details of model name and number have been mentioned in para no.13 of suit, which are as under :-
"i. Model Name AntarcticAR, Model No.:AR09GC, AK09GC, AR09LC, AK09LC, AR12LC, AK12LC, AR12GC & AK12GC.
ii. Model Name TentcooleRR, Model, TK09GB, TK09LB, TK12GB & TK12LB."
It was further stated by the plaintiffs that they have incurred huge expenditure towards publicize their products and the promotional expenses and their sales turnover has also been disclosed in the suit, mention of which finds place in para no.14 & (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (5 of 48) 15 of the suit respectively and in support thereof the certificates issued by the Chartered Accountant have been placed on record in the form of Annexure-H & Annexure-I respectively. As alleged in the suit, it came to the notice of the plaintiffs that the defendants have started infringement of their design by selling same type of coolers, which information stood confirmed to the plaintiffs in February, 2021. It was also stated in the suit that when the plaintiffs found that the defendant no.2 is selling the coolers of plaintiffs' registered design, either themselves or through registered dealers at commercial/market levels after copying and manufacturing the registered design of the plaintiffs, then they filed the original suit before the District & Sessions Judge, Jaipur Metro-II, Jaipur along with temporary injunction application. The learned Court below by an ad-interim order 26.02.2021 restrained the defendants from manufacturing & selling the registered design number 233559 of the plaintiffs. An application was filed by the defendant no.4 to the effect that in view of the provisions of Section 22(4) of the Act of 2000 the suit along with temporary injunction application be transferred to the High Court for consideration, which was not that seriously opposed by the plaintiffs, however submitted that the interim order granted in their favour be allowed to be continued till the first date of hearing before the High Court, upon which the matter was referred to this Court and came to be registered here as S.B. Other Original Suit No.1/2021 and being listed before this Court after its assignment, along with two other connected civil misc. appeals no.549/2021 & 612/2021 filed by the defendants challenging the orders passed by the courts below dated 26.02.2021 & 22.03.2021 respectively.
(Downloaded on 04/12/2022 at 12:09:30 AM)[OOS-1/2021] (6 of 48) During pendency of the suit proceedings before this Court, the defendants No.2 & 4 filed an application under Order 7 Rule 11 CPC read with Section 151 CPC which was dismissed by this Court vide order dated 28.07.2022.
3. Learned Senior Counsel appearing for the plaintiffs submitted that in the suit as well as in the temporary injunction application they have specifically mentioned that the defendants are copying plaintiffs' registered design of the cooler and selling the same in the market. Learned Senior Counsel further submits that along with the temporary injunction application they have also placed on record copies of the photographs of the cooler/products manufactured by the plaintiffs as well as by the defendants and submitted that a perusal of these photographs clearly shows that the defendants have copied the registered design of the plaintiffs.
Learned Senior Counsel further submits that both the photographs if are seen together even with naked eyes, they seem to be same and thus this act of the defendants amounts to infringement of plaintiffs' registered design. Learned Senior Counsel further submits that it is a case of clever fraudulent & imitation. Learned Senior Counsel further submits that some of the employees working with the plaintiffs have been engaged by the defendants for copying their design and in this regard specific pleadings have been made by the plaintiffs in the temporary injunction application. Learned Senior Counsel further submits that the defendants have not denied the fact regarding selling the cooler, however their objection is that their design is different than that of the plaintiffs. Learned Senior Counsel further submits that the suit (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (7 of 48) for cancellation of the design is maintainable if the defendants have also registered their design. Learned Senior Counsel further submits that upon perusal of the pleadings made by the plaintiffs in the temporary injunction application, a strong prima facie case is made out in favour of the plaintiffs and on the contrary the defendants have failed to show any prima facie case in their favour as they are admitting that they are manufacturing the same type of cooler though stated that their design is different.
Learned Senior Counsel further submitted that reply submitted on behalf of the defendants clearly shows that from the year 2017-18 onwards the sale of the defendants' coolers became very high despite earlier years. Learned Senior Counsel further submitted that the plaintiffs have suffered irreparable loss as the defendants are continuously selling the cooler in the market after copying the plaintiffs' registered design and therefore prayed for restraining the defendants from manufacturing, distributing and selling the coolers of plaintiffs' registered design.
4. In support of the contentions, learned Senior Counsel appearing on behalf of the plaintiffs placed reliance upon the following judgments.
In the matter of Whirlpool of India Ltd. v.
Videocon Industries Ltd., reported in 2014 SCC OnLine Bom 565, it has been held as under :-
14. As stated hereinabove, the submissions on the issue as to whether a suit for infringement can lie/is maintainable against the Defendant who is also a registered proprietor mainly pertain to the interpretation to be given to the words 'any person' (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (8 of 48) used in Section 22 of the Act. Section 22 of the Act falls in Chapter V of the Act titled "LEGAL PROCEEDINGS"
and prescribes what constitutes piracy/infringement of registered design. The same is reproduced hereunder:
"22. Piracy of registered design.- (1) During the existence of copyright in any design it shall not be lawful for any person-for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the de-sign has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof, or knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.
2.If any person acts in contravention of this section, he shall be liable for every contravention-
(a) to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt, or
(b) if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly:
Provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed fifty thousand rupees:
Provided further that no suit or any other proceeding for relief under this subsection shall be instituted in any court below the court of District Judge.
(3) In any suit or any other proceeding for relief under sub-section (2), every ground on which the registration of (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (9 of 48) a design may be cancelled under section 19 shall be available as a ground of defence.
(4) Notwithstanding anything contained in the second proviso to sub-Section (2), where any ground or which the registration of a design may be cancelled under section 19 has been availed of as a ground of defence and sub-
section (3) in any suit or other proceeding for relief under sub-section (2), the suit or such other proceedings shall be transferred by the Court in which the suit or such other proceeding is pending, to the High Court for decision.
(5) When the court makes a decree in a suit under sub- section (2), it shall send a copy of the decree to the Controller, who shall cause an entry thereof to be made in the register of designs."
14.1. Sub-section (1) of Section 22 of the Act prohibits what cannot be done in law by 'any person' during the existence of copyright in any design of a registered proprietor as provided in sub-clauses (a), (b) and (c) of Section 22 of the Act without the consent of the registered proprietor of such design. This shows that the infringement has to be of a registered design.
14.2 Sub-section (2) of Section 22 of the Act provides that if 'any person' acts in contravention of Section22 of the Act, he shall for such contravention face the consequences viz. payment of damages, and an order of injunction from repeating such infringement as set out in clauses (a) and (b) and the proviso to sub-section (2) of Section 22 of the Act.
14.3 Sub-section (3) of Section 22 of the Act provides that in any suit or any other proceedings for relief under sub-section (2), every ground on which the registration of a design may be cancelled under Section 19 shall be available as a ground of defence.
15. Section 22 of the Act thus gives the registered proprietor a right to relief against "any person" who applies the design of the registered proprietor to any article of the class of articles in which the design is registered. The words" any person", which are used without any words of limitation, ordinarily must be given their plain and natural meaning - namely, any person whosoever - unless the statute compels by reason of the (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (10 of 48) context in which the words "any person" are used or by reason of the other provisions of the Act to restrict the meaning of the words to "any person other than a registered proprietor".
16. The Defendant has submitted that by virtue of Section 11 read with section 2(c) of the Act, the Defendant has the exclusive right to use its registered design, and the only manner of reading the words 'any person' would be to exclude 'registered proprietor' and that no infringement proceeding can lie against the registered proprietor, since the Court of law does not have the power or authority to take away such a right. The submission is clearly fallacious when one considers the language of Section 11 of the Act. Section 11 qualifies the copyright on registration, granted thereby, with the words 'subject to the provisions of the Act'. In other words, any registration of a design which may be granted is at all material times 'subject to the provisions of the Act'. In other words, if other provisions of the Act provide for cancellation of such registration or empowers the Controller/Court to cancel the registration of a design or reach a finding that the registration of a design is not valid and the use of such design amounts to infringement of a validly registered design of another, and upon invocation of such provisions the Court passes orders against the registration of a design, the registration granted under Section 11 would become ineffective. The Defendant's argument wholly ignores these words of qualification viz. 'subject to the provisions of the Act'. It is therefore clear that a registered design can be cancelled and/or the registration set aside or the registered proprietor can be restrained by an order of injunction from using such design either by the Controller under Section 19 of the Act or under Section 22 of the Act by the High Court in accordance with the circumstances in a case/matter.
17. It is necessary to understand what right is conferred on the registrant of a design under the Act and then analyze the provisions of Section 22 in the light of such right. Section 11 provides that the registered proprietor of a design shall have copyright in the design for ten years commencing from the date of registration - meaning thereby, the exclusive right to apply the design to any article in the class in which the design is registered. But such exclusive right is, as noted above, "subject to the (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (11 of 48) provisions of the Act". These provisions include Section 4 (which contains a prohibition for registration on certain grounds), Section 6 (registration to be in respect of particular article) and Section 19 (cancellation of registration on certain grounds which include grounds under Section 4). Section 22 itself is one of the provisions to which such exclusive right is subject and this has distinct implications for a registered proprietor - whether such proprietor be a Plaintiff or a Defendant. From the Plaintiff's point of view, the exclusive right which a registered proprietor can claim against "any person" and on the strength of which he can claim relief under Section 22 against such person, is itself subject to the restriction contained in sub-section (3) of Section 22, namely, the Plaintiff - proprietor's registration should not be liable to be cancelled under Section 19 of the Act. If it is held to be so liable, that is a complete defence to the Plaintiff - Proprietor's action for claiming relief under Section 22. Equally would the provisions of Section 22 be a restriction on the Defendant - Proprietor's exclusive right to apply his registered design to his articles. The Defendant - proprietor would have a complete defence to the Plaintiff - Proprietor's action only if his (the Defendant's) registration is prior in point of time, since such prior registration is a ground for cancellation of the Plaintiff's registration. A Defendant proprietor, who holds a subsequent registration cannot plead his subsequent registration in defence to an action under Section 22, since a subsequent registration is no defence within the meaning of Section 22(3) read with Section 19. That is an obvious consequence of Section 22 from the defendant's point of view. Just as a Plaintiff cannot claim a right to relief under Section 22 against a prior registered proprietor on the basis of his (the Plaintiff's) registration, the defendant cannot successfully defend an action under Section 22 by a prior registered proprietor on the basis of his (the defendant's) registration. That clearly appears to be the scheme of the Act. This Scheme is not only based on sound reason and common sense but is perfectly in consonance with the very nature of a copyright claim in a design. It, therefore, cannot be argued that Section 22(3) has implications only for the Plaintiff's registration and not for the Defendant's registration. The Court may consider both the Plaintiff's and the Defendant's registrations in the light of Section 22(3) and grant or reject the relief to a Plaintiff depending on whose registration is prior in point of time. Upon such determination, the decision may have (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (12 of 48) to be sent to the Controller, who shall cause an entry to be made accordingly in the Register qua the Plaintiff's or the Defendant's registration, as the case may be. The submission of the Defendant that a Court can examine the validity of the Plaintiff's registration but not examine the Defendant's registration apart from being unacceptable for reasons set out above is conceptually illogical. As correctly submitted by the Plaintiff, it creates two separate categories with no rationale or justification for doing so. Where the Plaintiff puts forth the registration, this the Court can examine. Where on the other hand the Defendant does so likewise, this the Court cannot. Such a construction is plainly incongruous.
18. It is submitted by the Defendant that Section 22(1)
(a) requires 'any person" to obtain a license or written consent from the registered proprietor if such person wants to apply the registered design to his articles. It is submitted that a license or written consent can be obtained only by a person other than a registered proprietor or in other words, a registered proprietor cannot be expected to obtain a license or written consent of another registered proprietor to use his own design. This aspect of the matter has also weighed with the dissenting judge of the Delhi High Court Full Bench and needs to be briefly dealt with. The submission in this regard may briefly be summarized as follows:
(a) The opening words "during the existence of copyright in any design" and "it shall not be lawful for any person"
(to do acts referred to therein) suggest that there are two categories - one "the registered proprietor" and another "any person" for whom it shall not be lawful to do acts referred to in Section 22(1) without the consent of the registered proprietor; and
(b) Such "any person" who is a registered proprietor himself cannot do an unlawful act of applying the design and for whom the consent of the other registered proprietor cannot be a sine qua non for such application.
The submission misses the essential point. Section 22(1) does not talk of two classes of persons i.e. registered proprietors and other persons. Section 22(1) talks of "the registered proprietor" and "any person" i.e. every person other than "the registered proprietor" himself. No person can apply the design of "the registered proprietor" without the latter's license or consent and this includes even a (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (13 of 48) subsequent registered proprietor. Such subsequent registered proprietor could not have, as explained above, in the first place applied for registration in view of the previous registration of the first registered proprietor and in any event could not successfully set up his own subsequent registration in defence to an action by the first registered proprietor under Section 22.
21. Apart from the fact that as stated hereinabove, a plain reading of Section 22 of the Act establishes beyond any doubt that a suit for infringement by a registered proprietor lies against any person including a registered proprietor, even otherwise the Legislative intent is also clear from the following:
(i) In Section 29(1), 29(2) and 29(4) of the Trade Marks Act, 1999, the Legislature has used the expression "a person who, not being a registered proprietor....". A similar exclusion against a registered proprietor is to be found in Section 29 of the Trade Marks Act, 1958. The Trade Marks acts (Act of 1958 and Act of 1999) therefore by use of express, clear and unequivocal words of exclusion, exclude a registered proprietor from the definition of infringement. It is inconceivable that the Legislature while enacting the said Act was unmindful of the fact that a similar legislation dealing with other intellectual property rights contained express words of exclusion. Had the Legislature intended to exclude from within the scope of infringement a registered proprietor, the Legislature, whilst enacting Section 22 would not have used the expression 'any person' (which is of a very wide scope);
and would in any event have added after the expression 'any person' the words 'not being a registered proprietor'. The Legislative intent is therefore clear viz. that an action for infringement would lie against any person, whether it be a registered proprietor or not.
(ii) The expression 'any person' found in Sections 17, 19 and 41 of the Act makes it evident that the said expression must be given a plain, natural and ordinary meaning and includes even the registered proprietor.
(iii) In Section 16 of the Act the expression 'any person other than the proprietor of the design' is used. Therefore, where the Legislature intended to exclude the proprietor, (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (14 of 48) it specifically said so by using the qualifying words 'other than'. These words are absent in Section 22 of the Act. Had the Legislature intended to exclude registered proprietor from Section 22 of the Act, it would have used the expression 'any person other than the registered proprietor'. This was consciously not done. This argument is reinforced by the fact that at several places (Sections 2
(j), 34, 40, etc.) the statute uses different expressions such as 'any other person' or 'some other person'. Hence, where the Legislature intended to draw a distinction between a registered proprietor and somebody else, the Legislature consciously used clear words.
23. For the reasons discussed above, I am of the considered view that a registered proprietor of a design can under Section 22 of the Act file a suit for infringement against a registered proprietor of a design.
25. Section 22(1) of the Act defines what constitutes piracy of a registered design. Under the Act, the use of either the registered design or a fraudulent or obvious imitation thereof by the Defendant amounts to an act of piracy and/or infringement.
26. The question of what tests are to be applied in deciding what constitutes an obvious imitation and/or is actionable is no longer res integra. This question has been considered in several judicial pronouncements. The leading decisions on the point are the decisions in the case of Castrol India Limited v. Tide Water Oil Co.(I) Limited and Kemp & Co. v. Prima Plastics Limited. In both the decisions, the Kolkata High Court and the Bombay High Court have laid down the following propositions as constituting the test to decide whether there is obvious imitation and/or piracy of a registered design.
Castrol India Limited v. Tide Water Oil Co.(I) Limited:
(supra)
(i) The word 'imitation' does not mean 'duplication' in the sense that the copy complained of need not be an exact replica.
(ii) The Court is required to see in particular as to whether the essential part or the basis of the Plaintiff's claim for novelty forms part of the infringing copy.(Downloaded on 04/12/2022 at 12:09:30 AM)
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(iii) The similarity or difference is to be judged through the eye alone and where the article in respect of which the design is applied is itself the object of purchase, through the eye of the purchaser.
(iv) The Court must address its mind as to whether the design adopted by the Defendant was substantially different from the design which was registered. The Court ought to consider the rival designs as a whole to see whether the impugned design is substantially different from the design sought to be enforced. (The test laid down on Benchchairs Ltd. C. Chair Center Ltd. was cited with approval).
(v) 'Obvious' means something which, as soon as one looks at it, strikes one as being so like the original design/the registered design, as to be almost unmistakable. Fraudulent imitation is an imitation which is based upon, and deliberately based upon, the registered design and is an imitation which may be less apparent than obvious imitation, that is to say, one may have a more subtle distinction between the registered design and a fraudulent imitation and yet the fraudulent imitation, although it is different in some respects from the original, and in respects which render it not obviously an imitation may yet be an imitation perceptible when the two designs are closely scanned and accordingly amounts to infringement. (The test laid down in Dunlop Rubber Co. Ltd. v. Golf Ball Developments Ltd. was cited with approval. Kemp & Co. v. Prima Plastics Limited: (supra)
(i) If the visual features of shape, configuration pattern designs are similar or strikingly similar to the eye, it is not necessary that the two designs must be exactly identical and same. The matter must be looked at as one of substance and essential features of the designs ought to be considered.
(ii) In a given case, where the registered design is made up of a pattern which has no one striking feature in it, but it appeals to the eye as a whole, it may very well be that another design may be an imitation of it which makes the same appeal to the eye notwithstanding that there are many differences in the details. (The opinion of Farwell J. in Dunlop Rubber Co. Ltd. v. Golf Ball Developments Ltd. was cited with approval).
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(iii) In comparing rival designs the Court is required to see whether the impugned design/product is substantially different to the design which is sought to be enforced.
The aforesaid tests have been independently applied and/or followed in a series of judgments of various High Courts, including judgments in JN Electricals (India) v.President Electricals; Alert India v.Naveen Plastics; Hindustan Sanitaryware v.Dip Craft Industries, and Dabur India v. Amit Jain
27. The principle which clearly emerges from the above is that the test in deciding such matters is:"judged solely by the eye are the essential features present or are the two substantially different".
32. The Defendant has prepared a tabular statement which attempts to highlight differences between the Plaintiff's design and/or the Defendant's products. The differences sought to be highlighted by the Defendant in a tabular statement have been perused by me. The same are trivial and are not sufficient to avoid a finding of piracy and/or copying. As correctly submitted on behalf of the Plaintiff, if such minor differences are held to be sufficient enough to avoid a finding of infringement, then it will be almost impossible for any Plaintiff to succeed, since a skilful defendant will knowingly make some cosmetic and minor changes in its products. In view thereof the submissions made on behalf of the Defendant that the Defendant has satisfied the test laid down in the judgments in Best Products v. Woolworths and Benchchairs Ltd. v. Chair Centre Ltd. for determining whether there is a substantial difference between the two products and that the judgments relied upon by the Plaintiff cannot be made applicable to the present case are untenable and cannot be accepted. In fact, the decision in Best Products(supra) lends credence to the proposition of the Plaintiff that when the Plaintiff's registration are compared with the Defendant's products, irrelevant features are to be ignored and what is required to be compared are its essential features.
33. Although both sides have placed before the Court material in the form of comparative charts highlighting the similarities and/or dissimilarities, these are really not (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (17 of 48) determinative of the matter. What is important and relevant is the assessment of the Court on an examination of the Defendant's product and comparing the same with the Plaintiff's designs. For this purpose, throughout the hearing, the Plaintiff had produced and kept in court, for the visual examination of the Court, the Plaintiff's as well as the Defendant's washing machines. The said machine of the Defendant was an almost total replica of the Plaintiff's design barring one or two minor variations, example, on the control panel instead of three knobs (which is the case in the Plaintiff's design), the Defendant had in its product three knobs and one outlet point. This does not detract from the overall identity of the two. In fact, as submitted by the Defendant, this is what the House of Lords has frowned upon in the case of Designers Guild Limited v. Russell Williams (Textile Limited) by describing it as 'altered copying'. In the said House of Lord's judgment in the said Designers Guild case, the Court concluded by observing thus:
"If the similarities between the two were sufficient to justify the interference that one had been copied from the other, there was, in my judgment no further part for the concept of substantiality to play".
In other words, once the Court concludes that there has been copying, the cosmetic differences and the rather involved inquiry is completely uncalled for and/or not required. The concept of substantiality is not required to be gone into once the court concludes that one had copied from the other. In the present case, I am satisfied that even if the basis of substantiality is complied with, there is no manner of doubt that the Defendant's product is a substantial reproduction and/or imitation of the Plaintiff's designs. In view thereof, the submissions advanced and the reliance/analysis of case laws by the Defendant to establish otherwise cannot be accepted.
42. As held by the Hon'ble Division Bench of this Court (Coram : Mohit Shah, C.J. & Jamdar, J.) in Asian Rubber Industries Ltd. v. Jasco Rubber, a Defendant who claims that its design has novelty cannot then contend that prior identical design of another is lacking in novelty. The Defendant therefore can hardly be heard to urge a lack of novelty in the Plaintiff's design since the Defendant themselves claim to be registered proprietors of the (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (18 of 48) design. An attempt is made by the Defendants to distinguish the said decision by submitting that in that case the Defendant had procured design registration in relation to footwear under the Act, which was subsequently cancelled by the Assistant Controller of Patents and Designs and in the alternative by also contending that the decision is per incurium as it failed to take into account the statutory provisions i.e. Section 22(3) read with Section 19 of the Act. In my view, both the submissions are untenable and cannot be accepted.
In the matter of Win Plast Ltd. v. Symphony Ltd. (High Court of Gujarat at Ahmedabad), O.J. Appeal No. 32 of 2015 In Civil Suit No. 2 of 2015, it has been held as under :-
36. Further, the approach while considering the application for injunction or exercise of discretion has to be regarding balancing the two conflicting rights or obligations. One more aspect which is considered is comparative hardship. Further, while considering the provisions of the statute like Designs Act or such laws for the intellectual property rights, the legislature has itself balanced such right of creating monopoly over a limited period and providing for the business consideration.
However, by judicial interpretation it has been well accepted that if such registered proprietor or the owner of the mark, whether it is under the Trade Marks Act or it is under the Designs Act, prima facie establishes infringement of the mark, the injunction would follow.
37. A useful reference can be made to the judgment of Hon'ble Apex Court reported in AIR 1965 SC 980 in the case of Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories regarding the provisions of the Trade Marks Act. Though it is with reference to the Trade Marks Act, on analogy, the same principle would apply when the infringement of the mark under the Designs Act is also complained of.
In the matter of Paresh D. Patel and Anr. v Smit N Parmar (High Court of Gujarat at Ahmedabad), Civil Suit no. 4 of 2012, it has been held as under :-
(Downloaded on 04/12/2022 at 12:09:30 AM)[OOS-1/2021] (19 of 48)
65. It is pertinent to note that the defendant has not filed any application for cancellation of the registered design of the plaintiffs before the Controller. It is the say of the plaintiffs that they became aware of the imitation of their design by the defendant on 6th, 7th and 8th January, 2012, that is, after filing the application for registration of the design on 29.07.2010, and grant of the Certificate of Registration on 19.01.2011. Considering the rival submissions, statutory provisions and judicial pronouncements cited by the respective parties and as there is an obvious and striking similarity in the design of the plaintiffs and that used by the defendant, and as there does not appear to be cogent material on record to indicate that the defendant has been using the same design prior to the date of application by the plaintiffs, and for the reasons stated hereinabove, this Court is of the considered view that the plaintiffs have made out a prima- facie case for grant of temporary injunction.
66. The balance of convenience is also found in favour of the plaintiffs, who would suffer irreparable loss to their business and goodwill in the market if their design is not protected. Moreover, no prejudice to the business of the defendant would be caused if an injunction is granted, as the defendant is free to use any other design than the registered design of the plaintiffs.
In the matter of Symphony Ltd. v. Wim Plast Ltd and Ors. (High Court of Gujarat at Ahmedabad), Civil Suits No. 2 of 2015 it has been held as under :-
13. The Court, therefore, proposes to advert the definition of design itself as it is mentioned in the Designs Act.
Section-2(d) of the Designs Act reads as under:-
"2(d) "design" means only the features of shape, configuration, pattern, ornament or composition of lines or 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 (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (20 of 48) 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 of section 2 of the Copyright Act, 1957 (14 of 1957);"
14. The plain and simple reading of the definition of design would include the following:-(1) the features of shape; (2) configuration that means arrangement, fixations or broadly giving its shape; (3) pattern; (4) ornament and/or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms. The process is prescribed to be an industrial process or means whether manual, mechanical or chemical, separate or combined, which in furnished article will have appeal to the eye, meaning thereby the aforesaid features of shape, configuration, pattern, ornament or composition of lines or application of colours by way of process being manufacture or otherwise so as to make article appealable to the eye, is the process of design article. The second part of the definition provides exclusion which would obviously include any mode and principle of construction or anything which is in substance 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 or property mark as defined in Section 479 of the Code or any artistic work as defined in clause (c) of section-2 of the Copyright Act. Meaning thereby the piece of article for shape of article, created would surely not be following as per specification. The test therefore is to be canvassed to the design which is not interpreted with the aspects of the trade-mark or copyright article, is covered by these Acts. In other-words to make it from simple answering of the article looks or article appeal to the consumer and/or user without being it in any manner part of the process of functionality or answering the functionality, otherwise, required to be essential would be protected under the Designs Act. In other-words, it can well be said that providing a water mark in a water cooler is a functional requirement prescribed by BIS standard. Therefore, water mark or window to get the water level is a functional requirement which is bound to be there in water cooler. The averments thereof on a body of water cooler, other location would fall under the design. The specification thereof with colour, (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (21 of 48) style and shape would fall under the design part which can be protected. Therefore, bearing this definition of design in mind now let me think the decisions relied upon by the learned counsel for both the sides in support of their rival contentions.
19. The close perusal of these decisions cited herein above persuade this Court to say that what is important is the design appealed to the consumers' eye. The Court is unable to accept the submission made on behalf of the defendants that 'trained eye' or 'deserving eye' is required to be applied for examining the design. As those judgment cited on their behalf, if perused closely, would show that there was a stage when the Court was called upon to examine the design in comparison with the earlier designs. In the instant case, unfortunately for the defendants, they have not produced any materials to indicate that there exists design prior to the design registered by the present plaintiff. Therefore, in absence of any such materials, the Court would not be in a position to accept the plea of 'deserving eye' or 'trained eye', as sought to be made out by the counsel for the defendants to adjudge the claim of originality or duplication or replication. If one looks at two sets of designs applied by the plaintiff on their articles and on the defendants of their products then, the Court has to accept the submission of learned counsel for the plaintiff that two consumers eye difference is absolutely not desirable and therefore, at this stage, prima-facie to accept there is a substance and what has been contended on behalf of the plaintiff's article, is 'obvious imitation' of the design, which has been registered long back by the plaintiff. This observation of the Court is prima-facie and shall have no bearing of the examination of the issue at large when the evidences are adduced in its totality at the hearing of the suit stage. But suffice to it say that so far as the documents produced viz. brochures of the other products then, the perusal of the brochures would also leave no room of doubt in saying that there is marked similarity between the design of the plaintiff and those of the defendants, which has been assailed to be imitation by the plaintiff. The Court is also not impressed by the findings and point of difference pointed out on behalf of the defendants to suggest their existence difference in continuing small detailing as the court is of the considered view that what is to be borne in mind is the word "obvious imitation". The "obvious imitation" attempted to be a vital on account of small meaning and answer features of (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (22 of 48) distinctive. But, those features of distinctive, if are not capable to readily notice to the consumers, then the same will have to be treated as merely imitation and those fine difference will have to be treated as incorporated merely to avoid the charge of imitation. Therefore, prima-facie, this court has to record that the designs of the defendant in respect of four articles appear to be "obvious imitation"
than the design registered by the plaintiff. Having come to the prima-facie conclusion based upon the examination aspects and hearing of the counsel, this Court will have to consider the other contention raised on behalf of the defendants for registering the suit, as per prayer made in the suit. This will have to be considered on the maintainability aspect of the preliminary issue raised by the defendants that continuation suit on passing off design, is not maintainable and it was contended that both the action i.e. infringement and passing off would not be available and therefore, the reliance is placed upon the decision of the Supreme Court in case of 'Dhodha House Vs. S.K. Maingi' reported in 2006 (9) SCC 41. This judgment is based upon the aspect of non-availability of peculiar clause which canvassed the right upon the plaintiff to bring at the place of ordinarily business.
The decision cited at bar in the case of 'Paragon Rubber Industries (Supra)' would clearly indicate the jurisdictional power of court. This plea is considered as to whether the defendants' counsel is justified in submitting that there exists no cause of action for bringing in action or filing of the suit in Ahmedabad as it was merely on apprehension. But the Court is persuaded to hold that the counsel for the plaintiff is justified in submitting the action, which is based upon qua-timet action. In absence of specific plea which obviously could not have been opened the product intended to sell in Ahmedabad. The link established from the website of the 'cellocooler.com' would indicate that such intention was obvious and therefore, the said pleadings when has not been controverted, the same cannot be brushed aside merely holding to its perception based upon the threat.
The decision of Delhi High Court in the case of 'Pfizer Products Inc Vs. Rajesh Chopra & Ors.' reported in 2006 (32) PTC 301. The said decision would support the aforesaid proposition. Therefore, the action cannot be said to be wholly based upon the apprehension or like any base. On the contrary, the chain of functioning leading to (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (23 of 48) filing of the suit and the documentary evidence produced on record, indicate that their existence based for genuine apprehension qua the infringement and passing off in Ahmedabad. Therefore, the Court is unable to accept the submission canvassed on behalf of the defendants in this behalf. This brings the Court to consider the second submission in respect of the action being not available for piracy, infringement or registered designs against the holder of registered design. The counsel for the defendants submitted that the majority view of 'Micolube India Limited Vs. Rakesh Kumar Trading & Ors.' coupled with the Calcutta High Court Judgment be treated as guiding the principle. This Court is unable to accept this submission as the peculiar provision of this Act would indicate that the action is permitted the registered design owner on the ground mentioned thereunder and one of the ground is ground on which it can be argued that the design originally could not have been registered on account of difference being not original or new."
20. In the instant case also, it is undisputed that the designs in question are registered prior in point of time and so far as the defendants' design is concerned, they have registered on 17.10.2014 and thereto in respect of only three products. The Court is therefore of the considered prima-facie view that there exists substance in the challenge to the action brought of infringement and passing off action against the defendants and the plaintiff cannot be won on this ground alone.
In the matter of Laxmikant V. Patel vs. Chetanbhai Shah and Anr., 2002(3) SCC 65, it has been held as under :-
14. In the present case the plaintiff claims to have been running his business in the name and style of Muktajivan Colour Lab and Studio since 1982. He has produced material enabling a finding being arrived at in that regard.
However, the trial court has found him using Muktajivan as part of his business name at least since 1995. The plaintiff is expanding his business and exploiting the reputation and goodwill associated with Muktajivan in the business of Colour Lab and Photo by expanding the business through his wife and brother-in-law. On or about the date of the institution of the suit the defendant was about to (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (24 of 48) commence or had just commenced an identical business by adopting word Muktajivan as a part of his business name although till then his business was being run in the name and style of Gokul Studio. The intention of the defendant to make use of business name of the plaintiff so as to divert his business or customers to himself is apparent. It is not the case of the defendant that he was not aware of the word Muktajivan being the property of the plaintiff or the plaintiff running his business in that name though such a plea could only have indicated the innocence of the defendant and yet no difference would have resulted in the matter of grant of relief to the plaintiff because the likelihood of injury to the plaintiff was writ large. It is difficult to subscribe to the logic adopted by the Trial Court, as also the High Court, behind reasoning that the defendants' business was situated at a instance of 4 or 5 kms. from the plaintiff's business and therefore the plaintiff could not have sought for an injunction. In a city a difference of 4 or 5 kms. does not matter much. In the event of the plaintiff having acquired a goodwill as to the quality of services being rendered by him a resident of Ahmedabad city would not mind travelling a distance of a few kilometers for the purpose of availing a better quality of services. Once a case of passing off is made out the practice is generally to grant a prompt ex-parte injunction followed by appointment of local Commissioner, if necessary. In our opinion the trial Court was fully justified in granting the ex-parte injunction to the plaintiff based on the material made available by him to the court. The Trial Court fell in error in vacating the injunction and similar errors has crept in the order of the High Court. The reasons assigned by the Trial Court as also by the High Court for refusing the relief of injunction to the plaintiff are wholly unsustainable.
In the matter of Ramdev Food Products (P) Ltd. v.
Arvindbhai Rambhai Patel, (2006) 8 SCC 726, it has been held as under :-
122. Thus, when a prima facie case is made out and balance of convenience is in favour of the appellant, it may not be necessary to show more than loss of goodwill and reputation to fulfil the condition of irreparable injury. In fact, if the first two pre-requisites are fulfilled, in trade (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (25 of 48) mark actions irreparable loss can be presumed to have taken place.
In the matter of Midas Hygiene Industries (P) Ltd. And Anr. v. Sudhir Bhatia and Ors., (2004) 3 SCC 90, it has been held as under:-
5.The law on the subject is well settled. In cases of infringement either of trade mark or of copyright, normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases.
The grant of injunction also becomes necessary if it prima facie appears that the adoption of the mark was itself dishonest.
In the matter of M/S Hindustan Pencils Private Limited v. M/S India Stationary Products Co., AIR 1990 Del 19, it has been held as under :-
27. It appears difficult for me to comprehend the distinction which the courts have sought to make between the grant of interim injunction and permanent injunction. If on the facts which are clearly discernible from the record it appears that after trial a permanent injunction is likely to be granted, notwithstanding the delay on the part of the plaintiff in approaching the Court, there appears to be no reason as to why temporary injunction should be refused.
28. It is no doubt true that trade mark, copyright or a patent belongs to a registered owner and, in that sense, is his monopoly because he has the exclusive right to use the same. Nevertheless, specially as far as trade mark are concerned, the said mark is also meant to distinguish the goods of the owner of the mark from that of the other manufacturers. This distinguishing mark is primarily, probably solely, for the benefit of the consumer. A trade mark is a representation by the owner to the consumer informing him that the goods in question bearing a particular trade mark have been manufactured or marketed by the owner of the mark. With the passage of time, if the goods are of good quality and become popular, (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (26 of 48) the trade mark becomes well-known. People buy the goods after seeing the trade mark which is applied to them.
Specially in Third World Countries, where level of education is not very high and where the consumer may not be proficient enough to read what is written, possibly in a language which is unknown to the purchaser, the trade mark assumes greater significance. It is the duty of the courts to protect the interest of such unwary customers. It is for the court to see that an unscrupulous infringer does not cheat the general public by selling spurious goods by using trade mark which do not belong to him and which are associated with goods or repute. It is not doubt true that giving protection to the consumer would necessarily amount to giving relief to the plaintiff, even though plaintiff may have slept over his right for a number of years. But when it becomes known that stolen property, and infringement amount to stealing another person's intellectual property, is being sold in the market to unwary customers, it would be in the public interest that protection is granted to the members of the public. It is not unknown, and indeed it is unfortunate though common, that spurious medicines, life saving drugs and other articles of general public use are illegally made or manufactured and sold in the market. The manufacturer of the genuine products may not be adversely affected by such sales and may not choose to approach the Court for a number of years but, as far as the general public is concerned, the sale of spurious goods results in the public spending good money for bad things. It is the general public which is being cheated.
31. It would appear to me that there is an honest concurrent user by the defendant then inordinate delay or laches may defeat the claim of damages or rendition of accounts but the relief of injunction should not be refused. This is so because it is the interest of the general public, which is the third party in such cases, which has to be kept in mind. In the case of inordinate delay or laches, as distinguished from the case of an acquiescence, the main prejudice which may be caused to the defendant is that by reason of the plaintiff not acting at an earlier point of time the defendant has been able to establish his business by using the infringing mark. Inordinate delay or laches may be there because the plaintiff may not be aware of the infringement by the defendant of the plaintiff may consider such infringement by the defendant as not being serious enough to hurt the plaintiff's business. Nevertheless, if the (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (27 of 48) Court comes to the general public who may be misled into buying the goods manufactured by the defendant thinking them to be the goods of the plaintiff then an injunction must be issued. The Court may, in appropriate cases, allow some time to the defendant to sell off their existing stock but an injunction should not be denied.
In the matter of Videocon Industries Limited v.
Whirpool of India, 2012 SCC OnLine Bom 1171, it has been held as under :-
35. We do not find any merit in the contention that the learned trial Judge ought not to have granted the relief of injunction at the ad-interim stage and ought to have deferred the decision regarding it till the conclusion of the trial. Once it is clear that the registered design has been infringed and the goods are being passed off, then, in view of the object for which the Act is enacted, it is necessary to restrain the infringer forthwith unless exceptional grounds are made out for refusal. After coming to a prima-facie conclusion that there is infringement of registered design, the injunction cannot ordinarily be deferred till the conclusion of the trial. To do so, will make the protection granted under the Act, illusionary. Once a prima-facie case was made out in this case that the registered design of Whirlpool was infringed, then the balance of convenience was in restraining the Videocon from benefiting from the infringement. Thus, the learned trial Judge was right in injuncting the Videocon from manufacturing and marketing the impugned product at the ad-interim stage. Even otherwise, the Videocon had full opportunity of presenting its case before the order and had in fact filed a detailed affidavit in reply.
In the matter of Mohan Lal Proprietor of Mourya Industries v. Sona Paint and Hardwares , 2013 SCC OnLine Del 1980, it has been held as under :-
34(i). A plaintiff could institute a suit for infringement of a design against a defendant, who was also a holder of a registered design. The expression "any person" found in Section 22 of the Designs Act would not exclude a (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (28 of 48) subsequent registrant as, according to us, no such words of limitation are found in said Section.
In the matter of Balraj Taneja and Anr. v. Sunil Madan and Anr., (1999) 8 SCC 396, it has been held as under :-
11. Sub-rule (2) provides that if the defendant has not filed his written statement, it would be lawful for the court to pronounce judgment on the basis of the facts contained in the plaint. The rule further proceeds to say that notwithstanding that the facts stated in the plaint are treated as admitted, the court, though it can lawfully pass the judgment, may before passing the judgment require such fact to be proved. The rule is thus in consonance with the proviso which also requires the fact, even though treated as admitted, to be proved. Thus, the proviso and sub-rule (2) read together indicate that where:
(i) an allegation of fact made in the plaint is not denied specifically, or
(ii) by necessary implication, or
(iii) stated to be "not admitted" in the pleading of the defendant, or
(iv) the defendant has not filed the written statement, such allegations of facts shall be treated as admitted. The court in this situation can either proceed to pronounce judgment on such admitted facts or may require the plaintiff, in spite of such admission, to prove such facts.
In the matter of Jaspal Kaur Cheema and Anr. v.
Industrial Trade Links and Ors., (2017) 8 SCC 592, it has been held as under :-
6. It is not in dispute that the respondents were put in possession of the premises by the appellants under the lease deed at Annexure P-1 dated 16-5-2006. The appellants in Para (1) of the evictionpetition averred that they are the owners and landlords of the premises and that the premises was let out to the respondents through a lease deed dated 16-5-2006. In their written statement, (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (29 of 48) the respondents have not raised a specific plea denying or disputing the ownership of the appellants. However, there is a general denial of the averments made in Para (1) of the eviction petition.
7. In terms of Order 8 Rule 3 of the Code of Civil Procedure, 1908 (for short "the Code"), a defendant is required to deny or dispute the statements made in the plaint categorically, as evasive denial would amount to an admission of the allegation made in the plaint in terms of Order 8 Rule 5 of the Code. In other words, the written statement must specifically deal with each of the allegations of fact made in the plaint. The failure to make specific denial amounts to an admission. This position is clear from the decisions of this Court in Badat and Co. v.
East India Trading Co, Sushil Kumar v. Rakesh Kumar and M. Venkataramana Hebbar v. M. Rajagopal Hebbar.
In the matter of Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd., (2008) 10 SCC 657 it has been held as under :-
26. In fact, the sole purpose of this Act is protection of the intellectual property right of the original design for a period of ten years or whatever further period extendable.
The object behind this enactment is to benefit the person for his research and labour put in by him to evolve the new and original design. This is the sole aim of enacting this Act. It has also laid down that if a design is not new or original or published previously then such design should not be registered. It further lays down that if it has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration then such design will not be registered or if it is found that it is not significantly distinguishable from known designs or combination of known designs, then such designs shall not be registered. It also provides that registration can be cancelled under Section 19 of the Act if proper application is filed before the competent authority i.e. the Controller that the design has been previously registered in India or published in India or in any other country prior to the date of registration, or that the design (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (30 of 48) is not a new or original design or that the design is not registerable under this Act or that it is not a design as defined in clause (d) of Section 2. The Controller after hearing both the parties if satisfied that the design is not new or original or that it has already been registered or if it is not registerable, cancel such registration and aggrieved against that order, appeal shall lie to the High Court. These prohibitions have been engrafted so as to protect the original person who has designed a new one by virtue of his own efforts by researching for a long time. The new and original design when registered is for a period of ten years. Such original design which is new and which has not been available in the country or has not been previously registered or has not been published in India or in any other country prior to the date of registration shall be protected for a period of ten years. Therefore, it is in the nature of protection of the intellectual property right. This was the purpose as is evident from the Statement of Objects and Reasons and from various provisions of the Act. In this background, we have to examine whether the design which was registered on the application filed by the respondent herein can be cancelled or not on the basis of the application filed by the appellant. In this connection, Law of Copyright and Industrial Designs by P. Narayanan (4th Edn.), Para 27.01 needs to be quoted.
"27.01. Object of registration of designs.--The protection given by the law relating to designs to those who produce new and original designs, is primarily to advance industries, and keep them at a high level of competitive progress.
'Those who wish to purchase an article for use are often influenced in their choice not only by practical efficiency but the appearance. Common experience shows that not all are influenced in the same way. Some look for artistic merit. Some are attracted by a design which is a stranger or bizarre. Many simply choose the article which catches their eye. Whatever the reason may be one article with a particular design may sell better than one without it : then it is profitable to use the design. And much thought, time and expense may have been incurred in finding a design which will increase sales.' The object of design registration is to see that the originator of a profitable design is not deprived of his reward by others applying it to their goods.(Downloaded on 04/12/2022 at 12:09:30 AM)
[OOS-1/2021] (31 of 48) 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 profitable (sic protectable) at all, ought to be made the subject-matter of a patent. Nor is it to 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 is upon the visual image conveyed by the manufactured article."
In the matter of Gopal Glass Works Ltd. v. Assistant Controller of Patents & Designs and Others, 2005 SCC OnLine Cal 430 it has been held as under :-
30. Under the law presently in force in India, specifications, drawings and/or demonstrations in connection with registration of a design do not per se constitute publications which prohibit future registration of that design. Had publication of design specifications by a registering authority, particularly a registering authority in a foreign country, in connection with registration of a design, in itself, amounted to prior publication, that would hit all future applications in India for registration of designs, prior registration in India would not separately have been made a ground for cancellation of a registered design. Moreover, it is significant that Parliament consciously, made publication in a country other than India a ground of cancellation, in addition to publication in India, but expressly restricted the embargo of prior registration to registration in India. Registration in a (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (32 of 48) country other than India has not been made a ground for the cancellation of a registered design.
42. When the novelty of an article is tested against a prior published document, the main factor required to be adjudged is the visual effect and the appeal of the picture illustration.
43. If the visual effect of the pattern, the shape or the combination of the pattern, shape, dimension, colour scheme, if any, are not clear from the picture illustrations, the novelty cannot be said to have been destroyed by prior publication, unless there are clear and unmistakable directions to make an article which is the same or similar enough to the impugned design.
44. In the case of Rosedale Associated Manufacturers Ltd.
v. Airfix Ltd., reported in 1957 RPC 239, Lord Evershed M.R. held as follows: "In this respect the test of prior publication of an alleged invention, should, in my judgment, be no less applicable in the case of a registered design, and as regards the former, I venture to cite once more the oft-quoted language of Lord Westbury in Hills v. Evans: 'The antecedent statement must, in order to invalidate the subsequent patent, be such that a person of ordinary knowledge of the subject would at once perceive and understand and be able practically to apply the discovery without the necessity of making further experiments.' By a like reasoning, to my mind, if a document is to constitute prior publication, then a reader of it, possessed ordinary knowledge of the subject, must from his reading of the document be able, at least, to see the design in his mind's eye and should not have to depend on his own originality to construct the design from the ideas which the document may put into his head."
In the matter of M/s. Bhatia Enterprises v. Sh. Subhash Arora 2016 SCC OnLine Del 363 it has been held as under :-
8. A reading of the aforesaid relevant portion of the Order of the Assistant Controller of Patents and Designs dated 19.5.2014 shows that contention of the defendant herein (petitioner in the petition) seeking cancellation of the registration on the ground of prior publication of the design was rejected by observing that merely because the plaintiff had sold the same jugs earlier and had filed invoices will not mean that there is a prior publication (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (33 of 48) inasmuch as there is no depiction of the design in the invoices of the present plaintiff prior to the date of registration of the design on 7.3.2011. Also, no other evidence could be filed and defendant herein could not substantiate that the design of the plaintiff which has been depicted above was published prior to 7.3.2011 viz the date of the registration.
5. Learned counsel appearing on behalf of the defendants opposed the application filed by the plaintiffs under Order 39 Rule 1 & 2 CPC read with Section 151 CPC and submitted that the design of the plaintiffs deserves to be cancelled as the plaintiffs themselves have copied their design from a Chinese cooler design which was already in the market. Learned counsel further submits that the balance of convenience lies in favour of the defendants.
Learned counsel further submits that the defendants' design is also registered by the Controller in the year 2018-2019. Learned counsel further submitted that the defendants have also filed an application for cancelling the plaintiffs' design before the Controller which is still pending adjudication. Learned counsel further submits that the defendants have not copied the design of the plaintiffs as the design which the plaintiffs are using was and is already existing. Learned counsel further submits that prior to registration of their design by the plaintiffs the Chinese company has also filed an application for cancellation of the registered design of the plaintiffs before the Controller. Learned Counsel further submits that the coolers of both the plaintiffs and defendants are not the same. Learned counsel further submits that the defendants have also filed an application before the Calcutta High Court bearing no.C.O.3033 of 2022 wherein the (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (34 of 48) Calcutta High Court asked the Controller for expeditious disposal of the application for cancellation submitted on behalf of the defendants. In support of the contentions, learned counsel relied upon the following judgments :-
In the matter of Crocs Inc. v. Bata India Ltd. and Others, 2019 SCC OnLine Del 6808, it has been held as under :-
31. It is therefore, evident that prior publication was a controversy that the court had to prima facie decide, having regard to the materials on the record. The defendants relied on two pieces of evidence : first web-
shots from the "Wayback machine", containing internet archive of web pages. The defendants alleged that the plaintiff's designs were available in the public domain, from late 2002 to 2003 and consequently, it cannot claim priority of publication. It was also contended that the Holey Soles' claims against Crocs and cancellation of its EU registration, by the first instance chamber, clearly revealed that the design was available to the knowing public.
32. The plaintiffs had urged that the learned single judge erred in relying on the screen-shots of the website in question; however, the court notices that the screenshots were duly affirmed to be correct, by an affidavit stipulated under Section 65B of the Evidence Act, 1872. The plaintiff's argument was that though the Wayback machine archived web pages, there was no guarantee to the correctness of its contents. At the stage of considering the prima facie merits of any given case, the court cannot carry out a mini-trial; it has to consider the broad probabilities of the rival claims, having regard to the available pleadings and the documents. Whether the plaintiff's argument that the Wayback machine or search engine (or web archive) might be correct so far as web sites or web pages are concerned, but not true and therefore, unreliable because of the reasons mentioned by it, are to be considered during the trial.
(Downloaded on 04/12/2022 at 12:09:30 AM)[OOS-1/2021] (35 of 48) In the matter of Gramophone Company Ld. v.
Magazine Holder Company, (In the House of Lords) (1911) 28 R.P.C. 221 it has been held as under :-
" I also find, judging by the eye, that the Defendants' Design is not an imitation of the Plaintiffs'. It is a different combination of familiar contrivances. Upon this part of the case I agree with Mr. Justice Warrington and Lord Justice Buckley. If the suggested novelty lies in the detailed arrangements of the parts, quite a small change in the arrangements make a real difference."
In the matter of Repetition Woodwork Co. Ld. And Thomas Hilton v. Briggs, 41 R.P.C. 449 it has been held as under :-
The contention of the Plaintiffs, therefore, is that, by means of the registration of their Design, they have obtained a monopoly in affixing a common type of tie press to a common type of box by means of hinges so that the former acts as a lid to the latter. In my judgment the remarks made by Lord Loreburn in the course of his address to the House in the Gramophone Co. Ld. v. Magazine Holder Co., reported in 28 Reports of Patent Cases at page 221, exactly fit this case. In the words of Lord Loreburn on page 225 the novelty and originality of the Plaintiffs Design consists of a description of the article itself as a particular arrangement of old and well-known things. No suggestion has been or can be made that any one of the features described was in the least degree new.
If, however, the Court is constrained to hold that the Plaintiffs' Design comes within the definition of a design contained in Section 19 of the Act of 1919 and is novel or original merely because it has not been shown that anybody has sold a box containing as its lid a tie press, then I think that the reasoning of Lord Halsbury in the Gramophone case applies to this case, and the Plaintiffs must show that the Defendant's box is an exact reproduction of heir registered Design and any difference, however trivial or unsubstantial, will protect it from being an infringement.(Downloaded on 04/12/2022 at 12:09:30 AM)
[OOS-1/2021] (36 of 48) In the matter of Phillips v Harbro Rubber Company, 37 R.P.C. 233, it has been held as under :-
The introduction of ordinary trade variants into an old design cannot make it new or original. For example, if it is common practice to have, or not to have, spikes in the soles of running shoes, a man does not make a new and original design out of an old type of running shoes by putting spikes into the soles. The working world, as well as the trade world, is entitled at its will to take, in all cases, its choice of ordinary trade variants for use in any particular instance, and no patent and no registration of a design can prevent an ordinary workman from using or not using trade knowledge of this kind. The importance of insisting upon this principle is emphasized by the fact that under our legislation registered designs are kept secret. No member of the public has the right to inspect a registered design during the existence of the copyright. It is not my intention to dwell on the extraordinary character of this legislation, which was apparently inspired by the desire to prevent rivals learning of patterns of lace or textile articles which were intended to be brought into the market in the immediate future. But if an ordinary workman is thus to be kept in ignorance of what he may or may not do without infringing the unknown rights of registered proprietors of designs, it is obviously the duty of the Court to take special care that no design is to be counted a "new or original design," unless it is distinguished from what previously existed by something essentially new or original which is different fron ordinary trade variants which have long been common matters of taste or choice in the trade. It would be intolerable if a workman who made a coat (of ordinary cut) for a customer should be left in terror whether putting braid on the edges of the coat in the ordinary way so common a few years ago, or increasing the number of buttons or the like, would expose him for the next six years to an action for having infringed a registered design the nature of which the Legislature has purposely concealed from him. I am satisfied that the use of the words "new or original" in the Statute is intended to prevent this, and that the introduction or substitution of ordinary trade variants in a design is not only insufficient to make that design new or original, but that it does not even contribute to give it a new or original character. If it is not new or original without them, the presence of them cannot render it so.
In the matter of Negretti and Zambra v. W.F. Stanley and Co. Ld. (the High Court of Justice- Chancery Division) Before Mr. Justice Astbury June 9th, 1925, it has been held as under:-(Downloaded on 04/12/2022 at 12:09:30 AM)
[OOS-1/2021] (37 of 48) For these reasons I am of opinion that the Plaintiffs' Design is not a new and original Design, within the meaning of the statute.
The second matter which has been discussed is the question of infringement. If I am wrong as to the validity of this Design, and as to its novelty and originality, then the question arises as to whether the Defendants' article is an infringement of the Plaintiffs' Design. In a Design of this very humble character, where the Design itself is very close to Designs which have gone before, as Lord Halsbury said in the Gramophone Case, the Plaintiffs, in order to succeed in infringement, must show that the article complained of is an exact reproduction of the Plaintiffs' Design, and that any difference, however trifling or unsubstantial, will or may protect it from infringement. In the present case there is a distinct difference between the Plaintiffs' article as manufactured and as shown in the Design and the article complained of as an infringement. The novelty claimed in the Certificate of Registration being the shape or configuration of the thermometer having the scale face projecting and being inclined as shown in the picture is a novelty which is not exactly or in fact reproduced in the Defendants' instrument. The Defendants have a perfectly common V-shaped face to their scale plate, and that, having regard to the extreme slightness of the difference between this Design and the thermometers which have preceded it, if the Design be valid, is sufficient, in my judgment, to prevent the Defendants' being an infringement; so that, if it were necessary to decide the question of infringement, on the assumption that the Design is valid, I think the Defendants are, again, entitled to succeed; but, in my view, the real question here is validity, and, in my judgment, the Plaintiffs have not answered the tests required of them for the purpose of sustaining this Design, and the action must, in consequence, be dismissed with costs.
In the matter of Sommer Allibert (U.K) Limited and Anr. v Flair Plastics Ltd., (1987) R.P.C. 599, it has been held as under :-
On the other hand, a factor which we have to take into account in assessing the scope of the plaintiff's registered design is the background of the relevant prior art in existence at its priority date. The test for "substantial difference" in cases of alleged infringement is in many respects similar to what would be the test for "substantial (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (38 of 48) novelty" of the alleged infringement compared with the registered design.
In the matter of National Trading Co. v. Smt. Monica Chawla, 1994 SCC OnLine Del 348, it has been held as under :-
6. The only question before this Court in the facts of the present case is as to whether the impugned design had been published in India prior to the date of its registration. In para 3 of the reply on merits of the respondent it is clearly brought out that "respondent during the course of her business activities propounded the said new and original design of "BABY BOUNCERS" in the year 1987 and has since then been continuously using/selling the same. This admission on the part of the respondent clearly brings the case within the mischief of Section 51-A(1)(a)(2) that the design has been published in India prior to the date of registration. I am supported in this by the reported rulings in the cases of Domestic Appliances and others v. Globe Super Parts reported as 1981 PTC 239 and Radha Engineers v. Young Electricals reported as 1982 PTC 313.
In the matter of Reckitt Benckiser (India) Ltd. v.
Wyeth Limited 2010 SCC OnLine Del 3582, it has been held as under :-
12. Thus an original registered design once the same has brought into the public domain, without any breach of faith i.e. it is intended that the registered design is brought into public domain, then, the said design no longer remains new. It is only new for the person who created the design, and thereafter gets its registration for its protection, and who is entitled to the benefit of it as an intellectual property right. A person who creates a design but releases it in public domain without seeking its registration under the Act, will not be able to seek protection against infringement of the design. A reading of the various Sub-sections of Section 4, Section 19 along with Sections 5(1), 16 and 17 makes it thus more than abundantly clear that the most important ingredient and the heart of these provisions pertain to newness of the designs and that it is only a new design which is capable of protection. Prior publication or existence of a registered design in public domain is therefore very much an (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (39 of 48) ingredient included within the manner of expression "new"
designs itself and the aspect of public domain strictly need not have been separately provided for either under Section 4 or under Section 5(1) or under Section 19. However, these Sections thus only clarify what is obvious that once a design is available in the public domain i.e. to the public at large it is not something "new" which can be registered as a new design under the said Act. If one has to be put it in a consolidated form, the fulcrum of all the Sections is that what is new is something which does not exist in public domain and what exists in public domain is not something which is new.
In the matter of Pravinbhai Jagjivandas Mehta vs. Officine Lovato S.P.A. (High Court of Gujarat at Ahmedabad), 2002(25) PTC 398 (Guj.), it has been held as under :-
9.3. Under Section 19 of the said Act, any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller, inter alia, on the ground that the design has been published in India or in any other country prior to the date of registration or that the design is not a new or original design. The grounds available for getting the registration of design cancelled under Section 19 are also available under Section 22(3) as a ground of defence in a suit filed under Section 22(2) of the Act. The appellant had prayed for an order restraining the respondents from using the registered designs or registered drawings of the appellant on the ground that the products which were being sold by the Respondent No. 1 through the Respondent No. 2 were imitation of the registered design and the registered copyright of the appellant. On the other hand, the Respondent No. 1 took up the defence that the registered drawings of the appellant were total copy of the earlier designs and drawings of the Respondent No. 1 which were earlier officially approved in Italy way back in 1997.
Therefore, when both the sides alleged that their respective designs and drawings were identical or deceptively similar to each other, the question of formal comparison was not the real issue before the learned Single Judge. The real question, as His Lordship rightly perceived, was whether there was controversy between the parties as to the originality of the designs and the drawings which were said to be imitated, and that (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (40 of 48) question was pending for consideration by the competent authority in the application for cancellation of the registration of the designs of the appellant. The learned Single Judge rightly observed that in view of the pendency of the dispute before the Competent Authority about cancellation of the appellant's designs, it was not appropriate to embark upon the process of comparison of the designs to find out whether they were original when got registered by the appellant or were already in vogue much prior to that, as claimed by the Respondent No. 1. It can never be said that mere factum of the registration of the appellant's designs, in view of the serious nature of the controversy raised by the Respondent No. 1 in the cancellation petitions, was sufficient to grant interim injunction restraining the Respondent No. 1 to stop its well established business of manufacturing its products. The allegation of the Respondents that, the suit has been filed in conclusion with the Respondent No. 2 whose agency was terminated by the Respondent No. 1 on 13.11.2001, cannot be lightly brushed aside at this stage. The Respondent No. 2 had an access to the products of the Respondent No. 1 and similar products, designs and drawings have been got registered by the appellant, who apparently did not have any specialized knowledge that goes behind the innovation of such designs and drawings, nor did he have any business of his own. The learned Single Judge has, in this context, on the basis of the material on record, rightly observed in para 21 of the order that the appellant had not been able to show any wherewithal to pay and compensation that may be suffered ultimately by the Respondent No. 1 and that the appellant did not have any business of his own whatsoever. If the appellant had any such background, it would have been very easy for the appellant to demonstrate it before the learned Single Judge.
In the matter of Dart Industries Inc. and Anr. v. Techno Plast and Ors., 2007 SCC OnLine Del 892, it has been held as under :-
20. The plaintiffs, on the other hand, have disputed this claim of the publication as set up by the defendants either by prior use or sale or display or publication in any other form. The plaintiffs also submitted that defendants' allegation that some of the registered designs are common to trade has not been proved on record and are mere bald allegations. They have also disputed the plea of the defendants regarding pre-publication in the Tupperware catalogues on the ground that photographs shown in the catalogues do not show designs as a whole.
In other words, there is a lack of depiction of the registered design shape, features, pattern configuration, etc. The visual effect of the picture illustration in the said (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (41 of 48) catalogues does not give the explicit picture and clear depiction of the application of the registered design of plaintiff No. 1 on the article as a whole with the same visual effect as the sample of the product. Furthermore, the reliance on the publication in the price lists produced by the defendants on the record of the present case is misplaced and misconceived as the price lists do not relate to the product but only to a part of the product. For instance, in the case of the registered design of 'container crystal wave divided bowl', the price list referred has mentioned of the lid/the seal or a completely different product i.e. 'crystal wave medium', which is a different product altogether. Similar is the case for the price list references given to show pre-publication for the registered design of 'container-modular made round'. In some cases, the price list referred by the defendants does not relate to the product to which the registered design has been applied but to a completely different product. For instance, the price list to show pre-publication of design of 'classic slim lunch' relates only to 'slim lunch' and cannot be relied upon. Even in the case of 'executive lunch bag' and 'lunch box with bag', there is no reference in the price list, contrary to the allegation of the defendants. Without prejudice, it is submitted that the price lists cannot be relied upon as they are neither original documents nor have been proved otherwise. Hence the said price lists also cannot be relied upon to prove prior publication and disclosure of the registered designs of the plaintiff.
23. In Gopal Glass Works Limited v. Assistant Controller of Patents and Designs, 2006 (33) PTC 434, Calcutta High Court opined that in order to destroy the novelty of a design registration, prior disclosure whether by publication or use or any other way, must be of the pattern, shape and/or configuration applied to the same article. By this definition, the test which is to be applied is that the prior publication of the design disclosed is of the same pattern, shape and/or configuration. About publication, the Court made following pertinent observations:
"It is true that publication has not been defined in the 2000 Act. Yet, for reasons discussed above, mere publication of design specifications, drawings and/or demonstrations by the Patent Office of the United Kingdom, or for that matter, any other foreign country, in connection with an application for registration, would not, in itself, amount to publication that would render a design registered in India liable to cancellation.(Downloaded on 04/12/2022 at 12:09:30 AM)
[OOS-1/2021] (42 of 48) To constitute prior disclosure by publication to destroy the novelty of a registered design, the publication would have to be, in tangible form, of the design applied to the same article. Prior publication of a trade catalogue, brochure, book, journal, magazine or newspaper containing photographs or explicit picture illustrations that clearly depict the application of the design on the same article, with the same visual effect would be sufficient. When the novelty of an article is tested against a prior published document, the main factor required to be adjudged is the visual effect and the appeal of the picture illustration.
If the visual effect of the pattern, the shape or the combination of the pattern, shape, dimension, colour scheme, if any, are not clear from the picture illustrations, the novelty cannot be said to have been destroyed by prior publication, unless there are clear and unmistakable directions to make an article which is the same or similar enough to the impugned design."
29. It would be clear from the aforesaid that main reliance of the defendants is on the revised new edition (c) 1989 "Tupperware Cook". Most of the products are published in this book on the basis of which it is contended by the defendants that there is prior publication and as products in question are printed in the said book, no originality can be claimed by the plaintiffs. Since it had already been anticipated and, therefore, it is neither new nor original, though the plaintiffs have tried to contend that illustrations downloaded from the website of US Patent Office cannot be relied upon by the defendants as there are differences in the designs of the plaintiffs' products and the illustration downloaded from the website of US Patent designs, there is hardly any satisfactory explanation given to the publication on these designs in the aforesaid book namely "The Tupperware Book".
53. There would be another interesting question for determination if the design is no more protected under the Designs Act and is now in public domain, whether passing off action would be maintainable. In view of such question and coupled with the fact that there are certain aspects which will have to be settled through evidence, it may not be a case of injunction.
54. It is not only this reason which persuades me to take this view. The defendants are not a fly by night company.
(Downloaded on 04/12/2022 at 12:09:30 AM)[OOS-1/2021] (43 of 48) In the plaint, the plaintiff has itself stated that they are manufacturing the products at large scale and selling the same through various retail outlets in Punjab and Haryana and other parts of the country. The defendant No. 1 has three storeyed factory building measuring approximately 800 sq. yards at Hissar Road, Ambala City, with large number of workers who are working in multiple shifts. Likewise, the defendant No. 6 is also having another factory. It is also stated that the factory of the defendant No. 6 was established in the year 1981. This is not a fit case for grant of ad interim injunction at interlocutory stage. In Niky Tasha India Pvt. Ltd. v.Faridabad Gas Gadgets Pvt. Ltd.(supra), this Court refused the injunction at interlocutory stage while observing as under:
"I take it to be well settled, both in India and England, that an interlocutory injunction will not normally be granted where damages will provide an adequate remedy should the claim succeed. Furthermore, I have always understood the rule to be that the Court will not grant an interlocutory injunction unless satisfied that there is a real probability of the plaintiff succeeding on the trial of the suit; where the design is of a recent date, as in this case, no injunction should be granted. More so, when there is a serious question as to the validity of the design to be tried in the suit and an application for cancellation has been made. Where a person is entered as a proprietor of a registered design, that is under the Act no conclusive proof that the plaintiff is the proprietor of the design, but only a prima facie evidence that he is the proprietor. The plaintiff has this advantage that if no evidence at all is given then the certificate is sufficient evidence that he is the proprietor."
57. I am of the opinion that taking holistic view of the matter it is not a case where interlocutory injunction is the remedy when the case is primarily founded on the basis of rights under the Designs Act and that right, prima facie, is not established. It is a case where damages would be more appropriate remedy if the plaintiffs ultimately succeed. The ex parte injunction order is vacated subject to the following:
(1) The defendants shall file the statement of account of their sales, advertisement expenditure, profits, etc. for the period from 1.5.2005 till 31.3.2007 within a period of six weeks.(Downloaded on 04/12/2022 at 12:09:30 AM)
[OOS-1/2021] (44 of 48) (2) They shall continue to file such statements annually, within two months of the expiry of the each financial year. For the financial year 2007-2008 (i.e.1.4.2007 to 31.3.2008) the statement shall be filed by 31.3.2008 and so on. (3) The defendants shall not dispose of their immovable properties, machinery etc. or create third party rights therein without the prior permission of the Court. Affidavits of the Director (s) and/or responsible person(s) to this effect shall be filed within six weeks.
In the matter of Bansal Plastic Industries v. Neeraj Toys Industries & Anr, 1989 SCC OnLine Del 214 it has been held as under :-
15. The defendant had filed an advertisement showing that the design of the 'Toy Horse' was published prior to the registration in its favour. I have examined the 'Toy Horse' of the plaintiff and 'Toy Horse' of the defendant. Prima facie, there appears to be difference in the shape and configuration of the head of the horse.
16. Keeping in view the facts and circumstances of the case I find no justification for granting a temporary injunction as prayed. It would be sufficient if defendant No. 1 was put on terms and asked to furnish security for a sum of Rs.
50,000/- and to file statement of sales quarterly.
In the matter of Maya appliances Pvt. Ltd., Chennai v.
Preethi Kitchen appliances Pvt. Ltd. and another, 2018 SCC OnLine Mad 13549 it has been held as under :-
79. At the cost of repetition, it is reiterated that both the Plaintiff respondent and the defendant appellant are registered proprietors of their respective designs. The Plaintiff respondent does not claim any propriety on the tripod. If the tripod is ignored, there is no similarity at all.
The shape of the three legs of the tripod is distinctly dissimilar, in that tripod of the defendant appellant is triangular, whereas the tripod of the Plaintiff respondent is six sided. The outer end of the three protrusions at the (Downloaded on 04/12/2022 at 12:09:30 AM) [OOS-1/2021] (45 of 48) base of the Plaintiff respondent's mixer grinder are squarish, whereas those of the defendant appellant are more pointed. The illustrations of the respective designs depicted herein above do not indicate such striking similarities as to fall within the mischief of obvious and fraudulent imitation. There does not also appear to be any real possibility of confusing the base unit of the defendant appellant for that of the Plaintiff respondent.
81. There being no challenge till today to the defendant appellant's registration, we have to proceed on the prima facie basis that the design of the defendant appellant is original, novel and had not been published prior to the date of application for registration. The balance of convenience was also against the interim orders being prayed for in the petition. If the Plaintiff respondent ultimately succeeds in the Suit, it would get necessary injunction orders as also compensation for wrongful use of the registered design in question. The compensation might be computed by taking into account the sales of the defendant appellant. However, if the suit ultimately fails, the harm caused to the defendant appellant would be irreparable as it would be difficult to compute the compensation. The balance of convenience was against the passing of interim orders as prayed for in the petition. For the reasons discussed above, the appeals are allowed and the impugned judgment dated 1.3.2018 is set aside. There shall be no order as to costs. Consequently, connected miscellaneous petitions are closed.
6. In rejoinder, learned Senior Counsel appearing for the plaintiffs further submitted that the argument raised by learned counsel appearing for the defendants that they have copied the registered design of Chinese Company is not acceptable as the said Chinese company had also filed an application before the Controller for cancellation of their design which has been dismissed by the Controller vide order dated 20.09.2019. Learned Senior Counsel further submitted that the plaintiff had filed a Suit being R/Civil Suits Nos.2 and 3 of 2021 (Mita Ashok Kapoor Vs. Raj. Cooling System Private Limited) before the High Court of Gujarat at Ahmedabad and the Court after hearing counsel for the parties and having dealt with the issued involved therein, at (Downloaded on 04/12/2022 at 12:09:31 AM) [OOS-1/2021] (46 of 48) length, granted protection in favour of the plaintiffs till final disposal of the suit, restraining the defendants from using the registered design of the plaintiffs, vide order dated 29.10.2021.
7. Heard counsel for the parties and perused the material on record.
8. Both the sides have placed before this Court the comparative charts highlighting the similarities and dis-similarities of their coolers. The similarity is to be judged through the eye of purchaser. The photographs shown by the defendants of their coolers in the prima facie opinion of this Court are almost total replica of the plaintiffs' design except one or two minor variations.
9. While considering the application for injunction or exercise of discretion has to be regarding balance of convenience. Since the application for cancellation of plaintiffs' design filed by the Chinese Company has already been dismissed by the Controller, in my considered view, balance of convenience lies in favour of the plaintiffs.
10. Considering the rival submissions, statutory provisions, judicial pronouncements cited by both the learned Senior Counsels, in my considered view the temporary injunction application filed on behalf of the plaintiffs under Order 39 Rule 1 & 2 CPC read with Section 151 CPC deserves to be allowed for the reasons; firstly the plaintiffs have clearly made out a prima facie case in their favour by showing the photographs of the coolers manufactured by them as well as photographs of the coolers copied by the defendants; secondly the application for cancellation of the registered design filed on behalf of the Chinese Company (Downloaded on 04/12/2022 at 12:09:31 AM) [OOS-1/2021] (47 of 48) has already been rejected by the Controller and the Controller being the statutory authority and expert body on the subject found that the registered design of the plaintiff is unique and they have not copied the Chinese design; thirdly the Gujarat High Court in the matter of Mita Ashok Kapoor Vs. Raj Cooling System Private Limited (supra) in similar circumstances where the litigation was between the same parties found that the defendants have copied the registered design of grill which is manufactured and used by the plaintiffs on their coolers; fourthly the pleadings made in the temporary injunction application clearly shows that sale of the defendants has increased very high after the years when they started copying the registered design of the plaintiffs; lastly the application filed on behalf of the plaintiffs as well as the defendants for cancellation of the registered design are pending before the Controller and the Controller is the statutory authority and expert body to examine the validity of the registered design and matters are still pending before the Controller, therefore under the facts and circumstances, the plaintiffs have a prima case in their favour till final disposal of the suit or till such time as the registration thereof remains intact.
11. In that view of the matter, the application filed by the plaintiffs under Order 39 Rule 1 & 2 CPC read with Section 151 CPC is allowed. The defendants, their servants, agents, distributors and dealers are restrained by an order of injunction from manufacturing, copying, using & selling the registered design number 233559 of the air cooler of the plaintiffs till final disposal (Downloaded on 04/12/2022 at 12:09:31 AM) [OOS-1/2021] (48 of 48) of the suit or till such time as the registration thereof remains intact.
CMA No.549/2021 & 612/2021 :-
In view of the order passed today on the application filed by the plaintiffs under Order 39 Rule 1 & 2 CPC read with Section 151 CPC in OOS-1/2021, the present appeals (CMA No.649/2021 & 612/2021) have become infructuous and are accordingly dismissed.
Office is directed to separately place a copy of the present order in each connected file.
(INDERJEET SINGH),J VIJAY SINGH SHEKHAWAT /40 (Downloaded on 04/12/2022 at 12:09:31 AM) Powered by TCPDF (www.tcpdf.org)