Delhi High Court
Indo Asahi Glass Co. Ltd. vs Jai Mala Roller Glass Ltd. And Another on 19 December, 1994
Equivalent citations: 1995IAD(DELHI)110, 1995(1)ARBLR289(DELHI), 57(1995)DLT72, 1995(33)DRJ317
JUDGMENT Mr. P. K. Bahri, J.
1. In this suit seeking various reliefs on the averments that defendant has and ins continued to infringe the plaintiffs copyright in the registered design "KONOHA", the plaintiff has moved the present application seeking interim relief of appointment of receiver, attachment before judgment and temporary injunction restraining defendant No. 1, its servants and agents and any other person on its behalf from using the impugned design in any way for manufacturing of figured glasses and/or any design which infringes the registered design in whole or in part of the plaintiff till the final disposal of the suit. In the arguments only relief of temporary injunction, as mentioned above, has been passed.
2. The case of the plaintiff, in brief, is that the plaintiff is a company incorporated under the Indian Companies Act, 1956 and is carrying on its business, inter alia, of manufacturing, selling and dealing with sheet glass, figured glass, and other sorts of flat glass and defendant No. 1, which is also an incorporated company, also carries on the business of manufactured and sale of figured glass. Defendant No. 2 is the authority for registration of designs appointed under sub-section (1) of Section 4 of the Trade and Merchandise Marks Act, 1958. It is averred that one of the unique design/pattern/ornamentation applied to some such glass manufactured by the plaintiff is known by the name of "KONOHA" and this design was registered with effect from April 24, 1987; vide registered design No. 158266 in Class IV under the Classification of Goods in the Fourth Schedule of the Design Rules, 1933, framed under the Designs Act, 1911. It is claimed that the plaintiff being the exclusive owner of the copyright in the said design duly registered in its favor which stands renewed and extended for five years now with effect from October 31, 1991, has been manufacturing and marketing the figured glass by applying the said design on the said glass sheets and has acquired a lot of business and reputation for its aforesaid goods in the market since 1987.
3. It is averred that in or about December, 1992 the plaintiff learnt that defendant No. 1 had also started manufacturing and selling glass sheets with the similar or deceptively similar design of the plaintiff and the plaintiff sent a letter to defendant No. 1 requiring it not to indulge in such infringement of the registered design of the plaintiff but with no effect as in or about May 1933 the plaintiff found out that defendant No. 1 has been continuously infringing the plaintiff's said registered design and was marketing its goods under the name of "DHOOP CHAON". It has been averred that visual comparison of the plaintiff's designed glass sheet carrying the registered design "KONOHA" and defendant No. 1's designed glass sheet carrying the purported design "DHOOP CHAON" clearly reveals and establishes that the design of defendant No. 1 is an infringement of the plaintiff's registered design. So, the plaintiff claims that defendant No. 1 has caused considerable loss to the plaintiff's business and thus, the plaintiff claims Rs. 6,00,000/- for the present as damages besides seeking other reliefs including permanent injunction.
4. Defendant No. 1 contested the suit as well as the application pleading that the plaintiff is not entitled to equitable relief of temporary injunction in this case as the plaintiff has suppressed a material fact from this court of his having sent a letter to defendant No. 1 which is dated December 2, 1992, in which it was disclosed that plaintiff is not the originator of the design in question which, in fact, has been allegedly developed by a company in Tokyo and the plaintiff has acquired some rights from that company. It is further pleaded that the present suit is not maintainable as defendant No. 1 has already filed a petition bearing No. CO 2 of 1993 on March 16, 1993, seeking cancellation of the registration of the aforesaid design in favor of the plaintiff.
5. On merits, it is pleaded that the plaintiff is not a validity registered proprietor of the alleged design. It is averred that as the plaintiff has not developed any original design, so the design could not have been registered in favor of the plaintiff and the same is liable to be cancelled in view of Section 51 of the Designs Act. Another plea taken by defendant No. 1 is that the design in question was already known and published prior to the date of its registration in favor of the plaintiff and on that ground also registration in favor of the plaintiff in respect of this design is liable to be cancelled. It is further pleaded by defendant No. 1 that defendant No. 1 has been manufacturing and selling the glass sheets under the design named as "DHOOP CHAON" and the said design was supplied to defendant No. 1 by West German first - M/s. Dornbusch GMBH and a booklet containing the said design was sent by the said company to defendant No. 1 in the end of year 1986. It is further pleaded by defendant No. 1 that defendant No. 1 has not infringed the plaintiff's alleged registered design at all.
6. The pleas of defendant No. 1 were controverter by the plaintiff pleading that the plaintiff has not suppressed any material fact from this court as the letter referred by defendant No. 1 in its written statement which is dated december 2, 1992, has been filed by the plaintiff with the additional documents even before issuance of summons to the defendants in the suit. It is controverter that the plaintiff is not the registered owner of the aforesaid design or the design registered in favor of the plaintiff is liable to be cancelled for any reasons. It is controverter that any such design had been published in India prior to the registration of the aforesaid design in favor of the plaintiff. It is pleaded that mere fact that defendant No. 1 has filed a petition in this court seeking cancellation of the registered design in favor of the plaintiff is no ground for not allowing the injunction in favor of the plaintiff as the plaintiff has been owner of the said design since 1987 and has acquired lot of business and reputation in the goods marketed by the plaintiff bearing the said design whereas defendant No. 1 has started infringing the said design of the plaintiff just before the filing of the present suit despite being warned by the plaintiff not to indulge in breach of the design of the plaintiff.
7. The plaintiff has placed on record the necessary documents showing that the design in question stands registered in favor of the plaintiff with effect from April 24, 1987, under the Designs Act and the registration stands extended for a period of five years with effect from October 31, 1991. Defendant No. 1 has filed the petition seeking cancellation of the registered design only on March 12, 1993.
8. Before I deal with various contentions raised before me by the learned Counsel for the parties, it is useful to refer to certain provisions of the Designs Act, 1911. Section 2(4) of the said Act means exclusive right to apply a design in respect of any article in any class in which the design is registered. Section 47(1) of the said Act lays downs, "when a design is registered, the registered proprietor of design shall, subject to the provisions of this Act, have copyright in the design during five years from the date of registration." Section 53(1) of the said Act provides that during the existence of copyright in any design, it shall not be lawful for any person (a) for purposes of sale to apply or cause to be applied to any article in any class of goods in which 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. Clause (b) of sub-section (2) of Section 53 makes such infringer to seek an injunction against future infringement of such design. proprietor to seek an injunction against future infringement of such design So, it is evident, prima facie, that the plaintiff is the registered proprietor of the aforesaid design and from the affidavits of various dealers filed on the record by the plaintiff. It is also prima facie established that plaintiff has been manufacturing and selling the goods in question having the said design since 1987 continuously. Defendant admittedly has started using the said design on its glass marketed under the name "Dhoop Chaon" recently some where in June, 1993. It is evident from the perusal of the design registered under the name of the plaintiff and the design being used by the defendant on it product that two designs are by and large similar.
9. In M/s. Western Engineering Company v. M/s. America Lock Company (2nd (1973) II Delhi 177), it has been observed that the question whether a design which is alleged to infringe a registered design is or is not an infringement must be determined by the eye alone. The court has to decide only whether the alleged infringement has the same shape or pattern and must eliminate the question of the identity of function since another design may have parts fulfillling the same functions without being an infringement. Small differences in detail do not necessarily prevent infringement, but generally speaking, if under normal conditions of user the eye would not confuse the two designs, there is no infringement. It was further observed in this judgment that where an article may be readily manipulated into a position similar to the illustration of a design registration, there will be infringement. It is not necessary to further dilate on the subject because looking at the plaintiff's design and the infringing design of the defendant, it is self-evident that two designs are apparently similar.
10. The learned Counsel for the defendant has urged that before a design could be registered, conditions laid down in Section 51-A of the said Act have to be satisfied which are to the effect that (a) design should be new on the date of application; or (b) design should be original on the date of application; or (c) the design should not be previously published in India. On any of these three grounds, a cancellation of design can be obtained under Section 51-A of the said Act. The learned Counsel for the defendant has urged that the design in question is not original as it has been published earlier in India and in case the said fact stands established, prima facie, then the design registered in favor of the plaintiff is liable to be cancelled and in such a case the plaintiff is not entitled to obtain any interim injunction against the defendant during the pendency of the suit, He has made reference to M/s. Nikitasha India Pvt. Ltd. v. M/s. Faridabad Gas Gadgets Pvt. Ltd. (AIR 1985 Delhi 136). The defendant has placed on record an affidavit of Chander Prakash Marwaha Along with letters issued by German and French company in order to show, prima facie, that similar design had been in use in Germany and France in the year 1962. Catalogue of the said design has been received by the defendant also. So, it is urged that as the plaintiff is not the author of any original design and as the said design has been already used in the foreign country and has been published in India, thus, the petition of the defendant seeking cancellation of the registration of design in favor of the plaintiff has, prima facie, force and thus, this court should not issue any injunction restraining defendant No. 1 from using the said design during the pendency of the suit.
11. It is to be emphasized that no material has been placed on record by defendant No. 1 to prove that in fact, the design in question has been used in Indian prior to user being made by the plaintiff. Apart from referring to a particular catalogue received by defendant No. 1 privately from some German company which contains the similar type of design, the defendant No. 1 has not shown that the said design had been actually published in India. In law, in order to establish publication of particular design in India It has to be shown that there has been effective publication to the public.
12. In V.D. Limited v. Boston Deep Sea Fishing and Ice Company Ltd. (52 RPC 303). Similar point regarding publication having become published or not came into consideration at page 328 of the judgment. There is a reference to some facts where it is mentioned that there a body known as Permanent International Council for the Exploration of the Sea. The said Council periodically produces publications which are issued in Copenhagen and soon after publication they are placed on the shelves of the Library in the Ministry of Agriculture and Fisheries, London, which Library is open to all members of the public who ar interested in matters connected with fisheries and is the natural place where such persons would seek and in fact do seek, such information, as aforesaid, by these publications. In such a case it was held that there has been publication to the public. Mere sending a catalogue or a particular book privately to a party would not lead to any inference, prima facie, that there has been effective publication to the public. The catalogue is stated to have been received by defendant No. 1 in the year 1986 but it is nowhere pleaded that any such catalogues had been effectively published which could come to the notice of the general public in normal course.
13. In Otto v. Steel (31 Ch. D. 241), the facts were that a French treatise was placed in the British Museum Library. The Museum catalogue is kept with reference to authors' names and books are arranged according to the subject-matter. It was held that there was no prior publication in England of matter contained in the treaties so as to avoid a patent taken out subsequently. In the case of M/s. Western Engineering Company (supra) reference has been made to Plimpton v. Malcolmson (1876 (3) Ch. D. 531), where the question was whether a description of an invention contained in an American Book sent to the library of the Patent Office in England was sufficiently published has to be available to show novelty in the design in question in the case. It was held in that judgment that the Book in question was kept in the Library but there was no sufficient publication of the prior design as to the public stock of knowledge. So, it is a question of fact to be determined in each case whether there has been effective publication to the public of a particular design or patent or not ?
14. Reference has been made by leavened Counsel for the defendant to M/s. Wimco Ltd. v. M/s. Meena Match Industries , where an observation has been made that there is a publication if the design has been disclosed to the public or the public has been put in possession of the design. This disclosure even to one person is sufficient to constitute publication.
15. It is not necessary to consider the legal position as to whether it amounts to publication or not if the particular design is disclosed to even one person in India. The short question to be decided is whether the defendant is entitled to take such a plea at this stage of the case.
16. The learned Counsel for the defendant himself has brought to my attention a judgment delivered by a Single Judge of this court in Satpal Sing v. S.P. Engineering Works (I.A. 1245/71 in Suit No. 335/7/) decided on November 18, 1971 Where a contention was raised in opposition to the prayer for grant of ad interim injunction restraining the defendant from pirating the registered design of the plaintiff in that case. It was urged that if defendant has disputed the validity of the registration, the same by itself is enough, to disentitle the plaintiff to the grant of interim injunction. This contention was negatived by the learned Judge. One of the pleas sought to be raised was that the registered design of the plaintiff has been published in India prior to the registration in favor of the plaintiff. It was held that such a contention may be a valid defense in the suit and can be raised to challenge the validity of the registration but has no bearing at the initial stage of the case. There are the matters which have to be decided by evidence. In the said case also, a plea was raised that such a design has been published in Germany and also in Canada in a magazine purported to have been published in 1953. It was also pleaded that the catalogue or the magazine were available in India in 1965 i.e., prior to the registration of the design in favor of the plaintiff. However, it was held that it is not possible to prima facie come to the conclusion that, in fact, design has been published in India prior to the registration of design in favor of plaintiff.
17. In the present case also, an affidavit has been filed along with a copy of the letter of the German company to show that the catalogue of the design had been sent by the German company to India. So, it is urged that this design had been published in India prior to the registration of the design in favor of the plaintiff. At the outset, I may mention that is the letter of the German company, there is no mention that when the said catalogue containing the design in question was sent to India and was received by the defendant in India. This is a disputed question of fact which cannot be decided at this stage as to whether the defendant had received any such catalogue containing the design in question from the German company prior to the registration of the design in favor of the plaintiff.
18. It has been urged that as the defendant has recently got its design registered, so it must be held that the design registered in favor of the defendant is different from the design registered in favor of the plaintiff. I have compared the two designs and it is self-evident from such comparison that design of the defendant is by and large similar to the design of the plaintiff. Even the learned Counsel fro defendant could not point out any such material variations between the two designs so that the court may come to the conclusion that the design of the defendant is different from the registered design of the plaintiff.
19. Learned Counsel for defendant has urged that the judgment delivered in the case of Satpal Singh (supra), the court has held that once a design had been registered, it should be inferred that the registered design is different from any other registered design inasmuch as under the statute no similar designs could be allowed to be registered. In the said case, the court was examining the question whether the two designs registered by the plaintiff himself could be considered to be different from one to the other. The court was not examining the question whether the similar design got registered by the defendant, after the plaintiff has raised the controversy of alleged misuse of the design of the plaintiff by the defendant. Still the court has to examine on its own whether the defendant's design is similar to the design of the plaintiff or no so as to amount to piracy of the design of the plaintiff by the defendant. It is evident prima facie that under Section 51 of the Designs Act, the design of the defendant is liable to be cancelled as it is similar to the design previously registered in favor of the plaintiff in India and such a petition for cancellation of the registered design of the defendant has already been filed by the plaintiff.
20. The learned Counsel for the defendant has further argued that as the defendant has also filed a petition i.e., C.O. No. 2/93 in this court seeking cancellation of the registered design of the plaintiff. thus the plaintiff is not entitled to have the relief of temporary injunction in this suit till the said petition of the defendant is decided. He has made reference to the case of M/s. Niky Tasha India Ptd. Ltd. (supra). The said judgment delivered by the Division Bench appears to be not applicable to the facts of the present case. In the said case it has been held in para 10 of the judgment to the following effect :
"Where you find a respectable and old established monopoly which has been in existence for years and not challenged, there is no reason for the court to lean too hardly against it ..."
In the said case decided by a Division Bench, there was a very recent registration & that registration had been questioned by the defendant in that case promptly and in view of those peculiar facts the relief of interim injunction was declined. So, the court opined that it would be odd to hold that on the strength of a recent registered design, the plaintiff can claim an absolute right to restrain everyone else from carrying on his business unless and until the registered design of the plaintiff is cancelled in appropriate proceedings by a competent court of law.
21. It is evident that in case prima facie the registered design of the plaintiff is liable to be cancelled, then the court may be disinclined to exercise any discretion in favor of the plaintiff for grant of temporary injunction restraining the other side from dealing with the similar design.
22. But in the present case, the facts show that plaintiff's design was registered with effect from April 24, 1987, for five years and stands extended further for five years w.e.f. 24th April, 1992 and plaintiff has been marketing its goods under the registered design for all these years and has built up a reputation for its goods on the basis of the said design. These has been no challenge to the registered design of the plaintiff for all these year till the defendant in 1993 has chosen to private the registered design of the plaintiff. So, it is not a case where the plaintiff's registration is a recent one and challenge to the plaintiff's registration has been raised promptly by the other side. So, nothing said in the aforesaid judgment of Division Bench is of any help to the defendant in the present case.
23. The learned Counsel for the defendant has also made reference to Globe Super Parts v. Paramount Electricals (1987 (2) Arb. LR 181). In this case also, there was a recent registration of a design and the same was challenged and petition had been moved for cancellation of the registration on the ground of pre-publication at the earliest opportunity and the court came to the conclusion that design of the plaintiff was neither original nor it had been in use by the plaintiff for any long time and thus the court declined to grant any interim injunction in that case. The facts of that case are not similar to the facts of the present case.
24. The learned Counsel for defendant also cited M/s. Tobu Enterprises Private Ltd. v. M/s. Megha Enterprises. (1983 PTC 359) In the said case, the two designs were found to be similar in nature and both designs had been registered. The court held that Section 47 of the Designs Act does create a substantive right in favor of the person whose design is registered but mere earlier registration of a design would not prevail against a latter registration. The court held that if rights accrued on account of registration of design are infringed, them remedy is provided under Section 53 of the Designs Act, but that Section does not in any way give preference to the earlier registration as against the latter one. Therefore, the net result is that firstly Section 41 does not create any right of preference in favor of earlier registration and Section 53 does not provide for any remedy of injunction, etc. with a view to enforce prevailing of earlier registration as against the latter ones. So, it was held that registration of design can, therefore, prevail and is to be protected against the infringement only when the opposite party does not possess any registration. So, it was laid down that obvious result is that if each of the party is having registration of design, each of them can use that design for its products.
25. No judgment has been brought to my notice by learned Counsel for the plaintiff taking any contrary view. So, I am of the prima facie view that design of the defendant infringes the registered design of the plaintiff and it may be that registration of design made in favor of the defendant is liable to be cancelled but in view of the ratio laid down in case of M/s. Tobu Enterprises Pvt. Ltd. (supra), as long as both, the plaintiff's design aad the defendant's design stand registered, the plaintiff cannot be granted relief of temporary injunction. In order to safeguard the rights of the plaintiff, if ultimately they are established in the suit, at the most the defendant can be required to maintain proper accounts of its sales of the goods under the disputed design till the disposal of the suit and file the copies of the statement of accounts in court quarterly till the disposal of the suit.
26. I, hence, decline to grant injunction, as prayed by the plaintiff and while dismissing the application for grant of temporary injunction and other reliefs, I give directions to the defendant to maintain proper accounts of the sales of the goods being made by the defendant having the design in question and to file the copies of such statement of accounts in court quarterly till the disposal of the suit.
27. The suit and the two petitions seeking cancellation of the registered designs in question may be dealt with together by the same court.
The application is disposed of.
28. Petition I.A. dismissed.