Delhi High Court
Vega Auto Accessories (P) Ltd. vs S.K. Jain Bros. Helmet (I) Pvt. Ltd. on 1 June, 2018
Equivalent citations: AIRONLINE 2018 DEL 797
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision:1st June, 2018
+ CS(COMM) 837/2017
VEGA AUTO ACCESSORIES (P) LTD. ..... Plaintiff
Through: Ms. Diva Arora Menon, Mr. Rajat
Katyal and Mr. Man Mohan
Mishra, Advs.
Versus
S.K. JAIN BROS. HELMET (I) PVT. LTD. ..... Defendant
Through: Mr. Sagar Chandra, Ms. Ishani
Chandra, Mr. Ankit Rastogi and
Mr. Bibhunanda Mishra, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
IA No.14568/2017 (of plaintiff u/O XXXIX R-1&2 CPC), IA
No.123/2018 (of the defendant under Order XXXIX Rule 4 CPC) &
IA No.1903/2018 (of defendant u/O XI R-1(10) CPC)
1. The plaintiff has sued the defendant for permanent injunction
restraining infringement of registered design in relation to helmets, and
for ancillary reliefs.
2. The suit was entertained and summons/notice of the application
for interim relief ordered to be issued, though no ex-parte injunction
granted.
3. The counsel for the defendant appeared on 12th December, 2017
and stated that he did not know anything about the case and sought
adjournment. It having been made clear while issuing summons/notice,
that the application for interim relief shall be heard on the date for which
the summons/notice were issued, on 12th December, 2017, while
granting time to the defendant to file written statement/reply, the
CS(COMM)837/2017 Page 1 of 17
defendant and its dealers and agents were restrained from making,
selling, offering for sale, advertising and directly or indirectly dealing in
helmets amounting to infringement of plaintiff‟s registered design
No.264763 dated 13th August, 2014 (incorrectly stated in the plaint as
13th August, 2013) and particularly the helmets under the mark
„POWER‟ and as depicted in paragraph 22 of the plaint.
4. The defendant filed application under Order XXXIX Rule 4 of the
Code of Civil Procedure, 1908 (CPC) contending that the design of the
defendant was also registered and interim injunction should thus be
vacated.
5. The said application came up before this Court on 4th January,
2018. The counsel for the plaintiff appearing on advance notice on that
date referred to Mohan Lal, Proprietor of Mourya Industries Vs. Sona
Paint & Hardwares AIR 2013 Del 143 (FB) holding that a suit for
infringement of a registered design lies against a registrant of a design as
well. The counsel for the plaintiff also sought time to reply to the
application under Order XXXIX Rule 4 of the CPC and the hearing was
adjourned to 15th February, 2018. At the instance of defendant, it was
however clarified that the ad-interim order did not injunct the defendant
from using the mark „POWER‟ for marketing helmets of other designs.
6. The defendant preferred FAO(OS)(COMM) No.13/2018 against
the orders dated 12th December, 2017 and 4th January, 2018 and which
was disposed of on 24th January, 2018 observing that since the hearing
was scheduled before this Court for 15th February, 2018, no interference
was required.
CS(COMM)837/2017 Page 2 of 17
7. The counsel for the parties were heard on 15th February, 2018.
8. The counsel for the defendant, during the course of hearing drew
attention to the IA No. 1903/2018 under Order XI Rule 1 of CPC for
taking on record documents filed subsequent to the filing of replication
by the plaintiff to the written statement of the defendant. The counsel for
the defendant, with respect to the additional documents, stated that the
same are with respect to three helmets „Vega off Road‟, „O2‟ and
„Cruizer‟ and show the features in the helmet of the plaintiff to have
been prior published.
9. The counsel for the plaintiff contended that the said documents
cannot be taken on record. In fact, the counsel for the plaintiff, at the
commencement of hearing only, contended that if the said documents
were to be relied upon by the defendant in the course of hearing, first the
said application has to be considered.
10. However, during the hearing, both counsels referred to the said
additional documents; the counsel for the plaintiff of course, without
prejudice to her rights and contentions and in this light of the matter, it is
deemed appropriate to allow the said documents to be taken on record.
11. IA No.1903/2018 is allowed and disposed of.
12. The counsel for the plaintiff argued, (i) that the registration in
favour of the plaintiff is dated 13th August, 2014 and the registration
relied upon by the defendant in its favour with respect to the impugned
product is dated 1st March, 2017; (ii) that while the product of the
plaintiff is sold under the mark „VEGA‟, the product of the defendant is
sold under the mark „POWER‟; (iii) that the defendant, in its written
CS(COMM)837/2017 Page 3 of 17
statement has raised three defences; firstly, that they also have a
registered design; secondly, that the registered design of the plaintiff had
been pre-published; and, thirdly, that the design of the plaintiff and the
design of the defendant are different; (iv) attention was invited to the
registration in favour of the respective parties to contend that the design
of the defendant is identical to the design of the plaintiff and minor
variations cannot allow the defendant to defeat the claim of the plaintiff
for infringement, as the test of substantial similarity is to be applied.
13. The counsel for the plaintiff, on enquiry, whether a holder of the
registered design can maintain a suit for infringement, as this suit is,
against holder of a registration and whether not as per the law under the
Trade Marks Act, 1999, in such eventuality, the remedy would be only
of passing off, has again invited attention to Mohan Lal, Proprietor of
Mourya Industries supra and the counsel for the defendant did not
controvert the said legal position. A reading of the judgment indeed
shows the Full Bench of this Court, by majority, to have held so.
14. I enquired from the counsel for the defendant, that the defendant
being itself a registrant of the design, if found to be similar to that of the
plaintiff, whether can take a plea of the design of the plaintiff being prior
published and being thus not valid and the plaintiff being not entitled to
injunction on this ground.
15. The counsel for the defendant though controverted but on further
enquiry stated that there is no judgment till date on the said position. He
however contended that merely because the defendant also has obtained
registration, even if the design of the defendant is identical to that of the
CS(COMM)837/2017 Page 4 of 17
plaintiff, the same would not prevent the defendant from taking the plea
of, the design of which the plaintiff has obtained registration, being not
original or new or having been prior published. It was contended that
the said defence, under the scheme of the Designs Act, 2000, is vested in
a defendant in a suit for infringement and merely because the defendant
is also a registrant, will not deprive the defendant from taking such a
defence. Though the counsel for the defendant also took me through the
provision of the Act but need to record the same is not felt. Suffice it is
to record the contention that the defences under Section 22(3) are
available against a claim for infringement.
16. The counsel for the defendant next contended that the registration
is never for the entire product and is only for what is new and novel. It
was argued, that otherwise, helmets have been in vogue since much prior
to the registration in favour of the plaintiff and owing to the very nature
of the product and the requirement to comply with ISI specifications, all
the helmets will have certain common features.
17. The counsel for the defendant, on being asked to point out the
dissimilarities in the subject helmet of the defendant with the subject
helmet of the plaintiff, invited attention to four features i.e. (a) placing of
front air vent; (b) button at the bottom for lifting the visor is on the inside
and not visible from outside and is different from that on the helmet of
the plaintiff; (c) symbol of gear lock on the right side of the helmet of the
defendant is unique and not to be found on the helmet of the plaintiff;
and, (d) the shape of the air vent at the place of the chin are different in
the two helmets.
CS(COMM)837/2017 Page 5 of 17
18. However when the counsel for the defendant, during the course of
hearing, was showing other helmets in the Court under the mark
„CRUIZER‟, „O2‟ and „VEGA OFF ROAD‟, it was found that the button
on the inside, to lift the visor, in the helmet of the defendant is identical
to that in the helmet under the mark „O2‟ and the counsel for the
defendant agreed that the same cannot be said to be unique to the helmet
under the mark „POWER‟ of the defendant.
19. It was also the contention of the counsel for the defendant, that air
vents are also common to all helmets and the newness or originality with
respect thereto can only be with respect to the shape thereof. It is argued
that the shape of the air vents in the subject helmet of the plaintiff and in
the impugned helmet of the defendant is different. It is further
contended that the functional features in a helmet, by virtue of the
definition of design in Section 2(d), are excluded from consideration and
the lines on the helmet are functional for the reason of aerodynamic and
no uniqueness with respect thereto can be claimed.
20. The counsel for the defendant also argued that mere registration
does not grant protection and the entire case of the plaintiff is based on
the entirety of similarity but it is the uniqueness of the features which is
to be seen and not the product in entirety.
21. During the course of hearing, the counsel for the plaintiff, with
respect to the vents at the place of chin on the helmet of the defendant,
also agreed that the said vents are of the same shape as the vents in the
helmets under the mark „O2‟ and „VEGA OFF ROAD‟ of the plaintiff.
The defendant thus cannot claim uniqueness with respect thereto as well.
CS(COMM)837/2017 Page 6 of 17
22. The counsel for the defendant referred to paras 30 to 32 of Amit
Jain Vs. Ayurveda Herbal 2015 63 PTC 121 (Del) and to Steelbird Hi-
tech India Ltd. VS. S.P.S. Gambhir (2014) 58 PTC 428, also with
respect to helmets. Attention was also invited to Russell-Clarke on
Industrial Designs, Sixth Edition para 3.183 titled "Isolating the features
which constitute the design".
23. The counsel for the plaintiff, in rejoinder, contended that it is
overall design which has to be seen and not only the unique features. It
was argued, that the registration granted is also not with respect to the
unique features but with respect to overall design. Reliance was placed
on para 29 and 30 of Troikaa Pharmaceuticals Ltd. Vs. Pro
Laboratories (P) Ltd. (2008) 3 GLR 2635, para 12 of Vikas Jain Vs.
Aftab Ahmad (2008) 37 PTC 288 (Del) and paras 17 & 18 of Dabur
India Ltd. Vs. Amit Jain 155 (2008) DLT 407 (DB).
24. The counsel for the defendant, by sur rejoinder, contended that
patent has also been obtained in United States, as far back as in the year
2001, with respect to the features on the helmet of the plaintiff. The
counsel for the defendant, from the additional documents aforesaid, also
showed that the pre-publication was on 22nd December, 2013 and 28th
April, 2014.
25. I have considered the rival contentions.
26. I will first deal with the aspect, whether it is open to the defendant
to oppose the interim injunction on the ground of invalidity of the design
of the plaintiff and / or on the ground that the design of the plaintiff has
been prior published.
CS(COMM)837/2017 Page 7 of 17
27. As far as the law relating to trade marks is concerned, it has been
consistently held by this Court in (i) Automatic Electric Limited Vs.
R.K. Dhawan (1999) 77 DLT 292; (ii) The Indian Hotels Company Ltd.
Vs. Jiva Institute of Vedic Science and Culture 2008 (37) PTC 468
(Del) (DB); and, (iii) Anchor Health & Beauty Care Pvt. Ltd. Vs.
Procter & Gamble (Tianjin) Co. Ltd. 2014 SCC OnLine Del 2968,
appeal whereagainst was dismissed vide judgment reported as Procter &
Gamble (Tianjin) Co. Ltd. Vs. Anchor Health & Beauty Care Pvt. Ltd.
(2014) 211 DLT 466 (DB) and SLP (C) No.15928 - 15929/2014
preferred whereagainst were dismissed on 3rd July, 2014, that the
defendant itself having got his mark registered, when faced with action
by another for infringement, cannot say that the mark of the prior
registrant was not distinctive or could not have been registered. The
reasoning which prevailed to hold so was that it is not open to a litigant
to approbate and reprobate or to blow hot and cold. It was yet further
held that even if the defendant had only applied for registration, it is still
not open to him to thereafter in a suit by another, take the defence of the
mark being descriptive and incapable of protection as a trade mark by
the Civil Court.
28. I am unable to find any reason why the said principle of general
law should not be made applicable to a defendant in a suit for
infringement of design. Though there is a essential difference in
registration of a trade mark and registration of a design i.e. while
registration of a trade mark vide Section 31 of the Trade Marks Act gives
rise to a presumption of validity of registration, it is not so qua
registration of a design which as per Section 10(4) of the Designs Act is
CS(COMM)837/2017 Page 8 of 17
prima facie evidence only of the matters directed or authorised to be
entered in the Register, however the reason which prevailed in the
judgments aforesaid was not of prima facie validity of the registration of
trade mark. The reason which prevailed in the judgments aforesaid was,
that if a party has taken up a specific stand at a particular stage of the
Court proceedings, it should not be open for him to take a contrary
position at a subsequent stage of litigation or in a different proceeding.
The Full Bench of this Court in Rajneesh Kumar Singhal Vs. The State
(National Capital Territory of Delhi) 89 (2001) DLT 511 held that the
said principle serves well as it does not allow a litigant to blow hot and
cold at successive stages of the same litigation or another litigation. It
was held to be an elementary rule, that a party litigant cannot be
permitted to assume inconsistent positions in Court, to play fast and
loose, to blow hot and cold, to approbate and reprobate, to the detriment
of his opponent. This wholesome doctrine was held to apply not only to
the successive stages of the same suit, but also to another suit than the
one in which the position was taken up, provided that the second suit
grows out of the judgment in the first.
29. Though the counsel for the defendants stated that there is no
judgment on the said aspect but I find the Division Bench of the High
Court of Bombay in Asian Rubber Industries, New Delhi Vs. Jasco
Rubbers Calicut 2013 (53) PTC 495 (Bom) to have held that the
defendants in that case having themselves sought registration of their
design, it was not open to them to say that the plaintiff cannot claim
exclusivity and it does not lie in the mouth of defendants to contend that
the plaintiff‟s design is not new or original or there is no novelty. The
CS(COMM)837/2017 Page 9 of 17
said view was reiterated recently by another Division Bench of that
Court in Kalpesh R. Jain Vs. Mandev Tubes Private Limited 2018 (73)
PTC 591 (Bom). The High Court of Madras also, in Dart Industries Inc.
Vs. Cello Plastotech MANU/TN/1629/2017, relying on the dicta of this
Court in Automatic Electric Limited supra, held that the contention of
the defendants of lack of novelty had no merit.
30. Another contention of the counsel for the defendant in this respect
however remained to be recorded above. It was the contention of the
counsel for the defendant that unlike under the Trade Marks law, under
the scheme of Designs Act there is no requirement on the applicant for
registration of a design to make an averment of the design being novel
or new and having not been pre-published and no such declaration is
required to be made in the forms prescribed for an application for
registration of design.
31. I am however of the view that, notwithstanding the same, once an
application for registration is made, in the light of the prohibition
contained in Section 4 of the Designs Act that a design which is not new
or original or which has been disclosed to the public anywhere in India
or in any other country by publication or which is not significantly
distinguishable from known designs or combination of known designs,
shall not be registered, it is implicit that the applicant for registration is
making a declaration of the design of which registration is sought not
falling in any of the clauses of Section 4 of the Act. In fact, the counsel
for the defendant also subsequently stated that the prescribed form
requires a declaration of newness and originality to be made.
CS(COMM)837/2017 Page 10 of 17
32. Once, an applicant has claimed his design to be new or original
and having not been prior published and being distinguishable from
known designs, he cannot oppose the claim for infringement by a prior
registrant, if his design is identical to that of the prior registrant, by
contending that there is no newness or novelty in the design of the
plaintiff and/or that the design of the plaintiff was prior published.
33. I therefore hold that the plea, of invalidity of registration of design
of the plaintiff is not open to the defendant. The defendant having itself
obtained registration of the impugned design; if the impugned design is
found to infringe the design of the plaintiff registered prior to registration
in favour of defendant, is estopped from taking the plea of invalidity of
registration in favour of plaintiff.
34. The only question which thus remains for determination is,
whether the defendant has pirated the registered design of the plaintiff
within the meaning of Section 22(1) of the Designs Act.
35. Per Section 22, during the existence of copyright in any design, it
is not lawful for any person, for the purpose of sale, to apply or cause to
be applied to any article or any class of articles in which the design is
registered, the design or any fraudulent or obvious imitation thereof, or
to do anything with a view to enable the design to be so applied and to
expose for sale that article. It is thus to be determined, whether the
design of the helmet under the mark „POWER‟ of the defendant whereof
the defendant obtained registration vide registration certificate dated 1 st
March, 2017, is fraudulent or obvious imitation of the registered design
CS(COMM)837/2017 Page 11 of 17
no.264763 dated 13th August, 2014 under the mark „VEGA‟ of the
plaintiff.
36. The defendant, in its documents has filed photographs of the
helmet of the plaintiff and its own helmet as under:-
CS(COMM)837/2017 Page 12 of 17
CS(COMM)837/2017 Page 13 of 17
37. The Certificate of Registration of design of the helmet aforesaid of
the plaintiff comprises of six sheets showing front, back, top, bottom, left
side and right side views thereof and with each of the sheets bearing the
following endorsement:-
"Novelty resides in the shape & configuration of
the Helmet as illustrated.
No claim is made by virtue of this registration in
respect of any mechanical or other action of any
mechanism whatever or in respect of any mode or
principle of construction of the Article.
No claim is made by virtue of this registration to
any right to the exclusive use of the words, letters,
numbers, or trademarks appearing in the
representation.
No claim of extraneous matter at the background
of the photo is made which are not forming
integrated part of the design, the same is
disclaimed."
38. The Certificate of Registration of the design aforesaid of the
helmet of the defendant comprises of seven sheets showing the
perspective, front, back, left side, right side, top and bottom views
thereof and with each of the sheets bearing the following endorsement:-
"The novelty resides in the shape and
configuration of the "HELMET" as illustrated.
No claim is made by virtue of this registration in
respect to of any mechanical or other action of
any mechanism whether or in respect of any mode
or principle of construction of the article.
No claim is made by virtue of this registration in
respect of colors appearing in the representations.
CS(COMM)837/2017 Page 14 of 17
No claim is made by virtue of this registration to
the words, letters, numerals, trademark etc.
appearing in the representations."
39. Having been shown the subject helmets as well as a host of other
helmets during the course of hearing, in my view the subject helmet of
the defendant is an obvious imitation of the shape and configuration of
the subject helmet of the plaintiff.
40. As far as the differences between the two pointed out by the
counsel for the defendant during the hearing and as recorded above are
concerned, the Division Bench of this Court in Dabur India Limited
supra cited by the counsel for the plaintiff has reiterated that sameness of
the features does not necessarily mean that the two designs must be
identical in all points and should differ on none - they have to be
substantially the same. It was further held that the Court must address its
mind as to whether the design adopted by the defendants was
substantially different from the design which was registered.
41. Applying the aforesaid test, it may be said that the following
elements in the shape and configuration of the subject helmet of the
plaintiff have been obviously imitated in the subject helmet of the
defendant:
(i) shape and configuration of the outer shell;
(ii) the placement of the flip-up chin bar with the pro-shield on
the side plates;
(iii) the placement of the pro-shield on the flip-up chin bar;
(iv) the placement and shape of the super vent on the outer shell;
CS(COMM)837/2017 Page 15 of 17
(v) the placement of the mouth vent on the flip-up chin bar;
(vi) the shape of the arm of the flip-up chin bar with pro-shield;
(vii) the placement and the shape of the rear vent;
(viii) the placement of the press button on the flip-up chin bar at
the centre of the flip-up chin bar;
(ix) the pattern of grooves and ridges on the outer shell and on
the flip-up chin bar.
42. I have taken the names of the various components of the helmet as
hereinabove mentioned, from the diagram shown as under available at
https://motorcycleroom.com/the-motorcycle-helmet-parts/
Save that, I have called the part which covers the chin as chin bar.
43. Once it is so, the plaintiff has a prima facie case. Needless to add
that continued infringement of the registered design of the plaintiff by
the defendant would cause injury to the plaintiff which cannot be
CS(COMM)837/2017 Page 16 of 17
compensated monetarily or otherwise. The balance of convenience is
also in favour of the plaintiff and against the defendant.
44. The plaintiff is thus found entitled to confirmation of the ad
interim order dated 12th December, 2017.
45. Needless to state that findings including of law and observations
hereinabove are for the purposes of decision of the application for
interim relief only and would have no bearing at the time of final
outcome of the suit.
46. IAs No.14568/2017 and 123/2018 are disposed of.
RAJIV SAHAI ENDLAW, J.
JUNE 01, 2018 „pp‟..
CS(COMM)837/2017 Page 17 of 17