Delhi District Court
Crompton Greaves Consumer Electricals ... vs Grasp Engineering And Solutions on 5 June, 2024
In the Court of Ms. Anu Grover Baliga,
District Judge (Commercial Court-04),
South-East District, Saket Courts
New Delhi
CS (COMM) 606/21
Crompton Greaves Consumer Electrical Ltd. Vs. Grasp Engineering And
Solutions
In the matter of:
Crompton Greaves Consumer Electricals Ltd.
Having its registered office at,
1st Floor, Tower-3, Equinox Business Park, LBS Marg,
Kurla (West), Mumbai-400070. ....Plaintiff
Versus
Grasp Engineering And Solutions
14/16, Naren Garden, Kalaptti Post,
Coimbatore-641048, Tamilnadu ....Defendant
Date of institution : 02.12.2021
Date of reserving judgment : 27.05.2024
Date of pronouncement of Judgment : 05.06.2024
Judgment under Order VIII Rule 10 CPC
1.This is a suit filed seeking relief of permanent injunction for restraining the Defendant from infringing the design of the SWJ pump model developed by the Plaintiff and from passing off its goods as that of the Plaintiff. In addition, the Plaintiff has in the present suit also sought damages to the tune of Rs.5 Lakhs against the Defendant and has also prayed that the Defendant be directed CS (Comm) 606/21 Crompton Greaves Consumer Electrical Ltd. Vs. Grasp Engineering And Solutions Page 1/11 to render its account maintained and the profits that it has earned from selling its pump sets using the design registered in favour of the Plaintiff.
2. Briefly stated, the material averments on the basis of which the present suit has been filed are as follows:-
(a) The Plaintiff is the market leader in the manufacture, distribution and sale of consumer electrical products in the niche as well as common electrical products segment. The Plaintiff's consumer products are very well known in the Indian markets and in many International Countries. The Plaintiff's products are sold in the market under various product identification marks in association and in conjunction with and the under the umbrella of the house mark "CROMPTON".
(b) The Plaintiff worked tirelessly to achieve its dominance in the consumer electrical business. As of today, Plaintiff is one of the market leaders in the manufacturing and trading of various types of submersible, mono-block and centrifugal pumps (hereinafter referred to as "pump sets") in India. Currently, the Plaintiff has 16.42% of Market Share with respect to manufacture and sale of Residential Water Pump in the country. Plaintiff is ranked number 1 in the category of Residential Water Pump.
(c) Plaintiff in its continuous endeavour to offer superior products to its customers (both technically and aesthetically) is engaged in extensive research and development. During the course of its business, the Plaintiff researched and developed upon an existing one Shallow Well Jet (SWJ) pump model and for this newly developed model, obtained design registration under the Designs Act, 2000 under number 289880 dated January 6, 2017.
(d) The new model of SWI pump is technically as well aesthetically superior model of pump set comprising all latest technological advancement and bearing CS (Comm) 606/21 Crompton Greaves Consumer Electrical Ltd. Vs. Grasp Engineering And Solutions Page 2/11 interalia a unique layout, pattern, design, shape and configuration. The Plaintiff indigenously conceptualized the pump set and finally on August 23, 2017, goods under the revised SWJ model were released in the market.
(e) On November 20, 2021, Plaintiff came to know that in a desperate attempt to springboard its activities in the consumer electrical business and to cash upon the immense reputation and goodwill of the Plaintiff, the Defendant has commenced unscrupulous infringing/piracy activities wherein Defendant is manufacturing and marketing visibly inferior quality pump sets in the open retail market as VOLVO Jet Shallow Well Pumps (hereinafter referred to as "impugned model) having a identical and/or deceptively similar design as that of the Plaintiff's. The design of Defendant pump set under the impugned model, which recently came to the notice of the Plaintiff's marketing representative, is in fact, a fraudulent imitation of the Plaintiff's registered product design for SWJ model. It is submitted that the Defendant has blatantly not only copied all the essential features of the Plaintiff's registered design but also the entire get-up, layout, overall appearance and all the unique features of the Plaintiff have been plagiarized by Defendant.
(f) The Defendant without any application of mind, has imitated the well-
reputed registered design belonging to the Plaintiff, and has made a substantial reproduction of the Plaintiff's registered design. The malevolent act of the Defendant is primarily to cause misrepresentation and confusion with the sole intent of pirate/passing off its products as that of the Plaintiff.
(g) The Plaintiff's novelty resides in the overall impression created by combination of these above features that gives the Plaintiff's product a distinct shape, configuration and design, which has a completely unique ornamentation and appearance and is associated with the Plaintiff and has acquired secondary meaning. The Defendant has slavishly imitated the combination of the said CS (Comm) 606/21 Crompton Greaves Consumer Electrical Ltd. Vs. Grasp Engineering And Solutions Page 3/11 features and maliciously refrained from using their full name on the aluminium batch of the product in order to pass off its products as that of the Plaintiff and/or infringe/pirate the Plaintiff's rights.
(h) In order to further ascertain about the fraudulent activities of the Defendant, the Plaintiff's representatives have made several enquiries in the market and found that the Defendant had discreetly started manufacturing and/or selling goods under the impugned design since September 2021 and on November 22, 2021 has extended its impugned activities in the online e- commerce platform as well and the goods under the VOLVO Jet Shallow Well Pumps model sold freely within the jurisdiction of this Hon'ble Court over the Internet on www.amazon.in an online interactive passive plus wherein these websites are specifically targeted at viewers within the jurisdiction of this Hon'ble Court for commercial transactions.
3. Based on the aforementioned averments, the reliefs as narrated in para 1 hereinabove have been sought vide the present suit.
4. As per record, on applications filed by the Plaintiff seeking ex-parte interim injunction and appointment of a Local Commissioner, one of the Ld. Predecessors of this Court vide order dated 04.02.2022 had restrained the Defendant from infringing the design of the Plaintiff till further orders and had also appointed a Local Commissioner to seize the impugned goods and ledger accounts, etc. of the Defendant from its office at Grasp Engineering Solutions, 14/16, Naren Garden, Kalaptti Post, Coimbatore, Tamil Nadu-641048.
5. The record further reflects that on 17.04.2023, Ld. Counsel Sh. S. Jeeva Nandan had filed vakalatnama on behalf of the Defendant Company and had CS (Comm) 606/21 Crompton Greaves Consumer Electrical Ltd. Vs. Grasp Engineering And Solutions Page 4/11 prayed that the case be sent for mediation. On his request the present case was referred to Mediation and the parties were directed to appear before the Mediation Cell on 26.04.2023 at 02:00 PM and were directed to report back to this Court on 05.07.2023. However, on the date fixed before the Court, it was informed by Ld. Counsel for Plaintiff that the Defendant did not at all participate in the mediation proceedings except for appearing on one single date. After taking into consideration the submissions made by Ld. Counsel for Plaintiff and the fact that neither anyone appeared on behalf of the Defendant before this Court on 05.07.2023 nor was any written statement filed despite the expiry of 120 days from the date of service of the Defendant, this Court vide Order dated 05.07.2023 struck off the right of the Defendant company to file its written statement and listed the matter for the Plaintiff to lead ex parte evidence on 10.08.2023.
6. On 10.08.2023, Ld. Counsel Sh. Hemant Daswani appeared on behalf of the Plaintiff and filed an application under Order VIII Rule 10 CPC and submitted that in view of the judicial dicta laid down by the Hon'ble Delhi High Court in some its recent judgments, there is no requirement for the Plaintiff to lead evidence and that this Court may accept the facts asserted in the petition filed and pronounce its judgment forthwith. In support of this contention, Ld. Counsel for the Plaintiff, in particular, referred to the judgment of the Hon'ble Delhi High Court in the case titled and reported as Indian Performing Right Society Ltd. Vs. Gauhati Town Club & Anr. 2013 SCC OnLine Del 382.
7. Keeping in view the judicial dicta referred to by Ld. Counsel for Plaintiff, this Court proceeded to hear the Ld. Counsel for Plaintiff. On the basis of the material facts asserted in the suit (the same have been already been reproduced CS (Comm) 606/21 Crompton Greaves Consumer Electrical Ltd. Vs. Grasp Engineering And Solutions Page 5/11 in para 2 hereinabove), it is the contention of Ld. Counsel for Plaintiff that this Court must accept that the Plaintiff holds a valid design registration under the Designs Act, 2000, for its Shallow Well Jet (SWJ) pump model and that the Defendant has unscrupulously copied the design of the said pump and is passing of his own pumps as that off the Plaintiff and grant the injunctions sought for. Ld. Counsel for the Plaintiff, Sh. Daswani has also relied upon the judgment of the Hon'ble Delhi High Court in the case titled and reported as Motorola Inc. and Ors. Versus Motorola Auto India Pvt Ltd and Ors. MANU/DE/3650/2015 to contend that this Court must award punitive damages against the Defendant for infringing the design of the Plaintiff and passing off his own goods as that of the Plaintiff.
8. This Court has considered the submissions made by the Ld Counsel Sh. Daswani and has also gone through the entire record. It is relevant to mention herein that along with the plaint, the Plaintiff has filed the photographs of the SWJ pump model manufactured and sold by it and the photographs of the Defendant's product. Photographs of similar pumps being manufactured and sold by some of the competitors of the Plaintiff namely those sold under the brand name Usha, Havells, Kirloskar, Wilo, have also been filed with the plaint. A perusal of the said photographs reflect that the pumps manufactured by all major companies are almost identical in layout, shape and configuration and therefore this Court had raised a query regarding the asserted novelty and uniqueness of the design of the pump set of the Plaintiff and the validity of the registration of the design in favour of the Plaintiff. This Court had also taken note that the Design Act, 2000, has no provisions analogous to Section 29 (2)(a) and (3) of the Trademarks Act. The provisions of Section 29(2)(a) and (3) of the Trademarks Act make it clear that in a case of passing off of a trademark, a CS (Comm) 606/21 Crompton Greaves Consumer Electrical Ltd. Vs. Grasp Engineering And Solutions Page 6/11 Court has to presume that the Defendant's act in copying a registered trademark of the Plaintiff is likely to cause confusion on the part of the public. In the absence of such a statutory presumption in case of a design registered in favour of the Plaintiff, this Court had directed the Ld. Counsel for the Plaintiff to point out the evidence, the Plaintiff is relying upon to prove that the Defendant is also liable for an action of passing off his goods as that of the Plaintiff.
9. Ld. Counsel for the Plaintiff, in reply to the first of the aforementioned queries had, pointed out that the motor body of the product of the Plaintiff has fins that are almost equidistant from each other while the products of other companies have fins which are not at equidistant from each other and therefore the surface pattern of the pump designed by the Plaintiff is unique and novel. According to Ld. Counsel for Plaintiff this equidistance between the fins gives the product of the Plaintiff a unique lay out and configuration. Ld. Counsel for Plaintiff has also submitted that this Court suo moto cannot challenge the validity of the Design registered in favour of the Plaintiff in absence of any challenge by the Defendant.
10. In support of this contention Ld. Counsel for Plaintiff has referred to two judgments of the Hon'ble High Court of Delhi namely:
. Sirona Hygiene Private Limited versus Amazon Seller Services Private Limited and Others, 2023 SCC OnLine Del 1559.
. Peps Industries Private Limited versus Kurlon Limited, MANU/DE/3831/2022.
He has pointed out that in Sirons's case ( supra), the Hon'ble Delhi High Court has held as follows;
CS (Comm) 606/21 Crompton Greaves Consumer Electrical Ltd. Vs. Grasp Engineering And Solutions Page 7/11 "50. Even though the Designs Act does not contain any provision analogous to section 31 of the Trade Marks Act deeming registration of design to be prima facie proof of its validity, nonetheless, at the interlocutory stage, in the absence to the convincing evidence to the contrary, the Court can rely on the fact that a design is registered as a factor in favour of the design registrant. In this context, one may usefully refer to Micolube india Limited v. Rakesh Kumar. Therefore, in the absence of evidence to the contrary, a certificate of granting registration to a design has to be treated as prima facie evidence of validity of the design. Of course, this would be subject to the defendant being able to establish, at least prima facie, that the suit design suffers from want of novelty and originality.
That, unfortunately, Mr. Sahu has not, in the present case, been able to do."
He has further pointed out that in Pep's case, the Division Bench of the Hon'ble High Court of Delhi has held as follows;
"35. Section 9 of the Trade Marks Act, 1999 does not embody any statutory interdictions at the post registration stage. If the validity of the registration of the trademark is not brought in issue, the statutory assumption that the marks are valid must be accepted. It is not open for a court to Suo motu question the validity of the registration of the trademark if the same is not disputed by the defendant(emphasis applied). However, insofar as Section 30(2)(a) of the Trade Marks Act, 1999 is concerned, we are refraining from making any observations in that regard as the applicability of the said question does not arise in the facts of the present case."
11. On the basis of aforementioned judicial dicta it has thus been contended that since the Defendant has chosen not to question the validity of the design registered in favour of the Plaintiff, the statutory assumption is that the design registration is valid and is to be accepted by this Court.
12. Keeping in view the judicial dicta referred to by Ld. Counsel for Plaintiff this Court is satisfied that it cannot question the validity of the registration of the design in favour of the Plaintiff. As regards the second query raised by this Court, Ld. Counsel for the Plaintiff Sh. Daswani has today submitted before this Court that the Plaintiff is not wishing to press its action of passing off against the Defendant. He prays that this Court may only consider the relief of injunction against the Defendant to restrain it from copying the design of the CS (Comm) 606/21 Crompton Greaves Consumer Electrical Ltd. Vs. Grasp Engineering And Solutions Page 8/11 SWJ Pump set of the Plaintiff and may also grant damages in favour of the Plaintiff, for the infringement of its design committed by the Defendant.
13. As regards the question whether or not the Defendant has infringed the design registered in favour of the Plaintiff, in the considered opinion of this Court, the same has to be answered in favor of the plaintiff. The photographs of the product of the Plaintiff and those of the Defendant have been filed on record and a perusal thereof makes it clear that the design of the two products is almost identical. This Court for its satisfaction had also directed the Plaintiff to produce the two products in Court for its inspection and the Plaintiff had duly done so. It will be relevant at this stage to reproduce the photograph filed on record by the Plaintiff to show the similarity between its pump set and that of the Defendant.
14. The said photograph makes it abundantly clear that the Defendant has copied the design of the pump set registered in favour of the Plaintiff and has used the same for its own pump set. Clearly therefore in view of the provisions of Section 22 of the Design Act, 2000, the Plaintiff would be entitled to an CS (Comm) 606/21 Crompton Greaves Consumer Electrical Ltd. Vs. Grasp Engineering And Solutions Page 9/11 injunction against the Defendant restraining it from using the design registered in favour of the Plaintiff. At this stage, it would be relevant herein to reproduce Section (1)(a) of Section 22 of the Act:
22. Piracy of registered design - (1) During the existence of copyright in any design it shall not be lawful for any person -
(a) 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 licence or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or.........
15. The aforementioned provisions and the facts of the present case as discussed hereinabove therefore make it clear that the Plaintiff is entitled to seek the injunction that the Defendant be restrained from infringing the design of the SWJ pump model registered in favour of the Plaintiff.
16. In view of the above, it will be relevant now to consider that what are the damages that this Court can award against the Defendant for it having copied the design registered in favour of the Plaintiff. Sub-section (2) of Section 22 of the Design Act, 2000, lays down as to what damages a Court can grant in this respect and the provisions of the same are as follows:-
(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 CS (Comm) 606/21 Crompton Greaves Consumer Electrical Ltd. Vs. Grasp Engineering And Solutions Page 10/11 sub-section shall be instituted in any court below the court of District Judge.
17. Keeping in view the aforementioned provisions, this Court hereby awards Rs. 50,000/- in favour of the Plaintiff and against the Defendant for the Defendant having copied the design registered in favour of the Plaintiff. The report of the Ld. Local Commissioner makes it clear that the registered design of the Plaintiff has been copied by the Defendant on two of its pump sets and therefore it is clear that the Defendant for each of the said two contraventions of Sub-section (2) (a) of Section 22 of the Design Act, 2000 is liable to pay Rs. 25,000/- to the Plaintiff and that is the reason this Court has awarded Rs. 50,000/- in favour of the Plaintiff in terms of the said provision. Further taking into consideration that the Plaintiff has also filed the present suit seeking the relief of injunction and the Ld. Predecessor of this Court while appointing the LC had directed the Plaintiff to pay a fees of Rs.1,25,000/-, the Plaintiff is also hereby held entitled to the said amount as damages, in terms of the provisions of Sub-section (2) (b) of Section 22 of the Design Act, 2000.
18. In view of the discussion hereinabove, this Court hereby decrees the suit of the Plaintiff by grant of an injunction against the Defendant by restraining the Defendant either by itself or through its dealers, distributors, stockists, agents, associates, employees, servants from infringing the design of SWJ pump sets registered in favour of the Plaintiff till the existence of the said registration in its favour. In addition, the Defendant is also hereby directed to pay an amount of Rs.1,75,000/- as damages to the Plaintiff. Costs of the suit are also allowed. Decree-sheet be prepared accordingly. This file be consigned to Record Room.
Digitally signed by ANUANU GROVER GROVER BALIGA Announced in the open court BALIGA Date: 2024.06.07 03:27:05 +0530 on 5th June, 2024. (Anu Grover Baliga) District Judge (Commercial Court-04) SE/Saket/New Delhi CS (Comm) 606/21 Crompton Greaves Consumer Electrical Ltd. Vs. Grasp Engineering And Solutions Page 11/11