Madras High Court
Senthilkumar Ramamoorthy J vs Unknown on 26 February, 2019
O.A.Nos.41 & 42 of 2022 O.A.Nos.41 & 42 of 2022 in C.S.(Comm. Div) No.14 of 2022 SENTHILKUMAR RAMAMOORTHY J., The Applicants seek orders of interim injunction restraining the Respondent from directly or indirectly infringing its registered designs bearing registered design Nos.334507 – 003, 347012 – 002, 332970 – 001 and 332971 – 001 or from passing off the Respondent's operating tables as those of the Applicants.
2. The suit is for permanent injunctions restraining infringement and passing off and for damages. The Applicants state that the second Applicant is a limited company incorporated in the year 2003 and that the said Applicant is a leading manufacturer of operating tables and products related thereto. The Applicants referred to various registrations to establish credibility, such as the registrations issued by the Central Board of Excise and Customs and the Directorate of Industrial Safety and Health, Government of Tamil Nadu.
3. The Applicants place substantial reliance on four registration certificates issued by the Patent Office. These design registration certificates relate to: (i) orthopaedic leg positioning accessory for patient beds (Design https://www.mhc.tn.gov.in/judis 1/8 O.A.Nos.41 & 42 of 2022 No.334507-003); (ii) surgical table with top leg attachment for pelvic surgery (Design No.347012-002); (iii) surgical table with shoulder arthroscopic attachment (Design No.332970-001); and (iv) surgical table with top leg attachment and dynamic hip screw (Design No.332971-001).
4. By drawing reference to the Respondent's design in respect of operating tables and accessories thereto, the Applicants assert that the Respondent's design is both a fraudulent and obvious imitation of the Applicants' registered designs. The Applicants referred to Sections 2(d) and 22 of the Designs Act, 2000 (the Designs Act) to support the contention that it need not be a replica to establish obvious imitation. By adverting to the volume of documents filed by the Respondent, the Applicants state that these documents do not constitute evidence of prior use. According to the Applicant, even the date of publication is not mentioned in these documents. In support of the contentions, the Applicants relied upon the following judgments:
(i) Midas Hygiene Industries P. Ltd v. Sudhir Bhatia and others (2004) 3 SCC 90, and, in particular, paragraph 5 thereof to the effect that delay in bringing an action is not sufficient to refuse injunction.
(ii) M/s.Selvel Industries and another v. M/s.Om Plast https://www.mhc.tn.gov.in/judis 2/8 O.A.Nos.41 & 42 of 2022 (India), Notice of Motion (L) No.1434 of 2016 in Suit (L) No.439 of 2016, wherein, at paragraphs 45 and 46, the Bombay High Court discussed the meaning of the expressions “imitation” and “obvious imitation” and held that minor variations are not of relevance while deciding an application for design infringement.
(iii) Tapria Tools Limited v. Eastman Cast and Forge Limited 2004 (28) PTC 528 Bom., and, in particular, paragraphs 15 to 18 thereof, wherein the Court granted an order of interim injunction based on a registered design over adjustable wrenches.
(iv) Kent RO Systems Ltd & another v. Vikram Jeet & another, F.A.O. No.75 of 2019 & C.M.Nos.8780 – 8781 / 2019, ex parte order dated 26.02.2019.
5. The Applicants also contended that the Respondent did not provide any particulars with regard to the design or patent registration in respect of their products. In conclusion, the Applicants stated that the Respondent has not filed either opposition or cancellation proceedings and that, in the facts and circumstances, the Applicants are entitled to interim relief.
6. On the contrary, the Respondent submitted that the Applicants are https://www.mhc.tn.gov.in/judis 3/8 O.A.Nos.41 & 42 of 2022 not entitled to interim relief because these are designs which were already in the market. By relying upon Section 4 of the Designs Act, the Respondent contended that a design which is not new or original or which has been disclosed to the public previously or is not significantly distinguishable from known designs should not be registered. By drawing reference to Section 7 of the Designs Act, the Respondent contended that the opportunity to oppose arises in the context of the Designs Act only after registration. With reference to Section 22(3) of the above mentioned enactment, it was contended that any ground which may be taken in proceedings for cancellation may be taken in opposition to a suit for alleged design infringement.
7. The Respondent next referred to the volume of documents filed in defence and contended that several brochures pertaining to operating tables of numerous manufacturers are included therein. With specific reference to the brochure of a joint stock company called Maquet, the Respondent contended that the said company is one of the leading global manufacturers. The Respondent also referred to the operating tables of Palakkad Surgical Industries Private Limited and, in particular, the operating tables for use in orthopaedic surgery. On the basis of these documents, the Respondent contended that operating tables with accessories have been used for decades, https://www.mhc.tn.gov.in/judis 4/8 O.A.Nos.41 & 42 of 2022 including for performing orthopaedic surgeries. Therefore, it was contended that the Applicants cannot claim monopoly rights over designs which are not novel and have been in use for at least two decades. The Respondent also contended that both the operating table and the accessories thereto play a functional role and that such functional role decides the placement of such accessories.
8. Upon considering the rival contentions, the question that arises for consideration is whether the Applicants are entitled to the relief of interim injunction at this juncture. The Applicants have obtained the design registrations between October,2020 and September, 2021. The Respondent has placed documents for the consideration of this Court, which indicate prima facie that operating tables with accessories which look similar to those used by the Respondent have been in use for a long period of time. Although the Applicants relied on the second Applicant's annual turn over certificate, the said certificate is for the period commencing from the financial year 2014 – 2015 and extending up to the financial year 2020 – 2021. Therefore, the turn over certificate is not indicative of the turn over generated by the operating tables or accessories over which the Applicants claim a registered design. At best, it is indicative of the length of time over which the second Applicant has carried on https://www.mhc.tn.gov.in/judis 5/8 O.A.Nos.41 & 42 of 2022 business. In addition, even for the financial year 2020-21, the Applicants have not provided a break-up of the turn over from the operating tables and accessories in respect of which design registrations were obtained.
9. When the above facts are considered cumulatively, the balance of convenience is clearly not in favour of granting injunctive relief especially bearing in mind the fact that the Respondent has been in business for a reasonable length of time as evidenced by the invoice dated 15.01.2015. At the same time, in view of the fact that the Applicants have design registrations in respect of four designs, the equities should be balanced so as to facilitate the provision of relief to the Applicants in course of final disposal if the Applicants succeed. Towards such end, the Respondent shall maintain accounts in relation to the operating tables and accessories, which are similar and correspond to the operating tables and accessories over which the Applicants have registered designs. Such accounts shall be submitted to this Court on quarterly basis. The said accounts shall indicate both turn over from the sale of such products and the profit margin.
10. The Original Application Nos.41 & 42 of 2022 for interim relief https://www.mhc.tn.gov.in/judis 6/8 O.A.Nos.41 & 42 of 2022 are disposed of on the above terms. The Respondent is directed to file its written statement along with counter claim, if any, within two weeks. At the next hearing, further directions will be issued for the expeditious disposal of the suit.
14.03.2022 rrg SENTHILKUMAR RAMAMOORTHY J., https://www.mhc.tn.gov.in/judis 7/8 O.A.Nos.41 & 42 of 2022 rrg O.A.No.41 & 42 of 2022 14.03.2022 https://www.mhc.tn.gov.in/judis 8/8