Gujarat High Court
Symphony Ltd vs Wim Plast Ltd & 2 on 5 May, 2015
Author: S.R.Brahmbhatt
Bench: S.R.Brahmbhatt
O/CS/2/2015 ORDER
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
CIVIL SUITS NO. 2 of 2015
==========================================================
SYMPHONY LTD....Plaintiff(s)
Versus
WIM PLAST LTD & 2....Defendant(s)
==========================================================
Appearance:
BY POST for the Plaintiff(s) No. 1
MR MIHIR J. THAKORE, SR. COUNSEL WITH MR Y.J. TRIVEDI, ADVOCATE WITH MR.
HARSHIT S.TOLIA, ADVOCATE WITH MR JATIN Y TRIVEDI, ADVOCATE WITH TEJAS
S TRIVEDI, ADVOCATE for the Plaintiff(s) No. 1
MR SAURABH SOPARKAR, SR. COUNSEL WITH MRS VD NANAVATI, ADVOCATE
WITH MR DEVANG NANAVATI, ADVOCATE WITH MS PRACHITI SHAH, ADVOCATE
WITH RISITH BHATT, ADVOCATE WITH GAUTAM PANCHAL, ADVOCATE for the
Defendant(s) No. 1
MR SI NANAVATI, SR. ADVOCATE WITH RASHESH SANJANWALA, SR. ADVOCATE
WITH MR DIGANT B KAKKAD, ADVOCATE WITH MR SAMRAT N MEHTA, ADVOCATE
WITH MR NISIDH PATEL, ADVOCATE for the Defendant(s) No. 2
==========================================================
CORAM: HONOURABLE MR.JUSTICE
S.R.BRAHMBHATT
Date : 05/05/2015
ORAL ORDER
1. The plaintiff appears to have originally preferred a suit being Civil Suit No.566 of 2015 in the City Civil Court at Ahmedabad for permanent injunction against the piracy of registered design under Section-22 of the Designs Act, 2000 and for recovery of damages from the defendants and as there was no ex-parte order granted in favour of the plaintiff, they have preferred Special Civil Application No.4624 of 2015, wherein, initially this Court on 17.03.2015, passed an order issuing notice and making it returnable on 23.03.2015, whereby, an ad-interim relief came to be granted. The respondents were restrained from marketing, selling, advertising Page 1 of 33 O/CS/2/2015 ORDER directly and/or indirectly dealing in 'Air Cooler', which have the same design, shape, configuration and design identical too and/or imitate of the petitioner's design bearing No.194305; 198241; 227069; 221068. On 26.03.2015, in the proceedings of Special Civil Application No.4624 of 2015, the Court passed an order taking note of the fact that in view of the Provision of Sub-section (4) of Section-22 of the Designs Act,2000, the suit is required to be transferred by the trial court to this Court and there was consensus between the parties. The following order was passed by this Court:-
"1. It is an admitted position between the parties that on 25.3.2015, before the trial court both the parties have agreed that in view of sub-section (4) of section 22 of the Designs Act, 2000, the suit is required to be transferred by the trial court to the High Court for decision and, accordingly, the trial court has lost jurisdiction to adjudicate the suit. It is also common ground between the parties that the trial court has passed an order in view of the aforesaid consensus between the parties.
2. In the aforesaid premises and considering the urgency of the matter, the trial court is directed to forthwith send the record and proceedings of Civil Suit No.566 of 2015 to the High Court. Upon such papers being received, the Registry of the High Court is directed to forthwith number the suit and place the same before the appropriate Bench for hearing. The ad-interim relief granted vide order dated 17.3.2015 passed by this court shall continue till the suit is first listed before the appropriate Bench. It is clarified that it is only the ad-interim relief which has been extended and the learned counsel for the respective parties have not been heard on the merits of the case.
3. In the light of the fact that the matter stands transferred to this court by virtue of the provisions of sub- section (4) of section 22 of the Designs Act, this petition is disposed of.
4. The learned counsel for the respective parties assure the court that they would cooperate in the hearing of the matter before the appropriate Bench.
5. Registry to forthwith communicate this order to the trial court."Page 2 of 33
O/CS/2/2015 ORDER
2. The said ad-interim relief came to be granted and ordered to be extended time and again during the hearing of the suit for interim-relief. The Court while adjourning the matter, has infact recorded unequivocally in its order that the hearing is going on and hence, ad-interim relief which came to be granted earlier is to be continued as requested by the counsels as the matter is going on day-to-day basis and counsels were agreed in respect of grant of interim-relief and justification thereof and not grant vacation of interim-relief.
3. The facts, in brief as required to be narrated for apprehending the controversy, are set out as under:-
3.1 The plaintiff is a Public Limited Company and the defendant no.1 is also a Public Limited Company duly registered and carrying on its respective business. The defendant no.2 is said to be a firm and sister concern of the defendant no.1 and the defendant no.3 appears to be a dealer appointed by the defendant in Ahmedabad territory. The defendants' products are being sold under the mark 'CELLO'. The plaintiff is a manufacturing and selling of Air Cooler.
The plaintiff is operating under the trade-name of 'Symphony' and the turn over of the plaintiff is claimed to be around Rs.450 crores for the financial year 2013-14.
3.2 The plaintiff's Director got designs of Cooler registered under the Provisions of Designs Act. The details whereof are mentioned in Para-11 of the plaint which read as under:-
Name of the Design Registration Date of Registration Product No. Diet 221068 04/02/09 Hi-Cool 194305 19/01/2004 Winter 198241 20/01/2005 Page 3 of 33 O/CS/2/2015 ORDER Sumo 227069 04/02/10 3.3 The products for which the registration is said to have expired are covered by the extension which is not likely to be over by in other-words the expiry of registration would reads as under:-
Name of the Expiry Date
Product
Diet 2024
Hi-Cool 2019
Winter 2020
Sumo 2025
3.4 At a given point of time, there was a contention raised on behalf of the defendants that there is no clear registration. The extension coming for its two products viz.Hi-Cool and Winter is concerned, which came to be refuted by the plaintiff by inviting the Court's attention to Page-581. It was further submitted that as per Provisions of Section-12(2), the extension is to be given and its merely a formality as the allowing of the application would clear indicate, as nothing turns on this aspect, as the application is already made for product 'Winter' is concerned.
3.5 The plaintiff has averred in the memo of plaint that they are pioneers in manufacturing of the plastic body of air coolers and water heaters. The ISO certificate is relied upon on this basis. It is contended that they have a right to guard their designs against any piracy whatsoever. The Director has assigned its right to the company and thus, now the company becomes entitled to guard the designs against any piracy. It is averred in the memo of the plaint in para-20 that the plaintiff in the month of March, 2015 came to know through its marketing people that defendant no.1 published Page 4 of 33 O/CS/2/2015 ORDER one brochure with the products having similar shape, configuration and replication of the all above four designs which are registered in favour of the plaintiff. The plaintiff on inquiring came to know that the defendant has not started selling of those products, but they are intended to be sold the products in the market and advertisement campaign had started. This rendered the causes for qua-timet action in para-22 of the plaint. The plaintiff has averred that they could get the records of Registrar of Trade Mark that the defendant no.2 is a firm who has applied or got registered its mark 'CELLO' before the concern authority and defendant no.1 is selling its products under the brand name CELLO and defendant nos.2 and 3 are selling their products jointly. From the website of defendant no.1, the list of distributors shows the distributors of Ahmedabad being a defendant no.3, which indicate that the defendant no.3 is the sole distributor of the defendant no.1. That all the defendants are intended to sell the products which is essentially based upon the designs or to say the replication of the designs of the present plaintiff. This furnishes the cause of action to the plaintiff to bring the inaction in the present firm which came to be originally filed in the City Civil Court being Civil Suit No.566 of 2015 which came to be transferred to this Court as per order passed by this Court, as mentioned above.
4. The learned counsel appearing for the plaintiff invited attention of the Court to the definition of 'Design' and contended that the definition of design indicate that the design has to be original and new and it should be also qualified to be not the design which has been earlier produced/reproduced or insert contents based of the definition of design. The design has to be original and new and therefore, when the fact is established that the plaintiff's firm have registered design of four products, which has been Page 5 of 33 O/CS/2/2015 ORDER discussed in the plaint, then it could be well said that the designs which have been registered on behalf of the plaintiff, the registration will have enured in favour of the plaintiff are the designs which have to be drawn either imitation or prior publication for getting means from the charge of piracy which is sought to be made out by the plaintiff against the defendant in this proceedings.
5. The learned counsel for the plaintiff invited attention of this Court to the fact that the plaintiff company is in the marketing or selling of water coolers and the plaintiff is said to be a Pioneer in establishing or marketing or producing or manufacturing the plastic body air cooler as well as water heaters and therefore, the designs were registered and the registration of the designs established all the registrations being in vogue, which is not disputed by any one. The plaintiff's designs are not shown to be in any manner an imitation and the imitation then the defendants were under obligation to justify their designs based thereupon. In fact, the registration of the defendants' designs which are not visible contending in major difference than those designs of the plaintiff. That even if they are registered as it is in the present case then the registration would not debarred the present plaintiff from taking action for piracy as well as damages against the defendants.
6. The learned counsel appearing for the plaintiff submitted that the cause of action in the instant case is made out from the facts which have been narrated in the plaint. The facts narrated in the plaint would indicate that the defendant nos.1 and 2 are jointly manufacturing the products and the defendant no.3 is the sole distributor. This fact of defendant no.3 being a sole distributor of the defendants no.1 and 2 is established from the facts gathered Page 6 of 33 O/CS/2/2015 ORDER from the website of defendant no.1. The defendant no.1's website has a link which provides the names of distributors. The name of defendant no.3 is shown as the sole distributor and on that basis, the qua-timet action would absolutely available for bringing action and the suit is based thereupon. On that facts, it was submitted that the plaintiff has a cause of action and apprehension which is sought to be made of no consequence is a genuine apprehension, as qua-timet action is pre-step. The action in point of time, as the relevant and contending facts narrated in the plaint are supported the documentary evidence, which would go to show that they are infact marketing with the products which based upon the designs of the plaintiff.
7. The learned counsel for the plaintiff further submitted that the defendants have merely raised contention qua the lack of jurisdiction. But, in the entire proceedings, till date they have not shown that they are not intended to sell their products in Ahmedabad, so as to justify their contention in respect of the jurisdiction, on the contrary, the relevant documents like brochure, his advertisement in launching of the products may be in Bhopal.
The fact remains to be noted that in denial to the allegation or contention of the plaintiff that the product is likely to be launching in Ahmedabad market, qua-timet action sought to be taken is not maintainable and it cannot be said on the ground that lack of cause of action or on the ground that the cause of action is available only in Mumbai as the defendants are the Mumbai based company.
8. The following submissions are placed on record by the plaintiff, which reads as under:-
Gist of Submissions by Plaintiff Page 7 of 33 O/CS/2/2015 ORDER ➢ The suit is filed by the plaintiff for infringement of its registered designs and passing off against the defendants. Plaintiff is registered owner of designs as stated in Para 11 of the plaint. The comparison of the registered design of the plaintiff vis-à-vis infringing designs pirated by defendant is stated at Page 170 to
173.
The chart of different registered designs, its picture and the piracy done by the defendant is stated above:
2. DETAILS OF PLAINTIFF'S REGISTERED DESIGN Name Design Date of All side Sales Comparison of Of Registratio Registration view of figures plaintiff's product Product n No design (in lacs) with defendant's Pages product Diet 221068 04/02/2009 Pg Nos 36, 276 Diet V/S Ever cool (@ pg 83) 85 - 90 (@ pg 99) (@ pg 172) Hi-Cool 194305 19/01/2004 Pg Nos 15,254 Hi-Cool V/S Ultra (@ pg 45) 47 - 52 (@pg
101) Cool(@ pg 173) Winter 198241 20/01/2005 Pg Nos 23,841 Winter V/S Mega (@ pg 60) 62 - 67 (@ pg 98) Cool(@ pg 170) Sumo 227069 04/02/2010 Pg Nos 23,788 Sumo V/S Maxi (@ pg 74) 76 - 81 (@pg Cool (@ pg 171)
100) Statement of Expenses incurred by the plaintiff for promotion of the above said products are produced at Page No. 102.
Invoices of plaintiff's products are produced from Page Nos. 103-120 For Comparison of plaintiff's product as well as defendant's product
--< Plaintiff's brochure is produced at Page Nos. 129-155
--< Defendant's brochure is produced at page Nos. 121-128 History of plaintiff DATES EVENTS 05/02/1988 Plaintiff company was incorporated as private limited under the name of Sanskrut Comfort Systems Pvt. Ltd 2.11.1992 The Plaintiff company was subsequently converted into a public limited company under the name Sanskrut Comfort Systems Ltd.
1994 Plaintiff company came out with public issue 16/01/1995 The Plaintiff company's name was changed to Symphony Comfort Systems Ltd 11/03/2010 The petitioner no.1 company's name changed to Symphony Ltd.
3. The allegation of the plaintiff that the defendants have recently introduced product air coolers which are having design or shape or configuration of article amount to a piracy, therefore infringement as per section-22 of the design act and ask for injunction and plaintiff being prior user with unuiqe design of the air cooler which is popular and defendant with similar design likely to create passing off, hence injunction is prayed for.
Page 8 of 33O/CS/2/2015 ORDER
4. The defense raised by defendants are as under :-
(i) That the design of the plaintiff's air cooler are not new and original hence defense raised as per the provision of section- 22 read with section-19 of the design act.
(ii) The two cause of action infringement of design and passing-
off are not tenable because it is composite suit of the two different cause of actions hence not maintainable
(iii) No jurisdiction of the court to entertain the suit
(iv) The defendant is also registered owner of the design and therefore not entitled to filed the present suit against the defendant?
(v) Plaintiff has suppressed the material facts and not entitled for relief ?
(vi) The design of the defendants are different hence not infringement?
(i) That the design of the plaintiff's air cooler are not new and original hence defense raised as per the provision of section- 22 read with section-19 of the design act :-
➔ If we take above contentions the plaintiffs have stated that the defendant have not produced any material to establish that design registered in favour of the plaintiffs are not registerable and required to cancel as per section-19 of the design act and material produced by the defendant does not established that the said designs are similar and prior published then the date of registration of designs in the favour of plaintiff. Provisions of the Design Act :-
➔ Sec. 2 (d) - definition of "design", Sec-2 (g) - definition of "original". Sec-4 - Prohibition of registration of certain design, Sec-5- Application for registration of design. Sec-11 - Copyright on registration. Sec-12- Restoration of lapse design. Sec-19 - Cancellation of registration. Sec-22 Piracy of registered design. ➔ Considering the above provisions of law the plaintiffs registration of designs are prior then the registered design of the defendants and have acquired substantial sale in the market, whereas the defendants are recently entering in the market as per their own document i.e. invoices are produced at page no.282 and 289, amongst three invoice page no.282 and 284 are same invoices which are in favour of chimanlal and one invoice produced at page no.283 in favour of mahalaxmi electronics nagpur for only one piece MAXI COOL for one design. Who are the distributor of the defendants. and the invoices of chimanlal for MAXI COOL have not sold the goods to the consumer prior to the suit as per the document produced at page no.389. These established that the plaintiff designs are prior in the market and defendant have recently entered in the market or likelihood to entering in the market on the date of suit and as per the document of the defendant at page no.307 defendants registered designs are dated 17/10/2014, which is subsequent to the plaintiff's registered design therefore defendant cannot claim to be of his design as original and new not this documents of the defendants proved that the plaintiff designs are not new and original and therefore the Page 9 of 33 O/CS/2/2015 ORDER contention of defendants is not maintainable. ➔ The other designs produced by the defendants at page no.353 and 357 bajaj does not establish that the said designs are launched by the Bajaj prior to the date of registration in favour plaintiff.
(ii) The two cause of action infringement of design and passing-
off are not tenable because it is composite suit of the two different cause of actions hence not maintainable:-
a. Combined suit not maintainable.
Defendant raises the defence that since the suit is in combination of two causes of action i.e. infringement of the design and passing off, the same is not maintainable. Reliance is placed on the FB judgment of Delhi High Court reported at 2013 (55) PTC 1 case of Micolube.
Reply-
• However, the above judgment is based on the misreading of judgment of the Hon'ble Supreme Court in the case of Dabar India Ltd. V/s K.R. Industries.
• However, the said question of law is explained and clarified in by the Hon'ble Supreme Court in the case of Paragon Rubber, reported at 2013 (14) SCALE 273 to the effect that if the Court does have territorial jurisdiction for all different causes of action, then the combined suit is maintainable. • Above judgment of Hon'ble Supreme Court in the case of Paragph Rubber (Supra) explains the earlier judgment of the Hon'ble Supreme Court in the case of Dabur (supra). • Date of decision of Delhi (FB) judgment in the case of Micolube India Limited V/s. Rakesh Kumar Trading is of 15.05.2013. The judgment of the Hon'ble Supreme Court in the case of Paragon (supra) is of 29th November, 2013..
• The ratio of the Delhi (FB) to the effect that the combined suit is not maintainable, is now no more a good law in view of above.
(iii) No jurisdiction of the court to entertain the suit :-
The plaintiffs suit is on presumption as mentioned in para-20 at page no.14 where the defendant is likely to enter in the market that means it is qua-timet action and the documents produced further established that the defendant no.3 is the distributor of the defendant and document established that defendant have after suit and started marketing and selling of the its product in the Ahmedabad, hence this Hon'ble Court has jurisdiction. ➔ As per Sec.20 of CPC, this court has territorial jurisdiction for both cause of action.
➔ 2006 (32) PTC 301 case of Pfizer Para 3 and 10 onwards. ➔ In the plaint, defendant No.3 is carrying on business activity within territorial jurisdiction of this Hon'ble Court. ➔ In affidavit reply, the defendant no where stated that they are not marketing the product in the city of Ahmedabad. ➔ Likelihood to launch the products, therefore, qua timet action arose.
Following judgment relied by the plaintiff :Page 10 of 33
O/CS/2/2015 ORDER 2006 (32) PTC 301 case of Pfizer, Para-3 and 10 onwards.
(iv) The defendant is also registered owner of the design and therefore not entitled to filed the present suit against the defendant?
➔ On these issue plaintiff have relied on the full bench judgment of the delhi high court, Majority view which is further clarified by the Bombay High Court. and therefore above objection is no maintainable.
➔ Another preliminary issues raised by defendant's advocate is that whether suit for infringement is maintainable against the registered owner? For which, reliance was placed by defendant's advocate on two judgments -
(i) Minority view of Delhi Court - Para 7 onwards.
(ii) Majority view - Para 5 to 10 and para 15 onwards.
➔ If somebody made a design which can distinguish his design from other design, then it is a novelty but its design not distinguish design from other design, then it cannot be said a novelty. So, two tests have to pass, it is novel and it can distinguish the product. ➔ AIR 2014 Cal 122 Calcutta Kentro case - Para 9 onwards. ➔ 2014 JX (Mah) 622 Bombay High Court - Para 10 onwards and para 19.
➔ It is also argued that prior proprietor i.e. plaintiff cannot have right of Sec.22 of Designs Act but subsequent proprietor i.e. defendant can avail the right of Sec.22 whether it is permissible.
➔ Madras High Court - AIR 2013 (54) PTC 499. (v) Plaintiff has suppressed the material facts and not entitled for relief ? ➔ The statement made by the plaintiffs that the defendant is likely to
launch the product and thereby alleged that defendants invoices prior to the suit establishes that plaintiff was aware of defendant's product in the market and have made false allegation and suppressed the true facts, this argument is broken by the plaintiff that the invoices produced at 282 to 289 does not establish the allegation made by the defendant and therefore charge against the plaintiff for suppression is not maintainable.
➔ Reply by defendant.
Para 5(c) Page 251 (stated about suppression).
➔ Page 282 invoices of Product Maxi Cool.
1st invoice of 28/02/2015 where suit has been filed on 19/03/2015. ➔ Page 284 same invoices produced by defendant. ➔ Page 283 - 02/03/2015 in favour of Laxmi for the product Maxi Cool.
➔ Both invoices are of dealer not of consumer.
(vi) The design of the defendants are different hence not infringement?
➔ Regarding these issue plaintiffs have produced comparative chart as stated above and as per the judgment of Gujarat High Court in case of Troika Pharma Ltd. V/s. Pro Laboratories (P) Ltd of Justice K.A.Puj, in para no.2,3,23,29,30 and 31 have discussed, Page 11 of 33 O/CS/2/2015 ORDER that the exact copy is not required but overall essential features of the design is adopted by the defendant by making cosmetic change, defendant cannot come out from alleged allegation of the infringement. The same thing further considered by our high court in case of Smit parmar V/s. Paresh D. Patel, Single judge Abhilasha kumara in and Division bench Judgment of Shri Jayant Patel as mentioned as under :-
"Further, as per the judgment of Smit N. Parmar vs. Paresh D. Patel & Anr. (Gujarat High Court-Division Bench), "if one is contending by way of defence that the registration was not available for one reason or another, the burden would be upon the party so asserting". It is further observed that "..... ...In our view, unless a full-fledged fact finding inquiry is undertaken and parties are allowed to lead the evidence, it is not possible to conclude that there was publication of the design as required under the Act prohibiting the registration of the design."
Infringement of Design Sec.22 provides that "any person" applies to any article the registered design of the plaintiff which is "fraudulent" or "obvious imitation", then the same is infringement of the registered design of the plaintiff. Thus, the test for the infringement of designs are essentially "obvious imitation". Further, "any person" includes even registered owner of the design.
Now, in the present case, the defendant has not put any material to discharge the above burden. At present, the registered design of the plaintiff has to be believed as genuine and registerable.
Validity of the registered design of defendant:-
A. Defendant pleads registration of its design as a defence. Now, that defence is per-se not tenable.
B. If the registered designs of the defendant are similar to the registered design of the plaintiff, then the same would apparently be hit by the provisions of Sec.4(a), (b) and (c) and Sec.19(1)(a)(b)
(c)(d) of the Design Act.
C. Without prejudice, if the validity of the registered design of the plaintiff is taken as a defence under Sec. 22(3) of the Design Act, then certainly, the validity of the registered design of the defendant can be challenged in the suit proceedings. Therefore, if the designs of the defendant are found to be similar with that of the plaintiff, no further defence including of registration of the design by the defendant is available to the defendant.
Conclusion on validity of registered design.
D. In conclusion,
(a) for the defence of Sec. 22(3) i.e. validity of plaintiff's registered designs, defendant has to discharge the burden of Page 12 of 33 O/CS/2/2015 ORDER prior publication/ availability of similar designs prior to the date of application to register the design of the plaintiff.
(b) However, if defendant's registered designs are found to be similar with the registered designs of the plaintiff, then, no defence of whatsoever nature is available to the defendant including its having registration of designs.
Issue on Passing Off :-
--> The plaintiffs are prior adopter, prior registered proprietor of design and have sold the goods in the market, its sales turn over runs in crore and rupees and sales promotional expenses also in lacs or rupees. Where the defendant is new cumor to take the advantage of reputation and association of the plaintiff's product and thereby committing act of passing off. For this, principle laid down by supreme court in 2002 SCC 65 Muktjeevan case Para- 10,11,13 and 14, in para-14 it was held that "once case of passing of made out practice is generally to grant ex-parte injunction followed by appointment of court commissioner if necessary."
On the above principle defendant have not given explanation why they have taken various features of plaintiff's registered design for their air-cooler therefore, it is clear case of passing off hence injunction prayed may be granted.
Balance of Convenience :-
--> The defendant is new in the market where the plaintiff is much prior then the defendant and have established the good market and by the change of this designs defendant not likely to suffer great irreparable loss because they have just entered in the market, therefore balance of convenience in the favour plaintiff and injunction granted by this is continue till today in the interest of justice.
Judgments cited by the plaintiff :-
(1) 2012 AIJ_GJ 227392 Paresh D. Patel V/s. Smit N. parmar Para-49 :- Designs judged by the eye by placing the design against each other, therefore eye of common man, Para-50 :- For determining whether the two designs are similar it is not necessary that they should exactly the same. Main consideration would be whether broad feature of shape, configuration, patent etc. are same or nearly or substantially the same.
Para-60 :- In considering "appeal to eye" it is the eye of the customer that is relevant. "The person higher in the services of plaintiff would be there customers and visually appeal in the new design would obviously strike the customers. Para-63 :- Defendant took defenses under section-19 in the written statement. Need not defense under section-19, need not gone into at this stage (interim injunction stage) but to be looked into at final hearing stage (during the trial).
Para-65 :- when there is similarity in design and know coston
Page 13 of 33
O/CS/2/2015 ORDER
material on record to indicate that the defendant has been using the designs prior to date of application by the plaintiffs - strong prima facie case in favour plaintiff to grant temporary injunction. Para-66 :- Balance of convenience in favour of plaintiff as would suffer irreparable loss to the business and goodwill in the market if the design is not protected. As against this no prejudice to defendant if an injunction is granted as defendant is free to use any other design than the registered design of plaintiff. Para-67 :- Application allowed, temporary injunction granted. (2) OJ APPEAL No.41 of 2012 Smit N. Parmar V/s. Paresh D Patel Para-7 :- Under section-2(d), test is appeal to eye. "when it is an alteration or the specific mechanical devise, which appeal to an eye even by the external appearance, it cannot be said it is no design, which is registrable under act.
Para-9 :- When the design is registered by the registry who is considered as an expert in the field normally perception would be that the registration is proper. "If one is contending by way of defence that the registration was not available for one reason or another, the burden would be upon the party so asserting. If the defendant is raising the contention of prior publication. The burden would be open the defendant. No material is produced by the defendants for which purpose." "In our view, unless a full- fledged fact finding inquiry is undertaken and parties are allowed to lead the evidence, it is not possible to conclude that there was publication of the design as required under the Act prohibiting the registration of the design." "if prima facie once the design is registered and no reliable material has come on record showing the publication by making it known to the public at large or the consumers of an article. It cannot be said that there was publication of an article with new design prohibiting the registration of the design on the date when the registration was applied."
(3) 2008 (10) SCC 657 Bharat Glass Tube Ltd. V/s. Vopal Glass Works Limited Para-29 and 32 :- If the defendant contets that plaintiff registered design are "not new or original", burden lies on the defendant to prove it.
If no material is provided, the defendants defense that plaintiff registered designs are "not new or original" is not tenable. (4) 2008 (3) GLR 2635 Para-2,3,29,30 and 31 Para- 29 :- though english alphabet "D" is known when applied on the tablet then it is novelty - design is registrable. Para-30 :- without going into controversy as to whether design applied to article by the defendant prior to or subsequent to ad- interim order, interim relief consider and granted. Plaintiffs registration of designs are given importance. Prima-facie case, balance of convenience, irreparable loss found to be in existence in favour plaintiff.
(5) 2013 (55) PTC 61 [FB] (Majority View) Para-34-(1):- action of infringement of design is also maintainable against another registered proprietor of design. Para-34-(2) :- Suit for infringement of the design and passing of Page 14 of 33 O/CS/2/2015 ORDER though maintainable not as comosit suit but as separate suit. Note-1 :- above view is not a good law in view of judgment of supreme court in case of Paragon rubber reported at 2013 (14) SCALE 273, para 18 and 19.
Note -2 :- above full bench judgment of delhi high court is based on misleading of the judgment of the apex court in case of Dabur India Ltd. V/s. K.R. Industries reported at 2008 (10) SCC 595 as referred in para-24.3 of above judgment however said judgment of Dabur (SUPRA) is further explained by the Hon'ble apex court in above case of paragon rubber suppra.
(6) 2014 (0) AIJ_MH 1667728 Para-15 & 18,19 & 20, 21 and 22 :- suit for Infringement of design maintainable against "any person which includes another registered proprietor of the design also". Relies on Full bench judgment of delhi high court (Majority View) reported in 2013 (55) PTC 61.
Para-25 :- "obvious imitation" as sated under section-22 of the design act, test of - doesnot man duplication may not be exact replica - essential part if copied it is sufficient for infringement. The appeal to the eye is the eye of purchaser - obvious meaning of
-
Para-26,27 and 28 :- Test for similarity Para-32 :- Similarity examined by court (7) 2002 (3) SCC page 65 (case of muktjivan) Para-14 and 16 :- if defendant is about to enter and just entered the market injunction should be granted.
In case of passing off of in intellectual property, wherein there is chance of confusion and plaintiff is prior in adoption injunction must follow.
Balance of convenience and irreparable loss are in favour plaintiff as compared to defendant as defendant can sell the product (by changing the design).
(8) 1990 suppl SCC 727
Para-9 :- when defendant is as not entered the market or about
to enter the market or recently enter the market consideration is different and strong case to grant interim injunction.
(9) 2004 (6) SCC 145
Para-34 :- Balance of convenience and irreparable loss in favour
plaintiff as need to protect intellectual property. (10) 2004 (3) SCC 90 Para-5 :- when there is statutory right injunction must follow. (11) 2006 (32) PTC 301 (Pfizer) Para-12 :- The other aspect of the matter is that a threat of selling the offending goods in Delhi would in itself confer jurisdiction in the courts in Delhi to entertain a suit claiming an injunction in respect thereof.
2009 (40) PTC 159 (Gujarat) Para-18 (18.1 to 18.4 important) (12) 1972 RPC 103 Page-104 :- Appeal to the eyes that is eye of consumer. What is design etc. Page-107 :- (Line no.30 - 45) Page-108 :- (Line no.5 - 30) Page-109 :- (Line no.15 - 45) Page 15 of 33 O/CS/2/2015 ORDER Page-110 :- (Line no.0 - 35) Page-112 :- (Line no.20 - 45) Page-115 :- (Line no.15 - 25) Page-117 :- (Line no.35 - 40) Page-118 :- (Line no.35) (13) 1935 (52) RPC 126 Page No.132 to 133 (14) 1889 (43) RPC 554 Page Nos.558-559
9. The learned counsel for the defendants submitted that the registration of their designs cannot be said to be of no consequence and as such on the face of it, it cannot be said that the allegation of piracy is baseless and requires to be rejected. The defendants raised the preliminary contention. The written-submission also reads as under:-
Written Submissions in injunction application on behalf of the defendants ➢ The defendant have raised following preliminary contentions.
i.Whether the suit is maintainable? (see 2 Preliminary Issues) ii. Whether the products i.e. Air coolers of Plaintiff are Original and novel?
iii. Can Quia Timet action be initiated when Defendants have already entered into market before the filing of the suit? iii. Whether upon the facts and circumstances of this case the balance of convenience or prima facie case are in favour of the plaintiff to be granted injunction as prayed for, when both the plaintiff and defendants are registered design holders?
(I) PRELIMINARY ISSUES:-
(1) A composite Suit for Infringement and Passing off
of Design is not Maintainable.
• This Hon'ble Court has no jurisdiction to try and entertain the present suit under Section 22 of The Act read with Section 20 of the Code of Civil Procedure, 1908 as a composite suit. The defendants submit that the present suit is filed by the Plaintiff for alleged infringement and alleged passing off action against the Defendants as a Composite Suit. The Defendants submit that the cause of action of infringement under the Act and the cause of passing off action, being a common law remedy are totally distinct and the jurisdiction to entertain such cause of action lie separately. Therefore, both the cause of action cannot be Page 16 of 33 O/CS/2/2015 ORDER combined in one suit. Hence, the present suit is not maintainable in law. In any case, the suit for infringement is not maintainable as the part of cause of action has arisen in the territory of Ahmedabad Courts. Similarly, for the same reason, no passing off action can lie here. It is submitted that mere apprehension of sale of goods in Ahmedabad cannot give rise to any cause of action in Ahmedabad. Cause of action for passing off can arise only on actual sale of goods and not before that.
Refer:
1.2006 (9) SCC41 (2) No Suit for Piracy or Infringement shall lie against the other Registered Design Holder by a Registered Design Holder:
• Defendant no.1 is the registered proprietor of the originators and conceivers of the novel design of its air coolers i.e. "Mega Cool", "Maxi Cool" and "Ultra Cool" models which are duly registered under the Design Act. One more is pending before the Controller of Patent and Design for registration.
Model Registered Date of Page No.
Design No. Registration
Maxi Cool 266766 17/10/2014 314
Mega Cool 266767 17/10/2014 307
Ultra Cool 266768 17/10/2014 321
Refer:
1. Micolube India Ltd. Vs. Rakesh Kumar trading as Saurabh Industries and Ors 2013 (55) PTC 1 [Del][FB] [Minority View-
Manmohan Singh, J]
2. Eagle Flask Industries Pvt. Ltd. Vs. Bon Jour International & Anr. 2011 (48) PTC 327 Referred in para-68 of Micolube.
3. Kent RO Systems Ltd. Vs. Sandeep Agasrwal 2014 (59) PTC 449 (Cal) (FB) (II) ON MERITS:-
(i) The Registered Design of the Plaintiff clearly shows that they have claimed novelty is only claimed qua the shape and configuration of the Air Cooler and for some models only qua surface pattern.
(ii) The defendants submit that the designs of Plaintiff are worngly registered and ought to have been removed as it is devoid of any originality or novelty.
(iii) As the Defendants are registered design holder, the inference from section 4 of the Design Act can be drawn that the Defendants have passed test of the said section for the purpose of registration. The same is produced below for ready reference:Page 17 of 33
O/CS/2/2015 ORDER 4. A design which (a) is not new or original; or
(b) has been disclosed to the public anywhere in India or inn 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; or
(c) is not significantly distinguishable from known designs or combination of known designs; or
(d) comprises or contains scandalous or obscene matter shall not be registered.
(iv) Even otherwise the Designs of the Defendants are registered Designs.
(v) Designs of the Plaintiff are not Original and Novel.
a. The Defendants have produced the designs of the air coolers manufactured by various other manufacturers which itself manifests the commonality of the design; Plaintiff has failed to describe any novelty in shape or configuration of their air coolers and the shapes and configurations of the air coolers of the plaintiff's registered designs are not new, novel or unique and are common to trade;
b. The designs of the Plaintiff are not remarkably different or distinguished from those already available in the market and therefore known to the public at large;
c. The designs applied to its air coolers by the Plaintiff are mechanical in nature. The configurations of the Plaintiff's air coolers are nothing but the basic functional features which are default functional features of any air coolers available in the world.
d. Further, there are certain regulatory requirements that are required to be complied with by manufacturer viz.design, assembly of equipments etc. Evaporative Air Coolers (Desert Coolers) Specifications (Second Revision) issued by Bureau of Indian Standards is produced herewith by way of a separate list. [Page 292 to 306] *[At Page 298-299 Clause 5] e. The Plaintiff has also failed to show and refer in its registered design the originality of their product compared to the pre- existing products available in the market. The Plaintiff has failed to mention or claim any novelty in any proportion of shape or configuration of their air cooler.
f. The Design of the Plaintiff is merely a Trade Variant and Functional Design. The same lacks Novelty and Originality.
g. Further, without prejudice to the above contention, as far as the Test of Novelty is concerned, the same is to be decided by Page 18 of 33 O/CS/2/2015 ORDER the Trained Eye i.e. the Eye of an Expert. Since the Designs of the Plaintiff as well as of the Defendants are registered Designs, than at prima-facie stage, it can be concluded that both the designs are significantly and sufficiently distinguishable. h. The comparison of all models of Plaintiff and Defendant is produced by defendants.
[Page 328 to 335] i. The defendant is not required to Challenge the Validity of Plaintiff's Design before the Controller as the same has been challenged under section 22(4) of the Act read with Section 19 before this Hon'ble Court by the Defenant.
Refer:
1. B. Chawla & Sons Vs. Bright Auto Industries AIR 1981 DEL 95
2. Tarun Sethi & Ors. Vs. Vikas Budhiraja & Ors. C.S.(OS) 1841 of 2008 dated 6.8.2012 (Del)
3. Vs Corporation Vs. Innovative Techpack Ltd. 2014 SCC online Del 1678
4. Rotela Auto Components (P) Ltd. Vs. Jaspal Singh 2002 (24) PTC 449 (Del)
5. Kemp & Company Vs. Prima Plastics Ltd. 2000 (20) PTC 96 (Bom)
6. Steelbird Hi-tech India Ltd. Vs. SPS Gambhir & Ors. 2014 (58) PTC 428 (III) NO CAUSE OF ACTION-RE. QUIA TIMET ACTION:-
(i) The Plaintiff has incorrectly stated that the defendant has yet not entered into the market. The defendant has filed evidence on record that it had entered the market and sold goods worth more than Rs.400.00 lac in less than one month.
[See Page 911]. The same is also accepted by this Hon'ble Court [justice H.N. Devani] in application filed by the Plaintiff under Order 39 Rule 2A of Code of Civil Procedure. In this view of the matter, Quia Timet Suit itself is not maintainable.
(ii) Suit suffers from virus of "Suppressio veri and Suggestio falsi". The contention of Plaintiff qua "qua timet" action is misguiding and misleading, because the Defendants have already entered into market and sold more than 6000 units of air coolers in short span of about one month before the institution of the suit as stated above. (reference paragraph 5C and 14.19) To support the said contention, Defendants rely upon Certificate by Chartered Accountant for sales register (Reference: Page no.911 and Invoices of various models of air coolers (Page nos.282 to 289, 912) (IV) BALANCE OF CONVENIENCE, PRIMA FACIE CASE AND IRREPARABLE LOSS:-
(i) While when both the Plaintiff and Defendants are registered design holders, if the Defendants are injuncted at prima facie stage and ultimately, if the suit is dismissed then the Defendants are likely face irreparable loss.Page 19 of 33
O/CS/2/2015 ORDER
(ii) The Defendants are themselves a widely known brand and
has created its own goodwill and reputation in the market and
amongst the consumers and in absence of any infringement and
piracy, if the defendants are injuncted then it would result into
great stigma and affect its reputation.
(iii) In the alternative the Defendants submit that, they may be put to terms as may be deemed fit in the interest of justice by this Hon'ble Court and shall be permitted to sale its products i.e. subject Air Coolers.
(iv) It may be relevant to note that the plaintiff has made no submission on this issue at all.
Refer:
1. Transmission Corporation of A.P. Ltd. & Ors. Vs. M/s. Lanco Kondapalli Power Pvt. Ltd. 2006 (1) SCC 540.
2. Colgate Palmolive India Ltd. Vs. Hindustan Lever Ltd. 1999 (7) SCC 1
3. M.Gurudas Vs. Rasaranjan 2006 (8) SCC 367"
10. The court has considered the written-submissions and heard the learned counsel at length. The Court is called upon to examine these issues at this stage as the peculiar facts in the present case would indicate that the granting of or non-granting of interim relief will have far reaching repercussion of both the sides. Therefore, the Court permit the counsel to make submission at length and also permit them to place on record their gist of the submissions which have been reproduced herein above.
11. The few indisputable aspects emerging therefrom are required to be enlisted for apprehending controversy and adverting to the contentions of the counsel viz.
(i) The plaintiff's claim of registration of its design in respect of four products since it is the matter of fact which has not been denied and it could not be denied.
(ii) So far as the products called 'Winter' is concerned, the extension of registration is applied and looking to the Provisions of Page 20 of 33 O/CS/2/2015 ORDER Section-12(2) the application, if made in time for extension, is required to be granted in the matter of course. Therefore, this Court will have to accept this submission that the registration of all four products is enured as on date and the plaintiff is duly registered owner of those designs, which has remain undisputed.
(iii) The registration of the four products' design is ranging from the year 2004 to 2010 as regards this, defendants' registration of its own design is as recent as in the year 2014 to be more precise on 17/10/2014 and that too for three products known as 'Ever Cool'. They did not claim the registration of design.
(iv) The provisions of Designs Act provides for registration of design, as could be seen from the provisions of Sections-4, 5 and 6.
The close perusal of all the three sections, would indicate that it does not involve any invitation to public at large declaring tentative decision to register the same. The Controller is the sole authority who has to follow the norms prescribed for registration and therefore, Section-19 provides for cancellation of registration of design on the ground enumerated thereunder. Section-19 therefore is required to be reproduced herein below:-
Section-19 Cancellation of registration.-(1) 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 or any of the following grounds, namely:-
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country prior to the date of registration; or
(c) that the design is not a new or original design; or
(d) that the design is not registered under this Act; or
(e) that it is not a design as defined under clause (d) of section 2.
(2) An appeal shall lie from any order of the Controller under this section to the High Court, and the Controller may at Page 21 of 33 O/CS/2/2015 ORDER any time refer any such petition to the High Court, and the High Court shall decide any petition so referred.
(v) Section-22 under Chapter-V of the Designs Act provides for legal proceedings in respect of piracy of registered design and the registration of the design has maximum life of 15 years.
(vi) The plaintiff has produced on record photographs to indicate that the products are being launched and the defendants are putting their products in the market. The plaintiff has also produced a printout taken from the link of the defendant no.1's website to indicate that the defendant no.3 is the sole distributor.
Thus, attempted to say that in absence of denial to this aspect, it would be just and proper for the plaintiff to urge that they are intended to bring qua-timet action as the products are to be launched in Ahmedabad and the distributor is a sole distributor of all the products.
(vii) As regards this, it could well be said that the printout taken from the link available from the website of defendant did not reflect any terms that it is the defendant no.3, who is a distributor for the present product or that he is having product to be placed in the market.
(viii) The defendant no.1's website is interestingly known as "cello coolers.com" and the name is said to be suggestive and therefrom link is leading to the sole-distributor of Ahmedabad which is mentioned without any qualification and disqualification and therefore, it was urged that the plaintiff's action is an appropriate as the cause of action did exist in Ahmedabad.
(ix) The plaintiff's company have produced the documentary
Page 22 of 33
O/CS/2/2015 ORDER
evidences indicating the sale-figures of their products which is qua sizable as could been seen therefrom.
As regards this, the defendants' products is said to be only at the initial stage, as specific contention raised on behalf of the plaintiff qua repeated products of the same invoice, has remained unanswered.
(x) The defendants have submitted that the defendant nos.1 and 2, both are operating from Mumbai and therefore, the suit at Ahmedabad could not be maintainable, as Section-20 of the C.P.C. would govern the situation in absence of the specific provisions as they are available in Trade-mark and Copy-right Act. The specific contention was invited to the provision of Section 62 of the Copyright Act and Section-134 of the Trade Marks Act. In both these provisions existence is carved-out the rule inasmuch as the plaintiff resides and ordinarily carries on business, is also permitted to be a place of instituting the suit and action irrespective of provision of Section-20 of C.P.C., This particular provision is conspicuously absent, so far as the Design Act is concerned, and therefore, it could be well said that the provision of Section-20 of C.P.C. would have applicability ,which would require to the plaintiff to bring the present action only in Mumbai and not in Ahmedabad. This contention is sought to be supported on account of the decision rendered in the case of 'Dhodha House Vs. S.K. Maingi' reported in (2006) 9 SCC 41. The Court observed here that this is not combine causes aspect. It was purely on the aspect of the jurisdiction in light of Section-20 of C.P.C. and the provisions of Designs Act viz.Section-22(2). The said provision is reads as under:-
22. Piracy of registered design.-Page 23 of 33
O/CS/2/2015 ORDER
(1) XXX
(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 petition 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 sub-section shall be instituted in any court below the District Judge.
(xi) The plaintiff has placed on record the brochure of its own products and copies of the brochures of the defendants' products which is claimed to be based upon the imitation of their designs.
As regards this, the defendants have produced on record the brochures of their own products and mark features in both the products to establish the difference between the two designs to support their contention that the design cannot be said to be even a imitation of the plaintiff's designs.
(xii) The defendants have also placed on record the copies of the brochures of the other Cooler manufacturers to indicate that there are combine and large essential features produced and incorporated of designs, which has been admitted to establish the design of the plaintiff's, as such cannot be said to be an original and/or new design so as to intend to commit its exclusivity.
(xiii) The defendants have also placed on record the ISO standards prescribed by the Bureau of Indian Standards to indicate that the standard specification are prescribed and all water coolers Page 24 of 33 O/CS/2/2015 ORDER manufactured in accordance therewith are bound to have those features which would persuade this Court to hold that there exists no justification in the claim made by the plaintiff.
12. Against the backdrop of aforesaid factual aspects, the Court is called upon to examine the rival contentions of both the parties. The fact remains to be noted that in the instant case, is that of infringement and passing off both and therefore, in my view, it was very important for the Court to arrive at prima-facie conclusion qua similarity and dissimilarity of the designs of both the parties.
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 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 Page 25 of 33 O/CS/2/2015 ORDER 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, 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.
Page 26 of 33O/CS/2/2015 ORDER
15. The learned counsel for the defendants relied upon the decision rendered in the case of the 'M/s. B. Chawla and Sons Vs. M/s. Bright Auto Industries' reported in AIR 1981 Delhi 95 and submitted that amendment, insertion, addition and/or change in the pattern or shape to recognize the article would not end its originality. The emphasis placed upon the observations of the court in paras-10,11 and 12.
16. The learned counsel for the defendants also relied upon the Judgment of Delhi High Court in the case of 'V2 Corp & Anr. Vs. Innovative Techpack Limited' decided on September 22, 2014 in I.A. No.14725 of 2014 and allied matter and placed reliance upon Para-33 of the said judgment.
17. The learned counsel for the defendants also relied upon in another judgment of Delhi High Court in the case of 'Tarun Sethi & Ors Vs. Vikas Budhiraja & Ors.' decided on 31.07.2012 in CS (OS) 1841 of 2008 and placed reliance upon Para-13 and subsequent paragraphs.
18. The learned counsel for the plaintiff has placed reliance upon the decision of this Court in the case of Paresh D. Patel Vs. Smit N. Parmar reported in 2012 JX(Guj) 627. The emphasis placed upon the observations of the court in Paras-49, 50 and 60, which has been appealed by the Division Bench of this Court in O.J. Appeal No.41 of 2012.
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 Page 27 of 33 O/CS/2/2015 ORDER 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 Page 28 of 33 O/CS/2/2015 ORDER word "obvious imitation". The "obvious imitation" attempted to be a vital on account of small meaning and answer features of 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 Page 29 of 33 O/CS/2/2015 ORDER 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 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 Page 30 of 33 O/CS/2/2015 ORDER 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.
21. The learned counsel for the defendants has thereafter heavily argued in respect of the merits and the question of balance of convenience. This Court is of the view that the decisions cited at bar in favour of the submissions so far as the balance of convenience and other aspects is concerned, there cannot be any dispute qua ratio laid down by the Supreme Court but suffice it to say that this Court is prima-facie convinced qua the defendants' not being in market and therefore, the continuation of injunction relief would not vitally affect the case of the defendant as it may not cause any serious prejudice to them and in such a case, if the injunction relief is granted in favour of plaintiff, same cannot be prejudiced to the defendants. The invoices placed on record did not inspire any greater impression qua the sell from the company to its dealer only, as injunction earlier in point of time is granted on 17.03.2015, and the launching of product is scheduled on 18.03.2015, so far nothing is brought on record by the defendants to indicate that apart from Bhopal branch, there exists no other venue or place or city, where the launching of product is taken place or coolers to have been posted in market.
22. Therefore, this Court is of the view that prima-facie, case is made out for granting injunction. The balance of convenience is also not in favour of the defendants. The injunction as already granted, is only qua the aspect of design and therefore, it cannot have any effect upon the defendants to make appropriate changes Page 31 of 33 O/CS/2/2015 ORDER in design so as to wipe off the impression that has been created by this design which is more imitation and therefore, the Court is convinced prima-facie that there exists a case for continuing of interim relief, which has been granted till final disposal of the suit. The suit is ordered to be fixed for final disposal. Expedited. The parties are directed for conducting of the suit. The matter is adjourned to 26.06.2015.
23. The learned counsel appearing for the defendants at this stage submitted that, as this Court has passed order on merits, the same shall be stayed for a period of two weeks so as to enable the defendants to take out appropriate proceedings in appropriate forum.
24. Shri Tolia, learned counsel appearing for the plaintiff submitted that the earlier order which was granted exparte is continuing and this Court has after hearing the matter on merits, so far as question of interim relief is concerned, held prima-facie case in favour of the plaintiff and therefore, this court may not stay the order.
25. The request for staying the order, as it would not help the defendants, as there exists a stay though initially, which was granted without hearing the otherside, but at this stage the same is not continued and this order is stayed, then it would have effect of undoing the position which has been enuring till the granting of exparte interim order. The same cannot be permissible in light of the observations made hereinabove. Therefore, this Court is unable to accept the prayer for staying the order. Hence, it is rejected.
(S.R.BRAHMBHATT, J.)
Page 32 of 33
O/CS/2/2015 ORDER
aruna
Page 33 of 33