Delhi High Court - Orders
Studds Accessories Limited vs S.K.Jain & Sons (Abp Helmet) & Ors on 26 November, 2021
Author: C.Hari Shankar
Bench: C. Hari Shankar
$~32 (original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 594/2021 & I.A.15321/2021, I.A.15322/2021,
I.A.15323/2021, I.A.15324/2021
STUDDS ACCESSORIES LIMITED ..... Plaintiff
Through: Mr. Udit Chauhan and Mr.Aditya
P. Arora, Advs.
versus
S.K.JAIN & SONS (ABP HELMET) & ORS. ..... Defendants
Through: Ms.Prachi Agarwal, Ms.Ridhie
Bajaj, Ms.Misthi Dubey, Advs.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
ORDER
% 26.11.2021 I.A.15324/2021 (under Section 12a of the CPC)
1. For the reasons stated in this application, exemption is granted from the requirement of pre-litigation mediation.
2. The application is allowed accordingly.
I.A.15323/2021 (extension of time in paying court fees)
3. Subject to the plaintiff filing the deficient court fees within two weeks from today, exemption is granted for the present.
Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 1 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:014. The application is disposed of.
I.A.15322/2021 (exemption)
5. Subject to the plaintiff filing legible copies of any dim or illegible documents on which it may seek to place reliance within four weeks from today, exemption is granted for the present.
6. The application is disposed of.
CS(COMM) 594/2021
7. The plaintiff claims infringement, by the defendants, of the registered design „Studds Urban Helmet‟, of the helmets manufactured by the Plaintiff. The plaintiff has placed its Certificate of Design Registration on record as Document 9 with the plaint. The design of the plaintiff‟s helmet has been permitted registration, and the endorsement of novelty, in the registration certificate, states that novelty resides in the shape and configuration of the helmet as illustrated. The shape and configuration of the helmet, as illustrated in the design registration certificate, is reproduced thus:
Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 2 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:01 Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 3 of 19By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:01 Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 4 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:01 Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 5 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:01 Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 6 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:01 Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 7 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:01 Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 8 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:01 Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 9 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:01 Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 10 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:01
8. The plaintiff had applied for registration of the design of its helmet on 17th October, 2018, and registration was granted on 11th January, 2019.
9. The plaintiff alleges that the defendants are manufacturing and selling helmets under the name "ABP Wave", the design of which infringes the registered design of the plaintiff.
10. The photographic comparison of the helmets of the plaintiff and the defendants had been provided from pages 138 to 143 of the documents filed with the plaint. They are reproduced thus:
Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 11 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:01 Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 12 of 19By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:01
11. The plaintiff has also set out, in paras 50 to 52 of the plaint, the features of the plaintiff and the defendants‟ design, which are similar and are stated to make out a case of infringement thus:
"50. That when the top view of both the helmets is compared, it can clearly be seen that the design of the strip is identical in both the cases. It is submitted that both the helmets have a triangular shape (without the ends joining at the top) of the said strip which was novel to the „Studds Urban Helmet‟. Furthermore, both the helmets bear grain finish on the rest of the helmets and a carbon finish on the strip. It is submitted that the configuration of the „Studds Urban Helmet‟ was novel to that Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 13 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:01 effect that the same shell contained two different types of finishes. Lastly, it is also to be seen that the carbon finish on both the strips is also identical to extent that both the helmets have identical surface pattern i.e. parallel zig-zag lines embedded in their carbon finish. It is submitted that the carbon finish with embedded parallel zig-zag lines was also novel to the „Studds Urban Helmet‟. It is submitted that the design registration was specifically granted in respect to the said surface pattern. Hence, it is submitted that the both the helmets are common if seen from the top view.
5l. Furthermore, even a comparison of the helmets from the front view also suggests that the designs of both the helmets are common. It can clearly be seen that both the helmets have an identical strip in the middle and that the surface pattern entire helmet (grain finish) is different that the surface pattern of the strip (carbon finish). It is submitted that the top view and the front view of the helmets are the most important while comparing the products. This is because in case of helmets, the products are normally offered for sale while depicting the front view and the top view of the helmet. That even while the product is sold through electronic means, the top view and the front view are the thumbnail that the customer normally views before completing his purchase.
52. That the bottom view of both the helmets will also show that the same padding pattern has been followed by the Defendants and both the products appear to be substantially identical to each other. Lastly, the placement of the grills on both the helmets is at an identical place, i.e., at the upper back of the helmet. It is submitted that the Defendants have deliberately tried to model the Impugned Helmet to make is look deceptively similar to the Plaintiff company‟s Urban Helmet."
12. In order to satisfy myself regarding the similarity in the design of the plaintiff and the defendants‟ helmet, I called for the physical samples of the helmets. The helmet samples have been brought to the Court. On perusing the said helmets, it appears, prima facie, that the defendants‟ Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 14 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:01 design copies several of the prominent features of the design of the plaintiff, which form prominent features of the design and the configuration of the plaintiff‟s helmet. The shape of the plaintiff‟s helmets is distinctive, and the defendants‟ helmet is of an identical shape. Though Ms. Prachi Agarwal, learned Counsel for the defendants submitted that there are several features in the design of the defendants‟ helmet which are different from those of the plaintiff, I have seen the two helmets and had satisfied myself prima facie that overall, the shape and composition of the defendants‟ helmet is deceptively similar to that of the plaintiff‟s. The strip on the top of the helmet, the visor of the helmet as well as other associated features of two helmets are clearly identical.
13. Given that novelty has been certified, in the design registration granted to the plaintiff, to reside in its shape and configuration, and in view of the fact that the shape and configuration of the defendants‟ helmet is starkly similar to that of the plaintiff, I am of the opinion that, prima facie, a case of infringement of the plaintiff‟s design is made out.
14. Ms. Agarwal has invited my attention to two judicial authorities, namely, Steelbird Hi-Tech India Ltd. v. S.P.S. Gambhir & Ors.1 and Dabur India Ltd. v. Rajesh Kumar2. Rajesh Kumar2 deals with a case of infringement of a design, claimed in respect of a bottle. Ms. Agarwal has specially relied on para 8 of the said decision, which reads thus:
"8. A perusal of the design registration certificate of the 1 (2014) 58 PTC 428 2 (2008) 37 PTC 227 Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 15 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:01 plaintiff would show that plaintiff had not got any peculiar feature of the bottle registered as a design. The plaintiff has got the whole bottle registered as a design. A plastic bottle is not a new thing. Plastic bottles are being used by different manufacturers in different shapes including in the shape being used by the plaintiff. The plastic bottles used by the plaintiff is a very common shape and does not have any peculiar eye catching design or shape. I also find there was a variation in the plaintiff‟s and defendant‟s bottles. The plaintiff‟s bottle from bottom till neck was having plain curved surface whereas there was one extra curve on each side of bottle of defendant running along the shoulders and neck of the bottle. The neck of the defendant‟s bottle is so wide that neck of plaintiff‟s bottle loosely goes into the mouth of the defendant‟s bottle. The circumference of defendant‟s bottle's neck is almost double than that of plaintiff‟s."
15. Though Steelbird1, on the other hand, does deal with alleged design infringement in respect of helmets, the Court has, in that case, on a comparison of the helmets, come to a finding that there is no infringement. In the present case, there is obvious similarity in the design between the helmets of the defendants and the plaintiff.
16. Ms. Agarwal also submits that the plaintiff has not placed on record the complete correspondence between the plaintiff and the defendants which would indicate that concerted attempts were made at an amicable resolution of the dispute and that the defendants had in fact, also suggested a non-infringing design. She submits that the plaintiff has deliberately omitted to place these documents on record as they would dilute the validity of the plaintiff‟s claim.
Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 16 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:0117. As I have already found, on a comparison of the helmets, that there is prima facie design infringement, the omission on the part of the plaintiff to place these communications on record may not be fatal to the case of the plaintiff. This, however, is only a prima facie opinion.
18. Neither of the decisions cited by Ms. Agarwal can, prima facie, help the defendants in this case as the design of the defendants is, on a physical comparison as well as on a comparison of the pictures of the helmets as produced in the plaint, prima facie, deceptively similar to the design of the plaintiff.
19. In view thereof, a case for grant of interim injunction, in my view, exists.
20. Accordingly, let the plaint be registered as a suit.
21. Issue summons in the suit. Summons are accepted on behalf of the defendants by Ms. Prachi Agarwal. Written statement, accompanied by affidavits of admission/denial of the documents filed by the plaintiff be filed within four weeks with advance copy to learned Counsel for the plaintiff who may file replication thereto accompanied by affidavits of admission/denial of documents filed by the defendants within 45 days thereof.
22. List before the Joint Registrar for completion of pleadings, Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 17 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:01 admission/denial of documents and marking of exhibits on 10 th February, 2022.
I.A.15321/2021 (under Order XXXIX Rules 1 and 2 of the CPC)
23. This application seeks ad interim reliefs in the following terms:
"It is, therefore, most respectfully prayed that this Hon'ble Court be pleased to:
a. Pass an order granting ex-parte ad interim order of temporary injunction in favour of the Plaintiff and against the Defendant, restraining the Defendants, their director, proprietors or partners as the case may be, their assignees in business, servants and agents from manufacturing, selling, offering for sale, advertising directly or indirectly, dealing in helmet using the design of 'STUDDS URBAN', or any other design as may be deceptively identical or similar to the Plaintiffs design;
b. Pass an order granting ex-parte ad interim order of temporary injunction in favour of the Plaintiff and against the Defendant, restraining the Defendants, their director, proprietors or partners as the case may be, their assignees in business, servants and agents from passing off the design of 'STUDDS URBAN' helmet with respect to their 'ABP WAVE' helmet.
c. Pass any such order(s) as this Hon'ble Court may deem fit and appropriate in facts of the present case."
24. Issue notice, returnable before the Court on 4th January, 2022.
Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 18 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:0125. Notice is accepted by Ms.Agarwal on behalf of the defendants. Reply be filed within three weeks with advance copy to learned Counsel for the plaintiff who may file replication thereto before the next date of hearing.
26. Till the next date of hearing, there shall be an ad interim order in terms of prayers (a) and (b) of this application.
27. Re-notify on 4th January, 2022 before the Court.
C.HARI SHANKAR, J NOVEMBER 26, 2021/kr Signature Not Verified Digitally Signed CS(COMM) 594/2021 Page 19 of 19 By:SUNIL SINGH NEGI Signing Date:02.12.2021 12:38:01