Delhi District Court
Sh. Mukesh Gupta vs Mr Ranjit Singh on 3 July, 2009
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IN THE COURT OF SHRI M.R. SETHI:
ADDL. DISTRICT JUDGE-06 (W)DELHI.
Suit No.129/09/07
Sh. Mukesh Gupta
H-35,South Extension-I
New Delhi-110049.
.....Plaintiff
Versus
1. Mr Ranjit Singh
Super Engineering Works
T-140,Vishnu Garden,
Khayala Village
New Delhi-110018
2 M/ s D.C. Water Supermart Pvt Ltd
D 31-32, Commercial Complex
Behind Satyam Cinema
Ranjeet Nagar,
New Delhi-110018
3 J. H. Metal Works
T-140, Vishnu Garden,
Khayala Village
New Delhi-110018
4 Parker Power
531, Functional Industrial Estate
Patparganj,
Delhi-110092.
...Defendants
Mukesh Gupta Vs Ranjit Singh & Ors.
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ORDER:
1 This order shall dispose off an application filed by the plaintiff under Order 39 Rule 1 & 2 CPC, wherein plaintiff had prayed that defendants no.1 to 4, jointly and severally, be restrained from manufacturing, selling, distributing, offering for sale, advertising directly or indirectly dealing with water purifiers or cabinets therefor, embodying the applicants registered design bearing numbers 198530 and 200427 in any manner, and also an order restraining the defendants no 1 to 4 from using the applicant's said registered designs and from in any manner passing off or attempting to pass off or causing, enabling or assisting others to pass off their business and products as and for the business and products of the applicants and also for a restrain order restraining the defendants from infringing applicant's trade dress, get up and lay out in respect of applicant's water purifiers. 2 Lord Denning had observed in Hubbard Vs Vosper (1972 (2) WLR) page 389-that in considering whether to grant an interlocutory injunction, the right course for a Judge is to look at the whole case and that the Judge must have regard not only to the strength of the claim but also to the strength of the defence and then decide what is best to be done.
Mukesh Gupta Vs Ranjit Singh & Ors.
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3 Accordingly, let us first have a look at the strength of claim of the plaintiff and defence of the defendants. 4 Succinctly stated, case of the plaintiff was to the effect that plaintiff had been granted design registration No.198530 dated 16.2.2005 and No. 200427 dated 26.7.05 in respect of unique design of cabinet for water purifier. It was further claimed that defendant no.2 was a distributor of defendant no.1, who also controlled defendant no.3, and the defendant no.4 used to be supplied the infringing cabinets by defendant no.1 through defendants 2 & 3. It had been claimed by the plaintiff that the design registration of plaintiff were valid and subsisting and plaintiff alone was entitled to manufacture and sell water purifiers, specially cabinets conforming to the registered designs. That the KENT'.
plaintiff'sproduct (water purifiers) were sold under the mark ' The advertising expense budget of plaintiff for the year 2006-2007 was claimed to be Rs.10 Crores. That sales turn over was of Rs.56 Crores as the products were being sold in India, Kenya, Nepal, UAE, Sri Lanka, New-Zealand etc. As per claim of the plaintiff, on or about 07.07.2007 plaintiff received a letter from defendant no.1 stating that they sell KENT Type RO Cabinets and called upon the plaintiff to contact its distributors i.e defendant no.2 for purchase of such Mukesh Gupta Vs Ranjit Singh & Ors.
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cabinets. Thereupon, plaintiff was claimed to have filed suit bearing No. 776/2007 in Hon'bleHigh Court of Delhi. It was claimed that on basis of written statement filed by the defendant in the said suit, plaintiff came to know that the defendants had obtained the cabinets from Super Engineering Works i.e defendant no.1 in the present proceedings. Copies of pleadings of the earlier suit had also been filed on record of the present matter. It was claimed by the plaintiff that defendant no.1 was manufacturing cabinets conforming to the plaintiff'sregistered designs and defendant no.1 was the root of all counterfeiting menace in the market. Defendant No.3 was claimed to be another company controlled by defendant no.1 engaged in similar business. It was claimed that on comparison of the products, it appears that water purifiers made and sold by defendants were identical to the plaintiff'sregistered designs and plaintiff had not granted any license to the defendants to use the said designs. It had been further claimed that defendants were guilty of infringement of registered designs of the plaintiff'sdesigns and were also guilty of passing off and unfair trading. Acts of the defendants, it was claimed, were deliberate and concerted effort to infringe, copy, unlawfully benefit and take advantage of plaintiff's rights in the said water purifiers. Plaintiff claimed that unless the defendants were restrained from their unlawful acts, grave and irreparable loss would be caused to the plaintiff and also to the Mukesh Gupta Vs Ranjit Singh & Ors.
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public at large which could not be compensated in pecuniary terms. 5 In the written statement filed on behalf of defendants 1 & 3 it had been claimed that the product manufactured and marketed by the defendants was different in designs in the shape, configuration and surface pattern than the designs registered in favour of the plaintiff. It was claimed that the cabinet that was being manufactured and marketed by the defendants stood registered in the name of defendant no.1 under the registration No.207629 and the said design was valid and subsisting. Plaintiff, it was claimed had concealed the said fact despite being in knowledge of the same. Genuineness of letter dated 07.7.2007 was denied and disputed by the defendants. Another defence taken by the defendants was to the effect that registration of designs of the plaintiff, were of a recent date and were not new and original and infact were prepublished. Cancellation petition was claimed to have been filed before learned Controller of Designs in this regard. It was further claimed that plaintiff was guilty as the photograph of product of the defendants as filed alongwith the suit was not depicting the true product of the defendants.
5-A Defendant No.4 in its written statement filed had claimed that plaintiff had failed to claim having created or invented the Mukesh Gupta Vs Ranjit Singh & Ors.
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impugned designs or that the designs were new and original and not previously published. It was claimed that in absence thereof, the suit for infringement of registered designs was not maintainable. It was further claimed that the impugned designs were common, ordinary, obvious and in public domain. Suit being not maintainable due to mis-joinder of parties had also been mentioned. It was claimed that the answering defendant was using the trade mark Parker Power to which the plaintiff had no claim. 6 Perusal of record reveals that the present suit was originally filed before Hon'bleHigh Court of Delhi and vide order dated 27.8.2007 passed by Hon'bleMr Justice Sanjay Kishan Kaul in IA 9746/2007, the defendants were restrained from manufacturing, selling or advertising through brochures or otherwise water purifiers embodying the plaintiff'sregistered design bearing No. 200427 in any manner till next date of hearing. Thereafter, issues were framed before Hon'bleHigh Court of Delhi on 14.12.2007 and matter proceeded for evidence. Subsequently, on 11.8.08, some interim arrangement appears to have been entered into between the parties and the same finds mention in order of even date passed by Hon'bleMr Justice Sanjiv Khanna while disposing off IA Nos 9746,10846 and 12339/07.
Mukesh Gupta Vs Ranjit Singh & Ors.
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7 Thereafter, dispute arose between the parties regarding valuation of purpose of court fees and jurisdiction and Hon'bleMr Justice S.N. Dhingra, vide his order dated 16.2.2009 was pleased to return plaint to the plaintiff to file before Court of appropriate jurisdiction. The said order was challenged by the present plaintiff (by way of FAO (OS) 82/2009) and vide order dated 13.5.2009 passed by Hon'bleDivision Bench of Hon'bleJustice V.J. Mehta and Justice Mukul Mudgal, the suit was ordered to be transferred to the District Courts. It was further observed by Their Lordships that while directing transfer of the suit, the interim order of injunction operating against the respondents would continue till the date when the matter is taken up on the first date by the concerned Civil Judge, who shall then decide a fresh the issue for grant or denial of an ad-interim/ex-parte injunction on the first date and will also decide expeditiously and preferably within four weeks from the first hearing the injunction application as filed by the plaintiff in the suit. It was further observed that the issue of granting or denying of injunction shall be taken up entirely uninfluenced by any observation or the fact that earlier an injunction order was passed with consent of the parties.
8 It was in pursuance thereof, that the present matter was received on assignment before this court on 30.5.2009. Mukesh Gupta Vs Ranjit Singh & Ors.
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9 Detailed arguments had been advanced by learned counsel for plaintiff as well as learned counsel for defendant no.1 to 3 and defendant no.4.
10 The main line of argument advanced by learned counsel for plaintiff/applicant was to the effect that the plaintiff was the registered owner of two designs in respect of water purifiers and that the registered designs of plaintiff were being infringed by the defendants. Learned counsel submitted that a water purification system affects public health and general public can be deceived by design of the defendants believing it to be that of the plaintiff. During course of his submissions, learned counsel for plaintiff has also taken this court through order dated 11.8.2008 passed by Hon'bleMr Justice Sanjiv Khanna while disposing off applications No. IA No. 9746,10846 and 12339/07. On basis thereof, it was submitted by learned counsel that the defendants had agreed to manufacture/market their purification system with a different design and as such, a prima facie case existed in favour of the plaintiff. Learned counsel has also drawn attention of this court towards documents Ex PW1/22 i.e letter dated 07.7.2007 sent by defendant no.1 to the plaintiff. It was submitted by learned counsel Mukesh Gupta Vs Ranjit Singh & Ors.
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that the defendant had admitted therein, to be a manufacture of 'KENTTYPE RO'cabinets and that the said letter had been written to the plaintiff by the defendants. Learned counsel submitted that plaintiff had a prima facie case in his favour as his design was registered earlier in time and was not a prepublished design. It was claimed that Sh Mahesh Gupta had introduced "RO" System of Water purification in India in 1999 and huge investment had been made by the plaintiff for advertising its products. Likelihood of public being deceived and health of public being at risk was also submitted. It was further submitted by learned counsel that as interim injunction has earlier been granted in favour of the plaintiff, and evidence was being recorded, balance of convenience existed in favour of the plaintiff. During course of his submissions, learned counsel for plaintiff has also placed explicit reliance on the following judicial pronouncements:-
United Distillers Plc. Vs Jagdish Joshi & Ors [2000) PCT 502], Rotomac Pens Ltd Vs Milap Chand & Company [1999 (19) PTC 757], Castrol India Ltd Vs Tide Water Oil Company [(1996) PCT 16], Alert India Vs Naveen Plastics [1997 PCT page 17], J.J. Bhatt Vs Kalpana Sharma [2008 (IV) AD ) Delhi page
20.
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11 On the other hand, it had been submitted on behalf of defendants 1-3 that the design of the product being manufactured by the defendants stood registered in the name of the defendant No.1 and as such defendant was also owner of a registered design. Learned counsel submitted that although plaintiff was very well aware of the said fact, plaintiff had intentionally concealed this fact in the plaint filed in the present suit. In this regard, attention of this court had been drawn to written statement filed in the earlier suit of the plaintiff wherein, factum of design of present defendant no.1 being registered vide No.207629 was specifically mentioned. It was pointed out by learned counsel that copy of the written statement had been filed on record by the plaintiff himself. Learned counsel further submitted that defendants had already approached for cancellation of design registration of the plaintiff and that till design of the defendants was cancelled, plaintiff and defendants were on equal footing. Mode of dispatch of letter Ext PW1/22 being not brought on record by the plaintiff was also pointed out by learned counsel for defendants. It was claimed that genuineness of the said letter had not been proved despite onus resting upon the plaintiff. In this regard, it was further submitted by learned counsel that in case the defendants were manufacturing a product by imitating the registered design of the plaintiff, the defendants would Mukesh Gupta Vs Ranjit Singh & Ors.
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not be foolish enough to send a letter to the plaintiff advertising the factum that they were manufacturing cabinets, which ought to have been manufactured by plaintiff alone. Another line of arguments advanced by learned counsel was, that the design used by the plaintiff was a prepublished design and not a new design. Attention of this court in this regard had been drawn to testimony of PW-1, who had claimed that Ex PW.1/5 had been circulated in the year 2002-2003. During course of his submissions, learned counsel for defendants has placed explicit reliance on :-
Tobu Enterprises Pvt Ltd Vs Megha Enterprises & Anr. [1983) PTC, page 359], Indo Asahi Glass Co. Ltd Vs Jai Mata Rolled Glass Ltd & Anr. [1996) PTC page 16, M/s Niky Tasha India Pvt Limited Vs M/s Faridabad Gas Gadgets Pvt Ltd [(1984) PTC page 87], Rotela Auto Component (P) Ltd & Anr. Vs Jaspal Singh & Ors [2002 (24) PTC page 449.
11-A Ld counsel for defendant no.4 submitted that defendant no.4 had no connection whatsoever with other defendants. It was submitted that plaintiff had not placed on record any documents whatsoever to support averment qua connection between defendant no.4 and other defendants. It was submitted by Ld counsel that mere registration of a design is not prima facie evidence of its Mukesh Gupta Vs Ranjit Singh & Ors.12
validity, but is only a prima facie evidence of it being entered in the registered of designs. In this regard, attention of the court was drawn by learned counsel to the two certificates of registration of designs filed on record by the plaintiff. Learned counsel pointed out that as per the certificates, the certificates had been issued in the name of KENT RO SYSTEMS - whose partners are Mahesh Gupta and Mrs Sunita Gupta. While referring to other documents on record and testimony of PW.1, it was submitted by learned counsel that SS Appliances (P) Limited was also one of the partners of KENT RO SYSTEMS from 1999 till 2007, but its name did not find mention in the certificates as being one of the partners. It was submitted that the registration certificates as such were not valid. Issue regarding the design of plaintiff being prepublished prior to date of registration was also raised.
12 I have given my thoughtful consideration to arguments advanced and have also perused the records.
13 It was inter-alia observed in Gujrat Bottling Co Ltd & Ors Vs Coca Cola Co. & Ors -CAS No.6839-40 of 1995 decided on 4.8.1995 (as mentioned in Alert India's case (Supra)], that jurisdiction of a court to interfere with an order of interlocutory or temporary injunction is purely equitable and conduct of the party invoking the said jurisdiction Mukesh Gupta Vs Ranjit Singh & Ors.
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has to be looked into. It was further observed that a court may refused to interfere unless conduct was free from blame.
14 Even otherwise, it is a settled principle of law that a party approaching the court for grant of equitable relief of injunction must do so with clean hands.
15 In the facts & circumstances of present case, as has appeared during course of arguments,it is apparent that although plaintiff was in knowledge of the fact that design of the defendant was also a registered design, the said fact had been concealed by the plaintiff. Furthermore, basis of suit of the plaintiff appears to be the letter ( Ex PW1/22) allegedly written by defendants to the plaintiff . Till date, nothing has been brought on record on behalf of the plaintiff regarding mode of receipt of this letter. It would not be out of place to mention herein that genuineness of this letter is being disputed by the defendants. As regards claim of the design being prepublished, perusal of cross-examination of PW.1 conducted on 23.4.08 reveals that the witness had stated that Ex PW1/5 (which is an advertisement brochure for KENT GRAND) was circulated in the year 2002 or 2003 and brochures are circulated in at least thousands. In this regard, it would be pertinent to mention herein, that the designs of the plaintiff were claimed to have been registered Mukesh Gupta Vs Ranjit Singh & Ors.
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in the year 2005.
16 It would not be out of place to mention herein that during course of submissions learned counsel for plaintiff had placed explicit reliance on Rotomac Pens' case (Supra) and had submitted that Hon'ble Ms justice Ruma Pal, who had delivered the said judgment, was subsequently elevated to the Supreme Court of India. A perusal of the said judicial pronouncement reveals that the said judgment was passed by Hon'bleMs Justice Ruma Pal while sitting in Division Bench in High Court of Calcutta and her Lordship was pleased to disagree in principle with a decision of the Division Bench of Delhi High Court passed in M/s Niky Tasha India Pvt Ltd Vs M/s Faridabad Gas Gadgets Pvt Ltd [ AIR 1985, Delhi,136). It is humbly submitted that this court is bound by decision of the Division Bench of Delhi High Court and not by the decision of Division Bench of High Court of Calcutta which had disagree with the decision of Delhi High Court.
17 Before proceeding further in the matter, let us have a look at the judicial pronouncements relied upon by both the sides. Firstly, I shall be dealing with the judgments relied upon by learned counsel for plaintiff.
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18 The United Distillers' case (Supra) relied upon deals primarily with the trade dress and has nothing much to say about the design. The Rotomac Pens' case (Supra), as already mentioned herein above disagrees with observation of Division Bench of Delhi High Court and as such, does not come in aid of submissions made by learned counsel for plaintiff.
19 The Castrol India's case (Supra) relied by counsel for plaintiff is easily distinguishable from facts of the present case as in the said case no application for cancellation of registered design of plaintiff had been filed by the respondent and there was no prima facie evidence that there was any design like the plaintiff'sdesign used in market prior to registration of design in question. In the present case before this court, application for cancellation of plaintiff'sdesign has already been filed by the defendants and Ex PW.1/5 coupled with testimony of PW1 are enough to raise a question regarding the plaintiff's design being prepublished. As regards the Alert India's case (Supra) firstly, the said judgment was under the old Designs Act,1911 and secondly, the judgment proceeds on basis of provision of Section 50 (1) of the Designs Act, which prohibited inspection of design during existence of Copy Right in such design or such shorter period not being less than two years. The said provision no longer finds mention in the new Act. In Mukesh Gupta Vs Ranjit Singh & Ors.
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the said case, the plaintiff and the defendant both had registered design in respect of the same goods and Hon'bleMr Justice J.B. Goel was pleased to observe that subsequent registration of design under Designs Act by defendants was of no consequence. Section 50 of the Old Act of 1911 now finds place in the Designs Act,2000 as Section 17 and now as per provision of new Act, during existence of Copy right in a design, any person on payment of prescribed fee may inspect the design in the prescribed manner on furnishing such information to the Controller as may enable the Controller to identify the design. As such, in humble opinion of this court, the observations passed on basis of the Old Act of 1911 are not applicable in the present case. It would not be out of place to mention herein that Hon'ble Mr Justice J.B. Goel in the said judgment was pleased to observe " To put it otherwise a design which is not new or original and has already been used ,is not entitled to be registered as such a course will defeat the very purpose of enacting such law." Applying this observation to facts of the present case wherein design of plaintiff appears to be prepublished design, no benefit can be awarded to the plaintiff. In J.J. Bhatt's case (Supra) , the product in question was a health care product and it was observed that interest of public has to be kept in mind as it is of paramount importance. It was further observed that public should not be put in a position, where they are likely to be Mukesh Gupta Vs Ranjit Singh & Ors.
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deceived or confused.
19-A It should not be lost sight of that the product in question before this court is a water purification system and is not likely to be used by the illiterate class. The strata of public likely to use this product is not likely to be deceived or confused easily. Submission of counsel for defendant that water coolers are purchased not always by illiterate persons and as such similar type of coolers were available in the market was observed as not being an irrelevant consideration by Hon'bleMr Justice S. N. Kapoor in Hello Mineral Water Pvt Ltd Versus Thermoking California Pure [2000 PTC 177] 20 Let us now have a look at the judicial pronouncements relied upon by learned counsel for defendants.
21 It has been observed in Tobu Enterprise's case (Supra) that provisions of the Designs Act do not say that a registration earlier in time will prevail against a later registration. It has been observed that had there been such an intention of the legislature, it could have been expressed in the said terms. It was further observed that registration of a design can prevail and is to be protected against infringement only when the opposite party does not possess Mukesh Gupta Vs Ranjit Singh & Ors.
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any registration. The obvious result, it was observed was that if each of the party was having registration of design, each can use that design for its product and in such like cases no injunction can be issued. In Indo Asahi Glass case (Supra) Hon'ble Mr Justice P.K. Bahri was pleased to observe:-
"So, I am of the prima facie view that design of the defendant infringes the registered design of the plaintiff and it may be that registration of design made in favour of the defendant is liable to be cancelled but in view of the ratio laid down in case of M/s Tobu Enterprises Pvt Ltd (Supra), as long as both, the plaintiff's design and the defendant's design stand registered, the plaintiff cannot be granted relief of temporary injunction".
In Niky Tasha's case (Supra) it was observed that where the design is of a recent date and when there is a serious question as to validity of the design and application for cancellation has been made, no injunction should be granted. It was further observed that every ground on which a registered design may be cancelled under the Act should be available by way of defence to a suit for infringement and that publication before registration defeats the proprietor'sright of protection under the Act. To similar effect was the observation in Rotela Auto's case (Supra) wherein, it was observed that no injunction can be granted where there is a serious dispute as to the validity of design and if the design has been prepublished, it cannot claim protection as publication before Mukesh Gupta Vs Ranjit Singh & Ors.
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registration defeats the proprietor'sright to protection under the Act.
22 Coming back to facts of the present case, admittedly there is a serious dispute as to validity of designs and application for cancellation of the plaintiff'sregistered design has already been filed by the defendants. Testimony of PW.1 and document Ex PW1/5 prima facie show that the design is prepublished and that the same had been published about 2-3 years prior to registration of design of the plaintiff. It has further transpired on perusal of record that plaintiff apparently has not approached this court with clean hands in as much as plaintiff had concealed in the plaint factum of design of the defendant being registered, despite having knowledge of the said fact. As already mentioned, he who approaches the courts of justice for equitable relief of injunction must do so with clean hands. 22-A In the matter of novelty, the eye has to be the ultimate arbiter and the determination has to rest on the general ocular impression. In order to secure recognition for its newness or originality it is imperative that a design identical with or even materially similar to the relevant design should not have been published or registered previously. A slight, trivial, or infinitesimal variation from a preexisting design will not qualify it for registration. Mukesh Gupta Vs Ranjit Singh & Ors.
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( Brighto Auto Industries Vs B. Chawla & Sons [ 1978 IPLR 28]) 23 For being entitled to grant of relief of injunction, plaintiff was required to show existence of prima facie case in his favour, that balance of convenience lies in his favour and that he shall suffer irreparable loss and injury in case the relief being prayed is not granted.
24 In view of facts & circumstances of present case as have been enumerated herein above, it is apparent that plaintiff has concealed some material facts from this court. Design of the defendant having been registered prior to filing of present suit had not been disclosed in the plaint despite the fact that plaintiff was within knowledge of the same. It has also appeared on record that the defendant has already filed for cancellation of registration of design of the plaintiff and furthermore, as per testimony of PW1, the design of plaintiff appears to have been published prior to its registration. It had been argued on behalf of plaintiff that as interim injunction had already been passed in favour of plaintiff and some agreement had been arrived at between the parties before Hon'ble High Court of Delhi, balance of convenience existed in favour of the plaintiff. This court is of a contrary opinion. It has been observed in order dated 13.5.09 by Hon'bleMr Justice Mukul Mudgal and Mr Mukesh Gupta Vs Ranjit Singh & Ors.
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Justice Valmiki J Mehta while disposing off FAO (OS)82/2009 that the issue of granting or denying of injunction shall be taken up entirely uninfluenced by any observation of the court or the fact that earlier an injunction order was passed by consent of the parties. In considered opinion of this court, the plaintiff who appears not to have approached the court with clean hands, is not entitled to grant of equitable relief of injunction as is being prayed for in the application under disposal.
25 Accordingly, finding no merit in the application under disposal, the application is dismissed. Nothing said earlier herein- above should be construed to be an expression of opinion on the merits of the case. Nothing mentioned or discussed herein above should be construed as opinion of this court regarding merits of claim of the defendants qua cancellation of registration of designs of the plaintiff. All that has been stated herein above in that regard is only to high light existence of a serious dispute between the parties regarding validity of registration certificates of design of the plaintiff. 26 However, in order to safe guard the rights of the plaintiff, if ultimately the same are established in the suit , the defendants are hereby directed to maintain proper account of their sales of goods under the disputed designs till disposal of the suit. The defendants Mukesh Gupta Vs Ranjit Singh & Ors.
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shall be filing copies of statement of accounts in court every six months from the date of the present order. This direction is in consonance with the directions passed by Hon'bleHigh Court of Delhi in Indo Asahi's case (Supra) and the Rotela Auto Component's case (Supra).
Application stands dismissed accordingly.
Announced in open court ( M.R. SETHI )
on 03-7- 2009. ADDL. DISTRICT JUDGE-06(W)
DELHI.
Mukesh Gupta Vs Ranjit Singh & Ors.