Delhi High Court
Steelbird Hi Tech India Ltd vs Asia Fibre Glass Products & Anr on 17 February, 2020
Equivalent citations: AIRONLINE 2020 DEL 1709
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 17th February, 2020
+ CS(COMM) 1366/2016
STEELBIRD HI-TECH INDIA LTD. .... Plaintiff
Through: Ms. Diva Arora & Mr. Mudit Tayal,
Advs.
Versus
ASIA FIBRE GLASS PRODUCTS & ANR. ......Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. The plaintiff instituted this suit against Asia Fibre Glass Products,
Ghaziabad and A.S. Aslam (presumably proprietor of Asia Fibre Glass
Products), for permanent injunction to restrain infringement by the
defendants of the registered design of the plaintiff and passing off by the
defendants of their helmet as that of the plaintiff and for ancillary reliefs.
2. The suit along with the application for interim relief came up before
this Court first on 30th May, 2013, when though summons / notice thereof
were ordered to be issued but no ex parte relief sought granted.
3. Pleadings were completed. Vide order dated 9th September, 2016, in
view of Mohan Lal Vs. Sona Paint & Hardwares AIR 2013 Del 143,
option was given to the plaintiff to elect whether wanted to maintain this suit
as on the ground of infringement of design or on the ground of passing off.
Vide the same order, the application of the plaintiff for interim relief was
also dismissed. The plaintiff opted to continue the suit as for infringement
of design and vide order dated 5th December, 2016, amendment of the plaint
CS(COMM) No.1366/2016 Page 1 of 7
was allowed and the amended plaint taken on record. The defendants
though had filed written statement earlier, did not file written statement to
the amended plaint and vide order dated 6th December, 2017.
4. The case of the plaintiff as per the amended plaint is, that (i) the
defendants were found to be engaged in manufacturing and selling helmets
bearing the design identical to the plaintiff‟s design no.241153; (ii) the
subject product of the plaintiff bears novel and distinctive features of shape,
configuration and surface pattern; (iii) the registration no.241153 was
granted on 1st December, 2011 and subsists; (iv) the shape, configuration
and surface pattern of the subject design is distinctive and unique to the
plaintiff‟s helmet; (v) the plaintiff has also obtained registrations of several
other designs with respect to designs of helmets, auto accessories etc.; (vi)
the plaintiff has been using the helmet under design no.241153 since
January, 2012, and has marketed and promoted the said products in India
and abroad on a substantial scale; (vii) the plaintiff‟s product under the
subject design has met with substantial success and came to be exclusively
identified by members of trade and public in general with the plaintiff and
the plaintiff has substantial goodwill and reputation with respect to the
subject design; (viii) in the year 2015-16, the plaintiff sold 2,57,139 helmets
of the subject design for a total value of Rs.14,01,51,833/-; (ix) the product
of the defendants with the design of the plaintiff is known as "Monarch";
and, (x) a bare perusal of the product of the plaintiff with that of the
defendants would show blatant copying by the defendants of the plaintiff‟s
design.
CS(COMM) No.1366/2016 Page 2 of 7
5. The defendants contested the suit pleading, that (i) no part of cause of
action has accrued within the jurisdiction of this Court; (ii) the registration
in favour of the plaintiff is illegal; (iii) the shape of the helmet is
commonplace and derived from a combination of known shapes which were
pre-existing on the date of registration of design no.241153; (iv) the
registration of the design is in contravention of Section 19 read with
Sections 4 and 6 of the Designs Act, 2000; (v) there cannot be any scope of
monopoly over the shape of the helmet as there are very limited ways of
making helmets and hence the shape of the helmet has no peculiarity or
originality; (vi) the plaintiff is guilty of delay and laches; the defendants
have been carrying on their business for 7-8 years prior to filing the written
statement; (vii) the helmets subject matter of the present suit are being
manufactured and sold by several other entities since prior to registration of
design no.241153 on 1st December, 2011; (viii) the subject shape is common
to the trade; (ix) the suit has been filed to arm-twist the defendants who are
small time traders, and to eliminate competition; (x) the plaintiff has not
shown any loss of business on account of the defendants existence in the
market; (xi) the plaintiff on its own had anticipated the subject design by
publishing the material of the subject helmet prior to filing the design; (xii)
the subject design is not original; and, (xiii) the subject design had been pre-
published.
6. Though the plaintiff has filed replication to the written statement
aforesaid but the need to advert thereto is not felt.
7. On the pleadings of the parties, the following issues were framed in
the suit:
CS(COMM) No.1366/2016 Page 3 of 7
"1. Whether the plaintiff is the registered proprietor of the
design of its helmets registered under No.241153 dated 1 st
December, 2011? OPP
2. Whether this Court does not have the territorial jurisdiction
to entertain and try the present suit? OPD.
3. Whether the plaintiff's design of its helmets registered
under No.241153 dated 1st December, 2011 is not new, novel and
has been prior published before the grant of the said registration?
OPD
4. Whether the suit suffers from delay, latches and
acquiescence? OPD
5. Whether the defendants' use of the design of a helmet under
the mark "MONARCH" which is identical/substantially similar to
the plaintiff's prior registered design under No.241153 dated 1st
December, 2011 constitutes infringement of the plaintiff's
registered design under No.241153 dated 1st December, 2011 and if
so, to what effect? OPP
6. Whether the helmet design of the plaintiff has functional
components or is purely appealing to the eye? OPD
7. Whether the present suit is barred for lack of sufficient
court fee? OPD
8. Relief."
and the parties relegated to evidence.
8. The plaintiff filed affidavit by way of examination-in-chief of one
Vishal Vij and the order dated 17th January, 2019 records that the plaintiff
wanted to examine certain other witnesses also. At this stage, the counsel till
then appearing for both the defendants sought discharge and was discharged
CS(COMM) No.1366/2016 Page 4 of 7
vide order dated 10th October, 2019 and since none else appeared for the
defendants, the matter placed before the Court. On 16th October, 2019, the
defendants were ordered to be proceeded against ex parte and it was
enquired from the counsel for the plaintiff, whether the plaintiff wanted to
press the suit for reliefs other than of injunction also. On the counsel for the
plaintiff replying in the affirmative, the plaintiff was relegated to leading ex
parte evidence. The plaintiff has examined Vishal Vij as PW1 and Yogesh
Arora as PW2 and closed its ex parte evidence. The suit is listed today for
final hearing. I have heard the counsel for the plaintiff.
9. The defendants having been proceeded against ex parte and having
not led any evidence, the issues nos. (2) to (4), (6) and (7), onus whereof
was on the defendants, have to be decided against the defendants and in
favour of the plaintiff.
10. PW1 Vishal Vij, Group Commercial Manager of the plaintiff
examined by the plaintiff, has discharged the onus of issue no. (1) and issue
no. (5), which was on the plaintiff.
11. PW2 Mr. Yogesh Arora, Chief Business Development Officer of the
plaintiff, on the claim of the plaintiff for damages, has deposed that though
no accounts of sales figures of the defendants are on record but taking into
consideration that (a) the defendants have been selling the subject helmet for
a duration of six years; (b) the manufacturing capacity of the defendants was
learnt to be of 500 helmets per day; (c) the defendants having manufactured
at least 50 helmets per day of the subject design; and, (d) the price of
Rs.720/- per helmet at which the defendants were selling the subject helmets
on e-commerce website, the loss of sales to the plaintiff on account of
CS(COMM) No.1366/2016 Page 5 of 7
infringement of design of the helmet by the defendants was in the sum of
Rs.6,40,57,500/-. The said witness also deposed of the plaintiff having
incurred expenses of about Rs.3,15,000/- in the litigation till then.
12. I have enquired from the counsel for the plaintiff, how the plaintiff
can be entitled by way of damages to the entire sale proceeds of the subject
helmet from the defendants inasmuch as the said sale proceeds are inclusive
of costs of manufacture and sale. The counsel for the plaintiff agrees that
the plaintiff would be entitled only to the profits earned by the defendants.
On enquiry as to the component of profit in the aforesaid volume of sales,
the counsel for the plaintiff states that the element of profit would be to the
extent of 15% to 20% of the gross sales and thus would be Rs.96,08,625/- @
of 15% per annum.
13. I am inclined to agree with the counsel for the plaintiff. Though the
latter part informed by the counsel has not been deposed by either of the
witnesses of the plaintiff but the banks give a return of 7% to 7.5% per
annum on fixed deposit and return on company deposits and mutual funds
etc. is higher, going upto 25% to 30% per annum. It seems probable that no
one would take the risk and headache of carrying on business, if the profit
element were to be less than 15% to 20% per annum.
14. I therefore, on the basis of ex parte unrebutted evidence of the
plaintiff, assess the damages to which the plaintiff is entitled, at
Rs.96,08,625/-.
15. The suit thus succeeds.
16. A decree is accordingly passed, in favour of the plaintiff and jointly
and severally against the defendants, of (a) permanent injunction in terms of
CS(COMM) No.1366/2016 Page 6 of 7
prayer paragraph 28(a) of the plaint dated 23rd September, 2016; (b)
recovery of damages in the sum of Rs.96,08,625/-; and , (c) recovery of
costs of Rs.3,15,000/- as deposed by PW2 Yogesh Arora in his ex parte
evidence to have been incurred by the plaintiff.
Decree sheet be drawn up.
RAJIV SAHAI ENDLAW, J.
FEBRUARY17, 2020 „gsr‟..
CS(COMM) No.1366/2016 Page 7 of 7