Delhi High Court
Philips Lighting Holding B.V. vs Jai Prakash Agarwal And Anr. on 5 July, 2022
Author: Navin Chawla
Bench: Navin Chawla
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 27.05.2022
Date of decision: 05.07.2022
+ CS(COMM) 46/2019
PHILIPS LIGHTING HOLDING B.V. ..... Plaintiff
Through: Ms.Shwetasree Majumder,
Ms.Devyani Nath & Mr.Nitin
Mittal, Advs.
versus
JAI PRAKASH AGARWAL AND ANR. ..... Defendants
Through: Mr.C.M. Lall, Sr. Adv. with
Mr.Partha J. Deka, Ms.Radhika
Arora, Ms.Ananya Chug &
Mr.Rishabh Srivastava, Advs.
+ CS(COMM) 76/2019
SIGNIFY HOLDING B.V. ..... Plaintiff
Through: Ms.Shwetasree Majumder,
Ms.Devyani Nath & Mr.Nitin
Mittal, Advs.
versus
SYSKA LED LIGHTS PVT. LTD. ..... Defendant
Through: Mr.Shailen Bhatia, Ms.Zeba
Tarannum Khan & Mr.Raghav
Bhalla, Advs.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
I.A. 7716/2019 in CS(COMM) 46/2019
1. The present application has been filed by the plaintiff under Order
VI Rule 17 of the Code of Civil Procedure, 1908 (in short, „CPC‟)
seeking an amendment to the cause title of the suit by substituting its
name from „Philips Lighting Holding BV‟ to „Signify Holding BV‟. The
plaintiff asserts that subsequent to the filing of the present suit, on
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 1 of 60
18:28:27
01.02.2019, the plaintiff underwent a corporate name change from
„Philips Lighting Holding BV‟ to „Signify Holding BV‟. A declaration of
the Notary Public showing an amendment to the Articles of Association
of the plaintiff-company and the change of the plaintiff-company‟s name
to „Signify Holding BV‟ has been filed along with the application.
2. The defendants oppose the present application contending therein
that the plaintiff has filed the above two suits, that is, CS(COMM) 46 of
2019 and CS(COMM) 76 of 2019, in different names. Though the
plaintiff-company claims to have changed its name to „Signify Holding
BV‟ on 01.02.2019, but the documents filed by the plaintiff show that the
resolution for the change of name of the plaintiff-company was passed in
November, 2018, that is, prior to the filing of the present suit. The
defendants contend that, therefore, on the date of filing of the suit, the
legal entity in the name of the plaintiff did not exist and the suit has been
wrongly instituted.
3. I have considered the submissions made. Along with the
application, the plaintiff has filed a declaration of the Notary Public
showing an amendment to the Articles of Association of the plaintiff-
company and the change of name. The learned counsel for the plaintiff
submits that in Netherlands, where the plaintiff-company is registered, it
is only with such declaration that the change of name, in fact, becomes
operational. Be that as it may, as it is only the change of name and not a
case of transfer of rights and the plaintiff has derived no undue benefit by
instituting this suit in its previous name, I do not see any reason not to
allow the present application, the same being only formal in nature.
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 2 of 60
18:28:27
4. Accordingly, the application is allowed. The amended memo of
parties be filed within a period of ten days from the date of this order.
I.A. 6718/2019 in CS(COMM) 76/2019
1. The present application has been filed by the defendant under
Order VI Rule 17 of the CPC seeking an amendment of its written
statement. By way of an amendment, the defendant primarily wants to
place on record the Certificate of Registration of Design bearing no.
305185 granted in favour of M/s Shree Sant Kripa Intellectual, who is
allegedly the licensor of the defendant-company, in Class 26-05 for the
design of the „LED Tube Lamp‟. The learned counsel for the defendant
submits that as this design registration was granted subsequent to the
filing of the written statement, the same needs to be brought on record by
way of an amendment in the written statement.
2. The application is not opposed by the learned counsel for the
plaintiff and in fact, submissions had been made by the learned counsel
for the plaintiff relying upon the amendment sought.
3. Accordingly, the application is allowed and the amended written
statement is taken on record.
I.A. 1241/2019 in CS(COMM) 46/2019 and I.A. 2159/2019 in
CS(COMM) 76/2019
1. The above applications have been filed by the plaintiff under Order
XXXIX Rules 1 and 2 of the CPC praying for an ad-interim injunction
against the defendants (in both the suits), restraining them from
manufacturing and selling or in any manner dealing in products
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 3 of 60
18:28:27
embodying the plaintiff‟s registered design under the registration no.
299147 or a deceptively similar variant thereto. Though in CS (COMM)
76 of 2019, a claim is also made to another registered design of the
plaintiff bearing no. 247723, the present common order is being passed
as, in my opinion, at least for the purpose of the present applications, the
claim of the plaintiff on the design under the registration no. 299147,
which is claimed to have been infringed by the defendants in both the
suits, would require to be considered in a holistic manner rather than
separately. This is primarily as one of the common defences raised by the
defendants (in both the suits) is that the design has been wrongly
registered in favour of the plaintiff and is liable to be cancelled for the
same having been previously registered in India as also published in
India.
2. The plaintiff claims itself to be the leading manufacturer and seller
of high quality and energy-efficient lighting products, systems and
services, such as home lighting, stage lighting, studio lighting, location
lighting, landscape lighting, display lighting, smart lighting as also their
controls, distribution and power sources. It claims to have developed
several innovative lighting products keeping technologies of Light
Emitting Diodes (in short, „LED‟) at the forefront. It claims to be
continuously investing in the research and development as well as the
advertisement and promotions of its products, details whereof it gives as
under:-
Year Annual Sales Research and Advertisement
Development and Promotional
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 4 of 60
18:28:27
Expenses Expenses
(In millions of EUR)
2016 7,115 353 170
2017 6,965 354 172
3. For India, it gives the total sales figures of its Indian subsidiary as
under:-
Financial Year Total Income (INR in million)
2016-17 33,386
2017-18 35,310
DESIGN REGISTRATION NO. 299147
4. As noted hereinabove, the present two suits are filed by the
plaintiff (in both the suits) (hereinafter referred to as the „plaintiff‟) inter-
alia claiming rights in the design of what it refers to as a „T-Shaped LED
Bulb‟ (hereinafter referred to as a „T-Bulb‟) registered under the design
registration no. 299147 on 06.11.2017 with a reciprocity date of
08.05.2017 in Class 26-04. The Certificate of Registration of Design is
reproduced hereinunder:-
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 5 of 60
18:28:27
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 6 of 60
18:28:27
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 7 of 60
18:28:27
4.1. At this stage itself, I may note that in paragraph 15 of the plaint,
the plaintiff claimed priority of its registration from the EUIPO
registration dated 08.05.2015. The same is admittedly incorrect as is
evident from the Certificate of Registration of Design reproduced
hereinabove, and the correct date of priority should have been
08.05.2017. The defendants contend that the wrong date was given in the
plaint with a mala fide intent. I shall be dealing with this submission in
detail in the later part of this judgment.
ARGUMENTS ON BEHALF OF THE PLAINTIFF (IN BOTH THE SUITS)
5. The learned counsel for the plaintiff submits that the novelty in the
above design resides in its unique „T-Shape‟ and „Plug-and-Play‟ format.
She submits that in the lighting industry, bulbs are always understood to
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 8 of 60
18:28:27
have been round in shape. However, the same was often not enough to
brighten a room. Similarly, a tube light was understood to be having a
base attached to the wall with a holder on the side, which was not often
convenient to install. The plaintiff, therefore, came out with this novel
design, which is not only easy to install but also gives greater light as
there are no holders on the side. The rotational mechanism of the T-Bulb
also makes it convenient to focus the light.
5.1. The learned counsel for the plaintiff further submits that the right
of the plaintiff in the aforementioned design is also recognized by the
industry as the plaintiff is the Original Equipment Manufacturer (in short,
„OEM‟) for several lighting companies in India such as Eveready
Industries India Ltd. and Havells India Limited, to name a few, which
procure the plaintiff‟s T-Bulb and sell the product under their own brand
name subject to the payment of a license fee and/or other valuable
consideration under the terms of their respective contracts.
5.2. Referring to the products of the defendants (in both the suits), she
submits that the same are infringing copies of the plaintiff‟s registered
design and ought to be injuncted. She refers to a „Comparative Report‟
dated November 2018 (in CS(COMM) 46 of 2019) and a „Benchmark
Report‟ dated 08.01.2019 (in CS(COMM) 76 of 2019) to highlight that
the products of the defendants (in both the suits) are identical to that of
the plaintiff‟s. The photographs of the plaintiff‟s and both the defendants‟
products as also the original products were produced for the scrutiny of
the Court. The photographs of the plaintiff‟s and the defendants‟
products, in CS(COMM) 46 of 2019 are as under:-
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 9 of 60
18:28:27
Photographs of the Plaintiff's Photographs of the Defendants'
Product Product
5.3. She highlights the similarity of the design of the two products, in
CS(COMM) 46 of 2019, as under:-
a. The impugned product has the same overall shape, that is, a
T-Shaped bulb formed horizontally by an elongated rectangular
light diffuser and vertically by a smaller plastic rectangular and
round element;
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 10 of 60
18:28:27
b. The dimensions of the elongated diffuser of the bulb as well
as the smaller rectangular bottom which connects the diffuser to
the pivot and the socket are identical to the plaintiff‟s product;
c. The diffusers in both have grooves on the base; and
d. The defendants‟ product also has the same swivel and twist
mechanism supported by a pivot right above the socket to allow
adjusting the light coverage.
5.4. In CS(COMM) 76/2019, the defendant‟s product is pictorially
represented as under:-
5.5. The learned counsel for the plaintiff submits that the products of
the plaintiff and the defendant, in CS(COMM) 76 of 2019, are identical
in the following aspects:-
a. The 'SYSKA Lumispread LED Bulb' has the same overall
shape, that is, a T-Shaped bulb formed horizontally by an
elongated rectangular light diffuser and vertically by a smaller
plastic rectangular and round element;
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 11 of 60
18:28:27
b. The diffusers in both have grooves on the base; and
c. The defendant's product also has the same swivel and twist
mechanism supported by a pivot right above the socket to allow
adjusting the light coverage.
6. The learned counsel for the plaintiff further submits that the
defendants (in both the suits) are also guilty of passing off their
impugned products as that of the plaintiff‟s on account of a deceptively
similar look, feel and trade dress of both the products. In support of the
reputation of the plaintiff‟s product, she places reliance on the affidavits
of the plaintiff‟s distributors filed along with the plaint, as also certain
articles written about the plaintiff‟s T-Bulb.
7. The learned counsel for the plaintiff places reliance on the
judgments of this Court in J.N. Electricals (India) v. President
Electricals, MANU/DE/0172/1979 and Dabur India Ltd. v. Amit Jain
and Ors., 2009 (39) PTC 104 (Del) (DB), to submit that the test to be
applied in cases of design infringement is of judging solely by the „eye‟.
All that is required to be seen in action of design infringement is the
„sameness‟ of the features of shape, configuration or pattern and it is not
necessary that the two designs must be identical on all points and should
differ on none. A fraudulent imitation is one which is deliberately based
upon the registered design, though it may be different in some aspects
from the original.
7.1. She places reliance on the judgments of this Court in Dart
Industries Inc and Ors. v. Polyset Plastics Pvt. Ltd. and Ors., 2018 (75)
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 12 of 60
18:28:27
PTC 495 (Del) and Apollo Tyres Ltd. v. Pioneer Trading Corporation
and Ors., 2017 (72) PTC 253 (Del), to submit that because the product of
the plaintiff is also functional, inasmuch as it provides better lighting and
easier installation, it cannot be said that its design is not worthy of
protection. In such cases, the test to be applied is whether a particular
function can be achieved through a number of different forms. In the
present case, the function sought to be achieved by the plaintiff‟s
products can be achieved in a different manner and, therefore, its unique
design is entitled to protection.
8. On the claim of passing off, the learned counsel for the plaintiff
places reliance on the judgment of the Full Bench of this Court in
Carlsberg Breweries A/S. v. Som Distilleries and Breweries Ltd., 2019
(77) PTC 1 (Del) and of the Division Bench of this Court in Crocs Inc.
USA v. Bata India and Ors., 2019 (79) PTC 75 (Del), to submit that
claim of passing off in a design is also maintainable.
ARGUMENTS ON BEHALF OF THE DEFENDANTS IN CS(COMM) 46 OF
2019
9. The learned senior counsel for the defendants submits that as the
plaintiff is claiming passing off in the design itself, the design registration
is liable to be cancelled. He submits that by its very definition, a „design‟
does not include any trade mark. The moment the plaintiff claims a right
in a design as a trade mark, the same is liable to be cancelled. Referring
to the judgment of the Full Bench of this Court in Carlsberg Breweries
A/S. (supra), he submits that the Full Bench of this Court merely
recognized that there can be an action of passing off maintained where
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 13 of 60
18:28:27
the plaintiff bases its claim not only on the elements of its design, but on
a larger trade dress or get up, the presentation to its product through its
packaging and so on. In the present case, as the passing off action is
based only on the elements of design, the design itself is liable to be
cancelled and no relief can be granted to the plaintiff.
9.1. He further submits that the design registration of the plaintiff is
also liable to be cancelled in terms of Section 19(1)(a) and 19(1)(b) of the
Designs Act, 2000 (in short, „the Act‟) for the same having been
previously registered in India and having been published in India or in
any other country prior to the date of registration. In this regard, he draws
the attention of this Court to the design registration no. 280993 dated
29.02.2016 in Class 26-04 and the design registration no. 280699 dated
22.02.2016 in Class 26-05, both in favour of Thaikattil Jose. The same
are reproduced hereinunder for sake of easier reference:-
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 14 of 60
18:28:27
9.2. The learned senior counsel for the defendants submits that not only
are the products of the plaintiff and the above-referred registered designs,
in favour of Thaikattil Jose, common but also are for the same product.
He submits that as these registrations predate that of the plaintiff,
therefore, the design registration of the plaintiff is liable to be cancelled.
9.3. The learned senior counsel for the defendants further submits that
to get over this legal hurdle, the plaintiff, in paragraph 15 of the plaint,
has falsely claimed the reciprocity date of its registration as 08.05.2015.
This misstatement was not bona fide but was intentionally made in order
to mislead this Court and to create a false defence against the cancelation
of the plaintiff‟s design registration. He submits that this itself is
sufficient to disentitle the plaintiff to any interim relief.
9.4. Though the defendant has also referred to a design registration in
the name of Jadhav Powertech under registration no. 280438 under Class
26-05, the learned senior counsel for the defendant does not lay emphasis
on the same for the purposes of the present application as the document
produced is not a clear copy and the complete design cannot be made out
therefrom.
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 15 of 60
18:28:27
10. The learned senior counsel for the defendants further submits that
the plaintiff has also concealed from this Court correspondence that was
exchanged between the parties prior to filing of the present suit. He
submits that the said correspondence clearly shows that the claim of the
plaintiff was only monetary, which is a relevant consideration at least as
far as the present interim application is concerned. He submits that the
said correspondence was intentionally not disclosed to this Court in order
to obtain a favourable order of injunction behind the back of the
defendants. He submits that for such concealment alone, the plaintiff is
not entitled to any interim injunction.
11. Referring to the judgment of this Court dated 24.02.2014 in I.A.
Nos.19671 of 2013 & 596 of 2014 in CS(OS) 2407 of 2013 titled
Steelbird Hi-Tech India Ltd. v. S.P.S. Gambhir & Ors, he submits that
the design of the plaintiff is even otherwise only a trade variant with an
LED tube light and the holder being common to trade. For the plaintiff to
claim its right in the design as being „new‟ or „original‟, the plaintiff
must show that it introduced some substantial change to the already-
known design. He submits that the plaintiff has miserably failed to meet
the above test and, therefore, is not entitled to any relief.
ARGUMENTS ON BEHALF OF THE DEFENDANT IN CS(COMM) 76 OF
2019
12. The learned counsel for the defendant in CS(COMM) 76 of 2019,
apart from adopting the arguments of the learned senior counsel for the
defendants in CS(COMM) 46 of 2019, places reliance on a patent bearing
no. CN20102107858U20100119 filed on 24.11.2010 in China for a bulb
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 16 of 60
18:28:27
(though to be fitted in an automobile) with the following shape and
abstracts thereof as under:-
"The existing vehicle brake lamps are round
lamps which are easy to be omitted when drivers
of other vehicles do not focus on the frontal
vehicle,and cannot be distinguished by colour
blind passerby particularly. The utility model
provides a T-shaped vehicle brake lamp which
comprises a plurality of LED bulbs and a lamp
holder. The T- shaped vehicle brake lamp is
characterized in that a plurality of LED bulb are
arranged in a T- shape and are fixed on the lamp
holder. The T-shaped vehicle brake lamp has the
following advantages: the T-shape has a well-
known significance of stopping; when the T-
shaped vehicle brake lamp is turned on, the
drivers and the passerby can visually know the
stopping sigificances, thus carring out the
reflection quickly."
12.1. He further refers to a design registration filed by
CIEDESLAMPES S.A. for a T-Shape tube in 1957, which he claims
constitutes a prior publication. The same is reproduced hereinbelow:-
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 17 of 60
18:28:27
12.2. He also places reliance on the U.S. Patent No.US2005/0121688A1
filed by M/s Sumitomo Electric Industries Limited in 2005 for the
following shape, drawing attention to the portion marked as figure 11.
The relevant depiction and description of figure 11 are reproduced
hereinbelow-
"FIG. 11 is view illustrating the relation between
the applied current and the light output, according
to the first embodiment;"
12.3. He further draws the attention of the Court to patent application
no.US 8,303,146 B2/ a T-Shaped bulb for a vehicle light with the
following description:-
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 18 of 60
18:28:27
"As shown in FIG.1, the side turn signal lamp 20
is configured like a T-shape as a whole in a front
view, and is longer in the lateral direction than in
a height direction."
Another sight turn signal lamps and US Patent
No. US 8,303,146B2 is as under (T-shape).
12.4. The learned counsel for the defendant submits that there are
various other brands of T-Shaped bulbs/tube lights in the market and,
therefore, the plaintiff cannot claim any exclusivity in their design.
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 19 of 60
18:28:27
12.5. He further submits that, even otherwise, the design of the
plaintiff‟s and the defendant‟s products is different inasmuch as the
defendant‟s product is cylindrical in appearance; the moving mechanism
is also different, thereby giving a different feel and get up to the
defendant‟s product when compared to the plaintiff‟s product. He
submits that, therefore, the two products are not identical and there is no
infringement of the design of the plaintiff by the defendant.
13. The learned counsel for the defendant submits that as far as the
claim of passing off is concerned, apart from design itself, the plaintiff
has not asserted any other ingredient required to maintain a claim of
passing off. He submits that, therefore, the said claim is liable to be
rejected.
REJOINDER ARGUMENTS
14. In rejoinder, the learned counsel for the plaintiff submits that the
defendants (in both the suits), apart from placing the documents of prior
design registration and patents granted, have not produced the products
bearing such design or patent registrations. She submits that for
challenging the registration of the plaintiff, it was incumbent upon the
defendants to show prior „publication‟, which necessarily would mean a
prior product in the market or the industry bearing a similar design. She
submits that even otherwise, the articles for which the design
registrations have been earlier obtained and/or the patent granted are
different from that of the plaintiff and, therefore, are not relevant to the
present suit. She submits that as far as design registrations are concerned,
they are in Class 26-05, which is for „lamps, standard lamps, chandeliers,
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 20 of 60
18:28:27
wall and ceiling fixtures, lampshades, reflectors, photographic and
cinematographic projector lamps‟, whereas the plaintiff‟s registration is
in Class 26-04, which is for „including bulbs for electric lamps, luminous
plaques and tubes, and candles.‟ With respect to the patents, the same are
for tubes and vehicles and not LED Tubes and in any case, are not
sufficiently depicting the actual design. She places reliance on the
judgment of the Supreme Court in Bharat Glass Tube Ltd. v. Gopal
Glass Works Ltd., (2008) 10 SCC 657 and of the Full Bench of this
Court in Reckitt Benkiser India Ltd. v. Wyeth Ltd., 2013 SCC OnLine
Del 1096 to submit that these do not constitute „publication‟.
14.1. She submits that in any case, the defendant in CS (COMM) 76 of
2019, having itself obtained a registration for similar design, though at a
later stage and date, is estopped from challenging the novelty in the
design. In support, she places reliance on the judgment of this Court in
Pentel Kabushiki Kaisha & Anr. v. M/s Arora Stationers & Ors., 2018
SCC OnLine Del 6512 and Vega Auto Accessories (P) Ltd v. S.K. Jain
Bros Helmet (I) Pvt. Ltd., (2018) 75 PTC 59 (Del). She submits that the
defendant-company and M/s Shree Sant Kripa Intellectual are under the
same management and, therefore, are estopped from challenging the
validity of registration of design granted in favour of the plaintiff.
15. As far as allegations of suppression and misstatement are
concerned, she submits that the correspondence exchanged between the
plaintiff and the defendants in CS (COMM) 46 of 2019 was not relevant
and, in fact, would only come to the support of the claim of the plaintiff,
inasmuch as, the defendants till then were recognizing the rights of the
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 21 of 60
18:28:27
plaintiff in the design and were negotiating for the license fee payable for
use of the same. On the claim of misstatement, she submits that the
reciprocity date was a typographical error; the documents of registration
were itself filed with the plaint, which evidences the correct date of
priority of plaintiff‟s registration. She submits that therefore, no malafide
can be attributed to the plaintiff for such bona fide typographical mistake.
FINDINGS OF THIS COURT
16. I have considered the submissions made by the learned counsels
for the parties.
16.1. At the outset, reference is to be made to certain provisions of the
Act. Section 2(d) of the Act, defines the term „design‟, and is reproduced
hereinunder:-
"(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 (c) of section 2 of the Copyright Act, 1957
(14 of 1957)."
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 22 of 60
18:28:27
16.2. „Article‟ is defined in Section 2(a) of the Act, as under:-
"(a) "article" means any article of manufacture
and any substance, artificial, or partly artificial
and partly natural; and includes any part of an
article capable of being made and sold
separately;"
16.3. Section 4 of the Act provides for what cannot be registered as a
„design‟, and reads as under:-
"4. Prohibition of registration of certain
designs.--A design which--
(a) is not new or original; or
(b) has been disclosed to the public
anywhere in India or in 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."
16.4. Section 2(g) of the Act states that the term „original‟, in relation to
design, means originating from the author of such design and includes the
cases which though old in themselves yet are new in their application.
16.5. Section 6 of the Act states that a „design‟ may be registered in
respect of any or all of the articles comprised in a prescribed class of
articles. It further provides that where a design is registered in respect of
any article comprised in a class of article, the application of the proprietor
of the design to register it in respect of some one or more other articles
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 23 of 60
18:28:27
comprised in that class of articles cannot be refused or invalidated on the
ground of the design not being new or original for reason of it being so
previously registered, or on the ground of it having been previously
published in India only for the reason that it has been applied to articles
in respect of which it has been previously registered. Sub-Section (1) and
(3) of Section 6 of the Act are relevant to the decision on the present
applications, and are reproduced hereinbelow:-
"6. Registration to be in respect of particular
article. - (1) A design may be registered in respect
of any or all of the articles comprised in a
prescribed class of articles.
xxxxx
(3) Where a design has been registered in respect
of any article comprised in a class of article, the
application of the proprietor of the design to
register it in respect of some one or more other
articles comprised in that class of articles shall
not be refused, nor shall the registration thereof
invalidated-
(a) on the ground of the design not
being a new or original design, by reason
only that it was so previously registered; or
(b) on the ground of the design having
been previously published in India or in any
other country, by reason only that it has
been applied to article in respect of which it
was previously registered:
Provided that such subsequent registration
shall not extend the period of copyright in the
design beyond that arising from previous
registration."
16.6. Section 19 of the Act gives the grounds for the cancellation of the
registration of a design, including on the ground that the design has been
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 24 of 60
18:28:27
previously registered in India or has been previously published in India or
in any country prior to the date of registration. Section 19 of the Act is
reproduced hereinunder:-
"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 on 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 registrable 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 any time refer any such
petition to the High Court, and the High Court
shall decide any petition so referred."
16.7. Section 22 of the Act grants protection to the registered design
against piracy thereof. Sub-Section (3) of Section 22 of the Act states that
in any suit or any other proceeding for relief against piracy of the
registered design, every ground on which the registration of a design may
be cancelled under Section 19 of the Act shall be available as a ground of
defence. Section 22 of the Act is reproduced hereinunder:-
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 25 of 60
18:28:27
"22. Piracy of registered design.--(1) During the
existence of copyright in any design it shall not be
lawful for any person--
(a) for the purpose of sale to apply or cause
to be applied to any article in any class of articles
in which the design is registered, the design or
any fraudulent or obvious imitation thereof,
except with the license or written consent of the
registered proprietor, or to do anything with a
view to enable the design to be so applied; or
(b) to import for the purposes of sale,
without the consent of the registered proprietor,
any article belonging to the class in which the
design has been registered, and having applied to
it the design or any fraudulent or obvious
imitation thereof; or
(c) knowing that the design or any
fraudulent or obvious imitation thereof has been
applied to any article in any class of articles in
which the design is registered without the consent
of the registered proprietor, to publish or expose
or cause to be published or exposed for sale that
article.
(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
repetition 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:
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 26 of 60
18:28:27
Provided further that no suit or any other
proceeding for relief under this sub-section shall
be instituted in any court below the court of
District Judge.
(3) In any suit or any other proceeding for relief
under sub-section (2), ever ground on which the
registration of a design may be cancelled under
section 19 shall be available as a ground of
defence.
(4) Notwithstanding anything contained in the
second proviso to sub-section (2), where any
ground or which the registration of a design may
be cancelled under section 19 has been availed of
as a ground of defence under sub-section (3) in
any suit or other proceeding for relief under sub-
section (2), the suit or such other proceedings
shall be transferred by the Court, in which the suit
or such other proceeding is pending, to the High
Court for decision.
(5) When the court makes a decree in a suit under
sub-section (2), it shall send a copy of the decree
to the Controller, who shall cause an entry thereof
to be made in the register of designs."
16.8. A reading of the above provisions shows that a „design‟, refers
only to the features of shape, configuration, pattern, ornament or
composition of line and colours applied to any article whether in two
dimensional or three dimensional or in both forms, which in the finished
article „appeal to and are judged solely by the eye‟. It has to be „new‟ or
„original‟. If the design has been previously registered in India or has
been published in India or in any other country prior to the date of its
registration, such registration itself is liable to be cancelled and can be
assailed even as a defence to the suit alleging piracy of such registered
design.
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 27 of 60
18:28:27
17. In J.N. Electricals (India) (supra), a Division Bench of this Court
held that in judging the claim of piracy of a registered design, the test to
be applied is of „sameness‟ of the features of shape, configuration or
pattern. The „sameness‟ of features does not necessarily mean that the
two designs must be identical on all points and should differ on none.
They have to be substantially the same. The said judgment made a
reference to an earlier judgment of the High Court of Calcutta in Western
Engineering Co. v. Paul Engineering Co., AIR 1968 Cal 109, wherein
it was held that one of the practical tests to find out the identity or the
sameness of the design is to find out whether there are substantial
differences between the design subsequently registered and the design
which was earlier registered. These differences cannot be based on purely
subjective or utilitarian or aesthetic considerations, but the differences
must be objective in its essential features. A general view of the features
of both the designs should be looked into to find out if the one design is
as good as the other and the conclusion is to be arrived at by visual
examination of the two products. Similarity of device in external
appearance must be a relative feature in considering the substantial
difference between the two but is certainly not a determining factor.
18. In Dabur India Ltd. v. Amit Jain (supra), a Division Bench of
this Court held that „imitation‟ does mean „duplication‟ in the sense that
the copy complained of need not be an exact replica. The Court must
address its mind as to whether the design adopted by the defendants was
substantially different from the design which was registered. If the Court
is able to find that there is substantial and sufficient resemblance between
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 28 of 60
18:28:27
the alleged infringed design, an injunction should follow. It further
explained that „fraudulent imitation‟ is an imitation which is based upon
and deliberately based upon the registered design, though which may be
less apparent than an obvious imitation. There would be subtle distinction
between the registered design and a fraudulent imitation, and yet the
fraudulent imitation, although it is different in some respects from the
original, would be an imitation when two designs are closely scanned.
19. In Dart Industries Inc. and Ors. (supra), a Co-ordinate Bench of
this Court held that use of a design not substantially different from the
registered designs would also amount to infringement. Designs must be
protected against imitations since the statutory right of exclusive use is
granted only for a limited period of time and that damages can never be
an adequate compensation to the plaintiffs if they are deprived of their
statutory right of commercial exploitation. To test as to whether a design
is merely functional or not is by asking a question whether there is no
other shape or configuration available in which the product can discharge
the desired function. If the answer is in the negative, the registered design
is entitled to protection. The onus of proving that the registered design is
not new or original and not entitled to protection is always on the
defendants.
19.1. Keeping in the view the above test, the designs of the T-Bulb of
the plaintiff and those of the defendants can easily be said to be similar, if
not identical. In fact, the learned senior counsel for the defendants in
CS(COMM) 46 of 2019 did not make any serious efforts to distinguish
the two. In the order passed by this Court dated 11.02.2019 in CS
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 29 of 60
18:28:27
(COMM) 46 of 2019, the following submission of the learned senior
counsel for the defendants was recorded:-
"3. .....Learned senior counsel for the defendant
submits that Mr. Kapil Tyagi, designer of the
defendant company is present in Court and he saw
these designs in a fair in China in 2016 and he
designed this product in 2018 after examining the
similar products including that of the
plaintiff......"
(Emphasis Supplied)
19.2. Therefore, at least at this stage, it cannot be said that the article of
the defendant in CS(COMM) 46 of 2019 is not similar to that of the
plaintiff.
20. The submission of the learned counsel for the defendant in
CS(COMM) 76 of 2019 highlighting the alleged differences in the two
designs, also prima facie has no merit. The alleged differences are merely
superficial in nature. Once judged solely by the eye, the two products,
that is, one of the plaintiff‟s and the other of the defendant, are similar if
not identical. The difference of cylindrical shape of tube and/or of the
joint to the holder, are hardly sufficient to distinguish the design of the
two products.
21. The submission of the learned counsels for the defendants that the
plaintiff is not entitled to protection of its design as it has itself claimed
such design to be functional, is prima facie incorrect. Though the plaintiff
has highlighted certain functional aspects and benefits of its products, at
least prima facie, it has not been shown by the defendants that the shape
and design adopted by the plaintiff is the only shape or design by which
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 30 of 60
18:28:27
the desired functionality could be achieved. In view of the judgments of
this court in Dart Industries Inc (supra) and Apollo Tyres Ltd.(supra), I
therefore, prima facie find no merit in the submission of the defendants in
this regard.
22. Having said the above, the question arises as to whether the
defendants have been able to make out at least a prima facie defence of
the registration of the design in favour of the plaintiff to be cancelled
under Section 19 of the Act. In this regard, it is first to be seen that the
date of priority of registration assigned to the plaintiff‟s design is
admittedly 08.05.2017. Though, much has been said about plaintiff‟s
averments in paragraph 15 of the plaint of claiming such priority with
effect from 08.05.2015, it prima facie appears to be a mere typographical
error in the plaint and is not found sufficient to disentitle the plaintiff to
ad-interim protection, if the plaintiff is otherwise entitled.
22.1. With the priority date of 08.05.2017, the question that then is to be
considered is as to whether the defendants have been prima facie able to
show a similar previously-registered design in India or a similar design
having been published in India or in any other country prior to this date.
In my opinion, the defendants have, atleast prima facie, been able to
show the same. The designs registered in favour of Thaikattil Jose dated
22.02.2016 and 29.02.2016, reference whereof has been made herein
before, are prior to the registration of the plaintiff‟s design of the T-Bulb.
22.2. The learned counsel for the plaintiff contended that the two
aforementioned designs are dissimilar to that of the plaintiff‟s design. In
this regard, she also drew my attention to a table forming part of the
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 31 of 60
18:28:27
replication filed by the plaintiff in CS(COMM) 46 of 2019, highlighting
such distinction. The same is reproduced hereinbelow:-
Features Thaikattil Thaikattil Jadhav Plaintiff‟s
Jose‟s design Jose‟s design Powertech‟s design under
under no. under no. design under no. 299147
280993 280699 no. 280438
Class and 26-05 Linear 26-05 Electric 26-05 Tube 26-04 Lamp
electric lamp lamp light holder
description of
article
Product A tube light A tube light Tube light LED bulb
holder
Rotational No No No Yes
mechanism
Colour of the Green Red Not visible Silver or
White or Gold
base
Visual aspect Looks like a Looks like a Not visible Sleekly
plastic bulky plastic bulky integrated on
of base
pedestal pedestal the head
Color of the White White White and Translucent
translucent white
head (lighting
white
part)
Contains a Yes, it encases Yes, it encases Yes, it encases No. The light
the tubelight the tubelight the tubelight itself is fixed
holder
on the base
giving
maximum
coverage
Visual aspect The light is The light is The light is The light is
emitted emitted emitted emitted evenly
of light
through the through the through the on all sides -
top and the top and the top and the the absence of
length of the length of the length of the a holder and
tube, with the tube, with the tube, with the the square
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 32 of 60
18:28:27
holder holder holder edges ensure
blocking the blocking the blocking the maximum
long sides long sides long sides light dispersal
partially and partially and partially and
the short sides the short sides the short sides
entirely entirely entirely
Shape of the Rounded as in Rounded as in Rounded as in Square, unlike
a normal a normal a normal in tubelights
edges
tubelight tubelight tubelight
Dimension Unknown Unknown 30 cm x 7.62 20 cm x 11 cm
cm x 5.08 cm x 3 cm
Wattage Unknown Unknown 18 W 10 W
22.3. In my view, however, the above distinctions are not substantial
enough to hold that the plaintiff‟s design is „new‟ or „original‟. A Co-
ordinate Bench of this Court in its judgment in Steelbird Hi-Tech India
Ltd. (supra), considered the test to be adopted by the Court while judging
whether the design claimed by the plaintiff is new or original or a trade
variant to an old design. This Court held as under:-
"16. It was expressed by Buckley L.J. on the
question of quantum of novelty in Simmons v.
Mathieson &Cold, (1911) 28 R.P.C. 486 in these
words:
"In order to render valid the registration of
a Design under the Patents and Designs
Act, 1907, there must be novelty and
originality, it must be a new or original
design. To my mind, that means that there
must be a mental conception expressed in a
physical form which has not existed
before,but has originated in the constructive
brain of its proprietor and that must not be
in a trivial or infinitesimal degree, but in
some substantial degree."
17. ln Phillips v.Barbro Rubber Company (1920)
37 R.P.C. 233, Lord Moulton observed that while
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 33 of 60
18:28:27
question of the meaning of design and of the fact
of its infringement are matters to be judged by the
eye, it is necessary with regard to the question of
infringement, and still more with regard to the
question of novelty or originality, that the eye
should be that of an instructed person, i.e. that he
should know what was common trade knowledge
and usage in the class of articles to which the
design applies. The introduction of ordinary trade
variants into an old design cannot make it new or
original. He went on to give the example saying, if
it is common practice to have or not to have,
spikes in the soles of running shoes, any man does
not make a new and original designs out of an old
type of running shoes by putting spikes into the
soles. The working world, as well as the trade
world, is entitled at its will to take, in all cases, its
choice of ordinary trade variants for use in
particular instance, and no patent and no
registration of a design can prevent an ordinary
workman from using or not using trade knowledge
of this kind. It was emphasized that it is the duty of
the Court to take special care that no design is to
be counted as "new and original design" unless it
is distinguished from that previously existed by
something essentially new or original which is
different from ordinary trade variants which have
long been common matters of taste workman who
made a coat (of ordinary cut) for a customer
should be left in tender whether putting braid on
the edges of the coat in the ordinary way so
common a few years ago, or increasing the
number of buttons or the like, would expose him
for the prescribed years to an action for having
infringed a registered design. On final analysis, it
was emphasized that the use of the words "new or
original" in the statute is intended to prevent this
and that the introduction or substitution of
ordinary trade variants in a design is not only
insufficient to make the design "new or original"
but that it did not even contribute to give it a new
or original character. If it is not new or original
without them, the presence of them cannot render
it so.
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 34 of 60
18:28:27
18. The question before me for consideration is
whether the plaintiffs' design when registered on
1stDecember, 2011 was new or original or
different from what has been done before. As per
certificate of registration produced alongwith
plaint, the same does not show any light except the
novelty is claimed in all views for the whole
shape, configuration and surface pattern of the
Helmet. 'Original' means that the design
originating from the author.
19. Drawing a distinction between 'new' and
'original' Buckley L.J. said in Dover Ltd. vs.
NurnbergerCelluloidwaren Fabric Gehruder
Wolff, (27 R.P.C. 498) that 'new' is referred to a
case where the shape or pattern was wholly new
in itself and on the other hand 'original' to the
case where it was old but new in its application to
the particular subject matter. The word 'original',
according to the learned Judge "contemplates that
the person has originated something, that by the
exercise of intellectual activity he has started an
idea which had not occurred to anyone before,
that a particular pattern or shape or ornament
may be rendered applicable to the particular
article to which he suggests that it shall be
applied''.
20. It is rightly held in the cases decided that in
the matter of novelty the eye is to be the ultimate
test and the determination has to be on the normal
ocular impression. In order to know its newness
or originality it is necessary 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 pre-existing design
will not qualify it for registration. Taking into
account the nature of the article involved, the
change introduced should be substantial. It is not
necessary to justify registration that the whole of
the design should be new, the newness may be
confined to only a part of it but that part must be a
significant one and it should be potent enough to
impart to the whole design a distinct identity,
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 35 of 60
18:28:27
unless registration is sought for the said part
alone.
21. It was laid down by Lord Moulton in Phillips
v. Harbro Rubber Company (37 R.P.C. 233) that
it is the duty of the Court to take special cast that
no design shall be counted new or original unless
it is distinct from what previously existed by
something essentially new or original which is
different from ordinary trade variants which may
have long been common matters of taste or choice
in the trade. It is well established that a
registration cannot be deemed effective unless the
design or configuration sought to be protected is
new· or original and not of a pre-existing common
type. (Ram Sahai v. Angnoo, Air 1922 All. 496,
Bahkhshiv. Ghulam Mohammad, Air 1934
Lahore 709 and The Pilot Pen Co. (India) Private
Ltd., Madras v. The Gujarat Industries Private
Ltd., AIR1967 Madras 215). Vide In the matter of
Wingate's Registered Design No. 768.611 (52
R.P.C. 126) it was observed that what a
substantial difference is, is a question upon which
no general principle can be laid down at all; it
must depend on the particular facts in each case.
In one case a quite small variation in the details of
a design may be enough to make the design
something quite different from an existing design.
On the other hand, there are cases even where
quite large alterations in detail leave two designs
for all practical purposes the same. The Court has
to consider and look at the design in question with
an instructed eye and say whether there is or is
not such a substantial difference between that
which had been published previously and the
registered design as to entitle the proprietor of the
registered design to say that at the date of
registration that was a new or original design and
therefore properly registered.
22. Thus, the design must be held to be valid if the
statement of novelty is correctly construed in the
narrow sense. However, in other type of cases like
the case reported in Neggretti and Zambra v. W.
F. Stanley &Co., Ltd. (42 R.P.C. 358), the case
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 36 of 60
18:28:27
was concerned with the design of a thermometer.
The Court deciding the action noticed the
plaintiffs had produced a useful article of
commerce for a particular purpose, which, from
its smallness and neatness, was readily
distinguishable from the larger thermometers
which had gone before; but that was found to be
wholly immaterial. "The fact that the plaintiffs
have hit upon a useful shaped and useful sized
thermometer for the particular purpose in hand",
it was found that there is no reason in law why the
defendants should not even copy such features of
that Design which were common in the trade, nor
is it any reason why they should not add to such
Design any ordinary trade improvement or trade
variant which is obvious as soon as the particular
use to which the article is intended to be put is
appreciated."
22.4. Therefore, the test to determine if the design is „new‟ or „original‟
inter-alia is to determine and exclude ordinary trade variants into an old
design. A design identical with or even materially similar to the relevant
design should not been published or registered previously. A slight trivial
or infinitesimal variation from the pre-existing design shall disqualify the
relevant design for registration. The change introduced should be
substantial. A balance has to be struck so that novelty and originality may
receive the statutory recognition and interest of trade and right of those
engaged therein to share common knowledge is also protected. Mere
trade variants of what is already in existence or what is common to the
trade is not capable of being registered.
22.5. Applying the above test to the facts of the present case, it prima
facie appears that the design of the plaintiff is merely a trade variant of an
already-existing registered design(s) cited by the defendant in
CS(COMM) 46 of 2019 and as referred hereinabove. The earlier
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 37 of 60
18:28:27
registered designs are of a tube light on a holder. Though the plaintiff
calls its lighting source as a bulb, it is shaped like a small tube light. The
learned counsel for the defendant in CS(COMM) 76 of 2019 had asserted
that such tube lights are common in trade. The so-called bulb of the
plaintiff is attached to a holder by a „swill mechanism‟, which even
according to the plaintiff‟s own case is more functional in nature.
Therefore, prima facie it appears that the plaintiff‟s registered design is a
trade variant of an already existing registered design and was not capable
of being registered.
23. The submission of the learned counsel for the plaintiff that the
registered designs cited by the defendants are for Class 26-05 whereas the
plaintiff‟s design is registered in Class 26-04 and therefore, not relevant,
and cannot be accepted. Class 26 is for „Lighting apparatus‟. Class 26-04
is a sub-class and is for „Luminous sources, electrical or not‟. The
Note(s) appended to Class 26-04 clarifies that the sub-class is „including
bulbs for electrical lamps, luminous plaques and tubes, and candles.‟
Class 26-05 is for „Lamps, Standard Lamps, Chandeliers, wall and
Ceiling fixtures, lampshades, reflectors, photographic and
cinematographic projector lamps.‟ Section 6 of the Act provides that a
design may be registered in respect of any or all of the articles comprised
in a prescribed „class of articles.‟ Any question arising as to the class
within which any article falls shall be determined by the Controller,
whose decision shall be final. Sub-section (3) of Section 6 of the Act
further provides that where a design has been registered in respect of any
article comprised in a class of article, the application of the proprietor of
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 38 of 60
18:28:27
the design to register it in respect of some one or more other articles
comprised in that class of articles shall not be refused, nor shall the
registration thereof invalidated on the ground of it being so previously
registered for the other article or being previously published in India or in
any other country by reason of its application to that other article. The
proviso further states that the subsequent registration shall not extend the
period of copyright in the design beyond that arising from previous
registration. Therefore, once a design is registered for one of the articles
in a class of articles, the proprietor can claim a right even for other
articles in the same class of articles. Equally, someone else cannot claim
to become proprietor of the design by seeking registration thereof in
another sub-class of the same class of articles. It has not been shown that
the classification of the earlier registered articles or that of the plaintiff
was determined by the Controller upon contest and therefore, finality is
attached to it.
24. At this stage, it would be also relevant to note the submission of
the learned counsel for the plaintiff that as the defendants have failed to
produce the product to which the designs referred by them have been
applied, registration of such design by itself shall not be sufficient to
invalidate the registration of the plaintiff‟s design. In my prima facie
opinion, the above argument of the learned counsel for the plaintiff is
liable to fail for two reasons:-
24.1. What is being claimed is a previously registered design in
India: Section 19(1)(a) of the Act provides that registration of a
design is liable to be cancelled where the design has been
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 39 of 60
18:28:27
previously registered in India. The said provision does not require
„publication‟ as is the requirement in Section 19(1)(b) of the Act.
24.2. At least the two Indian registered designs relied upon the
by the defendants, in my prima facie opinion, would disqualify
the plaintiff's design from registration: For Section 19(1)(b) of
the Act, what constitutes „publication‟ and effect to registration of
a design in another country, has been explained in detail by the
Full Bench of this Court in Reckitt Benkiser India Ltd. (supra),
where it was held as under:-
"Meaning of prior publication under Sections
19(1)(b) read with Section 4(b) and whether
documents existing in the record of Registrar of
Designs in a convention country abroad which
are open to public inspection results in prior
publication:
11. The expressions „published‟ or
„publication‟ are not defined in the Act. Various
judgments have however defined these expressions
found in the Designs Act. Some judgments define
publication as being opposed to one which is kept
secret, whereas other judgments define
publication as something which is available in
public domain i.e. available as of right to any
member of the public. We are of course looking
into the issue of publication by means of existence
in public domain by publication in a paper (which
expression "paper‟ is taken to mean any other
medium where the design can be judged by the
eye) inasmuch as, it was not (and could not be)
disputed by both the parties before us that once
there is actual use of the design by making an
article out of the same, which is commercially
exploited and put in public use („by use‟ as stated
in Section 4(b) of the Act), there would surely be
publication. The issue of publication is
accordingly being specifically looked into from
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 40 of 60
18:28:27
the point of view of whether publication by means
of publishing in a paper form available in public
generally including of their availability in the
office of the Registrar of Designs.
12(i). Let us therefore see what should be
the meaning which should be ascribed to the
expression „published‟ or „publication‟ when we
use such expressions qua „published‟ or
„publication‟ in paper form or by depiction in any
form which is visible to naked eye without the
same having been put in the form of an article. We
have already in this regard reproduced the
definition of design as per Section 2 (d) of the Act
and the definition of expression „original‟ as per
Section 2(g) of the Act above, and which sections
will be of relevance for discussion of
„publication‟.
(ii) When we read the definition of a
„design‟ under Section 2(d) we find that there are
inter alia four important aspects in the same. The
first aspect is that the design is a design which is
meant to produce an article as per the design by
an industrial process or means. The second aspect
is that design is not the article itself but the
conceptual design containing the features of a
shape, configuration, pattern, composition of lines
etc. Third aspect is the judging of the design
which is to be put in the form of finished article
solely by the eye. Fourthly, the design which is the
subject matter of the Act is not an artistic work
which falls under the Copyright Act or a
trademark which falls under the Trademarks Act.
(iii) More clarity is given to the meaning of
the word design when we look at the definition of
„original‟ as found under Section 2(g). The
definition of the expression „original‟ shows that
the design though is not new because such design
exists in public domain and is otherwise well-
known, however, the design is original because it
is new in its application i.e. new in its application
to a specific article. Therefore, for seeking
registration under the Act it is not necessary that
the design must be totally new, and it is enough
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 41 of 60
18:28:27
that the existing design is applied in a new
manner i.e. to an article to which that design has
not been applied before.
(iv) So far as the expression „new‟ is
concerned, it is well known i.e. it is something
which comes into existence for the first time and
therefore a new design which comes into existence
for the first time obviously will be entitled to
copyright protection.
13(i). When we see the provision of Section
4(b) we find that a design which is already
disclosed by publication in India or abroad will
not be registered, however, the bar for
registration of a design which is disclosed to the
public in India or abroad is accompanied by the
language which requires publication „in a
tangible form or by use or in any other way‟. It is
this language and the fascicle of expressions
„tangible form‟ or „use‟ or „in any other way‟
which requires to be understood and interpreted
so as to understand the meaning of the word
„publication‟.
(ii) So far as the expression „by use‟ is
concerned, there would be no difficulty because
obviously use of the design would be by
translating the same into a finished article by an
industrial process or means. The real difficulty
which arises actually is qua the expressions
„tangible form‟ or „in any other way‟. These two
expressions on a normal literal interpretation are
much wider than the expression „use‟ (the design
having been translated to an article). Publication
in a paper form or publication as being visible to
the naked eye without the same having been put
on an article is very much otherwise included in
these wide expressions. The question thus is to
what extent should there be publication for the
same to be in „tangible form‟ or „in any other
way‟ for being included within the language of
„publication‟ as found in Sections 4(b) and
19(1)(b). Before we answer this question, we
would however like to refer to the ratios of the
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 42 of 60
18:28:27
judgments in the cases of Gopal Glass Works and
Dabur India Ltd. cases.
xxxxx
15. A reading of the aforesaid paras shows that
the following ratio can be culled out from the
judgment in Gopal Glass Works' case : -
(i) The issue of originality of design has to
be necessarily looked at in terms of the article to
which it applies and there may be lack of clarity
as to existence of prior publication unless the
publication is totally clear i.e. it is only completely
understood for its effect only when the same is
actually put on the article.
(ii) Primacy was given to the Indian
registered design because the design which was
registered in the U.K. Patent Office was never
used qua the article in question viz the glass sheet
and the documents downloaded from the internet
of the U.K. Patent Office could not be said to have
much clarity for being treated as a prior
publication qua the specific article in question viz
the glass sheet.
(iii) A foreign registered design cannot be
the basis for cancellation under Section 19(1)(a)
of a design registered in India unless there is
application of a design to an article which is put
into public domain/use or unless there would have
been complete and sufficient clarity in the
documents downloaded through internet from the
U.K. Patent Office that it can be held that there is
a clear cut clarity qua prior „publication‟.
(iv) In the facts of that case since there was
no clarity from the design downloaded from U.K.
Patent office it was held that there was no prior
publication.
16. Besides the aforesaid ratio, it needs to be
noted on the reading of the judgment in Gopal
Glass Works that though there are observations
when such observations are read only in a
particular para of the judgment or only in a
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 43 of 60
18:28:27
particular line of a judgment, then, there may be
an indication that existence of registration in a
foreign country would not be a ground to hold
prior publication, however, when such
observations are read in context of entire
judgment it was found that those observations are
made in the facts of the case because there was
lack of sufficient clarity and evidence of what
actually was the depiction and the effect of the
design registered in U.K. Patent Office qua the
specific article in question being the glass sheets.
Also, the observations of lack of prior publication
in facts of that case were made with respect to a
design having to be put on an article as
differentiated from lack of clarity in a design
merely by the same existing in public records,
because in the facts of that case the design
registered abroad had not been put in use in glass
sheets.
xxxxx
18. We have extensively quoted the reasoning and
ratio in the case of Gopal Glass Works and
various facets and factual matrix which led to the
conclusion. It will not be correct to read only few
paragraphs of the judgment in isolation. In the
case of Gopal Glass Works, the Court took into
consideration several aspects before reaching its
conclusions and para 40 contains one of the
aspects. The Division Bench of this Court in its
decision in case of Dabur India Ltd. has referred
to only paras 39 and 40 of Gopal Glass
Works'scase. It is therefore necessary to clarify
and elucidate upon the expression „publication‟ as
dilated upon in the case of Gopal Glass Works
and to what extent and when the registration
abroad will result in publication abroad which is
specifically covered in Sections 4(b) and 19(1)(b)
of the 2000 Act.
19(i) In our opinion the expression
„tangible form‟ refers to a specific physical form
or shape as applied to an article and not the mere
ability to replicate, convert and give a physical
shape to the design, though of course to fall under
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 44 of 60
18:28:27
the expression „tangible form‟ it is not necessary
that the article should have been used, but the
expression „in any other way‟ takes some of its
colour from the words „used‟ or „tangible form‟.
The principle of Nositur a Sociis will be
applicable. Section 4(b) therefore, not only,
requires publication but it should be publication
by use, in tangible form or in any other way. The
expression „any other way‟ here is wider in
context and takes into its ambit a design which
has been created though not still put to use or
exists in tangible form but at the same time it is
guided by the words "use" and "tangible form".
Thus, to disqualify a claim for registration or
cancel registration of a design in India, the
publication abroad should be by use, in tangible
form, or in some other way, means that the design
should not be a factum on paper/document alone,
but further that the design on paper should be
recognizable i.e. have the same impact in the
public as a furnished article will appeal when
judged solely by the eye (see Section 2(d)). Putting
it differently if the design is on paper then it must
exist upon a piece of paper in such a way that the
shape or other features of the article are made
clear to the eye. The visual impact should be
similar to when we see the design on a physical
object i.e. an object in tangible form/in use. As
noted otherwise in the present judgment,
registration of a design is article specific and
thus-depending on the facts of each case
registration or publication of design of a
particular article may or may not necessarily
result in rejection or cancellation of registration
of the same or similar design on another article.
The Act protects the original artistic effort not in
form of an idea or on its own as an artistic work,
but is an embodiment in a commercially produced
artefact. Thus the primary concern is what the
finished article is to look like. [see observations of
the Supreme Court in Bharat Das Tools Ltd.
(infra)].
(ii) Registration in a foreign country is one
aspect but what can entail rejection of an
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 45 of 60
18:28:27
application for registration in India or
cancellation of registration in India, is prior
publication and not registration ipso facto in a
foreign country. Moreover, such publication
should be of the nature delineated in sub-section
4(b). Registration abroad perse cannot be a
ground for cancellation or rejection of a design in
India but the registration in India can be
impugned if the design is not "new and original"
or is already published abroad as stipulated in
Section 4(b). In some cases of registration abroad,
the same not by itself a ground for
rejection/cancellation in India, yet can lead to
cancellation if it can be shown and proved that the
claim in India is not "new and original" as there
was publication abroad and which publication
abroad is a publication within the meaning of
Section 4(b). In such cases registration can be
refused or cancelled. New, original or novelty of
the pattern or design when replicated or applied
or fully understood by the eye for being applied to
an article is a sine qua non to avail and get
benefit of the rights under the Act. This underlying
principle is accentuated as well as protected when
Section 4(b) and 19 stipulate and provide for
rejection/cancellation of registration of a design
which has been published in any country prior in
point of time. Though publication in India or
abroad are enlisted as separate grounds under
Section 4 and 19 of the Act, they are in a way
interlinked and intertwined with the question of
whether design is new or original for determining
the meaning of "design" as understood and as
defined in Section 2(d) of the Act.
(iii) Registration abroad is one aspect and
publication abroad in terms of Section 4 (b) is
another aspect. There can be and will be cases
when registration abroad, may have resulted in
publication of a design as stipulated in Section
4(b). In such cases there would be publication
abroad, not because the design is registered
abroad but because the conditions mentioned in
Section 4(b) are satisfied. The observations of the
Division Bench in Dabur India Ltd.'s case cannot
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 46 of 60
18:28:27
be read to mean that though conditions of Section
4(b) are satisfied, the registration of design
cannot or should not be cancelled although the
design has been registered abroad. Registration
abroad and publication abroad are two distinct
parameters, each having their own consequences.
When registration abroad results in publication
under Section 4(b), the said provision gets
attracted and necessary consequences as
envisaged in Section 4 and 19 will follow.
20. In our opinion, most of the confusion or lack
of clarity qua the meaning of the words
"published" or "publication" will be removed
when we refer to the judgment of the Supreme
Court in the case of Bharat Das Tools Ltd. v.
Gopal Glass Work's Ltd., (2008) 10 SCC 657.
This judgment of the Supreme Court is the
judgment which has been passed in an appeal
against the judgment of the learned Single Judge
of the Calcutta High Court in Gopal Glass Work's
case. A reference to various paragraphs of the
Supreme Court's judgment shows that the
Supreme Court has taken note of the fact that
though design is specifically qua an article,
however, publication of a design in a paper form,
may amount to prior publication, however, each
case has to be necessarily seen and decided as per
the facts of that case. The facts of each case must
show sufficient amount of clarity qua the design
which must necessarily exist in a public record of
a Registrar of Designs Office and must have
sufficient clarity attached to them before the same
can be treated as prior publication. Therefore,
really the issue is no longer res integra as to
meaning of word "published" or "publication" as
found in Sections 19(1)(b) and 4(b) of the Act
because Supreme Court has held that existence of
documents in public record such as the Office of
the Registrar of Designs, will or will not,
depending on facts of each particular case be
evidence of prior publication.
xxxxx
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 47 of 60
18:28:27
23. In view of the above discussion, the following
conclusions in our opinion emerge: -
(i) Existence of a design registered abroad
in a convention country is not a ground under
Section 19(1)(a) for cancellation of a design
registered in India.
(ii) The provision of Section 44 does not
have the effect of changing the literal
interpretation of Section 19(1)(a) inasmuch as
under Section 44, the foreign registered design
becomes an Indian registered design, although,
the date of registration of the foreign registered
design which is registered in India will relate back
and have retrospective effect from the date of
application first made in the convention country
abroad. Once, the foreign registered design
becomes registered in India, the very fact that it is
an Indian registered design it will be a previously
registered design in India, and by virtue of the
priority rule the same will be a ground for
cancellation of a design subsequently registered in
India on an application made after the date of the
priority date given of the application made abroad
for registration of the design in a convention
country.
(iii) The benefit of foreign registered design
after its registration in India for seeking
cancellation of an Indian registered design under
Section 19(1)(a) will only be available if the
application for registration in India is made
within six months of the date of the application
made in the convention country abroad,
notwithstanding there may be prior publication in
this interregnum six month period.
(iv) In case, the application for registration
in India is not made within the statutory
permissible period of six months of having made
the application abroad, then, the design registered
in India in the meanwhile in six months period
cannot be cancelled under Section 19(1)(a),
though, the foreign registered design owner on
proving of prior publication can have an effective
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 48 of 60
18:28:27
defence to the infringement action filed by the
Indian registered design owner and which defence
against an infringement action is available vide
Section 22 relying on the ground of prior
publication under Section 19(1)(b) read with
Section 4(b) of the Act.
(v) What is publication is essentially a
question of fact to be decided as per the evidence
led in each case. Existence of a design in the
publication record/office of a Registrar of design
abroad may or may not depending on the facts of
each case amount to prior publication and there
would be prior publication only if the prior
registered design is made public and has that
much necessary clarity as applied to a specific
article capable of judged by the visual appearance
or the eye of the mind, that by use of the said
knowledge and information in the public record of
the Registrar of design office, an article can be
made using that design which will be a piracy or
violation of that design i.e. putting it differently
unless and until there is complete clarity and
understanding to the naked eye or the eye of the
mind of the foreign registered design as found in
the public record of the Registrar of design qua a
specific article, it cannot be said that such public
record will amount to prior publication.
24. We therefore answer the reference that the
ratio in the case of Dabur India Ltd. by the
Division Bench of this Court that existence of
public record in the office of Registrar of design
in a convention country abroad may or may not
amount to prior publication inasmuch existence of
a design in a public record of Registrar of design
in a convention country abroad may or may not,
depending on the facts of a particular case,
amount or not amount to publication abroad, and
which depends on the complete clarity available
to the eye of the design found in the public record
so that it can be said to be understood for being
applied to a specific article. Each case has to be
necessarily judged by putting the subject design
with the articles side by side with the prior
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 49 of 60
18:28:27
publication material and only after thoroughly
scrutinizing the same any finding can be given of
existence or non-existence of prior publication."
(Emphasis supplied)
24.2.1. I have quoted the above judgment in detail as it
extensively and exhaustively discusses the judgment of the
Supreme Court in Bharat Glass Tube Limited (supra) as also of
the Division Bench of this Court in Dabur India Limited (supra)
and has held that what is „publication‟ is essentially a question of
fact to be decided on evidence led in each case. The existence of a
design in the public record/office of a Registrar of Design may or
may not, depending on the facts of each case, amount to prior
publication. It would be a prior publication only if the registered
design is made public and has necessary clarity as applied to a
specific article capable of being judged by visual appearance or the
eye of the mind, and by use of that knowledge, an article can be
made using that design, which will be piracy or violation of that
design. In the present case, though not required, the prior
registered designs are clear enough and depict the end product with
the said design. Prima facie, therefore, the defendants have been
able to show that the design of the plaintiff is not „new‟ or
„original‟ but is a variant of an already-existing design.
24.2.2 . The same, however, cannot be said for the patent
pleaded by the defendant in CS (COMM) 76 of 2019. The patent
registered in China is for vehicle brake-lamps and though in a T-
Shape, in the absence of the end product, at least prima facie, it is
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 50 of 60
18:28:27
difficult to visualize the end product. The design registration of
CIEBES LAMPES S.A., again without the actual product
produced, at least at this stage, cannot be said to be sufficient to
hold that the claim of the plaintiff in its design is neither novel nor
original. The same also applies to the registered design of M/s
Sumitomo Electric Industries Limited in the USA and to the patent
application no.US 8,303,146 B2.
25. The learned counsel for the plaintiff submits that the defendant in
CS (COMM) 76 of 2019 (Syska LED Lights Pvt. Ltd.), having, through
its licensor (which the plaintiff alleges to be only an alter ego of the
defendant itself), obtained the registration of its design, is estopped from
challenging the registered design of the plaintiff. On the hand, the learned
counsel for the defendant submits that the design in which the registration
has been obtained by its licensor is different from that of the plaintiff.
26. I have already hereinabove expressed by prima facie opinion that
the submission of the defendant of its design being different from that of
the plaintiff is liable to be rejected; the difference being trivial and not
sufficient to brand the defendant‟s design as „new‟ or „original‟.
However, at the same time, in case the design of the plaintiff is liable to
be cancelled, it has to be cancelled in rem and not specific to a party.
Therefore, at this stage, the registration of the design by the defendant
itself is not sufficient to entitle the plaintiff to interim injunction. The
effect of registration of its design by the defendant in CS (COMM) 76 of
2019, however, is left to be considered in detail on parties leading
evidence and in the final adjudication of the suit.
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 51 of 60
18:28:27
27. On the issue of claim of passing off, I deem it appropriate to first
consider the findings of the Full Bench in Carlsberg Breweries A/S.
(supra) on this aspect. Paragraph 43 of the said judgment is reproduced
hereinbelow:-
"43.This court is also of the opinion that the Full
Bench ruling in Mohan Lal (supra) made an
observation, which is inaccurate: it firstly
correctly noted that registration as a design is not
possible, of a trade mark; it, however later noted
that "post registration under Section 11 of the
Designs Act, there can be no limitation on its use
as a trademark by the registrant of the design. The
reason being: the use of a registered design as a
trade mark, is not provided as a ground for its
cancellation under Section 19 of the Designs Act."
This observation ignores that the Designs Act,
Section 19 (e) specifically exposes a registered
design to cancellation when "(e) it is not a design
as defined under clause (d) of section 2." The
reason for this is that Section 2 of the Designs Act,
defines "design" as "...the features of shape,
configuration, pattern, ornament or composition
of lines or colours applied to any article.......; but
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....."
Therefore, if the registered design per se is used
as a trade mark, it apparently can be cancelled.
The larger legal formulation in Mohan Lal
(supra), that a passing off action i.e. one which is
not limited or restricted to trademark use alone,
but the overall get up or "trade dress" however, is
correct; as long as the elements of the design are
not used as a trademark, but a larger trade dress
get up, presentation of the product through its
packaging and so on, given that a "passing off"
claim can include but is also broader than
infringement of a trademark, the cause of action
against such use lies."
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 52 of 60
18:28:27
28. Though by way of an ad-interim order, a Division Bench of this
Court in Crocs Inc. USA (supra), after considering the judgments of this
Court in Mohan Lal (supra) and Carlsberg Breweries A/S. (supra)
observed as under:-
"23. Secondly, the sentence in para 43 of the
judgment of Bhat, J. that "the larger legal
formulation in Mohan Lal that a passing off action
i.e. one which is not limited or restricted to
trademark use alone, but the overall get up or
trade dress however, is correct" appears prima
facie to place the issue beyond doubt that the FJB
in Carlsberg upheld the view of the majority of the
FB in Mohan Lal that a passing off action was
indeed maintainable in respect of a registered
design used as a trademark. To this Court is
appears prima facie on a reading of the above
para 43, together with the preceding and
succeeding para, as a whole that the only
qualification in Carlsberg was that if such
registered design was used as a trademark then it
can lead to the cancellation of the registration of
such design. The words "as long as the elements
of the design are not used as a trademark but a
larger trade dress get up, presentation of the
products through its packaging and so on" has to
be seen in the context of the discussion preceding
it which turns on what can be registered as a
design and what cannot. Importantly, the FJB
does not explicitly or impliedly overrule the FB in
Mohan Lal as regards the answer to Issue II and
rightly so since the FJB in Carlsberg was
concerned only with Issue III (whether a
composite suit for design infringement and
passing off was maintainable).
24. However, the learned Single Judge has in the
impugned order understood the above
observations in para 43 of the judgment of Bhat J.
as leading to the position that the majority in
Mohan Lal did not recognise the protectability of
a registered design when used as a trademark.
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 53 of 60
18:28:27
Prima facie this understanding by the learned
Single Judge in the impugned judgment of what
the majority in Mohan Lal held and what Bhat J.
as part of the FJB in Carlsberg observed does not
appear to this Court to be correct. There is prima
facie merit in the contention on behalf of the
Plaintiff that the impugned order of the learned
Single Judge unwittingly reiterates the minority
view in Mohan Lal which by no means was, even
impliedly, affirmed by the FJB in Carlsberg."
(Emphasis supplied)
28.1. I must herein also note that the learned counsels for the parties
have brought to my attention that the above appeal in Crocs Inc. USA
(supra) is still pending adjudication before the Division Bench of this
Court. Reliance on the above order is, therefore, being placed only to a
limited extent of holding that the claim of passing off can be maintained
on a registered design at least where, in addition to the registered design,
claim is also based on packaging, trade dress or other features as are
generally understood and acknowledged and as forming a part of a
trademark protectable on a claim of passing off.
28.2. In the facts of the present case, the plaintiff has pleaded as under in
support of its claim of passing off:-
"29. Apart from infringement of the Plaintiff‟s
registered design, the Defendants are also guilty
of passing off the impugned product as that of the
Plaintiff on account of the deceptively similar look
and feel and trade dress of both the products. The
same is attributable to the aggregate of the
following factors:
(a) The shape, dimensions, configuration and
colour of the products and their parts are
identical.
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 54 of 60
18:28:27
(b)Both the products have the same mechanical
feature of a rotating diffuser which helps in
adjusting the aim of the light.
(c)Both the products use similar LED technology
and have the identical configuration of 40 in
series LED (2 parallel series of 20) inside the
diffuser."
28.3. In my view, the above averments do not, atleast prima facie, make
out a case of passing off even under trade mark law. Apart from placing
reliance on affidavits of its distributors and certain articles in trade
magazines reporting the launch of the plaintiff‟s product, there is nothing
further placed on record to substantiate, at least prima facie,a claim of
passing off. It is also to be noted that the plaintiff itself pleads that it is
also the OEM for several other lighting companies in India and produces
such T-Bulbs for such companies, who in turn sell them under their own
brand name. Therefore, the design itself cannot be enough to attribute a
connection of the product with the plaintiff for it to maintain a claim of
passing off.
29. Even otherwise, the plaintiff has also failed to fulfil the other two
elements of the trinity test for grant of temporary injunction-balance of
convenience and irreparable injury. In this regard, I take note of the
correspondence that was exchanged between the plaintiff and defendants
in CS (COMM) 46 of 2019 (Surya Roshni Limited). The same evidences
that the claim of the plaintiff at that stage was monetary, that is, in terms
of royalty or license fee. It is also an admitted case of the plaintiff that the
plaintiff has granted licenses for consideration in form of payment of a
license fee and/or other valuable consideration to other lighting
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 55 of 60
18:28:27
companies. The plaintiff can, therefore, always be compensated in terms
of damages in case it succeeds in the suit(s).
RELIEF AS FAR AS DESIGN REGISTRATION NO. 299147:
30. In view of the above, I am of the opinion that the balance of
convenience demands that, while rejecting the claim of ad-interim
injunction of the plaintiff, the defendants (in both the suits) are directed
to file, on a regular basis, accounts of their sales made under the
impugned design(s). Such accounts be filed on affidavit(s) on a half-
yearly basis during the pendency of the suits.
DESIGN REGISTRATION NO. 247723:
31. As noted hereinabove, in CS (COMM) 76 of 2019, a claim is also
made by the plaintiff on its registered design no. 247723 of a bulb under
brand „Philips Hue‟. The said design registration is in Class 26-04 with a
reciprocity date of 07.03.2012. A pictorial depiction of the same and
claim made therein for purposes of design registration is as under:-
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 56 of 60
18:28:27
PERSPECTIVE VIEW FRONT VIEW REAR VIEW
The novelty resides in the shape and configuration of the LED BULB, as
illustrated.
No claim is made by virtue of this registration in respect of any mechanical or
other action of mechanism whatever or in respect of any mode or principle of
construction of the article."
SUBMISSIONS OF THE PARTIES
32.1. The plaintiff claims that the Hue Bulb design is a part of the
„Philips Hue lighting system‟, which comprises also other types of bulbs
(spots and candles) and luminaries. The lighting system allows the user to
control the lights from their devices (telephone, computer) and create the
right ambience by changing the light colours, intensity, creating light
scenes. The plaintiff further claims that Hue Bulb design has a unique
shape which departs significantly from the common shapes of LED
bulbs. The plaintiff claims that the product being sold by the defendant
under the name „SYSKA Smart Light‟ is identical in appearance to the
Hue Bulb of the plaintiff. Comparative photographs of the two bulbs in
the plaint are reproduced hereinunder:-
Photographs of the Plaintiff's Photographs of the Defendant's
Product Product
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 57 of 60
18:28:27
32.2. The plaintiff also make comparison of the two products and states
as under in its plaint:-
"a. The light bulbs are identical and have the
same champagne glass shape.
b. More precisely: the size, shape, colour,
dimensions and material used for both the diffuser
as well as the housing and the base are identical.
c. The placement and orientation of the
trademarks are similar
d. Feature of wireless control of brightness
and color of light and is part of the defendant's
smart light product range."
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 58 of 60
18:28:27
33. On the other hand, the defendant, as far as the Hue Bulb is
concerned, contends that its bulb is different from that of the plaintiff. In
any case, it is an ordinary glass bulb shape which has always been
available in the market; its uniqueness, even as per the plaintiff, lies in its
features of wireless control of brightness and colour of light, which
cannot be claimed as a design. The defendant claims that the wireless
technology used by the defendant is different from that of the plaintiff
and that there are other companies which are manufacturing and selling
similarly-shaped bulbs.
34. The learned counsels for the parties have reiterated the
submissions as noted hereinabove from the pleadings.
FINDINGS OF THE COURT
35. I have considered the submissions made by the learned counsels
for the parties. I have also discussed herein above the law applicable to
such claim based on a registered design.
35.1. The defendant in its written statement has reproduced photographs
of various bulbs, which also include thereby some reputed brands,
bearing similar design as that of the parties. The plaintiff in its replication
states that the mere inclusion of photographs of products with names of
third parties cannot serve to discharge the onus on the defendant to prove
that the said products indeed emanate from the named third parties or that
they were in existence in the market prior to the publication of the
plaintiff‟s design.
35.2. In my opinion, however, for judging the balance of convenience
and irreparable injury, the fact that bulbs with reputed brands bearing
similar design are available in the market, would be relevant and
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 59 of 60
18:28:27
disentitle the plaintiff to an interim injunction. Though it is correct that
the plaintiff is not required to sue each and every infringer of its design,
at the same time, where no such action is taken by the plaintiff against
even big market competitors, it would be relevant to deny the plaintiff
interim relief of injunction.
35.3. I am also of the opinion that the claim of the plaintiff appears to be
in its „lighting system‟ whereof its Hue bulb is an integral part. Whether
the bulb alone is new or original would, therefore, need to be judged on
further evidence being led by the parties.
RELIEF AS FAR AS DESIGN REGISTRATION NO. 247723:
36. Accordingly, to balance the equities and to protect the rights of the
plaintiff, it is directed that the defendant in CS(COMM) 76 of 2019 shall,
on a regular basis, file accounts of its sales made under the impugned
design. Such account be filed on a half-yearly basis on an affidavit.
DISPOSAL OF APPLICATIONS:
37. The applications are disposed of with the above directions. It is
made clear that any observation made in this order is only prima facie in
nature and shall not, in any manner, be considered as a conclusive finding
of this Court and/or prejudice either party at the final adjudication of the
two suits.
CS(COMM) 46/2019 & CS(COMM) 76/2019
List before Joint Registrar (Judicial) for further proceedings on 12th
September, 2022.
NAVIN CHAWLA, J.
JULY 5, 2022/rv/AB/Ai Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:06.07.2022CS(COMM) 46/2019 & CS(COMM) 76/2019 Page 60 of 60 18:28:27