Delhi High Court - Orders
Havells India Limited vs Panasonic Life Solutions India Pvt Ltd & ... on 29 April, 2022
Author: Jyoti Singh
Bench: Jyoti Singh
$~40
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 261/2022
HAVELLS INDIA LIMITED ..... Plaintiff
Through: Mr. Darpan Wadhwa, Senior
Advocate with Mr. Sudeep Chatterjee, Mr. Tejveer
Singh Bhatia and Mr. Kunal Vats, Advocates.
versus
PANASONIC LIFE SOLUTIONS
INDIA PVT LTD & ANR. ..... Defendants
Through: Mr. Chander M. Lall, Senior
Advocate, Mr. Afzal B. Khan, Mr. Vishal Nagpal,
Mr. Samik Mukherjee and Ms. Ananya Chug,
Advocates for D-1.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
ORDER
% 29.04.2022
I.A. 6260/2022 (Exemption)
1. Subject to the Plaintiff filing originals, clearer copies and documents with proper margins, which it may seek to place reliance on, within four weeks from today, exemption is granted.
2. Application is allowed and disposed of.
I.A. 6261/2022 (Exemption from pre-institution mediation)
3. For the reasons stated in the application, the requirement of pre- institution mediation is dispensed with.
4. Application is allowed and disposed of.
I.A. 6262/2022 (Additional Documents)
5. Present application has been preferred on behalf of the Plaintiff Signature Not Verified Digitally Signed CS(COMM) 261/2022 Page 1 of 7 By:KAMAL KUMAR Signing Date:29.04.2022 20:58:43 seeking leave to file additional documents under Order 11 Rule 1(4) CPC.
6. Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act, 2015.
7. Application is allowed and disposed of.
I.A. 6263/2022 (Exemption from Service)
8. Since there is an urgency in the matter and the matter is being heard today, Plaintiff is exempted from serving Defendant No.2 with advance notice. Defendant No.1 has entered appearance and hence no order is required to be passed.
9. The application is accordingly, disposed of.
I.A. 6264/2022 (Exemption from filing court fee)
10. For the reasons stated in the application, Plaintiff is permitted to file requisite Court Fees within a period of two weeks from today.
11. Application is allowed and disposed of.
CS(COMM) 261/2022
12. Let plaint be registered as a suit.
13. Issue summons.
14. Mr. Afzal B. Khan, learned counsel enters appearance on behalf of the Defendant No.1.
15. Written statement be filed by Defendant No.1 within 30 days from today along with affidavit of admission/denial of the documents of the Plaintiff.
16. Replication thereto be filed by the Plaintiff within 15 days of the receipt of the written statement along with an affidavit of admission/denial of documents filed by Defendant No.1.
17. Upon requisite steps being taken by the Plaintiff, summons be issued Signature Not Verified Digitally Signed CS(COMM) 261/2022 Page 2 of 7 By:KAMAL KUMAR Signing Date:29.04.2022 20:58:43 to Defendant No.2, through all permissible modes, returnable on 02.08.2022 before the learned Joint Registrar.
18. Summons shall state that written statement be filed by Defendant No.2 within 30 days. Along with the written statement, Defendant No.2 shall also file an affidavit of admission/denial of documents of the Plaintiff.
19. Replication be filed by the Plaintiff within 15 days of the receipt of the written statement. Along with the replication, an affidavit of admission/denial of documents filed by the Defendant No.2 shall be filed by the Plaintiff.
20. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
21. List before the learned Joint Registrar on 02.08.2022. I.A. 6258/2022 (under Order 39 Rule 1 and 2)
22. Present application has been preferred by the Plaintiff under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 for grant of an ex-parte ad-interim injunction.
23. Mr. Afzal B. Khan, Advocate, entered appearance on behalf of Defendant No.1 on 25.04.2022, when the suit was first listed. Mr. Chander M. Lall, learned Senior Advocate appearing on behalf of Defendant No.1, inter alia, raised the following objections to the grant of ad-interim injunction in favour of the Plaintiff:-
(a) Suit is not maintainable in its present form as the Plaintiff has raised self-
destructive pleas and claims. Plaintiff has alleged violation of its rights in shape and configuration of the ENTICER Design No.280666 (2016 Design) and in surface pattern of ENTICER ART Design No.328605 (2020 Design), under the Designs Act, 2000. Plaintiff has alleged infringement of the said Signature Not Verified Digitally Signed CS(COMM) 261/2022 Page 3 of 7 By:KAMAL KUMAR Signing Date:29.04.2022 20:58:43 designs under the Designs Act, violation of rights under the Copyright Act and has additionally asserted trademark rights in the registered designs as well as invoked the common law remedy of passing off. The self-destructive pleas and claims, according to Mr. Lall, renders the Design Registration vulnerable. This is the common thread that runs in the judgment of the Full Bench in Carlsberg Breweries A/S. v. Som Distilleries and Breweries Ltd., 2018 SCC OnLine Del 12912, judgment of the Division Bench in Crocs Inc. USA vs. Bata India and Ors., 2019 SCC OnLine Del 11956 and of the Co-ordinate Bench in Dart Industries Inc. and Ors. Vs. Vijay Kumar Bansal and Ors., 2019 (80) PTC 73 (Del). Further, passing off is claimed with respect to the design and not the trade dress, get up, packaging, etc., i.e. outside the design and therefore in any case the plea is untenable in law.
(b) There are at least two prior registrations, where the shapes and configurations are similar or nearly identical to Design No.280666 (2016 Design) of the Plaintiff and this renders the design prima facie invalid. Section 22(3) of the Designs Act, 2000 allows the Defendant to take any ground on which the registration of a design may be cancelled under Section 19 of the Act, as a defence in a suit for infringement of a design. Plaintiff is thus not entitled to grant of ad-interim injunction, in view of a credible challenge raised by Defendant No.1, predicated on two Search Reports obtained by Defendant No.1, from the Design E-Register, during a search. To substantiate the proposition, reliance was placed on a judgement passed by the Co-ordinate Bench of this Court dated 27.11.2020 in RB Health (US) LLC and Ors. vs. Dabur India Limited, 2020 (84) PTC 492 (Del).
(c) Balance of convenience also lies in favour of Defendant No.1, in as much as contrary to the stand of the Plaintiff, Defendant No.1 has launched Signature Not Verified Digitally Signed CS(COMM) 261/2022 Page 4 of 7 By:KAMAL KUMAR Signing Date:29.04.2022 20:58:43 its products in the market, in February, 2022 and an affidavit to this effect, furnishing the sale figures, has been tendered in Court, during the hearing.
(d) Without prejudice to the said objections, it was also argued that the designs of Defendant No.1's fans, which are the subject-matter of the present suit, are completely dissimilar from those of the Plaintiff's, under the ENTICER/ENTICER ART Series and thus even on merits, claim for infringement and/or passing off, etc. is not made out against Defendant No.1.
24. In view of the aforesaid, it was strenuously urged by Mr. Lall that period of one week be granted to Defendant No.1 to file a reply to the application so as to put forth its stand on record, both in law and on facts and only thereafter the application be heard.
25. Mr. Darpan Wadhwa, learned Senior Counsel appearing on behalf of the Plaintiff per contra refuted the aforesaid submissions and argued that a holder of a registered design can institute a single suit joining the two causes of action, i.e. for infringement in the design as well as an action for passing off and learned Senior Counsel for Defendant No.1 is mis-reading and misinterpreting the judgment of the Full Bench in Carlsberg Breweries (supra) as well as of the Co-ordinate Bench in Dart Industries (supra). In order to fortify his argument, learned Senior Counsel relied on the exposition of law in the judgment of the Division Bench of this Court in Crocs Inc. USA (supra) and contended that the suit is maintainable in its present form.
26. As to the contention with respect to a credible defence, based on prior registration, Mr. Wadhwa submitted that there is no substantial material to support such a plea and mere Search Reports cannot be the basis to deny an Signature Not Verified Digitally Signed CS(COMM) 261/2022 Page 5 of 7 By:KAMAL KUMAR Signing Date:29.04.2022 20:58:43 injunction, more particularly, when the Fans appearing in the Reports are, on a mere ocular comparison, dissimilar to those of the Plaintiff, with respect to which claims of infringement of design and passing off, etc. are asserted.
27. In so far as the stand of Defendant No.1 that it has launched its products, is concerned, it was vehemently put forth that the documents handed over in Court, including the affidavit, at best indicate that the impugned products have moved from the warehouse of Defendant No.1 to its Dealers/Distributors and there is no material or evidence to reflect sales in the market. Assuming for the sake of arguments that there has been a sale in the market, the purported sales are miniscule and cannot be a ground to tilt the balance of convenience in favour of the Defendants.
28. It was also contended that Plaintiff has valid and subsisting registrations in the designs, which confer upon the Plaintiff the exclusive right to use the designs and to protect the same from infringement against third parties including the Defendants herein. Currently, there is no challenge to the Plaintiff's registered designs and in fact, several orders have been passed by this Court restraining the third parties from infringing the registered designs of the Plaintiff. The impugned products are an imitation of the designs of the Plaintiff's ENTICER and ENTICER ART Series of Fans, with respect to which Plaintiff has an enviable and formidable reputation and goodwill in the market and Defendants cannot be permitted to pass off their goods as those of the Plaintiff. The argument is that the triple test laid down for grant of ad interim injunction, is made out.
29. Having heard learned Senior Counsels for the parties and looking to the contentious legal issues raised, which may go to the root of the matter, Signature Not Verified Digitally Signed CS(COMM) 261/2022 Page 6 of 7 By:KAMAL KUMAR Signing Date:29.04.2022 20:58:43 this Court is of the considered view that it would be in the fitness of things to grant an opportunity to Defendant No.1 to file a reply to the application.
30. Accordingly, a period of one week is granted to Defendant No.1 to file reply to the application. Rejoinder, if any, be filed within two days thereafter.
31. Mr. Lall had submitted that certified copies of the Design Registration Certificates, with respect to the registrations, referred to in the Search Reports, shall be required for proper adjudication of the issue of the alleged credible challenge.
32. Accordingly, it is directed that if an application is made by either party, The Controller of Designs shall furnish certified/uncertified copies within 3 days to the applicant(s), upon requisite formalities being completed on that behalf.
33. It is further directed that Defendant No.1 shall file the affidavit tendered in Court during the hearing, disclosing the sale figures for the period months of February, 2022 and March, 2022. An affidavit shall also be filed placing on record the sale figures for the month of April, 2022 for the sale of its product VENICE PRIME.
34. List on 10.05.2022.
I.A. 6259/2022 (for appointment of local commissioner)
35. List on 10.05.2022.
JYOTI SINGH, J APRIL 29, 2022/yg/rk Signature Not Verified Digitally Signed CS(COMM) 261/2022 Page 7 of 7 By:KAMAL KUMAR Signing Date:29.04.2022 20:58:43