Indian Kanoon - Search engine for Indian Law

4. In response to the affidavit-in-reply filed by the defendants, the plaintiffs have filed affidavits-in-rejoinder of Shri Ajit Namajirao Desai, Shri Mahendrakumar Arora, Shri Anju Pande partner of M/s. Eros General Agencies, and Shri Deepak Kedia, Proprietor of M/s. Venus Enterprises. By the said affidavits filed in rejoinder, the plaintiffs have sought to set up a case that as regards the catalogue of Production S.A. alleged to be published in India depicting the design of human face and the backrest of a chair and claiming to be in possession since February 1995, the details are not furnished by the defendants as to how, where and when the said catalogue was published in India and from whom the defendants came in possession of the said catalogue. The plaintiffs stated that the said catalogue is of a Greek Company who had sold the said chairs with the said design in India at any time. The said company Production S.A. has also never advertised the said chair in India at any time. According to the plaintiffs the said design depicted in the alleged catalogue is not shown to have been published in India prior to the application for registration of the 1st plaintiff made on 22-8-1995. As regards the sale of baby chairs bearing design No. 169723 by the plaintiffs prior to the application dated 22-8-1995, in the affidavit-in-rejoinder filed by Shri Ajit Namajirao Desai it is explained that two invoices referred by the defendants relate to the 2nd plaintiff and that it would be dealt with by the 2nd plaintiff. He however explained that there is an understanding between the 1st plaintiff and the 2nd plaintiff that when the 1st plaintiff conceives and/or prepares a new design in the plastic furniture, they would consult the 2nd plaintiff about the commercial potentiality of the design and after the same is approved by the 2nd plaintiff, the 1st plaintiff would apply for registration of the said design and the 2nd plaintiff would place orders with the 1st plaintiff for manufacture of the said product. It is further explained that as per the secrecy arrangement between the 1st plaintiff and the 2nd plaintiff, if the new product with new design is manufactured and delivered to the 2nd plaintiff as per the 2nd plaintiffs order prior to its registration, the said order remains confidential and the 2nd plaintiff is not allowed to publish and sell the said product in the open market unless they receive information from the 1st plaintiff. In the affidavit-in-rejoinder filed by Shri Ajit Namajirao Desai it is further explained that the said design of baby chair with design of human face on the backrest manufactured and delivered by the 1st plaintiff to the 2nd plaintiff, the 2nd plaintiff were informed by the 1st plaintiff that the 1st plaintiff would apply for registration of the said design under the Design Act and they should keep their order confidential and should not publish and/or sell the said product with the said design unless the 1st Sic 2nd plaintiff receive confirmation form the 1st plaintiff regarding the registration of the said design. It is thus stated by Ajit Namajirao Desai that the 2nd plaintiff were not entitled to publish and/or sell the said chairs in open market unless the said design was applied for registration by the 1st plaintiff and according to him the 2nd plaintiff had kept the said product with the said design confidential and also asked their dealers not to publish the same till they receive confirmation from the 1st plaintiff. It is then urged in the affidavit-in-rejoinder on behalf of the 1st plaintiff that if at all any breach of secrecy agreement has been committed by the 2nd plaintiff, it cannot be considered as prior publication, Shri Mahendra Kumar Arora who has filed affidavit on behalf of the 2nd plaintiff has also referred to the understanding ad arrangement between the 1st plaintiff and the 2nd plaintiff as stated by the 1st plaintiff in their affidavit-in-rejoinder. It is further stated by him that in view of the secrecy arrangement between the 1st plaintiff and the 2nd plaintiff, the 2nd plaintiff used to place trial orders with the 1st plaintiff which remain in confidentiality till the said product is launched by the 2nd plaintiff in the market after they receive confirmation from the 1st plaintiff. As regards the Baby chair with new design of human face on backrest, the 2nd plaintiff has placed orders with the 1st plaintiff for purchase of the said Baby chairs and stored them in the godown in various branches with instructions not to sell openly in the market. According to him the dealers also as per the understanding with the 2nd plaintiff has maintained secrecy of the product and did not sell the same in the market. The affidavit of Shri Deepak Kedia who is the proprietor of Venus Enterprises and Shri Anju Pande, partner of M/s. Eros General Agencies to whom the chairs have been sold by the 2nd plaintiff is to the effect that on receipt of the product form the 2nd plaintiff, they stored the same in their godown and only in the month of September 1995 after they were informed about the launching of the said product by the 2nd plaintiff, they started selling the said product.

5. Mr. Virag Tulzapurkar, learned Counsel for the plaintiffs during the course of arguments referred to the facts stated in the plaint and the affidavits filed in support of the Notice of Motion and the affidavits-in-rejoinder and also referred to a number of cases, namely, Dwarkadas Dhanji Sha v. Chotalal Ravicarandas & Co., A.I.R. 1941 Bombay page 188. The Pilot Pen Co. (India) Pvt. Ltd. v. The Gujarat Industries Pvt. Ltd., ; Western Engineering Co. v. Paul Engineering Co., ; order of this Court in Notice of Motion No. 897 of 1998 in Suit No. 926 of 1998- Hawkins Cookers Ltd. v. M/s. Dharmesh Enterprises, decided on 16-3-1998; Joginer Singh v. Tehu Enterprises Pvt. Ltd., ; Indo Asahi Glass Co. Ltd. v. Jai Mata Rolled Glass Ltd., ; Factory Manager, Model Mills Nagpur v. State Industrial Court, ; Damomal Kausomal Raisinghani v. Union of India, ; Mohan Lal v. Mirza Abdul Gaffar, ; R.I. Chudzikowski v. A. Sowak (Trading as Premier Productions), 1957 R.P.C. page (111); Tobu Enterprises Pvt. Ltd. v. Megha Enterprises and another, 1983, P.T.C., page 359; Alert India v. Naveen Plastics, 1997 P.T.C. (17), page 15; Camlin Pvt. Ltd. v. National Pencil Industries, ; M/s. National Chemicals and Colour Cop. v. Teckitt and Colman of India Ltd., Mohammad Abdul Karim v. Mohammed Yasin, ; Sant Kaur v. Sher Singh, A.I.R. 1923, Lahore page 476; order passed by this Court in Notice of Motion No. 3172 of 1995 in Suit No. 3305 of 1995 decided on 17-11-1997.

"

11. In the background of the aforesaid legal position if plea of the defendants that prior to the registration of the 1st plaintiffs design, the said design was already published by way of sale of chairs of the said design, is examined coupled with the material placed on record, I find that the defendants have been able to rebut the presumption arising in plaintiffs favour on the basis of the registration of the design. While narrating the facts above, I have already observed that the defendants are denying the claim of the plaintiffs that the design of the Baby chairs with human face on the backrest was originally conceived by the 1st plaintiffs in or about 1994 on two grounds; (i) catalogue of Production S.A. published in India depicting a device of human face on the backrest, and (ii) the sale of such chairs with that design by the plaintiffs prior to the make of an application for registration. So far as the catalogue of one Production S.A. relied on by the defendants is concerned, much reliance cannot be placed on the same in the absence of complete material as to how, where and when the said catalogue was published in India and from whom the defendants came in possession of the alleged catalogue. The defendants have also not been able to show that the said catalogue was published in India and in what manner. It is also not shown as how it came in possession of the defendants. On the basis of the catalogue of one Production S.A. therefore it cannot be said that the design of baby chairs with human face on the backrest was published prior to the application for registration dated 22-8-1995. However, the material placed on record by the defendants regarding the sale of such chairs by the plaintiffs prior to application dated 22-8-1995 prima facie leads to the conclusion that design of such chairs was published prior to the application for registration made by the 1st plaintiff on 22-8-1995. In this connection the defendants have placed four invoices on record. One invoice is of 31-5-1995 whereby the 2nd plaintiff has sold 60 baby chairs (Moderna Champ -CS 70) to Venus Enterprises at Bombay. Three other invoices are of 31-7-1995, out of which one relates to sale of 200 chairs (Moderna Champ CS 70) to one Eros General Agencies, Nagpur, the other relates to sale of 24 such chairs to one Novelty Palace, Madras, and the third relate to sale of 50 chairs to Shalimar Furniture. The application for registration has been made by the plaintiffs on 22-8-1995. Thus all the aforesaid invoices relate to sale of chairs bearing the design in question much before the application for registration was made. The said sale is by plaintiff No. 2 from Bombay to Nagpur, Madras, Bhayander and local Bombay itself. The explanation given by the plaintiffs in the affidavit-in-rejoinder based on secrecy and confidential arrangement between the 1st plaintiff and the 2nd plaintiff on the one hand and the 2nd plaintiff and its dealers on the other hand is difficult to believe prima facie for more than one reason and I am not persuaded to accept the said explanation set out by the plaintiffs in rejoinder. Firstly, it would be seen that neither in the affidavit-in-rejoinder filed by the 1st plaintiff nor in the affidavit-in rejoinder filed by the 2nd plaintiff, the date of agreement is mentioned and reference is made only regarding some understanding and secrecy arrangement. However, during the course of argument Mr. Tulzapurkar relied on the secrecy agreement dated 19-1-1994 specifically between the 1st plaintiff and the 2nd plaintiff.

Since there is no reference of the said agreement dated 19-1-1994 in any of the affidavits filed by the plaintiffs, prima facie such agreement does not inspire any confidence. Secondly in the affidavit-in-rejoinder, neither the 1st plaintiff nor the 2nd plaintiff have given details about the orders placed by the 2nd plaintiff with the 1st plaintiff for purchase of such chairs. In none of the affidavits the dates of the orders placed by the 2nd plaintiff with the 1st plaintiff for supply of the said chairs before the application for registration was made, has been given. The plaintiffs have also not chosen to give the quantity of chairs so ordered by the 2nd plaintiff to the 1st plaintiff prior to the making of the application for registration. Thirdly, the plaintiffs have come out with a specific case in the plaint that since the date of the application of design registration, the 1st plaintiff has applied the shape and configuration of the said design registered under No. 169723 to plastic chairs for children in various colours and is selling the said product with the said design to their associate company and the 2nd plaintiff in their turn markets and sells the same to public. Thus the case of the plaintiff in the plaint is definite that the registered design was applied by the 1st plaintiff to plastic chairs for children after the date of application for design registration was made. The application for design registration was made on 22-8-1995. The invoices placed by the defendants clearly show that much before the application dated 22-8-1995 in the months of May and July 1995, the 2nd plaintiff had already sold a good number of such chairs to the dealers at Madras, Nagpur, Bhayander etc. If the 1st plaintiff applied the shape and configuration of the said design registered under No. 169723 to the plastic chairs for children after the date of the application for design registration was made as has been averred in the plaint, there could not have been sale of such chairs with that design prior thereto. In the affidavit-in-rejoinder as regards the two invoices, the 2nd plaintiffs have admitted such sale to its dealer's though they have set up the case that the dealers were under there secrecy arrangement required not to sell to the public at large. The fact however remains that the case set up by the plaintiffs in para 9 of the plaint prima facie does not seem to be correct. Fourthly, the plaintiffs have only given their explanation with respect to the two invoices regarding sale of chairs by the 2nd plaintiff to the M/s. Venus Enterprises, and M/s. Eros General Agencies, but no explanation whatsoever has been given by the plaintiffs in respect of the two other invoices placed by the defendants on record pertaining to the sale of 50 chairs to Shalimar Furniture on 31-7-1995, and 24 chairs to Novelty Palace, Madras. During the course of argument, Mr. Tulzapurkar submitted that no reference has been made regarding the said two invoices in their affidavit-in-reply by the defendants and therefore, question of giving any explanation in respect of these two invoices by the plaintiffs did not arise. In the alternatively, he submitted that the defendants did not give inspection of the said invoices to the plaintiffs and therefore, there was no occasion for such explanation. This argument of Mr. Tulzapurkar cannot be accepted. It would be seen that in the affidavit filed by the defendants on 4-9-1996 which is dated 30-8-1996, the details of the invoices have been given. It is clearly stated in the said affidavit that the defendants have came in possession of copies of the 2nd plaintiffs invoices No. 665 and 8137 both dated 31-7-1995 evidencing sale of plaintiffs chairs of Moderna Champ-CS 70 and the defendants sought to crave leave to refer to and rely upon the said invoices. The plaintiffs never raised any grievance that the inspection of the said documents have not been given to them despite demand. The obvious inference is that the plaintiffs have no explanation whatsoever with regard to the two invoices No. 665 and 8137 which relate to the sale of 24 chairs to Novelty Palace, Madras, on 31-7-1995 and sale of 50 chairs to Shalimar Furniture at Bhayander on 31-7-1995, both before the date of application for registration made by the plaintiffs on 22-8-1995.