The plaintiff has filed the suit for permanent injunction and for other reliefs against the defendants to restrain them from in any manner infringing upon the registered designs granted to the second plaintiff in respect of the manufacture and sale of the articles viz.. Air Water Beds, Water Beds and Squared Water Seats/Water Cushion. This Original Application has been filed for interim injunction, for the same relief, till the disposal of the suit.
2. The brief contention of the plaintiff is that the second plaintiff has been granted with Certificate of Registration of design No. 2258 for design No. 190548 dated 27.11.2002, design No. 2282 for design No. 190549 dated 27.11.2002, and design No. 2259 for design No. 190550 dated 27.11.2002, which are produced in the typed set of papers from pages 1 to 15. The registrations were granted in the name of the second plaintiff, in respect of manufacture of the above articles and the second plaintiff by name Pradeep Ranganathan claims to be an employee of the first plaintiff.
3. The contentions of the respondents/defendants are (i) that the designs are not new and they are not original; (ii) that the designs are subject of prior publication; (iii) that the products are nothing but functional in nature; (iv) that the second plaintiff had dealings with the respondents through a company by name M/s. Neptune Inflatables and was aware of the manufacture of the Articles by the defendants since 1997.
4. A perusal of pleadings in para 3 and 4 of the Plaint would show that the features mentioned therein are more functional in nature. According to the plaintiff, the three articles viz., Water Beds, Air Water Beds and Squared water Seats/Water Cushions are used for the purpose of treatment of old and sick persons who are paralysed, immobile or partially immobile. The products are specially designed for purposes of keeping the temperature down and to provide relief from body sores and irritation on account of being constantly in bed. The novelty and specialty in the design of the three articles lies in their respective shape and configuration and in their application. The products have been designed to suit the requirements of the medical profession for the treatment and management of bedsores. The waterbeds provide equalised body pressure to the person lying on it thus reducing uneven body pressure. The designers have taken into account the shape of the human body and its contours. The designers have taken into account the medical knowledge of the body parts that are susceptible to uneven pressure. It is medically established that wen a patient lies on a bed, the weight of his body is transmitted to the bed through the points which are in contact with the bed; occiput. scapular, inter scapular regions, sacrum and heels. The rippling effect changes the distribution of the body pressure. The risk of bedsores is thus effectively neutralised. From the above pleadings it is clear that the plaintiff has concentrated more on the functional features of his products than the design.
5. At this juncture, a cursory look to the various provisions of the Designs Act would be useful. Section 2(d) of the Act deals with a “design” and it has been specifically stated that a design does not include any mode or principle of construction. One of the contention of the defendants is that the registration of the plaintiffs designs are not valid as the same is barred by Section 4 of the Designs Act viz., the designs are neither new nor original and there was a prior publication of the same designs by the defendants.
6. A perusal of the photographs of the plaintiff's products and the defendants products with regard to the water beds etc, clearly show that the designs are almost similar in nature. The functions of the products of both the applicant/plaintiff and the respondents/defendants are also identical. Section 4(a) of the Designs Act does not include a design which is not new or original and if the same design is published or used prior to the filing an application for registration under Section 4(b), the same is prohibited for registration. Now, we have to see whether factually, the designs which are now produced by the plaintiff and registered by him on 27.11.2002 are new or original and whether the defendants have published the same designs prior to the date of filing an application for registration of the designs by the plaintiff.
7. According to the defendants, the defendants are manufacturing the water beds etc., from 1997. In respect of the said claim the defendants have produced invoices from December 1999 to 2001 wherein the defendants have sold water beds with a trade marks MEDICURE and UNICARE (copies found in Pages 8 to 17 of the defendant's typed set). The defendants have also filed returns filed by them before the Sales Tax Authorities (copies found in pages 18 to 21 of the same typed set). The defendants have advertised in two journals wherein the products of “MEDICURE”, “CLASSIC” and “UNICARE” are advertised (copies found in pages 22 to 25 of the same typed set). The said advertisements are published during December 2001 and May 2002, whereas the registration of the designs by the plaintiff was obtained only on 27.11.2002 Thus the respondent/defendants have prima facie established that they have made prior publication of the designs which were registered by the plaintiff on 27.11.2002 At this juncture it is pertinent to note that the second plaintiff, Pradeep Ranganathan, who was Managing Director of M/s. Neptune Inflatables had dealings with the second respondent who was manufacturing water beds even at earlier point of time.
8. In the reply notice dated 30.4.2003 the respondents have categorically informed the plaintiffs that their products “MADHU MEDICARE” and “MADHU UNICARE” have been recognised in the market and the same are used in health care sector for more than 6 years in all Hospitals.
9. In the rejoinder notice issued on behalf of the plaintiffs, it is categorically mentioned that the Company by name M/s. Neptune Infalatables Pvt., Ltd., in which the second plaintiff was employed as Managing Director had gone into liquidation on the petition filed by one of the shareholders of the Company in or about 1998 and subsequently the said company itself was wound up. It is also admitted in the rejoinder notice by the plaintiffs that the second plaintiff had dealings with the respondents/defendants who were marketing, producing and marketing Madhu Unicare and Madhu Medicare. Only after the the company by name M/s. Neptune Inflatable Pvt. Ltd., in which the second defendant was the Managing Director, became wound up, the second plaintiff would have given license to the plaintiff to manufacturer the same products. Therefore, it is clear that the respondents/defendants were in the business of manufacturing and marketing Air Water Beds, etc., in their own trade names much before the first plaintiff obtaining a license from the second plaintiff and started manufacturing air water beds etc., The association of the second plaintiff with the first plaintiff would clearly establish the fact that the first plaintiff had knowledge about the use of the products by the defendants and the first plaintiff has acquired license only from the second plaintiff and it is for the first plaintiff to prove whether the said license or transfer was entered in the Register.
10. Registration of a design can be cancelled under Section 19(1) of the Designs Act, subject to the conditions enumerated therein. Section 19(1) of the Designs Act runs as follows: —
“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 registerable under this Act, or
(e) that it is not a design as defined under Clause (d) of Section 2.”
11. As per the above section, if a particular design was published prior to the registration by another party and the design sought to be registered is neither new nor original, then it will be a sufficient ground for cancellation of the registration. Further, Section 22(c) of the Designs Act enables that the grounds available under Section 19 can be taken as a ground of defence by a party in a suit for injunction.
12. In Smithkline Beacham PLC & Two others v. Hindustan Lever Ltd., & Another reported in IPLR 2000 Jan. 1, a case in which there was a prior publication of the same design of a Toothbrush, it was held that registration of the design was functional in nature as admitted by the plaintiffs in their advertisements and injunction was negatived.
13. In Rotella Auto Components v. Juspal Singh, reported in 2002 (24) PTC 449, a case in which the plaintiff obtained a registration of a design with respect to Top Open Locks and Pin Locks, in a suit for infringement against the defendants, the defendant took an objection that the designs with respect to locks were previously published in different magazines and therefore the case of infringement cannot stand and in the said judgment the Delhi High Court has held that once prior publication is proved in respect of a design, it cannot claim any protection and that the plaintiff's argument that the registration granted would be a prima facie proof of their case and that injunction must be granted was also negatived.
14. The defendants have proved that they have been manufacturing the air water beds, water seats/cushions etc, from the year 1997, much before the date of registration by the plaintiff's on 27.11.2002 The first plaintiff has obtained license from the second plaintiff who was earlier dealing with the respondents and therefore the second plaintiff ought to have had knowledge that the respondents were manufacturing the same design of water beds, cushions etc., The first plaintiff who has obtained license from the second plaintiff is also bound to know this fact from the second plaintiff. Therefore, the designs said to have been registered by the plaintiffs are not new or original and therefore they are liable to be cancelled if proper proceedings are initiated by the respondents/defendants.
15. By incorporating Sub section (3) of Section 22 of the Designs Act, the Registration of a design may be cancelled on every ground available as a ground of defence. The grounds on which the Registration of a Design can be cancelled have been enumerated in section 19 of the Act. If a design is a conception, suggestion or idea of a shape is not an article. If it has already been anticipated, it is not new or original. If it has been pre published, it cannot claim protection as publication before registration defeats the proprietor's right to protection under the Act. Thus looked at from any angle from the documents placed on record, the designs registered by the plaintiffs have been pre-published and therefore they cannot claim protection, since the registration of the designs are only few years later than the publication of the designs by the respondents/defendants. The grounds of defence as mentioned in Section 19 can be taken by the respondents/defendants pursuant to Sub section (3) of Section 22 of the Designs Act and therefore no injunction can be granted as there is a serious dispute with regard to the validity of the designs to be tried in the suit. Hence the applicants/plaintiffs are not entitled for an injunction. Therefore, this Original Application is liable to be dismissed and the same is hereby dismissed. No costs.
VCJ/VCS