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Case Number

I.A No. 1242/82 in Suit No. 459/82.

Attorney(S)

For the Plaintiff : Mr. N. K. Anand and Parveen Anand, Advocates.
For the Defendants : Mr. Mohan Vidhani, Advocate.

Judges

H.L. Anand

Acts

SECTION 2 TRADE AND MERCHANDISE MARKS ACT 1958
Section 479 of the Indian Penal Code.A
sub-section (5) of Section 2
Section 51-A(1)(a)(ii)

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Smart Summary

Structured Summary of the Opinion — H.L. Anand, J.

Factual and Procedural Background

The plaintiff, Tobu Enterprises Private Ltd., is a manufacturer and seller of children's bicycles, tricycles, cars and strollers. The plaintiff claims that one of its famous products is a "mini bike tricycle" with a unique, novel and distinctive shape and configuration, and that the plaintiff is the proprietor of new and original registered designs in respect of the tricycle and separately for its seat.

The plaintiff alleged that defendant No. 1 manufactures and defendant No. 2 markets tricycles that are identical or substantially identical to the plaintiff's registered designs, thereby infringing the plaintiff's registered design rights and committing passing off. The plaintiff filed a suit seeking permanent injunctions to restrain infringement and passing off, delivery up of impugned products, rendition of accounts and other reliefs.

By I.A. 1242/82 the plaintiff sought interim relief — namely, that during the pendency of the suit the defendants be restrained from manufacturing, selling or offering for sale tricycles bearing the alleged offending designs. The defendants resisted the suit and the application for interim protection on multiple grounds (see below). The judge adjudicated the interlocutory application for interim relief and granted the injunction, with costs to abide the event.

Legal Issues Presented

Whether the plaintiff is entitled to an interim injunction restraining the defendants from manufacturing, selling or offering for sale tricycles bearing the impugned design during the pendency of the suit.
Whether a defendant in an infringement suit pending in the High Court may raise the defence of invalidity of a registered design (on grounds such as lack of novelty, prior publication or lack of originality) without first initiating cancellation proceedings under Section 51-A of the Designs Act.
Whether, on the existing material, the plaintiff's registered design is new and original or had been previously published in India prior to registration.
Whether the defendants' tricycle design is identical to, or an obvious or fraudulent imitation of, the plaintiff's registered designs within the meaning of Section 53(1) and the statutory definition of "design" (sub‑section (5) of Section 2) of the Designs Act.

Arguments of the Parties

Plaintiff's Arguments

The plaintiff claimed exclusive rights in newly and originally registered designs for the mini bike tricycle and its seat and sought to restrain defendants from using the design pending trial.
The plaintiff contended that Section 51-A (together with Sections 47 and 53 and the scheme of the Act) implies that a defence challenging registration (on grounds of prior publication, non‑novelty or lack of originality) is not open to a defendant in an infringement suit unless the defendant proceeds by way of cancellation under Section 51-A.
The plaintiff argued that, on the material available, the design is new and original and that the defendants were manufacturing and marketing tricycles that are identical or substantially identical, amounting to infringement and passing off.

Defendants' Arguments

The defendants contended that the Court lacked jurisdiction under the Designs Act and that the suit was beyond the Court's pecuniary jurisdiction.
They argued that the plaintiff had no cause of action and that the defendants' design did not infringe the registered designs of the plaintiff.
They alleged the plaintiff's registrations were obtained by fraud and that the plaintiff's product did not possess distinctive shape or configuration, asserting that the design was common and available in India for more than a decade.
The defendants pleaded that the designs (tricycle and seat) were not new or original and that the plaintiff had no exclusive right to apply the features to tricycles.
They argued that the defendants' design was not identical nor an obvious or fraudulent imitation and that the plaintiff was not entitled to rendition of accounts or to the interim restraint.
Defendants also relied upon contentions regarding valuation and permissible heads of relief under the Designs Act to resist interim relief.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Decision of the Division Bench reported as 1972 R.L.R N. 90(1)	Supports the plaintiff's contention that a plea of invalidity of registration (e.g., lack of novelty or prior publication) is, at least prima facie, not open as a defence in an infringement suit without resort to cancellation proceedings (i.e., points to an implied bar to raising such defences in the infringement suit).	The court treated that decision as indicating that the plea of an implied bar is prima facie well-founded and on that basis held, at the interlocutory stage, that defendants were not entitled to raise the invalidity defence in the present suit without initiating cancellation proceedings under Section 51-A. This supported refusal to refuse interim relief on that ground.

Court's Reasoning and Analysis

The court proceeded in a step-by-step manner, addressing the defendants' preliminary contentions and then the substantive comparison of designs:

Preliminary objections (jurisdiction, valuation, scope of relief): the judge observed these issues did not affect the Court's jurisdiction to grant interim relief, and even if some heads of relief were ultimately held unavailable, that would not deprive the plaintiff of a temporary injunction if the ordinary conditions for such relief were satisfied. Accordingly, the court declined to decide these points at the interlocutory stage.
Defence of invalidity under Sections of the Designs Act: the court examined the plaintiff's contention that Section 51-A (together with the scheme of the Act and related provisions) implies that defences attacking the validity of registration on grounds such as prior publication, lack of novelty or lack of originality are not available to defendants in an infringement suit unless they invoke cancellation proceedings under Section 51-A. The court acknowledged difficulty in the question but relied on the Division Bench decision (1972 R.L.R N. 90(1)) to hold that the contention is prima facie well-founded. Consequently, at the interlocutory stage the court refused to allow the defendants to rely on those invalidity contentions without initiating cancellation proceedings.
Even assuming the defendants could raise the invalidity defence, the court assessed the available material and found it insufficient to conclude that the plaintiff's design was not new or original or had been previously published in India. The defendants had not pointed to any contemporaneous or earlier domestic product bearing the design; their reliance on foreign publications did not establish prior publication in India, and there was no pleading that such foreign publications were available in India. A single alleged instance of importation by a private person was regarded as insufficient to amount to prior publication in India under Section 51-A(1)(a)(ii).
Substantive test of infringement: the court applied Section 53(1) (prohibiting application of a registered design or any fraudulent or obvious imitation thereof to articles in the registered class) and the statutory definition of "design" in sub‑section (5) of Section 2 (which limits "design" to visual features of shape, configuration, pattern or ornament judged solely by the eye).
Visual comparison and conclusion on imitation: after a close visual comparison, the court concluded that, with regard to features of shape, configuration, pattern or ornament, the defendants' product was almost identical to, and in any event an obvious imitation of, the plaintiff's registered design. The court rejected defendants' attempts to distinguish the designs by reference to additional accessories, minor modifications or differences in dimensions, observing that such deviations did not alter the overall shape, configuration or pattern which determine the general visual impression. The court emphasized that the Designs Act protects innovation and originality but does not countenance mere accessory additions or minor modifications as sufficient to avoid infringement when the broad visual impression remains identical or an obvious imitation.
Conclusion on interlocutory relief: for these reasons — the prima facie bar to raising invalidity without cancellation proceedings, the insufficiency of the defendants' evidence of prior publication, and the finding that the defendants' design is (in general impression) identical or an obvious imitation — the court held that the plaintiff was entitled to interim injunctive relief restraining the defendants from manufacturing or marketing tricycles with the offending design until the suit is finally decided.

The court expressly refrained from finally adjudicating the complex questions concerning valuation, scope of relief under the Act and the full merits of the validity of registration, treating those as matters for trial or for cancellation proceedings under the Act where appropriate.

Holding and Implications

Holding:

The plaintiff is entitled to an interim injunction: the defendants are restrained from manufacturing or marketing tricycles bearing the impugned design until the decision of the suit. (Injunction granted.)

Implications:

Direct effect on the parties: the defendants are temporarily restrained from producing or marketing the offending tricycles; the interim injunction remains in force until the suit is finally decided.
Procedural note: the court treated the defence of invalidity based on prior publication or lack of novelty/originality as prima facie subject to the requirement of cancellation proceedings under Section 51-A, and therefore not available (at least at interlocutory stage) as a bar to interim relief in the present case. The court did not finally decide the ultimate validity of the registrations — that remains for trial or for cancellation proceedings if initiated.
Costs: the opinion records that costs shall abide the event.
Broader legal impact: the opinion does not purport to lay down a new legal principle beyond applying existing provisions of the Designs Act and a Division Bench authority; it addresses entitlement to interlocutory relief on the facts and law as applied in this instance.

This summary is strictly confined to the content and reasoning contained in the provided opinion and does not add information beyond the text of the opinion.

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Tobu Enterprises Pvt. Ltd. v. Joginder Metal Works

H.L Anand, J.:— The quesction that this application raises is as to entitlements of the plaintiff to restrain the defendants from manufacturing, selling or offering for sale tricycles, said to bear the design claimed to be an infringement of the registered designs of the plaintiff, during the pendency of the plaintiff's suit for permanent injunction to restrain infringement of the designs and for passing off, rendition of accounts and certain other reliefs.

2. Tobu Enterprises Private Ltd, plaintiff, is the manufacturer and seller of children bicycles, tricycles, cars and strollers and claims that its goods have distinctive shape and configuration and are in great demand. It is claimed that amongst the famous product of the plaintiff is “mini bike tricycle” having a unique, novel and distinctive shape and configuration and the plaintiff is the proprietor of the new and original design in respect of the tricycle which is registered under the Designs Act by virtue of which the plaintiff claims exclusive right to apply the features thereof to the mini bike triycle of its manufacture and that use of the design by any other trader of the said design in relation to the tricycle without the permission, licence or consent of the plaintiff would amount to infringement of the plaintiff's right. The seat of the tricycle is also claimed to be of a novel and unique design, which is separately registered. Plaintiff claims exclusive right in respect of the design of the seat as well in addition to that of the tricycle. The plaintiff claims that by virtue of novelty and originality of the designs, the plaintiff has acquired unique reputation and goodwill in respect of the said manufacture and that the defendant No. 1 is manufacturing and defendant No. 2 is marketing tricyles, manufactured by defendent No. 1, with an identical or substantially identical design and have thereby deliberately infringed and contravened the copyright of the plaintiff in the designs with a view to take advantage of the popularity of the plaintiff's design, goodwill and reputation. It is claimed that the defendants are thus passing off the interior quality tricycle bearing impugned design as the tricycle of the plaintiff. On these allegations, the plaintiff seeks permanent injunction to restrain the defendants from pirating the registered designs of the plaintiff, from passing off their goods bearing impugned design as the manufacture of the plaintiff, for delivering up of the impugned products and for rendition of accounts of profits made by the defendans.

3. By I.A 1242/82, the plaintiff prays that, during the pendency of the suit, defendants should be restrained from manufacturing, selling or offering for sale tricycles bearing the offending designs.

4. The defendants resist the suit, as indeed, the application for interm protection, on the grounds that this Court has no jurisdiction under the Designs Act, the suit it beyond the pecuniary jurisdiction of this Court; the plaintiff has no cause of action, the design of the defendants manufacture does not constitute an infringement of the registered designs of the plaintiff; the regitration of the design was obtained by the plaintiff by fraud; that the plaintiffs product does not have distinctive sape or configuration and the design of the plaintiff's product is common and available in India for the post more than a decade; that the design of the plaintiff's manufacture is neither new nor original and that the design of seat was also neither new nor original; that the plaintiff does not have any exclusive right to apply the features to the tricycles or to claim any exclusive right to the design of the tricycle or the seat; that the design of the tricycles manufactured by the defendants is neither identical nor fraudulent or an obvious imitation of the designs incorporated in the manufacture of the plaintiff and that the plaintiff is not entitled to the relief of rendition of accounts and is, in any event, not entitled to the restraint order.

5. Learned counsel for the defendants sought to justify refusal of an interim injunction on the preliminary grounds that the suit of the plaintiff suffered from a variety of infrimities with regard to the valuation of the subject matter and as to the permissible heads of relief available under the Design Act. It is, however, unnecessary to dilate on these aspects because it was not disputed that the objection with regard to valuation of the various relief would not in any way impinge on the jurisdiction of this Court and even if the plaintiff is eventually held not entitled to some of the heads of relief not specifically enumerated in the Designs Act, such a finding would not militate against the right of the plaintiff to an injunction, if such a relief would be otherwise justified. It was also not disputed that whatever may be the outcome of these contentions, the plaintiffs could not be non-suited on any of the grounds. If that be so, none of these infirmities are of a character which may deprive the plaintiffs of the right to a temporary injunction if the conditions for grant of such a relief are otherwise satisfied. It would, therefore be neither proper nor necessary for me at this stage to deal with the contentions with regard to valuation and the scope of relief available under the Act.

6. Counsel next sought to justify refusal of relief of injunction on the ground of alleged invalidity of the registration of the designs based on the allegation that the designs were neither “new” nor “original” and had been previously “published” in India thereby disentitling the plaintiff to the registration thereof—This defence of the defendant to the plea for interim, injunction was sought to be scuttled on behalf of the plaintiff on the ground that by virtue of Section 51-A of the Act, as indeed, the provision of Section 47, 53 and the scheme of the Act, the defence of invalidity of the registration of the design on any of the grounds, which may justify cancellation of registration are not open to, a defendant in a suit for infringement without resort to proceedings for cancellation of registration under Section 51-A of the Act. Section 51-A provides that any person interested may present a petition for the cancellation of the registration of a design to the High Court on the ground that the design has been previously registered in India or that it has been published in India prior to the date of registration or that the design is not a new or original design. According to the plaintiff, the provision of section 51-a impliedly bars a defence which would justify cancellation unless proceedings for cancellation have been initiated. This is one of the questions that would full for determination at the trial of the suit and I would be reluctant to rule on this question at this stage. But that the contention of the plaintiff is prima facie well-founded is borne out by a decision of the Division Bench of this Court reported as 1972 R.L.R N. 90(1). The Division Bench was no doubt concerned with the defence of invalidity sought to be set up in a suit in District Court and not in the High Court, which has exclusive jurisdication over cancellation proceedings. The question, if such defence are open to a defendant in a suit for infringement pending in this Court without resort to the provision of Section 15 A of the Act, does not appear to me to be fre from difficulty. But by virtue of the decision of the Division Bench of this Court, I must hold that the plea of implied bar is at least prima facie well founded and, as at present advised, the defendants are not entitled to raise such a defence in the present suit without resort to appropriate proceedings for cancellation. Defendants have admittedly not initiated any such proceedings for their own reasons. For the purpose of interim relief, the defendant would, therefore, be not entitled to raise these pleas and the interim protection sought by the plaintiff could not, therefore, be refused on that ground.

7. But, even if the defence of invalidity was open to the defendants, it is, difficult to hold on the existing material, that the design of the plaintiff is not a new or original design or that it has been published in India prior to the date of registration. That it is new and original is obvious because the defendants were unable to produce or point to any other product in the country contemporaneously or earlier, apart from the offending product, which may bear resemblance to the design of the plaintiff. Prima facie, the design could not be said to have been previously published in India merely because according to the defendants foreign publications were available in India containing the design. The defendants did not even make an averment in the pleadings that these publications were available in India. The only other basis of prior publication is the allegation of the defendants that a certain person known to the defendants had brought a piece from abroad for a child, which incorporated the design or on which the design of the plaintiff may have been based. Prima facie, such a solitary instance, assuming that there was such an import, would not amount to prior publication of the design in India, as visualised by Section 51-A(1)(a)(ii) of the Designs Act.

8. If that be so, the only question that survives for consideration is if the design of the tricycles of the defendants' manufacture could be said to be identical to or an obvious or fraudulent imitation of the registered designs of the plaintiff Section 53(1) provides that during the existence of copyright in any design it shall not be lawful for any person “to apply or to cause to be applied to any article in any class of goods in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered, proprietor.” The expression “design” is defined by sub-section (5) of Section 2 in the following manner:

“(5) “design” means only the features of shape, configuration pattern or ornament applied to any article 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 more mechanical device and does not include any trade marks as defined in cluase (v) of sub-section (1) of section 2 of trade & merchandise marks act, 1958 or property mark as defined in Section 479 of the Indian Penal Code.”

A close look at the competing designs leaves no manner of doubt that, having regard to features, shape and configuaration, pattern or ornament, the design of the defendants' product is almost identical with the design of the plaintiff and is, in any event, an obvious imitation of it. Learned counsel for the defendants, who argued with considerable confidence the various contention with regard to valuation, scope of relief under the Act and the scope of defences open to the defendants in a suit of this type, was unable to point out why the design of the defendants in its general impression was not an obvious imitation, if not identical, to the design of the plaintiff. Counsel sought to distinugish the two designs because of certain additional accessories to the product of the defendants but, unfortunately, for the defendants that would not change the shape, configuration or pattern, which are the broad features of the design of the product. These accessories or minor modifications do not take away from the general impression that the two designs convey on a visual examination of the competing designs. Learned counsel also sought support from a slightly different dimension or sizes of some of the components of the defendants' manufacture but the mere distinction or sizes of the manufacture or any of its components would not be sufficient if the broad features of shape configuration and pattern are either identical or fraudulent or obvious imitation of the original. The Designs Act products innovations and originality but does not stiffle creativity in design and pattern. Mere additions of accessories or minor modifications do not qualify for originality. Defendants' resistance to the injunction was primarily based on the plea that the design was neither new nor original and was published in India before, a plea which is unfortunately, either not available to the defendants because the defendants failed to initiate appropriate proceedings for cancellation, or otherwise has no merit. The defendants did not make any serious effort to bring out any points of distinction between the two designs which may take the manufacture of the defendants out of the mischief of the identity with the design of the plaintiff or its obvious or fraudulent imitation.

9. For all these reasons, the plaintiff would be entitled to an interim injunction to restrain the defendants from manufacturing or marketing tricycles with the offending design till the decision of the suit and I restrain the defendants accordingly.

Costs would, however, abide the event.

M.B.L Injunction granted.

Tobu Enterprises Pvt. Ltd. v. Joginder Metal Works

Structured Summary of the Opinion — H.L. Anand, J.

Factual and Procedural Background

Legal Issues Presented

Arguments of the Parties

Plaintiff's Arguments

Defendants' Arguments

Table of Precedents Cited

Court's Reasoning and Analysis

Holding and Implications

Tobu Enterprises Pvt. Ltd. v. Joginder Metal Works

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