Alert India v. Naveen Plastics And Another

J.B Goel, J.:— Application (IA No. 8597/96) under order 39 rules 1 & 2 and section 151 cpc is of the plaintiff for temporary ad-interim injunction against infringement of registered design of the plaintiff in respect of Soles of footwear and for passing off in a suit for permanent injunction filed by plaintiff under Section 53 of the Design Act. 1911 (hereinafter called ‘the Act), seeking injunctions against infringement of their registered design No. 170002 in respect of Soles of Footwear registered and for passing off and ancilliary reliefs of rendition of accounts, damages and for delivery and destruction of infringing goods and the dies used for their manufacture.

2. It is alleged that the plaintiff is a partnership firm and is a leading and renowned manufacturer of Soles of Footwear; which are of superior quality and enjoy enviable reputation and position in the market, their sales in this design have mounted to about Rs. 50 Lacs; the design of their Soles of Footwear is registered as No. 170002 under the Act in the name of the plaintiff as its proprietor; that the plaintiff on or about 10th August 1996 came to know that the defendants are using for sale of soles of footwear with design which is identical with/fraudulent or obvious imitation of the aforesaid registered design of the plaintiff, without the licence or consent of the plaintiff and thereby they are infringing the registered design of the plaintiff and thus are committing piracy of the said registered design of the plaintiff and thereby passing off goods as those of the plaintiff, they are thereby causing damages to the reputation, goodwill, and monetary loss to the plaintiff. The plaintiff have claimed reliefs of injunction against infringement of their registered design, passing off etc. Plaintiff alongwith the suit have impressions of their registered design of their sole and also of the infringing sole of the defendant.

3. On 19.9.1996 an ex parte ad-interim injunction was granted restraining the defendants, their servants, and agents from manufacturing and selling soles with design similar to the registered design of the plaintiff.

4. Defendants on being served have filed written statement as well as reply to the aforesaid IA contesting the claim of the plaintiff. Separately, I.A No. 9048/96 under Order 39 Rule 4 and Section 151 of the CPC has also been filed for vacating the ad-interim injunction granted on 19.9.1996

5. Defendant No. 2 has alleged that he is the sole proprietor of defendant No. 1 and is proprietor of the registered design No. 170827 in respect of soles of the footwear and as such by virtue of this registered design defendant has an exclusive right to use and manufacture for sale said goods with this design. It is also alleged that the design of the defendant is different and distinct from the design of the plaintiff and that is why the Controller of Patents and Designs had granted registration to his design. Objection has also been taken that this court has no pecuniary jurisdiction to entertain and try the suit in view of the provisions of Sections 48 and 53 of the Act.

6. Both the parties thus claim to be proprietors of their respective registered design in respect of the same goods, namely, sole of footwear.

7. Both the parties have placed on record copies of their respective certificate of registration of their design.

8. As appears from the copy of the certificate of registration No. 008676 issued on 19th April, 1996, plaintiff had applied for registration of their design as Design No. 170002, dated 11.10.1995 in respect of the ‘sole of footwear’ which has been registered in the name of Alert India, a partnership firm in class 10.

9. Copy of the certificate of registration bearing No. 00864 issued on 12.4.1996 filed by defendants shows that application for registration of his design as Design No. 170827 was made on 4th March, 1996 in respect of the ‘sole’ which has been registered in the name of Naveen Plastics, with Shri Murari Lal Gupta its proprietor also in Class 10.

10. Learned counsel for the plaintiff has contended that the plaintiffs design has been registered and published much before the registration of the defendant's design as such the defendant cannot be said to be author of a new and original design. His design is an imitation of plaintiffs design and could not have been lawfully registered under Section 43 of the Act and obviously registration has been obtained by defendant fraudulently and by mis-representation and his use of this design is infringement of plaintiffs prior registered design. This is clearly an act of piracy on his part. Defendant's design even if registered would not entitld him to the legal remedies as provided under Section 53 of the Act. For this reliance has been placed on Mohd. Abdul Karim v. Mohd. Yasin . AIR 1934 All ER 798., and Qadar Bakhsh v. Gulam Mohd. . AIR 1934 Lahore 709. According to him such later registered design has no lawful existence and has to yield to the plaintiffs earlier registered design.

11. Whereas the learned counsel for the defendant has contended that defendant being registered proprietor of the design is entitled to the right to apply this design even if the plaintiff design is same or similar and of prior date in point of time as the law does not confer preferential or exclusive right to the proprietor of a registered design against proprietor of another registered design and the only remedy, if at all available lies under Section 51-A of the Act for its cancellation and unless such cancellation is ordered by the Controller or the High Court, the plaintiff has got no remedy under Section 53 of the Act against the defendant. He has placed reliance on the two judgments of this court in Tobu Enterprises Pvt. Ltd. v. Megha Enterprises . 1983 PTC 359., and Sat Pal Singh v. S.P Engineering Works . IA No. 1245/1971. both by Single Judge judgments of this court learned counsel has also argued that the defendant's design is distinct from and not same or similar to that of the plaintiff and obviously because of substantial variations in the two, that the design of the defendant was registered later.

12. Learned counsel for the plaintiff has disputed the correctness of the judgments in Tobu Enterprises Pvt. Ltd. according to him, it is not a good precedent because, firstly, that case was decided mainly because of dissimilarities in the two registered design and it was not necessary to go into the question of preferential rights of the two registered proprietors of the design qua each other and relying on Rajpur Ruda Meha v. State of Gujarat . 1980 1 SCC 677, he has contended that the judgment is per incurium otherwise, as the object, purpose and scheme of the Act which is enacted to protect the rights of registered proprietor of a design and to prevent piracy have not been considered. Clearly a person who uses, obviously, identical or similar design, registered later, is a pirator and cannot be said to be the proprietor of a new or original design. It is against the very purpose of the Act which is enacted to protect the right and interest of an author of a new or original design.

13. Two questions arise for deciding this application. (1) Whether the registered proprietor of a design registered earlier has got a right to prevent its infringement by another registered proprietor of same or similar design registered later on; (2) whether or not the two design in dispute are same or similar ?

14. To answer these questions it is necessary to go into the policy, object and purpose, behind the enactment and the scheme of the Act.

15. The Design Act, 1911 as its Preamble states is enacted to amend the law relating to the protection of the Design. There has been in existence earlier law which provided for registration and protection of invention of a new or original design. The purpose of the Act is to protect a novel design devised to be applied to a particular article to be manufactured and marketed commercially. The protection is given to those who produce new and original designs primarily to advance industries and to keep them at high level of competitive progress. The object of registration of the Design is to ensure that the originator of a design is not deprived of the reward of his invention and labour by others applying it to their goods. Broad scheme of the Act is given below:

Section 2(5) of the Act defines ‘Design as under:

“2(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 mere mechanical device, and does not include any trade mark as defined in clause (v) of subsection (1) of Section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in Section 479 of the Indian Penal Code.”

16. A proprietor of a new or original design is defined in Section 2(14) of the Act as under:

“(14) Proprietor of a new or original design,

(a) Where the author of the design, for good consideration, executes the work for some other person, means the person for whom the design is so executed;

(b) Where any person acquires the design or the right to apply the design to any article, either exclusively or any other person or otherwise, means, in the respect and to the extent in and to which the design or right, has been so acquired, the person by whom the design or right is so acquired; and

(c) in any other case, means the author of the design.”

“and where the property in, or the right to apply, the design has devolved from the original proprietor upon any other person, includes, that other person.”

17. Section 43, which is in part II, provides that “Controller may on the application of any person claiming to be proprietor of any new or original design not previously published in India register the design under this part”, such application has to be made in the prescribed from, the Controller may, if he thinks fit, refuse to register any design presented to him for registration and sub-section (6) provides that a design when registered shall be registered as of the date of the application for registration. Section 45 provides for grant by the Controller of a Certificate of Registration to the Proprietor of the design when registered. Section 46 provides that a Register of Design shall be kept at the Patent Office wherein “the names and addresses of proprietors of registered design, notifications of assigns, and of transmissions of registered design and such matters as may be prescribed shall be entered” and under sub-section (3) such register shall be prima facie evidence of any matters directed or authorised to be entered therein. According to Section 47 when a design is registered the Registered proprietor of the design shall have copyright in the design during 5 years from the date of registration and such period of 5 years is expendable for further two terms of 5 years each by Controller. Section 53 of the Act makes it unlawful for any person for the purposes of sale to apply or 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 leave of the registered proprietor, not 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 or an imitation or copy of the registered design etc.

18. It is thus clear that once design is registered only its proprietor or his assignee can take benefit of the registered design during the period of the validity of the registration and no one else. Further safeguard has been provided to a registered design under Section 50 of the Act that during the existence of the copyright of a design or such shorter period not being less than 2 years from the registration of the design as may be prescribed, the registered design is not even open to inspection by any body except the proprietor or a person authorised by him in this behalf. Once a design has been registered after following the procedure for the registration of the design no one except the registered proprietor or a person authorised by him can use the design in the class of goods for which the design is registered and its piracy is protected for the purposes of manufacturing goods or article for sale by any other person and the registered proprietor can insist that any one committing piracy should be restrained from doing so. And Section 51A provides for cancellation of the registration on a petition made to the High Court on the following grounds:

(i) that the design has been previously registered in India, or

(ii) that it has been published in India prior to the date of registration, or

(iii) that the design is not new or original design.

19. This power can also be exercised by the Controller on first two grounds.

20. This scheme of the Act makes its purpose clear that the underlying principle behind the law providing for registration of a design is that the commercial exigency requires that a specific design should be protected and its infringement prohibited and prevented.

21. As provided by Section 43 of the Act a design can be registered “on the application of a person claiming to be the proprietor of any new or original design not previously published in India”. It postulates that the design to be registered should be new or original and should not have been previously published in India. To put it otherwise a design which is not new or original and has already been used is not entitled to be registered as such a course will defeat the very purpose of enacting such law. If these conditions are not fulfilled the applicant is not entitled to the registration of his design and if registered such design is liable to be cancelled under Section 51A of the Act.

22. In the present case both plaintiff and the defendant claim to be registered proprietors of their design. Assuming that these designs are same or similar the questions that arise are (1) has the plaintiff as proprietor of the registered design which was registered earlier any preferential or overriding right over the defendant whose design was registered later ? (2) If answer to the question No. 1 is in affirmative is he not entitled to the remedy against the later under Section 53 and (3) Can he seek such remedy against the later under Section 53 of the Act before cancellation of the later's design under Section 51-A of the Act.

23. The Act in terms does not specifically give any preferential right to the proprietor of a registered design on account of seniority in registration of his design. However, this can be discerned from the object, scheme and purpose behind the Act.

24. In the case of Mohd. Abdul Karim (supra) it was held that the proprietor of a design must be the author or one who has acquired the design from the author or a person on whom such rights have devolved and where the suit is filed for injunction to restrain defendant from using a certain design which plaintiff has got registered and for the damages, it is open to the defendant to plead that the ‘plaintiff was not the proprietor of the particular design and that it was not a new invention or design of the plaintiff on the date of his registration. In this case, it was found that the plaintiff was not such a proprietor and his suit for injunction on the basis of his registered design was dismissed.

25. In the second case of Qadar Bakhsh also the plaintiff had filed a suit against the defendant for recovery of damages for contravention and infringement of his design under Section 53 of the Act. The suit was dismissed by the Trial Court on the ground that the plaintiffs design was neither new nor original and it was found that his design had been published in India for several years. In appeal, it was contended that once a design has been registered it was not open to the defendant to urge that there was nothing new or original in the plaintiffs design and that it was open to the defendant to present a petition for the cancellation of the registration of the design to the High Court on the ground that it had been published in India prior to date of registration or that it was not a new or original design and in the absence of such a petition the defendant could not be allowed to raise such plea in defence. This contention was rejected and the judgment of the Trial Court was upheld. In this judgment reliance was placed on an earlier Division Bench Ruling of Allahabad High Court reported in Ram Sahai v. Agnoo . AIR 1922 All 496 I, where it was laid down that “no registration under Section 43 of the Patents and Designs Act is effective unless the design or configuration sought to be protected is new and original and not a pre-existing common type.

26. These two judgments help the plaintiff in as much as defendant's design even if registered, in the presence of the plaintiffs earlier registered and published design is not entitled to the protection of Section 53 if it is identical to that of the plaintiff.

27. On the other hand, learned counsel for the defendant relies on Tobu Enterprises Pvt. Ltd. (supra). In that case plaintiff had filed a suit for injunction alleging infringement of his design registered on 16.8.1976 Defendant pleaded that they had got their design in respect of the same goods registered on 6.10.1982 and contested the suit and the application for temporary injunction. It was also pleaded that their goods had no resemblance with those of the plaintiff. Learned Single Judge of this court assuming for the sake of arguments that the goods of the defendant resembled the ones manufactured by the plaintiff, after referring to the provisions of Sections 53, 51A and 47 of the Act and also Sections 27 and 28 of the Trade and Merchandise Act, 1958 in Paras 10 and 11 laid down that:

“10. It is true that Section 47 of the Act does create a substantive right in favour of a person whose design is registered. But that provision does not say that a registration earlier in time will prevail against a later registration. Had there been such an intention of the legislature it could have been expressed in the said terms ?

11. Then the question arises as to what is the remedy, if rights accrued on account of registration of design, are infringed. That remedy is provided in Section 53 of the Act firstly Section 47 does not create any right of preference in favour of an earlier registration and Section 53 does not provide for any remedy, of injunction etc. with a view to enforce prevailing of earlier registration as against later one. The registration of a design can, therefore, prevail and is to be protected against infringement only when the opposite party does not possess any registration. The obvious result is that if each of the parties is having registration of design, each of them can use that design for its products.”

28. With great respect, the learned Judge, in that case has not considered the object, purpose and policy behind enacting the Design Act, nor has he considered the question, which is germane, as to who is the ‘proprietor’ of a new or original design and it is he who is lawfully entitled to the registration of the design and consequently to claim protection against piracy. Design registered later would not be entitled to protection against first or prior registered proprietor of design.

29. Moreover, in that case the temporary injunction was refused on two additional grounds. First, it was found that there was lot of difference in the general appearance etc. and absence of the front wheel mudguard in the tricycle of the plaintiff which made it strikingly distinctive from that of the defendant. Secondly, it was noticed that the plaintiff had not come to court with clean hands which also disentitled him to the relief of injunction and in view of these findings it would not be necessary to go into the question whether the proprietor of first registered design was entitled or not to claim injunction against the proprietor of later registered design.

30. The case of the plaintiff is that the plaintiff are manufacturer of these goods, their goods are of superior quality, their sales are of Rs. 50 lacs and their design is registered w.e.f 11.10.1995 whereas the design of the defendants was registered on 4.3.1996 The plaintiffs design had obviously been already published when defendant started manufacturing and sale of the goods for which he got his design registered. If the two designs are same or identical in that case the defendant whose design was registered much later cannot be said to be ‘proprietor’ of a new or original design not previously published in India. As has been held by Allahabad High Court and Lahore High Court noticed earlier, a person claiming to be proprietor of a registered design which is not new or original and which is being used by others since prior to his registration, of such design, notwithstanding such registration, is not entitled to legal remedies provided under Section 53 of the Act. The defendant would not be entitled to seek legal remedies under Section 53 of the Act against the plaintiff in case he was to file a suit against the later. Can such a registered design be availed by him as a shield in a suit filed by the plaintiff under Section 53 ? In my view, the answer is to be in the negative. The defendant, if he is found to be a pirator of the design of the plaintiff, would not be entitled to defeat the just and legal right of the plaintiff available under the law. The plaintiff in that case would be entitled to the relief of injunction under Section 53.

31. Tobu Enterprises Pvt. Ltd. has simply been followed in Indo Asahi Glass Co. Ltd. v. Jai Mata Rolled Glass Ltd. . 1995 33 DRJ 31, by P.K Bahri, J. but again without any discussion, as is clear from the following statement made in para 25 of the judgment (at page 326), “So, I am of the prima facie view that design of the defendant infringes the registered design of the plaintiff and it may be that registration of the design made in favour of the defendant is liable to be cancelled but in view of the ratio laid down in case of Tobu Enterprises Pvt. Ltd. (supra), as long as both, the plaintiffs design and the defendant's stand registered, the plaintiff cannot be granted relief of a temporary injunction”. His lordship has apparently not notice that the two designs in dispute in Tobu Enterprises case were found dissimilar which in itself was sufficient to disentitle grant of injunction.

32. The other question is whether the design of the goods of the defendant is identical or deceptively similar so that of the plaintiffs. Learned counsel for the defendant has contended that the two are not same or similar and there are distinguishing features in the two designs. According to him there are two prominent distinguishing features in the two. Firstly, the top and bottom portion of the design of the defendant's sole has rough and granulary plane surface whereas at the corresponding places in the sole of the plaintiff there are numerous parallel lines. Secondly, the side portions of the sole of the defendant's design which have ridges are of glanular surface whereas corresponding portions of the plaintiffs soles have plane and smooth surfaced ridges. Whereas learned counsel for the plaintiff has contended that material features of the get up, pattern of the designs of the two soles are similar and indicative of imitation by the defendant and these are minor variations which are insignificant and do not distinguish the two designs from each other.

33. In Western Engineering Company v. Paul Engineering Company . AIR 1968 Calcutta 1092., while dealing with an application for cancellation and/revocation of a design Section 51A, it was observed as under:

“Reading sections 51-a and 2(5) of the patents and Designs Act, it appears that a subsequent design should be self-same or identical design registered earlier. The design, registration of which is sought to be cancelled under Section 51-A must not have different features of shape, configuration, pattern, etc. from those of the earlier design. The definition itself lays emphasis on the fact that the sameness of the features is to be decided by the eye. The sameness of the features does not necessarily mean that the two designs must be identical on all points and differ on no points.

One of the practical tests to find out the identity or sameness of the design is to find out whether there are substantial difference 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. 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 things. Similarity of device in external appearance may be a relevant factor in considering the substantial differences between the two but is certainly not a determining factor.”

34. This has been followed in this court in case of J.N Electricals (India)…Plaintiffs v. M/S. President Electricals…Defendants . ILR 1980 1 Delhi 215., where it has been laid down as under:

“24. Looking at the definition of the ‘design’, infringement of the design applied to an article is to be judged solely by the “eye”, and the ‘design’ 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. Therefore, all that is required to be seen in an action for infringement of design is the ‘sameness’ of the feature of shape, configuration, pattern etc. Admittedly, the design of the plaintiffs' toaster is earlier in point of time. 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.”

35. Thus for determining whether two designs are identical or not, it is not necessary that the two designs should be exactly the same. The main consideration to be applied is whether the broad features of shape, configuration, pattern etc. are same or nearly the same and if they are substantially the same then it will be a case of imitation of the design of one by the other.

36. In this case the broad pattern of the two soles seems to be similar. The middle portions of the two soles have the same pattern, in cuts, ridges, grooves, and lines pattern. The broad design of the pattern of the remaining portions is also similar except that the top and bottom portions of the surface of the plaintiffs sole have numerous horizontal parallel lines, whereas those of the defendant's sole have granular surface. Both the designs have similar cuts, ridges and grooves on both sides but with the difference that the surface of plaintiffs sole at such places is plane with smooth surface whereas sole of the defendant has rough, and granulary surface. The broad features of pattern, configuration and design being similar it cannot be said that these are substantial variation in the two designs. Also the sample of the plaintiffs sole is of brown colour whereas the defendant's sole is black but the colour will not make any difference as the colour is interchangeable or could be same. If the two designs are not before a potential purchaser at the same time, he may not be in a position to distinguish one from the other. Apparently, the design applied by the defendant is similar or obvious imitation of that of the plaintiff and seems to be an infringement of the registered design of the plaintiff. After arguments were concluded and case reserved for judgment, the plaintiff has also since filed a petition under Section 51-A of the Act in this court for cancellation of registration of defendant's design.

37. It was also contended on behalf of defendant that plaintiffs design was not a new or original one in as much as the plaintiffs design is a copy/imitation of another design used earlier by plaintiff and for which a notice dated 16.1.1996 was sent by its proprietor M/s. Enkey HWS India Limited, Roop Nagar, Delhi through Advocate, to the plaintiff. A copy of the notice has been placed on record. But except the copy of notice no material has been placed on record to support this plea that the design in question was used prior to its use by plaintiff or was similar actually. This contention thus has no force.

38. It was also contended that the very fact that the design of defendant has been registered by the Controller shows that is a new and original design and was not used earlier.

39. This objection overlooks the provision of Section 50(1) of the Act which prohibits the inspection of the design during the existence of copyright in such design or such shorter period not being less than two years as may be prescribed, by any other person. There is no requirement of law for Controller to verify from existing registered designs about the novelty of a design before it is registered. This objection also thus has no merit.

40. Still the question is what interim relief, if at all any, is to be granted to the plaintiff?

41. Learned counsel for the plaintiff, after arguments were heard, has supplied a copy of the decision of Supreme Court in Gujarat Bottling Co. Ltd. v. Coca Cola Company . CAs. No. 6839-40 of 1995, decided on 4th August, 1995 and has relied on para 50 of the judgment where it is laid down as under:

“50. Under Order 39, of the Code of Civil Procedure, jurisdiction of the Court to interfere with an order of inter-locutory or temporary injunction is purely equitable and, therefore, the court, on being approached, will, apart from other considerations, also look to the conduct of the party invoking the jurisdiction of the court, and may refuse to interfere unless his conduct was free from blame. Since the relief is wholly equitable in nature, the party invoking the jurisdiction of the court has to show that he himself was not at fault and that he himself was not responsible for bringing about the state of things complained of and that he was not unfair or inequitable in his dealings with the party against whom he was seeking relief. His conduct should be fair and honest. These considerations will arise not only in respect of the person who seeks an order of injection under Order 39 Rule 1 or Rule 2 of the Code of Civil Procedure, but also in respect of the party approaching the court for vacating the ad interim or temporary injunction order already granted in the pending suit or proceedings.”

42. Defendant cannot be said to be an innocent user of this design for the presence of such substantial similarities in his design with that of the plaintiff. His conduct cannot be said to be just and fair.

43. Plaintiff has also filed a petition under Section 51-A of the Act in this court for cancellation of the defendant's registered design. In my view in this case the three requirements for grant of temporary, injunction, namely, prima-facie case, balance of convenience and possibility of irreparable loss or injury in favour of the plaintiff are made out for the grant of temporary injunction. I accordingly, allowed IA No. 8597/96 of the plaintiff and confirm ad-interim temporary injunction granted on 19.9.1996 and in the result 1A No. 9048/96 filed by the defendant is dismissed.

44. Nothing mentioned herein shall be taken to be expression of opinion on merit at trial of the suit.

45. Costs of these applications will be the costs in the suit.