JUDGMENT
G.R. Luthra, J.
1. The present application under Order 39 Rules 1 and 2 read with Section 151 C.P.C. is for issue of an injunction restraining the defendants from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in tricycles which are an infringement of the plaintiff's registered design No. 144635 'and 144636 or passing off its goods or business as the goods or business of the plaintiff. The aforesaid application was filed alongwith a suit No. 437/83 for issue of a perpetual injunction on the same lines on which the temporary injunction is prayed for and also for rendition of accounts of profits illegally earned by the defendants by sale of the impugned tricycles. It was also prayed in the suit that defendants be directed to deliver to the plaintiff all the impugned goods, blocks etc. for purposes of destruction.
2. Plaintiff is a company incorporated under the provisions of the Indian Companies Act having its registered office at 8/29, Kirti Nagar Industrial Area, New Delhi. The plaintiff company is carrying on the manufacture and sale of children's bicycles, tricycles, cars and strollers (hereinafter collectively referred to as the goods). The case of the plaintiff is that the goods of the plaintiff has distinctive shape and configuration and are in great demand. One of the products of the plaintiff is 'mini bike tricycle'. According to the plaintiff, the design of that tricycle and its seat were got registered at Nos. 144635 and 144636 respectively under the Designs Act, 1911 (hereinafter referred to as the Act). The aforesaid registrations were obtained on 16th August, 1976. The assertions of the plaintiff are that within a short span of time, the shape, the configuration of the aforesaid tricycle and its seat acquired enviable reputation and that the public started recognizing and purchasing the aforesaid bicycle/tricycle as the exclusive manufacture of the plaintiff company. It is complained by the plaintiff that defendant No. 1, which is either a partnership firm having defendant No. 2 as its partner or a trade name solely owned by defendant No. 2, in February 1983 started manufacture and sale of tricycle of an identical or at least substantially similar design as those of the former without the consent, permission or licence of the former which amounted to infringement of the rights of the former under the Act. It is further complained that the defendants with a view to take advantage of popularity of the plaintiff's design of the tricycle and its seat and also with a view to encash the goodwill and reputation acquired by the said designs started passing off their inferior quality tricycle as the one manufactured by the latter.
3. On April 4, 1983 following order was passed by Leila Seth, J:
Notice for 13th April, 1983. Dasti.
In the meanwhile the defendants are restrained from manufacturing and selling or offering for sale tricycles that infringe the plaintiff's registered design numbers 144635 and 144636.
4. The defendants contested the suit as well as the application. They pleaded that the suit was not instituted by a properly authorised person, that the value for the purposes of jurisdiction was wrong, that the value of more than Rs. 1,00,000/- on the basis of relief of rendition of accounts was fixed with a view to give jurisdiction to this Court, that the said amount could not be claimed at all because of the maximum limit of Rs. 1,000/- fixed under section 53 of the Act and that, therefore, plaint be returned for representation to District Judge, Delhi. On merits, it was contended that defendant No. 1 got design of his tricycle registered under the Act under registration No. 152347 dated 6th October, 1982 on account of which injunction, as prayed for by the plaintiff, could not be issued. According to defendants, defendant No. 1 is a partnership firm having three partners, namely, R.D. Goyal, Agya Wati and Smt. Madhuri Goyal and, therefore, defendant No. 2, who had no concern with defendant No. 1 had been wrongly impleaded. Defendants denied that the tricycles manufactured by defendant No. 1 were having any resemblance with the ones manufactured by the plaintiff. It was also stated that the tricycle produced by the plaintiff as specimen in the court was not the one which was got registered under the Act, that a different model had been produced which meant that the plaintiff did not come to the Court with clean hands and that therefore injunction should be refused on that ground alone.
5. First of all I presume for the sake of arguments in this case that tricycles produced by defendant No. 1 resemble the one manufactured by the plaintiff. The relevant provision of the Act under which an injunction can be issued or damages can be awarded is Section 53 which reads as under:
53. Piracy of registered design. (1) During the existence of copyright in any design in shall not be lawful for any person--
(a) for the purpose 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 licence or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or
(aa) 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, and having applied to it the design or any fraudulent or obvious imitation thereof; or
(b) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of goods in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.
(2) if any person acts in contravention of this section, he shall be liable for every contravention--
(a) to pay to the registered proprietor of the design a sum not exceeding five hundred rupees recoverable as a contract debt, or
(bb) if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly:
Provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed one thousand rupees.
(3) When the Court makes a decree in a suit under sub-section (2), it shall send a copy of the decree to the Controller, who shall cause an entry thereof to be made in the register of designs.
It is apparent from the same that an action for recovery of damages and for issue of an injunction can be brought by the proprietor of a registered design. In the present case not only the plaintiff but defendant No. 1 is also proprietor of registered design. Therefore each of the parties, in view of subsection (2) of Section 53 of the Act is entitled to bring a suit for injunction and for recovery of damages against the other. That being so, obviously it will be absurd to issue injunction in favour of one of the parties to the suit restraining the other from using the registered design. The net result, therefore, is that when the design of both the parties is registered, no action in the nature of issue of injunction or recovery of damages is permissible.
6. The question then arises what should be the remedy in such a case? The answer is given by section 51-A of the Act which reads as under:
51--A. (1) Any person interested may present a petition for the cancellation of the registration of a design--
(a) at any time after the registration of the design to the High Court on any one of the following grounds namely:--
(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 a new or original design; or
(b) within one year from the date of the registration, to the Controller on either of the grounds specified in sub-clauses (i) and (ii) of clause (a).
(2) An appeal shall lie from any order of the Controller under this section to the High Court, and the Controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred.
That means that each of the parties can file application in the High Court for cancellation of the registration of the other. It was stated by the counsel for the defendants at the Bar that the defendant No. 1 had already filed such an application in this Court on 29th August, 1983. The plaintiff can also file such an application against the defendants.
7. The learned counsel for the plaintiff placed reliance on Section 47 of the Act which reads as under:
47. Copyright on registration. (1) When a design is registered the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during five years from the date of registration.
(2) If before the expiration of the said five years application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the period of copyright for a second period of five years from the expiration of the original period of five years.
(3) If before the expiration of such second period of five years application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller may, subject to any rules under this Act, on payment of the prescribed fee, extend the period of copyright for a third period of five years from the expiration of the second period of five years.
Learned counsel argue that it is apparent from a plain reading of that provision that it is the said provision which deals with the substantive right of a registered proprietor of a design, that the said substantive right of registered proprietor is for a period of 5 years initially which can be extended from time to time for a period of 5 years at a time, that on account of the fact that plaintiff obtained registration of the design of the tricycle earlier, the substantive right of the plaintiff having come into existence no right of the defendants could be acquired during the concurrency of the rights of the plaintiff and that, therefore, the plaintiff is entitled to prevent the defendants from the piracy consisting of the use of the design of the plaintiff. Learned counsel also pointed out that if the Legislature intended that an earlier registration should not prevail as against the later in time, it would have been so provided in the Act as had been done in sub-section (3) of Section 28 of the Trade and Merchandise Marks Act, 1958, which reads as under:
28. (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade mark but each of these persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
Learned counsel also contends that the Act does not unlike the provisions of Trade and Merchandise Marks Act provide for an elaborate procedure of inquiry of giving notice to the public for filing objections against the application of a person, that the registration is done without much inquiry and that, therefore, there is all the more reason that the earlier registrations must prevail as against the later ones. His submission also is that in any case there is 'passing off' of their tricycle by the defendants as those of the plaintiff on account of which alone the plaintiff deserves issue of temporary injunction, as prayed for by him.
8. 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 extension of the Legislature it could have been expressed in the said terms.
9. 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. I have already stated that Section does not, in any way, give preference to the earlier registrations as against later ones. Therefore, the net result is that 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 ones. 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 of each of the parties is having registration of design, each of them can use that design for its products.
10. The right against 'passing off' is a common law right. But that right is subject to the provisions of a particular statute. In the present case, Section 53 of the Act deals with the remedy of injunction and claim of damages and rendition of accounts. That does not provide for any remedy against any alleged passing off. Therefore, no injunction can be issued on the ground that a defendant in likely to pass off his goods as that of the plaintiff. It will be worthwhile to mention that in ordinary cases of infringement of rights, the right to recovery of damages is not confined to any pecuniary limits but section 53 of the Act imposes a maximum limit of Rs. 1,000/- for recovery of damages. This pecuniary limit having been provided in the particular law, i.e. the Designs Act, therefore must prevail against the general or common law of not setting any limit or not providing any pecuniary limit to the recovery of damages. On the same analogy when particular remedy is provided in particular circumstances, remedy against 'passing off' is excluded.
11. Had there been any intention of the Legislature that the passing off would entitle a plaintiff to obtain an injunction, that could have been so expressly stated had been done in section 27 of the Trade and Merchandise Marks Act, 1958, which reads as under:
27. (1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.
Therefore, in cases designs are registered under the Act, the doctrine of passing off has no application and that being so, the earlier registration or user cannot prevail against the later one.
12. As already mentioned whatever has been stated above is one the basis of presumption, for the sake of argument, that the respective tricycles manufactured by the plaintiff and defendant No. 1 are either identifiable or resemble so much with each other that the one manufactured by defendant No. 1 can be taken for that manufactured by the plaintiff. But actually, prima facie there is no resemblance. For comparison it is necessary to know as to what the designs was got registered by the plaintiff. There is a dispute between the parties. According to defendant No. 1 the plaintiff had, with a mala fide intention of committing fraud on the court produced before the court the latest model manufactured by the latter and that actually it was totally a different model, design of which was got registered by the latter. In the court there are three models of the tricycles. Two tricycles of red and yellow colour were produced by the plaintiff. Red one is manufactured by defendant No. 1. Yellow one is manufactured by the plaintiff. The third one was produced by defendant No. 1 with the assertion that it is manufactured by the plaintiff. That third one seems to be very old piece, is of faded pink colour and bears embossed words under the seat reading as, 'Registered Design No. 144636'. According to the plaintiff, it is yellow colour tricycle design of which was got registered. That piece is brand new. On the other hand, the contention of defendant No. 1 is that the old piece with pink colour is the model manufactured by the plaintiff design of which was registered. Prima facie, the contention of the defendants seems to be correct, on account of two reasons. Firstly, registration No. 144636 of the plaintiff is embossed under the seat of faded pink colour tricycle which clearly indicates that model was manufactured by the plaintiff. Further, the photostat copy of the sketch of the tricycle attached with photostat copy of certificate of registration, which has been placed on record by the plaintiff, exactly tallies with the model having faded pink colour. It appears from that photostat copy of the sketch that the model, design of which was got registered, did not have mudguard on any of the wheels including the front wheel and also its neck was practically straight and sloping. The model with faded pink colour also does not have front mudguard and its neck is practically straight and sloping type. The present model of yellow colour has a mouth with small neck and the seat is connected with that neck.
13. Under the above circumstances we have to compare the red colour tricycle manufactured by the defendants with faded pink colour tricycle manufactured by plaintiff. There is lot of difference in the general appearance; especially the absence of the front wheel mudguard in the faded pink colour tricycle makes it strikingly distinctive from the red colour model of the tricycle manufactured by the defendants.
14. Learned counsel for the plaintiff relied upon a judgment of H.L. Anand, J. in I.A. 1242/82 in Suit No. 459/82-Tobu Enterprises Pvt. Ltd. v. M/s. Joginder Metal Works & Others, decided on August 31, 1982. In that case the general appearance of the tricycle manufactured by the present plaintiff and the one manufactured by the defendant in that suit resembled but there was difference of accessories. It was held that the accessories did not make any difference and that only general appearance was to be seen. The learned counsel for the plaintiff contended that in the present case provision of mudguard was merely an accessory.
15. But obviously the argument is fallacious. Mudguard is very essential part. There are a number of other differences like the shape of the seat, shape of neck etc. Those also make difference in general appearance.
16. I have already mentioned that the plaintiff produced the latest mode of the tricycle which is different from the design which was got registered. Obviously the plaintiff has, therefore, not come with clean hands and cannot be entitled to the relief of injunction. I, therefore, vacate the injunction already issued and dismiss the application of the plaintiff. It is made clear that observations made above are only for deciding this application and will not affect the decision of the suit on merits.