1. The plaintiff is the applicant in all the three applications. The suit is filed for injunction reliefs against act of infringement of plaintiff's registered trade mark “Sun Stamper” and design of pre-inked rubber stamp and against passing off the goods of the defendant as that of the plaintiff by use of trade mark, which is deceptively similar to that of the plaintiff's trade mark or registered design. O.A Nos. 635 to 637 of 2010 are filed by the plaintiff for interim injunctions in the same line of perpetual injunction reliefs sought for in the main suit.
2. The facts that the plaintiff and the defendant are private limited companies and have been carrying on the business of manufacturing and marketing rubber stamp and marking system, and have been doing their business within Kerala and Chennai, and Calcutta respectively under different registered trade mark “Sun Stamper” and “Presto Instanza” respectively and that box type preinked rubber stamp is one of the products of the plaintiff and the defendant are not seriously denied. While, according to the plaintiff, the design of his trade mark “Sun Stamper” registered on 04-08-2005 and the particular box type pre-inked rubber stamp registered on 27-12-2006 is unique, distinct and his innovatory model and has earned large popularity and the plaintiff incurred heavy expenditure for advertising the same and the registered trade mark and design of the plaintiff is infringed by the defendant by use of deceptively similar trade name and box type pre-inked rubber stamp and the same is likely to create confusion in the mind of the consumer regarding the ownership of the products and in the event of the same is being allowed to continue, the same is likely to cause greater prejudice to the plaintiff. The defendant has opposed the relief sought for herein by denying the innovative nature of the design and according to the defendant, the defendant had been dealing with box type pre-inked rubber stamp of various sizes, since 1995 and one Japanese Company by name Yamahachi Chemical Co. Ltd., at 54-4, O-Chigara, Nishiyara-Cho, Gamagori, Aichi-4430105, Japan is already engaged in manufacture and marketing of similar type of box type pre inked rubber stamp machine and the defendant, having come to know about the same through internet publication, imported the same from Japanese Company and introduced the same in India in or about November, 2006, that is much earlier to the date of application of the petitioner in December, 2006 for registration of design. As the design is already introduced in the market in India by the respondent and as the same much before the registration of the same in favour of the plaintiff become popular all over India, there is no novelty and innovative nature in the plaintiff's design and the registration of the same in the name of the plaintiff will not confer any right upon him to claim exclusive use of the design as against all others. It is further contended by the defendant that as both the designs are distinct and different no confusion or mistake regarding the source of the products will arise in the mind of the consumers so as to cause any prejudice to the applicant, as such the petitioner is disentitled to claim any injunction relief as sought for herein. It is further contended by the defendant that as the trade mark of the plaintiff and the defendant i.e “Sun Stamper” and “Presto Instanza” are entirely different and also the area of the operation is entirely different, no question of infringement of the registered trade mark is made out.
3. Heard the rival submissions made on both sides.
4. As already stated, the plaintiff has obtained registration of the trade mark “Sun Stamper” on 04-08-2005 and the registration of the design in shape and configuration of the stamping machine is obtained on 27-12-2006 and the design in respect of novelty of which the registration obtained is box type pre-inked rubber stamp in different sizes. Such box type pre-inked stamping machine manufactured and marketed by the plaintiff became popular is not seriously denied. The defendant has also been manufacturing and marketing similar box type under different trade mark. As far as O.A 635 of 2010 is concerned, the same is for injunction restraining the respondent from in any manner infringing the applicant's registered trade mark “Sun Stamper” by use of the trade mark “Presto Instanza” or any other mark deceptively similar to applicant registered trade mark. Though the product sold by the plaintiff and defendant are identical, they are sold under totally different and dissimilar trade name and, therefore, no infringement arises in respect of registered trade mark in question as held by our High Court in 2008 (3) MLJ 604, (Hi-tech Carbons Engineering Private Limited v. M & K Technologies, Chennai) and hence, no injunction could be granted in O.A No. 635 of 2010.
5. The other two applications are for injunction against infringement or piracy of registered design and passing off the goods as that of the plaintiff by use of deceptively similar trade mark or trade dress, design, model size, colour scheme, get up, lay out or any other mark deceptively similar to the applicant's trade mark or registered design. However, as the main grievance raised in the suit is against infringement of registered trade mark and registered design, what is required to be considered is the injunction reliefs sought for against the act of infringement of registered design of box type pre inked stamping machine and passing off identical product by use of deceptively similar box type design as that of the applicant's product. The design of the box type pre-inked rubber stamp manufactured and marketed by both the plaintiff and the defendant are made available for perusal of this Court. As far as the plaintiff's design of box type is concerned, it is more or less square in shape in grey colour with black colour lining with the registered tarde mark “Sun Stamper” written below the letters “HI”. Whereas the box type of the defendant is rectangular in shape with blue, white and black colour scheme having the trade mark “Presto Instanza” written in black letters. Though there are difference in size, colour scheme and get up, both the box type product of the plaintiff and defendant would in shape and design appear to be substantially similar.
6. Though it is sought to be argued on the side of the defendant that the shape, size, colour scheme and trade name are totally different, such contention is liable to be negatived, in the case of infringement of design, the novelty claimed by the plaintiff is only in respect of shape and configuration and not either in relationship to the proportion of the shape or the colour used. Therefore, the difference in the proportion of the product and difference in colour between the two products are immaterial as neither the colour nor the proportions were part of the registered design.
7. In case of infringement of design, the question to be decided is whether there is sufficient resemblance between the allegedly infringing design and the petitioner's registered design to found an action for infringement under the relevant provisions of law. It is not every resemblance in respect of the same article, which would be actionable at the instance of the registered proprietor of the design. The copy must be a fraudulent or obvious imitation, which does not mean ‘duplication’ in the sense that the copy complained of need not be an exact replica and the Court must address its mind as to whether the design adopted by the defendant was substantially different from the design, which was registered and it is further required to see in particular as to whether the essential part or the basis of the petitioner's claim for novelty forms part of the allegedly infringing copy.
8. The Delhi High Court in the judgment reported in 1997 (17) PTC 15 (Alert India Ltd. v. Naveen Plastics) observed that the 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.
9. It is observed in the judgment reported in 1999 (19) PTC 757 (Rotomac Pens Lim ited case) that the registered design gives some amount of protection and the registered holder has a copyright in the design and in terms of Section 53, no one has the authority to act contrary to, or pirate the design, which stands registered with the Registrar. When once the product is prima facie shown the imitations of the registered design, it constitutes infringement of the copyright in it and when there is infringement of a copyright, an injunction should normally be granted as a matter of course as the damages would not be an adequate remedy.
10. The Calcutta High Court has in the judgment reported in 1996 (16) PTC 202 Castrol India Ltd.… v. Tide Water Oil Co. (I) Ltd.…) held that in case of infringement of design, the question is whether the similarity is an imitation of the registered design sufficient to destroy the exclusive right of use of the proprietor even though the similarity will not cause any confusion and the Court must decide whether the alleged infringing article is made exactly or substantially to the registered design.
11. The Bombay High Court has in the judgment reported in CDJ 2011 BHC 473, (Gorbatschow Wodka Kg…Plaintiff; v. John Distilleries Ltd.…Defendant.) (AIR 2012 (NOC) 53 (Bom)) in para 22 held that “the test is whether the shape that has been adopted by the plaintiff is one that is adopted capriciously and purely to give the article with distinctive appearance or characteristic of the goods of the manufacturer. If that be so, the manufacturer may be able to establish that he has a reputation and goodwill in the distinctive appearance of the article itself which will give him a cause of action in passing off if his goods were copied.”
12. The Delhi High Court in the judgment reported in 2003 (27) PTC 478 (Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd.) observed that the trade dress is the soul for identification of goods to their source or origin and a customer forms an overall impression of the source of origin of the goods from a visual impression of the colour combination as well as from the shape of the container and packaging. A conscious imitation of the colour combination, get up or lay out of the container would lead the design of the defendant to cause confusion in the mind of the customer.
13. In this case, the two products in dispute are the design of box type pre inked rubber stamp holder in different sizes. It cannot be disputed that there is overall distinctive significance and striking similarity and resemblance in the products. Though it is different in some respects from the original, which renders it not obviously an imitation it is yet an imitation, imitation perceptible when the two designs are closely scanned and it is not necessary that the two designs should be exactly the same. The broad features of shape, configuration, pattern etc., are same or nearly the same. As rightly argued by the learned counsel for the applicant, the visual comparison of both products appears that the design adopted by the defendant is strikingly similar to the plaintiff's design and the differences sought to be highlighted by the defendant particularly slight variation in the shape are not relevant to decide against substantial similarity in design. Thus, this Court is able to find that there is substantial and sufficient resemblance between the allegedly infringing design and the applicant's registered design. It constitutes an act of infringement and an order of injunction shall normally follow as a matter of course as damages would not be an adequate remedy, AIR 1985 Delhi 29 (Penguin Books Ltd.… v. M/S. India Book Distributors & Others…S); 1996 (16) PTC 202 Castrol India Ltd.… v. Tide Water Oil Co. (I) Ltd.…); 1999 (19) PTC 757 (DB) (Rotomac Pens Limited v. Milap Chand & Co.).
14. However, the learned counsel for the defendant would try to defend their action in using deceptively similar design for their product on the following two grounds;
(i) The application for cancellation of the registration of the design filed by the respondent is pending; and
(ii) The product lacks novelty and originality, as the same is, much before the plaintiff's application for registration, introduced by the respondent herein by importing from one Japanese Company in or about November, 2006.
15. The very fact that the Controller of Patents and Designs registered the petitioners design would, at this stage prima facie show that the competent authority must have been satisfied that the design was new and original. It may be true that the respondent has filed an application for cancellation of the registration of design and the same is pending before the competent authority. But pendency of the application for cancellation of registration can by itself have no bearing on a consideration of an action for piracy of registered design under Section 22 of the Act, as held by the Division Bench of the Calcutta High Court in 1999 (19) PTC 757 (DB) in Rotomac Pens Limited v. Milap Chand & Co.
16. In the same judgment, it is further observed that the grounds raised in the petition for cancellation of registration shall be considered in an action for piracy of registered designs under Section 22 of the Act and the Court is, before considering the injunction application for any act of infringement, bound to consider such objection. Thus, as the pendency of the application for cancellation of registration is no ground for rejecting the injunction application, the only question remains to be considered herein is the later one, whether the registration is obtained by the plaintiff in respect of novelty in shape and configuration.
17. Regarding the second objection, as the main defence raised herein by the respondent is that the design is not new or original and the design is already introduced through advertisements already published in India and other country prior to the date of registration, the burden is cast upon the defendant to prove the same. It is well settled that while considering the application for piracy of registered designs, the registered design must be novel or new or original and not previously published in India. Section 19 of the Designs Act provides for cancellation of registration. Section 4 prohibits registration of which is not new or original, or which has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, prior to date of the application for registration or is not significantly distinguishable from known designs or combination of known designs; or comprises or contains scandalous or obscene matter.
18. The publication, as referred to in Sections 4 and 19 of the Designs Act, has different meanings in different contexts. In order to constitute publication, the design must be either made available to the public or it is shown or disclosed to some person without any obligation to keep it secret. According to Oxford Dictionary, ‘publication’ means ‘making publicly known, issuing of book, engraving, music etc. to the public’. The publication does not mean that every member of the public should possess the knowledge and it is sufficient if there will be publication and the knowledge was available to member of the public. A design previously published in a foreign country will not invalidate the registration in India, if it was not previously published or registered in India.
19. The defendant has raised the plea of publication by relying upon the printout downloaded from website, which are printouts of one Japan Company by name Yamahachi Chemical Co. Ltd. and one China Company by name Chengzhou Jialian Plastic Co. Ltd., China. According to the defendant, both Japan and China Companies are engaged in manufacture and marketing of similar box type pre-inked stamping machine and unique stamp configuration.
20. In this context, the observations of the Delhi High Court and Calcutta High Court can be usefully referred to herein. The Division Bench of the Delhi High Court in 2009 (39) PTC 104 (Dabur India Ltd.… v. Amit Jain & Anr.…) following observation of the Calcutta High Court in 2006 (33) PTC 434, (Gopal Glass Works Ltd. v. Assistant Controller of Patents & Designs) observed in Para 26 of its judgment that “the mere fact that there may have been registration in the US in respect of similar bottles and caps cannot come in the way of the plaintiff's seeking an order restraining the respondent from infringing its registered design”. The observation of Division Bench of the Calcutta High Court referred to in Para 25 of the Delhi High Court's Judgment, is extracted hereunder:
“25. We find that the Calcutta High Court has in Gopal Glass Works Ltd. v. Assistant Controller of Patents & Designs, 2006 (33) PTC 434 (Cal), explained the position, with which we concur, as under:
“39. The next question in issue before this Court is whether the finding of the respondent No. 1 that the document downloaded from the internet from the website of the Patent Office of the United Kingdom might be taken as prior publication of the impugned design, is legally sustainable.
40. It is true that publication has not been defined in the 2000 Act. Yet, for reasons discussed above, mere publication of design specifications, drawings and/or demonstrations by the Patent Office of the United Kingdom, or for that matter, any other foreign country, in connection with an application for registration, would not, in itself, amount to publication that would render a design registered in India liable to cancellation.”
21. The Delhi High Court has, in the judgment reported in 2001 (21) PTC 146 (Texia Metals and Plastics Private Limited v. Anil K. Bhasin) observed that “mere receipt of brochures from foreign countries relating to design would not amount to publication of designs within India”.
22. Further, the particulars found in the brochures relied upon by the defendant would show that the printouts are only of the years 2010 to 2011 and there is nothing to suggest in the brochures that the printouts were available in India or were in a sense published material, which is available to the general public much prior to the date of registration of the plaintiff's design. Thus, though the designs were not completely new or original elsewhere, it cannot be said that it is not a new or an original design so far as India is concerned. The concept of a new or an original type of design, as observed by the Delhi High Court in the judgment referred to above, is relatable to the publication of such a design or its availability to the public in India, as such, no greater reliance can be placed on these printouts as held by the Delhi High Court.
23. Regarding the contention of the defendant that it is introduced in India by him by importing from Japanese Company during November, 2006, the same is sought to be established through invoice receipts dated 9-11-2006 between Yamahachi Chemical Co. Ltd., Japan and Mohan Impressions Pvt. Ltd., dated 09-11-2006, enclosed at Pages 19 to 38 of the typed-set of papers filed on 9-02-2012 and also invoices between Mohan Impressions Pvt. Ltd., and other Companies on different dated i.e, Mohan Impressions Pvt. Ltd., and Danzas Lemuir Pvt. Ltd., dated 13-11-2006; Mohan Impressions Pvt. Ltd., and Grip Fast India Service Ltd., dated 15-11-2006; Mohan Impressions and A.R Bhatter, dated 28-11-2006 and Mohan Impressions Pvt. Ltd., and Presto Impression, dated 01-12-2006, enclosed at Pages 1 to 4 of the additional typed-set of papers filed on 23-02-2012 by the respondent.
24. The case sought to be put forth by the defendant on the strength of the documents above-referred to is that the same is imported by him from Japanese Company through invoice, dated 09-11-2006, and the same was marketed by him at Calcutta on 13-11-2006. The perusal of invoice receipts enclosed at Pages 19 to 38 in the original typed-set of papers reveals that the printouts relating to box types stamp holder with product name as referred to above is of the year 2009 to 2011. The defendant has not produced any similar website printout of the Japanese Company prior to November, 2006. The invoices enclosed at Pages 19 to 38 do not disclose that the same relates to box type stamp holders. Even otherwise, the reading of the entire invoice would reveal that the goods landed on Calcutta Airport only on 12-11-2006 and was lying in import terminal storage till 17-11-2006 and the delivery could have been taken only thereafter. The goods could have been released on payment of duty and the payment of duty is between 22-11-2006 and 28-11-2006. If that is so, the defendant would not have taken delivery of the goods and marketed the goods between 13-11-2006 and 01-12-2006 as sought to be proved through invoices enclosed in the additional typed set of papers. Further, as far as the invoice dated 01-12-2006 is concerned, it is between the defendant and its sister concern located in the same address. The discussion held above will lead to an inference that all the invoices could have been created for the purpose of this case. As the same is matter for appreciation on the basis of evidence at the trial stage, it cannot be seriously relied upon at this interlocutory application stage without further proof of genuineness of the same.
25. Thus, for the reasons stated above, this Court is of the considered view that the defendant has not adduced satisfactory material at this stage that the design of box type pre-inked rubber stamp is neither new nor original and the same is already published in the manner recognized under law either in India or any other country and the same is introduced herein much prior to the plaintiff's application for registration in December, 2006. There is also no other evidence that there are any other registration of the design in question. There are also no proof to show that the respondent was using the same prior to 2006. On the other hand, the particulars furnished in the counter about the import of the same during November, 2006 which is not made out and the turnover particulars for the year 2006-2007 and till 2008-2009, would only lead to a reasonable inference that the respondent started manufacturing and marketing the product by using deceptively similar box type only after the registration of the plaintiff's design. As such, on the failure of the respondent to prove the contrary stand, the registration of the plaintiff's design would probabilise the plaintiff's case that the Controller of Patents and Designs registered the same because it is satisfactorily made out before the competent authority that the design is new and original.
26. Thus, the applicant has prima facie made out that the registered design is new and original and the respondent has been using similar shape, which is fraudulent imitation of the plaintiff's design and in the absence of any explanation from the defendant for adopting substantially similar shape, the same amounts to an act of infringement of the plaintiff's registered design, not only to destroy the exclusive right of the plaintiff as the user of the same, but also it deprives the plaintiff of their statutory protection. There is no evidence that there is any design prior to the date of registration of the applicant's design in question. The balance of convenience must be necessarily weighed in favour of the applicant, which has an established reputation and irreparable injury would be caused to the established reputation and goodwill of the plaintiff, if the defendant is allowed to continue to infringe the applicant's design. Thus, prima facie case and the balance of convenience warrants that an order of injunction should normally be granted by restraining the respondent from committing act of infringement of the same. As far as O.A No. 637 of 2010 is conemed, the same is against passing off the defendant's goods as that of the plaintiff, by use of strikingly and distinctively deceptive trade design, similar to that of the applicant's registered design. Though the applicant has not made out any case of confusion or deception, the applicant has satisfactorily made out that it is likely to deceive the public, having regard to prior use of the same by and reputation and business turnover of the applicant. The overall deceptive similarity of the design in respect of shape of the defendant's product as that of the plaintiff would disclose the undeniable truth that the public can get confused regarding the origin of the product. The applicant's contention that the respondent is attempting to enjoy the benefit of reputation of the applicant by such use has reasonable element of bona fide. Such an attempt on the part of the respondent amounts to passing off the respondent products as that of the applicant, warranting an order of injunction as sought for in O.A No. 637 of 2010.
27. In the result, (i) O.A No. 635 of 2010 is dismissed.
(ii) O.A Nos. 636 & 637 of 2010 are ordered by granting an order of injunction restraining the respondent by themselves, their men, servants, agents, distributors, stockists, representatives, partners, directors or any of them from in any manner infringing/pirating the appellant's registered design of “Box type pre-inked rubber stamp” carrying design registration No. 207586 in class 19-02 by manufacture, advertisement or sale of pirated box type pre-inked rubber stamp or in any other manner or in any manner passing off their products by use of deceptively similar trade, design, as that of the applicant's registered design.
28. Order accordingly.