Globe Super Parts v. Paramount Electricals

F. S. GILL, J.

( 1 ) AS common questions of law and fact are involved in. As. 2057 and 2518 of

1977 in Suit No 505 of 1977 {globe Super Parts v. Para-mount Eleciricals and

another), 1. As. , 2050 and 2473 of 1977 in Suit No. 502 of 1977 (Globe Super Parts

v. V. K. Saggi Industries and another) and. As 2055 and 2353 of 1977 in Suit No.

504 of 1977 (Globe Super Parts v. Indian Electricals and others), they will be

disposed of by this one order. In all the three suits plaintiff is the same and reliefs

sought against the various defendants are also identical.

( 2 ) GLOBE Super parts, a partnership firm, filed suit No 505 of 1977 against

Paramount Electricals and Hamnami Store, defendants, on 5-7-1977 alleging that

the plaintiff firm manufactures and sells Gas Tandoors of an exclusive type, which

had been introduced and marketed for the past about six months. It further alleged

that prior to the production of the said Tandoor by the plaintiff, the said item was

never known in India or anywhere else in the world. The salient features of this

Tandoor are mentioned as under :-"a hoolow round metallic body having a

detachable dome-shaped cover. The said body being fixed upon a supporting ring

with central opening. The base of the oven body being chimney-shaped with central

opening at the top over which a dome-like hood is fixed, such that when the said

oven is placed on the stove or a gas burner, that hot air is sucked in by the chimney

action at the base and strikes the dome-like hood fixed over the top from where it is

deflected and evenly distributed inside the body and then escapes out through the

ducts provided in the said hood thus heating the entire inside body of the 'tandoor'.

It was further alleged that apart from the aforesaid distinctive features, the shape

and the configuration of the TANDOOR manufactured by the plaintiff are new and

original, and are protected under Registered Design No. 145258 under Design Act,

1911. It is further added that by virtue of the prior use and the reputation so

acquired and also on account of very wide publicity given by the plaintiff firm to its

products it has a right to the exclusive adoption and use thereof and that no one

else is entitled to adopt its features, get-up, layout and arrangement and to give an

impression as if the Gas TANDOOR so manufactured was that of the plaintiff firm or

connected with it or its business".

( 3 ) IT is further stated that Paramount Electricals (defendant No. 1) is the

manufacture, while Hamnami Store (defendant No. 2) is the seller of the impugned

products. It is alleged that the defendants have adopted identical and/or deceptively

similar features to those of the plaintiff and have marketed Gas TANDOOR which

infringes the plaintiff's Registered Design No. 145258, and that both the shape as

well as the configuration of the plaintiff's design have pirated by the defendants.

( 4 ) IT is further added that the defendants have marketed the infringed products

from June, 1977 in spite of having full knowledge about the prior product of the

plaintiff's manufacture ; that the product of the defendants is inferior to that of

plaintiff, both in material as well as in its workmanship, and that the defendants

have adopted nearly all the distinctive features belonging to the plaintiff which act

amounts to passing off. In this way it is alleged that the defendants have put the

plaintiff to heavy loss in business and have also effected the reputation acquired in

the trade. The plaintiff firm thus prayed for the grant of permanent injunction

restraining the defendants from manufacturing, selling and offering for sale and

directly or indirectly dealing in Gas TANDOOR which is fraudulent or obvious

imitation of the plaintiff's Gas TANDOOR Registered Design No. 145258 and from

doing anything with a view to enable the Registered Design belonging to the plaintiff

to be so applied. The plaintiff further prayed for the grant of permanent injunction

restraining the defendants, their servants, agents dealers and representatives from

passing off Gas TANDOOR as that of the plaintiff's manufacture and from giving an

impression that the plaintiff's Gas Tandoor is either coming from the plaintiff source

of manufacture or is in any manner manufactured, sold and offered for sale under a

licence or a consent of the plaintiff. The third prayer is for rendition of accounts by

the defendants and the last one is that an order for the destruction of the impugned

goods and other media pertaining thereto including the catalogues, logo device and

the printing blocks, be passed.

( 5 ) ALONG with the plaint, the plaintiff firm also filed. A. No. 2057 of 1977 under

Order 39 Rules 1 and 2 read with Section 151 of the Civil Procedure Code for the

grant of interim injunction restraining the defendants, their servants, agents,

dealers, representatives from manufacturing, selling or offering for sale directly or

indirectly dealing in Gas Tandoor which is fraudulent or obvious imitation of the

plaintiff's Gas Tandoor under Registered Design No. 145258 and from enabling the

Registered Design belonging to the plaintiff to be so applied and from passing off

Gas Tandoor as that of the plaintiff or connected with the plaintiff or its business or

being manufactured under permission or licence from the plaintiff.

( 6 ) AN ex-parte interim injunction was granted by this Court to the plaintiff on 6th

July, 1977 and notices were sent to the respondents. The respondents have filed

their replies and have opposed the prayer for interim injunction. Paramount

Electrical (defendant No. 1) also filed. A. No. 25l8 of 1977 under Order 39 Rule 4,

read with Section 151 of the Civil Procedure Code for the vacation of the said exparte

interim injunction. Reply to this has also been filed by the plaintiff.

( 7 ) ANOTHER Suit No. 502 of 1977, has been filed by Globe Super Parts against V.

K. Saggi Industries and Delhi Glass House for the same kind of reliefs as have been

sought in Suit No. 505 of 1977. According to the plaint, V. K. Saggi Industries

(defendant No. 1) is the manufacturer, which has marketed the impugned product

and defendant No. 2 is a firm which sells these goods. Along with the plaint l. A.

2050 of 1977 was also filed by the plaintiff under Order 39 Rules 1 and 2 read with

Section 151 of the Civil Procedure Code for similar interim reliefs and on the same

grounds Ex-parte interim injunction was granted to the plaintiff on 1st July. , 1977.

The defendants have opposed the application for the grant of interim injunction M/s.

V. K. Saggi Industries (defendant No. 1) have also filed LA. No. 2473 of 1977 under

Order 39 Rule 4 read with Section 151 of the Civil Procedure Code. for the Vacation

of the ex -parte interim injunction. Reply to the same has also been filed by the

plaintiff.

( 8 ) THE third suit filed by the plaintiff bears No. 504 of 1977. This is against Indian

Electricals (defendant No. 1) which is the manufacturer ; while Hamani Store and

Prakash Agencies (defendants 2 and 3) have been impleaded as they sell the goods

manufactured by defendant No. 1. This suit is also for infringement of Registered

Design, copy right, passing off, rendition of accounts and damages etc.. A. 2055 of

1977 was filed by the plaintiff under Order 39 Rules 1 and 2 read with Section 151

of the Civil Procedure Code for the grant of interim injunction. An ex-parte interim

injunction was granted by the Court oh 6th July, 1977 and notices were issued to

the respondents. K.. A. No. 2353 of 1977 has also been filed by Prakash Agencies

(defendant No. 3) under Section 151 of the Civil Procedure Code for the dropping of

the proceedings against this defendant,

( 9 ) REPLIES and rejoinders have been filed by the parties and I have beard the

arguments in the various applications in the three case together, as similar question

arise for determination in all the cases.

( 10 ) SHRI Anand, the learned counsel for the same petitioner in all the three

cases, has contended that the petitioner firm is the proprietor of the registered

design that it has the sole statutory right to manufacture and sell the Gas Tandoor.

According to him the respondents have committed piracy of the new and original

design of his client. On the other hand the respondents have pleaded that the

registered design was not original or new, but was prior published to the date of the

registration. In this connection Sarvshri M. L. Mangla and K. L. Aggarwal, the

learned counsel for the respondents in the various cases, have drawn my pointed

attention to an advertisement got published by the petitioner plaintiff in the issue of

Hindustan Times dated 2nd January, 1977. It is contended that full design had been

shown there in the figures. Which had been drawn in the advertisement. It is

accordingly submitted that this was a clear pre-publication, which is even evident to

a naked eye. It is contended that even if the design be taken as original, it is

certainly not new on account of prior publication. It is further argued that the

advertisement dated 2nd January, 1977 gives the shape and configuration of the

article more clearly than even shown in the registration certificate. It may be

pointed out there that the registration of the design related only to the shape and

configuration of the Tandoor and was not a patent with regard to the functioning of

the article.

( 11 ) THE advertisement was published on 2nd January, 1977, whereas the

application for the registration of the design was made before the Controller on 21st

February, 1977. i.e. , after one month and three weeks of the advertisement. Shri

Anand has submitted that the advertisement of 2nd January did not amount to prior

publication as it did not demonstrate or reveal the entire design and instead showed

two and not the three dimensions of the article. It is further submitted that the

respondents cannot take advantage of the alleged pre-publication as they have not

stated that they acquired the knowledge from the newspaper advertisement. This

argument has not force, as at this stage only a prima facie case of pre-publication is

to be seen. Parties have yet to adduce evidence in the main suits. Such an

argument therefore does not have any weight. On the other hand, the

advertisement dated 2nd January, 1977 seems to be exhaustive enough to indicate

the shape and configuration of the Tandoor. This point obviously goes against the

petitioner and in favour of the respondents.

( 12 ) ANOTHER documentary piece of evidence is the bill issued by the petitioner

firm for the sale of three 'super Cook Gas Tandoor' to M/s Anand Crockery Store,

Gaffar Market, Karol Bagh, New Delhi on 1st January, 1977 The price of each piece

has been shown to be Rs. 128. 00 Payment had also been made by M/s Anand

Crockery Store. A photostate copy of the bill has been placed on the record, which

shows that the said bill had been issued on the letter head of the petitioner. e.

Globe Super Parts. It is argued by the learned counsel for the respondents that the

sale of these three pieces of the Gas Tandoor had been effected much before the

making of the application to the Controller General of Patents, Designs and Trade

Marks. Thus the article had already, been sold and was available to the public in the

market. It is further stated that there was no direction to M/s Anand Crockery Store

to keep the article secret. Obviously it was for the purposes of sale. In what

circumstances the sale had been effected on 1-1-1977 will be a matter to be

explained during the course of evidence.

( 13 ) FURTHER, in the advertisement the number of the patent application has

been described to be 65-76. In this connection Shri Anand he submitted that the

application was undoubtedly made on 18th December, 1976 but it was actually

published in the Gazette of India on 28th May, 1977. According to him there could

be no inspection by the Public before the same was published in the Gazette. la

support of his contention he has referred to Section 23 of the Patent Act, 1970. This

argument regarding inspection does not furnish any answer to the evidence of prepublication contained in the advertisement of 2nd January, 1977 or the sale of the

three pieces of the Super Cook Gas Tandoor as shown in the photostate copy of the

bill issued by the petitioner to M/s Anand Crockery Store. At the moment no final

opinion can be given about the value of these documents. The matter is being

looked into purely for the purposes of finding a prima facie case to decide the

question of ad interim injunction.

( 14 ) IT has been vehemently argued by the learned counsel for the respondents

that there had been pre-publication as pointed out earlier and that the registration

of the design on 21st February, 1977 could not be considered to be new and original

with regard to the shape and configuration. Prima facie I find force in this

contention.

( 15 ) IT is further argued by the learned counsel for the respondents that a few

days after the filing of the suits, applications were made in this court under Section

51-A of the Patents and Designs Act for the cancellation of the registration as it was

alleged that on account of pre-publication the design was not new as was claimed

by the petitioner. Section 43 of the Act clearly provides that the Controller may, on

the application of any person claiming to be proprietor of any new or original design,

not pre-published in India, register the design. Thus it is a pre-condition that the

design should not have been previously published in India. It is argued that the

respondents had taken the earliest opportunity to apply for the cancellation of the

registration on the ground of pre-publication. The applications made under Section

51-A of the Patents and Designs Act are also relevant for deciding the question of

interim injunction, although it is not a sole determining factor.

( 16 ) THE learned counsel for the parties have cited some authorities during the

course of their arguments but they conveniently be ignored as they are not relevant

in assisting the determination of the vital question of prepublication. The decision

principally rests on factual position, which mostly emerges from the two documents

viz. advertisement dated 2nd January, 1977 and the bill dated 1st January, 1977

issued by the petitioner firm on selling three pieces of the impugned article to M/s

Anand Crockery Store.

( 17 ) FOR the foregoing reasons, I hold that the petitioner has not been able to

make out a prima facie case for the grant of ad interim injunction in any of the three

suits. 1 accordingly dismiss the three. As in the various suits viz.. No. 2057 of 1977

in suit No. 505 of 1977,. A. No. 2050 of 1977 in Suit No. 502 of 1977 and. A No.

2055 of 1977 in Suit No. 504 of 1977, filed under Order 39 Rules 1 and 2 read with

Section 151 of the Civil Procedure Code for the grant of interim injunction. As a

result thereof. A. No. 2518 of 1977 in Suit No. 505 of 1977 and. A. No. 2473 of 1977

in Suit No. 502 of 1977, filed under Order 39 Rule 4 read with Section 151 of the

Civil Procedure Code for the vacation of the Ex-parte interim injunctions, already

granted, succeed. Consequently, the ex-parte interim injunctions granted in all the

three cases stand vacated.

( 18 ). A. No. 2353 of 1977 in Suit No. 504 of 1977, filed by defendant No. 3 under

Section 151 of the Civil Procedure Code for dropping the proceedings against this

firm is bound to fail on account of the allegations made in the plaint against this

defendant. The names of a party cannot be deleted from the array of defendants.

This defendant, if so advised, may not appear in the Court and allow the

proceedings to be taken against it ex-parte. A. No. 2353 of 1977 is accordingly

dismissed.

( 19 ) THE defendants are, however, directed to maintain correct and regular

account of their business in respect of Gas Tandoors sold by them and file a copy of

the account regularly in the Court at the end of every three months. The parties are,

however, left to bear their own costs in all the. As.

( 20 ) I may add the observations made in this order are without prejudice to the

merits of any of these cases.