Valmiki J. Mehta, J.(Oral)
I.A. No.14807/2012 (under Order 39 Rules 1 and 2 CPC by plaintiff)
1. This application for pentente lite injunction has been filed by the plaintiff in its suit alleging infringement of the registered design no.235010 dated 7.3.2011. The design which has been registered is a design for a water jug. As per Section 11 of the Designs Act, 2000 (hereinafter referred to as 'the Act') on registration of the design, the owner of the design from the date of the registration has exclusive rights for a period of 10 years to use the registered design.
2. Defences to a suit claiming infringement of a registered design are basically under Section 19 of the Act and as per which essentially prior publication is a ground which will defeat a suit claiming infringement on the ground of registration of a design.
3. It is trite that the design which is the subject matter of registration under the Act is a design with relation to its application to an article. A design or a shape or combination of shapes or features/figures may otherwise be known but it may not have been applied with respect to a particular article. It is with respect to application of a design to an article that it gives the benefit of innovation of a design under the Act and this aspect is made clear by the definition of 'design' under Section 2(d) of the Act.
4. The registered design of the plaintiff with respect to the water jug has been explained by the plaintiff in para 11 of the plaint and which para 11 reads as under:-
"11. That the salient features of the design of plaintiff's a particular water jug which is in circulation are as under:-
(a). The top portion of plastic water has one plastic lid around which has up and down grooves in jig jag fashion along with one plastic handle which can be fit in to outer body part.
(b). The rest of body is in cylinder and smooth shape having one plastic tap on one side. The said plastic tap has been put on the wall of cylinder by pressing the wall of cylindrical shape so that the tap remains embedded in the cylinder and is not visible if seen from the any side except from front. The placing the tap is unique and innovative so that it cannot be broken during handling.
(c) The bottom of the water jug has similar grooves as like that on the top apart from having big crater exact the same size of the lid. The uniqueness of the said crater is that it can be placed one on another without any support and therefore preventing from falling.
(d) The plaintiff is the first person in India to devise such type of plastic container, which is quite novel and eye-catching."
5. The photographic representation of the design of the plaintiff is at page 2 of the documents filed by the plaintiff and the said photographs are depicted as under:-
6. The photographs of the water jug of the defendant, and design of which is impugned by the plaintiff, are contained at pages 11 and 12 of the documents filed by the defendant and these are as under:-
7. Before I proceed to the discussion with respect to the decision of this application seeking interim injunction during the pendency of the suit, it is extremely relevant to note that the defendant had applied for cancellation of the registration of the design of the plaintiff, but this petition for cancellation of the registration was dismissed by the Assistant Controller of Patents and Designs vide Order dated 19.5.2014. More or less the issues which are argued by the defendant before this Court, may be except one, are already the subject matter of the discussion and decision in the order of the Assistant Controller of Patents and Designs and therefore let me reproduce the operative part of the Order dated 19.5.2014 rejecting the petition of the defendant herein for cancellation of the registration of the design of the plaintiff, and the same reads as under:-
"The evidences submitted by the petitioner in support of ground of prior publication of the impugned design were scrutinised as detailed below:
(a) Petitioner, in Para 11 of statement of case, stated that the impugned product of the respondent is common to trade and pictorial representation of various water jugs used by various parties like Bajrang Plastic, Hello Polymer, Royal Plastic, Milton were submitted. None of these pictures reveals date of publication or use of the article shown in the pictures.
(b) Petitioner also submitted pictorial representations of his design of water jug (pages 9-10) but those were not substantiated with date of publication or sale.
(c) Alleged prior & pre published design of other party (pages 13-14) also does not show any date of publication or date of its sale to decide the period of the disclosure to public.
(d) The screen shots of website www.indiamart.com (pages 15-20 of evidences) showing water jugs of companies like Bajrang Plastics and Milton offers some designs of water jugs. These designs are not similar to the impugned design. Further the date appearing in the screen shots of the website refers to 24/12/2011 and 26/12/2011 which is later than the date of registration of the impugned design.
(e) Other pages from website www.santoorplastic.in (pages 21-22, 24, 25, 28 of evidences) were also having date appearing as 24/12/2011 which is later than the date of registration of the impugned design. The water jugs shown therein do not resemble to the impugned one.
(f) Pages from website www.chocolateboxes.com (Pages 23, 26, 27, 29 of evidences) also show some water jugs where the date appeared as 24/11/2012. These pictures also do not depict the impugned design.
(g) Similar is the case for website print outs submitted by the petitioner in pages 30 to 42 of the evidences. The designs of water jugs revealed in those print outs are not similar to the design of the water jug of the respondents.
Petitioner also submitted the same set of documents of evidence along with submission under Rule 29(4), discussion of which are not repeated as those were basically same documents as discussed above. From the foregoing analysis, it is seen that those evidences of publication do not substantiate that the impugned design was published prior to its date of registration.
In view of above findings that the impugned design was not published prior to its date of registration and as well as the visual impression of the impugned design is different from that of the cited designs of the petitioner, I construe that the subject design is new. As per Section 2(g) of the Designs Act, 2000, '"Original", in relation to a design, means originating from the author of such design and includes the cases which though old in themselves yet are new in their application'. Petitioner could not also substantiate that the design is not originating from the author of such design or it is a known design. Thus, I opine that the impugned design is new and original. The visual effect of the picture illustrations of published designs and that of the impugned designs are different. The features of designs in registered design no.235010 are not insignificant from the known designs cited by the petitioner. Hence there is nothing to suggest that the impugned design is not registrable under Section 4 of the Designs Act, 2000.
Counsel for the petitioner also plead that the impugned design of the respondent was disclosed to the public prior to its date of registration as evident from the dates of bills/vouchers submitted by the respondent. Upon scrutiny of those vouchers of respondent, it is seen that respondent claimed to be in the trade since 1989 by way of selling of Mayur water filters, water jugs etc. It is further observed that respondent is having registration of trade mark 'Mayur' since 2002. The same was also registered under Copyright in 2003. Respondent also produced a search certificate regarding the expression '5 o C'. All these documents suggest that respondent is bona fide user of these. Vouchers indicating sale of Mayur water jugs before the date of registration of the impugned design does not necessarily mean that the impugned design was sold prior to its date of registration. Further none of the bills and vouchers depicts design of the products sold there through. Hence these bills cannot be considered as document evidencing prior sale/use of the article bearing impugned registered design.
Another contention of petitioner was that the impugned design is mere mechanical device and hence is not a design as defined under clause (d) of Section 2 of the Act. It was stated that as per submission of respondent in Para 9 of page 7 of the counter statement as well as Para 7 of the affidavit, the impugned design is functional. A mere mechanical device is a shape in which all the features are dictated solely by the function or functions which the article has to perform [Amp Inc v. Utilux Pty. Ltd 1972 RPC 103]. At the same time, it is observed from the petitioner's evidences that there are variety of water jugs having distinctive features of shape and configuration. The article of the impugned design is an article under Section 2(a) of the Act. The article has certain design features of shape and configuration applied to it. The article is not a mere mechanical device and the features of the impugned design are not solely dictated by the function the article has to perform. There is no bar as to being the impugned design under the definition of 'design' as defined in clause (d) of Section 2 of the Act.
Upon consideration of the Statement of Case, Counter Statement, evidences, and submissions of both the parties and after careful analysis of the documents submitted by both the parties in the instant case as above, I decide that the petitioner could not establish the grounds of prior publication of the registered design no.235010 and therefore I decide that the design no.235010 is new and original and registrable under the provisions of the Act."
8. A reading of the aforesaid relevant portion of the Order of the Assistant Controller of Patents and Designs dated 19.5.2014 shows that contention of the defendant herein (petitioner in the petition) seeking cancellation of the registration on the ground of prior publication of the design was rejected by observing that merely because the plaintiff had sold the same jugs earlier and had filed invoices will not mean that there is a prior publication inasmuch as there is no depiction of the design in the invoices of the present plaintiff prior to the date of registration of the design on 7.3.2011. Also, no other evidence could be filed and defendant herein could not substantiate that the design of the plaintiff which has been depicted above was published prior to 7.3.2011 viz the date of the registration.
9. Learned counsel for the defendant sought to place reliance upon para 8 of the plaint to argue that the plaintiff himself has admitted prior publication and since language of this para 8 will be relevant hence the same is reproduced as under:-
"8. That apart from other goods the plaintiffs have devised a unique and innovative container for storage of cold water during 1977 and since than they are selling the said container under the trademark "MAYUR". The said container was welcomed and appreciated by the purchasing public so much that today the purchasing public demand the said container as Mayur Jug. The container of water i.e Water Jug is referred as Mayur Jug thereby the trademark MAYUR becoming synonym to water jug."
10. In my opinion, the argument raised by the defendant relying upon para 8 of the plaint is misconceived because nowhere in para 8 of the plaint any specific design, much less the registered design under registration no.235010, is mentioned and I cannot read para 8 of the plaint so as to enable the defendant to argue that contents of para 8 should be taken as prior publication. In my opinion, the argument urged on behalf of the defendant stretches too far the facts containing para 8 of the plaint because para 8 of the plaint nowhere shows that the same is talked of specifically with respect to the specific design registered as design no.235010 dated 7.3.2011.
11. Learned counsel for the defendant also sought to argue that the defendant in para 5 of the written statement has talked of prior publication and plaintiff in replication to the written statement has failed to deny the same effectively and therefore there is deemed to be prior publication on account of the deemed admission but even this argument is misconceived because I have read para 5 of the written statement and para 5 of the replication (though wrongly referred to as para 5 of the preliminary objections in the replication) and I do not find any case of deemed admission of any prior publication as is sought to be argued on behalf of the defendant.
12. In my opinion, arguments urged by the defendant are in fact only a rehash of the arguments which were raised before the Assistant Controller of Patents and Designs and were rightly rejected by the said authority. I hold that there is no prior publication of the registered design.
13. Learned counsel for the defendant sought to place reliance upon the judgment of a learned Single Judge of this Court in the case of Metro Plastic Industries (Regd.) v. Galaxy Footwear 1998 PTC (18) and it was sought to be argued that even in the said case because of the invoices showing selling of the product prior to the registration was taken as a valid argument of prior publication, therefore since plaintiff himself has filed invoices prior to the date of registration being 7.3.2011, accordingly this Court should apply the ratio of the judgement in the case of Metro Plastic Industries (supra) and hold that there is prior publication on account of invoices of water jugs showing the trade mark 50C and which is also shown in the water jugs of the registered design.
I have very carefully gone through the judgment in the case of Metro Plastic Industries (supra) and nowhere in the said judgment there is a discussion as to what was the specific design which was found in the prior invoices and which was taken as a basis of prior publication. Prior publication obviously is a matter of fact and not a matter of law and therefore I cannot read the ratio of the judgment in the case of Metro Plastic Industries (supra) so far as the facts on the aspect of prior publication in the present case are concerned, when there is no evidence of prior publication of the design which is the subject matter of specific design no. 235010.
14. In view of the above, it is clear that the defendant is manufacturing its products being water jugs which are more or less identical to the registered design of the plaintiff and which is clearly a grossly dishonest act on the part of the defendant. Plaintiff has a prima facie case not only because its design has been registered but also because the petition filed by the defendant for cancellation of registration of the design has been dismissed. Balance o
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f convenience is in favour of the plaintiff and plaintiff will be caused irreparable loss if interim injunction is not granted because defendant merely on account of pendency of the litigation will make merry with the registration of the design of the plaintiff and which has limited validity of exclusively only of ten years. 15. Application is therefore allowed with costs of Rs.1 lakh. Costs shall be paid by the defendant to the plaintiff within a period of four weeks from today. Defendant is restrained from in any manner selling or manufacturing any jugs which are identical or deceptively similar to the water jugs which is the subject matter of registered design no.235010 dated 7.3.2011 of the plaintiff. A. is allowed and disposed of in terms of aforesaid observations. CS(OS) No.2471/2012 16. The following issues are framed:- (i) Whether the defendant is manufacturing jugs which amounts to infringement of registered design of the plaintiff under registration no.235010 dated 7.3.2011? OPP (ii) Whether plaintiff cannot have any benefit of registration on account of prior publication of the design of the jugs which is the subject matter of registration no.235010? OPP (iii) Whether plaintiff is entitled to recovery of pendente lite and future damages, if so at what rate and for what period? OPP (iv) Whether the plaintiff is entitled to any interest on damages, if so at what rate and for what period? OPP (v) Relief. 17. Both the parties will file list of witness within eight weeks from today. 18. List before the Joint Registrar for fixing dates of trial on 14th April, 2016.