Tapria Tools Limited vs Eastman Cast And Forge Limited
2004 Latest Caselaw 420 Bom

JUDGMENT

S.C. Dharmadhikari, J.

1. By this notice of motion plaintiffs pray for an injunction restraining defendants from in any manner applying or causing to be applied relation to wrenches and pliers or any other goods contained in Clause 0.1 of 4th Schedule of Designs Act and Rules thereunder, designs described in Exhs. C and E to the plaint or any other design which is identical to or deceptively similar to or a fraudulent imitation of the plaintiffs registered designs Nos. 167097 and 178415 in Class 01 described in Exh.A and B to the plaint so as to pirate the plaintiffs registered design Nos. 167097 and 178415 in class 01 or from doing anything with a view to enable the plaintiffs design Nos. 167097 and 178415 from being pirated.

2. Plaintiffs have also applied for an interim injunction to restrain the defendants from in any manner applying or causing to be applied to wrenches and pliers or any other goods the designs described in Exh. A & B to the plaint, or any other design or designs which are identical to or deceptively similar or a fraudulent imitation of the plaintiffs designs described in Exh. A & B to the plaint so as to pass off their goods as the goods of the plaintiffs.

3. Plaintiffs have also applied for appointment of Court Receiver, High Court, Bombay with all powers under Order XL of Code of Civil Procedure, 1908 in respect of impugned designs.

4. The suit of plaintiffs is for a perpetual injunction in the aforesaid terms. Alternative relief of damages is claimed vide prayer Clause (c) of plaint. Plaintiffs vide prayer Clause (d) claim decree for delivery or destruction of the wrenches, sleeves and pliers which are more particularly set out at Exh. A & B to the plaint. The suit is instituted on 23rd July, 2002. The notice of motion is taken out on the same date.

5. Mr. Shah, learned Counsel appearing for plaintiffs contended that plaintiff is a company incorporated under Companies Act, 1956 carrying on business of manufacturing and marketing of various types of hand tools, viz., pliers, hammers, spanners, wrenches, screw drivers and the like. He submits that in or around 1994, plaintiffs conceived of novel design of adjustable wrench. The most important and novel feature of plaintiff's adjustable wrench is its shape, configuration and the scale marking on one of the face of wrench. It is contended by him that plaintiffs have spent lot of time and money to develop its design. With a view to protect unique design and novelty of wrenches, plaintiffs filed an application for registration of designs with the office of Controller of Designs. This application was made on 28th March, 1994. The same was accepted and design Registration No. 167097 dated 28th March 1994 was issued in pursuance of the same. He submits that registration of this design is valid and subsisting.

6. Similarly in or around 1998-99, plaintiffs conceived and developed a plier having handles covered with sleeves of novel shape and configuration. They spent considerable amount of time, efforts and money to develop this unique design. These are used to cover handle of pliers. With a view to protect the unique design of plier with sleeves an application was made on 5th January 1999 for registration of design of sleeve with the office of Controller of Patent and Designs. Even this design was accepted and registration certificate was duly issued (Exh.B) on 5th January 1999.

7. Mr. Shah submits that novelty in respect of design is in the shape and configuration of the sleeve of plier. He submits that this registration is valid and subsisting. He submits that by virtue of grant of aforesaid certificates as registered proprietor, plaintiff has acquired copyright in the said designs. He submits that the plaintiff is exclusively entitled to apply the said designs to adjustable wrenches and sleeves and pliers for the use and manufacture and for the purpose of selling such sleeves having novel shape and configuration. He submits that plaintiff has in fact manufactured such wrenches since April, 1994 and sleeves for pliers since January 1999. Mr. Shah invites my attention to paras 8 and 9 of the plaint. In these paras, the performance of the plaintiff being rewarded with certificate has been mentioned. Further, it is mentioned that plaintiff has acquired enviable reputation and goodwill in the market and purchasing public at large. The sales figures including local and export for the years 1999-2000, 2000-01 and 2001-02 have been set out. In para 10 details of the amount spent on advertising of the products have been mentioned. In these circumstances, submits Mr. Shah that plaintiffs have enjoyed the copyright and are continuing to enjoy copyright in respect of designs which are exclusively identified by the members of the trade and public with the plaintiff.

8. Mr. Shah submits that in or about February 2001, plaintiff learnt that defendant has started marketing pliers with the sleeves identically designed in respect of plaintiff as copyright. He submits that sleeves on the defendants product is fraudulent and obvious imitation of the plaintiffs' registered business. He submits that defendants committed and continues to commit infringement and piracy of plaintiffs registered design. On noticing this, plaintiffs by their Advocate's letter dated 7th February 2001, called upon defendants to surrender to plaintiffs all the pliers bearing pirated designs of the sleeves which were lying with them or under their approval. Plaintiffs called upon defendants to cease and desist from the manufacturing or marketing of the sleeve bearing design identical or deceptive with the plaintiffs registered design.

9. Shri Shah submits that after notice was served on the defendants, infringed goods disappeared from the market. Since the goods were not available in the market, it was assumed by the plaintiffs that the products had been withdrawn by defendants. A strict vigil was maintained in the market by plaintiffs. In or around June 2002, the same infringed articles re-surfaced in the market. Defendants also introduced another product i.e. adjustable wrench in the market. Adjustable wrench is also infringement of the plaintiffs copyright in the design Exh. A. Plaintiffs submit that despite their warning defendant not only continues manufacture and sale of pliers and sleeves bearing impugned design identical to or deceptively similar to that of the plaintiffs registered design, but also introduced another product which infringes plaintiffs' registered design No. 167097. Shri Shah submits that design and con- figuration of the adjustable wrench as also of the sleeves and pliers of the defendants is in all respects identical and a fraudulent and obvious imitation of plaintiffs registered design. The sale and offer for sale of these articles with identical shape and configuration amounts to infringement of plaintiffs copyright in the registered designs and are acts of piracy within the meaning of section 22 of Designs Act, 2000. It is in these circumstances, according to Mr. Shah they are entitled to the reliefs in the motion.

10. Shri Chitnis, learned Counsel for defendants contended that there is no substance in the submissions of plaintiffs. Inviting my attention to the affidavit filed by the defendants on 9th December 2002 opposing notice of motion, it is contended by Shri Chitnis that there is no novelty whatever in any of the Articles as mentioned and illustrated by the plaintiffs. He submits that the contentions of plaintiffs are untenable because the shape, design and configuration of the Articles in question is conventional and common to the trade. These designs have been published in India prior to the date of registration of the designs of plaintiffs. These are neither new nor original designs. All this material is pre-published. He submits that the case of plaintiffs suffers from gross delay, laches and acquiescence. He submits that to the knowledge of plaintiffs, defendants have been manufacturing, marketing and selling machine tools since past many years. In or about October, 2000 defendants introduced in the market adjustable wrenches and pliers (with sleeves) with the alleged infringed designs. Shri Chitnis places reliance upon sales figures of defendants in respect of adjustable wrenches and pliers. The submits that these figures will show that defendants have built up an independent reputation and goodwill in respect of articles. He submits that after February 2001, plaintiffs have not taken any steps. He submits that defendant has been uninterruptedly selling these articles. In this view of the matter, he submits that plaintiffs are not entitled to any reliefs. The allegation of plaintiffs that they have spent considerable time, effort or money to develop alleged unique design are denied. He submits that these designs are pre-published and are well known all over the world. He submits that a bare perusal of the certificate shows that there is no mention that the novelty resides in the sleeves of the plier and the article registered under the aforesaid certificate.

11. Shri Shah invites my attention to the sales figures tendered by Shri Chitnis which according to him are negligible. Further, he invites my attention to the compilation of documents which were tendered on behalf of defendants and submits that details of the manufacturers with sales figures etc. are conspicuous by their presence. This material is collected from the web site by the defendants and it is erroneously suggested that it is common to the trade. Shri Shah submits that the designs set out in the compilation are different from those of the plaintiffs registered designs. He denies that designs are pre-published. He submits that defendant's goods disappeared from the market after notice of 7th February 2001. He submits that the certificate clearly mentions that the novelty resides in the shape and configuration of articles illustrated therein which includes the markings. Thus, scale markings insofar as adjustable wrenches are special features of the plaintiffs design. Similarly, the sleeves on the plier are also having novel features as set out in the certificate. Shri Shah contends that no affidavit has been filed by the defendants of the dealers and, therefore, they cannot rely upon the compilation of documents. He submits that the sales figures are not accompanied by invoices nor are they placed on affidavit. Therefore, he submits that no reliance can be placed by the defendants on these figures and documents in support of their contentions.

12. In view of rival contentions, the question that falls for my consideration is whether plaintiffs have made out a strong prima facie case. I have also to consider in whose favour balance of convenience lies. I have also to consider the aspect of loss and injury. I proceed to set out my reasons hereinbelow.

13. Designs Act, 2000 and earlier Legislation is an Act to consolidate and amend law relating to protection of designs. The term "Article" is defined in Section 2(a). Term "copyright is defined in Section 2(c) whereas term "design" is defined in Clause 2(d) which reads as under:-

"2(d) "design" means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, 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 Sub-section (1) of Section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in Clause (c) of Section 2 of the Copyright Act, 1957 (14 of 1957)."

The word "original" is also defined in Section 2(g) to mean in relation to a design something originating from the author of such design and includes cases which though old in themselves yet are new in their application. The term "proprietor of new or original design" is also defined in Section 2(j). Chapter II deals with registration of designs. Chapter III deals with copy right in registered designs. Section 11 gives a copyright in registration during ten years from the date of registration. Section 19 in this Chapter provides for cancellation of registration. Chapter V is entitled "legal proceedings". Section 22 sets out concept of piracy of registered designs. It is necessary to reproduce Section 22.

"22. Piracy of registered design- (1) During the existence of copyright in any design it 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 articles 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

b) 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

c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles 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 twenty-five thousand rupees recoverable as a contract debt, or

(b) 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 fifty thousand rupees:

Provided further that no suit 6r any other proceeding for relief under this sub-section shall be instituted in any court below the court of District Judge;

(3) In any suit or any other proceeding for relief under Sub-section (2), every ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence;

(4) Notwithstanding anything contained in the second proviso to Sub-section (2), where any ground on which the registration of a design may be cancelled under section 19 has been availed of as a ground of defence and Sub-section (3) in any suit or other proceeding for relief under Sub-section (2), the suit or such other proceeding shall be transferred by the Court, in which the suit or other proceeding is pending, to the High Court for decision.

(5) 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 or designs."

Chapter VI containing general provisions provides for rectification of register. Section 38 in Chapter VIII states that a certificate purporting to be under the hand of the Controller as to any entry, matter or thing having been done or left undone. Chapter XI vide section 48 provides for repeal and savings. It expressly saves obligation and proceedings of registration under the old Act i.e. 1911 Act.

14. I have seen the "articles produced by parties. The uniqueness insofar as wrenches are concerned is in the scale marking. If the certificate is perused, it is clear that the novelty resides in the shape and configuration of wrenches. Similarly in the case of sleeves of pliers, the novelty resides in the shape and configurations which is marked in the certificate itself. In my view, the novel shape and configuration appearing in the sleeve of the pliers is distinctive and exclusively identified with the plaintiffs herein. Insofar as wrenches are concerned, even the scale marking is novel and associated with that of plaintiffs. The plaintiffs are in the business of manufacturing and marketing of hand tools i.e. pliers, hammers, spanners, wrenches screw drivers and the like. The design insofar as wrench and sleeves of plier is associated with plaintiffs from March 1994. It has been categorically stated in the plaint that wrenches have been manufactured since April 1994 and the sleeves for pliers are being manufactured since January 1999. Plaintiffs have set out their sales figures in respect of adjustable wrenches and pliers in para 9 and 10 of the plaint. Perusal of Exhs. "C" and "E" indicates that defendants have adopted identical features.

15. The only submission of defendants is that there is nothing novel and the articles with their shape and designs are part of common trade. It may be true that there are several manufacturers of these articles. However, the uniqueness insofar as adjustable wrenches in the plaintiffs designs is the scale mark. Shri Chitnis is unable to point out anything from the compilation of documents which would show that adjustable wrenches with scale mark are being manufactured and marketed by the entities referred to in these documents. Shri Chitnis has not been able to controvert the submission of the plaintiffs to the effect that the novelty and uniqueness in the shape and configuration of the design is specifically, mentioned in the registration certificate. It is pertinent to note that the statement on oath made by the defendant is that certificate of registration of design is not conclusive of the fact that the design is original. The defendants have contended that plaintiffs are not proprietors of new or original design and the design registered is pre-existing common type. These submissions have to be corroborated and supported by independent material. Further, there is no substance in the contention of the defendants that they have been manufacturing, marketing and selling machine tools for the past many years. This submission is based upon a confusing and contradictory stand in the affidavit. In the affidavit it is stated that in or about October 2000 defendants, defendants introduced in the market adjustable wrenches and pliers with sleeves. This statement is vague. The sales figures tendered across the bar are also not of any substantial nature. For the accounting period 1st April 2001 to 31st March 2002, the sales figures for the pliers and adjustable wrenches are Rs. 1,38,567.90 and Rs. 10,88,650.26 respectively. However, these figures are mentioned in the Advocate's letter. There are no supporting affidavits of any dealer. Defendants have submitted that the plaintiffs are not aware of hard realities about hand tool manufacturers and the plaintiffs should not, because of money power, attempt to suffocate 'genuine competition in business. In my view, apart from this statement, defendants acknowledge the fact that the plaintiffs are in the market for considerable length of time and have built up a reputation and goodwill of their own. That there is no novelty in the designs but they are part of common trade is a fact which should be substantiated the defendants.

16. Reliance placed by Shri Chitnis on the judgment of this Court in the case of Kemp & Company and Anr. v. Prima Plastics Ltd., is not appropriate. The judgment of this Court cited by Shri Chitnis is distinguishable. In that decision, this Court has not disputed the applicable principles while considering grant of temporary injunction in such matters. However, in that decision this Court has noticed that even prior to the application for registration of the design made by plaintiffs, they had sold the goods. The invoices were produced on record supported by clear assertions on affidavit. Consequently, this Court, upheld the contentions of plaintiffs that there is uniqueness insofar as shape and configuration of their design but rejected the application for temporary injunction on the aforesaid ground. Therein, defendants produced cogent and satisfactory material in support of their contentions about availability of the goods in the market. Thirdly, in that decision, the relief of passing of was denied on the ground that the design in question has been conceived of for educational purposes. All these aspects are missing in the instant case. I have already pointed out the peculiar nature of design and the inability of defendants to produce the material of the nature before this Court in the above mentioned decision.

17. In this case, there is much substance in the contention of plaintiffs that no affidavit has been filed of any dealers. There is also merit in the contention that when the defendants were called upon in February 2001 to cease and desist from manufacturing and selling their Articles, goods had disappeared from the market. The plea of acquiescence has been denied. It is contended that none of the catalogues in the defendants compilation show that plaintiffs design is not new or original. Therefore, the plea of the defendant that the design was pre-existing common type is prima facie without substance. The reference to certificate which mentions the novelty in the shape and configuration of the Article as illustrated and which is valid upto 20th March 2009 is also a factor in favour of plaintiffs. The compilation of documents do not support claim of defendants that the plaintiff's design was published prior to date of registration. Plaintiffs have also pointed out that the defendants have not disclosed sales figures nor have they intention to stop sales, of infringed goods. The letter of Advocate to which I have made reference hereinabove, does not contain all the details. Copies of invoices, it is pertinent to note, are not forthcoming either.

18. In view of the aforesaid it is clear that plaintiffs have shown strong prima facie case in their favour.

19. On balance of convenience also, it is clear that the plaintiffs are in the market for considerable length of time. Defendants on the other hand have started manufacturing wrenches and pliers on their own showing from October 2000 only. There being substance in the plaintiff's contention that the design and configuration of adjustable wrench as also sleeve of pliers of the defendants being in all respects identical and fraudulent and obvious imitation of the plaintiffs' registered designs, balance of convenience is in favour of the plaintiffs.

20. In view of the material referred to above, it is clear that Act has been enacted to take care of imitation and piracy in registered designs. If defendants are not restrained from applying or causing to apply in relation to wrenches or pliers of designs described in the plaint grave loss and serious and irreparable harm and injury would be caused to the plaintiffs and public at large.

21. In this view of the matter, notice of motion is made absolute in terms of prayer Clause (a) and (b). Costs to be cost in cause.