Joginder Singh vs Tobu Enterprises (P.) Ltd.
1988 Latest Caselaw 86 Del

JUDGMENT

B.N. Kirpal, J.

(1) The petitioner has filed the present petition under Section 51A of the Design Act, 1911 for the cancellation of the registered design of the respondent in respect of tricycles and seats being manufactured by them.

(2) By a certificate dated 16th August, 1976 the respondent obtained registration No. 144635 under the Design Act of a tricycle which, inter alia, consists of a blow moulded plastic seat as well as blow moulded wheels with a steel handle. The respondent also obtained another registration No. 144636, also on 16th August, 1976, from the Controller of Designs, Calcutta in respect of blow moulded plastic seat. These seats are somewhat in the shape of a duck and, according to the respondent, it was their original design.

(3) It appears that the petitioner also, after 16th August, 1976, started manufacturing and selling tricycles using somewhat similar blow moulded seats. Thereupon the respondent-herein filed a suit for permanent injunction against the petitioner being Suit No. 459 of 1982. The case of the respondent was that it was the owner of a registered design and the said right of the respondent, to the exclusive use of the said design, had been infringed by the petitioner An ex parte injunction was initially granted which was confirmed on 31st August. 1982 restraining the petitioner-herein from manufacturing such a tricycle.

(4) Thereafter the petitioner filed the present petition under section 51-A of the Design Act praying for cancellation of the aforesaid two designs. The main grounds on which the cancellation was sought are that tricycles and the seat of the impugned design, whose registration was obtained by the respondent, were in fact being manufactured in India prior to the date of registration in favor of the respondent. It was further alleged that the impugned designs were not new or original and they had been previously published in India. Another contention raised was that tricycles of the similar design were advertised in various trade magazines and journals in India much prior to the date of registration in the name of the respondent. The petitioner had also contended that the designs, for which the registration was obtained,, were not novel or original.

(5) On behalf of the respondent, in the reply filed to the aforesaid petition, it had been, inter alia, contended that the petitioner is a new-comer in the field of manufacturing and selling of tricycles and its business is being carried on in violation of the respondent's registered design. The case of the respondent, as stated in its reply, is that the registered design of the respondent was not previously published in India and nor was such a tricycle brought into India from any foreign country and that they were not previously used by children in India. The respondent states that they are reputed company which has introduced a number of types of cycles and tricycles for children in Indra which are made of plastic.

(6) The petitioner filed a rejoinder reiterating the allegations contained in the petition including the contention that the respondent itself was selling such tricycles and seats prior to its having obtained registration under the Design Act.

(7) On the pleadings of the parties, the following two issues were framed : 1. Whether the petitioner is entitled to cancellation of the design No. 144635 and 144636 dated 16.8.76 in question on the ground as stated in the petition ? 2. Relief.

(8) Thereafter affidavits by way of evidence were filed by both the parties. On behalf of the petitioner, six affidavits were filed and on behalf of the respondent two affidavits were filed. Thereupon the respondent moved an application for cross-examination of the deponents whose affidavits had been filed by the petitioner. By order dated 11th March, 1985 it was directed that two of the deponents, namely, Shri Joginder Singh, petitioner, and Shri Prem Banga be cross-examined for the present. The respondent not only cross-examined these two persons but had also cross-examined another deponent whose affidavit had been filed by the petitioner, namely Shri Harish Arora. The respondent, however, did not cross-examine two other deponents whose affidavits had been filed, namely, Shri Ravinder Kumar Kaul and Sbri Paramjit Singh Mudhar. The petitioner, on the other hand, cross-examined the deponents of the affidavits filed on behalf of the respondent, namely, Shri T.K. Verma and Vijay Kapoor.

(9) I will now deal with the aforesaid two issues. Issue No. 1.

(10) Before considering the evidence on record, it is necessary to examine the provisions of Section 51-A of the Design Act. Sub-section (1) of Section 51A, which is relevant in the present case, reads as follows : "51A.Cancellation of registration. (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 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-clause(i) and (ii) of clause (a).

A mere perusal of the aforesaid provision shows that cancellation of the registration of a design can be sought on any of the three grounds, namely that the design had been previously registered in India or that it had been published in India prior to the date of registration or that the design is not a new or original design.

(11) For the view that I am taking, it is not necessary to examine, in any great detail, the meaning of the expression "published in India" and whether a single instance of import unconnected with any other fact or disclosure to only one person of a design can be regarded as publication in India. There can be no doubt that if goods are manufactured and steps are taken to sell them to the public, then the design of the goods has to be regarded as having been published in India. For example, if a manufacturer manufactures an item of a particular design and the said item is advertised for sale as being freely available to the members of the public or the said item is sold or sent to the wholesale dealers for being marketed, then such marketing of goods or publication of the advertisement would tantamount to the design of the goods being published. If good are imported from abroad and are used by the importer without its disclosure to anyone else and goods of such design are not freely available in India then, possibly, it can be said that there is no publication of the design goods so imported. If, however, the goods which are imported are used and in full view of the general public, then the design of the goods so imported and used will have to be regarded as having been published in India, apart from the fact that such a design, if later used for manufacture of goods in India, would not be regarded as a new or an original design. If, for example, an importer imports a car which works on solar energy and even though the car so imported may be the only one of its kind in India but when it is driven on the roads here it would mean that the design of the car has been made public in India.

(12) In the present case, the submission of the counsel for the petitioner is that prior to the registration of the design the respondent had manufactured a tricycle of a similar and the same had been marketed by it. This alleged action of the respondent in manufacturing and supplying to a trader a tricycle where the .seat was made of blow moulded plastic tantamount to the design being published even prior to the registration of the design, which was granted on 16th August, 1976. The further submission of the petitioner is that, in the alternative, one Smt. Ravinder Kaur had come to India from Denmark in December, 1975 and she had brought a tricycle along with her for her daughter which was similar to the one in respect of which the design was registered by the respondent. The case of the petitioner is that the imported tricycle was used by Ravinder Kaur's daughter and was also used by other children and this amounted to the design being published in India prior to 16th August, 1976. This also shows, it is alleged, that the design which was got registered by the respondent was not a new or an original design and tricycles of the said design were being manufactured outside the country.

(13) The respondent, of course, has denied the aforesaid allegations. The case of the respondent is that prior to 16th August, 1976 it was not marketing any tricycle which had blow moulded plastic seat. It has further been stated that the petitioner has not been able to prove the import of the tricycle by Ravinder Kaur, as has been alleged.

(14) In support of its contention that the respondent was, prior to 16th August, 1976, manufacturing and selling such tricycles, the petitioner has relied upon the evidence of Harish Arora, Prem Banga and R.K. Kaul in addition to the statement of the petitioner himself.

(15) In his affidavit filed by way of evidence, Harish Arora, PW.3. has stated that he was the proprietor of a shop known as M/s Toys and Sports Centre, S-53, Navin Market, Kanpur and he has been carrying on the business of resale of toys and sports and allied goods. It has been stated by him, in the said affidavit, that he had been purchasing tricycles from the respondent-herein and that he had been in this business since about 1974, He has further averred that out of the several purchases made by him, he had purchased 4 pieces of tricycles known as Mini Bike gogo vide a bill No. S-1773 dated 29th May, 1976. He has further stated that these tricycles were received by him through Patiala Transport Company under G.R. No. 54411 dated 29th May. 1976. A photo copy of the bill has been filed along with the said affidavit which discloses that Harish Arora had purchased 8 Baba Bikes Go Go and 4 Mini Bikes Go Go. Harish Arora has further stated that vide a bill No. S-99 dated 24th July. 1976 he again purchased 4 pieces of Mini Bike Go Go which were received by him through Patiala Transport Company under G.R. No. 20583 and 84 dated 24th July, 1976. Photo copy of the bill issued by the respondent in respect of the said purchase has also been placed on record. Along with the affidavit, Harish Arora has also filed a photo copy of the pamphlet which contains a picture Of the Mini Bike Go Go stated to have been bought by him. Harish Arora was. cross-examined by the respondent but he has reiterated that the respondent was manufacturing Mini Bike Go Go as well as Mini Bike Aristocrat and that he used to purchase them. There is nothing in his cross-examination to suggest that what Harish Arora has said in his affidavit is incorrect. Harish Arora had placed on record bills issued by the respondent and they were accepted as correct by the respondent and they were not put to Harish Arora in cross examination with a suggestion that the said bills were not genuine. The pamphlet containing the photograph of the tricycle, Annexure C to the affidavit, was also accepted without any challenge.

(16) The evidence of Harish Arora is further corroborated by the statement of Prem Banga. Prem Banga has stated in his affidavit that he lives in Kanpur and that in June, 1976 he had purchased Mini Bike Go Go from M/s Toys and Sports Centre, Navin Market, Kanpur, the shop which is owned by Harish Arora. It has further been stated in this affidavit that at the request of the petilioner-hercin, Shri Joginder Singh, Prem Banga has handed over the tricycle which had been purchased by him. The seat of the said tricycle has been produced in Court. The same bears the signatures of Prem Banga. The varacity of the testimony of Prem Banga was sought to be challenged by asking him to produce the cash memo of the tricycle which he had purchased. Prem Banga stated in his cross-examination that he did not have the cash memo with him. The statement of Prem Banga is sought to be assailed on the ground that he did not remember the exact date of purchase and he had not produced the cash memo of the said purchase. In my opinion, merely because a cash memo for a tricycle purchased ten years earlier by a customer is not produced, cannot be a sufficient ground for rejecting his testimony. There is nothing to suggest on the record that Prem Banga was in any way related or known to the petitioner. Similarly, there is nothing to suggest that Harish Arora was also in any way connected with the petitioner so as to depose falsely. Both Harish Arora and Prem Banga are independent persons and the testimony of Prem Banga clearly corroborates what has been averred to by Harish Arora. There is nothing abnormal in a buyer not retaining a cash memo of a tricycle for a child purchased ten years earlier.

(17) The evidence of Harish Arora is further strengthened by the testimony of Ravinder Kumar Kaul. In his affidavit filed on behalf of the petitioner, it has been stated by Ravinder Kumar Kaul that he was an employee of the respondent from June 1975 to July 1982. He has further stated that the respondent was making tricycles for children and to each model a separate name was given,like Mini Bike Aristo, Mini BikeGogo,Baba Bike Aristo, Baba Bike Gogo etc. R.K. Kaul has categorically stated that Mini Bike Gogo was manufactured by the respondent with a long neck in the same shape as is registered under the Design Act and this was manufactured in the beginning of the year 1976. He has further stated that during those days i.e. in the beginning of the calender years 1976, he was Supervisor A in quality control with the respondent. He has also stated that it was only in August, 1976 that the said design was got registered by the respondent bearing registration No. 144636. He has also stated that subsequently this design has been changed to duck type. He has also stated that tricycles used to be identified by giving different names to different models. The first names of the models like Mini Bike, Baba Bike. Zippy etc. pertained to the shape of the seat of the tricycles whereas the words like Gogo and Aristo related to the wheels. Curiously enough, R.K. Kaul was never cross-examined by the respondent.

(18) The respondent had moved an application under order 19 rules I and 2 for the cross-examination of the deponents who had filed affidavits by way of evidence on behalf of the petitioner including R.K. Kaul. The application came up for hearing on 11th March, 1985 and it was observed by this Court as under: "EVEN though he has mentioned other names but the learned counsel for the defendant only proposes to cross-examine the proprietor and the purchaser of the tricycle for the present."

The cross-examination of Joginder Singh and Prem Banga was allowed and I.A. 892 of 1985 filed under Order 19 rules I and 2 was disposed of. On 20th May. 1985 Joginder Singh and Prem Banga were cross-examined. Harish Arora who had also filed an affidavit was present and he was also cross-examined by the respondent on 21st May, 1985 It is evident that though in I.A. 892 of 1985 under Order 19 rules I and 2 the respondent had sought the cross-examination of R.K. Kaul in addition to the cross-examination of other deponents but from the order dated 11th March, 1985 it seems that the counsel for the respondent was satisfied, for the time being, in being permitted to cross-examine Joginder Singh and Prem Banga.

(19) Both the parties had filed written arguments in this case in addition to addressing arguments in Court. On behalf of the respondent, it was contended, in the written arguments, that R.K. Kaul was not cross-examined because the learned Judge before whom the application under Order 19 rules 1 and 2 came up had observed that he would allow cross-examination of any two witnesses or would else disallow the application. It is under those circumstances that the counsel for the respondent opted for being permitted to cross-examine Joginder Singh and Harish Arora and Prem Banga was also cross-examined when he was produced in Court. The order disposing of the application under Order 19 rules I and 2 does not state that the respondent was asked to limit his request for cross-examination of only two of the deponents. In this case, on 1st March, 1984 issues were framed. It was directed that the petition will be disposed of an affidavits to be filed by the partics. Six weeks' time was given to the petitioner to file affidavits and four weeks' time was given to the respondent to file counter-affidavits. It was directed that the case would be listed for arguments after the affidavits had been filed. Though affidavits were filed by the petitioner within the stipulated time, the respondent did not file the affidavits within 4 weeks which were-allowed On 1st June, 1984 a further period of four weeks was allowed within which the respondent could file the counter affidavits. There was again a default on the part of the respondent in filing the counter affidavtis. The said affidavits were. however, filed before 4th September, 1984 and on that day case was listed for arguments on 26th October, 1984. Arguments however, commenced on 28th November, 1984 when the case was adjourned to 15th January, 1985. It is only on 15th January, 1985 that it was stated before the Court that an application would be filed by the respondent for cross-examination of the witnesses who had filed the affidavits on behalf of the petitioner. It is this application which was disposed of on 11th March, 1985. In the circumstances mentioned hereinabove where originally it was not postulated that there was to be any cross-examination of the witnesses, and as the respondent had filed an application under Order 19 rules I and 2 at a late state when the ease had been fixed turn arguments, the cross-examination was restricted by the respondent's counsel to only two of the deponents. There was never at any stage, after 11th March, , any request to cross-examine R.K. Kaul.

(20) Even in the written arguments which have been filed by the respondent, and before me orally there is nothing alleged as to why the testimony of R.K. Kaul should not be accepted. It is not in dispute that R.K. Kaul was an employee of the respondent and that he would be in a position to know the different models of tricycles which were being manufactured by the respondent. The affidavit of R.K. Kaul clearly discloses that before the design was got registered by the respondent, it was manufacturing and selling tricycles such as Mini Bike Gogo since the beginning of 1976. The said evidence leaves no shadow of doubt on the fact that even before the design was registered, tricycles bearing the same design were being manufactured and sold by respondent. The evidence of R.K. Kaul thus clearly supports the evidence of the other witnesses, namely Prem Banga and Harish Arora.

(21) It was vehemently contended on behalf of the respondent that the onus of proof, in cases like the present, where the petitioner is seeking the cancellation of a registered design, is entirely on the petitioner. To my mind, there can be no dispute with this proposition. A design is registered after some formalities have been undertaken by. the Design Office. Once the design is registered, after all the formalities have been completed, the registered holder of the design is entitled to feel secure. Thereafter if the validity of such a registration is sought to be challenged, the onus of proof would be on the petitioner in showing that the registration was wrongly granted. The petitioner must, therefore, convince the Court that the provisions of Section 51Aofthe Design Act are attracted to the case.

(22) In the present case, I am satisfied that the onus of proof which was on the petitioner has been discharged. The evidence of Prem Banga, Harish Arora and R.K. Kaul clearly shows prior publication of the design and in fact the goods manufactured according to the design were being manufactured and marketed by the respondent.

(23) Before concluding. I may notice the evidence which has been produced by the respondent. On behalf of the respondent affidavit of Shri T.K. Verma dated 3rd September, 1984 was filed. He has stated in the affidavit that he was Sales Executive of the respondent-company. He has further stated that tricycles and the seats of the tricycles bearing the design were not being manufactured in India before the design had been registered. He has also stated that the deponents of the affidavits filed on behalf of the petitioner have deposed falsely. In paragraph 11 of this affidavit, he has stated that the types of Mini Bikes which were being supplied in May and July, 1976 were ones which were indicated in the pamphlet marked 'A' and the said Mini Bike was different from the design which was registered. Though the affidavit referred to Annexure 'A' as being a pamphlet containing the said design, in fact no such pamphlet was filed along with the affidavit. The petitioner filed rejoinder-affidavit dated 22nd October, 1984 and in paragraph 14 it was stated that the respondent-herein had not filed Annexure 'A' to the affidavit of Shri T.K. Verma. The respondent filed photo copy of Annexure 'A' only in November, 1984. What it, however, important to note with regard to the evidence of Shri T.K. Verma is that in 1976 he was not employed by the respondent-company. In his cross examination T.K. Verma has deposed that he was employed with the respondent-company with effect from 1st July, 1980. Prior to that date, since 14th December, 1973, he had been employed by M/s Industrial and Allied Sales Private Limited, which was a sister concern of the respondent. He has stated that he was in the Sales Department of the respondent and, according to him, the bills which were produced by Harish Arora did not relate to the type of tricycles for which registration had been granted, but this statement of T.K. Verma is difficult to accept because admittedly at that time he was not employed by the respondent-company- but was employed by M/s Industrial & Allied Sales Pvt. Limited. The statement of T.K. Verma with regard to the bills produced by Harish Arora cannot, therefore, be from his personal knowledge. In my opinion, therefore, little reliance can be placed on the evidence of T.K. Verma by the respondent.

(24) The respondent had also filed an affidavit of Shri Vijay Kapoor. He has stated that he had been buying various models of tricycles from the respondent since many years. He has further stated that he had purchased Mini Bike Gogo vide a bill dated 1st June, 1976 and he had received the same through Nitco Roadways. A photo copy of the bill stated to have been received by him was enclosed and marked as Annexure 'A' to the affidavit. He has further stated that Mini Bike Gogo which was purchased by him under the said bill dated 1st June, 1976 was subsequently discontinued by the company. He has also stated that he has been shown the pamphlet which is Annexure 'A' to T.K. Verma's affidavit and according to Vijay Kapoor the Mini Bike Gogo which was purchased by him vide bill dated 1st June, 1976 was similar to the one which was shown in the pamphlet which was Annexure 'A' to T.K. Verma's affidavit. It is clear, therefore, that Vijay Kapoor not only intended to state that he was buying tricycles since before the time of registration of the design but he has also attempted to support the evidence of T.K Verma when he says that tricycles which he bought were the same as that shown in Annexure A to T.K. Verma's affidavit. It is difficult for me to accept the affidavit of Vijay Kapoor as being correct. Vijay Kapoor has, as already noted, annexed with his affidavit a photo copy of the bill which is stated to have been received by him. Annexure 'A' to the affidavit is no doubt a photo copy of the bill but it bears the words "office copy". The existence of the words "office copy" show that this document must have come from the custody of the respondent and could not have come from the custody of Vijay Kapoor. Vijay Kapoor could not have been sent office copy of the bill. Vijay Kapoor could only have received the original of the bill and the said bill could not have borne the words "office copy". Vijay Kapoor was cross-examined on this aspect by the petitioner. He persisted in saying that the photostat copy of Annexure 'A' was prepared from "my copy". He has further stated that "it is incorrect to suggest that the photostat copy of Annexure''A' has not been prepared from the bill which is in my possession or that this was supplied by defendant-company for the purpose ef filing along with my affidavit". Vijay Kapoor, therefore, has insisted that the photo copy has been prepared from the bill which was sent to him by the respondent. As I have already indicated hereinabove, the said bill bears the words "office copy". Office copy is retained by the seller and never sent to the purchaser. It is not possible for me to believe that Vijay Kapoor, who was supposed to be a purchaser of the goods, would have been sent the office copy of the bill and the original would have been retained by the respondent. It appears to me that the document which has been annexed to Vijay Kapoor's affidavit must have been supplied by the respondent company so as to enable Vijay Kapoor to file an affidavit and annex that document showing that it has been received by him. The veracity of the testimony of Vijay Kapoor is, therefore, shaken by the doubtful nature of the document annexed to his affidavit. I am, therefore, unable to accept his statement as being correct. This also puts to doubt the correctness of the genuineness of Annexure 'A' to T.K. Verma's affidavit. If the respondent could supply a bill which was not genuine for being filed along with Vijay Kapoor's affidavit and Vijay Kapoor could, on the basis thereof, depose that what he had purchased on the strength of that bill was similar to the Bike shown in Annexure 'A' to T.K. Verma's affidavit, it is quite probable that Annexure 'A' to T.K. Verma's affidavit could have been prepared at a later date solely with a view to file the same-in this Court. The contention of Shri Vidhani is that Annexure 'A' to Verma's affidavit is not a genuine document and has been created solely with a view to defend the petition. It appears to me that much reliance cannot be placed on Annexure 'A' to Verma's affidavit. It has been produced by a person who was not in the employment of the respondent at the time when the said pamphlet was supposed to have come into existence, namely in early part of 1976 and secondly has been produced in Court long after the affidavit of Shri Verma had been filed and, thirdly, is sought to be corroborated by the testimony of Vijay Kapoor. whose testimony I am unable to believe.

(25) Though the evidence referred to above, as adduced by the petitioner, is sufficient for me to come to the conclusion that there was prior publication of the design, and goods answering the said description were being manufactured and marketed before the design was registered, nevertheless it will be desirable to refer to the second limb of arguments of ShriVidhani in respect to prior publication. As already indicated hereinabove. the case of the. petitioner was also that a similar tricycle had been imported by Ravinder Kaur into India and the said tricycle had been used by her daughter. The evidence of Ravinder Kaur is not on record. In support of the aforesaid contention, reliance has been placed on the affidavit of Shri Paramjit Singh Mudhar. He has deposed that his sister Ravinder Kaur had brought tricycle for use of her da.ughter and this had been imported from Denmark in December, 1975. He has further stated that the said tricycle was used by his niece as well as his own daughter in the house and also in the streets of Karol Bagh. He has further stated that hundreds of people saw the said tricycle including Shri Joginder Singh and the said tricycle was handed over by him to Joginder Singh. The said tricycle has been produced in Court and this , supposed to be the one which was imported by Ravinder Kaur. It is true that a tricycle stated to hove been imported into India by Ravinder Kaur has been produced in Court. There is, however, nothing to indicate on the said tricycle that it was manufactured in Denmark or outside India. Furthermore, the testimony of Paramjit Singh Mudhar is not corroborated by any other evidence on record. The best person who could have deposed in this behalf was Ravinder Kaur but her evidence has not been produced. In this view of the matter, I would not consider it safe to rely upon the uncorroborated statement of Paramjit Singh Mudhar. Had there been any indication on the tricycle, which is produced in Court, that the same was not manufactured in India, that itself would have corroborated the statement of Paramjit Singh Mudhar. This not being so, I do not think the petitioner can place much reliance on this evidence.

(26) For the aforesaid reasons, I come to the conclusion that the petitioner is entitled to the cancellation of design Nos. 144635 and 144636 dated 16th August, 1976 for the reason that the said designs had been previously published in India and was not a new or an original design. The ingredients of section. 51 A of the Design Act are satisfied. Issue No. I is accordingly decided in favor of the petitioner. Issue No. 2

(27) In view of the findings on issue No. I, it must follow that the petitioner would be entitled to the relief prayed for.

(28) I accordingly direct the cancellation of Design No. 144635 and 144636 dated 16th August, 1976 registered in the name of the respondent. The Controller of Designs, Calcutta should be informed accordingly. The petitioner will be entitled to costs.