Bansal Plastic Industries vs Neeraj Toys Industries And Anr.
1989 Latest Caselaw 312 Del

JUDGMENT

G.C. Jain, J.

(1) In an action for infringement of its registered design, M/s. Bansal Plastic Industries, the plaintiff, has filed this application under Order 39 Rules I and 2 read with Section 151 of the Code of Civil Procedure seeking an order restraining the respondents, their servants, agents, stockists, dealers and all other persons on their behalf from manufacturing and selling the 'Toy Horse' of the design in suit till the final disposal of the suit.

(2) According to the averments in the plaint, the plaintiff was carrying on business, inter alia, of manufacturing and marketing children's tricycles and toys. One of its products was a 'Toy Horse'. The plaintiff prepared its design in August, 1983 It was a distinctive design with unique features and configuration. The design was new and original and had not been previously published. In order to protect its right in that design the plaintiff made an application for registration of the said design under No. 153343 dated 7th August, 1983. The design was registered and a certificate issued on 6th December, 1983 by the Controller of Patents and Designs, Calcutta with effect from 7th August, 1983. The renewal application made by the plaintiff was pending. The said registration was valid, subsisting and in force.

(3) Further case of the plaintiff is that M/s. Shiva Industries, defendant No. 2, was manufacturing the Toy Horse for M/s. Neeraj Toys Industries, defendant No. 1. The design of the 'Toy Horse' of the defendants was identical/similar to the registered design of the 'Toy Horse' of the plaintiff. The defendants had infringed the statutory right of the plaintiff in respects of the said design and were threatening to continue to infringe its exclusion right in respect of the said design. In the application (1.A. 8722 of 1988) it was also alleged that the plaintiff had a good prima facie case, balance of convenience was in its favor and it shall suffer an irreparable loss in case temporary injunction was not granted.

(4) This application was resisted by the defendants. Defendant No. 2 in its written statement denied that it was manufacturing any 'Toy Horse' as alleged, either on its own or for any other person or firm. It was averred that the plaintiff has no cause of action against defendant No. 2.

(5) Defendant No. I in its written statement pleaded that the design to the plaintiff had no distinct features and configuration. It was wrong that this design was original or was unpublished. The 'Toy Horse' was common toy for children and was in market for decades. Defendant No. I had already filed an application under Section 51A of the Design Act, 1911 (for short the Act') for cancellation of the registration of the plaintiff's design. It was also averred that the 'Toy Horse' of the defendant was not identical/ similar to the plaintiffs 'Toy Horse'. The main features of the two designs was the head of the horse. Two heads were entirely different. The head which the defendant was using was of a horse. The head of the plaintiff's 'Toy Horse' cannot be said to be a head of the horse. There were other differences as well. It was alleged that the plaintiff has no prima fade case and the balance of convenience was in favor of the defendants,

(6) The plaintiff has filed a copy of the certificate which shows that its design in respect of 'Toy Horse' was registered under registered design No. 153343 dated 7th August, 1983. The certificate says "The novelty resides in the shape or configuration of the Horse as illustrated." The certificate contains an endorsement of disclaimer which reads : "No claim is made by virtue of this registration in respect of any mechanical or other action of the mechanism whatever or in respect of any mode of construction of the article."

(7) "WHEN a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during five years from the date of registration." (Section 47(1) of the Act), "if before the expiration of the said five years application for the extension of the period of copyright is made to the Controller in the prescribed manner, the Controller shall, on payment of the prescribed fee, extend the period of copyright for a second period of five years from the expiration of the original period of five years." (Section 47(2) of the Act).

(8) The plaintiff, prima fade, has a copyright in the said 'Toy Horse'. Under Sub-section (3) of Section 46 of the Act the entries in the register of designs is prima fade evidence that the registered proprietor has the copyright in the said design. It is however, not a conclusive proof. Any person interested to present a petition for the cancellation of the registration of a design in the High Court, had three 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 (3) that the design is not new or original design.

(9) The contention of the learned counsel for the defendant is that the design in question had been published in India prior to the date of registration. It was liable to be cancelled. The defendant had already moved an application under Section 51A of the Aci in High Court for the cancellation of the plaintiff's design. In support of the pieta the defendant has relied on photocopy of the page from the Magazine Best Product Catalog 1980-81.

(10) Learned counsel for the plaintiff, on the other hand, contended that this defense was not available to the defendant in these proceedings. Reliance was placed on a decision of this Court in Tilak Raj v. M/s Clean Deal Industries, Rfa 170-D of 1963 on November 7, 1973.

(11) In Tilak Raj's case a Division Bench of this Court observed that in view of the provisions contained in Section 51A of the Act such a plea could be raised by an application for cancellation of the disputed design. It could not be raised in the suit complaining of an infringement of a registered design. It was observed that Lahore decision Gadar Bakhsh v. Ghulam Mohammed, Air 1934 Lahore 709 did not notice the provisions of Section 51A which was inserted by Act 7 of 1930.

(12) In Niky Tasha India Pvt. Ltd. v. M/s. Faridabad Gas Gadgets Pvt. Ltd., Air 1985 Delhi 136, a Division Bench of this Court held that every ground on which a registered design may be cancelled under the Act, should be available by way of defense in a suit turn infringement. The Division Bench decision in Tilak Raj's case was not noticed by the Division Bench deciding this case.

(13) On a careful consideration, it appears to me that in Tilak Raj's case (Supra) one of the reasons for holding that this plea was not available by way of defense in a suit complaining an infringement of a registered design was that suit had not been filed in the High Court. It had been filed before the District Judge. This is not the case here. The view similar to the view taken by the Division Bench in Niky Tasha's case (Supra) besides Qadad Bakhsh's case (Supra) has also been taken in Mohd. Abdul Karim v. Mohd. Yasin & Anr. and Dwarkadas Dhauli Sha v. Chhotalal Ravicarandas & Co. Air 1941 Bombay 188. In any case I do not propose to take a final decision on this point in this application.

(14) In case it was held that defense was not available that would not make much difference. Granting an injunction under Order 39 Rules I and 2 of the Code of Civil Procedure, is in the discretion of the Court, The discretion, however, has to be exercised in accordance with the reasons and on sound judicial principles. In my opinion, it is not the law that injunction should automatically be granted in an action for infringement of the registered design. The Court is bound to keep in mind the equities and other circumstances.

(15) The defendant had filed an advertisement showing that the design of the 'Toy Horse' was published prior to the registration in its favor. I have examined the 'Toy Horse' of the plaintiff and 'Toy Horse' of the defendant. Prima fade, there appears to be difference in the shape and configuration of the head of the horse.

(16) Keeping in view the facts and circumstances of the case I find no justification for granting a temporary injunction as prayed. It would be sufficient if defendant No. I was put on terms and asked to furnish security for a sum of Rs. 50,000.00 and to file statement of sales quarterly.

(17) I consequently dismiss the application. The defendant No. I, however, is directed to furnish security in the sum of Rs. 50,000.00 against the immovable property to the satisfaction of the Registrar on or before 6th July 1989 and to file statements of sales quarterly. In case defendant No. I fails to do so the plaintiff shall have a right to apply to the Court for grant of temporary injunction.