Mr. Ravi Raj Khanna And Anr. vs Mr. Lalit Gupta And Anr.
2006 Latest Caselaw 266 Del

JUDGMENT

Sanjay Kishan Kaul, J.

1. The plaintiffs have filed a suit for permanent and mandatory injunction and for passing off and infringement of its designs in the shape of designer furniture. The plaintiffs filed an application for interim relief and ad interim orders were granted on 17.12.2004 in favor of the plaintiff. Local Commissioner was also appointed to seize the products and goods of the defendants, the details of which are set out as Annexure A-I to the plaint, to be released on superdari to the defendants. The Local Commissioners executed the local commission. The defendants filed IA 2893/2005 under Order 39 Rule 4 read with Section 151 CPC for vacation of the interim orders.

2. The plaintiff No. 1 is the sole proprietor of plaintiff No. 2 and applied for registration of its own designs under the design name

DIMENSIONS OVERSEAS

Defendant No. 1 is stated to be engaged in the same business. The plaintiff started the designing and manufacturing around June, 2003 and thereafter is stated to be selling the product in the country as well as abroad. The designing is stated to have been done for five star hotels and international chains. The plaintiff claims to have workforce of over 200 people and seasoning plant which is fully automatized and works on dehumidifying technology. The designs of the plaintiff are stated to be exclusive and developed by plaintiff No. 1.

3. In the fair of the Export Promotion Council for handicrafts organized at Pragati Maidan in October, 2004, it was found that the defendants had put up a stall displaying the same designs of furniture as the plaintiff. The brochure of the defendant was stated to be a copy of the brochure of the plaintiff.

4. Learned counsel for the plaintiff stated that the plaintiffs had initially applied for registration of the designs which have subsequently been granted by the concerned authority under the Designs Act, 2000 (hereinafter referred to as 'the said Act'). Learned counsel was thus desirous of amending the plaint to incorporate subsequent facts.

5. Learned counsel for the defendants, however, stated that the application for interim relief and vacation of order should be heard assuming that such registration has been granted and the sole point which was being urged on behalf of the defendants was that the design of the plaint was already in use and the product sold as per the own documents of the plaintiff and thus nothing more was required to be enquired into. Learned counsel on being queried, specifically stated that he was willing to give up all the remaining pleas raised in the application and only this point needed to be considered in the interim application. Needless to say, learned counsel reserved the liberty to raise all pleas in so far as the suit is concerned. Thus, hearing on the interim application was confined to the said aspect.

6. Learned counsel for the defendant referred to the provisions of Section 4 of the said Act which read as under:

4. Prohibition of registration of certain designs. -- A design which --

(a) is not new or original; or

(b) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or

(c) is not significantly distinguishable from known designs or combination of known designs; or

(d) comprises or contains scandalous or obscene matter, shall not be registered.

7. Learned counsel submitted that since the design of the plaintiff was already public, there was prohibition of registration of the said design and the registration would not make any difference since such registration was liable to be cancelled under Section 19 of the said Act on the ground as specified in clause (b) of Sub-section (1) of Section 19. The said clause provided that if the design had been published in India or in any other country prior to the date of registration, an interested person may present a petition for cancellation of registration.

8. Learned counsel also referred to Chapter V of the said Act which deals with legal proceedings. Section 22 refers to piracy of registered designs and Sub-section (3) provides that in any suit or other proceedings 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 defense. It was thus urged that it was not necessary for the defendants to apply for cancellation of registration under Section 19 of the said act and all such defenses could be taken in the present proceedings in view of Sub-section (3) of Section 22 of the Act.

9. Learned counsel for defendants referred to the judgment of the learned Single Judge of this court in Rotela Auto Components (P) Ltd. and Anr. v. Jaspal Singh and Ors. where it was held that if a design is already pre-published, the plaintiff cannot claim protection as publication before registration defeats the proprietor's right to protection under the Act.

10. In substance, the plea of learned counsel for the defendants is that a perusal of the documents shows that the application for registration was made in October, 2004 and the registration of the patent has been granted in May, 2005. Thus, the registration would relate back to the date of the application. Learned counsel in this behalf referred to the invoices filed by the plaintiff to contend that the invoices start from the period May, 2004 and thus the product was already in public domain and was being sold by the plaintiffs as per the said invoices. It may be noted that the defendants have filed no documents in respect of their case. The defendants have thus not filed any independent documents to show that the designs of the plaintiff were in public domain but are solely relying on the invoices of the plaintiff.

11. The aforesaid invoices have been explained by learned counsel for the plaintiff by reference to the replication in view of this plea taken by the defendants. It has been categorically denied in para 3 of the replication that there was any publication of the designs earlier or that the invoices of those sales relate to the designs in question. The filing of the invoices is explained to show the extent of business of the plaintiff and has nothing to do with the designs depicted in Annexure A-I. The learned counsel for the plaintiff also explained that in so far as the furniture is concerned, it is not that there will be complete novelty with the items itself inasmuch as a chair would have normally four legs as also a table. It is, however, the designing of the same and the placement of certain additions to it which make out the novelty in the design. This is in the form of shape and dimensions. Learned counsel emphasised that it is not the case of the defendants that they have not made identical furniture or have not copied but that they have a right to copy which is being denied by the plaintiff.

12. In my considered view, there is substance in the contention of learned counsel for the plaintiff. There are particular series relating to particular furniture items which are referred to in the invoices. A separate series is apparently prepared each year but the basic series number remain the same. That explains the identity of the serial numbers. The plaintiff has set up a case that the invoices prior to the application for registration do not pertain to the particular design but show the overall sale of the plaintiff. This aspect would have to be decided at the stage of trial. The defendants have filed no material to show any publication prior to the date of the application for registration of the design. The defendants have not even cared to file any documents in support of their contention but have based their complete case on the invoices filed by the plaintiff. An adverse inference in this cannot be drawn against the plaintiff at least at this stage without even a trial taking place.

13. There is no doubt that in respect of furnishing items, there would be some element of commonality in the object manufactured. However, what is important is whether the dimensions, the configuration and the patterns have some originality. It is only if it is so that a registration would take place and if the defendants copy the same without there being any material difference, the defendants are liable to be restrained.

14. In view of the aforesaid, the ad interim order dated 17.12.2000 is made absolute during the pendency of the suit whereby the defendants, their agents, employees, managers, representatives and assigns are restrained from in any manner manufacturing, selling or offering and displaying the designer furniture which are deceptively or confusingly similar to that of the plaintiffs as detailed in Annexure A-I to the plaint.

15. Needless to say that any observations made in the present order will not affect the final adjudication of the suit.

16. The applications stand disposed of accordingly.