Schreder S.A And Anr. vs Twinkle Luminaries Pvt. Ltd.
2008 Latest Caselaw 779 Del

JUDGMENT

Badar Durrez Ahmed, J.

1. The plaintiff No. 1 is a company which has been incorporated in Belgium and engaged in the business of photo metrically controlled luminaires and various lighting products, including street lighting fixtures and floodlights and claims to have worldwide operations. The suit has been instituted through Mr S.K. Dutt, who is the Constituted Attorney of plaintiff No. 1. The plaintiff No. 2 is an Indian Company and has been authorized by the plaintiff No. 1 to use the technology of the plaintiff No. 1. The plaintiff No. 2 is the sole distributor of the plaintiff No. 1's products in India by virtue of an agreement dated 5.12.2002.

2. It is claimed by the plaintiff No. 1 that it is the registered proprietor of several designs in India under the provisions of The Designs Act, 1911 in respect of luminaires which include design registration nos. 170084, 182340 and 182343. It is alleged that the said design registrations are valid and in force and they have been renewed from time to time. Originally, the plaintiff No. 1 was known as Financiere Des Applications De L'Electricite S.A. and the design registrations were under that name. Subsequently, the name of the plaintiff No. 1 was changed to its present name i.e., Schreder S.A. The design registration No 170084 pertains to the plaintiff's product known as RT3. The design registration Nos. 182340 and 182343 relate to the plaintiff's product known as Gema.

3. It is alleged by the plaintiffs that sometime in September, 2004, the plaintiff No. 2 came to learn of the sale of identical luminaires by the defendant and corresponding to the plaintiffs' design known as Gema. A photograph of the luminaires of the defendant installed at Baba Kharag Singh Marg, New Delhi, was taken and the same has been filed along with the plaint. It is the contention of the plaintiffs that the design of the defendant's said luminaires is an imitation the plaintiffs' designs known as Gema which relate to design registration Nos. 182340 and 182343. The plaintiffs issued a cease and desist notice dated 9.9.2004 through their advocates to the defendant. The defendant in their reply dated 13.9.2004 opposed the contentions of the plaintiffs and refused to cease and desist. Around the same time, the plaintiffs came to learn that the defendant is also selling and offering for sale luminaires corresponding to the RT3 design which related to design registration No. 170084. In these circumstances, the present suit has been filed by the plaintiffs, inter alia, for the following reliefs:

(a) A decree for permanent injunction restraining the defendant, its servants, agents and/or assigns from infringing registered Design Nos. 170084, 182340 and 182343 of the plaintiffs, by manufacturing, selling, offering for sale and stocking for sale lighting fixtures of Design Registration Nos. 170084, 182340 and 182343;

(b) A decree for permanent injunction restraining the defendant, its servants, agents and/or assigns from manufacturing, selling, stocking for sale, offering for sale, marketing, advertising, distributing or in any other manner dealing with luminaries bearing the shape, configuration and get-up of plaintiff No. 1 luminaires registered under Design Nos. 170084, 182340 and 182343 or having any similar design;

(c) A decree of mandatory injunction directing the defendant to deliver upon affidavit all tools & dyes, stocks, etc. of all specific tooling (moulds), goods produced but not yet distributed products and parts thereof for purpose of destruction; and,

(d) A preliminary decree of accounts, followed by a final money decree, directing the defendant to render accounts of the profits made by it by using the plaintiff No. 1's design registration Nos. 170084, 182340 and 182343 on its products.

4. The defendant filed his written statement on 8.3.2006 in which the defendant raised several issues. It was contended by the defendant that the design No. 170084 is of a tunnel light fixture and is being marketed by the plaintiffs under the name RT-3/RT-4. The plaintiffs have alleged that the defendant's Model No. TFC/MH-2x250/400 has infringed the plaintiffs' said design registration. It was contended that the defendant has three types of tunnel light fixtures which were developed at its own works and also imported from other reputed manufacturers from other countries including China. It was also contended that the defendant's tunnel light fixture has no similarity with the plaintiffs' lighting fixtures either in finish, shape, configuration, dimension or appearance. It was also contended that the rectangular shape of the tunnel light fixture is a technical requirement for proper lighting distribution and merely, because the fixtures are rectangular in shape it cannot be said they infringe the plaintiffs' design. It was also contended that the plaintiffs have not given the details of the defendant's model for tunnel light fixtures and the defendants have multiple products for this purpose.

5. As regards the registered design No. 182340 and 182343 which relate to the design known as Gema, the contention of the defendant was that the said designs were published and were sold is markets in India prior to the said registrations and, therefore, there can be no question of any infringement of the plaintiffs' design. It was contended that such luminaires have been imported from China where the designs have been published prior to the registration of design No. 182340 and 182343 which was done on 15.5.2000. Several other contentions were also raised by the defendant in the written statement. On the basis of the pleadings and the documents filed by the parties, the following issues were framed on 26.2.2007:

(1) Whether the registered designs in question are already being utilized in India and abroad by various third parties? If so, its effect? OPD

(2) Whether the defendant has been marketing the product with the same designs much prior to registration? If so, its effect? OPD

(3) Whether the plaintiff is entitled to a decree of mandatory injunction? OPP

(4) Whether the plaintiff is entitled to accounts? If so, the period thereof. OPP.

(5) Relief.

6. The order dated 26.2.2007 also reveals that the learned Counsel for the parties had stated that only affidavits of evidence were required to be filed and no oral examination would be necessary. Thereafter, the plaintiffs filed the affidavit of Mr Chekitan Sawhney (PW1). The said affidavit was marked as Ext. PW1/A. The said Mr Chekitan Sawhney is the Managing Director of the plaintiff No. 2. Earlier, the defendant had filed the evidence affidavit of Mr Arun Kumar Jain (DW1), who is the Director in the defendant company. The said affidavit has been marked as Ext. DW1/A. Several documents have also been filed by the parties and have been exhibited.

Issue No. 1:

7. Under this issue, the onus was on the defendant to establish as to whether the registered designs, in question, had already been published in India by various third parties. By way of evidence, the defendant has produced several catalogues. The first catalogue is marked as Ext. D-2 and the same has been published by ONS Lighting. This catalogue does not bear any date. The learned Counsel for the defendant submitted that this catalogue was published in 2000 by referring to the front page of the catalogue which carries the following imprint:

ISO 9001 : 2000 company

According to me, this merely has reference to the company ONS which has brought out the catalogue and gives no indication as to when the catalogue was printed. The next document that has been relied upon by the defendant is Ext. D-3. This is a photo copy of one page from the catalogue of Hi-Lite Luminaires. While the said page does carry an image of a design similar to the Gema luminaire, there is no date on this publication either. Another catalogue (Ext. D-4) of Glitter General Electric has been referred to by the defendant. The design shown therein bears Model No. GGE 801/20, GGE 801/21. It is similar to the plaintiffs' Gema design. But, this catalogue also does not bear any date. Ext. D-5 is a catalogue of Leting. This catalogue has been published in 2001 as would be clear from the front cover itself. Therefore, this catalogue was published after the registration granted to the plaintiffs. Ext. D-6 is another catalogue of Yaships Lighting. This catalogue does not bear any date.

8. Considering the aforesaid evidence that has been produced by the defendant, it cannot be said that the registered design in question had already been published and utilized in India by various third parties. The learned Counsel for the defendant also placed reliance on Ext. D-1 which relates to certain orders placed by CPWD on the defendant Company for supply of energy saving light fittings. The said Exhibit comprises of 16 pages and on going through the same, it cannot be said that the products mentioned therein relate to products which are similar to those of the plaintiffs for which they have design registrations. They also do not relate to the defendant's products which are said to infringe the registered designs of the plaintiffs. Though, the first two pages of the said documents are dated 28.4.2000, they do not relate to the products in question.

9. In view of the foregoing discussions, the defendant has been unable to discharge the onus of proving that the registered designs, in question, were already been utilized in India and abroad by various third parties. Consequently, this issue is decided against the defendant.

Issue No. 2:

10. As discussed under issue No. 1 the defendant has been unable to establish that the designs, in question, were being utilized in India and abroad by various third parties. The defendant has also been unable to produce any evidence to indicate that it has been marketing the infringing products with the same design much prior to the registration in favor of the plaintiffs. It is pertinent to note that design No. 170084 was registered on 30.10.1995 and design Nos. 182340 and 182343 were registered on 15.5.2000. There is no evidence whatsoever of the defendant having marketed the infringing products prior to these dates. Consequently, this issue is also decided against the defendant.

Issue No. 3:

11. Section 53 of the said Act reads as under:

53. 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 goods in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or

(aa) 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

(b) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article [in any class of goods 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 five hundred 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 one thousand rupees.

(3) 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 of designs.

It is clear that for a plaintiff to succeed in a suit with regard to piracy of a registered design the plaintiff has to establish that the design used by the defendant is the very design which has been registered in the plaintiffs' favor or is fraudulent or obvious imitation thereof and that the plaintiff has not given any license or written consent to the defendant to either apply such design to its products or to import products of a similar nature. In the present case, the plaintiffs' registered design No. 170084 relates to the plaintiffs' product known as RT3. The defendant's product which is said to be infringing this design is to be found in Ext. P-3 and the entry itself is marked as Ext. PW1/15. Ext. P-3 is a catalogue brought out by the defendant and the same has been admitted by the defendant. Ext. PW1/15 refers to the defendant's products TFC/MH - 2x250/400 entitled "Integral Flood Light". A visual comparison of the plaintiffs' design of RT3 which is marked as Ext. PW1/10 with the defendant's design (Ext. PW1/15) shows that the defendant's design is an obvious imitation of the plaintiffs' design. Section 2 (5) which defines "design" requires that the products must be judged solely by the eye. In this manner, I am clearly of the view that the defendant's product is an obvious imitation of the plaintiff's product (RT3).

12. The registered design Nos. 182340 and 182343 relate to the plaintiffs' product which is sold under the name Gema and has been set out at page 67 of the plaintiffs' documents. This forms part of the plaintiffs' catalogue which has been denied by the defendant but the same has been proved by the affidavits by way of evidence filed by PW-1. The said design when compared to the alleged infringing product of defendant (PW1/11), which is a photograph of the defendant's product installed at Baba Kharag Singh Marg, New Delhi, makes it clear that the defendant's product is an imitation of the plaintiffs' design.

13. The learned Counsel for the defendant submitted that issue Nos. 1 and 2 had been framed in view of the allegations made by the defendant that the designs in respect of which the plaintiffs had filed the present suit had been published in India and abroad by third parties, prior to the registration in favor of the plaintiffs and that such prior publication was a ground for cancellation of registration under Section 51A of the said Act. But, this cannot be taken as a defense in a suit for piracy of a registered design under Section 53 of the said Act unless an application under Section 51-A of the said Act has been filed by the defendant. This is clear from what has been held in a full Bench decision of this Court in Metro Plastic Industries (Regd.) v. Galaxy Footwear, New Delhi 2000 I AD (Delhi) 819, wherein it was observed as under:

31. It is also settled law that the provisions of a statute should be read harmoniously. Section 51-A provides for cancellation of registration on certain grounds. Once an Application for cancellation of registration has been made or filed then the validity of registration itself has been questioned. If the validity of registration has already been questioned, then it would be anomalous and would amount to defeating the provisions of Section 51-A to say that in a Suit under Section 53 the defense of validity cannot be taken. It would then amount to saying that a person whose right is questioned, can in spite of such challenge keep on enforcing his right merely because delays of law do not permit such Applications to be disposed of expeditiously.

32. At this stage it must be clarified that we are not holding that the rights conferred by Section 53 can be defeated merely by some defense being taken. In the absence of an application under Section 51-A having been filed such a defense would not be available. It is the filing of an Application under Section 51-A which brings into cloud the registration of the design. Thus pending such an Application, Court cannot ignore the grounds taken therein. This is because both Section 51-A and Section 53 have to be read harmoniously and in a manner that neither is rendered nugatory or ineffective.

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34. In our view, these are matters where no hard and fast rule can be laid down. Section 53 creates a right in a registered owner. In the absence of an application for cancellation of the design such a right can be enforced and no defense can be taken based on a ground of cancellation. But once an Application for cancellation has been made then it would not be open for the Court, trying the Suit under Section 53, to turn a blind eye to the pendency of such Application. In that case the Court must taken into consideration all relevant facts which would include the grounds raised in the Application for cancellation. The Court must then decide whether or not to grant an injunction in favor of registered owner. Such a decision must be made judicially. In such cases the Court would apply the principles which govern grant of injunction under Order 39 Rules 1 and 2 CPC. The grant or refusal of injunction must then be based upon all relevant factors.

(underlining added)

Upon a reading of the above observations made by the Full Bench, it is clear that the defense of prior publication can only be taken in a suit filed under Section 53 of the said Act, when the defendant has already moved an application under Section 51A of the said Act seeking cancellation of the registered design. In the present case, it is an admitted position that the defendant has not filed any application under Section 51A. Consequently, the defense of prior publication is not available to the defendant. This is apart from the fact that prior publication as a fact has not been established.

14. In these circumstances, the plaintiffs are entitled to a decree of mandatory injunction in respect of their said registered designs as set out in the plaint. This issue is decided in favor of the plaintiffs and against the defendant.

Issue No. 4:

15. No evidence has been led by the plaintiffs under this issue and consequently, the issue is decided against the plaintiffs.

Issue No. 5:

16. In view of the discussion in respect of the aforesaid issues, the suit is decreed in favor of the plaintiffs in terms of prayers (a) and (b), contained in the prayer clause of the plaint. The plaintiffs are also entitled to costs.