Schreder S.A. And One Another vs Trilok Chand & Sons Pvt. Ltd.
2010 Latest Caselaw 5090 Del

23#
*      IN THE HIGH COURT OF DELHI AT NEW DELHI

%                              Date of Order: 09.11.2010
+      CS(OS) 1227/2009

       SCHREDER S.A. AND ONE ANOTHER                    ..... Plaintiff

                     versus

       TRILOK CHAND & SONS PVT. LTD.                ..... Defendant

Advocates who appeared in this case:
For the Plaintiff                     : Mr.Sushant Kumar and
                                      Mr. Devendra Nautiyal,
For the defendant                      : Mr. Ajay Digpaul and
                                      Ms. Arti Bansal
CORAM:-
HON'BLE MR JUSTICE V.K. JAIN
1.

Whether Reporters of local papers may be allowed to see the judgment? : No

2. To be referred to the Reporter or not? : No

3. Whether the judgment should be reported :

      in Digest?                                       No


V.K. JAIN, J(Oral)


I.A. No. 8548/2009 and IA No. 15336/2009

1. The plaintiff is the registered proprietor of Design No.182346, in

respect of a lighting apparatus which is being manufactured and sold by it

under the name „Alura‟. Initially, the design was registered w.e.f. 15 th May,

2000 and was valid for 5 years. A copy of certificate No.1077 issued by the

Patent Office in this regard on 07th November, 2000 has been filed by the

plaintiff. In view of the provisions contained in Section 11(1) of Designs

Act, 2000, which came into force on 11th May, 2001, the copyright in

registration became valid for 10 years from the date of registration. The

plaintiff has applied for renewal of the aforesaid registration vide application

dated 12th April, 2010. A copy of the letter written by L.S. Davar & Co.

Patent and Trademark Attorneys, to the Controller of Designs, Kolkata in

this regard has been placed on record. In view of the provisions contained in

Section 11(2) of the Designs Act, 2000, the Controller, on payment of the

prescribed fee, is obliged to extend the period of copyright for a second

period of 5 years from the expiration of the original period of 10 years fixed

under sub-Section (1) of the aforesaid Section, provided that the application

for extension of the period of copyright is made to him before expiration of

the prescribed period of 10 years. Since the design registered by Controller

of Patents on 15th May, 2000 was valid till 14th May, 2010 and the plaintiff

has applied for its renewal well before that date and also claims to have paid

the prescribed fee in this regard, the Controller is under legal obligation to

extend the period of copyright, by another 5 years. A copy of the receipt of

payment of the prescribed fee has been placed on record along with the copy

of the application for extension of registration.

2. Though the design was registered in the name of „FINANCIERE

DES APPLICATIONS DE L‟ELECTRICITE S.A.‟, the name of the

aforesaid company has since been changed to „SCHREDER S.A.‟ This fact

stands acknowledged in the application filed by the defendant itself for

revocation of the aforesaid registration in the name of the plaintiff. It has

been specifically stated in the Statement of Case filed before the Controller

of Designs, Patent Office, Kolkata that the name of the registered proprietor

appears to have been altered to read as „SCHREDER S.A.‟ vide order dated

December 10, 2007. Thus, at least prima facie, it cannot be disputed that it

is the plaintiff company which is the registered proprietor of the aforesaid

registration and it is only its name which has been changed from

„FINANCIERE DES APPLICATIONS DE L‟ELECTRICITE S.A.‟ to

„SCHREDER S.A.‟

3. A Local Commissioner was appointed by this Court to inspect the

premises of the defendant and documents including a catalogue/Brochure

found in the premises were obtained by him and have been filed along with

this report. The Brochure/Catalogue shows one model of Post-Top Lantern,

named VENICE HYT-01.

4. Section 22 of the Designs Act, 2000, to the extent it is relevant, reads

as under:-

(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 license 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.

5. A bare perusal of the model shown as VENICE HYT-01 in the

Catalogue/Brochure found in the premises of the defendant and its

comparison with the registered model of the plaintiff registered vide

Registration No.182346 and being sold under the name „Alura‟ leaves no

reasonable doubt that the design of the model VENICE HYT-01 is identical

to the design of the model of the plaintiff registered vide Registration

No.182346 and being sold under the name „Alura‟ and is its imitation. The

defendant has no right to sell or expose for sale a product which is identical,

in design, to and an imitation of the product of the plaintiff, design of which

already stands registered in its name vide Registration No.182346. The

product shown against model VENICE HYT-01 in the Catalogue/Brouchure

found in the premises of the defendant is of the very same class in which the

product being sold by the plaintiff under the name "Alura" falls. The

contention of the defendant is that VENICE HYT-01 is a Chinese product

and is not being sold by the defendant. At this stage, it is not possible for

the Court to give a conclusive finding as to whether the model VENICE

HYT-01 is being sold by the defendant or not. The very fact that the

Brochure/Catalogue found from the premises of the defendant shows this

product indicates a reasonable possibility of the defendant selling this

product in the market. Even if the defendant is not manufacturing this

product, it being similar in design of the product of the plaintiff, it has no

right to sell this product in Indian Market. Admittedly, the defendant has

already sought revocation of the registration granted to the plaintiff for the

Registration No.182346 in respect of the product being sold by it under the

name „Alura‟. But, so long as that application is pending and the

registration granted to the plaintiff vide Registration No.182346 is not

revoked, the defendant has no right to sell a product which has a design

identical with the registered design of the plaintiff.

6. For the reasons given in the preceding paragraphs, the defendant is

restrained, during pendency of the suit, from selling the product which is

shown as VENICE HYT-01 in the Catalogue/Brochure seized by the Local

Commission from its premises and filed by him along with his report. It

shall also not sell this product under any other name or model. If, however,

the registration granted in favour of the plaintiff vide Registration No.

182346 is revoked by the Controller of Patents, this order shall cease to

remain in force from the date of revocation.

Both the applications stand disposed of accordingly.

7. The interim order passed by this Court on 20 th July, 2009 as modified

on 14th October, 2009 stands merged in this order.

8. The parties are directed to appear before the Joint Registrar for

admission/denial of documents on 03rd January, 2011.

9. The matter to come up for framing of issues before the Court on 11th

January, 2011. The observations made in this order shall not affect the

decision of this suit on merits.

V.K. JAIN, J

NOVEMBER 09, 2010 bg