Delhi High Court

Tarun Sethi & Ors. vs Vikas Budhiraja & Ors on 6 August, 2012

Author: V. K. Jain

       *       IN THE HIGH COURT OF DELHI AT NEW DELHI

%                           Judgment reserved on: 31.07.2012
                            Judgment pronounced on: 06.08.2012

+      CS(OS) 1841/2008


       TARUN SETHI & ORS.                     ..... Plaintiffs
                   Through: Mr. Tushar Malhotra, Adv.


                   versus



       VIKAS BUDHIRAJA & ORS                 ..... Defendants
                   Through: Mr. N.K. Kantawala, Mr. Rajesh
                            Sharma, Mr. Praven Sharma, Mr.
                            Satyender Chahar and Mr. Ritesh
                            Mehra, Advocates


CORAM:
HON'BLE MR. JUSTICE V.K.JAIN


V.K. JAIN, J.

1. Plaintiff No. 3, which is a partnership firm of plaintiff Nos. 1

and 2, is engaged in the business of manufacture and sale of

hardware, such as door closers, spring hinges, etc. One of the

products of the plaintiffs is a door spring which it is selling under

the trademark „YEN‟. The design of the aforesaid door spring is

registered vide design registration No. 202794 dated 05.01.2006

which continues to subsist. The said design, according to the

plaintiffs, consists of a unique capsule shape of the door spring

and a thin and light handle which is made of iron and the

arrangement of the two. The original, novel and essential feature

of the said design is stated to be the shape and configuration of

the door spring which is alleged to be distinctive and unique to

the plaintiffs‟ door spring under the mark „YEN‟. Defendant No.

3 Ritz Metal Works is also engaged in manufacture and sale of

door closer. The case of the plaintiffs is that the door closer

being manufactured and sold by the defendants is identical to

their door closer design which is registered since 05.01.2006

and, therefore, they are infringing plaintiffs‟ right in the

aforesaid registered design. The following are comparative chart

has been given in the plaint to illustrate the identical features of

the two products:-

Capsule with Ring positioned in Capsule with Ring positioned in the centre. the centre

2 Semi Circular Silver Caps on 2 Semi Circular Silver Caps on either side of the capsule. either side of the capsule.

2 Rectangular shaped hinge          2 Rectangular shaped hinge
plates that are moulded into the    plates that are moulded into the
body of the capsule shaped          body of the capsule shaped
cylinder.                           cylinder.

Each Hinge Plate has 2 holes Each Hinge Plate has 2 holes that are equidistant from one that are equidistant from one another. another.

A the centre there is a chrome At the centre there is a chrome plated ring with 4 holes for plated ring with 4 holes for fixing the rod of the door closer fixing the rod of the door closer which divides the capsule into 2 which divides the capsule into 2 equidistant halves. equidistant halves.

From the centre ring is a thin From the centre ring is a thin rod which can be fitted at any rod which can be fitted at any one of the holes of the ring. one of the holes of the ring.

Sticker on both sides of the ring Sticker on both sides of the ring

Back View Back View

Two uniquely shaped hinge Two uniquely shaped hinge plates with two holes each that plates with two holes each that are moulded from the body of are moulded from the body of capsule shaped cylinder and capsule shaped cylinder and come outwards. come outwards.

The two hinge plates are The two hinge plates are separated from one another by separated from one another by the ring on the body of the the ring on the body of the capsule and remain a few capsule and remain a few centimeters apart when centimeters apart when protruding outside the capsule. protruding outside the capsule.

The rod appears to come from The rod appears to come from below and from between the below and from between the Hinge Plates. Hinge Plates.

The plaintiffs have sought injunctions, restraining the

defendants from making, selling, offering for sale or advertising

door springs which are imitations of their registered design.

They have also sought delivery up of the infringing material and

damages amounting to Rs 20 lakh. Rendition of account from the

defendants has also claimed by them.

2. In their written statement, the defendants have taken a

preliminary objection that there is no cause of action in favour of

the plaintiffs since they are not proprietors of design, shape,

configuration and pattern of capsule door closer/door spring

registered at serial No. 202794 dated 05.01.2006. It has been

further alleged that while obtaining registration of the aforesaid

design, the plaintiffs were fully aware that capsule door

closer/door spring with immaterial variations were available in

the market much prior to the date of the application by them and

the plaintiffs themselves had advertised capsule door/door spring

in a magazine in September-October, 1999. It is further stated

that on 18.04.2002, the plaintiffs had obtained design

registration in respect of door spring vide registration No.

188784 which was also of capsule shape and the design

registered at serial No. 202794 on 05.01.2006 is merely a trade

variation and is not altogether different from the design

registered at serial No. 188784. It is further alleged that

defendants are manufacturing and marketing capsule door

closers/door springs since in the year 2000 and they had also

advertised their products August, 2003 onwards.

3. The following issues were framed on the pleadings of the

parties:-

i) "Whether the suit is liable to be rejected under Order 7 Rule 11 (a) CPC? OPD

ii) Whether the plaintiffs are the proprietors of the design registered under No. 202794 dated 05th January 2006 in respect of the "shape and configuration of the door spring"? OPP

iii) Whether the defendant‟s product is identical to the plaintiff‟s product registered under No.202794 dated 05th January, 2006 and if so, whether it amounts to infringement of the plaintiff‟s aforesaid registered design? OPP

iv) Whether the defendant‟s product/design is identical to the plaitniff‟s product/design and hence its use by the defendants amounts to passing off its product/design as that of the plaintiffs‟ product/design? OPP

v) Whether the design of capsule door closer/door spring registered at No. 202794 is a pre-published design? OPP

vi) Whether the defendants have been manufacturing and marketing the impugned

capsule door closure and door springs since the year 2000, if so, to what effect? OPD

vii) Relief.

4. Two witnesses each have been examined by both the

parties.

5. Issue No. (i)

On a perusal of the plaint, it cannot be said that the plaint

does not disclose any cause of action. It has been specifically

stated in the plaint that the plaintiffs‟ design is registered vide

design registration No. 202794. It is also alleged that the

product of the defendants is identical to the product of the

plaintiffs, design of which is registered vide design registration

No. 202794. It is also alleged that the defendants are infringing

the design of the plaintiffs by selling door spring, design of which

is identical to the registered design of the plaintiffs. Even

otherwise, no arguments were advanced on this issue. Hence,

the issue is decided against the defendant and in favour of the

plaintiffs.

6. Issue No. (vi)

There is absolutely no documentary evidence of the

defendants manufacturing and/or marketing the capsule door

closer/door springs having been the impugned design, since the

year 2000. No magazine or newspaper showing any

advertisement of the impugned product by the defendants at any

time prior to 05.01.2006 has been filed by them. The invoices

Ex.DW-1/6 to DW-1/19 pertain to sale of hydraulic door closers

and door springs under the brand name Ritz, but there is no

documentary evidence to prove that the door springs/door

closers sold vide these invoices was identical to the products

impugned in the present suit. No photograph of the product has

been printed on the invoices. No customer has been produced by

the defendants to prove purchase of impugned product prior to

05.01.2006. In these circumstances, there is no escape from the

conclusion that the defendants were not manufacturing and/or

selling the impugned product prior to 05.01.2006. The issue is

decided against the defendants and in favour of the plaintiffs.

7. Issue No. (ii)

The registration No. 202794 in favour of the plaintiffs is

Ex.PW-1/3. This document is sufficient to prove that the

plaintiffs are registered proprietors of the design registered vide

registration No. 202794 dated 05.01.2006. The issue is decided

against the defendants and in favour of the plaintiffs.

8. Issues No. (iii), (v) and (vii)

„Design‟ is defined in Section 2(d) of the Designs Act, 2000

which, to the extent relevant for our purpose stipulates that

"design" means only the feature of shape, configuration, pattern,

ornament or composition of lines or colours applied to any article

whether in two dimensional or three dimensional or in both

forms, by any industrial process or means, whether manual,

mechanical or chemical, separate or combined, which in the

finished article appeal to and are judged solely by the eye and

does not include any trade mark as defined in clause (v) of sub-

section (1) of section 2 of the Trade and Merchandise Marks Act,

1958 or any artistic work as defined in clause 9c) of Section 2 of

the Copyright Act, 1957.

Therefore, novelty factor may rest only in its shape,

configuration, pattern, ornament or composition of lines or

colours applied to any article.

Section 4 of the Designs Act, 2000, to the extent it is

relevant, prohibits registration of a design which is not new or

original or is not significantly distinguishable from known

designs or from combination of known designs or has been

disclosed in the public anywhere in India or in any other country

by publication in a tangible form or by use or in any other way

prior to the filing date.

Section 19 of the Designs Act provides that any person

interested may present a petition for the cancellation of the

registration of a design at any time after the registration of the

design, inter alia, on the ground that the design is not a new or

original design or has been published in India or in any other

country prior to the date of its registration or that it is not design

as defined under clause (d) of Section 2.

Sub-section (1) of Section 22 of the aforesaid Act, to the

extent relevant for our purpose provides that during the

existence of copyright in any design, it shall not be lawful for any

person, for the purpose of sale to apply to cause to be applied to

any article or any class of articles in which the design is

registered, the design or any fraudulent or obvious imitation

thereof, except with the licence or written consent of the

registered proprietor. Sub-section (2) of the said Act provides

that if any person acts in contravention of that Section, he shall

be liable, 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 and to be

restrained by injunction accordingly. Sub-section (3) of the said

Act provides that in any suit or any other proceeding 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 defence.

9. Whether a particular design has novelty in it or not is a

matter of fact which needs to be decided primarily by the human

eye. It is the settled proposition of law if a particular shape or

pattern or a substantially similar shape or pattern has previously

been published or used, the design incorporating such a shape or

pattern cannot be said to be a novel design. Mere variations or

modifications which do not substantially alter a previously

published shape or design, which any skill person can make, are

not sufficient to bring novelty to the design.

10. A perusal of the registration in favour of the plaintiff would

show that novelty was claimed by the plaintiff only in the shape

and configuration of the door spring as illustrated in the

registration. Thus, no novelty on account of pattern, ornament or

colours applied to the door spring was claimed. Even the case

set out in the plaint is that the registered design of the plaintiff

consists of a unique capsule shape of the door spring and a thin

and light handle, which is made of iron and the arrangement of

the two. It is further alleged that the original, novel and

essential feature of the plaintiff‟s design are the shape and

configuration of the door spring. Therefore, the only question to

be examined in this case is as to whether the shape and

configuration of the door spring of the plaintiff were previously

published or not. A perusal of the registered design of the

plaintiff and the door closer being manufactured and sold by the

plaintiff would show that the product comprises one capsule, two

hinges having two capsule, four holes each, and an iron rod

which fits into one of the four holes in the round bar in the

middle of the capsule. The round edges of the capsule are

chrome plated and appear to have been separately fixed one each

on both the sides. There is a chrome plated circular bar in the

middle of the capsule. The product being manufactured and/or

sold by the defendants is identical except to the extent that there

are two chrome plated roller at the foot of the iron rod, in the

product of the defendant. Also, there is an ornamental plastic

part in chrome colour, fixed at the bottom of the iron rod in the

product of the plaintiff. This, however, is not found in the

product of the defendants.

11. Ex.DW-1/21 is the October 2009 edition of Hardware India.

The capsule door closer published in this journal comprises a

capsule with an iron rod in the middle of the capsule. There is a

chrome plated round bar in the middle of the capsule and the rod

fits into one of the four holes of the chrome plated bar. There

are two hinges having two holes each at the backside of the

capsule. Similar product is published in January/February 2004

issue of Hardware and Sanitary Use (Ex.DW1/23 to 27). Such

product has also been published in September-October 2004

issue of sourcing hardware (Ex.DW-1/29-30). Yet another

publication containing advertisement of capsule door closer is

November/December, 2004 issue of Indian Hardware and

Sanitary Use (Ex.DW-1/31 to 37).

12. The plaintiff is claiming registration since 05.01.2006.

The above-referred publications being prior to 05.01.2006, there

can be no dispute that capsule shaped door closer/door hinge

were available in the market much prior to the registration vide

design registration No.202794 in favour of the plaintiff. As noted

earlier, the plaintiff, at the time of registration claimed novelty

only in the shape and configuration of the door spring. There is

no difference in the configuration of the door springs which were

advertised prior to 05.01.2006 and the door spring design which

is registered vide registration No.202794. The products which

were available in the market prior to January 2006 as well as the

products of the plaintiff comprises a capsule, two hinges with

holes in them and an iron rod fitting into one of the holes of the

round bar in the middle of the capsule. Therefore, it is difficult

to say that the shape of the product of the plaintiff is materially

different from the shape of the products which were available in

the market prior to 05.01.2006.

It is true that in the capsule which was available in the

market prior to 05.01.2006, the whole of the capsule was painted

with brown colour whereas in the product of the plaintiff, the

edges of the capsule are chrome plated. A perusal of the design

registration in favour of the plaintiff would show that no claim

was made by the plaintiff to any right to the exclusive use of the

colour or colour combination appearing in the design. Therefore,

it was very much open to the defendants to use chrome on the

sides of the capsule instead of applying the brown colour to the

whole of the capsule. It is true that the edges on the sides of the

capsule, in the product of the plaintiff appear to have been

separately fixed which is not the case in the product which was

available in the market prior to 05.01.2006 but, that, to my mind,

a trade variant of the product and it cannot be said that an

altogether new shape was brought out by the plaintiff merely by

separately fixing the edges on the capsule. The shape was of a

capsule in the products which were available in the market prior

to 05.01.2006. Same is the shape of product which the plaintiff

is manufacturing and selling after 05.01.2006. A capsule does

remain a capsule and its shape is not altered merely by

separately fixing the edges on the capsule. In fact, the shape of

the plaintiff‟s product would not be a capsule shape unless these

edges are fixed on both the sides. As far as the bar in the middle

of the capsule is concerned, as noted earlier, this was there in

the products which were available in the market even prior to

05.01.2006. Therefore, to my mind, the design registered vide

registration No.202794 cannot be said to be a design within the

meaning of Section 2(d) of the Designs Act, 2000. In my view, an

ornamental variation as is found between the product of the

plaintiff and the product which was available prior to 05.01.2006,

cannot be said to be a novelty which was capable of being

registered as a design. Therefore, in view of the provisions

contained in Section 4 of the Designs Act, the design of the

plaintiff which was not a new or original design or in any case,

was not significantly distinguishable from the designs already

available in the market, could not have been registered and,

therefore, is liable to be cancelled. Though the application filed

by the defendants for cancellation of the design of the plaintiff is

still pending before the Controller, the ground on which design

may be cancelled is available as a defence in view of the

provisions in Section 22(3) of the said Act, the design of the

plaintiff is liable to be cancelled for the reason is that it is neither

a new or original design nor was it registerable under the Act.

It was contented by the learned counsel for the plaintiff that

the placement of hinges in the product of the plaintiff is different

from the placement in the product which was available in the

market prior to 05.01.2006. In my view, mere change in the

placement of the hinges would not result in altering the shape of

the product which was essentially a capsule with two hinges and

an iron rod, prior to 05.01.2006 and continues to be the same

even thereafter.

13. In Kestos Ld. v. Kempat Ld. & Vivian Fitch

Kemp (1936)53 RPC139, it was held that if the same shape or

pattern, or one substantially similar, had previously been thought

of in connection with the type of article in question and the idea

published, that is, made available to the public) then the design

was neither new nor original.

In Allen West & Co, Ld. v. British Westinghouse

Electric and Manufacturing Co. Ld. (1916)33 RPC 137, it was

observed that there must be, not a mere novelty of outline, but a

substantial novelty in the design having regard to the nature of

the article.

In Ravinder Kumar Gupta Vs. Ravi Raj Gupta and Ors.

1986 PTC 50, the tiles of the plaintiff was having sharp corners.

The defendant started manufacturing and selling tiles with round

corners. Noticing that tiles with sharp edges and corners were

already in vogue prior to the registration of the impugned design,

it was held by this Court, after examining both types of tiles, i.e.,

with sharp corners and round corners, that though the tile with

round corners may look a different but it was not altogether a

new or a different design. It was further held that merely

because the round corner was conceived by the respondent, he

could not get it registered as a new design as envisaged under

Section 2(5) of the Designs Act, 1911. It was observed that the

new design should be something like inventive and by making the

corners from sharp to round, it cannot be said that a new design

has been created from one's own mind and thought. New would

be something which is developed and is not earlier in existence.

It should be striking new design. This Court observed that

though round corner tiles may look fresh, it cannot be said that

there was any new or novel idea involved in bringing out a tile

with round corner.

The case of the plaintiff before this Court, is much weaker

than the case of the plaintiff in the above-referred case. In the

case before this Court, the shape of the products which were

available in the market prior to 05.01.2006 was the same as is

the shape of the product of the plaintiff, both primarily being

capsule shaped with a rod in the middle of the capsule.

In B. Chawla & Sons v. Bright Auto Industries AIR 1981

Delhi 95, a Division Bench of this Court observed that what the

appellants were required to satisfy was that their design had a

substantial novelty or a striking newness for the instructed eye.

In that case, the appellant had got design in respect of a mirror

registered in its favour. The mirror of the appellant was a

common type rectangular mirror with a slight curve on the upper

side. The respondents sought cancellation of the registration on

account of that such mirror were available in the market and

there was now newness or originality about the design of the

appellant. No rectangular mirror having a curve on either side in

the sloping upper length was available in the market. Therefore,

the only question before the Court was whether a further curve

on either side in the slopping upper length side made the design

in respect of rear view mirror a new or original design which the

appellant were entitled to get registered. The Division Bench

referred to the view taken in Phillips v. Barbro Rubber

Company (1920) 37 R.P.C. 233, wherein it was observed that

introduction of ordinary trade variants into an old design cannot

make it new or original. One example given in that case was

spikes in the soles of running shows. The Court was of the view

that having spikes in the sole of running shoes does not make a

new and original design. It was further observed that it is the

duty of the Court to take special care that no design is to be

counted a new and original design unless it is distinguished, from

what previously existed, by something essentially new or original,

which is different from ordinary trade variant.

The following observations made by the Division Bench in

the above-referred case are pertinent:-

"The quintessence of the placitums above is that distinction has to be drawn between usual trade variants on one hand and novelty or originality on the other. For drawing such distinction reliance has to be placed on popular impression for which the eye would be the ultimate arbiter. However, the eye should be an instructed eye, capable of seeing through to discern whether it is common trade knowledge or a novelty so striking and substantial as to merit registration. A balance has to be struck so that novelty and originality may receive the statutory recognition and interest of trade and right of those engaged therein to share common knowledge be also protected."

As regards the case before it, the Division Bench noted

that the design in question as a whole consisted rectangular

shape with rounded edges with sides curved or sloping with a

further curve on either side in the sloping upper length side.

There were standard models of back mirrors which were

rectangular in shape with sloping widths and lengths. In some

of them, there was a curve in the upper length side. The

appellants‟ case was that a further curve in the sloping upper

length side made their design new or original. The Division

Bench noted that the extent and nature of the novelty was not

endorsed by the appellants in the application for seeking

registration and, therefore, it had to be taken only as regards