Delhi High Court
Pentel Kabushiki Kaisha & Anr. vs M/S Arora Stationers & Ors. on 8 January, 2018
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) No.361/2017
% 8th January, 2018
PENTEL KABUSHIKI KAISHA & ANR. ..... Plaintiffs
Through: Mr. Sandeep Sethi, Senior
Advocate with Mr. Afzal Khan,
Advocate, Mr. Debjyoti Sarkar,
Advocate and Ms. Parul Singh,
Advocate.
versus
M/S ARORA STATIONERS & ORS. .... Defendants
Through: Mr. Shailen Bhatia, Advocate
with Mr. H.P. Singh, Advocate,
Mr. Amit Jain, Advocate, Ms.
Ektanayar Saini, Advocate and
Mr. Navroop Singh, Advocate.
CORAM:
HON'BLE MR. JUSTICE VALMIKI J.MEHTA
To be referred to the Reporter or not? YES
VALMIKI J. MEHTA, J (ORAL)
I.A. No.6056/2017 (under Order XXXIX Rules 1 & 2 CPC)
1. This application for injunction under Order XXXIX
Rules 1 & 2 of Code of Civil Procedure, 1908 (CPC) is filed by the
CS(COMM) No.361/2017 Page 1 of 38
plaintiffs in a suit pleading piracy by the defendants of the plaintiffs‟
registered design no.263172 for ball point pens.
2. The cause of action as pleaded in the plaint is one under
Section 22 of the Designs Act, 2000 (hereinafter referred to as „the
Act‟) and which Section provides that during the existence of the
copyright in any design, no other person shall use the registered design
for commercial purposes, sale of the article etc being a design which is
identical or an imitation of the registered design of the plaintiff. In the
suit the following reliefs are claimed:-
"(a) A decree of permanent injunction restraining the Defendants, their
partners, agents, proprietors, servants and all those actively in concert with
them from manufacturing, selling, offering to sell, advertising, trading,
dealing, either directly or indirectly in pens that is identical duplication or
being obvious and/or fraudulent imitation to the Plaintiffs‟ copyright in the
registered design no 263172;
(b) An order for delivery up to the Plaintiffs by the Defendants of all
the infringing products including blocks, dyes, molds, any other material
bearing the Plaintiffs‟ registered design No.263172 or used for applying
the Plaintiffs‟ registered design No.263172 for purpose of
erasure/destruction;
(c) An order of rendition of accounts of profits directly or indirectly
earned by the Defendants from their infringing activities and wrongful
conduct and a decree for the amounts so found due to be passed in favour
of the Plaintiffs;
(d) A sum of Rs.1,00,00,000/- as decree of damages as valued for the
purposes of this suit towards invasion of rights, loss of sales, revenue, and
overall business identified with the Plaintiffs‟ registered design
No.263172 caused by the activities of the Defendants;
(e) An order as to the costs of the present proceedings; and
(f) Any further order (s) as this Hon‟ble Court may deem fit and
proper in the facts and the circumstances of the present case."
CS(COMM) No.361/2017 Page 2 of 38
3. In the interim injunction application which is being
disposed of in terms of the present order, the following reliefs are
prayed:-
"a. An order of exparte interim injunction restraining the Defendants,
their partners, agents, proprietors, servants and all those actively in concert
with them from manufacturing, selling, offering to sell, advertising,
trading, dealing, either directly or indirectly in pens that are identical or
obvious and fraudulent imitation to the Plaintiffs‟ copyright in the
registered design no.263172 during the pendency of the suit.
b. Any further order(s) as this Hon‟ble Court may deem fit and
proper in the facts and circumstances of the present case."
4. In sum and substance this Court has to examine as to
whether the plaintiffs, who are the holders of registered design
no.263172 with respect to ball point pens, are entitled to interim
reliefs on the ground that the defendants are infringing the registered
design of the plaintiffs. For the purpose of disposal of the present
application, three Sections of the Act would be relevant, and these are
Sections 4, 19 and 22 of the Act. These Sections read as under:-
"Section 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.
shall not be registered.
CS(COMM) No.361/2017 Page 3 of 38
Section 19. Cancellation of registration.-(1) 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, to the Controller on any of the
following grounds, namely:-
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country prior to
the date of registration; or
(c) that the design is not a new or original design; or
(d) that the design is not registerable under this Act; or
(e) it is not a design as defined under clause (d) of section 2.
(2) An appeal shall lie from any order of the Controller under this section
to the High Court, and the Controller may at any time refer any such
petition to the High Court, and the High Court shall decide any petition so
referred.
Section 22. 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 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.
(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 twenty-five thousand 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 fifty thousand rupees:
Provided further that no suit or any other proceeding for relief under
this subsection shall be instituted in any court below the court of
District Judge.
CS(COMM) No.361/2017 Page 4 of 38
(3) In any suit or any other proceeding for relief under subsection (2), ever
ground on which the registration of a design may be cancelled under
section 19 shall be available as a ground of defence.
(4) Notwithstanding anything contained in the second proviso to sub-
Section (2), where any ground or which the registration of a design may be
cancelled under section 19 has been availed of as a ground of defence and
sub-section (3) in any suit or other proceeding for relief under sub-section
(2), the suit or such other proceedings shall be transferred by the Court in
which the suit or such other proceeding is pending, to the High Court for
decision.
(5) 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."
5. Sub-Section (3) of Section 22 of the Act provides that in
spite of the fact that a design is a registered design, whenever any suit
is filed for the relief alleging piracy of the registered design by the
defendant in the suit, then in such a suit every ground on which
registration of a design may be cancelled under Section 19 of the Act
shall be available to the defendant as a ground of defence.
6.(i) A reading of Sections 19 and 4 of the Act, shows that
before a design is entitled to protection under the Act, the design has
to be a new or original design. If the design is not a new or original
design, then the registered design though registered is liable to be
cancelled in the proceedings under Section 19 of the Act. The
pendency or otherwise of the proceedings under Section 19 of the Act
for cancellation of the registered design will however not prevent a
CS(COMM) No.361/2017 Page 5 of 38
Court from deciding the issue of entitlement of the plaintiff to grant of
an interim injunction in a suit which is filed under Section 22 of the
Act by examining the defences that the registered design is such which
is liable to be cancelled, i.e no interim or final relief can be granted to
the plaintiff, and this is so specifically provided in Sub-Section (3) of
Section 22 of the Act. Therefore, this Court has to examine that
whether the design of the ball point pen of which the plaintiffs have
obtained registration is or is not a new or original design and which
are defences for cancellation of a registered design in proceedings
under Section 19 of the Act. Defendants contend that design of the
ball point pen of the plaintiffs is not a new and original design, and
hence not only the design registered by the plaintiffs is liable to be
cancelled in the proceedings already initiated under Section 19 of the
Act, even the subject application for injunction is liable to be
dismissed in view of Sub-Section (3) of Section 22 of the Act as
defences under Section 19 of the Act are defences which are available
to the defendants in the suit to contest the allegations and cause of
action in the plaint of piracy of registered design.
CS(COMM) No.361/2017 Page 6 of 38
(ii) While on the subject, as to what is new or original, this Court
cannot lose sight of the what is stated in Sub-Section (c) of Section 4
of the Act. Whereas Sub-Section (a) of Section 4 of the Act provides
that a design which is not new or original cannot be registered, Sub-
Section (c) of Section 4 of the Act provides and clarifies that a design
cannot be registered if it is not significantly distinguishable from
known designs or combination of known designs. Sub-Section (c) of
Section 4 of the Act is therefore in a way explanatory or clarificatory
of Sub-Section (a) of Section 4 of the Act by stating that merely
because there is some sort of newness or originality in an article, but
in case that newness or originality is however not such so as to
significantly distinguish the new article prepared from existing designs
or combination of designs, then in such a case a design cannot be
registered. It is implicit in the requirement of a design being new and
original that there is creation by putting an effort. Since a totally new
product applying the design comes into existence as a result of lot of
labour and effort, consequently, this right is known as intellectual
property right and the effect of registering of the intellectual property
right called as design under the Act gives monopoly to the owner of
CS(COMM) No.361/2017 Page 7 of 38
the registered design for a total period of ten plus five years.
Therefore it is sine qua non that there is required sufficient novelty
and originality for a completely new creation to come into existence of
a design, and only thereafter would the design be said to be one which
is capable of being protected as a design under the Act. This aspect of
novelty and creation as regards a design which can only be protected
has been dealt with by the Division Bench of this Court in the case of
M/s. B. Chawla & Sons Vs. M/s. Bright Auto Industries AIR 1981
Delhi 95. The relevant paras of this judgment which deal with the
aspect of newness or originality are paras 8 to 12 and these paras read
as under:-
"8. In Le May v. Welch (1884) 28 Ch. D, 24-, Bowen L. J. expressed
the opinion:
"It is not every mere difference of cut"-he was speaking of collars-
"Every change of outline, every change of length, or breadth, or
configuration in a single and most familiar article of dress like this,
which constitutes novelty of design. To hold that would be no paralyse
industry "and to make the Patents, Designs and Trade Marks Act a trap
to catch honest traders. There must be, not a mere novelty of outline,
but a substantial novelty in the design having regard to the nature of
the article."
And Fry L.J. observed :
"It has been suggested by Mr. Swinfen Eady that unless a design
precisely similar, and in fact identical, has been used or been in
existence prior to the Act, the design will be novel or original. Such a
conclusion would be a very serious and alarming one, when it is borne
in mind that the Act may be applied to every possible thing which is
the subject of human industry, and not only to articles made by
manufacturers, but to those made by families for their own use. It
appears to me that such a mode of interpreting the Act would be highly
CS(COMM) No.361/2017 Page 8 of 38
unreasonable, and that the meaning of the words" novel or original' is
this, that the designs must either be substantially novel or substantially
original, having regard to the nature and character of the subject matter
to which it is to be applied."
9. Similar view was expressed by Buckley L.J. on the question of
quantum of novelty in Simmons v. Mathieson and Cold (1911) 28 R.P.C.
486 at 494 in these words:
"In order to render valid, the registration of a Design under the Patents
and Designs Act, 1907, there must be novelty and originality, it must
be a new or original design. To my mind, that means that there must be
a mental conception expressed in a physical form which has not
existed before, but has originated in the constructive brain of its
proprietor and that must not be in a trivial or infinitesimal degree, but
in some substantial degree."
10. In Phillips v. Harbro Rubber Company (1920) 37 R.P.C. 233, Lord
Moulton observed that while question of the meaning of design and of the
fact of its infringement are matters to be judged by the eye (sic), it is
necessary with regard to the question of infringement, and still more with
regard to the question of novelty or originality, that the eye should be that
of an instructed person, i.e. that he should know that was common trade
knowledge and usage in the class of articles to which the design applies.
The introduction of ordinary trade variants into an old design cannot make
it new or original, He went on to give the example saying, if it is common
practice to have, or not to have, spikes in the soles of running shoes a man
does not make a new and original design out of an old type of running
shoes by putting spikes into the soles. The working world, as well as the
trade world, is entitled at its will to take, in all cases, its choice of ordinary
trade variants for use in particular instance, and no patent and no
registration of a design can prevent an ordinary workman from using or
not using trade knowledge of this kind. It was emphasized that it is the
duly of the court to take special care that no design is to be counted a
"new and original design" unless it distinguished from that previously
existed by something essentially new or original which is different
from ordinary trade variants which have long been common matters
of taste workman who made a coat (of ordinary cut) for a customer
should be left in terror whether putting braid on the edges of the coat
in the ordinary way so common a few years ago, or increasing the
number of buttons or the like, would expose him for the prescribed
years to an action for having infringed a registered design. On final
analysis, it was emphasized that the use of the words "new or original" in
the statute is intended to prevent this and that the introduction or
substitution of ordinary trade variants in a design is not only insufficient to
make the design "new or original" but that it did not even contribute to
give it a new or original character. If it is not new or original without them
the presence of them cannot render it so.
CS(COMM) No.361/2017 Page 9 of 38
11. 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.
12. Coming to the facts of the instant case the design in question as a
whole consists in almost rectangular shape with rounded edges with sides
curved or sloping with a further curve on either side in the sloping upper
length side. The respondent produced in evidence Japan's Bicycle Guide,
1972, Vol. 22. At page Nos. 218 to 221, there are standard models of back
mirrors besides branded models numbering 36. Models bearing Nos. 59-6,
62-1, 61-3, 66-1 and 70-1 would show back view mirrors rectangular in
shape with sloping widths or lengths. In some of these models there is
curve in the upper length side. We have mentioned this fact simply to
emphasise that back view mirrors resembling the one in question have
been in the market for a long time. The appellants' case is that further a
curve in the sloping upper length side makes their design new or original.
We have already noted that the extent and nature of novelty was not
endorsed by the appellants in the application for seeking registration and,
Therefore, it has to be taken only as regards the shape and configuration.
In final analysis the matter would boil down to whether addition of further
curve on either side makes the variation a striking one or a substantial so
as to constitute a novelty meriting for registration. The learned Single
Judge after enunciating the legal position correctly used his eye for
discerning if there was in fact a novelty and answered the question in the
negative. We have once again gone through the same exercise and come to
the same opinion. We fail to see the hard labour which the appellants
claimed to have bestowed in creating the design they got registered. It is
devoid of newness and equally devoid of originality. An addition of curve
here or there in a shape which is well-recognised shape of an article of
common use in the market cannot make it an article new or original in
design. If it is made eligible for registration, it would certainly hinder the
progress of trade without there being any justification, whatsoever."
(emphasis added)
7. The emphasized portions of the aforesaid paras of the
Division Bench judgment of this Court leave no manner of doubt that
there is required substantial novelty of design and that any and every
change resulting in a new configuration will not necessarily constitute
a novelty of design. Mere novelty of outline or few changes here and
there which are trade variants would not result in creation of a new
article on the design which would entitle to protection as a design
under the Act. The Division Bench has time and again with reference
to the different judgments of the courts of U.K. emphasized the
requirement of novelty or originality which is substantial novelty and
substantial originality with regard to the nature and character of the
article. In para 10 of the judgment in the case of M/s B. Chawla and
Sons (supra) while making reference to the observations of Lord
Moulton it is observed that special care has to be taken that no design
is counted as a new or original design unless it is distinguished from
what previously existed by something essentially new or original
which is different from ordinary trade variants. In para 11, the
Division Bench has concluded that quintessence is that distinction has
to be drawn between usual trade variants on the one hand and
substantial novelty and originality on the other hand otherwise there
will be blockage of trade. Only newness/originality entitles monopoly
on account of registration of the design.
8. The Supreme Court in the case of Bharat Glass Tube
Limited Vs. Gopal Glass Works Limited (2008) 10 SCC 657 has made
similar observations in para 26 and this para 26 reads as under:-
"26. In fact, the sole purpose of this Act is protection of the intellectual
property right of the original design for a period of ten years or whatever
further period extendable. The object behind this enactment is to benefit
the person for his research and labour put in by him to evolve the new and
original design. This is the sole aim of enacting this Act. It has also laid
down that if design is not new or original or published previously then
such design should not be registered. It further lays down that if it 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 then such design will not be registered or if it is found that it
is not significantly distinguishable from known designs or
combination of known designs, then such designs shall not be registered.
It also provides that registration can be cancelled under Section 19 of the
Act if proper application is filed before the competent authority i.e. the
Controller that the design has been previously registered in India or
published in India or in any other country prior to the date of registration,
or that the design is not a new or original design or that the design is not
registerable under this Act or that it is not a design as defined in Clause (d)
of Section 2. The Controller after hearing both the parties if satisfied that
the design is not new or original or that it has already been registered or if
it is not registerable, cancel such registration and aggrieved against that
order, appeal shall lie to the High Court. These prohibitions have been
engrafted so as to protect the original person who has designed a new one
by virtue of his own efforts by researching for a long time. The new
and original design when registered is for a period of ten years. Such
original design which is new and which has not been available in the
country or has not been previously registered or has not been published in
India or in any other country prior to the date of registration shall be
protected for a period of ten years. therefore, it is in the nature of
protection of the intellectual property right. This was the purpose as is
evident from the Statement Of Objects And Reasons and from various
provisions of the Act. In this background, we have to examine whether the
design which was registered on the application filed by the respondent
herein can be cancelled or not on the basis of the application filed by the
appellant. In this connection, the Law of Copyright and Industrial Designs
by P. Narayanan (Fourth Edition), Para 27.01 needs to be quoted.
"27.01. Object of registration of designs.- The protection given by the
law relating to designs to those who produce new and original designs,
is primarily to advance industries, and keep them at a high level of
competitive progress.
''Those who wish to purchase an article for use are often influenced in
their choice not only by practical efficiency but the appearance.
Common experience shows that not all are influenced in the same way.
Some look for artistic merit. Some are attracted by a design which is a
stranger or bizarre. Many simply choose the article which catches their
eye. Whatever the reason may be one article with a particular design
may sell better than one without it: then it is profitable to use the
design. And much thought, time and expense may have been incurred
in finding a design which will increase sales". The object of design
registration is to see that the originator of a profitable design is not
deprived of his reward by others applying it to their goods.
The purpose of the Designs Act is to protect novel designs devised to
be applied to (or in other words, to govern the shape and configuration
of) particular articles to be manufactured and marketed commercially.
It is not to protect principles of operation or invention which, if
profitable (sic protectable) at all, ought to be made the subject- matter
of a patent. Nor is it to prevent the copying of the direct product of
original artistic effort in producing a drawing. Indeed the whole
purpose of a design is that it shall not stand on its own as an artistic
work but shall be copied by embodiment in a commercially produced
artefact. Thus the primary concern, is what the finished article is to
look like and not with what it does and the monopoly provided for the
proprietor is effected by according not, as in the case of ordinary
copyright, a right to prevent direct reproduction of the image
registered as the design but the right, over a much more limited period,
to prevent the manufacture and sale of articles of a design not
substantially different from the registered design. The emphasis
therefore is upon the visual image conveyed by the manufactured
article." (emphasis added)
9. A reference to the aforesaid para 26 of Bharat Glass
Tube Limited's case (supra) shows that what is stated by the Division
Bench of this Court in the case of M/s B. Chawla and Sons (supra)
has been accepted and in sum and substance it has been held by the
Supreme Court that the object behind enactment of the Act is to give
benefit to a person for the research and labour put by him to evolve the
new and original design which is an intellectual property right.
Supreme Court has also observed that unless the design is not
significantly distinguishable from the known designs or combination
of designs, then such a design is not entitled to registration and hence
monopoly of user for 15 years under the Act.
10. With the aforesaid being the position of law with respect
to the requirement of newness and originality, with the fact that it also
stands further clarified by virtue of Sub-Section (c) of Section 4 of the
Act that design with respect to which registration is claimed has to be
substantially different from existing designs, and hence monopoly for
15 years can only be given to such a design which is significantly
distinguishable from the known designs or combination of known
designs.
11. Let us therefore now turn to the facts of the present case
on the basis of which plaintiffs claim entitlement to injunction on
account of alleged piracy by the defendants and thereby the plaintiffs
would be entitled to reliefs under Section 22 of the Act. The relevant
paras with respect to plaintiffs‟ claim of its validity of registered
design are paras 11 and 12 and these paras are scanned below:-
12. Paras are being scanned instead of being typed so that by
a visual impression it could be known as to what are the design
features of which plaintiffs' claim exclusivity.
13. At this stage, it is required to be noted that whereas the
plaintiffs are selling their ball point pens under the trademark
PENTEL ENERGEL, defendants are selling their ball point pens
under the trademark MONTEX and with sub-brands of MONTEX
including the MONTEX MASTANI. It is MONTEX MASTANI
which is pleaded by the plaintiffs to be an infringement of the
registered design of the plaintiffs. The defendants as per their written
statement in order to dispute the claim of the plaintiffs have denied
that there is any newness or originality and in fact the defendants
plead that they are in the business of manufacture of ball point pens
since around the year 1976 and defendants have various registered
trademarks with the main brand name/trademark MONTEX as also
registration of the trademark/trade name MONTEX with other special
brands. This is stated in para 7 of the initial submissions of the written
statement and this para 7 reads as under:-
"7. That aforesaid goods of the defendants are sold under the various
distinct names along with the well-known trade mark/House Mark MONTEX
which stand registered/protected in class 16 in the name of defendants, the
details of same are furnished hereunder:
SR. NO. TRADE MARK NO. STATUS
1 MONTEX 204732 REGISTERED
2. MONTEX 383189 REGISTERED
3. MONTEX 502782 REGISTERED
4. MONTEX TURBO 673571 REGISTERED
5. MONTEX HYTONE 678540 REGISTERED
6. MONTEX GEL 835796 REGISTERED
7. MONTEX PENS 847279 REGISTERED
8. MONTEX PENS & 1005718 REGISTERED
REFILLS
9. MONTEX LAYA AUR 1113344 REGISTERED
KUCH NAYA
10. MONTEX MIRACLE 1185110 REGISTERED
11. MONTEX MERCURY 1185111 REGISTERED
12. MONTEX MEGA TOP 1262904 REGISTERED
13. MONTEX NEW HONEY 1273423 REGISTERED
14. MONTEX NEW HYBRID 1273424 REGISTERED
15. MONTEX HANDSOME 1273425 REGISTERED
16. MONTEX HYSQUARE 1273426 REGISTERED
17. MONTEX MASTER GRIP 1328890 REGISTERED
18. MONTEX FAST 1440830 REGISTERED
19. MONTEX ACTION 1440836 REGISTERED
20. MONTEX FARARI 1476482 REGISTERED
21. MONTEX MABACK 1476483 REGISTERED
22. MONTEX 9 1668638 REGISTERED
23. MONTEX PLUS 1668639 REGISTERED
24. MONTEX GLIDER 1668642 REGISTERED
25. MONTEX RADIUM 1668643 REGISTERED
26. MONTEX REGAL 1714628 REGISTERED
27. MONTEX CAPTIVA 1714629 REGISTERED
28. MONTEX ICON 1834331 REGISTERED
29. MONTEX MURFY 1834332 REGISTERED
30. MONTEX PAGODA 1834333 REGISTERED
31. MONTEX POLITE 1834334 REGISTERED
32. MONTEX SOLAR 1834335 REGISTERED
33. MONTEX PRESIDENT 1855597 REGISTERED
34. MONTEX TRICK 2927355 REGISTERED
RETRACTABLE BALL
PEN
35. MONTEX CLASSIC 2927356 REGISTERED
36. MONTEX TRICK 2927357 REGISTERED
RETRACTABLE BALL
PEN
37. MONTEX HY-SLIM BALL 2927358 REGISTERED
PEN
38. MONTEX POWER POINT 2927359 REGISTERED
BALL PEN
39. MONTEX GALAXY 2927360 REGISTERED
GLIDER INK BALL PEN
40. MONTEX MONEY BALL 2927361 REGISTERED
PEN
41. MONTEX JEWEL 2927362 REGISTERED
42. MONTEX STUDENT 2927363 REGISTERED
FOUNTAIN PEN
43. MONTEX STUDY 2927364 REGISTERED
FOUNTAIN PEN
44. MONTEX SMOTH FLOW 2927365 REGISTERED
GLIDER INK BALL PEN
45. MONTEX STYLISH 2927366 REGISTERED
GLIDER BALL PEN
46. MONTEX CROMA TWIST 2929291 REGISTERED
METAL BALL PEN
47. MONTEX GRAPHIC 2488087 REGISTERED
48. MONTEX TRI-MORE 3304583 REGISTERED
(LABEL)
49. MONTEX WORLD OF 3304586 REGISTERED
SCHOOL (LABEL)
14. There are also details of registration with the trademark
MONTEX of the defendants and this is stated in para 9 of the initial
submissions of the written statement and this para 9 reads as under:-
"9. That the defendants in order to protect its well-known trade mark
MONTEX have registered the same in respect of various goods and services
of the Nice classification, the details of which are furnished hereunder:
SR. NO. T.M. NO. CLASS STATUS
1. 846602 9 REGISTERED
2. 846603 21 REGISTERED
3. 846604 28 REGISTERED
4. 2930407 1 REGISTERED
5. 2930408 22 REGISTERED
6. 2930409 21 REGISTERED
7. 2930410 20 REGISTERED
8. 2930411 19 REGISTERED
9. 2930412 18 REGISTERED
10. 2930413 17 REGISTERED
11. 2030414 16 REGISTERED
12. 2930415 15 REGISTERED
13. 2930416 14 REGISTERED
14. 2930417 13 REGISTERED
15. 2930418 12 REGISTERED
16. 2930419 11 REGISTERED
17. 2930420 10 REGISTERED
18. 2930421 44 REGISTERED
19. 2930422 43 REGISTERED
20. 2930423 42 REGISTERED
21. 2930424 41 REGISTERED
22. 2930425 40 REGISTERED
23. 2930426 39 REGISTERED
24. 2930427 38 REGISTERED
25. 2930428 37 REGISTERED
26. 2930429 36 REGISTERED
27. 2930430 35 REGISTERED
28. 2930431 34 REGISTERED
29. 2930432 33 REGISTERED
30. 2930433 32 REGISTERED
31. 2930434 31 REGISTERED
32. 2930435 30 REGISTERED
33. 2930436 29 REGISTERED
34. 2930437 28 REGISTERED
35. 2930438 27 REGISTERED
36. 2930439 26 REGISTERED
37. 2930440 25 REGISTERED
38. 2930441 24 REGISTERED
39. 2930442 23 REGISTERED
40. 2930443 9 REGISTERED
41. 2930444 8 REGISTERED
42. 2930445 7 REGISTERED
43. 2930446 6 REGISTERED
44. 2930447 4 REGISTERED
45. 2930448 5 REGISTERED
46. 2930449 3 REGISTERED
47. 2930450 2 REGISTERED
48. 2930451 45 REGISTERED
15. Defendants also plead to be the owner of different
designs which are registered under the Act and details of which are
stated in para 10 of the initial submissions of the written statement and
this para 10 reads as under:-
"10. That the said new developed designs of the writing instruments
from time to time stand registered in the name of defendant under The
Designs Act, 2000 and defendant is registered proprietors of various such
Designs as mentioned hereunder:
SR. NO. TITLE OF DATE OF REGD.
APPL. DESIGN NO.
1. HONEY 20.07.1996 171990
2. HYGRIP 15.01.1999 178759
3. HAIWA 18.04.2002 189124
4. HYCON 16.03.2005 198979
5. HITPOINT 16.03.2005 198981
6. MELODY 16.03.2005 198982
7. MEGA TOP 16.03.2005 198983
8. HYSCALE 16.03.2005 198984
9. HABBIT 25.03.2005 199139
10. HY TANK 999 25.03.2005 199143
11. HANDY 25.03.2005 199144
12. HANDY # 18 25.03.2005 199145
13. HYBOSS 25.03.2005 199148
14. MASTER PIECE 13.09.2005 201286
15. MERCURY WITH 13.09.2005 201287
OUT RUBBER
16. HYROLLER 21.04.1999 179345
17. HOT POINT 21.04.1999 179347
18. HYGEL 21.04.1999 179349
19. HY Q 01.09.1999 180289
20. HYPOWER 07.10.1999 180596
21. HYSPEED 28.12.2000 184343
22. HYPOWER 13.01.2001 184501
23. HEADLINE 28.12.2001 185791
24. HYSLIM 28.12.2001 187907
25. BARREL 26.02.2003 188689
26. HYSCALE 20.10.2002 190361
27. MERCURY 25.01.2003 191179
28. MIRACEL 25.01.2003 191180
29. INNOVA 22.03.2006 203812
30. ACCUPOINT 18.03.2006 203919
31. FARARI 19.07.2006 205692
32. PLATIMA 19.07.2006 206618
33. DYNA 01.10.2007 213008
34. REGAL 01.10.2007 213009
35. MAGNUM 19.07.2006 205693
16. Defendants also claim that they have registered their
trademarks for the ball point pens being the mark MONTEX in
different countries of the world and the names of 18 countries in
which the trademark MONTEX is registered have been given in para
12 of the initial submissions and this para 12 reads as under:-
"12. That the defendants have been extensively selling their "writing
instruments" designed and registered by them under the Design Act and
under their Registered Trade Mark/House Mark MONTEX throughout
length and breadth of India and in various countries of the world and
accordingly have even obtained the registration and/or have applied for
registration of the their well known trade mark in various countries of
world, the details of which are furnished hereunder:
SR. No. TRADE MARK COUNTRY STATUS
NO.
1. 39136 BRUNEI REGISTERED
2. 64147 BANGLADESH REGISTERED
3. BT/M/2004/4952 BHUTAN REGISTERED
4. 2869733 EPO REGISTERED
5. 209812 EGYPT REGISTERED
6. 4234933572 GREAT REGISTERED
BRITAIN
7. 11856 GAZA STRIP REGISTERED
8. 96417 JORDAN REGISTERED
9. 74688 KUWAIT REGISTERED
10. 28606 KAZAKHSTAN REGISTERED
11. 3200800858 O.A.P.I REGISTERED
12. 47961 OMAN REGISTERED
13. 192825 PAKISTAN REGISTERED
14. 97278 SRILANKA REGISTERED
15. 2004/14928 SOUTH AFRICA REGISTERED
16. EE072261 TUNISIA REGISTERED
17. 40504 U.A.E REGISTERED
18. 51529 IRAQ REGISTERED
Defendants therefore pleaded to be a huge company into
manufacturing of writing instruments and turnover of the defendant
no.2 since the year 2004-05 to 2015-16 runs into few hundred crores
of rupees.
17. On the merits of the matter with respect to denial of the
defendants not copying the features and the designs of the plaintiffs,
defendants have referred to the fact that features which are alleged by the
plaintiffs to be their exclusive creation and being different parts of their
registered design have been used by the defendants from their own
earlier designs commencing from the year 2005. These features are with
respect to the pen caps with clips, the portion where ball point pen is
gripped containing wedges and with respect to barrel/lower casing
portion, and lower casing or housing being of octagonal sides and not
semi-spherical. These details are contained in para 6 of the preliminary
objections and this para 6 depicting the description of the features of the
pens of the defendant no.2 is scanned below:-
18. In sum and substance the defences of the defendants are
therefore that neither there is any newness or originality in the
registered design of the plaintiffs with respect to ball point pens
claimed by the plaintiffs and also, that the defendants have copied the
features not from the registered design of the plaintiffs but from the
features which are already adopted by the defendant no.2 in its ball
point pens since the year 2005.
19. In the opinion of this Court the issue which arises
squarely is whether paras 11 and 12 of the plaint which contain the
cause of action of the plaintiffs of creation of features of designs and
thus the ball point pen of the plaintiffs as a whole being entitled to
exclusivity of the registered design yet the plaintiffs will have to
satisfy this Court that the plaintiffs‟ registered design of the ball point
pens satisfies the requirements of newness and originality with the fact
that the so called newness or originality is not such so as not to be
significantly distinguishable from the known designs features.
20. I must begin this reasoning portion by stating that a ball
point pen is a ball point pen i.e every ball point pen normally has a
refill with a nib, the refill is put in a lower casing called a barrel, over
the barrel containing the refill and the nib there is a cap which is put,
and such a cap obviously has a clip in order to fix/attach the ball point
pen in the clothing of persons. In sum and substance therefore every
ball point pen has common features of a lower casing/barrel in which
lower casing/barrel there is a refill, the refill exists with a ball point
pen nib, the cap covers the ball point pen nib portion with additional
portion of the lower casing/barrel, and finally that the cap ordinarily
contains a clip. In order for a design to be totally a new and original
design with respect to a ball point pen, there will have to be
significantly distinguishable features so as to make the ball point pen
of which exclusivity and continuation of the registration is claimed by
the plaintiffs, that such is a completely new and original ball point pen
and that there is enough/substantial novelty and originality by
application of labour whereby the ball point pen of the plaintiffs is
distinguished from the aforesaid known features/designs in a ball point
pen. When the facts of this case on the features and design of the ball
point pen of the plaintiffs is examined along with ratios of the
judgments of the Division Bench of this Court in the case of M/s B.
Chawla and Sons (supra) and that of the Supreme Court in the case of
Bharat Glass Tube Limited (supra), in my opinion the fact that the
cap of the plaintiffs‟ ball point pen is alleged to be unique because of
wedges at the point of holding of the ball point pen or the barrel is
polygonal or there exists slightly curved tip or that barrel/lower casing
goes into a knob etc are only trade variants and such features really
cannot be said to be in my opinion such newness or originality so as to
distinguish these features from the known shape or the different
features which already exist in a ball point pen. The features given in
para 11 of the plaint which are claimed to be unique and new are not
such that it can be held that the features in themselves or taken with
other features will make the ball point pen of the plaintiffs as a
completely unique new design having that much originality so as to be
significantly distinguishable from the known features/design of a ball
point pen. In fact the wedges in the grip portion in my opinion is in
fact a functional feature because this wedges design created is for a
better grip and in order to ensure that there is proper grip of the pen
resultantly this being a mode or principal of construction applied with
respect to a ball point pen and for ensuring a better grip of the ball
point pen and which because of Section 2(d) of the Act defining
design cannot be protected as a design.
21. Learned counsel for the plaintiffs sought to place reliance
upon a portion of Full Bench judgment of this Court in the case of
Reckitt Benkiser India Ltd. Vs. Wyeth Ltd. AIR 2013 Delhi 101 (FB)
but the para relied upon of this judgment reproduces the observations
in the book 'Industrial Designs by Russell Clarke and Howe' which
only deals with the requirement of a design becoming a design not
because of the design being otherwise existing in public domain but
because of the design necessarily having been applied to an article.
Putting it in other words, non-existence of a design in public domain is
not enough to succeed on the aspect of registration of the design under
the Act because even a known concept or known design or known idea
becomes a design only when it is applied with respect to an article,
whereby the new article would become a design as such, and one then
which would have protection as a design under the Act. This is said in
so many words in Section 2(d) of the Act which defines a design as
under:-
"Section 2(d) "design" means only the features 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; but does not include any mode or principle of
construction or anything which is in substance a mere mechanical device,
and does not include any trade mark as defined in clause (v) of sub-section
(1) of section 2 of the Trade and Merchandise Mark Act, 1958 (43 of
1958) or property mark as defined in section 479 of the Indian Penal Code
(45 of 1860) or any artistic work as defined in clause (c) of section 2 of the
Copyright Act, 1957 (14 of 1957)" (emphasis added)
22. In the opinion of this Court, this Court does not even
have to go to the facts as stated by the defendants in their written
statement of their having used the features claimed by the plaintiffs as
unique/new features in the ball point pens of the defendants which are
already in existence in earlier manufactured ball point pens by the
defendants in different years from the year 2005 inasmuch as firstly
the plaintiffs have to satisfy this Court that the design of which
exclusivity and ownership is claimed by the plaintiffs is a completely
new and original design and is not as to be containing mere variations
or trade variants or some or the other differences from the known
designs already existing in a ball point pen. In this regard, in the
opinion of this Court, the plaintiffs have miserably failed of showing
substantial newness/originality as required by the definition and
meaning of newness and originality as stated in the Division Bench
judgment in the case of M/s B. Chawla and Sons (supra) and the
judgment of the Supreme Court in the case of Bharat Glass Tube
Limited (supra), relevant paras of which are reproduced above.
23. In view of the aforesaid discussion, I do not find any
merit in this application and the same is therefore dismissed. Interim
order passed by this Court on 26.5.2017 is vacated.
JANUARY 08, 2017 VALMIKI J. MEHTA, J
Ne
