Delhi High Court
Bhiwadi Polymers Ltd. vs Raj Rani Gupta on 27 November, 2018
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of decision: 27th November, 2018.
+ CS(COMM) 677/2018
BHIWADI POLYMERS LTD. ..... Plaintiff
Through: Mr. M.K. Miglani and Mr. Jithin M.
George, Advs.
Versus
RAJ RANI GUPTA ..... Defendant
Through: Mr. Brijesh Kumar Gupta and Mr.
Anshul Kumar, Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
IA No.3074/2018 (of defendant u/O IX R-7 of CPC)
1.
The counsels state that this application has been disposed of.
2. To be not shown in the Cause List.
IA No.3073/2018 (of the plaintiff under Order XXXIX Rules 1&2 CPC)
3. The application of the plaintiff for interim relief is for consideration.
4. The plaintiff, a manufacturer inter alia of adhesives and glues under
the trade mark „Fevicol‟, has sued the defendant, a manufacturer of plastic
containers, for permanent injunction restraining infringement of plaintiff‟s
registered design No.203203 dated 20th February, 2006 with respect to
plastic containers in which the goods of the plaintiff are sold.
5. The suit was originally filed before the District Court and vide order
dated 3rd March, 2009, summons of the suit and notice of the application for
interim relief issued.
6. The defendant, though appeared in response but failed to file any
written statement and thereafter stopped appearing and was proceeded
against ex parte on 20th July, 2009 and vide order of the same date, the
application of the plaintiff for interim relief was allowed, restraining the
defendant from manufacturing containers of the registered design of the
plaintiff and / or from applying the said design in any manner whatsoever.
7. The defendant applied for setting aside of the order proceeding ex
parte against the defendant. Vide order dated 21st September, 2010, the
order proceeding ex parte against the defendant was set aside. The
defendant filed written statement and on 1st November, 2010, the following
issues were framed in the suit:
"1. Whether the suit is not maintainable under Section 2(d) of the Designs Act,
2000? OPD
2. Whether the suit is not maintainable in view of sections 38 and 39 of Specific
Relief Act, 1963? OPD
3. Whether the suit is barred under section 7 of Specific Relief Act? OPD
4. Whether the plaintiff is entitled to decree of perpetual injunctions, as claimed in
the prayer clause (i) to (iii) of the plaint? OPP.
5. Whether the plaintiff is entitled to decree of mandatory injunction as claimed in
prayer clause (iv) of the plaint? OPP.
6. Whether the plaintiff is entitled to preliminary decree of rendition of account?
OPP.
7. Whether the plaintiff is entitled to final decree of rendition of account? OPP.
8. Relief."
and parties relegated to evidence and to hearing of the application of the
plaintiff for interim relief, which though had been decided ex parte as
aforesaid but upon the order proceeding ex parte against the defendant
having been set aside, was to be heard afresh. The matter continued to
linger. The plaintiff filed an application under Section 22(4) of the Designs
Act, 2000. The defendant again stopped appearing and was vide order dated
26th May, 2015 again proceeded against ex parte.
8. The defendant again applied for setting aside of the order proceeding
ex parte against the defendant and vide order dated 2nd May, 2017, the order
proceeding ex parte against the defendant was again set aside. Vide order
dated 29th January, 2018, allowing the application under Section 22(4) of the
Designs Act, the suit was transferred to this Court.
9. The counsel for the plaintiff argues, that (i) the plaintiff, till October,
2007, was sourcing the plastic containers in which the plaintiff sells its glues
and adhesives, from the defendant; (ii) thereafter owing to some disputes and
differences, the plaintiff stopped seeking plastic containers from the
defendant and made several requests to the defendant to surrender the dies
and moulds used for the manufacturing of the said plastic containers; (iii) the
plaintiff, in March, 2008, on learning of the defendant threatening to infringe
the registered design aforesaid of the plaintiff, got served a cease and desist
notice on the defendant; (iv) the defendant, in or about April, 2008 instituted
a suit against other manufacturers of plastic containers from whom the
plaintiff was then sourcing the containers for sale of its glues and adhesives,
to restrain the said manufacturers from passing off their containers as those
of the defendant, by adopting the design of the defendant; (v) no interim
injunction was granted to the defendant in the said suit and the plaintiff, on
learning of the said suit, assisted its said manufacturers of containers in
contesting the suit; (vi) the defendant, after sometime, attempted to withdraw
the said suit with liberty to institute a fresh suit; (vii) the defendant stopped
appearing and the suit was dismissed as withdrawn as also for non-
prosecution; (viii) the plaintiff instituted this suit, on learning of the fresh
threats of the defendant to the plastic container manufacturers and dealers of
the plaintiff, of passing off their containers / goods as that of the defendant;
(ix) in this suit, interim injunction against the defendant has continued from
20th July, 2009 till now; (x) the defendant is contesting this suit by taking a
plea, of being the creator and originator of the design of which the plaintiff
has obtained registration, and alleging the plaintiff to have misappropriated
the said design of the defendant; it is not the plea of the defendant in its
written statement that the registration of the design is bad for the reason of
any prior publication; and, (xi) the defendant has also not pleaded that it has
manufactured or supplied the containers of the subject design of which the
defendant claims to be the creator and originator, to anyone else.
10. The counsel for the plaintiff, on enquiry states that the registration of
February, 2006 of the subject design in favour of the plaintiff was for ten
years and has been renewed for another five years and is valid till 2021, after
which it will lapse.
11. The counsel for the defendant, on enquiry has not disputed the factual
narration as given by the counsel for the plaintiff, without however admitting
the legality thereof. He has in addition argued, that (i) the defendant is the
biggest manufacturer of plastic containers in Northern India and is supplying
the said containers to a large number of manufacturers of goods required to
be sold in such containers; (ii) the defendant also designs the container; (iii)
the plaintiff had in fact approached the defendant and requested the
defendant for creating a design for selling adhesives and glues of the
plaintiff; (iv) the defendant commissioned M/s Ultra Designing to create
such a design and the subject design was created by M/s Ultra Designing for
the defendant; (v) M/s Ultra Designing raised invoice dated 6th January, 2006
in the sum of Rs.52,700/- on the defendant towards its charges for the same;
(vi) the defendant is thus the originator and creator of the subject design;
(vii) attention is drawn to pages 150 to 158 of the Part-III file containing the
bills of M/s Ultra Designing along with annexures thereto showing the
design and to two bills of Perfect Mould & Die, from whom the defendant
got the design created by Ultra Designing moulded and the annexures
thereto; (viii) the defendant, upon receiving the moulds from Perfect Mould
& Die, manufactured the container as per the said design and sent an e-mail
of the photographic depiction of the said container to the plaintiff for
approval; (ix) the plaintiff however misappropriated the same and
surreptitiously got the design registered; (x) it is for this reason only that the
plaintiff has not produced before this Court any drawings to show creation of
the design; and, (xi) the plaintiff has also not produced any e-mail to show
that it is the originator and creator of the design.
12. At this stage, the counsel for the defendant was halted and asked to
point out the e-mail containing the photographic depiction of the container
which was so sent to the plaintiff.
13. The counsel for the defendant, after looking into his papers for some
time, states that the said e-mail has not been filed / produced.
14. The counsel for the defendant draws attention to Section 16 of the
Designs Act, to contend that the defendant, as creator and originator of the
design, had disclosed the same to the plaintiff for approval and use thereof
by the plaintiff is in breach of good faith. Attention is also drawn to Section
19(1)(c) to contend that the same provides for cancellation of registration if
the design is not a new or original design.
15. On enquiry, whether the defendant has applied for cancellation of
registration in favour of the plaintiff, it is stated that since the defendant is
entitled to in this suit seek cancellation and in this suit an interim injunction
has been granted, it was not deemed appropriate to seek the remedy of
cancellation before the Registrar of Designs and the said relief has been
claimed in the written statement in this suit. Reliance is placed on Bharat
Glass Tube Ltd. Vs. Gopal Glass Works Ltd. (2008) 10 SCC 657 explaining
that the purpose of the Designs Act is protection of intellectual property of a
person who has created a new or original design. It is argued that it is the
defendant who is the creator of the new design and the plaintiff is the
misappropriator.
16. I have enquired from the counsel for the defendant, why the defendant
did not file any suit against the plaintiff for stopping the plaintiff from using
the design of which the defendant claims to be the originator and creator.
17. The counsel for the defendant states that since this suit was pending,
the need to file a separate suit was not felt.
18. However, the fact remains that the defendant has till date not taken
any action for preventing the plaintiff from using the design. Rather, the
conduct of the defendant in defending the suit also shows that the defendant
was not affected by the interim injunction operating against it and was not
interested in restraining the plaintiff. Even if the interim injunction is
vacated, the same will not restrain the plaintiff from using the design of
which the defendant claims to be the creator.
19. I am therefore of the view that the present is not a case for vacation of
the interim injunction which has been operating since 20th July, 2009. More
so, when the validity of the design itself is till February, 2021 only.
20. The interim injunction is not liable to be vacated also, because while
the ingredients of balance of convenience and irreparable loss and injury are
in favour of the plaintiff, they are not in favour of the defendant. The
defendant admittedly has not used the design for any purpose whatsoever
since the time the defendant claims origin and creation thereof.
21. On the contrary, the plaintiff, not only has been using the design but
has also been prosecuting the present suit and taking steps for restraining the
defendant from doing so.
22. Only for the sake of completeness I may record another argument of
the counsel for the defendant, though the same has no relevance to the
present controversy. The defendant has drawn attention to the registration
No.213951 dated 31st December, 2007 obtained by the defendant.
23. The counsel for the plaintiff, with respect to the registration in favour
of the defendant, has drawn attention to the top view of the said registration
which bears the words „BL‟ and contends that the same is the logo of the
plaintiff and supports the claim of the plaintiff, of the design being of the
plaintiff; else, why would the defendant in its registration have the logo of
the plaintiff.
24. The counsel for the defendant of course controverts.
25. However, the same is also indicative of the creation, even if any by the
defendant through M/s Ultra Designing, was for the benefit of the plaintiff
only inasmuch as admittedly the defendant was manufacturing the containers
under the said design for the plaintiff.
26. The only thing which can be observed is that if the said design of the
defendant infringes the prior registration in favour of the plaintiff, then the
defendant by virtue of the interim injunction in this suit would stand
restrained from using the said design as well.
27. I have however, enquired from the counsels as to how, in the event of
the defendant establishing that the defendant is the author of the design, will
the plaintiff compensate the defendant.
28. Neither counsel has any inkling in this regard. Though the counsel for
the plaintiff states that the plaintiff will file its sales figures but the same will
not serve any purpose inasmuch as the mileage derived by the plaintiff from
the design would not be evident therefrom.
29. It is deemed appropriate to grant opportunity to the counsels to
consider the same. However, as far as this application is concerned, subject
to reserving powers of imposing condition for the grant of injunction at the
time of final decision of the suit, the application is allowed and the interim
injunction already granted to continue.
30. The application is disposed of.
CS(COMM) 677/2018
31. The suit is ripe for framing of issues.
32. However, before I frame issues, in view of above, I have enquired
from the counsel for the defendant, whether any purpose would be served in
contesting the suit. The counsel for the plaintiff has been prevailed upon to
not press for costs and ancillary reliefs, if the defendant agrees on suffering
permanent injunction without trial.
33. The counsel for the defendant states that he will seek instructions.
34. At this stage, the counsel for the defendant seeks passover to seek
telephonic instructions and on receiving telephonic instructions, states that
the defendant wants the suit to be decided on merits.
35. On the pleadings of the parties, in supersession of the issues framed
earlier, the following issues are framed:
1. Whether the defendant is the originator and creator of the
design, of which the plaintiff obtained registration No.
203203? OPD
2. Whether the plaintiff misappropriated the design of the
defendant and if so, to what effect? OPD.
3. Relief.
36. No other issue arises or is pressed.
37. The parties to file their list of witnesses within 15 days.
38. The onus of the issues being on the defendant, the defendant to lead
evidence first.
39. The defendant to file affidavits of examination-in-chief of its
witnesses within six weeks of today.
40. Option of having the evidence recorded on commission has been
declined.
41. List before the Joint Registrar on 30th January, 2019 for scheduling the
dates of trial. s
RAJIV SAHAI ENDLAW, J.
NOVEMBER 27, 2018
„bs/gsr‟
(corrected & released on 11th December, 2018)
