Delhi High Court
Kent Ro Systems Ltd. & Anr. vs Vikram Jeet & Anr. on 26 February, 2019
$~39
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Order: 26.02.2019
+ F.A.O. No.75/2019 & C.M. Nos.8780-8781/2019
KENT RO SYSTEMS LTD & ANR ..... Appellants
Through: Ms. Rajeshwari H. & Mr. Kumar
Chitranshu, Advocates.
Versus
VIKRAM JEET & ANR ..... Respondents
CORAM:
HON'BLE MR. JUSTICE VINOD GOEL
ORDER
% 26.02.2019
F.A.O. No.75/2019 & C.M. No.8780/2019 (for stay) & C.M. No.
8781/2019 (for appointment of Local Commissioner)
1. The impugned order dated 20.02.2019 passed by the court of
learned Additional District Judge-02, West District, Tis Hazari
Courts, Delhi („ADJ‟) in Civil Suit being TM No.08/2019,
dismissing two applications of the appellants/plaintiffs; one
under Order XXXIX Rules 1 and 2 of the Code of Civil
Procedure, 1908 („CPC‟), and another under Order XXVI Rule
9, is the subject-matter of challenge in this appeal.
2. As per the factual matrix, the appellants‟ company has been in
the business of manufacturing and selling Mineral RO Water
Purifier System since the year 1999. The appellant No.2 is the
Chairman-cum-Managing Director and proprietor of the
registered design forming the subject-matter of the suit. They
have been manufacturing and selling several products including
water purifiers, air purifiers, vegetable and fruit purifiers, water
softeners and automatic water pressure boosting systems, etc.,
in India and abroad under the mark KENT. The appellant No.1
is one of the market leaders in the sector and all the business
activities are undertaken by them under the trade name KENT.
The appellants also hold copyright in respect of the logo and
label KENT. The product KENT has become synonymous with
offering purity and durability and is known for its technological
performance and innovative path breaking technologies and
attractive designs. It is claimed that appellant No.1 ranks
amongst the major water purifier companies in India and
amongst the first in the sector in India.
3. The appellant No.2 has invested time, money and effort and
created new and aesthetic designs for water purifiers. The
designs created by him are novel, unique and eye-catching/eye-
appealing. On 19.05.2014, he was granted the design
registration No.262661 for the product forming the subject-
matter of the suit. It is claimed that uniqueness of the design
lies in the provision of an almost rounded body with provision
of transparent indicator as well as the overall appearance of the
product. The registered design has been licensed to appellant
No.1 by appellant No.2. It is pleaded that on account of
registration of the said design, no person can use the same either
for manufacture of cabinets or for finished products (purifiers)
or in any other manner, including sale, etc.
4. The appellants claimed that their products including the product
KENT PRIME TC have become trendsetting due to their unique
design, unmatched and remarkable quality coupled with high
efficiency and cost effectiveness. Its products have been used
continuously, extensively and exclusively throughout India and
abroad on a very large scale and the products sold under the
said mark have resultantly acquired a reputation of being
extremely sound and reliable by virtue of adherence to strict
quality standards maintained by them. The appellants have
given the sale figures of their product under the mark KENT
PRIME TC during the financial years from 2014-15 to 2017-18,
as under: -
KENT PRIME TC
Year Sales in quantity Sales in value in Rs.
Lacs (Approx.)
2014-15 7079 1380.40
2015-16 11270 2197.65
2016-17 10988 2142.66
2017-18 8070 1573.65
5. The appellants pleaded that they have won several awards and
accolades including:
i. Asia's Most Promising Brand-Kent RO -2012-2013;
ii. Asia's Most Promising Leader (Mahesh Gupta-Chairman-Kent
RO) 2012-13;
iii. Child Most Popular Award 2013- Most Popular Safe Water
Equipment' by Child Magazine in the year 2013;
iv. Best Domestic Water Purifier- Distinguishable Water Purifier-
Kent Pearl (Reverse Osmosis) - 2012, The water Digest
supported by UNESCO;
v. Best Commendable Water Purifier Non Electric- Kent Gold-
2012, the water Digest supported by UNESCO;
vi. India's most admirable consumer durable brand- 2011, awarded
by 4P's;
vii. Excellence Award, 2008;
viii. Best Domestic Water Purifier RO-UV 2006-2007, The water
Digest supported by UNESCO;
ix. Best Domestic Water Purifier RO-UV 2007-2008, The water
Digest supported by UNESCO;
x. Indian Most Trusted Brand Consumer Validation, 2015;
xi. The Admired Brand of Asia, 2015;
xii. Best Domestic Water Purifier Asia Water Leadership Awards,
2015;
xiii. Asia's most Promising Brands validate by Consumers &
Industry-2014;
6. The appellants pleaded that the defendant is the proprietor of
M/s. Jet Aqua Filtration Company which is in the business of
manufacture and sale of water purifiers, cabinets and spare parts
of water purifiers. Further, he claims that the respondents are
infringing upon their registered design No.262661 by selling
their product under the mark JET AQUA JIO and JET AQUA
SUPERLINE. The appellants claimed that the respondents have
been selling the said infringing goods with mala fide and
dishonest intention to ride upon their goodwill and reputation in
order to derive unfair gains for themselves.
7. By the impugned order, the learned ADJ while dismissing the
application under Order XXXIX Rule 1 and 2 CPC observed as
under:-
"7. I had an occasion to closely examine the products
of both the parties and find myself unable to agree with
the submissions made by Ld. Counsel for plaintiff.
There are wide and clear differences between the two
products with almost nil or little similarity except in
the shape of cabinet where some resemblance can be
observed. The products are quite different from each
other without there being any likelihood of practice of
deception upon the intending purchasers and therefore
in my view the designs/product of the defendant do not
infringe the designs of the plaintiff company. Water is
almost always associated with blue colour, therefore,
it is but natural for both the parties to use white and
blue colour on the designs of their products.
8. Therefore, I am of the prima facie view that the sale
of water purifier by the defendant is not even likely to
dilute the brand of plaintiff and adversely affect the
sale of its products. Therefore, I am not inclined to
grant ex-parte interim injunction in favour of the
plaintiff as sought for restraining the defendants from
manufacturing/selling/advertising/dealing in any water
purifier under the marks JET AQUA JIO and JET
AQUA SUPERLINE as they are not in any way
deceptively similar to the plaintiff's products PRIME
TC KENT nor infringed plaintiff's design no. 262661,
as seen prima facie at this stage."
8. Learned counsel for the appellants has brought their own
product and the impugned products of the respondents for the
court to examine. The product of the appellants, from the
perspective of an ordinary consumer and in a purely non-
technical terminology, could be said to have been designed to
be divided in two halves, wherein the upper transparent part of
the body of the water purifier is separated from the opaque
lower part of the body of the purifier. The product of the
respondents i.e. JET AQUA JIO, which is allegedly an imitation
of the Appellants‟ product, is also designed in a similar manner
wherein the upper transparent part of the product is separated
from the lower opaque part. This design wherein the body of the
purifier is divided into two halves stands at the forefront of an
analysis that would require this Court to look into the design,
shape and configuration of the products in question. While
analyzing an infringement of the design the color scheme of the
products and „brand‟ of the parties has no relevance.
9. The court does not find any prima-facie similarity in the shape,
design and configuration of the other product of the respondents
i.e. JET AQUA SUPERLINE and the Ld. Counsel for the does
not press relief in respect of JET AQUA SUPERLINE.
10. The law in regard to similarity, which constitutes infringement
and consequently attracts an order of injunction has been
explained by this court in J.N. Electricals (India) v. President
Electricals, ILR 1980 (1) Delhi 215 wherein it was explained
that the „sameness‟ of features does not necessarily mean that
the two designs must be identical on all fronts and should differ
on none. They have to be substantially the same. It was
reiterated by this Court in Alert India v. Naveen Plastics, 1996
SCC OnLine Del 710 and the relevant paragraph reads as
under:-
"35. Thus for determining whether two designs are
identical or not it is not necessary that the two designs
should be exactly the same. The main consideration to
be applied is whether the broad features of shape
configuration, pattern etc. are same or nearly the same
and if they are substantially the same then it will be a
case of imitation of the design of one by the other."
11. Further, the Calcutta High Court, in the case of Castrol India
Ltd. v. Tide Water Oil Co. (I) Ltd., 1994 SCC OnLine Cal 303
canvassed the meaning of the word „imitation‟ as it has been
understood judicially over the years in cases of design
infringement. The said Court while relying on a plethora of
cases came to the conclusion that the word „imitation‟ does not
mean „duplication‟ in the sense that the copy complained of
need not be an exact replica and that the Court while contrasting
the impugned design with the registered design must view the
article in its totality. Therefore, the test, as laid down by the
court, is that the two products must be compared and contrasted
with the features of shape and configuration shown in the
totality observable from the representation of the design as
registered and then decide if the design adopted by the
defendants is substantially different from the registered design.
The Court added that in order to decipher, if it‟s a case of
substantial infringement, the Court must look into the aspect of
whether the impugned design is an „obvious‟ or „fraudulent‟
imitation. The said court while referring to the case of Dunlop
Rubber Co. Ltd. v. Golf Ball Developments Ltd., (1931) XLVIII
RPC 268 set out the distinction between „obvious‟ and
„fraudulent‟ imitation. The Court observed that "„obvious‟
means something which, as soon as you look at it, strikes one at
once as being so like the original design, the registered design,
as to be almost unmistakable. I think an obvious imitation is
something which is very close to the original design, the
resemblance to the original design being immediately apparent
to the eye looking at the two." whereas "fraudulent imitation
seems to me to be an imitation which is based upon, and
deliberately based upon, the registered design and is an
imitation which may be less apparent than an obvious
imitation; that is to say, you may have a more subtle distinction
between the registered design and a fraudulent imitation and
yet the fraudulent imitation, although it is different in some
respects from the original, and in respects which render it not
obviously an imitation may yet be an imitation, imitation
perceptible when the two designs are closely scanned and
accordingly an infringement". Thus, the scope of design
infringement is not just limited to cases of „obvious‟ imitations
but also includes cases where the imitation is cleverly and
deviously made.
12. On a prima-facie view of the product of the appellants and that
of the respondents (JET AQUA JIO), the Court observed that
the two products have been designed similarly whereby the
upper transparent part of both the purifiers/cabinet is separated
by the lower opaque part. On a closer examination, it is found
that the wavy shape of the transparent part of the appellants‟
cabinet/purifier has been imitated by the respondents while
designing their product. This Court also observes that the upper
part of the appellants‟ cabinet/purifier appears to be crowned on
the lower part with the help of a rectangular tape-like connector.
This connector that runs around the body at the point where the
upper body and the lower body connect is exactly the same in
both the cabinet/purifiers in terms of shape and configuration.
On the right-side and left-side of the appellants‟ product, at the
point where the transparent part joins the opaque part, the inside
part, which is visible, appears to have been cut in the form of a
right-angle triangle on both the sides and the respondents too
have designed the cut on either side of their product in the exact
same fashion. Even the curves on the top-right and top-left
sides of the respondent‟s product are similar to that of the
appellants. Additionally, the appellants have placed the water-
level indicator on the lower-opaque part of their purifier
distinctly in the sense that there is a distinctive bulge in the area
surrounding the water-level indicator and the respondents too
have, on their product, very cleverly tried to place their water-
level indicator with a surrounding bulge. Further, on the left
side of both the products (when viewed from the front side) a
provision for inlet and outlet of water has been provided and the
manner of cutting the transparent sheet around the inlet and
outlet points is exactly the same in both the purifiers. Though,
the shape of the bottom of the impugned product is not rounded
at both corners like in that of the appellants‟ product, yet, the
rest of the cabinet/body of the purifier of the respondents when
viewed in totality has substantial resemblance and imitation
with the shape and configuration of the appellants‟ product. The
respondents have deviously tried to tweak the design of their
product by nominally increasing the size of their product and by
cutting their transparent sheet in a „U‟ shape in the middle but
that doesn‟t suffice, in the eyes of this court, as substantial
change. This court finds substantial resemblance in the design,
shape and configuration of the cabinets/purifiers of the
appellants and of the respondents.
13. This Court in the case of Kama Ayurveda Private Limited v.
RWL Helathworld Ltd. & Ors., 2018 SCC OnLine Del 12685
held that if the Court is able to find that there is substantial and
sufficient resemblance between the allegedly infringed designs
and the appellant's registered designs, an injunction should
follow.
14. At the stage of considering the application for grant of ex-parte
temporary injunction, the court is required to examine as to
whether the plaintiff has a prima-facie case; whether the
balance of convenience of the case is in his favour; and whether
the non-grant of ex-parte temporary injunction would cause an
irreparable loss and injury to the plaintiff.
15. Prima facie, the appellants have been able to show that the
appellant No.2 was granted registration of the design
No.262661 on 19.05.2014 in respect of shape and configuration
of the cabinet for the water purifier. The appellants have prima-
facie shown that the respondents have infringed upon their
registered design substantially in their product which is being
manufactured and sold by them under the name and style, JET
AQUA JIO.
16. The appellants have prima facie, established their reputation
and goodwill in the business which is reflected from the sale
figures for the last more than four years. The adoption of the
design of the appellants by the respondents would undoubtedly
cause irreparable loss and injury if the respondents are not
restrained from continuing their offending acts. The balance of
convenience, in the interest of justice and equity, lies in favour
of the appellants. Of course, the public at large may be literate
or semi-literate but by virtue of the adoption of the said
registered design of the appellants by the respondents, any
person with ordinary prudence, would be persuaded to believe
that the said products of the respondents are associated with that
of the appellants. It also appears to the court that if ex-parte
temporary injunction is not granted to the appellants, they shall
suffer irreparable loss and injury. The court is of the view that
the order passed by the learned ADJ dismissing the ex-parte ad-
interim injunction application is not sustainable in law. As
such, the impugned order dated 20.02.2019 declining the ex-
parte ad-interim injunction to the appellants against the
respondents from adopting and selling their product by
imitating the product of the appellants is set aside.
Accordingly, the respondents, its agents, partners, servants,
associates, assigns, representatives, successors, distributors and
others acting for and on his behalf, are hereby restrained from
using the appellants‟ registered design for manufacturing,
selling, offering for sale, advertising or displaying, directly or
indirectly or dealing in any other manner or mode in its
products or business till the disposal of the application under
Order XXXIX Rule 1 and 2 read with Section 151 CPC on
merits after hearing both the parties.
17. Compliance of Order XXXIX Rule 3 CPC be made by the
appellants.
18. The trial court shall dispose of the application under Order
XXXIX Rule 1 and 2 CPC after hearing both the parties on
merits without being influenced by the observation of this court
in this order.
19. The appeal along with application, being C.M. No.8780/2019,
is disposed of accordingly.
20. The appellants seek appointment of a Local Commissioner.
Learned counsel for the appellants submits that there are two
shops as reflected from the memo of parties from where their
design is being misused by the respondents.
21. In view of the above said reasons, this court considers it
appropriate to appoint Mr. Desh Raj Chaudhary, Deputy
Registrar (Mobile No.9650197473) of this court as Local
Commissioner.
22. The Local Commissioner is directed to visit the premises of the
respondents, and to take into custody all the incriminating
material including the bill books, stationary items, vouchers,
carry bags, the impugned and infringed designs and
cabinets/water purifiers imitating the designs of the appellants.
23. The Local Commissioner shall be empowered to have the
assistance of the SHO of the area concerned, if so required. In
case such assistance is asked for by the Local Commissioner,
the same shall be provided forthwith by the concerned SHO.
The respondents are also directed to cooperate with the Local
Commissioner. The representatives of the appellants are also
allowed to assist the Local Commissioner. The Local
Commissioner shall be paid a fee of Rs.1,00,000/- apart from
the actual expenses. He shall file his report in the Registry
which shall be transmitted to the trial court immediately.
24. The application, being C.M. No.8781/2019, stands disposed of.
25. Dasti under the signature of the Court Master.
(VINOD GOEL)
JUDGE
FEBRUARY 26, 2019/'AA'
