Madras High Court
Shree Vari Multiplast India Pvt. ... vs Nilkamal Plastics Limited on 6 April, 2022
1
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated : 06.04.2022
CORAM:
THE HON`BLE MRS.JUSTICE V.BHAVANI SUBBAROYAN
C.S.No.358 of 2001
Shree Vari Multiplast India Pvt. Ltd.,
SF No.101/3, Mantham Palayam Pirivu,
Kanjakoil Road, Perundurai – 638 052.
Erode District. ...Plaintiff
Vs.
Nilkamal Plastics Limited,
54/55, Harris Road,
Chennai – 600 002. ...Defendant
Prayer: Plaint filed under Order IV Rule 1 of O.S. Rules under Order
VII Rule 1 C.P.C under Section 54 of the Designs Act, 1911 read with
Sections 104 & 106 of Patent Act, 1970, prays for permanent injunction:
a) restraining the defendants, their men, agents, stockist and
dealers from issuing threat of any nature in the form of circular,
advertisement or notice or otherwise threatening the plaintiff with legal
action on account of infringement of Design No.176931 by any means,
either directly or indirectly, or any circular with reference to the
plaintiff's Plastic Moulded Chairs or interfering in the course of the
plaintiff's business of Plastic Moulded Chairs in any manner;
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b) declaring that the Cease and Desist Notice letter dated
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04.04.2001, issued by the defendant is unjustifiable and groundless;
c) directing the defendant to-pay costs of the suit;
d) pass such further or other orders as this Court may deem fit and
proper and to thus render justice.
For Plaintiff : Mrs.Gladys Daniel
For Defendant : Exparte
JUDGMENT
The suit was filed by the plaintiff for the following reliefs:
a) restraining the defendants, their men, agents, stockist and
dealers from issuing threat of any nature in the form of circular,
advertisement or notice or otherwise threatening the plaintiff with legal
action on account of infringement of Design No.176931 by any means,
either directly or indirectly, or any circular with reference to the
plaintiff's Plastic Moulded Chairs or interfering in the course of the
plaintiff's business of Plastic Moulded Chairs in any manner;
b) declaring that the Cease and Desist Notice letter dated
04.04.2001, issued by the defendant is unjustifiable and groundless;
c) directing the defendant to-pay costs of the suit;
d) pass such further or other orders as this Court may deem fit and
proper and to thus render justice.
2.The case of the plaintiff is that the plaintiff is engaged in the
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business of manufacturing and marketing plastic moulded articles since
1993 and in relation to plastic moulded chairs, they commenced their
business in the year 2000. The plaintiff in the course of their
manufacturing plastic moulded chairs adapted a very common shape and
design used by others in the same trade as shown in Document No.1.
The plaintiff adapted this mould to manufacture this shape of this
furniture as shown in Document No.1 which is in common use since the
introduction of the plastic moulded furniture in India in the year 1992.
The design embossed on the back to have grip, the plaintiff adapted the
chair netting work design which is known all over India in industry. Few
other manufacturers adapted wire chair design at the back as shown in
Document No.2, which is also common use in India.
3.It is also the case of the plaintiff that they have been
manufacturing and marketing this plastic moulded chair as shown in
Document No.1 extensively and substantially all over India. The
plaintiff was able to reach all over India in short time because of its
superior quality and for its reasonable price. In view of business rivalry,
the defendant through their attorney sent a Cease and Desist Notice on
04.04.2001 complaining infringement of their design Registration
No.176931 and violation of their Trademark right. The reason for
complaining passing off under Trade & Merchandise Marks Act, 1958 in
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the notice is that the plaintiffs product Code No.2036 is displayed on the
stickers when selling.
4.The plaintiff submits that through their advocate denied both
infringement of design and passing off. Subsequently, on verification it
was found that some of the sellers of plaintiffs product used the number
2036 in removable stickers without the knowledge and approval of the
plaintiff. Hence, the plaintiff through their advocates on 20.04.2001
agreed to comply with the demand contained in para 9 (b) of the
aforesaid Cease & Desist Notice dated 04.04.2001 in relation to their
demand under the Trade & Merchandise Marks Act, 1958 despite use of
the numerals are common trade practice in the manufacture and sale of
plastic moulded chairs. However, the plaintiff stoutly challenge the
defendant's claim of statutory right under the Designs Act in respect of
shape and configuration. The plaintiff in their notice dated 20.03.2001
called upon the defendant to withdraw their groundless/illegal demand
contained in their notice dated 04.04.2001. But, the defendant did not
withdrew their illegal demand hence petition for rectification is also
initiated as an aggrieved person apart from this suit for groundless threat
of legal action.
5.The plaintiff further submits that in early 1990, the use of plastic
moulded furniture was introduced in India.
https://www.mhc.tn.gov.in/judis On introduction of this
plastic moulded chairs it became very popular because of its price and for
its easy transportation and for its attractive colour schemes. Number of
manufacturers started manufacturing this plastic moulded furniture. The
plaintiff write hereunder some of the leading manufacturers of plastic
moulded furniture in India:
a) National Gujarat India
b) Crest Moulded Furniture
c) National Plastic Industrial Limited
d) Milan India
e) Supreme India Limited
f) Maniyar Plastic Limited
g) MFS Industries
h) Regal Moulded Furniture
i) Prince Plastic Industrial Limited
j) Polyset Plastics Limited
k) Prima Plastics Limited
l) Nilkamal Limited
6.According to the plaintiff, the catalogue shows that the shape
and the configuration, the defendant claim exclusive right under the
Designs Act is not new and novel in India but manufactured already by
all the leading companies in India.
7.The plaintiff submits that registration under the Design Act of
1911 is granted on the basis of the defendants declaration that design
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applied for registration is new and novel. Unlike trademark, the subject
matter of design applied for registration is not liable to be scrutinized by
the Controller under the Act. Hence any aggrieved persons are entitled
to rectify the registration of the design if the design claimed under
registration is already published or known in India. On this score alone
the registration secured by the defendant is liable to be rectified. The
display of this model chair No.2036 subject matter of the design
Registration No.176931 dated 16.07.1999 is advertised in the Corporate
View of 1998-99 at page No.104 before the date of design registration.
8.The plaintiff further submits that the claim of the defendant
before the Controller that shape and configuration is new and novel is
false and registration thus acquired is liable to be rectified. The chair and
wire chair net design is also commonly used long prior to the defendants
use. On this score also this design is liable to be rectified.
9.According to the plaintiff, the defendant already in the identical
shaped model No.2036 has got Model Nos.2012, 2013, 2026, 2027,
2028, 2030 and 2031 registered/published already. Hence subsequently
registered design under No.176931 in respect of Model No.2036 is liable
to be rectified. The Controller mechanically without applying his mind
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accepting their declaration as new and novel and granted registrations for
the shape of the identical chairs which are already known to the public
already by other leading manufacturers and by the defendants.
10.The plaintiff submits that in the Design Act also introduced in
the year 1970 a provision to file a suit for injunction on the ground of
groundless threat of legal action and for a declaration that such threats
are groundless apart from action for infringement. The plaintiff on the
strength of the above provision filed this suit for declaration under
Section 54 of the Designs Act, 1911 read with Sections 104 & 106 of
Patent Act, 1970 seeking a declaration that Cease and Desist Notice
dated 04.04.2001 is groundless and unjustifiable and for permanent
injunction.
11.Common Counter Affidavit filed by the respondent in
O.A.Nos.435 and 436 of 2001 stating that the respondent is the
proprietor of a new and novel design applied to a chair registered under
Design Registration No.176931. The applicant has admitted that the
respondent is the proprietor of the said design. The case of the applicant
is that firstly, all plastic moulded chairs have a common design and shape
and there is nothing new or novel in the registration of the respondent.
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Secondly, the respondent has obtained registration under false means. It
is further submitted that the applicant's contentions are without any merit.
Various manufacturers of plastic moulded chairs have registered their
under the Designs Act, 1911, which would go to show that the design
and shapes are not common to the trade. Secondly, the Registrar had
scrutinised the registration application submitted by the respondent and
being satisfied that it was new and novel, had granted registration to the
respondent.
12.The respondent/defendant submitted that the applicant having
pirated the respondent's Registered design, has not come to Court with
clean hands. To thwart the respondent from taking any action, the
applicant has cleverly come forward with the above applications under
the guise that the respondent had issued a groundless threat.
13.The respondent/defendant further submitted that the respondent
as the registered proprietor is lawfully entitled to issue a notice to the
applicant, calling upon them to stop manufacturing and marketing chairs
of the design of the respondent and also to bring a suit, inter alia, for an
injunction against the applicant under Section 53 of the Act. The prayers
sought for by the applicant in the above two applications are not
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maintainable.
14.According to the respondent/defendant, the applicant in their
reply dated 20.04.2001 has confirmed that the applicant will comply with
condition No.(b) of paragraph 9 of the respondent's notice dated
04.04.2001. In other words, the applicant has agreed that they will not
use the Trade Mark 2036 on any of the chairs manufactured by them as
the said trade mark belongs to the respondent.
15.The respondent/defendant submitted that the very fact after
receipt of the Cease and Desist Notice dated 04.04.2001 issued by the
respondent's Trade Mark and Patent Attorneys, the applicant had stopped
using the numerical 2036 on their chairs would go to show that the
respondent's claim for registration of the design, being new and novel, is
correct. The Controller of the Patent and Designs, had granted
registration to the respondent after scrutiny and therefore, it is incorrect
to state that the respondent had obtained the registration number under
false declaration.
16.The respondent/defendant further submitted that the allegations
in paragraph 7 of the Affidavit are denied as being baseless and without
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any merit. The respondent as registered proprietor of a novel design to
be applied to a chair, had obtained Registration No.176931. The
applicant had pirated the respondent's registered design and falsified their
trade mark with a view to trade upon the goodwill and reputation that had
accrued to the respondent's goods. The respondent is accrued to the
respondent's goods and therefore within its legal rights to issue a notice
to Cease and Desist from manufacturing and selling chairs with a design
identical with or deceptively similar to the respondent's registered design
No.176931.
17.Reply affidavit filed by the applicant/plaintiff stating that the
Registrars of Trade Marks are not granting registration without
examining the pre existing mark but the Controller grant registration
without examining pre existing design but solely on the basis of
declaration by the applicant in the application as new and novel.
18.The applicant/plaintiff further submitted that the plaintiff has
invested huge sums of money for manufacturing this plastic moulded
chairs. The mould imported from foreign countries will become a waste.
The defendant chose to threaten the plaintiff only because of business
rivalry not on any other valid ground. If the defendants submission is
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true, all the plastic moulded chair manufacturers are infringers and they
have to stop moulded chair business. But the law is otherwise in respect
of Designs Act, 1911. The plaintiff has simultaneously initiated
proceeding to revoke the design registered under the Designs Act, 1911
on the ground that the design is not new and novel. Admittedly most of
the moulded plastic chairs manufacturers are using identical chairs. In
view of the above, the design registered under the Design Act of 1911 is
liable to be revoked.
19.Heard Mr.Gladys Daniel, learned counsel appearing for the
plaintiff and perused the materials available on record.
20.Mr.V.Nataraj, T.Suresh and P.Neelakantan have filed Vakalat
on behalf of the defendant on 11.06.2001 but they have not chosen to file
Written Statement and hence the defendant is set exparte.
21.On perusal of records, it is seen that the reason for complaining
passing off under Trade & Merchandise Marks Act, 1958 in the notice is
that the plaintiffs product Code No.2036 is displayed on the stickers
when selling. It is also seen that the aforesaid registration, copy right in
the registered design for a period of 5 years with effect from July 16,
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1998 further extendable upto July 16, 2013. Therefore, this Court is of
the view that the prayer sought for in this suit has now become
infructuous.
22.In view of the above facts and circumstances of the case and
considering the submission made by the learned counsel for the plaintiff,
this Court is of the view that since the prayer has become infructuous and
the suit may be dismissed as infructuous. Accordingly, this suit is
dismissed as infructuous. There shall be no order as to costs.
06.04.2022
Index: Yes/No
Speaking order:Yes/No
pam
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List of documents marked on the side of the plaintiff
Nil
List of witnesses examined on the side of the plaintiff
Nil
List of documents marked on the side of the defendant
Nil
List of witnesses examined on the side of the defendant
Nil
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V.BHAVANI SUBBAROYAN, J.
pam
C.S.No.358 of 2001
06.04.2022
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