Gm Modular Pvt. Ltd. vs. Syska Led Lights Pvt. Ltd.

2022:DHC:3190

* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 01.08.2022
Date of decision: 22.08.2022

+ CS(COMM) 329/2021 & IAs 8677/2021, 10822/2021
GM MODULAR PVT. LTD. ..... Plaintiff
Through: Mr.Pankaj Kumar, Mr.Rishi
Bansal, Mr.Somnath De, Advs.

versus

SYSKA LED LIGHTS PVT. LTD. ..... Defendant
Through: Mr.Shailen Bhatia, Ms.Sheril
Bhatia, Mr.Arnav Chatterjee,
Advs. (M-9818558690).

CORAM:
HON’BLE MR. JUSTICE NAVIN CHAWLA

NAVIN CHAWLA, J.

I.A. 8676/2021
I.A. 10813/2021

1. By this common order, I shall dispose of two applications, one
application, being I.A. No.8676/2021, filed by the plaintiff under Order
XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (hereinafter
referred to as the ‘CPC’), and the second application, being I.A. No.
10813/2021, filed by the defendant under Order XXXIX Rule 4 of the
CPC.
Plaintiff’s case
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2. The plaintiff is engaged in the business of manufacturing and
trade of wide range of electrical goods including electrical appliances,
electrical switches, cover plates, electrical accessories and fittings, wires
and cables, emergency lights, LED lights, MCB circuit breaker, PVC
pipes, electronic components and other allied and related goods in
different shapes, get up, trade dress, design and dimensions and offers
services in connection with such products.
3. It is the case of the plaintiff that the plaintiff is the registered
proprietor of the design of the ‘LED Surface Light’ , duly registered with
the Controller of Design, under Design No. 282812, dated 22.04.2016, in
Class 26-03. The registration certificate of the plaintiff has been filed as
a document along with the Suit, and is reproduced hereinunder:


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4. The plaintiff asserts that the said product became an instant hit and
the consumer at large started associating the uniquely shaped product
with the plaintiff alone, hence, the plaintiff also obtained the trade mark
registration of the shape of the product under Registration No. 4056894
in Class 11. At this stage itself, I may note that the learned counsel for the
plaintiff submits that after the filing of the Suit, the plaintiff itself has
applied for a withdrawal of its trade mark registration.
5. Pertinently, the plaintiff in the present suit has claimed relief only
on the basis of its design registration and in this regard, in paragraph 8 of
the plaint, makes the following assertion :-
“8. That the Plaintiff in the present suit
agitates the violation of it's said registered
design and reserves its right to seek relief
qua shape trademark and violation of
functional aspects i.e Patent.”

6. The plaintiff asserts that it has been carrying on its business
extensively in relation to its said products namely ‘ LED Surface Light’
through sale in major parts of the country and export to various foreign
countries in large quantities.
7. The defendant in question, is engaged in the business of
manufacturing and trading electrical goods such as electrical lights and

other such appliances. The defendant is manufacturing its goods under
the trademark ‘ SYSKA’.
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8. The plaintiff asserts that it gained knowledge of the defendant’s
impugned products in the first week of January 2020. The plaintiff
further submits that though the defendant is manufacturing its lighting
products under the trademark ‘ SYSKA ’, it has copied the design of the
plaintiff and is manufacturing the infringing products with the same
shape, configuration, surface pattern and other features as that of the
plaintiff’s product.
9. The plaintiff asserts that the defendant has copied the
abovementioned design of the plaintiff and is manufacturing its
infringing products having the same shape. The pictorial depiction of the
product of the plaintiff and the defendant, along with the alleged
similarities in the design, is given by the plaintiff as under:

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10. The learned counsel for the plaintiff asserts that the design of the
defendant’s product being similar, if not a complete copy of the
plaintiff’s design, amounts to an infringement of plaintiff’s design and
the defendant is liable to be restrained from selling its products with the
infringing design.
Defendant’s case
11. On the other hand, the learned counsel for the defendant submits
that the plaintiff, having obtained registration in the shape of the product
as a trade mark, is not entitled to any protection in the same as a ‘design’
under the Designs Act, 2000 (hereinafter referred to as ‘the Act’). In
support of his submission, he places reliance on Section 2(d) of the Act to
submit that the definition of ‘Design’ excludes from its ambit a trade
mark defined in sub-section (1)(v) of Section 2 of the Trade and
Merchandise Marks Act, 1958 (now Section 2(1)(zb) of the Trade Marks
Act, 1999). He also places reliance on the judgment of the Full Bench of
this Court in Carlsberg Breweries A/S. v. Som Distilleries and
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Breweries Ltd. , 2018 SCC Online Del 12912, to submit that where the
plaintiff itself claims a right in a shape of the product as a trade mark, the
registration of design in its favour is liable to be cancelled and cannot be
a ground for granting relief to the plaintiff.
12. Further, placing reliance on the trade mark registration obtained by
the plaintiff, he submits that by the plaintiff’s own case set up before the
Registrar of Trade Marks, of having used the shape of the products from
06.04.2016, the Design registration obtained by the plaintiff is liable to
be cancelled under Section 19 of the Act, for being prior published. The
design registration obtained by the plaintiff is dated 22.04.2016 and,
therefore, was after the alleged usage of the shape of the product of
06.04.2016 claimed by the plaintiff itself in its trade mark registration.
He submits that the design having been prior published, was not entitled
to be registered and is now to be cancelled.
13. The learned counsel for the defendant further submits that in the
written statement filed by the defendant, a categorical assertion was made
that the plaintiff is importing the alleged goods from Dong Guan Qms
Lighting Technology Co., Ltd. Building No.113, Xintaiyang Industrial
Park, Xingui Road 22, Lincun, Tangxia, Dongguan, Guandong, China
(hereinafter referred to as ‘the Chinese manufacturer’). The plaintiff,
itself being an importer of the products, cannot claim to be a proprietor of
the design. He submits that in the replication filed by the plaintiff, the
plaintiff does not deny the fact of importing the product from the Chinese
manufacturer, however, in a vague manner, states that it is getting these
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goods manufactured from other manufactures on a job-work basis. The
plaintiff has not filed any document in support of this assertion.
14. Relying upon the judgment of the Division Bench of this Court in
Trans Tyres India Pvt. Ltd. v. Double Coin Holdings Ltd. & Anr. , 2012
SCC OnLine Del 596, he submits that the onus of proving that the goods
imported were got manufactured from the Chinese company on a job-
work basis was on the plaintiff and on failure of discharging such onus,
an inference needs to be drawn against the plaintiff by holding that the
plaintiff is not the proprietor of the said design.
15. He further places reliance on the judgment of this Court, in
National Trading Co. v. Smt. Monica Chawla , AIR 1994 Del 309 , to
submit that ‘publication’ would mean disclosure of the design to a
member of the public, who is under no obligation to keep it secret. In the
present case, as the goods were admittedly being imported from China,
the design of the product was being disclosed to various individuals who
handled the import of consignment of these products and, therefore, the
design was prior published as on the date of its registration.
16. Finally, the learned counsel for the defendant submits that there are
other products of the same design available in the market. He submits
that no novelty can be claimed by the plaintiff merely by the round shape
of the lighting equipment/products as these were already available and
well in circulation in the market prior to the grant of registration of the
design in favour of the plaintiff.
Rejoinder submissions
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17. In its replication, the learned counsel for the plaintiff, while
reiterating plaintiff’s case set out in the opening, submits that the onus of
proving prior publication and grounds for cancellation of a registered
design is on the defendant. As long as the registration of the design
stands, a presumption is to be drawn of its validity in favour of the
plaintiff. He submits that in the present case, apart from asserting that the
plaintiff is importing its goods from the Chinese manufacturer mentioned
hereinabove, the defendant has not placed any document to show that the
Chinese manufacturer is, in fact, the proprietor of the design or had
published the same in any form prior to the date of the grant of
registration of the design in favour of the plaintiff. In support, he places
reliance on the judgment of the Supreme Court in Bharat Glass Tube
Limited. v. Gopal Glass Works Limited ., (2008) 10 SCC 657, and on the
judgment of the Calcutta High Court, in ITC Limited v. Controller of
Patents and Designs & Ors. , 2017 SCC Online Cal 415.
18. He further submits that the ‘publication’ has to be in a tangible
form and a mere assertion that the goods may have crossed hands at the
time of import cannot amount to publication. In this regard, he places
reliance on the judgment of this Court in Reckitt Benkiser India Ltd. v.
Wyeth Ltd. , 2013 SCC Online Del 1096, and of the Calcutta High Court,
in Gopal Glass Works Ltd. v. Assistant Controller of Patents and
Designs & Others ., 2005 SCC OnLine Cal 430.
19. As far as the use claimed by the plaintiff in its trade mark
registration application is concerned, the learned counsel for the plaintiff
explains that the application seeking registration of the design was
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prepared on 06.04.2016 and was sent to Kolkata for filing the same. Due
to delay in the postal and filing work, the same could be filed only on
22.04.2016. He submits that, therefore, it cannot be said that the design of
the product was prior published by the plaintiff’s own application for
registration of its trade mark. The learned counsel for the plaintiff further
submits that, in fact, no sales had been made in the impugned shape by
the plaintiff before the registration of the design.
20. I may note that, on a query being put to the learned counsel for the
plaintiff as to whether the plea of no sales being made between
06.04.2016 to 22.04.2016 of the products with subject design made in
any of the pleadings filed by the plaintiff, the learned counsel fairly
admits that no such plea has been raised.
Previous Proceedings
21. The Suit was initially filed by the plaintiff before the Court of the
learned District Judge and by an ex parte ad-interim Order dated
12.02.2021, the defendant was restrained from manufacturing, marketing,
selling, using, soliciting, displaying, advertising, including through the
online marketplaces, social media, or by any other mode or manner
dealing in or using the impugned goods and/or applying the design of the
plaintiff on the impugned goods and/or any other design which may be
identical with and/or deceptively similar to the registered design of the
plaintiff’s and from doing any other acts or deeds amounting to or likely
to infringe the plaintiff’s registered Design No.282812 under Class 26-
03.
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22. The Suit was thereafter transferred to this Court vide order dated
18.06.2021.
Analysis and finding of the Court
23. I have considered the submissions made by the learned counsels
for the respective parties.
24. At the outset, I must note that the learned counsel for the defendant
has not made any endeavour to show that the design of the lighting
product of the defendant is in any manner different from that of the
plaintiff. Therefore, this aspect need not detain me any further.
25. As noted hereinabove, the primary defence of the defendant is that
the design of the plaintiff was incapable of being registered. In this
regard, the learned counsel for the defendant has placed reliance on the
application filed by the plaintiff seeking the registration in the shape of
the light as a trademark.
26. Section 2 (d) of the Act defines the term ‘design’ as under:
“(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
Marks Act, 1958 (43 of 1958) or property mark as
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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 supplied)
27. Clearly, the statute provides that the ‘design’ would not include
any ‘trade mark’ as defined in Clause (v) of sub-section (1) of Section 2
of the Trade and Merchandise Marks Act, 1958. The Trade and
Merchandise Marks Act, 1958 now stands repealed by the Trade Marks
Act, 1999 and, therefore, the above provision would relate to Section 2
(1) (m) read with Section 2(1)(zb) of the Trade Marks Act, 1999.
28. A trade mark can be claimed in the ‘shape of goods’ as well.
29. In the present case, the plaintiff has made a simultaneous claim in
the shape of its product as a design as also as a trade mark. The same is
not permissible in view of the exclusion contained in Section 2(d) of the
Act.
30. In Carlsberg Breweries (supra) a full Bench of this Court has held
as under:
“43. This court is also of the opinion that the
Full Bench ruling in Mohan Lal (supra) made an
observation, which is inaccurate: it firstly
correctly noted that registration as a design is
not possible, of a trade mark ; it, however later
noted that “post registration under Section 11 of
the Designs Act, there can be no limitation on its
use as a trademark by the registrant of the design.
The reason being: the use of a registered design
as a trade mark, is not provided as a ground for
its cancellation under Section 19 of the Designs
Act.” This observation ignores that the Designs
Act, Section 19(e) specifically exposes a
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registered design to cancellation when “(e) it is
not a design as defined under clause (d) of section
2.” The reason for this is that Section 2 of the
Designs Act, defines “design” as “.... the features
of shape, configuration, pattern, ornament or
composition of lines or colours applied to any
article......; but does not include any trade mark as
defined in clause (v) of sub-section (1) of section 2
of the Trade and Merchandise Marks Act,
1958...... ” Therefore, if the registered design
per se is used as a trade mark, it apparently can
be cancelled. The larger legal formulation in
Mohan Lal (supra), that a passing off action i.e.
one which is not limited or restricted to trademark
use alone, but the overall get up or “trade dress”
however, is correct; as long as the elements of the
design are not used as a trademark, but a larger
trade dress get up, presentation of the product
through its packaging and so on, given that a
“passing off” claim can include but is also
broader than infringement of a trademark, the
cause of action against such use lies.”
(Emphasis supplied in Bold)

31. Therefore, if the registered design per se is used as a trade mark, it
cannot be registered as a ‘design’ under the Act and such registration, if
granted, is liable to be cancelled under Section 19 of the Act.
32. Section 22(3) of the Act permits a defendant in a suit claiming
infringement of a design, to also raise grounds on which the registration
of a design may be cancelled under Section 19 of the said Act. Therefore,
the defendant can as a defence claim that the registration of the design
itself is bad. In judging the prayer for interim relief sought by the
plaintiff, such defence shall also be prima facie considered and given due
weightage.
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33. While the submission of the learned counsel for the plaintiff that
the opinion of the Controller of Patent & Design in granting registration
of a design has to be given deference, as held in ITC Ltd. ( supra ), is
correct, at the same time, if prima facie the plea of the defendant that the
design registration has been wrongly granted in favour of the plaintiff, is
found to be of some merit, it would have an important bearing in
considering the relative merit of the claim to interim injunction.
34. Though, the learned counsel for the plaintiff has submitted that the
above referred application seeking registration of the design as a trade
mark was filed under the then prevailing law, which permitted
simultaneous registrations in the shape of the product as a design as also
as a trade mark, and subsequently an application seeking withdrawal of
such registration has been filed by the plaintiff, in my opinion, at least at
this stage, the fact of filing of the application seeking registration in the
shape of the product as a trade mark simultaneously with the application
for registration of the same as a design under the Act, would render the
registration of the design suspect and disentitle the plaintiff to an ad
interim relief. Filing of an application seeking cancellation of the
registration as a trade mark subsequently will be insufficient to wipe out
the disability of such shape being registered as a design.
35. It is not the case of the plaintiff that it was by subsequent use of the
design and /or due to some added features and elements thereto, like the
trade dress, get up, presentation of the product through its packaging, etc.
that a right of protection in the shape of the product was claimed by it as
a trade mark. In fact, the application seeking registration of the shape of
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the product as a trade mark was filed prior to the filing of the application
seeking registration of the shape of the product as a design.
36. I further find prima facie merit in the submission made by the
learned counsel for the defendant that the plaintiff itself being an
importer of the products with the Impugned Design from China, cannot
claim to be a proprietor of the said Design. In this regard, the defendant,
in its written statement has asserted as under:
“XI. That it is submitted that Plaintiff's claim to
be the originator of the circular Surface LED
Light has no basis. The Plaintiff itself is importing
its alleged goods from Dong Guan Qms Lighting
Technology Co., Ltd BUILDING No. 113,
XINTAIYANG INDUSTRIAL PARK, XINGUI
ROAD 22, LINCUN, TANGXIA, DONGGUAN,
GUANDONG, CHINA. In such circumstances the
Plaintiff cannot claim any right in the design/
shape of product. The Defendant has already
challenged the validity of the said Design
Registration Application 282812 in Class 26-03 of
the Plaintiff. As the Plaintiff is an importer of
light, the Plaintiff can claim no right in the light.
The Plaintiff ought to have disclosed in the Plaint
about its import. The Plaintiff is not the originator
of the light in question as the same light was
imported by the Plaintiff. The Defendant has filed
Rectification Petition to registration trade mark
No.4056894 in class 11. In the Petition it is stated
by the Defendant as under:
“-------------------That the Applicant
for Rectification has received
information that the registered
proprietor is importing goods from
Dong Guan Qms Lighting
Technology Co., Ltd Building No.
113, Xintaiyang Industrial Park,
Xingui Road 22, Lincun, Tangxia,
Dongguan, Guandong, China. In
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such circumstances the Registered
proprietor has no right in the
design/shape of product from the
goods of Applicant for rectification.--
------------------------------------"

In reply, the Plaintiff has filed its Counter
Statement and stated:
“-----------------------
X. That the contents of Para 13
are wrong and hereby denied. It is
denied that the Registered Proprietor
has been importing the said goods
(Surface LED Light) from Dong
Guan Qms Lighting Technology Co.,
Ltd Without prejudice, it is humbly
submitted that even if the Registered
Proprietor has been importing some
goods from Dong Guan Qms
Lighting Technology Co., Ltd, it is
under direction of the Registered
Proprietor. Simply because someone
is acting under the direction of the
Registered Proprietor for
manufacturing of goods, the
Registered Proprietor does not lose
its rights under Trademarks Act. The
said proposition has wrongly been
construed by the Applicant.
-----------------------------------------"
The Plaintiff has admitted that it is importing
goods bearing the round Design from M/s Dong
Guan Qms Lighting Technology Co., Ltd. The
Plaintiff cannot be owner of the said design. The
said manufacturer in China is supplying the same
light to so many traders all over the world. The
suit merits dismissal with costs.”


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37. In its replication, the plaintiff asserts as under:
“XI-XII. That the contents of Paras No. XI-XII are
wrong and denied. What has been mentioned
herein above may be referred to. The Plaintiff s
claim to be the originator of the circular Surface
LED Light is bonafide and genuine. This fact is
not disputed that the Plaintiff its is importing its
goods from other manufacturer. However it is
submitted that Plaintiff is getting goods
manufactured from other manufacturers on job
wok basis. Subject matter registered design
belong to the Plaintiff and that plaintiff is the
owner and proprietor thereof. The Plaintiff rightly
claimed right in the design/ shape of product. The
alleged cancellation petition of the Defendant, if
any, would be contested by the Plaintiff as per
law. It is denied that the plaintiff can claim no
right in the subject matter design. It is denied that
the Plaintiff is not the originator of the light in
question as the same light was imported by the
Plaintiff, it is submitted that Plaintiff is getting
goods manufactured from other manufacturers on
job wok basis. Subject matter registered design
belong to the Plaintiff and that plaintiff is the
owner and proprietor thereof. The Plaintiff rightly
claimed right in the design/ shape of product. The
alleged cancellation Rectification Petition to
registration design of the Plaintiff filed by the
Defendant , if any, would be contested by the
Plaintiff as per law. It is denied that the Plaintiff
cannot be owner of the said design. The alleged
cancellation petition filed by the defendant would
be merit less and baseless. It is denied that the suit
merits dismissal with costs. It is submitted that
present suit of the Plaintiff is liable to be allowed
in toto with exemplary costs. It is denied that the
Plaintiff or his manufacturer has only made
workshop alteration in its Design already
available in the market. It is denied that there are
several other players in the market who are
having circular shaped LED Lights. The
representation as given by the Defendant in Para
under reply are denied. It is submitted that the
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Defendant is wrongly making reference to circular
shaped light. It is denied that the product of the
Plaintiff is neither new nor novel and the design
registration merits cancellation. It is submitted
that Plaintiff’s monopoly in unique shape, unique
surface pattern and configuration is well founded.
The subject matter registered design of the
Plaintiff is new and novel. It is denied that the
Plaintiff has mischievously filed the suit against
the Defendant by concealing material particulars.
It is submitted that the Plaintiff has disclosed all
the relevant information while filing the present
suit. It is defendant who is the dishonest adopter
and fraudulent user of the impugned design and is
liable to be retrained permanently.”
(Emphasis supplied)

38. A reading of the replication would show that the plaintiff asserts
that it is getting the goods manufactured from other manufacturers on
job-work basis. The plaintiff has, however, not placed on record any
agreement or document in support of this assertion. On the other hand,
with this vague denial, it prima facie stands admitted that it is importing
the goods with the impugned design from the Chinese manufacturer.
39. The Act empowers the ‘proprietor of any new or original design’
to seek registration of such Design under the Act. The term ‘proprietor of
a new or original design’ is defined in Section 2(j) of the Act, which is
reproduced hereinunder:
“2 (j) "proprietor of a new or original design",
(i) where the author of the design, for good
consideration, executes the work for some other
person, means the person for whom the design is
so executed;
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show that it is the author of the design or is the person for whom the
author of the design, for good consideration, executes the work, or is a
person who acquires the design or the right to apply the design to any
article, or the person to whom the design has devolved from the original
proprietor.
41. It was for the plaintiff to show that it is the author of the design or
that it satisfies any of the conditions mentioned hereinabove. In absence
thereof, there is a serious dispute to be adjudicated as to whether the
plaintiff can at all be ascribed as a ‘proprietor of a new or original
design’. The plaintiff has not produced before this court its relationship
with the Chinese manufacturer.
42. This now brings me to yet another submission of the learned
counsel for the defendant that as the plaintiff had asserted the use of the
design since 06.04.2016 in its application seeking registration of the
design as a trade mark, therefore, the design could no longer be stated to
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be ‘new or original’ as on the date of the application filed by the plaintiff
seeking registration of the design, that is 22.04.2016. I find prima facie
merit in this submission.
43. For a design to be registered, it must be ‘new or original’, failing
which there is a complete prohibition of the registration of such design.
Section 19 of the Act states that the registration of design may be
cancelled where, inter alia , it has been published in India or where the
design is not a new or original design. In the present case, as the plaintiff
itself claimed user of the design since 06.04.2016, that is prior to the date
of application seeking registration of the same under the Act, it has to be
held as being prior published and no longer being ‘new or original’ on the
date of the application seeking its registration as a design.
44. The submission of the learned counsel for the plaintiff that the
application for registration of the design was prepared on 06.04.2016 and
thereafter sent to Kolkata for filing, and in this process, there was an
unintentional delay in filing of the application, cannot come to the aid of
the plaintiff. Section 4(b) of the Act prohibits the registration of a design
which has been disclosed to the public anywhere in India by publication
in tangible form or by use or in any other way ‘prior to the filing date’.
The said prohibition does not exempt a publication which may have been
made inadvertently and/or due to the procedural delay in filing of the
application itself. The prohibition is complete and applies where, even
for inadvertent reason, the design is disclosed to the public by publication
in a tangible form or by use prior to the date of the filing of the
application.
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45. In the present case, by an admitted use of the design since
06.04.2016, that is prior to the date of filing of the application, the
design, at least prima facie , was prohibited to be granted registration for
being prior published.
46. The learned counsel for the plaintiff, placing reliance on the
judgment of the Calcutta High Court in ITC Ltd . ( supra ) has submitted
that the Controller of Design is an expert and the design certificate
granted must be prima facie treated to be valid. Further, relying on the
judgement of the Supreme Court in Bharat Glass Tube Ltd. ( supra ), he
submits that the burden of proving that the plaintiff’s registered design is
invalid, is on the defendant.
47. In this regard, I may note the observations made by a Full Bench of
this Court in Mohan Lal, Proprietor of Mourya Industries v. Sona Paint
& Hardwares , 2013 SCC OnLine Del 1980, wherein the Full Bench, on a
detailed examination of various provisions of the Act, has held that the
registration of a design would only result in creation of a rebuttable
presumption that it fulfils adoption of procedural safeguards which are
required to be taken and that it is shorn of all prohibitions as contained in
the Act. The entry of the Controller of Designs in the Register of Designs
is only a prima facie evidence of any matter so directed to be done by the
Act or authorized to be entered in the Register of Designs. There is a
marked difference in the language as contained in Section 10(4) and 38
of the Act as compared to Section 31 of the Trade Marks Act, 1999
which speaks of prima facie evidence of validity, once a trade mark is
registered.
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48. In the present case, the defendant, at least prima facie, has been
able to therefore, rebut the presumption of validity of the registration of
the design of the plaintiff.
49. As far as the submission of the learned counsel for the defendant
that by import of the products itself, there was a prior publication, in view
of the above prima facie finding, I need not go any further into this
submission. It would, in any case, require evidence to be led by the
defendant to show the extent of such publication, if any. At present, I
find no evidence to substantiate this argument of the learned counsel for
the defendant.
50. As far as the submission of the learned counsel for the defendant
that there are other products with similar shape available in the market
and therefore, the shape of the product was neither new nor original, the
pictorial depictions of such products filed by the defendant, at least prima
facie, does not support such submission. The same are reproduced
hereinunder:


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51. Though, at this stage, I must note that the registration of design
granted to the plaintiff is rather vague in its claim that the novelty resides
in the shape, configuration and surface pattern of the ‘ LED Surface
Light ’, it appears that the claim of the plaintiff is not only in the round
shape of the product, as alleged by the defendant, but in its overall get up
and design, which appears to be different from the above cited lights. It
would also have to be shown by the defendant that these products were
available in the market prior to the date of registration of the design of
the plaintiff. Therefore, at this stage, I find no merit in the above
submission of the learned counsel for the defendants.
52. In view of the above, I am of the opinion that there is a serious
dispute on the validity of the registration of the design granted to the
plaintiff.
53. Accordingly, in my opinion, the ad interim order dated 12.02.2021
deserves to be vacated. At the same time, to protect the interest of the
plaintiff, the defendant is directed to file, on affidavit, the sales made by
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2022:DHC:3190

the defendant of the products bearing the impugned design, on a half
yearly basis, during the pendency of the present suit.
54. I.A. 8676/2021, under Order XXXIX Rules, 1 and 2 of the CPC,
and I.A. 10813/2021, under Order XXXIX Rule 4 of the CPC, are
disposed of in the above terms.
CS(COMM) 329/2021 & IAs 8677/2021, 10822/2021
nd
List on 22 November, 2022.

NAVIN CHAWLA, J
AUGUST 22, 2022
RN/DJ/Ais

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