Full Judgment Text
* IN THE HIGH COURT OF DELHI AT NEW DELHI
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% Judgment pronounced : 24 April, 2015
+ I.A. No. 18023/2014 in CS (OS) No.2689/2014
AMIT JAIN ..... Plaintiff
Through Mr.S.K.Bansal, Adv. with
Mr. Ajay Amitabh Suman, Mr.Amit
Chanchal Jha, Mr. Santosh Kumar
and Mr. Vikash Khera, Advs.
versus
AYURVEDA HERBAL & ORS ....Defendants
Through Mr.Ajay Sahni, Adv. with Mr. Ankit
Sahni, Adv. for D-1 to 5.
CORAM:
HON'BLE MR. JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J.
1. Mr. Amit Jain sole proprietor of M/s Vinayak Industries has filed
the present suit for permanent injunction restraining infringement of
designs, passing off, delivery up, rendition of accounts etc. against
the defendants.
2. The plaintiff is engaged in the business activity of
manufacturing and marketing of cosmetic products i.e. creams, hair
oil and shampoos and other allied and cognate goods.
3. One Mr. Naveen Kumar Jain, sole proprietor of M/s Parag
Plastic, B-976, Shastri Nagar, Delhi-110052 was the registered holder
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of various design registrations under no. 209976 dated 4 May, 2007,
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213103 dated 29 October, 2007, 213110 dated 29 October, 2007,
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213113 dated 29 October, 2007 and 213115 dated 29 October,
2007 all in class 09-01. The plaintiff has allegedly used the said
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registered designs after the deed of assignment dated 17 January,
2014 in his favour. By virtue of said deed all rights are assigned to the
plaintiff along with goodwill and all benefits.
4. Apart being assignee of above referred designs, it is alleged
that the plaintiff has also obtained the registration of the said Design
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under no. 209974 dated 4 May, 2007 in class 09-03 and under no.
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209973 dated 4 May, 2007 in class 28-02 under the Design Act,
2000 (hereinafter referred to as the ‘Act’). As per the case of the
plaintiff their designs are new, novel, original and are still subsisting in
law as he has applied to said plastic bottles and tubes meant for
cosmetic goods. Thus, the plaintiff is the owner of the said designs.
5. The plaintiff has been selling and supplying the said plastic
bottles and tubes under the said unique and novel design to various
customers. The true representation of the different said plastic bottles
and tubes under the said design of the plaintiff are given as herein
below:
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6. It is averred in the plaint that the said goods and business
under the said plastic bottle and tubes bearing the said designs
command excellent popularity. All the said goods are put to use in the
market subsequent to obtaining the respective registrations and
assignment. He has effected considerable sales running into lakhs
and lakhs of rupees annually. The plastic bottle and tubes bearing the
said designs throughout the country and the people at large
recognize the said products of the plaintiff by its peculiar, new,
original and novel, shape, configuration and surface pattern vis-a-vis
the said designs. The plaintiff has already spent substantial amounts
of money on the publicity of the said designs.
7. It is alleged against the defendants that the defendant No.1
namely M/s Ayurveda Herbal, A-41, DSIDC , Narela Industrial Park,
New Delhi-110040, defendant No.2 namely M/s Ayurveda
Cosmeceuticals, 128, Bharatgarh, Nalegarh Main Road, Near GPI
Textiles, Tehsil Nalegarh, Distt- Solan (Himachal Pradesh), defendant
No.3 namely Mrs. Sonia Chadha, proprietress M/s Nimson
International, A-41, DSIDC , Narela Industrial Park, New Delhi-
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110040 , godown at 2122, Bansal Plaza, 3 Floor, above J &K Bank,
Bahadur Garh Road, Sadar Bazar, Delhi-110006 also at 5391, Gupta
Market, Sadar Bazar, Delhi-110006, defendant No.4 namely Mr.
Himanshu Chadha , A-259,DSIDC, Narela Industrial Park, New Delhi
110040, defendant No.5 namely M/s Nima International A-41, DSIDC,
Narela Industrial Park, New Delhi-110040, defendant No.6 namely
M/s Saffron Marketing Pvt. Ltd., B-74, Naraina Industrial Area,
Naraina, Delhi-110028 and defendant No. 7 namely M/s Iswar Store,
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Duggal Complex, Sadar Bazar, Ludhiana, Punjab are also engaged
in the same business of manufacturing and marketing of cosmetic
products i.e. creams, hair oil and shampoos and other allied and
cognate goods. The defendant No.1 is active in the impugned
activities in active connivance and collusion with each other.
8. The case set by the plaintiff against the defendants is that the
defendants have recently started to use in relation to its impugned
business and goods, the identical Designs of the impugned plastic
bottles and tubes. The adoption and use of the identical Designs of
the impugned plastic bottles and tubes in relation to impugned
business and goods by the defendants is tainted with dishonesty.
9. The comparison of plaintiff’s and defendants’ impugned design
has been given as herein below:
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10. It is stated by the plaintiff that from the above stated features of
the impugned Designs of the defendants, it is apparent that the
defendants' impugned goods bearing the impugned Designs is a
fraudulent and obvious imitation of the plaintiffs registered designs.
Such acts constitute the infringement of the registered design of
plaintiff as the same has been done without the license or written
consent.
11. The defendants are doing such activities with a view to take
advantage and to trade upon the reputation of the plaintiff and further
with a view to calculate deception and confusion in the markets and
to pass off their spurious goods as that of the plaintiff and to infringe,
pass off and pirate the plaintiff's said designs.
12. It is alleged by the plaintiff that in the month of first week of
June 2014, the plaintiff became aware of this fact that the defendant
No.2 filed suit against the plaintiff seeking injunction to restrain the
plaintiff from using the trademark/trade dress/colour combination
KINGSON before this Court who passed the interim order against the
plaintiff in respect to trade dress and colour combination. In the last
week of June 2014, the plaintiff came across the offending activities
CS (OS) No.2689/2014 Page 9 of 29
of the defendants under the impugned design plastic bottles and
tubes however, the plaintiff left with no option but to file the suit for
infringement of designs and passing off against the defendants
before District court but the said suit was withdrawn because of some
technical grounds, seeking liberty to file fresh suit. Thereafter the
present suit was filed in Tis Hazari Courts, New Delhi. Since the
designs in question were challenged by the defendants in the written
statement, under the operation of law i.e. Section 22 of the Act, the
said suit was transferred to this Court.
13. The written statement on behalf of the defendant Nos. 1 to 5
has been filed who have raised many preliminary objections and
submission in their written statement. Various plea were raised. It is
submitted by the defendants that the suit filed by the plaintiff is not
maintainable under the provisions of Order 23 CPC. The plaintiff in
para 21 of the plaint admits of having filed an identical suit in relation
to the same subject matter earlier in point of time against the
defendants before Patiala House Court. Since the injunction was not
granted the plaintiff had withdrawn the suit. After withdrawing the suit,
fresh suit was filed where the particulars of the earlier suit were not
mentioned. Even copy of plaint and orders were not placed on record
and in the absence of the same the present suit is not maintainable.
The present suit is also not maintainable as the e-stamp paper on
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which the alleged assignment deed has been executed is dated 24
June, 2013 which mentions the consideration value of ‘0’ and does
not mention the name of the second party. Therefore assignment
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deed is defective in law and no rights can flow from such an
assignment deed in favour of the plaintiff.
14. The defendants have denied that in the year 1999 Amit Jain
had launched the said firm Vinayak Industries. It is stated in the
written statement that not even a single bill/sale invoice of the alleged
M/s Vinayak Industries has been filed on record. Only photocopies of
bills/invoices of one M/s V.N. Cosmetic have been filed on record
which entity is not a party to the suit.
15. It is alleged that as a matter of fact the plaintiff is engaged in
fraudulent trade and is known in the business circles for infringing the
intellectual property rights of other brands in his business including
Dabur India Ltd., Hindustan Unilever Ltd. and of the defendants. In
the suit filed by Dabur India Ltd. in this Court in the year 2005 bearing
Suit No. 1669 the plaintiff suffered a compromise decree against
infringing bottle designs of Dabur India Ltd. Later on despite the said
compromise decree against the plaintiff, the plaintiff once again in the
year 2007 commenced his infringing activities and M/s Dabur India
Ltd. once again filed a civil suit bearing CS (OS) No. 314/2007before
this Court and which was taken in appeal under FAO (OS) No.
293/2007 and the injunction was once again confirmed against the
plaintiff.
16. It is denied in the written statement that the plaintiff markets
and sells his said goods in original, novel, aesthetic and unique
design plastic bottles tubes or the plaintiff is the creator of any alleged
plastic bottles tubes, which are the subject matter of the present suit.
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17. It is alleged in the written statement that the assignor i.e.
Naveen Kumar Jain is not the proprietor of the said registered
designs in as much as all the said designs are pre-known/pre-
registered/prior published and/or only a workshop improvement
and/or infinitesimal addition to already known designs being used for
decades in respect of the said products both within India and abroad.
In fact the registrations on which the plaintiff is relying are not new or
original as there are earlier pre-registered designs in India for the
same/substantially similar bottle designs including design No. 206182
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dated 4 October, 2006 in the name of M/s Zenna Plastics Ltd.,
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Maharashtra and also registered design No. 173234 dated 24
February, 1997 in the name of Dabur India Ltd.
18. The registered designs on the basis the present suit has been
filed are liable to be cancelled under the provisions of Section 19 of
the Act in as much as the said designs (i) have been previously
registered in India (ii) that they have been published in India and/or
and/or in other countries prior to their respective date of registrations
(iii) that the said alleged designs of the plaintiff are not new or original
designs and/or (iv) that the said alleged designs of the plaintiff are not
registrable under the Act. Neither the plaintiff nor his alleged
predecessor Naveen Kumar Jain can claim any exclusive rights to
such common designs of bottles/tubes and all such designs are liable
to be cancelled under the provisions of the Act. The deed of
assignment so entered is not a legal document in as much as it does
not mention the name and particulars of the second party, nor any
consideration amount on the e-stamp paper. There is no other
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document on record confirming the execution of the said assignment
deed and receipt of consideration by Naveen Kumar Jain and in the
absence of the same the said document cannot be relied upon in the
present proceedings.
19. Such like bottle designs and tube designs claimed by the
plaintiff are being commonly used by several leading cosmetic
manufacturers and a pictorial representation of some such products
are reproduced herein below:-
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20. It is denied by the defendants that the plaintiff has obtained the
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registration of a Design under No. 209974 dated 4 May, 2007 in
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class 09-03 and/or under No. 209973 dated 4 May, 2007 in class
28-02 under the Act. The plaintiff is not the proprietor of the said
registered designs. The said design registrations of the plaintiff are
not new, novel, original, unique as the same are pre-known/pre-
registered/prior published and/or only a workshop improvement
and/or infinitesimal addition to already known designs being used for
decades in respect of the said products both within India and abroad.
21. The defendants submit that the plaintiff has alleged that he in
the month of January, 2014 had purchased the design from Naveen
Kumar Jain. There is no logic to mention that ‘considerable sales
running into lakhs and lakhs of rupees annually’ when the present suit
was filed by the plaintiff in the year 2014. The question of selling
products for the last many years does not arise. No cogent
documentary evidence has been placed on record by the plaintiff and
in fact there is not even a single document by way of a sale invoice,
etc. to establish on record that the plaintiff subsequent to the
acquisition of the alleged designs ever put them to use in any manner
whatsoever.
22. The defendants submits that not even a single advertisement,
as alleged, has neither been placed on record by the plaintiff nor any
such exists. It is incorrect to allege that the plaintiff has already spent
substantial amounts of money on the publicity of the designs and no
details of any such ‘substantial amounts’ have been provided in the
plaint. The question of goodwill and reputation thus does not arise. All
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the said designs are pre-known/pre-registered/prior published and/or
only a workshop improvement and/or infinitesimal addition to already
known designs being used for decades in respect of the said
products both within India and abroad and no statutory rights can be
obtained by any person in respect of such common designs and the
registrations relied upon by the plaintiff in the present suit have all
been obtained fraudulently and by suppression of material. In fact,
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the alleged registered design bearing No. 209976 dated 4 May,
2007 on the face of it does not belong to the alleged predecessor of
the plaintiff and the same is a product of a well known plastic bottle
manufacturer who has been manufacturing such bottles since much
prior to the alleged date of registration of the said design.
23. It is submitted that there is no commercial entity namely M/s
Nima International any longer and its name has been changed to M/s
Nimson International which is the defendant No.3 in the memo of
parties. It is stated that defendants have no concern with M/s Saffron
Marketing Pvt. Ltd., B-74, Naraina Industrial Are, Delhi-110028 the
defendant No.6. It is denied that there is any collusion or any kind of
collusive activities between the defendant No.1 to 7 and each of them
is carrying on their legal and lawful business activity or defendants
could be clubbed with other remaining defendants. It is denied that
the defendants have recently started to use in relation to their
impugned business and goods, the identical designs of the impugned
plastic bottles and tubes.
24. The bottle and tube designs being used by the defendants are
all common designs which are in use since the last several decades
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and no person, including the plaintiff has any right for its exclusive
use and the present suit is liable to be dismissed on this ground
alone.
25. The present suit has been filed as a counter blast to the earlier
suit against the plaintiff in this Court bearing CS (OS) No. 1628/2014
titled Mrs. Sonia Chadha vs. Amit Jain & Ors. and which suit was in
respect of infringement of registered trademark, passing off,
permanent injunction etc. pertaining to the plaintiff therein (defendant
No.3 herein) registered trademark “Nimson” versus the defendants
therein (plaintiff herein) deceptively similar trademark “Kingson”
including its deceptively similar font, logo, getup, style, label, etc. This
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Court vide its order dated 27 May, 2014 was pleased to grant an ex-
parte ad-interim injunction against the defendants therein (plaintiff
herein) and which injunction order is continuing till date. The plaintiff
has preferred a written statement in the said suit and an application
for vacation/modification of said ex-parte injunction order.
26. The defendants have denied that they are carrying on their
activities with a view to take advantage and to trade upon the
reputation of the plaintiff with a view to calculate deception and
confusion in the markets and to pass off their spurious goods as that
of the plaintiff and to infringe , pass off and pirate the plaintiff’s said
designs. It is alleged that the defendants have their own different
brand name. In fact it is the plaintiff who has infringed the trademark
of the defendants.
27. During the hearing of interim application, when all the
documents filed by the defendants about the prior publication, pre-
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known were confronted, the learned counsel for the plaintiff handed
over a comparison chart and tried to distinct the plaintiffs design than
the products already available in the market prior to the date of
registrations granted in favour of the plaintiff or Naveen Kumar Jain
who is allegedly assignor of designs. The counsel has mentioned the
dis-similarities in the said chart. However it is not denied that the said
products are already available in the commercial market and owned
by well known company. It is also not denied by the counsel that the
Dabur (supra) has earlier filed the suit against the plaintiff two times
for infringement of design which is also subject matter of the present
suit. The plaintiff’s counsel has also not been able to give any valid
reason, why no disclosure was made about the first suit filed in the
Patiala House Court when the second suit/ present suit was filed. No
year wise statement of sale and advertisement figures have been
filed in order to show that these designs have been used by the
assignor or assignee in the open market.
28. Section 9 reads as under :
Section 9. Certificate of Registration - (1) The Controller shall
grant a certificate of registration to the proprietor of the
design when registered (2) The Controller may, in case of
loss of the original certificate, or in any other case in which he
deems it expedient, furnish one or more copies of the
certificate.
Section 22. Piracy of registered design - (I) 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
CS (OS) No.2689/2014 Page 17 of 29
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. (1) 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.
(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
CS (OS) No.2689/2014 Page 18 of 29
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.”
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) that 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.
29. The conjoint reading of the aforementioned provisions would
reveal that the Act is a complete code in itself which provides that
there is a condition for certificate of registration of the said design
under Section 9 of the Act and the said design upon registration
confers the copyright in the said design for a period of 10 years as
envisaged under Section 11 of the Act and for further renewable of
five years under the said provision. The said term also indicates that
the design right is a statutorily conferred right for limited period and
there is no room for any other right to exist except the one conferred
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by the Act. Likewise, Section 22 of the Act provides remedy for piracy
of a registered design wherein the said piracy will only happen during
the existence of copyright in the said design. Sub-section (3) of
Section 22 mandates that in any suit or any other proceedings for
relief under sub-section (2) every ground on which the registration of
a design may be cancelled under Section 19 shall be available as
ground of defence.
30. i) In the case of Dabur India Limited v. Rajesh Kumar , 2008
(37) PTC 227(Del), the court held as under :
“In cases of design, the Court while granting interim injunction
must keep in mind that the design must be validly registered
and there must be some novelty and originality in the designs
sought to be protected and it must not have been re
published. No specific novelty has been mentioned by the
plaintiff in the design of the bottle, neither any specific novelty
has been mentioned in the registration certificate. The
registration certificate only gives bottom view, top view and
side view of the bottle. There is no specific dimensional ratio
of the bottle given in the design as bottles are manufactured
by most of the manufacturers for containing specific quantity
of liquid by measurement. Normally these bottles are made 50
ml, 100 ml, 200 ml, etc. Since all the manufacturers
manufacture bottles for such quantities, the bottles of same
quantity are bound to have almost same height if they have
same bottom circumference. Unless, plaintiff had any claim
over specific ratios of the dimensions which were not pre-
existing, there can be no novelty in the bottle. Similar designs
are being used by many leading companies from the time
much before the registration of this design by the plaintiff. I,
therefore, consider that the plaintiff is not entitled for interim
injunction. The application of the plaintiff is hereby dismissed.”
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ii) It was expressed by Buckley L.J. on the question of quantum of
novelty in Simmons v. Mathieson & Cold , (1911) 28 R.P.C. 486 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.”
iii) In Phillips v. Barbro 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,
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 what
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, any man does not make a new
and original designs out of an old type of running shoes by putting
spikes into the sales. 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 duty of the Court to take special care that no design is to be
CS (OS) No.2689/2014 Page 21 of 29
counted as “new and original design” unless it is 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 tender 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.
31. It is rightly held in the cases decided that in the matter of
novelty the eye is to be the ultimate test and the determination has to
be on the normal ocular impression. In order to know its newness or
originality it is necessary that a design identical with or even
materially similar to the relevant design should not have been
published or registered previously. A slight trivial or infinitesimal
variation, from a pre-existing design will not qualify it for registration.
Taking into account the nature of the article involved, the change
introduced should be substantial. It is not necessary to justify
registration that the whole of the design should be new, the newness
may be confined to only a part of it but that part must be a significant
CS (OS) No.2689/2014 Page 22 of 29
one and it should be potent enough to impart to the whole design a
distinct identity, unless registration is sought for the said part alone.
32. It is important to keep in mind that if an improvement made in
the design known before should be more than a mere workshop
improvement by combining of old known part of the design with new
integers which have no novelty, it does not qualify the new design
under the eyes of the Act as the same would not involve the exercise
of novel and new design. There must be novelty in the design over
what is old.
33. From the comparison of the products already available in the
market and earlier design registration obtained prior to the date of
registration of assignor and/or by the plaintiff, it is clear that all the
designs claimed by the plaintiff are either prior publish or trade
variant.
34. Dis-similarities pointed out by the counsel for the plaintiff of the
earlier products available in the market and prior registrations are
negligible. The other most important aspect of the present case is
that there are no pleadings on behalf of the plaintiff that there is a
mandatory requirement in law to register the assignment in favour of
the assignee of designs after the assignment of designs. Section 30
of the Act stipulates that where a person becomes entitled by
assignment transmission or other operation of law to a Copyright in a
registered design, he has to make an application, in the prescribed
form, to the Controller to register his title and it is only when change is
made in the Register in the name of such person that he becomes
entitled to claim ownership of the design.
CS (OS) No.2689/2014 Page 23 of 29
35. Section 30 of the Act reads as under:
(1) "30. Entry of assignment and transmissions in registers.(1)
Where a person becomes entitled by assignments,
transmission or other operation of law to the copyright in a
registered design, he may make an application in the
prescribed firm to the Controller to register his title, and the
Controller shall, on receipt of such application and on proof of
title to his satisfaction, register him as the proprietor of such
design, and shall cause an entry to be made in the prescribed
manner in the register of the assignment, transmission or
other instrument affecting the title.
(2) Where any person becomes entitled as mortgagee,
licensee or otherwise to any interest in a registered design, he
may make an application in the prescribed form to the
Controller to register his title, and the Controller shall, on
receipt of such application and on proof of title to his
satisfaction, cause notice of the interest to be entered in the
prescribed manner in the register of designs, with particulars
of the instrument, if any, creating such interest.
(3) For the purposes of sub-section (1) or sub-section (2), an
assignment of a design or of a share in a design, a mortgage,
license or the creation of any other interest in a design shall
not be valid unless the same were in writing and the
agreement between the parties concerned is reduced to the
form of an instrument embodying all the terms and conditions
governing their rights and obligation and the application for
registration of the title under such instrument is filed in the
prescribed manner with the Controller within six months from
the execution of the instrument or within such further period
not exceeding six months in the aggregate as the Controller
on the application made in the prescribed manner allows:
Provided that the instrument shall, on entry of its particulars in
the register under sub-section (1) or sub-section (2), have the
effect from the date of its execution.
(4) The person registered as the proprietor of a design shall,
subject to the provisions of this Act and to any rights
appearing from the register to be vested in any other person,
CS (OS) No.2689/2014 Page 24 of 29
have power absolutely to assign, grant licenses as to, or
otherwise deal with, the design and to give effectual receipts
for any consideration for any such assignment, license or
dealing:
Provided that any equities in respect of the design may be
enforced in like manner as in respect of any other movable
property.
(5) Except in the case of an application made under Section
31, a document or instrument in respect of which no entry has
been made in the register in accordance with the provisions of
sub-sections (1) and (2) shall not be admitted in evidence in
any Court in proof of the title to copyright in a design or, to any
interest therein, unless the Court for reasons so be recorded
in writing, otherwise directs."
36. A reading of sub-sections (1) and (3) of Section 30 shows that
when ownership of registered design is claimed by a successor
person or company, either by assignment or by transmission or by
operation of law, such assignment, transmission or by operation of
law of the copyright to a design has to be registered with the
Controller of Designs within six months from the date of execution of
instrument, assignment or transmission of the copyright in the
registered design to successor person. The period of six months is
limited under sub-section (3) of Section 30. Subsection (5) clearly
provides that a document or instrument in respect of which no entry
has been made in the register in accordance with the provisions of
sub-sections (1) and (2) shall not be admitted in evidence in any
Court in proof of the title to copyright in a design or to any interest
therein unless the Court for reasons to be recorded in writing
otherwise directs.
CS (OS) No.2689/2014 Page 25 of 29
37. In the present case, admittedly, the assigned designs were
registered in the name of Naveen Kumar Jain who had assigned the
same in the name of plaintiff for a total sum of Rs.3,000/- as
consideration along with goodwill. However, the plaintiff on the date
of filing of the suit was not registered as subsequent owner with the
Controller of Designs in terms of sub-section (1) to Section 30 and
therefore, the certificate of registration on which the plaintiff claim is
based, the design in question cannot be, prima facie, read in
evidence in view of the provisions of subsection (5) of Section 30 of
the Act. The plaintiff did not have any valid right to file the present suit
unless the assignment is duly registered. During the course of
hearing, the plaintiffs’ counsel has informed the court that the
application for registering the assignment is pending. Therefore, on
the date of filing of the suit by the plaintiff for infringement of same
very designs was not maintainable. The question of passing off does
not arise, once it is noticed by the Court that the goodwill and
reputation does not attach with the design which is also not new or
original, colour combination is different and both products are sold
under different brand name. None of the judgment referred by the
plaintiff helps the case of the plaintiff.
38. The plaintiff cannot deny the fact that in the second suit there
was no disclosure about the first suit which was withdrawn with liberty
to file fresh suit. In the second suit, the court passed the interim order
in favour of the plaintiff for appointment of four Local Commissioners
who have raided the premises of the defendants. It is incorrect on the
part of the plaintiff that once the liberty was granted, it was not the
CS (OS) No.2689/2014 Page 26 of 29
duty of the plaintiff to disclose about the first suit in the second suit.
The arguments are on the face of it absurd and not tenable. In the
first suit no interim orders were passed but in the second suit, the
prayer for appointment of Local Commissioners was allowed, had the
factum of first suit was disclosed, the Court might not have passed
the orders for appointment of Local Commissioners. Therefore, the
plaintiff was duty bound to disclose the material fact before Court.
Even on this reason itself the plaintiff is not entitled for injunction.
39. In Satish Khosla vs Eli Lilly Ranbaxy Ltd. 71(1998) DLT 1 it
was observed as under :-
“9. It is the contention of the respondent that it had in the
second suit disclosed the filing of the first suit and there was,
therefore, neither any attempt on its part to mislead the court
nor it had in any way tried to obstruct the administration of
justice or play fraud upon the Court. It is also its contention that
the respondent was entitled to bring the second suit for specific
performance of the agreement to register the lease deed and
the cause of action had accrued to it only on the receipt of
notice dated 10th January, 1997 from the appellant when the
tenancy was allegedly terminated.
14. Was it not obligatory on the part of the respondent to
disclose to the Court that in an earlier suit filed by it, the Court
had not granted any stay in its favour and if on such a
disclosure having been made the Court still granted stay in
favour of the respondent, it could be said that the respondent
had not concealed any material fact from the Court. But not
mentioning anything about the Court having not granted any
stay in similar circumstances in favour of the respondent in the
earlier suit, it appears to us that the respondent had not only
concealed material facts from the Court but had also tried to
over-reach the Court. Being unsuccessful in obtaining stay in
Suit No. 3064/96, it was not permissible to the respondent to file
the subsequent suit and seek the same relief which had not
been granted to it in the earlier suit.
CS (OS) No.2689/2014 Page 27 of 29
15. In S.P. Chengalvaraya Naidu v. Jagannath and others , AIR
1994 SC 853 it was held that the courts of law are meant for
imparting justice between the parties. One who comes to the
court, must come with clean hands. “It can be said without
hesitation that a person whose case is based on falsehood has
no right to approach the Court. He can be summarily thrown out
at any stage of the litigation. A litigant, who approaches the
court, is bound to produce all the documents executed by him
which are relevant to the litigation. If he withholds a vital
document in order to gain advantage on the other side then he
would be guilty of playing fraud on the court as well as on the
opposite party.”
40. From the entire gamut of the matter, it appears to the Court that
the plaintiff is not entitled for interim injunction on the following
reasons:-
(i) Prima facie, the designs in question are not novel, prior-
published. The same are otherwise at present are not
protectable under Section 30 of the Act. The plaintiff’s name
has not been entered in the register after assignment. Thus,
plaintiff has not made prima facie case of infringement of
design or passing off. None of the decisions referred by the
counsel help the case of the plaintiff in view of facts and
circumstances in the matter.
(ii) The plaintiff is guilty of not disclosing the pleading of first suit
which was withdrawn, though liberty was granted in second
suit. There was no disclosure of first suit and he obtained the
relief for seizure of goods through local commissioners. In
case true disclosure would have been made, the said may
not have been granted.
CS (OS) No.2689/2014 Page 28 of 29
41. Under these circumstances, the application for injunction under
Order 39 Rule 1 and 2 CPC is dismissed. The material seized by the
Local Commissioners is ordered to be released to the respective
parties.
CS (OS) No.2689/2014
List before Joint Registrar for admission/denial of documents on
th
27 May, 2015.
(MANMOHAN SINGH)
JUDGE
April 24, 2015
CS (OS) No.2689/2014 Page 29 of 29
th
% Judgment pronounced : 24 April, 2015
+ I.A. No. 18023/2014 in CS (OS) No.2689/2014
AMIT JAIN ..... Plaintiff
Through Mr.S.K.Bansal, Adv. with
Mr. Ajay Amitabh Suman, Mr.Amit
Chanchal Jha, Mr. Santosh Kumar
and Mr. Vikash Khera, Advs.
versus
AYURVEDA HERBAL & ORS ....Defendants
Through Mr.Ajay Sahni, Adv. with Mr. Ankit
Sahni, Adv. for D-1 to 5.
CORAM:
HON'BLE MR. JUSTICE MANMOHAN SINGH
MANMOHAN SINGH, J.
1. Mr. Amit Jain sole proprietor of M/s Vinayak Industries has filed
the present suit for permanent injunction restraining infringement of
designs, passing off, delivery up, rendition of accounts etc. against
the defendants.
2. The plaintiff is engaged in the business activity of
manufacturing and marketing of cosmetic products i.e. creams, hair
oil and shampoos and other allied and cognate goods.
3. One Mr. Naveen Kumar Jain, sole proprietor of M/s Parag
Plastic, B-976, Shastri Nagar, Delhi-110052 was the registered holder
th
of various design registrations under no. 209976 dated 4 May, 2007,
th th
213103 dated 29 October, 2007, 213110 dated 29 October, 2007,
CS (OS) No.2689/2014 Page 1 of 29
th th
213113 dated 29 October, 2007 and 213115 dated 29 October,
2007 all in class 09-01. The plaintiff has allegedly used the said
th
registered designs after the deed of assignment dated 17 January,
2014 in his favour. By virtue of said deed all rights are assigned to the
plaintiff along with goodwill and all benefits.
4. Apart being assignee of above referred designs, it is alleged
that the plaintiff has also obtained the registration of the said Design
th
under no. 209974 dated 4 May, 2007 in class 09-03 and under no.
th
209973 dated 4 May, 2007 in class 28-02 under the Design Act,
2000 (hereinafter referred to as the ‘Act’). As per the case of the
plaintiff their designs are new, novel, original and are still subsisting in
law as he has applied to said plastic bottles and tubes meant for
cosmetic goods. Thus, the plaintiff is the owner of the said designs.
5. The plaintiff has been selling and supplying the said plastic
bottles and tubes under the said unique and novel design to various
customers. The true representation of the different said plastic bottles
and tubes under the said design of the plaintiff are given as herein
below:
CS (OS) No.2689/2014 Page 2 of 29
CS (OS) No.2689/2014 Page 3 of 29
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6. It is averred in the plaint that the said goods and business
under the said plastic bottle and tubes bearing the said designs
command excellent popularity. All the said goods are put to use in the
market subsequent to obtaining the respective registrations and
assignment. He has effected considerable sales running into lakhs
and lakhs of rupees annually. The plastic bottle and tubes bearing the
said designs throughout the country and the people at large
recognize the said products of the plaintiff by its peculiar, new,
original and novel, shape, configuration and surface pattern vis-a-vis
the said designs. The plaintiff has already spent substantial amounts
of money on the publicity of the said designs.
7. It is alleged against the defendants that the defendant No.1
namely M/s Ayurveda Herbal, A-41, DSIDC , Narela Industrial Park,
New Delhi-110040, defendant No.2 namely M/s Ayurveda
Cosmeceuticals, 128, Bharatgarh, Nalegarh Main Road, Near GPI
Textiles, Tehsil Nalegarh, Distt- Solan (Himachal Pradesh), defendant
No.3 namely Mrs. Sonia Chadha, proprietress M/s Nimson
International, A-41, DSIDC , Narela Industrial Park, New Delhi-
rd
110040 , godown at 2122, Bansal Plaza, 3 Floor, above J &K Bank,
Bahadur Garh Road, Sadar Bazar, Delhi-110006 also at 5391, Gupta
Market, Sadar Bazar, Delhi-110006, defendant No.4 namely Mr.
Himanshu Chadha , A-259,DSIDC, Narela Industrial Park, New Delhi
110040, defendant No.5 namely M/s Nima International A-41, DSIDC,
Narela Industrial Park, New Delhi-110040, defendant No.6 namely
M/s Saffron Marketing Pvt. Ltd., B-74, Naraina Industrial Area,
Naraina, Delhi-110028 and defendant No. 7 namely M/s Iswar Store,
CS (OS) No.2689/2014 Page 5 of 29
Duggal Complex, Sadar Bazar, Ludhiana, Punjab are also engaged
in the same business of manufacturing and marketing of cosmetic
products i.e. creams, hair oil and shampoos and other allied and
cognate goods. The defendant No.1 is active in the impugned
activities in active connivance and collusion with each other.
8. The case set by the plaintiff against the defendants is that the
defendants have recently started to use in relation to its impugned
business and goods, the identical Designs of the impugned plastic
bottles and tubes. The adoption and use of the identical Designs of
the impugned plastic bottles and tubes in relation to impugned
business and goods by the defendants is tainted with dishonesty.
9. The comparison of plaintiff’s and defendants’ impugned design
has been given as herein below:
CS (OS) No.2689/2014 Page 6 of 29
CS (OS) No.2689/2014 Page 7 of 29
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10. It is stated by the plaintiff that from the above stated features of
the impugned Designs of the defendants, it is apparent that the
defendants' impugned goods bearing the impugned Designs is a
fraudulent and obvious imitation of the plaintiffs registered designs.
Such acts constitute the infringement of the registered design of
plaintiff as the same has been done without the license or written
consent.
11. The defendants are doing such activities with a view to take
advantage and to trade upon the reputation of the plaintiff and further
with a view to calculate deception and confusion in the markets and
to pass off their spurious goods as that of the plaintiff and to infringe,
pass off and pirate the plaintiff's said designs.
12. It is alleged by the plaintiff that in the month of first week of
June 2014, the plaintiff became aware of this fact that the defendant
No.2 filed suit against the plaintiff seeking injunction to restrain the
plaintiff from using the trademark/trade dress/colour combination
KINGSON before this Court who passed the interim order against the
plaintiff in respect to trade dress and colour combination. In the last
week of June 2014, the plaintiff came across the offending activities
CS (OS) No.2689/2014 Page 9 of 29
of the defendants under the impugned design plastic bottles and
tubes however, the plaintiff left with no option but to file the suit for
infringement of designs and passing off against the defendants
before District court but the said suit was withdrawn because of some
technical grounds, seeking liberty to file fresh suit. Thereafter the
present suit was filed in Tis Hazari Courts, New Delhi. Since the
designs in question were challenged by the defendants in the written
statement, under the operation of law i.e. Section 22 of the Act, the
said suit was transferred to this Court.
13. The written statement on behalf of the defendant Nos. 1 to 5
has been filed who have raised many preliminary objections and
submission in their written statement. Various plea were raised. It is
submitted by the defendants that the suit filed by the plaintiff is not
maintainable under the provisions of Order 23 CPC. The plaintiff in
para 21 of the plaint admits of having filed an identical suit in relation
to the same subject matter earlier in point of time against the
defendants before Patiala House Court. Since the injunction was not
granted the plaintiff had withdrawn the suit. After withdrawing the suit,
fresh suit was filed where the particulars of the earlier suit were not
mentioned. Even copy of plaint and orders were not placed on record
and in the absence of the same the present suit is not maintainable.
The present suit is also not maintainable as the e-stamp paper on
th
which the alleged assignment deed has been executed is dated 24
June, 2013 which mentions the consideration value of ‘0’ and does
not mention the name of the second party. Therefore assignment
CS (OS) No.2689/2014 Page 10 of 29
deed is defective in law and no rights can flow from such an
assignment deed in favour of the plaintiff.
14. The defendants have denied that in the year 1999 Amit Jain
had launched the said firm Vinayak Industries. It is stated in the
written statement that not even a single bill/sale invoice of the alleged
M/s Vinayak Industries has been filed on record. Only photocopies of
bills/invoices of one M/s V.N. Cosmetic have been filed on record
which entity is not a party to the suit.
15. It is alleged that as a matter of fact the plaintiff is engaged in
fraudulent trade and is known in the business circles for infringing the
intellectual property rights of other brands in his business including
Dabur India Ltd., Hindustan Unilever Ltd. and of the defendants. In
the suit filed by Dabur India Ltd. in this Court in the year 2005 bearing
Suit No. 1669 the plaintiff suffered a compromise decree against
infringing bottle designs of Dabur India Ltd. Later on despite the said
compromise decree against the plaintiff, the plaintiff once again in the
year 2007 commenced his infringing activities and M/s Dabur India
Ltd. once again filed a civil suit bearing CS (OS) No. 314/2007before
this Court and which was taken in appeal under FAO (OS) No.
293/2007 and the injunction was once again confirmed against the
plaintiff.
16. It is denied in the written statement that the plaintiff markets
and sells his said goods in original, novel, aesthetic and unique
design plastic bottles tubes or the plaintiff is the creator of any alleged
plastic bottles tubes, which are the subject matter of the present suit.
CS (OS) No.2689/2014 Page 11 of 29
17. It is alleged in the written statement that the assignor i.e.
Naveen Kumar Jain is not the proprietor of the said registered
designs in as much as all the said designs are pre-known/pre-
registered/prior published and/or only a workshop improvement
and/or infinitesimal addition to already known designs being used for
decades in respect of the said products both within India and abroad.
In fact the registrations on which the plaintiff is relying are not new or
original as there are earlier pre-registered designs in India for the
same/substantially similar bottle designs including design No. 206182
th
dated 4 October, 2006 in the name of M/s Zenna Plastics Ltd.,
th
Maharashtra and also registered design No. 173234 dated 24
February, 1997 in the name of Dabur India Ltd.
18. The registered designs on the basis the present suit has been
filed are liable to be cancelled under the provisions of Section 19 of
the Act in as much as the said designs (i) have been previously
registered in India (ii) that they have been published in India and/or
and/or in other countries prior to their respective date of registrations
(iii) that the said alleged designs of the plaintiff are not new or original
designs and/or (iv) that the said alleged designs of the plaintiff are not
registrable under the Act. Neither the plaintiff nor his alleged
predecessor Naveen Kumar Jain can claim any exclusive rights to
such common designs of bottles/tubes and all such designs are liable
to be cancelled under the provisions of the Act. The deed of
assignment so entered is not a legal document in as much as it does
not mention the name and particulars of the second party, nor any
consideration amount on the e-stamp paper. There is no other
CS (OS) No.2689/2014 Page 12 of 29
document on record confirming the execution of the said assignment
deed and receipt of consideration by Naveen Kumar Jain and in the
absence of the same the said document cannot be relied upon in the
present proceedings.
19. Such like bottle designs and tube designs claimed by the
plaintiff are being commonly used by several leading cosmetic
manufacturers and a pictorial representation of some such products
are reproduced herein below:-
CS (OS) No.2689/2014 Page 13 of 29
20. It is denied by the defendants that the plaintiff has obtained the
th
registration of a Design under No. 209974 dated 4 May, 2007 in
th
class 09-03 and/or under No. 209973 dated 4 May, 2007 in class
28-02 under the Act. The plaintiff is not the proprietor of the said
registered designs. The said design registrations of the plaintiff are
not new, novel, original, unique as the same are pre-known/pre-
registered/prior published and/or only a workshop improvement
and/or infinitesimal addition to already known designs being used for
decades in respect of the said products both within India and abroad.
21. The defendants submit that the plaintiff has alleged that he in
the month of January, 2014 had purchased the design from Naveen
Kumar Jain. There is no logic to mention that ‘considerable sales
running into lakhs and lakhs of rupees annually’ when the present suit
was filed by the plaintiff in the year 2014. The question of selling
products for the last many years does not arise. No cogent
documentary evidence has been placed on record by the plaintiff and
in fact there is not even a single document by way of a sale invoice,
etc. to establish on record that the plaintiff subsequent to the
acquisition of the alleged designs ever put them to use in any manner
whatsoever.
22. The defendants submits that not even a single advertisement,
as alleged, has neither been placed on record by the plaintiff nor any
such exists. It is incorrect to allege that the plaintiff has already spent
substantial amounts of money on the publicity of the designs and no
details of any such ‘substantial amounts’ have been provided in the
plaint. The question of goodwill and reputation thus does not arise. All
CS (OS) No.2689/2014 Page 14 of 29
the said designs are pre-known/pre-registered/prior published and/or
only a workshop improvement and/or infinitesimal addition to already
known designs being used for decades in respect of the said
products both within India and abroad and no statutory rights can be
obtained by any person in respect of such common designs and the
registrations relied upon by the plaintiff in the present suit have all
been obtained fraudulently and by suppression of material. In fact,
th
the alleged registered design bearing No. 209976 dated 4 May,
2007 on the face of it does not belong to the alleged predecessor of
the plaintiff and the same is a product of a well known plastic bottle
manufacturer who has been manufacturing such bottles since much
prior to the alleged date of registration of the said design.
23. It is submitted that there is no commercial entity namely M/s
Nima International any longer and its name has been changed to M/s
Nimson International which is the defendant No.3 in the memo of
parties. It is stated that defendants have no concern with M/s Saffron
Marketing Pvt. Ltd., B-74, Naraina Industrial Are, Delhi-110028 the
defendant No.6. It is denied that there is any collusion or any kind of
collusive activities between the defendant No.1 to 7 and each of them
is carrying on their legal and lawful business activity or defendants
could be clubbed with other remaining defendants. It is denied that
the defendants have recently started to use in relation to their
impugned business and goods, the identical designs of the impugned
plastic bottles and tubes.
24. The bottle and tube designs being used by the defendants are
all common designs which are in use since the last several decades
CS (OS) No.2689/2014 Page 15 of 29
and no person, including the plaintiff has any right for its exclusive
use and the present suit is liable to be dismissed on this ground
alone.
25. The present suit has been filed as a counter blast to the earlier
suit against the plaintiff in this Court bearing CS (OS) No. 1628/2014
titled Mrs. Sonia Chadha vs. Amit Jain & Ors. and which suit was in
respect of infringement of registered trademark, passing off,
permanent injunction etc. pertaining to the plaintiff therein (defendant
No.3 herein) registered trademark “Nimson” versus the defendants
therein (plaintiff herein) deceptively similar trademark “Kingson”
including its deceptively similar font, logo, getup, style, label, etc. This
th
Court vide its order dated 27 May, 2014 was pleased to grant an ex-
parte ad-interim injunction against the defendants therein (plaintiff
herein) and which injunction order is continuing till date. The plaintiff
has preferred a written statement in the said suit and an application
for vacation/modification of said ex-parte injunction order.
26. The defendants have denied that they are carrying on their
activities with a view to take advantage and to trade upon the
reputation of the plaintiff with a view to calculate deception and
confusion in the markets and to pass off their spurious goods as that
of the plaintiff and to infringe , pass off and pirate the plaintiff’s said
designs. It is alleged that the defendants have their own different
brand name. In fact it is the plaintiff who has infringed the trademark
of the defendants.
27. During the hearing of interim application, when all the
documents filed by the defendants about the prior publication, pre-
CS (OS) No.2689/2014 Page 16 of 29
known were confronted, the learned counsel for the plaintiff handed
over a comparison chart and tried to distinct the plaintiffs design than
the products already available in the market prior to the date of
registrations granted in favour of the plaintiff or Naveen Kumar Jain
who is allegedly assignor of designs. The counsel has mentioned the
dis-similarities in the said chart. However it is not denied that the said
products are already available in the commercial market and owned
by well known company. It is also not denied by the counsel that the
Dabur (supra) has earlier filed the suit against the plaintiff two times
for infringement of design which is also subject matter of the present
suit. The plaintiff’s counsel has also not been able to give any valid
reason, why no disclosure was made about the first suit filed in the
Patiala House Court when the second suit/ present suit was filed. No
year wise statement of sale and advertisement figures have been
filed in order to show that these designs have been used by the
assignor or assignee in the open market.
28. Section 9 reads as under :
Section 9. Certificate of Registration - (1) The Controller shall
grant a certificate of registration to the proprietor of the
design when registered (2) The Controller may, in case of
loss of the original certificate, or in any other case in which he
deems it expedient, furnish one or more copies of the
certificate.
Section 22. Piracy of registered design - (I) 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
CS (OS) No.2689/2014 Page 17 of 29
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. (1) 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.
(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
CS (OS) No.2689/2014 Page 18 of 29
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.”
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) that 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.
29. The conjoint reading of the aforementioned provisions would
reveal that the Act is a complete code in itself which provides that
there is a condition for certificate of registration of the said design
under Section 9 of the Act and the said design upon registration
confers the copyright in the said design for a period of 10 years as
envisaged under Section 11 of the Act and for further renewable of
five years under the said provision. The said term also indicates that
the design right is a statutorily conferred right for limited period and
there is no room for any other right to exist except the one conferred
CS (OS) No.2689/2014 Page 19 of 29
by the Act. Likewise, Section 22 of the Act provides remedy for piracy
of a registered design wherein the said piracy will only happen during
the existence of copyright in the said design. Sub-section (3) of
Section 22 mandates that in any suit or any other proceedings for
relief under sub-section (2) every ground on which the registration of
a design may be cancelled under Section 19 shall be available as
ground of defence.
30. i) In the case of Dabur India Limited v. Rajesh Kumar , 2008
(37) PTC 227(Del), the court held as under :
“In cases of design, the Court while granting interim injunction
must keep in mind that the design must be validly registered
and there must be some novelty and originality in the designs
sought to be protected and it must not have been re
published. No specific novelty has been mentioned by the
plaintiff in the design of the bottle, neither any specific novelty
has been mentioned in the registration certificate. The
registration certificate only gives bottom view, top view and
side view of the bottle. There is no specific dimensional ratio
of the bottle given in the design as bottles are manufactured
by most of the manufacturers for containing specific quantity
of liquid by measurement. Normally these bottles are made 50
ml, 100 ml, 200 ml, etc. Since all the manufacturers
manufacture bottles for such quantities, the bottles of same
quantity are bound to have almost same height if they have
same bottom circumference. Unless, plaintiff had any claim
over specific ratios of the dimensions which were not pre-
existing, there can be no novelty in the bottle. Similar designs
are being used by many leading companies from the time
much before the registration of this design by the plaintiff. I,
therefore, consider that the plaintiff is not entitled for interim
injunction. The application of the plaintiff is hereby dismissed.”
CS (OS) No.2689/2014 Page 20 of 29
ii) It was expressed by Buckley L.J. on the question of quantum of
novelty in Simmons v. Mathieson & Cold , (1911) 28 R.P.C. 486 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.”
iii) In Phillips v. Barbro 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,
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 what
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, any man does not make a new
and original designs out of an old type of running shoes by putting
spikes into the sales. 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 duty of the Court to take special care that no design is to be
CS (OS) No.2689/2014 Page 21 of 29
counted as “new and original design” unless it is 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 tender 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.
31. It is rightly held in the cases decided that in the matter of
novelty the eye is to be the ultimate test and the determination has to
be on the normal ocular impression. In order to know its newness or
originality it is necessary that a design identical with or even
materially similar to the relevant design should not have been
published or registered previously. A slight trivial or infinitesimal
variation, from a pre-existing design will not qualify it for registration.
Taking into account the nature of the article involved, the change
introduced should be substantial. It is not necessary to justify
registration that the whole of the design should be new, the newness
may be confined to only a part of it but that part must be a significant
CS (OS) No.2689/2014 Page 22 of 29
one and it should be potent enough to impart to the whole design a
distinct identity, unless registration is sought for the said part alone.
32. It is important to keep in mind that if an improvement made in
the design known before should be more than a mere workshop
improvement by combining of old known part of the design with new
integers which have no novelty, it does not qualify the new design
under the eyes of the Act as the same would not involve the exercise
of novel and new design. There must be novelty in the design over
what is old.
33. From the comparison of the products already available in the
market and earlier design registration obtained prior to the date of
registration of assignor and/or by the plaintiff, it is clear that all the
designs claimed by the plaintiff are either prior publish or trade
variant.
34. Dis-similarities pointed out by the counsel for the plaintiff of the
earlier products available in the market and prior registrations are
negligible. The other most important aspect of the present case is
that there are no pleadings on behalf of the plaintiff that there is a
mandatory requirement in law to register the assignment in favour of
the assignee of designs after the assignment of designs. Section 30
of the Act stipulates that where a person becomes entitled by
assignment transmission or other operation of law to a Copyright in a
registered design, he has to make an application, in the prescribed
form, to the Controller to register his title and it is only when change is
made in the Register in the name of such person that he becomes
entitled to claim ownership of the design.
CS (OS) No.2689/2014 Page 23 of 29
35. Section 30 of the Act reads as under:
(1) "30. Entry of assignment and transmissions in registers.(1)
Where a person becomes entitled by assignments,
transmission or other operation of law to the copyright in a
registered design, he may make an application in the
prescribed firm to the Controller to register his title, and the
Controller shall, on receipt of such application and on proof of
title to his satisfaction, register him as the proprietor of such
design, and shall cause an entry to be made in the prescribed
manner in the register of the assignment, transmission or
other instrument affecting the title.
(2) Where any person becomes entitled as mortgagee,
licensee or otherwise to any interest in a registered design, he
may make an application in the prescribed form to the
Controller to register his title, and the Controller shall, on
receipt of such application and on proof of title to his
satisfaction, cause notice of the interest to be entered in the
prescribed manner in the register of designs, with particulars
of the instrument, if any, creating such interest.
(3) For the purposes of sub-section (1) or sub-section (2), an
assignment of a design or of a share in a design, a mortgage,
license or the creation of any other interest in a design shall
not be valid unless the same were in writing and the
agreement between the parties concerned is reduced to the
form of an instrument embodying all the terms and conditions
governing their rights and obligation and the application for
registration of the title under such instrument is filed in the
prescribed manner with the Controller within six months from
the execution of the instrument or within such further period
not exceeding six months in the aggregate as the Controller
on the application made in the prescribed manner allows:
Provided that the instrument shall, on entry of its particulars in
the register under sub-section (1) or sub-section (2), have the
effect from the date of its execution.
(4) The person registered as the proprietor of a design shall,
subject to the provisions of this Act and to any rights
appearing from the register to be vested in any other person,
CS (OS) No.2689/2014 Page 24 of 29
have power absolutely to assign, grant licenses as to, or
otherwise deal with, the design and to give effectual receipts
for any consideration for any such assignment, license or
dealing:
Provided that any equities in respect of the design may be
enforced in like manner as in respect of any other movable
property.
(5) Except in the case of an application made under Section
31, a document or instrument in respect of which no entry has
been made in the register in accordance with the provisions of
sub-sections (1) and (2) shall not be admitted in evidence in
any Court in proof of the title to copyright in a design or, to any
interest therein, unless the Court for reasons so be recorded
in writing, otherwise directs."
36. A reading of sub-sections (1) and (3) of Section 30 shows that
when ownership of registered design is claimed by a successor
person or company, either by assignment or by transmission or by
operation of law, such assignment, transmission or by operation of
law of the copyright to a design has to be registered with the
Controller of Designs within six months from the date of execution of
instrument, assignment or transmission of the copyright in the
registered design to successor person. The period of six months is
limited under sub-section (3) of Section 30. Subsection (5) clearly
provides that a document or instrument in respect of which no entry
has been made in the register in accordance with the provisions of
sub-sections (1) and (2) shall not be admitted in evidence in any
Court in proof of the title to copyright in a design or to any interest
therein unless the Court for reasons to be recorded in writing
otherwise directs.
CS (OS) No.2689/2014 Page 25 of 29
37. In the present case, admittedly, the assigned designs were
registered in the name of Naveen Kumar Jain who had assigned the
same in the name of plaintiff for a total sum of Rs.3,000/- as
consideration along with goodwill. However, the plaintiff on the date
of filing of the suit was not registered as subsequent owner with the
Controller of Designs in terms of sub-section (1) to Section 30 and
therefore, the certificate of registration on which the plaintiff claim is
based, the design in question cannot be, prima facie, read in
evidence in view of the provisions of subsection (5) of Section 30 of
the Act. The plaintiff did not have any valid right to file the present suit
unless the assignment is duly registered. During the course of
hearing, the plaintiffs’ counsel has informed the court that the
application for registering the assignment is pending. Therefore, on
the date of filing of the suit by the plaintiff for infringement of same
very designs was not maintainable. The question of passing off does
not arise, once it is noticed by the Court that the goodwill and
reputation does not attach with the design which is also not new or
original, colour combination is different and both products are sold
under different brand name. None of the judgment referred by the
plaintiff helps the case of the plaintiff.
38. The plaintiff cannot deny the fact that in the second suit there
was no disclosure about the first suit which was withdrawn with liberty
to file fresh suit. In the second suit, the court passed the interim order
in favour of the plaintiff for appointment of four Local Commissioners
who have raided the premises of the defendants. It is incorrect on the
part of the plaintiff that once the liberty was granted, it was not the
CS (OS) No.2689/2014 Page 26 of 29
duty of the plaintiff to disclose about the first suit in the second suit.
The arguments are on the face of it absurd and not tenable. In the
first suit no interim orders were passed but in the second suit, the
prayer for appointment of Local Commissioners was allowed, had the
factum of first suit was disclosed, the Court might not have passed
the orders for appointment of Local Commissioners. Therefore, the
plaintiff was duty bound to disclose the material fact before Court.
Even on this reason itself the plaintiff is not entitled for injunction.
39. In Satish Khosla vs Eli Lilly Ranbaxy Ltd. 71(1998) DLT 1 it
was observed as under :-
“9. It is the contention of the respondent that it had in the
second suit disclosed the filing of the first suit and there was,
therefore, neither any attempt on its part to mislead the court
nor it had in any way tried to obstruct the administration of
justice or play fraud upon the Court. It is also its contention that
the respondent was entitled to bring the second suit for specific
performance of the agreement to register the lease deed and
the cause of action had accrued to it only on the receipt of
notice dated 10th January, 1997 from the appellant when the
tenancy was allegedly terminated.
14. Was it not obligatory on the part of the respondent to
disclose to the Court that in an earlier suit filed by it, the Court
had not granted any stay in its favour and if on such a
disclosure having been made the Court still granted stay in
favour of the respondent, it could be said that the respondent
had not concealed any material fact from the Court. But not
mentioning anything about the Court having not granted any
stay in similar circumstances in favour of the respondent in the
earlier suit, it appears to us that the respondent had not only
concealed material facts from the Court but had also tried to
over-reach the Court. Being unsuccessful in obtaining stay in
Suit No. 3064/96, it was not permissible to the respondent to file
the subsequent suit and seek the same relief which had not
been granted to it in the earlier suit.
CS (OS) No.2689/2014 Page 27 of 29
15. In S.P. Chengalvaraya Naidu v. Jagannath and others , AIR
1994 SC 853 it was held that the courts of law are meant for
imparting justice between the parties. One who comes to the
court, must come with clean hands. “It can be said without
hesitation that a person whose case is based on falsehood has
no right to approach the Court. He can be summarily thrown out
at any stage of the litigation. A litigant, who approaches the
court, is bound to produce all the documents executed by him
which are relevant to the litigation. If he withholds a vital
document in order to gain advantage on the other side then he
would be guilty of playing fraud on the court as well as on the
opposite party.”
40. From the entire gamut of the matter, it appears to the Court that
the plaintiff is not entitled for interim injunction on the following
reasons:-
(i) Prima facie, the designs in question are not novel, prior-
published. The same are otherwise at present are not
protectable under Section 30 of the Act. The plaintiff’s name
has not been entered in the register after assignment. Thus,
plaintiff has not made prima facie case of infringement of
design or passing off. None of the decisions referred by the
counsel help the case of the plaintiff in view of facts and
circumstances in the matter.
(ii) The plaintiff is guilty of not disclosing the pleading of first suit
which was withdrawn, though liberty was granted in second
suit. There was no disclosure of first suit and he obtained the
relief for seizure of goods through local commissioners. In
case true disclosure would have been made, the said may
not have been granted.
CS (OS) No.2689/2014 Page 28 of 29
41. Under these circumstances, the application for injunction under
Order 39 Rule 1 and 2 CPC is dismissed. The material seized by the
Local Commissioners is ordered to be released to the respective
parties.
CS (OS) No.2689/2014
List before Joint Registrar for admission/denial of documents on
th
27 May, 2015.
(MANMOHAN SINGH)
JUDGE
April 24, 2015
CS (OS) No.2689/2014 Page 29 of 29