Yogeshwar Dayal, J.
(1) This is a suit against infringement of registered design of electric toaster of the plaintiffs, for passing off and rendition of accounts and damages.
(2) The plaintiffs are M/s. J. N. Electricals (India) a partnership firm, manufacturing various electrical goods, including electric toaster for the last so many years.
(3) The plaintiffs started manufacturing and selling electric toaster of a design which they got registered vide No. 140873 dated April 23, 1973.
(4) It is alleged in the plaint that apart from distinctive features of the electric toaster of the plaintiffs, the shpe, configuration, upper view and side view of the plaintiffs' toaster are new and original and protected under the Designs Act, 1911 (hereinafter called 'the Act').
(5) It is further averred in the plaint that the arrangement of the outer sheet of the plaintiff's toaster has been made into two sheets which is quite novel. The upper portion of the said sheet is approximately 1/3rd and the lower portion is approximately 2/3rd of the total height of the plaintiffs' toaster. The said arrangement has been made in such a manner as to give fine outlook and appealing to the eye. The distinctive knob of the plaintiffs' toaster is different from a conventional know which has been put on the side of the toaster.
(6) The further case of the plaintiffs is that the plaintiffs are the prior user of the distinctive design in respect of the electric toaster since 1973 while the defendants came into the market with their electric toaster in the year 1977.
(7) The defendants have adopted identical and/or deceptively similar features as those of the plaintiffs' toaster and have been marketing the same, thereby infringing the plaintiffs' registered design. Both, the shape and configuration of the plaintiffs' registered design, have been infringed by the defendants. It is also alleged by the plaintiffs that apart from infringement of the plaintiffs' aforesaid design, the defendants have copied each and every word of instruction/pamphlet and each every photo and arrangement of the said pamphlet.
(8) The plaintiffs have prayed for permanent injunction restraining the defendants from infringing their registered design in relation to the electric toaster and also for permanent injunction restraining the defendants from passing off electric toaster and pamphlet as that of the plaintiffs' manufacture.
(9) The plaintiffs have also prayed for rendition of accounts with regard to manufacture and sale of impugned electric toaster and also for an order for destruction of the impugned electric toaster as well as other media pertaining thereto, including the pamphlet and semifinished goods.
(10) The defendants, M/s. President Electricals in their written statement admit having started marketing electric toaster recently.
(11) The other pleas taken by the defendants in the written-statement is that there are several manufactures of these goods in the market whose goods are much better.
(12) The case of infringement of design as well as copyright was denied. The distinctive features of the plaintiffs' toaster are also denied.
(13) The plea of the defendants further is that they are selling their toaster at a higher price. On the pleadings of the parties, Saffer, J. by his order dated March 22, 1978, framed the following issue :
1.Is there any infringement by the defendants of the registered design which the plaintiffs claim as being their own OP.
2.Are the defendants passing off their toasters as those manufactured by the plaintiffs OP.
3.Have the defendants copied every word of the pamphlet and the photograph arrangement, and if so to what effect O.P.
4.Are the plaintiffs entitled to rendition of any accounts or damages, if so, to what amount they are entitled ?
In support of his case, the plaintiffs examined one of its partners, namely, Ved Prakash (P.W. 1) and the defendants examined one of its partners, Sardar Khan (D.W. 1).
(14) Ved Prakash (P.W. 1), in his evidence, proved the electric toasters which are being manufactured by the plaintiffs (Exhibits Pi and P2) and stated that they have got the design of Exhibit P/l registered with the Controller of Patents and Designs, Calcutta under registration certificate No. : 140873. Exhibit P/3 is the copy of the said certificate and Exhibit P/4 is the representation of the plaintiffs in respect' of toaster Exhibit P/1. This witness also proved the toasters manufactured by defendants, viz. toasters Exhibits P/5 and P/6.
(15) It was further stated by Ved Prakash that' the distinctive features of the plaintiffs' toaster are its outer design. He stated that the plaintiffs have fixed one knob on the side of the toaster which is a distinctive feature of their toaster. Their toaster is known as 'four slice' toaster. He also stated that their toaster's registration is in respect of the outward design and it has nothing to do with the inside mechanism of the toaster. He further stated that the outward appearance of the defendants' toaster (Ex. P/6) is deceptively similar to the toaster of the plaintiffs (Ex. P/1) and similarly, toaster (Ex, P(5) manufactured by the defendants is deceptively similar to the toaster (Ex. P(2) of the plaintiffs. He also proved the figure of sales of the plaintiffs' toaster. He stated that the sale stood at about Rs. 80,000 in 1977.
(16) This witness also proved catalogue which was got registered by the plaintiffs with the Registrar of Copyrights, registered under No. A-1 9489/78 and Exhibit P/9 is the copy of the said certificate. He also proved the catalogue Exhibit P/1 O. Public Witness , 1 also stated that he had advertised for the sale of the plaintiffs' toaster and copies of advertisements are Exhibits P/1 1 and P/12.
(17) Ved Prakash (P.W. 1) also proved the catalogues of the defendants (Ex. P/14 and P/15) and stated that these catalogues resemble precisely the catalogues used by the plaintiffs in respect of the picture and the words used therein. He further stated that the sale of the toaster manufactured by the defendants, imitating the style of toasters manufactured by the plaintiffs, has adversely affected the sale of the plaintiffs and he estimated their loss to Rs. 70,000 to Rs. 80,000, per year.
(18) In cross-examination, the witness denied if there was any difference in the knobs, handle and the stand fixed on the bottom of the two competing toasters. He, however, admitted that there are lines on the side of the toaster manufactured by the defendants while the toaster manufactured by the plaintiffs is plain. This witness further stated that the size of the two plates of the toasters is the same.
(19) Sardar Khan, on behalf of the defendants, as D.W. I stated that he started his business along with his partner Shauqat Ali in August 1973 and is carrying on the business of manufacturing electric toasters which was started in' 1974. He stated that the defendants' toaster is different from the plaintiffs' toaster, both from inside and outside and they have not tried to copy the design of the plaintiffs' toaster. He stated that the wholesale price of their toaster is Rs. 85 including Rs. 17 as excise duty.
(20) In cross-examination, this witness admitted that his partner, Shauqat Ali, was in the service of the plaintiffs but denied if Shaqual Ali learnt the art of manufacturing toaster while in service of the plaintiffs. He stated that Shauqat Ali had learnt this job while in the service of some other concern, namely, Rex Electricals, Joshi Road, Delhi. He also admitted that the goods of both the plaintiffs and the respondents are sold in the wholesale market of Sadar Bazar, Delhi. He further admitted that the plaintiffs' toaster was in the market before the defendants introduced their toaster.
(21) On being further cross-examined, he stated that without actual measurements he could not tell the size of the two parts of the panel on both sides of the toasters. He could not say whether the lower part of the toaster is 2/3rd and the upper part is 1/3rd. However, on further cross-examination, he stated that the size of the toaster of the plaintiff's (Exhibit P/1) and that of the defendants (Ex. P/6) is exactly the same but he stated that there is difference of one 'soot'. He also stated that he could not say if the margin of the handle on the side is also the same, without measuring it. He also stated that the manner of operation of the knob on both the toasters is the same but the design is different. He also could not say, without measuring, whether the margin between the knob and the handle is the same.
(22) This witness further stated that the stand of the defendants' toaster (Ex. P. 6) is fixed over the body of the toaster whereas the stand of the toaster of the plaintiffs is in continuation of the body. He also admitted that the sides of Ex. P. I and P. 6 are in chromium and red colour. The top part is of chromium and bottom is of red colour. He denied the suggestion that when they manufactured the toaster (Ex. P. 6) they had a toaster similar to (Ex. P. 1) of the plaintiffs before them which they have copied. He also denied the suggestion that the defendants have copied the size, arrangement of the knob on the right hand side and 'placing of the handles of the toaster of the plaintiffs'. I may state at the outset that the defendants never applied for cancellation of the registered design of the plaintiffs, in respect of the electric toaster, Section 2(5) of the Designs Act, 1911 defines 'design' which is as under :
'DESIGN'means only the features of shape, configuration, pattern or ornament applied to any article 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-sec. (1) of S. 2 of the Trade and Marchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code'.
(23) Section 43 of the Act contemplates applications being filed by any person claiming to be the proprietor of a new or original design, not previously published in India, to apply for registration of the design and the Controller grants certificate under section 45 of the Act. Under section 46(3) of the Act, the register of designs shall be prima facie evidence of registration. Section 53 of the Act prohibits piracy of a registered design.
(24) Looking at the definition of the 'design', infringement of the design applied to an article is to be judged solely by the 'eye', and the 'design' 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. thereforee, all that is required to be seen in an action for infringement of design is the 'sameness' of the features of shape, configuration, pattern etc. Admittedly, the design of the plaintiffs' toaster is earlier in point of time. The 'sameness' of features does not necessarily mean that: the two designs must be identical on all points and should differ on none. They have to be substantially the same.
(25) Cave, J. in Gordon and Munro v. Patrick and Hili : (1895) Vol. 12 Reports Of Patent, Design And Trade Mark Cases 22, at page 24(1) gave the following direction to the Jury while deciding a case relating to infringement of design :
'GENTLEMANof the Jury: the question quite a simple one, and one with regard to which it seems to me that no evidence can affect the matter. This is a registered design an ornamental design. Somebody or other hit on the notion that coffin plates and coffin handles with a border like this around them would take the market. I do not suppose the world has been very much richer, or better, or happier by them. Still, for what it is worth, that design is protected, and people must not reap the benefit who have not hit upon the plan; and that is really the whole point. There is no magic at all about it. It is for a plain common sense man to say, when he looks at these things, whether they are substantially the same, or substantially different. If they are substantially the same, then the Plaintiffs are entitled to recover, if they are substantially different, then they are not. That is what you have to decide.'
(26) In Western Engineering Co. v. Paul Engineering Co. : : AIR1968Cal109 , while dealing with an application for cancellation and/revocation of a design, observed as follows
'READMGSs. 51-A and 2(5) of the Patents and Designs Act, it appears that a subsequent design should be self same or identical design registered earlier. The design, the registration of which is sought to be cancelled under S. 51-A, must not have different features of shape, configuaration, pattern etc. from those of the earlier design. The definition itself lays emphasis on the fact that the sameness of the features is to be decided by the eye. The sameness of the features does not necessarily mean that the two designs must be identical on all points and differ on no point.
ONEof the practical tests to find out the identity or the sameness of the design is to find out whether there are substantial differences between the design subsequently registered and the design which was earlier registered. These differences cannot be based on purely subjective or utilitarian or aesthetic considerations. The difference must be objective in its essential features. A general view of the features of both the designs should be looked into to find out if the one design is as good as the other and the conclusion is to be arrived at by visual examination of the two things. Similarity and device in external appearance must be a relative feature in considering the substantial difference between the two, but is certainly not a determining factor.
The underlying principle behind the law of infringement of design is that, while the commercial exegencies require that a specific design which is novel and original should be protected, the monopoly of the trade in respect of a common design with no special skill or originality should not be encouraged.'
(27) Having noticed the test to be applied in such cases, the question now arises of its application. The design of the plaintiffs toaster having been registered, its main distinctive features may be noticed.
(28) The main distinctive feature of the plaintiffs' registered design of the toaster is the arrangement of the outer sheet having been made in two sheets which is quite novel. The upper portion of the sheet is approximately 1/3rd, which is white chromium, and the lower portion is 2/3rd of the total height, which is painted. There is a distinctive knob on the side of the plaintiffs' toaster which is different from conventional knob which can be seen from a conventional toaster like Exhibit P-7.
(29) The defendant, in the witness-box, was completely cornered when he had to admit that even the size of the two toasters is precisely the same, except that there is a difference of one 'soot' only. He avoided to admit that the margin of the handle and knob in the two toasters is the same.
(30) It appears that one of the partners of the defendants was an employee of the plaintiffs and the complete design of the plaintiffs' electric toaster has been pirated lock, stock and barrel.
(31) The only difference between the two toasters pointed out is in their stands, which is not very material. Again, the presence of lines in the outer planes of the defendants' toaster is not material. An unwary purchaser is likely to be deceived by the overall similarity in the two toasters. At least, this is the impression my eyes got after looking at the two toasters. The overall effect is that the defendants' toaster is deceptively similar to the toaster of the plaintiffs. Issues I and 2 :
(32) It is true that the toaster of the defendants bears the name 'CRISPY' while the toaster of the plaintiffs is being sold in the market by the name of 'BROWNIE', but this is not a case for 'passing off' in relation to trade mark. Issues Nos. 1 and 2 are accordingly decided in favor of the plaintiffs. Issue No. 3.
(33) This issue presents no difficulty. It is a case of an outright piracy of the plaintiffs' pamphlet. The pamphlet/catalogue of the plaintiffs is Exhibit P-10 registered vide registration certificate No. A-19489/78 (Exhibit P-9), and the copy of the defendants pamphlet/ catalogue is Exhibit P-14 as well as Exhibit P-15. Exhibits P-14 and P-15 are word for word, line for line and sentence for sentence the same as the catalogue of the plaintiffs (Ex. P-IO). The defendants have committed the same mistakes where the plaintiffs have committed in their pamphlet/catalogue. So much so that the defendants have used the same device of a woman demonstrating the use of the electric toaster. The defendants have copied the exact instructions on the last page of their pamphlet. This is sheer dishonesty.
(34) Issue No. 3 is also decided in favor of the plaintiffs and the effect of it would be that the defendants are restrained from using the pamphlets Exhibits P-14 and P-15. Issue No. 4
(35) So far as statutory remedy under section 53 of the Act is concerned, it does not talk of remedy by rendition. of accounts.
(36) Shri K. L. Aggarwal, who appears on behalf of the plaintiffs, however, submitted that in common law in case or decree for infringement and passing off. the plaintiffs may be entitled to a decree for rendition of accounts but during the hearing of the suit, learned counsel for the plaintiffs gave up the claim for damages and/or accounts.
(37) The result of the aforesaid discussion is that the plaintiffs are granted a decree for permanent injunction restraining the defendants, their servants, agents, dealers and/or representatives from manufacturing/selling and offering for sale or dealing with the impugned electric toaster either directly or indirectly which is fradulent of obvious imitation of the plaintiffs electric toaster registered under No. 140873 and from doing anything with a view to enable the registered design belonging to the plaintiffs to be so applied.
(38) The plaintiffs are further granted a decree for permanent injunction, restraining the defendants, their servants, agents, dealers and representatives from using the impugned pamphlet/catalogues of the plaintiffs.
(39) An order is also passed for destruction of the impugned electric toasters of the defendants as well as other media pertaining thereto including the pamphlets/catalogues in dispute.
(40) Parties are, however, left to bear their own costs.