H.L. Anand, J.
(1) The quesction that thispplication raises is as to entitlements of the plaintiff to restrain the defendants from manufacturing, selling or offering for sale tricycles, said to bear the design claimed to be an infringement of the registered designs of the pla.intiff, during the pendency of the plaintiff's suit for .permanent injunction to restrain infringement of the designs and for passing off, rendition of accounts and certain other reliefs.
(2) Tobu Enterprises Private Ltd, plaintiff, is the manufacturer and seller of children bicycles, tricycles, cars and strollers and claims that its goods have distinctive shape and configuration and are in great demand. It is claimed that amongst the famous product of the plaintiff is 'mini bike tricycle' having a unique, novel and distinctive shape and configuration and the plaintiff is the proprietor of the new and original design in respect of the tricycle which is registered under the Designs Act by virtue of which the plaintiff claims exclusive right to apply the features thereof to the mini bike triycle of its manufacture and that use of the design by any other trader of the said design in relation to the tricycle without the permission, license or consent of the plaintiff would amount to infringement of the plaintiff's right. The seat of the tricycle is also claimed to be of a novel and unique design, which is separately registered. Plaintiff claims exclusive right in respect of the design of the seat as well in addition to that of the tricycle. The plaintiff claims that by virtue of novelty and originality of the designs, the plaintiff has acquired unique reputation and goodwill in respect, of the said manufacture and that the defendant No. 1 is manufacturing and defendant No. 2 is marketing tricyles, manufactured by defendant No. 1, with an identical or substantially identical design and have thereby deliberately infringed and contravened the copyright of the plaintiff in the designs with a view to take advantage of the popularity of the plaintiff's design, goodwill and reputation. It is claimed that the defendants are thus passing off the inferior quality tricycle bearing impugned design as the tricycle of the plaintiff. On these allegations, the plaintiff seeks permanent injunction to restrain the defendants from pirating the registered designs of the plaintiff, from passing off their goods bearing impugned design as the manufacture of the plaintiff, for delivering up of the impugned products and for rendition of accounts of profits made by the defendans.
(3) By I.A. 1242182, the plaintiff prays that, during the pendency of the suit, defendants should be restrained from manufacturing, selling or offering for sale tricycles bearing the offending designs.
(4) The defendants resist the suit, as indeed, the application for interm protection, on the grounds that this Court has no jurisdiction under the Designs Act, the suit it beyond the pecuniary jurisdiction of this Court, the plaintiff has no cause of action, the design of the defendants manufacture does not constitute an infringement of the registered designs of the plaintiff; the regitration of the design was obtained by the plaintiff by fraud; that the plaintiffs product does not have distinctive sape or configuration and the design of the plaintiff's product is common and available in India for the post more than a decade; that the design of the plaintiff's manufacture is neither new nor original and that the design of seat was also neither new nor original; that the plaintiff does not have any exclusive right to apply the features to the tricycles or to claim any exclusive right to the design of the tricycle or the seat; that the design of the tricycles manufactured by the defendants is neither identical nor fraudulent or an obvious imitation of the designs incorporated in the manufacture of the plaintiff and that the plaintiff is not entitled to the relief of rendition of accounts and is, in any event, not entitled to the restraint order.
(5) Learned counsel for the defendants sought to justify refusal of an interim injunction on the preliminary grounds that the suit of the plaintiff suffered from a variety of infrimities with regard to the valuation of the subject matter and as to the permissible heads of relief available under the Design Act. It is, however, unnecessary to dilate on these aspects because it was not disputed that the objecttion with regard to valuation of the various relief would not in any way impinge on the jurisdiction of this Court and even if the plaintiff is eventually held not entitled to some of the heads of relief not specifically enumerated in the Designs Act, such a finding would not militate against the right of the plaintiff to an injuction, if such a relief would be otherwise justified. It was also not disputed that whatever may be the outcome of these contentions, the plaintiffs could not be non-suited on any of the grounds. If that be so, none of these infirmities are of a charactei which may deprive the plaintiffs of the right to a temporary injunction if the conditions for grant of such a relief are otherwise satisfied. It would, thereforee be neither proper nor necessary for me at this stage to deal with the contentions with regard to valuation and the scope of relief available under the Act.
(6) Counsel next sought to justify refusal of relief of injunction on the ground of alleged invalidity of the registration of the designs based on the allegation that the designs were neither 'new' nor 'original' and had been previously 'published' in India thereby disentitling the plaintiff to the registration thereof This defense 'of the defendant to the plea for interim injunction was sought to be scuttled on behalf of the plaintiff on the ground that by virtue of Section 51A of the Act, as indeed, the provision of Section 47, 53 and the scheme of the Act, the defense of invalidity of the registration of the design on any of the grounds, which may justify cancellation of registration are not open to a defendant in a suit for infringement without resort to proceedings for cancellation of registration under Section 51A of the Act. Section 51A provides that any person interested may present a petition for the cancellation of the registration of a design to the High Court on the ground that the design has been previously registered in India or that it has been published in India prior to the date of registration or that the design is not a new or original design. According to the plaintiff,, the provision of Section 51A impliedly bars a defense which would justify cancellation unless proceedings for cancellation have been initiated. This is one of the questions that would full for determination at the trial of the suit and I would be reluctant -to rule on this question at this stage. But that the contention of the plaintiff is prima facie well-founded is borne out by a decision of the Division Bench of this Court reported as 1972 R.L.R. N. 90(1). The Division Bench was no doubt concerned with the defense of invalidity sought to be set up in a suit in District Court and not in the High Court, which has exclusive jurisdication over cancellation proceedings. The question, if such defense are open to a defendant in a suit for infringement pending in this Court without resort to the provision of Section 51A of the Act, does not appear to me to be fre from difficulty. But by virtue of the decision of the Division Bench of this Court, I must hold that the plea of implied bar is at least prima facie well founded and, as at present advised, the defendants are not entitled to raise such a defense in the present suit without resort to appropriate .proceedings for cancellation. Defendants have admittedly not initiated any such proceedings for their own reasons. For the purpose of interim relief, the defendant would, thereforee, be not entitled to raise these pleas and the interim protection sought by the plaintiff could not, thereforee, be refused on that ground.
(7) But, even if the defense of invalidity was open to the defendants, it is, difficult to hold on the existing material, that the design of the plaintiff is not a new or original design or that it has been published in India prior to the date of registration. That it is new and original is obvious because the defendants were unable to produce or point to any other product in the country contemporaneously or earlier, apart from the offending product, which may bear resemblance to the design of the plaintiff. Prima facie, the design could not be said to have been previously published in India merely because according to the defendants foreign publications were available in India containing the design. The defendants did not even make an averment in the pieadings that these publications were available in India. The only other basis of prior publication is, the allegation of the defendants that a certain person known to the defendants had brought a piece from abroad for a child, which incorporated the design or on which the design of the plaintiff may have been based. Prima facie, such a solitary instance, assuming that there was such an import, would not amount to prior publication of the design in India, as visualised by Section 51A(l)(a)(ii) of the Designs Act.
(8) If that be so, the only question that survives for consideration is if the design of the tricycles of the defendants' manufacture could be said to be identical to or an obvious or fraudulent imitation of the registered designs of the plaintiff Section 53(1) provides that during the existence of copyright in any design it shall not be lawful for any person 'to apply or to cause to be applied to any article in any class of goods in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered, proprietor.' The expression 'design' is defined by sub-section (5) of Section 2 in the following manner :
'(5)'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 more mechanical device and does not include any trade marks as defined in cluase (v) of sub-section ( 1 ) of Section 2 of Trade & Merchandise Marks Act, 1958 or property mark as defined in Section 479 of the Indian Penal Code.'
A close look at the competing designs leaves no manner of doubt that, having regard to features, shape and configuaration, pattern or ornament, the design of the defendants' product is almost identical with the design of the plaintiff and is, in any event, an obvious imitation of it. Learned counsel for the defendants, who argued with considerable confidence the various contention with regard to valuation, scope of relief under the Act and the scope of defenses open to the defendants in a suit of this type, was unable to point out why the design of the defendants in its general impression was not an obvious imitation, if not identical, to the design of the plaintiff. Counsel sought to distinugish the two designs because of certain additional accessories to the product of the defendants but, unfortunately, for the defendants that would not change the shape, configuration or pattern, which are the broad features of the design of the product. These accessories or minor modifications do not take away from the general impression that the two designs convey on a visual examination of the competing designs. Leapied counsel also sought support from a slightly different dimension or sizes of some of the components of the defendants' manufacture but the mere distinction or sizes of the manufacture or any of its components would not be sufficient if the broad features of shape configuration and pattern are either identical or fraudulent or obvious imitation of the original. The Designs Act products innovations and originality but does not stiffle creativity in design and pattern. Mere additions of accessories or minor modifications do not qualify for originality. Defendants' resistance to the injunction was primarily based on the plea that the -design was neither new nor original and was published in India before, a plea which is unfortunately, either not available to the defendants because the defendants failed to initiate appropriate proceedings for cancellation, or otherwise has no merit. The defendants did not make any serious effort to bring out any points of distinction between the two designs which may take the manufacture of the defendants out of the mischief of the identity with the design of the plaintiff or its obvious or fraudulent imitation.
(9) For all these reasons, the plaintiff would be entitled to an interim injunction to restrain the defendants from manufacturing or marketing tricycles with the offending design till the decision of the suit and I restrain the defendants accordingly. Costs would, however, abide the event.