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Troikaa Pharmaceuticals Ltd. Vs. Pro Laboratories (P) Ltd. and anr. - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtGujarat High Court
Decided On
Case NumberCivil Suits No. 1 of 2008
Judge
Reported in(2008)3GLR2635; LC2009(1)168
ActsDesigns Act, 2000 - Sections 4, 19, 22, 22(3), 53 and 53(2); Companies Act, 1956; Patents and Company Act, 1883 - Sections 47; Designs Act, 1911 - Sections 53A; Code of Civil Procedure (CPC) - Order 39, Rules 1 and 2
AppellantTroikaa Pharmaceuticals Ltd.
RespondentPro Laboratories (P) Ltd. and anr.
Appellant Advocate Mihir Thakore and; Y.J. Trivedi, Advs. for Plaintiff 1
Respondent Advocate Sanjay A. Mehta, Adv. for Defendant 1
Cases ReferredIn Vikas Jain v. Aftab Ahmad
Excerpt:
intellectual property rights - designs - infringement of - design act, 2000 - plaintiff, a registered user of the design filed suit for permanent injunction restraining the defendants, from manufacturing, marketing and using the impugned design registered in class 28 in respect of d shape tablet and/or any tablet, which is having similar shape and configuration or material reproduction of the plaintiff's registered design - defendant contended that the plaintiff's design lacks novelty or originality - since the plaintiff's design is not registrable, the defendant has filed an application for cancellation of registration - held, test of ascertaining whether the two designs are identical is that the designs have to be judged by the eye and each design has to be compared to a whole with all.....k.a. puj, j.1. the plaintiff, namely, troikaa pharmaceuticals ltd., has filed regular civil suit no. 2486 of 2007 in the city civil court at ahmedabad praying for permanent injunction restraining the defendants, their servants, agents, dealers, distributors, stockists from manufacturing, marketing and using the impugned design registered under no. 186992 in class 28 on 16.10.2001 in respect of d shape tablet and/or any tablet, which is having similar shape and configuration or material reproduction of the plaintiff's registered design. the plaintiff has also prayed for permanent injunction restraining the defendants from printing, publishing, using, marketing, coping or imitating the impugned design of tablet, its drawings and parts thereof and restraining them from committing.....
Judgment:

K.A. Puj, J.

1. The plaintiff, namely, Troikaa Pharmaceuticals Ltd., has filed Regular Civil Suit No. 2486 of 2007 in the City Civil Court at Ahmedabad praying for permanent injunction restraining the defendants, their servants, agents, dealers, distributors, stockists from manufacturing, marketing and using the impugned design registered under No. 186992 in Class 28 on 16.10.2001 in respect of D Shape Tablet and/or any tablet, which is having similar shape and configuration or material reproduction of the plaintiff's registered design. The plaintiff has also prayed for permanent injunction restraining the defendants from printing, publishing, using, marketing, coping or imitating the impugned design of tablet, its drawings and parts thereof and restraining them from committing infringement of the design of the plaintiff. The plaintiff has also prayed for direction to the defendants to pay the sum of Rs. 50,000/- for the damage caused to the plaintiff on account of infringement of the plaintiff's registered design and also order the defendants to render true and correct account of the goods manufactured and sold by the defendant after notice and after verifying the same, to pass a decree of such amount of profit earned by the defendants. Lastly, the plaintiff has prayed for the direction to the defendants to hand over blocks, dyes, patterns, parts thereof and drawings of the product which are used manufactured and marketed by them, which is infringement of the registered design of the plaintiff. All such material should be given to the plaintiff for destruction.

2. The plaintiff has also moved an injunction application in the said suit praying for temporary injunction restraining the defendants, their agents, servants, dealers, distributors, stockists for manufacturing, marketing and using the impugned design registered under No. 186992 in Class 28 on 16.10.2001 in respect of D Shape Tablet and/or any tablet, which is having similar shape and configuration or material reproduction of the plaintiff's registered design. The plaintiff further prayed to grant temporary injunction restraining the defendants, their servants, partners, agents, dealers, distributors, stockists from printing, publishing, using, marketing, coping or imitating the impugned design of tablet, its drawings and parts thereof and restraining them from committing infringement of the design of the plaintiff.

3. The City Civil Court, Ahmedabad has issued process and granted ad-interim relief in terms of para 22(A) of the injunction application.

4. On notice being served on the defendants, the defendants moved an application for cancellation of design under Section 19 of the Design Act. The plaintiff, therefore, moved an application Ex.27 before City Civil Court, Ahmedabad stating therein that in view of Section 22 of the Designs Act, 2000 the suit is required to be transferred to this Court. The City Civil Court, Ahmedabad, vide its order dated 5.2.2008 passed below an application Ex.27, transferred the said suit to this Court and it is renumbered as Civil Suit No. 1 of 2008. Ad-interim relief granted by the City Civil Court and extended by this Court continued till this date.

5. It is the case of the plaintiff that the plaintiff is a company incorporated under the Companies Act, 1956 and is carrying on the business of manufacturing and marketing pharmaceutical and medicinal preparation and surgical goods. With a view to acquire a good market, the plaintiff have innovated, invented and developed a unique design for tablet sold under trademark DYNAPAR. The defendant No. 1 is also a company engaged in the business of manufacturing and marketing pharmaceutical and medicinal preparation at Haridwar. The defendant No. 2 is selling product of defendant No. 1 in the City of Ahmedabad.

6. The plaintiff with a view to distinguish its shape of product from the product of others has adopted a unique design and configuration of the tablet called D Shape Tablet and to protect the said design of the tablet, the plaintiff has applied for registration of design under the Design Act, 2000 to the Controller General of Patents & Designs. After verifying the said design the Controller General of Patents & Designs had registered the said design of the plaintiff in respect of tablet under No. 186992 in Class 28 from 16.10.2001. As per the provisions of the Designs Act, 2000 the exclusive right to use the said design is granted for a period of 10 years from 16.10.2001, which can be extended for a further period of 5 years. By virtue of this registration of design the plaintiff became exclusive owner of the D Shape Tablet and if any person, firm or company adopts and/or imitates the design and/or configuration of the tablet of the plaintiff, the said person, firm or company is liable for infringement of design of the plaintiff under the provisions of the Designs Act.

7. Mr.Mihir Thakore, learned Senior Counsel with Mr. Y.J. Trivedi, learned advocate for the plaintiff submitted that as per Section 22 of the Designs Act, 2000, no person, firm or company is entitled to apply or cause to be applied to any article in any class of articles in which the design is registered or obvious imitation thereof, or to import for the purpose of sale, any such article or manufacture or market any such article without the license or written permission of the plaintiff, is liable for infringement of exclusive right of copyright under the Designs Act in favour of the plaintiff. The contravention of any such right by any person, firm or company, is liable to pay to the registered proprietor any damage and this Court is empowered to restrain any such infringement of the plaintiff's right granted under the said registration.

8. Mr. Thakore further submitted that the plaintiff has recently come to know that the defendant has adopted identical design, shape and configuration of the plaintiff, and the plaintiff has come to know that the defendant has substantial and material reproduction of the design of the plaintiff and thereby, has committed infringement of the registered design of the plaintiff under No. 186992. Despite the fact that the plaintiff is the registered proprietor of the design, the defendants with malafide intention have imitated the design and configuration of the D Shape Tablet of the plaintiff. The defendants have adopted identical design of tablet in D Shape Tablet as of the plaintiff's registered design in an identical and similar manner. From the documents produced before the Court, it is very clear that the defendants have imitated and copied the design of the plaintiff's product and have infringed the said design of the plaintiff. It is, therefore, submitted that under the provisions of the Designs Act, the defendants are required to be restrained by an order of injunction from infringing the design of the plaintiff.

9. Mr. Thakore has further submitted that for promoting the sale of the plaintiff's product as per the said registered design, the sales promotion expenses incurred by the plaintiff runs into lacs of rupees. Because of very high standard quality of the product and the labour exerted by the plaintiff through their representatives, dealers, agents etc. the sale of the product of the plaintiff has increased and the same runs into crores of rupees. The defendants are well aware of the plaintiff's registered design, its market, reputation and utility. The defendants have knowingly made substantial and material reproduction and imitated the plaintiff's design with the same shape and configuration and thereby have tried to gain illegal profit and advantage of the unique design of the plaintiff. By use of similar shape of tablets with similar colour scheme, the defendants have caused injury to the business, reputation and goodwill of the plaintiff and the plaintiff has suffered great irreparable loss and injury in its business and also its reputation and goodwill, which the plaintiff has acquired by spending huge amount for promoting the sale of its product. The defendant has no right to use the same design and make substantial reproduction of the registered design of the plaintiff. The defendants have, therefore, held themselves liable for infringement of the registered design of the plaintiff.

10. Mr. Thakore further submitted that the plaintiff has acquired statutory right, spent huge amount of money for preparing the said design, exerted labour and acquired statutory protection under the Designs Act, 2000. The defendants have with a view to encroach upon the market and goodwill of the plaintiff, imitated the plaintiff's design and have placed in the market identical product with identical shape and configuration and thereby committed infringement of plaintiff's registered Design No. 186992 and causing great loss and injury and damaging the business, reputation and goodwill of the plaintiff. It is, therefore, submitted that the plaintiff has a strong prima facie case, as the plaintiff has acquired statutory right, whereas the defendants have no right. The defendants are the imitators and are not in a position to give any explanation as to how they have adopted identical shape and configuration. It is obviously malafide attempt on the part of the defendant to encroach upon the business, reputation and goodwill of the plaintiff and thereby earn illegal profit. The defendants are, therefore, required to be restrained by order of injunction of this Court from manufacturing, marketing, advertising and promoting for sale their design of tablet, which is substantial and material reproduction of the design of tablet registered in favour of the plaintiff under No. 186992.

11. On behalf of the defendant No. 1 an affidavit-in-rely is filed on 4.1.2008. While raising preliminary objection Mr. Sanjay Mehta, learned Counsel for defendant No. 1 submitted that the present suit for alleged infringement of design and for accounts as filed by the plaintiff before this Court is not maintainable and that the same deserves to be dismissed with costs. Even on merits, the objection is raised to the effect that the plaintiff has made absolutely false claims regarding it being the author/proprietor of D Shape design for its pharmaceutical product/ medicinal preparation. The registration of the plaintiff's design is not valid as the design of the plaintiff is not registrable under Section 4 of the Designs Act, 2000. The plaintiff, by misleading the Controller of Designs and suppressing material facts, regarding prior publication and application of the said D Shape by various pharmaceutical companies, has caused the D Shape design to be registered in its favour. It is further submitted that the D Shape design as claimed by the plaintiff is not a new or original design and is also not new in its application to pharmaceutical products/medicinal preparation. The D Shape design referred to by the plaintiff cannot be under any circumstances called a new or original design in as much as the very design of the tablet. D Shape is in fact a reproduction of the shape of the letter 'D' of the English Alphabet which is known to the public at large and published in tangible form. The said D Shape resembles to semi-circle i.e. a half circle, it is, therefore, submitted that the D Shape design of the plaintiff is not significantly distinguishable from known designs i.e. shape of letter 'D' of English Alphabet and shape of semi-circle and, therefore, is prohibited from registration under Section 4 of the Designs Act, 2000.

12. Mr.Mehta further submitted that even while considering the application of D Shape design to pharmaceutical/medicinal tablet, such D Shape design of a tablet has been published in India and abroad prior to the registration of design of the plaintiff and has been applied by various pharmaceutical companies to its pharmaceutical products/medicinal preparation much prior to the plaintiff's application of the design to its product as well as plaintiff's registration of the design. It is, therefore, submitted that such D Shape design is prohibited from registration under Section 4 of the Design Act, 2000 and thus registration of plaintiff's design is liable to be cancelled under the provision of the Designs Act, 2000.

13. Mr. Mehta further submitted that Pfizer Ltd., a reputed Multi National Company has published such D Shape design and has applied the same to its pharmaceutical product/ medicinal preparation way back in the year 1956 and as per the information available with defendant No. 1 the said Company as on today is applying the said design to its products. Hence, it is clear that the plaintiff is not the author or originator of the said D Shape design that is being applied to its product. The said D Shape design is also not new or original, as claimed by the plaintiff and that the said design was published and known to the public at large much prior to the registration of the design of the plaintiff. That being the case, the design of the plaintiff is liable to be cancelled as the registration of the said design is prohibited under Section 4 of the Design Act, 2000.

14. Mr. Mehta further submitted that several other pharmaceutical Companies in India are applying the said D Shape design to its pharmaceutical products/ medicinal preparation and, therefore, the said design as far as pharmaceutical industry is concerned, is common to trade. The use of such design being common to trade does not necessarily relate to or cause the public at large to relate to the product of the plaintiff while purchasing the product of the defendant No. 1 or any other company and hence does not constitute imitation of the plaintiff design. The D Shape design of the plaintiff is not significantly distinguishable from known designs.

15. Mr. Mehta further submitted that the defendant No. 1 filed an application dated 18.12.2007 under Section 19 of the Design Act, 2000 applied for cancellation of the design of the plaintiff and the said application is as on date pending for hearing before the Controller of Designs. The plaintiff was very much aware about prior, open and wide publication and application of D Shape design to pharmaceutical tablets by various pharmaceutical companies in India and abroad. However, the plaintiff intentionally with an ill-design to get D Shape design of tablet registered in its name, has suppressed material facts and has falsely claimed itself to be the author/proprietor of the said shape before the Controller of Designs and has resultantly succeeded in obtaining the same registration under No. 186992. The plaintiff now in furtherance of its ill-design and to avoid genuine competition in the market, is taking undue advantage of such registration of the design to restrain and prevent other companies like the defendant, who have honestly adopted the D Shape for their tablet, from manufacturing and marketing their products with D Shape design. It is, therefore, submitted that suit as well as injunction application of the plaintiff is required to be dismissed.

16. The defendant alongwith its affidavit-in-reply has produced list of documents, which inter alia contained copy of petition under Section 19 of the Designs Act, 2000 for cancellation of design, copy of relevant extract regarding Diabenese drug of Pfizer Ltd., taken from the website, copy of picture of Diabenese drug of Pfizer Ltd., copy of relevant extract regarding Amerge drug taken from the website.

17. An affidavit-in-rejoinder is filed on behalf of the plaintiff on 22.1.2008 denying the facts stated and averments made in the affidavit-in-reply and reiterating the contentions raised by the plaintiff in the suit. Over and above this, it is emphatically submitted by Mr.Thakore that by using the D Shape tablet and with a view to take advantage of the high reputation and goodwill and to gain illegal profit, defendants have adopted identical shape of medicine with identical colour scheme, get up arrangement just to pass off their manufactured tablets such as DARDPAR, DOOPAR, DENPAR and DICLOFEN PLUS which looks like identical and/or deceptively similar trade mark or brand names with that of the plaintiff's DYNAPAR. All these 'D' shaped pharmaceutical products are manufactured by the defendant No. 1, which is imitation or infringement of the plaintiff's registered design and hence the defendants are restrained by an order of injunction from this Court. The defendants are still continuing their unlawful activity by disobeying the order of this Court. Knowing fully well that their activity is illegal and contrary to the order of this Court, the defendants are liable for committing breach of the order of this Court. It is very clear that the activity of the defendant is malafide and contrary to law. They have continued their unlawful activity inspite of the injunction from this Court. The defendants are, therefore, not required to be heard unless they purge the contempt committed by them by disobeying the order of injunction granted by this Court.

18. On behalf of the plaintiff an affidavit is filed by Sr. General Manager of the plaintiff Company on 3.3.2008 wherein it is stated that the plaintiff company's representative found the product of the defendant containing the trade mark DENPAR in strip packing with the tablets of different shape and DENPAR tablets in plastic bags with different colour scheme containing white and orange colour. It is, therefore, clear that even after the injunction, the defendants first changed the colour of the tablets and subsequently changed shape of the tablet. This clearly establishes that even if the defendants are restrained by an order of injunction, as prayed for, till the disposal of the suit, the defendants will be in a position to continue their unlawful activity under different shapes of tablets than the shape registered in favour of the plaintiff company. The defendants are not likely to suffer irreparable loss and injury if the injunction is continued and the balance of convenience is in favour of the plaintiff and against the defendants. It is also stated that regarding the trade mark DENPAR, the plaintiff has already filed a suit against the defendant and the defendants have continued their unlawful activities by using the mark DENPAR even after the order of injunction of the Court.

19. The defendant has filed further affidavit-in-reply on 11.3.2008 denying the facts stated and averments made by the plaintiff in the affidavit dated 3.3.2008. It is stated in the said affidavit that the defendant was manufacturing its product DENPAR in various colours and shapes prior to the institution of the suit by the plaintiff. It is not that after the plaintiff had got the injunction in its favour, the defendant No. 1 has changed the colour and shape of its tablets. If the strip packing of the tablets produced by the plaintiff at Annexure-A to the affidavit is seen it is clear that the same have been manufactured in the month of September, 2007 whereas from the perusal of the bag packing of the tablets produced by the plaintiff at Annexure-B to the affidavit, it is clear that same is manufactured in the month of November, 2007. The plaintiff has instituted the Civil Suit against the defendants before the City Civil Court at Ahmedabad on4.12.2007 and an ex-parte order of injunction came to be granted by the Court in favour of the plaintiff on 5.12.2007. It is, therefore, submitted that it is absolutely false that after the injunction order was granted in favour of the plaintiff, the defendant No. 1 has changed the colour of the tablets and, thereafter, the shape of the tablets, as alleged.

20. It is further submitted that several multinational Pharmaceutical Companies have been manufacturing and marketing their medicinal preparation/ pharmaceutical products in D Shape tablets throughout the world even prior to the registration of the design in favour of the plaintiff. The pharmaceutical products such as FemHRT, Diabense of Pfizer Ltd., Focalin of Novartis, Amerge have been developed prior to the registration of the plaintiff's design and are available in D Shape tablets in various markets through out the world. It is, therefore, false that the plaintiff is the originator of the design or that it has developed and adopted a unique design with respect to its product as alleged. The plaintiff, having adopted a design from the public domain, has deliberately and dishonestly suppressed material facts regarding the D Shape design and has thereby caused the said design to be registered in its favour. From the documents produced by the plaintiff alongwith its suit, it appears that the plaintiff was manufacturing and marketing its product DYNAPAR in D Shape design prior to its registration. In plaint of the Civil Suit No. 2487 of 2007 filed by the plaintiff against the defendant before the Ahmedabad City Civil Court, alleging infringement of its mark DYNAPAR. That the D Shape design of the plaintiff was already in public domain and has been published prior to the registration of the same in favour of the plaintiff and on this ground also the registration of design in favour of the plaintiff is liable to be cancelled. It is further submitted that several companies in India and Abroad are marketing/selling their medicinal preparations/ pharmaceutical products in D Shape tablets and hence the D Shape design as claimed by the plaintiff is already in public domain and has become common to trade. A schedule indicating the number of medicinal preparations / pharmaceutical products available in D Shape tablets in the market alongwith other details and relevant articles are annexed by the defendant alongwith its affidavit dated 11.3.2008.

21. The plaintiff has also filed affidavit-in-rejoinder to the reply affidavit dated 11.3.2008 filed on behalf of the defendant wherein it is reiterated that the design applied for registration by the plaintiff to the Controller of Patent and Design is new and original design created by the plaintiff Company. That no other product, namely, D Shaped Tablet was available in the market prior to the date of registration of the design applied by the plaintiff. Various documents referred in the affidavit by Mr.Rajesh Chordia on behalf of the defendant Company are misleading and are made to misdirect the Court and confuse the issues involved in the matter. The said products produced with the affidavit of Mr. P.N. Sharma are the products only received in the market after the injunction order of the City Civil Court, Ahmedabad. Even if it is accepted that the statement by the defendant that the said D Shape product was already manufactured and marketed by the defendants prior to the date of injunction, then what tempted the present defendant to exactly copy the shape with the colour scheme and identical trade mark which is popular and known in the market for the product of the plaintiff sold under the trade mark DYNAPAR. It is further submitted that all the annexures produced in the application do not substantiate the stand of the defendant that similar product is used or sold in the market. It is further submitted that the date of manufacture shown on the strip does not establish the case of the defendant because the product manufactured by the defendant was exempted from excise and, therefore, the date of manufacture mentioned is not authentic date, as alleged by the defendant. The product under identical name DENPAR, if used by the defendant in different shape with different colour scheme in the market, clearly establishes that the defendant is trying to create confusion and change the colour scheme and shape of their tablet and also establishes malafide intention of the defendant. It is further submitted that for consideration of injunction application, if the defendant is manufacturing different shape of the same product with different colour, then if injunction granted against the defendants is continued, they are not likely to suffer any loss in business because they are already marketing their products under different shapes and different colour scheme, as contemplated by them in the affidavit. It is also clarified by the plaintiff that even the date of manufacture may be old, but when the product is launched in the market is a crucial point. The plaintiff believes that the said product was manufactured by the defendant just to establish that they are manufacturing the said shape of tablet with different colour scheme prior to the date of injunction to get out of the contempt proceeding. It is, therefore, submitted that the injunction granted by the City Civil Court and continued thereafter till this date was further to be continued till final disposal of the suit.

22. Heard Mr. Mihir Thakore, learned Senior Counsel, appearing with Mr. Y.J.Trivedi, learned advocate for the plaintiff and Mr.Sanjay Mehta, learned advocate appearing for the defendant and perused documents produced before the Court and also considered the relevant statutory provisions and the authorities cited by the learned Counsels on behalf of the respective parties.

23. Section 4 of the Designs Act, 2000 deals with prohibition of registration of certain designs. It says that a design which-

(a) is not new or original; or

(b) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or

(c) is not significantly distinguishable from known designs or combination of known designs; or

(d) comprises or contains scandalous or obscene matter, shall not be registered.

The main argument of the defendant is that the plaintiff's design lacks novelty or originality. The plaintiff's design is also not registrable as it has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date and it is also not significantly distinguishable from known designs or combination of known designs. Since the plaintiff's design is not registrable, the defendant has filed an application for cancellation of registration. The grounds for cancellation of registration are mentioned in Section 19 of the Designs Act, 2000. Section 19 of the Designs Act, 2000 says that;

(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 registrable under this Act; or

(e) that it is not a design as defined under Clause (d) of Section 2.

The defendant has challenged the plaintiff's registration on the ground that the plaintiff's design has been published in India or in any other country prior to the date of registration and that the design is not new or original design.

24. Section 22 of the Designs Act, 2000 is also relevant for the purpose of deciding controversy between the parties. It deals with piracy of registered design. The plaintiff's case before the Court is that the plaintiff's registered design i.e. D Shape Tablet has been imitated by the defendants in its shape, colour and configuration etc. Section 22(2) provides that if any person acts in contravention of this section, is 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. It is only by virtue of Section 22, the plaintiff has prayed for the injunction as well as recovery of fifty thousand rupees by way of damages.

25. In support of their respective submissions the learned Counsels have relied on various authorities before the Court. Mr.Mihir Thakore has relied on the judgments of;

(1) Saunders v. Wiel reported in Reports of Patent, Design and Trade Mark Vol X No. 4 page 29. (2) Texla Metals & Plastics Pvt. Ltd. v. Anil Bhasin and Ors. reported in 2001 (21) PTC 146 (Del.). (3) Vikas Jain v. Aftab Ahmad and Ors. reported in 2008(1) CTMR 43 (Delhi). (4) Castrol India Ltd. v. Tide Water Oil Co. (I) Ltd. reported in 1996 PTC (16) 202. (5) Rotomac Pens Ltd. v. Milap Chand & CO. reported in 1999 PTC (19) 757. (6) Bharat Glass Tube Ltd. v. Gopal Works Ltd., decided by the Hon'ble Supreme Court on 1.5.2008.

26. As against the above authorities Mr.Sanjay Mehta in support of his submissions has relied on judgments of;

(1) Metro Plastic Industries (Regd.) v. Galaxy Footwear reported in : AIR2000Delhi117 (2) Pilot Pen Co. (India) Pvt. Ltd. v. The Gujarat Industries Pvt. Ltd. reported in Bombay AIR 1967 SC 215 (3) B. Chawla and Sons v. Bright Auto Industries reported in : AIR1981Delhi95 (4) Prem Singh v. Ceeam Auto Industries reported in : AIR1990Delhi233 (5) Rotela Auto Components (P) Ltd. v. Jaspal Singh and Ors. reported in 2002 (24) PTC 449 (Del) (6) Khadim Shoe Pvt. Ltd. v. Bata India Ltd. reported in Manu, WB, 0444 of 2004 (7) Prayag Chand Agarwal v. Mayur Plastics Industries reported in Manu, DE, 0166 of 1998. (8) Subash Chander Sehgal and Ors. v. Sona Enterprises reported in 1982 (2) PTC 359 (Del.).

27. The Court now considers the authorities referred to and relied upon by Mr.Mihir Thakore.

(i) In the case of Saunders v. Wiel reported in Reports of Patent, Design and Trade Mark Vol X No. 4 page 29, the owner of a registered design, which was a design for the handles of spoons purporting to represent a particular view of Westminister Abbey, taken from a photograph, brought an action to recover penalties for infringement. The defendant reproduced the identical design on his spoons, but he contended that the plaintiff's design was not a new or original design not previously published in the United Kingdom, and was not good subject matter of a design. At the trial it was held that the design was a proper subject of registration and had been infringed. The defendant appealed and it was held that the words 'new or original design not previously published in the United Kingdom' in Section 47 of the Patents & Co., Act, 1883, did not require novelty in the idea of the design, but novelty in the application of the design to some article of manufacture; that as the design in the present case was admittedly novel in its application, that its novelty was not destroyed by its having been taken from a source common to mankind, and the decision of the Judge below was affirmed.

(ii) In the case of Texla Metals & Plastics Pvt. Ltd. v. Anil Bhasin and Ors. reported in 2001 (21) PTC 146 (Del.), the Court has held that mere receipt of brochures from foreign countries would not amount to publication of such designs within India. If the contention that the defendant has received brochures from Malaysia, Korea and Japan with regard to these goods, the mere receipt of such brochures would not amount to publication of such designs within India. The basic nature and design of a bollard and a delineator would essentially be the same all over the world like traffic lights for example. But what has to be remembered is that bollards and delingeators which are designed by the plaintiff and which are being manufactured by it were not available in India prior to the date of registration of the plaintiff's design. Therefore, while it can be said that the designs were not completely new or original elsewhere, it cannot be said that it is not a new or an original design so far as India is concerned. The concept of a new or an original type of design is reliable to the publication of such a design or its availability to the public in India. This decision also, therefore, does not advance the case of the defendant any further. Under the circumstances, the plaintiff has made out a case for the grant of an injunction.

(iii) In the case of Vikas Jain v. Aftab Ahmad and Ors. reported in 2008(1) CTMR 43 (Delhi), it is held that while there is identity between the plaintiff's design and defendants' design, there is no such identity between the plaintiff's design and the Hong Kong design. For the defence of prior publication taken by defendants to succeed, it must be shown that the very design that is utilised by the plaintiff has been published in India or in any other country prior to date of registration of the plaintiff's design. While it is true that the magazine 'TOYS' has apparently been published in Hong Kong in the year 2003, cannot be said that the design indicated in the said magazine is the same as the design of the plaintiff's toy scooter. Therefore, the defendants cannot take the defence available for cancellation of a licence under Section 19(1)(b) as defence of the action of piracy brought by the plaintiff in respect of registered design. Moreover, what is referred to as 'a prior publication' by defendants consists of a single page of a magazine and that page has different products displaced on it as indicated in Annexure D-2 to No. 6349/2005 filed on behalf of the defendants. It is also true that the so called Hong Kong design appearing in the said document which has been isolated and magnified and printed earlier in this judgment, does not display the design from all angles. The test of ascertaining whether the two design i.e. the Hong Kong design and the plaintiff's design, are identical is that the designs have to be judged by the eye and each design has to be compared to a whole with all its component features, important and unimportant. It is further held that the plaintiff has also been able to demonstrate that even if the plaintiff's design is regarded as having been inspired by the Hong Kong design, the plaintiff has introduced sufficient novelty so as to constitute a new and/or original design. On the other hand, what the defendants have done that, without any exercise of any labour or ingenuity, they have merely imitated and/or copied the plaintiff's design. It was always open to defendants to have also been inspired by the Hong Kong design and to have come up with a different product with sufficient novelties of their own, but that is not what they did. They merely imitated and copied the design of the plaintiff.

(iv) In the case of Castrol India Ltd. v. Tide Water Oil Co. (I) Ltd. reported in 1996 PTC (16) 202, the Calcutta High Court has held that the statement of novelty filed by the petitioner was in respect of the shape, configuration and surface pattern particularly the ridged side of the container. The novelty was not claimed either in relationship to the proportion of the shape or in the colour used. Therefore, the difference in the proportion of the container and the difference in colour between the petitioner's containers and the defendant's containers are immaterial as neither of the colour nor the proportions were part of the registered design. The Court further held that the test of deceptive similarity would be appropriate whether the petitioner pleads passing off. But in cases of infringement of design the question is not whether the similarity has or is likely to cause confusion or deception of a purchaser but whether the similarity is an imitation of the registered design sufficient to destroy the exclusive right of user of the proprietor despite the fact that no confusion is or may be caused as to the source of the goods. Otherwise every registered design could be imitated with impunity merely by changing the colour of the two products. The Court, therefore, held that the respondents have so imitated the petitioner's design as to deprive the petitioner of the protection under the Statute.

(v) In the case of Rotomac Pens Ltd. v. Milap Chand & CO. reported in 1999 PTC (19) 757, the Division Bench of the Calcutta High Court has held that Section 53A of the Designs Act, 1911 categorically provides that during the existence of copy right in any design it shall not be lawful for any person for the purpose of sale to apply or 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 or to do anything with a view to enable the design to be so applied. The heading of Section ought also to be noticed and the same reads, piracy of registered design and Sub-section (2) of Section 53 provides that if any person acts in contravention of this section, he shall be liable for every contravention to pay the registered proprietor of the design a sum not exceeding five hundred rupees recoverable as a contract debt or if the proprietor elects to bring a suit for 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. The registered design gives some amount of protection and there cannot be any denial with regard thereto and the Statute is clear and categorical on the score. The registered holder has a copyright in the design and in terms of Section 53, no one has the authority to act contrary to, or pirate the design which stands registered with the Registrar. The Court further held that the designs of the respondent's pens are imitations of the appellant's registered design and constitute infringements of the copyright in it. Where there is infringement of a copyright, an injunction should normally be granted as a matter of course as damages would not be an adequate remedy.

(vi) In the case of Bharat Glass Tube Ltd. v. Gopal Works Ltd. decided by the Hon'ble Supreme Court on 1.5.2008, the Court held that the concept of design is that a particular figure conceived by its designer in his mind and it is reproduced in some identifiable manner and it is sought to be applied to an article. Therefore, whenever registration is required then those configuration has to be chosen for registration to be reproduced in any article. The idea is that the design has to be registered which is sought to be reproduced on any article. Therefore, both the things are required to go together i.e. the design and the design which is to be applied to an article. The Court further held that a design capable of registration cannot consist of a mere conception of the features mentioned in the definition, or in the case of an article in three dimensions, or a representation of such features in two dimensions. It must, in such a case, in order to comply with the definition, consist of the features as they appear in the article to which they have been applied by some industrial process or means. An applicant for registration of a design has to produce a pictorial illustration of the idea or suggestion which he has to establish as new or original.

28. Mr. Sanjay Mehta has tried to distinguish the above authorities and strenuously urged before the Court that the same are not applicable to the facts of the present case. Authorities relied upon by him are as under:

(i) In the case of Metro Plastic Industries (Regd.) v. Galaxy Footwear reported in : AIR2000Delhi117 , it is held that these are matters where no hard and fast rule can be laid down. Section 53 creates a right in a registered owner. In the absence of an application for cancellation of the design such a right can be enforced and no defence can be taken based on a ground of cancellation. But once an application for cancellation has been made then it would not be open for the Court, trying the suit under Section 53, to turn a blind eye to the pendency of such application. In that case the Court must take into consideration all relevant facts which would include the grounds raised in the application for cancellation. The Court must then decide whether or not to grant an injunction in favour of registered owner. Such a decision must be made judicially. In such cases the Court would apply the principles which govern grant of injunction under Order 39, Rule 1 and 2 CPC. The grant or refusal of injunction must then be based upon all relevant factors. Merely because a registration is recent by itself no ground for refusing an injunction. That also would be a factor which can be taken into consideration by the Court.

(ii) In the case of Pilot Pen Co. (India) Pvt. Ltd. v. The Gujarat Industries Pvt. Ltd. reported in Bombay AIR 1967, 215 it is held that unless there is new or original design, person claiming right in such design by reason of its registration may not claim any protection. It is difficult to attribute any originality in the design of the clip; nor having regard to the evidence of D.W. 2, which has not been attempted to be controverted by the plaintiffs, could it be said that the clip attached to the top is either new or original. A registration cannot be deemed effective unless the design or configuration, sought to be protected, is new and original and not of a pre-existing common type. Where the evidence indicated that the design in question were in use from long before the date, when the registration of the patent was applied for by the plaintiff, it is not possible to say that the designs were new or original and that the plaintiff was entitled to protection which he sought.

(iii) In the case of B. Chawla and Sons v. Bright Auto Industries reported in : AIR1981Delhi95 , it is held that an addition of curve here or there in a shape which is well recognised shape of an article of common use in the market cannot make it an article new or original in design. Where the rear view mirrors available in market were rectangular in shape with rounded edges; width sides curved or sloping and the appellant who had registered his design of mirror under the Act by adding a further curve in such shape claimed his design as a new and original; without endorsing the extent and nature of novelty in design; on application for cancellation of registration by respondent, it is held that the design made by the appellant was devoid of newsness and equally devoid of originality.

(iv) In the case of Prem Singh v. Ceeam Auto Industries reported in : AIR1990Delhi233 , wherein it is held that in order to succeed in an infringement of copyright, or passing off action, a party has to show that he is originator in the sense that the concept emanated from him, and further that the given design or get up or style has become distinctive of his goods to the extent that the trading public associates his goods exclusively with the given design or get up. The moment this is established even prima facie, the Courts have stopped the opposite party, shown to have adopted by limitation or other deceptive means, the design or get-up of the first party, from continuing with the mischief, because that is treated to be a rank instance of dishonesty by the second party. But the crucial fact is always a question of fact, and in a case where the first party himself is shown to have adopted or imitated a trade mark or copyright of a third party, then Courts can resolutely decline to step in aid of this party because honesty of action is the crux of the matter, and court's protection is extended only on the principle that damage to a party who has acquired goodwill or reputation in certain trade mark or design or trading type for marketing his goods, should not be allowed to be affected by the dishonest user of the same by another. If the first party himself is shown to be guilty of identically wrongful conduct, then it cannot seek indulgence of the court, particularly at the initial stage, without even going to trial. Since the plaintiff was shown to be Pirator of the disputed design and not the originator, his application for temporary injunction for restraining defendant from infringing his trade mark would not be maintainable.

(v) In the case of Rotela Auto Components (P) Ltd. v. Jaspal Singh and Ors. reported in 2002 (24) PTC 449 (Del), it was held that when serious disputed questions on various grounds such as prior publication, lack of originality use of trade variation in a particular case are raised, injunction will not follow as a matter of routine. From the perusal of documents on record, in order to determine prima facie, whether the design is new or original, no substantial difference is visible from the design which was published by other companies in the year 1995, 1997 and 1998 and the design of locks of the plaintiffs. The Court has also considered the effect of registration of design and held that under Section 22(3) of Designs Act, 2000, every ground, on which registration of a design may be cancelled, available as a ground of defence. The ground on which cancellation of registration can be sought are enumerated in Section 19 of the Act. It may be noticed that the design is a conception, suggestion or idea of a shape and not an article. If it has already been anticipated, it is not new or original. If it has been pre-published, it cannot claim protection as publication before registration defeats the proprietor's right to protection under the Act.

(vi) In the case of Khadim Shoe Pvt. Ltd. v. Bata India Ltd. reported in Manu, WB, 0444 of 2004, the respondent filed suit for infringement of registered design against the appellant. The Trial Court allowed the suit in appeal, the appellant contended for cancellation of design of product of respondent on ground that design published prior to date of registration. Evidences proved prior publication of design before registration by respondent. In this context Calcutta High Court held that phrase 'prior publication' is a publication by which the members of the public at large are made known the design prior to its registration either by the registered designer himself or by any other party. Such publication might be an unintentional act on the part of the publisher. The intention of the publisher is not relevant fact for considering a prior publication. The idea is whether the people knew about the design or not prior to the date of registration. The Court, therefore, took the view that the design was published prior to its date of registration and hence the design granted to the respondent was cancelled.

(vii) In the case of Prayag Chand Agarwal v. Mayur Plastics Industries reported in Manu, DE, 0166 of 1998, the defendant has shown from the documents that prior to registration of design by the plaintiff, advertisement was published by the defendant regarding distinctive shape, design, configuration and pattern like that of plaintiff in 1994. The Court, therefore, took the view that there is no need to go to the stage of controversy regarding passing off as the Court took the view that the plaintiff was not entitled to injunction.

(viii) In the case of Subash Chander Sehgal and Ors. v. Sona Enterprises reported in 1982 (2) PTC 359 (Del.), keeping in view the counter claim for cancellation of design on the ground that the design of the scooter beading of the plaintiffs is not new or original and it being well settled that the registration of design in itself is not prima facie evidence of its validity has vacated the exparte injunction granted earlier with directions to the defendants to maintain accounts. As regards the monogram, used by the plaintiffs and defendants, the defendant did not claim to be prior user and keeping in view the facts that the user of the same was likely to deceive the ultimate purchaser the defendant was restrained from using the monogram during pendency of the suit.

29. Considering the rival submissions, statutory provisions and authorities cited by both the parties, the Court is of the view that D Shape Tablet may not be considered to be new or original in its plain sense. However, its application is equally important. In Saunders v. Wiel (Supra) it is held that Snew or original design not previously did not require novelty in the idea of the design, but novelty in the application of the design to some article of manufacture. There is no doubt about the fact that English alphabet 'D' is not new or original. However, its application on the Tablet can certainly assume some sort of novelty and this novelty cannot be destroyed by its having been taken from a source common to mankind. Apart from the dispute regarding D Shape Tablet being new or original, further dispute is also raised with regard to its prior publication and if it is established that such D Shape Tablet is previously published in that case also registration of plaintiff's design may be cancelled. On behalf of the defendant, again very strenuous efforts have been made to show that D Shape Tablets were previously published by FEMHURT and Pfizer Ltd. This was sought to be established on the basis of certain brochures and pamplets etc. before the Court. On behalf of the plaintiff a serious dispute was raised on the authenticity as well as their reliability of such documents. In Vikas Jain v. Aftab Ahmad (Supra) the Delhi High Court has clearly made a distinction while considering the defence of prior publication taken by the defendants to succeed. The Court held that it must be shown that the very design that is utilised by the plaintiff has been published in India or in any other country prior to date of registration of the plaintiff's design. The test of ascertaining whether the two designs are identical is that the designs have to be judged by the eye and each design has to be compared to a whole with all its component features, important and unimportant. It is open for the plaintiff to demonstrate that even if the plaintiff's design is regarded as having been inspired by some previous designs, the plaintiff has introduced sufficient novelty so as to constitute a new and/or original design. Previously published designs of other Companies have not been produced before the Court except in pictures and photos. The plaintiff's D Shape tablets as well as defendant's D Shape tablets are produced which are more or less similar. The defendant's D Shape tablets are similar in shape as well as in colour with that of the plaintiff. It would certainly create deception in the mind of ultimate user.

30. It is also relevant to consider one more aspect of the matter and that is the defendant is manufacturing Tablets in other shapes and other colours. Without going into the controversy as to whether these Tablets are manufactured by the defendant prior to the ad-interim order passed by this Court or subsequent to it, the fact still remains that the defendant has been manufacturing such Tablets. In this view of the matter, if the present application for interim relief is considered and ad-interim relief granted earlier which continue till this date, would further be continued during the pendency of the suit, it would not cause any injury or irreparable loss to the defendant. On the other hand, the plaintiff has got design which is D Shape Tablet, registered and the registration has not been cancelled. It is true that the Court will not take into consideration only the said aspect of the registration, while considering the application for interim relief. However, taking into consideration the entire facts and circumstances of the case, the Court is of the view that the plaintiff has made out a prima facie case so as to enable this Court to grant interim relief during the pendency of the suit or in any case, till the plaintiff enjoys registration of its design. All the three ingredients, namely, prima facie case, balance of convenience and irreparable injury are found to be in existence in the present case. The Court, therefore, allows this injunction application and restrains the defendants from manufacturing, marketing and using the impugned design registered under No. 186992 Clause 28 on 16.10.2001 in respect of D Shape Tablet and/or any other Tablet which is having similar shape colour and configuration or material reproduction of the plaintiff's registered design, during the pendency and final disposal of the suit or till the plaintiff enjoys the registration of the said D Shape tablets. Suit be expedited.

31. This injunction application is accordingly disposed off.


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