2015(63)PTC121(Del)
IN THE HIGH COURT OF DELHI
Decided On: 24.04.2015
Appellants: Amit
Jain
Vs.
Respondent: Ayurveda Herbal and Ors.
Judges/Coram:
Counsels:
For Appellant/Petitioner/Plaintiff: S.K. Bansal , Ajay
Amitabh Suman , Amit Chanchal Jha , Santosh
Kumar and Vikash Khera , Advs.
For Respondents/Defendant: Ajay Sahni
and Ankit Sahni , Advs.
JUDGMENT
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 of various design registrations under no. 209976 dated 4th
May, 2007, 213103 dated 29th October, 2007, 213110 dated 29th October, 2007,
213113 dated 29th October, 2007 and 213115 dated 29th October, 2007 all in
class 09-01. The plaintiff has allegedly used the said registered designs after
the deed of assignment dated 17th 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 under no. 209974 dated 4th May, 2007 in class
09-03 and under no. 209973 dated 4th 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:
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-110040, godown at 2122, Bansal Plaza, 3rd 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, 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:
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 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 which the alleged assignment deed has
been executed is dated 24th June, 2013 which mentions the consideration value
of '0' and does not mention the name of the second party. Therefore assignment
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. 314/2007 before 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.
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 dated 4th October, 2006 in the name of M/s. Zenna Plastics Ltd.,
Maharashtra and also registered design No. 173234 dated 24th 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
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:-
20. It is denied by the defendants that
the plaintiff has obtained the registration of a Design under No. 209974 dated 4th
May, 2007 in class 09-03 and/or under No. 209973 dated 4th 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 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,
the alleged registered design bearing No. 209976 dated 4th 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 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 Court vide
its order dated 27th 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-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 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 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 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, MANU/DE/0520/2008 : 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
preexisting, 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."
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
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 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.
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,
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.
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
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. MANU/DE/0763/1998 : 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.
15. In S.P. Chengalvaraya Naidu v.
Jagannath and others, MANU/SC/0192/1994 : 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.
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 27th May, 2015.
