One Registered Proprietor of Design against another registered Proprietor of Design
Introduction:
This case concerns a design infringement dispute where Indo Asahi Glass Co. Ltd., the plaintiff, alleged that Jai Mala Roller Glass Ltd., the defendant, infringed its registered design titled "KONOHA" under the Designs Act, 1911. Indo Asahi sought interim relief by way of injunction and other remedies to restrain the defendant from using the allegedly infringing design "DHOOP CHAON" on its glass sheets.
Detailed Factual Background:
Indo Asahi Glass Co. Ltd. is engaged in manufacturing, selling, and dealing with various glass products, including figured glass. The plaintiff is the registered proprietor of a design called "KONOHA" under Registration No. 158266 in Class IV from April 24, 1987. The registration was renewed for a further period from October 31, 1991. Indo Asahi has been using this design extensively since 1987 and claimed substantial goodwill and reputation in the market.
In December 1992, Indo Asahi discovered that Jai Mala Roller Glass Ltd. had allegedly started manufacturing glass sheets with a design similar or deceptively similar to "KONOHA," which the defendant marketed under the name "DHOOP CHAON." Indo Asahi contended that the defendant’s design was visually similar and amounted to an infringement of its registered design, causing business losses. Indo Asahi sought damages of Rs. 6,00,000 along with an injunction.
Detailed Procedural Background:
The plaintiff filed the suit for injunction and damages. During the pendency of the suit, Indo Asahi moved an interlocutory application seeking an interim injunction to restrain the defendant from further using the allegedly infringing design. The defendant opposed the application and also filed a petition (CO 2 of 1993) under Section 51-A of the Designs Act, 1911 for cancellation of the plaintiff’s registered design, arguing that the design lacked originality.
Issues Involved in the Case:
The primary issue was whether the plaintiff was entitled to interim relief despite the pending cancellation petition filed by the defendant challenging the validity of the plaintiff’s registered design? The case also addressed whether the defendant’s use of "DHOOP CHAON" infringed Indo Asahi's registered "KONOHA" design.
Detailed Submission of Parties:
The plaintiff asserted that it was the lawful registered proprietor of the "KONOHA" design and that the defendant’s "DHOOP CHAON" design was deceptively similar, causing confusion and loss to its business. Indo Asahi contended that the registration was valid and enforceable and that the defendant started using the impugned design after 1993, well after the plaintiff’s registration.
The defendant argued that the plaintiff suppressed material facts by not disclosing that the design originated from a Tokyo-based company. It further submitted that the design was neither new nor original, as similar designs had been previously published and used internationally, including by German company Dornbusch GMBH, from whom the defendant allegedly sourced its design.The defendant also claimed that a cancellation petition under Section 51-A had been filed, and until the cancellation was adjudicated, the plaintiff should not be granted interim relief.
Detailed Discussion on Judgments along with their Complete Citation and Context:
The defendant relied on M/s. Nikitasha India Pvt. Ltd. v. M/s. Faridabad Gas Gadgets Pvt. Ltd., AIR 1985 Delhi 136, to argue that an injunction should not be granted where the design's validity is disputed and a cancellation petition is pending.The plaintiff cited M/s. Western Engineering Co. v. M/s. America Lock Co., (1973) II Delhi 177, where it was held that infringement must be judged by the eye alone, and minor variations in design do not negate infringement if the two designs are visually similar under normal usage.The court also referred to V.D. Ltd. v. Boston Deep Sea Fishing & Ice Co. Ltd., 52 RPC 303, which discussed what constitutes prior publication and held that private communication or circulation of catalogues does not amount to public disclosure unless there is effective publication accessible to the public.The defendant invoked M/s. Tobu Enterprises Pvt. Ltd. v. M/s. Megha Enterprises, 1983 PTC 359, where it was held that when both parties have registered designs, no injunction should be granted merely based on prior registration.
Detailed Reasoning and Analysis of Judge:
Justice P. K. Bahri analyzed the evidence and arguments, noting that Indo Asahi's design had been registered since 1987, was renewed, and had been used continuously, giving it market recognition. The defendant had only recently started using the allegedly infringing design in 1993.While acknowledging that the defendant's cancellation petition under Section 51-A raised valid issues about prior publication, the court noted that no conclusive evidence was provided to prove that the design had been published or used in India prior to the plaintiff's registration. The court emphasized that mere receipt of a catalogue from a German company did not establish public availability of the design in India.The judge observed that although the two designs appeared substantially similar, given that both parties held registered designs and relying on the precedent from Tobu Enterprises (1983), Indo Asahi was not entitled to interim injunctive relief until the dispute over validity was resolved.The judge, however, directed the defendant to maintain proper accounts of sales made under the impugned design and to file quarterly reports with the court to safeguard the plaintiff’s potential right to claim damages if successful at trial.
Final Decision:
The court declined to grant the temporary injunction sought by Indo Asahi. However, it directed Jai Mala Roller Glass Ltd. to maintain accurate records of sales involving the impugned design and to file quarterly statements in court until the suit’s final disposal.
Law Settled in this Case:
The judgment reaffirmed that where both parties hold registered designs, interim injunctions may not be granted solely on the basis of prior registration. The court also emphasized that alleged prior publication must be substantiated with clear evidence of public disclosure in India. The ruling balances protection of registered rights with the need to prevent unjustified restraints on business activities pending final adjudication.
Case Title: Indo Asahi Glass Co. Ltd. Vs Jai Mala Roller Glass Ltd. and Another
Date of Order: 19 December 1994
Citation: 1995(33)DRJ317
Name of Court: High Court of Delhi
Name of Judge: Justice P. K. Bahri
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Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
