IN THE HIGH COURT OF DELHI AT NEW DELHI
RESERVED
ON : 6th SEPTEMBER, 2017
DECIDED
ON : 3rd NOVEMBER, 2017
+
CS(OS)
360/2017, IAs 10100/17 (Delay) & 10101/17 (Delay)
M/S
KAMDHENU LIMITED .....
Plaintiff Through : Mr.Akhil Sibal, Sr.Advocate with Mr.S.K.Bansal, Mr.Ajay
Amitabh Suman & Mr.Kapil Kumar Giri, Advocates.
Versus
M/S AASHIANA ROLLING MILLS LTD .....
Defendant
Through : Mr.C.M.Lal, Sr.Advocate with Mr.Kapil Wadhwa, Ms.Devyani Nath,
Mr.Rupin Bahl & Ms.Nancy Roy, Advocates.
CORAM:
HON'BLE MR. JUSTICE S.P.GARG
S.P.GARG, J.
IA 12872/2017 (u/O XXXIX Rule 1
& 2 CPC) in CS(OS) 360/2017
1. In a suit for Permanent Injunction to restrain infringement of
registered design under the Design Act, 2000, Rendition of Accounts, Delivery
up, etc., the instant IA has been filed by the plaintiff to seek interim
injunction till the disposal of the suit. It is contested by the defendant.
2. Plaintiff’s case as projected in the plaint is that the plaintiff is
a company duly incorporated under the provisions of Companies Act, 1956. It
manufactures and markets steel bars (Saria)
CS(OS) 360/2017 Page 1 of 10
and other allied / cognate goods under the trade name and trademark “KAMDHENU”
which is its registered trademark. It is further pleaded that in order to
distinguish its TMT bars from the other bars available in the market, the
plaintiff has created and developed unique design having new and original
features of surface pattern of double rib to be applied to its steel bar
towards the end of 2012 and the beginning of 2013. It is further averred that
in order to get statutory protection in the said design, the plaintiff applied
for its registration under the Design Act, 2000 and the registration has been
granted under No.250968 in Class 25-01 w.e.f. 14.01.2013 vide certificate dated
29.08.2014 by the office of Controller General of Patents; Designs and
Trademark. It is further urged that the plaintiff applies the said design on
its “KAMDHENU SS 10000 TMT” which is the best quality steel bar. The plaintiff
has the sole right to utilise design in artistic manner and use the same for
its products or any adoption of any identical / similar design. No one else is
entitled to use the said design or any identical / deceptively or confusingly
similar marks without its consent or permission. The plaintiff has built up a
valuable trade, goodwill and reputation.
3. It is further averred that in the first week of June, 2017 the
plaintiff came across TMT bar and leaflets relating thereto of the defendant
bearing the trademark “FRIENDS 500 HD” in the markets of South Delhi. It is
alleged that the defendant has applied / copied / adopted / imitated an
identical design as that of the plaintiff’s design registered under No. 250968
in Class 25-01. The surface pattern of the double rib being so used and applied
by the defendant on its TMT
CS(OS) 360/2017 Page 2 of 10
bars is identical with / or substantially similar and fraudulent and
obvious imitation of the plaintiff’s registered design. The impugned adoption
and use of the plaintiff’s design by the defendant is fraudulent and / or
obvious imitation of the plaintiff’s design. The defendant’s adoption and use
of the impugned design in relation to their steel bar is an infringement of the
plaintiff’s said registered design and is also guilty of passing off.
4. The suit is contested by the defendant. It is
urged that the plaintiff has played fraud upon the Design Office, Kolkata by
misrepresenting itself as the owner and originator of the impugned design
bearing No. 250968. The impugned design has been copied
from British Standard BS 4449:2005 category B500C.
The documents were suppressed by the plaintiff. The impugned design is used as
a standard for reinforcement bars worldwide since 1984. Several countries
including Germany, Poland and U.K. have adopted the said standard. The
plaintiff cannot claim any monopoly or right over the impugned design. In order
to comply with the B500C standard, it is mandatory for any manufacturer to
follow the transverse rib arrangement as depicted in the standard published in
1984. The impugned design is liable to be cancelled under Section 19 of the
Design Act, 2000.
5. It is further averred that the defendant is a part of FRIENDS Steel
Group, it commenced its business operations in 1998. The defendant is a leading
manufacturer of steel bars including TMT bars, other steel rolling sections
like angle, tee, round, etc. The defendant is the manufacturer of FRIENDS TMT
bars in Gujarat and
CS(OS) 360/2017 Page 3 of 10
primarily operates its business in Gujarat; it is
approved / certified by Bureau of Indian Standards. The defendant has been
manufacturing and marketing TMT bars and other allied products for the last
about 19 years. The impugned product was designed in June, 2017 and thereafter
the defendant commenced its trial production. Samples of the impugned product
was sent to the Government approved labs for trial and the testing purposes in
June, 2017. The shape and surface pattern of the impugned product has been
mandated / prescribed by the British Standard BS4449:2005 category B500C
designs, existing in the public domain since September, 2005 in U.K. and in
Germany way back since 1984. The impugned design is a basis of categorization
of the reinforcing bars within the B500 standard. The plaintiff has copied the
impugned design from a surface pattern proposed in B500C category. The
defendant is in the process of filing a cancellation petition before the
Controller of Designs, Kolkatta with regard to the impugned design. It is further
urged that the plaintiff is not the originator, inventor or owner of the
impugned design; it lacks novelty. The impugned design is functional in nature.
It does not have any individual characteristic which makes it different from
prior published surface patterns of TMT bars.
6. In the replication, the plaintiff disclosed that the impugned design
is quite different and distinct from the alleged designs relied upon by the
defendant. The plaintiff’s design is new, novel and original. The plaintiff’s two
sets of the ribs are inclined at 48 degree and 65 degree. The inclination of
ribs at the particular degree is not mentioned in either of the alleged
standard, relied upon
CS(OS) 360/2017 Page 4 of 10
by the defendant. The defendant has copied the same
pattern of ribs inclined at 48 degree and 65 degree and is guilty of
infringement of plaintiff’s registered design. It is further informed that one
Narendra used to work with the plaintiff company as machine operator and was
well versed with the impugned design. He subsequently joined the defendant’s
company. The defendant was ex-licensee of the plaintiff.
7. Learned Senior Counsel for the plaintiff urged
that due to registration of the design under 250968 in Class 25-01, the
plaintiff is a registered proprietor and there is a presumption of validity of
the design. The defendant was the ex-licensee of the plaintiff. It has copied
the exact angle of the plaintiff’s ribs. The two sets of ribs in the plaintiff’s
bar are inclined to 48 degree and 65 degree and it amounts to piracy of the
plaintiff’s design under Section 22 of the Design Act. The plaintiff used the
device of magnifying glass to highlight the design in its advertisement.
Identical device of magnifying glass has been used by the defendant on their
bar to highlight the plaintiff’s design. The defendant has challenged the
validity of the plaintiff’s registered design on the basis that the same has
been prescribed by alleged British Standard prior to the plaintiff’s
registration. However, the validity of the registered trademark cannot be
questioned at the interim stage. The defendant has miserably failed to show
that the subject design is the only mode /option possible for functional
requirement of the product; the alleged defence of functionality is liable to
be rejected. The alleged British Standard provides for range of the designs and
not a particular design as such. Alleged year of publication is not prima facie
established by the
CS(OS) 360/2017 Page 5 of 10
defendant. The balance of convenience is in favour
of the plaintiff and it will suffer irreparable loss if no interim protection
is granted. Reliance was placed on ‘ITC
Limited vs. Controller of Patents and Designs’,
2017 SCC online Cal 415; ‘Gujarat
Bottling Co.Ltd. & Ors. vs. Coca Cola & Ors.’, 1995 (5) SCC 545; ‘Lupin Ltd. & Anr. vs. Johnson and
Johnson & Anr.’, 2015 (61) PTC 1 (BOM)(FB); ‘Whirlpool of India Ltd. vs.
Videocon Industries Ltd.’, 2014 (60) PTC 155 (BOM); ‘Mohan Lal, Proprietor of Mourya Industries vs. Sona Paint & Hardware’, 2013 (55) PTC 61
(DEL)(FB); ‘Cello Household Products vs.
Modware India’, 2017 SCC Online Bom 394; ‘Faber-Castell Aktiengesellschaft vs. Cello Pens Pvt. Ltd.’, 2015
SCC Online Bom 6410; ‘Reckitt Benkiser India Ltd. vs. Wyeth Ltd.’,
2013 (54) PTC 90 (DEL)(FB); ‘Bharat Glass
Tube Ltd. vs. Gopal Glass Works Ltd.’,
AIR 2008 SC 2520; ‘RSPL Ltd. vs. Mukesh
Sharma & Anr.’, 232 (2016)
DLT 161 (DB); and, ‘Wander Ltd. &
Anr. vs. Antox India Pvt. Ltd.’,
1991 PTC-1.
8. Learned Senior Counsel for the defendant while controverting the
contentions urged that the plaintiff is not the originator of the design;
registration was obtained under fraud and its validity can be challenged under
Section 19 of the Design Act. The plaintiff himself has copied the design from
the British Standard BS 4449:2005 category B500C available in the public
domain, it was published in 2005. The design is functional in nature and is not
a registerable under 19(1)(d) of the Act. The defendant is in the process of
filing of cancellation petition. Only in the replication, the plaintiff came up
with the plea that the ribs were inclined 48 degree and 65
CS(OS) 360/2017 Page 6 of 10
degree. Reliance was placed on ‘Amit Jain vs. Ayurveda Herbal & Ors.’, 2015 (63) PTC 121 (Del); ‘Dabur India Limited vs. Mr.Rajesh Kumar
& Ors.’, 2008 (37) PTC 227 (Del); and, ‘M/s. Aashiana Rolling Mills Ltd. vs. M/s.Kamdhenu Ltd.’
FAO(OS)237/2017, CAV.No.760/2017
& CM Nos.30823-24/2017 decided on 28.08.2017.
9. By an order dated 15.06.2017, the defendant and its associates etc.
were restrained from using, selling, soliciting, exporting, displaying
advertising or by any other mode dealing in any manner or mode the impugned
design or any other design which is deceptively similar to or fraudulent and /
or obvious imitation of the plaintiff’s design covered by design registration
No.250968 in Class 25-01 in relation to steel bar and related / allied
products. The said interim protection continues till date.
10. At the time of consideration of interim relief
only prima facie view of the matter is to be taken. Undisputedly, the plaintiff
is the registered proprietor of design under registration No.250968 in Class
25-01 dated 14.01.2013. Till date, the defendant has not filed any cancellation
petition before the concerned authority i.e. Controller General of Patents;
Designs and Trademark. The registration certificate is accompanied by two
sheets where the front view and back view of the TMT bar is reflected. It
records that the novelty resides in surface pattern particularly in the
portions marked A & B rod for construction. The said registration is valid
till date. There will be a presumption of validity due to its registration. It
will be during trial for the defendant to establish that the registration is in
violation of any Clause of Section 19 of the Act.
CS(OS) 360/2017 Page 7 of 10
11. The plaintiff undoubtedly is the prior user of the design since
2013. As per the defendant’s admission, it started trial production of the
impugned steel bars only in June 2017. No substantial sales have been effected
pursuant to that. On the contrary, the plaintiff has pleaded sale of subject
matter products since 2013; its total sale for the year 2016-2017 was `8,377/- lacs. The total gross turnover of the plaintiff for the year
2016-2017 is `63,315/- lacs. The plaintiff has also shown that huge sum of money was
spent on the advertisement of the subject matter. In 2016-2017, `27,50,292/- was spent on advertisement expenses and `1,13,86,571/- was spent on sales promotion.
12. The defendant has not placed on record any credible material at this
stage to infer if the impugned design has been copied by the plaintiff from the
British Standard BS 4449:2005 category B500C. The plaintiff has placed on
record the advertisement undertaken by the defendant for its products which is
identical to the plaintiff’s design. In this advertisement, the defendant
claims that the design underneath the magnifying glass was its ‘innovation’.
Apparently, the defendant cannot plead at this juncture that the impugned
design of which the plaintiff is the registered proprietor was in public domain
prior to 2013.
13. The plaintiff has produced on record a report
from Standard Testing Laboratory (page 245, part III); it records that the sample
described TMT 10 mm “FRIENDS” did not conform to IS : 1786-08 for GR-Fe-500
with test No.3, 4 & 5. Report dated 29.08.2017 (page 246, part III) given
by Mr.Rajesh Kant Chand
CS(OS) 360/2017 Page 8 of 10
Mishra, Assistant Professor observed : “on the basis of various comparisons
as studied and discussed in above paragraphs on support of aforesaid figures
and facts of this report, it has been concluded herein that the design in
FRIENDS’ TMT Bars is the copy of the design in KAMDHENU’s TMT Bars.”
14. The plaintiff has also placed on record the
document showing that one Narendra, who is alleged to have shifted his
employment with the defendant presently, was machine operator with it in April,
2014. The plaintiff has further claimed that earlier the defendant was its
ex-licensee and was aware of the impugned design to be replicated in its TMT
bars. Photocopy of the Licence User Agreement (page 233, part III) executed
between the parties on 01.06.2008 has been placed on record.
15. The impugned design has been protected by the plaintiff earlier also
by filing various suits and the Courts have given interim protection. This is
so apparent from the orders (pages 206 to 219) passed in CS/TM No.78/2014 ‘M/s. Kamdhenu Ispat Ltd. vs. Shri Sharma Steeltech (India) Pvt. Ltd. &
Anr.’ confirmed by this Court in CS(COMM) 348/2016 ‘M/s. Kamdhenu Ispat Ltd. vs. Sh.Sharma Steel Tech India Pvt. Ltd. & Anr.’
and CS/TM No.96/2016 ‘M/s. Kamdhenu Ltd. vs. M/s. Him Steel
Private Limited’ dated
14.12.2016.
16. Considering the above facts, this Court is of
the view that the plaintiff has a prima facie case to protect its design till
the disposal of the case. The arguments raised by the learned Senior Counsel
for the defendant are primarily arguments on merits which can be
CS(OS) 360/2017 Page 9 of 10
considered after the parties are given opportunities to prove their
respective cases by leading credible evidence.
17. The IA is allowed and the interim protection granted vide order
dated 15.06.2017 is confirmed till the disposal of the suit.
18. Observations in the order shall have no impact on merits of the
case.
CS(OS) 360/2017, IAs 10100/17
(Delay) & 10101/17 (Delay)
1. List before the Joint Registrar on 30th November, 2017 for completion of
pleadings, filing of documents and affidavits of admission / denial of the
documents.
2. List before this Court on 20th December, 2017 for framing of issues.
(S.P.GARG)
JUDGE
NOVEMBER 03, 2017 / tr
CS(OS) 360/2017 Page 10 of 10
