Showing posts with label MY JUDGEMENT. Show all posts
Showing posts with label MY JUDGEMENT. Show all posts

Monday, November 27, 2017

M/S KAMDHENU LIMITED VS M/S AASHIANA ROLLING MILLS LTD



                       


           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

Thursday, November 16, 2017

UMESH GUPTA VS BRIJ MOHAN GOEL




$~5
*                    IN THE HIGH COURT OF DELHI AT NEW DELHI
+CM(M) 1002/2017 & CM No.33285/2017 (for stay)



UMESH GUPTA & ANR ..... Petitioners Through: Mr. Avneesh Garg & Mr. M.P. Singh,



Advs.
Versus
BRIJ MOHAM GOEL & ORS.                                              ..... Respondents
Through:        Mr. S.P. Singh Chaudhari, for R-1.
Mr. S.K. Bansal, Mr. Ajay Amitabh



Suman,  Mr.  Pankaj  Kumar  &    Mr.
Kapil Kumar Giri, Advs. for R-2&3.

CORAM:

HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW O R D E R

%                                         02.11.2017

1.                  This order is in continuation of the earlier order dated 12th September, 2017.

2.                 All the three respondents have been served and the counsel for the respondent no.1 and the counsel for the respondents no.2&3 appear.

3.                 The counsel for the respondents no.2&3 states that respondents No.2&3 are not concerned with the present controversy.

4.                 The counsel for the petitioners / plaintiffs, with respect to the query made from him and as recorded in para no.8 of the earlier order dated 12th
September, 2017, states that the respondent / defendant no.1, taking cue

therefrom has filed an application before the Suit Court for rejection of the

plaint and the said aspect be permitted to be decided in the first instance by

the Suit Court.

5.                 The aforesaid suggestion of the counsel for the petitioners / plaintiffs is accepted.

CM(M) 1002/2017                                                                                                                                   Page 1 of 6





6.                 As far as the challenge to the order impugned in this petition is concerned, a perusal of the copies of the order sheet annexed to the paper book show i) that the issues in the suit were framed on 3rd August, 2010 and the petitioners / plaintiffs were ordered to lead evidence first; ii) neither the petitioners / plaintiffs nor the respondents / defendants led any evidence and

the evidence of the petitioners / plaintiffs was closed on 16th December, 2011 and the evidence of the respondents / defendants was closed on 6th

July, 2012; iii) that however vide order dated 28th August, 2012 evidence was re-opened; iv) that PW1 of the petitioners / plaintiffs was examined on 13th February, 2013 and the suit adjourned to 1st August, 2013 for cross-examination of PW1; v) that on 1st August, 2013 none appeared for the respondents / defendants no.1&2 despite repeated calls and the right of the respondents / defendants no.1&2 to cross-examine PW1 was closed and the matter adjourned for cross-examination of PW1 by respondent / defendant no.3; vi) that though the right of the respondents / defendants no.1&2 to cross-examine PW1 already so stood closed but again vide order dated 1st August, 2013, the said right was closed; vii) that none was appearing for the respondents / defendants no.1&2 at that time though were not proceeded against ex parte; viii) that petitioners / plaintiffs closed their evidence in affirmative on 9th September, 2014 and the suit was adjourned for evidence of the respondents / defendants; and, ix) that it is not as if the respondent / defendant no.1 was not appearing at all thereafter; the counsel for the respondent / defendant no.1 was appearing intermittently.


CM(M) 1002/2017                                                                                                                                   Page 2 of 6





7.                 On enquiry, it is informed that the respondent / defendant no.1 has filed an affidavit by way of examination-in-chief of one of the witnesses and whose cross-examination by the counsel for the petitioners / plaintiffs is yet to take place.

8.                 The respondent / defendant no.1 filed the application, against the order allowing which this petition has been preferred, in or about the month of July, 2016 for opportunity to cross-examine PW1 blaming the advocates then engaged by the respondent / defendant no.1 for neglect.

9.                 The contention of the counsel for the respondent / defendant no.1 before this Court also is the same i.e. that the advocates then engaged by the respondent / defendant no.1 being negligent.

10.            However, neither is there any whisper in the application nor has anything been argued today as to what diligence the respondent / defendant no.1 himself was observing in pursuing the suit. Today also the argument is that the then advocate for the respondent / defendant no.1 kept the respondent / defendant no.1 in the dark and did not inform.

11.            Recording of evidence in the suit invariably requires instructions to be given by the client to the advocate as to the deposition of the witnesses of the other side. It is thus not understandable as to on what premise the respondent / defendant no.1 chose not to pursue the suit by contacting the advocates.

12.            The counsel for the respondent / defendant no.1 has however raised the argument that the litigant should not suffer for the negligence of the advocate.

CM(M) 1002/2017                                                                                                                                   Page 3 of 6





13.            The respondent / defendant no.1 is not an illiterate villager in whose context, it has been so held by the Courts a century ago and which logic applied today to litigations in the capital city of the country has led to litigants as well as the advocates taking it for granted that any amount of negligence on their part will be condoned, if not by the first Court, in appeals / revisions/ constitutional remedies provided under the law only for correction of genuine human/legal errors. However, the indulgence shown by the Courts in yesteryears and the origin whereof is to be found in the British era, the Judges of which era, thought that the Indian lawyers are not competent and the Indians are rustics not aware of their rights, has led to a state of affairs as prevalent today and which is affecting the administration of Justice, thereby endlessly delaying the disposal of the suit.

14.            The counsel for the respondent / defendant no.1 states that the son of the respondent / defendant no.1 was implicated in a murder case and the respondent / defendant no.1 was busy in the same.

15.            The aforesaid plea in the application as well as urged today is without any particulars of dates and the proceedings in the murder case. Moreover, the interaction of the respondent / defendant no.1 with advocates in the murder trial if any at the contemporaneous time should have made the respondent / defendant no.1 wiser and aware of the manner in which cases are to be followed and should have wizened instead of making the respondent / defendant no.1 negligent.


CM(M) 1002/2017                                                                                                                                   Page 4 of 6





16.            The learned ADJ is not found to have dealt with the application in the correct perspective and has also proceeded on the premise that opportunities to contest even if once given up are to be granted at the asking. It is for this reason only that the application has been decided vide the following order:

“Arguments heard on the application of defendant no.1 U/Sec.151 CPC for giving opportunity to him to cross-examine PW-1. The application has been filed after three years of the date on which his right to cross-examine PW-1 was closed. However, on perusal of statement of PW-1 recorded before Hon‟ble Court on 15.12.2008 as well as report of Local Commissioner dated 24.05.2008, the application is allowed to decide the case on merits subject to cost of Rs.15,000/- to be paid by defendant no.1 to plaintiffs and also with direction to cross-examine PW-1 on one and the only date i.e. on 07.09.2017 at 02:00 p.m. Cost be paid on the next date of hearing.”

which is without dealing with the facts or the principles of law applicable in this regard.

17.            Mere imposition of costs of Rs.15,000/- and which the counsel for the respondent / defendant no.1 today also states that the respondent / defendant no.1 is willing to pay, cannot allow a litigant to so wash away his past sins and to purchase opportunities from the Court.

18.            Merit is thus found in the contention of the counsel for the petitioners / plaintiffs that discretion has been wrongly exercised by the learned ADJ in favour of the respondent / defendant no.1.

19.            The discretion is indeed found to have been exercised by the learned ADJ, contrary to law and is thus found to be perverse.


CM(M) 1002/2017                                                                                                                                   Page 5 of 6





20.            The petition thus succeeds.

21.            The order dated 24th  August, 2017 impugned in this petition is set

aside.

22.            Resultantly, the application of the respondent / defendant no.1 for cross-examination of PW1 of the petitioners / plaintiffs is dismissed.

23.            I refrain from imposing any costs on the respondent / defendant no.1.

24.            It is clarified that the learned ADJ, while deciding the application stated to have been filed by the respondent / defendant no.1 under Order VII Rule 11 of the CPC, shall decide the same without being influenced in any manner with the observations contained in the earlier order dated 12th
September,
2017.







RAJIV SAHAI ENDLAW, J.
NOVEMBER 02, 2017
„gsr‟..


CM(M) 1002/2017                                                                                                                                   Page 6 of 6

Featured Post

WHETHER THE REGISTRAR OF TRADEMARK IS REQUIRED TO BE SUMMONED IN A CIVIL SUIT TRIAL PROCEEDING

WHETHER THE REGISTRAR OF TRADEMARK IS REQUIRED TO BE SUMMONED IN A CIVIL SUIT TRIAL PROCEEDING IN ORDER TO PROVE THE TRADEMARK  REGISTRA...

My Blog List

IPR UPDATE BY ADVOCATE AJAY AMITABH SUMAN

IPR UPDATE BY ADVOCATE AJAY AMITABH SUMAN

Search This Blog