Iritech Inc. Vs The Controller of Patents

MIPR2017(3)1, 2017(70)PTC237(Del)

IN THE HIGH COURT OF DELHI

W.P.(C) 7850/2014

Decided On: 20.04.2017

Appellants: Iritech Inc.

Vs.

Respondent: The Controller of Patents

Judges/Coram:

Sanjeev Sachdeva, J.

Counsels:

For Appellant/Petitioner/Plaintiff: S.K. Bansal and Ajay Amitabh Suman, Advocates

For Respondents/Defendant: Akshay Makhija, CGSC and Shivi Sanyam, Advocate

JUDGMENT

Sanjeev Sachdeva, J,

1. The Petitioner by the present petition seeks quashing of the "deemed to be withdrawn" status of the application No. 5272/DELNP/2008 under section 11B of the Patents Act, 1970 (hereinafter referred to as the Act) and seeks restoration of the said application and for proceeding further with the same. The Petitioner also seeks a direction to the respondents to correct the clerical/typographical error in the number of the Patent application in Form No. 18 and other documents to read as 5272/DELNP/2008.

2. The petitioner on 08.01.2007 filed an application in the Patent Office of the Republic of Korea, in respect of invention titled "IRIS IDENTIFICATION SYSTEM AND METHOD USING MOBILE DEVICE WITH STEREO CAMERA" for grant of Patent under the Patent Co-operation Treaty vide PCT Application No. PCT/KR2007/000099.

3. On 18.06.2008, the petitioner filed the Indian National Phase Application No. 5272/DELNP/2008. The priority date in respect of the Indian National Phase Application was shown to be 07.01.2006 and the PCT international filing date was shown to be the date of the filing of the Korean Patent i.e. 08.01.2007.

4. The Petitioner on 30.06.2008 made a request, under Section 11B (1) of the Act on Form 18 under the Patent Rules 2003 (hereinafter referred to as the Rules) for substantive examination of the said Indian National Phase application.

5. It is contended by the Petitioner that during the follow up actions, it was noticed that in Form 18 as well as in its covering letter, the number of the Indian National Phase application had been incorrectly typed as 6272/DELNP/2008 instead of 5272/DELNP/2008.

6. On 02.01.2010 (incorrectly dated as 02.01.2009), the petitioner addressed a letter to the Respondent bringing to its notice the aforesaid error of the Patent application number in Form 18 and requested the Respondent to treat the request for substantive examination on Form 18 and the payment made there under, in relation to Patent application No. 5272/DELNP/2008 instead of No. 6272/DELNP/2008. The letter sought correction under Section 78 of the Act and was accompanied with the prescribed fee of Rs. 2,000/- for carrying out the correction under Section 78 of the Act. The Petitioner also enclosed therewith the corrected Form 18 and the covering letter. It is contended that thereafter there was No. communication from the side of the Respondents.

7. Subsequently on 02.02.2010, the petitioner obtained the search report of the aforesaid application from the official website of the Indian Patent Office wherein the application was shown as "deemed to be withdrawn" under Section 11B (4) of the Act.

8. By email dated 30.01.2012, the Assistant Controller of Patents and Designs informed the petitioner that the documents filed by the petitioner seemed to relate to the Patent Application No. 5272/DELNP/2008 but had been filed mentioning the application No. 6272/DELNP/2008, which did not belong to the petitioner. The Assistant Controller also informed that the petitioner may face difficulty in meeting the time lines for filing Form 18 and informed that necessary remedial steps be taken.

9. The petitioner by letter dated 13.02.2012 requested the Respondent to make necessary corrections in terms of its aforesaid letter dated 02.01.2010 (sic 02.01.2009). The petitioner also requested that the status of the application be corrected. The Respondents declined to entertain the application of the petitioner leading to the filing of the present petition.

10. The Respondents in their counter affidavit have contended that under Section 78 of the Act, the Power of the Controller to correct clerical errors can only be exercised or made to effect, when the patent application is in examination procedure. It is contended that as the patent application was not in examination on the date of filing of the request under Section 78 i.e. on 02.01.2010, there was No. office action possible on the petitioner's patent application.

11. It is submitted that the priority date of the patent application No. 5272/DELNP/2008 was 07.01.2006 and consequently the last date, for filing Form-18 (Request for Examination) was 07.01.2010 and the requisite form-18 was never filed in the said patent application consequently the application had become "deemed to be withdrawn" on the expiry of 07.01.2010.

12. It is submitted that the office action under Section 11B(4) (deemed to be withdrawn) is the outcome of inaction on the part of the petitioner due to non-filing of the request for examination for the relevant application, within the prescribed period of four years. It is contended that the petitioner's authorized patent agent had not acted diligently for the reason that when he submitted Form 18, office issued a CBR (Receipt) indicating the application number in which the request was filed and if he had properly checked, he would have noticed the error and notified the office immediately to avoid such a situation.

13. It is submitted that the request for correction made by the petitioner by letter dated 02.01.2010 (sic 02.01.2009) was not the proper procedure to make corrections under the Act. It is further submitted that the petitioner made a request for correction of the error only on 13.02.2012 which was beyond the statutory time period and by that time the patent application was already deemed to have been withdrawn under Section 11B(4). It is contended that the petitioner's agent should have filed a request for examination in prescribed manner afresh, within the prescribed period of four years, to seek correction of the mistake.

14. It is further contended that as per Section 11B of the Act any interested person, other than the applicant, can also make a request on Form 18, so there was No. reason to doubt that there was any mistake or mismatch in the Form-18 submitted by the petitioner.

15. Reliance is placed by counsel for the Respondent on the decision of a coordinate bench of this court NIPPON STEEL CORPORATION VERSUS UNION OF INDIA: MANU/DE/0712/2011 : 2011 III AD (Delhi) 226, to contend that the Controller of patents is not competent to allow the application for amendment after the patent application is deemed to have been withdrawn.

16. To resolve the controversy we would need to examine the scheme of Sections 11 B, 12 of the Act, Rules 24 B of the Rules pertaining to making a Request for Examination and Section 78 pertaining to power of controller to correct errors.

17. Section 11B of the Act which deals with request for examination and section 12 which deals with examination of the applications read as under:

"Section 11B. Request for examination

(1) No. application for a patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within the prescribed period.

(2) Omitted by the Patents (Amendment) Act, 2005

(3) In case of an application in respect of a claim for a patent filed under sub-section (2) of section 5 before the 1st day of January, 2005 a request for its examination shall be made in the prescribed manner and within the prescribed period by the applicant or any other interested person.

(4) In case the applicant or any other interested person does not make a request for examination of the application for a patent within the period as specified under sub-section (1) or sub-section (3), the application shall be treated as withdrawn by the applicant:

Provided that--

(i) the applicant may, at any time after filing the application but before the grant of a patent, withdraw the application by making a request in the prescribed manner; and

(ii) in a case where secrecy direction has been issued under section 35, the request for examination may be made within the prescribed period from the date of revocation of the secrecy direction.

12. Examination of application.--

(1) When a request for examination has been made in respect of an application for a patent in the prescribed manner under sub-section (1) or sub-section (3) of section 11B, the application and specification and other documents related thereto shall be referred at the earliest by the Controller to an examiner for making a report to him in respect of the following matters, namely:--

(a) whether the application and the specification and other documents relating thereto are in accordance with the requirements of this Act and of any rules made there under;

(b) whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the application;

(c) the result of investigations made under section 13; and

(d) any other matter which may be prescribed.

(2) The examiner to whom the application and the specification and other documents relating thereto are referred under sub-section (1) shall ordinarily make the report to the Controller within such period as may be prescribed.

18. Section 11B of the Act, inter-alia, prescribes that No. application submitted for grant of a patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner, for such examination, within the prescribed period and if No. request is made within the prescribed period the application would be deemed to have been withdrawn.

19. Under section 12 of the Act, when a request for examination is made in respect of an application for a patent under sub-section (1) or sub-section (3) of section 11B, the application and specification and other documents related thereto are to be referred at the earliest, by the Controller, to an examiner for making a report to him, inter-alia, as to whether the application and the specification and other documents relating thereto are in accordance with the requirements of this Act and of any rules made there under. The examiner to whom the application and the specification and other documents relating thereto are referred under sub-section (1) is to make the report to the Controller within such period as may be prescribed.

20. Rule 24B of the Rules that prescribes the respective periods referred to in Section 11B and 12, reads as under:

Rule 24B. Examination of application.--

(1)(i) A request for examination under section 11B shall be made in Form 18 within forty-eight months from the date of priority of the application or from the date of filing of the application, whichever is earlier;

(ii) The period within which the request for examination under sub-section (3) of section 11B to be made shall be forty-eight months from the date of priority if applicable, or forty-eight months from the date of filing of the application;

(iii) The request for examination under sub-section (4) of section 11B shall be made within forty-eight months from the date of priority or from the date of filing of the application, or within six months from the date of revocation of the secrecy direction, whichever is later;

(iv) The request for examination of application as filed according to the 'Explanation' under sub-section (3) of section 16 shall be made within forty-eight months from the date of filing of the application or from the date of priority of the first mentioned application or within six months from the date of filing of the further application, whichever is later;

(v) The period for making request for examination under section 11B, of the applications filed before the 1st day of January, 2005 shall be the period specified under the section 11B before the commencement of the Patents (Amendment) Act, 2005 or the period specified under these rules, whichever expires later.

(2)(i) The period within which the Controller shall refer the application and specification and other documents to the examiner in respect of the applications where the request for examination has been received shall ordinarily be one month from the date its publication or one month from the date of the request for examination whichever is later:

Provided that such reference shall be made in order in which the request is filed under sub-rule (1).

(ii) The period within which the examiner shall make the report under sub-section (2) of section 12, shall ordinarily be one month but not exceeding three months from the date of reference of the application to him by the Controller;

(iii) the period within which the Controller shall dispose off the report of the examiner shall ordinarily be one month from the date of the receipt of the such report by the Controller.

(3) A first examination report along with the application and specification shall be sent to the applicant or his authorised agent ordinarily within six months from the date of the request for examination or six months from date of publication whichever is later. In case other interested person files the request, for examination, an intimation of such examination may be sent to such interested person.

(4) The time for putting an application in order for grant under section 21 shall be twelve months from the date on which the first statement of objection is issued to the applicant to comply with the requirements.

21. Under Rule 24B (1) of the Rules, a request for examination under Section 11B of the Act is to be made in Form 18 within forty-eight months from the date of the priority of the application or from the date of filing of the application, whichever is earlier. In the present case, the last date admittedly was 07.01.2010.

22. Rule 24B(2)(i) of the Rules, inter-alia, prescribes that the Controller shall refer the application and specification and other documents to the examiner, in respect of the applications where the request for examination has been received, ordinarily within one month from the date its publication or one month from the date of the request for examination whichever is later.

23. Under Rule 24B(2)(ii), the examiner is to make a report, under sub-section (2) of section 12, between one month to three months, from the date of reference of the application to him by the Controller.

24. Section 11A of the Act, dealing with Publication of applications, stipulates that an application for grant of patent shall ordinarily not be open to the public for such period as may be prescribed. After the prescribed period, during which it is not open to public, the application is to be published as soon as possible. Rule 24 of the Rules prescribes the period, during which it would not be open to public, as 18 months from the date of filing of the application or the date of priority of the application, whichever is earlier. After the expiry of the said period, the Controller has to publish the application in the journal, within one month.

25. In the present case, the Indian National Phase application, for grant of patent, was made on 18.06.2008. The request for examination under Section 11B(1) of the Act, mentioning an incorrect application number, was made on 30.06.2008. The priority date of the application is 07.01.2006. In terms of Rule 24, the application for grant of patent had to be published within one month of expiry of 18 months of the date of application (i.e. 18.06.2008) or 18 months of the priority dated (i.e. 07.01.2006), whichever is earlier. Under Rule 24B, the request for examination under section 11B had to be referred to the examiner within one month of the publication. In the instant case, the earlier of the two dates is 07.01.2006, so the publication would have had to happen within one to three months of expiry of 18 months thereof. i.e. within three months of 07.07.2007.

26. The request for examination under section 11B was filed on 30.06.2008 so the same under Rule 24B would have had to be referred to the examiner within one month of the receipt i.e. by 30.07.2008. The examiner would thereafter be required to submit the report within one month. If the examiner had examined the application under 11B of the Act, in time and submitted his report to the controller, it would have been brought to the notice of the Petitioner well before the expiry of 48 months prescribed period, that there was an error in the request for examination and the petitioner could have taken steps to remedy the error.

27. The Petitioner on 02.01.2010 filed a letter with the Respondents seeking correction under section 78 of the Act. The request for correction was made prior to the expiry of the prescribed period of 48 months, which was to expire on 07.01.2010.

28. Section 78 of the Act, which deals with the power of the Controller to correct errors, reads as under:

"S. 78. Power of Controller to correct clerical errors etc.--

(1) Without prejudice to the provisions contained in sections 57 and 59 as regards amendment of applications for patents or complete specifications or other documents related thereto and subject to the provisions of section 44, the Controller may, in accordance with the provisions of this section, correct any clerical error in any patent or in any specification or other document filed in pursuance of such application or in any application for a patent or any clerical error in any matter which is entered in the register.

(2) A correction may be made in pursuance of this section either upon a request in writing made by any person interested and accompanied by the prescribed fee, or without such a request.

(3) Where the Controller proposes to make any such correction as aforesaid otherwise than in pursuance of a request made under this section, he shall give notice of the proposal to the patentee or the applicant for the patent, as the case may be, and to any other person who appears to him to be concerned, and shall give them an opportunity to be heard before making the correction.

(4) Where a request is made under this section for the correction of any error in a patent or application for a patent or any document filed in pursuance of such an application, and it appears to the Controller that the correction would materially alter the meaning or scope of the document to which the request relates and ought not to be made without notice to persons affected thereby, he shall require notice of the nature of the proposed correction to be published in the prescribed manner.

(5) Within the prescribed time after any such publication as aforesaid any person interested may give notice to the Controller of opposition to the request, and, where such notice of opposition is given, the Controller shall give notice thereof to the person by whom the request was made, and shall give to him and to the opponent an opportunity to be heard before he decides the case."

29. Section 78 of the Act, inter-alia, empowers the controller to correct any clerical error in any patent or in any specification or other document filed in pursuance of such application or in any application for a patent or any clerical error in any matter which is entered in the register. The correction can be made either upon a request in writing made by any person interested and accompanied by the prescribed fee, or without such a request.

30. The rules prescribe various forms for different actions under the Act and the Rules. The First Schedule read with Rule 7 rules provides for the forms and the fee to be paid for various actions under the Act and the Rules. With regard to an application under section 78 for corrections, the First Schedule stipulates as under:

31. It may be noted that there is No. form prescribed for making a request for correction of clerical error under Section 78 of the Act. The fee prescribed is Rs. 500/- for natural persons and Rs. 2,000/- for other than natural persons.

32. The petitioner, on 02.01.2010, had given a letter requesting for correction, under Section 78 of the Act, of the clerical error in the Form 18, wherein the petitioner had mentioned the number of the Indian National Phase application as 6272/DELNP/2008 instead of 5272/DELNP/2008. It may be noted that, in the originally filed request for examination, the date of the application for grant of patent was correctly mentioned as 18th June 2008 and the description of the patent was correctly mentioned as "IRIS IDENTIFICATION SYSTEM AND METHOD USING MOBILE DEVICE WITH STEREO CAMERA". Along with the request for correction, the petitioner also paid the requisite fee of Rs. 2,000/-.

33. Since there is No. form prescribed by the Act or the Rules for seeking correction under Section 78 of the Act, even a letter would be sufficient. The petitioner along with the letter had enclosed the corrected Form 18 and the corrected covering letter. The request was made prior to the expiry of the period of 48 months. The requisite fee was also paid thereon. There is No. reason as to why the Respondents should not have considered the same.

34. The reason given in the counter affidavit, that the Power of the Controller to correct clerical errors can only be exercised or made to effect, when the patent application is in examination procedure and on the date of filing of the request under Section 78 i.e. on 02.01.2010, there was No. office action possible on the petitioner's patent application, is not tenable, in view of what has been noticed hereinabove with reference to Sections 11B, 12 of the Act and Rules 24B of the Rules.

35. If the Respondents had struck to the timelines for examination, the patent application would have been in the examination procedure. Further, a request under Section 78 is not dependent on the examination procedure or any office action on the patent application. If the request of the petitioner for correction under Section 78 had been considered by the respondents, there is No. reason as to why the same was not liable to be granted.

36. The request for correction under Section 78 of the Act was made before the expiry of the 48-month period, was accompanied with the requisite fee and sought correction of what was clearly a clerical error. Thus the action of the Respondents, in not considering the request for correction, cannot be sustained.

37. The contention, that the request for correction made by the petitioner by letter dated 02.01.2010 (sic 02.01.2009) was not the proper procedure to make corrections under the Act, is also not tenable in view of what has been noticed hereinabove with reference to Section 78 of the Act. Further contention that the request for correction made on 13.02.2012 was beyond the statutory time period and by that time the patent application was already deemed to have been withdrawn under Section 11B(4) is of No. consequence as by letter dated 13.02.2012, the petitioner had only reiterated the earlier request dated 02.01.2010. The letter of 13.02.2012 was not even accompanied with any fee, which fee had already been paid along with the request dated 02.01.2010.

38. Further contention that as per Section 11B of the Act any interested person, other than the applicant, can also make a request on Form 18, so there was No. reason to doubt that there was any mistake or mismatch in the Form-18 submitted by the petitioner, is also not substantiated from the record.

39. Form 18 which is prescribed by the rules is as under:

40. Perusal of Form 18 shows that where a request is made by the applicant, then the statement is to be filled in terms of Para 2 and if the request is made by any other interested person then the statement is to be filled in terms of Para 3.

41. The Petitioner had filled up Form 18 and had given the statement as prescribed by Para 2. When the petitioner had specifically stated, in Form 18, that the request for examination is being made by the Applicant and gave a statement in terms of Para 2 thereof, so how can the respondents contend, that as any interested person other than the applicant can also make a request on Form 18, there was No. reason to doubt that there was any mistake or mismatch in the Form-18 submitted by the petitioner. This contention is further controverted by the email dated 30.01.2012 written by the Assistant Controller of Patents to the Advocates of the Petitioner as under:

"This has come to my notice that there is some discrepancy in documents filed in respect of patent application 5272/delnp/2008. I find it necessary to bring the same in your knowledge. Correspondence dt. 27.06.2008; dt. 18.07.2008. Request in F-18 dt. 30.06.2008, Form-5 which seems to related your patent application 5272/delnp/2008 has been filed mentioning patent application No. 6272/delnp/2008, This application No. 6272/delnp/2008 does not belong to your firm.

As such your client/applicant may have to face difficulty in meetings the timelines for filing of F-18.

This is for your information as to take necessary remedy at your end."

42. The email dated 30.01.2012 clearly shows that the error in Form 18 was an apparent clerical error and was writ large.

43. Further, the reliance placed by counsel for the Respondent on the decision of a coordinate bench of this court in NIPPON STEEL CORPORATION (supra), to contend that the Controller of patents is not competent to allow the application for amendment after the patent application is deemed to have been withdrawn, is misplaced. In NIPPON STEEL CORPORATION, the petitioner failed to file a request for examination under section 11B within forty-eight months from the date of priority of the application. Thereafter the Petitioner, therein, filed an application seeking to amend the date of priority. It was held that the amendment could not be granted as the application for amendment was filed after the original priority date had already expired and the application for grant of patent had already been deemed to have been withdrawn.

44. The said judgment is not applicable in the facts of the present case. In this case, the request for examination was filed within the 48-month period and even the request for correction of the clerical error was made prior to the expiry of the period of 48 months and prior to the application for grant of patent being deemed to have been withdrawn.

45. In view of the above, the action of the Respondents in deeming the Indian National Phase application No. 5272/DELNP/2008 as deemed to be withdrawn, is set aside. The "Deemed to be withdrawn" status of the application is accordingly quashed. The application is restored and shall be treated to be pending. The clerical error in the Request for Examination and its supporting documents, submitted by the petitioner, shall be corrected and the Indian National Phase application number referred therein shall be read as 5272/DELNP/2008. Any reference made therein to Indian National Phase application No. 6272/DELNP/2008 shall be read as Indian National Phase application No. 5272/DELNP/2008. The Respondents shall proceed further with the application in accordance with law. There shall be No. orders as to costs.

Abhoy Kumar Jain Vs Vrajlal Manilal & Company

IN THE HIGH COURT OF DELHI

W.P.(C) No. 7941/2012

Decided On: 02.02.2017

Appellants: Abhoy Kumar Jain

Vs.

Respondent: Vrajlal Manilal & Company and Ors.

Judges/Coram:

Sanjeev Sachdeva, J.

Counsels:

For Appellant/Petitioner/Plaintiff: Sanjeev Sindhwani, Senior Advocate and Ajay Amitabh Suman

JUDGMENT

Sanjeev Sachdeva, J.

W.P.(C) No. 7941/2012 & CM No. 19913/2012(stay)

1. The petitioner impugns order dated 07.11.2012 passed by the Intellectual Property Appellate Board (hereinafter referred to as the IPAB), allowing the Original Rectification Application filed by the respondent for removal of the mark of the petitioner "Tufan" under registration No. 1148910, in class 34, thereby rectifying the trademark of the petitioner.

2. The respondent claims to be a registered proprietor of trademark "Toofan Bidi", registered consequent to registration application TM-1 filed on 17.10.2001. The petitioner claims to be a registered proprietor of the impugned trademark "Tufan" applied vide the TM-1 filed on 07.11.2002.

3. The respondent filed the rectification application seeking rectification of the register of the Registrar of Trade Marks and for removal of the trademark "Tufan" registered in favour of the petitioner.

4. There is no dispute between the parties that the parties consider the rival trademarks as deceptively similar. The dispute is with regard to the priority in adoption of the mark by the parties. Both the parties dispute the claim of each other with regard to the date of the respective adoption. The petitioner claims to have adopted the mark "Tufan" in the year 1998 and the respondent claims to have adopted the mark "Toofan Bidi" in the year 1999. The petitioner disputes that the respondent adopted the mark in the year 1999 and contends that the same was adopted much later and likewise the respondent disputes that the petitioner adopted the mark in the year 1998 and contends that the same was adopted much later than what is claimed.

5. On 07.11.2012, when the petition was listed before the IPAB and disposed of by the impugned order, the petitioner (respondent before IPAB) was not present. It is contended by the petitioner that on account of medical reasons of the mother of the petitioner, the petitioner could not before the IPAB, thus there could be no representation.

6. The impugned order dated 07.11.2012 is assailed, inter alia, on the ground that the order is an ex parte order and does not take into account the various contentions and submissions as well as the documents placed on record by the petitioner.

7. It is contended that though the order records that the IPAB has considered the material placed before it, the order does not give any reasons for accepting the contention of the respondent and rejecting the statement of defence and the material placed by the petitioner before the IPAB. It is contended that the IPAB has not even examined the material placed by the petitioner.

8. Learned senior counsel for the petitioner pointed out to certain invoices filed by the respondent before the IPAB to contend that these were not genuine as there were certain discrepancies in the said invoices.

9. Without going into the controversy being raised by the petitioner with regard to the genuineness or otherwise of the material placed by the respondent before the IPAB, since the impugned order is an ex parte order and apparently does not consider the statement of defence and the material placed by the petitioner before the IPAB, the impugned order dated 07.11.2012 is set aside. The Trademark of the petitioner "Tufan" is restored on the register of Registrar of Trademarks. The matter is also remitted to the IPAB for reconsideration of the case of the parties.

10. Learned senior counsel for the petitioner has contended that there are certain more documents and evidences that the petitioner would like to place before the IPAB. He contends that the said material has been placed on the record of this case. Learned counsel for the respondent opposes the request for filing additional documents and evidences.

11. Since I have set aside the impugned order and passed an order of remit, solely on the ground that the order is an ex parte order and has not taken into account the statement of defence and the material placed by the petitioner before the IPAB, I am not considering the prayer of the petitioner for filing additional documents/evidence before the IPAB and leave it to the discretion of the IPAB to consider the prayer in accordance with law, if such a prayer is made to the IPAB.

12. Since the rectification was filed in the year 2006 and the order impugned herein was passed in 2012, I deem it expedient to direct the IPAB to expedite the hearing of the petition and dispose of the same preferably within a period of six months from the date the matter is taken up for the first time by the IPAB.

13. It is clarified that the Court has not examined the merits of the contentions of either the petitioner or the respondent and has passed the order of remit in the limited circumstances, as noted hereinabove.

14. Learned counsel for the parties inform that on account of insufficient number of members, no sittings of the IPAB are being held. Parties are given liberty to approach the IPAB for fixing an earlier date for commencing the hearing in the matter once the Appellate Board is reconstituted.

15. The Writ Petition is disposed of in the above terms.

16. There shall be no order as to costs.

17. The Registry is directed to transmit the records of the IPAB back to the IPAB, as expeditiously as possible.

Smt. Raj Wadhwa Vs Glaxo India Ltd. and Ors.

2011(46)PTC61(Del)

IN THE HIGH COURT OF DELHI

W.P. (C) No. 11800 of 2005

Decided On: 05.10.2010

Appellants: Smt. Raj Wadhwa

Vs.

Respondent: Glaxo India Ltd. and Ors.

Judges/Coram:

Dr. S. Muralidhar, J.

Counsels:

For Appellant/Petitioner/Plaintiff: Ajay Amitabh Suman and Santosh Kumar, Advs.

For Respondents/Defendant: Anuradha Salhotra, Sumit Wadhwa and Doyel Sen Gupta, Advs.

ORDER

S. Muralidhar, J.

1. Aggrieved by an order dated 9th March 2005 passed by the Intellectual Property Appellate Board ("IPAB") dismissing her appeal, the Petitioner has filed the present writ petition.

2. The Petitioner filed an Application No. 429975 on 20th November 1984 for registration of the trade mark in the form of label consisting of the word "GOLDCON-D" in respect of infant foods including glucose in class 5 of the I Vth Schedule to the Rules framed under the Trade and Merchandise Marks Act, 1958 ("TM Act, 1958") claiming user since 27th May 1984. The application was advertised in the Trade Marks Journal No. 935 dated 16th May 1988 at page 195. Respondent No. 1 Glaxo India Ltd. ("Glaxo") gave notice of their intention to oppose the registration of the impugned mark on 14th July 1988 on the ground that it was violative of the provisions of the TM Act, 1958. On 20th March 1989, the Petitioner filed her counter statement and grounds in rebuttal to the objections of Glaxo. On 28th August 1989, Glaxo filed its evidence in support of the opposition. The Petitioner also filed evidence in support of the application.

3. The Assistant Registrar of Trade Marks rejected the Petitioner's application on the ground that the impugned mark of the Petitioner i.e. "GOLDCON-D" is similar to the registered mark of Glaxo i.e. "GLUCON-D". After discussing the evidence filed by the parties, the Assistant Registrar concluded that "the use of the mark applied for is likely to deceive and cause confusion in the minds of the consumers in respect of the trade source. Hence registration of the mark applied for is prohibited by operation of Section 11(a) of the TM Act, 1958."

4. As regards the user of the mark, the Assistant Registrar noticed that the Petitioners had claimed user since 27th May 1984 but had not adduced evidence in support of such claim. Consequently, the claim of the Petitioner to be the proprietor of the mark in terms of Section 18(1) of the Act was negatived.

5. Before the IPAB it was contended by the Petitioner that GOLDCON-D is part of Petitioner's trading style, M/s. Goldcon Products. Further it was submitted that both visually and phonetically there was a lot of difference between "GOLDCON" and "GLUCON". Thirdly, it was contended that the suit filed by Glaxo against the Petitioner in the civil court at Dehradun was dismissed for default on 17th May 1988 and Glaxo did not take any steps for restoration of the suit. This implied that Glazo did not have any case. It was further submitted by the Petitioner that no documents were produced by Glaxo to demonstrate the user of the mark prior to the Petitioner. Glaxo had only filed affidavits.

6. On comparing the marks, the IPAB concluded that GOLDCON-D was likely to cause confusion in the minds of the average consumer and deceive him into thinking that he was buying GLUCON-D. It was noticed that when goods are of the same description, Courts are expected to be careful in finding similarity and minute differences cannot be taken into account to find out the distinction between the two marks. The Petitioner's goods were infant foods including glucose whereas the Glaxo's registered trade mark was in respect of Glucose (for food), flour and preparation made from cereals, bread, biscuits, etc. The goods were of the same nature, composition and functions. The trade channel was also the same. The IPAB concluded that the prohibition under Section 12(1) of the Act was also attracted. As regards the claim of the Petitioner that the word "GOLDCON" is part of their trading style, the IPAB observed that there was no explanation for adding the letter "D" along with the mark.

7. Before this Court, Mr. Ajay Amitabh Suman learned Counsel for the Petitioner reiterated the submissions made before the IPAB. In addition, he urged that the dismissal of the suit filed by Glaxo against the Petitioner in the civil court in Dehradun followed by Glaxo's failure to have the suit restored, tantamounted to acquiescence by Glaxo in the use by the Petitioner of the impugned mark. Secondly it is submitted that in response to a legal notice issued to it by Glaxo, the Petitioner had replied in 1984 denying any infringement. For three years thereafter no action was taken by Glaxo. It was only in 1987 that a suit was filed. The suit was dismissed for default in 1996 and not restored. It is submitted that all the ingredients of what would constitute 'acquiescence' within the meaning of Section 33 of the Trade Marks Act, 1999 (TM Act, 1999'), stood attracted.

8. This Court is unable to agree with the above contention of the Petitioner. The mere dismissal of a suit for infringement in 1996 cannot per se mean that Glaxo acquiesced to the use by the Petitioner of the trade mark in question. At the first available opportunity after the Petitioner's application was advertised for acceptance in the Trade Marks Journal on 16th May 1998, Glaxo filed its opposition on 14th July 1998. That opposition was upheld concurrently both by Assistant Registrar as well as the IPAB. It cannot be said in the circumstances that Glaxo acquiesced in the claim of the Petitioner as to use of the trade mark.

9. It is next contended that the Assistant Registrar as well as the IPAB erred in upholding the opposition of Glaxo that 'GOLDCON-D' was similar to Glaxo's registered trade mark 'GLUCON-D' and was likely to cause confusion when viewed from the standpoint of a man of average intelligence and imperfect recollection. It is submitted that in order to substantiate its opposition with reference to Section 11(a) it was incumbent on Glaxo to have filed documents by way of evidence. It is submitted that even the registration certificate was not produced. Further, learned Counsel for the Petitioner submitted that the registration was granted to Glaxo of 'GLUCON-D' with a disclaimer as regards the letter 'D'. Therefore the comparison had to be made of only the words 'GOLDCON' and 'GLUCON', by omitting the letter 'D'. When so compared there was, according to the Petitioner, neither phonetic nor visual similarity. He relied upon the judgments in J.R. Kapoor v. Micronix India, MANU/SC/1166/1994 : 1994 (14) PTC 260 (SC), F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Pvt. Ltd., PTC (Supp) (1) 88 (SC) and Hindustan Pencils Private Ltd. v. Universal Trading Co., 2000 PTC (20) 561(Del)(DB).

10. This Court is not impressed by the submission that there is no visual or phonetic similarity when the Petitioner's impugned mark 'GOLDCON-D' is compared with Glaxo's registered mark 'GLUCON-D'. The structural similarity of a word followed by a hyphen and alphabet 'D' in both marks is unmistakable. The Petitioner is also not correct about having to leave out the disclaimed part of the mark for the purposes of comparison. The marks have to be compared as a whole and cannot be dissected to leave out the disclaimed part. Recently in Takkar (India) Tea Co. v. Soongachi Tea Industries Pvt. Ltd. 2010 VII AD (Del) 104 this Court had occasion to deal with a similar contention. The following passage in Granada Trade Mark (1979) 13 RPC 303 at page 308 was taken note of:

I do not think, therefore, that a disclaimer per se effects the question of whether or not confusion of the public is likely when that question is for determination under Section 12(1), a context other than one that is concerned solely with the exclusive rights of a proprietor. As Lloyd-Jacob, J. put it in Ford-Works Application (1955) 72 R.P.C. 191 lines 30 to 38, a disclaimer does not affect the significance which a mark conveys to others when used in the course of trade. Disclaimers do not go into the market place, and the public generally has no notice of them. In my opinion matter which is disclaimed is not necessarily disregarded when question of possible confusion or deception of the public, as distinct from the extent of a proprietors exclusive rights, are to be determined. In making the comparison under Section 12(1) therefore 1 consider that I must have regard to the whole of the opponents mark, including the disclaimed matter, and must assume use of it in a normal and fair manner for, inter alia, the applicants goods. The applicants are very well known as manufacturers of motor cars. The opponents are registered as merchants of their goods. Although the opponents are not manufacturers of motor cars I do not think that this difference in the parties activities should lead me to make the required comparison on any basis other than that, so far as identical goods are concerned, the normal and fair manner of use of the marks would also be identical.

(emphasis supplied)

11. Even if one were to take up only "GOLDCON" and "GLUCON" for comparison, it is not possible to accept the contention of the Petitioner that they are dissimilar and are unlikely to cause confusion in the mind of the average consumer with imperfect recollection. The IPAB was right in observing that the nature of the goods in respect of which the marks are used as well as the trade channel were similar.

12. It was never the Petitioner's case either before the Assistant Registrar or the IPAB that Glaxo's mark was not registered. Even before this Court, the Petitioner contended that the registration for GLUCON-D was granted with a 'disclaimer as to the letter 'D'. As against the registered mark of Glaxo, the burden was on the Petitioner to show that for the purposes of Section 11(a), its impugned mark 'GOLDCON-D' bore no similarity with the registered mark 'GLUCON-D' of Glaxo. In the considered view of this Court, the Petitioner has not been able to discharge the burden. This Court affirms the concurrent views expressed both by the Assistant Registrar as well as the IPAB that Section 11(a) of the TM Act, 1999 stood attracted in the present case and that the registration of the mark applied for ought to be refused to the Petitioner.

13. Learned Counsel for the Petitioner submitted that the Petitioner's use of 'GOLDCON-D' was both honest and concurrent. In order to substantiate the claim of honest user, it was suggested that 'GOLDCON' was part of the Petitioner's own trading style since its proprietary concern was M/s. Goldcon Products. The letter 'D', according to learned Counsel for the Petitioner, referred to a place, in this case 'Dehradun', from where the Petitioner was operating. In the considered view of this Court, the above explanation is hardly convincing. It does appear to this Court that the Petitioner has not been able to show that its user of the mark 'GOLDCON-D' was honest.

14. In that view of the matter, this Court finds no error in the order of either the Assistant Registrar or of the IPAB that calls for any interference. The writ petition is dismissed.

Dandi Salt Pvt. Ltd. Vs UOI

MIPR2014(3)1, 2014(59)PTC501(Del)

IN THE HIGH COURT OF DELHI

W.P.(C) 38/2012

Decided On: 06.08.2014

Appellants: Dandi Salt Pvt. Ltd.

Vs.

Respondent: UOI

Judges/Coram:

Vibhu Bakhru, J.

Counsels: 

For Appellant/Petitioner/Plaintiff: S.K. Bansal, Ajay Amitabh Suman and Santosh Kumar, Advocates

For Respondents/Defendant: Amit Mahajan and Nitya Sharma for CGSC, Advocates

JUDGMENT

Vibhu Bakhru, J.

1. The petitioner has, by way of this petition, called into question orders dated 30.05.2011 and 24.08.2011 passed by the Deputy Registrar of Copyrights (Copyright Board).

2. Briefly stated, the objection filed by the petitioner against the application for registration of the copyright filed by respondent no.2 was rejected by the Registrar of Copyrights. The rejection of objection was challenged by the petitioner before the Copyright Board in an appeal under Section 72(1) of the Copyright Act, 1957, albeit, beyond the period of three months. The petitioner had also filed an application for condonation of delay. By an order dated 30.03.2011, the appeal preferred by the petitioner was dismissed by the Copyright Board on the ground that it was belated and beyond the period of three months prescribed under section 72(1) of the Act, 1957 (hereinafter referred to as the `Act').

3. The petitioner was aggrieved by the dismissal of the appeal and filed an application seeking a review of the order dated 31.03.2011 alleging that its application for condonation of delay was not considered by the Copyright Board. By an order dated 30.05.2011, the Deputy Registrar of Copyrights dismissed the said application of review on the ground that the same is not maintainable. The petitioner did not accept this decision and once again applied for review to be placed before the Copyright Board. The Deputy Registrar, by its letter dated 24.08.2011, once again rejected the petitioner's application stating that the matter was re-examined and the order dated 30.05.2011, which now was referred to as "a decision taken by the Board", was re-affirmed. It was further stated that there is no provision of appeal/revision under the Act and the rules made thereunder against the order passed by the Copyright Board in an appeal.

4. The controversy in the present case is, essentially, whether an application for review of an order passed by the Copyright Board lies in the given facts and circumstances of the case. And, whether the Registrars (Copyright Board) would have the jurisdiction to reject an application of review preferred before the Copyright Board.

5. Indisputably, an application to the Copyright Board can only be decided by the said Board and not by the Registrar. Whilst, the Registrar of the Copyright Board would, undoubtedly, have the power to decide whether an application is in the correct form, complete in all particulars and otherwise competent, but the merits of the said application cannot be adjudicated by the Registrar.

6. The application filed by the petitioner seeking review of the order passed by the Copyright Board, raises several contentious issues including whether the Board could review its order rejecting an appeal as belated. And, whether these issues could only be, in the first instance, considered by the Copyright Board and not by the Registrar. The learned counsel for the petitioner has relied upon a decision of the Supreme Court in the case of Kapra Mazdoor Ekta Union v. Birla Cotton Spinning and Weaving Mills Ltd.: MANU/SC/0208/2005 : (2005) 13 SCC 777 and has referred to paragraph 19 of the said decision which read as under:-

"19. Applying these principles it is apparent that where a court or quasi-judicial authority having jurisdiction to adjudicate on merit proceeds to do so, its judgment or order can be reviewed on merit only if the court or the quasi-judicial authority is vested with power of review by express provision or by necessary implication. The procedural review belongs to a different category. In such a review, the court or quasi-judicial authority having jurisdiction to adjudicate proceeds to do so, but in doing so commits (sic ascertains whether it has committed) a procedural illegality which goes to the root of the matter and invalidates the proceeding itself, and consequently the order passed therein. Cases where a decision is rendered by the court or quasi-judicial authority without notice to the opposite party or under a mistaken impression that the notice had been served upon the opposite party, or where a matter is taken up for hearing and decision on a date other than the date fixed for its hearing, are some illustrative cases in which the power of procedural review may be invoked. In such a case the party seeking review or recall of the order does not have to substantiate the ground that the order passed suffers from an error apparent on the face of the record or any other ground which may justify a review. He has to establish that the procedure followed by the court or the quasi-judicial authority suffered from such illegality that it vitiated the proceeding and invalidated the order made therein, inasmuch as the opposite party concerned was not heard for no fault of his, or that the matter was heard and decided on a date other than the one fixed for hearing of the matter which he could not attend for no fault of his. In such cases, therefore, the matter has to be reheard in accordance with law without going into the merit of the order passed. The order passed is liable to be recalled and reviewed not because it is found to be erroneous, but because it was passed in a proceeding which was itself vitiated by an error of procedure or mistake which went to the root of the matter and invalidated the entire proceeding. In Grindlays Bank Ltd. v. Central Govt. Industrial Tribunal it was held that once it is established that the respondents were prevented from appearing at the hearing due to sufficient cause, it followed that the matter must be reheard and decided again."

7. The Supreme Court has explained that although it is a settled law that in the absence of an express power of review, the Tribunal would not have the power to review its own decisions, however, the Supreme Court has held that there is a distinction between the power to review a decision on merits and to correct a procedural infirmity. In cases where there is a procedural infirmity which goes to the root of the proceedings, the Tribunal would have an inherent power to review the same. The moot question that arises is, whether non-consideration of an application for condonation of delay amounts to review that falls into the category of a procedural review as explained by the Supreme Court in the aforementioned decision. Obviously, this question would in the first instance, be required to be considered by the Copyright Board.

8. The learned counsel for the respondents submits that a Single Judge of this Court, by an order dated 04.01.2012 in W.P. (C) No.35/2012, has concluded the issue against the petitioner. The learned counsel has handed over a copy of the said order which indicates that whilst the learned Single Judge held that the Registrar would not have any power to reject an application made to the Copyright Board, the learned Single Judge also concluded that the said Board would not have any power to review its decision made on merits.

9. The said order dated 04.01.2012 also supports the view that the Registrar of the Copyright Board does not have the power to consider an application made to the Copyright Board and, thus, had committed an error in passing the order 30.05.2011. Although, in that case the learned Single Judge held that the Copyright Board cannot review its decision, the same was in the context where the decision of the Board was found to be on merits and not on account of a fundamental procedural infirmity. The question would still remain, whether dismissal of an appeal on the ground of delay or without considering an application on record, constitutes a procedural error.

10. In this view, the impugned orders dated 30.05.2011 and 24.08.2011 are set aside and it is directed that the application for review filed by the petitioner be placed before the Copyright Board for an appropriate decision therein. I am also persuaded to pass this order as no prejudice is likely to be caused to any party by adopting such procedure. The parties would be at liberty to take such recourse as available in law against any decision that may be passed by the Copyright Board.

11. It is also necessary to clarify that nothing stated in this order should be construed as expression of opinion on the question whether condonation of delay is a procedural matter or on the merits of the controversy before the Copyright Board.

12. Accordingly, the present petition stand disposed of in terms of the above directions.

Jagdamba Impex Vs Tristar Products Private Ltd.

2014(143)DRJ298, MIPR2014(2)164, 2014(59)PTC149(Del)

IN THE HIGH COURT OF DELHI

FAO Nos. 128 and 129/2014 & CM Nos. 7778-79 and 7782-83/2014

Decided On: 05.05.2014

Appellants: M/s. Jagdamba Impex

Vs.

Respondent: M/s. Tristar Products Private Ltd.

[Alongwith FAO No. 129/2014]

Judges/Coram:

Valmiki J. Mehta, J.

Counsels:

For Appellant/Petitioner/Plaintiff: Mr. C.M. Lal, Mr. Subhash Dhutoria and Mr. Nancy Roy, Advocates

For Respondents/Defendant: Mr. Chetan Sharma, Sr. Advocate, Mr. S.K. Bansal and Mr. Ajay Amitabh Suman, Advocates

JUDGMENT

Valmiki J. Mehta, J.

Caveat Nos. 395/2014 & 396/2014

Counsel appears for the caveators and thus the caveats stand discharged.

FAO No. 128/2014 & CM Nos. 7778-79/2014

1. This first appeal is filed under Order 43 Rule 1(r) CPC impugning the order of the trial court dated 19.2.2014 which has allowed the application of the respondent/plaintiff under Order 39 Rules 1 & 2 CPC and dismissed the application of the appellant/defendant under Order 39 Rule 4 CPC. Appellant/defendant by the impugned order has been restrained from using a machine which is used for manufacturing of combs on the ground that the machine is a copy of the machine made by the respondent/plaintiff from the drawings over which respondent/plaintiff has a copyright under the Copyright Act, 1957.

2. The complete facts with respect to the case/claim as put forward on behalf of the respondent/plaintiff are succinctly stated in paras 1 to 3 of the impugned judgment and the same read as under:

1. The plaintiff through present suit is seeking permanent injunction, rendition of account, delivery up etc by putting up a case that plaintiff is engaged in business of manufacturing and marketing of cosmetic products, viz. Nail cutters, nail sharpeners, fillers, trimmers, buffs, manicure set, pedicure set, brushes, scrubbing brushes etc and allied and cognate goods. The plaintiff claims that it is continuously making efforts for developing new products/machine equipment and also for improving efficiency, efficacy and dependability of its existing products through its dedicated research and development department. Further Plaintiff contends that it spends heavily on its abovementioned development activities. It is the case of the plaintiff that in year 2009, it got developed an equipment/machine namely Teeth Cutting Machine after a lot of research and spending labour, skill, efforts and money for the development of the said machine. The said machine namely teeth cutting machine is new and novel in nature which is used for manufacturing of a specific product namely comb. It is further averred that the plaintiff through its research, labour skill, effort and money has also developed major components such as Disk Teeth Cutter, Comb Work-Piece Mounting Braket Pneumatic Piston, control Panel, Sliding Platform and Mounting Table etc. The plaintiff's machine and major components are based on "industrial drawing" which were prepared by its employee/draftsman technicians during the course of their employment for and on behalf of plaintiff and under instructions and directions of Director of the plaintiff namely Sh. Sandeep Jain. The said industrial drawings are original in character and artistic in nature. These drawings define and declare the shape and measurement of machine which ultimately makes machine to function and perform. The plaintiff is owner and proprietor of artistic work involved in said industrial drawings. It is claimed that the Plaintiff hold copyright in said industrial drawing and same are protected under the provisions of The copyright Act 1957. It is further averred that plaintiff applied for obtaining the copyright in relation to said drawing under the title "Assembly Drawing of Teeth Cutting Machine" under no. 4564/2012-CO-A dt. 16.04.2012". the plaintiff further alleged that the services of one Sh. K.K. Gupta proprietor of M/s. Metalware, 3, Peepal Drive, Chattarpur Farms, New Delhi were engaged for manufacturing and fabricating the said machine including aforesaid major components based on the industrial designs provided by the plaintiff. The same were prepared at the instructions and on behalf of plaintiff for which consideration was paid by the plaintiff. The plaintiff is making commercial use of said industrial drawings in regular course of its business by converting these two dimensional industrial drawings into three dimensional finished products which are being used to manufacture product namely comb since year 2009. The plaintiff, under statutory as well as in common law, is proprietor of industrial drawings of said products.

2. The Grievance of plaintiff is that the defendant is engaged into manufacturing and marketing of beauty accessory implements/goods viz. "Comb" and it started manufacturing and selling the impugned goods namely comb for equipment machine namely Teeth Cutting Machine which is identical to the equipment/machine namely Teeth Cutting Machine of plaintiff. The impugned Teeth Cutting Machine of the defendant is identical in each and every aspect including the shape, measurement, artistic features as to that of the plaintiffs. The plaintiff inquired for Sh. K.K. Gupta, proprietor in an affidavit dated 10.10.2013 on record revealed that he prepared similar industrial drawings an machine at the instructions and on behalf of defendant which is based on plaintiffs aforesaid industrial drawings. The plaintiff has also taken expert opinion which established that defendants impugned industrial drawings and impugned equipment/machine namely Teeth Cutting Machine is similar. In para 23 of the plaint, the plaintiff explained similarity of machines through a comparative chart. The plaintiff further alleged that the defendant by making impugned industrial drawings developed the impugned equipment consequently using the impugned equipment manufactured and sold the impugned goods. This action of the defendant amounts to infringement of copyright of the plaintiff in the aforesaid industrial drawings and in such equipment. The defendant is not entitled to manufacture the impugned goods namely comb from the impugned equipment/machine.

3. Ld. counsel for plaintiff argued that since "industrial drawings" are original art work within the meaning of section 2(d) of Indian Copyright Act 1957 thus by virtue of copyright in the said industrial drawings, the plaintiff has exclusive rights to furnish and reproduce the work in any material there from including its deception in material form in three dimensional form and two dimensional work and vice versa by virtue of Section 14 of the Copyright Act.

3. A reference to the aforesaid paras show that the case of the respondent/plaintiff is the claim of copyright with respect to Teeth Cutting Machine and which is used for manufacturing of the product "comb". A particular shape/curvature of the comb takes place because of the use of the subject machine. Respondent/plaintiff claims that it developed this machine and its major components from the designs prepared by it after a lot of research, labour, skill, efforts and money, and consequently in the drawings which defined and declared a shape and measurement by/of the machine, copyright is claimed under the Copyright Act, 1957. The machine is stated to have been manufactured by one Sh. K.K. Gupta on the basis of drawings supplied by the respondent/plaintiff.

4. In the suit plaint rights are only claimed under the Copyright Act, 1957 with respect to drawings and there is no claim with respect to proprietorship of the drawings under the Designs Act, 2000. Also there is no claim as per the plaint that the respondent/plaintiff has a patent for the machine (or its parts) in question.

5. The court below has allowed the injunction application by treating the designs/drawings of the machine and its components as having copyright under the Copyright Act, 1957 and has restrained the appellant/defendant from using the similar machine and which similar machine the appellant/defendant got manufactured from the same Mr. K.K. Gupta.

6. For the purpose of the present judgment, I am presuming that respondent/plaintiff is the owner of the drawings/designs on the ground that the drawings have been prepared by it, although, that aspect is factually disputed on behalf of the appellant/defendant.

7. The issue before this Court is that assuming that the respondent/plaintiff prepared the drawings whereby it on its preparation had a copyright in the drawings/designs of the Teeth Cutting Machine and its components, whether respondent/plaintiff is in the facts of this case entitled to an injunction to restrain the appellant/defendant from using a similar machine.

8. In order to appreciate the issue at hand, the definition of design under the Designs Act, 2000 is required to be seen along with the definition of copyright of an artistic work and the related provisions in the Copyright Act, 1957.

9. 'Design' is defined as per Section 2(d) of the Designs Act, 2000 and which reads as under:

(d) "Design" means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957)

(underlining added)

10. Copyright of an artistic work is defined in Section 2(c) of the Copyright Act, 1957. Section 14(c) of the Copyright Act, 1957 provides the rights of different types by virtue of owning the copyright in the artistic work. Section 15, and more particularly its sub-Section 2, provides that with respect to a drawing/design which can be a subject matter of both the Copyright Act, 1957 and the Designs Act, 2000, if from the drawing/design an article is produced to which the drawing/design has been applied/reproduced more than 50 times by an industrial process, the right in the designs/drawings under the Copyright Act, 1957 will no longer subsist. These Sections 2(c), 14(c) and 15 of the Copyright Act, 1957 read as under:

(c) "artistic work" means,--

(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;

(ii) a (work of architecture); and

(iii) any other work of artistic craftsmanship;

(c) in the case of an artistic work,--

(i) to reproduce the work in any material form including-

(A) the string of it in any medium by electronic or other means; or

(B) depiction in three-dimensions of a three-dimensional work;

(C) depiction in two-dimensions of a three-dimensional work;)

(ii) to communicate the work to the public;

(iii) to issue copies of the work to the public not being copies already in circulation;

(iv) to include the work in any cinematograph film;

(v) to make any adaptation of the work;

(vi) to do in relation to an adaptation of the work any of the acts specified in relation to the work in sub-clauses (i) to (iv);

15. Special provision regarding copyright in designs registered or capable of being registered under the (Designs Act, 2000 (16 of 2000):-

(1) Copyright shall not subsist under this Act in any design which is registered under the (Designs Act, 2000 (16 of 2000)

(2) Copyright in any design, which is capable of being registered under the (Designs Act, 2000 (16 of 2000), but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright, or, with his licence, by any other person.

(i) Let us first turn to the definition of a design under the Designs Act, 2000. A reading of the definition of design shows that design is a shape, configuration or pattern etc which is applied to an article whether the article is two dimensional or three dimensional. The shape, configuration of pattern is applied to the article having three dimensions or two dimensions by an industrial process or means. The article which is produced by an industrial process by applying the shape etc to the article, for the purposes of judging its validity as a design is to be judged solely by the eyes. A mere mechanical device or a mode or principle of construction of a mechanical device is excluded from the definition of a design. A subject matter of work which will fall under the Trademarks Act, 1999 and artistic work under Section 2(c) of the Copyright Act would also be not included in the definition of design.

(ii) Therefore, as per the Designs Act, a design itself is not sold but what is sold is an article which is produced from the application of the design by using an industrial process. Unlike a design which is used for manufacture of an article by industrial process, a design/drawing which is the subject matter of the Copyright Act is sold not for the purpose of making any article by applying of the design but the design/copyright work itself is sold as a copyrighted material i.e. the difference between the copyright created under the Designs Act and the copyright in an artistic work under the Copyright Act is that a design under the Designs Act is used to produce an article whereas a copyright in an artistic work under the Copyright Act is sold in itself and not that any article further produced by application of the copyrighted work having a copyright under the Copyright Act. Since there is some overlapping between a drawing/design which can be both an artistic work under the Copyright Act as also a design under the Designs Act, Section 15 of the Copyright Act makes it clear that a drawing/design which is registered under the Designs Act will not be the subject matter of a copyright under the Copyright Act, and, whether a design on account of its originality in its/because of its application to article can be registered under the Designs Act, but however is not registered, then, the drawing/design will no doubt have a copyright under the Copyright Act, but that copyright under the Copyright Act, 1957 in the drawing/design will cease as soon as an article is produced more than 50 times by an industrial process by application of the drawing/design which has copyright as an artistic work under the Copyright Act. Putting it differently, a drawing/design which is an artistic work under the Copyright Act, as also under the Designs Act, if not registered under the Designs Act, will have protection under the Copyright Act only till the design is used not more than 50 times by an industrial process to produce an article by means of the application of the drawing/design. Once the 51st article is produced by application of drawing/design there will be no copyright under the Copyright Act, 1957 in the drawing/design thereafter in the work which was an artistic work having copyright under the Copyright Act and rights for the said drawings under the Designs Act, 2000 can only exist if the drawing/design is got registered under the Designs Act, 2000 before making of the 51st article from the drawing/design. In other words, if a drawing/design which is an artistic work under the Copyright work and which is used by an industrial process for producing an article, then in such case once the 51st article is produced by application of the design with an industrial process, then, unless the drawing/design is registered under the Designs Act, the owner of the copyright work i.e. drawing/design will no longer be entitled to claim exclusivity of an entitlement to use the drawing/design because of rights which were created under the Copyright Act, 1957 because originally the drawing/design was an artistic work having a copyright under the Copyright Act.

12. Since in the present case no rights are claimed with respect to machine which manufactures a particular shape of the comb under the Patents Act, 1970 or under the Designs Act, 2000 we have to see the entitlement of the respondent/plaintiff to the drawing/design only under the Copyright Act and once that is so Section 15(2) comes into play. It is not disputed before this Court that more than 50 articles/combs have been manufactured by the respondent/plaintiff by applying the drawing/design by the machine/industrial process and consequently it is clear that no rights can be claimed with respect to drawing/design under the Copyright Act.

13. Learned counsel for the respondent strongly argued that the entitlement of the respondent/plaintiff is to produce three dimensional or two dimensional articles by use of the designs/drawings because of the right of the respondent/plaintiff in the machine and the drawings/designs from which the machine is made and that respondent/plaintiff is not barred under Section 15 of the Copyright Act, however, there is no substance whatsoever in this argument because Section 14(c) deals with an entitlement of a person who is the owner of the copyright because of existence/continuation of existence of the copyright in the artistic work, but, Section 15(2) makes it clear that the entitlement of a copyright owner in an artistic work/drawing/design is lost once from the drawing/design an article is produced more than 50 times by means of an industrial process. Once the copyright is lost under Section 15 of the Copyright Act, Section 14(c) of the Act cannot be read as to again confer a copyright in an artistic work although the same is lost by virtue of Section 15 of the said Act.

14. Learned counsel for the respondent placed reliance upon three judgments of three learned single judges of this Court to argue the proposition that a right under Section 14(c) in spite of Section 15(2) of the Copyright Act can exist, and which judgments are:

(i) John Richard Brady and Ors. Vs. Chemical Process Equipments P. Ltd. and Anr., MANU/DE/0586/1987 : AIR 1987 Delhi 372;

(ii) Escorts Construction Equipment Ltd. & Anr. Vs. Action Construction Equipment Pvt. Ltd. & Anr., 1999 PTC 36 (DEL);

(iii) Puneet Industrial Controls Pvt. Ltd. vs. Classic Electronics, MANU/DE/0284/1996 : 1997 PTC (17).

15. I have gone through the judgments which have been relied upon by the respondent/plaintiff and also the cited paras, however, none of the judgments deal with the interpretation of Section 15(2) as is argued by the respondent/plaintiff and the judgments do not hold that a copyright in an artistic copyright work is not lost after 51st article is produced by application of the copyrighted artistic work/design by an industrial process for producing of the article. The judgments cited on behalf of the respondent/plaintiff therefore do not touch the issue at hand, and therefore, do not help the respondent/plaintiff because these judgments do not deal with the issue when copyright is lost because of Section 15(2) of the Copyright Act.

16. It is quite clear that not only the injunction application filed by the respondent/plaintiff was misconceived but the suit itself is misconceived and the cause of action and the relief prayed for therein will fly in the face of Section 15(2) of the Copyright Act, 1957 if relief is granted in terms of plaint, whether final or interim. Obviously, the suit has been filed on the basis of incorrect legal advice by deliberately ignoring the binding provision of Section 15(2) of the Copyright Act. The trial court has allowed the injunction application without referring to the vital provision of Section 15(2) and consequently the impugned judgment is totally illegal being set aside. In commercial cases costs must follow the event, more so in the facts of the present case where the suit is misconceived and is filed ignoring the statutory mandate of Section 15(2) of the Copyright Act and which has resulted in stopping of the concerned business of the appellant/defendant. I am empowered to impose costs in terms of Volume V of the Punjab High Court Rules and Orders (as applicable to Delhi) Chapter VI Part I Rule 15 I may note that the Supreme Court in the judgment in the case of Ramrameshwari Devi & Ors. Vs Nirmala Devi & Ors. MANU/SC/0714/2011 : (2011) 8 SCC 249 has held that it is high time that in frivolous litigations, exemplary and actual costs must be imposed.

17. The appeal is therefore allowed with costs of Rs. 1 lakh. Costs be paid within a period of eight weeks from today.

FAO No. 129/2014 & CM Nos. 7782-83/2014

18. The issue in this appeal is similar as has been decided in FAO 128/2014 above, and accordingly this appeal is also allowed with costs of Rs. 1 lakh. Costs be paid within a period of eight weeks from today.