WIMCO LIMITED Vs. MEENA MATCH INDUSTRIES

JUDGEMENT

(1.) 'The Wimco Limited' is public limited company incorporated under the provisions of the Companies Act, 1913 (for short called Wimco). They carry on the business of manufacturing and selling, inter alia, of match boxes'. They claim to be one of the famous manufacturers of matches and the total turnover for the years 1975 to 1980 is given in paragraph 3 of the plaint. Wimco claim to have developed, in order to distinguish their products from those of others and in order to improve the aesthetic appearance of their match boxes, a pattern/design and chemically applied it to both sides of the pannels of their match boxes by mechanical means. This pattern is in rectangular form with multiple diamond-shaped spots and Wimco gave it a name to this pattern as "HOT SPOTS". Wimco made an application foe registration of this design claiming to be new and original design under the provisions of the Designs Act, 1911 (hereinafter called the Act) in class 5 of the Schedule. The application was numbered as 146498 dated January 5, 1978. Subsequently, the said design was registered with effect from January 5, 1978 and a certificate to that effect was issued on October 19, 1978. A photostat copy of the said certificate together with the Design of the match box is filed in Court, The said design is valid and subsisting on the Register of Designs maintained in the office of the Controller of Patents and Designs, Calcutta. Wimco allege that from May 1978 onwards they started applying the said pattern/design to Ship Kapas, Tekka brands of their match boxes and started marketing the same. Within a short itme after May 1978, the aesthetic appearance and utility value of match boxes bearing the said design/pattern on their match boxes was liked and recognised by the public at large. The sales of such match boxes bearing the said pattern design have tremendously gone high and have exceeded Rs. 10 crores in the year 1979 and Rs. 20 crores in the year 1980. Wimco believe that the sudden rise in the sale of the said matches is mainly due to the said pattern [design which has aesthetic appearance and utlity value. By, virtue of its novelty, originality, high publicity and sale, Wimco aver to have acquired a unique reputation and goodwill in respect of the said registered design and the same is exclusively associated with the Wimco goods in the minds of the traders, consumers and members of the public and with no one else. 'It is alleged that the said registered design is to be applied exclusively by Wimco to match boxes manufactured, produced and marketed by them and no one else has any right to apply the said registered design/ pattern to any match box. With these allegations the relief claimed in Suit No. 415-of 1981 which was instituted on May 13, 1981 against M/s. Meena Match Industries, M/s. Thilgaraj Match Works and M/s. Sanjay and Co., is to restrain the defendants etc. from manufacturing, producing, selling and/or marketing or offering for sale match boxes bearing the impugned pattern/design on their match boxes like Annexure 'X' which is an infringement of Wimco's registered design No. 146498, i.e., the pattern in a rectangular form with multiple diamond-shaped spots or any other design which is identical to and/or fraudulent obvious imitation of Wimco's pattern/design. The further reliefs claimed are for a permanent injunction restraining the defendants etc. from pirating the registered design of Wimco, from passing off and the ancillary relief of destruction of the offending articles and rendition of accounts.

(2.) The suit was registered and summons issued on May 14, 1981 to the defendants who put in appearance on the first dale of hearing. As an interim measure defendants 1 and 2 were directed to furnish statements of their figures of sales in respect of the period after the institution of the suit. Defendants 1 and 2 in. the suit then filed on May 20, 1981 a Civil Original Petition, being C.O. 8 of 1981 for cancellation of Design No. 146498 undersection 51-A of the Act. M/s. Meena Match Industries, the first petitioner, (for short called Meena) allege in the petition to be manufacturing and selling high quality card board match boxes under its well-known trade mark "ROLLOR". The trade mark "ROLLER" is registered and duly protected under the provisions of Trade and Merchandise Marks Act, 1958. The card board match boxes as are manufactured and sold by Meena are claimed to be distinctive and unique in appearance, layout, cotour combination and arrangement apart from the use of the distinctive trademark "ROLLER". Due to acute scarcity of soft-wood timber for match boxes the Government of India thought it fit to encourage the use of card board boxes instead of veneers and anhounced concessions and incentives for the manufacturers using card board fii place of softwood. M/s. Thilagraj Match Works, the other petitioner, (for short called Thilagraj) is manufacturing and marketing card board matchboxes bearing the trade mark "ROLLER" under licence arrangement with Meena. It is then averred that Wimco had made a fraudulent claim before the Controller of Patents and Designs, Calcutta, while claiming itself to be the proprietor of a new or original design not previously published in India and it was on the basis of such false claim that Wimco obtained the registration of Design No. 146498 dated January 5, 1978. The striking and igniting surface dots on the side walls of cardboard match boxes were well-known and published prior to the fraudulent claim on the part of Wimco. It is specifically pleaded that the perusal of Indian Patents Specification No. 29046 dated September 17, 1942, which was accepted on. April 3, 1943 and published on May 19, 1943 clearly indicates the striking and igniting surface dots in the identical pattern/design on the side walls of card board matchboxes. It is also pleaded that the ignition dots on the side walls of card board safety match boxes were known, published and applied by a large number of manufacturers particularly those of United Kingdom, Sweden and Germany much prior to 5th January 1978. and the card board match boxes bearing ignition dots were published and made known to the public throughout the world including India much earlier to the date of registration. It is also averred that the prior publication in India can further be ascertained from well-known periodicals including "NEWSLETTER" published by British Match-Box Label & Booklet Society, United Kingdom and "Vesta" published by,J. H. Luker. United Kingdom which are widely read and distributed in India prior to the relevant date. The second ground for cancellation is that the Design No. 146498 is neither new nor original. It is not design but merely a functional pattern and, therefore, liable to be cancelled. The relief claimed in C.O. 8 ot 1981 is that Design No. 146498 dated January 5, 1978 in class 5 of the Schedule under the Act may be ordered to be cancelled and the Controller of Patents and Designs, Calcutta may be intimated accordingly. The notice was issued to the Controller of Patents and Designs, Calcutta who has stated that the patent office is riot interested in contesting the matter. The claim for cancellation is resisted by Wimco with the same allegations as are contained in the plaint of their suit The suit of Wimco is resisted by defendants 1 and 2 on similar pleas as are contained in the petition for cancellation by filing a separate written statement in the suit.

(3.) The counsel for the parties agreed that Suit No. 415 of 1981 and C.0.8 of 1981 may be consolidated and be heard together and it was ordered accordingly. The following issues were framed on the pleadings in the suit and the civil original petition on November 18, 1981: