PRAYAG CHAND AGARWAL Vs. MAYUR PLASTIC INDUSTRIES

JUDGEMENT

(1.) This order will dispose of plaintiff's application (IA 3830/97) under Order 39, Rules 1 & 2, Code of Civil Procedure for interim injunction as well as defendant's application (IA 4408/97) under Order 39, Rule 4, Code of Civil Procedure for vacation of interim injunction was issued in favour of the applicant/plaintiff. On 30.4.1997, an ex parte injunction granted in favour of the plaintiff which order was modified to the extent that defendant was permitted to market and sell its shoes with its upper portion design even though it may be similar to the upper portion design of the plaintiff's shoes registered with No.168908 under Designs Act. However, the defendant was directed not to have the same design on the sole of its shoes as that of plaintiff's shoes.

(2.) Mr.S.K. Bansal, learned Counsel for the plaintiff has contended that once the registration of design was in his favour, injunction has to follow as a natural corollary. He has further contended that no case has been made out by the defendant that there was a prior publication of the design which was registered in favour of the plaintiff. Relying on Castrol India Ltd. v. Tide Water Oil Co.(II) Ltd., [1996 PTC(16) 202], Mr.Bansal has contended that there is a presumption of originality when a design is registered under Section 53(2)(a) & (b) of the Designs Act. Mr.Bansal has contended that in order to decide the issue that he is entitled to injunction on the ground of infringement of impugned registration it was necessary to break the article down into integers for descriptive purposes but in the ultimate result it is the article as a totality that must be compared and contrasted with the features of a shape and configuration shown in the totality observable from the representation of the design as registered. In support of his submission, learned Counsel for the plaintiff has quoted the observation of the Court from Castrol India Ltd.(supra) as under: Under Section 47(1) of the Act the Registered Proprietor of the design has a copyright in the design which means that it has the exclusive right to apply the design to any article in the class only the design is registered. This is an action for infringement of that copyright in respect of Class 3 grade by the petitioner. The test of deceptive similarity would be appropriate where the petitioner pleads passing off. But in cases of infringement of design the question is not whether the similarity has or is likely to cause confusion or deception of a purchaser but whether the similarity is an imitation of the registered design sufficient to destroy the exclusive right of user of the proprietor despite the fact that no confusion is or may be caused as to the source of the goods. Otherwise every registered design could be imitated with impunity merely by changing the colour of the two products thus obviating any confusion. In my view the respondents have so imitated the petitioner's design as to deprive the petitioner of the protection under the Statute.

(3.) The next argument of the learned Counsel for the plaintiff is that in view of the registration in favour of the design of the plaintiff, the plaintiff has established a prima facie case and balance of convenience also lies that the defendant should be injuncted from using the sole pattern of the plaintiff's design till the disposal of the suit and in support of his submission, has cited M.R.F. Ltd. v. Metro Tyres Ltd. (1990 PTC 101). Mr.Bansal has further contended that apart from the remedy of infringement, he is also entitled to injunction basing on his prayer of passing off. In support of his contention he has cited R.J. Elliot & Co. Ltd. v. Hodgson (1902 RPC 518). He has contended that once the defendant are threatening and intending to sell their goods and claiming the right to do so, it itself constitutes a pretence that their goods are the goods of the plaintiff and this is an essence of passing off action and the plaintiff is entitled to the interlocutory injunction. Counsel for the plaintiff has cited F. Hoffman-La Roche & Company A.G. and Anr. v. D.D.S.A. Pharmaceuticals Ltd. (1972 RPC 1) to support his contention. Mr.Bansal has contended that the practical test is that what is worth copying is worth prima facie protecting and has cited Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964(1) All England Law Report P.465]. Learned Counsel for the plaintiff has also contended that affidavit which has been placed on record by the defendant cannot be looked into as no opportunity to cross examine the deponent has been afforded to the plaintiff and even otherwise the same cannot be taken on record as per the Indian Evidence Act. There is a legal bar to take that affidavit into consideration at the time of deciding the interlocutory application. He has further contended that for the grant of interim, injunction this court has to see whether the board feature of the shape, configuration, pattern are the same or substantially the same and in the instant case the variation of the two soles have the same pattern, it cannot be said that they are two designs and the plaintiff is entitled to interim injunction. He has also contended that there is no requirement of law for Controller to verify from existing registered design about the novelty of a design before it is registered and in support of his submission has cited Alert India v. Naveen Plastics & Anr.[1997(1) Arb.LR 114].