METRO PLASTIC INDUSTRIES REGD Vs. GALAXY FOOTWEAR

JUDGEMENT

(1.) The plaintiff, a registered partnership firm, through its registered partner Sh.Surinder Singh Gandhi has filed Suit No.3032/96. The plaintiff firm seeks following reliefs: (a) permanent injunction restraining piracy of infringement of the plaintiffs registered design No.169611 in Class-10 under Section 53 of the Designs Act, 1911 (hereinafter called 'the Act' for short) (b) mandatory injunction directing the defendants to deliver up as made in and render accounts and further to restrain passing off the defendants own goods as that of the plaintiff by the defendants. Thus, it is a composite suit under Section 53 of the Designs Act, for action in passing off and for rendition of accounts etc. The plaintiff firm claims to be engaged in business of manufacturing, marketing and selling of footwears. One such footwear of the plaintiff is popularly known as "Scandal". It has distinctive shape, design, configuration and surface pattern propounded and originated by the plaintiff. The plaintiffs said design is registered at No.169611 in Class-10 since 2nd August, 1995. The plaintiff is an inventor and originator of the said designed footwear in India. Their product on account of the aesthetic form of the design, shape and surface pattern offers great fascination to the purchasers and the plaintiff has effected considerable sales of the said footwear throughout India. The plaintiff has the exclusive right to manufacture and sell the said product in view of the registration of the design in Class-10. The plaintiff has copyright in the design in terms of Section 47(i) of the Designs Act, 1911. The defendants are admittedly using the same or deceptively similar design in respect of the same class of goods. The plaintiff has come to know recently about the piracy being committed by the defendants in the first week of November, 1996. Accordingly, the plaintiff through mediators apprised the defendants about their legal and proprietory rights in the impugned design. But it is of no effect. Thus, action of the defendants amounts to infringement of copyright as well. It is claimed that the plaintiff is entitled to injunction, as prayed for, in terms, purpose and scheme of the Designs Act. Hence, the above mentioned suit has been filed seeking above mentioned reliefs.

(2.) IA No.12385/96 has been filed seeking ad interim injunction under Order 39 Rules 1 and 2 CPC restraining the defendants from manufacturing, marketing, selling, advertising or offering for sale of the patterned/designed footwear and design identical to the plaintiff's said design No.169611 in Class-10.

(3.) The defendants are contesting the present suit as well as the application for grant of ad interim injunction inter alia on the ground that the impugned design lacks originality, for it was prior published design. The sister concern of the plaintiff itself has sold the said footwear bearing the impugned design "Scandal" on 5th July, 1995 vide invoice No.3510 in favour of M/s.National Footwear, Calicut. As such, the plaintiff not being the originator of the impugned design cannot claim the protection sought. The impugned registration does not have any distinctive shape, design, configuration or pattern which was not known prior to the date of prior publication. It has not generated any goodwill or reputation in the eyes of the public for neither any sale figure nor any advertisement expenses in respect of manufacture and sale of the said product bearing the impugned design has been claimed in the plaint. The plaintiff has no exclusive right to manufacture and sell the product having the impugned design. The plaintiff is definitely not proprietor of the said impugned registered design. The defendants have already challenged the same in a separate proceedings and as such, no right accrues to the plaintiff on the basis of the registration in respect of the said impugned registered design, the design being only of recent origin apart from being pre-known and prior published design.