ASIAN RUBBER INDUSTRIES Vs. JASCO RUBBERS

JUDGEMENT

(1.) Appeal No.62 of 2012 is filed against order dated December 23, 2011 of the learned Single Judge granting ad-interim relief by which the defendants are restrained from passing off the defendants' footwear, which are held to be deceptively similar to the plaintiff's footwear.

(2.) On December 15, 1999 the plaintiff obtained registration under Designs Act, in relation to a footwear design, being registration No.181088. The registration mentioned that novelty resides in the shape, configuration and pattern of the "Footwear" as illustrated. It further indicated that the design is neither restricted to any colour or combination of colours, nor is any claim made by virtue of this registration to the exclusive use of the particular colour or combination of colours as illustrated in the representations. Similarly on December 29, 1999, the plaintiff obtained registration under the Designs Act in relation to footwear, being registration No. 181193 and third registration under the Designs Act in relation to another footwear on March 7, 2000 vide registration no.181829. The products are named by the plaintiff as "Methiyadi Yodhha", "Methiyadi Yoga" and "Methiyadi Export-SwamisZ". The plaintiff has been selling these products from 2000 onwards in the open market. Following is the chart showing annual turnover of the plaintiff. <p><table class = tablestyle width="90%" border="1" align="center" cellpadding="1" cellspacing="1"> <tr> <td><div align="center"><font face="Verdana"><b>Accounting year</b></font></div></td> <td><div align="center"><font face="Verdana"><b>Amounts (Rs.)</b></font></div></td> </tr> <tr> <td><div align="center"><font face="Verdana">2006-2007</font></div></td> <td><div align="center"><font face="Verdana">53,27,359</font></div></td> </tr> <tr> <td><div align="center"><font face="Verdana">2007-2008 </font></div></td> <td><div align="center"><font face="Verdana">38,32,503</font></div></td> </tr> <tr> <td><div align="center"><font face="Verdana">2008-2009</font></div></td> <td><div align="center"><font face="Verdana">1,21,37,480</font></div></td> </tr> <tr> <td><div align="center"><font face="Verdana">2009-2010</font></div></td> <td><div align="center"><font face="Verdana">2,13,52,355</font></div></td> </tr> <tr> <td><div align="center"><font face="Verdana">April-2010 to Jan-2011</font></div></td> <td><div align="center"><font face="Verdana">1,54,88,787</font></div></td> </tr> </table>

(3.) It is the plaintiff's case, and not seriously disputed by the defendants that, upon coming to learn about infringement of the registered designs of the plaintiff, the plaintiff issued caution notice on June 14, 2009 and thereupon the infringing goods disappeared from the market. Thereafter on June 22, 2009, the defendants made an application for design registration identical to that of plaintiff. Prayer made in the said application for design registration was allowed and the defendant was granted design registration on December 14, 2009 vide registration No.223556. When the plaintiff became aware that the defendants' design is registered, the plaintiff filed proceedings for cancellation of Registration No.223556 in October 2010. Again the infringed goods appeared in the market in October 2011. Therefore, the plaintiff filed present suit along with Notice of Motion seeking injunction against defendants on October 18, 2011. The defendant filed affidavit-in-reply to the Notice of Motion and pleaded, inter alia, the following defences :