LAWS(BOM)-1997-11-81

BAJAJ ELECTRICALS LTD Vs. RAM AND SONS

Decided On November 17, 1997
BAJAJ ELECTRICALS LTD Appellant
V/S
Ram And Sons Respondents

JUDGEMENT

(1.) THE plaintiffs have filed this suit for an order of perpetual injunction restraining the defendants from in any manner applying without the plaintiffs licence and/or permission the registered design under No.163381 or any other design which is a fraudulent or obvious or colourable imitation thereof to the ceiling fan and from manufacturing and/or offering for sale the infringing design, a specimen of which is shown in Ex.F to the plaint, or any other fan which is a fraudulent or obvious or colourable imitation of the plaintiffs' registered Design No.163381 being Ex.A to the plaint and the plaintiffs' fan being Ex.B to the plaint so as to infringe the plaintiffs' registered Design No.163381. The plaintiffs have also prayed for a decree in the sum of Rs.1,00,000/- for infringement of design No.163381. The Notice of Motion has been taken out with a prayer that pending the hearing and final disposal of the suit, the defendants be restrained by an order of injunction in the aforesaid terms.

(2.) IT is the pleaded case of the plaintiffs that they are manufacturing various consumer items from electric lamps to kitchenware. They are also dealer in wide range of domestic appliances including ceiling fans, table fans, wall mounting fans etc. The defendants No.1 and 2 are manufacturers and suppliers of fans. The defendant No.3 are the dealers of ceiling fans manufactured and marketed by the defendants No.1 and 2. The suit is filed complaining against the acts of infringement of registered design and passing off allegedly committed by the defendants by adopting identical shape, configuration, design, ornamentation and get up of the ceiling fan, the photographs of which are Ex.F. to the plaint. The plaintiffs applied for and obtained registration of an original and distinctive novel design relating to the shape, configuration and ornamentation of the ceiling fan under the Designs Act, 1911 under No.163381 dated 5th July, 1991 in Class 1 of the IV Schedule attached to the said Act. After the registration, the plaintiffs commenced marketing of the said fan in July, 1991. The annual sales of the plaintiffs with regard to the aforesaid fan as contained in Ex.C to the plaint, from July, 1991 to March 1992 were Rs.1,09,16,581/-. These sales figures had grown to Rs.8,39,26,074/- by the end of March, 1995. Ex.D shows promotional expenses incurred by the plaintiffs in respect of the ceiling fan registered under No.163381. In or about the last week of February, 1995, the plaintiffs came across a brochure containing a ceiling fan which bears the design, shape, configuration and ornamentation of the plaintiffs ceiling fan being Ex.B to the plaint. The ceiling fan mentioned in the brochure is annexed as Ex.F to the plaint. On 24th February, 1995, the plaintiffs sent a notice to the defendant No.3 calling upon them to immediately cease and desist from applying the impugned design on the ceiling fan. The defendant No.3 by its letter dated 18th March, 1995 started that the defendants No.1 and 2 are the manufacturers and suppliers of the ceiling fan. The plaintiffs were, therefore, requested to take up the matter with the defendants No.1 and 2 The plaintiffs, therefore, wrote to the defendants No.1 and 2 on 24th March, 1995 pointing out that the defendants are infringing the design of the plaintiffs. On 11th April, 1995, the defendants No.1 and 2 replied to the aforesaid notice through their advocate. It was stated that the defendants are manufacturing and marketing ceiling fans under the name 'SATURN' openly and extensively. It was also stated that the shape and configuration of ceiling fan of the plaintiffs are quite different from that of the fans of the defendants. The plaintiffs were also informed that Mr.Harish Chhabra as M/s. Siri Ram & Sons is the registered proprietor of design of the ceiling fans at No.167584 since 2nd June, 1994. In view of the above, it was stated that the defendants have not infringed any of the design of the plaintiffs. Consequently, the plaintiffs are constrained to file the suit and the present Notice of Motion has been taken out.

(3.) RELYING on the aforesaid pleadings, the counsel for the plaintiffs has submitted that the defendants are clearly acting in infringement of the copyright and the registered design of the plaintiffs with regard to ceiling fan 'REGAL'. Relying on various provisions of the Act, the counsel has submitted that the Court has to be satisfied that judged solely by the eye, whether or not the design is novel. The design has to have aesthetic appeal. This design should appeal to the eye in a finished article. It is also submitted that the defences raised by the defendants are wholly frivolous. The registration of the design of the defendants is of no consequence and will not prevent this Court from granting the relief of injunction at the interim stage. It is stated that the plea taken by the defendants that theirs is a registration of a part is wholly frivolous as there can be no registration of a part. The registration of a design has to relate to a finished article. It cannot relate to individual parts. So long as this Court comes to the conclusion that the designs are identical or similar or obvious imitations, then the subsequent registration of the defendants is ex facie illegal. Relying on section 46(3), the counsel submits that the registration of a design is prima facie evidence of any matter directed or authorised to be directed therein by the Act. In view of the fact that the defendants are infringing the design of the plaintiffs a petition has been filed before the Registrar under section 51-A of the Act. This petition is said to be still pending. However, mere pendency of a petition under section 51-A will not preclude this Court from granting the necessary interim relief. Since this is an action for infringement of a copyright, it is not necessary at all for the plaintiffs to prove that there is actual confusion in the minds of the customer. All that the plaintiffs have to prove is that they have a prior registered design and the defendants have deceptively registered a similar design subsequently. Once this Court Prima facie comes to the conclusion that the subsequent design is fraudulent or is an obvious imitation of the design of the plaintiffs, the plaintiffs are entitled to the relief. For the proposition that the likelihood of confusion of customer is irrelevant, Mr.Kadam has relied upon judgment of the Supreme Court reported in AIR 1965 Supreme Court 980 (Kaviraj Pandit Durga Dutt Sharma V/s. Navaratna Pharmaceutical Laboratories). For the second proposition that the pendency of proceedings under section 51-A is no bar for grant of interim injunction, the counsel has relied upon 1997(1) Arb.L.R.114 (Alert India v/s. Naveen Plastics and another). Relying on the observations made in para 31, 32, 33, 34 and 35, it has been submitted that to prima facie show the similarity of the two designs, it is not necessary that the two designs should be exactly the same. After examining the similarity of the two designs, the Delhi High Court in that case came to the conclusion that the design applied by the defendants is similar or obvious imitation of that of the plaintiffs and seems to be an infringement of the registered design of the plaintiffs. Therein the relief has been granted to the plaintiffs, after the Court came to the conclusion that the design seems to be similar. It was held that the broad features of pattern, configuration and design being similar it cannot be said that there are substantial variation in the two designs. It was also concluded that if the two designs are not before a potential purchaser at the same time, he may not be in a position to distinguish one from the other. Thus, it was held that the design applied by the defendants is similar or obvious imitation of that of the plaintiff, and seems to bean infringement of the registered design of the plaintiff. This Court is entirely in agreement with the law laid down by the Delhi High Court with regard to the provisions of section 51-A of the Act. It cannot be held as a general rule that merely because an application/petition is filed under Section 51-A of the Act, that this Court will be precluded from examining the issue as to prima facie there is an infringement of a registered design. The question, however, remains to be seen whether the ratio of the aforesaid judgment would be applicable to the facts and circumstances of this case. In the case decided by the Delhi High Court, it has been categorically held that broad features of the design are similar. In the present case, Mr.Kadam had pointed out to the various exhibits showing the design of the ornamental ring on the fan manufactured by the plaintiffs and the fan manufactured by the defendants. The difference as pointed out by the defendants had already been noticed above. I find considerable force in the submissions made by the counsel for the defendants to the effect that the design cannot be said to be fraudulent or obvious imitation of the design of the plaintiffs. It is only if this Court comes to the conclusion that the subsequent design is fraudulent or is obvious imitation that this Court would consider the question of granting any interim relief. As a matter of law, it may be stated that mere pendency of any petitioner under Section 51-A will not preclude this Court from examining the issue and to grant the necessary relief, if circumstances so require. This is precisely what seems to have been done in the case decided by the Delhi High Court. Relief has been granted inspite of the pendency of the proceedings before the Registrar under section 51-A of the Act.