ROTOMAC PENS LTD Vs. MILAP CHAND

JUDGEMENT

(1.) The appellant manufacturers ball point pens. According to the appellant it has adopted specific designs with specific names for certain models of pens. In this appeal we are concerned with the pen which the appellant sells under the name "FIGHTER". According to the appellant this particular model has a special design which consists of several corrugations just above the tapering portion of the pen. The tapering portion is elongated. According to the appellant it sells this particular model in three distinctive colours namely silver green, silver blue and silver marron with a glossy finish which is distinctive and identified with the petitioner because of the wide advertisements. The design has been registered as Design No. 170654 by the Controller of Patents and Designs under the Designs Act, 1911. As far as the name "FIGHTER" is concerned, it does not appear on the pen but on the plastic pouch in which the pen is sold. According in the appellant it has applied for registration of the word "FIGHTER" and also for the artistic work as the word is written under the Trade and Merchandise Act 1958. The applicant says that the "FIGHTER" pens have been sold from February 1995. Each of the appellant's pens is priced at Rs. 14/-. Sales of "FIGHTER" have increased from 2.20 lakhs in 1995-96 to 551.11 lakhs in 1996-97 and in the year 1997-98 (up to 30th September 1997) the turnover was 222.83 lakhs. for advertising this particular design alone, according to the appellant, it has spent 217.74 lakhs by way of advertisement expenses in the year 1996-97 and 74.86 lakhs for the year 1997-98 upto 30th September 1997. According to the appellant it came to know in October 1997 that the respondent has been marketing ball point pens using an identical configuration and design in colours similar to the appellant under the mark "WRITER". According to the appellant the respondent was selling its "Writer" pens at Rs. 5/- per piece. The appellant has stated that the respondent's pens are of poor quality.

(2.) The appellant filed the suit in November, 1997 against the respondent by which the appellant has sought to restrain the respondents from selling "WRITER" pens on the basis that the registered design was being infringed under the Design Act and on the ground of passing off. It has claimed inter alia a permanent injunction to restrain the respondent from infringing the registered design or from passing off its products as those of the appellant and for a decree for Rs. 50 lakhs on account of damages. An application was moved by the appellant on 10.11.97 for inter-locutory relief by way of injunction against the respondent from using the appellant's design and from passing off its products as those of the appellant. No interim order was passed by the learned Single Judge but short directions were given for filing of affidavits. The appellant preferred an appeal in December 1997 against the refusal of the learned Single Judge to pass any interim order (referred to as the first appeal). A stay application was moved in the first appeal. An interim order was passed on 6.12.97 by the Appeal court to the following effect:

(3.) The appellant's interlocutory application was ultimately disposed of by the learned Single Judge by directing the respondent to keep separate accounts in respect of the sales with regard to the design of the appellant and to furnish monthly account to the advocate on record of the appellant. Directions were also given for the hearing of the suit. No reason was given by the learned Single Judge for passing the interim order he did except to state that it was in the interest of justice to do so. The appellant has appealed from this order. A stay application was filed on which affidavits were filed by the parties in opposition. We were of the view that having regard to the nature of disputes and in order to avoid duplication of arguments, the appeal itself should be speedily fixed for hearing and disposed after filing of informal paper books including all papers used in the court below. The appeal was argued and written notes of argument have also been submitted. It is recorded at this stage that on the second day of hearing the respondent sought to rely on documents which were not on record either before the Trial Court or before this Court. The respondent indicated that the documents which were sought to be brought on record related to the publication of the design in India prior to the registration granted to the appellant. As there was no application made under Order 41 Rule 27 of the Code and as the matter had been specifically fixed for hearing as an appeal and since we were prima facie satisfied that the documents should not be allowed to be brought on record at such a late stage, we did not adjourn the hearing of the appeal as sought for by the respondent.