1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY & ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO. 2284 OF 2009 IN SUIT NO. 1550 OF 2009 Maya Appliances Private Ltd. ... Plaintiff. V/s. Jaipan Industries Limited & Ors. ... Defendants. Mr. S.U. Kamdar, Sr. Counsel a/w. Mehul Shah for the Plaintiff. Mr. Vyankatesh Dhond a/w. H.W. Kane for the Defendants. CORAM : S.C. DHARMADHIKARI,J. JUDGMENT RESERVED ON : 6th NOVEMBER 2009. JUDGMENT PRONOUNCED ON : 19TH JANUARY 2010. ORAL JUDGMENT :- The Notice of Motion is moved by the Plaintiffs for an interim order to restrain the Defendants from infringing the registered design. The prayers in the Notice of Motion read as under :- “(a) Pending hearing and final disposal of this suit the Hon’ble Court be pleased to grant an injunction restraining the Defendants, their servants, agents, employees, representatives or anyone claiming through or under them, from in any manner infringing the registered design bearing no: 198147 2 and 205741 and comprised in reproduced on the Plaintiff’s products : (b) Pending hearing and final disposal of this suit the Hon’ble Court be pleased to grant an injunction restraining the Defendants, their servants, agents, employees, representatives or anyone claiming through or under them, from, in any manner, selling, advertising and offering to sell the products, by using the Plaintiff’s registered design or any design which is identical with or deceptively similar or confusingly similar to the Plaintiff’s Design and/or Style, Layout, Color scheme etc. of the Plaintiff’s product; (c) Pending hearing and final disposal of this Suit the Hon’ble Court be pleased to grant an injunction restraining the Defendants, their servants, agents, employees, representatives or anyone claiming through or under them, from in any manner infringing the registered trademark bearing No: 762051 and comprised in/reproduced on the Plaintiff’s products.” 2. It is the case of the Plaintiffs that they are a Company having their registered office in the State of Tamilnadu and more particularly, at Chennai. They have a private office at Mumbai. The First Defendant is a Company incorporated and registered under the Companies Act, 1956 whereas, the 3 Second Defendant is proprietor and carrying on business in the name and style of the Second Defendant. He is marketing the products which are manufactured by the First Defendant. The Third Defendant is a dealer of the products. The products/goods in question are household kitchen appliances and more particularly mixture grinder. In paragraphs 7 and 8 of the plaint, the Plaintiffs state thus :- “7. It is respectfully submitted that the Plaintiff is managed professionally and high priority is placed on quality, management systems and service to customers. The Plaintiff has invested sizeable funds towards state-of-the-art technology and infrastructure and continues to increase the infrastructure investment year after year. The Plaintiff has launched a new range of mixer grinders bearing the series name ‘PREETHI BLUE LEAF’ in the year 2005. Within a few months, this new range has proved immensely successful in the major markets in India. This new line of PREETHI BLUE LEAF mixer grinder series has set the trend for a new genre of mixer grinders, which are not only compact, sturdy and cost effective, but have a rare uniqueness in its tremendous aesthetic appeal and a highly catchy design, adding elegance to the kitchen space. 8. It is respectfully submitted that the Plaintiff has been vigilant in safeguarding its IP 4 rights. The Plaintiff felt the need to reinforce its IP rights and protect its design of its newly launched products “PREETHI BLUE LEAF” series and hence made design applications under the Designs Act, 2000 for registration of this new design of the product. The said design applications have been granted design registration. The registration certificates pertaining to the “PREETHI BLUE LEAF” design was granted on 6th day of January 2005 bearing No.198147 and on 22nd day of August 2008 bearing No.205741 by the Controller General of Patents, Designs and Trade Marks. Hereto annexed and marked as Exhibit “B” and Exhibit “C” are the said certificates dated 6th January 2005 and 22nd August 2006. The design registration details along with the number for the design is printed on the top of the packaging carton in a prominent way to caution the public about the Plaintiff’s right on the design.” 3. After referring to the definition of the term Trademark as appearing in Section 2(zb) of the Trade Marks Act, 1999, it is stated that the shape of the PREETHI BLUE LEAF product is a registered trademark in India and copy of the same is annexed as Annexure ‘D’ to the plaint. 4. This is a series of special mixer grinder product of the Plaintiff. It has generated wide reputation in the mixer grinder 5 market. It is a novel and an original design and is the concept of the Plaintiff Company’s Research and Product Development Unit. The striking features of the design is peculiar “LEAF MOTIF” shape of the body of the mixer, the leaf like power control switch, the leaf design on the shape of the jars, and also the leaf design on the handle of the jars. This concept adds beauty to the product. The novelty of the product resides in its shape, configuration surface pattern and ornamentation. This design is exclusively associated with the Plaintiff’s product by the trade and public and has thus become distinctive of their goods. It has contributed to their success. The style of the leaf edged body of the mixer grinder alongwith the leaf edged super extractor gives more attraction to the product. The power control switch is also styled in a way which is more appealable to the eyes. The blue colored bottom, handles and the power control switch add richness to the product and being designed to match its name, “BLUE LEAF” more perfectly. Thus, it is reiterated that the conventional shape of mixer grinder (‘L’ shape or oval shape) is absent and a peculiar pattern is designed as far as the Plaintiff’s product is concerned. 5. It is alleged that it came to the knowledge of the Plaintiff that Defendant No.3 has been selling mixer grinders manufactured by Defendant No.1 and marketed by Defendant No.2 with the same design which carries all essential features of PREETHI BLUE LEAF registered design. In pursuance of this information, the Plaintiff’s representative visited Defendant 6 No.3’s shop in Mumbai. Defendant No. 3’s shop had a lot of infringing mixer grinders design like PREETHI BLUE LEAF which are manufactured by Defendant No.1. To prove the infringement on the part of the Defendants, the Plaintiff purchased one infringing mixer grinder and got receipt for the same. After referring to the settled test in law, it is stated that in the light of the peculiar design of the Plaintiff, a normal customer will immediately relate the infringing products to the design and trade mark of the Plaintiff. It is in these circumstances, and after setting out the other averments in paragraphs 13 to 18 that this Suit is filed for permanent injunction restraining the Defendant from in any manner infringing the Plaintiff’s registered designs and selling, advertising and offering for sale products by using the Plaintiff’s registered design or any design which is identical with or deceptively similar to the Plaintiff’s design. Prayer clause (b) is of the plaint is seeking a permanent injunction to prevent infringement of the registered trade mark of the Plaintiff. 6. This Notice of Motion is for interim reliefs in furtherance of the aforementioned prayers. 7. On 8th May 2009, this matter was placed before a learned Single Judge of this Court, who granted prayer clauses (a) and (b) of the Notice of Motion excluding the bracketed portion. Thus, the ad-interim/interim injunction granted is in the following terms :- 7 “(a) Pending hearing and final disposal of this suit the Hon’ble Court be pleased to grant an injunction restraining the Defendants, their servants, agents, employees, representatives or anyone claiming through or under them, from in any manner infringing the registered design bearing no: 198147 and 205741 and comprised in reproduced on the Plaintiff’s products : (b) Pending hearing and final disposal of this suit the Hon’ble Court be pleased to grant an injunction restraining the Defendants, their servants, agents, employees, representatives or anyone claiming through or under them, from, in any manner, selling, advertising and offering to sell the products, by using the Plaintiff’s registered design or any design which is identical with or deceptively similar or confusingly similar to the Plaintiff’s Design (and/or Style, Layout, Color scheme etc.) of the Plaintiff’s product.” 8. The Motion is placed before me for hearing and final disposal after the affidavit in reply has been filed. In the affidavit in reply, Defendant Nos.1 and 2 have stated that the Suit is filed for two causes of action, one for infringement of the registered designs and other for restraining infringement of the registered trade mark. 8 9. It is contended that it has come to the knowledge of the Plaintiff that Defendant No.3 has been selling mixer grinders manufactured by the First Defendant and marketed by the Second Defendant with the same design which carries all the essential features of PREETHI BLUE LEAF registered design. Therefore, the Plaintiff’s representative went to the Third Defendant’s shop in Mumbai and he noticed a lot of infringing mixer grinders, designed like PREETHI BLUE LEAF manufactured by Defendant No.1. To prove the infringement on the part of the Defendants, he purchased one infringing mixer grinder and got receipt for the same. 10. It is urged that the true test of whether two designs or trademarks are similar or not is clear. This test is to consider what is the totality of the impression that is produced when the design or trade mark is seen. The test has to be approached from the view point of a consumer of average intelligence and imperfect re-collection. The subject design is the distinctive feature of the Plaintiff products and is also appreciated by public as it adds elegance to the kitchen. The First Defendant has also started manufacturing products with the same leaf design and colour, which are in no way different to the design and colour of the Plaintiff’s product. The body of the mixer grinder and the power control switch is also designed in the same shape as that of the Plaintiff’s product. The shape and size of the central grinding unit found in the Defendant’s mixer grinder is an exact replica and identical design of the Plaintiff’s registered LEAF design and registered 9 Leaf trade mark of the series. Therefore, the ordinary customer will relate the infringing products to the design and trade mark of the Plaintiff. The photographs are also produced. The averments in the plaint to this effect are to be found in paragraphs 10 to 19. The same are reiterated in the affidavit in support. 11. An affidavit in reply has been filed by one J.N. Agarwal, claiming to be a Director of Defendant No.1 and partner of Defendant No.2. He has stated that the subject matter of both registered designs are not designs within the meaning of Section 2(d) of the Designs Act, 2000 as the same are trade mark defined under the Trade Marks Act, 1999. Prior to this, it is contended that the Suit is for two causes of action but none of the causes of action subsist and the Plaintiff is, therefore, not entitled to maintain and file the Suit. It is urged that the Plaintiff has secured Registration No.1544728 in Class 07. Further, the registered designs contain and include the mode and/or principle of construction of electric kitchen mixer grinder and/or mere mechanical devices. It is urged that the features are dictated by the function they serve. For example, the round ‘knob’ of the product purely serves the function of controlling speed of the motor, legs with bushes are provided at the bottom of the product to maintain the stability especially when the kitchen mixer cum grinder vibrates, the product’s broad base tapering upwards is provided again to maintain the stability of the product, horizontal slits in the middle of the body of the product and the grill at the bottom 10 serves the purpose of cooling the electric motor. Thus, the Plaintiff has not claimed novelty and appeal to the eye in the specific features so marked in the drawings/photographs of the product. The Plaintiff has claimed exclusive right in the whole product as shown in the drawings/photographs. Therefore, the Plaintiff’s registered designs are liable to be cancelled. 12. It is then contended that the Plaintiff is not the proprietor of the impugned designs but they are claimed by one Mr. Neil Foley. The Deed of Assignment allegedly executed in favour of the Plaintiff is invalid and the reasons therefor are set out. 13. It is then contended that the impugned designs are not significantly distinguishable from known designs or combination of known designs. Some copies of registration of designs certificates of kitchen mixer grinders are annexed to the affidavit in reply and it is urged that the Plaintiff’s registered designs are not new or original. These designs are liable to be cancelled. The distinguishing features of the Designs Act and the Trade Marks Act so also the Patents Act in so far as registration have been then highlighted and therefore, it is urged that until the validity of registration of the Plaintiff’s designs is tested, they cannot claim any interim relief. 14. It is urged that the Defendants have been purchasing from one Mahesh Shetty trading as M/s. Sairaj Industries, the 11 plastic body being lower part of the kitchen mixer grinder wherein the electric motor and other parts are placed. The Defendants do not themselves apply or cause to apply to the lower plastic body of mixer grinder, the registered designs of the Plaintiff or any fraudulent or obvious imitation thereof. Therefore, there acts do not amount to piracy of the Plaintiff’s registered designs. 15. Besides this, it is urged that a proper comparison between two products and designs would make it clear that the design of the Defendant’s electric kitchen mixer grinder is not the same or is not a fraudulent imitation of the Plaintiff’s registered design. The affidavit in reply thereafter proceeds on the basis of denials. 16. The Plaintiffs have filed a rejoinder to this affidavit and contended that the Plaintiffs have substantiated all the averments in the plaint with necessary and relevant documents. It has been urged that the leaf designs of the Plaintiffs’ product is protected as a registered design bearing Nos.198147 and 205741. Further, the shape of the PREETHI BLUE LEAF product is a registered trade mark in India bearing No.762051. The design which is protected is the registered one and the Plaintiffs do not claim any rights in the functional aspects as urged. Even the deed of assignment is admissible. The Plaintiffs have pointed out that mere filing of an application for cancellation of Plaintiff’s design has no bearing to the facts of the present case. The Plaintiffs have pointed 12 out that the Defendants have in fact admitted the act of infringement by introduction of a stranger to the issue that is M/s. Sairaj Industries. That is not supported by any document. In fact, production of design certificate of M/s. Sairaj Industries only shows that the alleged design is owned by them. The Defendants have not described the relationship between them and M/s. Sairaj Industries nor has produced any documents. M/s. Sairaj Industries has not come forward to accept claim of the user of the registered design. The similarities in the designs are pointed out and it is stated that a normal customer will be misled. The earlier version of the Plaintiffs has been reiterated and it is pointed out that the Plaintiffs designs have been registered on 6th January 2005 and 26th August 2006. Even the legal contentions raised in the reply are duly met and dealt with in the rejoinder. 17. I have heard Mr. Kamdar, learned Senior Counsel on behalf of the Plaintiffs and Mr. Dhond, learned Counsel appearing on behalf of the Defendants. 18. This matter was placed before a learned Single Judge for ad-interim relief and he had before him an affidavit in reply filed in the month of April 2009 so also a rejoinder thereto. After hearing the Plaintiffs and the Defendants at some length, the learned Judge has, in a somewhat detailed ad- interim order referred to the aforementioned pleas. The learned Judge has on a prima-facie examination of both registrations in paragraphs 4 and 5 of the order dated 8th May 13 2009 observed thus :- “4. Perusal of the certificate of registration of design granted in favour of the Plaintiff dated 6.1.2005 reveals that the product is registered under class 31 in respect of application of design to electric kitchen mixer-grinder. The certificate has been issued on 10.8.2009 and would relate back to the date of filing of the application. Whereas upon perusal of the certificate of registration of design obtained by M/s. Sairaj Industries through its proprietor Mahesh Shetty reveals that the certificate has been issued on 29.12.2009 and that too under clause No.0704. The classification of the products is regulated by the Designs Act, 2000 and to be precise by third schedule framed under Rule 10 of the Designs Rules. Class 07 relates to household goods, not elsewhere specified and 07-04 relates to appliances and utensils hand manipulated for preparing food or drink and down below the said entry a note is put up which reads thus :- “Not including appliances and utensils classified in class 07-02 and in class 31.” It is thus obvious that what is included in class 31 stands excluded in class 07 to the extent it relates to 07-04. Tunning to class 31 under which 14 the Plaintiff’s mixer-grinder is registered it reveals that the said class deals with machines and appliance for preparing food or drink not elsewhere specified and the note appended there under reads thus : “Not including hand-manipulated utensil, instruments and appliances for serving or preparing food or drink (Cl. 07).” And all entry reads thus : “Machines and appliances for preparing food or drink, not elsewhere specified.” 5. On comparison of entries in class 31 viz-a-vis class 7 it will be revealed that class 31 deals with mechanical appliances whereas class 07-04 of class 07 only deals with utensils operated by hand and not mechanically operated utensils/instruments.” 19. In paragraph 6 of the order, the learned Judge has pointed out that the mixer grinder manufactured by the Plaintiffs and the Defendants both fall in Class 31. However, the Defendants have obtained registration of their mixer grinder under class 07 suggesting thereby that it is to be operated manually. However, he has come to a conclusion prima-facie that the Defendants obtained the registration of their mixer grinder under Class 07 but if the grinders of both 15 are examined minutely, then, only the issue can be finally decided. Prima-facie, the product of the Defendants is not hand operated but a mechanically operated mixer grinder. Even the issue of the right to assemble through M/s. Sairaj Industries has been referred to and the learned Judge concludes that prima-facie M/s. Sairaj Industries are manufacturing the plastic cover and not the instrument as such. 20. It is for this reason that he granted the ad-interim relief. 21. Having heard the learned Counsel at some length and perusing the further affidavits on record, I am of the opinion that this ad-interim order deserves to be continued. It is not necessary to refer to any decisions and more particularly, those relied upon by Mr. Kamdar. Suffice it to hold that mere registration of the design may not be sufficient to raise the presumption that it was original but in the case of Plastic Chairs (M/s. Kemp & Company and Anr. V/s. M/s. Prima Plastics Ltd.) 1999 (1) Bom.C.R. 239, Hon’ble Mr. Justice R.M. Lodha (as His Lordship then was) found that prima-facie, the Defendant in that case rebutted the presumption that the Plaintiffs were the original inventors of the design. Therefore, its registration was not a material aspect. Such is not the case before me that aspect will have to be decided only after further materials are produced by parties. It is for this reason that I am inclined to continue the ad-interim order. In fact, the present case is somewhat similar to the decision of another 16 learned Single Judge reported in 2003 (6) Bom. C.R. 65 (Faber-Castell Aktiengesellschaft & Anr. V/s. Pikpen Private Limited). 22. In the aforementioned facts and considering the aim, object and purpose of both statutes in the field, in my view, the Motion will have to be made absolute in terms of the ad- interim order dated 8th May 2009. It is accordingly made absolute but without any order as to costs. (S.C. DHARMADHIKARI,J.)