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HIGH COURT OF CALCUTTA
RUMA PAL, B. PANIGRAHI, JJ.
Rotomac Pens Ltd. - Appellant
Versus
Milap Chand - Respondent
Civil Appellate Jurisdiction--Original Side A.P.O. No. 512 of 1998
Decided on : Sep 22, 1998
DESIGNS ACT, 1911 - SECTION 43, 45, 47(1), 51, 51A, 53 - INFRINGEMENT OF REGISTERED DESIGN - INJUNCTION - PASSING OFF - SIMILARITY OF DESIGN - VALIDITY OF REGISTRATION - JURISDICTION OF COURTS - DISTINCTION BETWEEN INDIAN AND ENGLISH STATUTES.
Fact of the Case:
The appellant, a manufacturer of ball point pens, alleged that the respondent was infringing its registered design for a particular model of pen called "FIGHTER." The appellant had applied for registration of the design under the Designs Act, 1911, and the design was registered as Design No. 170654. The appellant also claimed that the respondent was passing off its "WRITER" pens as those of the appellant by using a similar design, colors, and packaging.
Finding of the Court:
The court held that the respondent's design was virtually identical to the appellant's registered design and constituted an infringement of the copyright in it. The court also held that there was a likelihood of confusion between the appellant's and respondent's products, and that the appellant had a reputation in its product that was entitled to protection. The court further held that the pendency of an application for cancellation of the registration under Section 51A of the Designs Act did not affect the appellant's right to an injunction under Section 53 of the Act.
Issues: 1. Whether the respondent's design infringed the appellant's registered design? 2. Whether the respondent was passing off its products as those of the appellant? 3. Whether the pendency of an application for cancellation of the registration under Section 51A of the Designs Act affected the appellant's right to an injunction under Section 53 of the Act?
Ratio Decidendi: 1. The court held that the respondent's design was virtually identical to the appellant's registered design and constituted an infringement of the copyright in it. The court noted that the differences between the two designs were not relevant to the question of similarity in design. 2. The court held that there was a likelihood of confusion between the appellant's and respondent's products, and that the appellant had a reputation in its product that was entitled to protection. The court noted that the respondent's pens were sold at a lower price than the appellant's pens, and that the respondent had used a similar name and packaging for its pens. 3. The court held that the pendency of an application for cancellation of the registration under Section 51A of the Designs Act did not affect the appellant's right to an injunction under Section 53 of the Act. The court noted that Section 53 gives the proprietor of a registered design the exclusive right to apply the design to any article in the class in which the design is registered, and that this right is not defeated by showing that the infringement was unintentional.
Final Decision: The court allowed the appeal and set aside the impugned order. The court restrained the respondent from using the appellant's registered design or any similar design, color, or trademark on its pens. The court also restrained the respondent from passing off its products as those of the appellant.
Ruma Pal, J.
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:
"THE respondent would be at liberty to carry on the manufacture of the ball point pen in the normal course of events but the respondent shall maintain a separate account until further order of this Court. Accounts shall also be maintained for ball point pens on hand/in circulation".
On 16th February 1998 the first appeal was disposed of as the appeal had been preferred against refusal to grant an ad interim order and since the interlocutory application was appearing in the list of the Single Judge, the Appeal Court was of the opinion that the matter before the learned Single Judge should be disposed of. It directed that the interim order dated 6.12.97 would continue until the disposal of the application by the Single Judge which would not however prevent the Single Judge from deciding the case on merits.
The appellant
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