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High Court Of Delhi
TOBU ENTERPRISRS PRIVATE LIMITED - Appellant
Versus
JOGINDER METAL WORKS - Respondent
Suit 459 of 1982
Decided On : 02/15/1985
DESIGNS ACT, 1911 - SECTIONS 47, 53 - COPYRIGHT IN REGISTERED DESIGN - INFRINGEMENT - REMEDIES - JURISDICTION OF CIVIL COURT - PASSING OFF - RENDITION OF ACCOUNTS - WHETHER BARRED.
Fact of the Case:
Plaintiff, the registered proprietor of two designs for a mini bike tricycle, filed a suit against the defendants for infringement of copyright, passing off, and rendition of accounts. The defendants challenged the jurisdiction of the court, arguing that the Designs Act, 1911, provided exclusive remedies for infringement and that the court could not grant relief for passing off or rendition of accounts.
Finding of the Court:
The court held that the jurisdiction of the civil court was not impliedly barred by the provisions of Section 53(2) of the Designs Act, 1911. The court found that the Act did not exclude any action for passing off or rendition of accounts and that a person complaining of infringement of design could certainly ask for accounts from the defendant to show the profits earned by the defendant by unlawfully using the design of the registered proprietor.
Issues: 1. Whether, in view of the provisions of Section 53 of the Designs Act, the court has no jurisdiction to direct rendition of accounts? 1A. If issue No. 1 is answered in the affirmative, then whether this court has jurisdiction to try the present suit? 2. Whether the suit has not been properly valued for the purposes of court fee and jurisdiction? 3. Whether the proper court fee has been paid by the plaintiff in respect of the claims?
Ratio Decidendi: The court interpreted Section 53(2) of the Designs Act, 1911, and found that it did not provide exclusive remedies for infringement of copyright in a registered design. The court held that the Act did not bar a civil court from granting relief for passing off or rendition of accounts in addition to the remedies provided under Section 53(2). The court also held that the plaintiff was not required to elect between claiming damages or an account of profits, as the Act did not provide for such an election.
Final Decision: The court held that it had jurisdiction to try the suit and that the suit was properly valued for purposes of court fee and jurisdiction. The court decided issues Nos. 1, 1A, 2, and 3 in favor of the plaintiff.
( 1 ) BY this order I will decide issues NOS. I, IA, Sand 3 which have been treated as preliminary issues.
( 2 ) THE suit for permanent injunction restraining infringement of two registered designs, passing off and for rendition of accounts. The plaintiff is the manufacturer of "mini bike tricycle". It got the design registered in respect of this mini bike under the provisions of the Designs Act, 1911 (for short the Act ) under registration No. 144635. The seat of the mini bike was also got registered under the said Act Under registration No. 144636. The plaintiff has alleged that defendant No. I is also engaged in the manufacture of tricycles and defendant No. 2 is engaged in marketing of the tricycles manufactured by defendant No. 1. It was in the month of March 1982 that the plaintiff came to know that defendant No. I, without the consent, permission or licence of the plaintiff, had introduced into the market mini bike tricycle with an identical and/or substantially identical design. The plaintiff alleged that the defendants deliberately infringed and contravened the copyright of the plaintiff in its registered designs". Then, there are, allegations in the plaint that the defendants have pirated the design of the plaintiff with a view to take advantage of the popularity of the design of the plaintiff in the market -and have made use of the goodwill and reputation of the plaintiff and that the defendants are passing off their inferior quality tricycles bearing the design of. the tricycles of the plaintiff. The plaintiff then alleged that on account of the illegal activities of the defendants, the defendants, earned undue profits to which they Were riot entitled and therefore they were liable to render accounts and pay to the plaintiff the profits earned by them on the sals of the tricycles bearing the impugned design of the plaintiff. It was estimated by the plaintiff that on rendition of accounts, the plaintiff would be found entitled to more than a lac of rupees. The plaintiff valued the suit for purposes of court-fee and jurisdiction as follows : "17
(A) For an order for permanent injunction restraining the defendants from pirating the registered designs of the plaintiff the suit is valued for purpose of court fee and jurisdiction at Rs. 2001- and court feesofrs. 20 (-is affixed.
(B) For an order for permanent injunction restraining the defendants from passing off their goods bear ing the impugned designs as the product of the plaintiff, the suit is valued for purpose of court fees and jurisdiction at Rs. 2001-and court fees of Rs. 201-is affixed.
(C) For anorder for delivery up of the impugned goods/for destruction etc. the suit is valued for purpose of court fees and jurisdiction at Rs. 200j- and court fee of Rs. 201- is affixed.
(D) For an order for rendition of accounts of profits made by the defendants, the suit is. valued for purposes of court fees at Rs. 2001- and court fees of Rs. 201- is affixed. The jurisdictional value of this relief is fixed at Rs. l,00,000/ as the plaintiff estimates that such an amount shall be found. due to it on accounts being rendered by the defendants. The plaintiff undertakes to pay additional court fees on this relief when the amount due to it is ascertained. Value of. the suit for purposes of court fees is Rs. 8001- and value of the -suit for purposes of jurisdiction is Rs. 1,00,6001-"
( 3 ) THE plaintiff, therefore, prayed for a decree for perpetual injunction restraing the defendants from manufacturing, selling andjor offering for sale tricycles bearing the in impugned designed and further similarly restraining them from passing off or enabling others to pass off their goods as goods of the plaintiff. The plaintiff furtther prayed for rendition of acounts of the profits made by the defendants and decree for the amounts so found. The plaintiff also prayed for an order of delivery up of all the impugned goods, blocks, dies, etc. for the purpose of destruction.
( 4 )
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