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2012 Supreme(Del) 906
High Court of Delhi
MANMOHAN SINGH, J.
M/S Micolube India Limited
Versus
Rakesh Kumar Trading As Saurabh Industries & Others
I.A. No.9537 of 2011 & -- of 2011 (un-numbered) in CS (OS) No.1446 of 2011
Decided on : 30-03-2012
For the Appellant:S.K. Bansal, with Santosh Kumar & Vikas Khera, Advocates.
For the Respondent:Saif Khan with Manish Biala, Advocates.
A suit for infringement of a registered design is not maintainable against another registered proprietor of the design under the Design Act, 2000. There is no availability of the remedy of passing off in the absence of express saving or preservation of the common law by the Design Act, 2000, and more so when the rights and remedies under the Act are statutory in nature. The conception of passing off as available under the Trade Marks Act cannot be joined with the action under the Design Act when the same is mutually inconsistent with that of the remedy under the Design Act, 2000.
Headnote:
The Court held that a suit for infringement of a registered design is not maintainable against another registered proprietor of the design under the Design Act, 2000. The Court also held that there is no availability of the remedy of passing off in the absence of express saving or preservation of the common law by the Design Act, 2000, and more so when the rights and remedies under the Act are statutory in nature. Finally, the Court held that the conception of passing off as available under the Trade Marks Act cannot be joined with the action under the Design Act when the same is mutually inconsistent with that of the remedy under the Design Act, 2000.
Fact of the Case:
The plaintiff, a registered proprietor of a design for a container, filed a suit for infringement of design, passing off, and an injunction against the defendants, who were also registered proprietors of a design for a similar container. The plaintiff claimed that the defendants' design was a fraudulent imitation of its own design and that the defendants were passing off their products as those of the plaintiff.
Finding of the Court:
The Court found that the suit for infringement of design was not maintainable against the defendants because both parties were registered proprietors of designs. The Court also found that there was no availability of the remedy of passing off because the Design Act, 2000, did not expressly save or preserve the common law and because the rights and remedies under the Act were statutory in nature. Finally, the Court found that the conception of passing off as available under the Trade Marks Act could not be joined with the action under the Design Act because the two remedies were mutually inconsistent.
Issues: 1. Whether a suit for infringement of a registered design is maintainable against another registered proprietor of the design under the Design Act, 2000? 2. Whether there is an availability of the remedy of passing off in the absence of express saving or preservation of the common law by the Design Act, 2000, and more so when the rights and remedies under the Act are statutory in nature? 3. Whether the conception of passing off as available under the Trade Marks Act can be joined with the action under the Design Act when the same is mutually inconsistent with that of the remedy under the Design Act, 2000?
Ratio Decidendi: 1. A suit for infringement of a registered design is not maintainable against another registered proprietor of the design under the Design Act, 2000, because the Act does not provide for such a suit. Section 22(1) of the Act provides that "During the existence of copyright in any design it shall not be lawful for any person- (a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or (b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or (c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article." The term "any person" in Section 22(1) does not include another registered proprietor of the design, because such a proprietor has the right to use the design under Section 47 of the Act. 2. There is no availability of the remedy of passing off in the absence of express saving or preservation of the common law by the Design Act, 2000, and more so when the rights and remedies under the Act are statutory in nature. The Design Act, 2000, is a complete code for the protection of registered designs, and it does not save or preserve the common law remedy of passing off. The rights and remedies under the Act are statutory in nature, and they are exclusive of any other rights or remedies that may be available at common law. 3. The conception of passing off as available under the Trade Marks Act cannot be joined with the action under the Design Act when the same is mutually inconsistent with that of the remedy under the Design Act, 2000. The remedy of passing off under the Trade Marks Act is based on the common law, while the remedy of infringement of a registered design under the Design Act, 2000, is based on statute. The two remedies are mutually inconsistent, because the former is based on the concept of goodwill and deception, while the latter is based on the concept of infringement of a statutory right.
Final Decision: The Court dismissed the plaintiff's suit for infringement of design, passing off, and an injunction.
MANMOHAN SINGH, J.
1. By this order, I propose to dispose of the two pending applications, one filed by the plaintiff being I.A. No.9537/2011 and other , which is unnumbered filed by the defendant No.3 for vacation of ex parte order filed before the Additional District Judge, New Delhi.
FACTS OF THE CASE
2. Originally the suit being Suit No.45/2011 was filed before the District Court, Patiala House, New Delhi against four defendants for infringement of designs, passing off etc. By order dated 9.3.2011 the defendants were restrained from manufacturing the containers used by the defendants on the basis of design registration.
3. The plaintiff has filed the present application under Order XXXIX, Rules 1 & 2 read with section 151 of the Code of Civil Procedure, 1908 seeking an ad interim injunction against the defendants (also to its partners, directors, representatives, distributors, assigns, stockiest and all others acting for and behalf) from using selling, soliciting, exporting, displaying advertising or in any other mode or manner dealing with the impugned products of the plaintiff that is engaged in the business of manufacturing Petroleum products, brake and clutch fluid, lubricating oil and greases and other allied products (hereinafter referred to as the said business).
4. As the defendants challenged the validity of registered design of the plaintiff, inter alia, on the ground that under Section 19(d) of the Design Act, 2000 (hereinafter referred to as „the Act?), therefore, in view of Section 22 (4) of the Act, the Addl. District Judge lost its jurisdiction and transferred the matter to this Court vide order dated 19.5.2011 and on transfer, the suit was registered under the above said number.
5. It is averred in the plaint that the Company sells the said products under its original, novel designed containers (said design) and the company is the owner thereof. In the year 2008, the Company had propounded two novel and original designs of the said products and launched the same in the month of January 2009. The said design is registered under Registration No.220071 dated 10.12.2008 under the Act.
6. The plaintiff claims that the said design has been applied to the containers and the features of said containers have novel shape, configuration, pattern and plaintiff is the owner thereof. The plaintiff also states that it has advertised and promoted its products bearing the said designs widely through various means and mode and the said designs applied to the said containers are distinctive and are exclusively associated with the plaintiff. The plaintiff has also claimed separate relief of passing off in relation to the design.
7. The defendant No.3 who is also in the same trade has challenged the design of the plaintiff on various grounds mentioned in Section 19 of the Act. The defendant No.3?s case is that the design in question is not new and original is liable to be cancelled on various grounds stated under Section 19 of the Act. The defendant No.3 infact denied all the averments made in the plaint.
8. In addition to that the defendant No.3 has placed the registration of design No.233799 dated 10.01.2011 on record for its container and submits that in view of the registration granted, the plaintiff is not entitled for any interim relief.
9. Incase, two containers used by the parties are examined, it appears to me that both are almost the same. The registration of design of container was granted in favour of the plaintiff on 10.12.2008 and to the defendant No.3 for the similar design on 10.01.2011 by the same office i.e. the Controller of Patents and Design, Calcutta. Scanned copy/specimen are reproduced herein below : Design of the PlaintiffImpugned Design of the Defendants
10. The two line of defences raised by the defendant which requires consideration at this stage are :
a) Maintainability of suit for infringement or piracy of the registered design when both the plaintiff as well as the defendant is reg
