Infringement of design patents and entitlement to injunctions under the Designs Act, 2000.

MUKTA GUPTA, J.

1. Plaintiff is a limited company duly registered under the Companies Act having its registered office at New Delhi and has filed the present suit through Shri S.P. Singh, its AGM (administration) and duly authorized attorney. In the plaint it is claimed that plaintiff is a renowned company dealing in UPS systems inverters etc. since the year 1992 and since the year 2003, the company has been manufacturing and selling energy efficient lighting systems including solar power based systems. In the year 2003, plaintiff developed an energy saving aviation warning light which was in conformity to ICAO/FAA standards. The plaintiff is also the proprietor/owner of the design patents of the aforesaid light and its parts registered vide design Nos. 193575 dated 24th October, 2003, 194630 dated 23rd February, 2004 and 212550 dated 19th September, 2007. The plaintiff’s products under the aforesaid trademark are not only marketed/sold and advertised in India but also have been marketed/sold extensively in various countries of the world like Malaysia, UAE, Tanzania, Kenya, Nigeria, Sri Lanka, UK either directly by the plaintiff or through its franchises. Plaintiff’s products have become synonymous with energy efficient lighting systems and has established its position as energy efficient lighting system giant with Bureau of Energy Efficiency, having recognized the plaintiff as an Energy Saving Consultancy Organization. The plaintiff has won various awards for having the best stores in specialized fairs organized by the industry to promote energy efficient lighting products.

2. In/around August 2009, plaintiff noticed infringement of its design patent by the defendants whereafter the plaintiff immediately send a legal notice to defendant No. 2 to stop the manufacturing, marketing and offering for sale LED based energy efficient aviation warning light. However, defendant No. 2 failed to respond to the notice. Plaintiff also came across the defendants selling the same light during the trade fair “LED Expo” held in Pragati Maidan, New Delhi from 18th December, 2009 to 20th December, 2009.

3. Plaintiff filed the present suit seeking the following reliefs:

(a) A decree for permanent injunction restraining the Defendants, its partners, servants, distributors, retailers and wholesalers, agents and representatives and assigns from manufacturing and selling energy efficient aviation warning light similar to the Plaintiff’s registered design patent.

(b) The Defendants, its proprietor or partners, servants, agents and representative be ordered by a mandatory injunction to handover to the Plaintiff all raw material, packaging material, moulds used in the manufacturing of the energy efficient aviation warning light similar to the Plaintiff’s registered patent.

(c) The Defendants be called upon to allow inspection of its accounts to assist in ascertaining the profits made by its offending acts and a decree be passed in favour of the Plaintiff and against the Defendants for the amount found due;

(d) Costs of the suit be awarded to the Plaintiff;

4. Summons in the suit were issued to the defendants on 1st June, 2010. Defendants entered appearance on 27th July, 2010. Plaint was amended and the same was taken on record vide order dated 23rd November, 2010. Written Statement to the amended plaint was filed by the defendants whereby all the averments and allegations were denied. Preliminary objection with respect to fraud and misconduct of the plaintiff and the suit be rejected for misjoinder of parties and lack of jurisdiction were taken by the defendants.

5. On completion of pleadings by the parties, the following issues were settled:

1. Whether the plaintiff is entitled to a decree of permanent injunction restraining the defendants, its partners etc. from manufacturing and selling energy efficient aviation warning light similar to plaint