The main legal point established in the judgment is that a party, having obtained registration of a design, is estopped from challenging the novelty and originality of the same design in a subsequent dispute. Additionally, the judgment emphasizes the importance of establishing a prima facie case of piracy to warrant the grant of an injunction.

JUDGMENT :

G.S. Sistani, J.

The present appeal has been filed under section 13 of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015, read with order XLIII Rule 1(r) and section 151 of the Code of Civil Procedure, 1908 ('CPC') impugning the order dated 08.01.2018 passed by a Single Judge of this Court whereby the application of the appellants bearing I.A. 6056/2017 under Order XXXIX Rule 1 and 2 read with Section 151 of CPC in CS (Comm) 361/2017 has been dismissed.

2. The suit was filed by the appellants against the respondents alleging imitation of the design of appellants' ball point pen. Some necessary facts required to be noticed for disposal of this appeal are that appellant no.1 had developed a design for a pen, which was registered in India as Design No.263172 ('172 design') dated 10.12.2013 claiming priority from its Japanese Design No.1515380. The said design was applied by the appellants to its Energel series of pen, in particular Pentel Energel BL-417, and was launched in India in August 2014.

3. It was alleged that in the month of October, 2016, the appellants came across the respondents' product 'Montex Mastani', which is alleged to be similar to the appellants' 172 design. Pursuant to the same, the appellants addressed a cease and desist letter dated 22.10.2016 to the respondent no.2. The respondents no.2 and 3, responded to the said communication vide letter dated 21.11.2016 on the common ground challenging the validity of appellants' 172 design. The appellants responded to the statements of the respondents no.2 and 3 vide letter dated 17.01.2007.

4. It is the case of the appellants that the respondents no.2 and 3 continued marketing, manufacturing and distributing the impugned product, i.e.Montex Mastani pens. In February, 2017, the appellants came across the respondent no.1, who was selling and distributing the respondents Montex Mastani pens. Thereafter, the appellants instituted suit bearing CS (Comm) 361/2017 against the respondents alleging fraudulent and slavish imitation of the appellants' rights in the 172 design along with I.A. 6056/2017 seeking an ex parte interim injunction restraining the respondents from manufacturing or trading in pens imitating the appellants' 172 design. When the matter came for hearing before the Single Judge, the Single Judge noticed the total similarity between the products of the parties, however, refrained from passing any ex parte orders allowing the respondents to present their case.

5. On 26.05.2017, the counsel for the respondents appeared and contended that there was no novelty in the design of the appellant. The said contention was turned down by the Single Judge holding that the respondent no.3 itself having "obtained registration of design of a writing instrument" could not contend so and proceeded to grant ad interim orders against the respondents herein.

6. The respondents no.2 and 3 filed their written statement contending that there are also engaged in the business of manufacturing and marketing stationary items including ball pens. In para 7, they have detailed numerous trademark registrations obtained by them and claim their trademark 'Montex' to have become well-known. They also claim to have obtained registration of various designs in respect of pens/writing instruments. In response to the 172 design, the respondents contended that the said design was not new or novel, but a combination of various pre-published designs of the respondents sold under the trademarks Montex Melody, Montex Addict, Montex Liner, Montex Ferrari, Montex Haiwa and Montex Easy Flow. The respondents claimed that the 172 design was a mere combination of designs of pens already being manufactured by them.

7. During the pendency of the suit, respondent no.2 secured registration of the impugned design under registration no.282909 and accordingly, filed IA 646/2018 seeking amendment of the written statement. By the said application, inter alia the