Point of Law: Intellectual Property Law - Summary judgment in intellectual property dispute - Defendant has established that plaintiff’s registered design was, in fact, a prior published design, and registration is therefore contrary to Section 4 of the Act - Court satisfied that present case is a fit one for exercise of power under Order XIII-A of CPC.

JUDGMENT :

I.A. 647/2018 (Application on behalf of the defendant under Order XIII-A of the CPC, 1908)

1. The present suit has been filed by Kamdhenu Limited (“the plaintiff”) against Aashiana Rolling Mills Limited (“the defendant”), seeking an injunction against the defendant’s alleged infringement of its registered design in respect of steel bars. By way of an interlocutory application [I.A. 647/2018], the defendant seeks dismissal of the suit in exercise of the Court’s jurisdiction under Order XIII-A of the Code of Civil Procedure, 1908 [“CPC”].

I. Factual background

2. The plaintiff and the defendant both manufacture steel bars. The plaintiff claims to have created and developed a unique design in the period 2012-2013. The plaintiff’s design, claiming new and original features in the form of surface pattern of double ribs, was registered under No.250968 in Class-25-01 with effect from 14.01.2013. The Controller General of Patents, Designs & Trade Marks (“the Controller”) issued a certificate dated 29.08.2014 to this effect in favour of the plaintiff. Two ‘representation sheets’ were annexed with the certificate, which included pictorial representations of the front and back view of the goods in question, as follows:

3. Each of the sheets also contained an ‘endorsement of novelty’ in the following terms:

“The novelty resides in the surface pattern particularly in the portions marked A & B of the ‘rod for construction’ as illustrated.”

4. The plaintiff claims that its registered design is new, novel and original, and that after registration, it took steps for use and publication thereof, including application of the design on its best quality steel bars [Kamdhenu SS10000 TMT], which were launched on 18.06.2013. The case made out in the plaint is that the plaintiff has achieved considerable commercial success in the sale of steel bars of the aforementioned design. The monthly sales figures disclosed in the plaint reveal sales worth approximately Rs.60 crores in FY 2013-2014, over Rs.100 crores in 2014-2015 & 2015-2016 and approximately Rs.83 crores in the year 2016-2017.

5. The plaintiff claims to have discovered, in June 2017, that the defendant is selling steel bars of an identical design under the name “Friends 500 HD TMT Bars”. The plaintiff alleges fraudulent imitation of the double ribbed design popularized by it, and consequent infringement of the registered design in which it has a statutory right to exclusivity under the Designs Act, 2000 [“the Act”].

6. The plaintiff therefore filed the present suit on 13.06.2017 in the District Court, Saket, which was subsequently transferred to this Court. The District Court granted an ex parte order of injunction on 15.06.2017, and also appointed a local commissioner to inspect the defendant’s premises and seize the infringing goods, packaging material and equipment used in manufacturing alongwith the defendant’s business records. The application for injunction was ultimately heard on contest after the transfer of the suit to this Court and the ex parte ad interim order dated 15.06.2017 was confirmed by a learned Single Judge vide order dated 03.11.2017.

7. The defendant challenged the said order before the Division Bench in FAO(OS) 309/2017. The Division Bench considered the defendant’s contention that the registration itself is invalid on account of numerous prior publications and, by its judgment dated 23.08.2018, set aside the order of injunction. In coming to this conclusion, the Division Bench held inter alia as follows:

“19. In the present case, the suit nowhere discloses – nor does the plaintiff/ Kamdhenu appear to have stated in its pleadings or in the documents filed before the court that the rods/ bars for which the registration was sought conformed to any particular standard at all. It is a matter of record that Aashiana averred to that the standard universally accepted and applied routinely by all manufacturers of the product had existed for almost three decades. It relied upon