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IN THE HIGH COURT OF DELHI
Navin Chawla, J.
Philips Lighting Holding B.V. - Appellant
Versus
Jai Prakash Agarwal - Respondent
CS(COMM) 46 of 2019 and CS(COMM) 76 of 2019
Decided On : 05-07-2022
The Court held that the plaintiff's registered design for a T-shaped LED bulb was not new or original and was therefore not entitled to protection. The Court also held that the plaintiff's claim of passing off failed because the defendants' product was not similar enough to the plaintiff's product to cause confusion among consumers.
Fact of the Case:
The plaintiff, Philips Lighting Holding BV, is the leading manufacturer and seller of high quality and energy-efficient lighting products, systems and services, such as home lighting, stage lighting, studio lighting, location lighting, landscape lighting, display lighting, smart lighting as also their controls, distribution and power sources. It claims to have developed several innovative lighting products keeping technologies of Light Emitting Diodes (in short, 'LED') at the forefront. It claims to be continuously investing in the research and development as well as the advertisement and promotions of its products, details whereof it gives as under: YearAnnual SalesResearch and Development ExpensesAdvertisement and Promotional Expenses (In millions of EUR) 20167,115353170 20176,965354172 The plaintiff claims itself to be the Original Equipment Manufacturer (in short, 'OEM') for several lighting companies in India such as Eveready Industries India Ltd. and Havells India Limited, to name a few, which procure the plaintiff's T-Bulb and sell the product under their own brand name subject to the payment of a license fee and/or other valuable consideration under the terms of their respective contracts.
Finding of the Court:
The Court held that the plaintiff's registered design for a T-shaped LED bulb was not new or original and was therefore not entitled to protection. The Court also held that the plaintiff's claim of passing off failed because the defendants' product was not similar enough to the plaintiff's product to cause confusion among consumers.
Issues: Whether the plaintiff's registered design for a T-shaped LED bulb was new or original and was therefore entitled to protection. Whether the plaintiff's claim of passing off failed because the defendants' product was not similar enough to the plaintiff's product to cause confusion among consumers.
Ratio Decidendi: The Court held that the plaintiff's registered design was not new or original because it was a trade variant of an already-existing registered design. The Court also held that the plaintiff's claim of passing off failed because the defendants' product was not similar enough to the plaintiff's product to cause confusion among consumers.
Final Decision: The Court dismissed the plaintiff's application for an injunction.
JUDGMENT
Navin Chawla, J.
I.A. 7716/2019 in CS(COMM) 46/2019
1. The present application has been filed by the plaintiff under Order VI Rule 17 of the Code of Civil Procedure, 1908 (in short, 'CPC') seeking an amendment to the cause title of the suit by substituting its name from 'Philips Lighting Holding BV' to 'Signify Holding BV'. The plaintiff asserts that subsequent to the filing of the present suit, on 01.02.2019, the plaintiff underwent a corporate name change from 'Philips Lighting Holding BV' to 'Signify Holding BV'. A declaration of the Notary Public showing an amendment to the Articles of Association of the plaintiff-company and the change of the plaintiff-company's name to 'Signify Holding BV' has been filed along with the application.
2. The defendants oppose the present application contending therein that the plaintiff has filed the above two suits, that is, CS(COMM) 46 of 2019 and CS(COMM) 76 of 2019, in different names. Though the plaintiff-company claims to have changed its name to 'Signify Holding BV' on 01.02.2019, but the documents filed by the plaintiff show that the resolution for the change of name of the plaintiff-company was passed in November, 2018, that is, prior to the filing of the present suit. The defendants contend that, therefore, on the date of filing of the suit, the legal entity in the name of the plaintiff did not exist and the suit has been wrongly instituted.
3. I have considered the submissions made. Along with the application, the plaintiff has filed a declaration of the Notary Public showing an amendment to the Articles of Association of the plaintiff-company and the change of name. The learned counsel for the plaintiff submits that in Netherlands, where the plaintiff-company is registered, it is only with such declaration that the change of name, in fact, becomes operational. Be that as it may, as it is only the change of name and not a case of transfer of rights and the plaintiff has derived no undue benefit by instituting this suit in its previous name, I do not see any reason not to allow the present application, the same being only formal in nature.
4. Accordingly, the application is allowed. The amended memo of parties be filed within a period of ten days from the date of this order.
I.A. 6718/2019 in CS(COMM) 76/2019
5. The present application has been filed by the defendant under Order VI Rule 17 of the CPC seeking an amendment of its written statement. By way of an amendment, the defendant primarily wants to place on record the Certificate of Registration of Design bearing no. 305185 granted in favour of M/s Shree Sant Kripa Intellectual, who is allegedly the licensor of the defendant-company, in Class 26-05 for the design of the 'LED Tube Lamp'. The learned counsel for the defendant submits that as this design registration was granted subsequent to the filing of the written statement, the same needs to be brought on record by way of an amendment in the written statement.
6. The application is not opposed by the learned counsel for the plaintiff and in fact, submissions had been made by the learned counsel for the plaintiff relying upon the amendment sought.
7. Accordingly, the application is allowed and the amended written statement is taken on record.
I.A. 1241/2019 in CS(COMM) 46/2019 and I.A. 2159/2019 in CS(COMM) 76/2019
8. The above applications have been filed by the plaintiff under Order XXXIX Rules 1 and 2 of the CPC praying for an ad-interim injunction against the defendants (in both the suits), restraining them from manufacturing and selling or in any manner dealing in products embodying the plaintiff's registered design under the registration no. 299147 or a deceptively similar variant thereto. Though in CS (COMM) 76 of 2019, a claim is also made to another registered design of the plaintiff bearing no. 247723, the present common order is being passed as, in my opinion, at least for the purpose of the present applications, the claim of the plaintiff on the desig
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