The presumption of receipt under Rule 3 establishes that an application is deemed filed when sent, and overlapping claims in design and trademark are permissible for registration.

JUDGMENT

Sanjeev Sachdeva, J. (Oral)

C.M. APP No. 46566/2022 (seeking exemption)

1. Allowed, subject to all just exceptions.

2. Application stands disposed of.

FAO (OS) (COMM) 302/2022 & C.M. APP No. 46565/2022 (seeking stay)

3. Issue notice.

4. Notice is accepted by learned counsel appearing for the Respondent.

5. With the consent of the parties, the appeal is taken up for final disposal today itself.

6. Appellant impugns order dated 22.08.2022 whereby the application filed by the appellant/plaintiff under Order XXXIX Rule 1 and 2 CPC has been dismissed and the application filed by the respondent/defendant under Order XXXIX Rule 4 CPC has been allowed.

7. The appellant/plaintiff had filed the subject suit under Section 22 of the Designs Act for permanent injunction restraining infringement of a registered design of the plaintiff in 'LED Surface Light'. By ex parte ad interim injunction dated 12.02.2021 an injunction was granted in favour of the appellants against the respondent, restraining them from manufacturing, marketing, selling and using etc. the impugned goods, for applying the subject design on the impugned goods deceptively similar to the registered design of the appellant.

8. Since an issue was with regard to infringement of a design, the matter stood transferred to the IPD Division of this Court.

9. Subject application under Order XXXIX Rule 4 CPC was filed by the respondent, inter alia, contending that the design was neither novel nor unique and also that the design was a prior published design, prior to the filing of the application for registration of the design. Reliance was placed by the respondent on a trademark application filed by the appellant TM-A seeking registration of the trademark in the shape of the good wherein the appellant in the column of statement as to use of mark has stated as under:

10. It is contended that the appellant was not the originator of the design and was simply an importer from China, from a manufacturer who was supplying the same design.

11. Learned counsel for the respondent submits that once a design is used as a trademark, it cannot be registered as a design.

12. Learned Single Judge has rejected the contention of the respondent that merely because a design is used as a trademark, it cannot be registered as the design. The impugned order has held that the appellant/plaintiff has not placed on record any document or agreement to show that the product was being manufactured from a Chinese manufacturer on a job work basis and it was for the plaintiff to show that it is the author of the design or that it satisfied the conditions mentioned in Section 2-J of the Designs Act, 2000, which has not been done.

13. With regard to the contention of learned counsel for the respondent that the design was prior published, it is disputed by learned counsel for the appellant who contends that though in the trademark application, it is mentioned that the mark was used since 06.04.2016, the same would not amount to disclosing the design to public as a mere generic plea of user would not amount to a public disclosure. He submits that there could be an instance of the mark being used on a product or design being used on a product but that the produ