A registered design cannot simultaneously be claimed as a trademark, and prior publication invalidates its registration under the Designs Act.

JUDGMENT

Navin Chawla, J.

I.A. 8676/2021

I.A. 10813/2021

1. By this common order, I shall dispose of two applications, one application, being I.A. No.8676/2021, filed by the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (hereinafter referred to as the `CPC'), and the second application, being I.A. No. 10813/2021, filed by the defendant under Order XXXIX Rule 4 of the CPC.

Plaintiff's case

2. The plaintiff is engaged in the business of manufacturing and trade of wide range of electrical goods including electrical appliances, electrical switches, cover plates, electrical accessories and fittings, wires and cables, emergency lights, LED lights, MCB circuit breaker, PVC pipes, electronic components and other allied and related goods in different shapes, get up, trade dress, design and dimensions and offers services in connection with such products.

3. It is the case of the plaintiff that the plaintiff is the registered proprietor of the design of the `LED Surface Light', duly registered with the Controller of Design, under Design No. 282812, dated 22.04.2016, in Class 26-03. The registration certificate of the plaintiff has been filed as a document along with the Suit, and is reproduced hereinunder:

4. The plaintiff asserts that the said product became an instant hit and the consumer at large started associating the uniquely shaped product with the plaintiff alone, hence, the plaintiff also obtained the trade mark registration of the shape of the product under Registration No. 4056894 in Class 11. At this stage itself, I may note that the learned counsel for the plaintiff submits that after the filing of the Suit, the plaintiff itself has applied for a withdrawal of its trade mark registration.

5. Pertinently, the plaintiff in the present suit has claimed relief only on the basis of its design registration and in this regard, in paragraph 8 of the plaint, makes the following assertion:

"8. That the Plaintiff in the present suit agitates the violation of it's said registered design and reserves its right to seek relief qua shape trademark and violation of functional aspects i.e Patent."

6. The plaintiff asserts that it has been carrying on its business extensively in relation to its said products namely `LED Surface Light' through sale in major parts of the country and export to various foreign countries in large quantities.

7. The defendant in question, is engaged in the business of manufacturing and trading electrical goods such as electrical lights and other such appliances. The defendant is manufacturing its goods under the trademark `SYSKA'.

8. The plaintiff asserts that it gained knowledge of the defendant's impugned products in the first week of January 2020. The plaintiff further submits that though the defendant is manufacturing its lighting products under the trademark `SYSKA', it has copied the design of the plaintiff and is manufacturing the infringing products with the same shape, configuration, surface pattern and other features as that of the plaintiff's product.

9. The plaintiff asserts that the defendant has copied the abovementioned design of the plaintiff and is manufacturing its infringing products having the same shape. The pictorial depiction of the product of the plaintiff and the defendant, along with the alleged similarities in the design, is given by the plaintiff as under:

10. The learned counsel for the plaintiff asserts that the design of the defendant's product being similar, if not a complete copy of the plaint