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1997 Supreme(Mad) 1037
High Court of Judicature at Madras
THE HONOURABLE MR. JUSTICE SHIVARAJ PATIL & THE HONOURABLE MR. JUSTICE K. GNANAPRAKASAM
Salzer Electronics Ltd., Samichettipalayah
Versus
Zenith Mould and Tools Pvt. Ltd. & Another
O.S.A. Nos. 239 & 240 of 97
Decided On :Decided On : 20-09-1997
For the Appellant:A.A. Mohan for M/s. Mohan Associates, Advocates.
For the Respondents:M. Venkatachalapathy, Senior Counsel for M/s. M. Sriram, D. Rajendran, D. Balaraman, Advocates.
A registered design is infringed when another person makes or sells an article that is identical or substantially similar to the registered design.
Headnote:
DESIGN - REGISTRATION - INFRINGEMENT - INJUNCTION - SIMILARITY - BALANCE OF CONVENIENCE - REPUTATION - INTERIM INJUNCTION GRANTED:
Fact of the Case:
Plaintiff, Salzer Electronics Limited, registered a design for its rotary switches containing contact stage and cover plate under the Designs Act, 1911. The plaintiff alleged that the defendants were manufacturing and selling identical rotary switches under the trademark 'Zenith', infringing the plaintiff's registered design and passing off their products as those of the plaintiff. The plaintiff filed a suit seeking permanent injunction and damages. The defendants denied the allegations and claimed that their switches were different from the plaintiff's and that the plaintiff's design registration was invalid.
Finding of the Court:
The court found that the plaintiff had made out a prima facie case for grant of injunction. The plaintiff had a registered design for its rotary switches, and the defendants' switches were similar to the plaintiff's switches except for the name. The plaintiff had also established a reputation for its switches, as evidenced by its sales figures and turnover. The balance of convenience was also in favor of the plaintiff, as the defendants could not be directed to change only the color scheme on the front square plate of their switches to avoid similarity with the plaintiff's switches.
Issues: 1. Whether the defendants' rotary switches infringed the plaintiff's registered design? 2. Whether the defendants were passing off their products as those of the plaintiff? 3. Whether the plaintiff was entitled to an interim injunction?
Ratio Decidendi: 1. The court held that the defendants' rotary switches infringed the plaintiff's registered design. The design registration covered the shape and configuration of the contact stage and cover plate, and the defendants' switches had a similar shape and configuration. 2. The court held that the defendants were passing off their products as those of the plaintiff. The defendants' switches were similar to the plaintiff's switches except for the name, and the defendants had not taken adequate steps to distinguish their switches from the plaintiff's switches. 3. The court held that the plaintiff was entitled to an interim injunction. The plaintiff had made out a prima facie case for infringement of its registered design and passing off, and the balance of convenience was in favor of the plaintiff.
Final Decision: The court allowed the plaintiff's appeals, set aside the trial court's order dismissing the plaintiff's applications for injunction, and granted an interim injunction restraining the defendants from manufacturing and selling rotary switches identical or similar to the plaintiff's switches.
SHIVARAJ PATIL
1. The plaintiff in C.S. No. 151 of 1997 has filed these two appeals aggrieved by the common order dated 25.7.1997 passed by the learned single Judge in O.A. Nos. 175/97 and 176/97 respectively. O.A. No. 175/97 was filed seeking an order of interim injunction restraining the defendants in the suit from infringing the plaintiffs registered decision of Rotary Switches containing Contact Stages and Cover Plate registered under Design No. 165316 in Class 3 by manufacture, and sale of identical Rotary Switches, and in Application No. 176/97 an order of injunction was sought restraining the defendants from passing off and enabling other to pass off by manufacture and sale of Rotary Switches identical or similar to the plaintiffs Rotary Switches.
2. The learned single Judge by the order under appeal dismissed both the said applications O.As. 175/97 and 176/97 in O.S. No. 151/97. Hence the plaintiff has filed there appeals aggrieved by the said order of the learned single Judge dated 25.7.1997. We will refer to the parties as they are arrayed in the plaint for convenience.
3. Briefly stated, the facts giving rise to these appeals, are the following: —
The plaintiff has filed the suit C.S. No. 151/97 seeking a decree for permanent injunction restraining the defendants from infringing the plaintiffs rotary switches containing the contact stage and cover plate registered under design No. 165316 in class 3 by manufacture and sale of identical rotary switches or in any outer manner whatsoever, for permanent injunction restraining the defendants from passing off by manufacture and sale of rotary switches identical or similar to the rotary switches of the plaintiff, and a decree for Rs. 11 lakhs as damages.
4. The plaintiff states that it is a public limited company incorporated under the Companies Act; the defendants are private Limited companies the plaintiff company originally obtained on payment of consideration the know how for these switches from Saelzer Schalcerete Fabrik of West Germany through an agreement in 1984 which agreement was approved by the Reserve Bank of India; the plaintiff was given the right to improve upon the original design; it established its own research and development department; the plaintiff through the efforts of Mr. R. Duraiswarny, the Managing Director, who is an electrical engineer with vast experience and other technical personnel employed has created a novel design for the components and parts of the switches including their size, look, colour combination, shape and configuration suitable to the conditions prevailing in India.
5. The plaintiff has its factory at Coimbatore employing several hundreds of persons, having sophisticated machinery and well qualified technical personnel; the rotary switches manufactured by the plaintiff have the extraordinary quality of switching over from one phase to another when there is a power cut, as a result of which, the ultimate consumer is able to get power supply constantly; these switches of the plaintiff have also the quality of tripping when there is a power fluctuation, as a result of which the sophisticated gadgets and office equipments are not damaged when there is fluctuation of voltage, which is a common feature. Hence the switches manufactured by the plaintiff enjoy a goodwill and reputation all over India and abroad.
6. It is further stated that with a view to protect its exclusive rights of the novel switches manufactured, the plaintiff obtained design registration for its contact Slazi and cover plate under No. 165316 dated 11.2.1993 under Section 47 of the Designs Act. 1911; the said registration is valid and subsisting; the plaintiff is selling the switches under the Trade Mark ‘Salzer’ which is distinctive and exclusively identified by the trade and public with the rotary switches manufactured and sold by the plaintiff; the plaintiffs rotary switches have a standard accepted internationally, especially in the European community.
