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1997 Supreme(Mad) 1147
MADRAS HIGH COURT
K Gnanaprakasam, Shivaraj V Patil
SALZER ELECTRONICS LTD. - PETITIONER
v.
ZENITH MOULD AND TOOLS PVT. LTD. - RESPONDENTS.
O.S. Appeal No. 239 & 240 of 1997
Decided on : October 20, 1997.
Shri A. A. Mohan, Advocate, for the Petitioner.
Shri M. Venkatachalapathy, Sr. Advocate, for the Respondents.
A registered design is infringed if another person makes or sells an article that is identical or substantially similar to the registered design.
Headnote:
DESIGN ACT, 1911 - REGISTRATION OF DESIGN - INFRINGEMENT - INJUNCTION - SIMILARITY OF SWITCHES - BALANCE OF CONVENIENCE - IRREPARABLE LOSS - INTERIM INJUNCTION GRANTED.
Fact of the Case:
Plaintiff, a manufacturer of rotary switches, filed a suit against the defendants for infringement of its registered design and passing off. The plaintiff claimed that the defendants were manufacturing and selling rotary switches identical to its own, in violation of its design registration and common law rights. The defendants denied the allegations and contended 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 court noted that the plaintiff's switches had a distinctive design and that the defendants' switches were similar to the plaintiff's switches except for the name. The court also found that the plaintiff had earned a reputation for its switches and that the balance of convenience was in favor of the plaintiff.
Issues: 1. Whether the plaintiff's design registration was valid. 2. Whether the defendants' switches infringed the plaintiff's registered design. 3. Whether the defendants were passing off their switches as the plaintiff's switches. 4. Whether the plaintiff was entitled to an injunction.
Ratio Decidendi: The court held that the plaintiff's design registration was valid and that the defendants' switches infringed the plaintiff's registered design. The court also held that the defendants were passing off their switches as the plaintiff's switches. The court further held that the plaintiff was entitled to an injunction to restrain the defendants from infringing its registered design and passing off their switches as the plaintiff's switches.
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 interim injunctions as prayed for in the applications.
Shivaraj Patil, J. - 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 plaintiff's registered debtors of rotary switches containing contact stage 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 others to pass off by manufacture and sale of rotary switches identical or similar to the plaintiff's 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 these 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.
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 plaintiff's 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 other 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 ofthe 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 SCHALCERETR BABRIK 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. Doraiswamy, 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 extra-ordinary 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 constsantly; these switches of the plaintiff have also the quality of tripping when there is a power fluctuation, 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 a 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 protest its exclusive rights of the novel switches manufactured, the plaintiff obtained design registration for its contact stage and cover plate under No. 165316 dated 11-2-1993 under Section 47 of the Design 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 a
