IMPORTANT POINT
A design must be new and original to qualify for protection under the Designs Act, and mere modifications of existing designs do not constitute infringement.

JUDGMENT :

THE HONOURABLE MR. JUSTICE K. RAJASEKAR

These Civil Miscellaneous Appeals have been filed by the defendants against the Order and Decreetal Order of Ad-injunctions dated 25.01.2021 in I.A. Nos.2 and 3 of 2019 in O.S. No.197 of 2019 on the file of the IV Additional District Judge, Thiruvallur at Ponneri.

2. For the sake of convenience, the parties are referred herein according to their litigative status before the Trial Court. The brief facts leading to filing of this appeal is as follows:

3. The Plaintiff herein was involved in designing and manufacturing of various Mechanical appliances. He came up with a creative design for a forklift vehicle, by applying novel industrial design to a conventional tractor. It can be used by farmers and small industries for loading of any Agricultural products, immersible motor in the borewell, transporting any material on the field and for any outdoor commercial purposes. This form of forklift can be used for any different types of farming operations and this design is novel and innovative, and it is not subjective to any previous inventive design. He has spent a huge sum to develop the same. This design has been named “Forklift Vehicle” and his application is registered as Design No.297504 in clause 12-05, dated 13.09.2017 and he is awaiting for the approval of appropriate Authorities.

4. In the month of December 2018, he came to know that the Respondent is also “Passing off” very same design and all the respondents are trying to apply for registration of the design, since the respondents are involved in imitation of the Plaintiff's design and they are now infringing the right of the Plaintiff. The Plaintiff also issued notice to the respondents dated 28.12.2018, to stop making use of the design. The first respondent have sent a vague reply questioning the right of the Plaintiff and the second respondent has agreed to utilise the services of the Plaintiff, hence he has come forward with the relief of injunction in I.A.Nos.2 and 3 of 2019, injuncting the respondents from using the design of the Plaintiff, passing off any vehicle that is identical or similar or colourable imitation of the petitioner's forklift vehicle.

5. The respondents filed counters and contended that the Tractor and the forklift are two differed types of motor vehicles and by integrating both the vehicles, the Plaintiff has created a different vehicle used for farming sector. This design is not an innovative one and the same is already been used in various countries. The respondent is running a lathe, doing tinkering and welding works to the farmers and stated that the plaintiff has attempted to register the design of the tractor, which is attached with the forklift, it is a fraudulent design, since the first respondent is running a lathe and assisting the farmers, he used to fix whenever the tractor requires attachment in front of their tractor, including the forklift, hence the act of the respondent could not fall within the definition of 'passing off'. There is no prima facie case made out by the Applicant/Plaintiff and the balance of convenience is also in favour of the respondents. Hence, the respondents have reiterated that the Applicant/Plaintiff has no manufacturing office of facility either to manufacture conventional tractors or forklifts or even the pallets used in forklifts.

6. The Trial Court after considering the pleadings and the Exhibits marked, has held that, since there is registration of design in favour of the plaintiff, he has prima facie established the fact that he is the registered owner, using this design. The vehicle modifications done by the first respondent for the second respondent was identical with the registered design of Petitioner/Plaintiff and it is an infringement of his right. Based on the reply issued under Ex.P.6, the Court has held that the respondents are having intention to manufacture the above vehicle designed by the Plaintiff. Thereby, accepting the prima facie case, Ad-inte