JUDGMENT

VIBHU BAKHRU, J INTRODUCTION

1. The appellant (hereafter ‘Kamdhenu’) has filed the present intra-court appeal impugning the judgement dated 12.05.2021 (hereafter ‘the impugned judgement’), whereby the learned Single Judge allowed the application filed by the respondent (hereafter ‘Aashiana’) under Order XIII-A of the Code of Civil Procedure, 1908 (hereafter ‘the CPC’) and dismissed the suit filed by Kamdhenu, being CS (COMM) 90/2018. The appellant had filed the said suit alleging infringement of its registered design regarding the surface pattern on steel rods.

2. The learned Single Judge found that the design in question was a prior published design and held that the registration of the said design was contrary to Section 4 of the Designs Act, 2000 (hereafter ‘the Act’). Kamdhenu contends that the said finding is erroneous as the prior published design in question (British Standard B500C) is an industry standard and several surface designs are conceivable conforming to the said standard.

FACTUAL CONTEXT

3. Kamdhenu is engaged in the business of manufacturing and marketing steel bars and other allied goods under the name and trademark ‘KAMDHENU’. Kamdhenu claims that it created and developed a unique design, having new and original features of surface pattern, comprising of double ribs applied to steel bars, in the year 2012-2013.

4. Thereafter, on 14.01.2013, Kamdhenu obtained a Design Registration bearing no. 250968 under Class 25-01 (hereafter ‘the said design’), in respect of ‘Rod for Construction’. The Controller General of Patents, Designs and Trade Marks has issued a certificate dated 29.08.2014 evidencing registration of the said design in favour of Kamdhenu.

5. Kamdhenu states that the said design was applied to its ‘best quality steel bars’ under the name of ‘KAMDHENU SS 10000 TMT’;

a product which was launched on 18.06.2013. It achieved considerable commercial success and the monthly sales have been increasing since. The monthly sales of the product in question amounted to approximately ₹60 crores in the year 2013-2014; over ₹100 crores in the years 2014-2015 and 2015-2016; and, approximately ₹83 crores in the year 2016-2017.

6. Kamdhenu claims that in the month of June 2017, it discovered that Aashiana was selling steel bars with similar surface design under the name ‘FRIENDS 500 HD TMT BARS’ in several markets across South Delhi. Kamdhenu alleges that Aashiana applied/copied/adopted/

imitated a surface design, which is similar to the said design.

7. On 12.06.2017, Kamdhenu filed a suit before the learned District Court, Saket, inter alia, seeking a permanent injunction to restrain Aashiana from using the said design. By an order dated 15.06.2017, the learned District Court, Saket granted an ex parte order of injunction and appointed a Local Commissioner to inspect the premises of Aashiana and seize the infringing goods and packing material. The said suit was subsequently transferred to this Court. This Court, by an order dated 03.11.2017, confirmed the interim protection granted to Kamdhenu by the order dated 15.06.2017.

8. Aashiana preferred an appeal [being FAO (OS) 309/2017] against the decision of the learned Single Judge restraining Aashiana from infringing the said design, which was registered in favour of Kamdhenu. The said appeal was allowed and by an order dated

23.08.2018, the Division Bench of this Court set aside the order dated 03.11.2017 passed by the learned Single Judge and held that the relevant and material circumstances with respect to prior publication were not taken into account and analysed in the proper perspective. Kamdhenu challenged the said order before the Supreme Court by filing a Special Leave Petition [being SLP (Civil) no. 32594/2018]. The said SLP was dismissed by the Supreme Court by an order dated

11.02.2019.

9. During the pendency of the appeal, Aashiana filed an application [being I.A. 647/2018] under Order XIII-A of the CPC seeking dismissal of the suit [CS (COMM) 90/2018] filed