JUDGMENT

MANOJ KUMAR OHRI, J.

I.A. No. 1262/2021 (Under Order XXXIX Rules 1 and 2 CPC) & I.A. No.

1274/2021 (Under Order XXXIX Rule 4 CPC)

1. The Interlocutory Application bearing No. 1274/2021 has been filed under Order XXXIX Rule 4 CPC read with Section 151 CPC on behalf of the Defendants seeking vacation of the order dated 18.12.2019 passed by the Sessions Court granting ad-interim, ex-parte injunction against the Defendants in relation to the Plaintiff‟s registered design bearing No. 227672.

2. In the present application, the following prayers have been made:-

A. Allow the present application for vacation of injunction B. Dismiss the application under Order XXXIX Rule 1 & 2 CPC read with Section 151 CPC with exemplary costs C. Vacate the order dated 18.12.2019 granting interim injunction.

3. By way of this order, I shall dispose of both the aforesaid I.A.s i.e. I.A. No. 1274/2021 filed by the Defendants under Order XXXIX Rule 4 CPC and I.A. No. 1262/2021 filed by the Plaintiffs under Order XXXIX Rule 1 and 2 CPC.

4. Briefly stated, the present suit has been instituted by the Plaintiffs seeking grant of permanent injunction against the Defendants, in respect of the alleged infringement of their registered design, alongwith a prayer for delivery up, rendition of accounts and damages. Plaintiff No. 2 is a Director of the Plaintiff No. 1 company, however it is Plaintiff No. 1 whose proprietary rights in the registered design in question are alleged to have been infringed. Thus, for the sake of convenience, any reference to the „Plaintiff‟ in this order shall mean the Plaintiffs collectively.

5. The Plaintiff is a manufacturer of “cable trays”, which are stated to have application in various industries like Food Processing, Dairies, Bottling Plants, Metro Railways, Airports, Malls, High Rise Buildings, Business Parks, etc. It holds a registration under Section 6 of the Designs Act, 2000 (hereinafter referred to as the „Act‟) since 05.03.2010. According to the Plaintiff, the design was registered as it was new, original and novel, which are the pre-requisites for registration under Section 6 of the Act. The Plaintiff further claims that its registered design has acquired a secondary meaning in the market.

6. By way of the suit, the Plaintiff has alleged that the Defendants are manufacturing and selling a product which is an imitation of the Plaintiff‟s subject matter registered design. It has further been averred that the imitation by the Defendants of the Plaintiff‟s registered design is in bad faith, since Defendants are the Plaintiff‟s erstwhile distributors for the same product, i.e. the product which is the subject matter of the suit. It has also been averred that being ex-distributors of the Plaintiff, the Defendants were aware of the fact of registration and in spite of this knowledge, the adoption was carried out deliberately and consciously.

7. Earlier, vide order dated 18.12.2019, an interim injunction was granted in favor of the Plaintiff and in response, the Defendants have filed the present application. The Defendants have sought vacation of the interim order, inter-

alia, on the following grounds:

(i) The subject matter in question is not new, novel or original.

(ii) The said design could not have been granted registration under Section 4 of the Act for lack of novelty, newness and originality; registration has been obtained by the Plaintiff by a malafide act as the Plaintiff was aware of the design‟s lack of originality.

(iii) The design in question is a design that is prior published both in India and abroad, which predates its adoption by the Plaintiff and hence was not capable of being granted registration.

(iv) The design in question is generic in nature and is widely used across industries.

8. Since the Defendants took objection to the grant of registration in favor of the Plaintiff on the grounds available under Section 19 of the Act, the suit was transferred to the High Court in terms of Section 22(4) of the Act from the C