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2006 DIGILAW 660 (GUJ)

Gopal Glass Works Ltd. v. IAG Company Ltd.

2006-10-04

M.R.SHAH

body2006
JUDGMENT : M.R. Shah, J. By way of this application, the applicant - Original plaintiff has prayed for an appropriate interim injunction restraining the opponent/defendants through their directors, officers, servants, agents, dealers, distributors or through any other persons on their behalf from producing, selling, exposing for sell, offering for sale the glass sheets by applying the Registered Design No. 190336 of the applicant/plaintiff or any fraudulent or obvious imitation thereof and thereby infringing the copyright of the plaintiff and also from passing off their such glass sheets as and for the true goods of the applicant/plaintiff. 2. It is the contention on behalf of the applicant that the applicant had obtained the certificate of registration of glass sheets in the name of "DIAMOND SQUARE" under the registration No. 190336 w.e.f. 5.11.2002. That the copyright of the said registered design No. 190336 is conferred upon the applicant for a period of 10 years and may be extended for the further period of 5 years. That the said registration is valid and subsisting under the law and, therefore, as provided under Section 22 of the Act, during the existence of copyright in the said registered design, it shall not be lawful for any person to apply or caused to be applied the said registered design or any fraudulent or obvious imitation thereof to glass sheets for the purpose of manufacture and sale without the license or written consent of the applicant. It appears that after the aforesaid design was registered in favour of the applicant, the defendant No. 2 applied for design named "KOHINOOR" alleged to be similar and as the actions of the defendants were in breach of the provisions of The Designs Act, 2000 (hereinafter referred to as "the Act") and were infringing the rights of the applicant, the applicant - original plaintiff filed Civil Suit No. 1 of 2004 in the District Court, Mehsana. On an application at Exh. 5 moved by the plaintiff, an order granting ex-parte injunction in favour of the plaintiff came to be passed by the learned trial Court. As it was submitted that the defendants have submitted an application for cancellation of the registration under the Act, an application was submitted by the plaintiff seeking transfer of the suit from the District Court to this High Court in light of the provisions of Section 22 of the Act and, therefore. As it was submitted that the defendants have submitted an application for cancellation of the registration under the Act, an application was submitted by the plaintiff seeking transfer of the suit from the District Court to this High Court in light of the provisions of Section 22 of the Act and, therefore. The said suit was transferred to this Court. An application below Exh. 5 was decided by the learned Single Judge of this Court and this Court (Coram: Hon'ble Mr. Justice DA. Mehta, J.) vide order dated 25.3.2004 vacated the ad-interim injunction, however, issued certain directions. Being aggrieved and dissatisfied with the order passed by the learned Single Judge in vacating the ad-interim injunction, the applicant-original plaintiff preferred OJ Appeal No. 25 of 2004 along with Civil Application No. 54 of 2004 and the following order came to be passed while disposing of the aforesaid OJ Appeal. After the appeal being argued at some length, there was a limited consensus among the parties to the extent and to the effect that the application for cancellation of registration pending before the Controller under the Designs Act is required to be heard and disposed as expeditiously as practicable and the parties were agreeable to extend all the necessary co-operation for an early disposal of that application. It was jointly suggested that, with the co-operation of the parties, those proceedings may be disposed preferably within a period of two months and the necessary request shall jointly be made before the Controller by the parties concerned. We expect that the Controller shall give due priority to the case among the parties herein in view of the arrangement recorded herein. It was, on that basis, also agreed that this appeal does not survive and the interim directions issued in the Civil Suit No. 4 of 2004 pending in this Court shall continue to operate with the clarification that the observations made in the interim orders in the Suit shall not influence the decision of the Controller and the Controller shall take his own decision on merits of the application for cancellation without being influenced by the observations made in the interim orders of this Court. 2. With the above clarification and observations, the appeal is disposed as not pressed. The Civil Application stands disposed in view of the above order made in the appeal. 3. 2. With the above clarification and observations, the appeal is disposed as not pressed. The Civil Application stands disposed in view of the above order made in the appeal. 3. It appears from the record that thereafter the application submitted by the defendant No. 2 came to be decided by the Assistant Controller of Patents and Designs who by its order dated 28.9.2004 was pleased to pass an order to cancel the registered design No. 190336 dated 5.11.2002 which was in favour of the applicant - original plaintiff. It is the case of the applicant that being aggrieved and dissatisfied with the order passed by the Assistant Controller, Patents and Designs, dated 28.9.2004 in cancelling the registered design No. 190336, the applicant approached the Calcutta High Court by way of AID No. 1 of 2005 and the Calcutta High Court vide its judgment and order dated 17.8.2005 has been pleased to allow the said appeal/AID No. 1 of 2005 and has been pleased to quash and set aside the order passed by the Assistant Controller, Patents and Designs, dated 20.9.2004 and has been pleased to restore the registered design No. 190336 (Annexure - D). 4. Shri Mihir Joshi, learned Senior Advocate appearing for Shri Jasani, learned advocate appearing on behalf of the applicant while relying upon Section 22 of the Act has submitted that in view of the restoration of the registered design No. 190336 in favour of the applicant and during the existence of the copyright of the said design, it shall not be lawful for any person for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied. He has also relied upon Sections 4, 11 and 19 of the Act and relying upon the said provisions of the Act and in view of the judgment and order passed by the Calcutta High Court restoring the registered design in favour of the applicant, it is requested to pass an appropriate order of interim injunction restraining the opponents/ defendants through their directors, officers, servants, agents, dealers from producing, selling, exposing for sale the glass sheets by applying the registered design No. 190336 of the applicant-plaintiff or any fraudulent or obvious imitation thereof and thereby infringing the copyright of the plaintiff and also from passing off their such glass sheets as a true goods of the applicant - plaintiff, Shri Mihir Joshi, learned senior advocate has also further submitted that as at present the defendant No. 1 is not manufacturing and producing any glass sheets, he does not press the relief of interim injunction against the defendant No. 1. 5. On the other hand, Shri Kamal B. Trivedi, learned Senior Advocate appearing on behalf of the defendant No. 2 has submitted that there is a registered design in favour of the defendant No. 2 named "KOHINOOR" and, therefore, they cannot be restrained from using the design named "KOHINOOR". He has also further submitted that Section 22 of the Act would not be applicable in the present case as the Section 22 of the Act would be applicable in a case where there is no registered design in favour of any person and unless and until the registered design which is in favour of the defendant No. 2 is cancelled, they cannot be restrained from using their design named "KOHINOOR". He has also made a categorically statement before this Court that there is already registered design in favour of the defendant No. 2 named "KOHINOOR" bearing registration No. 191662 and the defendant No. 2 is using the same which is not obvious and/or fraudulent imitation of applicant's design called "DIAMOND SQUARE" bearing registration No. 190336. He has also relied upon Sections 4, 11, 19 and 22 of the Act. 6. He has also relied upon Sections 4, 11, 19 and 22 of the Act. 6. Shri Y.J. Trivedi, learned advocate appearing on behalf of the defendant No. 1 has submitted that the cancellation application submitted by the defendant No. 1 is still pending and no order has been passed by the Calcutta High Court and, therefore, in view of the order passed by the Division Bench of this Court in aforesaid OJ Appeal, no injunction is required to be granted in favour of the applicant against the defendant No. 1. 7. Shri Mihir Joshi, learned Senior Advocate appearing for the applicant has disputed the claim on behalf of the defendant No. 2 that the design named "KOHINOOR" is not similar to that of "DIAMOND SQUARE" and using the design "KOHINOOR" is not obvious and/or fraudulent imitation of the applicant's design called "DIAMOND SQUARE" by the defendant No. 2. 8. Heard the learned advocate appearing on behalf of the parties. 9. It is not in dispute that the applicant is having a certificate of registered design named "DIAMOND SQUARE" bearing registration No. 190336 and it prima facie appears that the same is prior to the registered design named "KOHINOOR" bearing registration No. 191662. It is also not in dispute that pursuant to the order passed by the Calcutta High Court dated 17.8.2005 in AID No. 1 of 2005 the registered design No. 190336 named "DIAMOND SQUARE" in favour of the applicant has been restored. Thus, the registered design No. 190336 is in existence. Now during the existence of the copyright of the design bearing registration No. 190336 named "DIAMOND SQUARE", considering the provisions of Section 22 of the Act, it shall not be lawful for any person for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of tin1 applicant or to do anything with a view to enable the design to be so applied. Section 22 Sub-section (1) reads as under: 22. Piracy of registered design. Section 22 Sub-section (1) reads as under: 22. Piracy of registered design. - (1) During the existence of copyright in any design it shall not be lawful for any person- (a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or (b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or (c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article. 10. Now, it. is the case on behalf of the defendant No. 2 that their registered design named "KOHINOOR" bearing registration No. 191662 used by them is not obvious and/or fraudulent imitation of the applicant's design called "DIMOND SQUARE" bearing registration No. 190336 and if the design in favour of the defendant No. 2 named "KOHINOOR" bearing registration No. 191662 is not obvious and/or fraudulent imitation of the applicant's design, in that case, if the interim injunction as prayed for is granted, the defendant No. 2 cannot have any objection. At the same time, if the registered design in favour of the defendant No. 2 named "KOHINOOR" bearing registration No. 191662 used by the defendant No. 2 is similar to that of the applicant's design called "DIAMOND SQUARE" and is obvious and/or fraudulent imitation of the said design, then in that case, considering the provisions of Section 22 of the Act, during the existence of copyright in the design named "DIAMOND SQUARE" bearing registration No. 190336, it shall not be lawful for the defendant No. 2 for the purpose of sale to apply or cause to be applied to glass sheet, design or any fraudulent or obvious imitation thereof and thereby it shall not be lawful for the defendant No. 2 their agents, servants, dealers and distributors from producing, selling, exposing for sale and offering for sale the glass sheets by applying the registered design No. 190336 of the applicant or any fraudulent or obvious imitation thereof and thereby infringing copyright of the plaintiff and from passing of such glass sheets as a true goods for the applicant. Under the circumstances and in view of the restoration of registered design No. 190336 named "DIAMOND SQUARE" in favour of the applicant, considering the provisions of Section 22 of the Act as well as the statement of Shri Kamal B. Trivedi, learned senior advocate appearing for the defendant No. 2 that using the registered design named "KOHINOOR" bearing registration No. 191662 will not obvious and/or fraudulent imitation of the applicant's design called "DIAMOND SQUARE" bearing registration No. 190336 and the said design is different than that of the applicant and, therefore, the application deserves to be partly allowed against the defendant No. 2 and the defendant No. 2 its directors, officers, servants, agents, dealers, distributors or through any other person on their behalf are restrained from producing, selling, exposing for sale, offering for sale the glass sheets by applying registered design No. 190336 of the applicant or any fraudulent or obvious imitation thereof and thereby infringing the copyright of the plaintiff and also from passing of their such glass sheets as a true goods of the applicant and during the pendency and till final disposal of the present suit. The applicant against the defendant No. 2 is accordingly allowed and the application against the defendant No. 1 is dismissed as the same is not pressed as stated here in above. 11. The applicant against the defendant No. 2 is accordingly allowed and the application against the defendant No. 1 is dismissed as the same is not pressed as stated here in above. 11. This application is accordingly disposed of. No costs.