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2016 DIGILAW 903 (GUJ)

Wim Plast Ltd. v. Symphony Ltd.

2016-04-26

B.M.TRIVEDI

body2016
JUDGMENT : B.M. Trivedi, J. 1. All the three Appeals arise out of the orders passed by the Principal District Judge, Gandhinagar (hereinafter referred to as "the trial Court") below Exh.5 in the Suits being Trade Mark Suit Nos. 2/2016, 3/2016 and 5/2016, involving similar issues on facts and law between the same parties and, therefore, this common order is being passed. 2. The Suit being Trade Mark Suit No. 2/2016 has been filed by the respondent No. 1 - (original plaintiff), against the appellants and the respondent No. 2 (original defendants) in respect of the registered designs bearing Registration Nos. 221068, 221084 and 220948. The suit being Trade Mark Suit No. 3/2016 has been filed in respect of the registered design bearing Registration No. 198241 and the suit being Trade Mark Suit No. 5/2016 has been filed by the same plaintiff and against the same defendants in respect of the registered design bearing Registration No. 227069 for its products Air Coolers. For the sake of convenience, the facts of Appeal from Order No. 125 of 2016 arising out of the impugned order passed by the trial Court in Trade Mark Suit No. 3/2016 shall be considered. 3. The respondent No. 1 herein - (original plaintiff), is a Company incorporated under the Companies Act, 1956 and is also a registered Proprietor of various designs including the design bearing Registration No. 198241 for the product Air Coolers. The appellant No. 1 (original defendant No. 1) is also a Company registered under the Companies Act. The appellant No. 2 (original Defendant No. 2) is a Firm and the Sister concern of the Appellant No. 1. According to the respondent No. 1 - original plaintiff, the appellants were selling and pirating the respondent No. 1's registered designs by using the trade mark of the appellant No. 2 i.e. 'CELLO', and the respondent No. 2 herein - original defendant No. 3 was selling the products of the appellants in the city of Gandhinagar. It is further case of the respondent No. 1 - plaintiff that the respondent No. 1 is engaged in the worldwide business of selling and marketing a wide range of its products and has strong network and well established "R & D" Division, comprising of highly qualified and experienced engineers. It is further case of the respondent No. 1 - plaintiff that the respondent No. 1 is engaged in the worldwide business of selling and marketing a wide range of its products and has strong network and well established "R & D" Division, comprising of highly qualified and experienced engineers. The respondent No. 1 - plaintiff has launched various models of Air Coolers with unique designs having different models, names and trade marks. The respondent No. 1 had applied for and has become the registered Proprietor of the design for its product Air Coolers under the name "Winter", vide the Registration No. 198241, since 20.1.2005. It is further the case of the respondent No. 1 that earlier in the month of March 2015, the respondent No. 1 had come to know that the appellants had intended to start sale of their products Air Coolers having similar shape, configuration and replication of the four designs i.e. Hi-Cool, Winter, Sumo and Diet, which were registered in favour of the respondent No. 1. The respondent No. 1, therefore, had moved the City Civil Court, Ahmedabad by filing the Civil Suit No. 566 of 2015, in which the said Court had issued the notices to the appellants - original defendants. Being aggrieved by the said order, the respondents No. 1 had moved the High Court by filing a petition being Special Civil Application No. 4624 of 2015, wherein the High Court vide the order dated 17.3.2015 had restrained the appellants - defendants from marketing, selling, advertising and directly or indirectly dealing in Air Coolers, which have same design, shape, configuration, and design identical to and/or imitation of the designs of the respondent No. 1 - plaintiff, bearing Registration Nos. 194305, 198241, 227069, and 221068. Since, the appellants - defendants had raised the issue of validity of the said registrations in the said earlier suit, the same came to be transferred to the High Court with the consent of the parties. The said suit has been registered as the Civil Suit No. 2/2015 before this Court. In the said suit, the Single Bench after hearing the parties, vide its interim order dated 5.5.2015 had continued the earlier order dated 17.3.2015 passed in Special Civil Application No. 4624 of 2015, pending the said suit. The said suit has been registered as the Civil Suit No. 2/2015 before this Court. In the said suit, the Single Bench after hearing the parties, vide its interim order dated 5.5.2015 had continued the earlier order dated 17.3.2015 passed in Special Civil Application No. 4624 of 2015, pending the said suit. Being aggrieved by the said order, the appellants had preferred the O.J. Appeal No. 32 of 2015 before the Division Bench, however, the same was dismissed. 4. It is further case of the respondent No. 1 that in the third week of March, 2016 the respondent No. 1 came to know that the appellants had again under the name 'Cello Marvel' started to sell its products i.e. Air Coolers making minor alterations and cosmetic changes in their designs for which they were restrained by the High Court in the Civil Suit No. 2 of 2015. According to the respondent No. 1, the recently adopted design of the appellants in the name of 'Cello Marvel' was the obvious imitation of the respondent No. 1's registered design and hence, the appellants have committed an act of infringement as per the provisions contained in Section 22 of the Designs Act, 2000 (hereinafter referred to as "the said Act"). The respondent No. 1, therefore, has filed the present suit along with the two other suits seeking permanent injunction in respect of their designs registered for their products Air Coolers. 5. The respondent No. 1 had also filed an Application at Exh.5, seeking temporary injunction against the appellants and respondent No. 2 for restraining them from manufacturing, marketing, selling, advertising, and directly or indirectly, dealing in the Air Coolers, which have the same design, shape, configuration, and design identical to and/or imitation of plaintiff's registered designs and from committing an action of infringement of the registered design bearing No. 198241 pending the suit. The trial Court, vide the impugned order dated 6.4.2016, without issuing notices to the appellants, granted ad-interim injunction as prayed for by the respondent No. 1 - plaintiff till 13.4.2016. Being aggrieved by the said order, the appellants - defendants have preferred the present Appeals. 6. The learned Sr. Counsel, Mr. The trial Court, vide the impugned order dated 6.4.2016, without issuing notices to the appellants, granted ad-interim injunction as prayed for by the respondent No. 1 - plaintiff till 13.4.2016. Being aggrieved by the said order, the appellants - defendants have preferred the present Appeals. 6. The learned Sr. Counsel, Mr. Shalin Mehta for the appellants, assailing the impugned order passed by the trial Court, vehemently submitted that the said order has been passed in utter disregard of the proviso to Rule 3 of Order XXXIX of Civil Procedure Code (hereinafter referred to as "the Code"), inasmuch as the trial Court has failed to record reasons as to how the object of granting the injunction would be defeated by the delay. Placing heavy reliance on the decision of the Supreme Court in the case of Shiv Kumar Chadha Vs Municipal Corporation of Delhi, reported in (1993) 3 SCC 161 , he submitted that the trial Court is obliged to give reasons while granting ex parte injunction, as the compliance of Rule 3 of Order XXXIX is not a mere formality. He has also relied upon the decision of this Court in the case of the 3 I Infotech Consumer Services Limited Vs. Gujarat Narmada Valley Fertilizers Co. Ltd. & anr., reported in 2009(3) GLH 49 and in the case of Percept Picture Company Pvt. Ltd. Vs. Shree Karma Production Pvt. Ltd. and Anr., reported in 2008(1) GLH 598 to buttress his submission that the satisfaction of the trial Court that object of grant of injunction would be defeated by delay, is the sine qua non, for operating the proviso to Rule 3 of Order XXXIX. He also submitted that the trial Court had committed jurisdictional blunder by omitting to record reasons and even otherwise, had committed an error in granting ex parte injunction in the suit, which suffers from delay and laches, inasmuch as the respondent No. 1 was aware about the change of designs made by the appellants in September 2015, whereas the suits were filed by the respondent No. 1 - plaintiff in April 2016, which was the peak season for selling the Air Coolers. He also submitted that the on-going business of the appellants has been affected by the ex parte order, which deserves to be set aside. Reliance was also placed on the decision of the Supreme Court in the case of A. Venkatasubbiah Naidu Vs. He also submitted that the on-going business of the appellants has been affected by the ex parte order, which deserves to be set aside. Reliance was also placed on the decision of the Supreme Court in the case of A. Venkatasubbiah Naidu Vs. S. Chellappan and Ors., reported in (2000) 7 SCC 695 to submit that the Appeal from Order under Order XLIII Rule 1 of the Code is maintainable against the ex parte injunction order passed by the trial Court. 7. However, the learned Sr. Counsel, Mr. Kamal Trivedi for respondent No. 1 submitted that the appellants, instead of appearing before the trial Court on the returnable date, has rushed to this Court without any justification. According to him, though the appellants were injuncted by the High Court in the suit filed by the respondent No. 1 earlier, from imitating the registered designs of the respondent No. 1, the appellants making only cosmetic changes in their designs of the air coolers, have committed the infringement as contemplated under Section 22 of the said Act. He further submitted that the trial Court had passed the order, considering the proceedings pending in the High Court and the orders passed therein and, therefore, it could not be said that the trial Court had passed the impugned order without applying its mind or giving any reason. Relying upon the decision of the Apex Court in the case of A. Venkatasubbiah Naidu (supra), he submitted that even if the reasons are not recorded by the Court while granting ex parte injunction, the same is required to be treated as deemed compliance of the Order XXXIX Rule 3 of the Code. Mr. Trivedi has also relied upon the decision of the Division Bench of this Court in the case of Patel Jasmat Sangaji Vs. The Gujarat Electricity Board and Others, reported in 1982 GLH 463 to submit that in the rarest of rare cases, the appeal against the ex parte orders should be entertained and still more in the rarest of rare cases, the operation of ex parte order should be suspended. While fairly submitting that the Appeal from Order would be maintainable against the ex parte order passed by the trial Court, he submitted that this Court, being the appellate Court, should not interfere with the discretionary order passed by the trial Court, which otherwise does not suffer from any perversity or illegality. Mr. While fairly submitting that the Appeal from Order would be maintainable against the ex parte order passed by the trial Court, he submitted that this Court, being the appellate Court, should not interfere with the discretionary order passed by the trial Court, which otherwise does not suffer from any perversity or illegality. Mr. Trivedi also placed reliance on various decisions of the Supreme Court to submit that the plaintiff being the registered proprietor of the designs in question, and the appellants having infringed the said designs by imitating the designs of the respondent No. 1, though injuncted by the High Court, the present appeals deserve to be dismissed. 8. Mr. Mihir Thakre, learned Sr. Counsel appearing for the respondent No. 1 - plaintiff in other appeals while supporting the submissions made by the learned Sr. Counsel, Mr. Trivedi, relied upon the decision of the Supreme Court in the case of Wander Limited Vs. Antox India Pvt. Limited, reported in 1990 (1) SCC (Spl.) 727 to submit that the appellate Court should not interfere with the discretion exercised by the trial Court, except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely, or where the Court had ignored the settled principles of law regulating the grant or refusal of interlocutory injunctions. 9. On careful consideration of the submissions made by the learned Counsels for the parties, it appears that the respondent No. 1 - plaintiff is the registered Proprietor of the designs bearing Registration No. 198241 and others for their products Air Coolers. It is not disputed that earlier the respondent No. 1 - plaintiff had filed the Civil Suit No. 566/2015 on the apprehension that the appellants would infringe the registered designs of the respondent No. 1 - plaintiff. In the said suit, the trial Court having issued notice, the respondent No. 1 - plaintiff had approached the High Court by filing the Special Civil Application No. 4624/2015. This Court in the said Special Civil Application had passed the order on 17.3.2015, restraining the appellants from marketing, selling, advertising, directly or indirectly dealing in 'Air Coolers', which have the same design, shape, configuration and design identical to and/or imitate the petitioner's design bearing registration No. 194305, 198241, 227069, and 221068. This Court in the said Special Civil Application had passed the order on 17.3.2015, restraining the appellants from marketing, selling, advertising, directly or indirectly dealing in 'Air Coolers', which have the same design, shape, configuration and design identical to and/or imitate the petitioner's design bearing registration No. 194305, 198241, 227069, and 221068. The said suit was subsequently transferred to the High Court in view of the provisions contained in Sub-section (4) of Section 22 of the said Act, as the appellants had contended that the said registrations of the respondent No. 1 were liable to be cancelled under Section 19 of the said Act. The said suit was registered as Civil Suit No. 2/2015 before this Court. The Single Bench, after hearing the learned Counsel for the parties, had continued the interim injunction granted by the Court in Special Civil Application No. 4624 of 2015 vide order dated 5.5.2015. The said order, having been challenged by the appellants in the O.J. Appeal before the Division Bench, the same was confirmed by the Division Bench also. Under the circumstances, the order dated 17.3.2015 passed by this Court in SCA No. 4624 of 2015 has been continued in the suit bearing Civil Suit No. 2/2015 pending before this Court. 10. Now, the present suits have been filed by the respondent No. 1 - plaintiff alleging, inter alia, in the plaint that the appellants - defendants have again adopted the designs making minor alteration or cosmetic changes for their products, for which they were restrained by the High Court. In the opinion of the Court, when the High Court was seized with the matter as regards the infringement of the registered designs of the respondent No. 1 at the instance of the appellants and as regards the validity of the very registered designs of the respondent No. 1, in the suit being Civil Suit No. 2/2015, and when the respondent No. 1 has alleged in the present suits that the appellants have committed infringement of the said designs, for which they were injuncted by the High Court, the trial Court has committed a jurisdictional error in entertaining the application for temporary injunction and granting the ex parte injunction in respect of the very registered designs of the respondent No. 1. The trial Court, while passing the impugned order, had the entire record and proceedings before it, which were also perused by the trial Court, as transpiring from the order itself. It is pertinent to note that in the earlier suit filed by the respondent No. 1, the appellants having challenged the validity of the registration of the designs of the respondent No. 1 by taking up the contention as available under Section 19 of the said Act, the said suit was transferred to the High Court. When the issue with regard to the infringement of the registered designs of respondent No. 1 at the instance of the appellants and the issue with regard to the validity of the said registrations of the designs of the respondent No. 1 are pending before the High Court, in the opinion of the Court, the proper course available to the respondent No. 1 was to approach the High Court by filing appropriate application in the pending suit, and not to file suits in the trial Court, more particularly when the respondent No. 1 has specifically alleged that the appellants had started selling their products imitating the registered designs of the respondent No. 1, though the appellants were injuncted by the High Court from doing so. 11. At this juncture, it is required to be noted that as per Section 22(4) of the said Act, where any ground on which the registration of a design may be cancelled under Section 19 of the said Act has been availed of as a ground of defence in any suit or other proceeding for relief under Sub-Section (2) i.e. when the person acts in contravention to the Sub-section (1) of Section 22, the suit or such other proceedings are required to be transferred by the said Court to the High Court for decision. Hence, when the earlier suit proceedings were transferred to the High Court, on the appellants availing of the ground of defence under Section 19 in respect of the same registered designs of the respondent No. 1, the trial Court has committed an error in granting the ex parte injunction in favour of the respondent No. 1. 12. Hence, when the earlier suit proceedings were transferred to the High Court, on the appellants availing of the ground of defence under Section 19 in respect of the same registered designs of the respondent No. 1, the trial Court has committed an error in granting the ex parte injunction in favour of the respondent No. 1. 12. As held by the Supreme Court in the case of Shiv Kumar Chadha (supra), the power to grant injunction is an extraordinary power vested in the Court to be exercised taking into consideration the facts and circumstances of a particular case, and the Courts have to be more cautious when the said power is being exercised without notice or hearing the party, which is to be affected by the order so passed. The Supreme Court has also, inter alia, held that recording the reasons for grant of ex parte injunction, cannot be held to be a mere formality and that whenever the Court considers it necessary in the facts and circumstances of a particular case to pass an order of injunction without notice to other side, it must record the reasons for doing so and should take into consideration, while passing an order of injunction, all relevant factors, including as to how the object of granting injunction itself shall be defeated if an ex parte order is not passed. It has also been held that the proviso to Rule 3 of Order XXXIX of the Code also attracts the principle that if a statute requires a thing to be done in a particular manner, it should be done in that manner and not otherwise. It is true that in the case of A. Venkatasubbiah Naidu (supra) the Supreme Court has observed that if the Court, passing ex parte injunction, did not record reasons, such order can be deemed to contain such requirements by implication, even if they are not stated in so many words. However, in the instant case, the trial Court has failed to record reasons expressly or impliedly as to how the object of injunction would be defeated if the ex parte order was not granted. The impugned order, therefore, could not be said to be in conformity with the mandatory provision contained in Rule 3 of Order XXXIX of CPC. 13. However, in the instant case, the trial Court has failed to record reasons expressly or impliedly as to how the object of injunction would be defeated if the ex parte order was not granted. The impugned order, therefore, could not be said to be in conformity with the mandatory provision contained in Rule 3 of Order XXXIX of CPC. 13. Although it is true that the appellants should have appeared before the trial Court on the returnable date, however, as observed by the Supreme Court in the case of A. Venkatasubbiah Naidu (supra), the party affected by the order passed by the trial Court granting ex parte injunction could either move the appellate Court or to approach the same Court, which passed the ex parte order for any relief. Hence, it cannot be said that the appellants should have approached the trial Court only and should not have filed the present appeals. Of course, this Court being appellate Court should normally not interfere with the discretionary order passed by the trial court as held by the Supreme Court and this Court in catena of decisions relied upon by the learned Counsels for the respondent No. 1. However, in the peculiar facts and circumstances of the case, the Court is of the opinion that the trial Court having committed jurisdictional error and having failed to comply with the requirements of the proviso to Rule 3 of Order XXXIX CPC, the impugned orders deserve to be set aside and are hereby set aside. 14. All the three Appeals stand allowed accordingly. It is clarified that the Court has not expressed any opinion on the merits of the case. The trial Court is directed to decide the Application Exh.5 in all the three Suits, in accordance with law, without being influenced by the order passed by this Court. Copy of this order be placed in other appeals. 15. At this juncture, the learned Counsel Mr. Tolia for the respondents has requested to stay the operation of the present order to enable the respondent No. 1 to approach the higher forum. The said request cannot be accepted in view of the afore-stated reasons.