JUDGMENT : IA 14683/2021 [u/O XXXIX Rules 1 & 2, CPC] 1. The plaintiff is engaged in the manufacture of the LYNCUS range of switch plates among others. The plaintiff alleges that the MATTEO range of switch plates manufactured and sold by the defendant infringes Design Registration Nos. 296178, 296179 and 296180 held by the plaintiff in respect of its LYNCUS switch plates. Design No. 296178 relates to a square switch plate, Design No. 296179 relates to a rectangular switch plate and Design No. 296180 relates to a double switch plate. The views of the various switch plates, along with the corresponding designs, as provided in the plaint, may be reproduced as under : Views of Design 296178 Views of Design 296179 Views of Design 296180 2. The views of the said design, as registered by the Controller of designs, are as under : Views of Design 296178 3. The design registration as granted to the plaintiff by the controller of designs certifies that novelty, in each view of the design, resides in its "shape and configuration". The plaintiff has sought to identify the common distinguishing features of the shape and configuration of the various switch plates as (i) its central surface, which is raised and convex and which tapers down towards the four corners, (ii) a convex-cum-concave periphery, in which the four lateral peripheries of the switch plate are convex in the middle and become progressively concave towards the four corners, and (iii) thumb-pressed corners, in which the four corners have small indents giving a thumb-pressed impression. Physical samples of the plaintiffs switch plates have been shown to the Court. The aforesaid features as outlined in the plaint are, prima facie, present in the plaintiff's switch plates, forming subject matter of dispute. 4. The plaintiff applied for registration of all the aforesaid three designs on 27th July 2017. Designs No. 296178, 296179 and 296180 were granted registration on 2nd September 2019, 12th September 2017 and 20th September 2017 respectively. By operation of Section 5(6), [5. Application for registration of designs.- ***** (6) A design when registered shall be registered as of the date of the application for registration.] of the Designs Act, the registration would date back to the date of application. All the three registrations would, therefore, be deemed to have been granted to the plaintiff on 27th July 2017. 5. Application for registration of designs.- ***** (6) A design when registered shall be registered as of the date of the application for registration.] of the Designs Act, the registration would date back to the date of application. All the three registrations would, therefore, be deemed to have been granted to the plaintiff on 27th July 2017. 5. The plaint also provides the details of the returns from sales of the products carrying the suit designs, over the years. However, for the limited purposes of the order being passed today, it is not necessary to make reference thereto. 6. The plaint alleges that the design of the MATTEO range of switch plates of the defendant infringes the suit designs, within the meaning of Section 22, [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. (2) If any person acts in contravention of this section, he shall be liable for every contravention— (a) to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt, or (b) if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly: Provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed fifty thousand rupees: Provided further that no suit or any other proceeding for relief under this sub-section shall be instituted in any court below the court of District Judge. (3) In any suit or any other proceeding for relief under sub-section (2), ever ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence. (4) Notwithstanding anything contained in the second proviso to sub-section (2), where any ground or which the registration of a design may be cancelled under section 19 has been availed of as a ground of defence under sub-section (3) in any suit or other proceeding for relief under sub-section (2), the suit or such other proceedings shall be transferred by the Court, in which the suit or such other proceeding is pending, to the High Court for decision. (5) When the court makes a decree in a suit under sub-section (2), it shall send a copy of the decree to the Controller, who shall cause an entry thereof to be made in the register of designs.] of the Designs Act and, on that basis, seeks injunction against manufacture and use, by the defendant, of the said infringing design. IA 14683/2021, filed with the plaint, seeks ad interim interlocutory injunctive reliefs. 7. This judgement decides IA 14683/2021, on the basis of the material on record and submissions of Mr. Hemant Singh and Mr. Sachin Gupta, learned Counsel for the plaintiff and defendant respectively. 8. To underscore the aspect of infringement, the plaintiff has provided photographs of its switch plates and the defendant's switch plates, thus : 9. 7. This judgement decides IA 14683/2021, on the basis of the material on record and submissions of Mr. Hemant Singh and Mr. Sachin Gupta, learned Counsel for the plaintiff and defendant respectively. 8. To underscore the aspect of infringement, the plaintiff has provided photographs of its switch plates and the defendant's switch plates, thus : 9. I have also been provided with physical samples of the plaintiff's and defendant's switch plates and find the photographs provided in the plaint and as reproduced hereinabove to be faithful representations of both the switch plates. 10. The defendant initially filed a written statement and, after replication thereto had been filed by the plaintiff, amended its written statement. Paras F to I of the Preliminary Submissions in the amended written statement of the defendant, read thus : "F. That NIPA International Pvt. Ltd. having its office 412, Udyog Vihar, Phase-III, Gurgaon-122 016 (hereinafter referred to as NIPA) is the Defendant's OEM supplier of the switch plates under the suit design. NIPA is also an OEM supplier of similar switch plates to many other well-known companies who are in the similar trade of electrical switches and plates. The products supplied by NIPA to third parties are sold in the market under the mark, namely Panasonic Anchor, Schneider Electric APC, Finolex, Hager, Honey Well, Havells Crabtree, Larsen & Toubro, Luminous, Philips, Simon, Standard, Wipro North-West. The above information can be verified at NIPA's website vvww.nipa.co.in. G. That NIPA sent an email on 16.12.2016 to Mr. Arvind Kumar Singh of Orient Electric Ltd. along with an attachment containing 10 design concepts for their consideration to showcase the new concepts in order to promote their business and sales promotion. That Mr. Sundaresh Holla of the Defendant Company also received an email dated 24.02.2017 from NIPA along with an attachment of 10 design concepts for his perusal. The concept six in the said email attachments is the suit designs. The copy of the aforementioned emails along with the attachments have been placed on record. H. The switch plate under the suit designs, which was concept six sent by NIPA (to Orient as well as V-Guard) was finalised and was presented before the Defendant's management by its concerned department through a PPT presentation in meeting held on 3.03.2017. The copy of the aforementioned emails along with the attachments have been placed on record. H. The switch plate under the suit designs, which was concept six sent by NIPA (to Orient as well as V-Guard) was finalised and was presented before the Defendant's management by its concerned department through a PPT presentation in meeting held on 3.03.2017. The proposed meeting to be held on 3.03.2017 was discussed and recorded in the internal emails of the Defendant dated 9.02.2017 and 2.03.2017. I. The first purchase order placed for supply of switch plates under the suit design (design concept 6) by Defendant on NIPA's manufacturing firm, M/s JSK International, Solan on 11.04.2018 under the name "Switch-1M-MTO" of various descriptions and thereafter on various other dates. M/s JSK International raised its first invoice on the Defendant on 23.05.2018 qua supply of the switch plates under suit design under the name "Module Plate" of various descriptions, and thereafter on various dates. The switch plates under the suit designs were launched by the Defendant in June, 2018, and since then has been in use by the Defendant." (Emphasis supplied) 11. The clear stand of the defendant, as reflected in the afore-extracted paragraphs from its amended written statement is, therefore, that the suit designs of the plaintiff, as well as the allegedly infringing design of the defendant were identical to the Concept 6 design which had been communicated, prior in point of time, by NIPA International Pvt. Ltd. (NIPA) to Orient Electric Ltd. (Orient) and, later to the defendant. The clear stand of the defendant, in its afore-extracted pleadings, is that the suit design, as also the defendant's design, was in fact the 'Concept 6' design. 12. Mr. Sachin Gupta, learned Counsel for defendant sought, at various points of time during his submissions, to seek to state that the designs of the defendant's switch plates were different from the suit designs. That argument, at least at the stage of the present application under Order XXXIX Rules 1 and 2 is, prima facie, not available to the defendant, in view of the stand, adopted in the written statement, that the plaintiff's and defendant's designs were both the Concept 6 design initially communicated by NIPA to Orient and, later, to the defendant. 13. That argument, at least at the stage of the present application under Order XXXIX Rules 1 and 2 is, prima facie, not available to the defendant, in view of the stand, adopted in the written statement, that the plaintiff's and defendant's designs were both the Concept 6 design initially communicated by NIPA to Orient and, later, to the defendant. 13. In that view of the matter, it cannot lie in the mouth of the defendant to state that the design of its switch plates was different from the suit design. Applying the law laid down by the High Court of Calcutta in Castrol India Ltd. V. Tide Water Oil Co. (I) Ltd., 1994 SCC OnLine Cal 303, the design of the defendant's switch plates would be an "obvious imitation" of the plaintiff's design. 14. Mere piracy, however, by itself does not entitle a plaintiff to injunction against the defendant under the Designs Act, as Section 22(3), [22. Piracy of registered design. – ***** (3) In any suit or any other proceeding for relief under sub-section (2), every ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence.] of the Designs Act provides, to any person accused of piracy of a registered design, the various clauses envisaged by Section 19 under which a design registration can be cancelled, as grounds of defence. 15. Mr. Sachin Gupta invokes, in the present case, Section 19(1)(b), [19. Cancellation of registration. – (1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:- ***** (b) that it has been published in India or in any other country prior to the date of registration;] read with Section 4(b), [4. Prohibition of registration of certain designs. – A design which – ***** (b) has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; shall not be registered.] of the Designs Act, to oppose the plaintiff's plea for injunction. In his submission, the plaintiff's design could not have been registered in view of the prohibition contained in Section 4(b) of the Designs Act and, concomitantly, in view of Section 19(1)(b) read with Section 22(3) of the Designs Act, the plaintiff was not entitled to an injunction. 16. Section 4(b) of the Designs Act prohibits registration of a design which has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use in any other way prior to the date of filing of the plaintiff’s application seeking registration. The plaintiff, in the present case, applied for registration of the suit designs on 22nd July 2017. In order for the defendant to successfully invoke Section 4(b) of the Designs Act, therefore, the defendant would have to show, prima facie, that the suit design was disclosed to the public, by publication in tangible form, prior to 27th July 2017. 17. Paras F to I of the Preliminary Submissions in the amended written statement of the defendant, as already noticed hereinabove, place reliance, for this positon, on various emails exchanged between NIPA and the defendant. 18. Mr. Sachin Gupta further places reliance on the following certificate dated 1st December 2021, issued by NIPA as well as paras 3 and 4 of the certificate under Section 65(b) of the Indian Evidence Act by Mr. Praveen Kumar, IT head of NIPA, which read thus : Certificate dated 1st December 2021 "CERTIFICATE We hereby certify that the below artwork was created inhouse by our team member Kapil Sharma and Navdeep Singh sometime in first week of December 2016. We further certify that the above design of the switch plate was emailed by me from my official email id i.e., samantkhanna@nipa.co.in to Mr. Arvind Kumar Singh (arvind.singh@oriente1ectric.com) of Orient Electric Limited vide email dated l6th December, 2016 at 07:19 PM IST and to Mr. Sundaresh Holla (sundaresh.holla@vguard.in) of V-Guard Industries Limited vide email dated 24th February 2017 at 03:03 PM IST. For NIPA International Pvt. Ltd. Dated 01.12.2021 Sd/- Director (Samant Khanna) Director" Paras 3 and 4 of Section 65B certificate "3. I say that the E-mail dated 16.12.2016 was sent by our director Samant Khanna (samantkhanna@nipa.co.in) to Mr. Arvind Kumar Singh (arvind.singh@orientelectric.com) along with an attachment using our office computer system under IP address 203.122.47.52 at 07:19 PM IST. For NIPA International Pvt. Ltd. Dated 01.12.2021 Sd/- Director (Samant Khanna) Director" Paras 3 and 4 of Section 65B certificate "3. I say that the E-mail dated 16.12.2016 was sent by our director Samant Khanna (samantkhanna@nipa.co.in) to Mr. Arvind Kumar Singh (arvind.singh@orientelectric.com) along with an attachment using our office computer system under IP address 203.122.47.52 at 07:19 PM IST. The email had the subject "Product List" and contained the attachment of zip folder namely "16.12.16.zip" of size 7.4 MB. The attested copy of the email and the attachment are enclosed to this certificate as Annexure B. 4. I say that the E-mail dated 24.02.2017 was sent by Samant Khanna (samanthkhanna@nipa.co.in) to Mr. Sundresh Holla on his officials email id i.e., sundaresh.holla@vguard.in along with the attachment using our office computer system under IP address 203.122.47.52 at 03.03 PM IST. The email had the subject "Design Concepts" and contained the attachment "PlatesConcepts_Nipa.pdf" of size 7.10MB. The attested copy of the email and the attachment are enclosed to this certificate as Annexure C." 19. Mr. Sachin Gupta has also invited my attention to the following email dated 24th February 2017 from NIPA to the defendant : "From: Samant Khanna samantkhanna@nipa.co.in Sent: Friday, February 24, 2017 3:03 PM To: SUNDARESH HOLLA sundaresh.holla@vguard.in Cc: Sumit Khanna Subject: Design Concepts Hi Please find attached concepts of cover plates proposed by us. Regards, Samant Khanna Nipa International, Gurgaon, India" 20. In connection with these e-mails, Mr. Sachin Gupta invites my attention to the representations of the Concept 6 design, as forwarded by NIPA to the defendant, thus : 21. Additionally, Mr. Sachin Gupta has invited my attention to an affidavit dated 12th November 2021 of Mr. Roopak Ahluwalia, Head (legal) of the defendant, paras 7 and 8 of which read as under : "7. I say that the switch plate under the suit design was presented before the Defendant's management by the concerned department through a PPT presentation in meeting held on 3.03.2017, duly recorded in emails date 9.02.2017 and 2.03.2017. The copy of the emails and PPT presentation has been placed on record. 8. I say that the first purchase order was placed on NIPA's manufacturing firm M/s JSK International, Solan on 11.04.2018 under the name "Switch-1M-MTO" of various descriptions and thereafter on various other dates. The copy of such purchase orders have been placed on record." 22. Mr. The copy of the emails and PPT presentation has been placed on record. 8. I say that the first purchase order was placed on NIPA's manufacturing firm M/s JSK International, Solan on 11.04.2018 under the name "Switch-1M-MTO" of various descriptions and thereafter on various other dates. The copy of such purchase orders have been placed on record." 22. Mr. Sachin Gupta submits that the communication of the Concept 6 design by NIPA, first to Orient and thereafter to the defendant, by the aforesaid emails, is sufficient to constitute "publication" within the meaning of Section 4(b) of the Designs Act. As these emails had been exchanged prior to the plaintiff applying for registration of the suit design, Mr. Gupta's contention is that the suit design could not have been registered as it had already been made known to the public, i.e. to Orient and the defendant, by prior publication in the form of the said e-mails. 23. Mr. Hemant Singh contests this stand of Mr. Gupta. He submits that the aforesaid e-mails merely communicated concepts, of which the defendant was asked to select one. A concept, he submits, is not a design. Communication of a concept, he submits, cannot constitute communication of a design within the meaning of Section 4(b) of the Designs Act. 24. Mr. Hemant Singh has, in this context, referred to an internal email of the defendant dated 11th November 2021, which reads thus : "From: SUNDERESH HOLLA Sent: Thursday, 11 November, 2021 22:33 To: ROOPAK AHLUWALIA ; JEN V KURIAKOSE Subject: FW: Design Concepts Hi Below mail is from our vendor NIP wherein they have submitted attached concepts for our perusal. Kindly note the date of the email, which is well before Legrand Lyncus application date for registration. Concept six Matteo design. Refer this for only the plates Sundaresh Holla