Tobu Enterprises vs. Joginder Metal Works: AIR 1985 Delhi 244

Estimated Reading Time: 10 minutes

INTRODUCTION:

This case is about Designs Act 2000. Design can be infringed and competitors can copy other’s design and use it as their own and this is punishable according to Designs Act 2000. Nobody should copy and claim on someone else’s work and efforts. This case will talk about Design and the issues involved in design infringement. 

FACTS:

This case is about demand for permanent judicial protection which limits the infringement of two registered designs, falsification and liability. The applicant is the manufacturer of a “mini bicycle tricycle.” He obtained the registered design relating to this mini-bike in accordance with the provisions of the Designs Act of 1911 (abbreviated “the law”) with registration number 144635. The seat of the mini-bike was also registered under said law No. 144636. Plaintiff alleged that defendant No. 1 is also engaged in the manufacture of tricycles, and defendant No. 2 is engaged in the marketing of tricycles made by defendant No. 1. It was in the month of March 1982 that the plaintiff learned that defendant No. 1, without the consent, permission or license of the plaintiff, had marketed a mini-tricycle of identical and / or substantially identical design. The Plaintiff alleged that the Defendants knowingly infringed the Plaintiff’s copyright in his registered designs. Then there are allegations in the lawsuit that the defendants hacked the plaintiff’s design to profit from the popularity of the plaintiff’s design in the market and used the goodwill and reputation of the plaintiff to pass off their inferiority quality tricycles with the design of the applicant’s tricycles. Next, the Plaintiff alleged that due to the illegal activities of the Defendants, the Defendants obtained undue benefits to which they were not entitled and therefore were forced to account and pay the Plaintiff for the benefits they obtained of the sale of tricycles with drawings. The claimant considered that, upon rendering the accounts, the claimant would be entitled to more than one lake of rupees.

ISSUES:

  1. Taking into account the provisions of Article 53 of the Law on Designs and Models, whether the court is competent to order the rendering of accounts. 
  2. Whether the Honorable Court has jurisdiction to adjudicate the present claim.
  3.  Whether the claim has been properly assessed for the purposes of court costs and jurisdiction.
  4.  Whether the claimant has paid the legal costs corresponding to the claims.
  5. Whether counsel of the defendant, referred to section 53 (2) of the Act.

CONTENTIONS:

PLAINTIFF LAWYER

  1. They want a permanent injunction order preventing defendants from pirating the plaintiff’s registered designs. This lawsuit is assessed for court and jurisdiction costs at Rs. 200/ – and court costs at Rs. 20/- is placed.
  2. They want a permanent court order preventing the defendants from passing on their property with the disputed designs as the plaintiff’s product. This claim is assessed for court costs and jurisdiction at Rs. 200/- and court costs of Rs. 20/- is attached in the lawsuit. 
  3. They want an order for the delivery of the disputed property, for destruction, etc. This claim is assessed for the purposes of court costs and the judgment of RS. 200/- and court costs of Rs. 20/- is attached in the lawsuit. 
  4. They want a profit accounting order made by the defendants; where the lawsuit is assessed for the purposes of legal costs at Rs. 200 and legal costs of Rs. 20/- is distressed. 
  5. The jurisdictional value of this remedy is set at Rs 1,00,000/- because the plaintiff believes that such an amount will be found due in the accounts of the defendants. The claimant agrees to pay additional legal fees on this remedy when the amount owed is determined. The value of the claim for court costs is Rs. 800- and the value of the lawsuit for adjudication is Rs. 1,00,600/-.
  6. The plaintiff therefore sought a perpetual decree of court order preventing the defendants from making the sale and/or offering for sale of bicycles bearing the contested design and, likewise, preventing them from passing or allowing others to pass off your property as the applicant’s property. The plaintiff also asked for the responsibility of the gains realized by the defendants and the decree for the amounts thus established. The complainant also requested a delivery note for all goods, blocks, dies, etc. contested in order to destroy them.

DEFENDANT LAWYER-

  1. The defendants resist the claim on the grounds that this Court has no jurisdiction under the Designs Act and this claim is outside the pecuniary jurisdiction of this Court. He argues that the plaintiff has no cause of action and that the manufacturing design does not infringe the plaintiff’s registered models. He argued that the design registration was obtained by the applicant by fraud and that the complainants’ product has no distinct shape or configuration and that the design of the complainant’s product has been common and available in India for over a decade and that the design of the applicant’s manufacture is neither new nor original. Also the design of the seat was neither new nor original and that the applicant has no exclusive right to apply the characteristics to the tricycles or to claim an exclusive right to the design of the tricycle or seat. The design of the tricycles manufactured by the defendants is not identical or fraudulent or an obvious imitation of the models incorporated in the manufacture of the plaintiff and that the plaintiff is not entitled to the exemption from liability and is not, in any way eventuality, not entitled to restraining order.
  2. The counsel of the defendants attempted to justify the denial of an interim injunction on the preliminary basis that the plaintiff’s claim suffered from various breaches with respect to the valuation of the subject matter and the principles of redress authorized available under design Act. However, it is not necessary to go into these aspects in greater depth since it has not been argued that the objection relating to the assessment of the various remedies would in no way affect the jurisdiction of this Court and even if one considers finally that the applicant is not entitled to for some of the remedial measures which are not specifically listed in the Design Law, such a conclusion would not run counter to the applicant’s right to a remedy.
  3. It has also not been disputed that, whatever the outcome of these arguments, the applicants cannot be unacceptable for any of the reasons. If so, none of these weaknesses has a feature which could deprive complainants of the right to a temporary injunction if the conditions for granting such relief are met. Therefore, it would not be appropriate or necessary for me at this point to address the allegations regarding the assessment and scope of the remedies available under the Act.
  4. The lawyer also tried to justify the refusal of the injunction by invoking the alleged invalidity of the registration of the designs on the grounds that the designs were neither “new” nor “original” and had been “published.” Previously in India, which refused the plaintiff to register the same. This defendant’s defense to the request for interim injunction was sought to be set aside on behalf of the plaintiff on the grounds that under section 51A of the Act as in fact, the provision of article 47, 53 and the regime of the law, the defense of invalidity of the registration of the design for any of the reasons which may justify the cancellation of the registration is not open to a defendant in an infringement action without having recourse to the deregistration procedures under Section 51A of the Act. Section 51A provides that any interested person may file a request for cancellation of the registration of a design with the High Court on the grounds that the design has already been registered in India or that it has been published in India before the registration date or that the design is neither new nor original.
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SUMMARY OF JUDGMENT:

This case was first presented in 1982 and then in 1985 when the final decision came. As per the judgment, the plaintiff’s claim prima facie founded is confirmed by a decision of the Division Chamber of this Court published as 1972 R.L.R. N. 90 (1). Undoubtedly, the Division Court was concerned with the defense of invalidity sought in a trial in the district court and not in the High Court, which has exclusive jurisdiction to hear the proceedings. The question of whether such a defense is open to a defendant in an infringement action pending in this Court without having recourse to the provision of section 51A of the Act does not appear to be free from difficulties. But by virtue of the decision of the Divisional Chamber of the Court, it is contended that the implied exclusion claim is at least prima facie founded and, as currently observed, the defendants are not entitled to raise such a defense in the present claim without resorting to the corresponding cancellation procedures. It is true that the defendants did not initiate any such proceedings for their own reasons. Consequently, for the purposes of provisional measures, the defendant would not be entitled to invoke these grounds and, consequently, the provisional protection requested by the plaintiff cannot be refused on this ground.

But, even if the defense of invalidity was open to the defendants, it is difficult to argue with the existing material, that the plaintiff’s design is not a new or original design or that it was published in India before the date of recording. The fact that it is new and original is evident as the defendants could not produce or report any other product in the country contemporaneously or previously, except the counterfeit product, which may have a similarity to the plaintiff’s design. At first glance, it cannot be said that the design has already been published in India simply because, according to the defendants, foreign publications containing the design were available in India. The defendants did not even claim that these positions were available in India. The only other basis for the earlier publication is the defendants’ claim that a certain person known to the defendants brought a piece from abroad for a child, which either incorporated the design or on which the design could have been based. On the face of it, such an isolated case, assuming such an importation exists, would not amount to prior publication of the design in India, as provided for in Section 51A (l) (a) (ii) of the designs and models.

The term “design” is defined as follows in Section 2(d): “Design” means only those features of form, configuration or ornament applied to any article by any industrial, manual, mechanical or chemical process or means, separate or combined, which, in the finished article, attract and are judged only through the eye; but it does not include any mode or principle of construction or anything which is essentially a more mechanical device and does not include any mark. 

A careful examination of the competing designs leaves no doubt that, taking into account the features, shape and configuration, pattern or embellishment, the design of the defendants’ product is almost identical to the design of the plaintiff and, in all the cases, an obvious imitation of it. Counsel of the defendants was not able to explain why the overall impression of the design was not an obvious, if not identical, imitation of the Applicant’s design. Counsel sought to distinguish the two models due to certain additional accessories to the defendants’ product, but unfortunately for the defendants, they would not change the shape, configuration or pattern, which are the general features of the product design. These small accessories or modifications do not detract from the overall impression that the two designs give on visual examination of the competitor’s designs. The law of designs produces innovations and originality, but does not hinder creativity in design and model. Simple additions of accessories or minor modifications are not eligible for originality. The defendants’ resistance to the injunction was primarily based on the claim that the design was neither new nor original and had already been published in India, a claim which unfortunately is not available to the defendants because the defendants have not initiated appropriate cancellation procedures or it has no merit. The defendants have made no serious effort to highlight any point of distinction between the two designs which might divert the defendants’ manufacture from prejudice to identity with the plaintiff’s design or its obvious or fraudulent imitation. For all of these reasons, the court decided that the plaintiff would be entitled to an interim court order to prevent the defendants from making or marketing tricycles with the infringing design and that the court has the jurisdiction in this matter, therefore the defendants would be restricted. 

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ANALYSIS:

The judgment in the above case was justified as According to the Applicant, the provision of Section 51A implicitly prohibits a defense which would justify setting aside unless cancellation proceedings have been initiated. But by virtue of the decision, I must contend that the implied exclusion claim is at least prima facie founded and, as currently observed, the defendants are not entitled to raise such a defense in the present claim without resorting to the corresponding cancellation procedures. It is true that the defendants did not initiate any such proceedings for their own reasons. Consequently, for the purposes of provisional measures, the defendant would not be entitled to invoke these grounds and, consequently, the provisional protection requested by the plaintiff cannot be refused on this ground.

Another question that is to be considered is whether the design of the tricycles manufactured by the defendants can be considered identical or an obvious or fraudulent imitation of the registered designs of the plaintiff. An author on a design may not be permitted any person “to apply it or cause it to be applied to an article of any category of goods in which the design, design or any fraudulent or obvious imitation thereof is registered, except with the license or written consent of the registered owner. The term “design” is defined in section 2 of the Designs Act. A close look at the competing designs leaves no manner of doubt that Counsel for the defendants, who made with great confidence the various arguments concerning the assessment, the scope of the remedy under the Act and the scope of the defenses available to the defendants in such a trial, failed not been able to clarify why the design of the defendants in their general impression was not an obvious imitation for all these reasons I personally thinks that the judgment for the same was justified. 

CONCLUSION:

Therefore, from this case one can understand the Designs Act 1911 which is now updated as Designs Act 2000. It is concluded that the plaintiff won the case and the defendants were not able to give clarity on two issues which is why the case was finally decided in the favor of the plaintiff and therefore, the defendants are held liable in this case.

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