Full Text
HIGH COURT OF DELHI
Date of Decision: 11th April, 2022
DREAM CARE FURNISHINGS PVT. LTD. ..... Plaintiff
Through: Mr. Junaid Alam, Advocate (M:8860888011)
Through: Mr. Sanjoy Ghose, Sr. Adv. with Mr. Abhishek Kakar, Mr. Chandan Goswami, Ms. Akriti Arya, Advocates (M:9958438405)
JUDGMENT
1. This hearing has been done through hybrid mode. I.A. 5666/2021(for stay) & I.A. 9205/2021(u/O XXXIX RULE 4)
2. These are two applications, one for interim injunction filed by the Plaintiff under Order XXXIX Rules 1 & 2 and one for vacation of stay filed by the Defendants under Order XXXIX Rule 4 CPC.
3. The Plaintiff- M/s Dream Care Furnishings Pvt. Ltd. has filed the present suit seeking permanent injunction restraining infringement and passing off in respect of 17 design registrations falling in class 6-13 in respect of “Bedsheet (Blanket and other covering material)” which are registered in its favour. The said suit has been filed against Defendant No.1- M/s Meena Enterprises and Defendant No.2- Sant kumar Goyal, who operate under the trading name & style ‘Stylista’. The suit was filed on the basis of the design registrations which date back to 16th October, 2018, 26th 2022:DHC:1334 October, 2018 and 6th January, 2020.
4. The case of the Plaintiff is that it has huge sales of products based on these designs to the tune of approximately Rs.20 crores in the year 2019- 2020 till the month of February. The said designs are used upon various covering materials for appliances as also dining table covers, bedsheets, blankets, etc. In the second week of December, 2019, the Plaintiff noticed that the Defendants were offering products for sale bearing the registered designs of the Plaintiff. A legal notice dated 10th December, 2019 was addressed by the Plaintiff to the Defendants asking the Defendants to cease and desist from using design similar to Plaintiff’s design. In its reply dated 10th January, 2020, the Defendants took the stand that the Plaintiff has got the designs registered fraudulently as the said designs existed for the last several years and were manufactured and distributed by companies at large.
5. Thereafter the present suit was filed before the District Judge (Commercial Court-01), South East/Saket Courts, New Delhi (hereinafter “Commercial Court”). Vide an order dated 14th January, 2021, the Commercial Court granted an ex-parte ad-interim injunction order against the Defendants and appointed a Local Commissioner to visit the premises of the Defendants and seize the impugned products. The operative portion of the order reads as under:
6. After the said order was served upon the Defendants, they filed the written statement dated 25th February, 2021 and challenged the validity of the designs registered by the Plaintiff on the ground that no novelty resides in the said designs. Broadly, the case of the Defendants was that the registered designs of the Plaintiff are prior published designs and in support of the same they rely upon various printouts from the website www.amazon.in to show that products of these very designs were available prior to the date of registration by the Plaintiff. Ultimately, vide order 26th March, 2021, the matter was transferred to this Court under Section 22(4) of the Designs Act, 2000 in view of the grounds of invalidity of designs. The matter has now been heard on both the applications.
7. Mr. Ghose, ld. Senior Counsel appearing for the Defendants relies upon the various documents of third parties, the Plaintiff and the Defendants which are placed on record. According to Mr. Ghose, these documents show that each of the 17 designs of the Plaintiff are prior published and hence not novel. He relies upon the judgment of this Court in Steelbird Hi-Tech India Ltd. vs S.P.S. Gambhir & Ors. 2014 (58) PTC 428 (Del) to argue that if a design is prior published and is known to the public already, it is not new or original and hence not entitled to protection.
8. As per the Defendants, the printouts from the website of www.amazon.in in respect of each of the designs relating to various traders, including the Plaintiff, would show that the designs were published at various dates, including October, 2019, November, 2019, etc. A complete table showing the details of the publication dates is set out below: Image/Print Impugned Design Regn. No. Registration Date of impugned designs Prior Publication (Vendor details & date of first listing/publication) 311399 26.10.2018 Yellow Weaves-26 Nov, 2017 311394 26.10.2018 Rajasthani Kart-3 July,2018Stylista- 24 April, 2018,[3] July, 325594-001 06.01.2020 Stylista- 15 Nov, 2019, 31 Oct, 2019 311406 26.10.2018 Stylista-21 August,2018,
31 Oct, 2017 311402 26.10.2018 CASA Furnishing- 9 March, 2018 Stylista- 5 Feb, 2018, 6 Oct, 2018, 22 August, 311405 26.10.2018 Stylista- 17 Oct, 2017,
9 Nov, 2017, 10 Jan, Yellow Weaves- 28 March, 2017 CASA Furnishing- 9 March, 2018 311397 26.10.2018 Stylista- 4 Feb, 2018 311392 26.10.2018 CASA Furnishing- 14 Oct, 2017 Stylista- 6 Oct, 2018 311393 26.10.2018 CASA Furnishing- 26 Oct, 2017 Stylista- 1 November, 2017, 4 Feb, 2018, 23 Oct, 2017 311396 26.10.2018 Stylista- 31 July, 2018, 18 April, 2018 311398 26.10.2018 Kuber Industries- 12 September, 2016 311400 26.10.2018 Dream Care- 22 April, 3211403 16.10.2018 Dream Care-16 Sep 3211404 26.10.2018 Dream Care -16 Sep 311391 26.10.2018 Stylista- 6 October, 311390 26.10.2018 Stylista- 4 January, 311407 26.10.2018 Dream Care- 3October,
9. On the other hand, Mr. Junaid Alam, ld. Counsel appearing for the Plaintiff submits that the only ground on which prior publication is being alleged by the Defendants is on the basis of printouts of www.amazon.in which relate to various sellers on the said e-commerce platform. He submits that these printouts cannot be relied upon, in as much as these images are not constant and can be changed by the seller at any point of time. He relies upon the judgment of this Court in E.N. Projects and ENgineering Industries (P) Ltd. v. KVT Electrical Projects and Engineering 2021 (88) PTC 387 (Del), to argue that the listing of the product may be visible with a specific date, but the images do not contain any date. It is his argument that it is possible that the image of the product appearing on www.amazon.com could have been changed by the seller after the date of registration of the design by the Plaintiff.
10. Heard ld. counsel for the parties. A perusal of the documents, which are relied upon by the Defendants, would show that the said documents are in the form of a series of printouts from the website www.amazon.in. The said printouts show that the products carry a product code, a full title for the product, the M.R.P., and the discounts being offered. It also carries additional information relating to the product, like the product model number, part number as also the date when the said product was first available has been clearly mentioned. In the entire series of product designs claimed by the Plaintiff, it can be seen that each of the product designs was available on www.amazon.in prior to the date of registration by the Plaintiff.
11. While there can be no doubt that the images could be changed on www.amazon.in by the sellers themselves, some of the printouts relied upon by the Defendants in fact relates to the Plaintiff itself- M/s Dream Care Furnishings Pvt. Ltd. The said images correspond to designs bearing registration no. 311400, 3211403, 3211404, and 311407 which are registered as of October, 2018 but the products are shown to have been available on the Amazon platform w.e.f., 22nd April, 2015, 3rd October, 2017, & 16th September, 2018.
12. While there can be no doubt that the sellers may be having the permission and the liberty to change designs on the amazon platform, unless and until the Plaintiff shows, qua at least one design, that there was in fact an alteration of the image, there is no reason why the submission should be accepted. The mere fact of the availability of the said feature should not lead the court to presume in favour of the Plaintiff that the images have been altered. Mere speculation on the basis of the fact that images could be changed does not persuade this Court to ignore the series of printouts which have been placed on record. The printouts clearly show the date of first availability for each of the products on the website. The question as to whether qua each of the products, there could have been a change is clearly in the domain of uncertainty at this stage. In Steelbird Hi-Tech India (Supra) it has been clearly held that the fate of the interim order must be determined on the basis of whether the design has been prior known or published on the date of registration of the design. The relevant portion of the judgment reads as under-
13. Thus, the question to be determined by the Court is whether the designs of the Plaintiff have been prior known or published. At this stage, the court is of the prima facie view that these product designs are clearly prior published and hence are not novel. In view of this position which is not being sufficiently controverted by the Plaintiff except by arguing that the product designs could have been changed, the interim injunction no longer deserves to be continued. Since the Defendants’ business for these products has come to a standstill due to order of injunction, the interim injunction is vacated with the condition that the Defendants shall maintain accounts of sale of all these products and shall file the same along with an affidavit of one of the partners, on a quarterly basis. The same shall be supplied to the counsel for the Plaintiff.
14. It is submitted by Mr. Ghose, ld. Senior Counsel, on instructions, that the value of the products which are sealed by the Local Commissioner is to the tune of Rs.20-30 lakhs. The Defendants are entitled to de-seal the inventorized and seized products subject to complete account of sale being filed with Court within 4 weeks. CS(COMM)-184/2021
15. Considering the nature of allegations raised in the suit, it is deemed appropriate to issue notice, along with the copy of the present order to Amazon Seller Services Pvt. Ltd., Address:- 14th Floor, International Trade Tower, Nehru Place, New Delhi-110019, E-mail: agaswat@amazon.com and Saikrishna & Associates [email: sneha@saikrishnaassociates.com ] upon receipt of notice, Amazon Seller Services Pvt. Ltd shall file an affidavit on record as to whether the dates given for each of the product designs available on its website match the dates mentioned in the order as extracted above. Let the said affidavit be filed within six weeks.
16. Replication is stated to have been filed by the Plaintiff, let the same be brought on record. Admission and denial of documents shall be conducted before the Joint Registrar.
17. List before the Joint Registrar on 21st July, 2022.
18. List before the Court on 29th August, 2022.
PRATHIBA M. SINGH JUDGE APRIL 11, 2022/aman/sk