E.N. Project and Engineering Industries (P) Ltd. v. KVT Electrical Project and Engineering

11. Whilst the onus to establish that a design put up for registration under Section 6 of the Act is new, original or novel is on the applicant seeking its registration, once the registration is granted, the onus shifts on to the challenger, who challenges the grant of registration on any of the grounds available under Section 19 of the Act. If the challenge to claimed newness of a design is on the ground of “prior publication”, the onus rests on the challenger to demonstrate prior existence of the design by way of prior publication. In Bharat Glass Tube Limited v. Gopal Glass Works Limited reported as (2008) 10 SCC 657, it has been observed that the onus to prove objections against the registrability of a design on the ground of Section 19(1)(b) of the Act rests with the challenger.

12. In the light of this dictum, it is to be seen if the Defendants have discharged the onus sufficiently at this interim stage of examination to cast a doubt on the Plaintiff‟s registered design.

13. In support of their allegation of prior publication, the Defendants have relied upon the following material:

(i) NEMA Standards Publications VE 2-2000 and VE 2-2006 (Cable

(ii) Cablofil website where the subject matter design is allegedly published,

(iii) Youtube videos showing the installation instructions for cable trays,

(iv) Internet Archive Wayback machine showing publication of aforesaid NEMA Standards, and

(v) Their sale invoices.

14. Based on the aforesaid material, I am not inclined to agree with the Defendants‟ contention of prior publication of the design in question. Closely analysing the above material, I have noticed the following.

15. In para 2 of the "NEMA Standards Publication VE 2-2000 and VE 2-2006 Cable Tray Installation Guideline", it is mentioned that "These guidelines and information do not intend to cover all the details or variations in cable tray systems nor provide for every possible installation contingency”. This clarification in the standard clearly establishes that even NEMA acknowledges that there could be several variations in the design of cable trays. Thus, the NEMA Standards Publication VE 2-2000 and VE 2-2006 seem to be generic “Installation Guidelines” for installing cable trays. The illustrations in the said standard seem to offer a practical guidance to install cable tray system with the use of different installation components. Be that as it may, the illustrations do not seem to be of the same design as that of the Plaintiff. They appear to be a generic design comprising of a grid-like metallic structure.

16. The Defendants have next made a reference to the Cablofil website, which has been disputed by the Plaintiff on the ground that Cablofil is another manufacturer of cable trays, and the availability on its website of cable tray illustrations does not establish prior publication of the Plaintiff‟s product. The web pages taken from Cablofil website and videos nowhere show commonality of design between the Plaintiff‟s design and that of Cablofil. There is no Cablofil product in the references filed by the Defendants, with the configuration pattern (AST C x B x D), which is the unique feature of the Plaintiff‟s design, as claimed by them.

17. The Defendants have also relied on Internet Archive Wayback machine web pages, which is opposed by the Plaintiff for want of credibility. The Plaintiff has referred to an affidavit dated 26.08.2013, filed in proceedings pertaining to Patent No. D517789 before the United States Patent Office, by Mr. Christopher Butler, Manager of the Internet Archive, which created the way back machine. This affidavit is stated to be to the effect that:- “5. …The date assigned by the Internet Archive applies to the HTML file but not to image files linked therein. Thus images that appear on the printed page may not have been archived on the same date as the HTML file. Likewise, if a website is designed with “frames”, the date assigned by the Internet Archive applies to the frameset as a whole and not the individual pages within each frame”.

18. Reference given by the Defendants of the Youtube videos featuring “cable trays” does not establish “prior publication” either. In none of the videos, the design details of the cable trays are discernible. The videos appear to be demonstration videos showing how to install cable trays. They do not highlight the design features. Plainly from the videos, neither the design features can be discerned nor is it established that the videos predate the registration of the subject matter design of the Plaintiff.

19. Likewise, the Defendants‟ reliance on their sale invoices claiming sale of cable trays even prior to the Plaintiff‟s registration of their design in 2010 does not fully establish prior use or publication of the subject matter design by the Defendants. The invoices relied upon only indicate that cable trays were sold by the Defendants however they do not show that what was sold was the same subject matter design as that of the Plaintiff. The invoices do not have any design of the cable tray printed on them nor do they bear any identification number to show that what was sold by the Defendants was the same design as the subject matter design of the Plaintiff. Further, the Plaintiff has questioned the authenticity of the invoices by contending that the dates and the contents of the invoices are in different fonts. The Plaintiff‟s suggestion is that the invoices are fabricated, and hence should not be relied upon at this stage.

20. Besides the aforesaid material, during supplementary submissions, the Defendants produced a “cable tray” claiming it to be a Cablofil product. However, the Plaintiff objected to such reference by the Defendants on the ground that the product was not placed on record earlier, nor was it accompanied by any invoice or sale information to establish its identity. According to the Plaintiff, it cannot be identified who was the manufacturer of the said product, much less Cablofil, and if the same has been in existence prior to the registered design of the Plaintiff. There is substance in the Plaintiff‟s objections. Mere production of the product in the Court without any supporting documents does not establish “prior publication” as alleged by the Defendants.

21. The Plaintiff has claimed that its design satisfies both pre-requisites for registration, i.e. novelty and originality, due to its unique design specifications that distinguish its design from other designs of cable trays in the market. It is further claimed that the configuration pattern of its subject matter (AST C x B x D) with design and shape formed by longitudinal and latitudinal grid-like rod placements, center locating of the horizontal rods on the collar rods and specific bending angle and radii at junction points etc. are all features of the subject matter design, which is a novelty and unique to this design. According to the Plaintiff, „AST C x B x D‟ stands for a design configuration where C denotes collar width in mm, B denotes width of the cable tray in mm, and D denotes rod thickness.

22. In Reckitt Benckiser (Supra) the words “original” and “new” have been characterized as following: “11. The gist and heart of Sections 4, 5(1) and Section 19 is basically that only such designs are capable of being given copyright protection which are new or original. If a design is not new or original, then, the same cannot be registered. The expression “new” is not defined under the Act but the expression “original” is defined under the Act i.e., in Section 2 (g). While the expression “new” is easily understood in that which comes into existence in public knowledge for the first time the expression “original” had to be designed because “original” design may not be strictly new in that the shape of the design is available in public domain but yet there is newness or originality in applying the existing design to a particular article which no one thought of before which amounts to newness in creation and hence it is given protection as an intellectual property right. Elaborating further, what is new is quite obvious in that it comes into existence for the first time, however, a design may not be new in the sense it may already be available in the public domain, however, in its application for a particular purpose it may be totally original in the application which was not otherwise conceived of and therefore can amount to a new creation for commercial application thus entitling the same to copyright protection. Light on this aspect is also shed by Section 16 of the Act and which makes it clear that if there is disclosure in the public domain on account of breach of faith i.e. although the design was meant to keep the secret, yet it is brought into public domain, yet the same will not affect the newness of the design when registration of the same is sought. The provision of Section 16 is intended to narrow down the normal meaning of public domain.”

23. As observed in the above case, a “new” design is distinct from an “original” design. A design may not be new, but still it can be original considering the manner in which it is applied for the first time. In the present case, the Defendants have questioned the “newness” of the Plaintiff‟s subject matter design by claiming that a grid-like metallic construct of “cable trays” is commonplace and not “new”, hence it could not have been registered in the first place as proscribed under Section 4(a) of the Act. On the other hand, the Plaintiff has claimed both “newness” and “originality” of its subject matter design.

24. As defined in Section 2(d) of the Act, the expression “design” means only the features of shape, configuration, pattern, ornament of composition of lines or colors, applied to any article, whether in two dimensional or three dimensional, which in the finished article appeal to and are judged solely by the eye. Therefore, it is the visual manifestation of a form that is recognized as proprietary right of its creator and adaptor. Form factor of a particular product can be common to various products of the same category, but within the commonness, there can be distinguishing features that make a design new or original, setting it apart from other designs visually. On these lines, the Court in Bharat Glass Tube Limited (Supra) has also observed that a design can be new or original due to its new application that did not exist earlier.

25. From the foregoing, it follows that “design” under the Act is not about the mode or principle of construction or process of construction. It is the visual appeal of a design that is laid down as a test to judge if a design is novel or original. This visual or ocular test has been recognised by Courts time to time in various decisions. Reference may be taken, for instance, of Steelbird High-Tech India Limited v. S.P.S. Gambhir and Others reported as (2014) 3 HCC (Del) 518, where the ocular test was applied to decide the issue at hand.

26. In the present case, the imitation of the Plaintiff‟s design by the Defendants is visually apparent. The Plaintiff has drawn a comparison of the two products in its rejoinder and has illustratively shown the similarity between the two. As per the comparison, the measurements, the spacing between the latitudinal and longitudinal rods to form a grid, the dimensions of the length, breadth and height of the trays, in the Defendants‟ product, are all exact replica of the Plaintiff‟s product. The Plaintiff has also filed a report of a design expert wherein a comprehensive comparison of the Plaintiff‟s and the Defendants‟ products has been carried out. According to this report, the Defendants‟ product is an exact copy of the Plaintiff‟s product. As a matter of fact, the Defendants have not denied the similarity of their product with that of the Plaintiff‟s but, have challenged the Plaintiff‟s proprietary claim over the impugned design on the ground of its “prior publication”. I have no reason to discount the expert opinion at this stage of enquiry. The Defendants‟ objection to the expert opinion is on the credibility of a paid expert, otherwise on the merits of the expert opinion, the Defendants‟ objections are feeble. It is clarified that I am not persuaded by the expert report on the question of “newness” of the subject design, for which I have relied upon my own visual judgment. Expert opinion has been considered by this Court only for the purpose of comparison of the Defendants‟ product with that of the Plaintiff‟s.

27. It is also noteworthy that the burden of proof was on the Defendants to prove that the Plaintiff‟s product is not new or original. Regardless, they have not furnished any cogent material in support of their contention. The Defendants have also failed to bely the Plaintiff‟s averment that the Defendants are its erstwhile distributors, which fact assumes importance in view of Eicher Goodearth Pvt. Ltd. v. Krishna Mehta and Ors. reported as 2015 SCC OnLine Del 10139 where the Court was not inclined to decide in favor of the defendants under similar facts and circumstances and made the following observations:- “30. In the present matter, the defendant No. 1 being an ex-employee of the plaintiff company has simply taken the same inspiration as that of the plaintiff and has used the same in an identical manner and in respect of identical range of products. xxx

37. It is the admitted position that the defendant No. 1 is an ex-employee of the plaintiff. The position of law regarding ex-employees has been discussed in the following cases:

(i) In Charan Dass v. Bombay Crockery House 1984 (4) PTC 102 (Del), the court restrained defendants' mark TRISHUL PERFECT and VIJAY PERFECT because defendants, up to 1981, were stocking and selling the stores manufactured by the plaintiffs under plaintiffs' registered trademark PERFECT and SWASTIK PERFECT. Defendants could thus easily pass off their goods as those of plaintiffs.

(ii) A former partner of a firm or a servant who has left his employer may set up a similar business and advertise his previous connection, in the absence of any contract to the contrary. He should not, however, any representation amounting to a suggestion that he is still connected with the former firm or that he is their successor.

(iii) In Pompadour Laboratories v. Stanley Frazer (1966) RPC 7, where the defendants had formerly been manufacturing hair lacquer for the plaintiffs, used the message “Frazer Chemicals have manufactured hair lacquer for Pampadour Laboratories Ltd. for several years” on the goods and advertisements, it was held that this did not amount to an assertion that the defendants' goods were the goods of the plaintiffs.

(iv) In Arthur Fairest v. Fairest (1949) 66 RPC 275 defendant, a former managing director of the plaintiff company set up a similar business and used one of the vouchers issued by the plaintiff company in which his name was printed as managing director. Injunction was granted restraining the defendant from using the vouchers as it amounted to a representation that the business carried on by the defendant was connected with the plaintiff company.

(v) In Glenny v. Smith (1865) 2 Drew & Sm 476, defendant was an employee of the plaintiffs, Thresher, Glenny & Co. of 152, Strand. After leaving their service he opened a shop in Oxford Street and placed on the shop windows the words “from Thresher & Glenny”, the word „from‟ being in very small letters. Injunction was granted to restrain the defendant from using the name of the plaintiffs.

(vi) In the case of J.K. Jain v. Ziff-Davies Inc. 2000 (56) DRJ 806, where the subject matter of the suit were four titles used with respect to magazines, the basis of the plaintiff's suit is that the defendants/appellants were its licensee for publishing computer magazine under the trade mark “PC MAGAZINE INDIA” under a license agreement. As per the license agreement the appellants specifically agreed and acknowledged the copyright and trade marks of the plaintiff, not to exercise its rights under the agreement or otherwise claim any right or interest in trademarks beyond the rights given in the agreement. After the license stood terminated, the defendants/appellants started publishing four magazines, contrary to the terms of license. The Court on the issue of whether the words “PC”, “WEEK”, “MAGAZINE”, “COMPUTER”, “SHOPPER”, “USER”, “INTERNET”, are descriptive or general words, observed that as an ex-licensee, appellants were estopped from claiming that the mark was descriptive since the appellants under the terms of the agreement were unable to challenge the proprietary rights of the respondents trade mark or trade name on any ground. It was held that after termination of the license the very act of the Defendant/Appellant in publishing the four titles is contrary to the terms of the licence.”

28. I may, at this stage, add that the judgments relied upon by the Defendants in support of their submissions do not serve the Defendants‟ cause. A perusal of the decisions in Reckitt Benckiser (Supra) and Bharat Glass Tube Limited (Supra), relied upon by the Defendants, would show that they rather support the Plaintiff‟s contentions. The Defendants also rely on Khadim Shoe Pvt. Ltd. v. Bata India Ltd. & Anr. reported as 2004 SCC OnLine Cal 599, which dealt with the definition of “publish” for the purpose of Section 19(1)(a) of the Act. In the captioned case, Bata India Ltd. had filed a suit for injuncting Khadim Shoe Pvt. Ltd. from infringing its registered design of a footwear. Khadim Shoe Pvt. Ltd. opposed the injunction by claiming prior publication of the design in question by Bata India Ltd. in its promotional material. Bata India Ltd. contended that the promotion material could not treated as “prior publication” as it was not published for the purposes of public circulation but was meant to be used for the purpose of promotion. In this backdrop, a Bench of the Calcutta High Court ruled in favour of Khadim Shoe Pvt. Ltd. holding that even if the promotional material in question was not meant for public circulation, yet the same will be construed as prior publication for the purposes of Section 19 of the Act. However, in the present case, the issue is not whether publication alleged by the Defendants to be prior will constitute “prior publication” or not but whether the “design in question” being commonplace and published freely attracts disqualification under Section 4(b) of the Act or not. Thus, the reliance sought to be placed on Khadim Shoe Pvt. Ltd. (Supra) is misplaced. Similarly, the decision in M/s S.K. Industries Pvt. Ltd. v. Mr. Dipak Ghosh @ Mana Da Trading reported as 2009 SCC OnLine Del 3949, relied upon by the Defendants, is not applicable to the facts of the present case. In the said case, the Court, while subjectively applying the eye-test, ruled that the design in question was not “new”. In terms of the above decision, it is for this Court to apply the eye-test and see if the design is significantly distinguishing from known designs.

29. The Defendants‟ objection to the territorial jurisdiction of this Court has no merit either. The Plaintiff has claimed jurisdiction of this Court under Section 20(c) CPC. The Plaintiff has filed evidence of sale of the offending product by the Defendants on third-party, e-commerce website like Indiamart, which is a universally accessible website and is accessible in Delhi too. The law on the issue of territorial jurisdiction in the case of online sale and purchase of goods is settled. This Court in V. Guard Industries Ltd. v. Sukan Raj Jain & Another reported as 2021 SCC OnLine Del 3625 while relying on the decision of Division Bench of this Court in Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy & Anr. reported as 2009 SCC OnLine Del 3780 and Coordinate Bench in Marico Limited v. Mr. Mukesh Kumar & Ors. reported as 2018 SCC OnLine Del 10823 held that Courts situated in places where infringing goods can be purchased through third-party, e-commerce websites will have jurisdiction to try offences relating to infringement of trademark. The same principle will apply in case of suits filed against infringement of design under the Act.

30. Moreover, the jurisdiction of this Court to interfere with an interlocutory or temporary injunction is purely equitable. The Supreme Court has also opined thus in Gujarat Bottling Co. Ltd. and Others v. Coca Cola Co. and Others reported as (1995) 5 SCC 545. Relevant excerpt from the case is reproduced hereunder: - “47. In this context, it would be relevant to mention that in the instant case GBC had approached the High Court for the injunction order, granted earlier, to be vacated. Under Order 39 of the Code of Civil Procedure, jurisdiction of the Court to interfere with an order of interlocutory or temporary injunction is purely equitable and, therefore, the Court, on being approached, will, apart from other considerations, also look to the conduct of the party invoking the jurisdiction of the Court, and may refuse to interfere unless his conduct was free from blame. Since the relief is wholly equitable in nature, the party invoking the jurisdiction of the court has to show that he himself was not at fault and that he himself was not responsible for bringing about the state of things complained of and that he was not unfair or inequitable in his dealings with the party against whom he was seeking relief. His conduct should be fair and honest. These considerations will arise not only in respect of the person who seeks an order of injunction under Order 39 Rule 1 or Rule 2 of the Code of Civil Procedure, but also in respect of the party approaching the Court for vacating the ad interim or temporary injunction order already granted in the pending suit or proceedings.”

31. It is noted that the Defendants have not fully satisfied this Court on their own conduct. Defendants have opposed the injunction order, questioning the Plaintiff‟s impugned design, on the ground that the same is not new or original due to prior publication of the said design. However, it is too much of a coincidence that the Defendants‟ offending product is an exact copy of the Plaintiff‟s subject matter design down to the last detail. Even the measurement and dimensions demonstrably appear to be the same. Further, the Defendants have raised a contention that grid-like metallic design is a design common to cable trays. Even if the contention is accepted, the same did not entitle the Defendants to copy the Plaintiff‟s product as it is. It would have been a different case if the Defendants had adopted their own design and defended the same by claiming it to be distinguished from the Plaintiff‟s design. As stated above, no such attempt has been made by the Defendants and rather the similarity with the Plaintiff‟s design is candidly admitted. The allegation that the Defendants are ex-distributors of the Plaintiff and that their product is an exact copy of the Plaintiff‟s product, is not denied. In view of the above, the Defendants‟ adoption of the Plaintiff‟s design appears to be dishonest and therefore they have failed to satisfy this Court on equity.

32. For the reasons stated, no case is made out for vacation of the injunction order dated 18.12.2019. Consequently, I.A. No. 1274/2021 filed by the Defendants is dismissed and I.A. No. 1262/2021 filed by the Plaintiff is disposed of by making the injunction order dated 18.12.2019 absolute.

33. By way of abundant caution, it is clarified that the observations made hereinabove are prima facie in nature and shall not prejudice the respective rights and contentions of the parties at the time of final disposal of the suit.

JUDGE OCTOBER 12, 2021 Click here to check corrigendum, if any