Full Judgement
Delhi High Court
Novateur Electrical & Digital ... vs V-Guard Industries Ltd on 4 January, 2023
Neutral Citation Number : 2023/DHC/000106
$~4
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 567/2021 & I.A. 14683/2021
NOVATEUR ELECTRICAL & DIGITAL SYSTEMS PVT LTD
..... Plaintiff
Through: Mr. Hemant Singh, Mr. Shakti
Priyan Nair and Ms. Pragya Jain, Advs.
versus
V-GUARD INDUSTRIES LTD ..... Defendant
Through: Mr. Sachin Gupta, Ms. Jasleen
Kaur, Ms. Swati Meena, Ms. Yashi Agrawal
and Mr. Rohit Pradhan, Advs.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
JUDGEMENT (ORAL)
% 04.01.2023
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:
Signature Not Verified Digitally Signed CS(COMM) 567/2021 Page 1 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
Views of Design 296178
Views of Design 296179
Signature Not Verified Digitally Signed CS(COMM) 567/2021 Page 2 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
Views of Design 296180
2. The views of the said design, as registered by the Controller of designs, are as under:
Signature Not Verified Digitally Signed CS(COMM) 567/2021 Page 3 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
Views of Design 296178
Views of Design 296179
Signature Not Verified Digitally Signed CS(COMM) 567/2021 Page 4 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
Views of Design 296180
Signature Not Verified Digitally Signed CS(COMM) 567/2021 Page 5 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
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
Signature Not Verified Digitally Signed CS(COMM) 567/2021 Page 6 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
and 20th September 2017 respectively. By operation of Section 5(6)1 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 222 of the Designs Act and, on that basis, seeks injunction
1
5. Application for registration of designs.-
***** (6) A design when registered shall be registered as of the date of the application for registration.
2
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 Signature Not Verified availed of as a ground of defence under sub-section (3) in any suit or other proceeding for Digitally Signed CS(COMM) 567/2021 Page 7 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
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:
Design No. Plaintiff's product Defendant's product 296178
296179
296180
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.
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 Signature Not Verified decree to the Controller, who shall cause an entry thereof to be made in the register of designs.
Digitally Signed CS(COMM) 567/2021 Page 8 of 28
By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
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 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 Signature Not Verified Digitally Signed CS(COMM) 567/2021 Page 9 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
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. 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.3, the design of the defendant's switch plates would be an ―obvious imitation‖ of the
Signature Not Verified 3 1994 SCC OnLine Cal 303 Digitally Signed CS(COMM) 567/2021 Page 10 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
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) 4 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)5 read with Section 4(b)6 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 4
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.
5
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;
6
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;
Signature Not Verified shall not be registered.
Digitally Signed CS(COMM) 567/2021 Page 11 of 28
By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
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.
Signature Not Verified Digitally Signed CS(COMM) 567/2021 Page 12 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
We further certify that the above design of the switch plate was emailed by me from my official email id i.e., [email protected] to Mr. Arvind Kumar Singh ([email protected]) of Orient Electric Limited vide email dated l6th December, 2016 at 07:19 PM IST and to Mr. Sundaresh Holla ([email protected]) 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 ([email protected]) to Mr. Arvind Kumar Singh ([email protected]) 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 ([email protected]) to Mr. Sundresh Holla on his officials email id i.e., [email protected] 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 [email protected] Sent: Friday, February 24, 2017 3:03 PM To: SUNDARESH HOLLA [email protected] Cc: Sumit Khanna <[email protected]> Subject: Design Concepts
Signature Not Verified Digitally Signed CS(COMM) 567/2021 Page 13 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
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:
Signature Not Verified Digitally Signed CS(COMM) 567/2021 Page 14 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
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. 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 Signature Not Verified Digitally Signed CS(COMM) 567/2021 Page 15 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
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 <[email protected]> Sent: Thursday, 11 November, 2021 22:33 To: ROOPAK AHLUWALIA <[email protected]> ; JEN V KURIAKOSE <[email protected]> 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| Asst. Vice President | Switches (MED)‖
25. Mr. Hemant Singh thereafter takes me to the slides which were presented at the meeting dated 3rd March 2017, to which the aforesaid e- mail alludes. He has specifically drawn my attention to Slide 5 as presented in the said meeting, which dealt with the concept 6 switch plate:
Signature Not Verified Digitally Signed CS(COMM) 567/2021 Page 16 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
26. A reading of the comments contained in the aforesaid slide 5, submits Mr. Hemant Singh, reveals that Concept 6 was never actually finally accepted. The slide itself notes that
(i) Concept 6 had been selected for the ―next step‖,
(ii) a flat front of the switch plate was preferred, and
(iii) variants of Concept 6 were required to be generated for final selection.
As such, he submits, Concept 6 remained a concept, and never germinated into an actual design. He submits that there is nothing to indicate that the design of the MATTEO switch plate, of which the defendant ultimately secured registration was actually Concept 6, as suggested by NIPA.
27. Having considered the contentions of both sides in the light of the statutory and factual positions, it becomes apparent that the defence of Section 4(b) would be available to the defendant, in a suit for Signature Not Verified Digitally Signed CS(COMM) 567/2021 Page 17 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
infringement, only where the plaintiff's design has been disclosed to the public by publication in tangible form, prior to the filing date (to the extent the clause is relevant for our purposes). The filing date of the plaintiff's suit patent was 27th July 2017. Prior to the said date, all that existed were the afore-extracted emails, which communicated the various Concept switch plates, for selection and approval by the defendant.
Concept 6 not a ―design‖
28. What has to be disclosed to the public, for Section 4(b) to apply, is a ―design‖. Section 2(d)7 defines a ―design‖ to mean the features of shape, configuration, particle, ornament or composition of lines of colours applied to any article...‖. ―Article‖ is, in turn, defined in Section 2(a)8 of the Designs Act as meaning ―any article of manufacture and any substance, artificial or partly artificial and partly natural...‖
29. It is only, therefore, if a design, as applied to an article has been disclosed to the public in tangible form prior to the filing date of the plaintiff's application for registration that Section 4(b) can apply to prohibit the registration of the plaintiff's design.
30. I, therefore, queried of Mr. Sachin Gupta as to whether the Concept 6 design had, prior to 27th June 2017, been applied to any
7
(d) ―design‖ means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by an industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of Section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in Section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of Section 2 of the Copyright Act, 1957;
8
(a) ―article‖ means any article of manufacture and any substance, artificial, or partly artificial and partly Signature Not Verified natural; and includes any part of an article capable of being made and sold separately;
Digitally Signed CS(COMM) 567/2021 Page 18 of 28
By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
―article‖. He acknowledged the fact that there was no physical article to which the said Concept had been applied prior to 27th June 2017. Apropos the photograph of the Concept 6 switch plate, as communicated by NIPA first to Orient and thereafter to the defendant, Mr. Gupta submits that it was a computer generated image, but was capable, consequent to being approved by the defendant, of being applied to an article. That capability, by itself, he submits, would suffice to render the computer generated image an ―article‖ within the meaning of Section 2(a).
31. Mr. Gupta, invokes the following passage from the decision of the Court of Appeal in Rosedale Associated Manufacturers Ltd v. Airfix Products Ltd9, cited with approval by this Bench in Diageo Brands B.V. v. Alcobrew Distilleries India Pvt. Ltd.10:
―Thus, approaching the matter, I have for my part come to the clear conclusion that the design was not published by Clarice Jones' specification. To conclude otherwise would, in my judgment, at least require that somewhere in the specification the design or something substantially the same as the design was described with reasonable clarity on a fair reading of the document. In this respect the test of prior publication of an alleged invention should, in my judgment, be no less applicable in the case of a registered design, and as regards the ‗former, I venture to cite once more the oft-quoted language of Lord Westbury in Hills v. Evans11 at p. 463:―the antecedent statement must, in order to invalidate the subsequent patent, be such that a person of ordinary knowledge of the subject would at once perceive and understand and be able practically to apply the discovery without the necessity of making further experiments‖. By a like reasoning, to my mind, if a document is to constitute prior publication then a reader of it, possessed of ordinary knowledge of the subject, must from his reading of the document be able at least to see the design in his mind's eye and should not have to depend upon his own originality to
9 [1957] RPC 239 (CA) 10 2022 SCC OnLine Del 4499 Signature Not Verified 11 (1862) 31 L.J. (Ch.) 457 Digitally Signed CS(COMM) 567/2021 Page 19 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
construct the design from the ideas which the document may put into his head....""
(Emphasis supplied)
32. Thus, submits Mr. Gupta, in order for a document to constitute prior publication, all that was required was that a reader of the document, possessed of ordinary knowledge of the subject, had to be in a position, from reading the document, to be able to at least see the design in his mind's eye. Tested on this touchstone, Mr. Sachin Gupta's contention is that it could not be said that, prior to 27th July 2017, the suit design had not been applied to any ―article‖.
33. I fail to see how the afore-extracted enunciation of law in Rosedale Associated Manufacturers9 can come to the aid of Mr. Gupta. Rosedale Associated Manufacturers9 clearly requires the document to be such that the person reading the document would be in a position to visualise the design. That observation was returned in the context of the issue of the extent to which the design was required to be available in tangible form before the aspect of obviousness or infringement could be examined. That, however, is not the issue in controversy here. Unlike the position which obtained in Diageo10, in which physical ―articles‖, to which the prior art, the suit design and the impugned design had been applied were all in existence, there is, in the present case, prior to 27th July 2017, no ―article‖ to which the Concept 6 design had been applied. In the absence of any application to an article, the concept does not metamorphose into a ―design‖ within the meaning of Section 2(d) of the Designs Act.
34.
Signature Not Verified All that existed, prior to 27th July 2017, was a computer image, Digitally Signed CS(COMM) 567/2021 Page 20 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
even as per Mr. Sachin Gupta's submissions made at the Bar. A computer image cannot constitute an ―article‖ within the meaning of Section 2(a) of the Designs Act. Section 2(d) envisages application of the design to the article in praesenti, not in futuro. It uses the expression ―applied to an article‖, not ―to be applied to be article‖.
35. Besides, Section 2(a) requires the article to be an ―article of manufacture‖. The Designs Act does not define ―manufacture‖.
36. ―Manufacture‖ has been defined by the Supreme Court, in C.C.E. v. Eastend Paper Industries12, as ―processing of raw material or inputs in any manner that results in emergence of a new product having a distinct name, character and use‖. In C.S.T. v. Sukh Deo13, the Supreme Court held that ―the expression ‗manufacture' has in ordinary acceptation a wide connotation; it means making of articles or material commercially different from the basic components, by physical labour or mechanical process". Distinguishing between ―manufacture‖ and ―processing‖, the Supreme Court, in Saraswati Sugar Mills v. Haryana State Board14, held that ―in manufacture something is brought into existence which is different from the one which originally existed in the sense that the thing produced is by itself a commercially different commodity whereas in the case of processing it is not necessary to produce a commercially different article‖. C.C.E. v. Rajasthan State Chemical Works15 clarified the position further thus:
―Manufacture implies a change but every change is not manufacture,
12 (1989) 4 SCC 244 13 AIR 1969 SC 499: (1969) 1 SCR 710 14 (1992) 1 SCC 418 Signature Not Verified 15 (1991) 4 SCC 473 Digitally Signed CS(COMM) 567/2021 Page 21 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
yet every change of an article is the result of treatment, labour and manipulation. Naturally, manufacture is the end result of one or more processes through which the original commodities are made to pass‖.
Aspinwall & Co. Ltd v. C.I.T.16 held thus:
―It is to be understood as meaning the production of articles for use from raw or prepared materials by giving such materials new forms, qualities or combinations whether by hand labour or machines. If the change made in the article results in a new and different article then it would amount to a manufacturing activity.‖
These decisions are, no doubt, rendered in the context of taxing statutes.
In the absence of any definition of ―manufacture‖ in the Designs Act, and given the fact that ―article‖ is defined, therein, as an ―article of manufacture‖, there is no reason why, in understanding the concept of ―manufacture‖, the Court should not be guided by the above pronouncements, especially as they also allude to the ―ordinary understanding‖ of the expression ―manufacture‖.
37. The law, therefore, does not recognize a computer generated image as an ―article of manufacture‖. Admittedly, there was no physical article, to which the Concept 6 design had been applied, in existence prior to 27th April 2017.
38. The sequitur is obvious. Communication of such a conceptual design, which was not applied to any article, by one person to another, cannot amount to ―disclosure to the public by publication in tangible form‖ within the meaning of Section 4(b) of the Designs Act.
No evidence to indicate final approval of Concept 6, or that suit design or defendant's product conformed to Concept 6
Signature Not Verified 16 (2001) 7 SCC 525 Digitally Signed CS(COMM) 567/2021 Page 22 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
39. There is another aspect of the matter.
40. There is nothing to indicate that the Concept 6 design was ever finally approved, or that it was in fact ever applied to any article. Mr. Gupta has not been able to draw my attention to any document, save and except a parenthetical reference in one paragraph of the written statement filed by the defendant in response to the suit, to indicate that Concept 6 was ever accepted by the defendant or that it was ever applied to any article, so as to constitute a ―design‖ within the meaning of Section 2(d) of the Designs Act.
41. As Mr. Hemant Singh correctly pointed out, the slide presented to the meeting held on 3rd March 2017 in the office of the defendant, with respect to Concept 6, envisaged further steps being taken to modify the said concept before final approval. Mr. Sachin Gupta has not been able to enlighten this Court as to the said steps or as to why such references were contained in the slide presented to the meeting. At a prima facie stage, the slide of Concept 6, as presented to the meeting on 3rd July 2017 and as reproduced in para 23 supra indicates that Concept 6 was not a finalised design, even as visualized by NIPA.
42. The certificate date 1st December 202117, issued by NIPA merely certifies that the Concept 6 design had been emailed by NIPA to Orient and to the defendant. Paras 3 and 4 of the Section 65-B Certificate of Mr. Samant Khanna 18 also merely depose that the said e-mail had indeed been sent to the defendant. They do not indicate in any manner that the
17 Refer para 16 supra Signature Not Verified 18 Refer para 16 supra Digitally Signed CS(COMM) 567/2021 Page 23 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
Concept 6 switch plate was the ultimately approved design.
43. Perhaps most damaging to the defendant, in this context, are paras 7 and 8 of the affidavit dated 12th November 2021, of Mr. Rupak Ahluwalia, to which Mr. Sachin Gupta drew attention and which stand reproduced in para 19 supra. In para 7, Mr. Aluwalia states that the switch plate under the suit design had been presented to the Management of the defendant by a PPT presentation on 3rd March 2017 (the presentation to which reference has already been made hereinabove). On what transpired at the said meeting, the affidavit is, thereafter, studiedly silent. There is no assertion, in the affidavit, that the management of the defendant accepted or approved Concept 6. Without revealing what happened at the said meeting, or as to whether Concept 6 as thus presented in the meeting was accepted, para 8 of the affidavit goes on to state that the first purchase order was placed on NIPA by the defendant on 11th April 2018. The Purchase Order and the invoices placed by the defendant, and the invoices raised on the defendant by the manufacturing firm of NIPA, do not reveal that the switch plates conformed to Concept
6. There is, therefore, nothing to indicate that Concept 6, as conceptualised by NIPA and forwarded first to Orient and thereafter to the defendant was ever finally accepted or that it was applied to any article within the meaning of Section 2(d) of the Designs Act.
44. Mr. Sachin Gupta submits that this Court could easily avoid this controversy by comparing the switch plate of the defendant, of which a physical sample is available, with the Concept 6 photograph as forwarded by the NIPA to the defendant. He submits, relying on Diageo, that a physical sample of the prior art design is not necessary for this Court to Signature Not Verified Digitally Signed CS(COMM) 567/2021 Page 24 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
make such comparison.
45. That argument, in the facts of the present case, cannot help the defendant. The Concept 6 design, even as forwarded by NIPA to the defendant, was a mere concept, in the form of a computer image. Such a computer image cannot constitute a depiction of the design in a tangible form, so as to enable the court to apply the design and visualize the final product which would emerge by application of the design.
46. There is, therefore, nothing to substantiate Mr Gupta's contention that the design of the defendant's product, or the suit design, was in fact the original Concept 6 design and that, therefore, the suit design was prima facie invalid on account of prior publication.
Estoppel
47. Mr. Hemant Singh also placed reliance on the judgment of a Division Bench of this Court in Pantel Kabushiki Kaisha v. Arora Stationers19 to contend that, having itself applied and obtained registration for a design which, even as per the defendant, was identical to Concept 6, the defendant was estopped from questioning the validity of the suit design on that ground. There is substance in this submission. Admittedly, the defendant applied for, and obtained, a registration for its switch plate. In view of the stand adopted by the defendant, in its written statement, that the defendant's switch plate was identical to Concept 6 design as forwarded by NIPA to the defendant, the defendant cannot seek to question the validity of the suit design on that ground.
Signature Not Verified 19 (2019) 79 PTC 429 (Del) (DB) Digitally Signed CS(COMM) 567/2021 Page 25 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
Other prior art
48. Mr. Sachin Gupta also sought to submit that, apart from concept six, there were several earlier designs which were identical to the suit design. He has, in this context, invited my attention to para M of the Preliminary Submissions in the amended written statement of the defendant, which provides the following comparative table of the plaintiff's design vis-à-vis prior similar registered designs, which are allegedly similar:
49. Mr. Gupta has especially drawn attention to the Luminous design Registration Nos. 277682 and 277683 dated 19th November 2015, to contend that the said designs are identical to the suit design.
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50. I have already noted, hereinabove, that, in the design registration granted to the suit designs, separate registration was granted for the front, back, side, top, bottom and rear of the respective switch plates. It is not possible for this Court, at this prima facie stage, merely by looking at largely two-dimensional images, merely of the perspective view of the switch plates as provided in the written statement and reproduced hereinabove, to come to a conclusion that the said switch plates were identical in design to the suit design. All that is provided is one perspective view of each product.
51. I am not convinced, therefore, that even on this ground it can be said that the said suit design was prohibited from registration under Section 4(b) of the Designs Act.
52. That said, even on merits, as I have noted hereinabove, it cannot be said that the suit design was not registrable on the ground of prior publication within the meaning of Section 4(b) of the Designs Act.
Conclusion
53. In view of the fact that
(i) the defendant itself contends, in its written statement, that the design of the defendant's switch plate and the suit design are identical and
(ii) the plea of invalidity of the suit design on the basis of Section 4(b) read with Section 19(d) and 22(3) of the Designs Act cannot, prima facie, be accepted, the plaintiff would be entitled to an injunction. Signature Not Verified Digitally Signed CS(COMM) 567/2021 Page 27 of 28 By:SUNIL SINGH NEGI Signing Date:09.01.2023 16:44:27 Neutral Citation Number : 2023/DHC/000106
54. The defendants, their Directors, assigns in business, distributors, stockists, dealers and agents shall, therefore, stand restrained, pending disposal of the suit, from manufacturing, selling, offering for sale, exporting, advertising - whether online or offline - or directly or indirectly dealing in any manner in switch plates bearing the impugned designs or any other designs as may be fraudulent or obvious imitations of the Plaintiff's registered designs under design registration nos. 296178, 296179 and 296180, as would amount to infringement thereof.
55. IA 14683/2021 stands allowed accordingly.
CS(COMM) 567/2021
56. List on 1st March 2023.
C. HARI SHANKAR, J.
JANUARY 4, 2023/AR
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