R.C. Chopra, J.

( 1. ) In IA No. 10928/2002, under Order 39 Rules 1 and 2 of Code of Civil Procedure, plaintiffs seek an ad-interim injunction restraining the defendant from manufacturing, selling or offering for sale the tooth brushes which infringe the plaintiffs registered design No. 170554. Vide IAs No. 4541/2003 and 6572/2003 under Order 39 Rule 4, CPC the defendant seeks vacation of the ex-parte ad interim injunction issued vide orders dated 26th November 2002.

( 2. ) The plaintiffs have filed a suit for injunction and accounts regarding profits on account of infringement of its registered design No. 170554 in respect of their tooth brush Annexure B. The plaintiff No. 1 is a Company Organised under the laws of Germany and was earlier known as Linger + Fischer GmbH. Pursuant to a change in its name, it became Smithkline Beecham Consumer Healthcare GmbH and thereafter in pursuance of a merger its name was challenged to Glaxo Smithkline Consumer Healthcare GmbH and Co. KG, i.e. the plaintiff No. 1.

( 3. ) The plaintiffs have alleged that the present action concerns the design of its tooth brush registered vide registration No. 170554 dated 7th July 1995. A copy of the registration certificate is filed as (Annexure A). A sample of the plaintiffs brush of the aforesaid design is attached as (Annexure B). In paragraph 3 of the plaint, it is pleaded that plaintiffs design in the tooth brush is in regard to its aesthetic distinctive handle. The plaintiffs copyright in the design was up to 7th July, 2000 but was extendable for further two terms of five years each. The plaintiffs have filed an application for the renewal of the registration which is pending. (During the pendency of this suit, however, the renewal is stated to have been granted.) The plaintiffs have claimed that they have obtained registrations of the said design in several parts of the world as mentioned in paragraph 6 of the plaint but the tooth brush Annexure B has not been so far manufactured or sold in India. They have pleaded that it has come to their notice that the defendant is offering for sale the tooth brushes under the brand name Anchor Flexi Grip with a design which infringes the plaintiffs aforesaid registered design. A sample of the defendants brush is attached as (Annexure C). Another offending model statedly offered for sale by the defendant under the name Anchor Flexi Kids is attached as (Annexure D). According to the plaintiffs, in view of fraudulent similarity between the design registered in their favour and the tooth brushes being produced by the defendant, the defendant is liable to be restrained from manufacturing, selling or offering for sale the tooth brushes which are fraudulent and obvious imitation of their registered design. An ex parte ad interim injunction was issued in favour of the plaintiffs and against the defendant vide orders dated 26th November, 2002.

( 4. ) The defendant has filed a written statement as well as applications under Order 39 Rule 4, CPC challenging the plaintiffs plea for grant of permanent or ad interim injunction. The defendant asserts that the suit filed by the plaintiffs is an abuse of the process of law and the plaintiffs have not only made malicious, fraudulent, dishonest and false representations in the suit but have also concealed material facts from the Court with a view to obtain an ex parte ad interim injunction.

( 5. ) It is denied that the registered design No. 170554 is a new or original design. It is asserted that the shape and configuration of this brush was pre-known and pre- published in India as well as other countries. It is pointed out that the tooth brushes having S shaped zigzag angular neck and curved handle with identical shape and configuration are being manufactured and marketed by a large number of companies in India and abroad and the design No. 170554 which the plaintiffs have got registered is an obvious imitation thereof. It is asserted that no novely resides in the shape and configuration of the newly registered design. The defendant specifically refers to Suit No. 2515 of 1996 filed by the plaintiffs against Hindustan Lever Limited on the basis of their earlier registered designs bearing Nos. 166434 and 167936 in which the plaintiffs application for an ad interim injunction under Order 39 Rules 1 and 2, CPC was dismissed. The order is reported in 1999 PTC page 775. It is pointed out that in the said suit the plaintiffs relied upon the designs simialr in features, shape and configurations which were named Aquafresh Flexi and Aquafresh Flex-N-Direct. The samples of these tooth brushes are placed on record as (Annexure D-1 and D-2). Copy of the plaint is placed on record as (Annexure D-3). In the said suit, the Court held that the registered designs of the plaintiffs brushes were bad on the ground of being prior published, lack of novely and certain features which were purely functional and utilitarian. In the said suit, the plaintiffs gave up their claim of infringement of registered designs and admitted prior publication. The defendant pleads that the filing of the aforesaid suit and orders passed therein was not disclosed in the present plaint which was concealment of material facts from the Court with a view to obtain an ex-parte injunction.

( 6. ) It is pleaded that since the plaintiffs in the aforesaid suit had admitted prior publication of design Aquafresh Flex and Aquafresh Flex-N-Direct and gave up their claim of infrigement in respect of designs of the said tooth brushes, they have no right to monopolise the use of those designs by obtaining fresh registration in respect of the same features, shape and configuration again vide registration No. 170554. It is also pointed out that Honble Justice Dr. M.K. Sharma, while passing orders in the aforesaid suit, had clearly held that the functional and utilitarian aspects of the tooth brushes were not capable of protection under the Designs Act. It is also submitted that the plaintiffs had filed the application dated 5th January, 1996, regarding present design registration No. 170554 and the certificate was issued by the Controller of Patents and Designs on 4th April, 1997, but still during the pendency of aforesaid suit and till the orders were passed by Honble Justice Dr. M.K. Sharma on 26th November, 1999, the plaintiffs did not disclose or produce the design registration certificate No. 170554 before the Court and kept it as a guarded secret for the obvious reason that they were trying to get a similar design registered surreptitiously. Further reason for not disclosing the said design registration in those proceedigns was that the plaintiffs had admitted prior publication of designs Nos. 166434 and 167936 and the design No. 170554 was nothing but an imitation of the same designs and the plaintiffs fully knew that in case they disclose about their application regarding this design, their application for registration of design would be challenged and defeated.

( 7. ) The defendant further points out that after failing to get an injunction from Delhi High Court in Suit No. 2515 of 1996, the plaintiffs filed a suit in Bombay High Court (Suit No. 6556 of 1999), alleging infringement of copyrights in the moulds and drawings used for the manufacture of the same two tooth brushes so as to prevent the manufacturing of the said tooth brushes by Hindustan Lever Limited and others. The Bombay High Court declined to grant an ad interim injunction to the plaintiffs. Thereafter, the plaintiffs filed a Suit No. 2771 of 1998 in Delhi High Court against Cello Oral Hygiene Products alleging copyright infringement in the moulds and designs of the same tooth brushes. In the said suit also, their application under Order XXXIX Rules 1 and 2, CPC was dismissed on 16th January, 2000. It was reported in 2002 (25) PTC page 243. In the said order also scathing observations were made by Court against the plaintiffs and it was held that they had not come to the Court with clean hands. The defendant points out that the S Bend flexible neck tooth brushes were subject-matter of the various registrations in India in 1991 and 1994 which consistuted prior publication of design No. 170554 also.

( 8. ) The defendant has submitted that the plaintiffs had applied for cancellation of the registered designs of similar tooth brushes, in favour of M/s. Kewal Raj and Co. Private Ltd., which subsequently assigned the same to Hindustan Lever Limited, in Calcutta High Court but the said petitions were withdrawn as prior to the registrations obtained by the plaintiffs there were other registrations. In view of the plaintiffs surrendering the said design registrations, the High Court of Calcutta ordered removal of the registrations in favour of plaintiffs from the Register of Designs vide orders dated 10th July, 1998. The plaintiffs, thus, not only gave up challenge to the designs of Hindustan Lever Limited but also admitted that their registered designs were bad in law. Referring to various registrations in regard to S shaped zigzag angular neck and curved head tooth brushes, the defendant has pleaded that the design No. 170554 was got registered fraudulently as a new and original design and there was nothing new in the said design. It is pleaded that the S shaped flexi neck was registered as a patent by the plaintiffs under the US Patent Laws which establishes the utilitarian aspect thereof and as such it is not registerable as a design. It is thus asserted that S shaped flexible neck in the design No. 170554 is not only a pre-published design but a functional and utilitarian part also and as such the registration in respect thereof is illegal and bad. The design of handle also has nothing new as it is already in vogue and pre-published. Regarding other features like rubber cushioning between S bend-gaps, rubber line running on the handle and small rubber patches on the neck, it is stated that these trade variations have no novelty whatsoever over the already known and registered designs. It is submitted that not only that the plaintiffs have obtained registration of design No. 170554 illegally and fraudulently, but they have played a fraud upon the Court also by concealing material facts regarding earlier suits, orders passed by Courts and have raised false and frivolous pleas to get an ex parte ad interim injunction.

( 9. ) Learned counsel for the plaintiffs has vehemently argued that a prima facie case in regard to the infringement of the plaintiffs registered design No. 170554 is made out. Initially, learned Counsel for plaintiff did not press for any relief in regard to the "S" shaped zigzag neck or other parts of the brush except the rubber cushioning in the gaps of the "S" shaped zigzag angular neck, rubber patches on the front and back side of the neck and the line running on the front and back side of the handle of the brush registered vide registration No. 170554. According to him, other features as to the shape and configuration of this brush had already gone into public domain in view of the prior publication of designs No. 166434 and 167936 earlier designs. However, after the arguments of defendants counsel, learned counsel for the plaintiffs started asserting that he was not admitting that the design in question in respect of any part had gone into public domain. According to learned counsel for the plaintiffs, the novelty in the registered design in question resides in the rubber cushioning in the "S" bend gaps, rubber line running on the handle and small rubber patches on the neck which the defendant is contemplating to infringe by introducing its brushes in the market. According to learned counsel for the plaintiff, these variations, in spite of being small introduce a new design, the registration of which subsists in favour of the plaintiffs. He contends that even small variations which introduce novelty, give rise to a new design which, after its registration, belongs to the registered owner and none else has a right to copy the same. He also argues that a new design may be created by a combination of an old and new design or by a combination of two old designs so as to create a new design. In support of his submissions, he relies upon judgments in Castrol India Ltd. v. Tide Water Oil Co. Ltd., 1996 (16) PTC 202 [LQ/CalHC/1994/261] , Polson Ltd. v. Polson Diary Ltd., 1996 (16) PTC 709 [LQ/DelHC/1994/628] , Avis International Ltd. v. Avi Footwear Industries and Anr., 1990 (2) Arb.LR 352, Alert India v. Naveeen Plastics, 1997 (17) PTC 15, Metro Plastic Industries (Regd.) v. M/s. Galaxy Footwear, New Delhi, 2000 (20) PTC 1 (FB), Mrs Rachna Maheshwari v. State and Ors. (unreported), A. Fulton Co. Ltd. v. Grant Barnett Co. Ltd. 2001 (16) RPC 257, J. Harper and Co. Ltd. v. The Wright and Butler Lays Manufacturing Co., 1895 RPC (Vol. XII) 483, Cartwright v. Coventry Radiator Company, 1925 (42) RPC 351, Charles Henry Nevill and Ors. v. John Bennett and Sons, 1898 (15) RPC 412, Heinrichs v. Bastendorff, 1893 (10) RPC 160, Walker and Co. v. A.G. Scott and Co. Ltd., 1892 RPC 482, Sherwood and Cotton v. Decorative Art Tile Co., 1887 (4) RPC 207, M/s. Smithkline Beecham Plc. and Ors. v. M/s. Hindustan Lever Limited and Ors., 1999 PTC 775, Lacy v. Foggins, 56 IPR 436 and Heela Foundry and Co. v. Walker, Hunter and Co., 1889 (VI No. 43) RPC 554. It is asserted by learned counsel for the plaintiffs that the aforesaid registered design of the plaintiff is a new design and the defendant has failed to even prima facie establish that it is hit by the defences available under Sections 4 and 19 of the.

( 10. ) Learned counsel for the plaintiffs has also argued that in case there is no novelty in the design registered in favour of the plaintiffs and especially the aforesaid three improvements, the defendants may carry on the production of their brushes on the basis of the rest of the design of the brushes except the aforesaid three novelties introduced by way of rubber cushion in Zig Zag "S" bend, line on the handle and rubber pads on the neck. He contends that the mere fact that the defendant is keen to imitate these three improvements made by the plaintiffs prima facie establishes that these constitute a novelty and a new design. He denies that any concealment of facts was made from the Court or any mis-representations were made and argues that only relevant and material facts were to be pleaded in the plaint. He also submits that the registration of design No. 170554 in favour of the plaintiffs is prima facie evidence of its novelty.

( 11. ) Learned counsel for the defendant on the other hand, has vehemently argued that in view of the plaintiffs own admission that the earlier designs No. 166434 and 167936 with "S" bend have gone into public domain, the Court has to examine as to whether prima facie the plaintiffs newly registered design No. 170554 has any novelty and as to whether it is hit by the provisions of Sections 4 and 19 of the. He submits that in the present case, the newly registered design in favour of the plaintiffs is hit by all the ground provided under Sections 4 and 19 of theand as such, the design has to be held a bad design which was not at all capable of registration. According to the learned counsel for the defendant, the plaintiffs have played a fraud upon the Controller of Designs by getting this design registered without disclosing that the shape and configuration thereof is already pre-published. It is submitted that the Controller of Designs was not at all informed that this design was being registered in respect of the aforesaid three novelties only. Thus this registration was nothing but a fraudulent attempt to monopolies the earlier designs which had gone into public domain and regarding which the plaintiffs were being rebuffed by different Courts. By referring to the orders passed by Delhi High Court in two suits filed by the plaintiffs, orders passed by the Calcutta High Court and the suit filed by the plaintiffs in Bombay High Court, it is argued that the plaintiffs have been fraudulently attempting to hold over a design which had already gone in public domain to keep other competitors out of market.

( 12. ) In order to find out as to whether the plaintiffs are entitled or not to an ad interim injunction so as to restrain the defendant from manufacturing or selling the tooth brushes, design of which is identical or similar to the design No. 170554 registered in favour of the plaintiffs, this Court has to find out as to whether the design registered vide registration No. 170554 in favour of the plaintiff suffers or not from any of the vices enumerated in Sections 4 and 19 of the Designs Act, 2000. It is also to be seen as to whether the aforesaid design is a "new design" and the three novelties pointed therein by learned counsel for the plaintiffs are novelties or mere trade variants upon the earlier designs which have gone into public domain. It is further to be seen as to whether the plaintiffs have come to the Court with clean hands or not and as to whether they are guilty or not of suppressing material facts. It is also to be seen as to whether the refusal of an ad interim injunction to the plaintiffs would result in irreparable loss/injury to the plaintiffs and the balance of convenience also is more in their favour.

( 13. ) Coming to the question as to whether the plaintiffs has succeeded or not in making out a prima facie case in regard to the infringement of their registered design No. 170554, this Court finds that the said design registered in favour of the plaintiffs is a virtual reproduction of the plaintiffs earlier designs No. 166434 and 167936 which appear to have already gone into public domain. The plaintiffs have been refused injunctions in respect of the infringement of the said two designs by different Courts. Learned counsel for the plaintiffs, however, has tried to impress upon this Court that the instant design No. 170554 is a new design and is not at all hit by Sections 4 and 19 of the Design Act inasmuch as there are three variations/novelties in the new design. He submits that the rubber cushioning in zig-zag S-bend rubber patches on neck and a rubber line running from the handle to neck are novelties and the defendant has no right to infringe the same. The plea of learned counsel for the defendant on the other hand is that these three variations do not constitute a new design in respect of the shape and configuration of the tooth brush and are merely trade variations which have been introduced with the sole object of holding over a design which had gone into public domain.

( 14. ) After examining the design of the plaintiffs earlier two tooth brushes and the tooth brush in question which was registered vide design No. 170554, this Court prima facie finds that the three changes as pointed out by learned Counsel for the plaintiffs do not constitute a new design and are merely trade variations which are neither inventive nor innovative. It is true that in certain cases even a small novelty may introduce a new design but the bottom line is that a really new design should come into existence which is not a copy or trade variation of the earlier design introduced mala fide to continue to have a hold on the old design. Novelty should be capable of making a design different and distinctive at first sight of the consumer, should be new and should not require lot of effort to find out the novelty. If this yardstick is not applied then by introducing minor and insignificant changes here and there, one may try to monopolise an old and already known design which cannot be protected even by Designs Act. The judgments cited by learned counsel for the plaintiffs do say that even a small novelty may create a new design but the novelty should not be a mere trade variation. Enough material has been placed on record to show that the brushes with similar shape and configuration having similar zig-zag S- bend have been in the market for years together and the plaintiffs themselves have been conceding in different litigations that they have gone into public domain. Therefore, even the registration of the design in question appears to have been obtained fraudulently without disclosing to the registering authority the earlier designs and earlier litigations between various parties including the plaintiffs.

( 15. ) This Court further is of the view that Zig Zag S bend is a utilitarian and functional part regarding which the plaintiffs had even obtained a patent on the ground that this zig-zag bend introduces mere flexibility in the tooth brush. By merely putting some rubber cushions in the gaps this part does not become a design so as to preclude others from using it. These rubber cushions may enhance the flexibility and as such are utilitarian components. The handle also is a utilitarian part and introduction of certain patches thereon does not introduce any design therein. Points A shown in the registered design are prima facie trade variants having no novelty of design and as such were not even capable of registration. Even Honble Dr. Justice M.K. Sharma in S. No. 2515/1996 while dealing with the plaintiffs designs No. 166434 and 167936 held that S bend neck was a utilitarian and functional part and as such incapable of registration as a design. In the said suit the plaintiffs admitted prior publication of the aforesaid two designs and gave up their claim of infringement of designs. Since the plaintiffs earlier two designs were already in public domain and there is nothing new in the present design the plaintiffs have no prima facie case to show that the defendant is infringing their design. It is also worth mentioning that in Suit No. 2771/1998 also filed by the plaintiffs a learned Single Judge of this Court had made seathing comments against them which read as under:- "15. It is no doubt true that in the present suit the plaintiffs have claimed relief on the ground that they have a copyright in the moulds from which the tooth brushes are manufactured, however, the fact remains that in the plaint the plaintiff has claimed relief of injunction restraining the defendants from manufacturing, selling and/or offering for sale toothbrushes which are identical in appearance to the CELLO FLEXY toothbrushes of the defendants or any other toothbrush allegedly similar in appearance to the plaintiffs DR. BEST, AQUAFRESH FLEX and AQUAFRESH FLEX N DIRECT and from manufacturing toothbrushes under or by reference to the mark FLEXY or any other mark confusingly similar to the plaintiffs mark FLEX. Though the plaintiff has also claimed an injunction for restraining the defendants from infringing the plaintiffs alleged copyright in the moulds and mould drawings, however, once the plaintiff is seeking relief of an injunction for restraining the defendants from manufacturing and/or offering for sale toothbrushes which are allegedly similar in appearance to the plaintiffs toothbrushes, in my opinion, plaintiffs were required to disclose not only the pendency of the earlier suit in which similar relief was claimed against the Hindustan Lever Limited and Kewal Raj and Company but they should have also disclosed the proceedings which were pending in the Calcutta High Court in which their applications for cancellation of design of Hindustan Lever Limited and Kewal Raj and Company were dismissed. Plaintiffs ought to have disclosed to this Court that certain other parties were manufacturing similar toothbrushes since 1991 when design were registered in their name and non- disclosure of these facts has, in my opinion, clearly misled the Court in granting ex- parte injunction in favour of the plaintiffs. It is now well settled that a party who approaches the Court to seek the discretionary relief must come with clean hands. If an information which has a bearing on the question of exercise of discretion is withheld from the Court, the Court would be justified in refusing to exercise the discretion in favour of such a party. 19. It is thus clear that in case the plaintiff has approached this Court with unclean hands and had suppressed material facts from the Court, it will not be entitled to an order of injunction ad the injunction granted in favour of the plaintiffs will be liable to be revoked. When the plaintiffs filed this suit, the suit filed by them against the Hindustan Lever Limited and Kewal Raj and Company was still pending. It was a fact that reliefs claimed in the earlier suit against Hindustan Lever Limited were almost similar to the relief claimed in the present suit except that in the present suit copyright in the moulds has also been claimed. It is also a fact that in the earlier suit, the Court had not granted injunction in favour of the plaintiffs and the arguments on the injunction application were being heard at the time when the present suit was filed. It is also a fact that design in respect of toothbrushes in favour of the plaintiffs were cancelled and the application of the plaintiff for cancellation of designs of the Hindustan Lever Limited and Kewal Raj and Company were dismissed by the High Court of Calcutta. In my considered opinion, it was the abundant duty of the plaintiffs to disclose to this Court about the pendency of the aforesaid earlier proceedings. If such facts had been disclosed to the Court in this suit, may be the Court would not have granted ex parte injunction in favour of the plaintiffs. Suppression of the aforesaid facts has clearly misled the Court in granting ex-parte injunction on 16th December, 1998. I am, therefore, of the view that the plaintiffs have not come to this Court with clean hands and have also suppressed material facts from the Court with a view to gain advantage in this suit. Ex parte injunction in favour of the plaintiffs is liable to be vacated on this ground alone."

( 16. ) After considering the pleadings, documents on record and the submissions made by learned counsel for the parties, this Court is prima facie of the view that the plaintiffs design in question is hit by Section 19(1)(b)(c) read with Section 4(c) of thein as much as there is nothing new in this design and the so called new or innovative steps as pointed out by the plaintiffs are only trade variants and an attempt to continue its hold over old design of the tooth brush which has gone into public domain and regarding which the plaintiffs have been repeatedly rebuffed by the Courts. The registration was obtained by the plaintiffs without pointing out the so-called novelties which created a new design. It is true that even a small incentive step may create a new design but in the case in hand, the three improvements in the earlier design as pointed out by learned counsel for the plaintiffs are neither inventive nor introduced new features in the design. A comparison between the plaintiffs new brush Annexure B shown as brush No. 4 on the board with plaintiffs earlier brushes shown as brush Nos. 1 and 2 prima facie shows that there is no novelty in the design. Only by introducing few insignificant changes, the plaintiffs have succeeded in getting the new design registered which was already in public domain. It tantamounts to playing fraud on the statute which contemplates to put registered designs in public domain after the expiry of the statutory period. The time now has come when the Courts should be more circumspect in such matters as cut throat competition between industrial and commercial houses is prompting them to throttle their competitors/opponents and they do not even hesitate to abuse the process of law so as to disable their competitor from exploiting the market. Plaintiffs effort also appears to be in the same direction and to some extent they have succeeded even by obtaining an ex parte ad interim injunction and debar the defendant from selling its tooth brushes with a design which is already in public domain and over which none has any proprietory right. This Court is of the considered view that novelty or newness may be very small but this novelty should be really novel and not a mere pretext of novelty. Adding something here and there to raise a plea of new design without actually introducing a new design has to be spurned.

( 17. ) This Court also finds that the plaintiffs have failed to make out a prima facie case in their favour further for the reason that in the plaint filed by them neither so called novelties giving rise to a new design were pointed out nor it was specifically pleaded that the plaintiffs were not claiming any proprietory rights in the shape and configuration of the tooth brush in question. In para 3 of the plaint the right in the design as claimed was in respect of its aesthetic handle but the ex parte injunction was obtained in regard to the design of entire brush. This was a cleverly designed move to mis-lead the Court so as to obtain an ex-parte injunction. It is not at all understandable as to why in the plaint the plaintiffs merely referred to the distinctive aesthetic handle of the brush in question and did not give details of the novelties which are being pointed out now to the Court by learned counsel for the plaintiffs. Had the plaintiffs been fair to the Court, they would have specifically pleaded that the design of the brush in question including Zig Zag S bend had already gone into public domain but their new registered design was on the basis of the novelties introduced therein by way of rubber cushion in the gaps in the Zig Zag S bend, rubber patch on the neck of the brush and the rubber line going from the handle towards neck. It appears that before the registering authority even, these facts were not clarified and the design of the entire brush was got registered as if the entire brush was a new design.

( 18. ) It was also concealed by the plaintiffs that in earlier suits their plea for injunction in regard to designs No. 166434 and 167936 had been rejected by the Courts holding that those had gone into public domain and the plaintiffs had not succeeded in establishing a case for injunction. It was deliberately done for the reason that had the earlier litigation been disclosed the Court while considering the question of grant of ex parte injunction to the plaintiffs would have examined the designs of earlier tooth brushes and the present design and could have easily come to the conclusion that there was nothing new in the design in question. This conduct of the plaintiffs is reprehensible and disentitles them to the grant of equitable relief of injunction. Not only this the plaintiffs concealed from the Court the history of the registration of the designs of the brushes in their favour and their debacle in Calcutta High Court where the plaintiffs effort to challenge the designs registered in favour of Kewal Raj and Company failed and the plaintiffs had to give up their registration of designs in regard to the similar tooth brushes which were being manufactured and sold all over world since year 1991 or so. It clearly shows that the plaintiffs have not acted as a fair litigant. They are capable of making mis-representations, misleading the Court and making mis-statements with a view to abuse the process of law.

( 19. ) It is also shown an record that after dismissal of their prayer for injunction in Delhi in regard to designs No. 166434 and 167936, the plaintiffs approached Bombay High Court for getting an injunction in regard to the moulds used for manufacturing those brushes which was nothing but an effort to achieve indirectly which the plaintiffs could not achieve directly in Delhi. They failed in this effort also.

( 20. ) The contention of learned counsel for the plaintiffs that in November, 2000, the defendant itself had applied for the registration of the same design of the toothbrush pleading that it was a new design which shows that this design was never in public domain cannot be accepted for the reason that this Court has to examine the plaintiffs right in the registered design on the basis of which the plaintiffs have come to the Court for an injunction. The attempt on the part of the defendant to get the said design registered in its favour does not ipso facto establish that the design registered in favour of the plaintiffs was not hit by Sections 4 and 19 of the Designs Act.

( 21. ) The plea that in case there is nothing new in the plaintiffs design why the defendant is keen to imitate it, cannot be accepted as it is for the plaintiffs to establish at least prima facie that the design registered in their favour does not suffer from any of the vices enumerated in Sections 4 and 19 of the.

( 22. ) A perusal of the plaint shows that the plaintiffs deliberately claimed novelty in the aesthetic handle of the toothbrush without giving the details of the other so called novelties. It cannot be said that this move was innocent or without any motive. In earlier Suit No. 2551/96 the plaintiffs had given minute details of the features of their design. The absence of such details in the present suit was, therefore, with the object of misleading the Court and obtaining an ex parte ad interim injunction without committing themselves to any firm position. If the plaintiffs had been clean and fair they ought to have categorically pleaded in the suit that they were not claiming any right in the shape and configuration of the tooth brush and should have also clarified that they had come to the Court for protection only in regard to the rubber cushion in the Zig Zag S bend, patches on the neck and the rubber line from handle towards neck. The plaintiffs mala fides further stand exposed by the fact that during the pendency of, the earlier suit before Dr. Justice M.K. Sharma the plaintiffs had obtained the registration of the present design but it was never disclosed. The obvious reason was that the plaintiffs were afraid that in case they disclosed this fact before the Court and brought it to the notice of the opposite party steps would be taken to challenge the registration of the design and it would become difficult for them to obtain registration of the said design which was already in public domain. This Court therefore, is satisfied that by not making detailed pleadings and disclosing material facts to the Court the plaintiffs succeeded in misleading Court. Therefore, not only that the plaintiffs have failed to establish a prima facie case it is also shown on record that the plaintiffs had not come to the Court with clean hands and as such, are not entitled to any ad interim injunction as prayed.

( 23. ) This Court is of prima facie view that the plaintiffs after surrender of earlier designs which had gone into public domains are only trying to overcome their disability by dubious means. They have managed to get design No. 170445 registered in their favour by introducing insignificant and small changes which do not introduce any novelty or a new design in their toothbrush and the new design is a mere fraudulent imitation of the old designs. The distinctive features of the design in question and earlier designs which are in public domain are almost identical and obvious imitation. The plaintiffs would not suffer any irreparable loss/injury if the defendant also manufactures the brushes with similar features as both have a healthy competition in the market. The defendant would rather suffer irreparably if the plaintiffs succeed in ousting it from the market on the basis of a registered design which is already in public domain and was not prima facie registerable even.

( 24. ) In the result, this Court has no hesitation in holding that the plaintiffs have failed to make out a prima facie case for the grant of ad interim injunction on the basis of registered design No. 170554. Their application is therefore, dismissed with costs of Rs. 25,000.00.

( 25. ) The ex-parte ad interim order is vacated.

( 26. ) Nothing stated herein shall be taken as an expression of opinion on the merits of the suit pending before this Court. (CS) (OS) No. 1908/2002 Vide separate orders, IA Nos. 10928/2002, 4541/2003 and 6572/2003 have been disposed of. List before Joint Registrar on 25th May, 2004, for admission/denial of documents. Counsel for plaintiff prays for suspension of the orders for a period of four weeks. In view of the observations made by this Court in the orders, there are no good grounds for suspension of the orders and, thereby revive the interim injunction.