Badar Durrez Ahmed, J:

1. This order shall dispose of two applications: IA No. 6155/2005 under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 (hereinafter referred to as the CPC) filed on behalf of the plaintiff and IA No. 6349/2005 under Order 39 Rule 4 of the CPC for vacation of the ex-parte injunction granted by this court on 11.08.2005 upon the plaintiffs application IA No. 6155/2005.

2. In IA No. 6155/2005, the plaintiff sought an ad interim injunction for restraining the defendants from manufacturing, selling, offering for sale, directly or indirectly dealing in toy scooters, which are identical to or deceptively similar in their shape, configuration and arrangement of features to the plaintiffs toy scooter registered under design No. 194631 under the Designs Act, 2000 (hereinafter referred to as the said Act). By virtue of the ex parte order dated 11.08.2005 passed in the said IA No. 6155/2005, the defendants, themselves or through their partners or proprietors, agents, servants, wholesalers, retailers, dealers, distributors and vendors were restrained from manufacturing, selling, offering for sale, directly or indirectly dealing in toy scooters, which are identical or deceptively similar in their shape, configuration to the plaintiffs said toy scooter.

3. IA No. 6349/2005 has been filed on behalf of the defendants for vacation of this ex parte injunction. Thus, the plaintiff seeks the confirmation of the ex parte order dated 11.08.2005 and the defendants seek its vacation.

4. Briefly stated the plaintiffs case is that it is the owner of the copyright in the design of the toy scooter registered under No. 194631 on 23.02.2004 under the said Act. The plaintiff has alleged that the defendants are manufacturing, selling, etc. the toy scooters which are identical or deceptively similar in shape, configuration and design with the plaintiffs toy scooter. It is on this basis that the suit has been filed for piracy of the registered design under Section 22 of the said Act as well as for passing off.

5. The defendants have taken a two-fold defence. Firstly, the defendants contended that the plaintiff has no right in respect of the said toy scooter manufactured and marketed by it inasmuch as the design employed by the plaintiff had been published in Hong Kong prior to the date of registration of the said design, i.e., prior to 23.02.2004 According to the defendants, the publication at Hong Kong was made sometime in 2003 in the TOYS Magazine, Volume 1, 2003 in the name of M/s Home Toys Industrial Limited, Hong Kong. The second defence taken by the defendants is that the defendants also hold a registration of the very same design. Their design was registered on 01.03.2005 under registration No. 198624. Therefore, the defendants claim proprietorship over the said design.

6. The photographs submitted by the parties with regard to the toy scooters as per the plaintiffs design, the defendants design and the purported design in the Hong Kong publication are as follows:-

7. The plaintiffs toy scooter is sold under the name of Boom Scooty and the defendants toy scooter was sold under the name Dhoom Trendy. The learned counsel for the plaintiff, in the written submissions submitted by him, has given a comparative table with regard to the dimensions of the designs of both the products. The same reads as under:-

DIMENSIONBOOM SCOOTY (PLAINTIFFS PRODUCT)DHOOM TRENDY

(DEFENDANTS PRODUCT)

Length17 cm17 cm

Height12 cm. without wheels 13.5 cm. with wheels,12 cm. without wheels

13.5 cm. with wheels

Height of the rider5 cm. from seat to top5 cm. from seat to top

Width7 cm7 cm





8. A visual comparison of the plaintiffs product and the defendants product leaves no manner of doubt in my mind that the same are virtually identical. A comparison of the physical dimensions accentuates this observation. In the course of arguments, the learned counsel for the plaintiff relied on various decisions which are as follows:-

(i) Rosedale Associated Manufacturers Ltd. v. Airfix Products Ltd: 1957 RPC 239;

(ii) Alert India v. Naveen Plastics: 1996 PTC 17;

(iii) Lusty and Sons Ltd. v. Morris Wilkinson and Co.: 1971 RPC 174;

(iv) Britania Industries Ltd. v. Sara Lee Bakery: 2001 PTC 23 (Mad); and

(v) Saunders v. Weil: 1893 RPC 29.

9. The major thrust of the arguments of the counsel for the defendants was the plea of prior publication. According to the learned counsel for the defendants, the plaintiffs design was liable to cancellation under Section 19 of the said Act and such a defence could be taken by the defendants in a suit for piracy brought by the plaintiff in view of Section 22 (3) of the said Act.

The defendants placed reliance on the following decisions:-

(i) C astrol India Limited v. Tide Water Oil Co. (I) Ltd.: 1996 PTC (16) 202 ;

(ii) R avinder Kumar Gupta v. Ravi Raj Gupta and Others: 1986 PTC 50 ;

(iii) M/s. Wimco Ltd, Bombay v. M/s Meena Match Industries, Sivakasi and Others: AIR 1983 Delhi 537 : 1983 (3) PTC 373 (Del) [LQ/DelHC/1983/193] ;

(iv) Rotela Auto Components (P) Ltd and Another v. Jaspal Singh and Others: 2002 (24) PTC 449 (Del) [LQ/DelHC/2001/1797] ;

(v) R.B. Watson and Company Ltd. v. Smith Brothers (Wirewares) Ltd: 1963 RPC 147; and

(vi) Glaxo Smithkline Consumer Healthcare GmbH and Co. Kg and Another v. Anchor Health and Beautycare Pvt. Ltd: 2004 (29) PTC 72 (Del) [LQ/DelHC/2004/410] .

10. As indicated above, I am, prima facie, of the view that the defendants design is an obvious imitation of the plaintiffs design. On the other hand, there are sufficient differences between the purported Hong Kong design and the plaintiffs design. The plaintiffs design is a three-wheeler scooter, whereas the Hong Kong design is a two-wheeler scooter. The plaintiffs design includes a rider wearing a cap while the Hong Kong design does not have any rider. I agree with the submissions made by the learned counsel for the plaintiff that the Hong Kong design appears to be like a motorcycle with a hood and it has a sleek body with sharp and intricate details, whereas the plaintiffs registered design is of a three-wheeler scooter which appears to be substantially bigger in size and less intricate and more attuned to Indian conditions. There is no stand on the plaintiffs product, whereas there is a stand in the Hong Kong design. Apart from that, there are many distinguishing features, such as the difference in the foot-rest, the handle, shock absorbers, hub caps, etc. In my view, the submission of the learned counsel for the plaintiff that the Hong Kong design and the plaintiffs design are not identical is correct. The plaintiffs design also, prima facie, does not appear to be an obvious imitation of the Hong Kong design.

11. So, on a comparison of the three designs, i.e., the Hong Kong design, the plaintiffs design and the defendants design, I find that while there is identity between the plaintiffs design and the defendants design, there is no such identity between the plaintiffs design and the Hong Kong design. For the defence of prior publication taken by the defendants to succeed, it must be shown that the very design that is utilised by the plaintiff has been published in India or in any other country prior to the date of registration of the plaintiffs design. While it is true that the magazine TOYS has apparently been published in Hong Kong in the year 2003, it cannot be said that the design indicated in the said magazine is the same as the design of the plaintiffs toy scooter. Therefore, the defendants cannot take the defence available for cancellation of a licence under Section 19 (1) (b) in defence of the action of piracy brought by the plaintiff in respect of its registered design. Moreover, what is referred to as a prior publication by the defendants consists of a single page of a magazine and that page has 13 different products displayed on it as indicated in Annexure D-2 to IA No. 6349/2005 filed on behalf of the defendants. It is also true that the so-called Hong Kong design appearing in the said document which has been isolated and magnified and printed earlier in this judgment, does not display the design from all angles. The test of ascertaining whether the two designs, i.e., the Hong Kong design and the plaintiffs design are identical is that the designs have to be judged by the eye and each design has to be compared as a whole with all its component features, important and unimportant. [See: Rosedale Associated Manufacturers (supra)]. Applying this test, I do not see as to how at this prima facie stage the Hong Kong design can be regarded as a prior publication of the plaintiffs design.

12. The plaintiff has also been able to demonstrate that even if the plaintiffs design is regarded as having been inspired by the Hong Kong design, the plaintiff has introduced sufficient novelty so as to constitute a new and / or original design. On the other hand, what the defendants have done is that, without any exercise of any labour or ingenuity, they have merely imitated and / or copied the plaintiffs design. It was always open to the defendants to have also been inspired by the Hong Kong design and to have come up with a different product with sufficient novelties of their own, but that is not what they did. They merely imitated and copied the design of the plaintiff.

13. Furthermore, not much turns on the factum of the defendant being the registered proprietor of the design under the registration No. 198624. Firstly, the registration of the plaintiffs design is prior in time. The plaintiffs design was registered on 23.02.2004, whereas the defendants design was registered on 01.03.2005. The fact that the plaintiffs registration is prior in time to that of the defendants would entitle the plaintiff to prevent its infringement by the defendants. In Alert India (supra), a learned single Judge of this court held that a design registered later would not be entitled to protection against the first or prior registered proprietor of a design.

14. Secondly, it must be kept in mind that the registration of a design under the said Act is procedurally different from the registration granted under the Patents Act, 1970 and / or the Trade Marks Act, 1999. Under both the Patents Act and the Trade Marks Act, prior to registration there is a substantive examination, publication before registration and provision for opposition before registration. These are all absent in the case of a registration of a design under the said Act. Therefore, mere registration of the design by the defendants would not confer a higher right (or even an equal right) on them than that available to the plaintiff. Thirdly, the design employed by the defendants, prima facie, is an obvious imitation of the plaintiffs design right upto the measurements of the various features as indicated above. Even the colour is similar.

15. Consequently, in view of the foregoing discussion, the plaintiff has been able to establish an excellent prima facie case and the balance of convenience also lies in confirming the interim injunction granted on 11.08.2005 till the disposal of the suit. The defence of prior publication taken by the defendants is also not, prima facie, available to them. Accordingly, IA No. 6155/2005 is allowed by confirming the order dated 11.08.2005 till the disposal of the suit. IA No. 6349/2005 is dismissed.