1. By this motion dated 25th March, 1999 the plaintiff seeks inter alia an order of injunction restraining the defendants from infringing the copyright of the plaintiff in the registered design No. 173791 dated 2nd March, 1997 and from selling or offering for sale or marketing table fans/ portable fans or any fans with or without the brand name 'Usha'/'Usha Dynamo' by applying thereto the said registered design or any colourable/ obvious imitation of the same; Injunction restraining the defendants from passing off or attempting to pass offer causing, enabling or assisting others to pass offens or table fans/portable fans not of the plaintiffs manufacture and for consequential orders.
2. On the said motion I have by my ad-interim order dated 25th March. 1999 restrained by Injunction the defendants from infringing the registered design of the plaintiff or colourable Imitation of the same. The said ad-interim order is still subsisting.
3. At the hearing of the motion after filing of affidavits it was urged on behalf of the plaintiff that the design applied by the first and second defendants ("the said defendants" for short) to the portable table fans manufactured and sold by the said defendants is an obvious limitation of its registered design applied by it to its portable fans. What is alleged by the plaintiff is that the said defendants are guilty of piracy by infringing the copyright of the plaintiff in its registered design. This was however disputed by the said defendants.
4. In order to appreciate the rival contentions of the parties one has to look at the provisions of the Designs Act, 1911 ("the said Act" for short). The provisions of the said Act as are material for the present purpose are to be found in the following sections :-
"2. (5) "design" means only the feasters of shape, configuration pattern or ornament applied to any article by any 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 (43 of 1958) or properly mark as denned in section 479 of the Indian Penal Code."
"53. 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 goods in which the design is registered the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered proprietor, or to do anything with a view to" enable the design to be so applied; or
(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 five hundred 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 one thousand rupees.
5. The Certificate of Registration on which the plaintiff relies is at pp. 18 to 24 of the petition and/the same is to the following effect :--
"1. The novelty resides in the shape, configuration and ornamentation of the TABLE FAN, as shown.
2. No claim is made by virtue of this registration in respect of any mechanical or other action of the mechanism whatsoever or in respect of any mode or principle of construction of the article.
3. No claim is made by virtue of this registration to any right to the use as Trade Mark of the words, or to any extraneous matter which does not form Integral part of the design.
4. No claim is made of the colour or colour combination appearing in the design:
6. The perspective (front) view, top view and the bottom view of the portable table fans of the manufacture of the plaintiff to which its registered design has been applied form part of the said Certificate of Registration.
7. In the affidavit-in-opposition dated 8th April. 1999 filed on behalf of the first defendant the dissimilarities between the design of the said defendant and that of the registered design of the plaintiff have been set out which are as follows :
"FEATURE/ PARAMETER USHA DYNAMO Fan of defendant No. 1 POLAR STORMY Fan of Plaintiff
Base plate as visible to the eye. (a) New and original shaped baseplate of ABS plastic used, which is bigger/thicker and has unique truncated shape. Base plate is small/flat. Black colour.
(b) Has a unique sliding mechanism. (b) No such mechanism. (c) Red colour. (c) Black colour."
"Motor Cover as visible to the eye. (a) Shape is cylindrical. (a) Shape is not cylindrical but is oval.
(b) No perforations. (b) Has perforations.
(c) Has oil tube hole. (c) No oil tube hole.
(d) Plugwire located on side. (d) Plugwire located at bottom (e) Mounting lugs: (e) No mounting lugs.
(f) Motor Cover extends into guard. (f) Motor Cover does not extend into guard but is flush with guard.
"Guard as visible to the eye (a) Front guard has distinct and substantial maculation at the end. (a) Front guard does not contain any substantial maculation
(b) Front Guard has a single circular ring. (b) No such ring. (c) Back guard has two circular rings. (c) No such rings." "Decorative Name plate as visible to the eye. (a) Decorative name plate is different in shape and design.
(b) No perforations. (b) has perforations."
'Housing asvisible to the eye. (a) Shape of housing is unique and different.
(b) Attractive and aesthetically appealing lug," (b) Clumsy and unaesthetic.
' 'C' bracket as visible to the eye. (a) Circumference of 'C' bracket is more. (a) Circumference of 'C' bracket is less. (b) 'C' has unique double rib die markference." (b) No such ribs. __________________________________________________________________
8. The aforesaid dissimilarities as have been set forth are corroborated by coloured photographs of the portable table fans to which the design of the plaintiff and that of the first defendant have been applied. The said photographs are at pp. 11 to 14 of the affidavit-in-opposition.
9. In the affidavit-in-opposition to the vacating application of the first defendant bearing G.A. No. 1340 of 1999 it is staled by the plaintiff that the registered design of the plaintiff contains what are stated as "striking features" which according to it are as follows :
"7(h)(i) Opposed to the horizontal disposition of mounting bracket (C-shaped or of any other shape) as adopted in conventional table fans/ portable fans, thereby holding a fan guard from two sides, the mounting bracket of the fan according to the plaintiffs/petitioner's registered design is particularly of C-shape, and it is vertically disposed, thereby supporting the guard of the fan from top to bottom, as shown in the representations;
(ii) The fan guards, both front and back, according to the plaintiffs/ petitioner's registered Design are constituted of redial ribs with a circular disc being disposed at the centre for the front guard, as shown:
(iii) The blades of the fan according to the plaintiffs/petitioner's Registered Design are specifically shaped/configured as torbo blades."
10. It will be recalled that in the statement of novelty with regard to the registered design of the plaintiff it is stated that "the novelty resides in the shape, configuration and ornamentation of the TABLE FAN". The said statement has been construed to mean "that the novelty is in the design as a whole" and that in the absence of any indorsement by the controller which "is not necessary as in its absence the design will automatically be construed as being for the whole" (see in this connection Russell-darks on Copyright in Industrial Design. Fifth Edition, edited by Mr. Michael Fysh at page 64). It follows therefore that in this case an overall view of the registered design of the plaintiff in relation to its table fan comprising of configuration, shape and ornamentation will have to be taken to determine its scope. It further follows that the component parts of the said registered design of the plaintiff cannot be viewed in Isolation to determine as to what are its "striking features" as the plaintiff in paragraph 7(h) of its affidavit-in-opposition seems to suggest, the expression "design" as defined in the said Act "does not include any mode or principle of construction or anything which is in substance a mere mechanical device" (see section 2(5) of the said Act). The disposition of the mounting bracket on the table fan of the manufacture of the plaintiff which is merely a mechanical device as referred to by the plaintiff in paragraph 7(h) of its aforesaid affidavit-in-opposition cannot be taken to be part of its registered design.
11. The question that arises in this application is as to whether the design of the first defendant as applied to its portable table fans "is an obvious imitation" of the registered design of the plaintiff applied to portable table fans of its manufacture. The question has to be determined "solely by the eye" (see section 2(5) of the said Act).
12. The House of Lords in the case of "Gramophone Company Ltd. Magazins Holder Company" : 28 Reports of Patent, Design and Trade Mark Cases 221 dealt with an action for infringement of design under the English Act. Earl of Halsbury in his concurring speech (at page 226 of the report) observed as follows :
"My lords, the only refuge which I can find from being constrained to restrain other people from taking the most ordinary thing in the word and making it peculiar to themselves, is that you must recognise the fact that the principles which guide us in Patent cases are not applicable here. Therefore in order to come within the Act of Parliament and I think you may come within the Act of Parliament in the case of the commonest and most ordinary thing--the one thing must be an exact reproduction of the other; and the old view which one had in dealing with Patents as to a thing being simply a colourable departure is no longer applicable. In order to come within the Act of Parliament it must be the exact thing: and any difference, however trifling it may be or however unsubstantial, would nevertheless protect it from being made the monopoly of the particular designer who thought proper to take it.'
13. In the similar vein is the case of "William J. Holdesworth and Others v. Henry C. M'cres" : 1867 Law Reports, English and Irish Appeals 380 where Lord Westbury at pp. 388-9 of the report observed as follows :--
"Now, in the cases of those things as to which the merit of the invention lies in the drawing, or in forms that can be copied, the appeal is to the eye, and the eye alone is the judge of the identity of the two things. Whether, therefore, there be piracy or not is referred at once to an unerring Judge, namely, the eye, which takes the one figure and the other figure, and ascertains where they are or are not the same. The only thing which it is here necessary to point out, as well for warning to inventors as for the protection of the public, is this, that if a design, as exhibited in a pattern, is filed and registered by an Inventor, without any further limitation or description than that which is given by the design Itself, it protects the entire thing and the entire thing only: and the protection cannot, at pleasure, be made applicable one day to the entirety, and another day to the separate Integral parts or elements of the entire design. It must be considered that the protection of the statute is invoked for the entire thing that appears upon the register, and is applicable so registered."
14. The next case relied upon by Mr. Sen appearing for the first and second defendants is the unreported Judgment of the Division Bench of this Court dated 22nd September, 1998 in APO No. 512 of 1998 (Rotomac Pens limited, v. M/s. Milap Chand & Co.), where that Court held that the test to be applied in determining whether any piracy had taken place is to visually examine the products of the parties and to ascertain whether the respective designs applied by them to their products is "virtually Identical" (see page 16 of the judgment).
15. Mr. Chakraborty on the other hand relied on the case of "Dunlop Rubber Co. Ltd. v. Golf Ball Developments Ltd.": 48 Reports of Patent, Design and Trade Mark Cases 268, where Mr. Justice Farwell construing the provisions of the English Act held (at page 279 of the report) as follows :
"......Again in this section the test is the eye, and in order to ascertain whether there is imitation or not, it is the eye that must be appealed to, and the two designs must be compared as a whole. It is necessary to look at the two designs and to Judge by the eye between them as to whether the one is an imitation of the other or not. It is not a question of fact, aye or no, did the author of the infringing design in fact have before him, or have knowledge of, the registered design.
Now with regard to the two words "fraudulent" or "obvious", in my Judgment "obvious" means something which, as soon as you look at it, strikes one at once as being so like the original design, the registered design, as to be almost unmistakable. I think an obvious Imitation is something which is very close to the original design, the resemblance to the original design being immediately apparent to the eye looking at the two ......" However, the learned Judge in applying the lest seems to me to have erred in observing at page 280 as follows :
"......Now, in a case where the registered Design is made up of a pattern which has no one striking feature in It, but it appeals to the eye as a whole, it may very well be that another design may be an imitation of it which makes the same appeal to the eye, notwithstanding that there are many differences in the details......"
16. I have visually examined the registered design of the plain tiff applied to portable fans of its manufacture and the design applied by the first defendant to the portable table fans of its manufacture and found that they are dissimilar in "shape, configuration and ornamentations". The shape and ornamentation of the radial ribs in the fan guard both front and back of the plaintiffs design are clearly different from those of the first defendant. Similarly, the shape of the fan blades in the plaintiffs registered design is different from that of the first defendant. I also find that the dissimilarities in the two designs as set forth in the affidavit-In-opposition of the first defendant (supra) apart from their mechanism which to my mind is not relevant are striking.
17. Having regard to the aforesaid I am prima facie satisfied that no case of piracy has been made out by the plaintiff. It cannot be said that the design of the first defendant is an obvious imitation of the registered design of the plaintiff.
18. To the suggestion made by me that the first and second defendants should maintain separate accounts it was submitted by Mr. Chakraborty appearing on behalf of the plaintiff that by reason of the provisions of section 53(2)(a) of the said Act the said defendants would only be liable to pay to the plaintiff "a sum not exceeding five hundred rupees" If the contravention by the said defendants of section 53 of the said Act was established at the trial of this suit. The said submission does not appear to me to be correct having regard to the provisions of section 53(2)(b) which provides for recovery of damages in that case. The case or passing off as made out in its petition was not pressed by the plaintiff at the hearing.
19. For the foregoing reasons I consider it just and proper at this interlocutory stage to pass the following order :--
20. The ad-interim order of Injunction is varied as follows :--
The first and second defendants shall maintain separate accounts of the marketing and sale of portable table fans with its design month by month and every month. Such accounts shall be submitted by the said defendants at the end of each month in sealed cover to the advocate on-record of the plaintiff.
Subject as aforesaid, the ad-interim order shall stand vacated.
The hearing of this suit is expedited. Formal service of writ of summons is waived by the defendants. The defendants shall file their written statements within three weeks from date. There will be cross order for discovery of documents within two weeks thereafter: inspection forthwith thereafter and this suit shall appear in the appropriate list for hearing six weeks hence.
This order also disposes of the vacating application of the first defendant bearing G.A. No. 1340 of 1999.
Cost costs in the cause.
All parties are to act on a signed copy of the operative portion of this judgment.
21. Order accordingly