Vijender Jain, J.
1. Plaintiffs filed a suit for perpetual injunction, inter alia, praying for injunction against infringement of design, passing off and rendition of accounts. It is the case of the applicants-plaintiffs that plaintiff No. 1 is a company registered in India and plaintiff No. 2 is a Corporation existing under the laws of Republic of China and having its registered officer at Taiwan. The applicants are the sole distributor and constituted attorney in India for the Top Open Locks and Pin Locks manufactured by plaintiff No. 2.
2. Mr. Arun Bhardwaj, learned counsel appearing for the applicants-plaintiffs, has contended that plaintiffs are manufacturing unique and distinctive locks since the period of its registration under the provisions of Designs Act, 2000. Some of the salient features of the plaintiffs Top Open Locks are as under:-
a) Top View:
(i) It is a shackle having five (pentagon) layers.
(ii) There is one top layer, two corner layers and two flat layers.
(iii) The shackle is detachable.
(iv) The whole shackle is made of steel having plastic cover.
b)Front View:
(i) There is a rectangular panel having two side panels.
(ii) This is a raised portion on the lock.
(iii) the hole for the lock is the center of the raised rectangular panel.
(iv) There is one-piece bracket holder designed in special manner.
Back View
(i) The back view contains a chrome plain sheet, which has been coated with black colour. It can be used as plain sheet and/or coated with different colours.
And salient features of Pin Locks which is registered are as under:-
(i) The front portion is having a Knob on the left hand side, holes in the center for operation/use of the keys.
(ii) The back portion is having a long pin on the left hand side and a knob hand side and both are made of steel. In the center of back portion of the locks there are two holes.
3. It was contended before me that by virtue of extensive user the plaintiff has acquired exclusive right to the adoption and use of distinctive designs. It was contended by Mr. Bhardwaj that defendants have adopted the identical features and copied the same deceptively. It was contended by the learned counsel for the plaintiffs that adoption and application of the identical or deceptively similar designs by defendants amounts to an act of piracy within the meaning of Section 22 of the Designs Act, 2000 and the defendants cannot have any justification to adopt the plaintiffs' distinctive designs and cannot be allowed to earn profits in illegal manner. It was also contended that defendants were guilty of passing off their goods by giving an impression that they are the seller of the genuine goods manufactured by the plaintiffs. On 10th July, 2001 this Court granted an ex parte interim injunction in favor of the plaintiffs-applicants. Subsequently on 25th July, 2001 an application for vacation of the stay was filed by the defendants. In sum and substance the case of the applicants is that the plaintiffs design of the locks, its shape, configuration, pattern and composition of lines is a design which has been registered by the Controller of design, who has granted a certificate of registration in terms of Section 9 of the Designs Act.
4. It was contended before me that once certificate of registration has been granted, there is a prima facie evidence in favor of confirming the injunction and that would be the effect of Sub-section 4 of Section 10 read with Section 38 of the Designs Act with regard to evidential value of such certificate of registration. Mr. Bhardwaj contended that cancellation of grant of registration can only be done if the defendants had challenged the same on the ground as mentioned in Section 19 of the Act. It was then contended that in the absence of any application for cancellation not filed till the filing of the suit by the plaintiffs, the defendants had no right to continue with the piracy of the design in terms of Section 22 of the Act and in terms of Sub-section 2 (b) of Section 22 the non-applicants/defendants had to be restrained by grant of an injunction.
5. It was contended by Mr. Bhardwaj that arguments of the defendants that in pursuance to Sub-section 3 of Section 22 the ground on which registration of a design may be cancelled under Section 19 shall not be available as a ground of defense to the defendants, Mr. Bhardwaj has a cited a Full Bench decision of this Court in Metro Plastic Industries (Regd.) v. Galaxy Footwear New Delhi 2000 PTC 1 (FB) in which it is held:-
'In our view, these are matters where no hard and fast rule can be laid down Section 53 creates a right in a registered owner. In the absence of an application for cancellation of the design such a right can be enforced and no defense can be taken based on a ground of cancellation. But once an Application for cancellation has been made then it would not be open for the Court, trying the Suit under Section 53, to turn a blind eye to the pendency of such Application......'
6. It was further contended that after the decision of the Full Bench in Metro Plastic Industries (Regd.)'s case (supra) it is no more rest integra that grounds available under Section 19 of the Act will not be available to a defendant if he has not filed an application for cancellation of the registration of the design. On the basis of aforesaid arguments, it was contended by Mr. Bhardwaj that the injunction granted ex parte be confirmed.
7. On the other hand, Mr. V.P. Singh, learned counsel appearing for the defendant No. 3, contended that the new Designs Act was enacted in the year 2000 and there is no propriety right in a good or article which is functional. Mr. Singh took great pains in explaining that the design of locks was previously published in different magazines. He stated that documents have been filed by the defendants to show that the design of locks in which the applicants are canvassing propriety right, was published in 1995. The said documents are at page-6 of the paper book, same kind of locks were published by Yih Ter Enterprise Co. Ltd. of Taiwan, page-7 of the paper book, and by Chen Lie Enterprise Co. Ltd. of Taiwan, page-8 of the paper book, and by Comtrex Corporation of Taiwan, page-11, TTG (Taiwan Transportation Equipment Guide) as well as by the plaintiffs and other companies in 1997 as per documents filed by the defendants, it was contended that on account of prior publication the case of infringement in respect of said locks cannot be agitated by the plaintiffs. He has also contended that there could be no monopoly in respect of matters relating to design as the shape or a particular kind of belly of locks and curd top was pure and simple functional features and no novelty could be claimed in respect of the same. Mr. Singh contended that there cannot be any propriety right in goods of utility and functional nature, even otherwise there is no novelty in the goods of the plaintiffs and injunction order be vacated. It was next contended by the counsel for the defendant No. 3 that locks in question were originally manufactured by a company called 'Multi Lock' which was an Israeli company and, thereforee, on that score also the plaintiffs cannot claim any monopoly in the design of locks. Mr. Singh contended that the provisions of Sub-section 3 of Section 22 of the Designs Act, 2000 was incorporated in the year 2000 which was not in existence under Section 53 of the Designs Act, 1911. What was contended before me by Mr. Singh is that legislature in its wisdom has incorporated Sub-section 3 of Section 22 by which the defendant is entitled to avail every ground as mentioned in Section 19 as a ground of defense and, thereforee, if the defendants, prima facie, had shown by the documents that the design has been previously published in any other country prior to the date of registration, no injunction can be granted.
8. Mr. Singh contended that this Court in Prayag Chand Agarwal v. Mayur Plastics Industries : 72(1998)DLT1 has held:-
'.....But in view of the facts that the broad pattern of the two soles seems to be the same and the entire sole of both the shoes have same patterns, cuts, rigid roofs and lines pattern and in view of the fact that law is well settled that when serious disputed question on various grounds such as prior publication, lack of originality, trade variation is raised in a particular case, no injunction should be granted. Taking into consideration that the impugned design is registered in favor of the plaintiff in the year 1995 and the same having been shown to be in use from 1988 onwards i.e. prior to the registration of plaintiff's design and plaintiff has prima facie failed to establish that he was the originator of the design, it is difficult to injunct the defendant.'
9. Counsel for the defendant No. 3 also cited Vacuum Flask Ltd. and Anr. v. Eagle Flask Pvt. Ltd. 64 (1996) DLT 103. In support of his arguments that when a design is published prior in time the plaintiffs cannot claim any injunction, learned counsel for the defendant No. 3 has cited Wimco Ltd. v. Meena Match Industries, Sivakasi and Ors. : AIR1983Delhi537 . Learned counsel for the defendant No. 3 has also cited Niky Tasha India (P) Ltd. v. Faridabad Gas Gadgets (P) Ltd. AIR 1985 Delhi 136 in which it is held:-
'It is well settled, both in India and in England, that an interlocutory injunction will not normally be granted where damages will provide an adequate remedy should the claim succeed. Furthermore, the Court will not grant an interlocutory injunction unless satisfied that there is a real probability of the plaintiff succeeding on the trial of the suit. Where the design is of a recent date no injunction should be granted. More so, when there is a serious question as to the validity of the design to be tried in the suit and an application for cancellation has been made. Where a person is entered as a proprietor of a registered design, that is under the Act no conclusive proof that the plaintiff is the proprietor of the design, but only a prima facie evidence that he is the proprietor. The plaintiff has this advantage that if no evidence at all is given then the certificate is sufficient evidence that he is the proprietor. In such a case every ground on which a registered design may be cancelled under the Act should be available by way of defense to a suit for infringement. It will be odd to hold that on the strength of a recent registered design, the plaintiff can claim an absolute right to restrain everyone else from carrying on his business unless and until the registered design of the plaintiff is cancelled in appropriate proceedings by a competent court of law.'
10. To somewhat similar effect B.K. Plastic Industries v. Jayantilal Kalidas Savani : AIR1972Cal339 is also cited by the counsel for the defendant No. 3 in which it is held:-
'.....Even if a design which is original but is published earlier than the date of registration the registration may be revoked.....'
11. He has also cited Prem Singh v. Ceeam Auto Industries : AIR1990Delhi233 Texla Metals & Plastics Pvt. Ltd. v. Anil K. Bhasin and Ors. 2001 PTC 146 (Del). Another case was cited by the counsel for defendant No. 1 Monsanto Company v. Coramandal India Products (P) Ltd. : [1986]1SCR120 .
12. During the course of arguments which started on 21st September, 2001 a statement was made by Mr. V.P. Singh, may be to overcome the difficulty created by the Full Bench judgment of this Court in Metro Plastic Industries (Regd.)'s case (supra) that the defendants have also filed an application for cancellation before the Controller on 25th September, 2001. The arguments concluded on 27th September, 2001.
13. Mr. V.P. Singh further contended that the defense available pursuant to Sub-section 3 of Section 22 read with grounds available for cancellation of registration under Section 19 of the Act be read together and if the same are available to the defendants, injunction as prayed for by the plaintiffs cannot be granted. Mr. Singh contended that Section 107 of the Patents Act is parameter with Section 22(3) of Designs Act and Section 64 of the Patents Act is parameter with Section 19 of the Designs Act. A Division Bench of this Court had the occasion to deal with Section 107 read with Section 64 of the Patents Act and if both are read in conjunction, the plaintiffs would not be entitled for injunction. In Franz Xaver Huemer v. New Yash Engineers : AIR1997Delhi79 a Division Bench of this Court held:-
'The defendant has taken out a large number of other pleas to bring the case under Section 64 of the Act which read with Section 107, could be grounds of defense irrespective of whether the defendant has applied for revocation or not.'
14. On the basis of the aforesaid arguments learned counsel for the defendants has argued that the injunction be vacated.
15. I have given my careful consideration to the arguments advanced by the learned counsel appearing for the parties. While deciding the controversy between the parties this Court has to prima facie see as to whether the plaintiffs are originator of the said design of locks or plaintiff itself is a pirator of other manufacturing companies who are manufacturing similar type of locks. The design may be applied to any kind of article but some novelty or originality must exist in a substantial degree otherwise it would paralyse the industry and make the registration of a design a trap for honest traders. Court has also to see whether the design of the plaintiffs was original or the design was prior published. In event of registration of design of recent date, whether injunction should continue on account of registration of design when there is a serious dispute about prior publication of the design. The law is well settled that when serious disputed questions on various grounds such as prior publication, lack of originality, trade variation is used in a particular case, injunction will not follow as a matter of routine. From the perusal of documents on record in order to determine, prima facie, whether the design is new or original, no substantial difference is visible from the design which was published by other companies in the year 1995, 1997 and 1998 and the design of locks of the plaintiffs-applicants.
16. Before dealing with the merit of the controversy it has to be kept in mind that both are locking devices. Locks are manufactured to be fixed on 'Gear Sticks' in the car. Whether there is any novelty in the locks manufactured by the plaintiffs, from the documents filed by the defendants on record, prima facie, the applicants can neither claim originality nor novelty in their design of locks. The locks as manufactured by the applicants have been manufactured by certain other Taiwanese companies and Korean companies, whose advertisements have been published, same has been filed on record by defendants, these documents belong to the period 1995, 1997 and 1998. The locks so advertised in the journal are similar to the locks manufactured by the plaintiffs-applicants, thereforee, the plaintiffs cannot claim any novelty in the locks. The concept of novelty or originality was considered in Western Engineering Company v. America Lock Company (1973) II Delhi 178 in which it is held:-
'A large body of case law has been built up during the years, to explain what is meant by 'novelty and originality'. As the English law on the subject is almost the same as in India, the English cases are also a great help in determining the principles to be applied. In fact there are very few Indian decisions on the subject. Generally, the test for novelty and originality is dependent on determining the type of mental activity involved in conceiving the design in question. If the design is original, then the designer must have conceived some thing new; if the design is a mere trade variation of a previous design then the designer could be said to have merely kept an existing design in view and made some changes in its. Taking the instant case, it is clear that the previously existing design was almost exactly the same as the design of M/s. Western Engineering Company as well as that of M/s. America Lock Company in some respects. The only modification made in the existing design was to change the position of the lick. Instead of the lock being fixed sideways into the projection so that the lock could be operated with a key inserted from the front instead of the side. The lock itself being in the form of protruding cylinder. There is, thereforee, some original mental application involved in conceiving the new design. The designer must have thought that the lock could be operated, perhaps more conveniently by having the key-hole in the front instead of the side. To that extent there is some novelty and originality in the design of M/s. Western Engineering Company. It is true, however, that this novelty can also be treated as being merely a variation in the existing design.'
17. In Philips v. Harbo Rubber Co. (1928) 37 R.P.C. 233 it was held:-
'The introduction of ordinary trade variants into an old Design cannot make it new or original. For example, if it is common practice to have or not to have spikes in the soles of running shoes, a man does not make a new and original Design out of an old type of running shoes by putting spikes into the sole. The working world, as well as the trade world, is entitled at its will to take, in all cases, its choice of ordinary trade variants for use in any particular instance, and no patent and no registration of a Design can prevent an ordinary workman from using or not using trade knowledge of this kind.'
18. A person looking at one lock than looking at the other lock cannot be deceived. Both locks bear the name on the locks and the cases of these types have to be decided taking into consideration when a person looking at plaintiffs' lock and if at that time he is offered defendants' lock, whether he would take the lock of the defendants as that of the plaintiffs? Halbury's Laws of England, Volume 38 on the question of infringement, appearing at page-675 in para-1116 state:-
'1116. Design not substantially different from registered design.
The question whether a design which is alleged to infringe a registered design is or is not an infringement must be determined by the eye alone. The court has to decide only whether the alleged infringement has the same shape or pattern and must eliminate the question of the identity of function, since another design may have parts fulfillingthe same functions without being an infringement. Small differences in detail do not necessarily present, infringement, but generally speaking, if under normal conditions of user the eye would not confuse the two designs, there is no infringement. If there is some outstanding feature in the registered design which is not reproduced, this would generally negative infringement. It is not an actionable imitation merely to take the idea suggested by the design unless it works out in the way protected by the registration. Where an article may be readily manipulated into a position similar to the illustration of a design registration, there will be infringement.'
19. The applicants are manufacturing the lock under the names 'Onelus' whereas defendants are manufacturing the locks under the name of 'Autocops'. It was the case of the defendants that in Taiwan itself there were 50 manufactures of locks conforming to the design as has been manufactured by the principles of the plaintiffs-applicants as that kind of lock was first time manufactured by 'Multi Lock Limited' based in Israel about 15 years back. Even otherwise defendants have disputed that the locks of the defendants are similar in its configuration and shape in the following manner:-
GEAR LOCK - SHACKLE TYPE ONELUS AUTOCOPS1. Shackle Material is normal Shackle material istype. is Hardened.2. Key-hole is protected from Key-hole is protecteddust by a shutter cover. from dust by normallid cover.3. For holding the shackle Autocops has two in unlocked position. plastic hooks to holdOnelus has designed a the shackle, withoutspecial metal balls with any spring action.spring action to hold the shackle.4. The shutter knob has radium Not applicable in thisfor easy access of key in case.dark.5. Plastic casing is of Plastic casing is ofdifferent quality and different quality.on different platform of design.6. Replacement key/customer On different platformsidentification cards aredesigned on differentplatforms.7. Packaging is in slots of Normal packagingof thermocol. without any thermocol.8. No mention of the logo Autocop logo embossedon shackle. on the plastic portionof the shackle.9. Block casing inside the Casing is chromeplastic cover. plated with hardeningand Autocop logoembossed at the bottom10. Key design is on differentplatform.11. 7-cylinder key. 10 cylinder key.12. One spring to throw out Two springs to throwshackle. out the shackle.Gear shift lock pin Gear shift pin type ONELUS type AUTOCOP. 1. Pin : cylindrical Pin : truncatedcylindrical2. Body : black powder Body : chrome platedcoated, looks and looks and betterquality are different. quality.3. Pin : moulded plastic Pin head : single piecehead. chrome plated.4. Key : seven cylinder Key : ten cylinder5. Pin material : material Pin material : hardenedmild steel stainless steel6. Key latch : zinc plated Key latch : hardenedsteel molybdenium.7. Second pin : cylindrical Second pin : truncatedpin. cylindrical. It doesnot move while it islocked. Chances ofbreakage of the secondpin are minimum.8. Body : welded steel body. Body : stainless steelhardened body.9. Touch feel look is Touch feel looks are different. different.
20. Word 'published' used in Section 19 or under Section 4 of the Designs Act has not been defined under the Designs Act, 2000. It is published if a design is no longer a secret. There is publication if the design has been disclosed to the public or public has been put in possession of the design. Russell-Clarke in Copyright in Industrial Design, 4th Edition, pages 41-42 says that:-
'.....It is sufficient, and there will be publication if the knowledge was either--
(1) Available to members of the public; or
(2) Actually in fact shown and disclosed to some individual member of the public who was under no obligation to keep it secret.
It is not necessary design should have been actually used. There will just as much be publication if it is shown that it was known to the public without ever having been actually put into use. Thus, publication may be of two types:
(a) Publication in prior documents,
(b) Publication by prior user.'
21. The legislature in its wisdom by enacting Designs Act, 2000 does not want to stop the progress in industrial products as that would amount to pin down the competitors and in the process the technology would be blocked, same would result in clogging the economic growth. I feel substance in the arguments of the defendants that locks manufactured by the applicants are functional in nature and these are items of common use and the same lacks novelty are originality apart from being prior published.
22. Now coming to the another interesting argument advanced by the learned counsel for the parties with regard to availability of grounds as mentioned in Section 19 of the Designs Act, 2000 in terms of Section 22(3) of the Act. Section 19 and Section 22 of the Act are reproduced below:-
19. Cancellation of registration.-- (1) any person interest 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:-
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country prior to the date of registration; or
(c) that the design is not a new of original design; or
(d) that the design is not registerable under this Act; or
(e) that it is not a design as defined under Clause (d) of Section 2.
(2) An appeal shall lie from any order of the Controller under this section to the High Court, and the Controller may at any time refer any such petition to the High Court, and the High Court shall decide any petition so referred.'
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 limitation 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'
23. It was contended by Mr. Bhardwaj that in view of conflicting opinion in two Division Benches of this Court, a Full Bench judgment in Metro Plastic Industries (Regd.)'s case (supra) set at rest the controversy that when no application for cancellation has been filed before the Controller, the same cannot be urged as a ground of defense.
24. It was contended by Mr. Bhardwaj that if there is no evidence at all before the Court at this stage then certificate is sufficient evidence that the applicants are the proprietor of the design and injunction must follow. In Metro Plastic Industries (Regd.) (supra), Full Bench held:--
'......Section 53 did not contemplate an absolute right in the owner to prevent all other persons from infringing that design under all circumstances....'
25. It was further held in Metro Plastic Industries (Regd.)'s case (supra):--
'At this stage it must be clarified that we are not holding that the rights conferred by Section 53 can be defeated merely by some defense being taken. In the absence of an application under Section 51A having been filed, such a defense would not be available. It is the filing of an Application under Section 51A which brings into cloud the registration of the design. Thus pending such an Application Court cannot ignore the grounds taken therein. This is because both Sections 51A and 53 have to be read harmoniously and in a manner that the neither is rendered nugatory or ineffective.
Therefore, in our view, neither the extreme view taken in Niky Tasha's case or in Rotomac Pen's case are correct.
In our view, these are matters where no hard and fast rule can be laid down Section 53 creates a right in a registered owner. In the absence of an application for cancellation of the design such a right can be enforced and no defense can be taken based on a ground of cancellation. But once an Application for cancellation has been made then it would not be open for the Court, trying the Suit under Section 53, to turn a blind eye to the pendency of such Application.....'
26. From the Full Bench decision in Metro Plastic Industries (Regd.)'s case (supra) it was urged before me by Mr. Bhardwaj that as the defendants have not filed an application under Section 19 of the act before the Controller of Designs in view of Full Bench decision, the grounds mentioned in Section 19 of the Act cannot be taken in defense by the defendants.
27. I am afraid in view of new Designs Act, 2000 the Full Bench decision in Metro Plastic Industries (Regd.)'s case (supra) will not be of any held to the applicants-plaintiffs. Under the Designs Act, 1911, Section 53 did not have any provision like Sub-section (3) of Section 22, thereforee, when the Full Bench of this Court was dealing with the provisions of Designs Act under the Act of 1911, it was in that context that the Full Bench held that if there was no application for cancellation of design made, no defense can be taken based on grounds as available in the grounds for cancellation of registration of a design. As far as present Act is concerned, the legislature in its wisdom by incorporating Sub-section (3) of Section 2 of the Act has made every ground, on which registration of a design may be cancelled, available as a ground of defense. The ground on which cancellation can be sought of registration are enumerated in Section 19 of the Act. It may be noticed that the design is a conception, suggestion or idea of a shape and not an article. If is has already been anticipated, it is not new or original. If it has been pre-published, it cannot claim protection as publication before registration defeats the proprietor's rights to protection under the Act.
28. Looking it from any angle from the documents placed on record the design has been pre-published and, thereforee, it cannot claim protection. In view of the fact that registration of design is of recent date, the design having been published earlier, the ground of defense as mentioned in Section 19 can be taken by the defendants pursuant to Sub-section (3) of Section 22 of the Designs Act, 2000, thereforee, no injunction can be granted as there is a serious dispute as to the validity of the design to be tried in the suit. Before closing the arguments affidavit has been filed by the defendants that application for cancellation has already been made by the defendants before the appropriate authority. The applicants are not entitled to the injunction. I, thereforee, vacate the injunction order granted earlier. The order dated 10th July, 2001 stands vacated. The application of the plaintiff is dismissed. Nothing said earlier would be an expression of opinion on the merit of the case. However, the defendants are directed to keep an account of the sale of the impugned product. The defendant shall submit the statement after every six months in Court. The defendants shall also give an undertaking within six weeks that they will pay the damages to the plaintiffs if ultimately plaintiffs succeed in the suit.
29. With these observations, IA. no. 5891/2001, is dismissed and IA. nos. 6577/2001 are allowed.
30. Applications are disposed of accordingly.
Suit No. 869/1992
31. List this matter in Court for framing of issues on 03rd April, 2002.