N. Kumar, J.@mdashThis appeal is preferred by the defendant challenging the order of temporary injunction granted by the learned Single Judge rejecting the request for vacating an ex-parte order of temporary injunction granted on 25.11.2011 passed on I.A.I in O.S. No. 8252/2011.
2. For the purpose of convenience, the parties are referred to as they are referred to in the original suit which was primarily numbered as O.S. No. 1/2012.
3. The plaintiff - M/s. Whirlpool of India Ltd., is a company manufacturing and selling of home appliances including refrigerators in India. Defendant is also a company engaged in the business of manufacturing and selling of home appliances including the refrigerators. The plaintiff company is a subsidiary of Whirlpool Corporation -USA. The plaintiff owned registered patents and designs and other intellectual property rights in respect of various products. It is its case that, it has created a huge domestic and overseas market for its products due to its quality, high standard of its products and superior level of customer services. One of the unique and special products designed by the plaintiff is a household refrigerator with bottom drawer, and the fascias, base of the bottom drawer as well as the bottom drawer of such refrigerator. The product - ''Refrigerator with Bottom Drawer'', is an eye appealing and well appreciated by the customers. The design of this product is original and new. The unique concept gives altogether a different look to the refrigerator. Prior to the innovative design of the plaintiff-company, a refrigerator used to be mounted on a normal/simple base stand and with this, there always appeared a marked gap/space between the bottom of the refrigerator and the floor upon which the refrigerator was kept. With the innovative design of the plaintiff-company, the refrigerator appears to have a distinct eye appealing look and in addition to other characteristics, the said gap/space as visible in case of a customary refrigerator is totally absent. The plaintiff-company has specially conceived and created the designs for the base of the bottom, bottom drawers and fascia of the bottom drawer together with the ''refrigerator with bottom drawer'' which once applied upon a refrigerator, completely changes the over all look of the refrigerator.
4. The refrigerator with bottom drawer, the novel and original design of this refrigerator with bottom drawer is protected under Design Registration No. 198386 granted on 2.2.2005 in Class 15-07. In addition to the original and novel design in respect of ''refrigerator with bottom drawer'', the plaintiff-company has also specially designed a base for the bottom drawer for such refrigerator. Additionally unique and novel designs were created for the bottom drawer and fascia of the bottom drawer. The plaintiff-company has been granted 6 different design registrations including the one in respect of ''refrigerator with bottom drawer''. All these registrations are valid and subsisting as per the Designs Act, 2000.
5. By virtue of the aforesaid design registrations, the plaintiff-company alone is entitled to manufacture and sale of ''refrigerator with bottom drawer'' as well as Bottom Drawers, Fascias of Bottom Drawers and Base for Bottom Drawer conforming to the aforesaid designs. The plaintiff-company has been manufacturing, marketing and selling various models of refrigerators with bottom drawer manufactured in conformity with the aforesaid designs. The bottom drawer of the said produce can be used for keeping vegetables which do not require refrigeration like potatoes, onion, etc.
6. The plaintiff filed the suit primarily for the infringements of its design registration No. 198386 in respect of refrigerator with bottom drawer. The products of the defendant are clear imitation and copy of the said registration No. 198386 of the plaintiff-company. A bare look at the impugned products of the defendant would further show that the same also infringes the other designs of the plaintiff-company. The design for the base of the bottom drawer, bottom drawer and fascia of the bottom drawer are also obvious and fraudulent imitation of the aforesaid designs of the plaintiff.
7. The refrigerator with bottom drawer is one of the most sought after products in India. They have set out in the pleadings the figures of annual sales and advertisement expenses incurred for the period from 2007 to 2010. Thereafter, it is pleaded that in and about December, 2010, plaintiff came across certain refrigerators with bottom drawers sold in the market by the defendant which were similar to that produced by the plaintiff. It conducted investigations which revealed that the defendant has been manufacturing and offering for sale of various models of refrigerator with bottom drawer which are similar and identical to the plaintiffs registration design No. 198386. After further investigation, in the month of September-October, 2011, they found that various models of the defendant-company in respect of refrigerator with bottom drawer are being offered for sale in Bengaluru. These products are widely advertised, offered for sale and are sold in Bengaluru as evidenced also from the advisement appearing in the Website of the defendant. The sale of the above products of the defendant infringes not only the design registration No. 198386 but also other five registered designs of the plaintiff-company. The plaintiff in the month of November, 2011 purchased the refrigerator with bottom drawer of the defendant.
8. On closure examination, the plaintiff was shocked to find that the said products of the defendant are a slavish copy of the plaintiffs aforesaid registered designs. The refrigerator with bottom drawer manufactured and offered for sale by the defendant, fully and completely embodies the design No. 198386 registered by the plaintiff. The design has been copied to its minutest detail. It has produced a chart showing the products in comparison. Therefore, it preferred a suit for a permanent injunction restraining the defendant from manufacturing, selling, distributing, offering for sale, advertising, exporting directly or indirectly dealing with the refrigerator with bottom drawer of various models manufactured by the defendant and for other consequential reliefs.
9. On an application filed under Order XXXIX Rules 1 and 2 r/w Section 151 of CPC, an ex-parte ad-interim order of temporary injunction was granted. After service of notice, the defendant entered appearance, filed its written statement contesting the claim and denying the allegations made in the plaint. It contended that the plaintiff has come to Court with unclean hands. Then it referred to original suit -O.S. No. 2377/2011 pending before the Delhi High Court filed by the plaintiff against the L.G. Electronic India Pvt. Ltd., where no interim order was granted. The defendant in the said suit - L.G. Electronics not only challenged the validity of the plaintiffs designs registration but also raised various other defences attacking maintainability of the said suit on the ground of concealment of patent for the same design, the plaintiff had applied for, which has not yet been granted. During the pendency of the suit, as the pendency of the patent application having been concealed from this Court, the defendant want the suit to be dismissed on that short ground. The plaintiff is also accused of forum shopping. It contended that refrigerators are conventionally, for the past several decades always kept on a wooden or plastic pedestal in order to provide the refrigerators some elevation for the ease of the consumer to keep and take out items of storage without bending much.
10. The L.G. Electronics Inc., in the year 2003, conceived of a stand for supporting objects at a required height in which things could be kept. Accordingly, the L.G. Electronics developed a pedestal drawer for the purpose of storage beneath washing machines. L.G. Electronics has obtained patent registration in respect of such pedestal drawers in the case of washing machines. The registration of designs obtained by the plaintiff is ex-facie invalid and liable to be cancelled since the same lacks novelty. The grant of registration certificate for designs per se is not prima facie proof of its validity in law. In view of the credible challenge to the validity, the plaintiff is not entitled to any order of interim injunction.
11. It has set out in the written statement the differences between its refrigerator and the plaintiffs refrigerator. The similarity is between the two drawers, if any, pertain to the functional features which are also set out in detail. It has also set out in details the differences between the plaintiffs and defendant''s drawer with diagrams. It has also pointed the differences between the plaintiffs and defendant''s products with reference to other registrations also.
12. It has pleaded delay and laches on the part of the plaintiff in approaching the Court. The defendant is a 4,500 crore company having goodwill and reputation in the market and is known for innovation and has come out with products such as Bazooka TV, Eye care in TV, 3D TV, Internet TV, etc. Similarly it has also come out with frost free technology refrigerators, introduction of toughened glass shelves, deodorizer, LED lamps instead of vacuum bulb etc. The defendant is also OEM (Original Equipment Manufacturer) for companies such as Toshiba Japan, Matsushita Electric Co., Japan, Panasonic and many other multi-national companies for a long time and has earned various awards which are set out in the written statement. It also sought for cancellation of registration in favour of the plaintiff.
13. In view of Section 22(4) of the Designs Act, 2000 (for short hereinafter referred to as ''the Act'') as the defendant sought for cancellation of the registration of designs under Section 19 of the Act, the suit which was filed in the City Civil Court, Bengaluru was transferred to this Court. That is how the suit which was numbered as O.S. No. 8252/2011 before the City Civil Court came to be re-numbered as O.S. 1/2012 in the Court. In the High Court, the defendant filed an application for vacating the order of temporary injunction granted by the trial Court.
14. The learned Single Judge after considering the rival contentions and after taking note of the various judgments on which reliance is placed, was of the view that the product of the plaintiff and the product of the defendant appears to be similar in so far as external appearance is concerned and also in so far as the shape and configuration of the tray and the other parts of the drawer is concerned. It is further observed that the trays in both products are made in plastic and colour is white. On a careful consideration and examination of the entire product namely the bottom tray, it appears that both the products are similar to each other. Further it is observed that the plaintiff has registered the designs in the year 2005 and no application has been filed for the cancellation of the said designs on the ground of prior use and prior invention. It is the case of the defendant that it has come to the market in the year 2010 and therefore, the learned Single Judge was of the opinion that the plaintiff has a right over the defendant so far as novelty of the product itself is concerned. Therefore, refused to vacate the temporary injunction granted earlier. Aggrieved by the said order, this appeal is filed.
15. Sri K.G. Raghavan, learned Senior Counsel appearing for the defendant submits that this concept of drawer in the bottom of the refrigerator was well known even as far back as in the year 1930. In support of his contention, he relies on several patent applications filed in Europe and America with sketches. Therefore, he submits that designs for which the plaintiff has obtained registration is not new or original. It has been disclosed to the public and therefore, he submits that the plaintiff is not entitled to an order of temporary injunction which has been granted in its favour. In fact both the refrigerators with bottom drawers are brought to the Court for inspection by the Court, which we have done in the open Court. Subsequently, the bottom drawers are taken out from the refrigerators and it is pointed out that there is no novelty and they are not same or identical and therefore, he submits that as seen from any angle, it cannot be said that they are similar to the eye. He also submits that similar suit filed in Delhi High Court against L.G. Electronics, the plaintiffs request for temporary injunction was refused. He also submits that a similar suit filed against the Samsung Company in Bengaluru seeking temporary injunction was refused after contest. In the circumstances, the learned Single Judge without properly appreciating the issues involved in the case has proceeded to pass an order on the sole consideration that the product of the plaintiff and the defendant appears to be same without going to the question of originality and novelty involved in those products. Therefore, he submits a case for interference is made out.
16. Sri Srinivas Raghavan, learned Counsel for the plaintiff submitted that in the year 1930, the patents obtained for a refrigerator with bottom drawer, there was no pedestal involved. The present bottom drawer is in between the refrigerator and the pedestal. Though the idea was there even in the year 1930, but the concept which we find in the plaintiffs product was never thought of. It is novel and emanates from the originality of the plaintiff. It is only after the plaintiff brought this product to the market and because of its appeal to the eye, the customers opted for such product. The defendant, five years thereafter, has come up with this product. Even though there may be some minute differences, what is to be seen is whether substantially they look alike. Seen from any angle as they substantially look alike as held by the learned Single Judge, who was justified in granting an order of temporary injunction and no case for interference is made out. He further submits that in view of the definition of ''Design'' in the Act, what the Court has to take into consideration is an eye appeal and whether the said concept was new and original in so far as the plaintiff is concerned. Seen from that angle, a case for grant of injunction is made out.
17. In the light of the aforesaid submissions and the material on record, the point that arises for our consideration is:
"Whether the defendant/appellant has made out a case for interference of the order of temporary injunction granted?"
18. The Apex Court in the case of
19. Keeping in mind the object of the Act, when we look at the facts of this case, it is clear that even in the year 1930, there were refrigerators with bottom drawer which are patented both in America and Europe. This bottom drawer is a portion where no refrigeration takes place. In fact it is outside the refrigerator. This portion is used for storing onions, potatoes and other vegetables which do not require refrigeration. Of course in the year 1930 models, it is a part of a refrigerator. In the plaintiffs product, a refrigerator is mounted on a pedestal with a bottom drawer. The primary infringement confined of is in its bottom drawer. Though the plaintiff has a registration for the designs even in respect of pedestal apart from refrigerator, the argument is though this bottom drawer was known even in the year 1930, where it was a part of a refrigerator; the plaintiffs product is not a part of a refrigerator. It is in between the pedestal and the refrigerator and this is a novel aspect of it originated from the plaintiff itself. This gives an appeal to the eye and because of that appeal, the plaintiffs products have recorded remarkable sales as is clear from the figures set out in the plaint. Therefore, it is necessary for us to find out whether there is any originality or novelty in the design in respect of which the plaintiff has obtained registration.
20. In fact, learned Counsel for the parties have referred to various judgments of Indian Courts and English Courts. In fact, this Court had an occasion to consider almost all those cases in the M/S. METAL IMPACTS PVT. LTD v. M/S. IMPACT METALS PVT. LTD in O.S. Nos. 1 and 2/2007 D.D. 16th December, 2011 where it has been held as under:
"Legal Concepts:
DESIGN
13. The concept of design is that a particular figure conceived by its designer in his mind and it is reproduced in some identifiable manner and it is sought to be applied to an article. Design means, therefore a conception or suggestion or idea of a shape or of a picture or of a device or of some arrangement which can be applied to an article by some manual, mechanical or chemical means. A design is necessarily part and parcel of the article manufactured while a trade mark is not necessarily so. Therefore, both the things are required to go together, i.e., the design and the design which is to be applied to an article. The idea is that the design has to be registered which is sought to be reproduced on any article. Registration of design is not a defence if the impugned design has been published by others prior to date of registration.
NOVELTY
14. Novelty so as to sustain a patent, the thing must not have been known to any one before. Mere novelty of form is not sufficient. Novelty involves the presence of some element or new position of an old element in combination, different from anything found in any prior structure. If the same shape or pattern, or one substantially similar, has previously been thought of in connection with any article of manufacture and the idea published, or registered, then the design will be deprived of its novelty. Protection will be given to any design which is new or original. ''New'' means different from what has gone before and that ''original'' has the same meaning as in the Copyright Act, i.e., originating from the author. ''New'' referred to cases where the shape or pattern was completely new in itself, whilst ''original referred to cases where, though old in itself, it was new in its application to the article in question. The expression that ''new'' or ''original'' has to be construed in the context where this design has ever been reproduced by any other Company earlier. It is only the new and original design which is new and which has not been available in the country or has not been previously registered or has not been published in India or in any other country prior to the date of registration shall be protected for a period of ten years. It is in the nature of protection of the intellectual property right.
ORIGINAL
15. The word ''original'' refers to design which no previous designer had created for any purpose and ''new'' as referring to a design which was not in this sense original but was newly and for the first time applied to the particular kind of article with reference not to the classification in the third schedule of the Designs Rules 1908 but to the kind of article having regard to its general character and use. The word ''original'' contemplated that the person had originated something that by the exercise of intellectual activity he has started an idea which had not occurred to anyone before, that a particular pattern or shape or ornament may be rendered applicable to the particular article to which he suggests that it shall be applied. "New or original" involve the idea of novelty either in the pattern, shape or ornament itself or in the way in which an old pattern, shape, or ornament is to be applied to some special subject matter. There must be the exercise of intellectual activity so as to originate, that is to say, suggest for the first time, something which had not occurred to anyone before as to applying, by some manual, mechanical, or chemical means, some pattern, shape, or ornament to some special subject matter to which it had not been applied before.
16. Generally, the test for integrity 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 something new. If the design is a mere trade variation of a previous design, then the designer could be said to have merely keep an existing design in view and made some changes in its. The introduction of ordinary trade variants into an old design cannot make it new or original. The working world, as well as the trade world, is entitled at its will to take, in all cases, its choice or 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.
It is in the background of these statutory provisions, legal concepts and judicial pronouncements, we have to answer the issues which are framed in the suit."
21. Therefore it is clear that ''Design'' means a conception or suggestion or idea of a shape or of a picture or of a device or of some arrangement which can be applied to an article by some manual, mechanical or chemical means. ''Novelty'' involves the presence of some element or new position of an old element in combination, different from anything found in any prior structure. If the same shape or pattern, or one substantially similar, has previously been thought of in connection with any article of manufacture and the idea published, or registered, then the design will be deprived of its novelty. Protection will be given to any design which is new or original. ''New'' is different from what has gone before. The word ''original'' refers to designs which no previous designer has created for any purpose. ''New'' is referring to a design which was not in the sense original but was newly and for the first time applied to a particular kind of article with reference not to the classification in the third schedule of the Designs Rules, 1908 but to the kind of article having regard to its general character and use. There must be exercise of intellectual activity so as to originate, that is to say, suggest for the first time, something which had not occurred to anyone before as to applying, by some manual, mechanical or chemical means, some pattern, shape or ornament to some special subject matter to which it had not been applied before. If the design is a mere trade variation of a previous design, then the designer could be said to have been merely keeping an existing design in view and making some changes in it. The introduction of ordinary trade variants into an old design, cannot make it new or original. The working world, as well as the trade world, is entitled to at its will to take, in all cases, its choice or 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.
22. It is in this background, when we analyse the facts of this case, as is clear from the documents produced, the bottom draw in a refrigerator is something which is not unknown. Even in the year 1930, the patent registrations have been applied for and obtained. Subsequently as and when improvements were made, applications are filed for registration under the then existing Patent Act both in America and in England. This bottom drawer though is a part of a refrigerator, it is the bottom outside the refrigeration area. No doubt earlier, it was a part of a refrigerator. The plaintiff has conceived of a bottom drawer which is mounted on a pedestal. It has given a shape and an appearance to their refrigerator. Prima facie, it appears to us that it is in the nature of a trade variant. The concept is not new. The purpose sought to be achieved is also not new. We do not see prima facie any originality in this concept. As is clear from the material on record, yet another manufacturer L.G. Electronics who is also in the field of manufacturing refrigerators also has come out with this bottom drawers as a part of the refrigerators. The plaintiff sued them for infringements in the Delhi High Court and it was not successful in getting any order of injunction. In fact it is submitted in the course of arguments that a similar suit filed against the Samsung Company, Bengaluru City Civil Court, which was transferred to this Court, it was unsuccessful in getting an order of temporary injunction. The defendant herein is also one such leading manufacturer of refrigerator. It is not that they commenced this business after registration of the designs by the plaintiff. May be, somewhere in the year 2009 or 2010 they have come out with this bottom drawers in its refrigerators. Though both refrigerator which are brought to the Court, these bottom drawers to a distance appear to be substantially similar, as pointed out by producing the photograph in the written statement, there are number of differences as pointed out therein. Whether the defendant has copied the plaintiffs design? Whether differences in these products is substantial or not? and Whether there is any originality or novelty in the product of the plaintiff? is a matter to be considered after trial. Prima facie, it appears to us, that when this idea was there in the year 1930 itself and prima facie, as we do not see any originality or novelty in the design for which the plaintiff has obtained registration and persons, who are similarly placed as defendant are using this bottom drawers in their refrigerators and injunction is refused against it, we do not find any justification to continue the injunction against the defendant. On one side, intellectual property right is to be protected and on the other hand legitimate business manufacturing activity is also to be respected.
23. The refrigerator, today, is purchased by a customer not only by looking into the features which is available but also they will go by the brand name. These electrical and electronic items are purchased not only by literate persons, even if they are illiterate, today because of the advertisement which are carried out exclusively both in the press as well electronic media, purchasers purchase these products by looking into the brand name not by one or two extra features which may be there in one brand when compared to the other brand. To say, a bottom drawer appeals to a customer and because of that, the customer purchases the refrigerator, may be hard to believe. At any rate that is a matter to be decided after trial by this Court. The learned Single Judge appears to have been carried away by mere appearance without going into the question of novelty, originality and trade variant which factors should have been taken note of as held in the various judgments on which reliance is placed by both the parties.
24. In that view of the matter, the order passed by the learned Single Judge cannot be sustained and hence, we pass the following:
@JUDGMENTTAG-ORDER
"i) Appeal is allowed;
ii) The impugned order is hereby set aside; and
iii) The order of temporary injunction granted is vacated."
25. The suit where intellectual property rights are involved have to be decided expeditiously out of turn. Keeping that in mind, in the High Court, Special Benches are constituted to deal with the intellectual property rights. Infact western world is not very much concerned about the delay in disposal of other matters. They are very much concerned about the litigation involving this intellectual property rights and it is here the Indian Judicial System is under strain. When Special Bench is constituted in this case and the suit is of the year 2012, every effort must be made to dispose of the suit by taking up these cases on day to day basis. We do hope and request the learned Single Judge before whom this case is pending, to take up this matter on day to day basis and decide the dispute in accordance with law and on merits without giving room for any criticism about functioning of our judiciary.
