@JUDGMENTTAG-ORDER
A.K. Shrivastava, J.@mdashThis appeal under Order 43, Rule 1(r), CPC has been filed at the instance of plaintiff whose application for issuance of temporary injunction has been rejected by learned trial Court on 3-7-2012 in Civil Suit No. 2-A/2012. In brief the suit of the plaintiff as borne out from the plaint is that the plaintiff is a Company registered under the Companies Act, 1956 (in short "Companies Act") having its registered office mentioned in para 1 of the plaint. The plaintiff is involved in the business of brewing, marketing and sale of beer, non-alcoholic beverages and mineral water. The plaintiff manufactures and sells the beer in the name and trademark "Haywards 5000" while name of defendant''s Beer is "Black Fort". The plaintiff has registered the bottle of its beer u/s 9(1) of the Designs Act, 2000 (in short "Designs Act") having Registration No. 223479 dated 19-6-2009 registered on 15-1-2000. The beer which defendant manufactures is filled and bottled in its own bottles and apart from it, the defendant also used to purchase the empty bottles from the junk market and after recycling it fills its own product "Black Fort" and sells in the market. Thus, the defendant also used to sale its own product (beer Black Fort) in the empty bottles of the plaintiff bottle whose design has been registered under the Designs Act for which defendant has no right and its action is contrary to the said Act. It is the further case of the plaintiff that defendant used to sell his beer in the empty bottle of plaintiff with a mala fide intention that because the plaintiff is having own reputation in the market and therefore customers may purchase the beer of defendant under the impression that it is the product (beer Haywards 5000) of plaintiff and thus the plaintiff has filed the suit with the aid of section 22 of Designs Act and section 134(1)(c), 135(1) and 135(2) of the Trade Marks Act, 1999 (in short ''Trade Marks Act") for grant of decree of injunction against the defendant against design infringement, passing-off, misrepresentation, his act of unfair competition and also for damages.
2. An application for issuance of temporary injunction has also been filed by the plaintiff-appellant praying that till the suit is decided the defendant be restrained from selling its product beer Black Fort in the bottle of plaintiff whose design has been registered under the Designs Act.
3. The defendant-respondent filed written statement and has also filed reply against the plaintiffs application for issuance of temporary injunction and has pleaded that defendant is not using the plaintiffs name and design and product to sell its product Black Fort beer. The defendant has its own registered trade mark under which its products are sold. Specific denial has been made that defendant has made any unauthorized use of trade mark/name of plaintiff. According to defendant as per practice prevailing in the beer trade, every beer sold in the market is not contained in a freshly manufactured bottle. Used bottles are collected from the open market for recycling and rebottling. According to defendant, the plaintiff and defendant are practitioner of the same system of bottling and sale of beer in recycled bottles. Denial has been made in the written statement that plaintiff''s bottle has a unique visual appeal to beer consumers or the bottles are visually distinguishable from the bottles of other brands. The averments of plaintiff are also denied that consumers identify or associate any unique shape of a bottle to the beer manufactured by the plaintiff. According to the defendant the registration of plaintiff does not bear any distinguishing feather of plaintiff''s alleged design to make the plaintiff alleged bottle unique. It has also been pleaded in the written statement that plaintiff''s claim of certain rights by operation of the Designs Act is subject to restrictions and conditions under the said Act and since the design of plaintiff bottle is not unique or a new design created by or exclusive to the product of plaintiff, the plaintiff has no right to lay any claim under the said Designs Act. In additional pleas it has been pleaded that the defendant-Company was formed in the year 1985-86 and is achieving greater height of success. Further in para 7 of the additional pleas of the written statement it has been pleaded that the plaintiff himself has stated that until recent past the brewers in India sold their beer in a common bottles. According to defendant, used bottles of beer are collected by the junk dealer (Kabadis) from the market and are sold back to different brewers for the purpose of recycling the bottles. The bottles are sold by junk dealers to brewers with or without labels of different companies, who in the process of recycling ensure that all previous labels are carefully removed and labels of respective companies are pasted prominently on the bottle during rebottling process. Thus, the re-filled bottles come out in to the market with the fresh labels of respective companies which are easily distinguishable from each other and are sold in different brands and names of different companies. In para 8 of the additional pleas it has been pleaded by the defendant that the consumers of beer identify the beer of its brand name and brand name is prominently displayed by a label pasted on the face of the bottle and also a paper covering the neck at the cap of the bottle. The consumers do not identify a particular brand of beer by the shape of its bottle especially as the most prominent feature exclusive to the product is the unique brand name pasted during the labelling on the face of the bottle having exclusive use of words, fonts, pattern, colour, design etc. on the label.
4. The defendant-respondent also filed written reply of plaintiffs application for issuance of temporary injunction and by refuting the averments prayed that temporary injunction application be dismissed.
5. Learned trial Court after hearing the parties did not find any case for grant of temporary injunction in favour of plaintiff and eventually dismissed the application by the impugned order.
6. In this manner this appeal has been filed by the plaintiff.
7. Shri Agrawal, learned Senior Counsel for plaintiff-appellant by inviting my attention to section 22 of the Designs Act has submitted that since die design of the bottle of the plaintiff has been registered having Registration No. 223479 and this has not been disputed by the defendant, therefore, the defendant cannot sell its own product (beer Black Fort) in the bottles of plaintiff whose design has been registered. Further by inviting my attention to section 27(2) of the Trade Marks Act and doctrine of passing-off it has been contended by learned Senior Counsel that why the bottles of plaintiff-appellant are being used by defendant in which he is selling his own product (beer Black Fort). Obviously because the buyers may be misled that the beer which they are purchasing is the product of plaintiff or the defendant has some connection or some bondage with the plaintiff and therefore the plaintiff''s bottles are being used by the defendant. In support of his contention, learned Senior Counsel has put emphasis mainly on the decisions
8. Shri Kishore Shrivastava, learned Senior Counsel appearing for defendant-respondent argued in support of the impugned order and has raised an objection that suit itself is not maintainable because as per the plaintiff''s own showing the plaintiff is a company registered under the Companies Act but there is no resolution of the Company in terms of sections 291 and 292 of the Companies Act to file a suit. In this regard he has also placed reliance upon the decision of Supreme Court in
9. Learned Senior Counsel for respondent by inviting my attention to section 19 of Designs Act has submitted that defendant has applied for cancellation of registration or plaintiff and has also taken a defence which is available to defendant u/s 22(3) of the Designs Act. Eventually, an application u/s 22(4) of the Designs Act was submitted by the plaintiff which was rejected by the trial Court on 22-11-2011 although a petition under Article 227 of the Constitution of India is pending in this Court against the said order. By inviting my attention to para 15 of the plaint it has been put-forth by him that no cause of action has accrued to the plaintiff because in this para the plaintiff himself has pleaded that its unique shaped bottles have already been introduced in the State of Andhra Pradesh, Rajasthan, Haryana, Punjab, Delhi, Chandigarh, Maharashtra and Orrisa but there is no pleading that it has been introduced in the State of M.P. and therefore no cause of action has been accrued to the plaintiff because it is not the pleading of plaintiff that the plaintiffs bottle is having circulation in State of M.P.
10. On merits my attention has been drawn to section 2(d) of the Designs Act wherein the definition of ''design'' has been mentioned and has submitted that on its bare perusal it is clear that the similarities should appeal to and are judged solely by eyes and these words are deliberately and purposely used in this section. By inviting my attention to different photographs of the bottles of the plaintiffs brand and that of defendant which were also filed in the Court below and after giving the permission by this Court on being prayed by learned Senior Counsel for both the parties, the empty bottles were also demonstrated in the Court, it has been submitted that bottles in which plaintiffs product (beer Haywards 5000) is filled is not having any particular eye appeal and therefore defendant can take the protection under sections 22(3) and 19 of the Designs Act. Learned Senior Counsel has also placed reliance upon the decision of the Supreme Court
11. In replying the contention of learned Senior Counsel for the appellant on the point of passing-off, reliance has been placed by learned Senior Counsel for respondent upon
12. At the last it has been submitted that plaintiff himself is using the bottles of beer Kingfisher by filling his own product (beer Haywards 5000) and by showing a bottle of Kingfisher to this Court, it has been submitted that by pasting its label upon the bottles of Kingfisher in which its name is embossed is selling its product Haywards 5000 and therefore the plaintiff has not come with clean hands before this Court and thus the application of temporary injunction has been rightly dismissed by the trial Court because neither the plaintiff is having prima facie case nor it will face any irreparable loss if temporary injunction is not granted and balance of convenience is also not in favour of the plaintiff.
13. In reply Shri Agrawal learned Senior Counsel for plaintiff-appellant submitted that so far as the question of maintainability of suit etc. is concerned, it shall be left open to the trial Court to decide it at the time of decision of the suit particularly when no pleading of defendant is there in the written statement. He has also submitted that if the plaintiff is using the bottles upon which Kingfisher''s name is embossed by mistake it happened. Learned Senior Counsel submits that looking to the mandate envisaged u/s 22 of the Designs Act since deliberately the plaintiff''s bottles are being used by defendant in filling his product (beer Black Fort) the real intention is to be seen and therefore why the defendant is using plaintiffs bottle? The answer is simple that because the buyers may get confused and deceived and by understanding that they are purchasing the product of plaintiff or defendant is having some bondage or connection with the plaintiff, therefore, they will purchase the product of the defendant with the understanding that it belongs to plaintiff and hence it has been prayed that appeal be allowed and temporary injunction as sought in the application be granted in favour of the plaintiff by setting aside the impugned order.
14. Having heard learned counsel for the parties, I am of the view that this appeal deserves to be dismissed.
15. Since the plaintiff by an interim injunction undoubtedly seeks to interfere with the rights of the defendant before the plaintiff''s right is finally established, therefore, very strong prima facie case in respect of his right should be asserted and it should so exist in favour of the plaintiff. It is equally true that at the interlocutory stage, the Court should not embark upon detailed investigation on the relevant merits of the contentions of the parties. It is enough if the plaintiff raises a question of substantive character, calling for a decision after an examination of facts and law rising in the case. The Court dealing with the application of temporary injunction is also having wisdom to consider the nature and merits of the rival contention prima facie at the interlocutory stage for the limited purpose of determining as to whether or not the plaintiff has made out a strong prima facie case.
16. The plaintiff should next demonstrate that the Court''s interference is necessary to protect him from an injury or mischief which is imminent and at the same time that it is irreparable. He should make out that the injury is so serious, irreparable and imminent that an immediate order of the Court is necessary even before the rights are established at the trial.
17. Needless to say that this burden will lie upon the plaintiff to make that the comparative mischief or inconvenience which would ensue from withholding the injunction would be far greater than what would ensue from the injunction being granted.
18. In precise way, the abovesaid three points are well settled that plaintiff should have a strong prima facie case in his favour, he will suffer irreparable loss in case temporary injunction sought for is not granted and balance of convenience also lies in his favour. I may add that these three essential ingredients to pass an order of temporary injunction are akin to that of three strong pillars upon which the roof of temporary injunction would rest and I may further add that if any pillar is lacking, the roof will collapse and fall down, meaning thereby the plaintiff would not be entitled for temporary injunction. By keeping the aforesaid three principles in my mind, I shall now consider the cases of parties vis-�-vis to each other.
Regarding Prima Facie Case:
19. Broadly speaking and as borne out from the argument of learned Senior Counsel for the appellant, the plaintiff is banking upon prima facie case on two points. Firstly the plaintiff company has registered the design of its bottle having a registration number under the Designs Act and because defendant in the bottles of the plaintiff is selling its own product by filling Black Fort beer, therefore, his act and action runs de hors to section 22(1) of the Designs Act. The remedy is also provided against the person who acts in contravention to section 22(1) which is provided under sub-section (2) of section 22 of the Designs Act. Secondly, the plaintiff is placing very strong reliance upon the doctrine of "passing-off".
20. So far as the first point in regard to having a prima facie case in favour of plaintiff is concerned, it would be condign to go through first the definition of "design" as envisaged u/s 2(d) of the Designs Act, which reads thus:--
2(d) "design" means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, 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 property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957).
(emphasis supplied)
The legislature has deliberately used the words upon which I have put emphasis while quoting the definition clause. Several photographs from different angles of the various bottles are on record. Apart from that on the prayer of both the parties, this Court allowed to show empty bottles in which the defendant is selling its own product (beer Black Fort). On examination by naked eye this Court finds no peculiar distinguishing feature from the ordinary bottle is seen in order to judge plaintiffs bottle solely by eye. The structure of the bottles is not an eye-catching. It is only an ordinary bottle which is being used. Upon each bottle almost covering its middle part of the bottle, a label showing brand name of defendant "Black Fort" the name of distillery and manufacturer etc. has been pasted and at a glance one could very easily see even if that bottle is kept with several other beer bottles and even along with the bottles of plaintiff that the bottle contains the product of defendant. On bare perusal of the plaintiff''s bottle this Court finds that it is an ordinary shaped bottle and there is nothing peculiar or special in order to observe at a glance or an eye-catch that this type of shape of bottle is of plaintiff. On seeing the bottle, one would not be confused even if the defendant''s product is filled in the bottle of plaintiff which is registered under the Designs Act because of covering the large size label of defendant upon the bottle. Thus, by keeping this important aspect in mind by the legislature deliberately the words "which in the finished article appeal to and are judged solely by the eye" have been used in the definition clause of "design" under the Designs Act. For further clarification I may add that the shape, design, pattern, configuration, ornament etc. should be so peculiar and distinct as eye-catching and can be caught by an intending buyer that a particular bottle having its own shape, design, pattern and configuration is of particular brand only and therefore according to me, deliberately the legislature has further enacted section 22(3) and section 19 of the Designs Act. On bare perusal of sub-section (3) to section 22 of the said Act this Court finds that it is a defence which is available to the defendant. If a particular brand is not having any particular or eye-catching or appeal to its shape, pattern, configuration etc. any person can apply for cancellation of the design u/s 19 of the Designs Act. In this regard rightly reliance has been placed by learned Senior Counsel for respondent to the decision of Supreme Court Bharat Glass Tube Ltd. (supra) in which paras 26, 29 and 30 are quite relevant. I have also gone through the decision of Delhi High Court in Dabur India Limited vs. Mr. Rajesh Kumar (supra) and I am of the view that para 11 of this decision is quite relevant and ratio dicidendi is also applicable in the present case. Similarly another decision of Delhi High Court in Dabur India Limited vs. Mr. Amit Jain and Anr., 2007(35) PTC 257 para 7 is also relevant.
21. In this backdrop of facts and circumstances, the decisions which have been placed reliance by learned Senior Counsel for appellant pertaining to Designs Act are not applicable.
22. Thus, by paying heed to the expression "design" as defined in the Designs Act according to me it means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged solely by the eye, but it does not include --
(a) a method or principle of construction or
(b) features of shape or configuration which
(i) are dictated solely by the function which the article has to perform; or
(ii) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part.
In this context, I may again rely upon the decision of Apex Court Bharat Glass Tube Limited (supra) para 35, which fully supports the case of defendant-respondent. Thus, I am of the view on the first point in regard to prima facie case, plaintiff stands nowhere.
23. In order to prove its prima facie case on the second point the plaintiff company is placing reliance upon the doctrine of "passing-off. The ingredients of the action for passing off has been reiterated in the Halsbury''s Laws of England, fourth Edition Vol. 48 para 144 at page 98, which reads thus:
144. Ingredients of the action for passing off; ......(1) a misrepresentation (2) made by a trader in the course of trade (3) to prospective customers of his or ultimate consumers of goods or services supplied by him (4) which is calculated to injure the business or goodwill of another trader, in the sense that this is a reasonably foreseeable consequence, and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or, in a quia timet action, will probably do so.
24. The doctrine ''passing off is usually taken into account while considering the cases under the Trade Marks Act. Indeed term "passing-off has not been defined in this Act also although in section 27(2) there is a reference of these wordings. The plaintiff-appellant indeed is also placing heavy reliance upon this provision. Before dealing with this point, it shall be apt to quote section 27(2) of the Trade Marks Act, which reads thus;
27. No action for infringement of unregistered trade mark; --
(1) ... ... ...
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.
According to me, an action for passing-off as a phrase "passing off" itself suggests is to restrain defendant from passing-off its goods or services to the public as that of plaintiff''s [see the decision of Supreme Court in Satyam Infoway Ltd. (supra)]. In para 13 of this decision the Supreme Court has further held that it is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its services in a manner which has deceived or would be likely to deceive the public into thinking that the defendant''s goods or services are the plaintiff''s. According to me, this action is normally available to the owner of a distinctive trade mark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The second element that must be established by the plaintiff in the passing off action is misrepresentation by the defendant to the public. In the same judgment the Supreme Court in para 14 has held that if the misrepresentation is intentional, it might lead to an inference that the reputation of the plaintiff is such that it is worth the defendant''s while to cash in on it. What has to be established is the likelihood of confusion in the minds of the public that the goods or services offered by the defendant are the goods or the services of the plaintiff.
25. In the given case at hand, both the plaintiff and defendant are the manufacturer and seller of beer. The plaintiff is manufacturing and selling the product beer Haywards 5000 while defendant is manufacturing and selling the product beer Black Fort. On seeing the bottles and certain photographs of the bottles it is gathered that almost middle part of the bottle is covered with very peculiar label of each manufacturer and the company so that the buyer or consumer may purchase it by going through the label, its design, colour, etc. Thus, according to me no intending buyer is getting confused because with an intention to purchase a particular brand (which may be either of plaintiff or defendant) he will go to market and buy the beer by seeing the label, which covers maximum portion of the bottle and not from the size of the bottle.
26. I have already held hereinabove that shape, size, dimension, pattern, configuration, etc. of bottle of plaintiff is not of an eye-catching or appeal to eye having its own distinct feature. Thus, according to me, the intending consumer is not at all being misrepresented or is deceived in any manner. Certainly, he will go to market and buy the product if he wants to purchase the product of plaintiff or defendant by seeing the label upon the bottle. Therefore, it cannot be said at this stage that intending buyers are deceived. In this context the decision of Supreme Court Cadila Health Care Ltd. (supra) para 20 may be seen. Needless to say on bare perusal of the label pasted on the bottle of plaintiff and defendant they are quite distinct to each other and even an illiterate person can distinct the manufacturer. The same principle has been reiterated in the decision of Laxmikant V. Patel (supra) in para 8 which has been placed reliance by learned Senior Counsel for both the parties. Shri Agrawal learned Senior Counsel for appellant has also placed reliance upon para 10 of this decision that law does not permit any one to carry on his business in which a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. But, according to me as I have already held hereinabove looking to the quite distinguishing features upon the labels on the bottles of plaintiff and defendant the intending buyer is not persuaded even if bottle of plaintiff registered under the Designs Act has been used by the defendant.
27. On the elucidation of facts and law, I am of the view that there is no prima facie case exists in favour of plaintiff and learned trial Court has rightly held so. Thus, if plaintiff company is not having any prima facie case, no temporary injunction can be granted in its favour.
Regarding irreparable injury:
28. So far as irreparable injury is concerned, if ultimately the suit is decreed, the plaintiff can be compensated by way of damages and by keeping this important aspect in mind the legislature has enacted section 22(2) of the Designs Act wherein it is enacted that the suit can be filed for the grant of damages and therefore it cannot be said that the plaintiff will suffer any irreparable injury.
Regarding balance of convenience:
29. At present it cannot be said that comparative mischief or inconvenience which would ensue from withholding the injunction would be far greater than what would ensue from the injunction being granted and therefore according to me the balance of convenience is also not in favour of the plaintiff.
30. The grant of temporary injunction is a discretionary power and discretion should be exercised upon the well settled sound principles for granting the temporary injunction. The plaintiff is not having any prima facie case in his favour, he shall also not suffer any irreparable loss which cannot be compensated by damages and further balance of convenience is also not in his favour. Thus, according to me, the plaintiff is not entitled to temporary injunction.
31. That apart, one important fact which cannot be marginalized and blinked away and which has not been disputed by learned Senior Counsel for appellant during the course of argument that the plaintiff''s Company itself is filling its own product (beer Haywards 5000) in the bottle of beer seller Kingfisher. During the course of argument learned Senior Counsel for respondent also placed before me the empty bottle of the beer of Kingfisher upon which brand name of Kingfisher is embossed and label of plaintiffs company is pasted. According to me, before passing a temporary injunction order in favour of plaintiff, the Court must have due regard to conduct and dealings of the plaintiff. This is so because the Court where summary inference is invoked, the conduct of the party is always seen and the Court will refuse to grant temporary injunction in a case where the action of the plaintiff is not fair. It is well settled law that the grant of temporary injunction is a discretionary relief and discretion is to be exercised in favour of plaintiff, if he comes with clean hands and with fair conduct. No authority is need but I may place reliance on Halsbury''s Laws of England Fourth Edition Vol. 24 para 1006 at page 563.
32. So far as maintainability of suit is concerned, all the submissions which are made by learned Senior Counsel for respondent cannot be taken into account at present for the simple reason that these are having nexus with the facts and they have not been pleaded in the written statement. The respondent shall be free to amend the written statement to raise all these objections. If necessary pleadings in regard to maintainability of suit is taken in the Court below by filing amendment application to amend the written statement, that application may be considered by learned trial Court and if the amendment application is allowed, an issue shall be framed in that regard and it may be decided in accordance with law. At present in this appeal, the question of maintainability of suit is not taken into account and it is left open to learned trial Court to decide the same in accordance with law. For the reasons stated hereinabove, I do not find any merit in this appeal, the same is hereby dismissed with costs. Counsel fee Rs. 10,000/- if precertified.
