AIR 2015 (NOC) 83 (BOM.) ::2014 (5) ABR 396

Bombay High Court

Hon'ble Judge(s): S. J. Kathawalla , J

(A) Designs Act, 2000 S. 22 — Infringement of registered design — Suit for — Lies against any person including registered proprietor of its design — Had Legislature intended to exclude from within scope of infringement a registered proprietor, Legislature, whilst enacting S 22 would not have used expression ' any person— — Or would have added after expression ' any person— the words ' not being a registered proprietor— (Para 18,19,20,21,22)

(B) Designs Act, 2000 S. 22 — Infringement of registered design — Suit for — Against registered proprietor of its design — Claim of plaintiff that defendant copied registered design of plaintiff— s washing machine — Plaintiff giving list of common features and similarities of defen-dant— s product with plaintiff— s registered design — Comparative charts of plaintiff— s washing machine and defendant— s washing machine and comparative analysis of common features and similarities of two products establishing beyond any doubt that defendant had copied plaintiff— s design which clearly satisfied test of infringement — Differences highlighted by defendant were trivial and not sufficient to avoid finding of infringement — Explanation offered for design of the Defendant— s product was wholly unbelievable — Design of defendants product was fraudulent imitation of plaintiff— s design — Defendant restrained from continuing with such infringement (Para 35,43,46)

(C) Designs Act, 2000 S. 22 — Action for passing off — Washing machine of defendant was almost identical in shape and configuration pattern as that of Plaintiff — In period of two years since Plaintiff launched their machine, till filing of suit Plaintiff sold more than 308152 pieces and their aggregate sale exceeded of Rs 308 crores — This is sufficient to constitute actionable goodwill and reputation in product of Plaintiff — No other washing machine with a similar or comparable shape existed in market prior to introduction thereof by Plaintiff — Factum that washing machines are purchased through demonstration would not exclude possibility of passing off as customer with imperfect recollection associates or identifies Plaintiff— s washing machine with reference to its distinctive and novel design — Possibility that such customer would purchase defendant— s washing machine thinking that it was product of plaintiff— s — Defendants guilty of passing off Trade Marks Act (47 of 1999), S 29 (Para 49,50,51,55)

(D) Designs Act, 2000 S. 19, 22 — Infringement of registered design — By proprietor of registered design — Availability of remedy to plaintiff under S 19 to seek cancellation of registered design of defendant — Does not negate remedy under S 22 to file suit for infringement of registered design — Remedy under S 19 and remedy under S 22 are different {" In support of its contention that the Defen-dant— s registered design can only be challenged by proceedings under Section 19 of the Act before the Controller, the Defendant would argue that the availability of a remedy under Section 19 of the Act for cancellation of a registered design amounts to a negation and exclusion of remedy under Section 22 of the Act. This is plainly incorrect. Section 19 and Section 22 of the Act operate independently in different circumstances. Section 19 of the Act is invoked to seek cancellation of a registration of a design. Section 22 of the Act is invoked where a registered design of a proprietor is infringed by any person and the registered proprietor seeks reliefs in the form of damages, injunction, etc. against the infringer. Such relief can be sought even against a registered proprietor of a design by questioning his registration. The Defendant too can submit that the Plaintiff is not entitled to any relief in terms of damages, injunction etc. by questioning the registration of the Plaintiff— s on grounds available under Section ....