Sathish Ninan JUDGMENT
Sathish Ninan, J.
1. An interim order of injunction granted in a suit under the Designs Act, alleging piracy of a registered design, is under challenge by the defendant.
2. The product in respect of which the dispute has arisen between the parties is a storage water tank viz. "Hopper bottom water tank with inbuilt legs". According to the plaintiff, he has obtained registration for the design as per Ext. A9 on 12.07.18.
3. The contention of the defendant is that they have been using the said design and selling the products in the market with the said design since the year 2016. The defence set up is essentially, "prior publication of the design".
4. Heard the learned counsel on either sides.
5. According to the plaintiff, he is a renowned scientific expert in the field of water and waste water treatment, chemical analysis and poly chemistry. The defendant is engaged in the business of manufacture and sale of water tanks. The defendant used to obtain the expertise of the plaintiff for their business. Since the defendant is having a mould workshop, the plaintiff had approached the defendant for fabricating a mould with the design in Ext. A9. The mould was to be used only for the plaintiff's purposes. The suit is filed on the allegation that recently the plaintiff came across Ext. A10 brochure issued by the defendant regarding sale of water tanks with the very same design as in Ext. A9.
6. Sections 16 and 19(1)(b) of the Designs Act, 2000 reads thus:-
"16. Effect of disclosure on copyright.-- The disclosure of a design by the proprietor to any other person, in such circumstances as would make it contrary to good faith for the other person to use or publish the design, and the disclosure of a design in breach of good faith by any person, other than the proprietor of the design, and the acceptance of a first and confidential order for articles bearing a new or original textile design intended for registration, shall not be deemed to be a publication of the design sufficient to invalidate the copyright thereof if registration thereof is obtained subsequently to the disclosure or acceptance.
19. Cancellation of registration.-- (1) Any person interested 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) xxxxx xxxxx
(b) that it has been published in India or in any other country prior to the date of registration."
7. Therefore, the prior publication of the design is a valid defence, provided that the use of the design is not in breach of good faith against the proprietor of the design.
8. According to the defendant, they had been selling the product since the year 2016. The registration, Ext. B9 obtained by the plaintiff is only in 2018 and therefore, the defendant is protected by, prior publication of the design.
9. Ext. B8 is an advertisement given by the defendant, relating to the product, in a magazine dated 20.09.16. Ext. B9 is the advertisement in another magazine in March 2017. Ext. B14 is the photograph taken on 16.08.16 in connection with the inaugural ceremony of the product. The presence of the plaintiff in the said photograph is not disputed. The plaintiff does not have any explanation for the said flagging of ceremony held by the defendant and his presence there. Ext. Bl5 is the certification from the central Board of Film Certification dated 02.05.16 regarding the advertisement of the product in question. So also Ext. Bl6 is the copy of the advertisement agreement with Media Link-Visual Media T.V. channel. All these documents relate to the product in question and is much prior to the registration by the plaintiff. Therefore, it appears that the product was in use by the defendant and the design was published much prior to Ext. A9 registration obtained by the plaintiff.
10. Though the learned counsel for the plaintiff would contend that there is no evidence to show that the product was in fact marketed by the defendant, as is evident from the documents afore-referred to, which are advertisements regarding the product, I do not find any force in the contention that except for giving advertisements, the product was not marketed. The learned counsel for the defendant undertakes that if directed or granted permission, documents evidencing sale of the article since 2016 shall be produced before the court. I do not find any reason in contending that except for giving advertisements, the product was not marketed by the defendant. At any rate, I find that, the materials on record prima facie indicate that the product was published prior to the registration of the design.
11. Now the question to be considered is as to whether the publication was contrary to good faith against the plaintiff. According to the plaintiff, he used the services of the defendant for making the mould since the defendant had a mould workshop. The plaintiff though has averred that consideration was paid by him to the defendant in the said regard, no document evidencing the same has been produced. There is no circumstance to indicate that there was any understanding between the parties whereby the defendant agreed to refrain from using or publishing the design. In fact the materials as is presently avai1able including Ext. B14 afore-referred to prima facie indicate otherwise. Therefore, it cannot be held that there is any breach of good faith against the user or publishing of the design.
12. The learned counsel for the defendant undertakes that the defendant shall maintain accounts regarding sale of the product till the disposal of the suit, to protect the interests of the plaintiff's in so far as it may relate to damages or compensation.
13. On the above discussions, I find that prima facie case, balance of convenience and irreparable injury are all in favour of the defendant. The order of the court below is liable to be interfered with and I do so.
In the result, this appeal is allowed. The impugned order will stand set aside and the injunction vacated. However, it is directed that the defendant shall maintain true and proper accounts regarding sale of the product in question, till disposal of the suit. No costs.
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