Schreder S.A. and One Another vs Trilok Chand and Sons Pvt. Ltd.

V.K. Jain, J.

I.A. No. 8548/2009 and IA No. 15336/2009

The plaintiff is the registered proprietor of Design No. 182346, in respect of a lighting apparatus which is being manufactured and sold by it under the name ''Alura''. Initially, the design was registered w.e.f. 15th May, 2000 and was valid for 5 years. A copy of certificate No. 1077 issued by the Patent Office in this regard on 07th November, 2000 has been filed by the plaintiff. In view of the provisions contained in Section 11(1) of Designs Act, 2000, which came into force on 11th May, 2001, the copyright in registration became valid for 10 years from the date of registration. The plaintiff has applied for renewal of the aforesaid registration vide application dated 12th April, 2010. A copy of the letter written by L.S. Davar & Co. Patent and Trademark Attorneys, to the Controller of Designs, Kolkata in this regard has been placed on record. In view of the provisions contained in Section 11(2) of the Designs Act, 2000, the Controller, on payment of the prescribed fee, is obliged to extend the period of copyright for a second period of 5 years from the expiration of the original period of 10 years fixed under Sub-section (1) of the aforesaid Section, provided that the application for extension of the period of copyright is made to him before expiration of the prescribed period of 10 years. Since the design registered by Controller of Patents on 15th May, 2000 was valid till 14th May, 2010 and the plaintiff has applied for its renewal well before that date and also claims to have paid the prescribed fee in this regard, the Controller is under legal obligation to extend the period of copyright, by another 5 years. A copy of the receipt of payment of the prescribed fee has been placed on record along with the copy of the application for extension of registration.

Though the design was registered in the name of ''FINANCIERE DES APPLICATIONS DE L''ELECTRICITE S.A.'', the name of the aforesaid company has since been changed to ''SCHREDER S.A.'' This fact stands acknowledged in the application filed by the defendant itself for revocation of the aforesaid registration in the name of the plaintiff. It has been specifically stated in the Statement of Case filed before the Controller of Designs, Patent Office, Kolkata that the name of the registered proprietor appears to have been altered to read as ''SCHREDER S.A.'' vide order dated December 10, 2007. Thus, at least prima facie, it cannot be disputed that it is the plaintiff company which is the registered proprietor of the aforesaid registration and it is only its name which has been changed from "FINANCIERE DES APPLICATIONS DE L''ELECTRICITE S.A.'' to ''SCHREDER S.A.''

A Local Commissioner was appointed by this Court to inspect the premises of the defendant and documents including a catalogue/Brochure found in the premises were obtained by him and have been filed along with this report. The Brochure/Catalogue shows one model of Post-Top Lantern, named VENICE HYT-01.

Section 22 of the Designs Act, 2000, to the extent it is relevant, reads as under:

(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 imitation 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.

A bare perusal of the model shown as VENICE HYT-01 in the Catalogue/Brochure found in the premises of the defendant and its comparison with the registered model of the plaintiff registered vide Registration No. 182346 and being sold under the name ''Alura'' leaves no reasonable doubt that the design of the model VENICE HYT -01 is identical to the design of the model of the plaintiff registered vide Registration No. 182346 and being sold under the name ''Alura'' and is its imitation. The defendant has no right to sell or expose for sale a product which is identical, in design, to and an imitation of the product of the plaintiff, design of which already stands registered in its name vide Registration No. 182346. The product shown against model VENICE HYT-01 in the Catalogue/Brouchure found in the premises of the defendant is of the very same class in which the product being sold by the plaintiff under the name "Alura" falls. The contention of the defendant is that VENICE HYT-01 is a Chinese product and is not being sold by the defendant. At this stage, it is not possible for the Court to give a conclusive finding as to whether the model VENICE HYT-01 is being sold by the defendant or not. The very fact that the Brochure/Catalogue found from the premises of the defendant shows this product indicates a reasonable possibility of the defendant selling this product in the market. Even if the defendant is not manufacturing this product, it being similar in design of the product of the plaintiff, it has no right to sell this product in Indian Market. Admittedly, the defendant has already sought revocation of the registration granted to the plaintiff for the Registration No. 182346 in respect of the product being sold by it under the name ''Alura''. But, so long as that application is pending and the registration granted to the plaintiff vide Registration No. 182346 is not revoked, the defendant has no right to sell a product which has a design identical with the registered design of the plaintiff.

For the reasons given in the preceding paragraphs, the defendant is restrained, during pendency of the suit, from selling the product which is shown as VENICE HYT-01 in the Catalogue/Brochure seized by the Local Commission from its premises and filed by him along with his report. It shall also not sell this product under any other name or model. If, however, the registration granted in favour of the plaintiff vide Registration No. 182346 is revoked by the Controller of Patents, this order shall cease to remain in force from the date of revocation.

Both the applications stand disposed of accordingly.

The interim order passed by this Court on 20th July, 2009 as modified on 14th October, 2009 stands merged in this order.

The parties are directed to appear before the Joint Registrar for admission/denial of documents on 03rd January, 2011.

The matter to come up for framing of issues before the Court on 11th January, 2011. The observations made in this order shall not affect the decision of this suit on merits.