Whirlpool of India Ltd. vs Samsung India Electronics Pvt. Ltd.

Aravind Kumar, J.

ORDER ON I.A.I/11 IN O.S. 4/12 AND ORDER ON I.A.I/11 IN O.S.3/12

These two suits, viz., O.S.3/12 (originally numbered as 8529/2011) and O.S.4/12 (originally numbered as 8528/2011) have gained access to this court under the provisions of the Designs Act in original jurisdiction of this court.

Along with the plaint, plaintiff has moved an application under the provisions of Order XXXIX Rules 1 and 2, C.P.C. to restrain the defendant from use of the design which plaintiff claims is its original design for manufacture of bottom drawer in the refrigerator.

In support of the relief sought, plaintiff has sought the following prayers:

"i) Pass a judgment and decree for permanent and perpetual injunction, in favour of the Plaintiff and against the Defendant, thereby restraining the Defendant by themselves, their Directors, officers, servants, representatives, stockists, dealers, agents and all other persons claiming under or through them or acting in concert with them or otherwise howsoever from manufacturing, selling distributing, offering for sale, advertising, exporting directly or indirectly dealing with refrigerator with bottom drawer embodying the Plaintiff''s registered Designs bearing Nos. 198386 (in Class 15-07), 198384 (in Class 15-07), 198387 (in Class 15-07), 202764 (in Class 15-99), 202765 (in Class 15-99) and 202766 (in Class 15-99) in any manner whatsoever.

ii) Pass a judgment and decree for permanent injunction, in favour of the Plaintiff and against the Defendant, thereby restraining the Defendant by themselves, their partners, servants, agents, representatives and all those acting in concert with them or claiming under or through them or otherwise howsoever from infringing the Plaintiff''s trade dress, getup, overall look and feel in the Plaintiff''s refrigerator with bottom drawer;

iii) Pass a judgment and decree for delivery up for destruction, in favour of the Plaintiff and against the Defendant, of all infringing products, moulds and dies, labels, printed materials such as brochures, letterhead, stationery, visiting cards, promotional material, cash memos, cartons, blueprints or any other material of whatsoever description and nature, embodying the Plaintiff''s aforesaid registered Designs Nos. 198386 (in Class 15-07), 198384 (in Class 15-07), 198387 (in Class 15-07), 202764 (in Class 15-99), 202765 (in Class 15-99) and 202766 (in Class 15-99), which would offend against the foregoing injunction;

iv) Pass a judgment and decree for rendition of accounts of profit illegally earned by the Defendant on account of use/sale of refrigerator with bottom drawers employing the Plaintiffs aforesaid registered designs and a final decree for the ascertained amount be passed in favour of the Plaintiff and against the Defendant and

v) Pass an judgment and decree for costs of this suit and the proceedings in Favour of the Plaintiff and against the Defendant;

vi) Any other orders and reliefs as this Hon''ble Court may deem fit and proper to meet the ends of justice in the facts and circumstances of the present case."

I have heard Sri Praveen Kumar for the plaintiff, Sri K.G. Raghavan, learned designated senior counsel for the defendant in O.S.4/12 and Sri Naganand, learned designated senior counsel for the defendant in O.S.3/12. Perused records in supplementation thereto.

The material propositions in the pleadings in O.S.4/12 are as under:

"a) Plaintiff is a company incorporated under the provisions of the Indian Companies Act and has its branch office at Bangalore. It is one of the leading manufacturers of home appliances in India. The plaint is presented by Vinaykumar, its authorized representative. Plaintiff Company strives for innovation and leads the market through its innovative products. The consistent growth in business of the Plaintiff Company can easily be attributed to its unique and innovative techniques, designs etc. Plaintiff is also a subsidiary of WHIRLPOOL Corp., INC., U.S.A. It has developed after Research and Development department consisting of highly qualified engineers, scientists and experts, who design innovative products to cater to the needs of the domestic and overseas market. The Plaintiff owns registered patents and designs and other intellectual property rights in respect of its various products. It is submitted that the Plaintiff Company 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. The products of the Plaintiff Company are regarded in high esteem as a mark of quality amongst the customers and in the market. It is submitted that the Plaintiff Company has consciously and carefully nourished and built intellectual property rights around its innovative products.

b) One of the special and unique products designed by the plaintiff is the household refrigerator with bottom drawer and the fascia, base of the bottom drawer as well as the bottom drawer of such refrigerator. It is submitted that the product-"Refrigerator with Bottom Drawer" is eye-appealing and well appreciated by the customers. The design is a new concept which gives an altogether different look to the product.

c) Prior to the innovative design of the plaintiff''s product, the refrigerator used to be mounted on a normal simple base. With the new concept and design, the marked gap/space between the bottom of the refrigerator and the floor on which it is kept, is eliminated. In this manner the produce has gained a distinct eye appeal.

d) To patent its original design, plaintiff got it registered with Registration No. 198386 on 2.2.2005 in Class 15-07 and in addition to the original design in respect of the refrigerator in respect of bottom drawer, plaintiff designed the base for the bottom refrigerator. The additional unique and novel designs were created for the bottom drawer and fascia of the bottom drawer. In this manner plaintiff claims that the design registered referred to above is its original design.

e) Plaintiff has referred to the design registration No. 198386 dated 2.2.2005 in the said class for fascia of the refrigerator and design as No. 202765 granted on 2.1.2006 in Class No. 15-99 in respect of "Fascia for Bottom Drawer of the Refrigerator". The material particulars of the design are further detailed in the plaint and appended to the plaint are photographs of the product.

f) With this prelude about its product, plaintiff has proceeded against the defendants, viz., Godrej & Boyce Manufacturing Company Limited, on the allegation that the company has started production of refrigerator with bottom drawer fabricating/copying the design registered by the plaintiff company which is fraudulent: imitation of the aforesaid design of the plaintiff''s product. It is alleged, defendant company has indulged in infringing its registered design as could be seen from document No. 4 appended to the plaint.

g) It is alleged, plaintiff company took up the issue seriously and after due diligence and result of investigation, found that infringement of the design by the defendant company is in respect of the refrigerator with bottom drawer and in competition with it, defendant has offered for sale the said product. The products are advertised for sale and are sold in India as evident from the advertisement on the website of the defendant. Consequent to such deceptive design of defendant''s refrigerator, the sale of plaintiffs product is PENTACOOL and has diminished. It is alleged, defendant''s product not only infringes the design registration Mo. 198386, but has also resulted in financial loss.

h) In paragraph 16 of the plaint, plaintiff has spelled out that it has examined the product of the defendant company and was shocked to find that the refrigerator with bottom drawer manufactured and offered for sale by the defendant fully resembled the design of the plaintiff''s product, they are exact replica. To substantiate this, it has relied on the three-dimensional design and also photographs of the product of the defendant to show that it even in minute detail, it was a replica thereof, thus infringing its right.

i) In paragraph 18, it is stated that a bare look at the design registered at No. 198387 in respect of facia for bottom drawer of the defendant''s product makes it clear that the product of the defendant is obviously a fraudulent imitation of the plaintiffs product..

j) Alleging the defendant with disdainful conduct of continuing to release the product in the market to the detriment of plaintiffs interest, it initiated civil action in which the principal prayer is, a judgment and decree for permanent and perpetual injunction in favour of the plaintiff against the defendants, themselves or officers, etc. from manufacturing or selling or distributing or offering for sale with bottom drawer. The consequential supplemental prayer is:

i) to restrain the defendant by themselves, their partners, servants, agents, representatives and all those acting in concert with them or claiming under or through them or otherwise howsoever from infringing the Plaintiff''s trade dress, getup, overall look and feel in the Plaintiff''s refrigerator with bottom drawer;

ii) to pass a judgment and decree for delivery up for destruction, in favour of the Plaintiff and against the Defendant, of all infringing products, moulds and dies, labels, printed materials; such as brochures, letterhead, stationery, visiting cards, promotional material, cash memos, cartons, blueprints or any other material of whatsoever description and nature, embodying the Plaintiff''s aforesaid registered Designs Nos. 198386 (in Class 15-07), 198384 (in Class 15-07), 198387 (in Class 15-07), 202764 (in Class 15-99) 202765 (in Class 15-99) and 202766 (in Class 15-99), which would offend against the foregoing injunction;

iii) to pass a judgment and decree for rendition of accounts of profit illegally earned by the Defendant on account of use/sale of refrigerator with bottom drawers employing the Plaintiff''s aforesaid registered designs and a final decree for the ascertained amount be passed in favour of the Plaintiff and against the Defendant; and

iv) to pass an judgment and decree for costs of this suit and the proceedings in favour of the Plaintiff and against the Defendant.

v) Any other orders and reliefs as this Hon''ble Court may deem fir and proper to meet the ends of justice in the facts and circumstances of the present case.

k) In response to summons in the suit, defendants have entered contest through a detailed written statement. While traversing the averments and allegations in the plaint, defendants have at the outset refuted all allegations attributing infringement of plaintiffs alleged registered design. While questioning the correctness of the statement of fact appearing in the plaint, the defendant in O.S.4/12, viz., Godrej & Boyce alleges plaintiff is guilty of suppression of material facts; the suit is fictitiously filed with ulterior motive and mala fide intention to harass the defendant. In this regard it has averred, defendant is the proprietor of the design for manufacture of refrigerator with bottom drawer (registered on 19.2.2009 in No. 22135). The registration certificate is appended to the written statement marked as document No. 1. It is further averred, before granting registration, patent office had indeed carried out novelty survey to ensure no such design existed.

l) Relying on such certificate of registration, defendant contends it is within its right to manufacture refrigerators with bottom drawer as it is the originator of the design and has not indulged in copying/duplicating design of the plaintiff''s product. Having averred so, defendant seeks cancellation of plaintiffs design Nos. 198386, 198387, invoking the provisions of Section 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) That the design has been previously registered in India; or

b) that is has been published in India or in any other country prior to the date of registration; or

c) that the design is not a new or original design; or

d) that the design is not registrable under this act; or e) that it is not a design as defined under clause (d) of section 2 read with Section 22 of the Designs Act.

To support this contention, it is urged that the design sought to be registered by the plaintiff is published in India and outside prior to the date of registration and it is not its own or original, design as defined under Section 2(d) of the Designs Act.

With this prelude, defendant has urged that the refrigerator with bottom drawer was available in the international market much prior to the relevant date of registration of plaintiffs design on 2.2.2004 and in proof of it, relies on document No. 2 collectively marked which shows images of various refrigerators with bottom drawer sold internationally. It is averred, in about the year 1998, defendant started working on refrigerators with bottom drawer as shows by annexed document No. 3. It relies in engineering novel, engineering drawings dated 1.9.1998 to substantiate that it is it''s own concept to manufacture the product called ''Refrigerator with bottom drawer'' and it was much prior to the registration of design by the plaintiff. In support of such contention, it has referred to its product called PENTACOOL which is in the market from 2001 and is depicted in document No. 4. Document No. 5 collectively are photographs of the said refrigerator with copied of invoices from the year 2000 to 2005 showing sale of the said product, i.e. PENTACOOL.

Defendant also craves leave to refer to the reply of the company when the product was well received in the market. It thus claimed the design of its refrigerator with bottom drawer was in use much prior to the registration of plaintiff''s design.

In the rest of the paragraphs of the written statement there is traversing of the plaint averments. By relying on document-G, defendant has averred registration of plaintiff''s design is registrable under Section 2(d) of the Designs Act "design" means only the features of shape, configuration, pattern, ornament of 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). Thus the defendant has quashed legality of registration of plaints product as "Design" it does not qualify for design registration according to Section 2(d) of the Act. Similar is the position with regard to the alleged "facia" of the bottom drawer". Plaintiffs claim that the design registration is infringed in shape, configuration and ornamental is disputed. In this regard it is averred, this is a very general statement and in view of the fact that there are so many bottom drawer in the refrigerators, plaintiff ought to have specified what is the infringement in the shape and configuration of its product to seek exclusive right of manufacture of the said product.

Be that as it may, the defendant disputes that the product manufactured by the defendant called ''Refrigerator with bottom drawer'' is similar to the product of the plaintiff. It is contended, the defendant''s refrigerator is quite different from the plaintiff''s product in design, shape, appearance and its appeal. The aesthetic external appearance of the two products are distinct, different and separate. To support this, they rely on the comparative visual appearance of both the items in the photographic form.

As regards civil action is concerned, they describe filing of the suit as belated resulting in acquiescence. They contend, plaintiff was aware of the defendant''s product when it was introduced in the market in 2008. The defendant has been manufacturing and selling refrigerators with bottom drawer both in India and outside the country since 2008 continuously and to prove this, they rely on their sales record certified by the Chartered Accountant which is produced as document No. 11. They also rely on the advertisement carried out in magazines, newspapers and other publications from the year 2008 which is at document No. 12. They further rely on the e-mails sent to common dealers of the plaintiff and defendant giving a comparison of the defendant''s refrigerator with bottom drawer and plaintiff''s refrigerator, making clear disparity that it is different it is at document No. 12.

Several other factual aspects are canvassed in the written statement which are not very relevant for consideration though they may be material for decision on merit in the suit. Therefore I do not wish to incorporate those propositions from the written statement.

As regards O.S.3/12, the plaintiff is common, while the suit is filed against Samsung India Electronic Pvt. Ltd.,. The averments in the plaint with regard to material particulars regarding registration of the design of ''refrigerator with bottom drawer'' are same and for the sake of brevity those facts need not be incorporated in this order as they are quite similar to the facts narrated in O.S.4/12. However, as regards this defendant is concerned, the averments in paragraph 15 of the plaint are relevant. In paragraph 15, it is averred, in about the month of December 2010, plaintiff came across certain refrigerators with bottom drawers sold in the market by the defendant (Samsung) which was similar to its product.

Thereupon plaintiff conducted investigation and found to its dismay defendant has been manufacturing and offering for sale a similar product, i.e. refrigerator with bottom drawer identical to plaintiffs design bearing registration No. 198386. The brochure of the defendant''s infringed product is appended at document No. 4 and plaintiff contends they took up the matter seriously and with due diligence, conducted investigation which culminated in a report showing defendant as guilty of infringing its registered design to manufacture refrigerator with bottom drawer. On a closer examination, plaintiff was shocked to find such products are a copy of its design No. 198368 and in fact the product of the defendant is exact three-dimensional replica of the plaintiff''s design. It is further alleged, defendant has copied plaintiff''s design to its minutest detail and to substantiate this, they have produced copy of the drawing comparing the defendant''s product vide document No. 5.

Briefly its assertive contention is, the defendant''s product, i.e. household refrigerator is copied design of its refrigerator with bottom drawer. On comparison, plaintiff found defendant has willfully copied and imitated the design of the plaintiff and, in addition, it has; also copied the aesthetic features of the base with bottom drawer in respect of which the plaintiff has obtained registered design. By such statement, plaintiff alleges defendant as guilty of infringing its design No. 198387, 202065 about fascia of the bottom drawer of the refrigerator. It has thus sought a decree against the defendant in the in the same terms as in O.S.4/12 referred to above.

On notice in the suit, defendants Samsung entered appearance and through their written statement traversed plaint averments. The defendant claims is a company registered under the provisions of the Companies Act, 1956, having its registered office at New Delhi and has set up its unit in the year 1995 which is now a part of Samsung Group of Companies including 14 listed companies at Korea. It deals with customers across the globe trading inter alia in electronic goods like refrigerators, microwave, air conditioners, such as mobile phones, etc. The company has dedicated 70 years in making a better world and during the course of manufacturing process, on the basis of its Research and Development, it has innovated a product called Refrigerator with Bottom Drawer, incurring five million USD out of which 0.2 million USD was spent on research and development.

Defendant has referred to several awards received by it and its group of companies and high lights its market track, it is further averred it is a company of high repute. Coming to the issues in question, in paragraph 8 it is alleged plaintiff has filed suit but failed to produce certificate for registration of its registered design Nos. 198386, 198384, 198387, 202764, 202765 and 202766. Defendant thus questions maintainability of the suit and has described plaintiffs conduct as mala fide. It also attributed mala fides to the plaintiff in its civil action asserting there is suppression and concealment of facts making misleading statements.

With regard to the alleged allegation of infringing plaintiff''s registered design, in paragraph 16 it has reproduced photographs of the refrigerator with bottom drawer manufactured by the plaintiff and itself. A table of two refrigerators is to demonstrate that defendant''s product is neither ''fraudulent'' nor ''imitation'' of the plaintiffs design. To dispel the allegation that it is similar, they have listed out the distinction between the two products. The first characteristic difference is shown is as follows:

"a) Plaintiff''s refrigerator with bottom drawer has ''U'' shaped indentation, whereas in its (defendant''s) product no ''U'' shaped indentation is found;

b) Defendant then described in detail the construction, shape and design of the bottom drawer of the plaintiff as seen from the sub-paragraph which need not be incorporated in this order, but needs to be taken note of."

The third and more important ground is, plaintiff is not the first designer or inventor or pioneer of the bottom drawer refrigerator. Defendant has produced several documents at document No. 4 shows refrigerator with single door; with bottom drawer. Therefore bottom drawer is known at least 6 years prior to the registering of the design by the plaintiff. The chronology and details of prior registration are detailed therein.

Without prejudice to its contention, defendant has taken the plea that defendant''s product at best could be said to be closer to the product of the Plaintiff but no similar.

With this defense, they contend that plaintiffs designs are liable to be cancelled under Section 19 of other Designs Act and in support of such defense, it is contended the design of bottom drawer refrigerator shown by the plaintiff are in the form of designs published worldwide prior to the date of filing which is not the registration obtained by the plaintiff and thus contended its registration has to be cancelled. Up to paragraph 29 all details of publication are mentioned.

Lastly they deny infringement and in this regard in paragraph 39, defendant has made a categorical statement that plaintiff has failed to prove infringement by it and to identify the specific model of the defendant which is alleged to have infringed the registered design. Thus to seek dismissal of the suit they have highlighted delay and laches, waiver and acquisitions. They further rely on the plaintiffs unsuccessful attempt in the Delhi High Court in a suit filed by it seeking similar relief.

Based on the material propositions in the pleadings and written statement, learned counsel on both sides have advanced assertive arguments. I had the benefit of hearing persuasive arguments of Sri Praveen Kumar, learned counsel for the plaintiff, learned Senior counsel Shri K.G. Raghavan and Mr. Naganad for the defendants, and keeping in mind the propositions, legal and factual, I have examined the issue.

Needless to say the relief grantable under Order XXXIX Rules 1 and 2, C.P.C. by way of Ad-interim order of temporary injunction must be considered within the ambit of provisions of Sections 37, 38, 40 and 41 of the Specific Relief Act.

Section 40 of the Specific Relief Act would also be relevant which adumbrates ''plaintiff in a suit for perpetual injunction under Section 38 or mandatory injunction under Section 39 may claim damages either in addition to, or in substitution for, such injunction and the court may, if it thinks fit, award such damages.'' Section 41 is relevant for all intent and purposes which deals with the negative aspect. Injunction when refused: an Injunction cannot be granted -

"a. to restrain any person from prosecuting a judicial proceeding pending at the institution of the suit in which the injunction is sought, unless such restrain is necessary to prevent a multiplicity of proceedings;

b. to restrain any person from instituting or prosecuting any proceeding in a court not subordinate to that from which the injunction is sought;

c. to restrain any person from applying to any legislative body;

d. to restrain any person from instituting or prosecuting any proceeding in a criminal matter;

e. to prevent the breach of a contract the performance of which would not be specifically enforced;

f. to prevent, on the ground of nuisance, an act of which it not reasonably clear that it will be a nuisance;

g. to prevent a continuing breach in which the plaintiff has acquiesced;

h. when equally efficacious relief can certainly be obtained by any other usual mode of proceeding except in case of breach of trust;

i when the conduct of the plaintiff or his agents has been such as to disentitle him to the assistance of the court;

j. when the plaintiff has no personal interest in the matter."

Basically plaintiff''s grievance is infringement of its registered design. What is ''design'' is defined in Section 2(d) of the Designs Act which is relevant for our purpose. It reads thus:

"design" means only the features of shape, configuration, pattern, ornament of 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).

The definition is explicit leaving no doubt that it includes features of shape, configuration, pattern, etc. as referred to in the provision. It excludes the mode of construction, principle of construction or anything which is a substance or mere mechanical device. I would understand it as to mean, it is the brand signature of the originator who designs, and its imitation in creating a facsimile would amount to imitation. But as the process of manufacture is excluded from the definition, it is confined only to visual appearance.

The phraseology of Section 2(6) using the term ''eye'' are judged ''solely by the eye.'' Therefore the first thing that matters for decision is, whether the product which is the result of registered design is copied by the opponent/adversary for which visual appearance of both the products placing them together is essential. In the instant case, the court had the benefit of defendant producing before the court plaintiff''s product as also its product which are manufactured and sold in the name of ''refrigerator with bottom drawer.''

No doubt plaintiff is aggrieved by the product of the defendant and to sustain cause of action against it, it is alleged more than once that the defendant has copied its design to the minutest detail. In this regard Mr. Praveen Kumar was very assertive and with his persuasive eloquence, described the plaintiff''s design and product comparing it with the product of the defendant. In that he would say that plaintiff is a pioneer and after extensive Research and Development, has created the design which is a unique concept. It became popular and in demand not only for its appearance but for the benefit of its user. To claim plaintiff has the credit of being the first in designing such product, he would submit, refrigerators hitherto manufactured had an ugly gap between the body of the refrigerator and the bottom. To improve its aesthetical appearance, the gap is done away with, but the bottom drawer was kept away from the refrigerating part of the refrigerator meant to store products for non-refrigerating. In that, the customer had the benefit of extra space to store products which do not require refrigeration.

Plaintiff''s contention is, defendant being in the know of success of the plaintiff, has manufactured the product whose visual appearance is identical. He would submit, the design registered by the plaintiff referred to in the plaint shows bottom drawer is mounted on the pedestal and is made more customer-friendly so as to use it without opening the door or refrigeration unit and that design was never in the market. However even after both the refrigerators were produced in court, which did not show similar appearance the learned counsel submits merely because placement of the handle bar, shape of body and shape of the bottom drawer may look dissimilar it is replica of plaintiff''s registered design. Learned counsel submits, defendants have gone into the market with this product knowing well that the plaintiff has registered this design and in this regard he would refer to the main ground urged by the defendant to non-suit the plaintiff, i.e. cancellation of its registration of design, and secondly, paper publication. He would submit, even assuming, though not conceding, the design was registered in Korea and other countries as shown by Samsung Group, that design is dissimilar. The design of refrigerators obtained in Korean countries is totally different from the design of the plaintiff and those are issues which will be gone into during trial and at this juncture since the visual appearance of both the products is identical, the harm that is causing to the plaintiff has to be stopped by an order restraining the defendants.

Mr. Praveen Kumar has gained citational relying on the following case laws:

"1) Bharat Glass Tube Limited Vs. Gopal Glass Works Limited, wherein the apex court opined, ''The Burden is on the person alleging that the design is not new or original to show that the design is not new or original. New or original means that it has not been published anywhere, that it has been invented for the first time.'' He relies on paragraph 14 of the judgment wherein the apex court has held thus:

''The text or design downloaded from the website are not sufficient to compare two designs to conclude about prior use. To determine visual effect/eye appeal, the articles themselves will have to be compared. Visual appeal of finished product will have to be seen.

2) Dabur India Ltd. Vs. Amit Jain and Another, wherein the apex court observed ''Article as a totality must be compared and contrasted with the features of a shape and configuration shown in the totality observable from the representation of the design as registered. Court must address its mind whether design adopted by defendants was substantially different from design which was registered. He relies on paragraphs 21 For grant of temporary injunction it is not necessary to take final view on plea of defendant that design registration is invalid.

3) Alert India v. Naveen Plastics-1997 (17) PTC 15 (Del HC) wherein it is held '' design has no lawful existence and has to yield to the Plaintiff''s earlier registered design.

Para 36. Thus for determining whether two designs are identical or not, it is not necessary that the two designs should be exactly the same. The main consideration to be applied is whether the road features of shape, configuration, pattern etc. are same or nearly the same and if they are substantially the same then it will be a case of imitation of the design of one by the other.

4) Castrol India Limited v. Tide Water Oil Co., (I) Ltd., - 1996 (16) PTC 202 (CAL HC) wherein it is observed thus:

The next task of the Court is to judge the similarity or difference through the eye alone and where the article in respect of which the design is applied is it self the object of purchase, through the eye of the purchaser. Para 29. The petitioner''s complaint is relatable solely to the shape of the containers and not to the mode of manufacture. The shape of a drinks bottle or a carton is clearly projectable as a registered design even though the purpose behind the shape is to persuade a customer to purchase the contents of the bottle or carton rather than the packaging itself. (see para 24 at page 208 and para 30 page 209)

5) Veeplast Houseweare Private Ltd., v. Bonjour International & Another - 2011 (46) PTC 479 (Del HC) wherein it was held:

''The design of the petitioner being a registered design, prima facie it is entitled to protection unless it is shown that there is nothing new or original in the design. No evidence of any design identical to the registered design of the plaintiff being used prior to registration of plaintiff. Therefore prima facie, plaintiff is entitled to protection.

6) Vikas Jain Vs. Aftab Ahmad and Others, wherein it is held ''for the defense of prior publication taken by the defendants, to succeed, it must be shown the very design that is utilized by the plaintiff has been published in India or any other country prior to the date of registration of the plaintiff''s design.''

7) Troikaa Pharmaceuticals Ltd. Vs. Pro Laboratories (P) Ltd. and Another, - Design did not require novelty in the idea of the design but novelty in the application of the design to some article of manufacture. For the defense of prior publication taken by the defendants to succeed it must be shown that the very design that it utilized by the Plaintiff has been published in India or in any other country prior to the date of registration of the Plaintiff''s design. Previously published designs have not been produced except in pictures and photos. If defendant is manufacturing articles in other shapes and colours no loss will be caused to defendant by injunction.

8) In Re Win Gate''s Registered Design - 1935 (52) RPC 126 (Ch.D) - ''So long as design qua the design is something which makes an appeal to the eye and is new or original it is properly a subject matter of registration under this part of the Act notwithstanding that it also involves a method of construction which may be properly entitled to protection as a patent. There is nothing impossible in the least in a similar device being registered both as a design and as a patent.

9) Parle Agro Private Limited Vs. Weaver Aqua Everflo - Delay by itself is not sufficient to deny the relief of injunction. An injunction can be denied on the ground of delay only if the delay is such that the same has led the defendants to assume that the plaintiff''s have given up their contention whereby the defendants have altered their position.

10) Midas Hygiene Industries P. Ltd. and Another Vs. Sudhir Bhatia and Others, - In cases of infringement either of trademark or of copyright normally an injunction must follow. Mere delay in bringing action is not: sufficient to defeat grant of injunction in such cases. The grant of injunction also be becomes necessary it if prima facie appears that the adoption of the Mark itself was dishonest.

11) Kirorimal Kashiram Marketing and Agencies Pvt. Ltd. Vs. Shree Sita Chawal Udyog Mill, As held by the Supreme Court in the case of Midas Hygiene Industries (P) Ltd., and Anr. V. Sudhir Bhatia and Ors. (2004) 3 SCC 90 once there is a registered trademark, certain amount of delay would not prevent grant of an interim injunction. The delay is only of just about 2 odd years. Interim injunction could have been refused only if the delay on the part of the appellant/plaintiff was such so as to result in acquiescence or grave prejudice to the respondent.

12) Shri Pankaj Goel Vs. Dabur India Ltd., wherein it is held ''merely because others are also infringing the plaintiffs mark that is no ground why injunction should not be granted against defendant. ''

13) Metro Plastic Industries (Regd) Vs. M/s. Galaxy Footwear New Delhi, - The view taken by the division bench of the Delhi High Court is Niky Tasha India Pvt. Ltd., v. M/s. Faridabad Gas Gadgets Pvt. Ltd., that when there is a serious question as to the validity of the design, injunction should not be granted has been held by the full bench of Delhi HC to be an extreme view and not correct."

Several other cases are cited, as indicated in the memo filed by the plaintiff which are taken into consideration while passing this order.

On behalf of the defendants, in O.S. No. 4/2012 learned counsel, Mr. K.G. Raghavan has also placed reliance on several decisions, so also learned designated counsel Shri. Naganand for defendant in O.S. No. 3/2012, amongst which following are relevant.

"1) Kestos Limited v. Kempat Limited, reported in 1936 (53) RPC 139: wherein it was observed thus:

''Logically the first question to be determined is, whether registration is valid, for it should be held to be invalid and an order made for the rectification of the register by expunging from it the registered design, no question of infringement of copyright can arise.

Reference is made to paragraph 4 at page 150 wherein it is held:

''Design was not registrable design being the mode or principle of construction or in substance a mere mechanical device or a mere trade variant of certain specified designs.''

Decision in the case of:

Startford Auto Components Ltd., v. Britax (London) Ltd., reported in 1964 (8) R.P.C. 183: Wherein it is held:

''Exclusion from consideration of features and shape, configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform was so expressed in the Designs Act, 1949, but the language used appears to have been derived from the judgment of Luxmoore, J. in Kestos v Kempat (1936) 53 R.P.C. 139 at 151, when he used the substantially the same expression to define "a mere mechanical device". That being the form in which the exclusion had been expressed since the Patent and Designs Act of 1919. It is obvious that the functional use of a designed article may well limit the type of suitable shape and configuration features for inclusion within the design. For example, a containing bowl of some character must be present in a design for a tea pot or some lends holder present in a pair of spectacles. If this functional use not only restricts the type of features suitable but additionally prescribes a particular shape or configuration to which that features must conform such features is dictated solely by function and must in consequence be excluded from consideration.''

As could be seen from the position of law emanating from the decisions cited by the learned counsel on both sides, it is clear to grant an order of injunction, it is necessary that plaintiff must make out a prima facie case. What is ''prima facie'' undoubtedly depends on the facts of each case. In the instant case, prima facie case has to be adjudged from the plaint allegations and the nature of defense.

Therefore the moot question is, whether the refrigerator with bottom drawer is originally designed by the plaintiff company. Plaintiff no doubt: contends it by producing the registration certificates. But to succeed in establishing that acts of the defendant amount to infringement, necessarily the plaintiff has the onus even at this juncture to substantiate that the design for which it has obtained registration either in India or any other country was prior to the date of registration, of similar design and also till it obtained registration product with such "Design" was not manufactured or in market.

The Defendant of Samsung India (defendant in O.S. 3/2012) has produced a certificate of registration dated 30.11.1937 (at page 252) (U.S. patent) which shows registration of the product-"refrigerator with bottom drawer" and as could be seen from the engineering sketches, the refrigerator has two compartments, one refrigeration unit and the second, bottom drawer. It is patented on 24.4.1951 for similar refrigerator with bottom drawer. Thus it is seen refrigerators, patent of which is registered, is bottom drawer which the defendant has not manufactured. It is also seen from one of the advertisements (at page 2 of additional documents) relating to the refrigerator manufactured by Philco Company in the year 1938. Another advertisement published in the year 1942 in News Paper is of manufacture of similar refrigerator showing bottom drawer.

This Prima facie shows refrigerators with bottom drawer was manufactured prior to registration of plaintiff''s design was similar in visual appearance. The concept of bottom drawer no doubt did not come within the definition of ''design'', but as visual appearance is all that matters, it could be seen that refrigerators were manufactured as early as in the year 1938 and 1942 with bottom drawer. Therefore plaintiffs contention that it had pioneered the product called Refrigerator with bottom drawer by utilization of maximum space, aesthetic sense/appearance is believed from the material produced by Samsung (the defendant) or the present, it could be safely held refrigerators with bottom drawer were manufactured even in the year 1938, 1942 and were sold and marketed prior to the registration of plaintiff''s design to the knowledge of the plaintiff.

As far as Samsung India (defendant in O.S.3/2012) is concerned, according to the plaintiff, imitation of its product has been done by producing a product in its design. As the principle of construction is excluded by the definition, we have to go only by appearance, i.e. what is visible to the eye. In that, placement of handle of the door to common drawer are essential features to be noted. On such comparison,, at the first appearance itself we find that the product''s look different and cannot be called as imitation. The position of the drawer, its shape is substantially different from the product of the plaintiff though, of course, may be the same in conception. As far as the design of the bottom drawer is concerned, both the drawers were displayed to the court and it is seen, viewed from any angle, the position, sliding mechanism are marked different. Therefore so far as the appearance is concerned, prima facie it does not look identical to hold plaintiffs product has been imitated in totality by the defendant. Some similarity may be there, but it does not constitute imitation as defined. As already observed, the design which is alleged to have been infringed must be proved to be original creation registered early in point of time to the date of manufacture of the defendants products.

To sustain action for infringement, similarity in all respects must be established and such similarity must be apparent to the naked eye. A scientific examination of other product to find out similarity is not necessary. The provision mandates it is adjudged by the eye from the layman''s point of view, i.e. cosmetic appearance and not the cause of manufacture or materials used. In this view, it is difficult to form an opinion at this juncture to hold that the product of the defendant is an imitation, or similar in appearance with plaintiffs products. In the absence of it, any order of restraint not be justifiably grantable.

Even otherwise, if the plaintiff were to succeed in establishing in trial that the defendant had in fact infringed the design registered by it, plaintiff will be entitled to compensation which is adequate relief provided under the provisions of Specific Relief Act. An order of injunction is grantable only on prima facie proof that non-grant will result in hardship which will be incompensatable. In the instant case, I do not find that is noticeable.

So far as M/s. Godrej & Boyce Manufacturing Company-Limited defendant in O.S.4/12 is concerned, the genesis of plaintiffs claim against is similar to the cause highlighted against Samsung India Electronic Pvt. Ltd.,-defendant in O.S.3/12. Therefore, questions of law and fact have arisen necessitating clubbing of cases and as could be seen from my discussion in paragraphs supra, I have referred to the material propositions in the plaint in both the suits and the nature of defense urged by the defendants. Thus there is no need for repeating the same factual aspects or legal issues dealt with earlier.

However, as M/s. Godrej & Boyce Manufacturing Company-Limited has also urged additional grounds to contend plaintiffs suit is not maintainable and that plaintiff had fraudulently obtained registration of design, it is brought out that the defendant has applied for cancellation of plaintiffs design. Reference is made by it to the proceedings initiated for cancellation of plaintiff''s design on which the suit is based.

Learned counsel, Mr. K.G. Raghavan for the defendant has also brought out that the design of refrigerator with bottom drawer was registered and published in India and outside prior to the registration of plaintiff''s'' design; what is got registered by the plaintiff is not its original or new design and it is therefore not registrable under the provisions of the Designs Act. This issue has already been adverted to by me in the foregoing paragraphs, but for the sake of clarity, it is necessary to observe that the documents produced by learned counsel, Mr. Naganand appearing for the defendant in O.S.3/12, M/s. Samsung India Electronic Pvt. Ltd. are a clincher to show that the refrigerator with bottom drawer was a design in existence with the manufacturers of refrigerator as early as in the year 1948. Mr. K.G. Raghavan''s contention that the plaintiffs design is not new or original finds support from the documents produced by Mr. Naganand for the defendant in O.S.3/12 to which I have already referred. Prima facie it shows the product called refrigerator with bottom drawer was in the international market much prior to the date of registration, i.e. 2.2.1995. Images of various refrigerators with bottom drawer in the international market are produced by Mr. K.G. Raghavan at document No. 2 marked collectively.

It is pertinent to note, defendant in about the year 1998 claims to have started working on the refrigerator with bottom drawer and has annexed document No. 3 which is an engineering drawing dated 1.9.1998. This document also supports Mr. Raghavan''s contention that M/s. Godrej & Boyce Manufacturing Company-Limited in O.S.4/12 started marketing refrigerator with bottom drawer under the brand name Pentacool in 2001 and registration is obtained in the year 2005. Document No. 4 is a brochure of Pentacool manufactured by the defendant and is shown to be in the market from 2001.

Against such material produced by Mr. Naganand and Mr. K.G. Raghavan, plaintiff has filed no counter nor there is any material to render the defendant''s contention of the product being earlier in the market, nugatory. At this juncture, I would like to pause to observe the party against whom the allegation of imitation or infringement is made succeeds in establishing that the produce with the alleged design was already registered or manufactured earlier in point of time, then the plaintiff will face the penalty of cancellation of its registration. This issue, of course, requires enquiry. Hence all that we could now do is to examine whether there is material produced by the parties for ascertainment as to whether plaintiff has made out a case that it is the creator of the original design, registration of which it has obtained and that the same has been infringed by the defendant.

It has also to be examined whether the defendant has prima facie shown its produce is not similar in visual appearance to treat it as infringement of registered design of the plaintiff and in the alternative, whether the plaintiff has succeeded in prima facie establishing that the product manufactured by it which it alleges is similar in visual appearance to its design, was being manufactured by defendant prior to registration of its design, or that such design was registered either in India or anywhere outside India.

I have already referred to in paragraphs supra that we all had the benefit of having a visual examination of the plaintiff''s refrigerator with bottom drawer and the refrigerator produced by the defendants in both the cases which are alleged to be the result of infringement of plaintiffs design. In appearance, the products of the defendants do not appear to be identical or similar to the plaintiff''s registered design, but the concept of refrigerator with bottom drawer was the same. It is necessary to; reiterate at this juncture that plaintiffs grievance is not that its patent to manufacture refrigerator with bottom drawer has been infringed. Its grievance is, its ''design'' of the bottom drawer has been infringed. Therefore it had the enormous task of establishing virtually visual similarity in the produce of the defendants and the ''design'' for which it has obtained registration. No such similarity is noticed. Therefore merely because defendants are manufacturing refrigerator with bottom drawer, it will not entitle the plaintiff to obtain injunctive order against the defendants.

Besides, it must be noticed though plaintiff has alleged infringement of its ''design,'' pleadings would show plaintiff has been repeatedly contending it is a pioneer and creator of the original design of refrigerator with bottom drawer. Therefore all that could be understood from the pleadings is allegation of infringement of its design to manufacture refrigerator with bottom drawer, and not the design of the entire unit. It is difficult to accept this proposition in view of the plethora of material produced by the defendants showing that refrigerator with bottom drawer was being manufactured as early as in the year 1948 and the design was also registered in 1951 and thereafter. M/s. Godrej & Boyce Manufacturing Company-Limited has already shown it has patented registration of refrigerator with bottom drawer under the trade name Pentacool in the year 2001 itself.

Though grant of injunction is discretionary, it has to be exercised judiciously. The cardinal principle governing grant of injunction cannot be ignored. Plaintiff is required to make out, firstly prima facie case and secondly, to substantiate that non-grant of injunction would result in great hardship to it and that such hardship will be incompensatable in terms of money. Lastly it should be established balance of convenience is in favour of grant of injunction and not its refusal. Amongst the above, existence of prima facie case is the harbinger to enquire into other aspects. When prima facie case is not made out, there is no question of going into other aspects.

In the instant case, I do not find any prima facie case made out by the plaintiff to grant injunction as permissible under Order XXXIX Rules 1 and 2, C.P.C. In the result, the application, I.A.I/11 filed by the plaintiff under Order XXXIX Rules 1 and 2, C.P.C. against M/s. Samsung India Electronic Pvt. Ltd.-defendant in O.S.3/12 is hereby rejected. Similarly the application, I.A.I/11 filed by the plaintiff under Order XXXIX Rules 1 and 2, C.P.C. against M/s. Godrej & Boyce Manufacturing Company-Limited-defendant in O.S.4/12 is hereby rejected.

Post both the suits, i.e. O.S.3/12 and 4/12 for framing of issues. Parties are permitted to file draft issues.