Case Note & Summary
The present appeal was filed by the original defendants (Kalpesh R. Jain, Ravi Raut, and Ketan Panchal) against the order and judgment dated 06.12.2016 passed by the learned Single Judge (G.S. Patel, J.) in Notice of Motion No. 2195 of 2016 in Suit No. 742 of 2016. The respondent, Mandev Tubes Private Limited, had filed the suit seeking protection of its registered design (Application No. 264749) and alleging infringement and passing off by the appellants. The learned Single Judge granted interim relief in terms of prayer clauses (a), (b) and (c), restraining the appellants from manufacturing, selling, or dealing in products that infringe the respondent's registered design and from passing off their goods as those of the respondent. The appellants challenged this order on the grounds that the design was not novel, that there was prior publication, and that the respondent had suppressed material facts. The Division Bench of the Bombay High Court (S.C. Dharmadhikari and Smt. Bharati H. Dangre, JJ.) heard the appeal and reserved judgment on 14.12.2017, pronouncing it on 20.02.2018. The court examined the principles for grant of interim injunction, including prima facie case, balance of convenience, and irreparable loss. It found that the respondent's design was registered and the appellants' product was substantially similar. The court also noted that the appellants failed to produce any evidence of prior publication or prior use. The court held that the learned Single Judge had correctly exercised his discretion and that no interference was warranted. The appeal was dismissed with costs.
Headnote
A) Design Law - Infringement of Registered Design - Section 22 of Designs Act, 2000 - The court considered whether the respondent's registered design (Application No. 264749) was infringed by the appellants' product. The court held that the designs were substantially similar and the appellants failed to show any prior publication or prior use of the design. The interim injunction was confirmed. (Paras 1-30)
B) Civil Procedure - Interim Injunction - Order 39 Rules 1 and 2 CPC - The court examined whether the learned Single Judge correctly applied the principles for grant of interim injunction, namely prima facie case, balance of convenience, and irreparable loss. The court held that the respondent had made out a strong prima facie case and the balance of convenience was in its favour. (Paras 15-25)
C) Commercial Law - Commercial Courts Act, 2015 - Section 12A - The court noted that the suit was a commercial suit and the provisions of the Commercial Courts Act apply. The court held that the learned Single Judge had jurisdiction to grant interim relief under the Act. (Paras 5-10)
Issue of Consideration
Whether the learned Single Judge was justified in granting interim relief in terms of prayer clauses (a), (b) and (c) of the Notice of Motion, restraining the appellants from infringing the respondent's registered design and from passing off their goods as those of the respondent.
Final Decision
The appeal is dismissed with costs. The order and judgment dated 06.12.2016 passed by the learned Single Judge in Notice of Motion No. 2195 of 2016 in Suit No. 742 of 2016 is confirmed.
Law Points
- Design infringement
- Passing off
- Interim injunction
- Prima facie case
- Balance of convenience
- Irreparable loss
- Commercial Courts Act
- 2015
- Designs Act
- 2000
- Order 39 CPC
Case Details
2018 LawText (BOM) (02) 70
Commercial Appeal No. 133 of 2017 in Notice of Motion No. 2195 of 2016 in Suit No. 742 of 2016
S. C. Dharmadhikari, Smt. Bharati H. Dangre
Mr. Rashmin Khandekar a/w. Mr. Shilpan Gaonkar & Ms. Sana Khan i/by Bhagwati Trivedi Advocate for the Appellants; Mr. Rohan Kadam, a/w. Ms. Rajashri Karande i/by Joseph Vankasery for the Respondent
Kalpesh R. Jain, Ravi Raut, Ketan Panchal
Mandev Tubes Private Limited
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Nature of Litigation
Commercial suit seeking protection of registered design and alleging infringement and passing off.
Remedy Sought
The respondent (plaintiff) sought an interim injunction restraining the appellants (defendants) from manufacturing, selling, or dealing in products that infringe the respondent's registered design and from passing off their goods as those of the respondent.
Filing Reason
The respondent alleged that the appellants were manufacturing and selling products that were a slavish imitation of the respondent's registered design, thereby infringing the design and passing off their goods.
Previous Decisions
The learned Single Judge (G.S. Patel, J.) on 06.12.2016 granted the Notice of Motion in terms of prayer clauses (a), (b) and (c), restraining the appellants.
Issues
Whether the learned Single Judge was justified in granting interim relief in terms of prayer clauses (a), (b) and (c) of the Notice of Motion?
Whether the respondent's registered design was infringed by the appellants' product?
Whether the appellants had made out a case for interference with the discretion exercised by the learned Single Judge?
Submissions/Arguments
The appellants argued that the design was not novel and that there was prior publication of the design.
The appellants contended that the respondent had suppressed material facts and that the balance of convenience was not in favour of the respondent.
The respondent argued that its design was registered and that the appellants' product was substantially similar, constituting infringement and passing off.
The respondent submitted that it had made out a strong prima facie case and that the balance of convenience was in its favour.
Ratio Decidendi
The court held that the respondent had made out a strong prima facie case of infringement of its registered design and passing off. The balance of convenience was in favour of the respondent, and irreparable loss would be caused if the injunction was not granted. The learned Single Judge had correctly exercised his discretion, and no interference was warranted.
Judgment Excerpts
The present Appeal is filed by the Appellants (original defendants), being aggrieved by the order and judgment delivered by the learned single Judge of this court (Coram : G.S. Patel,J.) on 06.12.2016 in Notice of Motion No. 2195 of 2016 filed in Suit No. 742 of 2016, thereby recording the finding that the Plaintiff therein has demonstrated a prima facie case and that the Hon'ble Court is persuaded to grant the said notice of motion in terms of prayer clauses (a), (b) and (c).
Procedural History
The respondent filed Commercial Suit No. 742 of 2016 seeking protection of its registered design and alleging infringement and passing off. The respondent filed Notice of Motion No. 2195 of 2016 seeking interim relief. The learned Single Judge (G.S. Patel, J.) on 06.12.2016 granted the notice of motion in terms of prayer clauses (a), (b) and (c). The appellants filed the present Commercial Appeal No. 133 of 2017 challenging that order. The appeal was heard by a Division Bench and judgment was reserved on 14.12.2017 and pronounced on 20.02.2018.
Acts & Sections
- Designs Act, 2000: Section 22
- Code of Civil Procedure, 1908 (CPC): Order 39 Rules 1 and 2
- Commercial Courts Act, 2015: Section 12A
