Srmb Srijan Private Ltd vs Super Smelters Ltd. & Ors

Appearance: Mr. Ranjan Bachawat, sr. Adv. Mr. R. Bhattacharya, Adv.

Mr. Ratnanko Banerjee, sr. Adv. Mr. Debnath Ghosh, Adv.

The Court: C.S. No. 192 of 2019 is filed by the plaintiff/petitioner

praying for the following reliefs:-

"(a) A decree for permanent injunction restraining the Defendants,

its assigns, directors, partners, employees, agents and others acting on its

behalf from manufacturing, marketing, selling products including TMT

bars and rods by applying pattern of X ribs mark/pattern/get up/trade

dress upon or in relation to the TMT bars and rods as depicted in

Annexure "A" or any other colourable imitation of the same including the 2

one which is depicted in Annexure "H" to the plaint or any other TMT bar

containing similar pattern depicted on the TMT bars;

(b)Decree of permanent injunction restraining the Defendants from

advertising in any manner any product including TMT Bars and rods by

applying pattern of X ribs upon or in relation to TMT bars and rods as

depicted in Annexure "H" in print form or online which may create

misrepresentation and lead to passing off the Defendants goods as that of

the plaintiff.

(c)A decree for obliteration and destruction of all the offending goods,

dies, packaging, hoardings, placards, promotional material, advertisement,

stationery, signs, signage of the defendants' goods bearing the mark

contained in Annexure "H";

(d)Enquiry into the loss and damage suffered by the Plaintiff and

upon loss being ascertained a decree be passed therein.

(e)Injunction,

(f)Receiver,

(g)Attachment;

(h)Costs

(i)Further or other relief as Your Lordship may think fit and proper;

The instant application is for temporary as well as ad interim

injunction along with other consequential relief.

The case of the petitioner in brief is that the petitioner is a private

limited company carrying on business of manufacturing, selling and

distribution of TMT bars, wires, grills etc since 2001. The petitioner is the 3

pioneer of manufacturing "X-ribs" TMT bars coppied distinct surface

pattern with letter "X" embossed at regular intervals over the entire

surface and length of TMT bars. Each bar has two series of "X" pattern.

On one side of the series the brand name "SRMB" is embossed in regular

style at the "X" intervals and grade of Fe 415,500,550 etc. The petitioner

has been advertising and promoting their product since 2001. The

petitioner had applied for and secured the designed registration in respect

of rod for re-enforcing a grade bearing design no.191774 dated 4th April,

2003. However, the said design was cancelled upon an objection filed by

one Tribeni Industries Pvt. Ltd. before the Design Office. The order of

cancellation dated 3rd February, 2010 was made only because of

publication/advertisement of petitioners "X" RIB TMT bars before the date

of its application for design registration. Further case of the petitioner is

that the petitioner filed application before trade marks registry on 8th

November, 2016 for registration of the same "X" RIBS pattern TMT bars

claiming exclusive use of the said pattern since 4th January, 2001. The

said application is pending for consideration.

It is alleged by the petitioner that the respondents are also

manufactures of TMT bars and they are new in the market. The

respondents are advertising their TMT bars with pattern "X" RIBS look

alike as "YY RIB". The surface pattern of respondents TMT bars are exact

copy of the petitioners "X" RIB pattern, thus, making the respondents TMT

bars virtually identical. It is also stated by the petitioner that the

respondents had been using an elliptical helix pattern/shape on their TMT 4

bars and later switched over to "X RIB" pattern describing the said pattern

as "YY" ribbed. Thus, the respondents have dishonestly and in slavish

manner copied the surface pattern of the petitioner on the TMT bars

manufactured by them only to create confusion in the minds of the

customers of the petitioner and thereby causing substantial financial loss

to it.

Further case of the petitioner is that on or about May, 2017, the

petitioner sent a cease and desist notice to the respondent no.1 to

discontinue use of "X RIB" pattern on its TMT bars. The respondents sent

a reply through their Attorney on 15th May, 2017 claiming that the surface

pattern of respondents TMT bars was "Y" ribbed which no one else uses.

The respondents applied for trademark registration of a line drawing

of "X RIB" pattern in respect of TMT rods on 31st December, 2016 and

obtained registration of the said pattern. In the application for

registration, the trademark applied for was stated as "Super Shakti", but

the actual mark was simply a line drawing, to avoid detection in trade

mark search. The petitioner has filed an application for rectification of the

said "Super Shakti" trade mark registration before the Intellectual Property

appellate Board at Chennai which is pending for disposal.

According to the petitioner, the respondents are falsely describing "X

RIB" pattern of the petitioner as "YY RIBBED". The respondents have

coined an arbitrary term "YY RIBBED" for their TMT bars to pass off their

products as that of the petitioner's without being readily detected by the

consumers. It is claimed by the petitioner that it being the prior user of "X 5

RIB" pattern TMT bars, its right to use the said pattern exclusively is

required to be protected. It is also alleged by the petitioner that the

specific Act of copying the surface pattern of the TMT bars of the petitioner

on the TMT bars by the respondents amounts to unfair trade practice and

passing off by way of mis-representation made by the respondents in

course of manufacturing, distributing and selling TMT bars to prospective

customers or ultimate consumers of goods or services supplied by them,

which is calculated to ensure the business or good will of the petitioner as

a reasonably forceful consequence, thereby causing actual damage to the

business or good will of the petitioner in the trade of manufacturing,

distributing and selling of TMT bars. So is the prayer for ad interim

injunction.

Learned Advocate for the petitioner submits that the petitioner

company for the first time conceived the idea of X rib design of TMT bars.

X rib surface pattern has become popular by virtue of advertisement in the

media by the petitioner. From the very beginning of embossing X rib

pattern on the surface of TMT bar, the said surface pattern has earned

tremendous goodwill and reputation in the market. The petitioner also

published advertisement giving caution to other manufacturers and

consumers for not copying or imitating X rib bar on their products.

Learned Advocate for the petitioner draws my attention to the

advertisements of SRMB TMT bars with X rib pattern published in the

newspapers and invoice dated 28th January, 2005, 28th March, 2004, 2nd

March, 2006 etc. to establish that the petitioner has been manufacturing 6

X ribbed TMT bars since 2003-04 or even prior to that. According to the

learned Advocate for the petitioner, SRMB TMT bar with surface design

became the integral part of the trademark of the petitioner. The petitioner

made an application dated 11th August, 2016 for registration of 3D mark

on SRMB "X ribs" device. From the said application it would be

ascertained that the petitioner's brand has registered trademark "SRMB

500"(label)"and "X ribs(word)". Though the 3D trademark of X pattern has

not been registered as yet, but the petitioner is entitled to get protection in

respect of user of X pattern on the TMT bars as prior user of the said

pattern.

It is further submitted by the learned Advocate for the petitioner

that difference between an action for infringement of trademark and an

action for passing of lies on the principle that statutory remedy is available

for infringement of trademark, whereas the action for passing of is a

common law remedy. For infringement, it is necessary only to establish

that the infringing mark is identical or deceptively similar to the registered

mark. But in the case of passing of action, it is necessary to prove that

the marks are identical or deceptively similar which is likely to deceive or

cause confusion and damage to the business of the company. Secondly,

when a trademark is registered, registration is given only with regard to a

particular category of goods and protection can be given only to those

goods and services. But in a passing of action, the defendant's goods need

not be the same; they may be related or even different. 7

With this introduction, it is urged by the learned Advocate for the

petitioner that the petitioner is the prior user of X ribs on the TMT bars.

The defendants are also manufacturers of TMT bars. They have

dishonestly and wrongfully embossed XX pattern on the TMT bars on the

strength of registration of trademark of label only. It is further submitted

by the learned Counsel for the petitioner that the so called YY pattern is

nothing but slavish imitation of X pattern only to deceive the customers in

order to cause financial loss, goodwill and reputation of the petitioner who

is indisputably prior user of such pattern.

The learned Counsel for the petitioner further submits that law is

well settled on the subject that merely because the defendant has obtained

a trademark under the provision of Trademarks Act in respect of a

particular pattern, such fact cannot extinguish the common law right by

the plaintiff to have an injunction restraining passing off if it appears that

the plaintiff is the earlier user of the mark and that the registered

trademark of the defendant is deceptively similar to that of the plaintiff.

Once it is established that the mark of the defendant is deceptively similar

to that of the plaintiff and the plaintiff has been using the said mark from

the earlier point of time, he is entitled to get an order of injunction against

the defendant. In support of his contention he refers to a decision of this

Court in the case of Amar Nath Chakroborty Vs. Dutta Bucket

Industries & Ors. reported in (2005)2 CHN 278.

The petitioner next relies upon a decision of the Delhi High Court in

the case of Apollo Tyres Ltd. Vs. Pioneer Trading Corporation & Anr. 8

reported in 2017 SCC online Del 9825. In the aforesaid decision, it is

held by the Delhi High Court that trade pattern adopted by different

manufacturers in respect of their tyres become one of the primary source

identifiers apart from their brand names. The manner in which tyres are

displayed in the course of advertising also shows that the trade patterns

adopted by different manufacturers are permanently displayed along with

the brand name of manufacturers. The face of the tyre, i.e. it is trade

pattern is what is displayed by all the manufacturers, while advertising

their tyres in publications, pamphlets etc. Therefore, the trade pattern of

the tyres manufactured by a particular brand cannot be imitated by other

manufacturer. It is further submitted by the learned Advocate for the

petitioner that the defendants may plead that the surface pattern on TMT

bars are designs and since the said surface pattern has not been

registered as a design by the plaintiff, the plaintiff has lost its exclusive

right over the said decision on question. In Apollo Tyres Ltd.(Supra) the

Delhi High Court replied to such objection in the following words.

"76. The Full Bench in this decision, inter alia, observed:

"22. In our view, the aforesaid contentions are flawed for

the reason that while the Trade Marks Act confers

certain statutory rights qua a registered trade mark,

it does not deprive a user of an unregistered trade

mark the right to protect the misuse of his mark by

a defendant who is in possession of a registered

trade mark. Therefore, in so far as a design, which 9

is registered under the Designs Act is concerned, it

may not have the statutory rights, which a

registered trade mark has, under the Trade Marks

Act, it would certainly have the right to take

remedial steps to correct a wrong committed by a

defendant by instituting a passing off action. If

such an action is instituted, the plaintiff would have

to demonstrate that the registered design was used

by him as a trade mark which, in the minds of the

purchasing public is associated with his goods or

services which, have acquired goodwill/reputation

which is worth protecting. Quite naturally, result of

such an action, would depend upon whether or not

the plaintiff is successful in proving the essential

ingredients involved in a passing off action, to

which we have already made a reference

hereinabove.

22.1 Therefore, the argument that since there is no

saving clause in the Designs Act as found in Section

27(2) of the Trade Marks Act, and consequently

such a remedy ought not to be made available qua

a registered design, which is used as a trade

mark, is in our view, completely without merit. As

is obvious, such a passing off action would be 10

based on a plea that: the design, which is an

unregistered mark, was being used by the

plaintiff for the purposes of business; and that

the plaintiff's goods and/or services had

acquired a reputation and/or goodwill, which

were identified in the minds of the cousumers,

by associating the design/the mark, with the

goods and/or services. In other words, the

plea would be that the design which was being

used as a mark identified the plaintiff, as the

source of the goods supplied or services

offered.

22.2 The plaintiff, in our opinion, would not

have to look to the Designs Act, for instituting

such an action. Therefore, the argument that the

legislature by not incorporating a similar provision,

such as Section 27(2) of the Trade Marks Act, has

by necessary implication excluded the availability of

such like remedy to a plaintiff, who uses a

registered design, as his trade mark, is untenable.

Our view is fortified by the opinion expressed in that

regard by the learned authors of book-McCarthy:

"...Dual protection from both design patent and

trademark law may exist where it is alleged that 11

the configuration or shape of a container or article

serves to identify and distinguish the source of

goods-that is, acts as a trademark or trade dress.

Such a container or product shape may also be

capable of design patent protection. In such cases,

the protection afforded by patent law vis-a-vis

trademark law is quite different."

77. The Full Bench crystallized its opinion in para

34 of the judgment, wherein it was, inter alia, held:

"(ii) The plaintiff would be entitled to institute an

action of passing off in respect of a design used by

him as a trade mark provided the action contains

the necessary ingredients to maintain such a

proceeding."

78. In the present case, it is the case of the plaintiff

that the tread pattern adopted by it in respect of its

tyre Ëndurance LD 10.00 R20" serves the purpose

of a trademark, i.e. it is source identifier. According

to the plaintiff, it is an industry practice that

different manufacturers adopt different tread

patterns in respect of their tyres. The plaintiff has

placed on record the different tread patterns

adopted by different manufacturers. Tyres of

vehicles, by and large, are black in colour; they are 12

made of the same material, namely rubber

compounds; they are all round in shape like a

wheel; and they all have grooves which are

functional inasmuch, as, they provide the gripping

and friction. In this background, prima facie, it

appears to this Court that the tread patterns

adopted by different manufacturers in respect of

their tyres become one of the primary source

identifiers apart from their brand names. The

manner in which the tyres are displayed in the

course of advertising also shows that the tread

patterns adopted by the different manufacturers are

prominently displayed along with the brand name

of the manufacturer. The "face" of the tyre i.e. its

tread pattern is what is displayed by all the

manufacturers, while advertising their tyres in

publications, hoardings, pamphlets etc."

According to the petitioner similarity of surface pattern may also

raise a presumption of common imagination or close business association

between SRMB and Super Shakti. Therefore, the petitioner is entitled to

get an order of injunction in the instant case.

Learned Advocate for the petitioner next refers to Section 34 of the

Trademarks Act which provides that nothing in this Act shall entitle the

registered proprietor or registered user to interfere with the rights of prior 13

user. He also draws my attention to Sections 27,28 and 29 of the

Trademarks Act and submits that the scheme of the Act is such that the

rights of prior user are recognized superior than that of the registration

and even the registered proprietor cannot disturb/interfere with the rights

of prior user. He further submits that passing off in common law is

considered to be a right for protection of goodwill in the business against

misrepresentation caused in course of trade and for prevention of restraint

damage on account of the said misrepresentation. In support of his

contention, he refers to a decision of the Hon'ble Supreme Court in S.

Syed Mohideen Vs. P. Sulochana Bai reported in (2016)2 SCC 683. It

was held by the Hon'ble Supreme Court in the aforesaid report that the

passing off action is essentially an action in deceit where the common law

rule is that no person is entitled to carry on his or her business on pretext

that the said business is that of another.

On petitioners claim for an order of injunction, learned Advocate for

the petitioner also refers to the decision of Delhi High Court in the case of

Indian Hotels Company Ltd. & Anr. Vs. Jiva Institute of Vedic

Science & Culture reported in 2008(37) PTC 468.

Lastly it is contended by the learned Advocate for the petitioner that

in the instant case, the interest of the general public is involved because

there is every chance of deception of the consumers of TMT bars by

accepting YY ribbed TMT bars manufactured by the defendants as X

ribbed TMT bars of the petitioners'.

14

Learned senior Counsel on behalf of the defendants, on the other

hand, submits that the petitioner is thoroughly confused as to what he

wants/seeks to protect-the product or the trade mark or the surface

pattern on the product or the trade dress attached to the product. In

order to explain his contention, it is urged by on behalf of the defendant

that the term 'Product' may be defined as a good or service or the

combination of the two that is made available by the companies in the

market for sale to the end consumers. It can be in physical or non

physical form. There may be endless numbers of similar products in

market. As for example, a trader or manufacturer has absolute right and

authority to manufacture similar kind of TMT bar. However, similar kind

of product manufactured by different manufacturers is distinguished from

a clutter of products by trademark, design and trade dress used by a

manufacturer. There is no dispute that in cases of trademark and

copyright, even if the mark or right, as the case may be, is not registered,

the manufacture and prior user of a mark is entitled to common law

protection. However, in order to get protection under the Designs Act or

the Patent Act, the design or patent must be registered. Unless the design

or patent is registered, the manufacturer cannot get any protection

claiming distinctiveness of his design or patent.

The learned senior Counsel on behalf of the defendants next, draws

my attention to paragraph 24 of the application and submits that the

petitioner seeks for protection of "the 'X RIBS' pattern/trademark/trade

dress on its TMT Bars." According to the petitioner, "the 'X RIBS' 15

pattern/trademark/trade dress" embossed on SRMB TMT bars has given

the petitioner exclusive right to use the said mark as prior user. Learned

senior Counsel for the defendants contends that petitioner's registered

trade mark is "SRMB" while the defendants' registered trade mark is

"Super Shakti". The petitioner has not come out with the allegation of

infringement of its registered trade mark by the defendants. According to

the learned senior Counsel for the defendants, the petitioner tries to

project surface pattern of its TMT bar as an integral part of its trade mark.

On this score, according to the defendants, the petitioner is fully

misconceived.

Next, he refers to Section 2(d) of the Designs Act, 2000 which defines

'design' in the following words:

"design" means only the features of shape, configuration,

pattern, ornament or 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 16

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, 'Design' refers to pattern, configuration, or any ornamentation

which when applied to product gives the product a distinctive appearance.

The design is what makes any article attractive and appealing. Hence, it

adds to the commercial value of a product and increases its marketability.

When a design is protected by registration, the proprietor who owns the

registered design has an exclusive right against unauthorized imitation of

the design by third parties. Secondly, the registered design helps the

owner in increasing the commercial value of the trademark as the

customer can identify the design and associate it with the designer at

once.

Coming to the instant case, it is urged by the learned senior Counsel

on behalf of the defendants that pattern "X" on TMT Bar manufactured by

the petitioner is in the nature of a pattern on the surface of the iron rod-

manufactured by the petitioner. It cannot get protection under the

Trademarks Act, 1999. It is also pointed out by drawing attention to

paragraph 2 of the legal notice issued on behalf of the petitioner and

served upon the defendant that the petitioner wants to protect "X-Ribs"

surface pattern for its TMT bars" as its unique and distinctive design.

Since the said surface pattern "X" is not registered under the Designs Act,

2000, the petitioner cannot get any protection either under the

Trademarks Act or under the Designs Act. Learned senior Counsel on 17

behalf of the defendants further submits that the petitioner did acquire

registration of the said design "X" for the article "Rod for Re enforcing

Concrete" on 4th April, 2003, but the said registration was subsequently

cancelled vide order dated 3rd February, 2010 on the basis of an

application filed by another Company, viz., M/S. Tribeni Industries Pvt.

Ltd. on the ground that the said distinctive design was already published

in India or in other country prior to the date of registration. Therefore, the

petitioner used to use the said "X" mark as design on the surface of TMT

bar during the period between 4th April, 2003 and 3rd February, 2010 on

the basis of a dishonest registration. After the said registration was

cancelled, the petitioner has prayed for registration of three dimensional

trademark of the same "X" pattern over its TMT bar on 8th November,

2016. According to the learned senior Advocate for the defendants 'X

RIBS(word)' trademark does not give the petitioner monopoly on the

design. The petitioner has been trying to project surface pattern on the

TMT bar manufactured by it as a trademark, which he cannot in view of

the fact that the petitioner previously used the said mark as registered

design. In other words, the petitioner previously elected to use the mark

as design under the Designs Act and again, it is not permissible to

describe and use the said mark as unregistered trademark only to claim

perpetual monopoly on the said mark.

It is repeatedly urged by the learned senior Counsel for the

defendants that Section 28 of the Trademarks Act deals with the exclusive

right of a registered proprietor over the trademark conferred by 18

registration. Section 29(2) delineates the circumstances when a registered

trademark is infringed. In the instant case, the petitioner has prayed

protection from an alleged action of passing off against the defendants.

However, such relief is not also available to the petitioner because the

defendants have not infringed any unregistered mark of the petitioner. In

support of his contention, he has produced certain pictures of TMT bars

manufactured by other companies with surface pattern "XX" embossed on

them.

Learned senior Counsel for the defendants further submits that the

petitioner has already filed application for rectification of the 'Super

Shakti' trademark registration before the intellectual property Appellate

Board at Chennai and the said application is pending for adjudication.

Under such factual background, Civil Court's jurisdiction in respect of

alleged action for passing off is doubtful. Learned senior Counsel has

further pointed out that the petitioner challenged the order of cancellation

of registration of petitioner's design dated 3rd February, 2010 before the

High Court in AID no. 4 of 2010 and it was dismissed on 8th July, 2011.

According to the learned Counsel for the defendants, the petitioner's

prayer for injunction alleging action for passing off against the defendants

prima facie cannot stand because the allegation of infringement of

trademark has not been established. Petitioner's trademarks "SRMB

500+-X RIBS" (Label) and "X RIBS"(Word) were not infringed by the

defendants having distinct trademark "Super Shakti". Secondly, petitioner

has failed to establish even prima facie, that "XX" has acquired reputation 19

as a mark. "XX" mark embossed on the petitioner's goods cannot be held

to be a trade dress as the TMT bars are not sold in market in specially

designed packaging having distinctive get up and colour scheme.

Therefore, allegation of infringement of trade dress also does not arise.

Thus, it is submitted by the learned senior Counsel on behalf of the

defendants that the petitioner has failed to prove prima facie case in

support of his prayer for ad interim injunction and is not entitled to any

equitable relief at this stage.

According to the learned Counsel for the defendants, in an action for

passing off, the plaintiff cannot claim protection of a surface pattern

embossed on its goods which was previously registered as 'Design' under

the Designs Act and subsequently cancelled by the competent authority

vide order dated 4th March, 2010 which was also affirmed by this Court in

AID 4 of 2010. In this regard he refers to the following observation of

Micolube India Ltd.-vs.- Rakesh Kumar Trading A/s Sourabh

Industries & Ors. reported in (2013) 199 DLT 740 (FB) n paragraph

53 of the report:-

"The said composite scheme of Designs Act, 2000 clearly

leads to a conclusion that the design monopoly though named

differently as "copyright in design", but it has trappings of

patent so far as the nature and characteristic of the right is

concerned. The said conclusion by fair reading of Designs Act

being akin to patent is once read with the avowed objective of

Designs Act wherein one of the objects is that to confer a 20

limited monopoly right which should not unnecessarily be

extended makes it crystal-clear that after the expiration of

design right, the treatment of the said monopoly conferred by

the design right shall be the same as that of patents which is

that after expiration of design right, the same shall go to the

public domain as in the cases of patent and in case, the said

monopoly is extended, the same shall be contrary to the

objects and scheme of Designs Act."

He also refers to paragraphs 60 and 61 of the Microlube(supra)

which is quoted below:-

"60. In view of the above discussion, it is clear the passing off is

a right to sue in common law to prevent misrepresentation is

mutually inconsistent and distinct from the purely statutory

monopolies which are in the form of privileges like patents and

design which operate on the jurisprudence of conferment limited

statutory rights. Therefore, what can be deduced from the

present discussion that the rights in common law undermines

and disturb the basic thrust of the policy behind limited

monopoly rights which is after the expiration of the period, the

said shapes of articles or embodiments enjoying the monopoly

shall go in public domain as the limited monopoly rights

extinguish or lapse. Therefore, the said limited monopoly

rights or privilege and common law rights

jurisprudentially cannot co-exist as complementary to 21

each other, however, by saving so, it does not mean that

they cannot exist independent of each other.

61. It is noteworthy to mention that no one is disputing the

existence of the passing off right qua the shape of the articles

which answering the present reference. The question which

has been referred is whether the Design right and the passing

off right can be joined together or can co-exist when the same

are not saved by the Design Act. It is thus essentially a

question relating to conflict between two statutes which are

Trade Marks Act and Designs Act which are operating on the

basis of two different legislative policies which are militating

against each other in which public interests are involved. Both

Designs Act and Trade Marks Act have jurisprudentially

different nature of rights which are statutory and common law

respectively."

It is pointed out by the learned senior Counsel on behalf of the

defendants that the plaintiff/petitioner cannot allege passing off against

the defendants pleading, inter alia, that the passing off right should be

available to shape of the products in the cases where the Design right has

been cancelled because, first, the Design Act, 2000 protects the monopoly

rights for a limited period and the same cannot be extended under the

guise of the passing off with a dishonest intention to establish dual

monopoly or monopoly in perpetuity by involving protection under the

Trade Marks Act. Secondly, the grant of the further monopoly rights 22

under the guise of the passing off to the shape of the article even after the

expiry of the Design would make the Design Act redundant or nugatory or

otiose and thirdly, the monopoly rights under the Design and Trade Mark

are mutually inconsistent with each other. (See paragraph 63 of Micolube).

Learned Senior Advocate for the defendant next submits that

the decision in Micolube (supra) which is commonly known

as Mohan Lal's case came up for consideration before the Full

Bench of Delhi High Court in Carlsberg Breweries A/S. Vs.

Som Distilleries and Breweries Ltd. reported in AIR 2019 Del

23(FB)and the following principle is called out:-

Learned senior Advocate for the defendants next submits that

the decision in Micolube(supra) which is commonly known

as Mohanlal's case came up for consideration before the Full

Bench of Delhi High Court in Carlsberg Breweries A/S. Vs.

Som Distilleries and Breweries Ltd. reported in AIR 2019

Del 23(FB) and the following principle is called out:-

"45. This court is also of the opinion that the Full Bench ruling

in Mohan Lal(supra) made and observation, which is

inaccurate: it firstly correctly noted that registration as a design

is not possible, of a trade mark; it, however later noted that

"post registration under Section 11 of the Designs Act, there can

be no limitation on its use as a trademark by the registrant of

the design. The reason being: the use of a registered design as

a trade mark, is not provided as a ground for its cancellation 23

under Section 19 of the Designs Act." This observation ignores

that the Designs Act, Section 19(e) specifically exposes a

registered design to cancellation when "(e) it is not a design as

defined under clause (d) of section 2." The reason for this is that

Section 2 of the Designs Act, defines "design" as " ... the

features of shape, configuration, pattern, ornament or

composition of lines or colours applied to any article.......; but

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...." Therefore, if the registered

design per se is used as a trade mark, it apparently can be

cancelled. The larger legal formulation in Mohan Lal(supra),

that a passing off action i.e. one which is not limited or

restricted to trademark use alone, but the overall get up

or "trade dress "however, is correct; as long as the

elements of the design are not used as a trademark, but a

larger trade dress get up, presentation of the product through

its packaging and so on, given that a "passing off" claim can

include but is also broader than infringement of a trademark,

the cause of action against such use lies."

Learned Advocate for the defendants further submits that the ratio laid

down in Mohideen (supra) is also not applicable under the facts and

circumstances of the instant case because passing off in common law is 24

considered to be right for protection of good will in the business against

misrepresentation caused in the course of trade and for prevention of

resultant damage on account of the said misrepresentation. The passing

off action is essentially an action in deceit where the common law rule is

that no person is entitled to carry on his or her business on pretext that

the said business is that of another. In the instant case there is no

allegation made by the petitioner that the defendants have deceitfully

infringed any mark on petitioner's TMT Bar. The trademarks of the

petitioner and the defendants are completely different and distinguishable.

It is not the case of the petitioner that the defendants have infringed the

mark of the petitioner, viz, "SRMB" (word) and "X-RIBS" (label).

Having heard submission made by the learned Counsels/Senior

Counsels appearing on behalf of the parties and on perusal of the

authorities on the subject cited by the learned Counsels for both the

parties in support of their respective cases, I likely to state at the outset

that passing off is an actionable wrong in which a person passes off his

goods as the goods of another. No trader or manufacturer is entitled to

represent his goods and services as the goods and services of another

man; and no man is permitted to use any mark, sign or symbol, devise or

other means, whereby, without making a direct false representation

himself to a purchaser, he enables such purchaser to tell a lie or to make

a false representation to somebody else who is the ultimate customer. The

common law remedy of passing off to protect the unregistered and 25

registered trademark is invoked to safeguard the business interest,

goodwill and reputation associated with such distinctive mark used by a

particular trader or manufacturer.

Bearing the above essential ingredients of an action for passing off, if

the factual aspect of the case in hand is analysed, one finds the following

undisputed facts and circumstances:-

i) TMT Bars are manufactured by various manufacturers dealing with the trade.

ii) All TMT Bars are cylindrical in shape.

iii) The manufacturers of TMT Bars use their trade name, distinct labels, distinctive marks etc as their trademarks.

iv) In the instant case the petitioner has two registered trademarks, viz, "SRMB 500 + XRIBS" (label) and "XRIBS" (word) for their TMT Bars. Likewise the defendants have two registered trademarks "SUPER SHAKTI" and trademark image.

v) The petitioner got "XX" mark or impression registered as design on the TMT Bars manufactured by it in 2003 and the said registration was cancelled under Section 19 of the Designs Act in 2010.

Under such undisputed factual background, the petitioner contends

that it has been using the said mark as an unregistered trademark since

2001 and the goods manufactured by the petitioner earn goodwill and 26

reputation on the basis of the said unregistered mark embossed on the

goods. The allegation against the defendants is that they have copied the

said mark on their product claiming to be "YY" mark on the strength of

registered image trademark. According to the petitioner, the petitioner is

the prior user of the said mark and the defendants cannot pass off their

product by slavish imitation of the mark embossing on their TMT Bars.

Section 2(1)(m) of the Trade Marks Act defines "mark" which

includes a devise, brand, heading, label, ticket, name, signature, word,

letter, numeral, shape of goods, packaging or combination of colours or

any combination thereof. Therefore, a mark on a product can be used as

trademark. Shape of a mark may also be used as trademark. The

petitioner has been using "X" shape on the goods manufactured by it since

2001. Up to this stage there is no dispute between the parties. The

bone of contention between the parties is as to whether the petitioner is

entitled to use "X" shape on the TMT Bars manufactured by them as a

trademark or as a source identifier when the petitioner previously used the

same mark as design after obtaining its registration under the Designs Act

and when the said registration was cancelled due to prior publication of

the design.

In paragraph 134 (b) of Mohan Lal's case (supra) held:- 27

"The remedy of passing off in so far its relates to claim of

protection for shape of articles is not available for the purposes of

enforcement of rights and remedies under the Designs Act. The said

remedy is clearly absent under the Designs Act considering the

avowed objective of the Act of 2000 which is to provide limited

protection with no unnecessary extension."

It is pertinent to note that Mohan Lal decides maintainability of

passing off action in respect of a mark which is registered as a design

under the Designs Act. In other words, the issue before the Full Bench in

Mohan Lal is whether a case for passing off in respect of a mark registered

under the Designs Act is maintainable claiming the said mark as a

trademark. Mohan Lal answered the above question in the negative.

In the instant case, however, the petitioner's mark "X" which was

registered under the Designs Act was cancelled in 2010. The defendants

do not raise any dispute against the specific plea made by the petitioner to

the effect that the petitioner has been using the said mark on TMT Bars

sine 2001. Admittedly the said mark was registered in 2003 and cancelled

in 2010. Therefore, before registration of the said mark as a design, the

petitioner use the said mark as unregister trademark and even after

cancellation of registration of the said mark under the Designs Act, it has

been using the same "X" mark on the TMT Bars as trademark. In

view of such circumstances, in my considered opinion the instant suit for

injunction in an action for passing off is maintainable. 28

The petitioner has relied upon an order passed in GA 261 of 2019

in the case of SRMB Srijan Private Limited vs. Sreegopal Concrete

Private Limited passed by a Coordinate Bench of this Court on 30th

January, 2019. In the said order, a Coordinate Bench of this Court passed

an interim order of injunction holding, inter alia, that non-registration of

the design contained in the trade pattern does not take away the right of

the persons who uses the said design contained in the trade pattern as a

trademark to sue for passing off.

The learned Senior Counsel on behalf of the defendants vehemently

urged that the aforesaid order cannot be held as a precedent on the

ground that the defendant of the said case is a franchisee of Prime Gold

International Limited against whom an order of injunction was passed by

the Delhi High Court on compromise or out of Court settlement and this

Court passed the order of interim injunction against Sreegopal Concrete

Private Limited being a franchisee of Prime Gold International Limited.

Mohan Lal (supra), Carlsberg (supra) and other authorities on the

subject was considered by the Division Bench of the Delhi High Court in

RFA(OA)(COMM) 22/2019 & CM APP No.22655/2019 (stay) (M/s Crocs

INC USA vs. M/s Bata India and Ors.) and other allied matters. In the

aforesaid report, it was contended on behalf of the appellant that the

majority view in Mohan Lal as modified by the judgment of the Full Bench 29

in Carlsberg was that no passing off action would lie in respect of a

registered design used as a trademark.

On the question as to whether there can be an availability of remedy

of passing off in absence of express saving or preservation of the common

law by the Designs Act, 2000 and more so when the rights and remedies

under the act are statutory in nature, was answered by the Full Bench of

Delhi High Court in Mohan Lal as under:-

(i) A design includes a shape of configuration as is evident from the

definition of 'design' under Section 2(d) of the Designs Act,

2000(DA).

(ii) A design can be used as a trademark and if by virtue of its use,

goodwill is generated in the course of trade of business, it can be

protected by an action in the nature of passing off.

(iii) While the radeTMarks act, 1999 (TMA) confers certain statutory

rights qua registered trademark, it does not deprive a user of an

unregistered trademark the right to protect the misuse of his mark by a

Defendant who is in possession of a registered trademark.

(iv) Therefore, in so far as a design, which is registered under the DA is

concerned, it may not have the statutory rights, which a registered

trade mark has, under the TMA. However, the registrant of the design

"would certainly have the right to take remedial steps to correct a

wrong committed by a defendant by instituting a passing off action." If 30

such an action was instituted "the plaintiff would have to demonstrate

that the registered design was used by him as a trade mark which, in

the minds of the purchasing public is associated with his goods or

services which, have acquired goodwill/reputation which is worth

protecting."

(v) Such a passing off action would be based on a plea that "the design,

which is an unregistered mark, was being used by the plaintiff for the

purposes of business: and that the plaintiffs good and/or services had

acquired a reputation and/or goodwill, which were identified in the

minds of the consumers, by associating the design /the mark, with the

goods and/ or services."

(vi) In other words, the plea would be that "the design which was being

used as a mark identified the plaintiff, as the source of the goods

supplied or services offered."

(vii) "Therefore, having regard to the definition of a design under Section

2(d) of the Designs Act, it may not be possible to register

simultaneously the same matter as a design and a trade mark.

However, post registration under Section 11 of the Designs Act, there

can be no limitation on its use as a trademark by the registrant of the

design. The reason being: the use of a registered design as a trade

mark, is not provided as a ground for its cancellation under Section 9

of the Designs Act."

31

The aforesaid report also considered the ratio laid down in Carlsberg

and held that a passing off action is not limited or restricted to trademark

use alone, but the overall get up or trade dress. It was also held that

Carlsberg does not explicitly or impliedly overrule the Full Bench in Mohan

Lal as regards the answer to the question recorded above and suit for

injunction for passing off is maintainable.

The petitioner has been able to prove prima facie that the petitioner

is the prior user of the mark "X" since 2001. Previous registration of the

mark as design under the Designs Act which was cancelled in 2010 does

not disentitle the petitioner to bring an action for infringement of the mark

on the ground of passing off. In view of the above discussion, I conclude

that the petitioner has been able to make out a strong prima facie case for

going to trial. Accordingly the petitioner is entitled to an ad-interim order

of injunction in view of the fact that "X" mark on the TMT Bar of the

defendants are ex facie identical and deceptively similar to the plaintiff's

trade dress and pattern.

For the reason stated above, there shall be an order of interim

injunction restraining the defendants from manufacturing, distributing,

marketing and/or selling TMT Bars with "X" pattern emboss thereon for

the period of two weeks after vacation or until further order whichever is

earlier.

32

Defendants are at liberty to file affidavit-in-opposition within one

week after vacation. The plaintiff is at liberty to file affidavit-in-reply, if any

within a week thereafter. The matter shall appear under the heading

"Adjourn Motion" two weeks after vacation.

(BIBEK CHAUDHURI,J.)

mg