In the present case Pentel Kabushiki Kaisha (Appellant no. 1) had developed a design for a pen which is registered in India as Design No. 263172 dated 10th December 2013 claiming priority from it Japanese Design No. 1515380. This Design was used in their Energel series of pen which were launched in India in August 2014.
In October 2016, appellants came across Arora Stationers, respondents’ product ‘Montex Mastani’ which is alleged to be similar to the appellants’ design. Respondents continued marketing, manufacturing and distributing the impugned product despite receiving cease and desist notice letter dated 22nd October 2016 from the appellant. Hence, appellants filed suit bearing CS (Comm) 361/2017 against the respondents alleging fraudulent and slavish imitation of the appellants’ rights in the said design along with I.A. 6056/2017 seeking ex parte interim injunction restraining the respondents from manufacturing or trading in pends imitating the appellants’ design. Single Judge although noticed the similarity between the products but refrained from passing ex parte orders. Later while hearing the arguments from the respondents’ counsel, Single Judge granted ad interim orders against the respondents. It was contended by the respondents that this design is merely combination of various pre-published designs of the respondents. Hence, it lacks novelty. Also, during the pendency of the suit, respondent no. 2 secured registration of the impugned design under registration no. 282909. Single Judge finally dismissed the application 6056/2017 via order dated 8th January 2018 and vacated the interim order passed on 26th May 2017. He observed that one of the defences available to the defendant under the Designs Act is that the design of the plaintiff is not substantially novel.
Aggrieved by the said order of the Single Judge, present appeal has been preferred by the appellant.
Respondents argued that there is no novelty or newness in the design of the appellant and the respondents are merely using features available in its own pens. However, Delhi HC mentioned that Respondent themselves applied for registration of the design, the Respondent cannot raise the plea that it is merely a combination of known designs and thus, cannot be granted protection under the design law.
In addition, Delhi HC observed that Single Judge ignored that respondents had also obtained registration of the very same design during the pendency of the suit. It is not permissible for the respondents to challenge the design of the appellants on the ground that the design of the appellant was not new or original. Since, respondents have registered the same design, none of the grounds prescribed in Section 4 are attracted. Hence, cannot be permitted to subsequently do a volte face and contend that the design is not registrable as not being new or original.
Delhi High Court while considering whether the suit design is substantially novel or original to make it significantly distinguishable from any known shape or features which already exist in ball point pens held that Single Judge has erred in ignoring the facts disclosed by the defendants as the suit remains a lis between private parties Further, Delhi HC mentioned that representation made by the party while applying for registration of a design is essential. While doing so, a party necessarily represents that the design is capable of registration and thus, not hit by any prohibition under Section 4 of the Act including it not being significantly distinguishable from known designs or combination of known designs. Hence Delhi HC relied on the maxim quod approbo non reprobo which means that any party to a litigation cannot be allowed to approve and reject or blow hot and cold at the same time.
Hence, Delhi High Court allowed the appeal and held that pen of respondents are identical to the registered design of the appellants. Thus, Delhi HC ordered respondents, their partners, agents, proprietors, servants and/or all those actively in concert to restrain from manufacturing or marketing the pen/writing instrument under the name ‘Montex Mastani’ or any other name infringing the registered design of the appellants.