TMI Blog2003 (9) TMI 558X X X X Extracts X X X X X X X X Extracts X X X X ..... ication filed by defendant No. 1 for restraining the plaintiffs from issuing any threats/communications to the dealers/business associates of the defendants till the application for stay is decided by the Court. 2. The facts, relevant for the disposal of the aforesaid two applications, briefly stated, are that the plaintiffs have filed a suit for permanent injunction and damages against the defendants alleging that the plaintiff No. 1 is an American Company which manufactures and sells ophthalmic glass blanks used in vision corrective spectacles since 1957. It is stated to be a world renowned company and plaintiff No. 2 is its subsidiary. Plaintiff No. 3 in which the plaintiff No. 2 holds 99.95% of the stake is manufacturing ophthalmic glass blanks including photo chromic glass blanks which are marketed worldwide. It has been granted a certificate by Registrar of Companies for establishing its business place in India. The plaintiff No. 1, by virtue of corporate relationship, exercises control over the use of trade marks and other intellectual property rights owned by plaintiff No. 3. The plaintiff No. 3 has a branch office in India but currently it has no manufacturing or other ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... anufacturing ophthalmic blanks with ribs on the periphery. In 1988, the plaintiffs, Schott and Pilkington agreed to use different number of ribs on their ophthalmic glass/blanks which were mutually exclusive and as per understanding the plaintiff started using three and five ribs, Schott one rib and Pilkington two and four ribs. 4. Subsequently, vide an assignment deed dated 21-12-2001, Pilkington assigned absolutely and forever its right, title and interest in two and four ribs to the plaintiff No. 1 and closed down its ophthalmic blanks manufac-turing unit. Resultantly, the plaintiff No. 1 and its subsidiaries acquired exclusive proprietary rights in the manufacturing of 2, 3, 4 and 5 rib products. The existence of ribs became an easy and ready method for the wholesalers and opticians to distinguish and recognise the plaintiffs, products simply by seeing, feeling and counting the ribs on a product. It was alleged that the ribs on the periphery of the lenses were purely functional to the extent of the identification of the product and no aesthetic or design aspects were present in the ribs under the Designs Act of 1911. It was also averred that the plaintiffs had attained tr ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... selling two rib products by passing off the same as those of the plaintiffs and causing great harm and prejudice not only to the plaintiffs but to the interests of the opticians and ultimately consumers also, who purchase the vision corrective spectacles believing the product having good quality lenses and accordingly prayed for a decree of permanent injunction to restrain the defendants from using two ribs on their ophthalmic blanks/lenses. Damages in the sum of Rs. 50 lakhs and an order of delivery up was also prayed for. The application under Order 39 Rules 1 and 2 of the Code of Civil Procedure is also based on the pleadings made in the plaint. 6. The defendants filed a joint written statement and a reply to the injunction application denying the plaintiffs right to use two ribs on its blanks on the basis of the assignment deed dated 21-12-2001. It was also pleaded that there were many manufacturers of the ophthalmic lenses and photo chromic lenses similar to those being manufactured and marketed by the plaintiffs. It was disputed that the two ribs or presence of any ribs could be covered under the definition of "mark" or "trade mark" given under the Trade and Merchand ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... or not in establishing a prima facie case in their favour, this Court has to address itself to the question as to whether the ribs/lines on the periphery of ophthalmic lenses are covered within the definition of "trade mark" or are covered within the definition of "design" as given under the Indian Designs Act, 1911, and if the ribs/lines on the blanks/lenses are held to be a trade mark is there prima facie proof of plaintiff s proprietorship thereof or prior use with trade reputation and goodwill ? It is also to be determined as to what is the effect of the registration of the two ribs/lines under the Designs Act in favour of the defendants. 9. The first question to be decided is as to whether the ribs on the periphery of the ophthalmic blanks/lenses being manufactured and sold by the parties to the suit are prima facie covered within the definition of a "mark" or a "trade mark" as defined in the TMM Act or are covered by the definition of "design" as given in the Designs Act, 2000. According to the plaintiffs, the ribs fall within the definition of "trade mark" and as such, they are entitled to restrain the defendants from using the said mark on their ophthalmic blanks ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e Marks Act, when read in harmony lead to a definite conclusion that a "trade mark" may be a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof upon any goods which is capable of distinguishing the goods so as to connect them with the proprietor of the trade mark. 13. Section 2( d ) of the Designs Act, 2000 defines a design as under : "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 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 Copyrig ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e producers/manufacturers thereof. 16. After going through the pleadings, affidavits, documents placed on record and considering the submissions made by learned counsel for the parties, this Court finds that the two ribs on the periphery of ophthalmic blanks/lenses are prima facie a "trade mark" and not a "design" for the reason that it is prima facie shown on record that these ribs were adopted by the three leading manufacturers of ophthalmic blanks and lenses for distinguishing their products from the products of other manufacturers and by mutual agreement, the three leading Companies-Pilkington, Corning and Schott-agreed to use different number of ribs on their products so that the wholesalers, opticians or other traders in the trade could distinguish between the manufacturers thereof. It is not disputed by learned counsel for the parties that the ultimate users of these ophthalmic blanks/lenses are not in a position to identify the manufacturers on account of the presence of ribs on the periphery thereof as once the spectacles are ready, these ribs get concealed under the frames of spectacles. It also remains a question to be determined in this suit as to whether the bl ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ding manufacturers of the ophthalmic blanks and opticians and traders notice and count these ribs for connecting the glasses with the manufacturers. It is, therefore, prima facie held that "two ribs" in question on the ophthalmic blanks are a "Trade Mark" under TMM Act and not a "design" in terms of the Designs Act, 2000. 18. Coming to the question as to whether a prima facie case is made out or not in favour of the plaintiffs that the ophthalmic blanks which are being produced/manufactured by them carry their trade mark in the form of "two ribs" on periphery of blanks/lenses and their blanks/lenses are being passed off by the defendants by the use thereof on the blanks/lenses being procured by them from China or other sources, this Court finds that the pleadings as contained in the plaint, averments in the application and the documents placed on record prima facie establish that right from the year 1957 the plaintiff No. 1 and its predecessor in interest have been manufacturing and selling the ophthalmic blanks which are used in corrective vision spectacles. It is proved on record that plaintiff No. 1 has been selling its products in various parts of the world including ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n in their favour does not afford any protection to them for the reason that the ribs being "trade mark" could not be registered as a "Design" and defendants cannot be allowed to put it on their product if it is found that the plaintiffs are the proprietors thereof and have been using the same since long and have developed goodwill and trade reputation in respect thereof. The registration of the two ribs as a "design" in favour of defendants is directly hit by section 4 of the Designs Act, 2000 which prohibits registration of a design which is not new or original or has been disclosed to the public anywhere in India or in any other country. If ribs were being used in India as well as abroad prior to the date of application, it could not be registered as a "design". 20. It is also prima facie shown on record that even defendants have been purchasing ophthalmic blanks with ribs from the plaintiffs. The produc-tion of "two ribs" blanks in India by plaintiffs is yet to commence but it stands withheld primarily for the reason that the defendants are passing off their goods by using the "two ribs" trade mark. The averments made in para 51 of the plaint and reply thereto in the writ ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... re distinguished by 3-5 ribs for the last several years and even two ribs now belong to them after its transfer from Pilkington. These letters when read with letter written by defendant No. 1, acknowledging that the plaintiffs were the proprietors of 3/5 ribs trade marks, are sufficient to hold prima facie that the plaintiff have made out a case that they are the proprietors of "two ribs" trade mark also and because of its prior use and trade reputation they are entitled to protection against any attempt of passing off. The advertisements placed on record show that the plaintiffs have been advertising their goods in India also. 22. Learned counsel for the defendants laid a great deal of stress on the so called contradictions in plaintiffs stand in regard to the year of the commencement of the use of "two ribs" in India and submits that the application filed by the plaintiff in October, 2002 regarding two ribs and the earlier one regarding four ribs mentioned that the said mark was proposed to be used but the amendment thereof stated that it was being used since 1998. It is submitted that the affidavits filed on behalf of the plaintiffs stated that these were being used since ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... an action for deceit. In the case of N.R. Dongre v. Whirlpool Corpn. AIR 1995 Delhi 300, which was affirmed in appeal by the Supreme Court in N.R. Dongre v. Whirlpool Corpn. (1996) 5 SCC 714, it was once again reiterated that passing off action is an action for deceit intended to prevent unfair trade practices and the prior use of trade name by a plaintiff having trans-border reputation actually extending to India was good enough for maintaining such an action. It was held that injunction was a relief based on equitable principles and prior use of a mark was a good ground to injunct even a defendant who had got the trade mark registered in his name. The observations of the Division Bench were also referred to which had stated that the principle on which passing off action is grounded is that a man is not to sell his own goods under the pretence that they are the goods of another man. 24. In the case in hand, learned counsel for the defendants has contended that the defendants are selling their goods at a cheaper price as compared to the plaintiffs which is in the interest of the consumers and the plaintiffs should not be permitted to monopolise the market and jack up th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... eby possibility of selling the goods by the defendants by creating an impression that the goods are produced/manufactured by the plaintiffs it has to be held that the plaintiffs have a prima facie case and need protection by issuance of an injunction. 25. Learned counsel for the defendants has relied upon the judgment in S.S. Products of India v. Star Plast 2001 PTC 835 (Delhi), to contend that in view of the registration of the design in their favour no injunction should be issued. In the said case, both the parties to the suit were having registration of "designs" in their favour in regard to air pumps but the Court did not find prima facie that the plaintiffs design had been infringed. The parties were left to seek cancellation of the offending design if any, of the other party and as such, no injunction was issued. In the present case, the dispute between the parties revolves around the question as to whether the "two ribs" are a trade mark or a design and as held hereinbefore, the ribs on the ophthalmic blanks, which are being used by the plaintiffs and some other companies, are not at all a "design" but a "trade mark" only, the judgment is of no help to the defend ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n record to show that the ophthalmic blanks/lenses being sold by the defendants are of inferior quality. This fact is not required to be established in a passing off action. If defendant s goods are superior to the goods of the plaintiffs, they should sell them under their own brand name instead of attempting to sell them under the trade mark of the plaintiffs. The very fact that the defendants are trying to pass off their goods by using the trade mark of the plaintiffs is indicative of the fact that the defendants do not want to sell their products under their own name. The obvious inference is that the goods of the plaintiffs are superior in quality and as such the defendant s intended to take unfair advantage of plaintiffs goodwill and trade reputation and make profits to which they are not entitled. In case ad interim injunction is not issued to restrain the defendants during the pendency of suit the defendants will continue to indulge in illegal and unfair trade practice to enrich themselves at the cost of plaintiffs business reputation and consumer s health and pocket. 27. In view of the forgoing reasons, the plaintiff s application under Order 39, Rules 1 and 2 read w ..... X X X X Extracts X X X X X X X X Extracts X X X X
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