This case concerns a design infringement dispute where Indo Asahi Glass Co. Ltd., the plaintiff, alleged that Jai Mala Roller Glass Ltd., the defendant, infringed its registered design titled "KONOHA" under the Designs Act, 1911. Indo Asahi sought interim relief by way of injunction and other remedies to restrain the defendant from using the allegedly infringing design "DHOOP CHAON" on its glass sheets.

Detailed Factual Background:

• Indo Asahi Glass Co. Ltd. is engaged in manufacturing, selling, and dealing with various glass products, including figured glass.
• The plaintiff is the registered proprietor of a design called "KONOHA" under Registration No. 158266 in Class IV from April 24, 1987.
• The registration was renewed for a further period from October 31, 1991.
• Indo Asahi has been using this design extensively since 1987 and claimed substantial goodwill and reputation in the market.
• In December 1992, Indo Asahi discovered that Jai Mala Roller Glass Ltd. had allegedly started manufacturing glass sheets with a design similar or deceptively similar to "KONOHA," marketed under the name "DHOOP CHAON."
• Indo Asahi contended that the defendant's design was visually similar and amounted to an infringement of its registered design, causing business losses.
• Indo Asahi sought damages of Rs. 6,00,000 along with an injunction.

Detailed Procedural Background:

• The plaintiff filed the suit for injunction and damages.
• Indo Asahi moved an interlocutory application seeking an interim injunction to restrain the defendant from using the allegedly infringing design.
• The defendant opposed the application and filed a petition (CO 2 of 1993) under Section 51-A of the Designs Act, 1911, for cancellation of the plaintiff's registered design, arguing that the design lacked originality.

Issues Involved in the Case:

• Whether the plaintiff was entitled to interim relief despite the pending cancellation petition filed by the defendant challenging the validity of the plaintiff's registered design?
• Whether the defendant's use of "DHOOP CHAON" infringed Indo Asahi's registered "KONOHA" design?

Detailed Submission of Parties:

• The plaintiff asserted that it was the lawful registered proprietor of the "KONOHA" design.
• The plaintiff contended that the defendant's "DHOOP CHAON" design was deceptively similar, causing confusion and loss to its business.
• Indo Asahi argued that the registration was valid and enforceable and that the defendant started using the impugned design after 1993, well after the plaintiff's registration.
• The defendant argued that the plaintiff suppressed material facts by not disclosing that the design originated from a Tokyo-based company.
• The defendant contended that the design was neither new nor original, as similar designs had been previously published and used internationally, including by German company Dornbusch GMBH.
• The defendant also claimed that a cancellation petition under Section 51-A had been filed, and until adjudication, the plaintiff should not be granted interim relief.

Detailed Discussion on Judgments:

• The defendant relied on M/s. Nikitasha India Pvt. Ltd. v. M/s. Faridabad Gas Gadgets Pvt. Ltd., AIR 1985 Delhi 136 to argue that an injunction should not be granted where the design's validity is disputed.
• The plaintiff cited M/s. Western Engineering Co. v. M/s. America Lock Co., (1973) II Delhi 177, which held that minor variations in design do not negate infringement if the two designs are visually similar.
• The court referred to V.D. Ltd. v. Boston Deep Sea Fishing & Ice Co. Ltd., 52 RPC 303, which discussed prior publication.
• The defendant invoked M/s. Tobu Enterprises Pvt. Ltd. v. M/s. Megha Enterprises, 1983 PTC 359, arguing that when both parties have registered designs, no injunction should be granted based solely on prior registration.

Detailed Reasoning and Analysis of Judge:

• Justice P. K. Bahri analyzed the evidence and arguments, noting Indo Asahi's continuous use of the design since 1987.
• The defendant had only recently started using the allegedly infringing design in 1993.
• The court acknowledged the defendant's cancellation petition but noted a lack of conclusive evidence proving prior publication in India.
• The judge observed that although the two designs appeared similar, both parties held registered designs, so interim relief was not justified.
• The court directed the defendant to maintain proper accounts of sales under the impugned design and file quarterly reports.

Final Decision:

• The court declined to grant the temporary injunction sought by Indo Asahi.
• Jai Mala Roller Glass Ltd. was directed to maintain accurate records of sales and file quarterly statements in court.

Law Settled in this Case:

• Where both parties hold registered designs, interim injunctions may not be granted solely on the basis of prior registration.
• Prior publication must be substantiated with clear evidence of public disclosure in India.
• The ruling balances protection of registered rights with preventing unjustified restraints on business activities pending final adjudication.

Case Title: Indo Asahi Glass Co. Ltd. Vs Jai Mala Roller Glass Ltd. and Another
Date of Order: 19 December 1994
Citation: 1995(33)DRJ317
Name of Court: High Court of Delhi
Name of Judge: Justice P. K. Bahri

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Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539