crocs v liberty and ors., - spicyip.com · cs (comm) no. 772/2016 and connected cases page 1 of 54...

CS (COMM) No. 772/2016 and connected cases of 54

* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ CS (COMM) No. 772/2016

+ CS(COMM) No. 570/2017

+ CS(COMM) No.571/2017

+ CS(COMM) No.780/2017

+ CS(OS) No.2850/2014

+ CS(OS) No.64/2016

+ CS (COMM) No.52/2018

+ CS (COMM) No.53/2018

% 8th

February, 2018

+ CS (COMM) No. 772/2016

M/s CROCS INC.USA ..... Plaintiff

Through: Mr. Akhil Sibal, Sr. Adv., Mr.

Ajay Amitabh Suman, Mr.

Pankaj Kumar, Mr. Kapil Giri,

Mr. Vinay Shukla, Mr. Nikhil

Chawla, Ms. Tanvi Mishra

Advocates.

versus

M/s LIBERTY SHOES LTD ..... Defendant

Through: Mr. Jayant Mehta, Mr. Kapil

Wadhwa, Ms. Devyani Nath,

Mr. Shubhankar, Mr. Rahul

Kukreja, Advocates for D-1.

+ CS(COMM) No. 570/2017

M/s CROCS INC. USA ..... Plaintiff






Advocates.


versus

M/s RELAXO FOOTWEAR LTD. ..... Defendant

Through: None.

+ CS(COMM) No. 571/2017







Advocates.

versus

RELAXO FOOTWEAR LTD. & ANR. ..... Defendant

Through: None.

+ CS(COMM) No. 780/2017 and I.A. No. 9971/2015 (for stay)







Advocates.

versus

BIOWORLD MERCHANDISING INDIA LTD.

..... Defendant

Through: Mr. Anil Dutt and Ms. V.S.

Mani, Advocates.

+ CS(OS) No. 2850/2014








Advocates.

versus

M/s BATA INDIA LTD & ORS. ..... Defendants

Through: Mr. Neeraj Grover and Ms.

Ragini Anand, Advocates.

+ CS(OS) No. 64/2016

M/s CROCS INC USA ..... Plaintiff






Advocates.

versus

M/s ACTION SHOES PVT. LTD. & ORS. ..... Defendants

Through: Mr. Kapil Wadhwa and Ms.

Devyani Nath, Advocates.

+ CS (COMM) No. 52/2018








Advocates.

versus

AQUALITE INDIA LIMITED & ANR. ..... Defendants

Through: Mr. Sandeep Sethi, Sr.

Advocate with Mr. C.A.

Brijesh, Mr. Rohan Seth, Mr.

Dhruv Grover and Mr.

Peeyoosh Kalra Advocates.

+ CS (COMM) No. 53/2018







Advocates.

versus

KIDZ PALACE & ORS. ..... Defendants

Through: Mr. Anil Dutt and Ms. V.S.

Mani, Advocates for D-2 and 3.

CORAM:

HON’BLE MR. JUSTICE VALMIKI J.MEHTA

To be referred to the Reporter or not? YES

VALMIKI J. MEHTA, J (ORAL)

CS (COMM) No. 772/2016 and I.A. No. (to be numbered) (under

Order XXXIX Rules 1 & 2 CPC)

CS (COMM) No.571/2017 and I.A. No. 6811/2015(under Order

XXXIX Rules 1 & 2 CPC)


CS (COMM) No. 780/2017 and I.A. No. 9971/2015 (under Order


CS (COMM) No. 2850/2014 and I.A. No. 19747/2014 (under Order

XXXIX Rules 1 & 2 CPC) & I.A. No. 24965/2014 (under Order

XXXIX Rule 4 CPC)

CS (COMM) 52/2018 and I.A. No. 1791/2018(under Order

XXXIX Rules 1 & 2 CPC) & I.A. (to be numbered) under Order

XXXIX Rule 4 CPC)

CS (COMM) 53/2018 and I.A. No. 1794/2018 (under Order


1. By this order the injunction applications filed by the

plaintiff in the suit are being heard and disposed of. Simultaneously,

the applications under Order XXXIX Rule 4 CPC for vacating the

interim order granted in favour of the plaintiff in CS (COMM) No.

52/2018 and CS (COMM) No. 2850/2014 are also being disposed of.

The interim application in CS (COMM) No. 772/2016 titled as Crocs

Inc. USA Vs. Liberty Shoes Limited is being taken as lead application

and lead case and the discussion, reasoning and conclusions of such

interim applications mutatis mutandis will apply with respect to the

injunction applications filed in the other suits given in the heading of

this order. It is also noted that since some of the suits were filed in the

District Court, and which have thereafter been transferred to this

Court, in these suits there are no IA numbers to the interim

applications. Plaintiffs have filed this suit for permanent injunction

seeking to restrain the defendant from infringing the registered design


of the plaintiff bearing registration no. 197685 which is said to be

valid up to 28.5.2019. The registered design of the plaintiff is with

respect to footwear. The registered design of the plaintiff with respect

to the subject footwear can be seen from the attachments to the

registration certificates of the plaintiff with respect to design no.

197685 and these pictorial representations/sketches of the plaintiff‘s

footwear registered as design are as under:-


2. In CS (COMM) No. 780/2017, the plaint is

essentially/mostly same as the plaint filed qua registered design no.

197685. The plaintiff for seeking reliefs has relied upon its registered

design no. 197686. To complete the narration, the sketches/pictorial

representations of the footwear which is the subject matter of the

registered design no. 197686 of the plaintiff is as under:-


3. So that we also understand the issue of violation of the

registered design of the plaintiff, reproduced below are the

photographs of the footwear of the plaintiff in colour:-


4. The causes of action as pleaded by the plaintiff in the suit

plaints is that since the plaintiff is an owner of the registered design

nos. 197685 and 197686 with respect to footwear as depicted above,

and that since the defendants are imitating the design of the footwear

of the plaintiff, therefore the defendants are guilty of piracy of

registered designs of the plaintiff and hence the plaintiff is entitled to

approach this Court for reliefs in view of Section 22 of the Designs

Act, 2000 (hereinafter referred to as ‗the Act‘).

5.(i) By the suit CS (COMM) No. 772/2016 the following

reliefs are prayed:-

―(a) For a decree of permanent injunction restraining the defendant by

themselves as also through their individual directors, proprietors/partners,

agents, representatives, distributors, assigns, heirs, successors, stockists

and all other acting for and on their behalf from manufacturing, marketing,

supplying, using, selling, soliciting, exporting, displaying, advertising by

any other mode or manner the impugned design or any other design which

is deceptively similar to or is a fraudulent and/or any obvious imitation of

the Plaintiff‘s design covered by design registration no. 197685 in relation

to footwear and related/allied products and from doing any other acts or

deeds amounting to or likely to:

(i) Piracy and/or infringement of Plaintiff‘s registered design under

no. 197685;

(ii) Violating the Plaintiff‘s designs covered by registration no.

197685.

(b) For an order for delivery up of all the impugned finished and

unfinished material bearing the impugned and violative design in relation

to the impugned or any other deceptively similar design including its

blocks, moulds ad goods etc. to the plaintiff for the purposes of destruction

and erasure.

(c) For an order for rendition of accounts of profits earned by the

defendant by their impugned illegal trade activities and a decree for the

amount so found in favour of the plaintiff on such rendition of accounts.


(d) Costs of the proceedings.

(e) And for such other and further reliefs as this Hon‘ble Court may

deem fit and proper in the facts and circumstances of the present case.‖

(ii) Reliefs prayed for in the other suits are also identical/more or

less the same.

6. In terms of the prayers made in the plaint, the interim

applications have been filed by the plaintiff in the suits to seek

pendente lite restraint against the defendants from manufacturing,

marketing, supplying, selling etc the footwear of the defendants which

footwear as per the plaintiff have been manufactured and sold by

infringing the registered designs of the plaintiff.

7. In order to appreciate the issue completely it will be

relevant to reproduce the footwear which is being manufactured and

sold by the defendant in CS (COMM) No. 772/2016, noting that the

footwear being manufactured by the other defendants in the suits

would be more or less same or similar, of course with colour

variations or other changes with respect to placements of the

perforations/open spaces/holes in the footwear or certain other aspects

for creating visual appeal. The footwear manufactured by the

defendants in CS (COMM) No. 772/2016 are depicted as under:-


8. Defendants in the suits have contested the claim of the

plaintiff seeking grant of interim/pendente lite injunction. Defendants

have denied that they are infringing the registered designs of the

plaintiff. Defendants argue that there cannot be piracy of a registered

design if the registration granted to the plaintiff with respect to

footwear itself is an invalid registration. It is argued that the

defendants, in a suit filed by the plaintiff of a registered design

alleging piracy of the registered design under Section 22 of the Act,


are entitled because of Sub-Section (4) of the said Section 22 of the

Act to argue that since the registration of the design granted to the

plaintiff is not valid hence no case can be made out of piracy of the

registered design of the plaintiff. In sum and substance, reliance is

placed by the defendants upon Sub-Section (4) of Section 22 of the

Act which provides that even if the registration of the design continues

to exist as a registered design under the Designs Act in favour of the

plaintiff, yet the defendants in a suit alleging infringement of a

registered design can show that the design which the plaintiff has got

registration of was not one capable of being given registration, and

hence the plaintiff is not entitled to seek any relief by filing of the suit.

It is argued on behalf of the defendants that in terms of Clauses (b) to

(d) of Sub-Section (1) of Section 19 of the Act in case the plaintiff‘s

registered design when registered was not a new or original design or

there was already existing prior publication of a registered design i.e

the design with respect to which plaintiff claims exclusive entitlement

was in public domain, then in such circumstances it makes no

difference that the plaintiff has been successful in getting the designs

registered because such registered designs on account of prior

publication or lack of newness/originality will not give any legal right


to the plaintiff to allege piracy of the registered design. The relevant

Sections of the Designs Act for the purpose of discussion in this order

would be Section 2(d), Section 4, Section 19 and Section 22, and

which Sections are reproduced in the latter part of this judgment.

9. The arguments urged by the parties can be broken up

under two heads. The first head is that whether the designs which have

been got registered by the plaintiff with respect to the footwear are or

are not new or original designs. The second head is that whether the

registered designs of the footwear of the plaintiff were in public

domain prior to registration. In case of lack of newness/originality or

existence of the registered design in public domain prior to

registration, then there is disentitlement in the plaintiff to seek reliefs,

including interim reliefs, in the subject suits.

10. For the purpose of discussion in the present judgment, the

Sections of the Designs Act which would be relevant, would be

Sections 2(d), 4, 19 and 22 of the Act. These Sections read as under:-

―Section 2(d) “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

Copyright Act, 1957 (14 of 1957);

Section 4. Prohibition of registration of certain designs.- A design

which –

(a) is not new or original; or

(b) has been disclosed to the public anywhere in India or in any other

country by publication in tangible form or by use or in any other

way prior to the filing date, or where applicable, the priority date

of the application for registration; or

(c) is not significantly distinguishable from known designs or

combination of known designs; or

(d) comprises or contains scandalous or obscene matter shall not be

registered.

shall not be registered.

Section 19. Cancellation of registration.-(1) Any person interested

may present a petition for the cancellation of the registration of a design at

any time after the registration of the design, to the Controller on any of the

following grounds, namely:-

(a) that the design has been previously registered in India; or

(b) that it has been published in India or in any other country prior to

the date of registration; or

(c) that the design is not a new or original design; or

(d) that the design is not registerable under this Act; or

(e) it is not a design as defined under clause (d) of section 2.

(2) An appeal shall lie from any order of the Controller under this section

to the High Court, and the Controller may at any time refer any such

petition to the High Court, and the High Court shall decide any petition so

referred.

Section 22. Piracy of registered design.- (1) During the existence of

copyright in any design it shall not be lawful for any person-

(a) for the purpose of sale to apply or cause to be applied to any article

in any class of articles in which the design is registered, the design

or any fraudulent or obvious imitation thereof, except with the

license or written consent of the registered proprietor, or to do

anything with a view to enable the design to be so applied; or

(b) to import for the purposes of sale, without the consent of the

registered proprietor, any article belonging to the class in which

the design has been registered, and having applied to it the design

or any fraudulent or obvious imitation thereof, or

(c) knowing that the design or any fraudulent or obvious imitation

thereof has been applied to any article in any class of articles in

which the design is registered without the consent of the registered

proprietor, to publish or expose or cause to be published or

exposed for sale that article.


(2) If any person acts in contravention of this section, he shall be liable for

every contravention-

(a) to pay to the registered proprietor of the design a sum not

exceeding twenty-five thousand rupees recoverable as a contract

debt, or

(b) if the proprietor elects to bring a suit for the recovery of damages

for any such contravention, and for an injunction against the

repetition thereof, to pay such damages as may be awarded and to

be restrained by injunction accordingly:

Provided that the total sum recoverable in respect of any one design

under clause (a) shall not exceed fifty thousand rupees:

Provided further that no suit or any other proceeding for relief under

this subsection shall be instituted in any court below the court of

District Judge.

(3) In any suit or any other proceeding for relief under subsection (2), ever

ground on which the registration of a design may be cancelled under

section 19 shall be available as a ground of defence.

(4) Notwithstanding anything contained in the second proviso to sub-

Section (2), where any ground or which the registration of a design may be

cancelled under section 19 has been availed of as a ground of defence and

sub-section (3) in any suit or other proceeding for relief under sub-section

(2), the suit or such other proceedings shall be transferred by the Court in

which the suit or such other proceeding is pending, to the High Court for

decision.

(5) When the court makes a decree in a suit under sub-section (2), it shall

send a copy of the decree to the Controller, who shall cause an entry

thereof to be made in the register of designs.‖

11. Now let us firstly turn to the aspect of prior

publication/public domain. A design which existed in public domain

prior to grant of registration under the Act is a ground for cancellation

of the design and this is very much clear from Section 19(b) and (d)

read with Section 4(b) of the Act. The factual issue is that has there

taken place prior publication of the design i.e whether the registered

designs existed in public domain prior to the registration being granted

in favour of the plaintiff.


12. On behalf of the defendants reliance has been placed

upon internet downloaded pages from the website of the company

Holey Soles. This publication which is downloaded from the

concerned website of Holey Soles is said to be existing on the website

of Holey Soles as on 10.12.2002. Obviously the 'Holey' in the 'Holey

Soles' is because of holes/spaces/gaps existing in the footwear of this

company. The footwear of Holey Soles as published in the internet

archive for Holey Soles as on 10.12.2002 is depicted as under:-


13. Similar depictions as shown above also exist on the same

website of Holey Soles as on 17.2.2003. Internet downloads of Holey

Soles on 17.2.2003 are filed as documents by the defendants. The

footwear shown on 17.2.2003 is same as on 10.12.2002 except that

the colours of the said footwear, which are sandals without a strap,

are shown to be of different colours than the reddish pink colour as

on 10.12.2002. These depictions dated 17.2.2003 are as under:-


14. The registration which is granted to the plaintiff in India

is effective from 28.5.2004. In U.S it is informed to this Court on

behalf of the plaintiff that the design was also registered on 28.5.2004

but that in terms of the provisions of the Designs Act as applicable in

U.S. the plaintiff will have benefit of registration for one year prior to

28.5.2004 i.e from 28.5.2003. Therefore, once the design of the

footwear of the plaintiff is found in the public domain as shown in

website of Holey Shoes prior to 28.5.2003 then clearly in view of


Section 4(b) read with Section 19 (d) of the Act the registration

granted to the plaintiff is clearly faulty and is liable to be cancelled

under Section 19 of the Act. In such scenario therefore plaintiff cannot

seek benefit of its registered design for seeking reliefs in the present

case.

15.(i) Learned senior counsel for the plaintiff sought to argue

that no doubt with respect to Holey Soles website as on 10.12.2002

and 17.2.2003 footwear similar to that of the plaintiff (of course

without the back strap) is shown, however it is argued that depiction in

the website is no guarantee that depiction of the footwear in question

in fact took place as on 10.12.2002 and 17.2.2003 as stated in the

printouts downloaded and filed by the defendants. It is argued that

once no finality can be taken to a design of the footwear which is

found in the website of the Holey Soles, then the observations of the

Full Bench of this Court in the case of Reckitt Benkiser India Ltd. Vs.

WYETH Ltd. AIR 2013 Delhi 101 (FB) will come into play that

publication unless it has complete clarity for being known what the

same was, the same would not assist the defendants to argue that those

designs were available in public domain.


(ii) In my opinion this argument urged on behalf of the plaintiff is

nothing but a desperate argument because this Court has to take a

prima facie view to come to a conclusion that printouts downloaded

from the website of Holey Soles would have in fact shown the

footwear design on 10.12.2002 and 17.2.2003 and the defendants have

a prima facie case because surely if what the plaintiff contends would

have been correct that these designs may not have been available on

the website of Holey Soles as on 17.2.2003, then what was the

difficulty in the plaintiff filing its copies of printout downloads of

website of Holey Soles as on 10.12.2002 and 17.2.2003, and which the

plaintiff has not. Therefore taking a prima facie view of the matter,

since the plaintiff has not filed its copies of print out downloaded from

the website of Holey Soles as on 10.12.2002 and 17.2.2003, this Court

at this stage for arriving at a prima facie view would accept the factum

that a design similar to the design of the footwear of the plaintiff had

already been published and sold by M/s Holey Soles prior to

28.5.2003, and hence such design having existed in public domain

prior to plaintiff's registration, the plaintiff therefore cannot claim

exclusivity for its registered design merely on the ground that


plaintiff‘s footwear/registrations does have a strap at the back of its

footwear.

16. The issue of prior publication has also to be held against

the plaintiff because plaintiff‘s entitlement to exclusivity of its design

of its footwear is from 28.5.2003, and that the defendants have filed

the printout downloads from the website of the plaintiff itself earlier

than 28.5.2003 i.e as on 16.10.2002, 24.11.2002, 25.11.2002,

28.11.2002 and 13.12.2002 showing as per these printout downloads

that the subject designs are clearly in the public domain w.e.f

16.10.2002, 24.11.2002, 25.11.2002, 28.11.2002 and 13.12.2002 i.e

prior to the priority date of registrations of the plaintiff w.e.f

28.5.2003. For the sake of convenience, these printout downloads

from the website of the plaintiff, are reproduced as under:-


17. On behalf of the plaintiff it could not be seriously

disputed, and nor it could have been, that the printouts filed by the

defendants from the website of the plaintiff itself show as on


16.10.2002, 24.11.2002, 25.11.2002, 28.11.2002 and 13.12.2002 that

the registered designs were in public domain as on those dates which

are prior to the date of priority of registration being 28.5.2003. In case

if the aforesaid printouts were not so then nothing prevented the

plaintiff from filing its own documents of its own website and only

then it would be shown that the documents as filed by the defendants

being the downloaded printouts of the website of the plaintiff of the

different days prior to 28.5.2003 were not those as filed by the

defendants. In view of the aforesaid publications of plaintiff itself

existing in the public domain in the website of the plaintiff much prior

to 28.5.2003 showing the registered designs footwear of the plaintiff,

and that too repeatedly, the registered designs of the plaintiff are to be

held to be already existing in public domain prior to 28.5.2003 and

consequently the registrations of the plaintiff are liable to be cancelled

in terms of Section 19(1)(b) read with Section 4(b) of the Act. In my

opinion therefore clearly the registered designs of the plaintiff were in

the public domain prior to priority date of 28.5.2003 and therefore

registration granted to the plaintiff with respect to registered designs

which are subject matter of the present suits will not afford any legal


entitlement to the plaintiff to allege piracy of the designs under

Section 22 of the Act.

18. With respect to issue of prior publication, certain aspects

were argued on behalf of the defendants with respect to proceedings in

the Courts in European Union and counter arguments to the same were

urged on behalf of the plaintiff, however in my opinion this Court

need not refer to the same for the purpose of disposal of the injunction

applications because the injunction applications can be decided and

have been decided in terms of the aspects of existence of prior

publication with respect to registered designs of the plaintiff and lack

of newness/originality and which aspect is discussed hereinafter.

19. The issue next to be examined is that what is the meaning

of a design being new or original so that it becomes capable of being

registered under the Act and for plaintiff to claim relief alleging piracy

of the registered design under Section 22 of the Act and related to this

issue would be the factual issue as to whether in fact the registered

designs of the plaintiff are in fact new or original. The aspect of the

registered designs having newness or originality, is a sine qua non

requirement as per Section 4(a) of the Act, because it is clearly

provided in Section 4 of the Act that in case a design is such that it


falls within any of the four Sub-Sections (a) to (d) of Section 4 of the

Act then such design would not be registered. Once the design is

registered but is such that it could not have been registered because of

the bars contained in the Sub-Sections of Section 4 of the Act, then

Section 19(1)(d) of the Act comes into play providing that such a

registered design is liable to be cancelled. Once a registered design is

such which may be cancelled, then even if it is not cancelled, yet

defences on the basis of which registered design can be cancelled are

valid defences to a suit alleging infringement of the registered

design/piracy in view of this being so specifically stated in Sub-

Section (4) of Section 22.

20. I have recently in the judgment delivered in the case of

Pentel Kabushiki Kaisha & Anr. Vs. M/S Arora Stationers & Ors.,

CS (COMM) No. 361/2017 decided on 8.1.2018 had an occasion to

consider the meaning of newness or originality which is the subject

matter of Sub-Section (a) of Section 4 of the Act. By referring to the

ratios of the Division Bench judgment of this Court in the case of M/s.

B. Chawla & Sons Vs. M/s. Bright Auto Industries AIR 1981 Delhi

95 and of the judgment of the Hon‘ble Supreme Court in the case of

Bharat Glass Tube Limited Vs. Gopal Glass Works Limited (2008)


10 SCC 657, this Court has come to a conclusion that for a design to

have entitlement of grant and continuation of registration under the

Designs Act it is required that the design is such that it is an

Intellectual Property Right. The Intellectual Property Right comes into

existence if there is spent sufficient labour, effort, time, etc whereby it

can be said that consequently a new creation has come into existence

i.e in essence there is required existence of innovation which is an

Intellectual Property Right. It is because an Intellectual Property Right

comes into existence that there is hence an entitlement to protection

thereof and so that the creator of the design is granted monopoly with

respect to use of the new/original design for a period of ten years plus

five years as provided in Section 11 of the Act. It has been held by

this Court in the case of Pentel Kabushiki Kaisha (supra) that mere

variations to existing products which do not result in requisite amount

of newness or originality cannot be considered as innovations having

newness and originality for being granted monopoly for fifteen years.

It has been held by this Court by reference to the Division Bench

judgment of this Court and the judgment of the Supreme Court as

stated above that trade variations to existing products will not entitle a

person who has come out with a new product containing only trade


variations to contend that there is newness and originality as required

by Section 4(a) of the Act and that such products therefore cannot be

called new and original and cannot be given the designation of an

Intellectual Property Right and hence exclusivity for 15 years under

the Designs Act. At this stage let me reproduce the relevant paras of

the said judgment which read as under:-

―2. The cause of action as pleaded in the plaint is one under Section 22

of the Designs Act, 2000 (hereinafter referred to as ‗the Act‘) and which

Section provides that during the existence of the copyright in any design,

no other person shall use the registered design for commercial purposes,

sale of the article etc being a design which is identical or an imitation of

the registered design of the plaintiff. In the suit the following reliefs are

claimed:- ―(a) A decree of permanent injunction restraining the Defendants,

their partners, agents, proprietors, servants and all those actively in

concert with them from manufacturing, selling, offering to sell,

advertising, trading, dealing, either directly or indirectly in pens that is

identical duplication or being obvious and/or fraudulent imitation to the

Plaintiffs‘ copyright in the registered design no 263172;

(b) An order for delivery up to the Plaintiffs by the Defendants of all

the infringing products including blocks, dyes, molds, any other material

bearing the Plaintiffs‘ registered design No.263172 or used for applying

the Plaintiffs‘ registered design No.263172 for purpose of

erasure/destruction;

(c) An order of rendition of accounts of profits directly or indirectly

earned by the Defendants from their infringing activities and wrongful

conduct and a decree for the amounts so found due to be passed in favour

of the Plaintiffs;

(d) A sum of Rs.1,00,00,000/- as decree of damages as valued for

the purposes of this suit towards invasion of rights, loss of sales, revenue,

and overall business identified with the Plaintiffs‘ registered design

No.263172 caused by the activities of the Defendants;

(e) An order as to the costs of the present proceedings; and

(f) Any further order (s) as this Hon‘ble Court may deem fit and

proper in the facts and the circumstances of the present case.‖

3. In the interim injunction application which is being disposed of in

terms of the present order, the following reliefs are prayed:- ―a. An order of exparte interim injunction restraining the

Defendants, their partners, agents, proprietors, servants and all those

actively in concert with them from manufacturing, selling, offering to

sell, advertising, trading, dealing, either directly or indirectly in pens that


are identical or obvious and fraudulent imitation to the Plaintiffs‘

copyright in the registered design no.263172 during the pendency of the

suit.

b. Any further order(s) as this Hon‘ble Court may deem fit and

proper in the facts and circumstances of the present case.‖

xxxx xxxxx xxxxx

5. Sub-Section (3) of Section 22 of the Act provides that in spite of

the fact that a design is a registered design, whenever any suit is filed for

the relief alleging piracy of the registered design by the defendant in the

suit, then in such a suit every ground on which registration of a design may

be cancelled under Section 19 of the Act shall be available to the

defendant as a ground of defence.

6.(i) A reading of Sections 19 and 4 of the Act, shows that before a

design is entitled to protection under the Act, the design has to be a new or

original design. If the design is not a new or original design, then the

registered design though registered is liable to be cancelled in the

proceedings under Section 19 of the Act. The pendency or otherwise of the

proceedings under Section 19 of the Act for cancellation of the registered

design will however not prevent a Court from deciding the issue of

entitlement of the plaintiff to grant of an interim injunction in a suit which

is filed under Section 22 of the Act by examining the defences that the

registered design is such which is liable to be cancelled, i.e no interim or

final relief can be granted to the plaintiff, and this is so specifically

provided in Sub-Section (3) of Section 22 of the Act. Therefore, this Court

has to examine that whether the design of the ball point pen of which the

plaintiffs have obtained registration is or is not a new or original design

and which are defences for cancellation of a registered design in

proceedings under Section 19 of the Act. Defendants contend that design

of the ball point pen of the plaintiffs is not a new and original design, and

hence not only the design registered by the plaintiffs is liable to be

cancelled in the proceedings already initiated under Section 19 of the Act,

even the subject application for injunction is liable to be dismissed in view

of Sub-Section (3) of Section 22 of the Act as defences under Section 19

of the Act are defences which are available to the defendants in the suit to

contest the allegations and cause of action in the plaint of piracy of

registered design.

(ii) While on the subject, as to what is new or original, this Court

cannot lose sight of the what is stated in Sub-Section (c) of Section 4 of

the Act. Whereas Sub-Section (a) of Section 4 of the Act provides that a

design which is not new or original cannot be registered, Sub-Section (c)

of Section 4 of the Act provides and clarifies that a design cannot be

registered if it is not significantly distinguishable from known designs or

combination of known designs. Sub-Section (c) of Section 4 of the Act is

therefore in a way explanatory or clarificatory of Sub-Section (a) of

Section 4 of the Act by stating that merely because there is some sort of

newness or originality in an article, but in case that newness or originality


is however not such so as to significantly distinguish the new article

prepared from existing designs or combination of designs, then in such a

case a design cannot be registered. It is implicit in the requirement of a

design being new and original that there is creation by putting an effort.

Since a totally new product applying the design comes into existence as a

result of lot of labour and effort, consequently, this right is known as

intellectual property right and the effect of registering of the intellectual

property right called as design under the Act gives monopoly to the owner

of the registered design for a total period of ten plus five years. Therefore

it is sine qua non that there is required sufficient novelty and originality

for a completely new creation to come into existence of a design, and only

thereafter would the design be said to be one which is capable of being

protected as a design under the Act. This aspect of novelty and creation as

regards a design which can only be protected has been dealt with by the

Division Bench of this Court in the case of M/s. B. Chawla & Sons Vs.

M/s. Bright Auto Industries AIR 1981 Delhi 95. The relevant paras of

this judgment which deal with the aspect of newness or originality are

paras 8 to 12 and these paras read as under:- ―8. In Le May v. Welch (1884) 28 Ch. D, 24-, Bowen L. J. expressed

the opinion:

"It is not every mere difference of cut"-he was speaking of collars-

"Every change of outline, every change of length, or breadth, or

configuration in a single and most familiar article of dress like this,

which constitutes novelty of design. To hold that would be no

paralyse industry "and to make the Patents, Designs and Trade Marks

Act a trap to catch honest traders. There must be, not a mere novelty

of outline, but a substantial novelty in the design having regard to the

nature of the article."

And Fry L.J. observed :

"It has been suggested by Mr. Swinfen Eady that unless a design

precisely similar, and in fact identical, has been used or been in

existence prior to the Act, the design will be novel or original. Such a

conclusion would be a very serious and alarming one, when it is

borne in mind that the Act may be applied to every possible thing

which is the subject of human industry, and not only to articles made

by manufacturers, but to those made by families for their own use. It

appears to me that such a mode of interpreting the Act would be

highly unreasonable, and that the meaning of the words" novel or

original' is this, that the designs must either be substantially novel or

substantially original, having regard to the nature and character of

the subject matter to which it is to be applied."

9. Similar view was expressed by Buckley L.J. on the question of

quantum of novelty in Simmons v. Mathieson and Cold (1911) 28 R.P.C.

486 at 494 in these words:

"In order to render valid, the registration of a Design under the

Patents and Designs Act, 1907, there must be novelty and originality,

it must be a new or original design. To my mind, that means that

there must be a mental conception expressed in a physical form

which has not existed before, but has originated in the constructive


brain of its proprietor and that must not be in a trivial or infinitesimal

degree, but in some substantial degree."

10. In Phillips v. Harbro Rubber Company (1920) 37 R.P.C. 233,

Lord Moulton observed that while question of the meaning of design and

of the fact of its infringement are matters to be judged by the eye (sic), it

is necessary with regard to the question of infringement, and still more

with regard to the question of novelty or originality, that the eye should

be that of an instructed person, i.e. that he should know that was common

trade knowledge and usage in the class of articles to which the design

applies. The introduction of ordinary trade variants into an old design

cannot make it new or original, He went on to give the example saying, if

it is common practice to have, or not to have, spikes in the soles of

running shoes a man does not make a new and original design out of an

old type of running shoes by putting spikes into the soles. The working

world, as well as the trade world, is entitled at its will to take, in all

cases, its choice of ordinary trade variants for use in particular instance,

and no patent and no registration of a design can prevent an ordinary

workman from using or not using trade knowledge of this kind. It was

emphasized that it is the duly of the court to take special care that no

design is to be counted a "new and original design" unless it

distinguished from that previously existed by something essentially

new or original which is different from ordinary trade variants

which have long been common matters of taste workman who made

a coat (of ordinary cut) for a customer should be left in terror

whether putting braid on the edges of the coat in the ordinary way so

common a few years ago, or increasing the number of buttons or the

like, would expose him for the prescribed years to an action for

having infringed a registered design. On final analysis, it was

emphasized that the use of the words "new or original" in the statute is

intended to prevent this and that the introduction or substitution of

ordinary trade variants in a design is not only insufficient to make the

design "new or original" but that it did not even contribute to give it a

new or original character. If it is not new or original without them the

presence of them cannot render it so.

11. The quintessence of the placitums above is that distinction has to

be drawn between usual trade variants on one hand and novelty or

originality on the other. For drawing such distinction reliance has to be

placed on popular impression for which the eye would be the ultimate

arbiter. However, the eye should be an instructed eye, capable of seeing

through to discern whether it is common trade knowledge or a novelty so

striking and substantial as to merit registration. A balance has to be

struck so that novelty and originality may receive the statutory

recognition and interest of trade and right of those engaged therein to

share common knowledge be also protected.

12. Coming to the facts of the instant case the design in question as a

whole consists in almost rectangular shape with rounded edges with sides

curved or sloping with a further curve on either side in the sloping upper

length side. The respondent produced in evidence Japan's Bicycle Guide,

1972, Vol. 22. At page Nos. 218 to 221, there are standard models of

back mirrors besides branded models numbering 36. Models bearing

Nos. 59-6, 62-1, 61-3, 66-1 and 70-1 would show back view mirrors


rectangular in shape with sloping widths or lengths. In some of these

models there is curve in the upper length side. We have mentioned this

fact simply to emphasise that back view mirrors resembling the one in

question have been in the market for a long time. The appellants' case is

that further a curve in the sloping upper length side makes their design

new or original. We have already noted that the extent and nature of

novelty was not endorsed by the appellants in the application for seeking

registration and, Therefore, it has to be taken only as regards the shape

and configuration. In final analysis the matter would boil down to

whether addition of further curve on either side makes the variation a

striking one or a substantial so as to constitute a novelty meriting for

registration. The learned Single Judge after enunciating the legal position

correctly used his eye for discerning if there was in fact a novelty and

answered the question in the negative. We have once again gone through

the same exercise and come to the same opinion. We fail to see the hard

labour which the appellants claimed to have bestowed in creating the

design they got registered. It is devoid of newness and equally devoid of

originality. An addition of curve here or there in a shape which is well-

recognised shape of an article of common use in the market cannot make

it an article new or original in design. If it is made eligible for

registration, it would certainly hinder the progress of trade without there

being any justification, whatsoever.‖ (emphasis added)

7. The emphasized portions of the aforesaid paras of the

Division Bench judgment of this Court leave no manner of doubt that there

is required substantial novelty of design and that any and every change

resulting in a new configuration will not necessarily constitute a novelty of

design. Mere novelty of outline or few changes here and there which are

trade variants would not result in creation of a new article on the design

which would entitle to protection as a design under the Act. The Division

Bench has time and again with reference to the different judgments of the

courts of U.K. emphasized the requirement of novelty or originality which

is substantial novelty and substantial originality with regard to the nature

and character of the article. In para 10 of the judgment in the case of M/s

B. Chawla and Sons (supra) while making reference to the observations

of Lord Moulton it is observed that special care has to be taken that no

design is counted as a new or original design unless it is distinguished

from what previously existed by something essentially new or original

which is different from ordinary trade variants. In para 11, the Division

Bench has concluded that quintessence is that distinction has to be drawn

between usual trade variants on the one hand and substantial novelty and

originality on the other hand otherwise there will be blockage of trade.

Only newness/originality entitles monopoly on account of registration of

the design.

8. The Supreme Court in the case of Bharat Glass Tube

Limited Vs. Gopal Glass Works Limited (2008) 10 SCC 657 has made

similar observations in para 26 and this para 26 reads as under:- ―26. In fact, the sole purpose of this Act is protection of the

intellectual property right of the original design for a period of ten years

or whatever further period extendable. The object behind this enactment


is to benefit the person for his research and labour put in by him to

evolve the new and original design. This is the sole aim of enacting this

Act. It has also laid down that if design is not new or original or

published previously then such design should not be registered. It further

lays down that if it has been disclosed to the public anywhere in India or

in any other country by publication in tangible form or by use or in any

other way prior to the filing date, or where applicable, the priority date of

the application for registration then such design will not be registered or

if it is found that it is not significantly distinguishable from known

designs or combination of known designs, then such designs shall not

be registered. It also provides that registration can be cancelled under

Section 19 of the Act if proper application is filed before the competent

authority i.e. the Controller that the design has been previously registered

in India or published in India or in any other country prior to the date of

registration, or that the design is not a new or original design or that the

design is not registerable under this Act or that it is not a design as

defined in Clause (d) of Section 2. The Controller after hearing both the

parties if satisfied that the design is not new or original or that it has

already been registered or if it is not registerable, cancel such registration

and aggrieved against that order, appeal shall lie to the High Court.

These prohibitions have been engrafted so as to protect the original

person who has designed a new one by virtue of his own efforts by

researching for a long time. The new and original design when

registered is for a period of ten years. Such original design which is new

and which has not been available in the country or has not been

previously registered or has not been published in India or in any other

country prior to the date of registration shall be protected for a period of

ten years. therefore, it is in the nature of protection of the intellectual

property right. This was the purpose as is evident from the Statement

Of Objects And Reasons and from various provisions of the Act. In this

background, we have to examine whether the design which was

registered on the application filed by the respondent herein can be

cancelled or not on the basis of the application filed by the appellant. In

this connection, the Law of Copyright and Industrial Designs by P.

Narayanan (Fourth Edition), Para 27.01 needs to be quoted.

―27.01. Object of registration of designs.- The protection given by

the law relating to designs to those who produce new and original

designs, is primarily to advance industries, and keep them at a high

level of competitive progress.

''Those who wish to purchase an article for use are often influenced

in their choice not only by practical efficiency but the appearance.

Common experience shows that not all are influenced in the same

way. Some look for artistic merit. Some are attracted by a design

which is a stranger or bizarre. Many simply choose the article which

catches their eye. Whatever the reason may be one article with a

particular design may sell better than one without it: then it is

profitable to use the design. And much thought, time and expense

may have been incurred in finding a design which will increase

sales". The object of design registration is to see that the originator of

a profitable design is not deprived of his reward by others applying it

to their goods.


The purpose of the Designs Act is to protect novel designs devised to

be applied to (or in other words, to govern the shape and

configuration of) particular articles to be manufactured and marketed

commercially. It is not to protect principles of operation or invention

which, if profitable (sic protectable) at all, ought to be made the

subject- matter of a patent. Nor is it to prevent the copying of the

direct product of original artistic effort in producing a drawing.

Indeed the whole purpose of a design is that it shall not stand on its

own as an artistic work but shall be copied by embodiment in a

commercially produced artefact. Thus the primary concern, is what

the finished article is to look like and not with what it does and the

monopoly provided for the proprietor is effected by according not, as

in the case of ordinary copyright, a right to prevent direct

reproduction of the image registered as the design but the right, over

a much more limited period, to prevent the manufacture and sale of

articles of a design not substantially different from the registered

design. The emphasis therefore is upon the visual image conveyed by

the manufactured article.‖ (emphasis added)

9. A reference to the aforesaid para 26 of Bharat Glass Tube

Limited's case (supra) shows that what is stated by the Division Bench of

this Court in the case of M/s B. Chawla and Sons (supra) has been

accepted and in sum and substance it has been held by the Supreme Court

that the object behind enactment of the Act is to give benefit to a person

for the research and labour put by him to evolve the new and original

design which is an intellectual property right. Supreme Court has also

observed that unless the design is not significantly distinguishable from the

known designs or combination of designs, then such a design is not

entitled to registration and hence monopoly of user for 15 years under the

Act. ‖ (underlining added)

21. In view of the law laid down by a Division Bench of this

Court as also by the Supreme Court as stated above, I am not referring

to the judgments which have been cited on behalf of the plaintiff with

respect to what should be the test of newness or originality inasmuch

as the judgments which have been cited on behalf of the plaintiff are

of Single Judges of the Bombay High Court or of the Chancery

Division of U.K.


22. In view of the aforesaid position of law showing that it is

necessary for protection of a registered design that the registered

design must be an Intellectual Property Right created after application

of sufficient time, labour, effort, etc, and that there must be sufficient

newness or originality i.e existence of requisite innovation and that

trade variations of known designs cannot result in newness and

originality, let us now therefore examine the facts of the present case

by applying the law as above stated to decide as to whether the

registered designs of the plaintiff can be said to have newness or

originality for having been validly granted registrations under the Act,

and that even if registrations have been granted, once there is lack of

newness/originality, then such registrations so granted are liable to

cancellation in proceedings under Section 19 of the Act and

accordingly such defences are valid defences under Section 22(4) of

the Act for contesting the claim/reliefs by the plaintiff in the subject

suits including of interim injunction reliefs.

23. This Court has already reproduced above the sketches of

the registered designs of the plaintiff. This Court has also reproduced

the coloured photographs with respect to the footwear of the plaintiff


pertaining to the registered designs. Can it be said that such footwear

of the registered designs have newness or originality.

24. On behalf of the plaintiff it has been argued that the

registered designs of the plaintiff have to be looked as a whole. It has

been argued that there are various features in the registered designs of

the plaintiff with respect to the placement, shape and size of the

perforations/gaps/open spaces, and the hump like protrusion at the

front of the footwear, and that there exists a mound above the joint

portion of the limb of the foot with the foot, and the designs of the

soles are unique, and that when such features are taken as a whole,

they have that much amount of visual appeal for the registered designs

of the plaintiff‘s footwear to have that much newness or originality for

having been rightly granted registrations under the Act. It is argued

that once registrations have been granted, then this Court must

presume existence of newness and originality and that onus in such

circumstances must shift upon the defendants to show that there is no

newness or originality.

25. No doubt once the plaintiff has a registered design in his

favour then it is for the defendants to plead and establish that the

registered design is such which is liable to be cancelled under one or


more Sub-Sections of Section 19(1) of the Act for these aspects would

be available as defences to the claim of reliefs by the plaintiff (in view

of Sub-Section (4) of Section 22 of the Act), but in sum and substance,

in the opinion of this Court, the issue still remains the same as to

whether the registered designs of the plaintiff have or have not

sufficient newness or originality or that much amount of innovation

for being called an Intellectual Property Right.

26. One need not labour hard, or even labour much, to hold

that footwear have existed and are known to mankind from in fact

prehistoric age. Obviously footwear was originally created for the sole

purpose to protect the feet. Footwear created over passage of time has

differed because of choices made by human beings. Type of footwear

is also dependent on whether the same are/were used by men or

women. With respect to footwear of men there were created/existed

various variations and so too with respect to footwear of women.

Variations obviously are with respect to shape of the footwear, look of

the footwear, fashion statement as per the footwear and so on.

Footwear also when created had to take into account the convenience

of the wearer of the same. Besides the issue of convenience of the

wearer of the same footwear also was different depending on the place


where it was worn or for the purpose for which it was worn. In those

areas where climatic conditions were on the colder side obviously the

footwear by its very nature had to be completely covered so that

besides giving protection to the feet against injury, the footwear also

provided warmth. In countries and areas where climatic conditions

are hot or humid obviously the footwear created were such that they

would be comfortable to wear in such climatic conditions being hot

and humid. In these latter areas footwear had openness or breathing

spaces. So far as the purpose of manufacture of footwear is concerned

it can be noted that footwear for walking is of one type, other type is

for sports, then again there is footwear for horse riding, or for

mountaineering, or for office wear or formal wear, and so on. Even

within sports shoes the type varies as per the type of the sport. I dare

say that all the aforesaid aspects need not be established in a court of

law and this Court can take judicial notice of the aforesaid aspects

with respect to footwear.

27. Besides the aforesaid aspects, an important aspect which

will be relevant in the facts of the present case is that footwear which

has been created have also been broken up in two types of a formal

footwear and of a casual footwear. In the category of casual footwear,


since long, sandals are known to exist in this country. The concept of

sandals is a slip on footwear. Footwear being sandal called by any

name will be a sandal and one of the forms of footwear. With respect

to sandals to give stability and firmness for the wearer there did exist

straps at the back portions of the sandals. Where the sandals are

casuals, and for being worn for short periods only, the straps at the

back can be missing. Straps at the back of the sandals also existed or

were left out depending on the purposes for which the same were

worn. The existence of what is known as ―Jootis‖ is well known in

northern India especially in Punjab. ―Jootis‖ are fanciful sandals

having multi-colours, with embellishments being fixed on the ―Jootis‖

by means of fabrics of different colours. To give a further break up

and elucidation it is noted that there are variations with respect to the

sandals of men and women. Sandals of ladies, not unexpectedly were

designed, moulded, re-moulded and again re-moulded with respect to

the aspect of shapes and heights of the soles or the upper casing. To

wit we have stilettos or flats or the platforms and so on. Obviously

what is being stated by this Court is that save and except where a

footwear design is an Intellectual Property Right, footwear is a

footwear is a footwear, shoe is a shoe is a shoe and sandal is a sandal


is a sandal. All the different footwear have changed over different

periods of time and also as per requirements as to who were the

persons wearing the same or of the particular climatic conditions

where they were worn or the footwear becoming fashion statements

but ultimately all the different types of footwear are variations of

nothing else but a footwear i.e foot plus wear i.e something that is

worn on the feet. Really therefore, it would take in the opinion of this

Court an effort larger than an ordinary effort to create a different

footwear than the known types of footwear, to be an

innovation/creation having such requisite newness and originality for

that creation to become an Intellectual Property Right as a design in

terms of the Designs Act.

28.(i) With the aforesaid observations with respect to what is

the law of design pertaining to newness and originality, and the

concept of footwear itself being of different types, let us apply the

aforesaid discussion to the facts of the present case as regards the

registered designs of the plaintiff. In my opinion, one does not have to

travel too far to understand that footwear of the plaintiff is nothing but

a sandal. Sandal with open spaces are only trade variations of a

sandal. Placing of the open spaces or perforation or gaps, and sandals


being with or without straps at the back, are in the opinion of this

Court merely only variations or trade variations of footwear. Trade

variations of footwear/sandals cannot be and should not be given

exclusive monopoly. Of course every manufacturer who has done

variations wants to earn maximum profit therefrom, and one of the

ways to do so is by stifling competition by stopping the production of

similar type of footwear as being manufactured by the plaintiff,

however that eventuality does not mean that courts will allow such a

plaintiff/manufacturer to create a monopoly when the law does not

sanction the same. In my opinion the features which have been argued

on behalf of the plaintiff as existing in its sandals/footwear of mounds

or humps or straps (or lack of them) or soles designs or

perforations/open spaces etc etc, even when taken as a whole, or even

individually for that matter, cannot be said to result in innovation or

creation of newness or originality as is the intention of the legislature

in terms of the Section 4(a) of the Act read with Section 19(1)(d) of

the Act. It is therefore held that the registered design of the plaintiff

with respect to its footwear, does not have the necessary newness or

originality for the same to be called a creation or innovation or an

Intellectual Property Right, and which must necessarily exist as stated


by the Supreme Court in the judgment in the case of Gopal Glass

Works Limited (supra). In my opinion the registered design of the

plaintiff is such which is liable to be cancelled as per Section 19(1)(d)

of the Act read with Section 4(a) of the Act, and therefore such factual

defences entitles the defendants to succeed in view of Sub-Section (4)

of Section 22 of the Act to argue against grant of reliefs in the

injunction applications which are subject matter of the present order.

On this ground itself also therefore the interim applications of the

plaintiff are liable to be and are accordingly dismissed.

(ii) Before concluding I must incidentally note two aspects. The

first is that the fifteen year period of life of the registrations is soon to

come to an end in the next few months i.e on 27.5.2018. The issue of

injunction thus is now limited. Second aspect is that it has not been the

case of the plaintiff argued before this Court that plaintiff's footwear

design has been got registered as a design on account of creation of

footwear of colours/colour combinations and with the fact of these

products having been made from resin/plastic, and that therefore for

such reasons the plaintiff's footwear has protection as a design.

Though ofcourse even if it would have so been, yet the prior


publication of Holey Soles footwear (and by plaintiff itself) cannot be

wished away by the plaintiff.

29. In view of the aforesaid discussion, interim injunction

applications filed under Order XXXIX Rules 1 & 2 CPC in the

aforesaid seven suits would stand dismissed and the interim

application filed under Order XXXIX Rule 4 CPC filed by the

defendant in CS(COMM) Nos.52/2018 and 2850/2014 would stand

allowed.

30. Now the issue remains as to whether costs should be

awarded in favour of the defendants. The subject suits are commercial

suits and are governed by Commercial Courts, Commercial Division

and Commercial Appellate Division of High Courts Act, 2015. With

respect to commercial suits, the provision of costs under Section 35

CPC stands amended, and the provision of costs with respect to

commercial cases is now to be dealt with by the commercial courts as

per Section 35 of the CPC amended and as applicable to commercial

courts as under:-

“Section 35. Costs. (1) In relation to any commercial dispute, the Court,

notwithstanding anything contained in any other law for the time being in

force or Rule, has the discretion to determine:

(a) whether costs are payable by one party to another;

(b) the quantum of those costs; and


(c) when they are to be paid.

Explanation.—For the purpose of clause (a), the expression ―costs‖

shall mean reasonable costs relating to—

(i) the fees and expenses of the witnesses incurred;

(ii) legal fees and expenses incurred;

(iii) any other expenses incurred in connection with the proceedings.

(2) If the Court decides to make an order for payment of costs, the general

rule is that the unsuccessful party shall be ordered to pay the costs of the

successful party:

Provided that the Court may make an order deviating from the

general rule for reasons to be recorded in writing.

Illustration: The Plaintiff, in his suit, seeks a money decree for

breach of contract, and damages. The Court holds that the Plaintiff is

entitled to the money decree. However, it returns a finding that the claim

for damages is frivolous and vexatious.

In such circumstances the Court may impose costs on the Plaintiff,

despite the Plaintiff being the successful party, for having raised frivolous

claims for damages.

(3) In making an order for the payment of costs, the Court shall have

regard to the following circumstances, including—

(a) the conduct of the parties;

(b) whether a party has succeeded on part of its case, even if that party

has not been wholly successful;

(c) whether the party had made a frivolous counterclaim leading to

delay in the disposal of the case;

(d) whether any reasonable offer to settle is made by a party and

unreasonably refused by the other party; and

(e) whether the party had made a frivolous claim and instituted a

vexatious proceeding wasting the time of the Court.

(4) The orders which the Court may make under this provision include an

order that a party must pay––

(a) a proportion of another party‘s costs;

(b) a stated amount in respect of another party‘s costs;

(c) costs from or until a certain date;

(d) costs incurred before proceedings have begun;

(e) costs relating to particular steps taken in the proceedings;

(f) costs relating to a distinct part of the proceedings; and

(g) interest on costs from or until a certain date.‖ (underlining added)

31. A reading of Section 35 CPC as applicable to commercial

courts shows that costs can be imposed at different stages of the suits

including at the time of disposal of the interim applications. Costs


awarded are under different heads as provided under Sub-Section (4)

of Section 35 CPC. In making an order of payment of costs Courts

have to take note of the conduct of the parties and the fact that whether

any reasonable offer is made by one party to settle the disputes and

which is refused by the other party. At this stage it is required to be

noted that after some arguments in the injunction applications, on

behalf of the defendants a suggestion was put to the plaintiff that

judgment need not be invited from this Court and plaintiff should

simply agree to vacate the interim injunctions granted in its favour and

not press the injunction applications, and in which circumstances no

further relief could be asked for by the defendants, but on behalf of the

plaintiff after taking instructions, its counsel stated that a judgment is

invited from this Court.

32. In view of the aforesaid discussion, while dismissing the

injunction applications filed by the plaintiff in the suits, in favour of

the defendants in the suit each of the defendants costs are awarded

being costs incurred by them towards fees paid and payable till date by

these defendants to their counsels. In this regard, affidavits of fees

and charges paid and to be paid till date by the defendants to their

counsels be filed by filing affidavits within two weeks from today and


which affidavits will be supported by the details of the payments made

by the defendants to their counsels. Such costs shall be the costs in

favour of the defendants and against the plaintiff with respect to and

till the stage of disposal of the interim injunction applications. Costs

shall be paid by the plaintiff to the defendants within a period of four

weeks of the affidavits of costs being filed by the defendants.

33. In addition to the awarding costs to be paid to the

defendants towards the legal costs as stated above, defendants in my

opinion are also entitled for the present to costs incurred by them

which would be towards time and man hours spent by these

defendants for conducting their defences in the present suits, and

subject to final decision as to costs. On behalf of the defendants it has

been argued that they have also suffered losses of profits running into

lacs and lacs, and even crores of rupees, on account of interim

injunctions having been obtained by the plaintiff, and obdurately and

illegally continued by the plaintiff. Therefore, in addition to the actual

legal costs being granted to the defendants, each of the defendant is

granted for the present a sum of Rs. 2 lacs each subject to final

decision towards costs incurred for these proceedings except the head


of legal costs. These costs will be paid by the plaintiff to each of the

defendants within a period of eight weeks from today.

CS (COMM) No. 772/2016 CS(COMM) No. 570/2017,

CS(COMM) No. 780/2017, CS(OS) No. 2850/2014, CS(OS) No.

64/2016

34. I may note that issues in the suits have already been

framed and matters are listed before the Local Commissioners for

recording of evidence.

35. List for awaiting the proceedings for recording of

evidence on 27th

August, 2018.

CS(OS) Nos. 52/2018 & 53/2018

36. List for further proceedings on 28th April, 2018 when

orders will be passed with respect to procedural aspects of completion

of pleadings and admission/denial etc.

FEBRUARY 08, 2018 VALMIKI J. MEHTA, J

ib/godara/Ne/AK

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