JUDGMENT
Shivaraj Patil, J.
1. The plaintiff in C.S. No. 151 of 1997 has filed these two appeals aggrieved by the common order dated 25-7-1997 passed by the learned single Judge in O.A. Nos. 175/97 and 176/97 respectively. O.A. No. 175/97 was filed seeking an order of interim injunction restraining the defendants in the suit from infringing the plaintiff’s registered debtors of rotary switches containing contact stage and cover plate registered under design No. 165316 in Class 3 by manufacture and sale of identical rotary switches, and in Application No. 176/97 an order of injunction was sought restraining the defendants from passing off and enabling others to pass off by manufacture and sale of rotary switches identical or similar to the plaintiff’s rotary switches.
2. The learned single Judge by the order under appeal dismissed both the said applications O.As 175/97 and 176/97 in O.S. No. 151/97. Hence the plaintiff has filed these appeals aggrieved by the said order of the learned single Judge dated 25-7-1997. We will refer to the parties as they are arrayed in the plaint for convenience.
3. Briefly stated, the facts giving rise to these appeals are the following :
The plaintiff has filed the suit C.S. No. 151/97 seeking a decree for permanent injunction restraining the defendants from infringing the plaintiff’s rotary switches containing the contact stage and cover plate registered under design No. 165316 in class 3 by manufacture and sale of identical rotary switches or in any other manner whatsoever, for permanent injunction restraining the defendants from passing off by manufacture and sale of rotary switches identical or similar to the rotary switches ofthe plaintiff, and a decree for Rs. 11 lakhs as damages.
4. The plaintiff states that it is a public limited company incorporated under the Companies Act; the defendants are private limited companies; the plaintiff company originally obtained on payment of consideration the know how for these switches from SAELZER SCHALCERETR BABRIK of West Germany through an agreement in 1984 which agreement was approved by the Reserve Bank of India, the plaintiff was given the right to improve upon the original design, it established its own research and development department, the plaintiff through the efforts of Mr. R. Doraiswamy, the Managing Director, who is an electrical engineer with vast experience and other technical personnel employed has created a novel design for the components and parts of the switches including their size, look, colour combination, shape and configuration suitable to the conditions prevailing in India.
5. The plaintiff has its factory at Coimbatore employing several hundreds of persons, having sophisticated machinery and well qualified technical personnel, the rotary switches manufactured by the plaintiff have the extra-ordinary quality of switching over from one phase to another when there is a power cut, as a result of which, the ultimate consumer is able to get power supply constsantly; these switches of the plaintiff have also the quality of tripping when there is a power fluctuation, as a result of which, the ultimate consumer is able to get power supply constantly; these switches of the plaintiff have also the quality of tripping when there is a power fluctuation, as a result of which the sophisticated gadgets and office equipments are not damaged when there is a fluctuation of voltage, which is a common feature. Hence the switches manufactured by the plaintiff enjoy a goodwill and reputation all over India and abroad.
6. It is further stated that with a view to protest its exclusive rights of the novel switches manufactured, the plaintiff obtained design registration for its contact stage and cover plate under No. 165316 dated 11-2-1993 under Section 47 of the Design Act, 1911, the said registration is valid and subsisting; the plaintiff is selling the switches under the Trade Mark ‘Salzer’ which is distinctive and exclusively identified by the trade and public with the rotary switches manufactured and sold by the plaintiff; the plaintiff’s rotary switches have a standard accepted internationally, especially in the European community, U.S.A., Canada and India, the sales turnover of these switches between the years 1985-86 to 1995-96 were raised from Rs. 0.26 lakhs in 1985-86 to Rs. 631.07 lakhs in 1995-96.
7. In February, 1997 the plaintiff was checked to learn that rotary switches similar to the plaintiff’s distinctive rotary switches were being manufactured and sold by the defendants under the trade mark ‘Senith’. The defendants have made an obvious imitation of the plaintiff’s registered design in the contact stage and cover plate which are essential parts for use in the manufacture of rotary switches; the defendants rotary switches looks identical to that of the plaintiff in colour scheme, shape and configuration. The defendants have copied the standards prescribed in the plaintiff’s switches verbatim with a view to mislead the trade, public and contractors; the defendants do not have proper machinery, equipped factory, qualified technical persons or the German technology purchased by the plaintiff, their switches are of inferior quality; manufacture and sale of identical rotary switches by the defendants is in gross violation of the plaintiff’s registered design and also the common law rights vested in the plaintiff by virtue of reputation and goodwill enjoyed by the plaintiff’s rotary switches for the last more than one decade, the manufacture and sale of identical rotary switches by the defendants is bound to cause confusion and deception among the trade and public; and the plaintiff would suffer irreparable loss and damage by manufacture and sale of identical rotary switches by the defendants. Under the circumstances the suit is filed for the relief as stated above.
8. The first defendant has filed counter affidavit in O.A. Nos. 175 and 176/97 contending that the said applications are not maintainable either in law or on facts the design registered, and shown by the plaintiff in the typed set, is entirely different from the product design registered by the plaintiff the plaintiff misled the court simply on the ground of registration, and had obtained an interim injunction against the defendants to stall their business; the products of the defendants are entirely different from that of the plaintiff’s the defendants denied that the plaintiff developed novel switches and that there was any agreement between German Company and the plaintiff, there is no evidence on record to show that “Salzer” has been ever registered under the Trade and Merchandise Marks Act 1958; various companies, both indigenous and foreign are manufacturing the same kind of switches, and therefore, the claim that the switches are novel and original is not justified.
9. The yellow square plate with red knob and the contact stage in the rear portion of the rotary switch are all not registable under the Designs act, and there is no proof that the colour and the pattern of the switch has been registered; it is also denied that the plaintiff came to know of the product of the defendants only during February 1997; the defendant No. 1 is taking effective steps to cancel the said registration of the plaintiffs by raising the issue before the appropriate authority; the defendants have also denied that they have copied the standards of the plaintiff in manufacturing the rotary switches. Thus the defendant No. 1 prayed for dismissal of the applications filed by the plaintiff for grant of injunction.
10. The plaintiff has filed a reply affidavit elaborating their contentions and supporting their case. In the reply affidavit it is stated that the Controller of Patents and Designs has granted registration only upon satisfying himself that the design of the plaintiff is unique, novel and artistic.
11. The learned single Judge, after hearing the learned counsel for the parties, on the basis of the materials placed before him, as already stated, dismissed both the applications 175 and 176/97 by his order dated 25-7-1997. Hence, aggrieved by the said order the plaintiff is before us in these appeals.
12. Shri A. A. Mohan, learned counsel for the appellant in his arguments reiterated the submissions made before the learned single Judge, and added that the learned single Judge was not right in dismissing the applications filed for injunction having found that “for a mere look of both the switches it cannot be disputed that there is similarity and identity except the name”.
13. On the other hand Shri M. Venkatachalapathy, learned senior counsel for the defendants also reiterated the submissions made before the learned single Judge and supported the order under appeal. He further submitted that the rotary switches manufactured and sold by the plaintiff are not consistent with the design registered and as such the plaintiff is not entitled for an order of injunction the learned single Judge in his discretion has passed an equitable order while dismissing the applications filed by the plaintiff and directing the defendants to change the colour scheme as proposed by them on the front square plate in order to avoid similarity between the two products, the learned Judge directed the defendants to change the yellow background in the front plate to some other colour and sell their product, and as such there was no need to grant any interim injunction as prayed for by the plaintiff.
14. We have considered the submissions made by the learned counsel for the parties.
15. From the photo copy of the certificate of registration of design dated 11-2-1993, it is seen that contact stage and cover plate was registered in design No. 165316 in the name of ‘Salzer Electronics Limited’, an Indian company having its principal place of business at Samichettipalayam P.O., Jothipuram (Via), Coimbature 641 047, Tamil Nadu (Plaintiff). The said certificate is issued by the Controller General of Patents, Designs and Trade Marks. Sheet-I above the design of the top view of the switch. In the bottom it is stated that ‘Novelty Resides in the shape and configuration of the CONTACT STAGE and COVER PLATE”. In the bottom of sheet-II annexed to the said certificate, in regard to the rear view of the switch, it is stated “Novelty resides in the shape and configuration of the CONTACT STAGE and COVER PLATE”. Similar statement is made in regard to the side view in Sheet-III.
16. The annual reports for the years 1986 to 1996 showing the plaintiff’s sale figures for those years are shown at pages 5 to 43 of the typed set of documents filed by the plaintiffs. These annual reports show enormous increase of sale between the period from 1986 to 1996. The plaintiff in paragraph 9 of the plaint has shown the turnover for the years 1985-86 to 1995-96 ranging from 0.26 lakhs in 1986-87 to Rs. 631.07 lakhs in 1995-96. The plaintiff has filed photo copy of the C.S.T., T.N.G.S.T. Certificates and Excise Registration Certificate. The plaintiff has also filed original cash bill for purchase of first defendant’s switch from second defendant, and photograph of defendants’ rotary switches and photographs of switches of other companies.
17. During the course of arguments before us also the learned counsel for the plaintiff produced the rotary switches manufactured by the plaintiff as well as by the defendant No. 1. A mere look at them go to show that they are almost identical except the name written on the cover plate as “Salzer” in the case of the plaintiff’s switches and “Zenith” in the case of defendants’ switches. The defendants have also not given the clear picture of the figures relating to the turnover relating to manufacture and sale of their switches, and it is also not shown that the defendants have been manufacturing and selling their switches for a long time, or even prior to the manufacture and sale of switches by the plaintiff in a major scale, although they have stated that they are manufacturing switches since 1965.
18. The argument advanced on behalf of the defendants is that the design registered and shown in the typed set is entirely different from the product design marketed by the plaintiff. As already noticed above, the certificate of registration of design and sheets I to III annexed to the said certificate clearly show that the contact stage and cover plate designs of the plaintiff are registered. In sheets I to III it is clearly stated that novelty resides in the shape and configuration of the contact stage and cover plate. Hence the argument that the switches of the plaintiff are not novel and distinctive also cannot be accepted. The sale figures coupled with the T.N.G.S.T., C.S.T., and Excise Registration certificates relating to the switches of the plaintiff clearly indicate the reputation of the business built by the plaintiff in regard to their switches. When the shape and configuration of the contact stage and cover plate are shown in the certificate of registration of design, it cannot be accepted that the colour of the design of the switches of the plaintiff having not been registered under any of the Acts, it is not open to the plaintiffs to restrain the defendants from carrying on their business as contended by the learned counsel for the defendants.
19. As regards the similarity of the switches of the plaintiff and that of the defendants, by comparison, to a mere look, both are similar. Having found so by the learned single Judge, order of injunction ought to have been granted. If the defendants were to manufacture and sell the switches not similar or identical to the switches of the plaintiff, there was no question of the plaintiff seeking an order of injunction, direction could not have been given to the defendants to change the colour scheme on the front square plate in order to avoid similarity between the two products. The learned single Judge was not right in giving such a direction in the applications filed by the plaintiff for grant of injunction, as mere change on the front square plate by the defendants was of no consequence. That could not protect the interest of the plaintiff when the plaintiff had made out a prima facie case for grant of injunction.
20. The learned single Judge in paragraph 10 of the order has observed that from the records available, it was clear that the plaintiff did not register their trade name or the colour combination, and that they have registered only the design of the contact stage and cover plate with the top view, rear view and side view attached. A perusal of the certificate of registration of design produced by the plaintiff clearly shows the registration of design to contact stage and cover plate in the name of “Salzer Electronic”, and in sheets I to III annexed to the certificate the shape and configuration of the contact stage and cover plates are shown stating that novelty resides in them.
21. We are not in a position to agree with the learned single Judge that the plaintiff’s product available in the market is not identical to that of the registered design having regard to the design registered and the products soon. From the material on record, it is not possible to agree with the observation of the learned single Judge that the plaintiff did not stock tothe design registered by them so as to say that the plaintiff is not entitled to seek for an order of injunction. The defendant’s have not shown that the plaintiffs have changed the design from that of the registered one. The plaintiffs themselves in O.A. Nos. 175 of 1997 have sought for injunction restraining the defendants from interfering with their rotary switches containing the contact stage and cover plate registered under design No. 165316 in class 3. If the plaintiff has changed the design, obviously it would not get the benefit of injunction order. That being the position, thelearned Judge could not hold that the plaintiffs have changed the design and as such they could not seek any interim relief.
22. In our view, in the light of the material placed on record referred to above, the plaintiff has made out a prima facie case for grant of injunction. The plaintiff having turnover and sale figures reaching to Rs. 631.07 lakhs prima facie it could be inferred that they have earned reputation for their switches. Hence the balance of convenience is also in favour of the plaintiff. In case the order of injunction is refused the plaintiff would be put to irreparable loss as well, as the plaintiff alleges that the switches manufactured and sold by the defendants as that of the plaintiff are of inferior quality.
23. Ordinarily we would be slow, sitting in appeal, in interfering with the discretion exercised by the learned single Judge in the matter of granting or refusing injunction. But in the case on hand, having regard to the materials placed on record, and when even according to the learned Single Judge the switches of the plaintiff and the defendants have similarity and identity except the name, we feel it difficult to sustain the order under appeal. As already stated above, the defendants could not be directed to change the colour scheme on the front square plate of their switches alone, in order to avoid similarity between the two products and sell their switches, and refuse injunction to the plaintiffs having given such direction.
24. In the result, for the reasons stated, these appeals are allowed, the common order dated 27-5-1997 impugned in these appeals is set aside, and the Application 175 and 176 of 1997 filed in C.S. No. 151 of 1997 are allowed, and interim injunctions are granted as prayed for in the said applications.