' MUNIB AKHTAR, J.--- This appeal arises out of an interim order dated 16-5-2006 made by the learned single Judge in Suit 1388 of 2005 pending on the original side of this Court. The suit was filed by the present appellant, as plaintiff, against the respondents as defendants, in respect of the alleged violation by the latter of the rights of the former under the Registered Designs Ordinance, 2000 ("2000 Ordinance"). (For convenience, the parties are hereinafter referred to in the same manner as they are arrayed in the suit.) The plaintiff claims to be the registered proprietor of certain designs under the 2000 Ordinance. The first of these designs was Design No,11357-D, registered on 31-5-2003 ("the First Design") while five other designs were registered subsequently, three being Design Nos.12310-D, 12311-D and 12312-D which were registered on 2-7-2005, and two being Design Nos.12328-D and 12329-D which were registered on 14-4-2005 (all of these designs being hereinafter referred to as the "Subsequent Designs"). All of these designs were in respect of canopies for motor vehicles. The plaintiffs case, as made out in the suit, was that sometime in December, 2003, it started work on preparing canopies for use by vehicles belonging to the defendant No,1 ("Sui Southern") by way of customizing its registered design (which at that time was of course, only the First Design) to suit the latter's purposes. The plaintiff contended that this work carried on for several months, during which it incurred huge expenditure in tailoring and modifying its design for Sui Southern and also handed over to the latter prototypes of the canopies duly fitted onto its vehicles. Sui Southern expressed full satisfaction with the work done by the plaintiff and it was clearly understood that the contract for manufacturing canopies for its vehicles would be awarded to the plaintiff. However, the plaintiff was informed that the procurement procedures mandated for Sui Southern required that all contracts be by way of tender. The plaintiff claimed that it was assured that this was a mere formality, but one which had to be undertaken.
Accordingly, a tender was floated by Sui Southern (in February-March, 2005), in which detailed specifications of its requirements (including a sketch/drawing) were given. The plaintiff stated that (merely as a matter of form) it put in a bid after the tender had been floated, but much to its shock and consternation, the contract was awarded to the defendant No,2. The plaintiff alleged that the prototype developed by it for Sui Southern was handed over to the defendant No,2, and that in gross violation of the plaintiffs rights under the 2000 Ordinance, canopies were manufactured and supplied by the said defendant to Sui Southern. In the meanwhile, but after the tender the plaintiff also got registered the Subsequent Designs.
2. It was in these circumstances that the plaintiff was constrained to file the suit aforementioned in this Court, along with which the plaintiff also made an application for interim relief. Both the defendants appeared in the suit and vigorously contested the grant of any relief to the plaintiff. The latter's application for interim relief was eventually heard by the learned single Judge but was dismissed by means of the impugned order.
3.
3. The learned single Judge held that it was not the plaintiffs case that the defendants had infringed the First Design; he concluded that the dispute was as regards the Subsequent Designs.
He also observed that the First Design was different from the Subsequent Designs. The learned single Judge also concluded that the plaintiff had made the canopy for Sui Southern under its instructions and it was only subsequently, and much later, that the latter invited bids by means of the tender aforesaid. The learned single Judge observed that there was some similarity between the sketch/drawing of the desired canopy as required by Sui Southern through the bid documents and the Subsequent Designs. However, he held that the tender was published on 2-3-2005, while the first of the Subsequent Designs was not registered in favour of the plaintiff till July, 2005, i.e., till after the tender had been floated. Crucially, the learned single Judge concluded from the photographs of the canopies manufactured and sold to Sui Southern by the defendant No, 2, when compared with the registered design of the plaintiff (the copies of which were also available on record) that "it is difficult to say that the same are copy of the plaintiffs design". The learned single Judge also concluded that any damage that the plaintiff may have suffered on account of any alleged infringement (which would of course have to be established at the trial) could be assessed in terms of money and awarded by way of damages. Thus, the learned single Judge was satisfied that the plaintiff had been unable to make out any case for interim injunctive relief, and as noted above, dismissed its application. Being aggrieved by the aforesaid order, the plaintiff preferred the instant appeal. On 1-9-2010, learned counsel appearing for the parties were put on notice that the appeal would be heard and disposed of finally at Katcha Peshi stage. It was subsequently heard on the date aforementioned.
4. Learned counsel for the appellant assailed the impugned order on a number of grounds. He referred to the various provisions of the 2000 Ordinance to explain in detail the rights thereby conferred and the manner and extent to which they could be, and were in the present case, in fringed upon and the remedies that were available against such infringement. He submitted that the plaintiffs case was that it was the First Design that had been infringed by the defendants and emphasized that this was the registered design owned by the plaintiff long before the contract between Sui Southern and the defendant No, 2, and the tender that had been floated by Sui Southern. He submitted that the correspondence between the parties and the work done by the plaintiff for Sui Southern clearly showed that the canopy being prepared by the plaintiff for the latter was based on the First Design, subject to such alterations and modifications as Sui Southern required to suit its particular needs and purposes. His case was that such customization was only of a minor and incidental nature which did not affect the basic design of the canopy which was, and remained, squarely based on the First Design. Insofar as the tender was concerned, learned counsel submitted that the plaintiff participated in it only on the assurance by Sui Southern that this was a mere formality. According to him, such participation did not amount to any acceptance by the plaintiff of the infringement of any design rights nor did it amount to any waiver of the same.
His case was that the plaintiff would not have put in the effort and incurred the expenditure that it did if there were not a clear understanding between the parties that Sui Southern would only use the plaintiff for the manufacture and supply of canopies as per the latter's design. In support of his submissions, learned counsel placed reliance on Team Nayyer (Pvt.) Ltd. v. Tariq Ahmed Sultani 2008 CLD 94 (Karachi), Team Nayyer (Pvt.) Ltd. v. Kamran Jamal Khan 2008 CLD 227 (Karachi), Mere & Co. v. Hilton Pharma (Pvt.) Ltd. 2003 CLD 407 (Karachi) and Valor Heating Company Ltd. v. Main Gas Appliances Ltd. (1972) FSR 497.
5. Learned counsel for Sui Southern defended and supported the impugned order. He submitted that the work done by the plaintiff in developing the canopy had been carried out on the instructions of Sui Southern and the sketch/drawing shown in the tender was reflective of this work.
Thus according to learned counsel, the design of the canopy as required by Sui Southern, both from the plaintiff and in terms of the tender, was determined by Sui Southern and had nothing to do with the registered designs of the plaintiff. In fact, according to learned counsel, it was the plaintiff who was violating the rights of Sui Southern inasmuch as after the tender was floated, the plaintiff went and 'got the Subsequent Designs registered in terms of the sketch/drawing contained in the tender. His case was that there was no infringement whatsoever by Sui Southern of the First Design. Learned counsel also submitted that in any case, the design in question had no novelty in it and was a known and commonly used design. Accordingly, he challenged the validity of the plaintiffs registered designs and submitted that since they were invalid, no question arose of any infringement of the same. He submitted that the entire case made out by the plaintiff, both as to the work done and expenditure allegedly incurred by it, and the violation of any rights, whether under the 2000 Ordinance or otherwise, was entirely without merit. He placed reliance on Mehran Plastic Industries (Pvt.) Ltd. v. Registrar of Designs and others 2006 CLD 546 (Karachi), Wali Oil Mills Ltd. v. Faisalabad Oil Refinery (Pvt.) Ltd. 2004 CLD 1198 (Karachi), Universal Brushwares (Pvt.) Ltd. v.
Syed Industries and others 1991 CLC 382 (Karachi), Maniar Industries Ltd. v. Mobin Plastic Industries 1987 CLC 135 (Karachi) and Haji Sayed Sikander Shah v. Mian Bahim Bakhsh AIR 1940 Pesh.
38.
6.
6. Exercising his right of reply, learned counsel for the plaintiff submitted that there was no application pending for the cancellation of the plaintiffs registered designs, which were being used by it as its property. Learned counsel further submitted that if the contention of learned counsel for Sui Southern, namely that the sketch/drawing in the tender related only to the Subsequent Designs and not the First Design, were accepted, then the participation by the plaintiff in the tender did not in any manner affect its position vis-a-vis its claim that its rights had been violated.
7. We have heard learned counsel for the parties, examined the relevant record with their assistance and carefully considered the case-law relied upon and statutory provisions referred to by them. Before proceeding to consider the appeal on the merits, one point needs to be examined first. Section 8 of the 2000 Ordinance, which deals with infringement, provides in relevant part as follows:- "8. Infringement.--- (1) If any person infringes a registered proprietor's right, the registered proprietor may bring a suit against him for the recovery of damages and for an injunction against the continuation of the infringement: ' Provided that, for the purposes of grant of a temporary injunction, the registered proprietor must show that he has a prima facie case and that his design is valid and that it has been infringed by the defendant."
It will be seen that the proviso which deals specifically with the grant of interim relief, requires the plaintiff to establish (at least) three things: (a) a prima fade case, (b) the validity of his design, and
(c) its infringement by the defendant. Learned counsel for the plaintiff submitted that insofar as the second requirement is concerned, all that the plaintiff has to show is that his design appears on the register of designs (maintained under section 13). In our view, this interpretation is not supported by the language of the proviso, since it does not use the word "plaintiff' but instead refers to the "registered proprietor". The latter term is defined in section 2(j) as meaning, in relation to a design, "the person for the time being entered in the register of designs as proprietor of the design". If the second requirement had the meaning ascribed to it by learned counsel for the plaintiff, it would be rendered otiose since that meaning is in any case carried by the term "registered proprietor". In our view, the proper interpretation of the second requirement is that if the validity of a design is challenged by the defendant at the stage of interim relief, then it is necessary for the plaintiff to establish this before he can be regarded as entitled to an interim injunction. Of course, any finding on the validity or otherwise of the design would only be confined to the stage of interim relief, and would not affect the case of either party on this issue at the trial, or on the merits if (e.g.) the defendant moves an application under section 10 for cancellation of the registration of the design.
8. Since the present appeal is concerned both with the infringement and the validity of the plaintiffs designs, It is necessary to examine in some detail the meaning and scope of the term "design" as used in the 2000 Ordinance. This is defined in section 2(e) in the following terms:--- "'design' means features of shape, configuration, pattern ornament applied to an article by any industrial process or means, being features which in the finished article appeal to and are judged solely by the eye, but does not include a method or principle of construction or features of shape or configuration which are dictated solely by technical and functional considerations."
' The word "article" is defined in section 2(a) as meaning "any article of manufacture and includes a part of an article if made and sold separately". The first point to note is that both definitions are exhaustive since they use the word "means". Insofar as the meaning of "design" is concerned, it can be regarded as having both a positive and a negative aspect. The positive aspect consists of those elements which define the term, while the negative aspect tells us what stands excluded from the definition. In our view, the meaning of "design" can therefore be presented as follows: ' A design is
(a) features of (i) shape, (ii) configuration, (iii) pattern or (iv) ornament, or any combination of two or more of the foregoing, which are
(b) applied to an article
(c) by any industrial process or means,
(d) and are features which in the finished article
(e) appeal to and are judged solely by the eye but design does not include
(f) a method or principle of construction, or
(g) features of shape or configuration which are dictated solely by technical and functional considerations.
' We now turn to examine these elements and consider whether and if so, how they apply to the plaintiffs designs.
9. As is clear from the foregoing, the first and foremost requirement of a design is that it must comprise of "features" which are "applied" to an "article". A design is separate and distinct from the article to which it is applied and it is the former that can be registered and not the latter. Therefore, in determining whether a design has been infringed or whether it is valid, the first exercise that must be carried out is to determine what is the "article" in question, and what are the "features" of shape, configuration, pattern or ornament (or any combination of two or more of the foregoing) that are being "applied" to the article. The matter was explained thus in Dover Ltd. v Nurnberger Celluloidwaren (1910) 27 RPC 498:--- "...a design means something which is applicable to an 'article.... Design means, therefore, a conception or suggestion or idea of a shape or of a picture of a device or of some arrangement which can be applied to an article by some manual, mechanical or chemical means. It is a conception, suggestion, or idea, and not an article, which is the thing capable of being registered. It may, according to the definition clause, be applicable to any article whether for pattern or for the shape or configuration or for the ornament thereof (that is to say of the article) or for any two or more of such purposes. The design, therefore, is not the article, but is the conception, suggestion. Or idea of a shape, picture, device or arrangement which is to be applied to the article, by someone of the means mentioned in the definition clause. It is a suggestion of form or ornament to be applied to a physical body." (per Buckley, LJ., at pg. 503; emphasis supplied)
' The Supreme Court of India, in Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd. AIR 2008 SC 2520, while considering the meaning of "design" in the (Indian) Design Act, 2000 (section 2(d) thereof, which is in pari materia section 2(e)) cited at length from a leading treatise on the subject, Russel- Clarke and Howe on Industrial Designs (7th Edition, 2005), where it has been stated, inter alia, as follows:-- "Thus a registrable design, as defined by the [(UK) Registered Designs Act, 19491, must have reference to some specific article to which it is to be applied .... It is submitted that a design is an idea or conception as to features of shape, configuration, pattern or ornament applied to an article. Although that idea, while still in the author's head, may be potentially capable of registration, in fact it must be reduced to visible form to be identifiable, and until it is so reduced there is nothing capable of registration, It may be so rendered either by its being embodied in the actual article, or by its being placed upon a piece of paper in such a way that the shape or other features of the article to be made are clear to the eye. Whenever the means of identification..., as soon as the idea is reduced to a form which is identifiable, there is something which is a "design", and which, if new or original, may be registrable." (cited in AIR 2008 SC 2520, para 8)
' Another standard treatise on the subject gives the example of a chair, which the design turns into "something more than a mere chair. It becomes a chair with a conception or suggestion about shape or configuration beyond the fundamental form of a chair" (Intellectual Property Law by Lionel Bently and Brad Sherman (2001), pg. 581). Perhaps a classic example of a design is the iconic Coca-Cola bottle, the mere mention of which conjures up its image in the minds of most people.
There, the "article" was a bottle, and the contoured shape given to it was the "feature" "applied" to the bottle by the Coca-Cola Company. (This design was registered by the Coca-Cola Company in most jurisdictions, though of course the term of the design has in almost all cases long since expired.)
10. When the foregoing principles are applied to the facts of the present case, it is clear that the "article" in question is a "canopy". As explained in the New Shorter Oxford English Dictionary (Vol. I, pg. 329), this word (insofar as is presently relevant) has the following meaning: "An overhead covering forming part of the upper structure of a vehicle esp. The cover of the cockpit of an aircraft". The sense in which it is used in the present case is of a box-like structure which is placed on a flatbed or pickup truck behind the cabin. The structure can be used to house or carry passengers or goods or material. This then is the "article". The next question is what are the "features" of shape, configuration, pattern or ornament that have been "applied" to this "article" (i.e., canopy) by the plaintiff so as to constitute its design. When the First Design is examined, it is clear that what the plaintiff has added to .The top and front of the canopy is a triangular, wedge shaped element, which element lies or rests on top of the cabin when the canopy is placed or axed on top of the flatbed or pickup. In Gramophone Co. Ltd. v. Magazine Holder Co. (1910) 27 RPC 151, the meaning of "shape" 'and "configuration", as used in the definition of "design" was explained in the following terms:
(A) design... May be one applicable to an article 'for the shape or configuration.' ... These two words 'shape' and 'configuration' are not I think tautologous. The word 'shape' prima fade imports, and certainly includes, the external form of the article. 'Configuration' conveys the idea, not of the external form only, but of the construction of a composite article. The word configuration' imports the arrangement by which the shape of a composite article is arrived at." (per Buckley, LE, pg. 159)
' In our view, the triangular wedge shaped element added to the canopy by the plaintiff constitutes the "shape" (i.e., feature) which has been "applied" to the "article" (i.e., the canopy). Thus, the first two elements of the definition (see para 8 supra) are fulfilled. Insofar as the third element is concerned, it is not in dispute that both the manufacturing of the canopy and the additional triangular wedge shaped element added to it is the result of an industrial means or process. The fourth and fifth elements (the last two elements of the positive aspect of the definition) require that the design appeal to, and be judged solely by the eye. The question of what constitutes "eye appeal" was considered by the House of Lords in Amp Inc. v. Utilux (Pvt.) Ltd. (1972) RPC 103. This important case, in which reasoned speeches were delivered by almost all the Law Lords, was considered in detail by the Privy Council in its equally important decision in Interlego AG v. Tyco Industries Inc. (1988) RPC 343, where it was observed as follows:--- "Accepting that there are differences of emphasis in the speeches of the various members of the Committee in the Amp case, their Lordships are nevertheless of the view that the principles to be deduced from it are tolerably clear. First, the primary essential before a shape can be registered as a design is that it should have eye-appeal and in this context (a) the eye is that of the prospective customer and (b) the appeal is that created by a distinctiveness of shape, pattern or ornamentation calculated to influence the customer's choice." (at pg. 355)
' In Dunlop Rubber Co. Ltd. v. Golf Ball Developments Ltd. (1931) 48 RPC 268, it was observed that it may be that "a design has in it a striking feature which catches and holds the eye, and which is the one thing that strikes the eye when one looks at the design" (at pg. 281) and this has since then come to be known as the "striking feature" test. It should be kept in mind that the requirement that the design "appeal to... The eye" does not require that the design must embody any aesthetic beauty in the classical sense; it is sufficient if the design, when applied, has the capacity to qualitatively enhance the decorative value or visual appeal of the finished article (and it must, of course, be capable of being seen because it must be judged solely by the eye). When the foregoing principles are kept in mind, in our view, the plaintiffs design as explained above does have the necessary appeal to attract or influence the choice of a prospective customer. The triangular wedge shaped element can be regarded as the striking feature of the design. This element, when added to the top and front tends to give the canopy a smooth and finished look which (since the wedge sits on top of the cabin) gives the canopy a contoured and sculpted shape that fits in with the body of the truck on which the canopy is mounted.
11. It follows from the foregoing that in our view, the plaintiffs design fulfilled all the elements of the positive aspect of the definition in section 2(e), and it now remains to be considered whether it comes within either of the elements of the negative aspect, because if it does, then it would not be a design within the meaning of the definition. The only element of the negative aspect that needs to be considered is whether the plaintiffs design is dictated solely by "technical and functional considerations". This point (i.e., the exclusion of a design from the definition because its features merely embodied functional requirements), was considered at length by the Privy Council in the Interlego case. The Board was there considering the definition of "design" in the Registered Designs Act, 1949 ("the UK Act") which at the material time was in the following terms:--- 'design' means features of shape, configuration, pattern or ornament applied to an article by any industrial process, being features which in the finished article appeal to and are judged by the eye, but does not include---
(a) a method or principle of construction, or
(b) features of shape or configuration of an article which--
(i) are dictated solely by the function which the article has to perform, or
(ii) are dependent upon the appearance of another article of which the article is intended by the author of the design to form an integral part."
' It will be seen that this definition is in pari materia section 2(e). It should however, be noted that the definition in the 2000 Ordinance speaks of features of shape or configuration being excluded if they are "dictated solely by technical and functional considerations", while in the UK Act's definition such features are excluded if they are dictated soley by the function which the article has to perform". In our view, this difference of language is not material in the facts and circumstances of the present case. It is therefore not necessary to examine the exact scope and meaning of the words used in section 2(e); it will be sufficient to consider how the Privy Council has dealt with the matter under the UK Act in the Interrego case. After considering in detail the speeches of the Law Lords in the Amp case (supra), the Privy Council concluded as follows:--- "...The negative part of the definition does not involve, in order to demonstrate that a particular shape is "dictated solely" by function, showing that that function could not have been performed by an article in some other shape. All that has to be shown is that the relevant features of the shape were brought about only by, or are attributable only to, the function which the article in that shape is to perform, even if the same function could equally well be performed by an article of a different shape. Thirdly, if every feature of the shape is one which is attributable solely to the function which the finished article is to pertom, then the exclusion operates even though the shape may also have eye-appeal." (pg 355; emphasis supplied)
"The incorporation into the shape as a whole of some (perhaps a majority of) features dictated only by functional requirements will not bring the exclusion into operation so as to deprive it of protection, if there are also some features of the shape which are not attributable solely to function." (pg 356; emphasis in original)
' As is clear from the passage reproduced from pg. 355, if the shape that is the "feature" of the design is solely brought about by, or are only attributable to, "technical and functional considerations" (to use the language of section 2(e)), then that feature stands excluded from the definition. Obviously, if that is the only feature in, or of, the design, it falls outside the definition altogether. However (and this is clear from the passage reproduced from pg. 356), if the shape comprises of more than one element, some (or even a majority), but not all, of which. Are attributable to technical and functional considerations, then the shape would not be a "feature" that stands excluded from the definition. In the present case, when the First Design is examined, the only "feature" that is the design is the triangular wedge shaped element or shape referred to above that has been applied to the canopy. In our view, this shape is not dictated solely by technical and functional considerations, as evidenced by the fact that there are many canopies placed or mounted on or attached to flatbed and pickup trucks which do not have this feature. Thus, in our view, the negative aspect of the definition does not apply in the present case.
12. It follows from the foregoing discussion and analysis that the plaintiffs First Design comes within the definition of design in section 2(e). But that is not the end of the matter. A design has to be novel for it to be validly registered, and according to Sui Southern, this condition is not fulfilled in the present case. Section 3(2) of the 2000 Ordinance provides as follows:--- "Subject to the provisions of this Ordinance, a design shall not be registered unless it is new or original and, in particular, shall not be so registered in respect of any article if it is the same as a design which before the date of the application for registration has been registered in Pakistan or published anywhere in the world in respect of the same or any other article or differs from such a design only in immaterial details or in features which are variants commonly used in the trade.
' Explanation.--- Designs are not new or original if they do not significantly differ from known designs or combination of design features."
' Learned counsel for Sui Southern submitted that the plaintiffs design (and we refer here to the First Design) was neither new nor original, and was commonly known and used prior to its registration.
In support of his contentions, learned counsel placed reliance on the picture of a "Polonez" truck downloaded from the Internet, and also on photographs of various trucks operating in the city which had canopies similar to those of the plaintiffs designs (the latter photographs had also been placed on the record of the suit file).
13. Looking at section 3(2), it is clear that (insofar as is presently relevant) a design will not be registered if:---
(a) it is not "new or original", or
(b) is the "same" as a design which, before the date of the application, was published anywhere in the world.
' The explanation clarifies that a design is not new or original if it does not significantly differ from a "known design" or a known "combination of design features". Citing the relevant authorities, Halsbury's Laws of India explains the concept of "new or original" in the following terms:- "'New' refers to situations where the shape of pattern of a design is completely new in itself while 'original' refers to situations where the novelty may consist not in the idea itself but the way in which the idea is to be rendered applicable to some special subject-matter. The word 'original' contemplates that the person has originated something, that by the exercise of intellectual activity he has started an idea which had not occurred to anyone before, that a particular pattern or shape or ornament may be rendered applicable to the particular article to which he suggests that it should be applied....
' The new or original design means that there must be a mental conception expressed in 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. It is not every mere difference of cut, every change of outline, every change of length of breath or configuration in a single and most familiar article which constitutes novelty of design....
' If the same shape, pattern or one substantially similar has previously been thought of in connection with the type of article in question and the idea published, then, the design is neither new nor original. The novelty or originality must be substantial, although no high standard or ingenuity is required." (Vol. 20(2) (2005), para 185.1884)
' In our view, the First Design prima facie comes up to the standard of "original". Canopies may well have been long in use mounted or placed on flatbed and pickup trucks, but the feature added to it by the plaintiff, namely the triangular wedge shaped element, appears to have some novelty in the sense explained above. Indeed, this was the position expressly taken by the plaintiff. Along with its affidavit-in-rejoinder to Sui Southern's counter-affidavit to one of the applications in the suit (C.M.A.
9202 of 2005), the plaintiff annexed photographs to show why it regarded its design as novel, and reference was expressly made to the triangular wedge shaped element of the plaintiffs design in comparison with canopies that did not have any such feature. The material produced by learned counsel for Sui Southern to show that this element was in common use consists only of photographs and images of various trucks in which canopies of a similar design are shown as being used. However nothing appears to have been placed on the record to indicate that this usage was common and widespread at the time that the plaintiff filed its application for the First Design, i.e., in 2003. Indeed, it appears that the plaintiff has been taking action against such users for infringement of its design (as evidenced, inter alia, by two of the reported decisions cited by learned counsel for the plaintiff, and copies of legal notices issued by the plaintiff in other cases and placed on the record of the suit file). At this stage therefore, it cannot be said that there was no novelty in the plaintiffs design or that it was the same as a design commonly in use when it was sought to be registered. In our view therefore, the First Design came up to the standard required in section 3(2) and therefore must for present purposes be regarded as valid.
14. While challenging the validity of the plaintiffs design, learned counsel for Sui Southern placed reliance on Mehran Plastic Industries (Pvt.) Ltd. v. Registrar of Designs and others 2006 CLD 546 (Karachi), Wali Oil Mills Ltd. v. Faisalabad Oil Refinery (Pvt.) Ltd. 2004 CLD 1198 (Karachi), Universal Brushwares (Pvt.) Ltd. v. Syed Industries and others 1991 CLC 382 (Kar) and Maniar Industries Ltd. v.
Mobin Plastic Industries 1987 CLC 135 (Karachi). In the first case, the applicant (Mehran) sought cancellation of a design registered in favour of a competitor (Trans Pak), while the latter filed suit against the former alleging infringement of its registered design. The article in question was a 19 liter plastic water bottle. It was alleged by Mehran that Trans Pak's design, which was registered in 2002, was invalid since the design was known internationally since at least 1999, and material to support this contention was placed on the record. The learned single Judge concluded that Trans Pak's design was known prior to the date of its application since it had in fact admittedly based its design on a mould obtained by it from ASB, a Japanese company, which mould was apparently itself based on a Nestle design. The court observed: "After seeing Nestle's bottle which was admittedly designed prior in time Trans Pak's bottle does not strike the eye to be a new or original design. When both the designs i.e. The design of Nestle and of Trans Pak, are placed side by side, one reaches the inescapable conclusion that the design of Trans Pak is imitation of Nestle's design"
(at pg 552). The design registered in favour of Trans Pak was accordingly cancelled. This case is clearly distinguishable inasmuch as there was incontrovertible (indeed admitted) material on record which established that the registered design was known prior to its registration. That does not appear to be the case at hand. In the second case, the plaintiff sought interim injunctive relief for alleged infringement of its registered design, which was registered in 2000. The article involved in this case was also a bottle, and this case also involved a defence of prior publication. The defendant placed on record material, which was accepted by the learned single Judge, that the design had been published in magazines in 1998. The third and fourth cases were under the previous law, the Patents and Designs Act, 1911. In the third case (Universal Brushwares), the article involved was a toothbrush, and the relevant design was registered in 1982. Its application for interim injunctive relief was dismissed by the learned single Judge on the basis of material placed on record which clearly showed that the design had been imitated from abroad. It was observed as follows: "A person, who has imitated a design from abroad, has no right to have a claim over it, even if he gets it registered in Pakistan, because it is neither new or original" (pg 383). No such material appears to have been placed on record in the present case. The last case (Maniar Industries) involved a design for a comb, and the applicant sought to have the registration of the design cancelled. It was observed by the learned single Judge as follows:--- "The above evidence clearly indicates that the 'Diamond Design' combs were in the market in 1980 when the application of the respondent No, 1 came to be filed praying for registration of the 'Diamond Design' of the combs. As such the prayer for registration and consequently the registration itself would be against the scheme of the Act and contrary to the provisions of section 43(1) of the Act which limits the powers of the Controller to register only such designs as are "new or original designs not previously published". Against this positive evidence produced in this Court by the petitioner there is no evidence worth the name to rebut the petitioner's case." (pg 137)
' This case is also distinguishable on the facts for the reasons already stated.
15. Having dealt with the issue of registration and validity, we now turn to consider the question of infringement. However, before we do so something needs to be said about the First Design on the one hand and the Subsequent Designs on the other. When the latter designs are examined, it is apparent that they are mere variations on the First Design inasmuch as the main or crucial element in each of the Subsequent Designs is the same triangular wedge shaped feature as is to be found in the First Design. Indeed, there seems hardly to be any substantial difference between the First Design and the Subsequent Designs. Section 6 of the 2000 Ordinance provides in material part as follows:---
6. Registration of same design in respect of other articles, etc.--- (1) Where the registered proprietor of a design registered in respect of any article makes an application---
(b) for registration in respect of the same or one or more other articles of a design consisting of the registered design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, the application shall not be refused and the registration made on that application shall not be invalidated by reason only of the previous registration or publication of the registered design: ' Provided that the period of registration of a design registered by virtue of this section shall not extend beyond the expiration of the original and any extended period of registration in the original registered design.
' Section 6 therefore enables the registered proprietor to register for the same article a design which, though carrying modifications or variations, is nonetheless substantially the same as the registered design, with the proviso that the term of a design so registered will not be more than that of the original registered design. If section 6 had not been enacted, the subsequent design would fail for the simple reason that it would be regarded as being the "same" as an already registered design, namely the original registered design of the same proprietor. In our view, the Subsequent Designs could only have been registered by reason of section 6. Since it is a sine qua non of the section that the subsequent design must be substantially the same as the original design, it follows that in most cases (and certainly in the case at hand) the question of infringement would, in essence, be determined with reference to the original registered design. It follows that the plaintiffs case of infringement must stand or fall on the basis of the First Design and the Subsequent Designs are not relevant for this purpose.
16. The statutory test laid down by the 2000 Ordinance to determine whether a registered design has been infringed or not is contained in section 2(d), which gives the definition of "registration of design". This definition N in the following terms:--- "'registration of design' means the right to prevent third parties from applying a design to an article and from making, importing, selling, hiring or offering for sale or hire any article in respect of which a design is registered, being an article to which the registered design or a design not substantially different from the registered design has been applied and from making anything enabling such article to be made as aforesaid, except with the license or written consent of the registered proprietor". (emphasis supplied)
As is clear from the portion highlighted, a registered design is infringed if it, or a design not substantially different from it, is applied to an article without the permission of the registered proprietor, and that article is made, imported, sold, hired or offered for sale. Thus, the test is one of "substantial difference". If the allegedly infringing article carries a design that is substantially different from the registered design, then there is no infringement. However, if there is no substantial difference, then the registered design has been infringed.
17. In the present case, it is clear from the record and the submissions of learned counsel for the parties that the issue of infringement revolves around firstly, the sketch/drawing on the basis of which Sui Southern floated the tender, and secondly, the canopies actually manufactured and supplied to it by the defendant No,2. When the sketch/drawing annexed to the bid documents is examined and compared with the First Design, it is in our view clear that it is at least substantially similar to the latter. In particular, it carries and requires the same triangular wedge shaped element that is part (and indeed, the mainstay) of the First Design. As already noted above, prima fade this element does not seem to have any functional purpose or consideration. It is an admitted position that the plaintiff did do some preliminary work for Sui Southern. A prototype canopy was also delivered by the plaintiff to the latter, and photographs of the same have been placed on the record. These photographs show a striking similarity with the First Design. Since the plaintiff at that time was the registered proprietor of a design, it would have worked from that design to suitably modify and alter it to suit Sui Southern's purposes. However it appears from the record that the alterations so made did not substantially alter the basic features of the design itself. In these circumstances, the question that naturally arises is as to why did Sui Southern choose to invite bids on the basis of a sketch/drawing that bore a striking similarity to the First Design? The submission made in this regard by learned counsel for Sui Southern, namely that it was a design requirement imposed by the latter on the plaintiff is not prima fade appealing. In our view, the only reasonable conclusion (and we emphasize that this is only a prima fade finding) that can be drawn from the record as presently available is that Sui Southern had knowledge of the First Design, had actually seen how it looked in the shape of the prototype, found it suitable for its purposes and therefore invited bids on the basis of a sketch/drawing made on the basis thereof. Insofar as the canopies supplied by the defendant No, 2 are concerned, we are of the view that prima facie the design applied to them was not substantially different from the First Design. The defendant No,2 placed on record a series of photographs which purported to show how the canopies designed by it differed from the First Design. However it is well-settled that when determining the issue of infringement, the two articles (i.e., the one to which the registered design has been applied and the other to which the allegedly infringing design has been applied) are to be seen as a whole and it is the overall visual impression of the two articles that is relevant. Small or minor differences in detail may not be relevant (although of course, in some cases they can make all the difference). In the present case, the article in question is a canopy, which is a fairly large sized item, and is mounted on a flatbed or pickup truck. In most instances, the canopies would therefore be seen from a certain distance when the vehicle moves around the city. When the two canopies are examined as a whole, the immediate impression is that of similarity and not that of dissimilarity. In our view, the design applied by the defendant No, 2 to the canopies sold by it to Sui Southern is prima facie not substantially different from the First Design and therefore, on that basis, there has been an infringement of the latter.
18. It follows from the foregoing that we do not, with respect, agree with the conclusions arrived at by the learned single Judge in the impugned order. We are unable to agree with him that the matter in issue between the parties involved the Subsequent Designs and not the First Design. We are unable to agree with him that the canopies manufactured and sold to Sui Southern by the defendant No,2 did not infringe upon the First Design. In our view therefore, the impugned order cannot be sustained.
19. A party seeking interim relief must of course establish that it has made out its case on the basis of the three well-known ingredients for such relief. The learned single Judge observed that the plaintiffs claim could be assessed in terms of money and awarded by way of damages. This does not however accord with the provisions of the 2000 Ordinance. Section 8(1), already reproduced above, clearly allows a registered proprietor to bring a suit both for damages and for an injunction against the continuation of the infringement, and the proviso expressly recognizes that an interim injunction can be granted in appropriate circumstances. Section 9 exempts a defendant from paying any damages if he can establish that at the date of the infringement, he was not aware and had no reasonable ground for supposing that the design applied to the article in question was registered, but its proviso expressly provides that nothing in the section shall effect the power of the court to grant an injunction against infringement. Thus, the fact that the defendants may be liable to the plaintiff for damages cannot, in and of itself, disentitle the latter from obtaining injunctive relief. The only question that remains therefore is as regards the balance of convenience. Insofar as the defendant No,2 is concerned, we are satisfied that the balance of convenience lies in favour of the plaintiff. As regards Sui Southern, the position is not so clear. Had Sui Southern been a private commercial entity, we would have had little hesitation in holding that the balance of convenience lay against it and in favour of the plaintiff. However, Sui Southern is a public sector company engaged in the supply of a vital service in the Province of Sindh and the city of Karachi. The vehicles on which the canopies have been installed are, we are given to understand, part of its service and emergency fleet, which is needed round the clock to ensure uninterrupted supply of natural gas to consumers and to deal with any untoward incidents, which can happen at any moment. If an injunction is granted against the use of these vehicles, and they are abruptly removed from service, this may adversely affect Sui Southern's ability to perform its vital functions.
20. Keeping all of the foregoing factors in mind, we allow this appeal and set aside the impugned order, but in the following terms:---
(a) as against the defendant No, 2, the interim injunction is granted as prayed;
(b) as against Sui Southern, the following orders are made:---
(i) in respect of the canopies already supplied to Sui Southern by the defendant No, 2 as of the date hereof, Sui Southern shall, within 10 days place on the suit file a list, signed by an officer not below the rank of general manager, giving details of the vehicles on which these canopies are installed, including their make, model and registration numbers;
(ii) the canopies as aforesaid may continue to be used, but only on the aforesaid vehicles, and the canopies shall not be modified or replaced in any manner whatsoever without the prior permission of the Court;
(iii) in all other respects, including any canopies that may have been ordered or contracted or paid for, but have not yet been supplied, the interim injunction is granted as prayed.
' Needless to say, the observations made hereinabove in relation to the pending suit are tentative in nature and are made in the context of an application for interim relief. Nothing herein shall affect the decision of the suit on the merits and on the basis of the evidence that may be led at the trial by the parties.
21. The appeal and listed application stand disposed of in the above terms.