* IN THE HIGH COURT OF DELHI AT NEW DELHI

RESERVED ON : 6th SEPTEMBER, 2017

DECIDED ON : 3rd NOVEMBER, 2017

+ CS(OS) 360/2017, IAs 10100/17 (Delay) & 10101/17 (Delay)

M/S KAMDHENU LIMITED ..... Plaintiff

Through : Mr.Akhil Sibal, Sr.Advocate with
Mr.S.K.Bansal, Mr.Ajay Amitabh Suman & Mr.Kapil
Kumar Giri, Advocates.

Versus

M/S AASHIANA ROLLING MILLS LTD ..... Defendant

Through : Mr.C.M.Lal, Sr.Advocate with Mr.Kapil
Wadhwa, Ms.Devyani Nath, Mr.Rupin Bahl & Ms.Nancy
Roy, Advocates.

CORAM:
HON'BLE MR. JUSTICE S.P.GARG

S.P.GARG, J.

IA 12872/2017 (u/O XXXIX Rule 1 & 2 CPC) in CS(OS) 360/2017

1. In a suit for Permanent Injunction to restrain infringement
of registered design under the Design Act, 2000, Rendition of
Accounts, Delivery up, etc., the instant IA has been filed by the
plaintiff to seek interim injunction till the disposal of the suit. It is
contested by the defendant.
2. Plaintiff’s case as projected in the plaint is that the
plaintiff is a company duly incorporated under the provisions of
Companies Act, 1956. It manufactures and markets steel bars (Saria)

CS(OS) 360/2017 Page 1 of 10

and other allied / cognate goods under the trade name and trademark
“KAMDHENU” which is its registered trademark. It is further
pleaded that in order to distinguish its TMT bars from the other bars
available in the market, the plaintiff has created and developed unique
design having new and original features of surface pattern of double
rib to be applied to its steel bar towards the end of 2012 and the
beginning of 2013. It is further averred that in order to get statutory
protection in the said design, the plaintiff applied for its registration
under the Design Act, 2000 and the registration has been granted
under No.250968 in Class 25-01 w.e.f. 14.01.2013 vide certificate
dated 29.08.2014 by the office of Controller General of Patents;
Designs and Trademark. It is further urged that the plaintiff applies
the said design on its “KAMDHENU SS 10000 TMT” which is the
best quality steel bar. The plaintiff has the sole right to utilise design
in artistic manner and use the same for its products or any adoption of
any identical / similar design. No one else is entitled to use the said
design or any identical / deceptively or confusingly similar marks
without its consent or permission. The plaintiff has built up a valuable
trade, goodwill and reputation.
3. It is further averred that in the first week of June, 2017
the plaintiff came across TMT bar and leaflets relating thereto of the
defendant bearing the trademark “FRIENDS 500 HD” in the markets
of South Delhi. It is alleged that the defendant has applied / copied /
adopted / imitated an identical design as that of the plaintiff’s design
registered under No. 250968 in Class 25-01. The surface pattern of
the double rib being so used and applied by the defendant on its TMT

CS(OS) 360/2017 Page 2 of 10

bars is identical with / or substantially similar and fraudulent and
obvious imitation of the plaintiff’s registered design. The impugned
adoption and use of the plaintiff’s design by the defendant is
fraudulent and / or obvious imitation of the plaintiff’s design. The
defendant’s adoption and use of the impugned design in relation to
their steel bar is an infringement of the plaintiff’s said registered
design and is also guilty of passing off.
4. The suit is contested by the defendant. It is urged that the
plaintiff has played fraud upon the Design Office, Kolkata by
misrepresenting itself as the owner and originator of the impugned
design bearing No. 250968. The impugned design has been copied
from British Standard BS 4449:2005 category B500C. The
documents were suppressed by the plaintiff. The impugned design is
used as a standard for reinforcement bars worldwide since 1984.
Several countries including Germany, Poland and U.K. have adopted
the said standard. The plaintiff cannot claim any monopoly or right
over the impugned design. In order to comply with the B500C
standard, it is mandatory for any manufacturer to follow the transverse
rib arrangement as depicted in the standard published in 1984. The
impugned design is liable to be cancelled under Section 19 of the
Design Act, 2000.
5. It is further averred that the defendant is a part of
FRIENDS Steel Group, it commenced its business operations in 1998.
The defendant is a leading manufacturer of steel bars including TMT
bars, other steel rolling sections like angle, tee, round, etc. The
defendant is the manufacturer of FRIENDS TMT bars in Gujarat and

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primarily operates its business in Gujarat; it is approved / certified by
Bureau of Indian Standards. The defendant has been manufacturing
and marketing TMT bars and other allied products for the last about
19 years. The impugned product was designed in June, 2017 and
thereafter the defendant commenced its trial production. Samples of
the impugned product was sent to the Government approved labs for
trial and the testing purposes in June, 2017. The shape and surface
pattern of the impugned product has been mandated / prescribed by
the British Standard BS4449:2005 category B500C designs, existing
in the public domain since September, 2005 in U.K. and in Germany
way back since 1984. The impugned design is a basis of
categorization of the reinforcing bars within the B500 standard. The
plaintiff has copied the impugned design from a surface pattern
proposed in B500C category. The defendant is in the process of filing
a cancellation petition before the Controller of Designs, Kolkatta with
regard to the impugned design. It is further urged that the plaintiff is
not the originator, inventor or owner of the impugned design; it lacks
novelty. The impugned design is functional in nature. It does not
have any individual characteristic which makes it different from prior
published surface patterns of TMT bars.
6. In the replication, the plaintiff disclosed that the
impugned design is quite different and distinct from the alleged
designs relied upon by the defendant. The plaintiff’s design is new,
novel and original. The plaintiff’s two sets of the ribs are inclined at
48 degree and 65 degree. The inclination of ribs at the particular
degree is not mentioned in either of the alleged standard, relied upon

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by the defendant. The defendant has copied the same pattern of ribs
inclined at 48 degree and 65 degree and is guilty of infringement of
plaintiff’s registered design. It is further informed that one Narendra
used to work with the plaintiff company as machine operator and was
well versed with the impugned design. He subsequently joined the
defendant’s company. The defendant was ex-licensee of the plaintiff.
7. Learned Senior Counsel for the plaintiff urged that due to
registration of the design under 250968 in Class 25-01, the plaintiff is
a registered proprietor and there is a presumption of validity of the
design. The defendant was the ex-licensee of the plaintiff. It has
copied the exact angle of the plaintiff’s ribs. The two sets of ribs in
the plaintiff’s bar are inclined to 48 degree and 65 degree and it
amounts to piracy of the plaintiff’s design under Section 22 of the
Design Act. The plaintiff used the device of magnifying glass to
highlight the design in its advertisement. Identical device of
magnifying glass has been used by the defendant on their bar to
highlight the plaintiff’s design. The defendant has challenged the
validity of the plaintiff’s registered design on the basis that the same
has been prescribed by alleged British Standard prior to the plaintiff’s
registration. However, the validity of the registered trademark cannot
be questioned at the interim stage. The defendant has miserably failed
to show that the subject design is the only mode /option possible for
functional requirement of the product; the alleged defence of
functionality is liable to be rejected. The alleged British Standard
provides for range of the designs and not a particular design as such.
Alleged year of publication is not prima facie established by the

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defendant. The balance of convenience is in favour of the plaintiff
and it will suffer irreparable loss if no interim protection is granted.
Reliance was placed on ‘ITC Limited vs. Controller of Patents and
Designs’, 2017 SCC online Cal 415; ‘Gujarat Bottling Co.Ltd. & Ors.
vs. Coca Cola & Ors.’, 1995 (5) SCC 545; ‘Lupin Ltd. & Anr. vs.
Johnson and Johnson & Anr.’, 2015 (61) PTC 1 (BOM)(FB);
‘Whirlpool of India Ltd. vs. Videocon Industries Ltd.’, 2014 (60) PTC
155 (BOM); ‘Mohan Lal, Proprietor of Mourya Industries vs. Sona
Paint & Hardware’, 2013 (55) PTC 61 (DEL)(FB); ‘Cello Household
Products vs. Modware India’, 2017 SCC Online Bom 394; ‘Faber-
Castell Aktiengesellschaft vs. Cello Pens Pvt. Ltd.’, 2015 SCC Online
Bom 6410; ‘Reckitt Benkiser India Ltd. vs. Wyeth Ltd.’, 2013 (54)
PTC 90 (DEL)(FB); ‘Bharat Glass Tube Ltd. vs. Gopal Glass Works
Ltd.’, AIR 2008 SC 2520; ‘RSPL Ltd. vs. Mukesh Sharma & Anr.’,
232 (2016) DLT 161 (DB); and, ‘Wander Ltd. & Anr. vs. Antox India
Pvt. Ltd.’, 1991 PTC-1.
8. Learned Senior Counsel for the defendant while
controverting the contentions urged that the plaintiff is not the
originator of the design; registration was obtained under fraud and its
validity can be challenged under Section 19 of the Design Act. The
plaintiff himself has copied the design from the British Standard BS
4449:2005 category B500C available in the public domain, it was
published in 2005. The design is functional in nature and is not a
registerable under 19(1)(d) of the Act. The defendant is in the process
of filing of cancellation petition. Only in the replication, the plaintiff
came up with the plea that the ribs were inclined 48 degree and 65

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degree. Reliance was placed on ‘Amit Jain vs. Ayurveda Herbal &
Ors.’, 2015 (63) PTC 121 (Del); ‘Dabur India Limited vs. Mr.Rajesh
Kumar & Ors.’, 2008 (37) PTC 227 (Del); and, ‘M/s. Aashiana
Rolling Mills Ltd. vs. M/s.Kamdhenu Ltd.’ FAO(OS)237/2017,
CAV.No.760/2017 & CM Nos.30823-24/2017 decided on 28.08.2017.
9. By an order dated 15.06.2017, the defendant and its
associates etc. were restrained from using, selling, soliciting,
exporting, displaying advertising or by any other mode dealing in any
manner or mode the impugned design or any other design which is
deceptively similar to or fraudulent and / or obvious imitation of the
plaintiff’s design covered by design registration No.250968 in Class
25-01 in relation to steel bar and related / allied products. The said
interim protection continues till date.
10. At the time of consideration of interim relief only prima
facie view of the matter is to be taken. Undisputedly, the plaintiff is
the registered proprietor of design under registration No.250968 in
Class 25-01 dated 14.01.2013. Till date, the defendant has not filed
any cancellation petition before the concerned authority i.e. Controller
General of Patents; Designs and Trademark. The registration
certificate is accompanied by two sheets where the front view and
back view of the TMT bar is reflected. It records that the novelty
resides in surface pattern particularly in the portions marked A & B
rod for construction. The said registration is valid till date. There will
be a presumption of validity due to its registration. It will be during
trial for the defendant to establish that the registration is in violation of
any Clause of Section 19 of the Act.

CS(OS) 360/2017 Page 7 of 10

11. The plaintiff undoubtedly is the prior user of the design
since 2013. As per the defendant’s admission, it started trial
production of the impugned steel bars only in June 2017. No
substantial sales have been effected pursuant to that. On the contrary,
the plaintiff has pleaded sale of subject matter products since 2013; its
total sale for the year 2016-2017 was `8,377/- lacs. The total gross
turnover of the plaintiff for the year 2016-2017 is `63,315/- lacs. The
plaintiff has also shown that huge sum of money was spent on the
advertisement of the subject matter. In 2016-2017, `27,50,292/- was
spent on advertisement expenses and `1,13,86,571/- was spent on
sales promotion.
12. The defendant has not placed on record any credible
material at this stage to infer if the impugned design has been copied
by the plaintiff from the British Standard BS 4449:2005 category
B500C. The plaintiff has placed on record the advertisement
undertaken by the defendant for its products which is identical to the
plaintiff’s design. In this advertisement, the defendant claims that the
design underneath the magnifying glass was its ‘innovation’.
Apparently, the defendant cannot plead at this juncture that the
impugned design of which the plaintiff is the registered proprietor was
in public domain prior to 2013.
13. The plaintiff has produced on record a report from
Standard Testing Laboratory (page 245, part III); it records that the
sample described TMT 10 mm “FRIENDS” did not conform to IS :
1786-08 for GR-Fe-500 with test No.3, 4 & 5. Report dated
29.08.2017 (page 246, part III) given by Mr.Rajesh Kant Chand

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Mishra, Assistant Professor observed : “on the basis of various
comparisons as studied and discussed in above paragraphs on support
of aforesaid figures and facts of this report, it has been concluded
herein that the design in FRIENDS’ TMT Bars is the copy of the
design in KAMDHENU’s TMT Bars.”
14. The plaintiff has also placed on record the document
showing that one Narendra, who is alleged to have shifted his
employment with the defendant presently, was machine operator with
it in April, 2014. The plaintiff has further claimed that earlier the
defendant was its ex-licensee and was aware of the impugned design
to be replicated in its TMT bars. Photocopy of the Licence User
Agreement (page 233, part III) executed between the parties on
01.06.2008 has been placed on record.
15. The impugned design has been protected by the plaintiff
earlier also by filing various suits and the Courts have given interim
protection. This is so apparent from the orders (pages 206 to 219)
passed in CS/TM No.78/2014 ‘M/s. Kamdhenu Ispat Ltd. vs. Shri
Sharma Steeltech (India) Pvt. Ltd. & Anr.’ confirmed by this Court in
CS(COMM) 348/2016 ‘M/s. Kamdhenu Ispat Ltd. vs. Sh.Sharma Steel
Tech India Pvt. Ltd. & Anr.’ and CS/TM No.96/2016 ‘M/s. Kamdhenu
Ltd. vs. M/s. Him Steel Private Limited’ dated 14.12.2016.
16. Considering the above facts, this Court is of the view that
the plaintiff has a prima facie case to protect its design till the disposal
of the case. The arguments raised by the learned Senior Counsel for
the defendant are primarily arguments on merits which can be

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considered after the parties are given opportunities to prove their
respective cases by leading credible evidence.
17. The IA is allowed and the interim protection granted vide
order dated 15.06.2017 is confirmed till the disposal of the suit.
18. Observations in the order shall have no impact on merits
of the case.
CS(OS) 360/2017, IAs 10100/17 (Delay) & 10101/17 (Delay)

1. List before the Joint Registrar on 30th November, 2017

for completion of pleadings, filing of documents and affidavits of
admission / denial of the documents.

2. List before this Court on 20th December, 2017 for

framing of issues.

(S.P.GARG)
JUDGE
NOVEMBER 03, 2017 / tr

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