Bajaj Auto Limited v. Pur Energy Pvt Ltd and Another

Reserved on :

31.07.2024 Pronounced on :

02.08.2024

O.A.Nos.410 to 412 of 2024 in C.S.(Comm.Div) No.107 of 2024

P.VELMURUGAN, J. These applications have been filed by the plaintiff seeking interim injunction restraining the respondents/defendants from infringing the plaintiff's registered designs Nos.240566 (Motorcycle), 239774, 239776 and 267244 (Headlamp) or similar shape or configuration to the plaintiff's registered designs till the disposal of the suit. Mr.P.S.Raman, learned Senior Counsel for the applicant/plaintiff would submit that the applicant herein is a flagship company of the reputed Bajaj Group. The Bajaj group has an illustrious history and is known for its integrity, dedication and work ethics. The Bajaj brand is well known not only in India, but in more than 90 countries across Asia, Southeast Asia, Europe, Latin America, Middle East and Africa. The applicant is the manufacturer of land vehicles including motor scooters, motorcycles, three-wheeler motor vehicles and carriage vehicles, quadricycles and parts, accessories and components thereof. Some of the iconic brands manufactured and sold by the applicant includes Pulsar, Chetak, RE, Avenger, etc. amongst others. Pulsar is one such prominent OMA brand, born out of Bajaj Auto's technical prowess, for a range of popular lightweight motorcycles sold the world. The first generation of Pulsar motorcycles were launched by the applicant over 20 years ago in 2001, and over 17 million Pulsar motorcycles have been sold globally including in India.

2.1 The applicant is world's prominent manufacturer of motorcycles and three wheelers. It has manufacturing facilities located at Chakan near Pune, Waluj near Aurangabad, and at Pant Nagar in Uttarakhand. The applicant's motorcycles, three wheelers and quadricycles are sold all over India with a wide network of dealerships. In the fiscal 2023-24, the applicant recorded sales of over 4.3 million vehicles clocking the turnover of Rs. 46,087.68 crores and profit after tax of Rs. 7,478.79 crores, despite challenging global and domestic economic situations. The applicant is the most valuable motorcycle company in the world having crossed market capitalization of Rs.2,55,397 Crores as on

31.03.2024, despite prevailing global macro environment, cost pressures, inflationary conditions, and the like, and well supported by a rich product mix, high volumes, and effective cost management. The applicant is India's largest exporter of motorcycles, three wheelers and quadricycles, having exported around 1.6 million units (of FOB value over USD 1.7 billion) in 2023-24. The applicant enjoys approximately 18% of the domestic (India) market share for motorcycle.

2.2 The applicant enjoys a strong brand reputation and Pulsar is one of their iconic brands. In addition to cutting edge technology, the applicant's Pulsar motorcycles incorporate a unique design/shape. This unique and iconic design of the applicant's vehicles is protected by several design registrations in India, including : a. Design Registration No.240566 in respect of Pulsar 200 NS in Class 12-08("Pulsar Motorcycle"), b. Design Registration No.239774 in respect of head lamp in Class 26-06 ("Pulsar Head lamp"), c. Design Registration No.239776 in respect of Fairing for Motorcycle in Class 12-99 ("Pulsar Head lamp Fairing"), and d. Design Registration No.267244 in respect of Headlamp cover for Motorcycle in Class 12-16 ("Pulsar Head lamp Cover"). The aforesaid designs are hereafter referred to as "Bajaj Designs".

2.3 The distinctive elements of the applicant's Design No.240566 for their Pulsar 200 NS Motorcycle which impart unique shape to the Pulsar Motorcycle include (a) Headlamp, (b) Position of indicator lights and (c) Visor. The distinctive elements of the applicant's design No.239744 for the Pulsar Head Lamp, 239776 for Pulsar Headlamp Fairing and 267244 for Pulsar Headlamp Cover, in combination give unique and distinctive shape to the Pulsar Head Lamp include (a) headlamp lens with positioning and shape of the pilot lamps (b) headlamp front mask (c) visor (d)side fairing flaps (e) headlamp side mount flaps (visible in side view) and (f) reflector inside the lens. By virtue of the above mentioned unique features, the applicant has design rights over the Pulsar Motorcycle and Pulsar Head Lamp. All rights, title and interest in the designs vest exclusively with the applicant only and use of an identical or similar design by anyone amounts to passing off and infringement of Bajaj Designs and Bajaj Designs are valid subsisting as on date. The applicant has spent a substantial amount of time, resources and money in the marketing and advertising of its vehicles.

2.4 The applicant's annual turnover of the products incorporating Bajaj Designs runs into several crores of rupees every year. The popularity of the applicants vehicles is not confined only in India and the vast extent of export to over 90 countries is testimony of its popularity abroad. The annual turnover of the domestic and the export sales of the applicant's products incorporating the Bajaj designs over the past ten years from 2014-2015 to 2023-2024 is Rs.56,285.98 crores and 21,556.39 crores respectively. Therefore it is sufficiently clear that the applicant's Pulsar Motorcycle has an enviable reputation in the market and enjoy a tremendous reputation and goodwill. Owing to the tremendous popularity, unique outward appearance, and its appeal to the eye of the public at large, the shape and configuration of these vehicles have acquired protection under the Designs Act, 2000, which has come to signify that the applicant has the sole and exclusive right to manufacture and sell motorcycles having the shape and configuration more particularly set out above. The Bajaj Designs have also attained distinctiveness along with the tremendous goodwill and reputation, and the trade and public associate the Bajaj Designs (whether used together or separately) only with the applicant and no one else. Further, the prolonged and extensive use of the Bajaj Designs has resulted in creating a strong and intangible intellectual property asset owned solely by the applicant and no one else. The marketing, using or sale of any vehicles which use the shape and configuration of the Bajaj Designs is unlawful and amounts to piracy under the provisions of the Designs Act, 2000.

2.5 While so, in or around April 2024, the applicant discovered that the 1st respondent was manufacturing, marketing and / or selling motorcycle under the brand Ecodryft" (hereafter referred to as "Infringing Motorcycle") that contains a head lamp (hereafter referred to as "Infringing Headlamp). The infringing Headlamp is visually and structurally identical to the applicant's registered designs nos. 239774, 239776 and 267244 for Pulsar Head Lamp. By virtue of the Infringing Headlamp, the Infringing Motorcycle is visually and structurally identical to the applicant's registered designs no. 240566 for Pulsar Motorcycle. The designs of Infringing Motorcycle and Infringing Headlamp adopted by the first respondent are fraudulent and clear imitation of the applicant's registered designs in respect of the Pulsar Motorcycle and Pulsar Headlamp. The 1st respondent through their authorized dealer the 2nd respondent has been marketing and selling the infringing products. The applicant through its attorney's caused to issue a cease and desist notice dated

18.04.2024 addressed to the first respondent ["Notice"], recording the above mentioned facts and called upon the first respondent to forthwith cease and desist from using and/or applying the shape and configuration of the Bajaj Designs (viz. Design Nos. 240566, 239774, 239776 & 267244). The applicant by this Notice dated 18.04.2024 also demanded for a statement of account of the total sales made pertaining to the infringing vehicles being manufactured / sold / distributed/advertised and offered by the first respondent.

2.6 The first respondent has neither replied to the Notice nor has refrained from manufacturing, marketing and selling the Infringing motorcycle and Infringing Headlamp, and therefore the present suit is filed. The Infringing Motorcycle and Infringing Headlamp have clearly reproduced the Bajaj Designs and the same has obviously been done by the first respondent with a fraudulent intention to mislead the public at large into believing that the Infringing Motorcycle and Infringing Headlamp are, in fact, manufactured and sold by the applicant/plaintiff. The Infringing Motorcycle and the Infringing Headlamp clearly reproduce the Bajaj Designs, including the distinctive elements referred to above. A side-by-side comparison clearly shows that the Infringing Motorcycle and Infringing Headlamp bodily copy the Bajaj Designs and are strikingly similar to the applicant's vehicles that embody the Bajaj Designs.

2.7 The placement and the shape of the headlamp and the pilot lamps are identical. The shape of the pilot lamp forming a diamond is placed on the right and left side at the end of the Headlamp in the Infringing Motorcycle is identical to the Pulsar motorcycle. Visor: The design of the visor having a curve shaped in the middle and separating the right and the left side with its placement above the headlamp in the Infringing Motorcycle is identical to that in the Pulsar motorcycle. Side painted fairing flaps: The shape of the fairing flap on both sides of the Infringing Headlamp near the tank of the Infringing motorcycle, having an oval shape is identical to that in the Pulsar Motorcycle. Side mount flaps (black): The design and the placement of the side mount flaps on both sides of the Infringing Headlamp are identical to that in the Pulsar Motorcycle. Reflector inside the lens: The swirl shape inside the lens inside the Infringing Headlamp is also identical to that in the Pulsar Headlamp. Indicator position: The indicators are positioned between the reflector lens and the pilot eyes in the Applicant's design and the same is adopted by the first respondent also. In fact, in a general ocular impression, and as demonstrated by the red colour illustrative outlines in the figures below, the Pulsar Headlamp and the Infringing Headlamp when placed side by side are absolutely indistinguishable and identical to each other. There is a near identical resemblance in size, shape, dimentions, proportions, angles and features thereof and the overall body structure and components giving same visual appearance as Bajaj Design from all sides.

2.8 The learned Senior Counsel for the applicant would further submit that from the above facts and a general ocular impression, the Pulsar Motorcycle when placed side by side are absolutely indistinguishable. Similarly, the Pulsar Headlamp and infringing Headlamp when placed side by side are absolutely indistinguishable. Therefore, through visual representations seen by layman's eyes, the essential features of the Bajaj Designs are entirely present in the Infringing Motorcycle and Infringing Headlamp manufactured and sold by the respondents. Such blatant reproduction of the Bajaj Designs cannot be a matter of coincidence or honest adoption and has been done with the sole intention to ride on the goodwill and reputation of the applicant. Such use of Bajaj Designs by the respondents is in breach of the statutory right conferred under Section 11 of the Designs Act, 2000, and amounts to piracy under Section 22 of the said Act.

2.9 The goodwill and reputation, which have so far been built up by the applicant are valuable intangible intellectual properties, owned, possessed and zealously guarded and protected by the applicant over past several decades. The respondents are involved in manufacturing and sale of the infringing Motorcycle and Infringing Headlamp which are a blatant imitation of the Bajaj Designs being Registered Design nos. 240566, 239774, 239776 and 267244. The imitation is so obvious and blatant that it is impossible to distinguish between

(a) the Applicant's Bajaj Pulsar Motorcycle and the 1 Respondent 's Infringing Motorcycle in the front view, and (b) the applicant's Pulsar Headlamp and the first respondent 's Infringing Headlamp. The first respondent is committing piracy and infringement of applicant's registered Bajaj Designs. This has been done with a deliberate intention to create confusion amongst the public at large. Therefore, the fraudulent intention of the first respondent is very clear in that it attempts to create confusion in the minds of consumers on account of close resemblance to the applicant's motorcycles so as to derive undue benefits arising out of such confusion. The respondents are deliberately misleading the customers by manufacturing and/or selling the Infringing Motorcycle and Infringing Headlamp that replicate the registered Bajaj Designs. The manufacture and sale of Infringing Motorcycle and Infringing Headlamp with identical design, shape, configuration, and appearance similar to the applicant's Pulsar Motorcycle and Pulsar Headlamp amount to infringement of the Bajaj Designs.

2.10 The respondents are therefore liable to be injuncted from committing further infringements thereof in violation of the applicant's statutory rights. The applicant has made out a prima facie case against the respondents who have blatantly violated and infringed the applicant's registered designs. Since the applicant is the prior adopter and extensive user of the registered design, the balance of convenience is in favour of the applicant. The respondents have clearly sought to pass off their products as that of the applicant's and this reeks of malafides. Moreover, if an order of interim injunction is not granted, the applicant will be put to irreparable injury and heavy losses. The learned Senior Counsel for the applicant, to suuport his contentions, has placed reliance on the decision of the Hon'ble Supreme Court in the case of Bharat Glass Tube Limited vs. Gopal Glass Works Limited reported in AIR 2008 SC 2520, a decision of Full Bench of Delihi High Court in the case of Recikitt Benkiser India Ltd., vs. WYETH ltd., reported in AIR 2013 Delhi 113 and the decision of the Delhi High Court in the case of Kent RO Systems Pvt. Ltd., and Ors vs. Pushpendra and Ors reported in MANU/DE/2106/2023. The learned Senior Counsel for the respondents would submit that the first respondent is a reputed and an established company registered under the provisions of Companies Act, 2013 engaged in the business of manufacturing electric vehicles and high-performance lithium batteries. The first respondent is in the business of manufacturing electric scooters and motorcycles (two-wheeler vehicles) and is currently one of the leading electric two-wheeler brands in India, having a dominant presence in India as well as in many Asian countries. The first respondent through its high customer centric approach and cost-effective products, has emerged as one of the highest selling two-wheeler electric vehicle brands in the country and on the strength of its brand, has begun exporting its products to other countries in South Asia, and has over 70,000 satisfied end users across India and South Asia and are having a strong record as a high service-oriented brand. The first respondent launched its electric two-wheeler in December, 2022 under the brand "Ecodryft" with tremendous publicity across India, and was widely reported across both English and Hindi language media as well as the vernacular press and in Journals and magazines in the automotive segment including magazines where Bajaj themselves advertise regularly. A compilation of some of the news reports of the launch of "Ecodryft"filed in the present proceeding.

3.1 The learned Senior Counsel would further submit that the first respondent does not admit infringement and the design adopted by the first respondent is different from the Indian Design No. 240566, 239774, 239776 and 267244. The Indian Design No. 240566, 239774, 239776 and 267244 are invalid under one or more grounds under Section 19(1) of The Design Act, 2000 and the same are liable to be cancelled. The test for design infringement is not a comparison of any alleged similarities alone, but an overall comparison of the impugned product with the design registration from the eye of an informed user who is familiar with designs in this field. From the standpoint of the informed user with a certain degree of knowledge of the components normally included in such designs and because of his/her and interest in the goods concerned, can be understood as a user who is observant and particularly attentive and sensitive to design and aesthetics of the goods concerned. The differences in the design aspect between Design Registration No. 240566 and the first respondent's product "Ecodryft" are numerous and significant and would not escape the attention of the average consumer/customer. In this context, it is also pertinent to note that the first respondent sells its products through dedicated dealers, pan India. The Design Registration No.240566, 239774, 239776 and 267244 are prima facie invalid on one or more of the grounds present in Section 19(1) of the Designs Act, 2000. The Design Registration No.240566, 239774, 239776 and 267244 are liable to be held invalid and cancelled on each of the following grounds, which are taken separately and without prejudice to each other: a. The design has been previously registered in India b. The design has been published in India or in any other country prior to the date of registration c. The design is not new or original d. The design is not registerable under this Act e. The design is not a design as defined under clause (d) of section 2.

3.2 The first respondent has already filed four cancellation petitions dated 02.07.2024 against the above-mentioned Design Registration Numbers of the applicant/plaintiff before the learned Controller of Patents & Designs. There are numerous prior arts having the same shape, composition, assembly etc., which existed prior to applicant's Design Registrations. Further, each of the above designs individually illustrate that the elements asserted as design features in the plaint, were published prior to 2nd November 2011, i.e., before the priority date of the first Design Registration No.240566 of the applicant, thereby rendering all of the above designs liable for cancellation due to prior publication. The design of the first respondent is different from the applicant's ID 240566. The registered design ID 240566 is not similar to the allegedly infringed vehicle.

3.3 An individual or a layman, without any special knowledge about registered designs, will be able to distinguish between the two vehicles, since just by first glance, numerous differences can be pointed out. The consumers can differentiate between the products of the both the applicant and the first respondent since, the trademarks are distinct and are brand identifiers, both the products are sold from their exclusive showrooms, as well as exclusive dealerships. Further, the products of the first respondent can be exclusively booked from their own official website, i.e., www.pureev.in and therefore, a consumer purchasing the first respondent's bikes would be prudent enough to know the difference between the two. The price range of both the products are such that any consumer buying the bikes will consider all the specifications and details within the price range and would not make any hasty decisions. The first respondent's bike is an electric bike, while the applicant's product in question operates on a petrol engine. Therefore, any common consumer would purchase the product only after a thorough inspection of the specifications, such as engine.

3.4 The first respondent has been selling its "Ecodryft" bike pan-India, ever since December 2022, as well as its Lithium-ion battery variant, also known as"Ecodryft".The launch of both the normal as well as the lithium ion battery variant of "Ecodryft", the same was preceded by significant publicity pan-India, and they continue to be regularly publicized, including being published in trade journals wherein the applicant has also been advertised, and therefore, there is putative knowledge of the first respondent's products since December 2022 at the very least and the applicant being in the same industry was bound to have known about the first respondent and its products. The first respondent has made tremendous investment over the past four and half years in terms of manpower, resources, money and time in developing the proprietary motor and power source technology underlying in Ecodryft as well as in marketing the product across India. The applicant having chosen to acquiesce and ignore the launch of Ecodryft in December 2022, cannot now claim equities in their favour.

3.5 The learned Senior Counsel for the respondents would further submit that it can be prima facie observed that the Registered Design Registration No.240566, 239776, 239774, 267244 are liable to be cancelled as per Section 19 of The Designs Act, 2000 on the grounds that the designs are neither new nor original and has numerous prior publications. The average customer wishing to purchase a vehicle will not purchase a vehicle based on the shape of the front indicator or of the handlebar or the taillights but the performance on road including mileage, maximum speed, cost including maintenance cost and etc., all of which are dictated by the powertrain system of the vehicle. Both IC engine and EV industry has very defined markets making it next to impossible for a customer to get confused between the two-powertrain system. The concerned designs of the applicant, qua Design Registration Nos. 240566, 239776, 239774, 267244 have not been infringed by the first respondent since the same although registered, existed prior to the applicant's registrations and as such the same are neither novel nor exclusive to the applicant. Despite knowing fully well that the first respondent's designs are clearly distinct and dissimilar to that of the applicant's served the legal notice dated 19.04.2024, which clearly illustrates its malafide intention.

3.6 A mere visual representation of side by side comparison of the side and front view of the Motorcycles seen by a layman's eyes can clearly distinguish the specific and broad features of the two Motorcycles, as the purchasing consumer is a prudent one. The two products are sold under different names, i.e. the product of the applicant is marketed and sold under the name of "Bajaj Pulsar" and the product of the first respondent is marketed sold under the name of "Ecodryft" and thus the question of misleading the customer by misusing the goodwill of the applicant does not arise. The applicant has acted in breach of provisions of Section 15(1)(a)(b) of the Design Act, 2000, which clearly illustrates that the applicant has not shown the specimens of the Registered Designs ID 240566, 239776, 239774, 267244 as the same have not been marked/embossed with the prescribed mark, words or figures, denoting that the designs are registered. The learned Senior Counsel, in support of his contentions, has placed reliance on the decisions of this Court in the cases of Maya Appliances Private Limited vs. Butterfly Gandhimathi Appliances Ltd., reported in AIR 2017 Mad 47, Preethi Kitchen Appliances vs. Baghyaa Home appliances & Maya Appliances Private Ltd., reported in 2018 SCC OnLine Mad 637, Maya Appliances Private Ltd vs. Preethi Kitchen Appliances reported in 2018 SCC OnLine Mad 13549 and Maya Appliances Private Limited vs. Butterfly Gandhimathi Appliances Ltd., reported in 2022 SCC OnLine Mad 991 and also the decision of the Hon'ble Supreme Court in SLP(C) Nos.28062-28063 of 2019.

3.7 Therefore the applicant is not entitled to the relief sought for in the applications and the same are liable to be dismissed. In reply to the submissions made by the learned Senior Counsel for the respondents, the learned Senior Counsel for the applicant submitted that even though the designs of the applicant's are available in the foreign countries and the same is not unique, in India the applicant has manufactured the Bajaj designs for the first time. Therefore unless the order of interim injunction is granted, the applicant would be put to irreparable loss. Heard the learned Senior Counsel on either side and perused the materials available on record. Applicant is the owner of the Bajaj designs, who made applications for registration on 02.11.2011, which were registered on 30.01.2012 under the Designs Act, 2000. The first respondent also admitted the same and they have stated that they filed applications for cancellation of the registration of the applicant's designs and they also admitted that they launched their infringed Motorcycle in December, 2022. According to the applicant, the infringing Motorcycle imitating the Bajaj designs of the applicant and the applicant only introduced the same for the first time in India. In the month of April, 2024, the applicant came to know that the infringed motorcycle was in the market and the second respondent, being a dealer of the first respondent's infringed Motorcycle, has been marketing and selling the infringed products, which will create confusion in the minds of the customers, and the same would spoil the reputation of the applicant. The first respondent denied the alleged infringement contending that there is no infringement and the applicant's Bajaj designs and the first respondent's infringed Motorcycle are not similar and further the applicant's designs are not new and unique and it is already available in the foreign countries and there are prior publications also. There are numerous prior arts having the same shape, composition, assembly etc., which existed prior to the applicant's registered designs. A mere visual representation of side-by-side comparison of the side and front view of the Motorcycles seen by a layman's eyes can clearly distinguish the specific and broad features of the two Motorcycles, as the purchasing consumer is prudent one. Therefore the applicant's registered designs are neither new nor original as there are numerous prior publications and the applications filed by the first respondent seeking cancellation of the applicant's registered designs are also pending. Hence the applicant's registered designs are not similar to the allegedly infringed vehicle. Even though the learned Senior Counsel for the first respondent has stated that applications to cancel the registration of the applicant's designs are pending and there are prior arts, admittedly as per the averments in the plaint and the common affidavit filed by the applicant in the above applications and also the counter affidavit filed by the respondent, the applicant's designs were registered under the Designs Act, 2000, prior to launching of the first respondent's infringed Motorcycles. The respondents in their counter have clearly stated that the alleged infringed Motorcycle was launched in December, 2022, but, the applicant's designs were registered as early as in the year 2011. According to the applicant, they came to the knowledge of infringed motorcycle of the first respondent only in April, 2024. Though the respondent shows certain publications, but, however there is no document to prove as to whether the applicant has knowledge of the infringed vehicle on the date when the infringed Motorcycle was launched i.e. 2022 itself. Therefore as far as contentions of the respondent regarding prior arts is concerned, whether the respondent introduced the infringed vehicle in December, 2022 and there are prior arts, before the registration of the applicant's designs and whether the applicant came to the knowledge of the infringed vehicle only in April, 2024 all can be decided only after recording evidence. Whether the registered designs of the applicant are not new or novel and the same are already available in foreign countries and whether the applicant is the first introducer of the registered designs in India are all only can be demonstrated during trial by examining witness and marking of documents. At this stage, now, in order to decide these applications seeking interim injunction, the Commercial Division has to see, as to whether the applicant has proved prima facie case by means of affidavit or otherwise and is there balance of convenience favouring the applicant. A perusal of the plaint, the common affidavit filed in the above applications and also the materials placed before this Commercial Division, would go to show that there is prima facie case. A bare view of the pictures produced by both the learned Senior Counsel, would show that even though, Bajaj Pulsar vehicle registered ID240566 and the infringed vehicle are not similar or appears to be the same, but however, the other designs relating to Headlamp appears to be similar and therefore while comparing both the designs from the pictures produced by both the learned Senior Counsel, this Commercial Division is of the view that even though the both the vehicles are not structurally similar, but, however, head lamp designs of both the vehicles are similar. A bare look over the pictures of two vehicles produced by both the learned Senior Counsel, show that even though both are not structurally identical, but all other aspect of designs of head lamp essential features appears to be similar. Therefore there is prima facie case and balance of convenience is also in favour of the applicant. If the "infringing head lamp" designs are not restrained from manufacturing and attached to infringing Motorcycle by an order of interim injunction, the applicant would be suffered with irreparable loss and hardships. For the foregoing reasons and observations, these applications stand allowed and there shall be an order of interim injunction as prayed for in the above applications till the disposal of the suit.

02.08.2024 cgi O.A.Nos.410otoo412oofo2023oin C.S.No.107oofo2024 P.VELMURUGAN,oJ. cgi Pre-DeliveryoOrdersoin O.A.Nos.410otoo412oofo2024oin C.S.(Comm.Div)oNo.107oofo2024

02.08.2024