“PIRACY OF A DESIGN AND ISSUES REGARDING PIRACY OF A DESIGN”
In a world where an act of copying or imitating a design is increasing in a spontaneous manner and piracy has become a glorified business model, the legislation which protects the rights of the proprietors/innovators is a necessary addition to IPR law which brings out fair and healthy competition in the market by implementing some ‘anti-counterfeiting measures’.
A piracy of a design means that the application of a design or its imitation/copying to any article which has been previously registered for the purpose of sale or importation without taking the written consent from the registered proprietor. Publishing such copied article or exposing terms for sale with knowledge of the unauthorized application of the design to them also involves piracy of the design.
To have a basic understanding about the piracy of a design, it is better to have a conjoined reading of Sections 22 and 11 of the Designs Act. While Section 11 authorizes a registered proprietor to have copyright in the design, Section 22 safeguards such right of the proprietor.
The registered proprietor of the design shall have copyright in the design during 10 years from the date of registration 1. Before the expiration of the said ten years, proprietor may get an extension the period of copyright in the design for a second period of 5 years from the expiration of the original period of 10 years. A registered design is infringed by a person(s) who applies, imports or publishes the design or any fraudulent or obvious imitation, without the consent of the proprietor of the design.
The piracy of a design may happen only as per the following circumstances:
1) It is committed during the existence of copyright in any design.
2) The design is applied or imitated without the consent of the registered proprietor.
3) It is for the purpose of sale, and not for private or personal use.
4) The articles must be in the same class in which the design is registered.
IN THE CALCUTTA HIGH COURT
T.K. Shawal Industries Pvt. Ltd.V/S. The Controller Of Patents And Designs & Ors.
Dated January 20, 2016
BRIEF FACTS
Kay Cee Exports, had registered scarf design under Class 02–05 bearing number 252082 dated March 5, 2013 with the Indian Patent Office. The novelty was claimed to be residing in the surface pattern of the scarf. The Controller after verification and satisfaction issued certificate of registration of the aforesaid design. A petition for cancellation of the registered design No 252082, for scarf was filed on February 12, 2014 under Section 19 of the Designs Act 2000 (hereinafter referred to as the ‘Act) by the Appellant. Further, on January 20, 2016, the Deputy Controller had rejected the cancellation petition of the registered design.
ISSUES
The design registration was challenged on four grounds available for cancellation under Section 19 of Designs Act 2000 namely:
1) that it has been published prior to the date of registration
2) that the design is not a new or original design
3) that the design is not registrable under the Act
4) d that it is design is not distinguishable from designs or combination of knowin design
CONTENTIONS OF THE APPELLANTS
The Appellant stated that it was also engaged in similar line of activities as the design registrant in kay Cee Exports. The Appellant also furnished on record copies of its invoices and shipment details of shawis of similar designs being exported to different countries all dated prior to the registration date of the scarf design. It was further claimed that the design lacked novelty since the Surface pattern applied to the impugned design was nothing but combination of already known designs There is no novelty in the surface pattern of the scarf which is the subject matter of the impugned design registration. The Appellant referred to the decision of the Learned Single Judge in the case of: Anuradha Doval vs. The Controller of Patents & Designs & Ors. where the Calcutta High Court had the occasion to consider what would constitute prior publication. The court had said that:
“If a document is to constitute prior publication, then a reader of it possessed ordinary knowledge of the subject must from his reading of the document be able, at least, to see the design in his minds eye and should not have to depend on his own originally to construct the design from the ideas which the document may put into his head.”
CONTENTIONS OF THE RESPONDENTS
The Respondents when presiding over the cancellation petition perused the evidence on record and reached a finding that none of the documents and/or invoices referred to the impugned design shows any prior publication of the design.
The Respondents also examined other documents to decide if the registered design could be considered as devoid of newness. Each of the said documents were scrutinized and the finding of the Respondents was that the pictures show variety of dresses including scarves in different color and pattern but none of these documents ascertain the details of the publication and the source of said documents.
DECISION OF THE COURT
Justice Soumen Sen of the Calcutta High Court heard the matter and observed that the invoices and shipment details attached by the Appellant were pertaining to sale of shawls which is a different article from scarfs and fall under different class of goods under the Design Act, 2000. Therefore, the cancellation petition was dismissed.
In absence of any cogent evidence to show that the pattern disclosed in the application for registration is taught by a prior published document, the findings of the Controller who is an expert in the field do not call for any interference.
FRAUDULENT AND OBVIOUS IMITATION
There is no as such difference between ‘fraudulent’ and ‘obvious imitation’ of an article. The common factor between the above mentioned terms is that both should be imitations of previously registered article. In the case of fraud, the imitation has been made with the intention to deceive another person with the knowledge that what is being done is a violation of the other persons’ right. So, where fraudulent imitation is established even if the imitation is not obvious, the Court will declare it as an infringement of copyright in the design. It is to be noted that there must be exact duplication, an imitation of the registered design. Nothing less than imitation is sufficient to establish piracy.
Fraudulent imitation must mean: “If a person having the knowledge that the pattern is a registered design of a proprietor, goes and imitates it, and does that without sufficient invention on his own part that would be fraudulent imitation of a registered design “.
a) TEST TO DETERMINE INFRINGEMENT
The Court has to determine whether the alleged infringement has the same shape or pattern and must eliminate the claim of similarity due to similarity of functions. The element of functional similarity has to be eliminated.
Moreover, the judge has to look at the two articles and check out their similarities, imitations and differences and through the eyes of a person with average intelligence see whether the defendant’s article is substantially different from that of the plaintiff.
b) JUDICIAL REMEDY
As per the Act, the judicial remedy for infringement of a registered design is damages along with an injunction. The Design Act gives us the guidelines about the remedy in the form of payment of a certain sum of money by the person who pirates a registered design. A suit in the appropriate manner for seeking the relief in the form of an injunction is also recommended.
If any person acts in contravention of the Section[1] he shall be liable for every contravention to pay to the registered proprietor of the design a sum not exceeding Rs. 25,000/- recoverable as a contract debt or if the proprietor elects to bring a suit for recovery of the damages for any such contravention, and for any injunction against the repetition thereof, to pay such damages as may be awarded and to restrained by injunction accordingly and the total sum recoverable shall not exceed Rs. 50,000/-.
JURISDICTION OF THE COURT
As per Section 22 of the Act, suit is to be instituted in a District Court or a High Court depending upon the quantum of damages claimed. The provisions of this section do not exclude action for passing off and for rendition of accounts. A person complaining infringement of his design can certainly ask for accounts from the defendant to show the profits earned by the defendant which would be the loss sustained by him which he could claim as damages. A suit for injunction restraining infringement of registered design and for rendition of accounts is, therefore, maintainable only when filed in the Appropriate Court.
BURDEN OF PROOF
The general principle of law is that the party making the charge, i.e., accusing another party of an act has to establish the occurrence of such an act. The burden of proof is thus on the plaintiff who brings an action to establish the fact of piracy of his design.
The facts which a plaintiff has to establish to prove piracy of design are enlisted as follows[1]
a) The copyright in the design exists on the date of piracy.
b) The design or a fraudulent or an obvious imitation thereof has been applied to the article or class of articles/goods for which his design is registered
c) The design or its imitation has been applied without the licence or writing consent of the registered proprietor.
d) Article to which the design has been applied comes within the scope of description of goods covered by registration.
e) The application of the design by the pirator has been made for the purpose of sale of the article of the article, i.e., to gain commercial benefit from the act of infringement.
INTERLOCUTORY INJUNCTION
The plaintiff may have the opportunity to seek an interlocutory injunction against the act of piracy or obvious imitation of the previously registered design under Rule 1 and 2 of Order XXXIX of the Code of Civil Procedure during the pendency of infringement suit. The plaintiff must make out a prima facie case and show that the balance of convenience is in his favour. An interlocutory injunction will not normally be granted where damages will provide an adequate remedy, should the plaintiff’s claim succeed.
In the case of Rotela Auto Components Pvt. Ltd. V/s. Jaspal Singh & Ors, the Court while rejecting the Plaintiff’s argument, has observed that:
“…….. In the event of registration of a design of recent date, whether injunction should continue on account of registration of design when there is serious dispute about the prior publication of the design. The law is well settled that when serious disputed question on various grounds such as prior publication, lack of originality, trade variation is used in particular case, an injunction will not follow as a matter of routine.
The court also held that as per Section 22(3) of the Designs Act 2000, it is not required that the validity of the registration of the design should be challenged separately before taking the same grounds in an infringement suit.”
An interlocutory injunction may also be denied if the defendant gives an undertaking to keep an account if he is a person of substance and the undertaking will provide the relief which the plaintiff requires. Granting temporary injunction is within the discretion of the court which is to be exercised in accordance with reason and sound principles.
FINAL INJUNCTION
If the plaintiff succeeds at the trial in establishing infringement of his registered design, he will normally be entitled to a permanent injunction to restrain future infringement because there is always a possibility of the recurrence of such infringement.
The object of granting an injunction is to prevent such recurrence and restore the status quo. Even if there is no infringement, the court may grant injunction if it is shown that the defendant had the intention of infringing or had threatened to infringe.
DESIGN INFRINGEMENT AND INJUNCTION APPLICATION
Dabur India Limited V/S Emami Limited
JUDGMENT: Badar Durrez Ahmed, J.
BRIEF FACTS
The case filed by the Plaintiff seeking injunction restraining the Respondents from using the registered design of Plaintiff. So, the Plaintiff have filed an application under Order 39 Rule 2-A of the Code of Civil Procedure, 1908 claiming that the order dated 09.03.2004 passed by this court has been violated by the defendant. By that order, this court had restrained the defendants from exhibiting in its television commercial the bottle of hair oil which is shown with the remark “Lekin Ek Tail Bechara Kya Kare” as the design of the said bottle was similar / identical to the design of the plaintiff’s bottle which is registered.
It was further directed by the Court that the defendant may, however, change the aforesaid bottle and continue with the T.V. Commercial for publicising its Imami hair oil. The advertisement was aired for the first time on 01.03.2004. This order was passed on 09.03.2004 and, according to the counsel for the defendants, as soon as they came to know of this order, they changed the bottle and showed the advertisement with a different bottle and the same were thereafter aired from 15.03.2004 up till about the end of April, 2004. The counsel for the defendant contended that the product which is advertised by the defendant in the said advertisement has been withdrawn w.e.f. last week of April, 2004. The learned counsel for the plaintiff contended that if one were to look at the television commercial as a movie rather than as a sequence of stills, it would become clear that the impression that is created with the public is that it is the same before or after the change. Although it has been changed, the impression would be the same.
OBSERVATIONS OF THE HON’BLE COURT
The learned counsel for the defendant, however, submits that they have fully complied with the order of the court dated 09.03.2004 inasmuch as they did change the bottle as well as the design of the cap. However, the learned counsel for the defendant submits that if the impression is that the bottle is the same, then that was not their intention and it was never their intention to disobey the orders of this court and for which purpose they render an unconditional apology. The apology is accepted. Hence, the above stated application stands disposed off
ISSUES REGARDING PIRACY OF A DESIGN
The main factors regarding the piracy and infringement of the design whereby such issues have been dealt by the judicial authorities recently. But its usage is still not very clear as there is a lack of piracy judgments to clear out its subsequent issues. Some of the factors which are generally considered for checking the validity of a particular design for the purpose of the registration are the Sweat of brow doctrine, lack of newness/ originality in design, dysfunctional judgments on functionality of design, Design-trademark overlaps, etc.
SWEAT OF BROW DOCTRINE
As per the doctrine of sweat of brow, an author gains rights through simple diligence during the creation of a work. Substantial creativity or “originality” is not required. The creator is entitled to such rights on account of efforts and expense put in by him in the creation of such a work.
The Hon’ble High Court of Delhi have recently applied the said doctrine in the renowned Crocs INC. case wherein the Court have rejected the injunctions applications against the Liberty Shoes Ltd wherein the design are allegedly similar to the foot wears made by Crocs INC. The brief facts of the case and the interpretation of the said doctrine are summarized as follows:
HC ON JOINDERS OF APPLICATION RELATING TO CROCKS COMPANY DESIGN
THE HIGH COURT OF DELHI AT NEW DELHI
M/S Crocs Inc.Usa V/S. M/S Liberty Shoes Ltd & Others
BRIEF FACTS
Crocs Inc. are the renowned makers of footwears across nations. In May, 2004, the said Company had obtained the registrations for its clog-type slipper/shoes as per the Design Act, 2000. Post registration, Crocs had brought various suits against its various competitors (including the defendants in this case) who were manufacturing and selling clog-type slipper/shoes and sandals which are largely similar to its own registered design. The suits were filed in different district courts, as were applications for interim injunctions against the defendants. In some suits, Crocs secured interim injunctions against the defendants, which were sought to be vacated. All the suits and the applications were eventually transferred to the Delhi High Court, which decided them commonly.
Crocs claimed that the designs of the defendants infringed on its rights under Section 11 of the Design Act, entitling it to protection under Section 22. Defendants countered that Crocs’ designs were invalid, and liable to be cancelled under Section 19 of the Act, relying on Section 22(3).
ISSUES/QUESTION BEFORE THE COURT
1) Whether the designs registered by Crocs with respect to the footwear were new or original designs?
2) Whether the designs of the registered footwear were in the public domain prior to registration?
Section 11 of the Act, read with the definition of ‘copyright’ under Section 2, provides that the registered proprietor of a design shall have the exclusive right to apply it to any article in the class in which it is registered.
Section 19 provides for grounds on which registration may be cancelled, which are:
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country prior to the date of registration; or
© that the design is not a new or original design; or
(d) that the design is not registrable under this Act; or
(e) it is not a design as defined under clause (d) of section 2.
Section 23(3) provides that any of the grounds for cancellation under Section 19 may be taken as grounds for defence in any suit brought against an alleged infringer.
INTERPRETATION OF THE JUDGMENT
The entire case rested on the Court’s interpretation of the grounds for cancellation under Section 19(b) to 19(d), which were consequently the defendants’ defences under Section 22(3).
(a) PRIOR DISCLOSURE
It was found by the Hon’ble Court that the plaintiff’s design was already been disclosed in the public domain which was prior to the registration being granted to the plaintiff. The defendants produced evidence which is about the fact that similar design to the plaintiff’s had already been disclosed, circa 2002, courtesy of one Holey Shoes which was not rebutted by the plaintiff.
The Court agreed to the fact that the Holey Shoes designs were the same as the impugned designs of the Crocs, and therefore held that the impugned designs were disclosed prior to their registration. Moreover, the defendants had even managed to show that Crocs itself had disclosed the designs on its own website prior to their registration.
(b) NEWNESS AND ORIGINALITY
The Honb’le Court have approached the question whether the Croc’s design was ‘new and original’ as per Section 19(d) of the Design Act whereby it stated that the prior basis for the IPR in designs is the labour and effort that goes into creating something new and original in accordance with sweat of brow doctrine.
HELD
By grasping the facts and circumstances of the case, the Court held that unless the new elements are new and original such as to make the design distinguishable from known designs, mere ‘trade variations’ of sandals which have already existed for long, and were neither new nor original enough to claim protection under the Designs Act.
The Court observed the plaintiff’s designs on the threshold laid down in Pentel Kabushiki Kaisha case namely, the requirements of labour and time, and newness and originality in the designs. The Court then provides a short but rigorous history of footwear through the ages, with such helpful statements as “footwear is a footwear is a footwear, shoe is a shoe is a shoe and sandal is a sandal is a sandal.”
The above stated analysis of the Court surely laid down a stringent precedent to make enforcement of footwear designs particularly difficult in India with the help of the following obiter dicta:
“All the different footwear have changed over different periods of time and also as per requirements as to who were the persons wearing the same or of the particular climatic conditions where they were worn or the footwear becoming fashion statements but ultimately all the different types of footwear are variations of nothing else but a footwear i.e., foot plus wear i.e., something that is worn on the feet.”
It observed that, “….For a design to have entitlement of grant and continuation of registration under the Act, it is required that the design is such that it is an Intellectual Property Right. The Intellectual Property Right comes into existence, if there is spent sufficient labour, effort, time, etc. whereby it can be said that consequently a new creation has come into existence i.e. in essence there is required existence of innovation which is an Intellectual Property Right. It is because an Intellectual Property Right comes into existence that there is hence an entitlement to protection thereof and so that the creator of the design is granted monopoly with respect to use of the new/original design”.
IN CONCLUSION OF THE JUDGMENT
The Court seems to have come to the correct conclusion, particularly given the prior disclosure of the designs, which is to the point. However, in analyzing the characteristics of ‘newness’ and ‘originality’, it is the first time that the Court have ruled against the trend in returning to the ‘sweat of the brow’ principle for IPR protection, one that has been rejected in earlier decisions by the Courts.
LACK OF NEWNESS/ ORIGINALITY IN DESIGN
The term ‘new’ as per the design law means that design which is completely new in the sense that it is invented or created for the first time. The term ‘original’ may mean a new application of an existing/known design to a new subject-matter. However, the same design must not be applied to an article in the same class or to an article in the different class which is similar in character or purposes.
CASE NO. 1
IN THE HIGH COURT OF DELHI AT NEW DELHI
Pentel Kabushiki Kaisha & Anr. Vs. M/S Arora Stationers & Ors.
DATE OF JUDGMENT: 8th January, 2018
CORAM: Hon’ble Mr. Justice Valmiki J. Mehta
BRIEF FACTS
Justice Valmiki Mehta of the Delhi High Court vacated an interim injunction in a design infringement case. The judgment arose out of an application for the grant of injunction filed by the plaintiff, Pentel Kabushiki Kaisha, for its registered design relating to ball point pens. Contending that the design used by the defendants is an identical duplication/fraudulent imitation of the plaintiff’s design, the plaintiff prayed for the grant of an interim injunction to restrain the defendants from manufacturing such pens.
The question before the Hon’ble Court is “whether the design registered by the plaintiff for ball pens possessed sufficient novelty and originality for it to merit legal protection”. In this respect, the Court commenced its analysis by adverting to two judgments which outline the threshold that must be met by a design for it to obtain legal protection
The Hon’ble Supreme Court cited the following judgments while dealing with the present case:
1) B. Chawla and Sons v/s Bright Auto Industries
Division Bench of the Delhi High Court held that a design cannot be said to be new and original unless it possesses variations that are of a substantial character from existing designs.
2) Bharat Glass Tube v/s Gopal Glass Works
The Hon’ble Supreme Court reaffirmed that the monopoly of legal protection for 15 years can only be granted to designs which are significantly distinguishable from existing designs.
The Court then proceeded to apply these principles to the facts of this case in order to clarify whether the plaintiff had been able to demonstrate that the ball pen design for which it was seeking legal protection was significantly distinguishable from existing designs.
OBSERVATIONS BY THE HON’BLE COURT
It was duly noted that every ball pen has some common features — a refill with a nib, which is put in a lower casing called a barrel, over which there is a cap and a clip using which the pen can be attached to one’s clothing. This being the case, the onus lay on the plaintiff to establish that the pens designed by it had something over and above these features.
The plaintiff argued that the distinctive attributes of its pens were: existence of wedges at the point of holding of the ball point pen; polygonal shape of the barrel; existence of slightly curved tip; and the fact that the barrel/lower casing goes into a knob
The Court held that these attributes were nothing more than trade variants and were not so substantial as to meet the high threshold that must be met for a design to receive legal protection. Further, as regards the design of the wedge, the Court held that it was nothing but a principle of construction aimed at enabling people to grip the pen in a better fashion. On this basis, it decided to vacate the injunction granted in the plaintiff’s favour.
INTERPRETATION OF THE JUDGMENT
It is open to a defendant to argue that a design lacks newness/ originality as a defence in an infringement suit filed against it. The approach adopted by the Court was grounded in this provision which becomes clear as stated in the judgment:
“Sub-Section (3) of Section 22 of the Act provides that in spite of the fact that a design is a registered design, whenever any suit is filed for the relief alleging piracy of the registered design by the defendant in the suit, then in such a suit every ground on which registration of a design may be cancelled under Section 19 of the Act shall be available to the defendant as a ground of defence.
As far as the contention given by the Defendant is concerned, the plaintiff’s design lacked newness and originality as stated in the judgment:
“In sum and substance the defences of the defendants are therefore that neither there is any newness or originality in the registered design of the plaintiffs with respect to ball point pens claimed by the plaintiffs.”
In light of the fact that there exists a statutory foundation for the approach adopted by the Court, coupled with the fact that the defendants raised the lack of newness/originality in the plaintiff’s design as a defence, The Court’s approach rested on a sound legal footing. This being the case, the judgment is legally unexceptionable.
Another remedy which is available to the defendant for questioning the newness/originality of the ball pen is by filing a suit for the cancellation of the registered design before the Controller, especially given the fact that Section 19(1)© of the Designs Act, 2000, makes the lack of newness/novelty a ground to cancel a registered design.
CASE NO. 2
IN THE HIGH COURT OF DELHI AT NEW DELHI
Steelbird Hi-Tech India Ltd V/S. P.S. Gambhir And Ors.
CORAM: HON’BLE MR. JUSTICE MANMOHAN SINGH
Judgment delivered on: February 24, 2014
BRIEF FACTS
On Feb. 24, 2014, the Delhi High Court has vacated an ‘ex-parte interim injunction’ granted in favour of helmet makers Steelbird. Honb’le Justice Manmohan Singh ruled that the registered design on the basis of which Steelbird had initiated infringement proceedings against S.P.S. Gambhir and Others was not “new or original”.
The present dispute is regarding a design of theirs which they have been using to make and sell helmets since December 2011 under the mark ‘Steelbird’ which relates to a Company that is engaged in the business of manufacturing and selling helmets. It is contended that the above stated design was distinctive and unique at the time of registration. The Respondents have been selling helmets that are a fraudulent imitation of this registered design of theirs under the mark ‘Format’. Aggrieved by it, the Plaintiff had filed suit which initially granted an ex-parte interim injunction against the respondents and in the present order deal with the reply by the respondents.
CONTENTIONS OF THE PARTIES
The Plaintiff contended before the honb’le Court that their distinctive and unique design has come to be identified with their company and has acquired a secondary meaning in the eyes of the public as originating from them. They also argue that the design of respondents’ helmets on comparison bear no material differences with that of theirs and therefore constitute an infringement.
The contention made by the Respondent that the design of Steelbird lacks novelty and originality and the “beak shaped design” of their helmets was being utilised by other competitors in the market, both in India and abroad prior to Steelbird’s registration. Therefore they argue, that the registration of the plaintiffs was not valid in the first place (Section 19 of the Designs Act) and there could consequentially be no claim of infringement. The Respondent made a defense that on comparison between both of the designs, there existed no material similarities between the design of Respondent and that of the Plaintiffs.
THE QUESTION BEFORE THE COURT
The court primarily had to decide the question whether the plaintiff’s design was “new or original” and therefore validly registered?
THE OBSERVATION OF THE COURT
As per Section 22 (3) of the Act, a successful claim of infringement can only be made against a registered design, but this is always room for the registration to be cancelled, which could defeat such a claim.
The court had initially considered a test of pre-publication for novelty and originality. However, this is quickly dismissed this as the relevant test by saying that although similar patterns have been marketed by other companies, and even in fact the same company, the real issue is whether it was pre-published or new or original to the plaintiffs.
The court then attempted to flesh out a test for novelty and originality which lays down that what is novel is that which is “a mental conception expressed in a physical form which has not existed before, but has originated in the constructive brain of its proprietor and that must not be in a trivial or infinitesimal degree, but in some substantial degree” and must not also be within the common trade knowledge of the relevant industry. The court however cautioned that what is of a substantial degree is to be judged from the facts and circumstances of each case. The court also clarified that originality implied the application of a design to a new subject matter. Using these two tests and observing that there was evidence placed before it that demonstrated that other manufacturers had conceived of this design before the plaintiffs and therefore it lacked novelty.
Originality is clearly not present as the subject matter of the competitors’ products was the same i.e. helmets. The court also observed that the “beak shaped design” is a common practice in the industry and therefore not original to the plaintiffs. On these grounds the court vacated the injunction.
INTERPRETATION OF THE JUDGMENT
The decision is fairly well reasoned, and relies on established precedent. If the court had shed a little light on what the visual similarities and dissimilarities between the existing designs of competitors and the plaintiff’s product were, it would have helped understanding how exactly this comparison is to be carried out. The judgment states that “the mere glance at the product of the plaintiff reveals many similarities with the above said designs of the helmets of STUDDS and AIROH.” The court itself had noted earlier on in the judgment that there are often small changes made that can affect the entire design.
DYSFUNCTIONAL JUDGMENTS ON FUNCTIONALITY OF DESIGN
Designs which are functional are not registrable under designs Act. Thus, if a designer must makes an article in a certain shape not in order to make it appeal to the eye of a customer but slowly to make the article work or to perform functional requirements, no registrable design exists. The drawing or diagram on the basis of which the articles are made are artistic works within the definition of artistic work under Copyright Act, and the articles being three dimensional representation of the drawings are reproductions in the material form of the drawings does such drawings and articles made there from enjoy copyright protection for the lifetime of the author plus 60 years2.
The Design Act is silent on functionality, unlike the Copyright Act which specifically prohibits protection in the case of functionality. The definition of “designs” in Section 2(d) of the Designs Act, 2000 requires the “design” to be judged solely by the eye but specifically excludes “any mode or principle of construction or anything which is in substance a mere mechanical device”. There is no mentioning in the Act about “functionality” being an important aspect to the registration of a design which otherwise appeals to the eye. Why should a designer lose out on design protection merely because the design, which appeals to the eye, is the sole way to achieve a particular functionality? Why should he be forced to seek protection only under patent law which by the way, provides for a longer period of protection than designs? Like all IPs, the period of monopoly over a design will expire after a period of time, in the case of designs it is, 10 + 5 years after which it falls into the public domain. If it qualifies as a mechanical device or a principal or mode of construction it will anyway be disqualified because of the bar in Section 2(d).
Hon’ble Justice Vipin Sanghi, a renowned Judge of the Hon’ble High Court of Delhi, came to the following opinion about the functionality of the design and its registration:
“Normally, designs which are purely functional cannot be protected or form the basis for an action for infringement. A functional shape and configuration, which is dictated solely by the functionality, is not registerable under the Design Act as a design. The learned Judge referred to the observation of Lord Reid, J. in Amp. Inc. vs. Utilux Pty. Ltd wherein the learned Lord observed:
“……….and the words ‘judged solely by the eye’ must be intended to exclude cases where a customer might choose an article of that shape not because he thought that the shape made it more useful to him”.
Similarly, Hon’ble Justice Kathawala in the case of Whirlpool of India v. Videocon Industries held the following in context of functionality under design law:
“For a defense of functionality to succeed, it is not enough to say that the form has some relevance to the function. If a particular function can be achieved through a number of different forms, then a defense of functionality must fail. For the defence of functionality to succeed, it is essential for the Defendant to establish that the design applied for is the only mode/option which was possible considering the functional requirements of the products.”
From the Calcutta High Court, Hon’ble Justice Soumen Sen concludes the following in the case of Anuradha Doval V/S. The Controller Of Patents & Designs
FACTS OF THE CASE
The design-in-dispute is a bottle cap made by the Plaintiff. The Respondent had applied for cancellation under all the grounds which is enumerated under Section 19 of the Designs Act, 2000. The grounds are as such that the design-in-dispute:
a) has been previously registered in India.
b) was published prior to the date of registration.
c) is not new or original.
d) is not registrable under the Act.
e) is not a design as per Section 2(D) of the Act.
The Respondent have contended and claimed that the design features of the article i.e., bottle-cap were neither original nor new and he furthered had added three evidences to support his claim. All three of the ‘registered’ designs had bottle caps and closures with shape and configuration which was claimed by the Applicant. Plaintiff further produced a document titled ‘Ambrosia’ which was a magazine published in January 2009 and alleged it to be a prior art. Lastly, he contended that the claimed design was a conventional design which has been in use for a considerable period of time.
QUESTION/ISSUE BEFORE THE COURT
Whether the Controller was correct in allowing for cancellation of the registration of the design under Section 19 of the Act?
OBSERVATION OF THE COURT
The Hon’ble Court found out that the Respondent is an expert and thus has the required expertise to decide the matter. The Court held that the claimed design was published prior to registration and hence liable to be cancelled under Section 19 of the Act. The Court relied on Ambrosia magazine’ and held that since it was published in February 2009, the design cannot be granted protection. It was devoid of novelty and originality. The Court upheld the decision of the Controller and justified the cancellation of registration of design.
ANALYSIS OF THE COURT
The present judgment revisits the element of Novelty and Prior Publication. Both the conditions are grounds for cancellation of registration of design under Section 19 of the Act. The design in the finished article has to be judged solely by the eye is no new fact.
QUESTION OF FACT
What amounts to prior publication is a question of fact. It depends upon case to case. The test of prior publication is satisfied only when the previously registered design is out in public. The details of the design applied to the article should be such that it is can be judged by the eye. A person of ordinary intelligence and imperfect recollection must be able to see the design in his mind’s eye and not rely on imaginative faculties in constructing the design. The main ratio is that cancellation of design will be allowed if the claimed design is substantially similar to the of the prior publication design.
Specifications, drawings of any demonstration done in connection with the registration of design does not constitute publication per se of the said design. This applies in registration of a design in foreign country as well. It means that specifications of the design disclosed while getting a registration will not amount to prior publication.
ISSUES BEHIND THE FUNCTIONALITY JUDGMENTS
Any analysis or question relating to the design and its registration has to initiate and end up with the words mentioned under the Designs Act, 2000 and its adjoining Rules, unless an interpretation of the Act and/or Rules leads to an absurd result which gives judges a wider power to look beyond the words written under the statute.
The defendant will have to prove that the functionality has come into being only through a particular design registered in favor of the plaintiff and it cannot be used through any other means.
With respect to Justice Sen’s conclusions, he does not disqualify a design registration on the grounds that it is resulting in a functionality that cannot be achieved by any change in design. However, Justice Sen has accurately justified the definition of the term ‘design’ by making the following statements in Anuradha Doval case:
“…………..predominance and pre-eminence of the aesthetic elements over the functional element would satisfy the definition of ‘design’ under the Act”.
“The design shall be such that its features must ‘appeal to and are judged solely by the eye’. It does not relate features which are dictated by function. The rationale behind this exclusion is that the point of design protection is to reward and encourage good product design by protecting the skill, creativity and labour of product designers. Design is concerned with both form and function. Design law is not seeking to reward advances in function……”
DESIGN-TRADEMARK OVERLAPS
A registered design and a trademark (not yet registered) may have an overlapping area. Say if a unique shape is a registered design and the said unique shape of the article attains such level of popularity leading to brand recognition amidst available articles in the same classification of goods, the same may fall under consideration for a trade marks registration by the proprietor/company.
It is well established principle in the case of Smithkline Beecham Plc vs. Hindustan Lever Ltd that there could be passing off action for a design against the unscrupulous manufacturer or dealer. The law of passing of is mentioned under Section 27(2) and Section 134 of the T.M. Act. The Court held:
“The Court is inclined to hold that passing off action is also available to case of design and such right could be enforced provided the same is available in accordance with law even in a case of design…..”
The Delhi HC had given a recent judgment namely, Greenlight Planet India Pvt. Ltd. vs Gee Lighting Technology dealing with a design-trademark overlap. The Court, in this order, had deliberated on the issue of whether a separate suit of passing off can be filed for a registered design after having filed a prior suit of design infringement. In their order, they limited their analysis to Order II, Rule 2 of the CPC (which does not allow one to file multiple suits for the same cause of action).
Given the numerous past judicial decisions dealing with such overlaps, it is surprising to grasp that the Delhi HC omitted to consider the application of Order II, Rule 3 of the CPC (which allows for joinder of multiple causes of action in certain cases) and the relevant provisions of the Design Act and the Trade Marks Act.
But on 14th December, 2018, a 5-judge Bench of the Delhi HC reconsidered the maintainability of a composite suit filed for infringement of a registered design and for passing off. This question of law had been referred to this Special Bench by a Single Judge in Carlsberg Breweries v. Som Distilleries
BRIEF FACTS OF THE CARLSBERG CASE
Carlsberg instituted a composite suit for design infringement and passing off of their “TURBO” beer bottles against Som Distilleries for manufacturing “HUNTER” beer bottles with similar features.
In Carlsberg case, the advocates representing Carlsberg righty argued that the Micolube judgment was per incuriam. An interpretation of the Carlsberg decision and its jurisdiction is explained as follows:
“For example the jurisdiction clauses apply differently for trademarks and passing off because in the former case the plaintiff can sue at the place of his business, while in the latter case, the plaintiff can sue only where the defendant resides or where the cause of action arises. In such lawsuits, depending on the facts, the same court may lack the jurisdiction to hear the trademark infringement claim and the passing off claim and hence both cannot be combined into one lawsuit.”
The Judge also noted that the Court in Micolube may have failed to apply Order II, Rule 3 of the CPC and hence, the decision needed reconsideration by a larger Bench.
MAINTAINABILITY OF COMPOSITE SUITS
The Bench came to the conclusion that:
“there is no per se or threshold bar to maintainability of suits, on the perceived ground of misjoinder of causes of action”. The Court further went on to state that “an objection to misjoinder of causes of action is merely procedural in nature and that it could not form the basis of a rejection of a suit.”
Further, it was contended that the cause of action for a design infringement significantly differed from that of passing off since lack of novelty has to be proven in the former and establishment of plaintiff’s goodwill and deceptive similarity of defendant’s products to those of plaintiff’s has to be proven in the latter. The Court noted in this regard that both these causes of action arise from the same fact i.e., “sale or offer for sale, by the defendant of the rival product“. Justice Valmiki Mehta’s opinion throws further clarity on this. He stated that since the two causes of action arise from the same transaction of sale, it would lead to common questions of law and fact and hence, would fall under the ambit of Order II, Rule 3. He further stated that joinder of causes of action “ought” to be done in these cases in order to avoid multiplicity of such proceedings.
ISSUES REGARDING THE CALSBERG JUDGMENT
The judgment is still not very clear. They justify the maintainability of composite suits filed for these remedies in a very reasoned manner. But does this necessarily mean that one still cannot file separate suits for the different remedies, as it happened in the Greenlight case?
Will such separate suits be disallowed under Rule 2 of Order II i.e., will the Court treat filing a later, separate suit as a relinquishment of part of the plaintiff’s claim in their previous suit?
The Court did not mandate parties to file composite suits and merely justified filing such suits for decreasing multiplicity. After all, these remedies are sought under different causes of action and parties may choose to not go for joinder of both causes in one suit. Such doubts, hence, need to be clarified by the Court in future decisions.
DOES THE DESIGN REGISTRATION STILL SUBSIST?
In analysing the decision of the Delhi HC, whether the design registration still persists, given the fact that certain provisions of the Designs Act does not allow the registration of a design to continue once it starts functioning as a trademark
“The Bench did, however, err in its reasoning when it stated that a design once registered could become a functional trademark. The Court entirely based its reasoning on Section 19 in the Design Act which provides grounds for cancellation of designs and concluded that since the use of a registered design as a trademark is not given as one such ground, the product could be protected under both the IP regimes. But on a closer reading of the provision, Section 19(1)(e) provides that if it is not a design under Section 2(d), the registration of the said design can be cancelled.
Further, the definition of design under Section 2(d) includes shape, configuration, pattern etc. but “does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958“. He then concluded that the interpretation of Section 19 would require the cancellation of registration of design once it began functioning as a trademark. The question arises that “how can one claim remedy for passing off for a registered design?”
In considering the afore-mentioned provisions and issue, the Special Bench answered as following:
“……..if the registered design per se is used as a trade mark, it apparently can be cancelled. The larger legal formulation in Micolube judgment, that a passing off action i.e, one which is not limited or restricted to trademark use alone, but the overall get up or “trade dress” however, is correct; as long as the elements of the design are not used as a trademark, but a larger trade dress get up, presentation of the product through its packaging and so on, given that a “passing off” claim can include but is also broader than infringement of a trademark, the cause of action against such use lies.”
In a nutshell, we get two major takeaways from the latest Delhi HC decision:
· A composite suit filed for design infringement and passing off is maintainable.
· Remedy for passing off for a registered design can be brought if the said design is not functioning as a trademark and if the remedy of passing off is claimed for trade dress infringement or any other similar infringement.
DEFENCES AVAILABLE FOR REGISTERED PROPRIETORS AND THE DEFENDANT
DEFENCES AVAILABLE FOR REGISTERED PROPRIETORS
In a suit for infringement or injunction have been filed against the Defendant, the plaintiff may have various defenses available to safeguard his/her own design. present evidence and argue the following defences[3]
LACK OF NOVELTY
As per the Section 4 of the Act, the design is to be registered only if it is novel. The term ‘Novel’ is not been defined under the Act but it is considered that the term ‘novel’ has the similar meaning to the terms such as ‘new’ and ‘original’. So, whether the design consists of ‘novel’ or there is a lack of novelty is the discretion of the Court to make while solving the issue of piracy or infringement suit.
FUNCTIONALITY OF THE PRODUCT
The design shall consist of various factors such as its asthetic elements and its functionality. Though the term’ functionality’ is not been defined under the Act. However, it is been discussed in the Chapter “ Piracy of the Design” that in the case of which consists of a functional shape and configuration, which is dictated solely by its functionality, is not registerable under the Design Act as a design.
Hence, if the design is soley dependent about the functionality and not its other elements such as newness, originality, etc then it may be considered as a good defence in a suit for infringement of the design in dispute.
ANY GROUNDS AVAILABLE FOR CANCELLATION OF REGISTRATION UNDER SECTION 19
The Act does not provide for the advertisement of the application for registration or for opposition to the registeration. It is left on any of the interested person to take steps to get the registration of the design cancelled on the grounds specified in Section 19.
As discussed in the Croxs India case, there are various grounds for the canellation of the registration of the design such as:
(a) that the design has been previously registered in India; or
(b) that it has been published in India or in any other country prior to the date of registration; or
© that the design is not a new or original design; or
(d) that the design is not registrable under this Act.
CONTRACT RELATING TO THE REGISTERED DESIGN AT THE TIME OF CONTRAVENTION OF SECTION 22 WITH A CONDITION DECLARED UNLAWFUL UNDER SECTION 42
Section 42 of the Act gives:
a) power to insert any contract for or in relation to the sale or lease of an article in respect of which a design is registered;
b) licence to manufacture or use an article in respect of which a design is registered; or
c) licence to package the article in respect of which a design is registered,
Section 42 also prohibits the purchaser, lessee or licensee from using or to restrict in any manner/extent to the right of the purchaser, lessee or licensee, to use an article other than the article in respect of which a design is registered which is not supplied by the vendor, lessor or licensor or his nominee, and any such condition shall be void.
Hence, the Plaintiff can have a defence that purchaser, lessee or licensee has utilized the design or article in contravention of Section 42 and Section 22 of the Act.
DEFENCES WHICH MAY BE SET UP BY THE DEFENDANT
Further, the various defences which may be set up by the defendant can be No title for the design, prohibition of registration of certain designs, the plaintiff’s own conduct is tainted, delay and acquiescence, expiry of the period of registration and the suit for infringement, recovery of damage etc should not be filed in any court below the court of District Judge.
In a suit for infringement, a defendant may present evidence and argue the following defenses:
NO TITLE
The plaintiff has no title to sue. He may question whether the plaintiff is a registered proprietor of the design or his duly authorized agent or licensee.
PROHIBITION OF REGISTRATION OF CERTAIN DESIGNS
The design is not entitled to protection. Dis-entitlement to protection can be pleaded on the grounds that:
1) the design has been previously registered in India,
2) it has been published in India prior to the date of registration, or
3) the design is not a new or original design.
THE PLAINTIFF’S OWN CONDUCT IS TAINTED
Law expects the party approaching its doors to approach with clean hands. The defendant can plead that plaintiff’s own conduct is tainted. To prove the acts of the plaintiff being wrongful and tainted, the defendant may be having various grounds to defend his/her case. He has published the article prior to the registration of the design-in-dispute is a general ground which can help to prove the negative conduct of him before the Court of law.
DELAY AND ACQUIESCENCE
The institution of the suit within a reasonable time after the discovery of the infringement is expected of the plaintiff. The unreasonable delay in institution of the proceeding would amount to Acquiescence on the part of the plaintiff to such an infringement. Acquiescence of piracy is a reasonable ground to deny the plaintiff any of the reliefs prayed for.
EXPIRY OF THE PERIOD OF REGISTRATION
The Copyright on a design is limited by time, the defendant on proving the expiry of the period of registration entitled to use the design and the plaintiff is not entitled to any relief approaching its own conduct signal design.
THE SUIT FOR INFRINGEMENT, RECOVERY OF DAMAGE ETC SHOULD NOT BE FILED IN ANY COURT BELOW THE COURT OF DISTRICT JUDGE
Proviso of Section 22 of the Act states that no suit or any other proceeding for relief shall be instituted in any court below the court of District Judge. So, the defendant can raise the issue if the Plaintiff has filed in the Hon’ble High Court.
CONCLUSION
India has a defined governing and established structure as far as the protection of industrial designs is concerned. The criteria for protection of a particular design have been thoroughly prescribed under the Design Law. As discussed earlier, a design has to be in conformity with international standards and with international conventions and/ or Agreements and international classification in order to seek registration without any piracy and other issues. The procedural formalities for filing applications for particular designs are simple but yet, time constrained. It is pertinent to know that that the applicants or the proprietors shall ensure the procedural requirements to be taken care of due to the reason that many of the Indian design applications are rejected on procedural issues, while very few rejections are due to lack of fulfillment of substantive criteria for registration. Both the application form and the representation sheet shall comply with the guidelines under the Design law so that design applications are processed fast and in efficient manner.
For registration of a design, various factors have to be considered such as functionality and dysfunctionality, newness and originality, its aesthetic elements which makes it in contrast with other registered design and many more. The Indian judiciary has recently talked about the functionality and dysfunctionality, which gives a positive impact on the Design law and protection of various articles.
One of the few reasons why designs are so infrequently protected is because in many industries, such as jewelry and shoes industries, the designs usually changes rapidly in order to keep up with the consumer trends. The fact that prior to registration, a design cannot be in public domain thus cannot be met by most of these industries.
Design Law needs to be clearer regarding the laws of registration
In the Manual of Designs Practice and Procedure published by the Office of the Controller General of Patents, Designs, and Trade Marks (2008), it is observed that 90% of the applications are objected to at the time of examination based on formality issues only. Very few applications are objected on substantive grounds such as novelty and originality. Such formality objections and their compliance take at least 4–5 months, resulting in delay in disposal of the application. Such faulty filing may be due to lack of proper understanding of the filing procedure, as required under the Law. Better protection of the design infringement law in India is an actual need of the hour. The design law needs to be clearer regarding the laws of registration of design and more precisely the laws related to protection of registered design proprietor. There should be proper deterrent remedies including stringent fines.
Another problem that the design protection regime faces is the term of protection. The term of fifteen years is a short span of time in order to get optimum utilization of a particular design without any issues regarding piracy or infringement. A company/individual would rather resort to trademark or copyright protection depending on the article Sin question, to get a longer term of protection.
Point of view of a Customer regarding a Design
The most common method to identify a design infringement is the two products need not be placed side by side, but rather examined from the point of view of a customer with average knowledge and imperfect recollection. The main consideration is whether the broad features of shape, configuration and pattern are similar to one another.
Further, the Design Office needs to review its examination procedure and include more thorough novelty searches to ensure that when applicants are granted a right, they can be reasonably sure that it is stable and can be relied upon to prevent misuse. The Design Office also needs to improve its e-filing initiative and make design records available online. The prior art search up to most extent can be useful for limiting the cases of design infringement in India. As in the cases of Patent, every inventor wishes to first go for prior art search so that the risk of infringement can be minimized, in the same way a proper search system should be created in the Industrial design system in India. Within the existing legislative framework, Courts in India have also helped in maintaining the rights of the registered proprietor and in providing clear observation of the law.
It will be better to have international protection in India to make the protection available in all the contracting parties to the Hague system and to provide much protection to the international traders in India.
We need a new and broader way to look at how to protect our competitive advantage. The role of IP protection is not only unnecessary area of competence; it is also a crucial element of strategic leadership. In a global economy we need Global rules for IP addresses too. The Industrial Design registration helps in safeguarding the ornamental or aesthetic elements of the article and it gives exclusionary rights to the holder or proprietor of the registered designs against unauthorized use like replicating or copying by a person without the consent of the registered Proprietor.
REFERENCES:
1) [1]Singh, S. K. (2015)‘ Text Book on Intellectual Property Rights Law’, Central Law Agency, 2nd Edition
2) 2Narayan, P. N. (2001), ‘Intellectual Proprty Law’, Eastern Law House, 3rd Edition
3) 3Sri Harini, June 19, 2017, ‘Liability of Design Infringement in India’ From: https://www.intepat.com/blog/design/liability-design-infringement-india/