In a recent ruling, the Delhi High Court clarified the scope of protection provided by the Designs Act. The court emphasized that the Act safeguards ideas that are intended to be applied to physical articles, rather than abstract ideas. It further highlighted that ideas that lack temporal manifestation through an industrial process are not eligible for protection under the Designs Act.
The court drew attention to Section 2(d) of the Act, which requires every "design" to be applied to an article. This provision reinforces the requirement that a design should have a tangible application to a physical object.
Brief Facts of the Case:
The plaintiffs are proprietors of registered designs for a bucket, a mug, and a tub, with novelty certified in the shape, configuration, and surface pattern of each product. They contend that the defendant's designs are obvious and fraudulent imitations of their registered designs, constituting piracy under the Designs Act. The plaintiffs argue that their products have unique and novel features, including elongated vertical ribs and fang-like structures on the handle, providing an aesthetically appealing appearance.
The case was initially filed before the District Judge (Commercial Court) and transferred to the present court due to the defendant's challenge on the invalidity of the suit designs. The plaintiffs obtained an ex parte ad interim injunction, which remains in force, restraining the defendant from selling or distributing the infringing goods. The parties have filed various applications related to the injunction, which are now being addressed by the court.
Contentions of the Appellant (Plaintiffs):
The appellant argues that the designs of the defendant's bucket, mug, and tub are fraudulent imitations of the registered designs owned by the plaintiffs. They claim that the essential features of their designs, such as the ribbed body and flange-like extensions, have been copied by the defendant. They assert that this constitutes piracy under the Designs Act and justifies injunctive relief against further infringement.
Contentions of the Respondent (Defendant):
The respondent challenges the validity of the suit designs and questions their novelty and originality. They argue that the Designs Act does not provide a statutory presumption of validity for registered designs, unlike trademarks. They contend that the registration of designs is based on a self-declaration by the applicant, and there is no scope for pre-grant opposition. The respondent submits evidence of prior art, including similar buckets, mugs, and tubs available in the market before the registration of the suit designs. They claim that the suit designs lack novelty, originality, and are subject to prior publication, making them ineligible for protection. The respondent asserts that their challenge to the validity of the suit designs raises a serious triable issue and requests the court to reject the plaintiffs' claim for an interlocutory injunction.
Observations by the Court:
Thus, when considering whether the features of shape, configuration, etc., when applied to an article, constitute a design within the meaning of Section 2(d) of the Designs Act, one has to visualize, in the mind’s eye, the finished article, after the features have been applied to it. If the features, when applied to an article, appeal to the eye, and the eye alone, then the features constitute a design, the court said. Justice Shankar further said that the feature of shape, configuration or pattern which is sought to be registered as a design must have its origin in the originator of the design.
The design is to be judged solely by the eye. The test to decide whether a particular application of shape, configuration, pattern, etc. to an article constitutes a design is, therefore, essentially ocular/visual. Judged thus in an ocular/visual manner, the application of the shape, configuration, pattern, etc., to the article must appeal to the eye, the court said.
Decision of the Court:
It also dismissed the plaintiff’s prayer for granting an interlocutory injunction in view of Section 22(3) of the Designs Act.
Case Title: Jayson Industries And Anr. V. Crown Craft (India) Pvt. Ltd.
Coram: Justice C Hari Shankar
Case No.: CS(COMM) 580/2022
Advocates of the Petitioners: Mr. M.K. Miglani, Mr. Aditya Mathur and Mr. Arpit Dudeja, Advs
Advocates of the Respondent: Mr. Sushant M. Singh, Mr. Ajay Amitabh Suman, Ms. Geetika Kapur and Mr. S.K. Bansal, Advs.
Read Judgment @LatestLaws.com:
Share this Document :Picture Source :
