The Delhi High Court restrained the defendants from using the MATTEO range of switch plates as the prima facie case was made out against them for infringing the plaintiff’s registered design.
A single-judge Bench comprising Hon’ble Justice C. Hari Shankar expounds that law does not recognize a computer-generated image as an article of manufacture. There has to be a publication in tangible form to invoke Section 4(b) of the Designs Act.
Brief Facts:
In this case, there was an allegation against the defendant that the MATTEO range of switch plates manufactured and sold by him infringes Design Registration Nos. 296178, 296179, and 296180 of the plaintiff in respect of its LYNCUS switch plates. The Design registration was granted to the plaintiff on 2nd September 2019, 12th September 2017 and 20th September 2017, respectively. However, by operation of Section 5(6) of the Designs Act, the deemed registration date was taken on 27th July 2017.
Submissions of the Plaintiff:
The learned Counsel for the plaintiff submitted that the defendant's design of the MATTEO range of switch plates infringes the suit designs within the meaning of Section 22 of the Designs Act. The physical samples of the plaintiff‘s and defendants switch plates were also made available for the perusal of the court. On this basis, Counsel seeks an injunction against the manufacture and use, by the defendant, of the said infringing design. He contested the emails presented by the defendant on the ground that those emails merely communicated concepts which cannot be constituted as communication of a design within the meaning of Section 4(b) of the Designs Act.
Submissions of the Defendant:
The learned Counsel for the defendant submitted that the defendant's designs were identical to the Concept 6 design, which had been communicated, prior in time, by NIPA International Pvt. Ltd. (NIPA) to Orient Electric Ltd. (Orient) and, later, to the defendant. He further opposed the plea for an injunction by submitting that the plaintiff‘s design could not have been registered in view of the prohibition contained in Section 4(b) of the Designs Act. He presented the emails of NIPO, first to Orient and later to defendant, to contend that the suit design had already been made known to the public much prior to the date of Design registration i.e. 27th July 2017.
Observation of the Court:
After considering the contentions of both sides, this court believed that the defence of Section 4(b) would be available to the defendant only where the plaintiff‘s design has been disclosed to the public by publication in tangible form prior to the filing date of the Design application. On the issue of whether the communication of concept 6 design constitutes prior publication or not, the court expounds that prior to 27th July 2017, it is an admitted position that no ‘article’ was present in tangible form to which Concept 6 design had been applied. Therefore, in the absence of any application to an article, the concept does not metamorphose into a design within the meaning of Section 2(d) of the Designs Act.
This court had placed reliance on C.C.E. v. Rajasthan State Chemical Works (1991) 4 SCC 473 to hold that law does not recognize a computer-generated image as an article of manufacture. Therefore, the court expounds that communication of such a conceptual design does not amount to disclosure to the public by publication in tangible form within the meaning of Section 4(b) of the Designs Act.
The court further noted that the defendant had himself applied for the design registration of the switch plates. Therefore, the defendant cannot seek to question the validity of the suit design on that ground that switch plate was identical to the Concept 6 design as forwarded by NIPA.
The decision of the Court:
The Delhi High Court restrained the defendants from dealing in any manner in switch plates bearing the impugned designs or any other designs as may be fraudulent or obvious imitations of the plaintiff‘s registered design.
Case Title: Novateur Electrical & Digital Systems Pvt. Ltd vs V-Guard Industries Ltd.
Coram: Hon’ble Justice C. Hari Shankar
Case no.: CS(COMM) 567/2021
Advocate for the Plaintiff: Mr. Hemant Singh
Advocate for the Defendant: Mr. Sachin Gupta
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