As per the Design Act, 2000, the term Design means only the features of shape, pattern, and configuration, the composition of lines or colours available on any article, whether 2d or 3d, prepared by any industrial process or means, and does not include any mark as mentioned in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958. In this write-up, we shall disclose some of the most popular Design judgements made by the honourable Court in India.
Benefits under Design Act
- Confer exclusive rights to owner
- Protect design from possible act of infringement
- Increases the commercial value of product
M/S Whirpool Of India Ltd vs M/S.Videocon Industries SUIT (LDG) NO. 1675 OF 2012 on 25 July 2012
In a motion of interim ban before the Bombay high court, Whirlpool claimed that Videocon had violated its registered design for its washing machine, possessing a rectangular shape on one side & a semi-circular shape with a jettisoned panel for the knobs. The respondent also stated that the petitioner had two identical designs, & the design in this suit possessed a minor variation.
In light of sections 6(3) and (4), the registered design act, the Court held that the design could not be rejected even it lacks novelty or already known to public. The Court, after disapproving the invalidity claim, scrutinized the infringement issues based on appearance. Holding that the similarities were imperative than any marginal differences, the Court said that there was a violation of the plaintiff’s design. This was indeed one of the prolific Design judgements from the judicial viewpoint.
Bharat Glass Tubes Ltd V. Gopal Glass Works Ltd., Air2008sc2520
The terms “new or original” mentioned in Section 4 imply that the registered design awaiting publication or already published and has a unique design that no one has reproduced. Section 2(d) design implies the application of configuration, design etc., to any article. And since the defendant has cited that he was applying the design only to glass sheets, he would have authority to do so, although the design has been already found on the engraved rollers.
Troikaa Pharmaceuticals Ltd V. Pro Laboratories Ltd, (2008)3glr2635
Though the D shaped design wasn’t unique in a general sense, it was original from the law’s viewpoint. Although the said design was well-known, its application to the tablet was innovative, thereby making it eligible for the Design registration. The test of knowing the similarity between two designs have to be judged by the eye & each design has to be identified as a whole with all its component features, regardless of relevancy.
M/S S K Industries V. Dipak Ghosh @ Mana Da Trading, 2010(42)Ptc96(Del)
Petitioners sued the defendant on basics of design infringement related to the cup in which jelly was being packed. The plaintiff alleged that the respondent had breached the Design Act provisions by using a similar design. The Court opined that the design registration for the cup lacks application of mind and novelty of the design.
The shape is a widely recognized geometrical shape, and it doesn’t adhere to originality in terms of shape or dimensions. While offering a temporary injunction, the Court should consider that the design must be correctly registered and it there must be a certain element of novelty and originality in the same.
While making the Design judgment, the Court mentioned that the plaintiff has failed to mention any sort of novelty in the bottle design or registration certificate. There is no specific bottle’s dimensional ratio given in the design. As most manufacturers produce bottles for containing specific liquid quantity by measurement unless the petitioner had any claim over specific dimensions’ ratio that was not previously existed, there can be no novelty.
Sree Vishnu Bottles Vs The State Of Tamil Nadu W.P.Nos.1295 And 1296 Of 2012 On 9 February 2012
The plaintiffs were the two entities in the business of buying empty beer and paper from small merchants in Tamil Nadu. The secured bottles were then routed to Karnataka and M.P. for recycling purpose. The petitioners claimed they were involved in the business for more than 30 years and have required permissions to do so. The plaintiffs claim that two government authorities, i.e. Regional Transport Officer and the local Inspector of Police, discourage them from carrying out such activity.
Later, it was found that some bottles possess design registration under the Act by certain distilleries. The enforcement agencies argued that such transportation is unlawful from Design Act’s viewpoint. Apparently, the FIR has been filed against the plaintiffs, alleging Section 406 of IPC and section 22 of the design act[1]. The plaintiffs claimed that the said agencies were not allowing their vehicle to pass and that no one could be prevented from transporting bottles in such a manner without an injunction from a court.
The High Court rejected the petitions by declaring that they were without merit and their claim was vague; hence no blanket order could be passed for this purpose. Clearly, while making the design judgements, Court considers the impact of the violation on other section as well.
Maya Appliances V. Urooj Ahmed, O.A. Nos. 1096 & 1097 Of 2008 & Application No. 4695 Of 2008 In C.S. No. 949 Of 2008, Madras H.C.
Application for a perpetual ban prevents defendants from violating registered design available on applicants’ products and for direction to the defendant to pay compensation for damages caused by the applicant. The question was whether litigation for design’s infringement could be filed in the Court within whose jurisdiction the plaintiff resides. No provision in the Design Act relates to jurisdiction. Thus, it is clear that litigation must be filed pursuant to general principles in the Code of Civil Procedure.
However, the Court argued that the litigation for design infringement must be held to be the same as the suit for copyright violation in the design. Hence, the provision under Section 62 of the Copyright Act would be applicable to design infringement as well. The Court opined that a suit for the design infringement could be filed in the Court in whose jurisdiction the plaintiff resides.
Conclusion
There would be a tricky situation when authorities find it hard to draw a distinction between the Copyright and Design Act.
Even though Design Act talks about the design elements of a certain product, sometimes it may contradict the Copyright element. These are some popular design judgements that are nail-biting and thought-provoking. Let us know if you think about the aforesaid topic.Â
Read our article:Cancellation of Design Registration in India
