Introduction:This case presents a significant examination of the principles governing design infringement, particularly emphasizing the perspective from which a design is to be evaluated. It underscores the importance of understanding whether a new design infringes upon a registered design by considering the “informed eye,” a concept distinct from the usual perception of an average consumer. This case also clarifies procedural aspects concerning the scope of appellate intervention in design disputes, and the approach courts should adopt when dealing with design comparisons, especially in relation to registered shape and configuration protections.
Factual Background: TRODAT GmbH, the appellant, holds registered designs for its self-inking stamps, specifically Design Registration Nos. 272348 and 272349, under the names “Flashy 6330” and “Flashy 6903.” The respondent, Addprint India Enterprises Pvt Ltd, sought permission from the Delhi High Court to manufacture and market a self-inking stamp with a proposed design allegedly distinct from the registered designs. The respondent argued that its new design did not infringe upon the appellant’s registered designs, which primarily protect the shape and configuration of the stamp. The appellant contended that the respondent’s proposed design was a blatant infringement, and thus, injunctive relief was warranted to prevent the respondent’s use of the design.
Procedural Background:The respondent filed an interlocutory application seeking permission to proceed with manufacturing and sales of their proposed product, claiming that their design was sufficiently different from the registered designs and did not constitute infringement. The learned Single Judge of the Delhi High Court examined the application, focusing on whether the proposed design infringed the registered designs and whether the respondent’s rights to manufacture and market the new design should be granted. The lower court ultimately permitted the respondent to proceed, holding that the design was not infringing. Aggrieved, the appellant challenged this order before the Division Bench of the High Court through the present appeal.
Legal Issue:The core legal issue revolved around whether the respondent’s proposed design infringed upon the appellant’s registered designs, considering the principles of design infringement law under the Designs Act, 2000? Specifically, the case questioned whether the comparison of the designs should be conducted on the entire article as a whole or by analyzing individual features such as shape and configuration, and what standard of perception (the “informed eye” versus an average consumer) should be employed in determining infringement.
Discussion on Judgments:The court referred to multiple judgments fundamental to understanding design infringement. One notable authority cited is the Supreme Court’s judgment in Wander Ltd v Antox India P Ltd. (1990 Supp SCC 727), which clarified that appellate courts should exercise restraint and avoid interfering with the discretion exercised by a single judge unless there is a demonstrated perversity or arbitrariness. This presages the deference owed to the trial court in matters where factual and technical judgments are involved.
The court also considered the principles laid down in Castrol India Ltd v Tide Water Oil Co. (I) Ltd (1994 SCC OnLine Cal 303), where the comparison of designs should focus on distinguishing features, and it emphasized that every design must be evaluated for its ‘overall impression’ while considering the 'distinguishing features.' Additionally, references were made to the concept that in design law, the “configuration”—the manner in which individual elements are arranged—is critical, and that the shape and configuration protections granted by registration are significant in infringement analysis. As mentioned in the judgment, “the registration in respect of the design is granted of its shape and configuration,” thereby guiding the evaluation of infringement primarily in terms of such features.
Further, the court took note of the judgment from Diageo Brands B.V. and Another v Alcobrew Distilleries India Pvt. Ltd., which discusses standards for infringement, emphasizing the perspective of an 'informed user' or 'instructed eye.' The court highlighted that the test for infringement in design law is not from the view of an average consumer but from that of a knowledgeable and experienced person familiar with similar articles.
Reasoning and Analysis of the Judge:The court analyzed whether the respondent’s proposed design could be said to infringe upon the appellant’s registered designs by applying the “informed eye” perspective. It examined whether the overall impression created by the respondent’s design was substantially similar to that of the appellant’s registered designs. The judgment discussed the importance of assessing the features of the shape and configuration as registered, in contrast with the entire article as a whole.
The court emphasized that the learned Single Judge adopted a detailed and nuanced comparison, focusing on the differences in features and perception from the perspective of an instructed or informed person. As such, the court held that the detailed analysis provided a valid basis for the order, and that no perverse or arbitrary exercise of discretion had occurred. It further underscored that appellate interference in such matters should be limited, considering the established principles articulated by the Supreme Court regarding the scope of second-tier appellate review.
Final Decision: The High Court dismissed the appeal, upholding the order of the learned Single Judge that the respondent’s proposed design did not infringe upon the appellant’s registered designs. The court reaffirmed the approach that infringement should be determined from the perspective of an informed person and that a comparison should focus on the features of shape and configuration as registered. The court also reiterated the principle that appellate courts should exercise judicial restraint and uphold the discretionary decisions of the trial court unless manifest error or perversity is clear.
Law Settled in This Case:This case firmly establishes that in design infringement disputes, the standard of comparison should be from the “informed eye,” which perceives the design based on the features registered, particularly the shape and configuration. It clarifies that the comparison is not simply an article-to-article comparison but requires analyzing the features that define the novelty and uniqueness of the registered design. The judgment also confirms the limited scope of appellate intervention in discretionary orders made by the trial court, endorsing judicial restraint unless arbitrary or irrational decisions are demonstrated.
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
No comments:
Post a Comment