Harjivanbhai Hansrajbhai Patel vs. Mahendrabhai Mahadevbhai Ambani: Quashing of FIR Under the Designs Act and Copyright Act
Case Title: Harjivanbhai Hansrajbhai Patel & Ors. vs. Mahendrabhai Mahadevbhai Ambani & Anr.
Date of Order: February 21, 2025
Case No.: R/SCR.A/2413/2018
Neutral Citation: 2025:GUJHC:12040
Name of Court: High Court of Gujarat at Ahmedabad
Name of Judge: Honourable Mr. Justice Divyesh A. Joshi
Introduction
This case concerns the quashing of an FIR under Sections 420 and 114 of the Indian Penal Code, Sections 11 of the Designs Act, 2000, and Sections 63, 64, and 65 of the Copyright Act, 1957. The petitioners, involved in manufacturing and selling tractor and trailer parts, challenged the FIR, contending that the complainant’s design registrations lacked novelty and were already in the public domain before registration. The High Court examined the scope of prosecution under the Designs Act and Copyright Act and whether the FIR should be quashed in light of legal principles governing copyright and design infringement.
Factual Background
The complainant, Mahendrabhai Mahadevbhai Ambani, engaged in manufacturing and selling trailers under the brand 'Maruti Trailer,' alleged that his registered designs were copied by the petitioners. He claimed to hold valid design registrations issued by the Design & Patent Office, Government of India, Kolkata. Public notices were issued in newspapers to prevent unauthorized use. However, the complainant discovered that the petitioners were using similar designs and filed an FIR on March 16, 2018.
The petitioners, who operated 'Prince Steel and Maruti Traders,' argued that the designs were commonly used in the industry and were in existence well before the complainant’s registration. They also presented an R.C. book of a vehicle dated June 18, 2010, and affidavits from manufacturers stating that such designs had been in public use for many years.
Procedural Background
Following the registration of the FIR, the petitioners approached the High Court seeking relief under Article 226 of the Constitution and Section 482 of the CrPC for quashing the FIR. On October 3, 2018, the Coordinate Bench of the High Court granted interim relief, staying further proceedings.
During hearings, the petitioners argued that the designs were already in public use before registration, negating exclusivity claims. Copyright does not subsist in registered designs under Section 15(1) of the Copyright Act. Under Section 15(2) of the Copyright Act, copyright ceases when a design is reproduced more than fifty times. A pending civil suit made parallel criminal proceedings unsustainable.
Issues Involved
Whether the FIR alleging design and copyright infringement could be sustained under criminal law. Whether the complainant's design registrations granted exclusive rights despite prior public use. Whether the petitioners’ reliance on Section 15 of the Copyright Act nullified criminal liability. Whether criminal prosecution was justified when civil remedies were available.
Submissions of the Parties
The petitioners asserted that the designs were commonly used and predated registration. They argued that a registered design does not attract copyright protection under Section 15 of the Copyright Act. They contended that the complainant’s registration was improper as the designs lacked originality. They cited affidavits and registration documents showing prior use of the designs. The respondents argued that the petitioners had copied the registered designs and infringed on exclusive rights. They stated that the FIR was valid as the petitioners had violated the Copyright Act and Designs Act. They contended that the petitioners should have challenged the design registrations before using the designs.
Discussion on Cited Judgments
The Supreme Court examined several key precedents in its analysis. The case of Binita Rahul Shah v. State of Gujarat, 2009 (3) GLR 2688 held that copyright protection does not extend to registered designs under Section 15 of the Copyright Act. The case of Mayur Kanaiyalal Shah v. State of Gujarat, R/Special Criminal Application No. 1115 of 2017, decided on August 8, 2023 quashed an FIR in similar circumstances where designs were in prior public use. The case of Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126 (1942) established that a design must be novel to claim exclusivity. The case of Hubbell v. United States, 179 U.S. 77 (1900) stressed that registered designs lacking novelty can be challenged. The case of S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC 683 clarified that criminal liability should not arise when civil remedies are available.
Reasoning and Analysis
The High Court found that the complainant’s designs were already in use before registration, as evidenced by affidavits and vehicle registration records. Since the Copyright Act’s Section 15 prohibits copyright in registered designs, criminal liability under Sections 63, 64, and 65 could not arise. Additionally, the Designs Act does not criminalize infringement but provides civil remedies. The Court emphasized that criminal prosecution should not substitute civil proceedings, especially where the complainant had filed a separate civil suit.
Further, the Court noted that under Section 15(2) of the Copyright Act, the complainant’s rights had ceased if the design was reproduced more than fifty times. Given the five-year delay in filing the FIR and the industry-wide use of similar designs, the Court ruled that the FIR was an abuse of process.
Final Decision
The High Court quashed the FIR, ruling that criminal proceedings under the Copyright Act and Designs Act were unsustainable. The Court held that the case was better suited for civil adjudication rather than criminal prosecution.
Law Settled in This Case
Copyright protection does not extend to registered designs under Section 15(1) of the Copyright Act. If a design has been reproduced more than fifty times, copyright ceases under Section 15(2) of the Copyright Act. Criminal proceedings under the Copyright Act and Designs Act are not justified when civil remedies are available. Prior public use of a design before registration negates claims of exclusivity. An FIR based on alleged design infringement is liable to be quashed when designs lack novelty and are in public use.
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Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
