In today's world,
design infringement has become a common issue faced by the registered design
holders, businesses, and corporations alike. As such, it is crucial to
understand the legal aspects surrounding this topic in order to avoid any
conflicts. This article will specifically examine a case where a suit for
design infringement was filed by the plaintiff against the defendant on the
basis of registered design. The subject matter product of the defendant was
pressure cooker.
In this case, the plaintiff alleged that the defendant's design was an
infringing copy of their registered design. The defendant appeared and claimed
that the registered design was prior published on the grounds that it was
published on YouTube. However, the Hon'ble High Court of Delhi restrained the
defendant from using the impugned design. The court laid down several
propositions while making their decision.
The Court observed that ocular comparison is the decisive test in the case of
design infringement. This means that the court will compare the designs
visually to determine if there is any similarity or copying.
Even a part of a product is eligible to be registered as a design provided it
is capable of being made and sold separately. This means that even if only a
small part of the product is unique, it can still be protected as a design if
it can be separated and sold independently.
Onus of proving a design to be not novel is on the person who alleged it to be
not novel. This means that if someone claims that a design is not novel, they
must provide evidence to support their claim.
Mere drawing or paper publication is not sufficient until it is shown that the
subject matter design is used in relation to an article. This means that simply
publishing a drawing or design on paper is not enough; there must be evidence
that it has been used in a real article.
Design registration is prima facie proof of the existence of novelty and
originality. This means that once a design is registered, it is considered to
be original and unique until proven otherwise.
In order to defeat a registered design on the ground of lacking novelty, the
suit design itself has to be prior published. This means that if a design is
registered, it cannot be declared as lacking novelty unless the infringing
design itself was published before the registered design.
Prior publication must be in a tangible way. This means that the prior publication must be in a physical form that can be seen and touched.
Paper publication must be accompanied by evidence in such a way to enable the actual visual appearance of the design. This means that simply showing a drawing or picture of the design is not enough; there must be evidence of how it appears in reality.
The novelty must be substantial. This means that the unique aspect of the design must be significant and not trivial or easily overlooked.
Prior publication of stray features does not amount to prior publication of the entire design. This means that if a small part of the design was published before the design registration, it does not count as prior publication of the entire design.
Mosaicking of design is not permissible. This means that combining different
elements of different designs to create a new design is not allowed, and it
cannot be registered as unique.
A design which may be functional as well as have aesthetic attributes can qualify as a design. This means that designs that have practical functions as well as unique aesthetic features can still be protected.
The defendant who applies for the identical design cannot allege the design to be not novel. This means that if a defendant copies a registered design and applies it themselves, they cannot argue that the design is not unique.
Prior publication would defeat the registered design only in case the suit
design itself is prior published. This means that prior publication of a
different design does not invalidate a registered design unless the design
being sued over is the prior publication.
The comparison has to be done with respect to the design and the prior arts.
This means that when comparing designs, the court will consider the particular
design in question as well as any other pre-existing designs or elements that
may be similar.
The Case Law
Discussed:
Date of Judgement:29.03.2023
Case No. CS Comm 697 of 2022
Neutral Citation No.2023:DHC:2494
Name of Court: Hon'ble High Court of Delhi
Name of Hon'ble Judges: C Hari Shankar
Case Title: TTK Prestige Limited Vs KCM
Appliances
Disclaimer:
I do not guarantee the correctness and/or
genuineness of thoughts/idea/ and information shared herein as it is subject to
my subjectivity and may contain human errors in perception and presentation.
Ajay Amitabh Suman,
IP Adjutor and Patent & Trade Mark Attorney
Hon'ble High Court of Delhi
Ph no:9990389539,
Email: ajayamitabh7@gmail.com
