Self-Contradiction as Estoppel: When Design Registration Bars Invalidity Claims
Introduction:In the case of Novateur Electrical & Digital Systems Pvt. Ltd. v. V-Guard Industries Ltd., the Delhi High Court addressed a critical legal issue concerning the enforceability of design rights and the scope of permissible challenges to registered designs. The matter pertained to allegations of design piracy under the Designs Act, 2000, and whether a defendant, who had itself obtained design registration for a substantially similar design, could subsequently challenge the plaintiff’s registered design on the ground of prior publication.
Factual Background: Novateur Electrical & Digital Systems Pvt. Ltd. (“the plaintiff”) held three design registrations (Nos. 296178, 296179, and 296180) for its “LYNCUS” range of switch plates. The plaintiff alleged that V-Guard Industries Ltd. (“the defendant”) was infringing these registered designs through its “MATTEO” range of switch plates. The novelty of the plaintiff’s designs resided in their unique shape and configuration, including a convex central surface tapering towards thumb-pressed corners, and a distinctive concave-cum-convex periphery. These designs were registered in 2017 but deemed effective from 27 July 2017, the date of application.
Procedural Background:The plaintiff instituted the suit under Section 22 of the Designs Act, 2000, for piracy of its registered designs and sought an interim injunction under Order XXXIX Rules 1 and 2 CPC through IA No. 14683/2021. The defendant contested the interim relief by asserting that the plaintiff's designs were not novel and had been disclosed to the public before registration, thereby invoking Section 4(b) and Section 19(1)(b) read with Section 22(3) of the Designs Act to question the design’s validity.
Core Dispute:The principal legal issue was whether the defendant could claim the plaintiff’s registered design to be invalid for want of novelty and prior publication, especially when the defendant itself had secured registration for a similar design allegedly based on the same source, i.e., “Concept 6” shared by their OEM supplier, NIPA International Pvt. Ltd.
Discussion on Judgments:To support its contention that the plaintiff’s design lacked novelty, the defendant cited prior correspondence with NIPA, which had shared ten design concepts, including “Concept 6”, in December 2016 and February 2017. The defendant argued that this prior communication constituted “publication in tangible form” under Section 4(b) of the Act. They relied on principles from Rosedale Associated Manufacturers Ltd. v. Airfix Products Ltd. [1957 RPC 239 (CA)], as cited in Diageo Brands B.V. v. Alcobrew Distilleries India Pvt. Ltd., 2022 SCC OnLine Del 4499, to argue that publication does not require a physical product but merely visibility of the design to a person skilled in the art.
In response, the plaintiff relied on Pantel Kabushiki Kaisha v. Arora Stationers, (2019) 79 PTC 429 (Del)(DB), to assert that the defendant, having itself registered a design similar to the plaintiff’s, was estopped from challenging its validity. The plaintiff also contested that “Concept 6” was merely a preliminary concept never applied to an article, and hence not a “design” under Section 2(d) of the Designs Act.
Reasoning and Analysis of the Judge: The court rejected the defendant’s reliance on the email communications and design concepts on several grounds. Firstly, he clarified that for a publication to constitute prior art under Section 4(b), it must involve a tangible article to which a design has been applied, as per the statutory definition under Sections 2(a) and 2(d) of the Designs Act. The Court held that “Concept 6” remained a mere idea illustrated via computer-generated images, and there was no evidence of its actual application to an article prior to the plaintiff’s filing date.
Secondly, the Court found no material to show that “Concept 6” was finalized or that it bore the precise shape and configuration claimed in the plaintiff’s registrations. The presentation slide from the defendant’s internal meeting on 3 March 2017 indicated that Concept 6 was under review and required modifications before any adoption.
Thirdly, the Court emphasized the estoppel principle, noting that the defendant, having obtained registration for its own switch plate design, could not now impugn the validity of the plaintiff’s registration based on alleged prior disclosure of the same “Concept 6”.
Lastly, regarding other allegedly similar prior registered designs (e.g., Luminous Designs No. 277682 and 277683), the Court declined to consider them as grounds for invalidation, noting that only perspective views were presented and they were insufficient for a meaningful design comparison.
Final Decision:The Delhi High Court held that the plaintiff’s registered designs had not been shown to be invalid on account of prior publication under Section 4(b) of the Designs Act. The Court restrained the defendants, their directors, distributors, and agents from manufacturing, selling, or dealing in switch plates bearing the impugned designs or any obvious or fraudulent imitation thereof, pending final adjudication of the suit. IA 14683/2021 was allowed accordingly.
Law Settled in This Case:This decision reinforces the principle that a party who has itself obtained design registration is estopped from challenging the validity of a similar registered design on grounds of prior publication. It also clarifies that mere conceptual illustrations or computer-generated images do not constitute “publication in tangible form” under Section 4(b) unless they have been applied to a physical article. For a design to be invalidated for lack of novelty, concrete evidence of its prior tangible use or disclosure must be presented.
Case Title: Novateur Electrical & Digital Systems Pvt. Ltd. Vs. V-Guard Industries Ltd.:Date of Order: 04 January 2023:Case Number: CS(COMM) 567/2021:Neutral Citation: 2023/DHC/000106:Court: High Court of Delhi at New Delhi:Judge: Hon’ble Mr. Justice C. Hari Shankar
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
