A Design, Despite Having Functional Attributes, Is Eligible For Registration As A Design If It Has Aesthetic Appeal – Observes Delhi High Court.

The case of design infringement before Delhi High Court was with respect to the contesting designs of the handi by the Plaintiff and the Defendant as shown below:

The Court held this to be a clear case of design piracy and observed that the Defendant's design was an obvious imitation of the Plaintiff's design. It was observed that the Plaintiff is a holder of the valid registration for its cooker design, granted on 13 December 2004. The certificate of registration clearly states that novelty resides in the shape and configuration of the cooker.

The Defendant on the other hand challenged that the suit design is bad for want of novelty and originality by contending that a handi, which is the subject matter of the design suit, is a well-known cooking vessel which has been used in India since ancient times. DHC observed that:

"The certificate of registration clearly states that novelty resides in the shape and configuration of the cooker. A glance at the cooker makes it apparent that it does not bear the conventional shape of a cooker but has a bulging mid/lower section, which is not ordinarily found in cookers. As such, the design of the plaintiff's cooker has clear distinctive eye appeal, which is one of the definitive criteria for entitlement to registration as a design."

It was further observed by Justice Hari Shankar of the Delhi High Court that the Defendant had not placed any material on record which could indicate that the suit design was bad for want of novelty. The Court further held that the onus to prove want of novelty and originality was on the Defendant and no picture or representation had been placed to support their plea. Hence, this plea was rejected.

The Plaintiff in this design infringement case had claimed that its design was registered since 2004, and thus argued that the striking similarity of the Defendant's design constituted a clear case of piracy.

The Defendant also took the plea of invalidity of the Plaintiff's design registration owing to its functional aspect. To this, the Court relying on the cases of TTK Prestige Ltd. v. KCM Appliances Private Limited as well as Jayson Industries, held in Para 22 as follows:

"This Court has, in its recent decision in TTK Prestige Ltd. v. KCM Appliances Private Limited as well as Jayson Industries had occasion to deliberate, in some detail, on the aspect of functionality as a delimiting factor in registrability of designs. Functional designs, per se, are not ineligible to registration. It is only if a design is purely functional and not possessed of any aesthetic appeal, that the design becomes non-registrable, as held by Ruma Pal, J. (as she then was), sitting singly in the Calcutta High Court in Castrol India Ltd v. Tide Water Oil Co. (I) Ltd., following the decision in In re. Lamson Industries Ltd.'s Application."

The Court thus rejected the Defendant's plea of invalidity of the Plaintiff's design registration, owing to its functional aspect.

Final Relief

Since the Plaintiff's design had expired in 2019 and no goods were seized, the Court did not pass any direction for delivery of goods. The suit was finally decreed by directing the Defendant to render accounts of the earnings made by the Defendant by sale of the pressure cookers bearing the impugned designs.

Author's Take

This case, while offering us the fundamental aspects of Design Law, also raises few questions worth pondering over – Can a design which derives its inspiration from a prevailing traditional practice, be allowed to claim registration and seek a monopoly over the design even with minor adjustments?

Another question that piques the curiosity of IPR enthusiasts, is – in the absence of strong evidence adduced by the Defendant, does the Plaintiff stand to get a premium to claim its IPR rights?

Case

TTK Prestige Ltd Versus Gupta Light House (Citation – 2023: DHC: 5188)

To view the original article click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Vivek Kumar
Saikrishna & Associates
8th Floor, VJ Business Tower,
Plot No. A-6, Sector 125,
Noida
201301
INDIA
Tel: [phone]
URL: www.saikrishnaassociates.com

© Mondaq Ltd, 2023 - Tel. [phone] - http://www.mondaq.com, source Business Briefing