Gujarat High Court grants interim injunction in Designs Case

In May this year the Gujarat High Court in the case of Troikaa Pharmaceuticals v. Pro Laboratories MANU/GJ/0364/2008 decided its first case under the Designs Act in favour of the plaintiff. The plaintiff in this case was manufacturing ‘D’ shaped tablets and had registered the design with the Controller General of Patents, Designs and Trademarks. The Controller after verification registered the design under Class 28 and awarded the plaintiff with a certificate of registration in the year 2001. The plaintiff therefore had an exclusive right to use the design for a period of 10 years and he was there entitled to sue anybody who infringed the use of this design.

Eventually as is always the case somebody else started to use the registered design and ‘somebody’ soon became the defendant in this case. The litigation then proceeded on predictable lines. The plaintiffs sued for infringement. The defendants filed for cancellation of the plaintiff’s registered design arguing that it lacked in novelty. The first limb of this argument was that the ‘D’ was an alphabet in the English language and was commonly used and hence could not be protected as a registered design. The second limb of the defence and the more convincing of the two was that their repeated assertion that Pfizer had been manufacturing its Diabenese drug in the form of ‘D’ shaped tablets in the year 1956 itself and hence the plaintiff’s design could not be considered novel by any stretch of imagination. The defendants also contended that apart from Pfizer even Novartis had been manufacturing a drug called Focalin in the form of a D shaped table years before the plaintiff had applied for registration of its design. As per Section 4 of the Designs Act a design which is not new or original or which has already been published in India will not be given protection under the Designs Act.

The plaintiffs sought to trash these arguments by creating doubts on the reliability of the evidence produced by the defendants and repeatedly asserting that it had already been granted a certificate of registration by the statutory authorities after carrying out the requisite prior art searches.

In its judgment the Gujarat High Court held that although the ‘D’ shaped design was not new or original in the ordinary sense it was original in the eyes of the law i.e. the Court fell back on English case-law to rule that the new application of a known design would classify as original and would be entitled to protection under the Designs Act. In this case although ‘D’ was a known design its application to tablets was novel and hence capable of being registered under the Designs Act. Surprisingly the judgment makes absolutely no mention of the statutory definition of ‘original’ which is as follows: “original”, in relation to a design, means originating from the author of such design and includes the cases which though old in themselves yet are new in their application. The second argument which held a lot of promise was flatly rejected by the Court on evidentiary grounds i.e. the defendants only submitted photographs and failed to submit the actual tablets themselves. Since the Court was convinced that there would not be an irreparable damage to the defendant by the grant of the injunction the Court proceeded to grant an interlocutory injunction in favour of the plaintiff.