“No application of mind” by Design Registry
I shall not dwell upon the trademark part of the case, since i found that fairly inconsequential. Instead, I draw your attention to the arguments of the plaintiff, one M/s. S.K. Industries Ltd. who contended that they had a registered design for a cup in which jelly was packed and sold. The cup was semi-cylindrical in shape, and had a spherical bottom; and was allegedly being infringed by the defendants in their marketing the Okay Jurassic Fruit Flavoured Cup Jelly (sic) (which today gets the SpicyIP prize for best product name in the artificial foods category). (Jurassic jelly-fish from here )
Common Cup Award to All Jelly Manufacturers
Citing the Delhi HC 2008 order in Dabur India Ltd. v. Rajesh Kumar, the court reiterated the basic principles of design registration which need to be carefully noted while granting interim injunctions, and also highlighted the novelty requirements of any design application:
“No specific novelty has been mentioned by the plaintiff in the design of the bottle, neither any specific novelty has been mentioned in the registration certificate… There is no specific dimensional ratio of the bottle given in the design as bottles are manufactured by most of the manufacturers for containing specific quantity of liquid by measurement… Unless, plaintiff had any claim over specific ratios of the dimensions which were not pre- existing, there can be no novelty in the bottle.”
In the Okay Jurassic Jelly case too, the court said the design in question was a common cup. Notably, the court, holding that the defendant was entitled to use its cup, observed that “[t]he registration of the design of the cup by the Registrar does not show any application of mind nor does it show any novelty of design. The shape is a well known geometrical shape. There is no originality either in the shape or in the dimensions.“
Introducing dimensions in statement of novelty?
Under Rule 12 of the Design Rules, 2001, “The applicant may, and shall, if required by the Controller in any case to do so, endorse on the application and each of the representation a brief statement of the novelty he claims for the design.” While the Design Office, in its “Ten steps to design application” and the Design Information Booklet, recommends that a statement of novelty should accompany any application, nowhere does it specify that the dimensions of the design need to be stated as well.
Do these decisions prompt a revisiting of the substantive structure of the statements of novelty? At present, sample statements are mostly innocuous phrases such as “The novelty resides in the shape and configuration of the article as illustrated”; or “The novelty resides in the floral ornamentation of the carpet as illustrated”.
Having said that, I have a key concern on introducing dimensions into the statement of novelty in design cases, which I contend may be limiting in terms of what it protects. Also, will this also not have implications on changes in scale?, i.e., will introducing dimensions protect a magnified version of the same design as well as a reduced version?
I ask because “dimension”, in its interpretation in connection with “shape” and “configuration” (both key features of a design) has spatial attributes, and a reference to planar coordinates. Coordinates in turn are unique, as for instance (2,3,4) on (x,y,z) cannot be equated with (4,6,8). I have my own defence for this, in that the resulting design (whether scaled up or scaled down) will be similar, if not identical. But what if only one of the coordinates is changed in a subsequent design, i.e., the length is reduced, or the breadth is increased? Is it still a similar design? Will the stated dimensions, then, prove to be a disadvantage to the registrant?
I’ve thought myself into a tizzy. Dimensions, anyone?