One of our former bloggers, and my former classmate Kruttika Vijay, has returned to us with a guest post on a topic that has not received much attention here. After graduating from Nalsar University in 2009, she worked at Anand & Anand for a few years, and has now just begun her LLM degree at Stanford University. Hopefully, she says, this will be the first of many more guest posts by her in this coming year.
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| Pictured above: Not Whirlpool’s registered design |
In India, patents have been the “in-thing” for the last couple of years. Copyright makes a resurgence occasionally. However, the law of designs isn’t (and has never been) too much of a conversation starter. It probably has to do with the meandering language of some of the provisions (Section 6 to me is pure legislative torture), or just because most people would rather have copyright protection wherever possible.
In other countries, however, design infringement is a big deal. Case in point Apple v. Samsung. And, more amusing, recent news reports that Apple may be sued by a Swiss company for copying the design of its clock on iOS6!
In India, we make do with the cases we get. Whirlpool v. Videocon is a recent-ish decision of the Bombay High Court. And it seems that while most of the judgment is well-reasoned, the Court like me is flummoxed by Section 6.
On a motion of temporary injunction before the Bombay High Court, Whirlpool alleged that Videocon had infringed and passed off its registered design for its washing machine which had a rectangular shape on one side and a semi-circular shape on the other with a jettisoned panel for the knobs. The case appears to have been argued in great detail by both sides on issues of infringement, passing off and, as a defense, invalidation of the registered design.
To invalidate the design, the defendant argued that the design ought to be invalidated on grounds of Section 4(a) & (b) of the Designs Act i.e. the design was neither new nor original and had previously been disclosed to the public. This appears to have been the strongest argument for the Defendant. At first glance, this made sense to me. How many designs/types of washing machines could there be? (You’d be surprised- check out the human washing machine or the dog-cat washing machine.) To substantiate, the Defendant relied on several documents but failed to convince the Judge that a washing machine of similar design already existed on the market.
Now for the tricky part. The Defendant also argued that the Plaintiff itself had two similar designs, and the design involved in this suit was only a minor variation, and therefore neither new nor original. The Court did not agree with the Defendant and used Section 6 to explain why. The relevant sub-provisions of Section 6(3) and (4) are:
- “Section 6….
(3) Where a design has been registered in respect of any article comprised in a class of article, the application of the proprietor of the design to register it in respect of some one or more other articles comprised in that class of articles shall not be refus¬ed, nor shall the registration thereof invalidated.
(a) on the ground of the design not being a new or original design, by reason only that it was so previously registered; or
(b) on the ground of the design having been previously published in India or in any other country, by reason only that it has been applied to article in respect of which it was previously registered:
Provided that such subsequent registration shall not extend the period of copyright in the design beyond that arising from previous registration.(4) Where any person makes an application for the registration of a design in respect of any article and either-
(a) that design has been previously registered by another person in respect of some other article;
or
(b) the design to which the application relates consists of a design previously registered by another person in respect of the same or some other article with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, then, if at any time while the application is pending the applicant becomes the registered proprietor of the design previously registered, the foregoing provisions of the section shall apply as if at the time of making the application the applicant had been the registered proprietor of that design.
The Court says that in light of Sections 6(3) and (4), the registered design cannot be invalidated even if not novel or published previously. This however makes no sense to me.
Section 6(3) and (4) of the Designs Act are strangely worded and at first glance seem to be in direct conflict with Section 4. However, the Manual of Design Practice and Procedure provides some clarity. It states that :
“If the applicant has registered the design in any other class of articles, prior to the application under consideration, the fact shall be mentioned in Form-1…Upon Examination, if it is found that the design under consideration is already registered by the same applicant in another class and the applicant has not disclosed that fact in the application form, the Examiner shall raise an objection only with an objective to predate the application, and not on the ground of novelty. In such cases, the objection is communicated along with the citation of such prior registered design and the applicant is asked to amend the application. The term of the copyright of the design under consideration shall be co-terminus with the term of previously registered design….”.
Therefore, it seems that these provisions are for the prosecution of a design application, and cannot be a valid answer for a minor modification of a previously known and registered design. If it were an answer, then the Court ought to have clarified that the application may require to be pre-dated in line with the earlier published design applications of the Plaintiff.
The Court, after rejecting the arguments on invalidity, examined the issues of infringement and passing off based purely on appearance (as is the standard test in the law of designs). Holding that the similarities were more important than any minor differences, the Court held that there was infringement and passing off of the Plaintiff’s design. The Court also fleetingly refers to an admission of “similarity” of designs by the Defendant. Perhaps not the best move, but my guess is that they were hoping to succeed on their claims of invalidation.
The case itself isn’t path-breaking or positing new or unknown legal principles. And the designs may very well be similar in appearance. However, this is one of the first design cases I have read where neither the lawyers nor the Court discuss the fact that the design ought to be invalidated since it is functional rather than aesthetic. Also, another look at the manner in which the Court dealt with the arguments of novelty and originality may be required. Or perhaps Section 6 could be amended to provide some clarity, and save us all some trouble labouring through its phrasing.
I received a comment from Ms. Jaya Bhatnagar who has vast experience in the field of designs. Her comments are as follows:
“- Design cannot be questioned for functionality in this case as the MACHINE does possess certain shape and configuration that makes it appealing and different from others.
– Section 6 lays down the provisions only for registered proprietor who wishes to make make certain modification in the article. It also speaks about the term which is then from the first date of filing. First date of filing means the filing of the first application of the article.”
So from her comments I believe Section 6 is akin to the concept of ‘patents of addition’ which are dealt with under Chapter IX of the Patents Act (Sections 54-56).
could you please provide picture of videocon product (or product name), i could not find on net, though got whirlpool pics.
Hi Anonymous,
Unfortunately (and strangely for a design case), the Court has not mentioned the name if the products or inserted images into its judgment. The registered design numbers of Whirlpool’s design are mentioned, and you can find it on their website. Sorry I can’t be of more help here!