Novelty of Design: Tarun Sethi v. Vikas Budhiraja


Name of the case: Tarun Sethi & Ors. v. Vikas Budhiraja & Ors. [Delhi High Court CS(OS) 1841/2008]

Date of judgment: August 6, 2012
Bench composition: V.K. Jain, J.
Facts of the case: Plaintiffs 1 & 2 were running a partnership firm manufacturing and selling hardware like door closers, spring hinges, etc. One of these products is a door spring being sold under the trademark ‘YEN’. As per the plaintiffs, the design of the spring, consisting of a unique capsule shape of the spring and a thin, light iron handle and the arrangement of the two as a unique configuration are registered vide design registration No. 202794 dated January 5, 2006. The plaintiffs alleged that the door closer manufactured and sold by Defendant No. 3 Ritz Metal Works is identical to their door closer design and thus violates the plaintiffs’ rights in aforesaid registered design. The plaintiffs had also provided a comparative chart illustrating the similar features of the two designs.
The plaintiffs asked for an injunction restraining the defendants from making, selling, offering for sale or advertising door springs that imitate their own registered design, for a direction requiring delivery of the infringing material and damages amounting to INR 20,000,00.
The defendants replied that the plaintiffs not being the proprietors of the said registered design, shape, configuration or pattern, the latter lack necessary cause of action. Moreover, while seeking to register design No. 202794, the plaintiffs were aware that said design was merely a trade variation of an earlier design No. 188784, which the plaintiffs had registered back in 2002. Also, the defendants had been manufacturing and marketing said springs since 2000 and had advertised their products way back from 2003 onwards.
Issues: (a) Whether the suit is liable to be rejected under Order 7 Rule 11 (a) CPC on the ground of the plaintiffs lacking necessary cause of action? 
(b) Whether the plaintiffs are the proprietors of the design No. 202794? 
(c) Whether the defendants’ product is identical to the plaintiffs’ product registered under design No. 202794 and if so, whether it constitutes violation of the plaintiffs’ said registered design and/or passing off? 
(d) Whether the design No. 202794 is a pre-published design? 
(e) Whether the defendants have been manufacturing and marketing the said door springs since 2000 and if so, to what effect? 
Judgment: 
Regarding Issue (a), the court held that the plaintiffs have exhibited sufficient causes of action on grounds of infringement of their right of a registered design. 
Regarding Issue (b), the court found sufficient documentary evidence of the plaintiffs being registered proprietors of the design No. 202794. 
Regarding Issues (c) and (d), the court referred to the definition of design as stated in Section 2(d) of the Designs Act and held that the novelty factor may rest only in the shape, configuration, pattern, ornament or composition of lines or colours applied to any article. Reference was also made to Section 4 of the 2000 Act, which prohibits registration of a design, which is not new or original or significantly distinguishable from known designs or combinations thereof, and to Section 19, which allows any interested person to file a petition for the cancellation of registration of a design on the ground of lack of originality/novelty. Also, Section 22 prohibits application of any registered design or imitation thereof to articles for the purpose of sale without prior consent of the registered proprietor and affixes liability for unauthorized application, besides providing for damages and injunction. 
With respect to novelty of a design, the court held that a design incorporating a shape/pattern previously published/used or one substantially similar to that is lacking in novelty. Mere variations/modifications that do not substantially alter a previously published shape or design, are not sufficient to bring novelty to the design. References were also made to prior decisions like Kestos Ld. v. Kempat Ld. & Vivian Fitch Kemp (1936)53 RPC139 and Allen West & Co, Ld. v. British Westinghouse Electric and Manufacturing Co. Ld. (1916)33 RPC 137. 
In the present matter, the plaintiffs had claimed novelty only in the shape and configuration of the door spring. There were certain features in the plaintiffs’ product that were not present in the defendants’. Existing publications prior to 2006 were also found, which proved that capsule-shaped door closer/door hinge were available in the market much prior to the plaintiffs’ registration and there was no difference in the configuration of those earlier products with the plaintiffs’. Hence the latter product couldn’t be said to be materially different from the former. Nor could mere changes in placement of the plaintiffs’ and the defendants’ products be perceived as sufficient to alter the shape of such products so as to acquire novelty. 
Therefore, the court opined that plaintiff’s registered design No. 202794 was liable to be cancelled for lack of novelty and the defendants could use such a factor as defence by virtue of Section 22(3) of the Act. 
Mention had also been of the decision in B. Chawla & Sons v. Bright Auto Industries [AIR 1981 Delhi 95], wherein it had been held that “distinction has to be drawn between usual trade variants on one hand and novelty or originality on the other. For drawing such distinction reliance has to be placed on popular impression for which the eye would be the ultimate arbiter. However, the eye should be an instructed eye, capable of seeing through to discern whether it is common trade knowledge or a novelty so striking and substantial as to merit registration. A balance has to be struck so that novelty and originality may receive the statutory recognition and interest of trade and right of those engaged therein to share common knowledge be also protected.” 
Regarding Issue (e), the court was of the opinion that no documentary evidence existed of the defendants manufacturing and/or marketing the capsule door closer/door springs sporting such design since the year 2000. Hence this point was held in favor of the plaintiffs.
Held: The court thus favoured the arguments advanced by the defendants over those of the plaintiffs and the suit was thus dismissed.

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Shouvik Kumar Guha

Shouvik Kumar Guha

Shouvik is at present employed as a Research Associate and a Teaching Assistant at The W.B. National University of Juridical Sciences, Kolkata. He has obtained his B.A. LL.B. (Hons.) degree from NUJS itself and is also currently pursuing his LL.M. degree from the same university. From his very year at law school, he had been attracted towards the discipline of Intellectual Property and that interest has been kindled further in course of time. The interface between IP and other disciplines such as Economics, Anti-trust Law, Human Rights, World Trade Law and the technological developments relating thereto, has especially caught his attention since then. He’s authored several papers on issues relating to IP and other legal disciplines for journals, books, magazines and conferences in national as well as international levels. He is also currently co-heading an organization called Lexbiosis, which is an endeavor meant to facilitate the collaboration between the legal industry and academia.

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