Delhi HC Vacates Injunction Granted in Favour of Steelbird – Design not New or Original

Steelbird Hi-Tech India Ltd. v. S.P.S. Gambhir and Ors.

Text of the judgement available here.

The Delhi High Court recently (Feb. 24, 2014) vacated an ex-parte interim injunction granted in favour of helmet makers Steelbird. Justice Manmohan Singh ruled that the registered design on the basis of which Steelbird had initiated infringement proceedings against S.P.S Gambhir and Others was not “new or original”.

Facts of the Case: Steelbird Hi-Tech India Ltd. is a company that is engaged in the business of manufacturing and selling helmets of various types. The present dispute is regarding a design of theirs which they have been using to make and sell helmets since December 2011 under the mark ‘Steelbird’. It is their case that this design was distinctive and unique at the time of registration. They allege that the respondents have been selling helmets that are a fraudulent imitation of this registered design of theirs under the mark ‘Format’. Aggrieved by this, they had filed suit before the Delhi High Court which initially granted an ex-parte interim injunction against the respondents and in the present order deal with the reply by the respondents.

Contentions of the Parties: Steelbird argues that their distinctive and unique design has come to be identified with their company and has acquired a secondary meaning in the eyes of the public as originating from them. They also argue that the design of respondents’ helmets on comparison bear no material differences with that of theirs and therefore constitute an infringement.

The respondents set up the defence that the design of Steelbird lacks novelty and originality and the “beak shaped design” of their helmets was being utilised by other competitors in the market, both in India and abroad prior to Steelbird’s registration. Therefore they argue, that the registration of the plaintiffs was not valid in the first place (Section 19 of the Designs Act) and there could consequentially be no claim of infringement. They also set up the defence that on comparison, there existed no material similarities between the design of their products and that of the plaintiffs.

The Question(s) before the Court: The court primarily had to decide the question whether the plaintiff’s design was “new or original” and therefore validly registered?

The Reasoning of the Court: In its reasoning, the court first clearly observes that as per S.22 (3) of the Designs Act, a successful claim of infringement can only be made against a registered design, but this is always room for the registration to be cancelled, which could defeat such a claim.

The court had initially considered a test of pre-publication for novelty and originality. However, this is quickly dismissed this as the relevant test by saying that although similar patterns have been marketed by other companies, and even in fact the same company, the real issue is whether it was pre-published OR new or original to the plaintiffs (I’ve added the emphasis on the ‘OR’ because there appears no other reason why the court would dismiss the pre-publication, unless it was to suggest that the mere novelty and originality would suffice, despite it being pre-published. Notice that sections 19(b) and (c) of the Designs Act, 2000 dealing with pre-publication and novelty or originality respectively are separated by an ‘or’).

The court then attempted to flesh out a test for novelty and originality and turned to British precedent for this. It cited Simmons v. Mathieson  &  Cold  (1911) 28  R.P.C. 486 and Phillips v. Barbro Rubber Company  (1920) 37 R.P.C. 233 to lay down that what is novel is that which is “a  mental  conception  expressed  in  a physical form which has not existed before, but has originated in the constructive brain of its proprietor and that must not be in a trivial or infinitesimal degree, but in some substantial degree” and must not also be within the common trade knowledge of the relevant industry. It was also emphasised that the test was purely visual and that an e The court however cautioned that what is of a substantial degree is to be judged from the facts and circumstances of each case. The court also clarified that originality implied the application of a design to a new subject matter. Using these two tests and observing that there was evidence placed before it that demonstrated that other manufacturers had conceived of this design before the plaintiffs and therefore it lacked novelty. Originality is clearly not present as the subject matter of the competitors’ products was the same i.e. helmets. The court also observed that the “beak shaped design” is a common practice in the industry and therefore not original to the plaintiffs. On these grounds the court vacated the injunction.

In my opinion, the decision is fairly well reasoned, and relies on established precedent. However, if the court had shed a little light on what the visual similarities and dissimilarities between the existing designs of competitors and the plaintiff’s product were, it would have helped understanding how exactly this comparison is to be carried out. The judgement merely states in para 26 that “The  mere  glance  at  the  product  of  the  plaintiff  reveals  many similarities  with  the  above  said  designs  of  the  helmets  of  STUDDS  and AIROH.” The court itself had noted earlier on in the judgement that there are often small changes made that can affect the entire design. These small changes are often in the nature of slight change in angles or curvature and the like. An elaboration on how the court had arrived at its conclusion would have helped.

Hat tip to Mr. Shiwprasad Wanve.