(This is a two part post on the Bombay HC decision. This post looks at the issues of maintainability of a suit for infringement between two registered proprietors and whether there was an infringement in this case. The second post looks at the defenses of functionality, novelty and the fact that the plaintiff had obtained two registration with minor variations on the same day. It also considers the issue of passing off)
At the end of May, the Bombay High Court pronounced judgment on a Notice of Motion in the matter of Whirlpool of India Ltd. v. Videocon Industries Ltd. The main issues in this case were twofold, first, whether a suit for infringement of design is maintainable against a registered proprietor of a design and secondly, in the event that such a suit is maintainable, whether there was infringement of design in the instant case.
In this case, the plaintiff was the registered proprietor of two of its designs, both of which are valid and subsisting. The plaintiff filed the suit for infringement of design claiming that the defendant’s product was on a visual look indistinguishable from the plaintiff’s product. It claimed that the defendant’s product had the same or similar design, features of shape, configuration colour scheme and pattern as the plaintiff’s product and designs. Along with the suit for infringement, the plaintiff had also moved for a Notice of Motion and an ad-interim injunction which had been granted to the plaintiff by the Learned Single Judge. The defendant’s challenge to this injunction at the appellate stage (Division Bench) failed. The Defendant then filed a Special Leave Petition before the Supreme Court against this decision of the Division Bench. In the interim period between the Division Bench’s ruling and the filing of the SLP, the defendant had obtained registration for its design as well. Therefore, in its arguments it put forth the questions of whether a suit for infringement could lie against a registered proprietor of a design. As the registration of the defendant was obtained post the Division Bench’s order (although the application for registration was prior to the filing of the suit by the plaintiff), this aspect was not taken into account by them. However, as the Notice of Motion was yet to be decided, the Supreme Court considered it appropriate to wait for the decision on the Notice of Motion which would include this particular question of law before passing judgment on the SLP. Therefore, the Delhi High Court in its judgment on the Notice of Motion considered the two above mentioned issues.
MAINTAINABILITY OF THE SUIT
The first issue of whether a suit for infringement would lie against a registered proprietor is dependent on the interpretation of the word “any person” in S.22, Designs Act that deals with piracy of registered design. S. 22 gives the registered proprietor a right to relief against “any person” who applies the design of the registered proprietor to any article of the class of articles in which the design is registered. The plaintiff argued that “any person” must be given its plain and natural meaning and therefore it is any person whosoever, except in situations where the Act restricts the scope of the term. The defendants on the other hand contended that the term “any person” must be interpreted as any person other than the registered proprietor as a reading of S.11 with S. 2(c) of the Act indicates that the registered proprietor has the exclusive right to use a design and the Court of law did not have the power or authority to take away such a right. The Court held that the defendant’s contention does not take into account the words “subject to the provisions of this Act” in S.11. As a result, if other provisions of the Act empowered the Court to find that the use of a design is an infringement of a validly registered design of another and to order for the registration to be set aside or to order an injunction against such use, then S.11 is not a bar on such power of the Court. Therefore, the exclusive right claimed under S.11 by the defendant is subject to other provisions of the Act, including S.22. The exclusive right under S. 22 to claim relief against “any person” is itself subject to S. 22(3) which provides that every ground on which the registration is liable to be cancelled under S. 19 is available as a ground of defence to the proceedings under S. 22(2). However, a subsequent registration is not a ground of defence available to the defendant as it is not a defence within the meaning of S. 22(3) read with S. 19.
The Court held: “Just as the Plaintiff cannot claim a right to relief under Section 22 against a prior registered proprietor on the basis of his (the Plaintiff’s) registration, the defendant cannot successfully defend an action under Section 22 by a prior registered proprietor on the basis of his (the defendant’s) registration. That clearly appears to be the scheme of the Act. This Scheme is not only based on sound reason and common sense but is perfectly in consonance with the very nature of a copyright claim in a design. It, therefore, cannot be argued that Section 22 (3) has implications only for the Plaintiff’s registration and not for the Defendant’s registration. The Court may consider both the Plaintiff’s and the Defendant’s registrations in the light of Section 22 (3) and grant or reject the relief to a Plaintiff depending on whose registration is prior in time.” In the instant case, the plaintiff’s registration had been prior in time and therefore, the Court held that the defendant could not use his subsequent registration as a defence under S. 22.
The Defendant had also contended that the remedy under S. 19 amounts to a negation and exclusion of a remedy under S. 22 of the Act, to buttress its argument that a registered design can be challenged only under S. 19 and not S. 22. The Court however held that S. 19 and S. 22 operate independently in separate spheres. S. 19 affords a cause of action when the mere registration of a design is objectionable. Therefore, the mere factum of registration is sufficient to file an action under S. 19. Under S. 22 however, a cause of action is afforded only where the registered design is being applied or caused to be applied to any article for the purposes of sale or in relation to or in connection with such sale. Therefore, a remedy under S. 22 can be invoked only when the registered design is being used. In this case, as the impugned design had been used by the defendant, the Court held that the remedy of S.22 was available to the plaintiff.
Moreover, a plain reading of the Designs Act indicates that the Legislature has qualified the term “any person” with the phrase “other than the registered proprietor” in other provisions such as S.16. Therefore, the intention of the Legislature when it consciously chose to not use the phrase “other than the registered proprietor” in S. 22 was to make available the relief against any person whosoever. Hence, the Court held that a suit for infringement under S.22 lies against any person including a subsequent registered proprietor.
INFRINGEMENT OR NOT?
On the second issue of whether there was infringement of design in the instant case, the Court stated that the test to be applied is as laid down in the cases of Castrol India Limited v. Tide Water Oil Co. (I) Limited and Kemp v. Prima Plastics Limited. These cases state that the test is whether when judged by the eye, the essential features are the same and present in both products and designs or whether the two are substantially different. The Court held that when the products of both the defendant and the plaintiff are compared (both the washing machines were produced in Court) and on a perusal of the comparative tables and charts provided by the plaintiff, it appeared that the defendant had “slavishly/ brazenly copied/ imitated the plaintiff’s design and that the tests in Castrol India Limited and Kemp were satisfied. Therefore, the Court held that there had been infringement in the instant case.
The Defendant had raised the defenses of functionality, novelty and the fact that the plaintiff had obtained two registrations on the same day with minor variations to argue that there wasn’t any infringement in the instant case. As these defenses require analysis of their own, they will be done in a subsequent post in a detailed manner along with the issue of passing off that was raised in this case.
On the two issues that were discussed in this post, the author is of the opinion that the Court had rightly distinguished the ambit of the term “any person” in S.22 of the Act when it stated that the prior registrant had a right to relief against any person including a subsequent registrant. Therefore, it is seen that under S. 22(3), if the defendant in this case had been the prior registrant then it would have had a complete defense against the plaintiff’s action under S.22, as prior registration is a ground for cancellation under S. 19. However, subsequent registration is not such a ground for defence. Therefore, the stress is not merely on the factum of registration but the time of registration as well.
In this case, the plaintiff had the right of a remedy under S.19, from the minute the defendant registered its design. However, the plaintiff’s right of a remedy under S. 22 arises from the minute the design is used as prescribed in S.22, irrespective of whether the defendant had registered its design or not. As the registration by the defendant in this case was obtained only in the interim period between the Division Bench ruling and the SLP to the Supreme Court (even though the application by the defendant had been prior to the filing of the suit) , at the time of filing the suit initially, the plaintiff had a remedy only under S.22 and not S. 19. However, taking into account the change in facts, in the author’s opinion, it is open for the plaintiff to challenge the registration of the defendant’s design before the Controller under S. 19 as well.