A few months ago, when I wrote on a Delhi High Court judgment in the Carlsberg design infringement case, I received a few comments and emails protesting my claim that Indian design law does not penalize designs which also have a functional aspect. The issue of functionality has been a tricky issue in most jurisdictions because design law is supposed to protect only designs that appeal to the eye while functionality is to be protected under patent law. Life is rarely that simple.
In the Carlsberg case mentioned above, some aspects of the design also served the function of helping to hold the bottle. As a result, Justice Vipin Sanghi came to the following conclusion:
“Normally, designs which are purely functional cannot be protected or form the basis for an action for infringement. A functional shape and configuration, which is dictated solely by the functionality, is not registerable under the Design Act as a design. The learned Judge referred to the observation of Lord Reid, J. in Amp. Inc. vs. Utilux Pty. Ltd. 1972 RPC 103 wherein the learned Lord observed, “……….and the words ‘judged solely by the eye’ must be intended to exclude cases where a customer might choose an article of that shape not because he thought that the shape made it more useful to him”.
Similar conclusions have been arrived at by three other major high courts. Justice Sundresh of the Madras High Court while dealing with design law in the case of Maya Appliances Pvt. v. Butterfly Gandhimati (2017) cited American case law, Shakespeare and Ramayana, to conclude that:
“The incidental overlapping qua functionality which is not predominant in a product, will not affect the right of the plaintiff under the Designs Act, 2000. The onus to prove otherwise, a defence to be established by the defendant. In such a case, the defendant also will have to prove that the functionality has come into being only through a particular design registered in favour of the plaintiff and therefore, it cannot be used through any other means.”
Similarly, Justice Kathawala in the case of Whirlpool of India v. Videocon Industries (2014) held the following in context of functionality under design law:
“For a defense of functionality to succeed, it is not enough to say that the form has some relevance to the function. If a particular function can be achieved through a number of different forms, then a defense of functionality must fail. For the defence of functionality to succeed, it is essential for the Defendant to establish that the design applied for is the only mode/option which was possible considering the functional requirements of the products.”
From the Calcutta High Court Justice Soumen Sen concludes the following in the case of Anuradha Doval v. The Controller of Patents & Designs (2017):
“The design must be such that in the finished article the features of it ‘appeal to and are judged solely by the eye’. It does not relate features which are dictated by function. The rationale behind this exclusion is that the point of design protection is to reward and encourage good product design by protecting the skill, creativity and labour of product designers. Design is concerned with both form and function. Design law is not seeking to reward advances in function…… Predominance and pre-eminence of the aesthetic elements over the functional element would satisfy the definition of ‘design’ under the Act.”
The problem, in my opinion, with all 4 judgments is that the judges either cite American or English judgments to arrive at their conclusions or as was the case with Justice Sen, simply presumed that they were citing a logical proposition. If judges are citing foreign case law as authority in an area of law where each country has its own law, they face the burden of explaining the similarities or otherwise of Indian laws with the other countries before citing their judicial propositions. None of the judges have carried out such an analysis. Even presuming the laws are similar, foreign precedents are only of persuasive value and are not binding. At the end of the day any analysis has to start and end with the words contained in the Designs Act, 2000 unless of course such an interpretation leads to a patently absurd result in which case judges can look beyond the words of the statute.
With respect to Justice Sen’s conclusions which are based on first principles, he does not disqualify a design registration on the grounds that it is resulting in a functionality that cannot be achieved by any change in design. But that appears to be the logical corollary of his ruling that “predominance and pre-eminence of the aesthetic elements over the functional element would satisfy the definition of ‘design’ under the Act”.
My simple critique of the above judgments is that the Design Act is silent on functionality, unlike the Copyright Act which specifically prohibits protection in the case of functionality. The Copyright Act does this in Section 52(1)(w) which I discussed last week. The definition of “designs” in Section 2(d) of the Designs Act, 2000 requires the “design” to be judged solely by the eye but specifically excludes “any mode or principle of construction or anything which is in substance a mere mechanical device”. There is no mention in this legislation about “functionality” being an impediment to the registration of a design which otherwise appeals to the eye. Why should a designer lose out on design protection merely because the design, which appeals to the eye, is the sole way to achieve a particular functionality? Why should he be forced to seek protection only under patent law, which by the way, provides for a longer period of protection than designs? Like all IP, the period of monopoly over a design will expire after a period of time, in the case of designs it is, 10 + 5 years after which it falls into the public domain. If it qualifies as a mechanical device or a principal or mode of construction it will anyway be disqualified because of the bar in Section 2(d). If the design owner abuses his monopoly rights, competition law will kick in to deprive him of his monopoly. Why then should courts read in an additional exclusion based on functionality when the statute is silent on the issue?
I see a tendency amongst lawyers and the academy to try and draw bright lines to delineate overlapping areas of IP law but I think we just need to accept the fact that overlaps are a messy but interesting reality of IP. (Do read more about the overlaps in this book by Shamnad and Neil over here). To paraphrase a famous Hindi movie dialogue: “Bade bade IP legislation mein aaise choti choti baatein…hoti rehti hai”.