Delhi High Court Vacates Injunction in Plaintiff’s Favour in a Case on the Design of Ball Point Pens

In a comprehensive and well-reasoned judgment
issued last month, Justice Valmiki Mehta of the Delhi High Court (“Court”) vacated an interim injunction in a design infringement case. While the facts of the case are fairly straightforward and the conclusion arrived at by the court is founded upon a reaffirmation of well settled legal principles, some consequences flowing from the judgment merit deeper scrutiny.

The judgment arose out of an application for the grant of injunction filed by the plaintiff, Pentel Kabushiki Kaisha, for its registered design relating to ball point pens. Contending that the design used by the defendants is an identical duplication/fraudulent imitation of the plaintiff’s design, the plaintiff prayed for the grant of an interim injunction to restrain the defendants from manufacturing such pens.

The key factual question that the Court’s decision turned on was the ascertainment of whether the design registered by the plaintiff for ball pens possessed sufficient novelty and originality for it to merit legal protection. In this respect, the Court commenced its analysis by adverting to two judgments which outline the threshold that must be met by a design for it to obtain legal protection.

In the 1980 judgment
of B. Chawla and Sons versus Bright Auto Industries, a Division Bench of the Delhi High Court held that a design cannot be said to be new and original unless it possesses variations that are of a substantial character from existing designs. Similarly, in the 2008 Supreme Court judgment
in the case of Bharat Glass Tube versus Gopal Glass Works, it was reaffirmed that the monopoly of legal protection for 15 years can only be granted to designs which are significantly distinguishable from existing designs.

The Court then proceeded to apply these principles to the factual matrix obtaining in this case in order to determine if the plaintiff had been able to demonstrate that the ball pen design for which it was seeking legal protection was significantly distinguishable from existing designs.

In this regard, it noted that every ball pen has some common features – a refill with a nib, which is put in a lower casing called a barrel, over which there is a cap and a clip using which the pen can be attached to one’s clothing. This being the case, the onus lay on the plaintiff to establish that the pens designed by it had something over and above these features.

The plaintiff argued that the distinctive attributes of its pens were: existence of wedges at the point of holding of the ball point pen; polygonal shape of the barrel; existence of slightly curved tip; and the fact that the barrel/lower casing goes into a knob

The Court held that these attributes were nothing more than trade variants and were not so substantial as to meet the high threshold that must be met for a design to receive legal protection. Further, as regards the design of the wedge, the Court held that it was nothing but a principle of construction aimed at enabling people to grip the pen in a better fashion. On this basis, it decided to vacate the injunction granted in the plaintiff’s favour.

One key critique of the judgment that I’ve come across is that the Court should not have delved into the newness/originality of the design in light of the fact that the design has already been registered. This being the case, the argument goes, the only way in which this question can be reopened is by filing a petition for the cancellation of the registered design before the Controller, especially given the fact that Section 19(1)(c) of the Designs Act, 2000, makes the lack of newness/novelty a ground to cancel a registered design.

However, I would submit that this argument is legally flawed for the simple reason that the Designs Act itself provides a legal basis for the approach adopted by the Court in this case. More specifically, Section 22(3) of the Act reads as follows: “(3) In any suit or any other proceeding for relief under subsection (2), every ground on which the registration of a design may be cancelled under section 19 shall be available as a ground of defence.”

In light of the above, it is clear that it is open to a defendant to contend, inter alia, that a design lacks newness/ originality as a defence in an infringement suit filed against it. The approach adopted by the Court was grounded in this provision which becomes clear from a perusal of para 5 of the judgment which reads as follows:

“Sub-Section (3) of Section 22 of the Act provides that in spite of the fact that a design is a registered design, whenever any suit is filed for the relief alleging piracy of the registered design by the defendant in the suit, then in such a suit every ground on which registration of a design may be cancelled under Section 19 of the Act shall be available to the defendant as a ground of defence.”

The Court expressly returns a finding that the defendants made the argument that the plaintiff’s design lacked newness and originality at para 18 of the judgment. It reads as follows: “In sum and substance the defences of the defendants are therefore that neither there is any newness or originality in the registered design of the plaintiffs with respect to ball point pens claimed by the plaintiffs…”

In light of the fact that there exists a statutory foundation for the approach adopted by the Court, coupled with the fact that the defendants raised the lack of newness/originality in the plaintiff’s design as a defence, I would submit that the Court’s approach rested on a sound legal footing. This being the case, the judgment is legally unexceptionable.

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