SpicyIP Tidbit: Delhi High Court says Registration of a Design can be Prima Facie Proof of Validity.

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On March 14, 2023, in Sirona Hygiene Private Limited Vs Amazon Seller Services Private Ltd, the Delhi High Court provided three interesting points on the issue of design infringement and piracy, in the context of an equally interesting fact scenario! The plaintiff claims that the registered design of a disposable female urination device titled “Pee Buddy” has been infringed by defendant who allegedly manufactures and sells identical devices under the name “Namyaa”. 

The first point is the court’s remark that registration of the design stands as a factor in the registrant’s favour as prima facie evidence of the validity of the design.  (Para 19.12) This is despite there being no provision in the Designs Act that is analogous to Section 31 of the TM act, which explicitly allows for this in the case of Trademarks. (See here and here for example)

The second point came when the defendants inter alia contested the novelty and originality of the plaintiff’s design. The court’s rejection of this claim rests on an interesting point that at least partially shifts the usual focus of the Design Act from the “look or appearance” to “utility”. In the court’s words (*long sentence ahead, read slowly*): “when one considers whether the differences between the prior art and the suit design are merely in the nature of trade variants and where the suit design is in respect of a product which is utilitarian in nature, the extent to which the differences in prior art and the suit design would make a difference to the utility of the product has also … to be borne in mind.” It further said that “Where a design is utilitarian, it is possible that the differences vis-a-vis prior art, though minor on a visual inspection, may be substantial where the utility of the product is concerned.” In simple words, when considering a design for a utilitarian product (which is a  female urination device here), the extent to which differences in the prior art and the new design affect the product’s utility should be taken into account. Even minor visual differences in a utilitarian design can have a substantial impact on the product’s utility.

The third point arises from the court’s rejection of the defendant’s argument about non-registration of assignment deeds by the plaintiffs under Sections 30(1), (3) and (5) of the Design Act, 2000 which disentitles it to interlocutory relief. In this case, the plaintiff got its exclusive right to suit design through an assignment, which required it to be registered with the Controller of Design. Apparently, the plaintiff attempted to register it but the registration did not happen. The plaintiff submitted evidence to demonstrate that it wasn’t due to the plaintiff’s inaction. The court accepted the plaintiff’s claim; its reasoning is roughly rooted in the maxim “Lex non cogit ad impossibilia” which means “the law does not compel a man to do the impossible”. I say “roughly” because the court said so while linking the maxim to a Supreme Court Case. According to the court, if a citizen’s entitlement to rights is based on obtaining a certification or registration from a governmental authority, and the citizen applies within the allotted time to obtain the certification or registration, the governmental authority’s failure to issue the certification or registration cannot harm the citizen. In such a scenario, the citizen should be treated as having obtained the required certification or registration.

Here too, I think the court has enlarged the “ground” to play with facts. For instance, stating “design’s registration is prima-facie proof of its validity” can be argued to be automatically equating this principle (now) in design law with other IP laws that recognise this principle such as trademark and copyright. And if so, the reasoning of those other laws can be now relatively easier to borrow into design law; if not today, at some point in future, especially if this gets normalized in future litigation and arguments. Similarly, the court’s remark on how to see the minor similarities can be a pivotal point for future cases to harp and hyper-highlight the “utilitarian” nature of their designs and underscore the minor similarities or dissimilarities in the tune of their interest. For clarification, my idea here is not to critique these cases or cavil their clarifications. Instead, it is to underscore the underlying structure of our legal thoughts and reasonings which thrive through this tidbit-ish legal stuff.

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