Intellectual Property Rights- A

Submitted to:
Prof. Dayanand Shetty

Submitted by:
Group 7

NAME ROLL NO.

Tanay Malkar A032
Simranjeet Sachdeva A049
Pragya Singh A057
Anish Dalmia E018
Akshita Singh G061
Introduction

We meet numerous things in our day to day lives, which we can recognise by studying their
design. Artistically crafted items will catch the customer's eye when they see it. Such designs
may take the form of sculpture, sketches, diagrams, etc. Professionals can produce these
designs, including engineered designs or architectural blueprints for any property, interior
designs, etc.

Procedures such as mode of construction are not included as a part of the term ‘design’.
Initially, this Act was covered under the Design Act, 1911. In order to bring this act at par with
the International Law, new law came into existence. Presently, design laws are maintained by
the Design Act, 2000.

The aim of this act is to amend and consolidate the law relating to the protection of designs.
The act was Published in the Gazette of India and came into existence on 12th May, 2000.
Being a complete code in itself, this act is statutory in nature and extends to the whole of India.

Design Act 2000 Definition

“Design” means only the features of shape, configuration, pattern, ornament or composition
of lines or colours applied to any article whether in two dimensional or three dimensional or in
both forms, by any industrial process or means, whether manual, mechanical or chemical,
separate or combined, which in the finished article appeal to and are judged solely by the eye;
but does not include any mode or principle of construction or anything which is in substance
a mere mechanical device, and does not include any trade mark as defined in clause (v) of
sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark
as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c)
of section 2 of the Copyright Act, 1957
Landmark Cases

1. Reckitt Benckiser (India) Ltd. v. Wyeth Ltd.

INTRODUCTION
Delivered on October 8, 2010, this judgment, titled Reckitt Benckiser (India) Ltd. v
Wyeth Ltd. (FAO(OS) No. 458/2009), had sought to dispose of an appeal filed by
Reckitt, against a judgment by a Single-judge Bench, wherein Reckitt’s petition to
obtain an injunction against Wyeth had been dismissed.

Reckitt alleged that Wyeth had infringed the design registered by Reckitt, having
Design No.193988, dated 5 December 2003, in Class 99-00, in respect of an S-shaped
spatula to be used for the application of a hair removal cream. Wyeth had, however,
claimed that the design of Reckitt lacked originality to the degree that it had already
been registered, written and used in countries other than India before the Indian
registration had actually taken effect. Furthermore, Wyeth also argued that Reckitt had
withheld material evidence, such as the previous registration of the concept under
review in foreign countries.

For the initial injunction, the Single Judge Bench determined that previous registration
in overseas registrations such as the UK, the USA and Australia could be treated as
'prior disclosure' in compliance with Section 4(b) of the Designs Act, 2000. It was also
held by the concept in question had been in the public domain until 5 December 2003
and should thus be treated as having been released abroad. With respect to the
question as to whether Wyeth's spatula was an apparent or dishonest imitation of
Reckitt's crafted spatula, the Single Judge had argued that it could not be seen prima
facie as being so.

CASE FACTS

In the course of the present appeal, the lawyer for Reckitt argued that, according to
the literal reading of Section 19(1)(a) of the Act, prior registration overseas could not
be a basis for cancelation of registration of a design in India and thus could not be
used as a shield in an action for violation of a registered design under section 22 of
the Design Act 2000.
Wyeth's lawyer responded that the present situation falls under the scope of Article
19(1)(b) and that, thus, previous publication abroad could be recognized as a
protective plea in the event of infringement. Moreover, it is only in such situations
where the design, even after filing, is held secret and not published in the public domain
that prior disclosure should not have been agitated as a legitimate basis and the
present case obviously did not come into that category.

VERDICT
Having noted these two arguments, the Bench Division first continued to assess if the
present matter comes within the scope of Section 19(1)(a) or (b) of the Act.

The Bench Division came to a consensus that the rationale of the Single Judge in this
matter concerning the availability of prior publication abroad as a defence, in violation
of nature, was deemed to be eminently rational and convincing.

Reading together Sections 4, 5(1), 16, 17 and 19, the Court came to the conclusion
that previous publishing or the presence of a licensed design in the public domain was
a necessary ingredient for a design to be 'new' in order to be registered.

CONCLUSION

The two-fold conclusion that was reached by the Division Bench was thus :
“(i) A design would continue to remain new although it is published in India or abroad
i.e. available in public domain in India or abroad within the period of six months after
making of an application abroad for registration of such design in the specified country
abroad if within this six month period an application is also made in India for registration
of the design for which application is made abroad in the specified country.

(ii) In case, however, no application is made in India for registration within a period of
six months of making of an application abroad for registration of design in the specified
country and if before the period of six months or after six months but before making
the application for registration in India the design registered abroad comes into public
domain, the availability of the design registered abroad in public domain will result in
the design becoming not new on account of falling within the eventuality of Section 44
(2) read with Section 4(b) of availability in public domain.”
 The verdict of the Division Bench of the Delhi High Court of Justice Sanjay Kishen Kaul
and Valmiki J. Mehta seems to have had a major influence on the field of design and
IPR law.

2. MICROFIBERS INC. v. GIRDHAR & Co. & ANR

INTRODUCTION
The appellant Microfibres Inc. brought an appeal against the defendants Giridhar and
Co. and Ors. for infringement of its copyright in the "artistic works" applied to upholstery
materials and to the effort to move its products as those of the appellant.

CASE FACTS
The plaintiff charged that what was reproduced on upholstery fabrics fell into the
boundaries of "unique and original artistic works" which had been conceptualized and
drawn/printed either by the plaintiff's employees or by the copyright granted to the
plaintiff by other persons.

The plaintiff further claimed that he had secured copyright registration in respect of
some of these sketches and that infringement of copyright was suspected also in
respect of those which did not have licensed copyright because, in the plaintiff's
opinion, copyright existed in them as "artistic works" according to section 2(c) of the
Copyright Act. In 2002, the plaintiff learned that the defendant was selling inferior fabric
and allegedly used the "artistic work" of the plaintiff, violating copyright on it, in addition
to being guilty of passing away.

To this effect, the appellant claimed that the work of the plaintiff did not, in the first
instance, deserve protection under the Copyright Act and that, if a legitimate argument
exists at all, it had to be under the Designs Act 2000, because the works of the plaintiff
were designs related to textile items. The defendant argued that, because the claimant
had not secured a design register in respect of works under the Designs Act of 1911
and the current Act of 2000, copyright protection was pursued which, according to the
defendant, was unsustainable in the light of the established context of both the
Copyright Act and the Designs Act.

The other important fact pointed out by the appellant was the certification of the design
received in respect of the works of the complainant in the United States and the United
 Kingdom, in addition to a letter from the Designs Wing of the Indian Office attesting
that the work was registered under the Designs Act, 2000. In addition, according to the
defendants, in addition to the fact that the works did not count as "artistic works," they
had to come under the scope of design under the Designs Act 2000, since they were
simply ornamental in nature and appealed to the eye. As to the matter of what is eligible
to fall under the category of artistic work, the appellant argued that sculptures, sketches
and paintings which were not industrially applicable fall under the scope of "artistic
works" and were thus exempt from the scope of design. Furthermore, as per the
defendant, since textile fabrics were subject to registration under the Designs Act, it
meant that they did not count as "artistic works."

As per the defendant, section 15(2) of the Act went against the plaintiff because the
clause provided for the termination of copyright of a design that is worthy of being
registered under the Designs Act, 1911 but has not been registered and has been
made 50 times by way of an industrial method.

Section 15(1) of the Copyright Act states with zero ambiguity that copyright shall not
subsist in any design which is registered under the Designs Act, 1911 and section
15(2) reads thus:
“Copyright in any design, which is capable of being registered under the Designs Act,
1911 (2 of 1911), but which has not been so registered, shall cease as soon as any
article to which the design has been applied has been reproduced more than fifty times
by an industrial process by the owner of the copyright or, with his licence, by any other
person.”

3. Mattel Inc. v. Jayant Agarwalla

Key Issue: With the use of hyperlinks and metatags, trademark infringement was done
in “Scrabble” board game.

Facts:
Being a well-known manufacturer of games, toys and other consumer products, the
Plaintiff had a popular and well-known board game named “Scrabble”. Since 1948, the
trademark of “Scrabble” has been used. Except United State of Canada, the Plaintiff
had the trademark “Scrabble” under their ownership. Even, they produced the list of
licenses across various platforms. The game was promoted and advertised across the
web by plaintiff even through their websites named “http://www.scrabble.com” and
“http://www.mattelscrabble.com”. Under section 11(6) of Trademarks Act, 1999, the
plaintiff claimed “Scrabble” as a trademark.

The plaintiff also claimed that the defendant had under the mark of Scrabulous
launched an online mode of the game across popular social media platforms like
Facebook. They had also promoted the game through their website
“http://www.scrabulous.com”, “http://www.scrabulous.info” and
“http://www.scrabulous.org”. Thus under section 29 of Trade Marks Act 1999, the
plaintiff claimed such an act where the defendant had unlawfully adapted to similar
works violates their trademark.

Contentions:

Plaintiffs:
 With the word mark being distinctive and being descriptive at the same time,
the Plaintiff believed that the court has to provide protection under Trade Marks
Act 1999.

 Defendants not only infringed by adopting similar marks but also violated them
through the use of metatags for indexing purposes. With the use of metatags
like “scrabble online”, “play scrabble online”, “free scrabble online”, “play
scrabulous live” etc, the plaintiff claimed that the defendant used such tags to
divert the traffic from plaintiff’s website to the defendant website. Plaintiff also
mentioned that they used this to mislead the people into believing that the
defendants were associated with the plaintiff.

 The plaintiff claimed for the use of rules of scrabble games and hyperlinks like
“download scrabble free”, “play scrabble free”, “free online scrabble” etc.
Independent of the content present in those hyperlinks, the text mentioned itself
was sufficient enough to constitute a case of infringement. With identical colour
usage (use of blue, red, pink, light blue tiles) and patterns of arrangement of
different coloured tiles with star shaped at centre, the plaintiff claimed that
violates its artistic work and is a case of copyright infringement.
Defendants:
 WIth the claim by the defendant that the word “Scrabble” doesn’t specify
explicitly of brand but is used for just the name purpose, this cannot be claimed
under the Act.

 With the claim of lawfully operating websites without any malicious intention to
misguide the traffic of Scrabble, the defendant claimed that it didn’t violate any
copyright infringement. It also clarified the use of metatags were associated
with their game “Scrabulous” and not related to “Scrabble”. The word usage
“Scrabble” was meant to refer only to the game and not mention any brand.
Even the defendant had a strong point stating the web traffic diverting factor
does not arise with the lack of online game version availability from the plaintiff
side.

 None of the hyperlinks mentioned had any unauthorized website access.

 With the presence and usage of the word “Scrabble” in the public domain, it
cannot come under the plaintiff's copyright infringement policy.

 With the board being a 3-dimension article, a copyright claim cannot be

maintained in relation. Although the configuration or shape as a design is
registered, the moment units more than 50 are commercially produced or sold
the copyright policy gets extinguished under Section 15(2) of Copyright Act.

Issues:
 Whether the protection is afforded to trademark infringement for the use of
metatags and hyperlinks

 Whether copyright protection is provided to the game rules and the layout
design

HELD
Trademark:
 The court ensures that similar cases of using general words for a source
specific purpose, the resemblance it has with word mark, the product’s nature,
 the amount of time used are some factors, but does not cover the overall
picture.

 Although the process the court follows may be slow in nature, if the word has
any strong association with the product or service a company is offering, a due
protection would be granted in such case.

 The court observed that unlike Crossword and Monopoly which are descriptive
of the word game, ‘Scrabble’ is not. Although people owing to the popularity of
these games associate these words as a game description. Thus plaintiff
claimed the protection for violating this distinctiveness for which the defendants
were restrained by the court.

Copyright:
 The colour arrangement on board, the values across, the line arrangement, the
tile’s alphabetical value has no particular or specific meaning, but it is only used
to express the rules of the game. This results in the monopoly of the idea of the
game, if the only method of expressing the game, i.e. its rules are subject to
copyright.

 Thus, plaintiff's claim of copyright was not granted as the lawmakers wanted
idea expression to be protected.

 With the Copyright Act’s Section 15 stating that registered designs under
Designs Act, 1911 or any design which is capable of getting itself registered,
there would be a seizure of the copyright post-industrial reproduction of 50 plus
copies produced under the owner’s license.

Key Takeaways:
 Copyright protection can’t be granted to restrict expression of ideas. If this is
done, then it would result in monopoly to generate ideas.

 Trademark protection was granted to the word “Scrabble”

  If industrial production of 50 plus copies is done by the owner’s license, then
the copyright protection granted for a design registered under design’s act
would cease to exist.

4. RAJESH MASRANI v. TAHILIANI DESIGN PVT. LTD

Facts:
The Plaintiff, a private limited company under the "creative leadership" of fashion
designer Tarun Tahliani, charged that under Section 2 (c) I of the Copyright Act, the
sketches he created in the process of designing clothing and accessories were artistic
works. The designs printed and embroidered on the cloth, as were the garments
eventually made, were also alleged to be artistic works in their own right. In addition,
in these separate artistic works, the defendant claimed breach of copyright, and a
single judge granted an interim injunction in his favour.

The 15 (2) argument:

It is possible to deal with the above statement very first. This is what it states in Section
15 (2):
Copyright in any design that is capable of being registered under the Designs Act,
1911 (2 of 1911) but has not been registered in such a way shall cease to exist as
soon as any article to which the design has been applied has been copied more than
fifty times by an industrial method by the owner of the copyright, or by any other person
with his
.

In order for this clause to be valid, it is necessary that the work in question is (a) worthy
of being registered as a design under the 1911 Act, (b) has not been registered in such
a way, and (c) has been replicated more than 50 times in the article to which the design
was submitted. As the drawings/designs/garments were made specifically for
individual customers and had not been replicated more than 50 times, the plaintiff had
claimed that condition (c) was not met.

The ‘Artistic works’ argument:

This leaves one to consider the previous issue of whether the works were "artistic
works" in such a way that they might claim to be protected by copyright. The appellant
put great emphasis on the decision in Microfibres v. Girdhar, arguing that the work
created by the defendant company was not worthy of being the subject-matter of
copyright protection. The Court had specified in that decision:
“
62. What cannot be lost sight of is the very object with which such arrangements or works
had been made. The object is to put them to industrial use. An industrial process has to be
done to apply the work or configuration to the textile. It is not something which has to be
framed and put on the wall or would have any utility by itself. The two important aspects
are the object with which it is made (which is industrial) and its inability to stand by itself as
a piece of art.”

The appellant, based on this paragraph, argued that the sketches and patters
developed by the complainant's company were created for the purpose of bringing
them into commercial use. Thus, even if there were less than fifty copies made, the
works in question were still being used as an industrial item. There was no independent
life of the drawings and patterns separate from the final garments, and they could be
applied only through an industrial method to the garments. The defendant argued,
therefore, that protection of copyright should be refused.

Microfibres were differentiated by the Court on many grounds.

A. The work was replicated over 50 times in Microfibres.

This is a valid fact to address the question relating to Section 15(2) of the Copyright
Act. But the appellant argued that they were unlikely to be considered "artistic works"
in the first place because of the existence or purpose behind the works. The number
of times the work has been repeated is meaningless as far as the issue is concerned.
"Is the object behind the creation of a work relevant to deciding whether or not a work
is an artistic work?" was the question that the Court should have asked. If this issue
had been resolved specifically, the Court would be stronger than ever.

In any case, it was inadequate (though not necessarily incorrect) to merely separate
microfibres on this basis. Maybe the Court should have further explained its rationale.
 B. In Microfibres, certain floral designs that were applied to fabric via an industrial
method were the subject-matter of the work in dispute, and the complainant had
registered the subject-matter of the design work in the United Kingdom in that case.

From this, the Court drew the conclusion that in Microfibres, the only relevant issue
was the one related to Section 15 (2) of the Act. The observations of the Court on that
issue could not influence the position of law on whether something could be an artistic
work in the first place. However, it is worth noting that the observation in Microfibres
reproduced above arose in the context of deciding whether the works qualify as “artistic
works” under the Copyright Act.

Importantly, the concept of "design" under the Designs Act, 1911, may be both a
"artistic work" and a "design" for a work. This is why Section 15 is concerned with
copyright in a design that can be licensed under the 1911 Act. Under Section 2 (c) of
the Copyright Act, the Designs Act, 2000 describes "design" in order to preclude any
"artistic work."

I leave a few policy issues for readers to answer. To what degree does it matter to the
object behind the production of a job to determine what form of IP security is entitled
to that job? Can the test for evaluating the form of security be strictly objective – that
is, based solely on the work in question – or should there be a subjective dimension
as well?

5. Novelty of Design: Tarun Sethi v. Vikas Budhiraja

Facts of the case:

A collaboration company making and selling hardware such as door closers, spring
hinges, etc., was owned by Plaintiffs 1 & 2. A door spring sold under the trademark
'YEN' is one of these items. As per the plaintiffs, registered vide design registration No.
202794 dated January 5, 2006 is the design of the spring, consisting of a distinctive
capsule shape of the spring and a small, light iron handle and the arrangement of the
two as a unique configuration. The plaintiffs argued that the closer door created and
sold by Defendant No. 3 Ritz Metal Works is similar to the closer design of their door
and therefore violates the rights of the plaintiffs in the above-mentioned registered
design.
The plaintiffs had also provided a comparative chart illustrating the similar features of
the two designs.

The plaintiffs sought an injunction prohibiting the defendants from making, selling,
offering for sale or advertising door springs imitating their own registered design for a
direction requiring delivery of the infringing material and INR 20,000,00 in damages.

The defendants replied that the claimants were not the owners of the design, form,
arrangement or pattern of the said registered design, the latter lacking the requisite
cause of action. In addition, when attempting to register design No. 202794, the
applicants were aware that that design was merely a commercial modification of the
earlier design No. 188784 registered by the applicants back in 2002. In addition, the
defendants had been making and selling the springs since 2000 and had marketed
their goods back in 2003.

Issues:
(a) If, under Order 7 Rule 11(a) CPC, the suit is liable to be dismissed on the ground
that the plaintiffs do not have a necessary cause of action?

(b) If the claimants are the design No. 202794 proprietors?

(c) If the product of the defendant is similar to the product of the plaintiffs registered
under design No. 202794 and, if so, if it constitutes a breach of the registered design
of the plaintiffs and/or a passing off?

(d) If the No. 202794 design is a pre-published one?

(e) If, since 2000, the defendants have been developing and selling the said door
springs, and if so, to what effect?

Judgement:
Regarding Issue (a), the Court held that, on grounds of infringement of their right to a
registered design, the plaintiffs had shown ample cause of action.
Regarding Issue (b), ample documentary proof of the applicants being registered
proprietors of design No. 202794 was found by the court.

With regard to points (c) and (d), the Court referred to the concept of design as set out
in section 2(d) of the Designs Act and held that the element of novelty may rest only
on the form, arrangement, pattern, decoration or composition of the lines or colours
covered by either of the papers. Section 4 of the 2000 Act, which forbids the
registration of a design that is not new or original or substantially distinguishable from
recognised designs or combinations thereof, and Section 19, which enables any
interested person to file a request for the revocation of the registration of a design on
the ground of lack of originality/newness, have also been referred to.
Furthermore, Section 22 forbids the application of any licenced design or imitation
thereof to articles for the purpose of sale without the prior consent of the registered
proprietor and, in addition to providing for damages and injunctions, imposes liability
for unauthorised use.

As regards the uniqueness of a design, the court held that there is a lack of novelty in
a design incorporating a shape/pattern previously published/used or one substantially
similar to that. To add creativity to the design, mere variations/modifications that do
not significantly modify a previously published shape or design are not enough.
References to prior decisions such as Kestos Ld have also been made. About v.
Kempat Ld. (1936)53 RPC139 and Allen West & Co, Ld. & Vivian Fitch Kemp (1936)
V. Electric and Manufacturing Co. of British Westinghouse. Ld. Ld. (1916)33 137 RPC.

The plaintiffs had asserted novelty only in the form and arrangement of the door spring
in the present case. In the complainants' product, there were certain characteristics
that were not present in the defendants '. Current publications prior to 2006 were also
found, which revealed that the capsule-shaped door closer/door hinge was accessible
on the market much earlier than the registration of the applicants and that there was
little distinction between the configuration of those earlier items and that of the
applicants. Therefore, it can not be assumed that the latter product is materially
different from the former.
The court therefore held that the registered design of the applicant No. 202794 was
liable to be cancelled for lack of novelty and, pursuant to Section 22(3) of the Act, the
defendants could use such a consideration as a defence.
There was also a mention of the decision in B. Chawla & Sons v. Bright Auto Industries
[AIR 1981 Delhi 95], in which it was held that "on the one hand and novelty or originality
on the other, the distinction between usual trade variants must be drawn." To draw
such a distinction, dependence on the common impression for which the eye will be
the supreme arbiter must be put. The eye should, however, be an instructed eye, able
to see through to determine whether it is normal commercial knowledge or a novelty
that is so striking and significant as to warrant registration.

With regard to Issue (e), the Court was of the opinion that since the year 2000 there
was no documentary evidence of the defendant manufacturing and/or selling capsule
door closer/door springs sporting such a pattern. This argument was also considered
in favour of the claimants.

The plaintiffs had alleged novelty only in the form and configuration of the door spring
in this case. There were some features in the plaintiffs' offering that the defendants'
did not have. There were also existing publications prior to 2006 that proved capsule-
shaped door closer/door hinges were available on the market well before the plaintiffs'
registration and that the configuration of those earlier items was similar to the plaintiffs'.
As a consequence, the latter product cannot be said to differ materially from the former.

The decision in B. Chawla & Sons v. Bright Auto Industries [AIR 1981 Delhi 95] was
also stated, in which it was held that "a distinction must be made between, on the one
side, ordinary trade variants and, on the other, innovation or originality." To make such
a distinction, one must depend on public opinion, with the eye acting as the supreme
arbiter. The eye should, however, be an instructed eye, able to see through to
determine whether it is normal commercial knowledge or a novelty that is so striking
and significant as to warrant registration. A balance must be achieved so that the
innovation and originality of those eng eng will obtain the statutory recognition and
interest of trade and rights.

Held: Thus, the court supported the claims put forward by the defendants over those
of the plaintiffs, thus dismissing the complaint.
6. Whirlpool Of India Ltd vs Videocon Industries

INTRODUCTION:
In the present case, the claimant was the licenced owner of two of its designs, which
are both legitimate and subsistent. The plaintiff filed a complaint for design
infringement arguing that the product of the defendant was visually indistinguishable
from the product of the plaintiff. It argued that the product of the defendant had the
same or comparable design, form characteristics, colour palette and pattern
configuration as the commodity and designs of the plaintiff.

In the present case, the key questions were twofold: first, if a design infringement suit
could be sustained against a licenced design owner and, secondly, if it was
maintainable then it had to be verified whether a design infringement had occurred as
an instant case.

CASE FACTS:

This case is between Whirlpool India, the plaintiff and Videocon Industries Ltd., the
defendant. Whirlpool is a global pioneer in manufacturing of home appliances.
According to the Plaintiff, they got two design registrations i.e. Nos. 223833 and
223835, which are valid for a period of 10 years from 2009, subject to an extension in
validity of 5 years after that. These designs got registered for shape and configuration
of washing machines in Class No.15-05. The designs were:

(i) Design No.223833 filed on 15th July 2009 and granted on 30th December 2009 in
class 15-05 with respect to Washing Machine; and

(ii) Design No.223835 filed on 15th July 2009 and granted on 31st December 2009 in
class 15-05 with respect to Washing Machine.

A unique and aesthetically appealing design of washing machine that proved to be a

huge success was that of being square on one side and rounded on the other side. It
was so popular and successful that almost 3 lakh units were sold in a very limited span
of 1 and a half years.
In June 2012, Whirlpool was informed that Videocon was producing and marketing a
similar design, shape and configuration washing machine just like the one registered
by Whirlpool India.

M/s. Whirlpool India Ltd then appealed that M/s. Videocon Industries Limited breached
M/s Whirlpool India Ltd.'s registered designs and is guilty of the promotion and sale of
the product.

Along with the violation case, the claimant also moved for a Notice of Motion and an
ad-interim injunction issued by the Learned Single Judge to the complainant. At the
appellate level (Division Bench), the defendant's challenge to this injunction failed.

The Defendant then filed a Special Leave Appeal against this ruling of the Division
Bench before the Supreme Court. The defendant had also received registration for its
design in the intervening period between the Division Bench's decision and the filing
of the SLP. It therefore raised concerns in its claims as to whether a claim for
infringement could be brought against a registered proprietor of a design.

Since the defendant's registration was obtained following the order of the Division
Bench (although the application for registration was made prior to the plaintiff's filing
of the lawsuit), this factor was not taken into account. However, in the absence of a
decision on the Notice of Motion, the Supreme Court found it necessary to wait for the
decision on the Notice of Motion, which would cover that specific question of law, to
be delivered before the SLP judgement. Therefore, in its judgement on the Notice of
Motion, the Delhi High Court found the two issues referred to above. The question of
whether an infringement suit can be brought against a registered proprietor depends
on the understanding in S.22, Designs Act, of the term "any person" dealing with piracy
of registered design. S. 22 confers a right of relief on the registered proprietor against
"any person" who applies the design of the registered proprietor to any article of the
class of articles in which the registered design exists.

The plaintiff argued that its simple and normal meaning must be granted to "any
person" and therefore it is any person, except in cases where the scope of the word is
limited by the Act.The defendants, on the other hand, argued that the word "any
person" must be interpreted to include someone other than the registered proprietor,
since a reading of S.11 with S. 2(c) of the Act implies that the registered proprietor has
the exclusive right to use a design, and that the Court of Law lacks the power or
jurisdiction to take away that 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, thus, S.11 is not
a bar on the Court's control of that kind.

On the second question of whether in the present case there was a design violation,
the Court claimed that the test to be applied was as set out in the Castrol India Limited
v. Tide Water Oil Co. (I) Limited and Kemp v. Prima Plastics Limited cases. These
cases state that the measure is whether the basic features are the same and present
in all goods and designs as judged by the eye, or whether the two are vastly unlike.
The Court held that when the goods of both the defendant and the complainant were
compared (both the washing machines were brought to the Court) and the comparative
tables and charts provided by the complainant were examined, it appeared that the
defendant had slavishly/brazenly copied/imitated the design of the complainant and
that the Castrol India Limited and Kemp tests were met. As a result, the Court ruled
that infringement had occurred in this case.

VERDICT:

The court concluded that: “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.”
Since the plaintiff's registration was earlier in time in this case, the Court ruled that the
defendant's subsequent registration could not be used as a defence under S. 22.

CONCLUSION:
 As a result, the defendant's exclusive right asserted under S.11 is subject to other Act
provisions, including S.22. According to S. 22, the exclusive right to demand relief
against "any person" is itself subject to S. 22(3), which specifies that all grounds on
which the registration is liable to be revoked under S. 19 are open to the proceedings
under S. 22(3) as a ground of defence (2). A subsequent registration, however, is not
a defence ground at the discretion of the defendant as it is not a defence under the
scope of S. 22(3) read in S. 19.

7. TROIKAA PHARMACEUTICALS LTD v PRO LABORATORIES LTD

Case Facts:
The plaintiff, Troikaa Pharmaceuticals Ltd., filed Regular Civil Suit before the City Civil
Court in Ahmedabad to pray for a permanent injunction to prohibit the plaintiffs (the
servants, agents, dealers, distributors and stockists) from producing, selling and using
the impugned design with regard to D-shape tablet. In addition, the complainant also
prayed for a permanent injunction so as to prohibit the defendants from printing,
publishing, using, marketing, copying or imitating the disputed tablet design, its
drawings and parts thereof, and to prevent the defendant from committing an
infringement of the complainant's design. The complainant also demanded that the
defendants be ordered to pay the amount of Rs. 50,000/- for the injury induced to the
plaintiff to take account of the violation of the recorded design of the plaintiff and also
to order the defendants to take real and accurate account of the items produced and
sold by the defendant after notice and after verification of the same, to pass a decree
of the amount of profit received by the defendant.
The plaintiff also moved injunction application in suit and prayed for temporary
injunction preventing defendants from manufacturing or marketing the D shaped tablet.
To capture the market, plaintiff was into innovation and developed unique tablet design
by spending huge amount for the design preparation and labour. This which was
protected under the Designs Act 2000 by virtue of which plaintiff became an exclusive
owner of the tablets. For any firm adopting the design, the said firm is liable to the
infringement of design as per the Design Act provisions.
As per the documents submitted at the court, it was evident that the defendants have
copied the plaintiff designs, the defendants were required to be restrained by injunction
order from design infringement of plaintiff. It was also alleged that the expenses in the
incurred in sales promotions by the plaintiff is in lacs. The high quality and the labour
expenses also run into crores. While even knowing about the registered design of
plaintiffs, market and reputation, the defendants caused an injury to plaintiffs business
as well as goodwill.
The defendant 1 filed an affidavit stating that the plaintiff’s registration for design is
invalid – the D shaped design is neither original to the plaintiff and nor new in
pharmaceutical products. It was a reproduction of the English alphabet which could
also represent a semi-circle and can be published in any tangible form and not
distinguishable from known designs thereby prohibited from registration. Also, Pfizer
Ltd had published D shaped design back in 1956 which dismisses plaintiff’s claim of
being an originator.

Analysis:
As per section 4 of the Designs Act 2000, the following designs cannot be registered:
· Is not new or original
· Has been disclosed to public anywhere in India in tangible form
· Distinguishable from known designs
· Comprise obscene matter
The plaintiff’s design is not registrable since it is disclosed in public domain. The
defendants thus filed for registration cancellation.
The test for ascertaining the similarities in designs is that the two designs have to be
judged by the eye and each design has to be compared to a whole with all its
component features. In the case, even though the plaintiff's design is regarded as been
inspired by previous designs, there is a novelty brought in constituting a new design.

Judgement:
In its judgment the Gujarat High Court held that although the ‘D’ shaped design was not
new or original in the ordinary sense it was original in the eyes of the law i.e. the Court fell
back on English case-law to rule that the new application of a known design would classify
as original and would be entitled to protection under the Designs Act. In this case although
‘D’ was a known design its application to tablets was novel and hence capable of being
registered under the Designs Act.
Surprisingly the judgment makes absolutely no mention of the statutory definition of
‘original’ which is as follows: “original”, in relation to a design, means originating from the
author of such design and includes the cases which though old in themselves yet are new
in their application. The second argument which held a lot of promise was flatly rejected
by the Court on evidentiary grounds i.e. the defendants only submitted photographs and
failed to submit the actual tablets themselves. Since the Court was convinced that there
 would not be an irreparable damage to the defendant by the grant of the injunction the
Court proceeded to grant an interlocutory injunction in favour of the plaintiff.

Conclusion:
While it was not modern or unique in the ordinary sense, the 'D' shaped concept was
original in the eyes of the law. While 'D' was a known design, it was novel in its
application to tablets and thus able to be registered under the Designs Act. The test to
decide if the two designs are similar is that the designs must be tested by the eye and
that any design must be compared.

8. Bharat Gas Tubes vs Gopal Glass Works Ltd

In this case of Bharat Gas Tubes vs Gopal Glass Works Ltd the Supreme Court upheld
the decision of the single judge of the Calcutta High Court to reverse an order passed
by the Asst. Controller of Patents cancelling the registration of a design by the
respondent under the Designs Act

Case Facts:
The respondents – Gopal Glass Works – had registered their designs for diamond
shaped glass sheets (pictured above left) under the Designs Act, 2000 and were
granted a certificate of registration for the same in the year 2002 in a record 6 days!
The respondents therefore acquired the sole right to manufacture and market the glass
sheets in the design that was registered in their names. The appellant however started
marketing his glass sheets with the same design. The designs that were formed on the
glass sheets were formed by engraved rollers which were developed by a German
Company which had licensed all Indian rights to the respondent.

On learning that the appellants were manufacturing glass sheets in the same protected
design the respondents moved Court for an interim injunction which they were granted
following which the appellants moved the Asst. Controller of Patents for cancellation
of the respondents design on the ground that it already been published by the German
Company in the year 1992 as was evidenced by a letter produced from the German
Company and also that the design had been published on the website of the U.K
Patent Office by another company which had sought for design protection. The
respondents countered by pointing out that the German Company manufactured only
the engraved rollers and not the glass sheets. They contended that the engraved
rollers could then be applied to a wide variety of material from glass sheets to plastic
and that their registration for design protection under Class 25-01 was for the
application of that design to glass sheets.

Analysis:
The Asst. Controller of Patents found merit in the appellant’s contentions that the
respondents design was not new or original since the German company had been
manufacturing the engraving rollers with the same design since 1992 and also because
the design had already been published in the U.K. Patent Office Website by another
German Company and thus the registration of the respondent’s design was cancelled
since it did not meet the requirements of originality laid down by Section 4. When the
matter went on appeal to the High Court the single judge over-ruled the Asst. Controller
of Patents and restored the design to the respondents. The Appellants then appealed
against this decision to the Supreme Court.

Judgement:
In its decision the Supreme Court accepted the respondent’s distinction between the
design on the engraved rollers and the glass sheets. The Court noted that under
Section 2(d) design means the application of shape, configuration etc. to any article
and since in this case the respondent had specifically mentioned in the application
form that he was applying the designs only to glass sheets, he would have exclusive
rights to do so despite the fact that the design already existed on the engraved rollers.
On the question of whether the design was new and original the Supreme Court held
that the appellant had failed to establish that the design had already been published.
The publication of the design on the U.K. Patent Office Website was dismissed since
it did not clearly establish that the designs in question had been applied to glass sheets
and also because on a visual comparison the designs did not match each other. The
appeal was therefore dismissed and the registration of the design was restored to the
respondent.

Conclusions:
Supreme Court did not simply dismiss the appeal on the basis of the statutory definition
of original which is as follows: “original”, in relation to a design, means originating from
the author of such design and includes the cases which though old in themselves yet
are new in their application. The Court could have simply held that the German designs
were on rollers and any novel application of this design to new articles was eligible for
protection. Ultimately the Court’s decision was on similar lines but it unnecessarily got
itself tangled up in the statutory definition of ‘design’ without a single mention of the
statutory definition of ‘original’.
Resources:
 https://blog.ipleaders.in/a-critical-analysis-of-design-protection-in-india/
 All you need to know about the Salient features of the Design Act, 2000 (ipleaders.in)
 des_act (ipindia.gov.in)
 https://www.ebtc-project.eu/index.php/knowledge-centre/sector/ipr/184-ipr/ipr-
landmark-cases/184-landmark-cases-design-act
 designs act doctypes: judgments (indiankanoon.org)
 https://indiancaselaws.wordpress.com/2014/09/11/mattel-inc-and-others-v-jayant-
agarwalla-and-others/
 https://spicyip.com/2008/12/drawing-line-between-copyrights-and.html
 https://spicyip.com/2012/10/novelty-of-design-tarun-sethi-v-vikas.html