Delhi High Court analyses the validity of a design; holds the defendant liable of design piracy

In a recent case, in TTK Prestige Ltd vs. KCM Appliances Pvt. Ltd. [CS(COMM) 697/2022], the Delhi High Court vide an order dated 13th April 2023 held that the design of the defendant's pressure cooker, on the surface level, appeared to infringe the design of the plaintiff's pressure cooker, thus establishing a preliminary case of design piracy.

The present suit was instituted by the plaintiff alleging that the defendant committed design piracy under Section 22(1) of the Designs Act, 2000, by infringing on Design No. 324727-001, which had been registered for a "Pressure Cooker with Container and Lid (Set) for Household" on July 1, 2020, with effect from December 13, 2019.

Therefore, the plaintiff sought a permanent injunction against the defendant from manufacturing, selling, or dealing in pressure cookers that were fraudulent or obvious imitations of their design. Delivery up, rendition of accounts, costs and damages had also been sought.

The following were the main arguments advanced by both the parties:

Arguments advanced by the Plaintiff:

· The plaintiff claimed that their design had aesthetic and practical advantages over regular flat lids and the Defendant’s product infringed upon their suit design, leading to what they considered to be "piracy" as defined by Section 22(1) of the Designs Act.

· The plaintiff argued that their pressure cooker design had gained popularity among consumers for its unique appeal and had made tremendous sales on promoting their product.

· The plaintiff contended that the lid of their suit design had both aesthetic and utilitarian advantages, making it eligible for both design and patent registration. They had filed an application, numbered 201941025068 dated 24th June 2019, seeking a patent for the pressure cooker and the outer lid. This application was pending examination before the Controller of Patents. The plaintiff asserted that the application for a patent did not affect the registration of the suit design in any way, as their product was not only utilitarian but also had aesthetic appeal.

· The plaintiff accused the defendant of copying their suit design, including the unique lid. They argued that the defendant's product name, "smart spillage control," was evidence of this imitation. The plaintiff claimed that, as the originator and inventor of the design, they were entitled to exclusivity and protection against infringement.

Arguments advanced by the Defendants:

· The defendant provided a detailed tabular comparison of the two products to demonstrate that there was no similarity between plaintiff's and defendant's pressure cookers, and denied any possibility of confusion or deception.

· The defendant claimed that the plaintiff's suit design was not eligible for registration as it was published before the date of application, citing Sections 22(3) and 19(1)(b) of the Designs Act. A video uploaded on the plaintiff's YouTube channel on November 11, 2019, allegedly showed the design, and thus the defendant sought cancellation of the registration.

· The defendant argued that the plaintiff cannot claim novelty and originality of the suit design as they had already launched their range of pressure cookers with a unique lid design prior to the application for registration. The defendant alleged that the plaintiff was obligated to disclose their earlier models of pressure cookers that fulfilled the function of spillage control.

· The Defendant further argued that the suit design was purely functional and therefore not entitled to registration under clause (e) of Section 19(1) read with Section 2(d) of the Designs Act. The defendant contended that customers would buy the pressure cooker for its functional utility in spillage control, rather than its aesthetic appeal. It was further argued that the dominant feature of the design was functional, making it ineligible for registration as a design under the Act.

· The defendant further asserted that granting exclusivity to commonplace designs like the suit design would cause chaos in the market and unduly impact the industry.

Court’s Analysis:

1. The challenge to validity of the suit design on the ground of prior publication and want of novelty and originality

a. The Hon’ble Court noted that the defendant's attempt to invoke Section 19(1)(b) and Section 4(b) based on the YouTube video uploaded by the plaintiff was invalid. These provisions only apply if the suit design had been published prior to its registration, which was not the case here. The design of the pressure cooker in the YouTube video was different from the suit design, so there was no case of invalidity due to prior publication.

b. The Hon’ble Court found that Section 6(3) of the Designs Act would not apply because it only applies when the earlier and later designs are the same. This provision allows for registration of the same design for other articles in the same class without invalidating the earlier registration due to prior publication or lack of novelty.

c. The Court observed that the defendant’s reliance on Section 6(4)(b) was incorrect as this provision only applies when the design being registered has either been registered by someone else or consists of a previously registered design with minor modifications or variations. Since both registrations in the present case were by the same person, this provision had no application.

d. The Court found that the difference in shape and configuration of the lids of the suit pressure cooker and the pressure cooker advertised in the YouTube video was too marked to be attributed merely to trade variants. Although both lids had a central depression for collection of froth, the outer surface of both lids were completely different in shape. Therefore, two lids that were completely dissimilar in shape could not be regarded as justifying a finding of want of novelty and originality in the later lid, vis-à-vis the earlier lid. The Court noted that the conscious difference in the design of the lid between the earlier pressure cooker advertised in the YouTube video and the pressure cooker manufactured based on the suit design was a deliberate act on the part of the plaintiff. Thus, prima facie, the Court was convinced that the pressure cooker forming the subject matter of the suit design did not suffer from want of novelty or originality when compared to the pressure cooker advertised in the YouTube video.

The Court, therefore, prima facie, found no substance in defendant’s contention that the suit design was liable to be invalidated either on the ground of prior publication or on the ground of want of novelty and originality vis-à-vis prior art.

2. Re. allegation of functionality

· The Court noted that the defendant’s argument that the customers would buy the pressure cooker with the suit design not for its aesthetic attributes, but solely for its functional attribute of spillage control was rejected in the case of Castrol India Ltd v. Tide Water Oil Co. (I) Ltd [(996) 16 PTC 202], where it was held that a design's functional improvements or unique attributes do not negate its aesthetic value and contribution to its saleability.

· The Court noted that in comparison with a regular flat lidded pressure cooker, the pressure cooker subject to the suit design had clear aesthetic qualities. The Court noted that in the case of Crocs Inc. v. Bata India Ltd [(2019) 78 PTC 1], the novelty of the footwear design was found to reside in its ugliness and therefore, the subject product was entitled to registration based on eye appeal, irrespective of the degree thereof.

3. The aspect of piracy/infringement

Upon examination, it was found that the shape of the container and lid of the defendant's Pressure Cooker was similar to the shape of the suit design. The only differences between the two were trade variants and functional differences due to the different capacities of the pressure cookers. Other differences, such as minor changes in the shape of the handle, base, and width of the raised wall of the lid, were found to be insignificant compared to the overall shape and configuration of the pressure cooker and the lid, which imparted novelty to the suit design.

The Court found that the defendant had unmistakably taken the idea of the central depressed portion of the lid for collection and evaporation of froth from the plaintiff's design, resulting in spillage control. There was no evidence of any other source from which the defendant borrowed this idea. Hence, the Court found it to be a clear case of piracy.

The Hon’ble Court concluded that the challenge to the validity of the registration of the suit design was without merit, and the suit design couldn’t be considered invalid solely on the basis of being purely functional. The Court also found that the design of the defendant's Impex Dripless pressure cooker infringed upon the suit design, indicating a clear case of design piracy.

Held:

The defendant was ordered to refrain from manufacturing or selling its Impex Dripless pressure cookers or any other pressure cookers that infringe on the plaintiff's suit design. Any references to such designs were ordered to be removed from all physical and virtual platforms. The defendant was also ordered to contact e-commerce platforms and request that they discontinue the sale of pressure cookers with the infringing design and make all reasonable efforts towards this end and provide evidence of such efforts within two weeks.

Key takeaways:

· The Designs Act aims to protect novel and original designs for the benefit of the creator who put in time, research, and labour to conceive it.

· The definitive test of a valid design is its ocular appeal, but the Court should not apply its subjective standards while examining it.

· The Designs Act does not protect principles of operation or invention, which are subject matters of patent protection.

· A design is not intended to stand on its own as an artistic work, and must be embodied in a commercially produced artefact to be protected under the Designs Act.

· The Court must be guided by the definition of "article" and "design" in clauses (a) and (d) of Section 2 of the Designs Act. A design is defined as the features of shape, configuration, pattern, ornament or composition of lines of colours applied to any article, and cannot be a mere concept or idea.

· The burden of proving that a design is not entitled to registration due to lack of novelty or originality is on the person making the claim.

· Prior publication cannot be asserted solely on the basis of a drawing or representation of a design without evidence that it was applied to an article. The Court must assess the existence of prior publication or novelty and originality vis-a-vis prior art on the basis of a design that had been applied to an article.

· Prior publication can only be used to challenge the validity of a design if it pertains to the design itself and not merely a similar design. The publication must be in a tangible form, use, or any other way, and it must enable the Court to visualize the article to which the design is intended to be applied.

· The design should not be merely on paper or in a document, but it should be recognizable and have the same impact on the public as a finished article would have when judged solely by the eye.

· Publication of a design can occur through prior use, selling or displaying articles to which the design has been applied, or paper publication.

· Prior publication of an earlier design by the proprietor of an existing design does not affect the novelty or validity of the existing design.

· Proprietors of a registered design can apply for registration of the same design or a modified version in respect of another article, without destroying the protection of the existing design.

· A design that exists in the public domain but is applied to an article in a new manner can be considered novel and eligible for registration.

· It is not necessary for the design to be completely new, and the manner in which the design is applied to the article should be apparent from the representation of the design cited as prior publication.

Conclusion:

The court's decision highlights the importance of careful examination and comparison of designs to determine infringement. It establishes that even minor differences in shape and configuration may not negate the novelty of a design. The court's ruling in favor of the plaintiff reinforces the exclusivity and protection granted to creators of designs, discouraging imitation and ensuring the rights of design owners.