INDIA - High Court holds 'article' under the Designs Act must be capable of independent existence

In a move that may have notable ramifications on the registration of designs in India, the Hon’ble Delhi High Court, in HERO MOTOCORP LIMITED v. SHREE AMBA INDUSTRIES (CS(COMM) 1078/2018 & I.A. 11007/2018), dismissed an application for grant of interim injunction filed by HERO MOTOCORP LIMITED (hereinafter referred to as ‘the Plaintiff’) seeking to restrain SHREE AMBA INDUSTRIES (hereinafter referred to as ‘the Defendant’) from infringing their registered design.

The Plaintiff, a leading two-wheeler automotive company, was involved in the business of manufacturing and selling of automobiles, spare parts, fittings and accessories thereof. The Defendant was engaged in manufacturing and selling spare parts of two-wheeler motorcycles.

The dispute pertained to the sale of front fenders by the Defendants which were identical to the registered design of front fenders of the Plaintiff for their “HERO HF DELUXE” motorcycle.

The Defendant contended that the Plaintiff’s registered design of the front fender was neither new nor original, hence, not registerable under The Designs Act, 2000 (hereinafter referred to as ‘the Act’). They averred that said fender was not an ‘article’ within the meaning of Section 2(a) of the Act. Further, they alleged that the design of the fender had been advertised by the company before the registration, making it a prior publication. On the other hand, the Plaintiff affirmed that the front fenders were ‘articles’ within the meaning of Section 2(a) of the Act, and claimed design infringement of the same. They asserted that registration of the design was itself prima facie evidence of its validity.

Elucidating that the purpose of enacting the Act was to protect new and original designs by giving exclusive rights over such designs to their inventors, the Hon’ble High Court examined the validity of the registered fenders under the provisions of the Act, and analysed the scope of the term “article” under Section 2(a).

Discussing various provisions of the Act along with judicial precedents and comparing the definition of the term ‘article’ under the Indian law with that of the UK law, the Hon’ble High Court reaffirmed the test of independent existence (as laid down by the House of Lords in Ford Motor Co. Ltd.’s Design Applications) for qualifying as an ‘article’ under the Act, and emphasized that the expression “made and sold separately” implies that an article has to have an independent life as an article of commerce and not merely as substitutes/accessories.

The Hon’ble Court clarified that, in contrast to the provision of the Trade Marks Act, 1999 under Section 31, according to which registration is prima facie evidence of validity, there is no prima facie presumption with regard to validity of a design on account of its registration.

The Court observed that the fender was an external part which was visible to the viewer. It had no independent life as an article of commerce in itself, but was specifically made for the Plaintiff’s motorcycle ‘HERO HF DELUXE’ and could not fit into any other motorcycle.

Hence, the Hon’ble High Court opined that the fender, sold as a replacement part of a motorcycle, and not independently, was not an article in itself under Section 2(a) of the Act, and consequently, the Plaintiff’s front fender design was incapable of registration under Section 2(a) of the Act.

This decision also reflects the High Court’s intention to restrict monopoly in favour of the Original Equipment Manufacturers (OEMs), and prevent dictation of prices thereof, thus, promoting competition and fostering consumer interests.