Trade Variants Of Existing Design May Not Be Sufficient To Claim New Design Protection
Recently in the case of Philips Lighting Holding B.V. v. Jai Prakash Agarwal And Anr.[1], the Delhi High Court refused to grant an interim injunction in favor of the Plaintiff with regards to their claim on design infringement and passing off.
The Plaintiff is a leading manufacturer and seller of energy efficient lighting products, systems, and services such as home lighting, stage lighting, studio lighting, etc. The Plaintiff also claims to have developed several innovative lighting solutions with Light Emitting Diodes (“L.E.Ds”) at the forefront. The Plaintiff filed the present suit claiming protection of its registered design rights in its “T-shaped LED Bulb” (referred to as the “T-Bulb”). They further claimed that the Defendants were attempting to pass off their goods as the Plaintiff’s.
The Plaintiff claimed that the novelty in its design is related to its unique “T-Shape” and “plug and play format” and the fact that these bulbs do not have any holders on the side. The Plaintiff further alleged that this unique shape allows its T-Bulbs to provide better focus lighting. The Plaintiff further claimed that it is the original equipment manufacturer (“O.E.M”) for several lighting companies in India which procure the T-Bulb from them and sell the same under their trademarks/brand names subject to a license or a fee.
In light of the above, the Plaintiff sought an injunction stating that the Defendants’ products were copies of the T-Bulb hence infringing their registered design rights. Further, the Plaintiff claimed passing off based on a deceptively similar look, feel, and trade dress of the Defendants’ products.
On the other hand, the Defendant argued that the Plaintiff’s design registration itself is liable to be canceled on the basis of similar design registrations in India even before the Plaintiff’s registration. It is pertinent to note that the Plaintiff claimed priority registration in lieu of its EUIPO registration made in 2015. However, the Defendants contended that the actual date of registration of the EUIPO design was 8th May, 2017 and not 8th May 2015 and the Plaintiff has claimed the wrong priority date with mala fide intentions.
Decision
The Court observed that the designs of the T-Bulb of the Plaintiff and those of the Defendants were “similar, if not identical”.
The court also noted that the date of registration claimed by the Plaintiff in the plaint was a mere typographical error and was not sufficient enough to disentitle them to protection. However, despite this, the Court stated that the Plaintiff had failed to make out a prima facie case in its favor. It was observed that the Defendants were prima facie able to show other design registrations keeping the 2017 registration date in mind.
The Court stated that, “the test to determine if the design is “new‟ or “original‟ inter-alia is to determine and exclude ordinary trade variants into an old design. A design identical with or even materially similar to the relevant design should not have been published or registered previously. A slight trivial or infinitesimal variation from the pre-existing design shall disqualify the relevant design for registration. The change introduced should be substantial.” Applying this test to the present case, the Court found that the Plaintiff’s design is merely a trade variant of an already registered and existing design, as cited by the Defendants.
The Court also concluded that “publication” is a question of fact based on evidence. The mere existence of a design on record in a convention country may not amount to prior publication on its own.
Furthermore, with regards to the claim of passing off, the court stated that the Plaintiff had failed to make out a prima facie case in its favor even under trademark law. The Court explained that the Plaintiff itself had pleaded that several lighting companies in India were using the Plaintiff as an O.E.M and selling their products under their own trademarks and brand names. Therefore, the Court stated that “the design itself cannot be enough to attribute a connection of the product with the plaintiff for it to maintain a claim of passing off.” In addition, the Court also explained that the Plaintiff had failed to meet the trinity test for passing off since it could not prove the other two elements; balance of convenience and irreparable harm.
Conclusion
Therefore, refusing to grant an interim injunction in favor of the Plaintiff on the grounds of design infringement or passing off, the Delhi High Court has shed clarity on a claim for design infringement. It has clearly been established that a mere trade variant to an existing design may not be sufficient to establish protection under design law.
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