Registered Design Owner can also be held Liable for Design Infringement

(The content of this post was first published in the ILS Abhivyakti Law Journal and is reproduced here with due permission) 

Whirlpool of India Ltd. v. Videocon Industries Ltd.[1]

Ritvik M. Kulkarni, III BSL LLB, ILS Law College, Pune

Both Whirlpool and Videocon are engaged in the business of manufacturing home appliances in India. Whirlpool contended that Videocon’s ‘Videocon Pebble was an exact replica of its washing machine model, for which it had design registration. Videocon argued that it had also procured registration for its design for ‘Videocon Pebble’; and that a registered design owner cannot be sued for piracy of a design.

Whirlpool argued that on a plain reading of the words “any person”s. 22 of the Designs Act, 2000 (the Act),[2]  includes even a registered proprietor. It contented that if the legislative intent was to exclude registered proprietors, then the Act would have expressly mentioned such exclusion;as can be found under s. 29 of the Trademarks Act, 1999 which deals with the  infringement of a registered trade mark.

Videocon argued that since s. 11 grants a monopoly right to use its registered design, it cannot be sued for piracy. At best, Whirlpool could challenge the validity of the design before the Controller under s. 22(3) of the Act.

Ruling  in favour of Whirlpool, the Court held that a registered proprietor could indeed be held liable for piracy of another’s registered design. Since Videocon obtained registration after Whirlpool did, it could not invoke its registration as a defence. The Court observed that the monopoly right granted under s. 11 was not being absolute, but subject to all other provisions under the Act, including s. 22.

After comparing the visual features of the two products (the washing machines were literally brought to the Court for inspection), the Hon’ble Court concluded that Videocon certainly infringed Whirlpool’s registered design. Since the Defendant’s product was an obvious imitation of that of the Plaintiff’s, the Hon’ble Court upheld the latter’s action for passing off as well and granted an injunction against Videocon restraining it from making or selling the impugned product.

The Court has therefore made it amply clear that one cannot get away by simply procuring a registration for an inherently infringing design.

[1] NM No. 2269 / 2012  in Suit No 2012 / 2012 decided on 27 May, 2014 by Bombay High Court.

[2]22. Piracy of registered design.

(1) During the existence of copyright in any design it shall not be lawful for any person

(a) for the purpose of sale to apply or cause to be applied … the design or any fraudulent or obvious imitation thereof, …;
or …
(2) If any person acts in contravention of this section, he shall be liable for every contravention-

(a) to pay to the registered proprietor … a sum … recoverable as a contract debt, or
(b) … to pay such damages as may be awarded and to be restrained by injunction accordingly:

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