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:

Copyright vs. Design: Where Does One End and The Other Begin?

Ritvik M. Kulkarni, III BSL LL, Law College, Pune

A few days ago, I came across a beautifully written article in Loksatta Newspaper titled “Kaleysaathi ki Vyaparasaathi?” (translated: For Artistic Pleasure or For Business Exploitation?), written by Professor Dr. Mrudula Bele. Dr. Bele is an Assistant Professor at the NDMVPS’s College of Pharmacy in Nasik at Maharashtra. She is also a pharmaceutical development scientist and patent consultant

 In her article dated 21st May 2015, Dr. Bele has discussed inter alia the difference between the nature of copyright protection and design protection. She has very succinctly explained the theory behind affording protection on varied terms depending upon the nature of intellectual property. She has stated that while copyrightable works are created from an artistic intent, other industrial works are created with a view to exploit them and gain profit. Furthermore, copyrighted works in any case are commercially much weaker than its industrial counterparts. For this reason, copyrightable works are afforded stronger protection in terms of the period of protection.  

On this note I have taken the opportunity to discuss a few points in relation to the landmark case of Microfibres v. Giridhar and Co.[1] (“Microfibres”) cited and discussed by Dr. Bele in her article.

A design right can be best described as an amalgamation of trademark, patent and copyright. This is because the function of a design is to appeal to the eye of the onlooker; thereby allowing the product (carrying the design) to assume a distinctive feature. Such distinctiveness is most likely to be achieved for a design as it is mandatorily required to be a new design. However, Indian design law does not protect a design if it is functional or it has utilitarian features; it aims to protect only the ornamental properties therein. And unlike copyright, a design must be compulsorily registered to be protected under the Designs Act, 2000; there is no common law remedy of passing off to protect against design piracy.

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