Can a tractor fitted with a forklift be considered as a new vehicle? Can such a vehicle be the subject of design registration? The Madras High Court was recently called upon to decide on the very issue vis-à-vis a claim of industrial design infringement.
Facts of the case:
Mr. G. Raghu Babu (Plaintiff) filed a design application with the Indian Intellectual Property Office (IPO) on 13.09.2017 for an article titled “Forklift Vehicle” under class 12-05, which deals with “elevators and hoists for loading or conveying”. The Plaintiff claimed novelty over the shape and configuration of the Forklift Vehicle which was eventually accepted and registered by the IPO on 12.08.2018 as Design No. 297504.
In December 2018, the Plaintiff came across the same article being manufactured and sold by the Respondents – Baskar and Suresh. The Plaintiff then issued notices to the Respondents asking them to stop making use of the registered design. Based on the responses received from the Respondents, the Plaintiff approached the Trial Court for an injunction. After considering the pleadings of the parties, the trial court issued an injunction against the Respondents. Aggrieved by the injunction, the Respondents filed a Civil Miscellaneous Appeal before the Madras High Court.
Plaintiff’s submissions
The Plaintiff submitted that he had produced sufficient documents including the ‘Certificate of Registration’ to show that his design had been registered. Since the respondents had violated and continued the violation, the Trial Court had rightly ordered the injunction against the Respondents.
Respondent’s submissions
The Respondents argued that the design registered by the plaintiff was neither new nor novel. The design was a simple modification of a tractor retro fitted with a forklift. The Respondents submitted that tractors have been used since several years with different kinds of attachments for tilling, ploughing, planting, harvesting, transporting etc. Furthermore, the Respondents do not manufacture or sell tractors with these attachments. They run a lathe and provide their services to fit various machines and other agricultural tools to a tractor.
Courts Analysis and Findings
The Court noted that the Plaintiff was neither the manufacturer of the forklift nor the Tractor. He was simply offering the service of attaching the forklift to the tractor. The Plaintiff’s business involves attaching various heavy machinery tools to a tractor. While the tools change, the tractor remains the same. In this case, although the Plaintiff managed to obtain a design registration, the Court opined that the design itself was neither novel nor innovative, since the act of attaching various agricultural tools to the tractor could not be termed as an innovative design.
Considering that the design claimed by the Plaintiff was not significantly distinguishable from known design or combination of known designs, the Plaintiff’s design could not be said to be “new and original”. Since the Plaintiff was unable to establish a prima facie case, the court decided to vacate the trial court’s order for injunction. The court however chose not to expressly revoke or cancel the design and allowed the parties to contest the validity of the registration during trial.
Citation: Baskar vs G. Raghu Babu, C.M.A. Nos. 2881 and 2883 of 2021, Madras High Court. Decided on 22.04.2024.
Authored by Gaurav Mishra, IP Attorney, BananaIP Counsels
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
If you have any questions, or if you wish to speak with an IP expert/attorney, please reach us at: [email protected] or 91-80-26860414/24/34.
