Welcome to Part 3 of “Deciphering India’s Design Law: A Series on Noteworthy Judgments,” presented by BananaIP Counsels. In this continuation of our in-depth exploration into Design Patents in India, we provide succinct notes on various judgments, grounded in meticulous analysis and aimed at demystifying the intricacies of the legal outcomes. Engage with us as we traverse through the legalities, providing clarity and understanding on pivotal rulings and their implications for design law within the nation.
Novelty test:
Mug, Tub, and Bucket Designs registrations are prima facie not valid, says Delhi High Court.
In a case involving registered designs relating to tub, mug, and bucket held by Jayson Industries, the Delhi High Court held that Crown Craft, the defendant, had made a credible challenge to the validity of the design. As the prior publications submitted by the defendant made the vertical ribs and the products flanges prima facie not novel and original, the Court refused an interlocutory injunction in favour of Jayson Industries. The Court in the case reiterated important principles relating to prior publication stating that to be a valid publication, the publication must disclose the design by way of use, in a tangible form, or any other manner. It pointed out that a single publication must negate the novelty and originality of the design, and substituting trade variants would not make a design novel. The Court warned against mosaicing of prior art references to negate novelty and originality.
Citation: Jayson Industries and Ors. Vs. Crown Craft (India) Pvt. Ltd. [CS (COMM) 580/2022, I.A. 13422/2022 and I.A. 13425/2022]
Design marking:
Design Marking is required to claim damages, but cannot be the basis for rejection of the plaint, says Delhi High Court.
In a case involving registered designs over rubber stamping machines, the defendant filed an application to dismiss the plaint on the ground that the products were not marked, and no notices of design registration were incorporated. The defendant argued that if products are not marked, the plaintiff cannot claim damages, and therefore, the plaint must be rejected. Agreeing that not marking or taking steps towards marking is important, the Court opined that lack of design notices on products cannot be the basis for rejecting the plaint as other remedies may be claimed by the plaintiff, and as facts have to be ascertained on trial.
Citation: Trodat Gmbh & Anr Vs. Addprint India Enterprises Pvt Ltd [CS(COMM) 737/2022]
Payment of consideration for design services:
True Value Homes asked to pay for the utilization of architectural design services.
In a case between Jens Bothe, an architect from Germany, and True Value Homes, the Madras High Court held that True Value Homes is liable to pay the full agreed consideration for concept designs, and half of the consideration for unutilized architectural design services. True Value Homes had engaged the services of an architectural company from Germany for an IT Project at Kandanchavadi and the Twin Towers at MRC Nagar. One of the towers at MRC Nagar was to be occupied by Sun TV. After concept designs were shared, True Value Homes failed to pay as agreed under the contract, which the Madras High Court held amounts to a breach of contract. The Court ordered True Value Homes to pay the pending compensation with interest.
Citation: Jens Bothe Vs. True Value Homes (India) Pvt. Ltd.[ C.S. No.710 of 2008]
BananaIP Counsels values the engagement and discerning readership of our audience throughout this analytical series. The cases scrutinized in this segment mirror the ongoing dynamism within India’s design patent landscape, encapsulating various aspects and critical viewpoints that shape the legal doctrine. We look forward to continuing this enlightening journey, deciphering and contextualizing further judgments and legal nuances in our upcoming editions, and steadfastly contributing to the discourse on Intellectual Property Law in India.
For more information about BananaIP’s Design Patent services visit – https://www.bananaip.com/industrial-designs/
