This post provides some important Industrial Design cases decided in India in 2019. It is noteworthy that some important principles with respect to design protection and interface with trademark protection have been laid down during the year.
Super Smelters Limited and Ors. Vs. SRMB Srijan Private Limited, MANU/WB/2975/2019.
Decided On: 18.12.2019
Court: Calcutta High Court
In this case, the Division Bench of the Calcutta High Court upheld the decision of the Single Judge to grant ad interim injunction in favour of the Respondent, restraining the Appellants from passing off its X ribbed TMT bars. The Court concluded in the case that there was no need to interfere with the Single Judge’s judgment as it was not arbitrary, capricious or perverse in any manner. While arriving at its conclusion, the Court expounded the law with respect to protection of trademarks and designs over shape of articles or products. It pointed out that functional shapes of goods cannot be protected as trademarks or designs. However, if the shape has ornamental elements in addition to the functional elements, the shape is protectable as trademark as well as design. According to the Court, the existence of functionality in a shape does not deprive a shape of trademark or design protection. The question is not whether the function is achievable from a shape or a few given shapes, but whether the shape has aesthetic and non-functional elements.
An action for passing off of a trademark may be based on common law trademark rights in shape of goods. Cancellation or expiry of industrial design protection does not deprive the trademark owner of trademark rights over his product based on shape. In other words, industrial design and trademark protection over shape are independent of each other, and may co-exist with each other. The Court stated that the X ribbed TMT bars did not lose trademark protection after cancellation of design registration as the cancellation was not related to the shape and its relationship with functionality of the bars.
Lucky Exports Vs. The Controller of Patents and Designs and Ors., MANU/WB/1173/2019.
Decided On: 10.05.2019
Court: Calcutta High Court
The Court in this case set aside an order rejecting the application for cancellation of a registered design pertaining to Coaster Brake Hub Sub-Assembly because the Controller had not determined whether the design possessed aesthetic appeal, and did not consider novelty, originality and prior publication for determining registrability. The Court stated in the case that the design of a sub-assembly that forms part of the Coaster Brake Hub can be registered if it is capable of being made and sold independently. It further pointed out that a design may be protectable if some of its features appeal to the eye even if the design is functional. A mere mechanical device is not protectable if the design is purely functional, but if it has features, which are not functional, it is registrable as a design. The Court stated that if a design appeals to the eye, and if what appeals to the eye can be separated from its function, a design is protectable.
International Cycle Gears Vs. The Controller of Patents and Designs and Ors., MANU/WB/1174/2019.
Decided On: 10.05.2019
Court: Calcutta High Court
On a petition for cancellation, the Controller cancelled a design pertaining to “Coaster Brake Hub” based on prior publication and functional features. A design called Russian Model, which was similar to the registered design was published in Velo Bike Special Issue before date of filing by the design holder. On a comparison of the two designs, the Court felt that the designs were similar, and that the prior published Russian Model anticipated the design in question from the point of view of a prudent person. The Court in the case cited several judgments pertaining to novelty, originality and aesthetic appeal.
Crocs Inc. USA Vs. Bata India Ltd. and Ors., MANU/DE/0309/2019.
Decided On: 24.01.2019
Court: Delhi High Court
In this case, Crocs sued Bata and others for infringement of its registered sandal designs, and passing off of its trademarks in shape and configuration of its foot wear. The Division Bench of the Delhi High Court did not interfere witht the single judge’s order denying the interim injunction to Crocs as the design registration was prima facie liable to be cancelled based on prior publication and novelty. As the designs were published on Crocs’ website before the filing date of the design application, the Court held that the validity of the design registration was in question based on previous publication. Also, as the designs claimed were mere modifications of pre-existing designs, the Court stated that novelty of the designs was in question. The Delhi High Court also upheld the grant of legal costs to the defendants in the case. Furthermore, the Court ordered the single judge to hear the passing off cases along with the registered design cases as they were based on the same cause of action.
