Design Piracy | Overall Impression Of Design Is What Matters, Trade Variants And Miniscule Differences Can Be Ignored: Delhi High Court

In a design infringement suit by Havells, the Delhi High Court on Wednesday observed that when examining the aspect of design piracy from the point of view of visual appeal, it is the overall impression of the design of the defendant's product, vis-à-vis the suit design, that matters. “…it is the overall shape and configuration which matters. The Court is not supposed to fragment the shape or configuration of the suit design into minor individual elements and start measuring lengths and breadths in order to arrive at a finding regarding imitation/similarity.” Justice C Hari Shankar further opined that a court is not prohibited from viewing the actual product corresponding to the suit design when examining the aspect of piracy, as the idea is to consider the suit design as applied to an article, not in abstract. This, however, is subject to there being no dispute that the product produced in court corresponds to the design registration. “…pictorial or photographic depictions may not, in every case, enable the Court to arrive at a correct visual impression of the suit design”. The suit had been filed by Havells alleging infringement by defendant/Polycab of 3 of its registered designs pertaining to ceiling fans. The models underlying these registrations were ENTICER (2016), BIANCA ART (2021) and BIANCA ART-SANGANER (2022). Havells sought inter-alia a decree of permanent injunction against Polycab's ELANZA and ELEGANZ PLUS range of fans, which allegedly infringed its 2016, 2021 and 2022 suit designs. Polycab, on the other hand, sought vacation of the interim order granted earlier in favor of Havells. Referring to the Supreme Court's decision in Bharat Glass Tube Ltd v. Gopal Glass Works Ltd., Justice Shankar reiterated that Designs Act protects the “novelty” and “originality” residing in the registered design. While summarising the principles crucial to determination of whether piracy has taken place, it was mentioned, “…there is a significant difference between the test to be applied while assessing the validity of a registered design as being novel or original, and that to be applied when examining whether another design infringes it. Novelty and originality has to be tested by examining whether that design has earlier been applied to the article to which it is intended to be applied.” Undertaking an analysis under Section 22(1)(a) of the Designs Act, the court explicated that integrity of a design lies in its visual or eye appeal. As such, courts must examine piracy matters from the point view of visual aspect or eye appeal, “keeping in mind the features of the plaintiff's design which have been certified as novel and original while granting registration to it.” It was added that minor trade variants, or miniscule differences, are to be ignored when examining either piracy of a registered design by another, or novelty of a registered design vis-à-vis prior art. Further, it was observed that to oppose the relief of injunction, the defendant is only required to raise a credible challenge to the validity of the plaintiff's design. The principle being applicable to patents, Justice Shankar said, there is no reason why it must not apply to designs as well. On comparing Havells' 2016 suit design and physical samples of its ENTICER model, with Polycab's ELANZA range, the court concluded that they were practically the same. Since registration of the 2016 suit design certified novelty as residing in the overall shape and configuration of Havells' fan, the focus was maintained on testing whether shape and configuration of Polycab's ELANZA range, on eye/visual appeal, was imitative or not of the suit design. Prima facie merit was also found in Havells' contention that Polycab consciously imitated Havells' ENTICER range, on the basis that Polycab had named the colours of its ELANZA range using the expressions employed by Havells in relation to its ENTICER model. “Prima facie, the two designs are starkly similar to each other and, when examined from the point of view of visual appeal, the design of the defendant's ELANZA range of fans, prima facie, constitutes an obvious imitation of the 2016 ENTICER suit design.” Though Polycab raised a challenge to validity of Havells' registration for the 2016 suit design, citing designs of certain other fans as prior art, the same was rejected by the court. In connection with the 2021 suit design, the court agreed with Polycab that Havells had not made any comparative assessment between its 2021 suit design and any of Polycab's fans. It was held that Havells could not have made out a combined case of piracy by Polycab in respect of its 2021 and 2022 suit designs; it was required to individually address piracy of the two, as the novelty and originality certified in the registration of the suit designs was on different aspects. Accordingly, piracy of the 2021 suit...

Design Piracy | Overall Impression Of Design Is What Matters, Trade Variants And Miniscule Differences Can Be Ignored: Delhi High Court

Debby Jain

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