Industrial Designs are regulated by The Design Act, 2000 and The Design Rules, 2001 (as amended and modified). Design Registration confers the registered proprietor right to exclude others from commercially exploiting the registered design by applying over similar articles or articles of the same class in which a design is registered except an express authorization from the proprietor is obtained. In case of Infringing activities, the registered proprietor is entitled to initiate a legal proceeding under The Design Act, 2000 and seek injunction against the infringer in addition to recovery of compensation (damages/account of profit) etc. Further, infringing activities also entitles the registered proprietor to seek ad-interim injunction along with the appointment of local commissioner, seizure of infringing goods, rendition of accounts etc.
Recently, in an order dated 14th March, 2023, Justice C. Harishankar (Hon’ble High Court of Delhi) awarded an ad-interim injunction in favour of the plaintiff i.e., Sirona Hygiene Pvt. Ltd. in a commercial suit titled Sirona Hygiene Pvt. Ltd. Vs. Amazon Seller Services Pvt. Ltd. & Ors. in respect to plaintiff’s registered design. The hon’ble court restrained the defendant No. 7 from manufacturing or marketing any product which has a design deceptively similar to the suit design; however, the defendant has been allowed to clear its existing stock within a period of two months.
Brief Facts of the Case:
The commercial dispute was filed by Sirona Hygiene Pvt. Ltd. against 15 defendants for infringement of their registered design No. 263764 dated 30th June 2014 for the article “Disposable Female Urination Device” also being sold in the trade name “PEE BUDDY” (hereinafter referred to as “Suit Design”). The original suit was filed before the Hon’ble District Judge, (Commercial Court-02, South Delhi, Saket Court Complex); however, the suit was transferred to Hon’ble High Court of Delhi in view of provision of section 22(4) of The Design Act, 2000 as the defendant No. 7 challenged the validity of the suit design under section 19(b) and (c). The suit survived against defendant No. 7 only, all other defendants either already settled the matter amicably, in process of settlement process or had been absent from the proceeding.
The Plaintiff in the Present suit has alleged that the defendant No. 7 has been manufacturing and selling a device which is identical to the suit design under the name “NAMYAA”, which constitutes piracy of the registered design within the meaning of Section 22(1) of the Designs Act, 2000. Therefore, an ad-interim must be passed against the defendant No. 7.
Below are given arguments of the parties. Since, the validity of the suit design was challenged by the defendant No. 7; therefore, arguments are provided in reverse order.
The defendant has defended the suit mainly on three grounds, which are:
- The suit design lacks novelty and originality: The defendant has challenged the validity of suit design [under section 22(3) read with 19(b) and (c), and 4(a)] in view of a product namely “P-MATE” intended to serve the same purpose was already in existence when the suit design was filed. Further, the said design was created and duly registered in US.
A design No. 224868 (published in 2011) for Female Standing Urinal Device was also relied to challenge validity of the suit design.
Therefore, the suit design was challenged for devoid of novelty and originality but merely a trade variant of the “P-MATE”.
- The plaintiff is not registered proprietor: The defendant has challenged the right of plaintiff to file the suit under section 30(1), (3) and (5) for not registering the assignment deed, in favour of the plaintiff, as the plaintiff has admittedly sourced its right to exclusivity in the suit design on the basis of an assignment agreement dated 1st January, 2017.
- The plaintiff has suppressed the material fact: The defendant has also contended that the plaintiff had supressed the fact that the plaintiff had sent a legal notice to NYKAA E-Retail Pvt. Ltd. (hereinafter referred to as “NYKAA”). Upon which NYKAA had communicated the same to defendant and defendant had alleged the suit design bad in to NYKAA in revert of such communication.
The plaintiff has made arguments against the challenges to the suit raised by the defendants as given below:
- Lack of novelty and originality: The plaintiff has argued that the design of the “P-MATE” and the suit design are different in major respects, which cannot be treated merely as a trade variant. The plaintiff has specifically argued about the difference considering the overall design of the suit design and particularly the aperture at the end of the suit design which imparts markedly different between the suit design and the design of “P-MATE”.
- Right to file suit: The plaintiff argued that they had already filed a request along with prescribed fee to the Controller of Designs in order to register the assignment deed within a stipulated period of six months as envisaged under section 30(1).
- Suppression of fact: The plaintiff has argued that they would not have any knowledge of communication between NYKAA and the defendant No. 7.
Observation of the Hon’ble Court:
The Hon’ble Court in the present case made the following observations:
- Lack of Novelty: The Hon’ble Court relied upon Phillips v. Barbro Rubber Company that “while question of the meaning of design and of the fact of its infringement are matters to be judged by the eye, it is necessary with regard to the question of infringement, and still more with regard to the question of novelty or originality, that the eye should be that of an instructed person, i.e. that he should know what was common trade knowledge and usage in the class of articles to which the design applies”.
The Hon’ble Court classified the design as ornamental and utilitarian. Further, the Hon’ble Court laid down two important factors to consider while examining whether the difference between the suit design and prior art are sufficient to impart novelty or are merely trade variants. These factors are:
- The reason why the controller of design regarded the suit design as novel while granting certification, and;
- Utility of the article.
The Hon’ble court further observed that when determining whether the differences between the prior art and the suit design are merely in the nature of trade variants or not, and where the suit design is in respect of a product which is utilitarian in nature, the extent to which the differences in prior art and the suit design would make a difference to the utility of the product has also been borne in mind. The Hon’ble Court further observed that where a design is utilitarian, it is possible that the differences vis-à-vis prior art, though minor on a visual inspection, may be substantial where the utility of the product is concerned.
The Hon’ble Court also observed that considering the differences in the suit design as compared to the design of the “P-MATE”, include marked differences in the shape of the device, which would impact the manner in which it is used by the user, as well as the terminal outlet for passing out of urine.
The Hon’ble Court also relied upon the certificate of design as prima-facie evidence of novelty and originality holding that the Controller of Designs has specifically held that novelty in the suit design resides in its shape and configuration.
- Right to file suit: The Hon’ble Court relied upon the maxim Lex non cogit ad impossibilia and observed that inasmuch as the plaintiff had applied, on the very date of execution of the assignment deed assigning the rights of the suit design to the plaintiff, i.e. 1st January 2017, for entering the name in the register of Designs as the proprietor of the suit design. The inaction on the part of the Controller of Designs in acting on the said request before the suit was filed, cannot, therefore, act to the prejudice of the plaintiff.
The Hon’ble Court further observed that section 30(5) saves the power of court , in an appropriate case, to direct otherwise, for reason to be recorded in writing.
- Suppression of Fact: The Hon’ble Court observed that, as there is no evidence to indicate that the Plaintiff was aware of the communication from the Defendant to NYKAA, the allegation of suppression of fact fails. The Hon’ble Court further observed that insofar as the inaction in suing NYKAA is concerned, the decision regarding the defendants whom he wishes to sue is the pristine prerogative of the plaintiff.
The Authors understands that this particular case may extend the scope of the term “instructed person” used in Phillips v. Barbro Rubber Company in relation to infringement of designs and incorporates utility consideration of the suit design vis-à-vis prior art or the impact upon the manner in which a product bearing a suit design is used. The Author understand that it is also necessary to impart reasonableness of utility consideration in infringement of designs, since the designs are published in the form of pictures only and no explanation in relation to the improved utility or the manner of use is required in the design application. The Author further understands that the utility consideration in design infringement cases should be at objectively and not subjectively.
Authors of this blog are Naveen Chaklan ([email protected]) and Akhil Jindal ([email protected]).
Copy of the order can be downloaded from the link: Link
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