ASIAN PATENT ATTORNEYS ASSOCIATION

Transcription

1 ASIAN PATENT ATTORNEYS ASSOCIATION 63 rd Council Meeting At Penang, Malaysia DESIGN COMMITTEE REPORT: INDIA (2014) Himanshu Kane (W. S. KANE & CO.) Sharad Vadhera (KAN & KRISHME) Essenesse Obhan (OBHAN & ASSOCIATES)

2 APAA DESIGNS COMMITTEE COUNTRY REPORT (INDIA) This country report covers developments in designs law in the period 31 August 2013 to 31 August LEGISLATIVE CHANGES Design protection was provided for in India by the Designs Act, 1911 which was repealed and replaced by the Designs Act, 2000 incorporating extensive amendments and necessary changes. The Designs Rules, 2001 as amended in 2008 are currently in force. Since India s last year s Design Committee Report of 2013, there have been no legislative or administrative changes/amendments in the current law pertaining to industrial designs. The legal and administrative changes which took place after the enactment of the Designs Act, 2000 have been already been summarized in the country report presented at the APAA Council Meeting in 2012 at Chiang Mai, Thailand. Pursuant to 25 th session of the Standing Committee on the Law of Trade marks, Industrial Designs and Geographical Indications (SCT) held at Geneva in 2011, the Controller General of Patents, Designs and Trade Marks published two documents containing the draft articles and regulations inviting the comments of the stakeholders on the same in There have been no significant changes in the legislature as of now as compared to last year with respect to Indian Designs Act, 2000 or the Designs Rules, 2001 since the 62 nd APAA Council meeting at Hanoi, Vietnam. STATISTICS According to the Annual Report, issued by the Indian Patents & Designs Office, the number of design applications that were filed during was 8373 and during was 8337 which shows a slight decrease as compared to last year. However, 7252 designs were registered during the year as compared to 6590 during Similarly, the examination of design applications also increased to 6776 in 2013 compared to 6511 during Out of the aforesaid 8337 design applications filed during , Applicants in India filed 5428 applications whereas 2909 applications originated from abroad. In case of applications originating from abroad, USA led with the maximum number of applications (886) followed by Germany (554), Japan (544), Switzerland (193), Netherlands (142), U.K. (133), Italy (117), France (108), Sweden (84), China (79), Republic of Korea (71), Finland (41), Czech Republic (37), Denmark (32), Belgium (29), Israel (25), Malaysia (21), Spain (20), Australia (18) and Brazil (18). The leading foreign Applicant Companies were Microsoft Corporation (126), Man Truck & Bus AG (120), Philips (101), Honda Motor Co. Ltd (67), Yazaki Corporation (59), Dart Industries Inc (46), Unilever Limited (45), Colgate Palmolive Co (26) etc. The trends of last five years are given below. Trend in Design Applications Year Filed Examined Registered

3 Disposal of Applications No statistics are currently available for the year RECENT CASE LAWS A. STEELBIRD HI-TECH INDIA LIMITED VS. S.P.S GMBHIR & ORS. [2014 (58) PTC 428 (DEL).] Brief Summary of Facts:

4 The suit came to be filed by the Plaintiff in the Hon ble Delhi High Court for infringement of design, passing off, rendition of accounts, damages etc. The Plaintiff was a manufacturer of wide variety of open face and full face motorcycle helmets in different sizes catering to different consumer segments. The Plaintiff s product on the basis of which the present suit came to be filed was a helmet bearing novel and distinctive features in shape, configuration and surface pattern. The Plaintiff was the registered proprietor of the design under No dated 1 st December 2011 under the Indian Designs Act in respect of the shape, configuration and surface pattern of the Helmet. The Plaintiff was using the helmets bearing the said registered design since 2012 under a trade mark STEELBIRD. In November 2013 the Plaintiff learnt about the fraudulent imitation of its registered design by the Defendants who were manufacturing and selling helmets under the trade mark FORMAT in the same design as that of the Plaintiff s. It was submitted on behalf of the Plaintiff that the Defendant had copied the essential features of the Plaintiff s registered design. In response, the Defendant put forth the following grounds of defense for the consideration of the Hon ble Court: a. The Plaintiff s design lacks novelty. In any event, the Beak shaped design on the basis of which oral arguments were advanced by the Plaintiff was neither pleaded in the plaint nor do they find any mention in the design registration certificate of the Plaintiff s design. b. No novelty lies in the beak shaped helmet since even prior to the Plaintiff s design registration, such beak shaped design helmets were available in the market. In this behalf, the Defendants led evidence in support of such prior designs in respect of third parties helmets such as AIROH, STUDDS, RICON etc. c. Therefore, the Plaintiff s design is not original within the meaning of the Act. d. There is no similarity between the Plaintiff s helmet covered under the registered design and the Defendant s helmet. e. The Visor provided in the center of the Plaintiff s helmet is a functional feature, is common to the trade and cannot be a subject matter of design registration under the Indian Designs Act. f. The Plaintiff s registered design was not registrable in the first place and for the abovemetioned reasons, is liable to be cancelled under Section 19 of the Indian Designs Act. Decision: After considering the arguments advanced on both sides and after perusing the law on the subject including the plethora of judgments cited before the Court on behalf of both sides, the Hon ble Court held in favour of the Defendants as under: a) The Defendant has led sufficient prima facie evidence to show that similar designs were already available in the marker prior to the design registration of the Plaintiff s design. The Plaintiff s design is therefore neither new nor original. b) The Plaintiff has not taken any action against the companies who are marketing the products bearing the similar designs. The documents/ material filed by the Defendants prima facie shows that the Plaintiff s design was published in tangible form and disclosed to the public in India as well as abroad within the meaning of Section 4(b) of the Indian Designs Act.

5 c) Prima facie the Plaintiff s design is not dissimilar from the prior designs or combination thereof and hence the Plaintiff s design is also hit by Section 4(c) of the Indian Designs Act. The addition of small or minor feature from the prior designs will not render the Plaintiff s design dissimilar therefrom. At the highest, such an addition or feature may qualify as a trade variation to suit the customers demands. d) On the basis of the documents/ material filed by the Defendants, there are various manufacturers already making designs with Beak Shape which are marketed throughout the world. e) Prima facie therefore the Plaintiff s design does not appear to be new or original and is thus not entitled to protection/ interim injunction. The Plaintiff s application for interim injunction was thus dismissed on the aforesaid grounds.

6 B. WHIRLPOOL OF INDIA LTD. VS. VIDEOCON INDUSTRIES LTD. DECIDED ON 27 TH MAY 2014 BY THE BOMBAY HIGH COURT The following issues came up for consideration before the Hon ble Bombay High Court. a. Whether, under the provisions of the Indian Designs Act, the proprietor of a registered design can sue a proprietor of another registered design? b. What are the tests in determining whether the Defendant s design amounts to piracy of the Plaintiff s registered design? c. Whether the Plaintiff s design, or at least that part of the design wherein the Plaintiff seeks to claim exclusivity, is functional in nature and therefore not protectable? d. Whether the Plaintiff s design suffers from lack of novelty? e. Whether passing off action lies in respect of a design? Decision: a. The court while interpreting the provisions of Sections 22(1) to 22(3) of the Indian Designs Act, held that a suit for infringement of registered design lies against any person including another registered proprietor. While doing so, the court refused to accept the Defendant s plea that any person cannot be meant to include another registered proprietor. The court held that although Section 11 read with Section 2(c) of the Act provides that the Defendant has an exclusive right to use its registered design, the same is subject to the provisions of the Act. Interestingly, the court drew an analogy with the provisions of the Indian Trade Marks Act in that under the relevant provisions of the Indian Trade Marks Act relating to infringement of registered trade mark, the Legislature has consciously used the words a person, who not being a registered proprietor. The court therefore concluded that the fact that such words are missing from the relevant provisions of the Designs Act and that on the contrary the words used in the Designs Act are any person (which are too wide in nature) suggests that the Legislature did not want a situation where a registered proprietor could not sue another registered proprietor for infringement of registered design. b. The court, while discussing the various tests laid down in previous judgments of the Bombay High Court, Delhi High Court and Kolkata High Court, held that what constitutes an obvious imitation or piracy of a registered design is Judged solely by the eye, are the essential features present or are the two substantially different?. In the instant case, while refusing the Defendant s plea of substantial differences between the two designs, the court relied on the principle of law laid down in the famous English case of Designers Guild Limited v/s Russell Williams (Textile Limited) reported in (2001) 1 All ER 700 that If the similarities between the two were sufficient to justify the interference that one had been copied from the other, there was, in my judgment, no further part for the concept of substantiality to play. On the facts and material available before the court, the court therefore went on to hold that the Defendant s product (washing machine) is a substantial reproduction and/or fraudulent imitation of the Plaintiff s design. c. The court, while rejecting the Defendant s defense of functionality of the Plaintiff s design, held that the Plaintiff had not sought monopoly in any functional feature and/or element. On the contrary, the Plaintiff had claimed monopoly in the shape and

7 configuration of the washing machine as a whole. The court therefore went on to hold that since the external shape of the Plaintiff s washing machine had nothing to do with the function that it performed and since the Plaintiff in the present case is seeking enforcement of is entire design and not an individual component thereof, the argument of the Defendant that the Plaintiff s design is nothing but a functional requirement cannot be accepted.. d. The court held that the material produced by the Defendant fails to show that the Plaintiff s design lacks novelty. The court observed that there was no similarity between the prior designs relied on by the Defendant and the Plaintiff s design. e. The court rejected the Defendant s arguments that there is no scope for passing off since washing machines are expensive items which are purchased primarily with reference to the brand and/or manufacturer and the shape of the machine is irrelevant; that washing machines are usually purchased after demonstration and that in such a case there can never be any confusion or deception as the purchaser would know what product he is purchasing. The court accepted the Plaintiff s argument that a potential customer of a washing machine also includes a person who has visited the house/s of others and has seen or heard reports of the Plaintiff s products; that such a person would more often than not only has had a fleeting glimpse or distinct view of the Plaintiff s product in another household but may have received positive reports from the purchaser thereof without naming the brand; that such person may have also seen the Plaintiff s machine figure in advertisements or photographs and with the passage of time may have a fleeting recollection thereof, which are largely based on its distinctive shape and appearance; that if such a person were to come across the Defendant s washing machine, such a person would believe that this is the same machine which he or she saw either at the residence of somebody else or in the advertisement or photograph seen earlier; that in such circumstances the person would immediately assume that the Defendant s product is that of the Plaintiff s and would purchase the Defendant s product under the said misbelief. The court also went on to hold that an ordinary potential customer with an imperfect or hazy recollection and who associates the Plaintiff s washing machine with reference to its distinctive and novel design, is likely to attend the demonstration in the belief that the product being shown/ demonstrated is the Plaintiff s product and that therefore the factum of demonstration in no way excludes the possibility of passing off. The court therefore granted order of interim injunction in respect of infringement of registered design and passing off against the Defendant. C. M.C. JAYASINGH. VS. MISHRA DHATU NIGAM LTD & ORS. DECIDED ON 23 RD JANUARY 2014 BY THE MADRAS HIGH COURT. Brief Summary of Facts: The suit was a combined action for infringement of patents and designs in respect of a wide range of Prosthesis for Limb Salvage surgery, for different parts of the human anatomy, called "Custom Mega Prosthesis" (CMP). The plaintiff had got Patents and Designs registered for about 15 kinds of CMPs invented and developed by him. The novelty of the Plaintiff s relevant design lied in its shape and configuration and it was designed in such a way to be a perfect replacement for the bone which was to be removed. The Plaintiff alleged that the Defendant s product amounted to infringement of the Plaintiff s patent and design and/or was a fraudulent imitation of the Plaintiff s registered design. Two issues primarily arose in the instant case for the consideration of the court viz.

8 1. Whether the court can be called on to record a finding on the validity of the Plaintiff s design especially when the Defendants have not raised any substantial pleadings to that affect? 2. Whether there was any infringement, assuming that the Plaintiff s design was valid? Decision: As regards the first issue, the court held that despite the fact that Section 22(3) of the Indian Designs Act enables the Defendants to raise, as a defense, any of the grounds available under Section 19 of the Act, since the Defendants had chosen not to challenge the validity of the registered design of the Plaintiff (in the Written Statement to the Suit), the validity of the Plaintiff's design was not under challenge. Interestingly, the court drew analogy with the Indian Patents Act and observed that under Section 13(4) of the Indian Patents Act, there is no warranty of validity of the patent, merely because the Examiner of Patents conducts an examination and investigation for anticipation by previous publication and by prior claim; that therefore the certificate of registration of patent contains a disclaimer to the effect that the validity of the patent is not guaranteed; that hence onus probandi is on the Plaintiff, who claims to be the registered proprietor of the patent, to establish before court, novelty, non obviousness and usefulness, before seeking a decree of declaration and injunction; that however there is no provision in the Indian Designs Act which is analogous to Section 13(4) of the Patents Act, 1970 and that even the certificates of registration of design do not contain any disclaimer as is found in the certificates of registration of patents. The court therefore went on to hold that the Plaintiff s design registration was valid. As regards the second issue, the court held against the Plaintiff. The court held that there is no evidence on record to show that the shape and configuration adopted by the Plaintiff in his designs has been copied by the Defendants; that the proximal tibial prosthesis or distal femur prosthesis, are supposed to be a replacement for the cancer affected bones that are connected by the knee joint; that therefore every prosthesis takes its shape and configuration only from the human anatomy; that there is no other shape that a distal femoral prosthesis could actually take, if it is intended to replace the bone affected by the tumor; that if different types of prosthesis, as seen from the pictorial representations given in paragraph 183, take the shape and configuration of the bones and the knee joint, the Plaintiff cannot successfully establish infringement, merely by showing broad and over all similarities and that the Plaintiff s action for infringement of registered design therefore fails. D STANDARD CORPORATION INDIA LTD. V. TRACTORS AND FARM EQUIPMENT LTD, MADRAS HIGH COURT O.S.A.NO.107 OF 2013 DATE OF DECISION APRIL 4, 2014 In the original suit from which appeal arose, the respondent (plaintiff in the original civil suit) had contended that the appellant was blindly imitating the tractors manufactured by it, thereby infringing on their copyright in the artistic work in the drawing for its tractors. The appellant had filed an application praying for the dismissal of the civil suit on the grounds that it was not maintainable under Section 15(2), Copyright Act. The appellant contended that under Section 15(2), the copyright in any work capable of being registered as a design and which had not been registered, would cease as soon as any article to which it applies has been reproduced more than 50 times. In this case, the drawings in which the copyright was claimed had been used more than 100 times prior to

9 the filing of this suit. In this regard, the appellant cited the case of MICROFIBRES INC. Vs. GIRDHAR & CO., (2009 (40) PTC 519 (Del.) (DB) which had clarified the law on Section 15(2), Copyright Act. The respondent, on the other hand, while agreeing with the ruling in Microfibres argued that it was inapplicable in the instant case as the drawings could not be registered as a design. They argued that there was no doubt that a design, which is functional in nature and has certain functional features could not be registered as a design. Section 2(d), Designs Act, 2000 also specifically excludes any artistic work as defined in S.2(c), Copyright Act from being registered as a design. The Division Bench ruled that the appellant had not shown sufficient cause or reason to interfere with the findings of the learned single judge that the suit could not be dismissed as it was not barred by law and as there were triable issues existing for the consideration of the Court. The Division Bench stated A right existing in a person or an entity to seek certain reliefs before a Court of law, when disputes had arisen, cannot be curbed, at the outset, without having proper reasons to do so. As there are triable issues, which are to be decided in the civil suit, in C.S.No.602 of 2007, we are of the considered view that the present original side appeal is liable to fail. The Division Bench dismissed the appeal x x