Importance of Design as an IPR

An industrial design may constitute the ornamental or aesthetic aspect of an article. It may consist of 3-D features such as the shape of an article, or 2-D features, such as patterns, lines or color.[1] India has seen the evolution of design as an important fragment of the intellectual property family in protecting the aesthetic value of the articles.

The Designs Act, 2000, currently governs the issues related to design registration and piracy in India. Design registrations are particularly useful since, many a time, a customer’s purchase decision is based on the product aesthetics i.e., the shape, look, color combination ornamentation, etc.

The issues under the Design Act have recently increased as organizations want to safeguard the aesthetic value of their products. Two prominent cases decided by the Indian Judiciary are as follow:

1. Cello Household Products v. M/S Modware India and Anr.  & Ors.[2]

The case was filed by popular ‘household products’ production company ‘Cello’ against Modware India seeking an injunction for design infringement and passing off. The dispute was over the copying of design of the bottle name PURO launched by the plaintiff in the year 2016, the bottle was a two-toned color with certain specific phrases and words. The defendant launched a similar bottle called ‘KUDOZ’ in the following year for which they were sued by the plaintiff. Thus, here the subject matter is the infringement of the design of the bottle launched by Cello for which the company has invested ample money in the market for selling and marketing purposes.

The court on the basis of merits decided that the plaintiff was justified in filing the suit against the defendant as Modware India introduced a bottle which is deceptively similar to the bottle of Cello and denied defendant’s contention of lack of jurisdiction of Bombay High court to decide the case following a grant of injunction and relief to be given by the  defendants to the plaintiff  as damages keeping the loss faced by the plaintiff as the base. Therefore, cello won the case.

2. M/S Crocs Inc. USA v. Liberty Shoes Ltd. & Ors.[3] The recent case filed by crocs against numerous footwear companies has established the importance of design act and given a verdict against crocs on the basis of prior publication of design. The case was filed in the Delhi High Court and was taken up by Hon’ble Justice Valmiki J. Mehta

Crocs USA filed cases against shoe manufacturers alleging infringement of their design which is related to perforated and non-perforated shoe design. The plaintiff claimed the design as registered from 25.8.2003, the defendant contended that the design registration is subject to cancellation as it does not qualify under the category of ‘new’ or ‘novel’.

The Delhi High Court held that the registered design of the plaintiff with respect to its footwear, does not have the necessary newness or originality for the same to be called a creation or innovation or an Intellectual Property Right. The Court accordingly observed that the registered design of the plaintiff is liable to be cancelled as per Section 19(1)(d)[1] of the Act read with Section 4(a)[2] of the Act. The Court in the case also awarded litigation costs as well present to costs incurred by them towards time and man hours spent by these defendants for conducting their defenses in the present suits. An appeal filed in the Supreme Court by the plaintiff was dismissed, upholding the orders of the Delhi High court in January, 2019.

Conclusion:

The above mentioned recent case laws set up a judicial trend under the regime of Designs Act where the court on various grounds has in case no. 1, observed infringement of design and in case no. 2, on the basis of legit ground of cancellation did not give relief to the plaintiff because of lack of novelty in the design. The case laws underline various aspects hidden in the provisions of the Design Act, making it clear-cut to understand the underlying intent and working of the law framed by the legislators. More judicial decisions means better interpretation and more usage of the law, thus establishing the increasing significance of design law. It is an imminent fact that Patents is not the only important IP that an organization should focus on, Design in itself holds significant place in the commercial value of a product. Design as an IP holds immense value because customers may also associate a product with a company or a particular quality standard based on product aesthetics. For companies, the design is the simplest way of differentiating one’s products from competing products. As a result, it becomes important to protect the design from being copied. Thus, it is pertinent to note that businesses and companies are taking active step to protect the aesthetic value of their products under the Designs Act, 2000. Design as an intellectual property right holds as much value as any other subject matter under the umbrella of intellectual property rights.

Author: Vidushi Trehan, LL.M from Symbiosis Law School, Pune , Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at swapnils@khuranaandkhurana.com

References:

[1] Industrial Design. https://www.wipo.int/designs/en/

[2] SUIT (L) NO. 48 OF 2017

[3] CS(COMM) 837/2017

[4] Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:—(d) that the design is not registerable under this Act;

[5] [ Prohibition of registration of certain designs. —A design which—(a) is not new or original;


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