India: A Design Is Judged Solely By The Eye

Last Updated: 19 October 2012
Article by Kamakhya Srivastava

A design that is to be registered is to be applied to any finished article that may be judged solely by the eye. Recently in Videocon Industries Ltd vs. Whirlpool of India Ltd. (Appeal (L) No. 554/2012; Bombay High Court), the Court held that a particular shape or configuration produced on any article having visual appeal, once registered, as a 'design' cannot be pirated.

The Designs Act 2000 defines 'Design' as features of shape, configuration, pattern, ornament or composition of lines or colours applied to the article by an industrial process, which in the finished article appeal to and are judged solely by the eye. Thus the test 'judging soley by the eye' becomes of paramount importance in cases where infringement of a design is alleged. In the instant matter Videocon Industries Ltd went in appeal against the judgment of the trial judge who passed an order in favour of Whirlpool India Ltd wherein Videocon was restrained by an ad-interim injunction order to not infringe and pass off the design with respect to Whirlpool's washing machine.

Videocon raised a two-pronged strategy to counter Whirlpool's contention that the shape and configuration of its washing machine is distinctive and the product marketed by Videocon was a clear imitation of its design.

Videocon, as the first approach, argued for invalidity of the Whirlpool's designs. Under S. 22(3) of the Designs Act, 2000 (the Act) a defendant in a suit for injunction filed on the ground of infringement of a design, is entitled to take a defence that the design of which infringement is alleged should not have been registered in the first place because the designs are not new and original. The designs have been in public domain much before registration and in addition they are also not significantly distinguishable from known designs or combination of known designs. The second approach was based on the conduct of Whirlpool that when Whirlpool can have two registered designs with hardly any difference between them, there is no reason why Videocon cannot register and/or market their washing machine which has far more differences than the two designs of Whirlpool interse. Whirlpool had registered two designs on the same day

Whirlpool countered the aforesaid arguments as misconceived in law, particularly that which said that its design is not significantly distinguishable from known designs or combination of known designs. It averred that a 'design' as defined under the Act would mean design of an article which is capable of being made and sold separately, therefore the phrase 'combination of known designs ' means combination of known articles and not combination of parts of articles, as advanced by Videocon, which by itself have no independent identity. Therefore if two or more independent articles, which are capable of being sold separately and which, have distinctive designs are put together to create a new design, the same cannot be termed as original, which is not the case with Whirlpool's registered designs.

On the second argument, Whirlpool contended that the Act does contemplate that the person can have one or more designs, which are similar to each other. A person can make an application for registration of a design and also at the same time purchase the existing design. On purchase of existing design the ownership to that design would relate back and thus the person would technically be in possession of two designs viz. one which he applied for and the other which he purchased.

Finally the court on the question whether Videocon with the impugned design has committed breach of S 22 (Piracy of registered design) of the Act, physically compared both the washing machines to see whether the washing machine manufactured and marketed by Videocon with impugned design is an 'obvious' or a 'fraudulent' imitation of the design registered by Whirlpool. Employing the test of 'Judging solely by the eye' the court determined that both the machines share distinctive shape and they are obviously similar. The shape and configuration of the Whirlpool's washing machine can be clearly seen in the machine marketed by Videocon. Accordingly the court upheld the decision of the trial judge. An interesting facet of this case is that washing machines of both the brands were brought in the court and were placed side by side during the entire course of hearing.

In addition to action against infringement, Whirlpool had also sought action against Videocon on the ground of passing off.

Passing off is a common law remedy based on the principles of equity to protect the goodwill of a trader from a misrepresentation that causes damage to goodwill. It is generally used to prevent the person from misrepresenting his/her goods or services as being the goods and services of the claimant.

In the instant matter, the court held that Videocon may not have actively misrepresented to the consumer, nevertheless it knowingly created a tool for deception and thus is guilty of passing off.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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