The law of Designs incorporated in the Designs Act, 2000,
lays down four essential requirements to qualify for Design
registration. The requirements to be satisfied to facilitate
registration as a design include:
The Design should be a feature of shape, configuration,
pattern, ornament, or composition of lines or colour;
The Design should be "Applied";
Application should be to an "Article";
The design should appeal to and be judged solely by the
The "appeal to the eye" test is perhaps most
crucial in deciding design piracy matters. Dwelling on this
aspect is the case of Vikas Jain v. Aftab Ahmad and
Ors. [2008(37) PTC 288 (Del.)]
Vikas Jain is the owner of a copyright in the design of a
toy scooter, marketed as "Boom Scooty". He alleged
Aftab Ahmad of manufacturing and selling toy scooters (named
"Dhoom Trendy") which were identical or deceptively
similar to his design. The similarity being reflected in shape,
configuration as well as design prompted Vikas Jain to invoke
Section 22 of the Designs Act, 2000 governing the offence of
piracy of a registered design, alongside alleging the offence
of passing off.
Aftab Ahmad defended himself on two counts, the first being
that Vikas Jain had no right in the design, in as much as the
same was an imitation of another design published and
consequently employed in manufacture and marketing in Hong
Kong. The second ground asserted was that a registration in the
same design, subsisted in their name. The assertions of Vikas
Jain included a comparative table specific to the two designs.
The Court opined that a physical comparison of the marks
further brought out the similitude between the designs.
However, in the course of arguments, a plethora of decisions
were also cited by the parties to substantiate their stand.
Aftab Ahmad's contention revolved around the plea of
being a "prior user" of the design. He averred that
the design was liable to be cancelled in view of Section 19 of
the Designs Act.
The Court viewed that while there were similarities,
sufficient dissimilarities existed as well. The first
difference penned by the Court existed in the fact that Vikas
Jain's scooter was a two wheeler, while the Hong Kong
design was a two-wheeler scooter. Further, Vikas Jain's
design included a rider while, the Hong Kong design did not
have one. Noting other differences between the Hong Kong design
and Vikas Jain's, (such as a difference in size,
inclusion of a footrest, handle, etc.) the Judge concluded that
Vikas Jain's design was not a prima facie imitation of
the Hong Kong design. On comparing the three designs, viz., the
Hong Kong design, Vikas Jain's design and Aftab
Ahmad's the Judge concluded that while there was
dissimilarity between Vikas Jain's design and Hong Kong
design, however, Aftab Ahmed's seemed to be a copy.
With regard to the prior publication argument, the Judge
rendered that it was essential to show a publication dated
prior to the date of registration of the contended design. He
observed that the prior publication was an assortment of about
thirteen products and did not display the design from all
possible angles. He also propounded that the "appeal by
the Eye" test was of consequence in deciding a Design
The Court also noted that although Vikas Jain had averred
that the design had been inspired by the Hong Kong design, yet
sufficient novelty had been introduced, in order to regard it
as a new design. Aftab Ahmad's design, on the other
hand was stated to be a mere imitation. In addition to this,
the Court also noted that the process of Design registration in
India did not provide for a process of examination and
publication, (unlike patent and trademark registration), and
consequently mere registration did not confer a higher or equal
right upon a person. In this light, the Court ruled in favor of
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