India: Vikas Jain’s Design Appeals Beyond The Eye: Registration Not A Prima Facie Right.

Last Updated: 21 July 2008
Article by Manisha Singh Nair

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:

  1. The Design should be a feature of shape, configuration, pattern, ornament, or composition of lines or colour;

  2. The Design should be "Applied";

  3. Application should be to an "Article"; and

  4. The design should appeal to and be judged solely by the eye.

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 matter.

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 Vikas Jain.

© Lex Orbis 2008

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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