The issue of prior publication finds an important place in
nearly all realms of Intellectual Property. Elucidating the
impact that this can have, on deciding Design rights is the
case of Schreder S.A. Ltd. & Anr. v. Twinkle Luminaries
Pvt. Ltd. 2008 (37) PTC 343 (Del.). The case dealing with
two companies manufacturing lighting products throws light upon
some of the primary issues appended to disputes in Designs.
Schreder S.A., a company incorporated in Belgium and engaged
in the business of luminaries and lighting products including
fixtures and floodlights having worldwide operations. They
claim to be registered proprietors of several designs in India,
as under the Designs Act 1911 and claim that the same are valid
and alive owing to their renewal from time to time, however,
they admit that the same were held under a different name
They claimed to have learnt of the sale of identical
luminaries by Twinkle Luminaries Pvt. Ltd. in September 2004.
They contended that the design of Twinkle was an imitation of
theirs and that they had already issued a cease and desist
notice to that effect. Twinkle in its reply refused to do so
and filed a written statement, wherein several issues were
raised including a contention that Schreder was marketing a
tunnel light fixture under the same model. Schreder responded
to the allegation stating that their design had been infringed.
Twinkle contended that the three types of tunnel light fixtures
were developed as its own works, while also have been imported
from other markets. They also asserted that their designs bore
no similarity to Schreder' in shape, configuration,
finishing, dimension etc. They also contended that some aspects
of the equipment were essential to fulfill a certain technical
requirement. They also contended that Schreder did not specify
the model and that multiple models existed in their tunnel
light fixtures segment. They also averred that some of these
designs had already been sold and marketed prior to
Schreder' registration in India. Affidavits in support
of their contentions were filed and issues were framed.
On the issue of the designs being produced and utilized by
third parties in India and abroad, the Court noted that the
onus to establish third parties having published the same lay
on Twinkle. Taking into consideration, the catalogue of Twinkle
and that of other third parties, the court opined that it could
not be said that the design had been published and utilized by
other third parties. Further, the Court took note of an order
placed by the Central Public Works Department (CPWD) and opined
therein that the goods mentioned therein could not be related
to those of Schreder. On the issue of Twinkle marketing the
designs prior to registration, the Court stated that in the
absence of evidence, Twinkle Luminaries had not proved its
On the question of a mandatory injunction being granted to
Schreder, the Court directed its attention to S. 53 of the
Designs Act, dealing with Piracy of a Registered Design and
concluded that Twinkle's design was an obvious
imitation of Schreder'. As regards the defence of prior
publication, the Court referred to the decision of Metro
Plastic Industries (Regd.) v. M/s Galaxy Footwear, New
Delhi, 2000 I AD (Delhi) 819 the Court opined that the
defence could be taken only of a suit under S. 53 had been
filed and S. 51A of the Act seeking cancellation of the
registered design had been invoked. In this view, they stated
that Schreder was entitled to a decree of mandatory injunction
and also awarded costs. However, the Court did not slate them
to be entitled to accounts.
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