India: Dealing With Design Disputes: The Aspect Of Prior Publication

Last Updated: 11 September 2008

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 then.

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 case.

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.

© Lex Orbis 2008

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