The High Court of Delhi (Court), in its recent decision dated 12 May 2021, has summarily dismissed a design infringement suit filed by M/s Kamdhenu Limited (Plaintiff) against M/s Ashiana Rolling Mills Limited (Defendant) (I.A. 647/2018 in CS (COMM) 90/2018), whilst deciding an application filed by the Defendant for summary judgment under Order XIII-A of the Civil Procedure Code, 1908 (CPC). The Court held that the Plaintiff's registered design in respect of the double ribbed surface pattern on its steel bars, was not registrable on account of prior publication of the design in a 'British Standard' that the said product admittedly adhered to. It further held that the Plaintiff had no real prospect of success in the suit and that the Court did not have any other compelling reason to record oral evidence in the said case. Accordingly, the Court dismissed the suit in exercise of its power to pass a summary judgement.
The Plaintiff claimed to have created and developed a 'unique' design in respect of its steel bars in 2012-13 and the same was registered under the Designs Act, 2000 (Act)with effect from 14 January 2013, claiming that the surface pattern of double ribs on the bar was new and original. The registered design was applied by the Plaintiff upon its Kamdhenu SS10000 TMT steel bars which were said to be launched in June 2013. In or around June 2017, the Plaintiff claimed to have discovered the Defendant's 'Friends 500 TMT Bars' bearing a design identical to the double ribbed surface pattern being the subject matter of the registered design of the Plaintiff.
A suit was filed by the Plaintiff before the District Court, Saket (District Court) (subsequently transferred to the Court) wherein the District Court had granted the Plaintiff an ex-parte injunction and had also appointed a local commissioner to inspect the Defendant's premises and seize infringing goods and materials. The ex-parte injunction was subsequently confirmed by a Ld Single Judge of the Court (after transfer of the suit) vide an order dated 03 November 2017, which order was carried by the Defendant in appeal before a Division Bench of the Court. The Division Bench, vide its judgement dated 23 August 2018 (FAO (OS) 309/2017), set aside the order of injunction after consideration of the Defendant's contention that the Plaintiff's design registration, which was the basis of the infringement suit, was invalid on account of numerous prior publications. The Division Bench, in its judgement, had also recorded that the Plaintiff's design was a part of known standards, in accordance with which, the steel bars would require two or more parallel transverse ribs and the difference between the angles of the different ribs and the bar excess should be at least 10 degrees. The Division Bench noted that the said standards were applicable, accepted and known across the industry and the manufacturers, and that the standards provided a limited range of possibilities for placing the ribs on the bars. The Division Bench rejected the Plaintiff's contention that even though the products conformed to a known standard, they allegedly satisfied the test of novelty and uniqueness. The Division Bench went on to observe that "despite functionality, no distinct feature that can claim novelty was revealed, deserving design registration" in the Plaintiff's design and also recorded that proceedings for cancellation of the registration had already been initiated.
Subsequently, the Plaintiff's Special Leave Petition before the Supreme Court of India (Supreme Court) against the Division Bench's judgement was declined vide the Apex Court's order dated 11 February 2019.
Thereafter, the Defendant filed an application before the Court under Order XIII-A of the CPC, urging the Court to exercise its powers under the said provision, to decide a claim pertaining to any commercial dispute without recording oral evidence, and pleading for a summary dismissal of the present suit.
The Defendant's broad defense in the main suit as well as its main contention under its application for summary judgment was that the Plaintiff's design was incapable of registration by virtue of section 4(b) of the Act and that the registration so obtained was liable to be cancelled as i) the Plaintiff's registered design was not novel and was copied from prior published standards and most significantly, one British Standard (BS 44449:2005, category B500C); ii) that the prior publications were suppressed by the Plaintiff from the Controller General of Patents, Designs & Trade Marks (Controller) and from the Court; iii) that the double ribbed pattern on the steel bars was a functional element which, inter alia, made the bars more durable and hence, could not be a subject matter of design registration. The Defendant asserted that there was no requirement for a trial in the matter and that it was a fit case for summary disposal under Order XIII-A of the CPC with the Plaintiff having no real prospect of success.
The Plaintiff contended that the specific angles of the double ribs in the Plaintiff's design (48 degrees and 65 degrees) were not revealed in any of the Standards relied upon by the Defendant and whereas the Defendant had used identical angles for ribs upon its bars. The Plaintiff sought to argue that merely because the Plaintiff's products complied with or adhered to particular industry standards, the same by itself would not deprive the design of its novelty. The Plaintiff argued that a choice of any particular pair of angles from amongst the vast range contemplated, would render the design novel. They argued that merely because the novel feature of the design also had a functional aspect, the same would be not sufficient to decline registration unless such function can only be achieved by the particular design in question, which according to them, was not the case. The Plaintiff, opposing the Defendant's application, also submitted that there was insufficient material in the present matter to come to a summary conclusion that the suit was bound to fail.
Upon hearing the parties and examining various judicial precedents, the question was whether a fair and just determination of the dispute was possible in the present matter without trial. The Court foremost observed, that for the purposes of a summary judgement, the outcome of the injunction application against the Plaintiff (as aforementioned) would not per se lead to a conclusion that the Plaintiff would not have any real prospect of success in the suit. The Court, however, rejected the Plaintiff's contention that compliance with published standards can never be sufficient to constitute prior publication of a design and held that the same would have to be decided upon a consideration of the particular design and the published standards. It observed that the standards cited by the Defendant in the present dispute were in fact standards of the design itself, i.e., the surface pattern comprising of transverse and longitudinal ribs at an angle to each other and that the Plaintiff was in fact in admitted compliance with at least the British Standard B500C, in this respect. An admission to that end was found in its submission in the Plaint and a categorical reference of such compliance upon its website.
The Court therefore held that "where the novelty claimed by the owner of the registered design resides in the very element which is described in the standard with a reasonable degree of specificity, the design cannot be said to be novel or original" (emphasis supplied). As regards the specificity of the rib angles claimed by the Plaintiff, the Court held that such specific angles did not form part of the design registration obtained by the Plaintiff and that in any event, the Plaintiff could not claim the benefit of specific angles being protected in view of the definition of design viz. the particular angles were not discernible by the eye alone as well as the prohibition contained in section 4(c) of the Act viz. the design was not significantly distinguishable from the published standard.
The Court remained silent on the functional aspect of the design in view of its observations on the point of prior disclosure.
Once the Court held that the Defendant was successful in establishing that the Plaintiff's design was contrary to provisions of the Act and not registrable under the Act, it observed that the Plaintiff had no real prospect of success in the suit and that the Court's conclusion was based on undisputed material placed on record, thereby eliminating the requirement of any further trial in the matter. It further held that since the scope of similarity and difference between the Plaintiff's product and the prior publication was undisputed, no expert comparison would be necessary. Further, no evidence would be required to be led in respect thereof, enabling the Court to exercise its jurisdiction under Order XIII-A of the CPC and order a summary dismissal of the suit.
The decision extensively analyses the interplay between novelty claimed in a design versus its conformity to industry standards applicable to the design of the product in question, which would often have the tendency to render the design unregistrable under the Act. The decision also subtly indicates how important it is to explicitly set out specific aspects of the novelty claimed in a design registration application and ensure that the same is significantly distinguishable (including to the bare eye) from prior publications. As regards the summary judgement, this decision is a welcome move for expeditious disposal of legal proceedings without relegating the parties to the rigours of trial, where the facts so permit, in turn saving precious judicial time and reducing pendency of cases.
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