The Delhi High Court recently granted an injunction against India Circus on a suit filed by Good Earth for passing-off of their designs, particularly for motifs, logos, patterns of Serai, Periyar, Vrindavan, Lotus, Bali Mynah, Rose Princess and Falcon on products. The Court has discussed passing-off in case of designs and also the concept of novelty (which hasn’t been discussed much) in terms of a design being old in itself but when applied to a new article to which it has never been previously applied, it being a novel design.

Facts of the case:

The Plaintiff (Good Earth) in this case have registered designs for the above mentioned designs and on conducting a search of the design database, I found that Good Earth had over 100 design applications in India. Over the years, they have become a well-known brand, not only in India but also in other countries. They have retail outlets in Singapore, Turkey and Nepal.

One of the defendants (India Circus – Krishna Mehta) was an employee of Good Earth and was a part of the creative team that designed a number of designs. On his exit from the company, Good Earth found that he was selling the designs under the brand name India Circus, a company he founded in November 2011.

Arguments of the Plaintiff – Had knowledge & Passing-off:

Good Earth has alleged that the Defendant had knowledge of the designs made by their company and was even a part of the team that designed these motifs, logos and patterns. They have claimed that the website of Krishna Mehta had designs that were deriving inspiration from household things, surroundings and even Bollywood and that this is the creative style of the Defendant. By stating this, they have gone to show that Good Earth’s designs which were used by the Defendant, were unlike his creative style and a clear case of passing-off.

Arguments of the Defendant – Work of art and not novel:

The Defendants tried to establish that India Circus has become a popular brand since its launch in 2011 and that they are associated with several lifestyle brands. They then stated that the Plaintiff’s work was an inspired work of art and not novel and for this reason, they cannot claim ownership under the law of designs. They stated that the works of the Plaintiff are pre-known, pre-published and in public domain for many centuries and therefore aren’t new or novel. The Defendants also went to provide detailed explanations of how each of the designs that the Plaintiff had claimed were passed-off were not in fact original.

Response of the Plaintiff:

The Plaintiff in response stated that they have made out a case of passing-off by reiterating the test laid down in case of passing-off of designs. The test as laid down by the Delhi High Court in two notable cases is as follows:

  • Goodwill or reputation attached to the goods sold by the Plaintiff
  • Misrepresentation by the Defendant which causes confusion in the minds of the consumer
  • Such actions have caused damage or are likely to cause damage to the Plaintiff

Further, the Plaintiff stressed on the fact that the Defendant’s team created the Periyar design and that he was well aware of its originality. The Plaintiff also mentioned that Krishna Mehta had started his business in November 2011 and only disclosed this to the Plaintiff in 2012. By this, the Plaintiff tried to establish the mala fide intentions on part of the Defendant. The Plaintiff also submitted a number of emails to the Court evidencing that this wasn’t the only case of copying by the Defendant and that they had copied a number of designs.

Court’s analysis of this case:

Passing-off

The Court concurred with the arguments of the Plaintiff and held that they satisfied the test for passing-off and that the acts of the Defendant was causing confusion in the minds of the consumers. The Court made the interim injunction absolute, thereby forbidding the Defendants from using the said designs. However, to the Defendants relief (if it was any), the Court allowed them from using the design of Vrindavan and Falcon for unconnected activities since it wasn’t similar to that of the Plaintiff and allowed them to use the Periyar design without any limitation since it wasn’t held to be similar.

Novelty

The Court on the basis of a number of judgments stated the position of law when old designs are applied to new articles and held as follows,

It is a well settled law that even though the design is old in itself but if the same is applied to a new article to which it has never been previously applied, then the said design needs to be protected. The law has been crystallized in a catena of judgments wherein the Courts have held that in relation designs, expression “original” includes designs which though old in themselves but were new in their application.

The Courts off late have been very creative in their approach and have interpreted the law in a manner that allows potential litigants to enforce their rights to the maximum. In this particular case, the Court has considered a number of factors (novelty, test of passing-off, relationship of Plaintiff and Defendant Krishna Mehta) to decide on this matter. This definitely comes as a warning to those who are infringing upon the designs of others and a reassures those who wish to take action against such infringers.

This article has been authored by Nikita, an IP Law practitioner.