A recent judgment of the Bombay High Court that I came across addressed issues relating to the laws of design which I found very interesting, mainly because they weren’t issues that were touched upon previously. On reading the judgment, I found that it was the Delhi High Court which had first examined these issues in detail and what was also interesting to read was the dissenting opinion by one of the judges.

The three main issues were whether:

a)     A suit of infringement can be filed against a registered proprietor of design

b)    The common law remedy of passing off is available under the Designs Act

c)     A suit for both infringement and passing off is maintainable in a court of law

[I will be dealing with the contentions raised in all three cases under the aforementioned heads]

Law of Designs-Infringement suit against a registered proprietor

The contentions of the plaintiffs have been in favour of a suit against a registered proprietor of design stating that a design has to be new, novel and beyond the scope of public domain in order to be eligible for registration. Based on this, a subsequent registrant having registration for similar design vitiates the basic criteria thereby making himself ineligible for registration. Also, that registration gives monopoly to the design holder for a stipulated period and hence he has the right to use it in exclusion of others.

The defendants contended that the Act is self-contained and that the Act doesn’t make any differentiation between a prior and subsequent registrant. Also, Section 22(3) lays down grounds to challenge or cancel the registration and that is only the discretion of the Controller and not the High Court. Thereby concluding that a suit for infringement cannot lie against a registered proprietor.

The Delhi HC rightly pointed out that registration creates a rebuttable presumption that it fulfils adoption of all procedural safeguards which are required to be taken. However, the plaintiff has the right to contend that the defendant has no new or novel design in comparison to the plaintiff. The assertion in the suit is a right of monopoly and can be exercised against a registered proprietor. The Bombay HC also held the same view.

Passing-Off

The plaintiffs put forward their arguments by comparing the Designs Act with the Trademarks Act to state that they were not different in their approach. Therefore, the remedy of passing off has to applicable to designs because there is a possibility of the misrepresentation and confusion.

The contention of the defendants also stemmed from the Trademarks Act, whereby they stated that the law clearly makes a provision for passing-off and the same is not the case with the Designs Act. The intention of the legislature was a factor that was brought to consideration.

The courts clarified that point by indicating that design could be used as a trade mark and if by virtue of its use, goodwill is generated in the course of trade or business, it can be protected by an action in the nature of passing off. However, this would depend upon whether or not the plaintiff is successful in proving the essential ingredients involved in a passing off action. The court in unequivocal terms stated that the remedy of passing off is available under the law of designs.

Suit for Infringement AND Passing-Off

This question is an extension of the previous issue which clarifies that a suit for passing off is maintainable. The plaintiffs argued in favour of the issue affirming that though the actions per se and remedy are independent of each other, a combined suit can lie for both the remedies.

The Delhi HC clarified that though it is in favour of passing-off as an available remedy, having regard to the nature of the two actions, they cannot be combined. Nonetheless, if the two actions are instituted in close proximity of each other, the court could for the sake of convenience try them together as separate causes, provided it has jurisdiction in the matter. Therefore clarifying that this particular issue will be left to the discretion of the court trying the matter.

Dissenting Opinion

In an extremely articulate dissenting opinion, J. Manmohan Singh points out his views on all three issues discussed above.

1)     The words “any person” which is used while referring to the piracy of design during the existence of copyright clearly states that it has to be between a registered proprietor and any other person, thus ruling out ‘registered proprietor’ from its ambit. His viewpoint was that a suit for infringement cannot be brought against a person who has monopoly rights. Also, he stated that it is a well settled principle of law that a section should be read as it is without giving it any extra meaning and by doing so, the courts would be exercising judicial legislation.

2)     On the issue of passing off, he is of the opinion that is distinct from the purely statutory monopolies which are in the form of privileges like patents and design. However, he added that though they cannot exist as complementary to each other, it does not mean that they cannot exist independent of each other. Thus, he answered in the negative even on this issue.

3)     He opined that the common law right or action in deceit in relation such novel shapes cannot be given protection in addition to the statutory right conferred by the Design Act as the same would be undermining the legislative intention and policy for which the Design right was conferred upon registrant. Therefore, as an extension to the previous issue, no suit for both infringement and passing off can be maintainable in a court of law.

Position of the Supreme Court

The Defendants in the case before the Bombay HC had filed a Special Leave Petition to the SC contending that no suit for infringement of design could lie against them since they had secured design registration and also that an action for passing off could not lie in respect of a registered design. Since these questions were previously answered by the Delhi HC and were still to be discussed by the Bombay HC, the Supreme Court deferred the hearing of the SLP.

Conclusion

These judgments have brought to light issues that weren’t discussed previously and widen the scope of the Act, if I am to believe that the Supreme Court also upholds their view.  For now, it is safe to say that is not unlikely that you’ll have your day in court if you want to file a suit for infringement against a registered proprietor or even seek the remedy of passing off in the case of designs.

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