Case Title: Philips Lighting Holding B.V. V. Jai Prakash Agarwal & Anr.
According to the Delhi High Court, a design that is identical to or even substantially similar to one that already exists shall not be published or registered. Justice Navin Chawla's single-judge panel further ruled that simple commercial variations of existing or widely used products cannot be registered.
The plaintiff, Philips Lighting Holding, filed two lawsuits, according to the case's brief facts, asserting ownership of the design of what it calls a "T-Shaped LED Bulb." The plaintiff's attorney claimed that the defendants' products, including Syska LED Lights, violate its registered design and therefore be prohibited from doing so. The plaintiff further claimed that the defendants (in both lawsuits) were responsible for misrepresenting their items as the plaintiffs due to their deceptively similar appearance, texture, and trade dress.
Instead, the defendants argued that the design registration should be revoked since the plaintiff was asserting passing off in the design itself. According to the defence attorney for the defendant, a "design" is not a trademark by definition. Therefore, the minute the plaintiff attempts to register a design right as a trademark, that registration is subject to cancellation.
According to Sections 19(1)(a) and 19(1)(b) of the Designs Act, 2000 (the Act), the defendants further argued that the plaintiff's design registration was also subject to cancellation because it had already been registered in India and published there or in another nation before the date of registration.
According to the Act's definition of "design," the court determined that the term "design" only refers to features of shape, configuration, pattern, ornament, or composition of line and colours applied to any article, whether in two-dimensional, three-dimensional, or both forms, that appeal to and are judged solely by the eye in the finished article. A design must be "original" or "fresh." In addition, the court ruled that the registration itself might be challenged as a defence in a lawsuit alleging piracy of the registered design if it had previously been registered in India or published there or in another nation before the date of registration.
"To test as to whether a design is merely functional or not is by asking a question whether there is no other shape or configuration available in which the product can discharge the desired function. If the answer is negative, the registered design is entitled to protection. The onus of proving that the registered design is not new or original and not entitled to protection is always on the defendants. Keeping in view the above test, the designs of the T-Bulb of the plaintiff and those of the defendants can easily be said to be similar, if not identical. The alleged differences are merely superficial. Once judged solely by the eye, the two products, that is, one of the plaintiffs and the other of the defendant, are similar if not identical. The difference of cylindrical shape of a tube and/or of the joint to the holder is hardly sufficient to distinguish the design of the two products."
After stating the aforementioned, the court considered whether the defendants could establish at least a presumptive defence to Section 19 of the Act's provisional cancellation of the plaintiff's registration of the design. In this regard, the court stated that identifying and excluding common trade variations in an old design is the criteria to establish if the design is "new" or "original." The judge ruled that:-
"A design identical with or even materially similar to the relevant design should not be published or registered previously. A slight trivial or infinitesimal variation from the pre-existing design shall disqualify the relevant design for registration. The change introduced should be substantial. A balance has to be struck so that novelty and originality may receive the statutory recognition and interest of trade and the right of those engaged therein to share common knowledge is also protected. Mere trade variants of what is already in existence or what is common to the trade are not capable of being registered. Applying the above test to the facts of the present case, it prima facie appears that the design of the plaintiff is merely a trade variant of an already-existing registered design(s) cited by the defendant."
The court further stated that, depending on the specifics of each case, the presence of a design in the public record or office of a Registrar of Design may or may not constitute previous publication. Only if the registered design is made public and is sufficiently clear when applied to a particular article that can be judged by visual appearance or the eye of the mind, and if by use of that knowledge, an article can be made using that design, which will be piracy or a violation of that design, is it considered to have been previously published.
According to the court, the earlier registered drawings in the current case were sufficiently explicit and showed the finished product with the design. Thus, the defendants were able to demonstrate that the plaintiff's design was a variation of an already-existing design rather than a "new" design.
The court determined that there was no prima facie case presented for passing off even under trade mark law in response to the plaintiff's allegations. The court took note of the plaintiff's argument that it was the original equipment manufacturer (OEM) for several different lighting firms in India and that it created these designs for various businesses to make and then sell under its brand names. To establish a claim of passing off, the court determined that the design alone could not be sufficient to link the goods to the plaintiff. The court also stated the following:
"Even otherwise, the plaintiff has also failed to fulfil the other two elements of the trinity test for the grant of temporary injunction-balance of convenience and irreparable injury...It is evidenced that the claim of the plaintiff at that stage was monetary, that is, in terms of royalty or license fee. It is also an admitted case of the plaintiff that the plaintiff has granted licenses for consideration in form of payment of a license fee and/or other valuable consideration to other lighting companies. The plaintiff can, therefore, always be compensated in terms of damages in case it succeeds in the suit(s). In view of the above, I am of the opinion that the balance of convenience demands that, while rejecting the claim of an ad-interim injunction of the plaintiff, the defendants (in both the suits) are directed to file, regularly, accounts of their sales made under the impugned design(s). Such accounts are filed on affidavit(s) on a half-yearly basis during the pendency of the suits."