Industrial Designs and Intellectual Property Rights

Intellectual Property Rights are the legal rights which results from the intellectual activity in the field of industrial, scientific, literary or artistic fields. These rights give the creator exclusive ownership of the product or article for a certain period of time. It ensures the availability of genuine and original products as well as provides recognition to the creators and inventors.

What is Industrial Design?

When an article or product is created with a particular shape, pattern, color, or is ornamented in such a way that it is aimed on improving its overall functionality, usability or just the aesthetic value then it is known as industrial design.

Why Industrial Design Act?

A copyright is legal protection for an artistic endeavor automatically whereas the industrial design act protects the design for the artist. It has to be registered so that it gives the owner a monopoly and no other can copy or sell similar design and one has to register the design against all the limitations and un-authorized copying.

In India, designs of any product are protected by 2 legal rights:

Registered designs and

Artistic copyright

Advantages of Industrial Design Rights

Industrial designs help in making any product or item more beautiful and appealing. They help in increasing commercial value of the product and increase its market potentiality.

The industrial design registration helps in protecting the ornamental or aesthetic elements of the article. Whenever an industrial design is being registered, it gives exclusionary rights to owner against unauthorized use like copying or imitation by third party without his consent. This in turns facilitate fair flow of investment.

An effectual system also helps in benefiting public by encouraging fair and effective competition and trading practices which at large bolster the creativity and the final result comes in the form of attractive and beautiful products.

Safeguarding of industrial designs help in the overall economic development which promote creativity in the industrial arena.

Industrial Design Rights in India

The Designs Act, 2000 and the Designs Rules, 2001 are governing the India’s design law.

India has adopted the ‘first to file’ system, which means that the right holder should file the application on the earliest point of time to rule out the possibility of any other person claiming for the rights of the intended designs.

All such persons can apply for the industrial design rights if they are the proprietor of the design and as far as the design is new, not previously published in any nation, reproducible through the industrial means, not against to the public order, distinct from the known designs, not consists of any obscene material, eye catching.

According to the designs law in India, the proprietor can file for the design application only if they have their business center in India otherwise they are required to file the application through the attorney/agent who will in turns design search, prepare file and finally done the prosecution of the application.

CASE 1

Faber-Castell Aktiengesellschaf(Sic), A Company Organised Under The Laws Of Germany And A.W. Faber – Castell (India) Pvt. Ltd. A Company Incorporated Under Companies Act, 1956 vs. Pikpen Private Limited on 30/4/2003. as on 30/04/2003.

Back ground of case:

Faber Castell India began its operations in 1998 and was already touching the 1 crore annual sales mark by 2003 [1] . One of the most popular products being sold worldwide by Faber-Castell was the highlighter pen “TEXTLINER”. Faber-Castell got the design for the pen registered in India under the Designs Act, 1911 as on 01.08.1997 for a term of 10 years. The unique features registered by Faber–Castell were as under-

A dark green body

A unique cap of the same colour as the colour of the ink

Gold lettering on the green body

Trade mark “TEXTLINER” written on the body of the pen.

Moreover, additional design specifications were also clearly mentioned, “The novelty resides in the shape and configuration of the line marker in particular in the cap portion and the ornamental surface on the plug at the bottom of the highlighter. The plug is that part of the highlighter used for filing the fluorescent ink”.

Since launching the highlighter in 1998, Faber-Castell claimed to have sold more than 35 million pieces and spent around Rs. 6 lakhs on advertising, printing brochures and other marketing activities. However, in October 2002, Faber-Castell discovered that it was sharing shelf-space with another highlighter which had a striking resemblance with their brand. This highlighter pen also went by the name, “TEXTLINER” and bore an uncanny similarity to the appearance of their original product. It was being produced by a company called “Pikpen Pvt. Ltd.” And Faber-Castell found it as an invasion of their design.

Thus, Faber-Castell filed for-

An injunction restraining Pikpen from infringing their registered design for the highlighter sold by them under the trademark “TEXTLINER”.

An injunction restraining the defendants from passing-off their highlighter by use of the impugned trade mark “TEXTLINER” and by adopting the almost identical configuration, shape, design, colour scheme and get-up for their product.

Course of action:

2.1. Injunction against infringement of design:

Pikpen’s first course of defense was that they challenged the ownership of the design. According to them, A.W. Faber-Castell Gmbh & Co. held the ownership and not their subsidiaries in India who filed the case.

Also, as the documents related to the design registration submitted by Faber-Castell was translated from German, it didn’t mention the word “design” but “the appearance of goods” which does not qualify for the definition of design.

Under the Design Act, 1911, (under which the pen’s design was registered) a design previously not registered in India can be registered. However, under the Designs Act 2000, are not entitled to an injunction based on such a design which has been published in a country outside India i.e. the U.S.A. as well as in India.

This was considered as a valid ground by the judge as when the Designs Act, 2000 was enacted, it was done with a clause stating that the earlier act was repealed. Faber-Castell’s design was liable for cancellation on account of the fact that it was published in India and also in the United States prior to the date of its registration. They were therefore, not entitled to an injunction on the ground of infringement of the design in view of the provisions of the Designs Act, 2000.

2.2 Injunction against passing-off:

According to Faber-Castell, they were a company of international repute and enjoyed great goodwill since 1796 as a manufacturer of writing instrument. Because Pikpen was passing off their products as similar to Faber-Castell’s, there was every likelihood of damage of reputation and goodwill.

In order to arrive at the right verdict, it was important to understand whether Pikpen was deliberately making a misrepresentation leading to deception and confusion thereby trying to leverage the reputation of Faber-Castell and pass-off their products.

Faber-Castell not only sought an injunction on the infringement of copyright, but also on the duplication of the uniqueness of the configuration/design of the highlighter.

Pikpen presented a front saying that the word “TEXTLINER” signifies the basic functionality of the product and cannot be considered as an exclusive trademark as registered by Faber-Castell. These two words taken separately are clealry descriptive. At the same time, prima facie, the result of the combination is also descriptive. It is descriptive of the function which the said product is intended to perform. For example, if the mark “running shoe” was used for any shoes, it would signify the description of the goods even if the words “running shoes” were joined together. Therefore, this contention was found to have validity.

However, with respect to the infringement of the design, and the claim of “passing-off”, the following factors were taken into consideration-

FABER-CASTELL

PIKPEN

“FABER-CASTELL”

“KOLORPIK”

“TEXTLINER 48 REFILL”

“TEXTLINER 999″

“PAPER-COPY-FAX”

“PAPER-COPY-FAX”

The above words were written on the Pikpen product identically in the same golden colour and font as Faber-Castell’s. Even the word “KOLORPIK” which appears drastically different was written in such a way that the arrangement of the letters was the same and it could confuse anyone who looked at it comparatively.

Apart from the lettering, the cap looked almost similar. There was a minor difference i.e., a slight curve at the end of the cap, but it is something which would hardly be distinguishable at the time of purchase. Similarly, the size and colour of the plug at the bottom was the same. The only difference was the absence of serrations on the Pikpen’s highlighter which is hardly noticeable, especially when each individual item is put in a polythene bag. Further, the colour of the pens was the same i.e. deep green. Similarly, there is slight difference at the two ends, in that the pikpen product is flat at the ends whereas the ends of the Faber-Castell’s highlighter are slightly curved. But this is a very minute difference. Since the product is not a high involvement one, the chances of one identifying these small details is negligible.

Judgment/Verdict:

As mentioned above, the plea for injunction restraining Pikpen from using the trademark “TEXTLINER” was not accepted.

However, under the Designs Act, 2000, “In the case of passing off, the defendant can escape liability only if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.”

Therefore, it was found that the case under consideration was adjudged as a case of deceptive similarity and definite misrepresentation. The consequent damages by way of loss of sale, goodwill, reputation, were bound to follow. Faber-Castell, therefore, had a case for the grant of an injunction.

References:

Bare Act- Designs Act, 1911; Designs Act, 2000. (www.vakilno1.com)

www.indiankanoon.org

www.faber-castell.in

CASE 2

Marico Limited A Company Registered Under The Companies Act, 1956 vs Raj Oil Mills Limited ACompany Registered Under The Companies Act, 1956 on 20/2/2008

Back ground of case:

In the month of September, 2006, the cause of action arose, when the Plaintiffs (Marico) learnt about the use of the “caps” in question by the Respondents (Raj Oil Mills). Marico had registered and acquired copyright of the said design under the Designs Act,1911. They sent an official letter asking Raj Oil mills to change their caps but Raj Oil did not pay heed to this. They denied the allegation of the Plaintiffs and claimed to be using the impugned caps since 2002. On 3rd October, 2006, the Plaintiffs vide their Advocates letter, once again called upon the Defendants to desist from using the impugned caps for which they are the proprietor of registered design. On 4th October, 2006, the Plaintiffs thereafter filed the suit in the Court in order to restrain the Defendants from further infringing their registered cap design.

Some Facts of the Case:

Marico’s bottles shape and configuration was registered, whereas, the Respondents registration of separate cap was rejected.

There was no dispute about the front side, isometric bottom view of the CocoRaj bottle, which they got registered sometime in the year 2004.

There was a certificate on record dated 29th June, 2000 in favour of the Appellants with regard to the registered design number on 181063 dated 10th December, 1999 in Clause 3 in the name of Marico Industries Limited, Mumbai, in respect of the shape, configuration and surface pattern of bottle cap of the Appellants.

There is no dispute on record that both the parties got the cap made separately. The concept of getting such cap registered separately is known to the commercial world and especially business and the market of the products in question. The Respondents cap registration was rejected. The Appellants/ Plaintiffs got the registration under the Act. Therefore, such proprietor of design article is definitely entitled to have exclusive rights to claim the protection. Therefore, unless the said registration is set aside on application either by the Defendants or such person, it is final and binding to all.

Thus, on 4th October, 2006, the Plaintiffs thereafter filed the suit in this Court in order to restrain the Defendants from further infringing their registered cap design.

Course of action:

By virtue of registration of cap design of Parachute bottle, the Appellants had acquired the copyright of the said design under the Act. The Appellants had exclusive rights to manufacture and market such bottle cap and to apply for such a product. The Appellants had been, therefore, using the said registered design since July, 2000.

With respect to the infringement of the design, the following factors were similar-

PARACHUTE

COCORAJ

Shape same

Shape same

Color : Shade of Blue

Color : Shade of Blue

one side of the cap has ribbon shaped hinge

one side of the cap has ribbon shaped hinge

There was no claim in respect of any mechanical or mechanism or construction or colour combination of the article, including use of the letters or numerals.

Basic difference found in Industrial Design:

There was a clear different mark name with Parachute and Cocoraj with a tick mark symbol on Parachute bottle. There was a single drop shape mark on Cocoraj bottle.

The word “Parachute” and “Cocoraj” were written with different letters, shape, size and design. The marks of both the bottles were different.

The Parachute cap consisted of a circular/ cylindrical elevation with cut outs at two ends. There was no such shape of Respondents cap. The pattern of the Respondents cap was a combination of a concave and a convex surface with the intermediate part being raised.

There was a mark of “Parachute” on the top of the cap. The shape and design of cap of Parachute from the top, rear, left side, right side and views was different than “Cocoraj”.

Looking from the top and surface pattern of the bottle cap, even from the point of view of the shape and configuration and surface pattern of the bottle cap, both the bottles were not similar. The colour of cap of “Cocoraj” was translucent blue.

The edges of the caps of “Cocoraj” were rounded. The top of the “Cocoraj” cap had embossed name “Cocoraj” with an embossed tick mark symbol. On “Cocoraj” cap from front, the plastic seal touched the top level of the cap or placed on the equal level. Whereas the plastic seal on the “Parachute” cap or parallel level of the cap. As some part of the cap about the seal was visible on “Parachute” cap. The “Parachute” cap had a sharper edge from all sides.

Judgment/Verdict:

The Judge dismissed the Notice of Motion of the appellants by stating that cap is not ‘an article’ as defined in Section 2 (a) of the Act. This decision was taken based on the following research:

To qualify under Section 44(1) a spare part has to have an independent life as an article of commerce and not be merely an adjunct of some larger article of which it forms part.

A part must have an independent life as an article of commerce and not be merely an adjunct of some larger article of which it forms part. The cap involved in the present case cannot be said to have an independent life of an article of commerce.

The definition of “article” under the Indian Act as reproduced above read with the definition of “design” are different from the provision of the English statute.

Presence of the words “capable of being made and sold separately” made the treatment as per Indian Act quite ambiguous.

The Apex Court clearly mentioned that there is no vagueness in the definition of “article”. The isolated section cannot be read of English statute to decide the express and clear provisions of the Indian Law like in question.

At the most the English decisions have persuasive value but cannot be relied to interpret, especially when the provisions of the Act as amended is different and clear.

Any design article which is capable of being made and sold separately, is a prerogative and or a right of the registered owner of the design to sale it separately or not.

After visual examination of the registered design cap of the Appellants and the cap of the Respondents, it was announced that both the caps were dissimilar in shape. No case of piracy or any infringement was made out. Cap is an article within the ambit of definition of “an article” under Section 2(1) of the Design Act, unless set aside. Both the caps in question, were not similar and identified as contemplated under the Act.

Taking all this into account, the reasoning given by the learned Judge was reversed and quashed and set aside on both the above counts but the order of dismissal of Notice of Motion was maintained.

In the result, for the above reasons the Appeal was disposed off.

The Defendants defence even though permissible under Section 22(3)(4) of the Act, unless decided in trial, at this stage, the rights created in view of the registered design just cannot be taken away by raising such defence including the validity/ legality of grant of registration to the Appellants/ Plaintiffs. The suit is still pending for trial. The issue about cancellation of registration as need detailed material and inquiry kept open for the trial.

The Respondents/ Defendants have also averred which is supported by an affidavit, that approximately 1,52,43,725 bottles here in this suit, with the caps in question have been sold in the market from July 2004 to 2005. Apart from further sale from 2005 till this date in a way i.e. the matter of trial but still this fact just cannot be overlooked while dealing with the grant of injunction in such matter.

References:

Bare Act- Designs Act, 1911; Designs Act, 2000. (www.vakilno1.com)

Law of Copyright and Industrial Designs – P. Narayanan (Fourth Edition)

CASE 3

Delaware & Tupperware India Pvt. Ltd. Registered under Companies Act, 1956 vs. 9 Defendents under Section 22 of the Designs Act, 2000.

CASE BACKGROUND:

The plaintiff No.1 is a company incorporated under the laws of Delaware, USA. claims ownership and possession to the proprietary know-how, innovative technology, intellectual property rights and trade secrets in creating the designs used for the manufacture of its products commonly known as Tupperware products.

The Plaintiff No.2 namely M/s. Tupperware India Pvt. Ltd. is an Indian company. The plaintiff No. 1 had consented and contractually granted to the plaintiff No. 2 the right to use its moulds to manufacture Tupperware products and also granted the right to use and apply the proprietary and registered designs in respect of those products for manufacture and offer for sale in India.

The plaintiffs have obtained registrations from the Controller General of Patents, Designs and Trade Marks under the Designs Act and Rules.

FACTS:

This case involves 9 defendants who had allegedly infringed the designs for the Tupperware products i.e. food grade plastic storage containers

The plaintiffs had then filed an application for ad-interim injunction .

An independent expert body namely the examiner of Patents and Designs at the office of Controller of Patents and Designs, Kolkata had, in respect of the infringing products’ designs representations upon a ‘search request’. It was observed that there were striking similarities between their designs, colours, materials used etc.

‘Signora’ is the family trade mark of the business of the defendants under which they were selling the products which were distinct as the same had been marketed in a cardboard packing material whereas the plaintiff No. 2 was selling its products in loose form.

Another contention of the defendants was that there is a lot of difference between the two trademarks namely ‘Tupperware’ of the plaintiff and ‘Signoraware’ of the defendants and, therefore, question of confusion and deception does not arise. Defendant Nos. 1 and 4 were manufacturing the products in the colours which had never been used by the plaintiff No. 2 in India.

The designs in question were claimed to be in “public domain” [i] and the defendant Nos. 1 and 4 had thus manufactured the products from their own skill and labour and were entitled to do so. They had tried to give their explanation in respect of each design.

Out of 9 defendants, 7 were excused from the whole trial as few of them denied being the stockist of the goods at all, hence the pleadings of plaintiff and defendant Nos. 1 and 4 were primarily taken into consideration in this case.

TAKES:

PLAINTIFF’s TAKE:

According to the plaintiffs, this act on the part of the defendants was illegal and defendants were to be restrained from manufacturing and marketing these products as it amounted to :

Design infringement under Section 20 of the Designs Act;

Copyright infringement under Section 55 of the Copyright Act;

Defendants were passing-off their goods as that of the plaintiffs by copying trade address and trade name etc. which was confusing and similar to that of the plaintiffs goods.

The defendants had also copied the designs by adopting reverse engineering methodology;

The impugned act of the defendants also amounted to unfair competition and unfair trade practices which also entitled the plaintiffs to claim injunction against the defendants.

The plaintiff No. 1 had consented to plaintiff No. 2 for using the said registered designs on the Tupperware Products as part of a world wide arrangement as well as for the Tupperware Products to be offered for sale in India by plaintiff No. 2. The application by a third party of any such registered design to any article for the purpose of sale, in any Class of articles in which the design is registered under the Designs Act or an obvious or fraudulent imitation and thereof, is not lawful and constitutes a piracy of the registered design under Section 22 of the Designs Act, 2000.

The product drawings and moulds would qualify as ‘artistic works’ of the plaintiff No. 1 under the Copyright Act, 1957 and as the employees of the plaintiff No. 1 had created these works during the course of their employment, by virtue of Section 17 of the said Act, the plaintiff No. 1 became the owner of the copyright in the said artistic work.

Comparison of the two products through experts had revealed that the goods of the defendants were not as good in quality as that of the plaintiffs. Therefore, the defendants were, at the most, puffing up their product by alleging that they were of the same quality as Tupperware Products and selling at half the rates. Thus, they had not created or tried to create any confusion but had clearly told that they were selling their own product which was misrepresented to be as good as that of plaintiffs products.

DEFENDANT:

The objections that defendant had were:

The suit filed by the plaintiff under Section 22 of the Design Act was not maintainable and the 12 designs in question were published previously and not new and original and, therefore, were unregistrable under the Design Act.

They also tried to nullify few charges on various defendants on the grounds of different profession and the core business not being manufacturing. Also suit filed by plaintiff No. 2 was challenged because of the argument that registration of the designs were in favor of the plaintiff No. 1 and the plaintiff No. 2 had not been made as a licensee to use these designs in India.

The suit filed by plaintiff no. 1 u/s 55 of the Copyright Act was challenged on the grounds stating that the plaintiff had made the disclaimer about the copyright while obtaining the design registrations.

JUDGEMENT:

The observations of the learned Single Judge succinctly set out the concept behind excluding certain designs from protection under the Copyright Act. The intention of the legislature had been expressed as one to protect any artistic work which had to be commercially exploited by the owner of the copyright by not providing the protection under the Copyright Act, but under the Designs Act, 1911.

It is in the context of the Indian Law, it is the Design Act of 1911 or 2000, which would give protection to the plaintiff and not the Copyright Act. The application of mind and skill is not being denied nor the fact that the defendants have copied the same, but that would still not amount to the works in question being labeled as ‘artistic work’ within the definition of Section 2(c) of the Copyright Act and, thus, the protection is not available under the Copyright Act. Issue No. 1 is answered accordingly.

Copyright in an industrial design is governed by the Designs Act, 2000. If a design is registered under that Act it is not legible for protection under the Copyright Act. In such cases after the design is registered under the Designs Act, the protection given is not copyright protection but a true monopoly based on statute in as much as such designs were never protected by the common law.

It was also submitted that neither the plaintiff had alleged in the plaint about the trademark of the defendants nor any relief is claimed against the trademark ‘Signoraware’. Their claim is essentially based on Designs Act which is statutory in nature. There is no common law right of passing off provided under the Designs Act.

The designing of defendants is too similar to the plaintiff’s products but the quality was considerably reduced which would have a negative impact on the reputation of the Tupperware India. The latin maxim “Caveat Emptor” meaning let the buyer beware would, therefore apply.

Taking holistic view of the matter it is not a case where injunction is the remedy then the case is primarily founded on the basis of rights under the Design Act and that right, prima facie, is not established. It is a case where damages would be more appropriate remedy if the plaintiffs ultimately succeed. The ex-parte injunction order is vacated.

Representation was that they were the products of different manufacturer namely the Signoraware Products were being sold at half the price of Tupperware Products though they were look alike of Tupperware Products. Thus, as per this statement of the plaintiff, the defendants were not passing off their goods as that of Tupperware Products. The representation was that though they were of the same type as Tupperware but sold cheap. The very fact that they were representing that they were at half the price of the Tupperware Products means that the defendants were making it clear that though the products were not Tupperware Products but they were equally good and were sold at half the price of Tupperware Products. The question of passing off, therefore, would not arise.

Taking holistic view of the matter it is not a case where interlocutory injunction is the remedy when the case is primarily founded on the basis of rights under the Design Act and that right, prima facie, is not established. It is a case where damages would be more appropriate remedy if the plaintiffs ultimately succeed. The ex-parte injunction order is vacated subject to the following:

The Defendants shall file the statement of account of their sales, advertisement expenditure, profits etc. for the period from 1.5.2005 till 31.3.2007 within a period of six weeks.

They shall continue to file such statements annually, within two months of the expiry of the each financial year. For the financial year 2007-2008 (i.e. 1.4.2007 to 31.3.2008) the statement shall be filed by 31.3.2008 and so on.

The defendants shall not dispose of their immovable properties, machinery etc. or create third party rights therein without the prior permission of the Court. Affidavits of the Director(s) and/or responsible person(s) to this effect shall be filed within six weeks.

REFERENCES:

Law of Copyright and Industrial Designs – P. Narayanan (Fourth Edition)

www.indiankanoon.org

CASE 4

Bharat Glass Tube Ltd. v/s Gopal Glass Works Ltd.

(For cancellation of registration of original design on Glass sheets under Designs Act, 2000)

Case Background:

The case is an ‘Intellectual Property Rights’ Dispute between the petitioner, Bharat Glass Tube Ltd. and the respondent, Gopal Glass Works Ltd.

The original case dates back to 20/09/2004 when the Assistant Controller of Patents and Design, Kolkata had cancelled the registration of the Gopal Glass Works Ltd. stating that the designs on glass sheets that it had registered, had already been published abroad and also that the designs are neither new nor original and can therefore be applied by any company that wishes to do so.

The Gopal Glass Works Ltd. filed an appeal against it in the Calcutta High Court and on 17/08/2005, the then Hon. Judge dismissed the cancellation order passed by the Assistant Controller due to the following reasons:

The evidence, especially computer printouts clearly showed that the Gopal Glass Works Ltd. had compared the visual appeal of the pattern/configuration of the article and not the visual appeal of the finished article itself. This fact was not taken into account by the Assistant Controller.

Also, the pattern embossed into the glass sheets by use of embossing rollers could be very different from the visual appeal of the same pattern embossed manually.

The Gopal Glass Works Ltd. therefore filed an appeal against the ruling of the Hon. Judge of the Calcutta High Court and the date of judgment was stated as 01/05/2008.

Some more facts about the case:

The Gopal Glass Works Ltd. claims to be a manufacturer and conducts marketing of figured and wired glass sheets since 1981. They also claim to be the creators of new and original designs on glass sheets through various mechanical processes.

The designs are manufac