Design Infringement and Passing Off
Passing off was once considered to be a common law remedy available only to trademarks. But, an inclusion of the scope of passing off to designs leads to various interesting debates and questions in the IP arena. This article would help in understanding the conundrum with referrals to various case laws throughout it.
The key issues involved are:
-Availability of common law remedy of passing off under the Designs Act, 2000.
-Continuation of a mark as a design which has gained trademark status.
-Composite suit of Design Infringement and Passing off.
-Passing off suit against a design registrant.
The very purpose of the Designs Act 2000 is to protect the intellect of an author or a proprietor of a design. This act protects the following designs:
- A design which is original or new.
- A design which is not previously disclosed to the public.
- A design which can be significantly distinguished from other known designs or combination of known designs.
Section 22(2) of the Act lists the liabilities of the one who infringes a design, which are impliedly the remedies available to the registered proprietor. The registered proprietor has to elect one of the alternative remedies provided in this section.
Section 22(2) (a) enforces the infringer to pay a sum not exceeding Rs.25, 000 for every contravention recoverable as a contract debt to the registered proprietor. The total sum of such amount recoverable for one design should not exceed Rs.50, 000.
Otherwise, the proprietor can elect to bring a suit for recovery of the damages, and for an injunction against repetition, as under Section 22(2) (b). Then, the infringer is liable to pay such amount as awarded by the court and is restricted by injunction respectively.
The ratio behind this is to make the infringer liable for the loss suffered by the registered proprietor and to ensure a fair return on the proprietor’s investment. However, to claim the damages, the registered proprietor is required to mark his articles in some manner denoting that the design is registered and to take all steps to ensure the marking of the article.
Cello v. Modware
- The Plaintiffs (collectively, “Cello”) claimed to have designed a unique water bottle -in the words of the Designs Act 2000, one that has both novelty and originality. This claim is based on the bottle’s shape, configuration and surface ornamentation.
- Cello says it created this bottle in-house in May 2016 and applied for its registration with the Controller General of Patents, Designs and Trade Marks, who granted the application under Design Registration No. 283345 on 23rd August 2016 with a priority date of 12th May 2016.
- The Plaintiffs’ PURO bottle had a shape, configuration and surface pattern adopted by the Defendants.
- The Defendant on the other hand has raised to the Plaintiff’s registration as lack of novelty in the latter’s design. It has been contended that there is no new, novel or original shape in the Plaintiff’s design and that the Plaintiff’s design is a combination of known designs.
- Modware has made no application for cancellation of Cello’s registered design under any of the grounds (a) that the design has been previously registered in India; or(b) that it has been published in India or in any other country prior to the date of registration; or (c) that the design is not a new or original design; or (d) that the design is not registrable under this Act; or(e) that it is not a design as defined under clause (d) of section 2.
Whether the action of design infringement and passing off exists in relation to packaging of a plastic waterbottle?
- The Court granted an ad-interim order in favour of the Plaintiff that Cello’s design was original and Modware’s product infringed upon it.
- The Court held that Modware was attempting to deceive consumers into believing that its products came from the house of Cello. This is, therefore, prima facie, an attempt calculated to deceive and the deception and misrepresentation is as to source or origin. These are the necessary requirements that must be met in a cause of action in passing off.
This Judgment of the Bombay High Court in the case of Design Infringement focuses on the fact that No “expert” can add much more than that which is obvious to the naked eye. In other words, more attentionneeds to be paid to the obvious feature of the product that makes the two look similar and no expert opinion on dissimilarity can hold good. Thus, in a nutshell, after this judgment it is clear that it is a pure case of Design Infringement and ‘what looks exactly similar is considered similar!’
Besides everything, I must agree that designs law regarding infringement is constantly evolving. A recent judgment of the Bombay High Court in Cello v. Modware has discussed the issue with a different facet envisioning the scope of mosaicing of prior art in designs.
Is it a herculean task for you to read the above piece? I sum it up for you.
-Yes, you can file a suit of passing off for protecting your design.
-Yes, your design is still protected under Designs Act even after it becomes a trademark.
-Yes, you can file a passing off suit against a design registrant.
-I guess you have to wait a little longer to file a composite suit of passing off and design infringement.
The laws are providing every means to protect your intellectual property. On your part, know and utilize it.
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