Delhi High Court Rules in Favor of Prestige: Design Which is Functional & Possesses Aesthetic Qualities Entitled to be Registered as Design
The Delhi High Court while ruling in favor of TTK Prestige Ltd, has found a Delhi-based manufacturer- Gupta Light House guilty of design piracy under Section 22(1) of the Designs Act, 2000 after finding the design of its pressure cookers imitative of Prestige’s ‘Pressure Handi Cookers.’
The single judge Justice C. Hari Shankar was hearing a suit for infringement of design filed by plaintiff- TTK Prestige Limited against the manufacturer Gupta Light House seeking- defendant seeking a decree of permanent injunction and damages against the latter.
Prestige claimed that the design of the pressure cookers manufactured and sold by Gupta Light House were imitative of its registered suit designs and therefore, it was guilty of design piracy under Section 22(1) of the Designs Act.
On the other hand, Gupta Light House claimed that the suit design was bad for want of novelty and originality since it was based on the design of the pre-existing and well-known design of a ‘handi’.
The Court accredited that the plaintiff was the holder of the valid registration for its cooker, granted on 13 December 2004. Moreover, the certificate of registration clearly stated that novelty resided in the shape and configuration of the cooker.
The Judge noted that the cooker apparently did not bear the conventional shape of a cooker and has a bulging mid/lower section, which is not ordinarily found in cookers. Therefore, the Court was of the view that as such, the design of the plaintiff’s cooker has clear distinctive eye appeal, which is one of the definitive criteria for entitlement to registration as a design.
While comparing the suit design with the defendant’s product, and also while comparing the plaintiff’s and the defendant’s product themselves, the Court was of the view that it was clear that the design of the defendant’s product is imitative of the suit design.
“Though the defendant has sought to place on record various photographs of pressure cookers having similar designs, there is not a single photograph which is prior to the date of registration of the suit design i.e., on 13 December 2004,” the Court remarked.
Therefore, the Court held that in the absence of any photograph or other representation of a pressure cooker bearing a design similar to the suit design, dating prior to 13 December 2004, it cannot be said that the suit design was bad for prior publication. The Court opined it to be possible that, in view of the novelty of the suit design, other manufacturers had copied it.
Insofar as plea of want of novelty was concerned, the Court noted there was not a scintilla of material placed on record by the defendant to support the stand.
No picture or representation of any ‘handi’ was placed on record by the defendant – on whom the onus to prove want of novelty and originality had been placed by the Court while framing issues – to indicate that the suit design was similar in any form to any prior existing design of a ‘handi’.
The judge highlighted that in a commercial suit, it is quite obvious that a Court cannot pass orders on the basis of its imagination. The said plea, therefore, was rejected.
The Court upon perusal of Section 2(d) of the Designs Act, observed that it excludes every trade mark as defined in Section 2(1)(v)6 of Trade and Merchandise Marks Act, 1958.
The final plea was on the aspect of functionality. Again, there was nothing on record to indicate that the suit design was vulnerable to invalidity as it was purely functional in nature.
The Court placed reliance on its decision passed in the case of TTK Prestige Ltd. vs. KCM Appliances Private Limited, wherein the Court had deliberated on the aspect of functionality as a delimiting factor in registrability of designs. Functional designs, per se, are not ineligible to registration. It is only if a design is purely functional and not possessed of any aesthetic appeal, that the design becomes no registrable, was held by Justice Ruma Pal, (as she then was), sitting singly in the Calcutta High Court in Castrol India Ltd vs. Tide Water Oil Co. (I) Ltd, referred the Court.
Averting to the present case, the Court said that it cannot be said, that the suit design has no aesthetic appeal. Clearly, the suit design had aesthetic appeal even visà-vis prior art and vis-à-vis other known and commonly seen designs of pressure cookers.
The Court avowed, “The mere fact that it has a functional attribute cannot, therefore, divest if from its right to registration as a design. A design which is functional and also possesses aesthetic qualities is entitled to be registered as a design. The plea that the suit design is vulnerable to invalidity as it is purely functional can also, therefore, not be exhibited and is accordingly rejected.”
While holding that Prestige cannot be granted a decree of permanent injunction as the suit design had expired on 13 September, 2019, and was in the public domain, the Court concluded that a clear case of piracy within the meaning of Section 22(1) of the Designs Act was made out.
The Court thus, directed Gupta Light House to render accounts of the earnings earned by it by sale of the pressure cookers bearing the impugned designs, reserving Prestige’s right to claim damages in the future on the basis of the accounts as rendered.
Accordingly, the Court held that the plaintiff shall be entitled to actual costs of the present litigation, for which purpose, the plaintiff was directed to place on record a certificate of costs incurred by it.
For the purpose of computation of costs, the Court listed the matter before the Taxation Officer of this Court on 29 August 2023.