High Court of Madras
Date of Judgement: 01.03.2018
C.S. No. 26 / 2018 (Original Application No. 31 and 32 of 2018)
Preethi Kitchen Appliances (hereinafter, plaintiff) was involved in the business of production and sale of kitchen appliances. It had registered a design for a tripod-shaped base unit of a mixer grinder in 2015, having validity up to 10 years thereafter (hereinafter, suit design). In 2017, the plaintiff learned that M/s. Maya Appliances Pvt. Ltd. (hereinafter, second defendant) was engaged in the manufacture and sale of a mixer grinder with a base unit allegedly similar to the suit design, thereby infringing upon the design copyright of the plaintiff. However, the second defendant subsequently claimed that their product was produced in pursuit of a separate design, registered in 2017. Consequently, the plaintiff had filed a suit seeking an injunction to restrain defendant no.2 from infringing the suit design. Baghyaa Home Appliances Electronics (hereinafter, first defendant) was a dealer of the second defendant and was a formal party for the purpose of this ruling.
The issue at the nucleus of this ruling was whether the registration of design by the second defendant would entitle them to protection against action of infringement brought by the prior registered proprietor of a design, i.e., the plaintiff herein.
- Section 22 of the Design Act permits a plaintiff holding a registered design to institute proceedings against a defendant who is in similar possession of a registered design.
- A registered design is not sufficient to protect holder from suit of design infringement brought by prior or original registered proprietor of design.
- In cases of design infringement, assessment of infringement should be done by drawing a comparison between the design registration certificate and the product allegedly infringing it.
- The central theme of a design is its appeal to the eye. This suggests that an allegedly infringing product must be examined from the perspective of how one would normally look at it. This would, accordingly, reduce the significance of any defence taken on the grounds of dissimilarity from any specific perspective, that does not affect the overall image of the product.
- In cases where registered design and the alleged offending product are similar only from some views or perspectives, the overall perspective of the product, i.e., considering the product as a whole, shall be taken.
- The test undertaken when assessing similarity between two designs is whether there exist substantial differences that can be observed in the objective essential features of the two designs.
- Registration of a design, in the absence of any explicitly mentioned limitation, entitles the entire design to protection and cannot be said to be applicable to separate integral elements of the design. The protection shall extend only to cases of exact copies of the registered design.
The Court held that the second defendant, being a subsequent registrant and simultaneously, a subsequent entrant into the market, was not entitled to any protection by virtue of their design registration qua prior registrant (the plaintiff). Addressing the issue of infringement, the Court held that the product of the second defendant was similar to the suit design, and accordingly constitutes an infringement of the same. Hence, the Court allowed the prayer of the plaintiff and granted injunction qua passing off.
Protection of designs has been a defining feature of Indian design laws and litigation thereunder. The present ruling by the Madras High Court lays down important principles regarding cases of infringement of a registered design. It also reaffirms long-standing principles associated with such cases, drawing reference to English judgements, as well as judgements of the Delhi Court.
In an articulate and simple manner, Justice Sundar settles the position of law regarding the eligibility relief of prior registrants in cases where a subsequent registrant infringes upon the former’s registered design. The ruling restates that later design registration does not confer any protection qua the prior registrant. It also reaffirms the validity of the defence of invalidity of prior registrant’s design under such matters. Noticeably, it further elaborates upon the process of evaluation of similarity between two designs. It should be noted that the unanswered issue of combining actions of infringement and passing off in this ruling has been now been settled by the Delhi High Court, which held that a composite suit that joins causes of actions of infringement and passing off can be undertaken.
Therefore, this pronouncement by the Hon’ble Madras HC can be considered to be a fruitful gateway towards understanding the basic principles involved in this aspect of design protection.
 Micolube India Ltd. vs. Rakesh Kumar Trading [MIPR 2013 (2) 156]
 Alert India vs. Naveen Plastics [1997 PTC (17) 15]
 William J. Holdsworth vs. Henry C. M’crea [1987 Vol.II Englidh and Irish Appeal pg. 380]; Harish Chhabra vs. Bajaj Electricals Ltd. [2003 Mh.L.J. 962]
 Supra note 2
 Carlsberg Breweries A/S vs. Som Distilleries and Breweries Ltd. [256 (2019) DLT 1]
For Judgment copy : Preethi Kitchen Appliances Pvt. Ltd. v. Baghyaa Home Appliances