#CaseAnalysis: SABYASACHI CALCUTTA LLP Vs MR. ANKIT KEYAL PROPRIETOR ASIANA COUTURE & ORS.

Plaintiff: SABYASACHI CALCUTTA LLP

Respondent: MR. ANKIT KEYAL PROPRIETOR ASIANA COUTURE & ORS.

CORAM: HON’BLE MR. JUSTICE C.HARI SHANKAR

In the HIGH COURT OF DELHI

Date: 27.10.2021

FACTS

The plaintiff company is run under the leadership of renowned designer, Mr. Sabyasachi Mukherjee. The respondent has been sued due to infringement of the plaintiff’s designs which were registered. It thus approached the court praying for an order of injunction.

CONTENTIONS

The plaintiff contended that this infringement resulted in piracy under Section 22 of the Designs Act, 2000. it claimed that the registration attests to novelty concerning all views of the design, residing in the surface ornamentation of the garment set.

The plaintiff prayed to restrain the defendants and others acting on their behalf, from infringing their two designs. It further pleaded that there should not be any “manufacturing, selling, offering for sale, importing, advertising of the above mentioned or any other garments or similar article which is identical and/or obvious/fraudulent imitation of the Plaintiff’s registered designs.” It further seeks an order directing the Defendants to remove all the impugned infringing designs and garments from all online platforms.

In response, the defendants sought ad interim reliefs.

DECISION

It was observed by the Court that the designs appeared as an imitation of the plaintiff’s design, prima facie. This was seen as an attempt to link the products with those of the plaintiff by marketing them on the social media websites of the defendants.

Hence, the Court passed an order stating that, till the next date of hearing on 24th January 2022, there shall be a restraint against the defendants according to the application filed by Plaintiff.

ANALYSIS

In the case of a registered design, the proprietor of the design has the exclusive right to sell, make, license, or use products. Section 22 of the Design Act, 2000, addresses the piracy of registered designs in India by defining three scenarios. [1] According to the law, the Piracy of design is considered for any person:

  • Imitation of any registered article or design for sale without a license or written consent of the registered proprietor
  • Import or any fraudulent or obvious imitation of any registered article for sale, without the consent of the registered proprietor.
  • Publish or expose or cause to be published or exposed for sale that article, knowing that the design or any fraudulent or obvious imitation there has been applied to any article in any class of article where the design is registered.

In this case, the designs have a valid registration vide Registration Nos. 85668 dated 31st July 2019 and 83943 dated 14th October 2018. These registrations are valid and subsisting till 31st July 2029 and 14th December 2028, respectively.

Additionally, there was no consent of the Plaintiff received for the use. The defendant’s social media websites were engaged for marketing the concerning designs.

In the case of Veeplast Houseware Private Ltd vs M/S Bonjour International & Anr, [2] it was observed that every resemblance does not appear to be an act of infringement or imitation in the case of piracy of the registered design. An obvious copy is so close to the original registered design that it is nearly hard to tell them differently. It does not have to be that the two goods be compared by displaying them side by side. An important factor to keep in mind when comparing two designs is whether or not they have similar or substantially identical elements in terms of their broad design including shape, configuration, pattern, etc. If they do, the two designs are likely to be considered an imitation. A consumer with average knowledge and imperfect recollection might be used to assess the situation.

Looking at pictures of the outfits designed by the plaintiff and those advertised by the defendant on its website, they look the same from top to bottom. To any normal human, it would seem to be a similar product with the same design. This is an imitation of the plaintiff’s design which was already registered. The respondent’s actions, therefore, satisfy the definition of Piracy defined under subsection (1) of section 22 of Designs Act, 2000.

There is a clear contravention of this article that attracts remedy. It also provides for those who violate this clause, which includes filing a lawsuit to collect small money from the infringement or demanding damages and an injunction against misuse of the design, to respond to this situation.

According to Section 19 of the Design Act of 2000, a registered proprietor has the option to cancel the registration of a design on numerous grounds, such as novelty. [3] All grounds available to a person seeking cancellation may be adopted as a defense in infringement proceedings. [4] In this case, as the designs are novelty and have valid registrations, it brings no point of clashing over the registration. This makes the contentions of the plaintiff even stronger.

The case even satisfies the probands of Classical Trinity which was observed by the Hon’ble High Court in the case of Cello Household Products and Others v. Modware India and Others. [5] It was observed that “in any Passing off action, the Plaintiff must satisfy all three probands of so-called Classical Trinity:

  • reputation and goodwill in goods;
  • misrepresentation by the Defendants; and
  • damage

The reputation of the plaintiff is spread wide across the country. These designs were used by the defendants, leading to misrepresentation. The buyers often look for cost-effective and easily accessible products. With the defendants advertising products with the same design on social media, the reach is even greater and may attract larger audiences. This creates an assumption that the product is either designed by Sabyasachi or that the same product can be bought at a lower price. Such an act by the plaintiff would damage the sales of the plaintiff.

Hence, the Honorable Court has rightly ordered an injunction.

CONCLUSION

Many companies confront a significant risk of design infringement for their registered design as they race to defend their design.  The primary goal of registering the design is to increase its value and protect it from counterfeiters. When another party infringes on the design, both the financial benefit and the protection of the design are affected. Hence, there has to be a close examination of whether there was an infringement of the design.

[1] Design Act, 2000, § 22, No. 16, Acts of Parliament, 2000 (India).

[2] Veeplast Houseware Private Ltd vs M/S Bonjour International & Anr, 2011 SCC OnLine Del 2558.

[3] Design Act, 2000, § 19, No. 16, Acts of Parliament, 2000 (India).

[4] Aayush Sharma, Martand Nemana, Design Piracy In India, MONDAQ (Nov. 6, 2021, 4:59 PM), https://www.mondaq.com/india/copyright/515756/design-piracy-in-india.

[5] Cello Household Products v Modware India, 2017 (72) PTC 367 (Bom).

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Summited by: 
Jinal Prajapat,
Intern_CIPRA

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