Submitted by : Vidushi Verma, Intern_CIPRA.

Date of Decision :05/07/2022.

Citation: 2022 SCC Online Del 1923

In a single judge bench of Hon’ble Justice Navin Chawla, decided on 05/07/2022, the Delhi High Court, in the case of Philips Lighting Holding B.V. v. Jai Prakash Agarwal and Anr.[1], refused to grant an interim injunction in favor of the Plaintiff regarding their claim on design infringement and passing off.

Legal Provisions referred to:

The Designs Act, 2000:

  1. Section 2(d)
  2. Section 19(1) (a)
  3. Section 19(1) (b)

Statement of Facts:

  • The Plaintiff, Philips Lighting Holding B.V. claims itself to be a prime manufacturer and seller of high quality and energy efficient lighting products, systems and services like stage lighting, home lighting, studio lighting, smart lighting etc. They claim to have developed a variety of innovative solutions with Light Emitting Diodes (LED).
  • The counsel for the plaintiff claimed the novelty of their product’s unique “T-shape” design and its “plug and play format” that allows the T-light to provide better and focused lighting since the regular light bulbs are mostly available in a round shape and are incapable of the same.
  • The Plaintiff filed two suits claiming rights over the design of their new product, “T-shaped LED bulb” registered under the design registration no. 299147 (registered from the EUIPO on 08.05.2017) on 06/11/2017 in Class 26-04 against Jai Prakash Agarwal and Anr. And Syska LED Lights Pvt. Ltd.Publication Image

  • They further claimed that the Defendants were misrepresenting their goods as that of the Plaintiff’s since the products looked deceptively similar to that of the Plaintiff’s. The Plaintiffs had mentioned their Date of Registration of Design as 08.05.2015 in their application.

Issues and Arguments on behalf of the Plaintiff and the Defendants (in both the suits):

  • The counsel mentioned that the light is different from a tube light as it does not come with a holder on the sides and is easier to install.
  • She further claimed the right of the plaintiff as far as the said design is concerned, is recognized by the industry and that the plaintiff is the Original Equipment Manufacturer (OEM) for many lighting companies in India like, Havells India Limited, Eveready Industries India Ltd. etc. These companies get hold of the T-Light from the plaintiff and sell it under their brand name in exchange of a license fee or other consideration as mentioned under the terms of their respective contracts with the Plaintiff.
  • Keeping in mind the above stated facts, the counsel on behalf of the Plaintiff sought an injunction submitting the similarity between their registered design and the design of the Defendants’ products.
  • On the contrary, the counsel on behalf of the Defendants stated that the definition of a “design” does not include a trademark and since the Plaintiff was claiming passing off in the design as a trademark, the registration of the design is entitled to be cancelled.
  • Referring to the case of Steelbird Hi-Tech India Ltd. S.P.S. Gambhir & Ors[2], that the design of the Plaintiff is nothing but merely a trade variant of an already known design with an LED tube light and the holder being common in the trade. The Plaintiff in order to claim its right over the design as “new” and “original” must depict that it had introduced a substantial change to the original design and that the Plaintiff had failed miserable in meeting the test, thus, is not entitled to any relief in this matter.
  • He further submitted that it was also entitled to be cancelled as under Section 19(1)(a) and 19(1)(b) of the Designs Act, 2000 as the same design had already been published in India or in any other country prior to the date of registration.
  • It was also brought to the notice of the Court that date of Registration as submitted by the Plaintiffs in the Application was intentionally mentioned wrong as 08/05/2015 when it should have been 08/05/2017 instead.

The Court’s Observation and Analysis:

The Court carefully analysed the definition of “design” and found that it only refers to the features of shape, configuration, pattern, ornament, or composition of lines and colours of any article whether it is in a two-dimensional or a three-dimensional form or in both forms that in the finished product, are judged by the eyes. It has to be “new and original”. It also stated that in case, the design has already been published in India or in any other country before the date of registration of the same, the registration is liable to be cancelled. It further observed that the designs of the products were “similar, if not identical”. As far as the date of registration of design was under question, the Court stated that it was merely a typographical error which was not sufficient enough to disentitle them of the protection. However, apropos to the passing off claim of the Plaintiff, the Court also stated that the Plaintiff had failed to make a prima facie case in their favour whereas, the Defendants successfully established their case by showing other design registration considering the 2017 registration.

Tests applied to the case:

As per the court, “the test to determine if the design is “new‟ or “original‟ inter-alia is to determine and exclude ordinary trade variants into an old design. A design identical with or even materially similar to the relevant design should not have been published or registered previously. A slight trivial or infinitesimal variation from the pre-existing design shall disqualify the relevant design for registration. The change introduced should be substantial.”[3] Therefore, the Court after applying the test to the present suit, found that the Plaintiff’s design is just a trade variant of an already existing and registered design as was contended by the Defendants and so, is disqualified for registration.

Further the court, opined that to test whether the design is functional or not one can simple answer a question that is there no other shape or configuration available in which the product can discharge the desired function? If the answer comes out to be in negative, the registered design is entitled to be protected under the Act. However, the onus probandi to prove that the design is not novel or original and that it is not entitled to be protected under the Designs Act, 2000 lies with the Defendants in any case. Applying the test as given in the case of Dart Industries Inc. and Ors.[4], it was observed that the designs of the products of both the parties could be said to be similar, if not identical when judged solely by the eyes. The differences were only superficial in nature, and the difference between the cylindrical shape of tube and the holder were sufficient enough to make the two products distinct from each other.

As far as the question of prior publication arose, the Court held that the existence of a design in the public record or in the office of a Registrar of Design may or may not amount to prior publication, depending on the facts of each differing case. It would only be categorized under a prior publication when the registered design is made public and has clarity when applied to a specific article capable of being judged by its visual appearance and by use of that information another article made using the design is made, resulting in the piracy or infringement of the design. In this case, the court stated that the designs previously registered were clearly depicted the product with the said design and thus, the Defendants were able to prove that the Plaintiff’s design was not new rather, it was only a variant of the pre-existing design.

Addressing the Plaintiff’s claim of passing off, the court stated that no prima facie case was made by the Plaintiff for the same. Since the Plaintiff themselves had pleaded that it was the Original Equipment Manufacturer for a number of other lighting companies in the country and produced the design to them, for them sell them under their respective brand names, the design itself is not enough to form a nexus between the product and the Plaintiff to claim passing of their claim in the design.

Judgement and Conclusion:

The High Court of Delhi in the present case dismissed the Plaintiff’s claim for infringement of design and passing off and rejected interim injunction for the same as it was established that the design in question was merely a trade variant of the design already known and registered.

[1] 2022 SCC Online Del 1923

[2] CS(OS) 2407 of 2013

[3] 2022 SCC Online Del 1923

[4] 2009 (39) PTC 104 (Del) (DB)

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