CASES ON SECTION 4(a) of DESIGN ACT.

1. Pentel Kabushiki Kaisha & Anr. Vs. M/S Arora Stationers & Ors.,
The court held that mere variations to existing products which do not result in requisite amount
of newness or originality cannot be considered as innovations having newness and originality
for being granted monopoly for fifteen years.

2. Kemp And Company And Others V. Prima Plastics Limited (2000 (2) Ptc 96),

it is well settled principle of law that the certificate of registration by itself is not conclusive of
the validity of the registration or that such design is new and original.

3. Cello Household Products v. M/S Modware India and Anr. & Ors.

The case was filed by popular ‘household products’ production company ‘Cello’ against
Modware India seeking an injunction for design infringement and passing off. The dispute was
over the copying of design of the bottle name PURO launched by the plaintiff in the year 2016,
the bottle was a two-toned color with certain specific phrases and words. The defendant
launched a similar bottle called ‘KUDOZ’ in the following year for which they were sued by
the plaintiff. Thus, here the subject matter is the infringement of the design of the bottle
launched by Cello for which the company has invested ample money in the market for selling
and marketing purposes.

The court on the basis of merits decided that the plaintiff was justified in filing the suit against
the defendant as Modware India introduced a bottle which is deceptively similar to the bottle
of Cello and denied defendant’s contention of lack of jurisdiction of Bombay High court to
decide the case following a grant of injunction and relief to be given by the defendants to the
plaintiff as damages keeping the loss faced by the plaintiff as the base. Therefore, cello won
the case.

4. M/S Crocs Inc. USA v. Liberty Shoes Ltd. & Ors.

The recent case filed by crocs against numerous footwear companies has established the
importance of design act and given a verdict against crocs on the basis of prior publication of
design. The case was filed in the Delhi High Court and was taken up by Hon’ble Justice
Valmiki J. Mehta

Crocs USA filed cases against shoe manufacturers alleging infringement of their design which
is related to perforated and non-perforated shoe design. The plaintiff claimed the design as
registered from 25.8.2003, the defendant contended that the design registration is subject to
cancellation as it does not qualify under the category of ‘new’ or ‘novel’.

The Delhi High Court held that the registered design of the plaintiff with respect to its footwear,
does not have the necessary newness or originality for the same to be called a creation or
innovation or an Intellectual Property Right. The Court accordingly observed that the registered
design of the plaintiff is liable to be cancelled as per Section 19(1)(d)[1] of the Act read
with Section 4(a)[2] of the Act. The Court in the case also awarded litigation costs as well
present to costs incurred by them towards time and man hours spent by these defendants for
conducting their defenses in the present suits. An appeal filed in the Supreme Court by the
plaintiff was dismissed, upholding the orders of the Delhi High court in January, 2019.

5. Sh. Ravinder Kumar Gupta v. Sh. Ravi Raj Gupta and Ors. 1986 PTC 50,

Court clarified this aspect and the vivid description of the law is found in the following passages
from the said judgment:

...If the design was original then the designer must have conceived something new; if the design
was a mere trade variation of a previous design, then the designer could be said to have merely
kept an existing design in view and made some changes in that. It was further held that in order
to determine whether a design was new or original there must be substantial difference from
the designs which were known or had been published prior to the date of registration that that
what such a substantial difference was, was a question upon which no general principle could
be laid down at all and it must depend upon the particular fact in each case and further that in
one case a quite small variation in the details of a design might be enough to make the design
something quite different from an existing design. On the other hand it was observed there
were cases even where quite large alterations in detail leave two designs for all practical
purposes of the same and that the court has to consider and look at the designs in question with
an instructed eye and say whether there was or was not such a difference between that which
has been published previously and the registered design to say that at the date of registration
there was a new or original design and therefore properly registered....

P.22...The Court has to consider and look at the designs in question with an instructed eye and
say whether there is or is not such a substantial difference between that which had been
published previously and the registered design as to enable the proprietor of the registered
design to say that at the date of registration that was a new or original design and, therefore,
properly registered.

P.24...it was observed that there must be not a mere novelty of outline but a substantial novelty
in the design having regard to the nature of the article.

P.25...A trade variant is, therefore, some embellishment (useful or otherwise) which is known,
and sometimes, though not always, used in connection with a particular class of article or class
of work....

P.26. Thus, Mr. Anoop Singh submitted that change from sharp corner to a round corner is at
best a trade variant and registration of the design should not have been permitted. He submitted
that it was not disputed that sharp corner glass tiles with mottling effect were in existence much
prior to the date of registration of the design.

P.28...By making the corners from sharp to round, it cannot be said that some new design has
been created from one's own mind and though 'New' would be something you develop and
which was not earlier in existence. It should be striking new design. Round corner tiles may
look fresh, but I would not say that there is any novel idea involved in bringing out a tile with
round corner.

6. B. Chawla & Sons v. Bright Auto Industries ,

the Court found that there were only little variations in the products already existing. It
observed that an addition to curve here or there in shape which is well recognized shape of an
article of common use in the market cannot make it an article new or original in design. Such
a claim was devoid of newness and equally devoid of originality. Prima facie, therefore, claim
under Designs Act does not appear to be sustainable.
Cases on Section 4(c) of Design Act.

The Supreme Court in the case of Bharat Glass Tube Limited Vs. Gopal Glass Works
Limited (2008) 10 SCC 657 has made similar observations in para 26 and this para 26 reads
as under:-

"26. In fact, the sole purpose of this Act is protection of the intellectual property right of the
original design for a period of ten years or whatever further period extendable. The object
behind this enactment is to benefit the person for his research and labour put in by him to evolve
the new and original design. This is the sole aim of enacting this Act. It has also laid down that
if design is not new or original or published previously then such design should not be
registered. It further lays down that if it has been disclosed to the public anywhere in India or
in any other country by publication in tangible form or by use or in any other way prior to the
filing date, or where applicable, the priority date of the application for registration then
such design will not be registered or if it is found that it is not significantly distinguishable
from known designs or combination of known designs, then such designs shall not be
registered. It also provides that registration can be cancelled under Section 19 of the Act if
proper application is filed before the competent authority i.e. the Controller that the design has
been previously registered in India or published in India or in any other country prior to the
date of registration, or that the design is not a new or original design or that the design is not
registerable under this Act or that it is not a design as defined in Clause (d) of Section 2. The
Controller after hearing both the parties if satisfied that the design is not new or original or that
it has already been registered or if it is not registerable, cancel such registration and aggrieved
against that order, appeal shall lie to the High Court. These prohibitions have been engrafted
so as to protect the original person who has designed a new one by virtue of his own efforts by
researching for a long time. The new and original design when registered is for a period of ten
years. Such original design which is new and which has not been available in the country or
has not been previously registered or has not been published in India or in any other country
prior to the date of registration shall be protected for a period of ten years. therefore, it is in the
nature of protection of the intellectual property right. This was the purpose as is evident from
the Statement Of Objects And Reasons and from various provisions of the Act. In this
background, we have to examine whether the design which was registered on the application
filed by the respondent herein can be cancelled or not on the basis of the application filed by
the appellant.

Midas Hygiene Industries P. Ltd. and Ors. vs. Sudhir Bhatia and Ors. (22.01.2004 - SC)
: MANU/SC/0186/2004
aThe label is clearly both a trademark, as it indicates the brand and the origin (i.e. the
manufacturer or producer) as well as a copyright, as it contains a combination of colours and
stylized lettering, set in red colour, with the image of a cockroach. The expression "LAXMAN
REKHA" and the other one, "KRAZY LINES" are at least in combination with the colour
scheme and get up, trade-marks; hence they are labels and clearly excluded from the definition
of "designs". Furthermore, the respondent nowhere asserts that there are novel or new elements
in the shape or configuration of the packaging which deserve design protection. By virtue of
Section 4 (c) design registration is refused if the work is "not significantly distinguishable from
known designs or combination of known designs..." It is not shown how the packaging or label
upon it, in this case is so unique or novel as to RFA239/11, 240/11 & 241/11 Page 28
distinguish it from known designs. The object of the Designs Act is to confer protection to
novel and unique designs. If every object based upon some drawing were afforded design
registration, soon, objects of common utility- vessels, containers, furniture items, etc. could not
be replicated. Therefore, it is held that apart from the fact that the work in the present case was
copyrighted as an artistic work and thus stood excluded from the definition of design- as well
as the fact that it was a trademark label, it is also held that it cannot also qualify for design
registration- the sole condition for operation of Section 15 (2). The respondent had urged that
the artistic work does not qualify for registration because it is not original or creative. However,
there is no discussion on the issue by the Board.