Delhi High Court Rules In Favour Of Prestige, Says Design Of Hotsun Pressure Cooker Imitative Of Its Pressure Handi Cookers

The Delhi High Court has found a Delhi-based manufacturer 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”.

Justice C. Hari Shankar was hearing a suit for infringement of design filed by TTK Prestige Limited against the manufacturer Gupta Light House 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. 

It alleged that a handi is a well-known cooking vessel which has been used in India since ancient times and that the Court can take judicial notice of the similarity between the design of a handi and the design of Prestige’s ‘Pressure Handi Cookers’.

Ruling on the plea that the suit design was bad for want of novelty and originality, the court remarked that the design of Prestige’s pressure cookers did not bear the conventional shape of a cooker but had a “bulging mid/lower section, which is not ordinarily found in cookers”. 

The court thus concluded that the design had a clear distinctive eye appeal, which is one of the definitive criteria for entitlement to registration as a design.

Rejecting the plea that the suit design was invalid since it was purely functional and had no aesthetic appeal, the court said that Prestige’s “Pressure Handi Cooker” has aesthetic appeal “even visà-vis prior art and vis-à-vis other known and commonly seen designs of pressure cookers”.

The court remarked that the mere fact that a design has a functional attribute cannot divest it from its right to registration as a design. Thus, it ruled that a design which is functional and also possesses aesthetic qualities is entitled to be registered as a design.

The court, however, found that the suit design, which was registered in favour of Prestige on December 13, 2004, had expired by efflux of time on December 13, 2019. Therefore, it held that the suit design is now in the public domain and thus, there could be no judgment or decree passed restraining the use of the suit design by anyone at this point of time.

The court also noted that the certificate of registration granted to Prestige clearly stated that “novelty resides in respect of the shape and configuration of the cooker”.

“A glance at the cooker makes it apparent that it does not bear the conventional shape of a cooker but has a bulging mid/lower section, which is not ordinarily found in cookers. 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,” the court said.

It added: “A comparison of the suit design with the defendant’s product, as also a comparison of the plaintiff’s and the defendant’s product themselves, make it clear that the design of the defendant’s product is imitative of the suit design.”

After noting that Gupta Light House had categorically averred in its written statement that the get-up of Prestige’s “Pressure Handi Cooker” was not registrable as a trademark, the court said that the defendant could not say that the suit design was a trade mark and thus, invalid under the Designs Act. 

“A party cannot raise one plea in writing and argue an exact opposite plea during arguments in Court,” said the court.

“In the present case, it cannot be said, that the suit design has no aesthetic appeal. Clearly, the suit design has aesthetic appeal even visà-vis prior art and vis-à-vis other known and commonly seen designs of pressure cookers. 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,” it remarked.

While holding that Prestige cannot be granted a decree of permanent injunction as the suit design had expired on September 13, 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.

“The present suit is decreed by directing the defendant to render accounts by filing on affidavit the details of the earnings made by the defendant by sale of the pressure cookers bearing the impugned designs, from the beginning, duly certified by a Chartered Accountant. Said details shall be filed before this Court within a period of four weeks from today. Liberty shall separately stand reserved with the plaintiff, thereafter, to proceed against the defendant for recovery of damages, if it so chooses,” the court ruled.

Case Title: TTK Prestige Ltd. vs Gupta Light House

Citation: 2023 LiveLaw (Del) 633

Counsel for the Plaintiff: Mr. Manish Kr. Mishra, Ms. Akansha Singh and Ms. Saloni Kasliwal, Advs.

Counsel for the Defendant: Mr. Kunal Khanna and Mr. Manish Singhal, Advs.

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