Philips vs Syska | Mere Trade Variants Of Pre-Existing Designs Not Capable Of Registration: Delhi High Court

The Delhi High Court has held that a design identical with or even materially similar to a pre-existing design should not be published or registered. A single judge bench of Justice Navin Chawla also held that mere trade variants of what is already in existence or what is common to the trade is not capable of being registered.

Briefly, the facts of the case are that the plaintiff, Philips Lighting Holding, filed two suits claiming rights in the design of what it refers to as a "T-Shaped LED Bulb‟. Referring to the products of the defendants (including Syska LED Lights), the counsel for plaintiff submitted that the same are infringing copies of its registered design and ought to be injuncted.

The plaintiff further submitted that the defendants (in both the suits) were also guilty of passing off their impugned products as that of the plaintiff's on account of a deceptively similar look, feel and trade dress of both the products.

Per contra, the defendants submitted that as the plaintiff was claiming passing off in the design itself, the design registration was liable to be cancelled. Defendant's counsel stated that by its very definition, a 'design' does not include any trade mark. Thus, the moment the plaintiff claims a right in a design as a trade mark, the same is liable to be cancelled.

The defendants also submitted that the design registration of the plaintiff was also liable to be cancelled in terms of Section 19(1)(a) and 19(1)(b) of the Designs Act, 2000 (the Act) as the same having been previously registered in India and having been published in India or in any other country prior to the date of registration.

The court analysed the meaning of 'design' as per the Act and found that a 'design' refers only to the features of shape, configuration, pattern, ornament or composition of line and colours applied to any article whether in two dimensional or three dimensional or in both forms, which in the finished article, appeal to and are judged solely by the eye. A design has to be 'new' or 'original'. The court also stated that if the design has been previously registered in India or has been published in India or in any other country prior to the date of its registration, such registration itself is liable to be cancelled and can be assailed even as a defence to the suit alleging piracy of such registered design. The court opined that–

"To test as to whether a design is merely functional or not is by asking a question whether there is no other shape or configuration available in which the product can discharge the desired function. If the answer is in the negative, the registered design is entitled to protection. The onus of proving that the registered design is not new or original and not entitled to protection is always on the defendants. Keeping in the view the above test, the designs of the T-Bulb of the plaintiff and those of the defendants can easily be said to be similar, if not identical. The alleged differences are merely superficial in nature. Once judged solely by the eye, the two products, that is, one of the plaintiff‟s and the other of the defendant, are similar if not identical. The difference of cylindrical shape of tube and/or of the joint to the holder, are hardly sufficient to distinguish the design of the two products."

Having said the above, the court came to the question of whether the defendants were able to make out at least a prima facie defence of the registration of the design in favour of the plaintiff to be cancelled under Section 19 of the Act. In this regard, the court opined that the test to determine if the design is 'new' or 'original' is to determine and exclude ordinary trade variants into an old design. The court held that–

"A design identical with or even materially similar to the relevant design should not be 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. A balance has to be struck so that novelty and originality may receive the statutory recognition and interest of trade and right of those engaged therein to share common knowledge is also protected. Mere trade variants of what is already in existence or what is common to the trade is not capable of being registered. Applying the above test to the facts of the present case, it prima facie appears that the design of the plaintiff is merely a trade variant of an already-existing registered design(s) cited by the defendant."

The court also held that the existence of a design in the public record/office of a Registrar of Design may or may not, depending upon the facts of each case, amount to prior publication. It would be a prior publication only if the registered design is made public and has necessary clarity as applied to a specific article capable of being judged by visual appearance or the eye of the mind, and by use of that knowledge, an article can be made using that design, which will be piracy or violation of that design.

In the present case, the court stated, the prior registered designs were clear enough and depicted the end product with the said design. Thus, the defendants had been able to show that the design of the plaintiff was not 'new' but a variant of an already-existing design.

Regarding the plaintiff's arguments concerning passing off even under trade mark law, the court held that no prima facie case was made to that effect. The court noted that the plaintiff itself pleaded that it was also the original equipment manufacturer for several other lighting companies in India and produced such designs for various companies, who in turn sell them under their own brand name. Therefore, the court held that the design itself could not be enough to attribute a connection of the product with the plaintiff for it to maintain a claim of passing off. The court further opined that–

"Even otherwise, the plaintiff has also failed to fulfil the other two elements of the trinity test for grant of temporary injunction-balance of convenience and irreparable injury...It is evidenced that the claim of the plaintiff at that stage was monetary, that is, in terms of royalty or license fee. It is also an admitted case of the plaintiff that the plaintiff has granted licenses for consideration in form of payment of a license fee and/or other valuable consideration to other lighting companies. The plaintiff can, therefore, always be compensated in terms of damages in case it succeeds in the suit(s). In view of the above, I am of the opinion that the balance of convenience demands that, while rejecting the claim of ad-interim injunction of the plaintiff, the defendants (in both the suits) are directed to file, on a regular basis, accounts of their sales made under the impugned design(s). Such accounts be filed on affidavit(s) on a half- yearly basis during the pendency of the suits."

Related Read: Plea Of 'Passing-Off' Can't Be Negated Solely On Ground That Plaintiff Had Asserted Trademark Rights In Registered Designs: Delhi High Court

CASE TITLE: PHILIPS LIGHTING HOLDING B.V. v. JAI PRAKASH AGARWAL AND ANR.

Citation: 2022 LiveLaw (Del) 631

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