Designs Act, 2000: Abstract Concepts Are Not Registerable As Designs- Delhi High Court Explains
The Delhi High Court in its judgment has explained that as per the Designs Act, 2000, the abstract concepts are not registerable as Designs. The Court was dealing with a case wherein the designs for a bucket, mug, and tub were in dispute.
A Single Bench of Justice C. Hari Shankar held, “Article” is defined, in Clause (a) of Section 2, as “any article of manufacture…”. Thus, an “article” has to be a tangible entity. A design which merely exists in the mind of its creator, and is not to be applied to any article of manufacture is, therefore, no “design” within the meaning of the Designs Act. Abstract concepts are not registerable as designs.”
The Bench said that the design is to be judged “solely by the eye” and the test to decide whether a particular application of shape, configuration, pattern, etc. to an article constitutes a design is, therefore, essentially ocular/visual.
Advocate M.K. Miglani appeared for the plaintiffs while Advocate Sushant M. Singh appeared for the defendant.
In this case, a bucket, a mug, and a tub i.e., the unassuming items of everyday domestic use formed the subject matter of the dispute in a suit before the court. The plaintiff (Jayson Industries) was the proprietor in respect of a bucket, mug, and tub and the other plaintiff manufactured and marketed the products bearing registered designs with its permission.
The plaintiff’s contention was that the design of the defendant’s (Crown Craft Pvt. Ltd.) bucket, mug, and tub was obvious and fraudulent imitations of the suit designs and that, therefore, the defendant committed piracy of the registered designs of the plaintiffs, within the meaning of Section 22(1) of the Designs Act. A plaint was originally instituted before the District Judge (Commercial Court and the defendant pleaded invalidity of the suit designs and the court transferred the suit to the High Court.
The High Court in view of the facts and circumstances of the case observed, “… if the feature, which distinguishes the finished article from prior art is merely functional, with no ocular appeal, it cannot constitute a “design”. At the same time, if the article, compared vis-à-vis prior art, has both ocular and functional appeal, then it would qualify as a “design.”
The Court said that the plaintiffs have not been able to convince it that the changes make any substantial difference to the flanges and hence such minor changes constitute merely trade variants.
“… this Court is unable to convince itself that the suit designs can be treated as, prima facie, novel and original vis-à-vis prior art. The only two features of the suit designs, in which novelty and originality are claimed by the plaintiffs, are the vertical ribs along the length of the suit designs and the flanges on the rim. … The vertical ribs in the designs are identical to the vertical ribs in the designs constituting prior art. Insofar as the flanges on the rim are concerned, no doubt, there may be minor variations regarding their shape, number, the extent of their protrusion from the rim, and other such minor features”, noted the Court.
The Court further noted that the defendant succeeded in launching a credible challenge to the suit designs as suffering from lack of novelty and originality vis-à-vis prior published designs both with respect to the ribs along bodies of the suit designs as well as the extensions/flanges on the rim.
“… it cannot be said that the defendants are estopped from questioning novelty and originality of the suit designs vis-à-vis prior art. … As a result, the plaintiffs’ prayer for interlocutory injunction has necessarily to be rejected, in view of Section 22(3) of the Designs Act”, the Court held.
Accordingly, the High Court dismissed the plea and vacated the interlocutory injunction granted by the Commercial Court.
Cause Title- Jayson Industries and Anr. v. Crown Craft (India) Pvt. Ltd. (Neutral Citation: 2023:DHC:4343)