26 March, 2014
The Calcutta High Court, recently had an occasion to examine the scope of protection to design. In this case [Kent RO Systems
v. Sandeep Agarwal
, Order dated 30-1-2014], the Calcutta High Court declined to follow the majority decision of Delhi High Court in Micolube India Limited
v. Rakesh Kumar
[Order dated 15-5-2013] which supported common law rights and claim of passing off in respect of design but found the minority decision more appealing.
Rights in a registered design as against a subsequent registrant
At issue was the plaintiff’s claim in the registered design it used to manufacture water purifiers. The respondent also sold water purifiers, under authorisation by the owner of a registered design, which was claimed to be similar to plaintiff’s design. The plaintiff had obtained injunction on sale of such alleged infringing water purifiers, which had been vacated. The plaintiff did not make the subsequent registered proprietor party to the suit, nor did it move for cancellation of subsequent registration. The alleged infringing products were sold under a different trademark.
Passing off in designs
The Calcutta High Court’s view is that the registered proprietor of a design cannot sue a subsequent registrant of a design but could avail the remedy of cancellation if his rights were in jeopardy. The majority view in Micolube was that the design, as an unregistered mark, could enjoy goodwill, be identified by consumers and so on and hence a passing off action could lie in respect of design. The minority decision offered a view that unlike trademark there was not procedure for prior publication, opposition etc. As per the Designs Act, every registered proprietor stands on the same footing with the other as long as copyright vests in the design. Thus the Calcutta High Court reiterated that there can be no monopoly in a design as regards passing off.
In its decision the High Court refused to interfere with the vacation of stay by the single judge. However, it held that it was open to the plaintiff to pursue his case, by proceeding against the other registered proprietor for cancellation and or making him a party to the suit.
[see also http://www.lakshmisri.com/News-and-Publications/Publications/Articles/IPR/Protecting-property-rights-through-common-law-remedies