14 February 2018

Protection of designs vis-à-vis newness and originality

by Godhuli Nanda

There is required sufficient novelty and originality for a completely new creation to come into existence as a design, and only thereafter would the design be said to be one which is capable of being protected as a design under the Indian Designs Act. It is also pertinent to note that the meaning of the words “novel or original” is that the designs must either be substantially novel or substantially original, having regard to the nature and character of the subject matter to which it is to be applied[ CS(COMM) No.361/2017].

A Single Judge of the Delhi High Court on January 8, 2018 held that unless a design is significantly distinguishable from the known designs or combination of designs, then such a design is not entitled to registration, in the case of Pentel Kabushiki Kaisha & Anr. v. Arora Stationers & Ors. By way of a design infringement suit Pentel Kabushiki Kaisha and another (hereinafter referred to as the Plaintiffs) sued Arora Stationers, Montex Writing Instruments and Jineshwar Writing Instruments Limited (hereinafter referred to as the Defendants) from manufacturing and marketing any pen/writing instrument which infringed the registered design No. 263172 of the Plaintiffs. The Plaintiffs also filed an application seeking interim injunction under Order XXXIX Rules 1 & 2 CPC pleading piracy by the Defendants of the Plaintiffs’ registered design.

On May 26, 2017, another Single Judge of the Delhi High Court agreed with the contentions of the Plaintiffs and granted an ad-interim injunction in favour of the Plaintiffs restraining the Defendants from manufacturing and marketing any pen/writing instrument which infringed the registered design No. 263172 of the Plaintiffs’. However, while disposing of the interim application the Single Judge held that the Plaintiffs failed to show any substantial newness/originality of its design based on which they claimed infringement and while vacating the ad-interim Order dated May 26, 2017, dismissed the application seeking interim relief.


Brief facts:

The Plaintiffs filed a suit for permanent and interim injunction restraining the Defendants from manufacturing, selling, advertising, etc., an identical duplication or obvious and/or fraudulent imitation of the Plaintiffs’ copyright in the registered design of their ball point pens. According to the Plaintiffs the novelty of its design was in its shape and configuration. The cause of action pleaded by the Plaintiffs in the plaint was under Section 22 of the Designs Act, 2000 (hereinafter referred to as the Act) which provides that during the existence of the copyright in any design, no other person shall use the registered design for commercial purposes, sale of the article, etc., being a design which is identical or an imitation of the registered design of the Plaintiffs.

As per Section 22 (3), whenever any suit is filed for the relief alleging piracy of the registered design by the Defendant in a suit, then in such a suit every ground on which registration of a design may be cancelled under Section 19 of the Act shall be available to the Defendant as a ground of defence. Further, if a design is not new or original design, then the registered design, though registered, is liable to be cancelled in the proceedings under Section 19 of the Act. Therefore, before deciding the issue of entitlement of the Plaintiffs to grant of an interim injunction in the suit, the court had to first examine whether the design of the ball point pen of which the plaintiffs have obtained registration can be considered as a new or original design or not.

The Single Judge after much deliberations arrived at a finding that the registered design of the Plaintiffs had no newness/ originality and therefore could not distinguish itself from known shapes or the different features which already exist in a ball point pen.


Contentions of the parties:

The Plaintiffs contended that the novelty of the ‘172 design rested in its shape and configuration. The pen had a unique cap with two wedges on each side near the clip-end, a unique clip top which appeared as a mounted attachment on the cap, a unique polygonal barrel wave-like cuts on the grip-end, the wave-like cuts on the grip-end that transforms abruptly to a plain cylinder before meeting the tip, the slightly curved conical tip having thin cuts from the nib till the bottom of the cone, the barrel that transforms abruptly into a plain cylinder on the plug side and the plug side having a protruded knob. All these features when employed together gives the ball-point pen of the Plaintiffs a unique design.

The Defendants on the other hand contended that the features which are alleged by the Plaintiffs to be their exclusive creation and being different parts of their registered design have been used by the Defendants from their own earlier designs commencing from the year 2005. The Defendants also submitted that the curvy grip portion of the ball-point pen is also in use by various other pen manufacturers including CELLO company in their pens.

The main defence taken by the Defendants was that there was no newness or originality in the registered design of the Plaintiffs with respect to ball point pens claimed by them. It was also contended they have copied the features not from the registered design of the Plaintiffs but from the features which are already adopted by the Defendant No. 2 in its ball point pens since the year 2005.


Decision of the court:

The Single Judge was of the view that in sum and substance every ball point pen has common features of a lower casing/barrel in which there is a refill, the refill exits with a ball point pen nib, the cap covers the ball point nib portion with additional portion of the lower casing/barrel, and finally that the cap ordinarily contains a clip. In order for a design to be totally new and original design with respect to a ball point pen, there will have to be significantly distinguishable features so as to make the ball point pen of which exclusivity and continuation of the registration was claimed by the Plaintiffs, that such is a completely new and original ball point pen having enough/substantial novelty and originality by application of labour whereby the ball point pen of the Plaintiffs is distinguished from the aforesaid known features/design in a ball point pen.

The fact that the cap of the Plaintiffs’ ball point pen is alleged to be unique because of wedges at the point of holding of the ball point pen or the barrel was polygonal or there exists slightly curved tip or that barrel/lower casing goes into a knob, etc., are only trade variants and such features cannot be said to be such newness or originality so as to distinguish these features from known shape or the different features which already exist in a ball point pen. In fact, the wedges in the grip portion is a functional feature because this wedges design created is for a better grip and which because of Section 2 clause (d) of the Act, which defines design, cannot be protected as a design.

The Single Judge held that the non-existence of a design in public domain is not enough to succeed on the aspect of registration of the design under the Act because even a known concept or known design or known idea becomes a design only when it is applied with respect to an article, whereby the new article would become a design as such and then proceed to have protection as a design under the Act.

The Court did not even go into the facts as stated by the Defendants in their written statement of their already having used the features claimed by the Plaintiffs as unique/new features in their own ball point pens in different years from the year 2005, since the Plaintiffs failed to show substantial newness/originality as required by the definition and meaning of newness and originality.

On the basis of the aforementioned, the Single Judge dismissed the present interim application and vacated the interim order dated May 26, 2017.

The quintessence when it comes to designs is that distinction has to be drawn between usual trade variants on the one hand and substantial novelty and originality on the other hand otherwise there will be blockage of trade. Only newness/originality entitles monopoly on account of registration of the design.

[The author is a Senior Associate in IPR practice, Lakshmikumaran & Sridharan, Delhi]


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