20 June 2019

Design registration – Argument of functional differences, not material

20th June 2019

The Calcutta High Court has upheld the Controller’s Order cancelling the design registration in respect of Coaster Brake Hub because it was not significantly distinguishable from the prior design of the Russian model published earlier (in Velo Bike Special Issue).

The Controller had opined that the modifications and variations in the appellant’s design are not sufficient to alter the broad features of shape, configuration and pattern or the identity of the prior design.

The Court was also of the view that the impugned design is devoid of newness and originality and that a design with substantial identity of a prior published design is to be cancelled.

The appellant (International Cycle Gears) had also argued that the Controller erred in law in cancelling the registered design only on the ground that the differences in the said registered design are ‘more attributable to function’.

According to the appellant, the right test would be whether it is ‘solely functional’ or ‘a mere mechanical device’ and not ‘more functional’. The Court however noted that design is concerned with both form and function and that the design law not seeks to reward advances in function.

Dismissing the appeal, the Court in AID No.3 of 2012 held that it cannot be argued that functional features are different.

It observed that predominance and pre-eminence of the aesthetic elements over the functional elements would satisfy the definition of ‘design’ under the Act. It was also observed that trade variant without significant noticeable features would destroy its novelty.

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