CLASS 99
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WEDNESDAY, 21 NOVEMBER 2012
Focus on India
Some resources on Indian designs. Intellectual Property India (the patent office) have made available the following:
Finally, a couple of interesting cases, drawn to our attention by Sharad Vadehra, Vikrant Rana and Rajeshwari Hariharan in the Indian Group Report to APAA's Design Committee.
Last year, in Eagle Flask Industries v Bon Jour 2011(48) PTC 327 (Mad.) the Honourable Justice Ramasubramaniam refused to grant an interlocutory injunction, in a case where the infringer had their own design registration, leaving it at least arguable that even though the Designs Act 2000 contained no express defence corresponding to that available in the Trade Marks Act, the same should apply, as "The principles which form the basis for the provision contained in Section 30(2)(e) of the Trade Marks Act, 1999 are based upon the general principles relating to the extent up to which the rights conferred by the statute would go. The rights conferred by statute on a person could travel only as far as the area of operation of another person's similar right commences.".
This decision was considered this year in Micolube India v Rakesh Kumar T/A Saurabh Industries [2012] INDLHC 2243, 2012 (50) PTC 161 (Del.) (html format here) and the judge decided to refer to the enlarged Bench of the Delhi High Court the question:
a. Whether the suit for infringement of registered Design is maintainable against another registered proprietor of the design under the Design Act, 2000 ?
EU readers will notice that this is the selfsame question answered in the affirmative by the Court of Justice of the EU on a reference from the Spanish court in Case C-488/10 CEGASA, which we covered here and here. The Australian Federal Court also answered in the affirmative in LED Technologies v Elecspess [2008] FCA 1941, summary here. It seems that the referring judge took the opposite view, that there was a defence of "own design", but let's see what the court en banc makes of the matter.
Another issue arising was whether the existence of statutory design registration had the effect of displacing common-law "passing off" protection for shapes, in the absence of a statutory preservation (as was found in the Trade Marks Act). The judge also referred the following questions:
b. Whether there can be an availability of remedy of passing off in absence of express saving or preservation of the common law by the Design Act, 2000 and more so when the rights and remedies under the Act are statutory in nature?
c. Whether the conception of passing off as available under the Trade Marks can be joined with the action under the Design Act when the same is mutually inconsistent with that of remedy under the Design Act, 2000 ?
Again, it is clear that the judge himself thought that passing off was not available, but hopefully we'll be able to bring you the answer in due course.
Lastly, a case on copyright in designs - Kiran Shoes Manufacturers v Registrar of Copyrights (pay-per-view copy here). This concerned the side trim device of the sport shoes, the design of which had been registered as a trade mark. A copyright registration was then sought. Had it been a design registration, the Copyright Act 1957 would have been fairly categorical on this point, eliminating any overlap:
15. Special provision regarding copyright in designs registered or capable of being registered under the Designs Act, 1911.-
(1) Copyright shall not subsist under this Act in any design which is registered under the Designs Act, 1911.
This was not directly applicable, but s15(2) provides that
(2) Copyright in any design, which is capable of being registered under the Designs Act, 1911, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his license, by any other person.
Accordingly, the trim was found registrable and industrially applied, and the copyright registration was cancelled by the Copyright Board and also on appeal to the Delhi High Court.
Again, to European readers, this will have a familiar resonance - this time with the recent Court of Justice decision in Case C-168/09 Flos SpA v Semeraro Casa e Famiglia SpA, which held that European design law requires cumulative protection, rather than the Indian (and old UK) model of complete separation. We commented variously on Flos in the past, and there is a nice summary of the background to the case on today's 1709 copyright blog. Posted by: David Musker @ 14.47
Tags: copyright, copyright/design overlap, defence of registration, designs and passing off, india, infringement, manual, searching,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA382
Focus on India
- General Information Booklet for Registration of Design
- Manual of Designs Practice and Procedure
- Database of agents (very useful in view of the hailstorm of mailings from various organisations these days)
- Design database, apparently a beta version, searchable by number.
Finally, a couple of interesting cases, drawn to our attention by Sharad Vadehra, Vikrant Rana and Rajeshwari Hariharan in the Indian Group Report to APAA's Design Committee.
Last year, in Eagle Flask Industries v Bon Jour 2011(48) PTC 327 (Mad.) the Honourable Justice Ramasubramaniam refused to grant an interlocutory injunction, in a case where the infringer had their own design registration, leaving it at least arguable that even though the Designs Act 2000 contained no express defence corresponding to that available in the Trade Marks Act, the same should apply, as "The principles which form the basis for the provision contained in Section 30(2)(e) of the Trade Marks Act, 1999 are based upon the general principles relating to the extent up to which the rights conferred by the statute would go. The rights conferred by statute on a person could travel only as far as the area of operation of another person's similar right commences.".
This decision was considered this year in Micolube India v Rakesh Kumar T/A Saurabh Industries [2012] INDLHC 2243, 2012 (50) PTC 161 (Del.) (html format here) and the judge decided to refer to the enlarged Bench of the Delhi High Court the question:
a. Whether the suit for infringement of registered Design is maintainable against another registered proprietor of the design under the Design Act, 2000 ?
EU readers will notice that this is the selfsame question answered in the affirmative by the Court of Justice of the EU on a reference from the Spanish court in Case C-488/10 CEGASA, which we covered here and here. The Australian Federal Court also answered in the affirmative in LED Technologies v Elecspess [2008] FCA 1941, summary here. It seems that the referring judge took the opposite view, that there was a defence of "own design", but let's see what the court en banc makes of the matter.
Another issue arising was whether the existence of statutory design registration had the effect of displacing common-law "passing off" protection for shapes, in the absence of a statutory preservation (as was found in the Trade Marks Act). The judge also referred the following questions:
b. Whether there can be an availability of remedy of passing off in absence of express saving or preservation of the common law by the Design Act, 2000 and more so when the rights and remedies under the Act are statutory in nature?
c. Whether the conception of passing off as available under the Trade Marks can be joined with the action under the Design Act when the same is mutually inconsistent with that of remedy under the Design Act, 2000 ?
Again, it is clear that the judge himself thought that passing off was not available, but hopefully we'll be able to bring you the answer in due course.
Lastly, a case on copyright in designs - Kiran Shoes Manufacturers v Registrar of Copyrights (pay-per-view copy here). This concerned the side trim device of the sport shoes, the design of which had been registered as a trade mark. A copyright registration was then sought. Had it been a design registration, the Copyright Act 1957 would have been fairly categorical on this point, eliminating any overlap:
15. Special provision regarding copyright in designs registered or capable of being registered under the Designs Act, 1911.-
(1) Copyright shall not subsist under this Act in any design which is registered under the Designs Act, 1911.
This was not directly applicable, but s15(2) provides that
(2) Copyright in any design, which is capable of being registered under the Designs Act, 1911, but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his license, by any other person.
Accordingly, the trim was found registrable and industrially applied, and the copyright registration was cancelled by the Copyright Board and also on appeal to the Delhi High Court.
Again, to European readers, this will have a familiar resonance - this time with the recent Court of Justice decision in Case C-168/09 Flos SpA v Semeraro Casa e Famiglia SpA, which held that European design law requires cumulative protection, rather than the Indian (and old UK) model of complete separation. We commented variously on Flos in the past, and there is a nice summary of the background to the case on today's 1709 copyright blog. Posted by: David Musker @ 14.47
Tags: copyright, copyright/design overlap, defence of registration, designs and passing off, india, infringement, manual, searching,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA382
MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.
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