Design registration as rebuttable presumption of novelty

An interim injunction recently granted to a registered design of steel bars came into question, when a two-judge Bench of the Delhi High Court held that infringement based upon registration without examining circumstances with respect to prior publication could not be upheld.

The case (Order of the Delhi High Court dated 23 August 2018, in FAO(OS) 309/2017, C.M. Appl. No. 44902/2017) was fairly straightforward: the parties were both manufacturers of steel rods used in the construction industry. Kamdhenu had obtained a design registration in 2014 for a certain type of steel bars it was manufacturing. It alleged that Aashiana had infringed its registered design, and successfully obtained an interim injunction against the latter company. Aashiana argued that Kamdhenu could not establish its registered design as being novel and exclusive from what was already known in the public domain, so as to justify the temporary injunction.

Specifically, Aashiana contended that Kamdhenu’s designs were a mere reproduction of a standard design that had been in the public domain since 1984. Among other things, it pointed to British Standards and corresponding International standards, as well as standards followed by other jurisdictions such as Turkey and Poland, to show that these standards were already in existence and pre-dated the claim of novelty put forward by Kamdhenu.

The key argument made by Aashiana to overturn the injunction was that the registration of a design merely endorsed that the applicant’s claim to novelty was established before the Controller of Designs. Any such registration, however, was a rebuttable presumption of novelty.

It relied on several decisions to support its argument, notably, on Niky Tasha India (P) Ltd vs. Faridabad Gadget Pvt. Ltd. (AIR 1985 Del 136), where the Delhi High Court said that a design registration was only “a prima facie evidence” of proprietorship and novelty. Similarly, on the issue of what constitutes novelty, particularly in the context of previous publication or previously used articles, the company relied on the same court’s decision in B. Chawla and sons vs. Bright Auto Industries (AIR 1981 Del 95), where it held that small variations in products which existed, such as adding a curve here or there, in the shape of a well recognized shape of an article of common use in the market, would not make it a new or original design.

Kamdhenu, the proprietor of the registered design, argued that the steel rods had bars placed at certain specific angles which added to the novelty of the design. But the court appeared convinced of the other side’s argument that the angularity of the ribs was defined by the limitations of the product standard itself, and could not attributed to any novelty on the part of the manufacturer.

The court concluded that “despite functionality, no distinct feature that can claim novelty was revealed, deserving design registration”, although balancing it with the statement that this observation was only “prima facie and meant for the purpose of this judgment” and that “all rights of parties to deal with it in the suit [were] kept open.”

The court also noted that Kamdhenu should not have suppressed the fact that a commonly applicable standard available in the public domain was used to claim a design registration right”. This suppression – from both the court and the Controller of Designs – led to the registration of the design itself being suspect.

Certain arguments were floated that Aashiana or someone connected with it was an ex-licensee of the plaintiff. But the court was quick to dismiss this as not being material factors for the grant of injunction, particularly since the issue of confidentiality was not pleaded at any time.

What was particularly striking about this decision was the early disposal of the appeal against the interim injunction, which was granted in November 2017. Similar speedy disposal of injunctions in other IP matters by all courts would go a long way in ensuring that the rights of the parties are truly protected in theory as well as practice.