14 五月 2021

Design – Compliance with standards when can lead to ‘prior publication’

The Delhi High Court has rejected the contention that compliance with published standards can never be sufficient to constitute ‘prior publication’ of a design. The Court was of the view that this would have to be determined upon a consideration of the particular design and the published standards.

Noting that the cited standards were in fact standards of the design itself, the Court held that where the novelty claimed by the owner of the registered design resides in the very element which is described in the standard with a reasonable degree of specificity, the design cannot be said to be novel or original. The Court also noted that the plaintiff itself asserted its compliance with the standards.

The dispute involved alleged infringement of the design of armature (construction) steel rods by the defendant. The defendant had relied upon several international standards, including the British Standard B500C, the German Standard of 1984, the Polish Standard of 2006, International Standard 6935-2 of 2007, the Turkish Standard of 2010 and the Colombian Standard of 2012, to contend that the plaintiff’s design was not original.

The High Court noted that it was the surface pattern comprising of transverse and longitudinal ribs at an angle to each other that constituted the standard in question, and that these were not generic stipulations, but gave a detailed enumeration of the elements of the design. It noted that the product could be produced by reference to the design in question.

It however observed that the situation would have been different if the standard had been of a characteristic which was not related to the design but to some other feature of the product, for example, the length of the rod, its weight, etc.

Plaintiff’s plea of adoption of a particular combination of angles (480 and 650), was also rejected by the Court observing that benefit of the specific angles cannot be claimed in view of the definition of design in Section 2(d) of the Designs Act, 2000 and the prohibition contained in Section 4(c) thereof. It noted that the particular angles were not discernible by the eye alone, as required in Section 2(d) and were not significantly distinguishable from the published standard. The Court in the case Kamdhenu Limited v. Aashiana Rolling Mills Ltd. [Judgement dated 12 May 2021] also noted that the design registration certificate did not refer to angles in question.

Noting that the plaintiff had no real prospect of success in the suit, the Court observed that the case was a fit one for summary judgement under Order XIII-A of the Civil Procedure Code.

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