16 九月 2022

No protection under Designs Act even if trademark registration cancelled subsequently

In a case where the plaintiff had made a simultaneous claim in the shape of its product as a design as also as a trademark, the Delhi High Court has agreed with the defence of the defendant that the design of the plaintiff was incapable of being registered.

The Court in this regard noted that the statute (Section 2(d) of the Designs Act, 2000) provided that the ‘design’ would not include any ‘trademark’ as defined in Section 2(1)(v) of the Trade and Merchandise Marks Act, 1958, which now relate to Section 2(1)(m) read with Section 2(1)(zb) of the Trade Marks Act, 1999.

Setting aside the ex parte ad interim order, the Court held that the fact of filing of the application seeking registration in the shape of the product as a trademark simultaneously with the application for registration of the same as a design, would render the registration of the design suspect and disentitle the plaintiff to an ad interim relief.

It further added that filing for cancellation of the registration as a trademark subsequently will be insufficient to wipe out the disability of such shape being registered as a design.

The Court further found prima facie merit in the submission by the defendant that the plaintiff itself being an importer of the products, it cannot claim to be a proprietor of the said design.

It also noted that since the plaintiff itself claimed user of the design since date prior to the date of application seeking registration under the Designs Act, it must be held as being prior published and no longer being ‘new or original’ on the date of the application, which was a mandatory requirement as the Act.

The High Court in GM Modular Pvt. Ltd. v. Syska LED Lights Pvt. Ltd. [Decision dated 22 August 2022] was of the view that the prohibition is complete and applies where, even for inadvertent reason, the design is disclosed to the public by publication in a tangible form or by use prior to the date of the filing of the application. 

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