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2012 Supreme(Del) 2834
DELHI HIGH COURT
V.K.Jain, J.
Tarun Sethi & Ors. - Appellant
Versus
Vikas Budhiraja & Ors. - Resopndent
CS(OS) 1841 of 2008
Decided On : 06-08-2012
For the Defendants :Mr. N.K. Kantawala, Mr. Rajesh Sharma, Mr. Praven Sharma, Mr. Satyender Chahar , Mr. Ritesh Mehra, Advocates.
The judgment establishes that for a design to be registered under the Designs Act, 2000, it must be new, original, and significantly distinguishable from known designs. The novelty factor in a design is a matter of fact judged solely by the human eye.
Headnote:
Design Infringement - Door Spring - Designs Act, 2000, Section 2(d), Section 4, Section 19, Section 22 - The court found that the plaintiff's design was not new or original and was not significantly distinguishable from known designs available in the market prior to the registration date. The court held that the plaintiff's design did not qualify for registration as a new design under the Designs Act, 2000. The suit was dismissed.
Fact of the Case:
Plaintiff, a partnership firm, claimed infringement of their registered design for a door spring by the defendants. Defendants argued that the plaintiff's design was not new or original and was available in the market prior to the registration date.
Finding of the Court:
The court found that the plaintiff's design was not new or original and was not significantly distinguishable from known designs available in the market prior to the registration date. The court held that the plaintiff's design did not qualify for registration as a new design under the Designs Act, 2000.
Issues: The issues included the validity of the plaintiff's design registration, infringement by the defendants, passing off, pre-publication of the design, and the defendants' manufacturing and marketing activities prior to the registration date.
Ratio Decidendi: The court applied the provisions of the Designs Act, 2000, and established that the plaintiff's design did not meet the criteria for registration as a new or original design. The court emphasized that the novelty factor in a design is a matter of fact judged solely by the human eye and held that the plaintiff's design lacked substantial novelty.
Final Decision: The suit was dismissed, and no costs were awarded to either party.
V.K. Jain, J.
1. Plaintiff No. 3, which is a partnership firm of plaintiff Nos. 1 and 2, is engaged in the business of manufacture and sale of hardware, such as door closers, spring hinges, etc. One of the products of the plaintiffs is a door spring which it is selling under the trademark ‘YEN’. The design of the aforesaid door spring is registered vide design registration No. 202794 dated 05.01.2006 which continues to subsist. The said design, according to the plaintiffs, consists of a unique capsule shape of the door spring and a thin and light handle which is made of iron and the arrangement of the two. The original, novel and essential feature of the said design is stated to be the shape and configuration of the door spring which is alleged to be distinctive and unique to the plaintiffs? door spring under the mark ‘YEN’. Defendant No. 3 Ritz Metal Works is also engaged in manufacture and sale of door closer. The case of the plaintiffs is that the door closer being manufactured and sold by the defendants is identical to their door closer design which is registered since 05.01.2006 and, therefore, they are infringing plaintiffs? right in the aforesaid registered design. The following are comparative chart has been given in the plaint to illustrate the identical features of the two products:-
Capsule with Ring positioned in the centre. 2 Semi Circular Silver Caps on either side of the capsule. 2 Rectangular shaped hinge plates that are moulded into the body of the capsule shaped cylinder. Each Hinge Plate has 2 holes that are equidistant from one another. A the centre there is a chrome plated ring with 4 holes for fixing the rod of the door closer which divides the capsule into 2 equidistant halves. From the centre ring is a thin rod which can be fitted at any one of the holes of the ring. Sticker on both sides of the ring Capsule with Ring positioned in the centre 2 Semi Circular Silver Caps on either side of the capsule. 2 Rectangular shaped hinge plates that are moulded into the body of the capsule shaped cylinder. Each Hinge Plate has 2 holes that are equidistant from one another. At the centre there is a chrome plated ring with 4 holes for fixing the rod of the door closer which divides the capsule into 2 equidistant halves. From the centre ring is a thin rod which can be fitted at any one of the holes of the ring. Sticker on both sides of the ring
Back View
Back View
Two uniquely shaped hinge plates with two holes each that are moulded from the body of capsule shaped cylinder and come outwards. The two hinge plates are separated from one another by the ring on the body of the capsule and remain a few centimeters apart when protruding outside the capsule. The rod appears to come from below and from between the Hinge Plates.
Two uniquely shaped hinge plates with two holes each that are moulded from the body of capsule shaped cylinder and come outwards. The two hinge plates are separated from one another by the ring on the body of the capsule and remain a few centimeters apart when protruding outside the capsule. The rod appears to come from below and from between the Hinge Plates.
The plaintiffs have sought injunctions, restraining the defendants from making, selling, offering for sale or advertising door springs which are imitations of their registered design.
They have also sought delivery up of the infringing material and damages amounting to Rs 20 lakh. Rendition of account from the defendants has also claimed by them.
2. In their written statement, the defendants have taken a preliminary objection that there is no cause of action in favour of the plaintiffs since they are not proprietors of design, shape, configuration and pattern of capsule door closer/door spring registered at serial No. 202794 dated 05.01.2006. It has been further alleged that while obtaining registration of the aforesaid design, the plaintiffs were fully aware that capsule door closer/door spring with immaterial variations were available in the
