J U D G M E N T

% 19.12.2022 I.A. 725/2022 (under Order XXXIX Rules 1 and 2 of the CPC)

Introduction

1. Two seminal issues arise, albeit at an interlocutory stage, for consideration in the present case. They arise in the following factual scenario. The plaintiffs alleges piracy, by the defendant, within the meaning of Section 22(1)1 of the Designs Act, 2000 of their registered Design No. 306577. The defendant, invoking Section 22(3)2 read with Section 19(1)(b) and (c)3, alleges, per contra, that the plaintiffs‘ design is bad on account of prior publication, and is lacking in novelty and originality vis-à-vis prior art in the form of two designs, one of which is Design No D562138 and the other to which allusion would be made in para 49 infra. The plaintiffs, in defence, impressed on certain distinguishing features of the suit design vis-à-vis said prior art, to assert the claim of the suit design to novelty and originality, and, consequently, validity. That argument already stands accepted by this Court in its judgement in Diageo Brands B.V. & anr. v. Great Galleon Ventures Pvt. Ltd4 ( referred to, hereinafter, as ―Diageo v. Great Galleon‖) which, consequently, upholds the validity of the suit design. The very same features, which, according to the plaintiffs, distinguish the suit design from prior art, also, prima facie, distinguish the impugned design of the

1 22. Piracy of registered design. –

(1) During the existence of copyright in any design it shall not be lawful for any person—

(a) for the purpose of sale to apply or cause to be applied to any article in any class of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or (b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or (c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.

2 22. Piracy of registered design. –

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(3) In any suit or any other proceeding for relief under sub-section (2), every ground on which the registration of a design may be cancelled under Section 19 shall be available as a ground of defence.

3 19. Cancellation of registration. –

(1) Any person interested may present a petition for the cancellation of the registration of a design at any time after the registration of the design, to the Controller on any of the following grounds, namely:-

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(b) that it has been published in India or in any other country prior to the date of registration; or (c) that the design is not a new or original design;

4 2022 SCC OnLine Del 2350 defendant‟s product from the suit design. The defendant‘s contention is that, if these features confer novelty and originality to the suit design vis- à-vis prior art, they, equally, apply to the suit design vis-à-vis the defendant‘s design which cannot, therefore, be treated as infringing, or pirating, the suit design. Even otherwise, contends the defendant, piracy, within the meaning of Section 22 of the Designs Act would require near identity between the suit design and the infringing design, which is clearly absent in the present case. The plantiffs contend, per contra, that, firstly, the scope of ―novelty analysis‖ of the suit design vis- à-vis prior art is different from the scope of ―infringement analysis‖ of the suit design vis-à-vis the defendant‘s design and, secondly, that the aspect of novelty has to be seen from the point of view of the ―instructed eye‖ whereas the aspect of infringement would involve the