Designs Act, 2000


Sections 4 & 7



Suit filed for infringement of a registered design, for decision of applications for vacation of injunction and grant of the same court formulated the following questions to be answered:



Question 1. Whether the design registration in UK, USA or Australia could amount to prior publication or disclosure to public as contemplated in Section 4(b)ofthe said Act?



Answer : it can be safely concluded that while a previous registration in India would be a ground for cancellation without looking into the aspect of disclosure to the public or publication in general, a design registered in any other country prior to the date of registration in India, would also be required to have been disclosed to the public by publication in tangible form or by use or in any other way for it to qualify as a ground for cancellation of the subsequent registration in India. In the present case, I find that the designs registered in the UK and consequently in USA and Australia, are certainly not secret and are open to the public. Therefore, the defendant has been able to show, prima facie, that the design had been disclosed to the public in the UK, Australia and USA by publication in tangible form. The expression 'in any other way' would also be wide enough to include registration as a mode of disclosure to the public. Therefore, prima faice, I am of the view that the prior registration in the UK, USA and Australia amounted to disclosure to the public as stipulated in Section 4(b) of the said Act. This, in turn, means that it is a ground which is available to the defendant to seek cancellation of the plaintiffs registration and consequently, it is also a ground of defence in view of the provisions of Section 22(3) of the said Act.



Question 2. Whether there is material on record to indicate, prima facie, that the plaintiffs design had been published in India or in any other country prior to the date of registration, i.e., 05.12.2003?



Answer: De hors the question of registration, I find that the defendant has been able to show that the design had been published prior to the date of registration. Coupled with this, is the fact that the plaintiff did not file any reply to IA 3694/2008 despite opportunities having been given to it to do so. The prima facie conclusion, therefore, is that the design in question was published abroad prior to the date of registration in India.



Question 3. Can it be said, prima facie, as to whether the design of the defendant's spatula is a fraudulent or obvious imitation of the plaintiffs registered design as applied on its spatula?



Answer : An overall view has to be taken and it has to be discerned with the eye as to whether the defendant's design is a fraudulent or obvious imitation of the plaintiffs design. I find that observing the two designs side by side one cannot conclusively say that the one is an imitation of the other. This is, of course, only a prima facie view and is actually not necessary because of the decision on question Nos. 1 and 2 above.


The defendant's application, being IA 2819/2007, under Order 39 Rule 4 CPC is allowed and the interim order dated 08.01.2007 passed in IA 189/2007 is vacated.