Answer 4 FINAL With Cases

Answer 4(a)
Section 4: Prohibition of registration of certain designs
A design which
(a) is not new or original; or
b) has been disclosed to the public anywhere in India or in any other country by publication
in tangible form or by use or in any other way prior to the filing date, or the priority date of
the application for registration; or
(c) is not significantly distinguishable from known designs or combination of known designs;
or
(d) contains scandalous/ obscene material.
In the present case, the Defendants contended that the features alleged by the Plaintiffs to be
their exclusive creation and being different parts of their registered design have been used by
the Defendants from their own earlier designs commencing from the year 2011. And that as
per Section 4 of the Act, the Plaintiff’s product falls under the category of designs that cannot
be registered.
Since the conditions under S. 4 are separated by ‘or’, they are disjunctive in nature. Clearly,
conditions (a) and (b) are not satisfied as the same features have been in use by the
defendants in earlier designs since 2011 (way before registration was claimed by plaintiff in
the year 2019).
The Plaintiff’s design does not meet condition in 4[c] as the following features alleged as
unique-
1) The main body of the ball point pen is placed in a transparent

plastic box, which gives an excellent grip; 2) The ball point
used is sharp enough to give clarity in writings.
These are not significantly distinguishable from known designs or combination of known
designs.
Pentel Kabushiki Kaisha & Anr. v. M/S Arora Stationers & Ors.–
Facts: The Plaintiffs filed a suit for a permanent and interim injunction restraining the
Defendants, from manufacturing, selling, advertising etc. an identical duplication of the
Plaintiffs’ copyright in the registered design of their ball points.
The court based on sections 4, 19 and 22 of the Designs Act held that the features claimed
by the Plaintiffs as unique in the ball point pens of the Defendants were already in existence
in earlier manufactured ball point pens by the Defendants in different years from the year
2005 and thus were held to not be substantially new and original designs but mere trade
variants. Accordingly, the court dismissed the application for interim injunction. Court
emphasized that it is the duly of the court to take special care that no design is to be
counted a "new and original design" unless it distinguished from that previously existed by
something essentially new or original which is different from ordinary trade variants
Additionally, since the requirements given under Section 4 are not taken into consideration
by the registrar, the defendants can file for cancellation of registered design of plaintiff under
S. 19.
“Section 19 Cancellation of registration of design :
Can be done on the following grounds-
- Has been registered previously in India

- Has been published in India or any other country prior to the date of
registration
- Not new or original
- Not registrable
- Doesn’t fall within the definition of design u/s 2(d)”
Answer 4(b)
Piracy of registered design
Section 4, 19 and 22 give clarity on the aspects of piracy. Cancellation of design is the
primary remedy which is sought by the defendant in the suit of infringement under S.19.
The test for Piracy under S. 22 of Designs Act is:
- There is obvious imitation of a registered design

- This imitation has to be fraudulent
- Essential design features have to be substantially similar. The essential elements
must be shown to be copied – factual matrix will play a major role in proving
this aspect
Whirlpool of India Ltd. V. Videocon Industries Ltd. 2014 (60) PTC 155 (Bom)
• The principle which clearly emerges from the above is that the test in deciding such matters
is: "judged solely by the eye are the essential features present or are the two substantially
different".
• Castrol India Limited vs. Tide Water Oil Co. (I) Limited 1996 (16) PTC 202 (Cal)
• (i) The word 'imitation' does not mean 'duplication' in the sense that the copy complained of
need not be an exact replica.
• (ii) The Court is required to see in particular as to whether the essential part or the basis of the
Plaintiff's claim for novelty forms part of the infringing copy.
• (iii) The similarity or difference is to be judged through the eye alone and where the article in
respect of which the design is applied is itself the object of purchase, through the eye of the
purchaser.
• (iv) The Court must address its mind as to whether the design adopted by the Defendant was
substantially different from the design which was registered. The Court ought to consider the
rival designs as a whole to see whether the impugned design is substantially different from the
design sought to be enforced.
Crocs Inc. USA V Liberty Shoes Ltd. & Ors. MANU/DE/0615/2018
• Crocs Inc. USA are proprietors of certain registered designs related to footwear in India. In
the plaint, the Plaintiff stated that Liberty Shoes Ltd. and others has been violating the rights
of the Plaintiff by imitating its registered design. It claimed piracy of design under Section 22
of the Act. The Plaintiff filed interim applications and a suit for permanent injunction. The
Defendants challenged the interim injunction application
• Taking defense under Section 22 (4) of the Act, the defendant contended that the registration
of design in itself invalid. Further claimed that the design of the Plaintiff’s design lacked
newness/originality. Submitting proof to the court, defendant stated that the design was in
public domain at the time of registration. Hence, the registration granted to the Plaintiff was
clearly faulty and liable to be cancelled under Section 19 of the Act.
• The Court analyzed Sections 2 (d), 4, 19 and 22 of the Act and held that mere variations to
existing products which do not result in requisite amount of newness or originality, cannot be
considered as innovations having newness and originality for being granted monopoly for
fifteen years. In Court's view the design of Plaintiff's footwear is nothing but a sandal. Sandal
with open spaces are only trade variations of a sandal. The court held plaintiff liable to pay
the imposed costs of INR 2 lakhs per Defendant, in addition to legal costs.

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Answer 4(a)

Section 4: Prohibition of registration of certain designs

1) The main body of the ball point pen is placed in a transparent

“Section 19 Cancellation of registration of design :

Can be done on the following grounds-

- Has been registered previously in India

Piracy of registered design

The test for Piracy under S. 22 of Designs Act is:

- There is obvious imitation of a registered design

Crocs Inc. USA V Liberty Shoes Ltd. & Ors. MANU/DE/0615/2018

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