Design Act 2000 of India governs the Law pertaining to infringement of Design. When ever a party obtains a registration under the Design Act 2000, the obtains right to sue the infringers against piracy and/or fraudulent imitation. Section 22 of the Design Act 2000 provides the afore mentioned right the registered proprietor to take the action. This Section is reproduced as under:

22. Piracy of registered design:

1. During the existence of copyright in any design it shall not be lawful for any person:
   
   1. 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 license or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or
   2. 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
   3. 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.

There for , if some one is not the owner of registered design, then the same can not use it without express consent of the registered proprietor of a design.

When such action is initiated by a registered proprietor of a design, then what defenses are available to the party concern, is defined in sub section 3 of the very Section 22 of the Design Act 2000. Sub section 22(3) of the Design Act 2000 proves as under:

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

Thus what ever defenses , which are available in Section 19 of the Design Act 2000, all of them are available as ground of defense. By virtue of Section 19 of Design Act the affected party can take a defense that the design has been previously registered in India; or that it has been published in India or in any other country prior to the date of registration; or that the design is not a new or original design; or that the design is not registerable under this Act etc.

Now this word not a new or original design is very crucial in deciding the registrability of a design. Off course onus is upon the complainant or defendant or party affected to establish that the registered design is neither new nor original (2008) 10 SCC 657 Bharat Glass Tube Ltd. Vs. Gopal Glass Works Ltd :(Para 29). The relevant portion of said Judgment is as under:

Therefore, the question is whether the design is new and original. Section 4 which is couched in the negative terms, says that the design which is not a new or original then such design cannot be registered. therefore, the question is the design which has been prepared by the German Company and which has been sold to the respondent which became the proprietor of it, is a new or original or not. In this connection, the burden was on the complainant to show that the design was not original or new. We have no hesitation in recording a finding that the burden was not discharged by the complainant.

Now how to evaluate that Design of the Registered Proprietor is new or original. Is registered proprietor required to show significant difference from the prior art or even a slight change in the design of Registered proprietor can result into new design? How the court will adjudge in deciding the originality of a registered design in deciding the originality of registered design. Which kind of evidence a complainant is required in order to discharge the onus casted upon it in the Design Act? Or in the other way, which approach a Court is required to adopt, whether qualitative test or quantitative test? There has been few judicial pronouncement on this aspect.

In the matter of Wingates Registered Design No.768611, [1935 (RPC) (52) 126] the Hon'ble High Court of Justice, Chancery Division was having an occasion to deal with this issue. In this case the registered proprietor was owner of frame of a spectacle under no768611. It was against this registered design, the cancellation was sought by the Petitioner for cancellation. The Hon'ble Court observed as under:

That, in my view on the authorities, means that there must he substantial differences from designs which were known, or had been published prior to the date of registration. What a substantial difference is, is a question upon which no general principle can be laid down at all, it must depend on the particular facts in each case. In one case a quite small variation in the details of a design may be enough to make the design Something quite different from pre existing design. On the other hand, there cases even where quite large alterations in detail leave two designs for all practical purposes the same .

The Court has to consider and look at the designs in question with an instructed eye and say whether there is or is not such a substantial difference between that which had been published previously and the registered design as to entitle the proprietor of the registered /design to say that at the date of registration that was a new or original design and therefore properly registered.

In this case , the shape of registered spectacles of the frame were less in triangular shape than the prior existing broader triangular shaped spectacle frames. While applying test, his lord ship was pleased to reach the conclusion that the registered design of the Registered Proprietor was neither new not original one and ordered for cancellation of design.

There was another Judgement reported as Judgment reported as 2001 RPC 16 A Fulton Company Ltd. v Grant Barnett & Company Ltd. where the registered proprietor of design claimed novelty in design of flat handle umbrella. The Defendant appeared and raised the argument that the registered proprietor design to be common in use.

The Hon'ble Court Rejected the argument there by observing that there may possibilities of various new design even within narrow range. The argument of defendant was rejected and right of registered proprietor in a design was held. The relevant extract of the Judgement is extracted as under:

I do not agree with Grant Barnett's arguments in these respects. I would accept that a flat folding umbrella, like the Flat Compact, is likely to have a handle which is roughly rectangular in shape. (That is not inevitable; at one time Grant Barnett marketed a six-rib folding umbrella called the 5 SMSR. The folded shape of the umbrella was more rectangular than circular, but the umbrella had a circular handle) Nevertheless, while I accept that it could be said to be commonplace for a flat folding umbrella to have a roughly rectangular handle, that does not mean that the shape or configuration of any particular handle is common place merely because it is roughly rectangular, within the broad parameters of size and shape which Grant Barnett says are to be expected of handles for far folding umbrellas, there is considerable scope for detailed design work to be undertaken and for the creation of a shape or configuration which has its own special qualities and which is not common place.

The afore mention principle laid down In the matter of Wingate's Registered Design No. 768, 611 (52 R.P.C. 126) i.e. what a substantial difference is, is a question upon which no general principle can be laid down at all; it must depend on the particular facts in each case. In one case a quite small variation in the details of a design may be enough to make the design something quite different from an existing design.

On the other hand, there are cases even where quite large alterations in detail leave two designs for all practical purposes the same. The Court has to consider and look at the design in question with an instructed eye and say whether there is or is not such a substantial difference between that which had been published previously and the registered design as to entitle the proprietor of the registered design to say that at the date of registration that was a new or original design and therefore properly registered was also followed by Hon'ble High Court of Delhi in a Judgement reported as ILR 1978 Delhi 120, 1977 RLR 158 titled as Brighto Auto Industries vs Raj Chawla which was duly followed by Hon'ble High Court of Calcutta in Judgement reported as 2017 SCC Online Cal 415. Titled as ITC Limited Vs Controller of Patents and Designs.

Thus is apparent that while evaluating aspect of novelty or originality of a registered design, the court has to apply the eye test. Though no hard and fast rule can be made regarding qualitative or quantitative test as in few case a quite small variation in the details of a design may be enough to make the design something quite different from an existing design. On the other hand, there are cases even where quite large alterations in detail leave two designs for all practical purposes the same.

However court also has to keep in mind that even within narrow range there might be possibilities of numerous design. For example even slight cut is a jewelry may result into new design , on the other hand even big alteration in a house may not result into new design. The basis principle regarding evaluation of design is qualitative effect of design through eye.

Written By: Ajay Amitabh Suman, Advocate, Hon'ble High Court Of Delhi