The Hon’ble Delhi High Court, vide its recent order dated October 19, 2023, in C.S. (Comm.) 915/2022, a suit for design and trademark passing off and infringement, has granted interim relief to the Plaintiff, TTK Prestige Ltd. The Court held that by use of a design which is nearly identical, a trade dress for the mark which is almost identical and the overall appearance of the pressure cooker, including the manner in which the said mark is affixed on the body thereof, which is also deceptively similar, a prima facie case of passing off exists.
The plaintiff had instituted the suit primarily on the premise of design piracy within the meaning of Section 22(1) of the Designs Act, 2000 (hereinafter referred to as “the Designs Act”) for Design No. 324727-001 (hereinafter “the suit design”) which covered the Svachh line of pressure cookers manufactured by the plaintiff and sold under the umbrella trademark “PRESTIGE” were allegedly being infringed by the Defendants who sell pressure cookers under the trade name “PARISTONE”. The article will discuss both the design and trademark aspects separately in the succeeding paragraphs for the clarity and understanding of the readers.
Hon'ble Court relied upon the previous judgement of the same Court in another matter of TTK Prestige Ltd. v. KCM Appliances Pvt. Ltd. (2023 SCC OnLine Del 2129, where the same design of the plaintiff was asserted while examining the issue of design piracy.
Section 22(1) of the Designs Act provides:
“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.”
In an earlier decision dated April 13, 2023, in TTK Prestige Ltd. v. KCM Appliances Pvt. Ltd, the Hon’ble Delhi High Court held that the defendant, in that case, had imitated the shape and configuration of the lid, more particularly the central depressed portion of the lid for collection and evaporation of froth, which resulted in spillage control, which was the idea devised by the plaintiff, i.e., TTK Prestige. Since the defendant could not find any other source from which the defendant adopted the idea, the Hon'ble Court held a prima facie view that a clear case of piracy exists. With respect to piracy of design, the Hon'ble Court reiterated its stand as in the KCM Appliances case and held that since the various distinctive features of the lids of the pressure cookers in respect of which injunction had been granted in the KCM Appliances case are also replicated in the lid of the "PARISTONE" pressure cooker, forming the subject matter of controversy. The findings of the Hon’ble Court in that case would, therefore, apply mutatis mutandis to the present matter as well. The Court observed that the only additional aspect with respect to design in the present case was that there was no difference in height between the lids in respect to which suit design had been granted, and the lid of the pressure cooker formed the subject matter of controversy. The observations in this case cannot be understood without diving into the Court’s decision in the case of the KCM Appliances and the reasoning that led to the decision, which is briefly discussed below.
What was peculiar about the suit design, in this case, was that all six views filed at the time of registration by the plaintiff were different, and therefore, the Defendant in KCM Appliances alleged that the design registration was invalid, which amounted to six different designs. However, the Hon'ble Court disagreed with the defendant and observed that the fact that the closed pressure cooker and the five open pressure cooker containers, whose images are reflected in the registration of the suit design, are of different capacities or even of different shapes do not render them different designs.
While holding such a view, the Hon’ble Court delved into the definition of design as defined in Section 2(d) of the Designs Act and what constitutes a set within the meaning of Rule 2(e) of the Designs Rules. The Hon’ble Court observed that the design is not the shape, configuration, pattern, ornament or composition of lines of colours applied to the article but only the features of such shape, configuration, pattern, ornament or composition. Thus, for the suit design, the Court observed that the features of the shape and configuration of all the six articles are fundamentally the same, and the only difference between them was that of the capacity of the pressure cookers. The Court observed that features of the shape and configuration of the containers, as well as of the lids, of all six pressure cookers, each of which would constitute a set within the meaning of Rule 2(e) of the Designs Rules, are the same.
The Hon’ble Court had further held that the certificate of registration covers essentially one design involving the same shape and configuration of the container and lid, which constitutes a set and in which, according to the certificate of registration, novelty resides. In doing so, the Court also referred to Section 6(1) of the Designs Act, which permits one design to be applied to more than one article covered in one class of articles and held that as all six pressure cookers, or even one pressure cooker and five containers, would all fall within the same class of articles, and have the same features of shape and composition, meaning thereby that they would have the same design, the certificate of registration falls within the scope of Section 6(1) of the Designs Act and is, therefore, prima facie valid.
The KCM Appliances case discussed the authoritative pronouncements on the aspects of design law, and the Hon'ble Court enlisted the principles that emerged from the perusal of all judicial precedents. The principles discussed the purpose of the Act, the scope of protection, the definition of article and design, the established test of ocular appeal, the burden of proof, the effect of registration of the design, challenge to the validity of registration of a design by prior publication, novelty of design and the difference in standards of examining validity of design vis-à-vis prior art and infringement of design by another design.
Since the suit design was also applied for patent protection by the plaintiff in the matter, the question of functional design not being entitled to design registration arose in the KCM Appliances case, which would have also been applicable in the present case. However, the Hon'ble Court reiterated in the KCM Appliances case that while a purely functional design is not entitled to registration, a design that has both functional and aesthetic attributes is so entitled. For design piracy to be established, the Hon’ble Court applied the test of ocular appeal and dealt with a utilitarian aspect of the suit design as well.
The Hon'ble Court observed that while the perspective of the consumer, who views the suit design with an instructed eye which is aware of the prior art, undoubtedly forms the definitive test to assess infringement, the issue of whether the customer would purchase the product for its aesthetic appeal for its utilitarian advantages is irrelevant. The Hon'ble Court held that piracy had taken place where the suit design possesses aesthetic value and the novel features that lend it such value is replicated in the defendant's design.
While comparing the standards for examining the validity of the suit design vis-à-vis prior art and infringement of the suit design by the impugned design of the defendant, the Hon’ble Court observed that prior publication would invalidate the suit design only if the suit design itself has been published prior in point of time. The Court further observed that for invalidation on the grounds of novelty and originality, prior publication of the suit design itself is not a prerequisite; rather, the existence of a prior design, which, when applied to an article, should reveal that except for trade variants, there is no difference between the prior art and the suit design.
On the other hand, to evaluate infringement, the Court must examine the design and the prior art vis-à-vis, as it were. The Court clarified that the eye with which the aspect of infringement is examined is an instructed eye, which is aware of the prior art and of the features which impart to the suit design, novelty and originality vis-à-vis prior art. Thus, the Court held that a comparison of the design of the defendant's product with the suit design has to be made from the perspective of such an instructed eye and thus examined if it is seen that the features which impart to the suit design, novelty and originality vis-à- vis prior art, and as certified in the certificate of registration of the suit design, stand replicated in the design of the defendant, the defendant is guilty of piracy.
Trademark Passing off- Infringement- the aspect of Trade dress imitation
The Hon'ble Court, in this case, while granting relief to the plaintiff, relied upon the imitation of trade dress of the plaintiff by the defendant and held that:
“The plaintiff has placed material on record, including its annual turnover, which indicates its considerable goodwill and reputation in the market. Even otherwise, once the defendants have chosen to copy how the plaintiff has visualised its mark and also how the mark is affixed on the pressure cooker, as well as the design of the pressure cooker itself, it can hardly lie in the mouth of the defendants to question the goodwill and reputation of the plaintiff. That the defendants have chosen to imitate how the plaintiff prints its logo is itself a testimony to the goodwill and reputation of the plaintiff, in the perception of the defendant itself.”
The decision of the Hon’ble Court will be understood in the light of the side-by-side comparison of the trademark and trade dress of the plaintiff vis-à-vis the defendant as before the Hon'ble Court is tabulated below:
The Hon’ble Court observed that as the defendants have clearly copied the plaintiff's trade dress insofar as the visual appearance on its mark is concerned, a case of passing off is made out. When the Hon’ble Court compared the marks of Plaintiff and Defendants, it was observed that the two marks were clearly visually identical, with the defendants having adopted a trade dress which was a clear imitative copy of the plaintiff’s trade dress used for its “PRESTIGE” mark. Further, it was also observed that the arrangement of various features on the outer packing of the defendants' product was also identical to the arrangement of features on the packing of the plaintiff's product.
However, the Court believed that with respect to trademark infringement, a prima facie case is not made out as it may be arguable whether “PRESTIGE” was phonetically similar to “PARISTONE”. The Court gave a glaring observation that there are no such distinguishing features between the parties, barring the name itself, as would impress itself on the mind of a consumer of average intelligence and, more importantly, imperfect recollection so as to enable him to distinguish the former from the latter, when seen at different points of time. Thus, there is a likelihood of confusion between the two marks, and an interlocutory injunction was granted, both on the grounds of design infringement as well as trademark passing off by the defendants of its product as that of the plaintiff.
Thus, the Defendants, as well as all others acting on their behalf, stand restrained from manufacturing, selling, offering for sale, exporting, advertising or in any other manner directly or indirectly dealing in pressure cookers bearing the impugned design or any other design which infringes the suit design no. 324727-001 as directed by the Court. The Court has further restrained the defendants from using the trade dress for its mark, which was almost identical to the trade dress used by the plaintiff for its 'Prestige' mark. However, the Court has not restrained the Defendants at the moment from using the mark ‘PARISTONE’ in any other trade dress, which is not similar to the trade dress of the plaintiff’s mark, on pressure cookers which do not imitate or infringe the registered design of the plaintiff’s Svachh range of pressure cookers.
The decision of the Delhi High Court in the present case of TTK Prestige vs Arjun Ram has thus paved the way for the enforcement of trade dress and set a benchmark for the future as to how the composite intellectual property rights are evaluated and may help secure relief in cases where a prima facie case of infringement may not be established.