Delhi High Court Holds Conceptual Designs Do Not Constitute Publication Under Design Law

Delhi High Court Holds Conceptual Designs Do Not Constitute Publication Under Design Law

Justice C. Hari Shankar, presiding over a single-judge bench of the Delhi High Court, has ruled that a computer-generated image is not considered an article of manufacture under the law. For Section 4(b) of the Designs Act to be invoked, there must be a publication in tangible form.

The defendant was accused of infringing on the plaintiff's Design Registration Nos. 296178, 296179, and 296180 by manufacturing and selling the MATTEO range of switch plates.

The plaintiff's LYNCUS switchplates were granted design registration on September 2, 2019, September 12, 2017, and September 20, 2017, respectively.

However, the deemed registration date was considered July 27, 2017, due to the operation of Section 5(6) of the Designs Act.

The plaintiff's counsel argued that the defendant's MATTEO range of switch plates violates the plaintiff's designs under Section 22 of the Designs Act. The court was presented with physical samples of both the plaintiff's and defendant's switch plates. Based on this evidence, the counsel sought an injunction against the defendant from manufacturing and using the infringing design. The counsel also challenged the defendant's emails, claiming that they merely conveyed concepts and did not constitute communication of a design under Section 4(b) of the Designs Act.

The defendant's counsel contended that the defendant's designs were similar to the previously communicated Concept 6 design, which had been shared by NIPA International Pvt. Ltd. (NIPA) with Orient Electric Ltd. (Orient) and subsequently with the defendant.

The counsel also opposed the plea for an injunction by asserting that the plaintiff's design was not eligible for registration due to the restriction specified in Section 4(b) of the Designs Act.

To support this argument, the counsel presented NIPA's emails first sent to Orient and then to the defendant, to establish that the design in question had already been disclosed to the public well before the date of design registration, i.e., July 27, 2017.

After considering the arguments presented by both sides, the court held that the defence of Section 4(b) would only be available to the defendant if the plaintiff's design had been disclosed to the public by tangible publication before the filing date of the Design application.

On the issue of whether the communication of Concept 6 design constituted prior publication, the court stated that it was admitted by both parties that no tangible article had been produced with the design before July 27, 2017. As per Section 2(d) of the Designs Act, the concept cannot be considered a design in the absence of its application to an article.

Therefore, the court ruled that the concept did not qualify as a design under the Designs Act.

The court referred to the case of C.C.E. v. Rajasthan State Chemical Works (1991) 4 SCC 473 and relied upon it to establish that a computer-generated image is not recognised as an article of manufacture under the law. Therefore, the court clarified that communication of a conceptual design, which is not present in tangible form, cannot be considered as disclosure to the public by publication under Section 4(b) of the Designs Act.

The Delhi High Court also observed that the defendant had applied for the design registration of the switch plates, and therefore cannot challenge the validity of the plaintiff's design on the basis that it was identical to the Concept 6 design forwarded by NIPA.

The court issued an injunction prohibiting the defendants from engaging in any activity related to switchplates that feature the disputed designs or any other designs that may be considered fraudulent or obvious imitations of the plaintiff's registered design.