Delhi High Court: Plea of Novelty or Originality must be Examined vis-à-vis the Date of Registration of the Suit Design

Delhi High Court: Plea of Novelty or Originality must be Examined vis-à-vis the Date of Registration of the Suit Design

The Delhi High Court passed a permanent injunction order in favor of Japanese electronics company Casio in relation to its musical keyboards named 'Electronic Keyboard' and observed that, the plea of novelty or originality has, to be urged and examined vis-à-vis the date of registration of the suit design. The existence, thereafter, of any number of similar designs in the market, or even the publication of any number of similar designs, cannot indicate any want of novelty or originality in the suit design, within the meaning of Section 19(1)(c) or Section 4(a) of the Designs Act.

The plaintiff Casio Keisanki Kabushiki Kaisha D/B/A Casio Computer Co. Ltd. filed an application against the defendant's firm named Riddhi Siddhi Retail Venture which was selling its musical keyboards with the registered trademark Blueberry under the brand name Nexus 32.

The plaintiff argued that the defendant had adopted a near identical design for its keyboard. The plaintiff asserted that even the features of the two keyboards were the same.

Per contra, the defendant contended that plaintiff's design suffered from lack of novelty and was similar to several others products being sold in the market.

The single judge Justice C Hari Shankar after considering the case, and examining the pictures as well as physical samples of the two keyboards, expressed that in this matter, there was no need to travel down the thorny path, as the actual physical articles showed the two keyboards to be deceptively similar in design.

The judge was of the view that at a bare glance, it was clear that the plaintiff's and the defendant's 'keyboards are deceptively similar in design. The various similarities between the two, highlighted paras 12, 14 and 15, as alleged in the plaint, stand borne out even from a viewing of the physical samples of the two keyboards. As such, it was clear that the design of the defendant's keyboard is an "obvious imitation" of the suit design within the meaning of Section 22(1)12 of the Designs Act.

The Court observed, "by conjoint operation of Sections 22(3) and 19(1) of the Designs Act, lack of novelty or originality can constitute a ground of defense against an allegation of design piracy where the lack of novelty or originality can constitute a ground for cancellation of the registration granted to the design. As such, the lack of novelty or originality has to be seen as on the date when the design was registered. If a design, when registered, does not suffer from lack of novelty or originality, the mere fact that, after it is registered, several persons may choose to copy the said design can obviously not constitute a ground to cancel the registration of the design."

The judge opined that the onus to prove want of novelty or originality, when urged as a ground of defense under Section 22(3) read with Section 19(1)(c) of the Designs Act would obviously be on the defendants urging such defense.

It was for the defendants, therefore, to produce material before the Court to indicate that, as on the date when the suit design was registered, it was not new or original, stated the Court.

The Court found that there was nothing to substantiate the defendant's contention that the suit design was liable to cancellation on account of want of novelty or originality.

The bench, therefore, upheld the ad interim injunction granted by the Additional District Judge (ADJ) in Casio's favor. The Court further said, that injunction will be in place till the disposal of the suit.