NOVELTY
A design is considered to be new or novel, if it has not been anticipated by publication anywhere in the world or in India in any tangible form, i.e. the design does not form the part of the public domain or state of the art. Further, it should be significantly distinguishable from known designs or combination of known designs.
It has been explicitly laid down by the Delhi High Court in the case of B. Chawla and Sons v. Bright Auto Industries[1] that novelty and originality can be gathered when ‘there is a mental conception expressed in a physical form which has not existed before, but has originated in the constructive brain of the proprietor and that must not be in a trivial or infinitesimal degree, but in some substantial degree.’
A distinction between the old trade variants against something claiming to be new and original have to be placed by an ‘instructed eye who is capable of seeking through to discern whether it is common trade knowledge or a novelty so striking and substantial as to merit registration. On the basis of these standards, the Court held that the impugned design in the present case, though was a design within the meaning of the Act, but it did not possess a ‘substantial’ novelty or a striking newness for the instructed eye to make it registrable under the Act. The court finally held that ‘an addition of a curve here or there in a shape which is a well-recognized shape or an article of common use in the market cannot make it an article new or original in design. If it is made eligible for registration, it would certainly hinder the progress of trade without there being any justification, whatsoever’
The court while deciding whether a curve in the sloping upper length side in a rear-view mirror of a vehicle makes the design new or original, held that the introduction of ordinary trade variants in an old design cannot make it new or original. The court referred to the landmark observation b Lord Moulton in Phillips v. Barbro Rubber Company[2], that of if it is a common practice to have or not to have, spikes in the soles of the running shoes, any man does not make a new and original designs out of an old type of running shoes by putting spies into the sales. He emphasized that it was the duty of the court to take special care that no design is to be counted as ‘new and original design’ unless it is distinguished from that previously existed by ‘something essentially new or original’.
The Delhi High Court in Ravinder Kumar Gupta v. Ravi Raj Gupta and Ors.[3], held while deciding whether an addition of round corners to a sharp corner tiles amounts to a trade variant, or a new and original design, held that in order to determine whether a design was new or original, there must be a substantial difference from the designs which were known or had been published prior to the registration, and what was that substantial difference. Though no general principle could be laid down, it all depended on the facts and circumstances in each case.
The Court in that case held hat merely because the tile with round corners was conceived by the Respondent, he could not be provided with a registration as a new design under S.2(5) of the Act. It held that when it is said that the design should be original or new, it doesn’t mean that it should be copy or imitation or a variation of the existing design. It should be something inventive (making the sharp corners round cannot be said to be a new design).
The Delhi High Court in Dart Industries Inc. v. Techno Plast and Ors.[4] considered the observations by B. Chawla and Ravinder Kumar to hold that since the claim in the present case was devoid of originality and novelty, and was only a trade variation, it could not form a prima facie opinion to grant an injunction against the Respondent under the Designs Act.
In the recent case, the Delhi High Court in Crocs Inc., USA v. Liberty Shoes and Ors.[5], while referring to its earlier decision in Pental Kabushiki Kaisha and Anr. V. M/s. Arora Stationers[6], held that mere variations to existing product which do not result in requisite amount of newness and originality cannot be considered a innovations having newness and originality and be granted a monopoly of 15 years. Such newness or originality to be registered should be substantially significant to distinguish the new article prepared from the existing designs. The Court referred to the observations made in B. Chawla and Ravinder Kumar to hold that mere novelty of outline or few changes here and there which are trade variants would not result in creation of a new article on the design entitling protection as a registered design under the Act. Based on these observations, the court held that the impugned design in the present case, though having some additions, did not qualify for innovation or creation of newness or originality, and thus refused to grant injunctions against the Respondents.
Conclusively, it can be summarized that ‘novelty’ and ‘originality’ in designs can be established only if there exists a ‘substantial’ difference between the proposed/registered design and the previous design in the public domain. It requires the presence of a new element so as to be strikingly distinctive when compared to the prior design.
PROVISIONS UNDER DESIGN ACT, 2000
According to S.4(a) of the Designs Act, 2000, a design which is “not new or original” shall not be registered. Similarly, according to S.4(b) of the Act, a design which 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, shall not be registered[7].
S.19(1)(c) and (d) of the Act provides that a person can file a petition for cancellation of the registration of a design can be filed at any time if the design is “not new or original”, or if the design is “not registrable under the Act”. S.22(2)(3) of the Act provides that the defendant can challenge the novelty and originality of the registered design in the same proceeding where it is being accused for infringement of design. (as per the interpretation by various courts).
PREVIOUSLY PUBLISHED DESIGN CANNOT BE REGISTERED
A design will be registered as per S.4(2) of the Act only if it has not been previously published, or made available anywhere in India or abroad, before the date of application for registration. ‘Publication’ means that if a design has been disclosed to the public, or the public has been in possession of the design, it may no longer be qualified for registration.
The Delhi High Court in Dart Industries Inc. v. Techno Plast and Ors[8]laid down the test that if a man with ordinary prudence while seeing the designs or documents in question is able to relate, in his mind’s eye, the same antecedent designs/statements without the necessity of making further experiments, i.e. the moment he sees the designs, he is able to at once say ‘Oh, I have seen them before’. To constitute prior disclosure by publication to destroy the novelty of a registered design, the publication would have to be, in some tangible for, of a design applied to the same article. Prior publication of a trade catalogue, brochure, book, journal, magazine or newspaper containing explicit photo illustrations clearly depicting the application of the design on the same design, with the same visual effect would be sufficient.
The Delhi High Court in Crocs Inc., USA v. Liberty Shoes and Ors. [9]on the basis of the publications brought in by the Defendants showcasing the registered design of the footwear existing in the public domain in the website of the plaintiff prior to 25.08.2003 (registration of the design), the Court held that the registrations of the Plaintiff are liable to be cancelled in terms of S.19(1)(b) read with S.4(b) of the Act. On the basis of this, the Court denied them any legal entitlement to the Plaintiff to allege piracy of the designs under S.22 of the Act.
The Delhi High Court in the landmark ruling in Microlube India v. Rakesh Kumar Trading [10]held that the Design Act is a privilege granted by a sovereign by way of design registration upon the declaration of the novel and original shape to the design office by the proprietor for a limited period of maximum 15 years. The right is akin to a patent. One of the consequences of the expiration of the design right is that upon expiry, the shape of the article goes in public domain so that the shape of the article may be used by others freely in order to further encourage the development in the field of shape and arts. In case the monopoly attained by registration of a design is extended in any way, the same would be contrary to the objects and schemes of the Designs Act. The court clarified that it cannot be the case that on one hand the shape of the article is passed to the public domain for free use by operation of law of the Design Act, and on the other hand, the same very shape is again put into the bracket of protection by granting monopoly rights in perpetuity by operation of another law (in this case, trademark law), thereby affecting the public right from using the said shape of the articles.
The legislative policy behind the Design law was to provide limited monopoly rights by putting the articles and embodiments in the public domain after the expiry of the design registration. Public domain includes the rights to freely copy[11]. The court reemphasized that once the proprietor chooses to protect its intellectual property under a right akin to a patent, the exclusive rights vest in him for a limited period of time. However, after the expiry the proprietor has a covenant with the law that the said shape, embodiment or function which are the subject matter of the design shall go in the public domain. It is as a matter of law or operation of law, such shape or features as a mandate of policy going into public domain.
CONCLUSION
A design, in order to be registered must be novel. A design that has already been published by someone else cannot be registered. If a registered design is expired, it is made available to the public domain.