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Can Trademark Right Be Asserted In A Registered Design?

Brief Facts:
The plaintiff namely Havells India Limited, filed a suit seeking, among other things, a permanent injunction based on their registered designs Nos. 280666 and 328605.

The Plaintiff obtained the aforementioned design registration in relation to the ENTICER/ENTICER ART ceiling fan series. The Plaintiff's complaint was that the Defendant was about to launch a ceiling fan called VENICE PRIME, which the Plaintiff claims is an infringement of its registered designs No. 280666 and 328605.

According to the Plaintiff, the aforementioned ENTICER series of ceiling fans had several distinguishing features, including minimalistic rectangular ornamentation with a metallic border on the blade with a clean chamfered/sloping edge; a concave curve of rectangular ornamentation on the blade towards the motor; and seamless attachment of the motor with the blades.

The Plaintiff claimed both statutory and common law rights in the aforementioned registered design for the ENTICER series of ceiling fans.

Another significant aspect of this case was that the defendant also had obtained registration for the subject ceiling fans.

The Defendant's main argument was that the Plaintiff's registered design was liable to be cancelled because the Plaintiff claimed trademark rights in the subject matter registered design.

The Defendant also claimed that the subject matter design was not novel, but rather a trade variant and widely used in commerce. As a result, the plaintiff's requested relief could not be granted.

Relevant Provision of Design Act 2000:
To gain a better understanding of this case, it is necessary to review the relevant provisions of the Design Act 2000 concerning the Definition of Design. The definition of the Design Act 2000 is found in Section 2(d) of the Design Act 2000.

Section 2(d) in the Designs Act, 2000
(d) "design" means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye.

But does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957);

Given the foregoing, it is clear that a trademark can never be asserted as a design. In other words, if trademark rights are asserted on a specific shape of a product, it cannot qualify as a design. The court was tasked with resolving the Trademark Rights Conundrum in a Registered Design.

The Finding of Court: The Hon'ble Court stated that a registered design in and of itself, if used as a trade mark, is subject to cancellation.

However, where the design elements are not used as a trademark but as part of a larger trade dress, get-up, presentation of the product through its packaging, etc., an action for passing off would be appropriate, given that a passing off claim can include but is also broader than trademark infringement.

The plaintiff was granted the requested relief in this case because it asserted the statutory right not only in its registered design but also in the get up, lay out, and so on as trade dress as a whole, which included the registered design.

The Hon'ble also rejected the defendant's argument that their products are sold under the brand name "ANCHOR BY PANASONIC." According to the defendant, as a result, there was the possibility of confusion and deception. The Hon'ble Court noted that there was a similarity in the overall appearance and set-up of both the subject matter products in question, and that there was every possibility of confusion.

Another reason for granting the plaintiff's relief was that the Defendant No. 1 had applied for design registration for the VENICE PRIME series in August, 2021, bearing No. 348235-001, and thus the same could not have taken this argument that the plaintiff's design to be common to trade.

It is submitted that the reason for rejecting the Defendant's argument that the Plaintiff's design is common to trade is that the Defendant has asserted design rights in the subject matter ceiling fans by obtaining design registration.

This is due to the legal principle that a party cannot approbate and reprobate in a proceeding. Because it had asserted design rights in the same shape and product, the Defendant was barred from claiming that the Plaintiff's design was common to trade.

Conclusion: Section 2(d) of the Design Act of 2000, which defines design, expressly excludes any shape of product that is used or asserted as a trademark.

Trademark rights and design rights are incompatible and mutually destructive. If trademark rights have been asserted in a product's shape, design rights cannot be asserted therein.

The Registered Design cannot be asserted as a trade mark in and of itself.

However, common law rights are distinct from statutory rights. The Plaintiff may assert the tort of passing off in relation to trade dress that is in all get up, lay out, and that may also include registered design.

The Defendant cannot use the argument that the Plaintiff's Design is common to trade if the Defendant applied for or obtained the Design Registration.

The Detail of Judgement Discussed:
Date of Judgement :31.05.2022 [CS(Comm) 261/2022]
Case Title: Havells India Limited Vs Panasonic Life Solutions India Pvt. Ltd.
Court: High Court of Delhi[ Hon'ble Ms. Justice Jyoti Singh]
Issues Discussed: Whether Trademark right can be asserted in a registered Design?

Whether the Defence of registered Design being generic , is available to a Defendant , in case it itself has applied for obtaining Design Registration.

Written By: Ajay Amitabh Suman, IPR Advocate, Hon'ble Delhi High Court
Email: [email protected], Ph no: 9990389529

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