The Criterion for evaluating the Design Infringement , the comparison through eye has to be done. This settled law has again been reiterated by Hon'ble Division Bench High Court of Delhi vide its Judgement dated 05.08.2022 in Regular Appeal bearing No. RFA (OS) (Comm) 4 of 2021 titled as Kamdhenu Limited Vs Aashiana Rolling Mills Ltd. How the ocular comparison has to be done, it the question, which has also be addressed by the Hon'ble Division Bench.

The present Appeal was filed against dismissal of Suit for design Infringement on the application filed by the Defendant under the provisions of Order 13-A of the Commercial Court Act 2015.

Appellant has been engaged in the business of manufacturing and marketing steel bars and other allied goods under the name and trademark KAMDHENU. The Appellant claimed to have on obtained a surface Design Registration bearing no. 250968 in class 25-01 dated 14.01.2013 in respect of Rod for construction.

The subject matter Suit for infringement of Design was filed by the Appellant against the Respondent alleging that the Respondent has been applying similar surface design under the name FRIENDS 500 HD TMT Bars.
Class 25-01 (hereafter 'the said design'), in respect of 'Rod for Construction

Initially the subject matter Suit was filed before learned District Court, Saket, inter alia, seeking a permanent injunction to restrain Aashiana from using the said design. In the said Suit, the learned District Court, Saket granted an ex parte order of injunction in favour of the Appellant and against the Respondent vide order dated 15.06.2017.

This Suit was later on transferred to Hon'ble High Court of Delhi by virtue of operation of Section 22 (4) of the Design Act 2000. The Hon'ble High Court of Delhi, vide its order dated 15.06.2017, was pleased to allow application of Appellant under Order 39 Rule 1 and 2 CPC.

The Respondent assailed the said order in appeal [being FAO (OS) 309/2017] which was allowed by the Division Bench, Hon'ble High Court of Delhi. Though the Appellant filed Special Leave Petition [being SLP (Civil) no. 32594/2018] against the same, however could not succeed.

In the meanwhile, during the pendency of Appellant, the Respondent filed Application under Order XIII-A for commercial court Act 2015, which was allowed by the Ld. Single Judge vide Order dated 11.02.2019. This was the order, which was under challenge in this Appeal.

The reason for dismissal of the subject matter Suit under the provisions of Order XIII-A for commercial court Act 2015 was that the subject matter Design was prior published and that there was no any real prospect of the Appellant succeeding in the matter.

The Hon'ble Single Judge was guided by two facts, one that British Standard 2005 provided similar surface design and the another fact was that Appellant had categorically admitted in the Plaint that the said design was "equivalent to British Standard B500C". According to the Ld. Single Judge, both these facts were sufficient enough to defeat registered Design of the Appellant.

The Hon’ble Division Bench , High Court of Delhi was pleased to dismiss the Appeal by reiterating the finding of Single Judge that the subject matter design of the Appellant to be a prior published design.

The Court observed that even in the Design Registration, the Appellant claimed novelty in the surface pattern particularly in the portions marked 'A' and 'B' of the 'Rod for Construction' as illustrated".

Though novelty were claimed in the pattern comprising a set of two transverse ribs with different acute angles. However no specified angles were prescribed in the Certificate of Design Registration.

The Hon'ble Division Bench was guided by this fact that similar rib pattern has already been prescribed in prior published British Standard and the Appellant's Design was duly covered under the same.

As no specified angles were specified in the subject matter Design of Appellant, the Hon'ble Division Bench rejected the argument of the Appellant that minor differences may result into new design.

The Hon'ble Division Bench , High Court further reiterated the EYE TEST as enunciated in Gaskell & Chambers Ltd. Vs Measure Master Ltd.: 1993 RPC 76, the learned Judge observed that "the decision whether the registered design and the designs of the alleged infringements are substantially different is for the court and cannot be delegated to the opinions of the witnesses. It must be decided on a comparison of the features which appeal to, and are judged by, the eye.

However in order to reach the conclusion regarding similarity, it is not necessary that both the Designs should be completely identical. However the Court also observed that slight variation from the earlier pre existing design, does not result into new Design.

Applying the Ocular Test , the Hon'ble Division Bench High Court of Delhi concurred the opinion of the Hon'ble Single Judge that the subject matter Design was prior published and that no any other evidence was required to be lead in this regard. Resultantly , the Appeal was dismissed.

We have seen that ocular comparison is the actual criterion for evaluating that Design Infringement. However this exercise has to be done with precaution as similarity may not be exact identity, but substantial similarity is the test.

Similarly minor variation in a Design may not result into new design. Thus there can not be a mathematical formula for evaluating the Design Infringement and the duty is upon the Court to maintain the balance while applying EYE TEST in matters pertaining to Design Infringement.

Case Law Discussed:
Kamdhenu Limited v/s Aashiana Rolling Mills Ltd.
Judgement Date:05.08.2022
Case No. RFA (OS) (Comm) 4 of 2021
Division Bench, Hon'ble Delhi High Court
Vibhu Bakhru and Amit Mahajan H.J.

Written By: Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi
ajayamitabh7@gmail.com, 9990389539