201807.02
3

Whimsicality of Design Protectable

The parties are squabbling over design rights in metal tube primarily used in air-conditioners.  The design infringement and passing off claim is brought by Mandev Tubes Private Limited (MTPL) against Mr Kalpesh Jain (KJ) for using metal/copper tube with identical design. The single judge of Bombay High Court on hearing the parties granted an injunction restraining KJ from using the design. The Judge took note of the fact that there are no differences between the rival designs and that KJ also had a connection with MTPL having employed by them before setting up the business. The Defendant, aggrieved by the injunction order passed by the Single Judge has approached the Division Bench (two judge bench) in appeal for setting aside the injunction order.

The Division bench ruled in favour of MTPL, and upholding the injunction noted:

  1. The claim of the original Plaintiff (MTPL) in the suit is about the uniqueness of its design applied to copper tubes and the registration was granted on this design. The protection which MTPL had claimed in the suit was the protection of his new or original design with reference to the copper tubes to which it was applied.
  2. Whenever any registration is sought for, a configuration has to be chosen for registration to be reproduced in its article. It is not the case of the MTPL that the copper tubes were in existence earlier or were put to the use the way they are being put to use including its use in air- conditioner but the plaintiff came up with a design which he claimed to be new and original.
  3. As per MTPL, it was already manufacturing the copper tubes with varied applications for a considerable long time but in the year 2009 it conceived a unique, novel shape, configuration for its tubes and applied this uniqueness and novelty on copper tubes and this uniqueness lies in the expanded bell-shaped ending to the copper tube. It is this idea applied to the copper tubes which was registered and MTPL sought its protection.
  4. KJ’s argument that MTPL design is not new or original and it was not entitled to be registered was dismissed. The court opined that MTPL is not claiming to be an inventor of the copper tubes with multiple use but they are claiming exclusivity in the capriciousness or whimsicality of the design. Further, no material was produced to show that MTPL design lacks novelty.
  5. It is not in dispute that MTPL had obtained registration of his design on 4th October, 2010 and since then it is applying the design to the copper tubes manufactured by it. The contention of KJ that MTPL could not have claimed any exclusivity in the design is not sustainable considering KJ himself also applied a shape and configuration to the copper tubes and has obtained registration, which is subsequent in point of time to that of MTPL.
  6. On passing off, the court noted that KJ seems to have entered the market when the sale of the MTPL was already in excess of Rs. 43 million.
  7. The court while confirming the injunction noted KJ was unable to show use of the said product by anyone else prior to MTPL. The design was held to be novel and original.