Functional shape not enough to prove design is functional
What constitutes functionality of a Design has been considered by the court in this case. The court in its ruling determined whether constraints of functionality are such that the design in question is the only design which could have been devised. The product in question is a travel pillow and its ergonomic design. Travel Blue Products India Pvt. Ltd. and Ors (Travel Blue) has filed this suit against the Defendant, Siddhivinayak Enterprises (Sidd) before the Bombay High Court for design infringement and passing off. The preliminary injunction application filed by Travel Blue is being considered by the court.
Travel Blue in the suit contends:
- They are engaged in the business of manufacturing, marketing, distribution and sale of a wide range of travel accessories, including neck pillows, eye masks, padlocks, luggage accessories, folding bags, etc., in over 110 countries. Their products are available for purchase through retail stores and online shopping websites.
- They are the registered proprietor of the mark ‘Travel Blue’ and have received various accolades and awards for its travel products. In or around 2015, they designed an innovative and distinctive, first of its kind ergonomically styled foldable pillow, branded as the “Travel Blue Tranquility Neck Pillow”
- The ‘Tranquility Pillow’ is designed to maximize storage utility while travelling. The design is catchy, novel, has a distinctive ergonomic shape with a smooth dipping curve at the head of the pillow to cradle the nape of the human head with raised sides to support the face below the chin and appeals to the eye at the first instance.
- The design has received statutory protection in Europe, Republic of China, Australia and India. In view of the publicity, easy accessibility, unique and catchy design, ergonomic shape, consumer convenience and sales figures, it has been well received by customers all over the world, including India.
- Global goodwill and trans-border reputation has come to reside in the Tranquility Pillow and in particular, in its one of a kind, capricious, catchy and attractive shape and design. Members of the trade and public identify the Tranquility Pillow with Travel Blue on account of its distinctive shape and design.
- They came across a deceptively similar pillow being sold by Sidd on the website www.amazon.in. Further inquiries revealed that Sidd was selling it on its online portal www.viaggitravelworld.com.
- The design of the impugned product is copied to consciously mislead and deceive the customers. People using the online marketplace of Amazon.in had made comments that the impugned product is a replica of the Tranquility Pillow qua the design.
- Cease and desist notices addressed to Sidd was not acted upon and their acts amount to infringement of the registered design as well as passing off.
Sidd’s main contention is that the design of Tranquility Pillow is functional and therefore not entitled to protection under the Designs Act.
The court after considering the pleadings and arguments made the following observations:
- It is an admitted fact that Travel Blue is the registered proprietor of the design for the Tranquility Pillow in several jurisdictions including India.
- Sidd has not argued that there is dissimilarity between the Tranquility Pillow and their impugned product. It is their case that the design is functional.
- For a defence of “functionality” to succeed, Sidd is required to show that a “function” can be performed by that shape and/or form and/or design alone. If the same “function” can be performed by different shapes, it is not sufficient to merely show that the design/shape in question performs a function as well. They have not even contended that the “function” in the present case can be performed only by the shape/form in which the design is registered. Therefore, the court came to the conclusion there is no merit in this defence and it ought to fail.
- Holding in favour of Travel blue, the court remarked that Tranquility Pillow is being sold from on or around October, 2015, and goodwill and reputation has come to reside in the shape of the product. Sidd has not given any explanation for copying the registered design. Confusion amongst consumers on account of the shape of the impugned product is likely. The balance of convenience is also in favour of Travel Blue.
In view of the above the court granted a preliminary injunction in favour of Travel Blue and restrained Sidd from using the impugned design and passing off its product till the disposal of the suit.