Gujrat High Court upholds whimsicality of the design
Design of an AC starter switch depicted below is bone of contention between the parties. Gelco Electronics Pvt. Ltd (Gelco) filed the suit at the Gujrat High Court against the Defendant, Ellico Controls Pvt. Ltd, (Ellico) alleging registered design infringement and passing off. The injunction application filed by Gelco is being considered by the court.
Gelco in the suit contends:
- They are a company incorporated under the Companies Act, 1956, engaged in the business of manufacturing and marketing of electrical/electronic switches, quality electronic instruments, electrical protector, power saving equipments, etc.
- Gelco has registered various designs for its products since 1996. They have developed and manufactured a product ‘Single Phase Electronic Protector’ which is used for air conditioners, television, refrigerators, domestic flour mills, microwave oven, washing machine, RO plants, etc, for assuring long life.
- They have registered the design of the product under Design No. 263333 in class 13-03 in June, 2014. They have also registered the design under the Copyright Act, 1957.
- The product is of unique design introduced for the first time in India for complete protection of air conditioners and various other electronic devices. It is a compact device which is easy to utilize by the end user and having good demand in the market.
- The novelty of the product resides in the shape and configuration. There is no claim on functional part of the product and there was no prior art or design prior to the date of the registration in respect of the product involved in the suit.
- Gelco has spent substantial amount for promotional activities and creating good demand for the product in the market.
- Elico, engaged in same line of business is selling similar products such as Auto Switch, Single Phase Starter, Water Level Controller Timers etc., as per the information provided on their website. They are copying Gelco’s design by making fraudulent and obvious imitation in respect of the product sold under the name ‘Ellico AC Starter’.
- Gelco has acquired statutory rights in respect of shape and configuration of the product and thus, seek injunction restraining Ellico from manufacturing, marketing, advertising and selling the products namely ‘Ellico AC Starter’ under the impugned design.
Ellico counters the injunction application on the following:
- The product sold under the name ‘Ellico AC Starter’ has a different design and any normal person will be able to differentiate by merely looking at the rival products.
- The suit is filed to pressurize and harass Ellico from carrying on their legal business activities.
- Considering the differences in the appearance of the rival products, it cannot be said that the Ellico has fraudulently imitated Gelco’s registered design.
- Gelco’s design is neither new nor original as the same is used by other persons prior to them.
- Admittedly, Controller General has issued Certificate of Registration for Gelco’s design in respect of the product on the ground that the novelty resides in the shape and configuration of the ‘Switch’. Documents on record show that Gelco has acquired goodwill and reputation in the product bearing the registered design.
- In the instant case Gelco has claimed no exclusivity in any functional element. The only exclusivity claimed is in the whimsicality of the design. This is what makes the design both novel and original. Moreover, there is no material to show prior publication or lack of novelty. This being the case, an injunction would have to follow.
- Considering the submissions made by the parties, Gelco has been able to show prima facie case. Further, it is undisputed that the Gelco’s registered design is prior in point of time and Ellico has not registered the design of its product. Thus, there is substance in the challenge to the action brought for Design infringement and passing off action against Ellico. A prima facie case is made out for granting injunction. The balance of convenience is also in favour of Gelco.
In view of the above findings, the Court restrained Ellico from manufacturing, marketing, advertising and selling the product, namely ‘Ellico AC Starter’ under the impugned design till the disposal of the suit.