Novelty in design: credit where it’s due

By Abhai Pandey, Lex Orbis IP Practice
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The intended subject matter of design protection under the Designs Act, 2000, is any article upon which a design is applied or capable of being applied to enhance its attractiveness and appeal. The basic criterion for registration of a design in respect of an article or part of an article is novelty. (It is noteworthy that if a design has been registered in respect of an article in a particular class, such registration shall not bar the registration of the same design in respect of a different article in the same class on the ground of novelty.)

Abhai Pandey,Lawyer,Lex Orbis IP Practice
Abhai Pandey
Lawyer
Lex Orbis IP Practice

To meet the criterion of novelty, the impugned design should be “new or original” according to section 4 of the act, which provides several definitions.

Firstly, “new or original” signifies that the design has been created as a result of the author’s own intellectual activity. The design must present, for the first time, some pattern, shape or ornament to be applied by a manual, mechanical, or chemical means to a particular subject matter, to which it has not been applied before.

The second determinant of novelty is outlined in section 4(b), which specifies that the design should not have been published earlier in India or anywhere else in the world in a tangible form, or have been used in any other way prior to the filing date or the priority date of the application for registration of the design.

Issues in interpretation

This second aspect was most recently dealt with by Delhi High Court in the matter of Reckitt Benckiser (India) Ltd v Wyeth Limited, which related to novelty in the design of an S-shaped spatula. The plaintiff pleaded novelty in the shape, configuration and ornamentation of the spatula, and also referred to an earlier case, Gopal Glass Works v Assistant Controller of Patents and Designs, in which it claimed that prior publication anywhere else than in India had not specifically been made a ground for cancellation of a design.

However, the high court held that the issue of prior publication had not been dealt with in detail in the cited case. A close reading of section 4(b) together with section 19(1)(b) clearly indicates that prior publication anywhere else than in India does vitiate a claim of novelty. Accordingly the high court dismissed the plaintiff’s application for infringement of design, since the shape was already published in the US and Australia.

The case of Gopal Glass Works Ltd v Assistant Controller of Patents and Designs and Ors borrowed the “visual effect” doctrine from Rosedale Associated Manufacturers Ltd v Airfix Ltd. It states: “When the novelty of an article is tested against a prior publication, the primary factor is the visual effect and appeal of the article. If the prior publication does not share the visual effect and appeal of the article, the publication does not destroy novelty.”

In other words, it has sometimes been held that the eye is the ultimate arbiter of novelty, and that any determination has to rest on the general ocular impression of the design. This implies that novelty or originality is best judged on the evidence of experts in the trade.

The expression “appeal to and judged solely by the eye” in section 2(d), that provides the definition of “design”, does not refer to aesthetic beauty in the classical sense, but only to such artistic works which have the capacity to enhance decorative value or visual appeal when applied to a finished article. The appeal should be distinctly perceivable in the features and combination of shape, configuration, ornamentation and composition of lines and colours.

Variations and adaptations

The introduction of ordinary trade variants or workshop improvements to an old design will not meet the criteria for novelty in a new design. An addition of a curve here or there to a shape which is well-recognized from an article in common use in the market cannot make the design new or original.

In the case of Hello Mineral Water Pvt Ltd v Thermoking California Pure it was found that “mere novelty of form or shape is insufficient. Novelty involves the presence of some element or new position of an old element in combination, different from anything found in any prior structure.”

It was further clarified in the case of Smithkline Beecham Consumer Healthcare, which dealt with the design of a toothbrush, that “the originality and novelty in the component of the brush should be such that it brings perceptible change in the pattern, shape and configuration of the entire toothbrush which appeal to the eye because it is all the parts of the toothbrush which together make it different from other similar stuff available in the market.”

These judgments show that that courts have kept with the spirit of the design law and helped support its intended purpose, which is to ensure that the creator of a design is rewarded for his or her intellectual efforts.

Abhai Pandey is a lawyer with Lex Orbis IP Practice, a law firm specializing in intellectual property issues.

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