Most recently in Philips Lighting Holding BV v Jai Prakash Agarwal and Anr., the Delhi High Court refused to issue an interim injunction in favor of the plaintiffs on their claims of design infringement and passing off.
Plaintiffs are leading manufacturers and sellers of energy-efficient lighting products, systems, and services such as home lighting, stage lighting, studio lighting, and more.Plaintiffs also claim to be at the forefront.The plaintiff brought this lawsuit to protect the registered design right of its “T-shaped LED bulb” (referred to as “T-shaped bulb”).They further claim that the defendants attempted to pass off their goods as the plaintiff’s
The plaintiffs allege that the novelty of the design is related to its unique “T-shape” and “plug-and-play format” and that the bulbs do not have any brackets on the sides.The plaintiff further claims that this unique shape enables the T-Bulbs to provide better focused lighting.The plaintiff further claimed that it was the original equipment manufacturer (“OEM”) of several lighting companies in India, from whom it sourced T-Bulb and sold the same product under their trademark/brand name, subject to a license or fee.
In light of the foregoing, the plaintiffs sought an injunction stating that the defendants’ products were copies of T-Bulb and thus violated their registered design rights.In addition, the plaintiff alleges a counterfeit product that appears to be similar based on the look, feel, and trade dress of the defendant’s product.
On the other hand, the defendant argued that even before the plaintiff’s registration, the plaintiff’s design registration itself could have been cancelled based on a similar design registration in India.Notably, the plaintiff is claiming priority registration in lieu of its EUIPO registration in 2015.However, the defendant argued that the actual registration date of the EUIPO design was 8 May 2017 rather than 8 May 2015, and that the plaintiff had maliciously claimed a false priority date.
The court held that the designs of the plaintiff and defendant’s T-Bulbs were “similar if not identical.”
The court also noted that the registration date claimed by the plaintiffs in the plaintiffs was merely a typographical error and was not sufficient to deprive them of protection.
However, despite this, the court said the plaintiffs had failed to present prima facie evidence in their favour.It was observed that the defendant was ostensibly able to display other design registrations, keeping in mind the 2017 registration date.
The court noted that “the test to determine whether a design is ‘new’ or ‘original’ is, inter alia, to determine and exclude common trade variants from old designs. Designs that are identical or even substantially similar to the related design should not be preceded by Published or registered. A slight or minimal change from an existing design would disqualify the related design from registration. The change introduced should be substantial.” Applying this test to the present case, the court found that the plaintiff’s design was only the defendant’s cited design. Commercial variants of registered and existing designs.
The court also concluded that “publication” was a matter of fact based on evidence.The mere existence of a recorded design in a Convention country may not in itself amount to prior publication.
Furthermore, with regard to the claim of passing off, the court stated that, even under trademark law, the plaintiff had failed to present prima facie evidence in its favour.The court explained that the plaintiff himself had argued that several lighting companies in India used the plaintiff as an original equipment manufacturer and sold their products under their own trademarks and brand names.Accordingly, the court stated that “the design itself was insufficient to tie the product to the plaintiff to sustain a counterfeit claim.” Furthermore, the court explained that the plaintiff failed to satisfy the trinity test for counterfeiting because it failed to demonstrate the other two elements; convenience and The balance between irreparable damage.
Accordingly, the Delhi High Court clarified the design infringement claim by denying the grant of an interim injunction in favour of the plaintiff on the grounds of design infringement or passing off.It has been clearly established that mere trade variants of existing designs may not be sufficient to establish protection under design law.
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Post time: Jul-29-2022