Summary
The Delhi High Court held that Jain Irrigation infringed Dura-Line’s patent but not its design.
Since the patent expired, no injunction was granted, but Dura-Line could seek profits earned.
The design claim was dismissed as it lacked novelty and distinctiveness.
In a judgment dated 19 May 2025, the Delhi High Court ruled in favor of the Plaintiff, Dura-Line India Pvt. Ltd. (hereinafter “Dura-Line”), in a suit for infringement of both patent and design rights. The suit was filed against Jain Irrigation Systems Ltd. (hereinafter as “Jain Irrigation”) for manufacturing and selling tracer pipes alleged to be identical in structure and appearance to Dura-Line’s product. The judgement addresses in detail the aspects of patent and design enforcement, including (i) infringement under the Patents Act, 1970 and the Designs Act, 2000, (ii) challenges to the validity of the registered patent, and (iii) relief and costs. This post (part 1) focuses on the Court’s analysis of the infringement and the reliefs granted.
Facts:
Dura-Line is the registered proprietor of Indian Patent No. 199722, which discloses a non-metallic pipe assembly embedded with a co-extruded tracer cable. Dura-Line also owns Design Registration No. 192665, which protects the visual appearance of the same product, particularly the distinct pattern of the embedded wire. Jain Irrigation launched a product named “Insta Tracer”, which was functionally and visually identical to Dura-Line’s product.
Issues:
In suit:
(i) Whether Dura-Line is the proprietor of the patent No. 199722?
(ii) Whether Dura-Line is the proprietor of the design bearing Design Registration No. 192665?
(iii) Whether Jain Irrigation’s adoption and use of the products “B-Sure Polythene (PE)” and “Polypropylene (PP)” amounts to infringement of Dura-Line’s patent?
(iv) Whether Jain Irrigation’s adoption and use of the products “B-Sure Polythene (PE),” “Polypropylene (PP) Sewerage Pipes,” and “Jain Insta Tracer Pipes” amounts to infringement of Dura-Line’s Registered Design?
(v) Whether Dura-Line played a fraud on the Indian Patent Office while obtaining grant of the patent?
(vi) Relief.
In the Counter-Claim:
i. Whether, for the reasons stated in the counter-claim, Dura-Line’s patent is liable to be revoked?
ii. Relief.
This post addresses all the above issues except those related to the counterclaim, and the relief sought therein, which will be covered in Part 2.
Court’s analysis and conclusion:
With regard to issues (i) and (ii), the Court found that Dura-Line was the registered proprietor of both the patent and the design.
With regard to Issue (iii), which deals with whether Jain Irrigation’s product infringed Dura-Line’s patent, the Court observed that infringement was established when all essential features of the claim were present in the impugned product, regardless of whether the individual elements were previously known or whether minor variations existed. The Court rejected Jain Irrigation’s argument that co-extrusion was a commonly used technique and clarified that superficial differences or use in different contexts do not negate infringement if the core inventive concept was appropriated. Therefore, the Court found that Jain Irrigation’s products infringed Dura-Line’s patent.
With regard to Issue (iv), which deals with whether Jain Irrigation’s product infringed Dura-Line’s design, the Court ruled that, for design infringement to be established, the impugned product must be substantially similar in visual appearance and not merely in functional characteristics. Since Jain Irrigation’s products were designed for functional utility and did not copy any visual features of Dura-Line’s registered design, the Court found that no infringement of the registered design had occurred.
With regard to Issue (vi): relief, having found infringement of the patent, the Court noted that since the patent had expired, Dura-Line could no longer be granted a permanent injunction or delivery of infringing products, as these remedies are available only while a patent is in force. However, because the suit was filed while the patent was still valid and infringement was established, the Court concluded that Dura-Line was entitled to seek financial relief. As Dura-Line had asked for an account of the profits earned by Jain Irrigation from the infringing products, the Court allowed this relief to proceed for the period during which the patent was in force.
Relevant paragraphs:
151. During cross-examination, when PW-2 was asked “Could you please elaborate and let us know as to what exactly do you mean by “design details of the product?” he answered as follows:
“By design details of the product I mean, (i) it is a polymer based pipe (ii) it has got a co-extruded tracer wire and (iii) the tracer wire is encased in a polymer and other structural details.”
152. This answer suggests that the Plaintiff’s claim to design registration is premised not on visual appeal or ornamentation, but on functional and constructional features. Such an approach is plainly incompatible with the statutory regime under the Designs Ac. The witness’s explanation, which refers to structural characteristics and technical aspects, veers into the domain of patent protection and departs from the scope of what is protectable as a “design”, namely, features of shape, configuration, pattern, or ornamentation as applied to an article and judged solely by the eye.
154. Upon comparison, Plaintiff’s registered design depicting a pipe with a distinct, surface-mounted linear formation, appears visually distinct from the Defendant’s product, which adopts a broader contour and differing surface morphology. The Plaintiff’s registered design features a circular cross-section and linear protrusion, whereas the Defendant’s product exhibits a flatter profile with differing edge geometry. These differences, evaluated from the standpoint of an average consumer’s eye, are sufficient to dispel any claim of imitation or deceptive resemblance. On this issue, the Court is also guided by the test laid down in Castrol India Ltd. v. Tide Water Oil. Co. Ltd.30 which held that in an action for design infringement, the question is not whether the two articles are identical in a technical or structural sense, but whether the overall visual effect or impression produced by the alleged infringing design is deceptively similar to that of the registered design, as perceived by an average customer with imperfect recollection. When the competing designs are viewed side by side, this Court finds no compelling similarity in the visual form, contour, surface finish, or configuration that would mislead a consumer into mistaking one for the other. Even if both products incorporate a tracer feature, the mere functional inclusion of a technical element does not translate to visual imitation, particularly when the design registration in question is restricted to the surface pattern alone, and not to the broader assembly or embedded components. The Plaintiff has not demonstrated any fraudulent copying, nor has it shown that the Defendant had access to the design registration or modelled their products with the intent to deceive.
158. Section 108 of the Patents Act provides that in the event of infringement, the Plaintiff is entitled to claim either damages or an account of profits, but not both. At the stage of filing the suit, the Plaintiff is required only to plead alternative reliefs in accordance with law. In the present case, the Plaintiff, since the inception of the suit, has specifically prayed for rendition of accounts, and has not claimed damages.
159. The Defendant’s objection, that the Plaintiff did not lay an adequate foundation for seeking rendition of accounts, is misconceived. Once infringement is established, and the Plaintiff has sought the relief of accounts in the pleadings, the Court must proceed to evaluate whether such relief is warranted based on the nature and extent of infringement. The contention that the Plaintiff is estopped from seeking rendition of accounts is, therefore, without merit.
160. Now that infringement has been established, the Plaintiff is entitled to pursue the relief of rendition of accounts to quantify the benefit unlawfully derived by the Defendant from the sale of products “B-Sure Polyethylene (PE) and Polypropylene (PP) Sewerage Pipes” and “Jain Insta Tracer Pipes” during the term of the Suit Patent.
Citation: CS(COMM) 245/2017 & CC(COMM) 54/2017, I.A. 7004/2013
Available at: https://indiankanoon.org/doc/54191432/
Article review by: Dr. Neetha Mohan & Accessibility review by Mr. Gaurav Mishra
