This post highlights the different aspects of design registration process, by discussing various landmark judgements in the automobile industry.
In, the case, Honda Giken Kogyo Kabushiki Kaisha v Allied Pacific Motor (M) Sdn Bhd & Anor  3 MLJ 30, Honda Motor Company which is based in Japan and is one of the largest two-wheeler producing companies in world, filed for an interim injunction in 2005 for design infringement of their motorcycle- HONDA WAVE 125 model.
The company claimed that a Malaysian company had infringed the designs of the motorcycle HONDA WAVE 125 model registered by Honda Motors in Malaysia, which included the rear combination lamp, leg shields and handle cover equipped with lights of a motor scooter.
Issues that the High Court of Malaysia looked at:
- whether the design was valid or not?
- whether the design was novel or not?
The Court held that the registration of a design had to be presumed to be valid, once the design had been published in the gazette declaring it to be a registered design, until proved otherwise. This was based on the fact that the Registrar while carrying out the registration process would not only scrutinize the documents required and procedures complied for the registration process, but also would ascertain if the law allowed a particular design to be registered.
The Court rejected the plea of the defendants that Honda’s design was not novel, since the company had launched the same model in Thailand earlier. The Court said that the novelty aspect of any design is limited to the territory, where the registration is sought. Under the Malaysian Designs Act, a design is not considered new only if it is disclosed to the public anywhere in Malaysia, or is the subject matter of another application with an earlier priority date.
Though the Court found that the defendant’s product had substantially imitated the plaintiff’s registered design, it did not grant an interim injunction. The Court did not grant the injunction owing to balance of inconvenience because of the fact that Honda Motor Company had never launched the product in Malaysia, while the defendant had already started marketing their product. Therefore if the interim injunction were to be granted there would be serious ramifications including financial and social consequences, for the defendant.
In another case, Brighto Auto Industries vs Raj Chawla, a petition was filed by M/s Brighto Auto Industries, a partnership firm, engaged in manufacture of various articles, including rear view mirrors. The petition by M/s Brighto Auto Industries sought the cancellation of the design of rear view mirrors (Registration Number 139585) registered under class I of the Designs Act, 1911.
The plaintiff claimed that the registered design was neither new nor original.
The issue before the court was to identify:
- Whether the registered design was new or not?
- Whether the registered design could be cancelled, in case the design was not found to be new?
The plaintiff substantiated his contention with evidences that the rear view mirror with the registered design had been available in market since long. However, the defendant claimed that he had invented the design and the design was novel. The defendant however did not support his claim with any evidence.
The Delhi High Court looked into the distinction between ‘new’ and ‘original’, while giving the judgment and referred to the judgement in, Dover Ld. v. Nurnberger Celluloidwaran Fabrik Gebnider Wolff (27 R.P.C. 498). According to the judgment passed in the above case, “‘new’ referred to a case where the shape or pattern was wholly new in itself and on the other hand ‘original’ to the case where, it was old but new in its application to the particular subject matter. The word ‘original’, contemplates that the person has originated something, that by the exercise of intellectual activity he has started an idea which had not occurred to anyone before, that a particular pattern or shape or ornament may be rendered applicable to the particular article to which he suggests that it shall be applied”.
In this case, the defendant accepted that rear view mirrors were available in the market, which were rectangular in shape with rounded edges, width sides curved or sloping and the lower length side also sloping .The novelty incorporated by the defendant was a further curve in the sloping upper length side. The rear view mirrors previously sold in the market did not carry this type of curvature on the upper side.
The Court concluded that the innovation which the defendants claimed was insufficient to consider the design as new. The Court identified the design in question as just a simple variation of the earlier available product in the market and ordered the design to be cancelled.
In the case of Escorts Construction Equipment Ltd vs Action Construction Equipment Pvt Ltd, the issue involved the alleged illegal copying of a design by the respondent of Pick-N-Carry Hydraulic Self Mobile Cranes manufactured by the plaintiff. Though the case did not directly fall under the purview of the Designs Act, the Court examined whether the said design was capable of registration under the Designs Act. After examining the definition of a design under the Act, the Court held that the design in question was incapable of registration. According to the Court the definition made it amply clear that the primary objective of the Act was to protect the shape and not the function, or functional shape.
Rejecting the contention of the plaintiff who claimed protection of certain specific parts of the crane, the Court said that the parts of the crane being claimed for design protection were not made to appeal to the eye but solely to make the crane work or function. The Court stated that “The expression ‘design’ does not include a method or principle of construction or features or shape or configuration which are dictated solely by the function which the article to be made in that shape or configuration has to perform.”
In the first case involving Honda Motors, although it was found that there was substantial similarity between the plaintiff’s and defendant’s design. The Court did not grant injunction as there would have been serious ramifications including financial and social consequences, for the defendant. The Court also presumed validity of the design, in this case, as the design had been accepted by the Registrar. Whereas in the case involving, design of rear view mirrors, the Court cancelled the registration of design owing to the fact that the design was not novel enough.
In the last case, the Court, declared explicitly that a claim of design cannot be made on any functional part of a product.
The above mentioned decisions enlighten on certain important aspects of the design registration process, and are considered as landmark judgments.
- The novelty for industrial designs is local, and thereby the publication or use of the design outside the country prior to registration will not render the design invalid.
- All industrial designs are valid unless proven otherwise.
- The design has to be new and novel for claiming registration. The innovation claimed should not be petty.
- Design registration cannot be claimed for functional aspects of any product.
Authored by Sambhabi Patnaik.
Contributed by Industrial Design (Design Patent) division of BananaIP in India
- Honda Giken Kogyo Kabushiki Kaisha v Allied Pacific Motor (M) Sdn Bhd & Anor  3 MLJ 30
- AMP Incorporated v Utilux Proprietary Ltd  RPC 103.
- Brighto Auto Industries vs Raj Chawla on 24 December, 1972, ILR 1978 Delhi 120, 1977 RLR 158
- Escorts Construction Equipment Ltd Vs Action Construction Equipment Pvt Ltd, 1999 PTC 36(Del)