Delhi HC Rules In Favour of Casio Over Keyboard Design

The Delhi High Court recently upheld an interim order passed by an Additional District Judge restraining a firm from selling and manufacturing any keyboards carrying the same design which is deceptively similar to Japanese electronics company Casio’s keyboard design.  

Contentions of the plaintiff

The plaintiff is a well-known entity engaged in the manufacture of, among other things, musical keyboards. One of the keyboards of the plaintiff stands registered in the plaintiff‘s favour as an ―Electronic Keyboard‖ vide Design Registration No. 224547, with effect from September 2009. The registration is valid and subsisting, till 2nd September 2024. The Certificate of Registration issued to the plaintiff by the Controller of Designs certifies that novelty resides in the shape and configuration of the keyboard. The various views of the keyboard, in each of which the Certificate of Registration certifies existence of novelty in its shape and configuration.

The plaintiff claims copyright in the registered design, under

Section 11(1)2 read with Clause (c) of Section 23 of the Designs Act, 2000. The plaintiff manufactures keyboards carrying the suit design under Model Nos. SA-46 and SA-47, the difference between the being with respect to the colour of the base of the keyboards.

In order to fortify its case regarding its goodwill and repute in the market, the plaintiff has provided the figures of returns from the sale of the products carrying the suit design from the year 2011 till 2020- 21 in India. The defendant does not dispute the reputation or goodwill of the plaintiff.

The plant asserts that the suit design has become indelibly associated with the plaintiff and has, over a period of time, acquired secondary significance. The purchasing public, it is submitted, invariably associates the suit design with the plaintiff‘s keyboard. The plaintiff is aggrieved by the adoption, by the defendants, of a near identical design for its keyboard sold under the brand name ―Nexus32‖, under its registered trademark ―Blueberry. The plant provides photographs of the plaintiff‘s and the defendants‘ keyboards, to emphasize the likeness of the design of the two.

Defendant 2, avers the plaint, was a former distributor of the plaintiff who, Mr. Bansal would submit, was actually manufacturing covers for the plaintiff‘s keyboards, before setting forth with his own business. Mr. Arnav Goel contests this contention and submits that, in any case, there is no material placed on record to indicate that Defendant 2 was selling the plaintiff‘s SA-46 or SA-47 keyboards. 17. It is in these circumstances that the present plaint has been instituted before this Court, seeking an injunction against the defendants and all other acting on their behalf from manufacturing or selling any keyboards carrying the impugned design or any other design, which is deceptively similar to the suit design.

Concomitantly, the suit prays for rendition of accounts, delivery up, costs and damages. 19. As already noted, the learned ADJ, before whom the suit has originally been instituted, has already granted ad interim relief to the plaintiff vide order dated 25th June 2021. The issue before the Court, today, is, therefore, whether the interim relief should be confirmed or vacated. 

Arguments on behalf of Defendants

The defendants, in their written statement filed by way of response to the suit, do not dispute the allegations that the defendants‘ Nexus range of keyboards are identical, or near identical, in design to the plaintiff‘s keyboards carrying the suit design. 21. The defence in the written statement, as has been argued by Mr. Arnav Goyal, learned Counsel for the defendants in Court as well, is predicated on Section 22(3)4 read with Section 19(1)(b) and (c)5 and Section 4(a), (b) and (c)6 of the Designs Act. The plea, fundamentally, is that the plaintiff‘s design suffers from lack of novelty and is similar to the design of several other keyboards available in the market. The additional documents, which have been permitted to be placed on record by the order passed today, in fact, are listings on the internet pertaining to similar keyboards on various ecommerce websites, apparently with a view to buttressing the case that the defendants seek to set up, of lack of novelty. 

Analysis

Even where the defendants‘ design is identical or similar to the suit design, Section 22(3) of the Designs Act permits a defendant to urge ―every ground on which the registration of a design may be cancelled under Section 19‖ as a ground of defence to an allegation of design piracy. Section 19(1) envisages five circumstances in which the registration of a design can be cancelled, enumerated in clauses (a) to (e) of the sub-section. Of these, the clauses with which we are concerned in the present case are clauses (b) and (c). Clauses (b) and (c) envisage cancellation of a registered design if

(i) the design has been published in India or in any other country prior to the date of registration or

(ii) the design is not new or original. 

―Publication‖ is not defined in the Designs Act. A Full Bench of this Court has, noting this fact in its design Reckitt Benkiser India Ltd v. Wyeth Ltd held the issue to be no longer res integra in view of shall not be registered.

The judgment of the Supreme Court in Bharat Glass Tube Ltd v. Gopal Glass Works Ltd

Para 20 of the report in Reckitt Benkiser which so holds, reads to the extent relevant, thus:

―In our opinion, most of the confusion or lack of clarity qua the meaning of the words "published" or "publication" will be removed when we refer to the judgment of the Supreme Court in the case of Bharat Glass Tube Ltd. vs. Gopal Glass Work's Ltd8

This judgment of the Supreme Court is the judgment which has been passed in an appeal against the judgment of the learned Single Judge of the Calcutta High Court in Gopal Glass Work's case. A reference to various paragraphs of the Supreme Court‘s judgment shows that the Supreme Court has taken note of the fact that though design is specifically qua an article, however, publication of a design in a paper form, may amount to prior publication, however, each case has to be necessarily seen and decided as per the facts of that case. The facts of each case must show sufficient amount of clarity qua the design which must necessarily exist in a public record of a Registrar of Designs Office and must have sufficient clarity attached to them before the same can be treated as prior publication. Therefore, really the issue is no longer res integra as to meaning of word "published" or "publication" as found in Sections 19(1)(b) and 4(b) of the Act because the Supreme Court has held that the existence of documents in public record such as the Office of the Registrar of Designs, will or will not, depending on facts of each particular case be evidence of prior publication.

By conjoint operation of Sections 22(3) and 19(1) of the Designs Act, lack of novelty or originality can constitute a ground of defence against an allegation of design piracy where the lack of novelty or originality can constitute a ground for cancellation of the registration granted to the design. As such, the lack of novelty or originality has to be seen as on the date when the design was registered. If a design, when registered, does not suffer from lack of novelty or originality, the mere fact that, after it is registered, several persons may choose to copy the said design can obviously not constitute a ground to cancel the registration of the design. 

The plea of novelty or originality has, therefore, to be urged and examined vis-à-vis the date of registration of the suit design. The existence, thereafter, of any number of similar designs in the market, or even the publication of any number of similar designs, cannot indicate any want of novelty or originality in the suit design, within the meaning of Section 19(1)(c) or Section 4(a) of the Designs Act.

There is, therefore, nothing to substantiate the defendants‘ contention that the suit design was liable to cancellation on account of want of novelty or originality.

Nor has any document been placed on record to indicate that it suffers from prior publication. All the documents which have been placed on record as additional documents today pertain to online listings of sales of keyboards on various e-commerce websites, none of which is prior to 2009.

The plea that the suit design is liable for cancellation on the ground of want of novelty and originality is, therefore, without substance.

That being the sole plea of the defendant and the defendants‘ design being otherwise an obvious imitation of the suit design, the plaintiff is entitled to interlocutory injunction, pending disposal of the suit. 47. As such, the ad interim injunction granted by the learned ADJ, vide order dated 25th June 2021 stands confirmed pending disposal of the suit.