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India: The value of creativity

30-09-2015

Bitika Sharma and Kapil Midha

India: The value of creativity

ALPHASPIRIT / SHUTTERSTOCK.COM

Innovative applications of existing designs are now granted legal protection in India, as Bitika Sharma and Kapil Midha of Singh & Singh Lall & Sethi report.

A recent decision by the Delhi High Court has created and established ground-breaking jurisprudence for passing off actions relating to designs, motifs and patterns used for the design of home accessories. The court observed that a new and innovative application of an age-old artwork/design to a new range of articles is worthy of protection.

This landmark decision has created a new reality in the consumer market, as designers cashing in on the creativity, inventiveness and originality of the application of inspired designs are now granted legal protection.

The decision was pronounced in June in the case Eicher Goodearth v Krishna Mehta. The plaintiff, Eicher Goodearth, a renowned chain of retail stores and galleries under the name Goodearth, is known for its unique and aesthetic designs for home décor and apparel. The plaintiff sued the defendant for passing off its designs, motifs, patterns and artworks from its famous collections including “Serai”, “Periyar”, “Vrindavan”, “Rose Princess”, and “Falcon”.

The defendant, a former employee of the plaintiff, had used similar designs, motifs, patterns and artworks for an identical range of products, and was selling them on its website.

The court observed that a passing off action is maintainable in cases where designs have not been registered under the Design Act, 2000. The court discussed the law on passing off concerning such designs, motifs and artworks. It held that even though the design/artwork itself is old, if the design/artwork is applied to an article for the first time, the artwork/design needs to be protected. The court, while observing that the plaintiff was entitled to the grant of a preliminary injunction in its favour as the defendant was using identical designs/motifs/artworks for an identical range of products, held that in a passing off action based on a design the plaintiff would have to satisfy the following three elements of conventional passing off action (popularly known as the ‘classic trinity’):

There is goodwill or reputation attached to the goods or services which the plaintiff offers in the minds of the purchasing public;

The defendant has employed misrepresentation which has made the consumers believe that the defendant’s goods are those of the plaintiff; and

The defendant’s action has caused damage.

The court observed that an action for passing off a design first requires that the design “be used as a mark”, and such design/mark “identifies the plaintiff as the source of goods supplied or services offered”. The court further observed that the plaintiff had satisfied the test for a passing off action and was able to prove that the designs were being used as a mark which is associated with the plaintiff by the public and the mark has enormous goodwill and reputation attached to it.

The plaintiff had argued that the defendant, being an ex-employee of the plaintiff, had access to all the artworks and designs of the plaintiff and was well aware of the inspiration used by it to create such unique and aesthetic artworks/designs. The court observed that the defendant had simply taken the inspiration as that of the plaintiff and used the same in an identical manner and in respect of  identical range of products.

The defendant contended that as the impugned designs were already in the public domain, no novelty/exclusivity can be claimed. However, the plaintiff argued that it cautiously takes inspirations from various sources including Mughal art and architecture, flora and fauna, and the rich heritage of India, to create such aesthetic designs. It was further argued by the plaintiff that the creative manner in which the inspiration is used and the manner in which such designs are applied to the products should be considered.

The plaintiff contended that the said designs and artwork are new and original and have never been previously applied to the products/articles as used by the plaintiff. Discussing the law on this aspect, the court observed that even though the design itself is old, if the design/artwork is applied to an article for the first time then the design/artwork is entitled to legal protection.

Through this landmark decision, the court has taken a leap in the field of design and common law by extending the legal protection to artworks and designs which are novel in their application. Such an approach will definitely act as a catalyst for incentivising not only the creation of original and aesthetic designs but also new applications of such designs.

It is an incentive to craftspeople and designers who work day in, day out and bring the beauty of nature and surroundings into our living rooms. The creativity involved in these artworks and their application into daily tangible items is not to be treated any differently from a masterpiece on a canvas. 

Bitika Sharma is a senior partner at Singh & Singh Lall & Sethi. She has more than ten years’ experience of litigation in all IP fields including trademarks and patents. She can be contacted at: btsharma@indiaip.com

Kapil Midha is an associate at Singh & Singh Lall & Sethi. He has worked on various landmark IP cases and is practising mainly in the fields of trademark, copyright and design law. He can be contacted at: kmidha@indiaip.com 

Bitika Sharma, Kapil Midha, Singh & Singh Lall & Sethi, trademark, design, landmark, Delhi High Court

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