INTA wades in on ‘erroneous’ Delhi ruling on spare parts design protection
The association said the High Court’s interpretation of ‘article’ could leave design registrations vulnerable to cancellation | INTA’s intervention relates to case between a motorcycle manufacturer and spare parts company.
The International Trademark Association (INTA) has waded in on what it says is an “erroneous precedent” set by the Delhi High Court that spare or replacement parts of articles that could not be independently sold as “articles of commerce” were not eligible for design protection.
In a design infringement case between a motorbike manufacturer and a spare parts company, the court had ruled that a part of an article that has no independent life as an article of commerce was not registrable as a design under Section 2(a) of the Designs Act (2000).
INTA filed an intervention before the court challenging its interpretation of the word ‘article’ under the Designs Act, arguing that it had expanded the scope beyond its ordinary meaning and that this could have “far-reaching ramifications” for design rights holders in India.
‘Clear and unambiguous’
Indian motorbike manufacturer Hero MotoCorp sued Shree Amba Industries for alleged infringement of its design for a motorcycle front fender.
The Delhi High Court refused Hero MotoCorp’s request for an interim injunction in August last year, concluding that the fender had no independent life as an article of commerce in itself and was sold as a replacement part, and therefore could not be registered under Section 2(a) of the Designs Act.
This followed the judge’s interpretation that the phrase “any part of an article capable of being made and sold separately” found in Section 2(a) of the Designs Act was intended to include only parts that can be sold as articles that have an independent life as articles of commerce and not merely as substitutes / accessories.
INTA said this conclusion was based on Ford Motor Company (1993), a UK High Court judgment that relied on the definition of the term ‘article’ under the then UK Designs Act, which differed from the definition under India’s Act.
The trademark organisation further pointed out that the scope of the term ‘article’ had been expanded in amendments to UK design laws, and that such a restriction for an article to have an independent life as an article of commerce was not required in the UK now either.
INTA said the definition of ‘article’ under India’s Designs Acts was “clear and unambiguous”, and should not be interpreted narrowly to incorporate limitations and conditions that were not present.
Impact on design owners
In its request for intervention, INTA contested that the court’s interpretation could leave many granted design registrations in India vulnerable to cancellation.
This was because design owners had secured registration for spare or replacement parts of articles which may or may not qualify for the criteria of having an independent life as an article of commerce.
“INTA has a particular interest in this case as it has a significant impact on the rights and interests of design owners owing to the issue at stake, ie the interpretation of the term ‘article’ under Section 2(a) of the Designs Act,” the organisation told the court.
It asked the court to permit its intervention and allow it to make oral submissions in respect of the relevant question of law.
