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The Impact of Expiry of Design in a Design Infringement Suit

This legal article delves into a crucial aspect of design infringement cases where the plaintiff's registered design has expired. The focal point is a specific case where the plaintiff's design of a cooker has entered the public domain due to the expiry of its registration.

Back Ground
The plaintiff holds a valid registration for its cooker design, which was granted on 13 December 2004. The case primarily revolves around the alleged imitation of the plaintiff's distinctive cooker design by the defendant's product.

Imitation by the Defendant:
The plaintiff alleges that the defendant's product is imitative of their registered design. A comparison of the two designs and the products themselves indicates a clear resemblance between the defendant's product and the plaintiff's registered design.

Trademark Consideration:
There is a mention of an alleged admission in the plaint that the suit design is registrable as a trademark. However, the plaintiff clarifies that this assertion was made concerning the overall get-up of the pressure cooker and not just the design. The defendant denies that the suit design constitutes a trademark and challenges its entitlement to protection under the Trademarks Act.

Designs Act and Trade Marks Act Interplay:
The defendant attempts to rely on the exclusion of trademarks under Section 2(d) of the Designs Act. They question whether Section 2(1)(v) of the Trade and Merchandise Marks Act, 1958, can be substituted with Section 2(1)(zb) of the Trade Marks Act, 1999. The court avoids delving into this issue, considering the defendant's assertion that the suit design was not registrable as a trademark.

Expiration of the Suit Design:
The pivotal point to address is the expiry of the plaintiff's registered design. The suit design's registration, as stated, expired on 13 December 2019, marking the culmination of its protection under the Designs Act. The expiration of the design renders it available for public use, as it no longer enjoys the exclusive rights granted during its validity period.

Effect on Restraining Use:
The defendant's argument centers on the concept that once a design enters the public domain after the expiry of its registration, there can be no judgment or decree restricting its use by anyone. This interpretation relies on the premise that the protection granted by the Designs Act ceases to apply once the registration period ends. The defendant contends that the design is now freely available for use by any party, and thus, no infringement can take place.

Preservation of Aspect of Damages:
Despite the expiration of the suit design, the court acknowledges that an aspect that survives for consideration is the potential for damages. This means that even if the plaintiff's design is in the public domain, the defendant may still be held liable for damages if the court finds their pressure cooker design to be a piracy of the expired suit design.

Determining Piracy Despite Expiry:
While the plaintiff's design is now in the public domain, the court must assess whether the defendant's design is indeed an imitation or piracy of the expired design. It is important to note that the expiration of the design does not absolve the defendant from facing potential infringement claims if the court determines that their pressure cooker design substantially reproduces the expired suit design.

The Concluding Note:
The expiry of a registered design does lead to its entry into the public domain, making it available for use by anyone. However, this does not automatically shield potential imitators from liability for infringement if their design is found to be a piracy of the expired design. The court's primary focus shifts to assessing whether the defendant's pressure cooker design indeed constitutes piracy of the expired suit design under Section 22(1) of the Designs Act. The court's decision on this aspect will determine whether the defendant is liable for damages despite the expiration of the plaintiff's design registration.

The Case Law Discussed:
Case Title: Ttk Prestige Ltd. Vs Gupta Light House
Date of Judgement:24.07.2023
Case No. CS Comm 865 of 2022
Neutral Citation:2023:DHC:5188
Name of Hon'ble Court:High Court of Delhi
Name of Hon'ble Judge: C Hari Shankar, HJ

Information contained herein is being shared in the public Interest. The same should not be treated as substitute for legal advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the facts and law involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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