This analytical legal article delves into a hypothetical case involving a
dispute over the design protection of a front fender. The plaintiff claimed
registered design infringement, asserting that the defendant intentionally
imitated their design. The defendant argued that the design couldn't be
protected as an article under Section 2(a) of the Designs Act since it is sold
as a replacement part of a motorcycle. The article critically examines the
court's reasoning behind declining the injunction and analyzes the broader
implications for the scope of design protection under the Act.
Design protection plays a vital role in safeguarding the aesthetic aspects of
products. In this case, the plaintiff's claim of registered design infringement
rests on their assertion that the defendant unlawfully copied their design. The
defendant's argument, that the design is not an independent article under the
Designs Act, forms the crux of the court's decision. This article critically
analyzes the court's reasoning and its potential ramifications.
Scope of "Article" under the Designs Act:
The term "article" under Section 2(a) of the Designs Act is pivotal in
determining the eligibility for design protection. The plaintiff's design is a
front fender, an external part of a motorcycle. The court emphasizes the
significance of the words "capable of being made and sold separately" in the
definition of "article." This indicates that a design can be protected if it is
both separable and marketable as an independent product.
Intent and Object of the Designs Act:
The court acknowledges the intention behind the Designs Act, which seeks to
broaden the definition of "article" to include parts of articles. However, the
court discerns a limitation within this intent by the specific phrasing of
"capable of being made and sold separately." The court's interpretation implies
that the design should not only be separable but also commercially viable as a
Analysis of Court's Decision:
The court's decision hinges on the perception that a front fender, although
externally visible, lacks an independent identity in the market. It's a part
inherently attached to a larger product, the motorcycle. The court's emphasis on
the external and inseparable nature of the fender suggests that the plaintiff's
design may not meet the dual requirement of separability and marketability.
Therefore, the court concludes that the design cannot be protected under Section
2(a) of the Designs Act.
Implications and Critique:
The court's decision raises pertinent questions regarding the scope of design
protection. By focusing primarily on the marketability aspect, the decision
appears to impose a higher threshold for design protection than intended by the
Act. The requirement that a design should have an "independent life" might
potentially undermine the protection of innovative designs that are inherently
tied to larger products.
The Concluding Note:
The case exemplifies the nuanced challenges of interpreting and applying the
Designs Act. While the court's decision seeks to balance the intent of the Act
with practical considerations, it might inadvertently limit the protection
afforded to certain designs. As design continues to play an integral role in
product differentiation and branding, a more comprehensive approach to the
interpretation of the term "article" could ensure that innovative and marketable
designs are adequately protected within the contours of the law.
Case Law Discussed:
Case Title: Hero Motocorp Limited Vs Shree Amba Industries
Date of Judgement:16.08.2023
Case No. CS(COMM) 1078/2018
Neutral Citation No: 2023: DHC: 5717
Name of Hon'ble Judge: Amit Bansal
Name of Court: Delhi High Court
Information and discussion contained herein is being shared in the public
Interest. The same should not be treated as substitute for expert advice as it
is subject to my subjectivity and may contain human errors in perception,
interpretation and presentation of the fact and issue involved herein.
Written By: Advocate Ajay Amitabh Suman
, IP Adjutor - Patent and
Email: [email protected]
, Ph no: 9990389539