Mosaicing has been used to test whether a Patent is valid or not? A Patent
can be held to be invalid on the ground of lacking inventive step or lacking
novelty on the ground of mosaicing of various elements of prior arts.
Question is this, whether a registered design can also be said to be invalid on
the grounds of mosaicing. The Hon'ble High Court of Delhi was having an
occassion to deal with one of such issue in Suit bearing CS Comm No. 87 of 2022
titled as Diago Brands Vs Great Galleon Ventures Limited.
Subject matter Suit was filed by the Plaintiff on the basis of basis of their
registered design under no.306577 in relation to their unique shaped bottle.
Besides the design registration, the Plaintiff also asserted common law right in
trade dress and get us of Hipster bottle.
Plaintiff was dealing with alchoholic products under the Trademark Black Dog.
The plaintiff was claiming right in unique colur combination of said Hipster
Bottle as well. These products were sold by the plaintiff under unique design
Subject matter suit was filed by the Plaintiff on the grounds inter alia that
the Defendant was selling the alcohol in a bottle under the Trademark GOA GOLD,
which according to the plaintiff , was not only infringing the registered design
of the Plaintiff ,but was also violating common law rights of the plaintiff in
relation to entire trade dress and get up of said bottle.
The Defendant raised various grounds , besides also attacking novelty by
mosaicing elements of various prior arts. The Defendant alleged that Plaintiff
is not the author of the subjact matter design. Subject matter design has been
authored by an agency.
There was no any agreement between the said agency and the Plaintiff to show
that Plaintiff was the owner of the subject matter Design.
In Para No. 25,26 of the Judgement, the Hon'ble High Court of Delhi made
reference to Section 2(1)(j) of the Designs Act 2000 and observed that in case
one person get the work created on their behalf by some other one, the ownership
vests with the first person.
As in the present , it was evident the plaintiff has outsourced the design to
the the agency. It was the plaintiff , who got the design Created by the agency,
hence the same was held to be author and owner of design.
The Defendant raised another argument that design registration of the plaintiff
that design registration is only prima facie evidence of validity and that the
subject matter design of the plaintiff is recent one. The Hon'ble High Court of
Delhi observed that there can not be any difference between the design being
recently granted or old.
Regarding the argument of the defendant that design registration is merely prima
facie evidence of validity. The Hon'ble High Court of Delhi observed that If
registered design appears to be prima facie valid and the plaintiff proves the
case of prima facie case in its favour then injunction has to be granted.
Ocular comparison was considered to be true test while evaluating the
infringement of registered design. The Court has to see whether overall visual
effect of both the competing designs.
While making comparison between both of the designs, what court has to see is
the similarity and not the dissimilarity. In the present case, the Hon'ble High
Court of Delhi has observed that the defendant has copied all the essential
feature of plaintiff's design in Hipster bottle.
The Defendant tried to apply the test of the term Novelty used in Patent Act
1970 also in relation to Design Act 2000.The Hon'ble High Court of Delhi,
however brushed aside this endeavour of the Defendant by observing that the term
novelty used in Design Act simple means new and original.
It simply imply that the term Novelty used in Design Act 2000 must be
interpreted differently from the term Novelty used in Patent Act 1970.It is
submitted that it is apparently so as the scope of Design Act 2000 and Patent
Act 1970 is quite different.
The Defendant again tried to apply the concept of mosaicing as prevailent in the
matters pertaining to Patent Dispute. In cases of Patent Infringement, the
Defendant may successfully defend its case by mosaicing of different elements
taken from several prior arts and there by establish that the Patent impugned
lacks inventive step.
The Defendant , in this case also tried to।defeat Plaintiff's Hipster shaped
Design bottle by mosaicing of different elements taken from several prior arts.
The Hon'ble High Court of Delhi , however rejected this argument of the
Defendant and observed that a registered Design can not be defeated on the basis
Thus it is clear that in order to defeat a registered Design , what the
defendant is required to prove is that availability of all the elements of
Plaintiff's registered Design in a single Prior Art. In this case,।the Defendant
was unable to establish so.
Another argument of the Defendant was that the Plaintiff's Hipster Bottle Design
was functional.Hence the Plaintiff is not entitled to protection.
The Hon'ble High Court of Delhi however rejected this argument of the Defendant
by observing that in order to get defense of functionality to succeed, the
Defendant has to establish that it is the only shape through which this
functionality can be achieved.
Naturally the Defendant was unable to pass this test of functionality as set out
by the Hon'ble High Court of Delhi in present case.
The Hon'ble High Court of Delhi, however declined to grant any relief pertaining
to Trade Dress.
The Court observed that Trade dress is a combination of various element put
together. It is submitted that Trade Dress is a concept which is much much wider
than Design of a bottle or shape of a bottle.
In the Opinion of Court ,not only trade dress of Defendant was different but
also because of this fact that trademark GOA is prominently displayed on
defendants bottle, no case of passing off was made out.
Thus it was a unique case in the case that the Plaintiff was able to succeed in
proving that case of Design Infringement, however failed in establish the case
of violation of common law rights in Trade Dress of Hipster Shaped Bottle.
Case Law Discussed:
Case Title: Diago Brands Vs Great Galleon Venture
Date Of Judgment: 02.08.2022
Case: CS(Comm) 87 Of 2021
Name of Hon'ble Court: High Court Of Delhi
Name of Hon'ble Judge: The Hon'ble Justice Shri Sanjeev Narula
Written By: Ajay Amitabh Suman
, IPR Advocate, Hon'ble High Court of Delhi