The recent case of Diageo Brands B.V. & Anr. v. Great Galleon Ventures Limited[1] (hereinafter ‘Diageo case’) at the Delhi High Court brought back to light the concept of ‘New or Original’ in the design law. Although the concept is not new, the interpretation of the concept hasn’t crystallized yet. In this case, the court had to examine a very interesting issue on the concept of ‘New or Original’, among many others. The court had to analyze whether Hipster bottles inspired by the model and shape of smartphones were ‘New or Original’. To appreciate the ruling of the court, in this case, it is essential to understand this concept through the timeline of various Design Acts and landmark judgments of India.
Mention in Acts
The Designs Act, 2000 (hereinafter the Act) mandates for a design to be ‘New or Original’ to be eligible for registration.[2] The term ‘New or Original’ in the Act was not quite exactly the same, since the beginning of Designs laws in India. The Patents & Designs Protection Act, 1872 and the Patents and Designs Act, 1911 had the term ‘New and Original’. An amendment in 1930 to the 1911 Act rephrased the term ‘New and Original’ to ‘New or Original’. While the term ‘original’ is defined in the Act, as “in relation to a design, means originating from the author of such design and includes the cases which though old in themselves yet are new in their application”[3], the term ‘new’ has not been defined.
So, much of the interpretation of the term ‘new’ is drawn from case laws. Furthermore, the understanding of the combined reading of the term ‘New or Original’ also is drawn from case laws.
Precedents from Courts
Courts have repeatedly interpreted the term ‘new’ as something that comes into the public knowledge for the first time[4] i.e., the design has not been previously published or used in any country before the date of application for registration[5]. The design doesn’t have to be itself new, the Act also allows for a new application of existing design to be registered, as a part of original designs.[6] The novelty here is seen in the application of the design rather than in the design itself. So, essentially two things must be considered together for understanding whether a design is new or not, i.e., the design and the design that is to be applied to an article.[7]
One of the earliest yet pertinent case for the new application of an existing design, is the case of Gammeter v. The Controller of Patents and Design[8], in this case, the court had to decide whether a metal band that could attach a watch in it through loops be considered as ‘new and original design’. The court held that although the shape of the band was not new or original as the same is used in bracelets, the use of the band for attaching the watch was different. While bracelets are used as an ornament, watches are more functional. The court held that the purpose of the watch was so different from the use and purpose of a bracelet, that the design in question could be said to be new or original. So, essentially the application of known design to a different purpose that is not known or used for similar products is also held to be ‘New or Original’.
The term ‘original’ is understood as something originating from the person. Although the term ‘New or original’ separated by ‘or’, imply in a literal sense that the design must be either new or original or both, the such argument has not been discussed by courts in depth. In the case of Reckitt Benckiser (India) Ltd. v. Wyeth Limited[9], the counsel for the plaintiff pleaded that their design was valid on the ground that it was original, even if it is not new. The court, however, did not venture into discussing this argument in depth.
In most of the other cases, Courts do not seem to emphasize much the differentiation and dissection of terms new and original in design law. In the case of Ms/ Metal Impacts Private Limited v. M/s. Impact Metals Private Limited[10] (hereinafter ‘Metal Case’) the court stated that “Generally, the test for integrity and originality is dependent on determining the type of mental activity involved in conceiving the design in question. If the design is original, then the designer must have conceived something new.”, implying that what is original is new. Furthermore, the court in this case also quoted that the distinction between the words new and original is rather doubtful in the case of Design law.
The courts have also repeatedly emphasized the combined reading of the terms ‘New or Original’. “In order to render valid, the registration of a Design under the Patents and Designs Act, 1907, there must be novelty and originality, it must be a new or original design. To my mind, that means that there must be a mental conception expressed in a physical form which has not existed before but has originated in the constructive brain of its proprietor and that must not be in a trivial or infinitesimal degree, but in some substantial degree”[11].
The test for deciding whether a design is new or original is a fact to be decided on the visual appeal. If the design is substantially different from existing trade variants, then such a design is considered new or original.[12] This is done so that an honest person trading is not prevented from using ordinary trade variants. For instance, merely making the handle of a toothbrush thick or thin or with sharp tapering at the end of the grip part, is considered not new.[13] Similarly, a curve in the upper length side of the rear-view mirror is also considered as not new.[14] So, in simple terms, if a design is substantially different from existing designs applied to a particular object, then such a design is considered a ‘New or Original’ design.
Dispute over Hipster Bottles
In the recent Diageo case, the Plaintiffs claimed their design of the hipster bottle was something novel. Plaintiffs described their design as a novel, “Novelty resides in the shape and configuration of the “BOTTLE” as illustrated…”. The Plaintiffs claimed that the hipster bottles were unlike other hip flasks, which are broad and short. They claimed the novelty of the hipster bottles for their features resembling the smartphone, containing a rectangle shape, thin, sleek look, rounded symmetrical shoulders, V neck, two-toned rimmed rounded cap, and dimpled bottom. They claimed that the bottles were created inspired by the shape of smartphones to give the customers the feel of carrying smartphones rather than hip flasks.
On the other hand, Defendants claimed that the Plaintiffs’ designs were not new or original by placing a record of existing models of hip flasks. Defendants alleged that Plaintiff’s design is not distinguishable from existing prior arts. Defendant also pleaded that the concept of novelty is only applicable to patent law, while the plaintiff insisted on reading novelty in the Act as equal to new plus original.
The court noted that although the Designs Act used the terms ‘new or original’ instead of novelty, rule 12 of the Designs rules does employ the word novelty. The court, therefore, held that the word novelty is no different from “new and original” apart from grammatical sense. The court noted that the test for determining novelty is whether the variations introduced in a particular article are distinct from the existing designs.
The court noted that the Defendants have not produced on record hip flasks which are thin, sleek, and glossy similar to smartphones being in use before the registration of the plaintiff’s design. Although a hip flask is not an invention, the court held that the modification of hip flasks to a similar look to that of the smartphone by the Plaintiffs created distinguishable features and therefore, the design was held to be new and original.
Conclusion
The distinction and dissection of the words ‘new’ and ‘original’ in design law are blurring. The Metal case and the Diageo case have equated original to new and novelty to include originality respectively. Furthermore, irrespective of the usage of the terms ‘New and Original’, ‘New or Original’, and ‘novelty’, the courts are leaning towards a combined reading of the terms ‘new’ and ‘original’. This recent judgment reemphasised such an interpretation, where the court stated that “novelty would simply mean new and original”. As of today, one can understand ‘New or Original’ design as a new design or a new application of an existing design to a product. The test for ‘New or Original’ design is whether the such design is distinguishable from previous designs of similar products in the trade. Diageo’s judgment revisits the concept of ‘New or Original’ design and contributes to crystallizing interpretation of the same.
[1] 2022 SCC OnLine Del 2350
[2] The Designs Act 2000, s 4(a).
[3] The Designs Act 2000, s 2(g).
[4] Reckitt Benckiser (India) Ltd. v. Wyeth Limited 2010 SCC OnLine Del 3582
[5] The Designs Act 2000, s 4(b).
[6] The Designs Act 2000, s 2(g).
[7] Bharat Glass Tube Limited v. Gopal Glass Works Limited AIR 2008 SC 2520
[8] AIR 1919 Cal 887.
[9] [9] Reckitt Benckiser (India) Ltd. v. Wyeth Limited 2010 SCC OnLine Del 3582
[10] 2011 SCC OnLine Kar 3985
[11] M/s. B. Chawla and Sons v. M/s. Bright Auto Industries 1980 SCC OnLine Del 320
[12] Ibid
[13] Glaxo Smithkline Consumer Health Care v. Amigo Brushes Private Limited 2004 (28) PTC 1 Del
[14] M/s. B. Chawla and Sons v. M/s. Bright Auto Industries 1980 SCC OnLine Del 320
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