IP Case Law › Designs › Whirlpool of India Ltd. v. Videocon Industries Ltd.
Relevant Acts and provisions
Designs Act, 2000
Provisions considered: Section 22 of the Designs Act, 2000, on design piracy, together with the common law of passing off.
Brief facts
Whirlpool, holder of registered designs for the shape and configuration of its washing machines, sued Videocon alleging that Videocon's washing machines copied the essential visual features of the registered designs, amounting to design piracy, and created an overall trade dress so similar as to deceive consumers. Videocon contended that its product differed in detail and that, being itself a registered proprietor of a similar design, it could not be restrained. Whirlpool sought an interim injunction restraining manufacture and sale.
Issues before the Court
- What is the correct test for comparing a defendant's article with a registered design to determine design piracy?
- Does a defendant's own subsequent design registration furnish a defence to an infringement suit by a prior registrant?
- Did the resemblance between the products also amount to passing off?
Court's findings
The Court held that the test for design piracy is whether, judged solely by the eye, the overall shape and configuration of the defendant's article is substantially similar to the registered design, and found that the defendant's washing machine reproduced the essential features and distinctive visual characteristics of the plaintiff's registered design.
The Court held that a subsequent registration obtained by the defendant for a similar design does not by itself furnish a defence to a suit for infringement brought by the prior registered proprietor, since the validity of the defendant's own registration remains open to challenge and cannot be used as a shield in an infringement action.
The Court further held that the close resemblance between the two products was likely to deceive an average purchaser into associating the defendant's product with the plaintiff, supporting a finding of passing off.
Decision
Interim injunction granted restraining the defendant from manufacturing and selling the infringing washing machine design.
Key legal principle / ratio
In an action for design piracy under the Designs Act, 2000, infringement is tested by comparing the overall visual impression of the two articles judged solely by the eye; a defendant's own subsequent design registration for a similar article does not defeat an infringement claim brought by a prior registered proprietor, and close resemblance capable of causing confusion additionally supports a passing-off claim.
Keywords
Deceptive Similarity Design Infringement Design Piracy Passing Off Trade Dress
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