Jayson Industries vs. Crown Craft

In the case of Jayson Industries vs. Crown Craft, a legal battle has unfolded over the alleged infringement of registered designs. The dispute centres around everyday household items – a bucket, mug, and tub. Jayson Industries, Plaintiff No. 1, holds the registrations for these designs, while Plaintiff No. 2 manufactures and markets the products with their permission. The Plaintiffs argued that the Defendant’s designs are obvious and fraudulent imitations of the Plaintiffs’ registered designs, constituting piracy under the Designs Act. The Defendant claims that their designs possess unique features, such as elongated vertical ribs and distinctive handles, aimed at capturing consumers’ attention. These products, known as the Rib Bath Bucket, Mug, and Tub, are not only visually appealing but also technically efficient.

Initially filed before the District Court, the case was later transferred to another court due to the Defendant’s plea of design invalidity. The Plaintiffs obtained an ex parte ad interim injunction, preventing the Defendant from selling or distributing the disputed products. Additionally, a local commissioner was appointed to seize and document any infringing goods found on the Defendant’s premises. As a result, both parties filed applications related to the injunction. Jayson Industries sought to maintain the injunction, while Crown Craft aimed to have it lifted.

Arguments Advanced

The Plaintiffs’ arguments relied on the fact that the Defendant’s bucket, mug, and tub designs are fraudulent imitations of the Plaintiffs’ registered designs. It was pointed out that the Defendant admitted to starting production of the disputed products only in 2021, even though the suit designs were registered as early as February 2020. The main aspects of the suit designs, such as the ribbed body and flange-like extensions on the rim, were stressed as being copied in the Defendant’s designs, constituting piracy under Section 22(1) of the Designs Act. The Plaintiffs contended that this deserved a Section 22 injunction against further piracy.

The Defendantlargely contested the suit designs’validity. It was stated that design registrations are awarded on a self-declaration basis, with no presumption of validity as with trademarks. The Defendant used relevant portions of the Designs Act to attack the suit designs’ freshness, originality, and earlier publication.

Prior art was provided, including different designs of buckets, mugs, and tubs, to illustrate that the suit designs lacked uniqueness and originality. Minor differences in the number of flanges or shapes, it was argued, did not impart uniqueness and originality to the suit designs. The Defendant also emphasised the withdrawal of their registration application, implying that they recognised the lack of innovation and originality in their designs.

Rational and Law

The Designs Act protects visually appealing new and original designs. The Hon’ble Supreme Court explained in the Bharat Glass TubeLtd. v. Gopal Glassworks Ltd.[1] case that designs include elements such as shape, pattern, and adornment applied to products and appraised by the sight. Designs must be original and have never before been published. The Carlsberg Breweries case[2] underlined the importance of innovation and originality, and an infringement suit would fail if a comparable design had been previously published. Reckitt Benckiser Ltd. v. Wyeth Ltd[3]. addressed the question of publication, arguing that it should be distinguishable and tangible. Overall, the Act seeks to prevent unauthorised design copying and to safeguard the original artistic effort reflected in commercially produced objects.

Decision

The Delhi High Court found that the suit designs lack novelty and originality compared to prior art. The vertical ribs and flanges claimed by the Plaintiffs have been used in prior designs. Minor variations in the flanges do not make a substantial difference. Several prior published designs and products challenge the novelty and originality of the suit designs, rendering them lacking in novelty and originality according to the Designs Act. As a result, the Plaintiffs’ request for an interlocutory injunction was rejected, and the temporary injunction granted by the Commercial Court was vacated.

[1]2008 (10) SCC 657

[2]Carlsberg Breweries A/S v. Som Distilleries And Breweries Limited AIR 2019 DEL 23 (FB) : 2056 (2019) DLT 1 (FB)

[3]AIR 2013 DEL 101 (FB) : 198 (2013) DLT 521 (FB)