The plaintiff, TTK PRESTIGE LTD, alleged piracy of their Design No. 324727-001, registered for a ‘Pressure Cooker with Container and Lid (Set) for Household’ by the defendant, KCM APPLIANCES PRIVATE LIMITED.

The Court vide an order dated 13th April 2023 held that the design of the defendant’s pressure cooker, prima facie, infringes the suit design, thereby making out a prima facie case of design piracy.

The defendant was restrained, therefore, during the pendency of the present suit, from manufacturing or selling its range of pressure cookers

The key take away principles that emerge from the order are:

• Mere fact that the design had an overwhelming functional improvement over earlier designs, or a unique functional attribute, would not render it purely functional, or discredit its aesthetic attribute as one of the features which contributes to its saleability.

• The issue of whether the customer would purchase the product for its aesthetic appeal for its utilitarian advantages is irrelevant. Where the suit design possesses aesthetic value, and the novel features that lend it such value are replicated in the defendant’s design, piracy has taken place. All other differences, such as the ―straight moulding of bakelite, minor change in the shape of the handle, shape of the base, etc., are insignificant in the light of the overall shape and configuration of the pressure cooker itself, and, vis-à-vis the shape and configuration of the lid, which is the feature which mainly imparts novelty to the suit design, are even more inconsequential.

• Most significantly, the defendant has clearly borrowed the idea of the central depressed portion of the lid for collection and evaporation of froth, thereby resulting in spillage control, from the idea devised by the plaintiff. No other source, from which the said idea was adopted by the defendant, has been brought to the Court’s notice. Prima facie, therefore, a clear case of piracy exists.

• Publication must be ―in a tangible form or by prior use or in any other way.

o Publication by use would arise where the design is translated into a finished article by an industrial process or means.

o Publication by tangible form refers to a specific physical form or shape as applied to an article and not merely the ability to replicate, convert or give a physical shape of the design, though actual use of the article, to which the design apply, is not necessary.

o Publication in a paper form – i.e. without the actual article being before the Court – the publication must be such as would enable the Court to visualise the article to which the design is intended to be applied. A publication which is wanting in clarity, and which requires actual application to an article for it to be completely understood cannot be regarded as ―prior publication‖ on its own. The design should be recognisable; in other words, it should have the same impact in the public as a finished article will, when judged solely by the eye. In other words, if the design is on paper then it must exist upon paper in such a way that the shape or other features of the article are made clear to the eye; the visual impact of the image should be similar to that which would exist when the design is seen as applied to a physical object in tangible form.

• A design which exists in the public domain, but the application of which, to an article, is new, would be novel. It is not necessary, therefore, that the design is ―totally new. In order for prior publication to destroy novelty, it is essential that the publication must suggest, explicitly or implicitly by context that the design should be applied to an article. Further, the manner in which the design is to be applied to the article should also be apparent from the representation of the design, cited as prior publication.

• Mosaicing of prior art designs is impermissible. The earlier design, cited as prior publication, and on the basis of which the novelty of the suit design is being questioned, must be disclosed in a single prior document, or more than one document, provided reference to one is contained in the other

• The novelty must be substantial, not trivial or infinitesimal. Ultimately, it would be for the Court to compare prior art and the asserted design to determine whether the asserted design actually possesses novelty vis-à-vis prior art, or is merely the prior art with mild, trivial or trade variants.

• A defendant who seeks to register an identical design cannot question the validity of the design of the plaintiff, or its entitlement to registration.