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Court Case Bulletin (CCB): Compliance with Published Standards Constitutes Prior Publication of a Design
Author: Intern - Avni Sharma
In the matter of Kamdhenu Limited v Aashiana Rolling Mills Limited [I.A.647/2018 in CS (Comm.) 90/2018], a single judge [Prateek Jalan, J.] of the High Court of Delhi vide judgment dated May 12, 2021, ruling in the favour of the defendant, has held prima facie that published standards constitute prior publication of a design.
Section 4(b) of the Design Act, 2000 (the Act) states that “A design which – has been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the filing date, or where applicable, the priority date of the application for registration; or…shall not be registered”. The question therefore arises if limited disclosure for compliance with published industry standards amounts to publication in a way?
The plaintiff contended that conformity to acceptable standards for production of goods (published standards) cannot render a design prior published. It further submitted that such a finding would denude several designs of protection by reason merely of compliance with published standards. The defendant contended that the plaintiff’s design was not an original design, but one which had been disclosed by publication prior to the date of the plaintiff’s application for registration, contrary to Section 4 of the Act. In support of its claim, the defendant relied on procedures in several International standards such as British Standard B500C, the German Standard of 1984, the Polish Standard of 2006, International Standard 6935-2 of 2007 etc.
The court accepted the defendant’s claim that such compliance with published standards requires approval from the members of the organization. The design is therefore circulated among all the members which amounts to publication. The court further observed that, “if a document is to constitute prior publication then a reader of it, possessed of ordinary knowledge of the subject, must from his reading of the document be able at least to see the design in his mind’s eye and should not have to depend upon his own originality to construct the design from the ideas which the document may put into his head.”
The court concluded and held that compliance with published standards is sufficient to constitute prior publication. Therefore, the design under the present case, was incapable of registration under the Act. In addition, it was stated that, “The situation would have been different if the standard had been of a characteristic which was not related to the design but to some other feature of the product, for example, the length of the rod, its weight, etc. Where the novelty claimed by the owner of the registered design resides in the very element which is described in the standard with a reasonable degree of specificity, the design cannot be said to be novel or original.”
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