Registration of a Design can be Prima Facie Evidence of Validity of the Design.

On March 14, 2023, the Delhi High Court issued three intriguing points on the problem of design infringement and piracy in the setting of an equally unusual fact scenario in Sirona Hygiene Private Limited vs Amazon Seller Services Private Ltd CS(COMM) 503/2022.

To summaries the facts of the case, the current case involves an alleged design infringement. The plaintiff asserts the design, which was certified in favor of the plaintiff by the Patent Office on June 30, 2014. The design is for a disposable female urination equipment called PEE BUDDY, which is meant to allow females to pass urine while standing. The plaintiff is aggrieved by the Defendant who was manufacturing and marketing identical products under the brand name NAMYAA.

The plaintiff contends that the defendant’s product design is identical to the suit design and hence constitutes piracy of the suit design under Section 22(1)1 of the Designs Act 2000. Defendant contended that Plaintiff’s Registered Design lacks in novelty because an identical item serving the same purpose was already in commercial circulation under the brand “P-MATE” and registered in the United States many years before Plaintiff had brought in the Registered Design. As a result, the Plaintiff’s Registered Design is nothing more than a trade version of P-MATE.

While dismissing the Defendant’s allegation that the Plaintiff’s Registered Design lacks originality, the Court decided that the distinctions between the Plaintiff’s Registered Design and P-MATE were adequate to provide the Plaintiff’s Registered Design novelty. Even though the Designs Act does not contain any provision analogous to section 31 of the Trade Marks Act deeming registration of design to be prima facie proof of its validity, nonetheless, at the interlocutory stage, in the absence to the convincing evidence to the contrary, the Court can rely on the fact that a design is registered as a factor in favour of the design registrant. In this context, one may usefully refer to Micolube India Limited v. Rakesh Kumar. Therefore, in the absence of evidence to the contrary, a certificate of granting registration to a design has to be treated as prima facie evidence of validity of the design. Of course, this would be subject to the defendant being able to establish, at least prima facie, that the suit design suffers from want of novelty and originality.

The court especially stated that because the shape of both designs that would come into contact with the human body differs from one another, this difference influences how the two comparable goods would be utilized, and so PEE-BUDDY is more than just a trade version of P-MATE.