Case of the Whirlpool- Videocon design

Facts of the Case

Any finished article that can only be judged by the eye should be built to be registered. The Court recently held that a specific design or configuration created in any article with a visual appeal once registered as "design" cannot be pirated in Videocon Industries Ltd. vs. Whirlpool of India Ltd. (An appeals (L) No. 554/2012; Bombay High Court).

The Designs Act 2000 defines the design of the article by an industrial process that appeals to and is judged solely by the eye in the final article as characteristics of the form, layout, ornament, or composition of lines or colours. This means that the "trial solely by the eye" test becomes crucial in situations in which a design breach is supposed to occur. In the case before us, the judgment of the judge in favor of Whirlpool India Ltd who ordered Videocon to not infringe or move the design of the washing machine was challenged by Videocon Industries Ltd. The judgment of the court judge, which made a decision against Videocon.

A two-pronged approach to countering Whirlpool's argument that its washing machine has a distinctive shape and set-up and that the product on the market of Videocon is a direct imitation of its design.

Issue of the Case

Videocon argued that Whirlpool's designs were invalid as the first solution. Subject to S. 22(3) The Designs Act (Laws) 2000 (the law) requires the defendant to make the case that the design of which an infringement is claimed should not have been first registered because the designs are not new or original. The designs were in the public domain long before registration and thus cannot be differentiated from known designs or variations of known designs. The second approach focused on Whirlpool's behavior, whereby Videocon cannot register and/or market its washing machine, with two registered designs with almost no distinction, which has several variations from the two designs of Whirlpool intense, while Whirlpool can have two registered designs. The same day, Whirlpool reported two designs.

Whirlpool countered the above claims as misconceived in the law explicitly that its design cannot be differentiated substantially from existing designs or variations of known designs. It was averted that a 'sign' as described by the Act meant a design of an object that could be manufactured and sold separately, so the term 'combination of known designs' means a combination of known products, not an assortment of items, as advertised by Videocon that does not have an individual identity. If however, two or more separate products that can be sold individually and have distinctive designs are combined to produce a new design, then the same cannot be called the original, which is not the case with the registered designs of Whirlpool.

Whirlpool argued on the second point that the Act does contemplate that the person might have one or more similar designs. An individual can apply for design registration and buy the existing design at the same time. When the existing design was acquired, its ownership was related to that design, so that the individual would theoretically own two designs, i.e. One he demanded and the other he ordered.

The judgment of the Case

Finally, on the question of whether or not a violation of S 22 (Piracy of Registered Design) of the Act was committed by Videocon in the design impugned, both washing machines were physically comparable with that of a Videocon created and marketed with a disputed design, to the degree to which the design registered by Whirlpool is "obvious" or "fraudulent" imitation. The court determined that the devices share distinctive forms and are clearly identified while testing the 'Judging by the Eye' test. On the machine sold by Videocon, the form and design of the washing machine can be clearly seen. The court then upheld the trial judge's ruling. An unusual feature of this case is that all the brands' washing machines were put in court and put together during the course of the hearing.

Analysis of the Case

Whirlpool has taken action against Videocon on the grounds of passage, in addition to litigation against infringements. Passing off is the remedy of the common law that is founded on equitable principles to protect a trader's goodwill against a misrepresentation that hurts goodwill. It is usually used to prevent the individual from misrepresenting the claimant's goods or services. At the moment the Court held that Videocon could not deliberately misrepresent the user, however, it created a mechanism for dissatisfaction knowingly and is therefore liable for disappearing.

These provisions appear to be relevant to the proceedings of a design application and cannot be a legitimate response to a small improvement to the previously known and registered design. If this is a reply, the Court should have made it clear that the request may be pre-dated in compliance with the plaintiff's earlier reported design applications.

The Court investigated the issues of violation and transferred them solely by appearance, after rejecting the arguments on nullity (as is the standard test in the law of designs). The Court held that similarities were greater than any slight differences, and held that the design of the complainant was violated and disallowed. The Court often refers fleetingly to the defendant's recognition of "similarity." Maybe not the best move, but my guess was that they hoped their invalidation arguments would succeed.

Conclusion

The High Court of Mumbai has restrained Videocon from producing and markets its VideoCon-pebble-washing machines (which is the unit at the right; Whirlpools at the left) in Whirlpool of India Ltd v Videocon Industries Ltd (Notice of Motion No 229/2012 in Suit No 2012/2012). In its case it was based on an understanding of any entity,' in section 22 of the Designs Act 2000 that the registered design proprietor was exempt, which was argued by Videocon that a suit for an infringement cannot lie with the registered design owner. The court – quoting the preceding case law - acknowledged that an infringement action could be taken against the registered design owner when the interim application was brought to hearing by the sole judge of the Bombay High Court. The Registered Proprietor was excluded by some clauses of the Designs Act, 2000, but Section 22 did not include them.

BY-

Ankita Rathi