Plaintiff :- Whirlpool of India Ltd
Defendant :- Videocon Industries Ltd.
Whirlpool had in 2012 challenged a washing machine designed by Videocon as having “virtually the same design, features, shape, colours and configuration” as its product for which Whirlpool already had a decade or more already registered a design.
Videocon however had struggled to surmount that there was no possibility of imitation or counterfeit as they claimed consumer does not buy a washing machine by reference to its shape, colour, appearance or overall design. “People buy such expensive items based on the branding and not look.” As defended by Videocon.
According to the Whirlpool Of India Ltd, it has obtained two design registrations i.e. Nos. 223833 and 223835 .The said design registrations are valid, subsisting and in force for a period of ten years from 15th July, 2009, with a possibility of extension of 5 years after period of 10 years.
In or about June, 2012, the Whirlpool Of India Ltd came across a washing machine manufactured and marketed by the Defendant – Videocon Industries Ltd. under the brand name “Videocon Pebble” which had virtually the same and/or similar design and features of shape and configuration as the Whirlpool Of India Ltd product and the said designs registered by the Whirlpool. According to the Whirlpool a bare look at the product of the Defendant makes it absolutely evident that the same is a complete copy of the product and/or the said designs of the Whirlpool. The shape and/or configuration of the Videocon washing machine was almost identical to that of the Whirlpool. The Videocon‘s washing machine had replicated the exact and novel combination of the distinctive circular wash area, the compact right aligned control panel and the unique rectangular drying area from outside.
Facts of the Cases
As stated “Trial only and only by the eyes” test becomes crucial in situations in which a design breach has occurred. The Designs Act 2000 defines the design of the article by an industrial process that appeals and is judged only by the eye in the final article as characteristics of the composition of lines or colours form, ornament layout, or composition of lines or colours.
Videocon argued against Whirlpool that according to Section 22(3) THE DESIGNS ACT LAW 2000. According to the law, it is necessary for the defendant to make the case that the design, which is infringed (claimed) should not be registered prior, because the designs are not new or original. The first point focussed on that the designs were in the public space for a long time before registration and thus differentiation from known designs or variations of known designs is not possible. The second point was focused on Whirlpool’s behaviour, whereby Videocon cannot register and/or market its washing machine, with two registered designs with almost no differentiation, which had more than a single variation from both designs of Whirlpool intense, while Whirlpool can have more than one registered designs.
Whirlpool’s counter to the claims was misconceived in the law explicitly that its design cannot be differentiated substantially from existing designs or variations of known designs. It was turned away that a ‘sign’ as described by the Act meant a design of an object that could be manufactured as well as sold separately, so the term ‘combination of known designs’ means a combination of more than one known products, not an a miscellaneous collection of things or people of items, as advertised by Videocon that does not have an individual identity. If however, more than one 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. However Whirlpool claimed above claims were not the case with the registered designs of Whirlpool.
Whirlpool had an argument on the second point that the Act does consider that the person might have one or more similar designs. An individual can apply for design registration and also buy the existing design both at the same time. When the existing design was acquired, its ownership was related to that design, so that the individual would be able to theoretically own two designs, that is one he demanded and the other one he ordered.
The judgment of the Case The Judgement, on the question of whether or not a violation of Section 22(Piracy of Registered Design) of the Act was intentionally committed by Videocon in the design dispute, both the washing machines were physically comparable with that of a Videocon manufactured and commercialised with a disputed design, to the extent to which the design registered by Whirlpool is “obvious” and “fraudulent” counterfeits. The court determined that the devices have distinctive forms or lookouts and are clearly identified while testing the ‘Judging by the Eye’ test. Judgement on the machine sold by Videocon, the form and design of the washing machine can be clearly seen. The court then confirmed the trial judge’s ruling. A not commonly occurring feature of this case is that all the brands’ washing machines were put in court and put together during the hearings.
Whirlpool took action against Videocon on the grounds of passage, along with litigation against infringements. Passing off is the solution of the common law that is formed on equitable principles that protects a trader’s goodwill against a misrepresentation that hurts goodwill of the Trader. It is used generally to prevent the individual/entity from misrepresenting the claimant’s goods or services (commercial activities).
At the moment the Court held that Videocon could not deliberately misrepresent the user, however, it created a dissatisfactory environment for the plaintiff knowingly and is therefore liable for disappearing of the manufactured product. These provisions appear to be relevant to the proceedings of a design and cannot be a legitimate response to a small improvement to the previously known and registered design.
The High Court of Mumbai had restrained Videocon from manufacturing and marketing (commercialising) its product Videocon-pebble-washing machine.
Whirlpool vs Videocon. Notice of Motion No 229/2012. In its case it was based on an understanding of any entity,’ in section 22 of the Designs Act 2000 that the registered design possessor was exempt, which was defended by Videocon that a suit for an infringement cannot lie with the registered design owner. The court – quoting the preceding case law – recognised that an infringement action could be taken against the registered owner of the Design when the interim application was brought for hearing by the judge of the High Court of the Bombay. The Registered Proprietor was than excluded by some clauses of the Designs Act, 2000, but the inclusion of Section 22 was not in them.