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Wednesday, 22 February 2012


Finally, it has been decided that India follows National Exhaustion. It has been made clear by Justice Manmohan Singh in his judgment on Samsung vs Kapil Wadhwa that India follows national exhaustion. 

 Facts of the cases

Plaintiffs (SAMSUNG) are engaged in the business of manufacturing and trading in electronic goods such colour televisions of all types, home appliances, washing machines, microwaves, air conditions, computers, printers and cartridges etc. The Plaintiff No. 1 has licensed the use of Samsung trademark in India to Plaintiff No.2(Samsung India) vide a trademark agreement dated 8th July 2003. The said agreement has also been filed with the Trade Mark‟s Registry for registration. The grievance of the plaintiffs in the present case relates to the important business of manufacturing, selling and distribution of wide range of printers under the mark SAMSUNG by them and rampant problem of parallel importation especially carried out by the defendant No. 1 and 2 whereby the plaintiffs are deprived to carry out their legitimate business under the mark SAMSUNG.
The plaintiffs have averred in the plaint that on 18th March 2011, the advertisement was published in the weekly The DQ week by the defendant No. 2 offering SAMSUNG printers for sale. The plaintiff also complained that the said advertisement used the SAMSUNG mark along with slanted device. The said advertisement quoted the price much below than the price of the printers ordinarily sold in the market as per the plaintiff.
The Defendant also operates a website whereby the defendant offers for sale a varied range of the printers under the mark SAMSUNG at the prices much lower than offered by the plaintiff. The defendants use the technique of deep hyperlinking whereby the defendant is also able establish a connect between his website with that of the plaintiff when it comes to displaying the product to the consumer. All this is done to confuse the consumer so as to believe that the products are emanated from the plaintiffs authorized representatives when the defendants are not so.

The plaintiffs by showing the above acts of the defendants allege that the defendants are guilty of the following infringement:
1.       By way of parallel imports, the defendants are infringing the trade mark SAMSUNG of the plaintiffs in as much as the importation has been caused without the consent or permission of the registered proprietor and thus the defendants acts are infringement in view of Section 29 of the Trade Marks Act.
2.       By way of doing meta tagging and deep hyperlinking, the defendants are guilty of the infringement of trade mark SAMSUNG as the defendants are using the mark in relation to the advertisement and the use of the same is treated to be use for the purposes of infringement and thus the defendants are violating Section 29(1) read with Section 29 (6) of the Act.
3.       The defendants are passing off the goods which are not meant for Indian market giving the impression that the same are emanating from the plaintiffs when the plaintiffs have not given any such authorization or permission to the defendants to undertake such activities. All this is being done to the detriment of the plaintiffs is clear act of misrepresentation as well as deceit to the general public.
4.       The defendants are also tarnishing the reputation of the plaintiffs well known trade mark SAMSUNG by providing the goods which are actually not intended to be served to the Indian public. Any element of dissatisfaction would then clearly attack or reflect on the reputation of the plaintiffs mark SAMSUNG.

Interpretation of section 30 (3) and (4) of Trademark Act 1999
Section 30  reads as under

Section 30 (3) Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of the goods in the market or otherwise dealing in those goods by that person or by a person claiming under or through him is not infringement of a trade by reason only of-

(a) The registered trade mark having been assigned by the registered proprietor to some other person, after the acquisition of those goods; or

(b) The goods having been put on the market under the registered trade mark by the proprietor or with his consent.

Section 30(4)  Sub-section (3) shall not apply where there exists legitimate reasons for the proprietor to oppose further dealings in the goods in particular, where the condition of the goods, has been changed or impaired after they have been put on the market.


Link for the judgment:

Monday, 13 February 2012

Exceptions to Design Right (UK/EU)

Exceptions to Design Right

Design right does not subsist in certain situations (section 213(2)). Some of these designs are also excluded from the definition of ‘design’ in the 1949 Act, as amended, so they cannot be registered. Here, the legislation clearly looks at individual features of the design.

Method or Principle of Construction

The definition of design excludes the underlying principles or ideas behind the design. If they are to be protected at all, they are properly matters for the patent system.

Must Fit’ and ‘Must Match’

The ‘must fit’ and ‘must match’ exceptions are intended to prevent design right conferring a monopoly and thereby to preserve competition. They permit copying where design constraints compel it.

Must Fit’

Design right does not subsist in those parts of the design of an article which enable an article to fit or connect to another so that either article may perform its intended function. In Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289 Laddie J considered that the ‘article’ which the article in the design had to fit could be the human eye. The radius on the rear face of a contact lens was therefore a must fit feature. In Mark Wilkinson Furniture Ltd v Woodcraft Designs (Radcliffe) Ltd [1998] FSR 63, a fitted kitchen was not an article but a collection of matching articles, so the design for the kitchen unit was not deprived of protection. The meaning of the word “enable” was explored by Park J in A Fulton Co Ltd v Grant Barnett & Co [2001] R.P.C. 16, [2000] All ER (D) 1270. This exception is particularly intended to withdraw protection from spare parts which must fit in to existing equipment, though it also extends to complete articles (ee Philip Parker v Stephen Tidball [1997] FSR 680, Ch D.) including some species of design that will be little more than one big must-fit feature (like a mobile phone case): it is particularly directed at those which offer interfaces enabling them to be fitted together: Electronic Techniques (Anglia) Ltd v Critcheley Components Ltd [1997] FSR401, Ch D. In Fulton, however, a case for a folding umbrella was not a must-fit design:
It would in my view be unacceptable to construe the provision as meaning that any article which is shaped so about cover or contain another article cannot qualify for design right.
In the Parker case (which on the face of it seems hard to reconcile with this view) there was infringement of features in the design of which there was design freedom, so the ‘must-fit’ argument was not conclusive.
Notice that it is not the design for the spare part itself which is excluded from protection, but only the design of those features of shape or configuration of the article which enable it to fit. A competitor who wishes to produce an article will still be prevented from copying the free-standing parts of the design but will be able to copy the connecting or ‘must fit’ features. These may be applied to the second design to produce a competing article which will fit and function.
In the Baby Dan case, the deputy judge, David Young QC, gave a purposive construction to the must-fit exception. The claimant could rely on design right relating to various parts of a larger article, so the must fit exception would not exclude from protection the shape or configuration of the parts necessary to enable them to be assembled. A similar approach, recognising design right in component parts and restricting the must fit exception, informs the decision of Park J in Frayling Furniture v Premier Upholstery Ltd. (1999) 22(5) I.P.D. 22051.
In Novum (Overseas) Ltd v Iceland Foods plc and Austria Haustechnik [2002] EWHC 53 the High Court considered the effect of the so-called must fit exception to design right. The defendants had made and imported freezer cabinets that reproduced the claimant’s design (drawings of which the first defendant had obtained under the pretence that they were needed for shop layout design purposes: infringement of copyright by reproducing the drawings was admitted).
The first defendant argued that it was co-owner of the design, having had some input into the design work. The judge held that it had not done sufficient to produce this result, and even if it had dealings in a jointly owned design needed the consent of all owners.
Though freezer cabinets are not the most exciting pieces of design work around, the judge considered that a combination of commonplace features could attract unregistered design right protection. The model in suit was quite different in overall appearance to prior designs that had been put in evidence. The defendants’ freezer was a substantial reproduction of the design, and notwithstanding the evidence the judge held that it had been copied and therefore infringed design right. However, dividers and gaskets which formed part of the cabinet were commonplace and also were covered by the must fit exception.
The second defendant escaped an award of additional damages as it had been unaware of unregistered design right and had trued to produce a design that was not a copy.

Must Match’

The ‘must match’ exception excludes from protection features which are dependent upon the appearance of another article of which the article is intended by the designer to form an integral part.
It is intended to apply where there is a need for articles which are part of a single object to match the appearance of the rest of that object as a whole - it does not apply to pieces from a set of cutlery.
The exception is intended to cover the situation where a part is needed to restore the aesthetic appearance of an article. In such a case certain features of the design may be covered by the ‘must fit ‘ exception. The other features of the design are not free-standing since the designer must reproduce the shape of the item being replaced if their article is going to serve as a viable replacement. So, wherever, aesthetically, there is no design freedom, design right will not arise.
The need for the features of the design to match another must be considered, at the moment the design is created. So if the shape or design of an article is not dependent on anything else at the time the design is made, design right will subsist. It will be immaterial that at some future stage the use to which the article is put creates a must match situation.

Surface Decoration

Surface decoration is excluded from the scope of design right, again because the right is concerned with the overall form of an article. It may be registered (registration being concerned with features of an article) and may also be protected by copyright. See Designers Guild Ltd v Russell Williams (Textiles) Ltd. Surface decoration means more than a design printed or painted, or perhaps etched, onto an article – it includes a ‘v groove’ in a kitchen unit (Mark Wilkinson Furniture Ltd v Woodcraft Designs (Radcliffe) Ltd [1998] FSR 63, Ch D.). In Lambretta v Teddy Smith argument that the design was not surface decoration but the configuration of different-coloured pieces of the garment was rejected.
Surface decoration is specifically excluded from the definition of a design for the purposes of copyright, so section 51 of the Copyright, Designs and Patents Act 1988 does not restrict copyright protection. The design right exception is not restricted to situations where dual protection actually exists.

Requirements for Protection


Design right only subsists in original designs. The basic test of originality is that the design must be independent in the sense that it is not a copy although it need not necessarily be novel. In C & H Engineering v F Klucznik & Sons Ltd (the Pig Fenders case) [1992] FSR 427 Aldous J held that the same test as imposed in copyright law would be appropriate: that the design was not copied but the independent work of the designer. A design may be original in that is it is not copied, but may not be novel for the purposes of the Registered Designs Act because it has been previously published.
Section 213 provides that original designs attract UDR protection: but a design is not original if it is commonplace in the design field in question. However, a design may, it seems, be original but also commonplace and therefore denied protection: see Scholes Windows Ltd v Magnet Ltd [2001] EWCA Civ 532, [2002] FSR 10.
In Interlego v Tyco Industries [1989] 1 AC 217, [1988] 3 All ER 949, [1988] RPC 343 the Privy Council held that a design was not original where the only original input of the designer was to make modifications to the design drawings which were indistinguishable in the article made to the design. Amongst other changes, the radii on the corners of the bricks were altered. This did not start a new term of protection running. In Ocular Sciences Ltd v Aspect Vision Care Ltd [1997] RPC 289 Laddie J held that although designs (in suit, for contact lenses) which looked the same to the naked eye could enjoy design right protection, merely changing the scale of an existing design would not create a fresh right. The commonplace exclusion applies to designs that are ‘trite, trivial, common-or-garden, hackneyed or of the type that would excite no particular attention in those in the relevant art.’ However, he did not think it right to try to advance a definition of the term.
In Spraymiser the High Court was asked to consider whether the claimant’s design was original for the purposes of unregistered design right. The defendant had purchased in the United States a wooden mannequin which could be reconfigured to form different items of furniture. The defendant described it to the claimant in the UK, suggesting that the claimant might develop something similar which the defendant would advertise in its mail order catalogue. Now there was some dispute about whether the defendant had shown the device to the claimant.
The claimant subsequently developed a similar design which was marketed by the defendant for several years until 1997 when the defendant stopped ordering the product from the claimant and found another supplier, using the claimant’s product as a template. The claimant sued for infringement of unregistered design rights and for breach of contract.
On the evidence, the Court decided that the claimant had never had access to the American model. Similarities between the two devices were inevitable because they were both representations of the human form, but this did not preclude the possibility that the claimant’s work was original.

Commonplace designs

Sub-section (4) adds a further limitation, requiring that a design is not commonplace, thus excluding designs which, while they are not copies, are no more than an expression of what is widely known in the design field in question. In the Pig Fenders case the judge described the ‘commonplace’ provision as imposing a requirement akin to novelty. He found that certain features of the pig fenders in suit were commonplace, so that although they were common to the plaintiff’s and the defendant’s designs, there was no infringement. But in Amoena v Trulife [1996] IPD 19006 the court considered novelty unnecessary. Consideration of the prior art may nevertheless be relevant, as in Lone Star Toys Ltd v JM Enterprises of Wetherby Ltd. [1996] FSR 857.
In Farmer Build Ltd v Carier Bulk Materials Ltd and others [2000] ECDR 42, [1999] RPC461 (CA)The Times, 23 December 1998 (Ch D) the plaintiff manufactured and marketed slurry separators. One of its products was problematical, and it agreed with the defendant that a new machine would be designed on the basis of two of the plaintiff’s old designs and improving on them. The relationship broke down: the defendant subsequently started to produce its own slurry separators which were externally different from those it had designed for the plaintiff but internally virtually identical.
The defendant claimed that the individual parts of the machines, and the machines themselves, were commonplace in the design field at the time of their creation. The court considered that the correct approach was to compare the design of the article in which UDR is claimed with the design of other articles in the same field, including the alleged infringing one. The material time for this exercise is when the design is created. A design copied from the design of an earlier article will not be original, and it is not necessary to consider whether it is commonplace or not.
Whether it is commonplace is determined by ascertaining the degree of similarity to the design of similar, independent articles in the same design field. In Scholes Windows v Magnet Ltd the field was windows, not uPVC windows, so the earlier use of a similar design on Victorian windows counted against the modern design being protected. This is to be done objectively, in the light of the evidence (including expert evidence) but is a question of fact and degree for the court. If there are aspects of the plaintiff’s design not found in other designs in the field, except the defendant’s, the court can conclude that the design was not commonplace. In Scholes the horn design had been used on windows for many years and was therefore commonplace. In the case of a decorative design where there is greater design freedom, as was the case there, the Farmers Build guidelines will be less help.
The guidelines were applied by the High Court (Rattee J) in Round Imports v PML Redfearn Ltd [1999] CIPA 725, upheld sub nom Round Imports v Rexam Glass Barnsley Ltd by the Court of Appeal, 5 October 2000. This concerned UDR in a tall-necked bottle designed for the plaintiff for its Red Eye beverage. The design of the Red Eye bottle was original in that it was not a copy of another design: it was however very similar to a Miller bottle which the plaintiffs had provided to the defendant as a model, and although there were minor variations in shape and dimension they were not in the judge’s view sufficient to make the bottle significantly different from the Miller bottle or any other tall-necked bottle available at the time. Glass designers have always considered small differences sufficient, but it seems that the law differs from their view and their designs will now be open to copying. However, that case was decided on other grounds.
The guidelines were also applied in the Jo-Y-Jo case, where expert evidence showed that the cardigan designs in question were ‘classic’. Embellishing the garments with embroidery and edging did not prevent the designs being commonplace. In Fulton, a claim to unregistered design right in the handle and case of a folding umbrella was upheld: to enable functional designs to enjoy any protection, the judge (Park J) said, a narrow interpretation of what is commonplace was needed. Merely because references to two designs of close similarity could be shown was insufficient. Very minor changes of line or angle can have a significant effect on a design (as happened in Scholes).
In Spraymiser Ltd. v Wrightway Marketing Ltd. [2000] ECDR 349 (High Court) the deputy judge took the view that the field was extremely small, consisting as it did of only two designs, namely the American one and the claimant’s. There were sufficient differences between them that the claimant’s design was not commonplace within the field. Had there been a greater number of candidates, more differences may (it is submitted) have been needed.

Trademark classes -- Trademark Rules ,2002


Classification of goods and services – Name of the classes
(Parts of an article or apparatus are, in general, classified with the actual article or apparatus, except where such parts constitute articles included in other classes).
Class 1. Chemical used in industry, science, photography, agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesive used in industry
Class 2 . Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordents; raw natural resins; metals in foil and powder form for painters; decorators; printers and artists
Class 3 . Bleaching preparations and other substances for laundry use; cleaning; polishing; scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices
Class 4 . Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels(including motor spirit) and illuminants; candles, wicks
Class 5 . Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparation for destroying vermin; fungicides, herbicides
Class 6. Common metals and their alloys; metal building materials;
transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores
Class 7 . Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs
Class 8 . Hand tools and implements (hand-operated); cutlery; side arms; razors
Class 9 . Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus
Class 10 . Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials
Class 11 . Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying ventilating, water supply and sanitary purposes
Class 12 . Vehicles; apparatus for locomotion by land, air or water
Class 13 . Firearms; ammunition and projectiles; explosives; fire works
Class 14 . Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and other chronometric instruments
Class 15. Musical instruments
Class 16 . Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks
Class 17 . Rubber, gutta percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal
Class 18 . Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery
Class 19 . Building materials, (non-metallic), non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
Class 20 . Furniture, mirrors, picture frames; goods(not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother- of-pearl, meerschaum and substitutes for all these materials, or of plastics
Class 21 . Household or kitchen utensils and containers(not of precious metal or coated therewith); combs and sponges; brushes(except paints brushes); brush making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes
Class 22 . Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes) padding and stuffing materials(except of rubber or plastics); raw fibrous textile materials
Class 23 . Yarns and threads, for textile use
Class 24 . Textiles and textile goods, not included in other classes; bed and table covers.
Class 25 . Clothing, footwear, headgear
Class 26 . Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers
Class 27 . Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings(non-textile)
Class 28 . Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees
Class 29 . Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats
Class 30 . Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces, (condiments); spices; ice
Class 31. Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt
Class 32 . Beers, mineral and aerated waters, and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
Class 33 .Alcoholic beverages(except beers)
Class 34 . Tobacco, smokers' articles, matches


Class 35 .Advertising, business management, business administration, office functions.
Class 36 .Insurance, financial affairs; monetary affairs; real estate affairs.
Class 37 . Building construction; repair; installation services.
Class 38. Telecommunications.
Class 39. Transport; packaging and storage of goods; travel arrangement.
Class 40. Treatment of materials.
Class 41. Education; providing of training; entertainment; sporting and cultural activities.
Class 42. Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
Class 43. Services for providing food and drink; temporary accommodation.
Class 44. Medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
Class 45. Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

Monday, 6 February 2012

Overlapping rights: Copyright Act & Design Act

Overlapping rights

There can be considerable overlap between the laws of copyright, registered designs and design right, in that all three may be relevant to the same article (see box, Overlap between copyright, registered designs and design right). To understand the relationship between them, some explanation of their legislative background is required. In summary, prior to the CDPA:
  • Design drawings were protected by copyright as artistic works for the life of the author plus 50 years.
  • Aesthetic designs which qualified for registration under the RDA were protected for 15 years.
This had the unintended and anomalous effect that purely functional designs, which did not qualify for protection as registered designs for a 15-year period, were instead protected by copyright as artistic works for the life of the author plus 50 years.
The CDPA reformed much of the law relating to the interaction between copyright and registered designs, as a result of which:
  • The period of protection for "aesthetic" registered designs was extended from 15 to 25 years (the requirement for aesthetic appeal was subsequently removed by the Designs Regulations).
  • A new unregistered design right was created to include functional designs.
  • Three-dimensional designs were, generally, removed from protection under the law of copyright, unless they were artistic works. (Generally speaking, the circumstances in which a three-dimensional design will constitute an artistic work are fairly limited − examples of three-dimensional articles that would qualify as artistic works are works of artistic craftsmanship, sculptures or engravings.) In the case of artistic works, the period of protection is broadly:
    • the life of the author plus 70 years; or
    • for artistic works which are made by an industrial process (which applies where more than 50 articles are made), 25 years from the end of the year in which the relevant article was first marketed (section 52, CDPAsee Permitted Acts).
Section 236 of the CDPA provides that, where copyright and design right subsist in a work, it is not an infringement of the design right in the work to do anything that would infringe the copyright in the work. Effectively, this means that where copyright and design right both subsist in a work, copyright is the IP right which has to be relied on.
See box, Copyright, registered designs and design right: a practical comparison for a comparison of how the law of copyright, registered designs and design right apply in practice.